Cornell University Law Library FROM THE BENNO LOEWY LIBRARY RECEIVED BY CORNELL UNIVERSITY UNDER THE WILL OF MR. BENNO LOEWY Cornell University Library KF3109.R63 V.I A collection of patent cases, decided In 3 1924 019 219 876 ^i!''n-- ■ Cornell University Library The original of tliis bool< is in tlie Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924019219876 A COLLECTION OF PATENT CASES, DECIDES IK THE SUPREME AND CIECUIT COUETS OF THE UNITED STATES, IiaOM THEIR OEGANIZATION TO THE YEAB 1850. NOTES, AND A COPIOUS INDEX TO THE SUBJECT-MATTER. By JAMES B.JROBB, COUNSELLOR AT LAW. VOL. I. BOSTON: LITTLE, BROWN AND COMPANY. M DCCC LIV. ^ ns'^0^^ Entered according to Act of CongreBs, in the year 1854, by Little, Beows AND Company, in the Clerk's OfBoe of the District Court of the District of Massa- chusetts. BITEBStDB, CAMBBIDOB: PEINTED BY H. O. HOCQHTON AND COMPANY. TO THE HON. PELBG SPRAGUE, JUDGE OF THE UNITED STATES FOR THE DISTRICT OP MASSACHUSETTS, THESE VOLUMES ABB, WITH SENTDIENTS OF SIHCEBE RESPECT AND AFFECIIOIT, INSCRIBED, BY THE EDITOR. PEEFACE. The collection of cases embraced in these two vo- lumes, contain all of the Patent Cases decided in the Circuit Courts of the United States and reported prior to the first of January, 1850; and aU of the cases decided in the Supreme Court of the United States to the same period. They are arranged as nearly as may be in chronological order; numbering one hundred and twenty-four cases, selected from sixty volumes of Reports, namely: Washington, Brockenboro', Peters, McLean, Paine, Gilpin, GaUison, Mason, Wallace, Sum- ner, Baldwin, Story, and Woodbury and Minot, of the Circuit Court Reports ; — and Cranch, Wheaton, Pe- ters, and Howard, of the Supreme Court Reports, thus embracing aU of the decisions illustrating the princi- ples of the Patent Laws of the United States. A few cases have been decided by the State Courts, involving, incidentally, questions arising under the Patent Laws, which have been omitted, as not affecting the princi- ples or doctrines settled by the United States Courts. Exclusive jurisdiction of these subjects, in the admi- nistration of the Patent Laws, being vested in the United States Circuit and Supreme Courts. Vi PKEFACB. The decisions upon the earlier statutes, in all cases which have been modified by subsequent legislation, have been appropriately noted, with reference to the statutes, a collection of which will be found in 'the Appendix, with marginal notes indicating the altera- tions and additional provisions. The Index 'embraces all of the topics discussed and decided by these courts, and is so fuU as to greatly abridge the labor of search for the requisite authority. It is proposed to continue this collection by "the addition, from time to time, of volumes embracing the cases decided subsequent to the first of Jantiary, 1850, if the facilities afforded hereby shall be deemed suflB.- cient to warrant it. It is much to be regretted that the numerous deci- sions of his Honor Judge Sprague, in the Circuit Court for the District of Massachusetts, have not been re- ported. Their luminous exposition of the principles of the Patent Laws, in their application to the increas- ing and ever -varying mechanical developments of the laws of phenomena, in their progress from obvious to refined and intangible distinctions, "which charac- terize the cases which he has been called upon to decide, would not only have enhanced the value of these volumes, but would have greatly enriched the science of mechanical jurisprudence. Such of these decisions, however, as may have been preserved, will be collected and embraced in the sub- sequent volumes of these reports. James B. Robb. Boston, May 1st, 1854. TABLE OF CASES. Abbott, (Rogers v.) 465 Adams, (Herbert v.) 505 Ames V. Howard et al . . 689 Amesbury Nail Factory, (Odiorne v.) .... 300 B. Barrett et al v. Hall et al 207 Barrett, (Stearns v.) 97 Bedford v. Hunt et al 148 Bladen, (Tread well et al. v.) 531 Same, (Watson v.) . . . ^ . . . 510 Blanchard v. Sprague 734 Same v. Same 743 Boston Manufacturing Co. v. Fiske et al 320 Campbell, (Dobson v.) 681 Cooper et al., (Isaacs v.) 332 Same, (Shaw v.) 643 Cutter, (Whittemore v.) 28 Same, (Whittemore et al «.) 40 Cutting et al v. Myers 159 CASES REPORTED. Davis V. McCormick Davis V. Palmer Dawson v. Follen DeGroot et al., (Langdon v.) Delano v. Scott Derringer, (Pettibone v.) De Young, (Keplinger v.) Dialogue, (Pennock et al. v.) Same, (Same v.) Dixon lA Moyer Dobson V. Campbell 518 518 9 433 700 152 458 466 542 324 681 E. Earl V. Sawyer Eaton, (Evans v.) Same, (Same v.) Same, (Same v.) Same, (Same v.) Ege, (Ogle et al. v.) Emmett et al., (Whitney Evans V. Chambers Same v. Eaton Same v. Same Same v. Same . Same v. Same Same v. Hettick Same v. Same. Same v. Jordan et al Same v. Same et al Same v. Kremer Same v. Weiss 490 68 193 243 336 516 567 7 68 193 243 336 166 417 20 57 66 10 Fiske et al., (Moody v.) 312 CASES BEPOBTED. Fiske et al., (Boston Manufacturing Co. v.) , . . 320 FoUen, (Dawson v.) 9 Goodwin et al., (Hyan et al. v.) 725 Groodyear v. Mathews 50 Grant et al v. Raymond et al 604 Gray et al. v. James et al. . . - . . . . 120 Same et al v. Same et al 140 Guild, (Sawin et al. ».) ...... 47 H. Hall et al., (Barrett et al. «.) 207 Herbert v. Adams . . '' . . . . . 505 Hettick, (Evans v.) . . 166 Same, (Same v.) 417 Howard, (Ames v.) 689 Hunt et al., (Bedford v.) 148 Huntington, (Morris v.) 448 I. Isaacs V. Cooper et al. . . . . • • • 332 J. James e^al., (Gray et al. w.) 120 Same v. Same. 140 Jordan et al., (Evans v.) 20 Same, (Same et al. ».) 57 K. Keplinger v. DeYoung 458 Kneass v. Schuylkill Bank 303 Kremer, (Evans v.) 66 10 CASES BEFOBTED. L. Langdon v. DeGroot 433 Lewis, (Lowell «.) 131 Little, (Park r.) 17 Lowell, (Lewis v.) 131 ♦ M. Mathews, (Goodyear v.) 50 McCormick, (Davis v.) 518 / Melius V. Silsbee 506 Moody V. Fiske et al 312 Morris v. Huntingdon 448 Meyer, (Dixon v.) 324 Myers, (Cutting et al. v.) 159 Odiorne v. Amesbury Nail Factory .... 300 Same v. Winkley . 52 Ogle et al. v. Ege ....... 516 Palmer, (Davis v.) 518 Parker et al., (Woodcock v.) 37 Park V. Little et al 17 Fennock et al. v. Dialogue 466 Same et al. v. Same 542 Pettibone v. Derringer 152 B. Bedfield et al., (Sullivan v.) 477 Eeutgen v. Kanowrs et al. ..... . 1 B-Ogers V. Abbott et al 465 Ryan et al. v. Goodwin 725 OASES REPOKTBD. 11 Sawin et al. v. Guild 47 Sawyer, (Earl v.) 49O Schuylkill Bank, (Kneass v.) 303 Scott, (Delano v.) 700 Shaw V. Cooper 643 Sllsbee, (Melius v.) 506 Sprague, (Blanchard v.) 734 Stearns v. Barrett 97 Sullivan v. Redfield 477 Treadwell et al. v. Bladen 531 Tryon v. White 64 Tuel, (Tyler et al. v.) 14 Tyler et al. u. Tuel 14 W. Watson V. Bladen 510 White, (Tryon v.) 64 Whittemore et al. v. Cutter 40 Same v. Same 28 Whitney v. Emmett et al - 567 Williams, (Wood V.) 717 Wood V. Williams 717 Wood et al., ex parte 438 Woodcock V. Parker et al 37 A COLLECTION PATENT CASES DECIDED IN THE CIECUIT AND SUPREME COTJETS THE UNITED STATES. Reutgen v. Kanowks and Geaunt. [1 Wash. 168.] Action for breach of a patent-right. Whether the plaintiif was the first inventor of the machine for which he had obtained a patent, is a question for the decision of the juiy ; but they must be satisfied, that he is so in reference to all the world. Aliter, in England, the statute of James I. speaking only of new manufactures, within the realm?- Whether the improvement made by the defendant, in the machine invented by the plaintiff, is in principle, or in form, and proportion, is a question for the decision of the jury. If the improvement is in the principle, the inventor of the improvement has as much right to use the original invention, as the inventor has to use the improvement. An improvement in form, or propor- tions, gives no right. Whether the specification has disclosed the whole truth, relative to the inven- tion, or discovery? Whether there has been a concealment with a view to deceive ? Is the concealment material 1 Could an artist, after the patent- right has expired, construct such a machine, by reference to the specification ? These are questions for the decision of the jury. 1 2 Salkeld, U7. VOL. I. P. C. ] PATENT CASES. Eeutgen v. Kanowrs and Graunt. 1 Wash. After an agreement between an original inventor of a machine, and the in- ventor of an improvement upon the machine, that they would mutually use the same, the patent should have issued in the names of both inventors; and the plaintiff, by taking out a patent in his own name, committed a fraud, and is to be considered as a trustee for the defendant. Such conduct may not en- title the defendant to a nonsuit, but the jury may give the plaintiff no more than nominal damages. What will be ccgjsidered as a license to use the invention, for which a patent has been obtained. A plaintiff, in an action for a violation of a patent-right, may recover damages against one of two defendants, although the evidence given did not apply to both, for all torts are joint and several; and a i)laintiff may recover dama- ges against one defendant, although the other be acquitted. Aliter, in actions on contract. This was an action to recover damages for the invasion of the plaintiff's patent-right to a machine for rounding [ * 169 ] iron. It * appeared in evidence, that th^ defendant, Kanowrs, was a farmer, and had on his farm, a com- mon tilt, or hammer and anvil, worked by water. The plaintiff, a German, and poor, informed Kanowrs that he had invented a machine for rounding iron ; but, from want of funds, had not been able to bring his theory to practice. He proposed to Ka- nowrs, to convert his common tilt into such a machine, and that he would work at it for the benefit of Kanowrs, for a cer- tain sum for each ton of such iron which he should make. Hav- ing disclosed his plan, which was to use hammers of different concaves, Kanowrs objected to th^it, and proposed, instead of different hammers, the use of swedges. After some dis- agreement, whose plan should be adopted, a compromise took place, by agreeing first to try the swedges, which was done, and found to answer so well that they were never altered. The plaintiff, after working a year or two for Kanowrs at this tilt, in 1797, took a lease of it, (together with a part of the farm,) for three years ; in which was a covenant, on the part of the plaintiff, to delivejr back, at the end of the term, the tilt, with every thing belonging to it, in as good condition as he had received it. This was accord- PATENT CASES. Eeutgen v. Eanowrs and Qraiint. 1 Wash. ingly done; and the plaintiff, having thus acquired the means, he removed from Kanowrs'; and, in 1801, erected a tilt, precisely like the one he had left. The defendant, Kanowrs, then rented the old tilt to the other defendant, Graunt, who has continued to use it ever since. It was proved that the plaintiff and Kanowrs were to be in partner- ship in the benefits of this discovery, and were to obtain a patent in their joint names. But the plaintiff took it out in his own name, in the year 1796 ; and it is not accounted for, how the defendant's name was omitted. One witness said, that he had, since the erection of this machine, seen imported bolts, which appeared to him to have been rounded with a similar machine. The cause was argued by Dallas and Sergeant, for plain- tiff, and by Messrs. IngersoU and Charles J. Ingersoll for defendants. The objection to the plaintiff's re- covery were, that the machine *used by defendant [* 170] was different in principle from that mentioned in the plaintiffs specification ; that there was sufficient evidence for the jury to say, the plaintiff was not the original inventor, but had brought it with him from Germany ; that he could not, at any rate recover, as there was a partnership agreement be- tween the parties, sufficient to constitute the plaintiff a trustee for defendant, Kanowrs ; that the lease from Kanowrs to plain- tiff was an acknowledgment of his right to the machine in question, the only one which it was pretended the defendants had used ; and, lastly, that there being no evidence that Ka- nowrs had ever used the machine himself; this action, being joint against Kanowrs and Graunt, the plaintiff cannot recover, though he has proved it to have been used by Graunt; The demand of the plaintiff was, under the Act of 17th April, 1800, for three times the value of the damages sus- tained. PATENT CASES. Eeutgen v. Kanowrs and Graunt. 1 Wash. Washington, J., charged the jury. Your first inquiry is, whether the plaintiff was the original inventor of the machine meritioned in his patent and specification. One witness has stated, that he has seen imported bolts, since those made by the plaintiff, which seemed to have been made with the same machine. Whether the invention is of European origin, and imported here by the plaintiff, or has, since the erection of his machine, been carried to Europe, is a question most pro- per for your determination. It is only necessary for me to state, that, if the invention was brought over, that is, if it appears that the plaintiff was not the original inventor, in reference to other parts of the world as well as America,' he is not entitled to a patent. This point has been decided otherwise in England, in consequence of the expression of the statute of James I., which speaks of new manufactures within the realm. Your second inquiry is, have the defendants, or either of them, used a machine similar to the one mentioned in the plaintiff's patent and specification. The specification states the parts to be, a strong platform, of a given form, [* 171 J with two * upright posts for a hammer to move in, and to be operated by a cog-wheel, connected with the handle of the hammer ; the force, water, or any thing else ; corresponding concaves in the hammer and anvil. The ma- chine used by the defendant, Graunt, is of that ilescription ; but in addition, swedges are used. The question is, is the defendant's improvement of swedges, an improvement on the principle, or the form, or proportions of the plaintiff's ma- chine ; if the first, he has as much right to use his improve- ment, as the plaintiff has to use his original invention. If otherwise, and the defendant has used the original invention, thus altered, it is a violation of the plaintiff's right. The next inquiry is closely connected with the last. Does the specification contain the whole truth, relative to the dis- PATENT CASES. Eeutgen v. Kanowrs and Graunt. ' 1 Wash. covery; and if not, has it been concealed with a view to de- ceive! As to the materiahty of the thing concealed, could an artist, after plaintiff's right is expired, construct such a machine by looking at the specification ? This also is a ques- tion for the jury. I have hurried over these points, because it strikes the Court, that there remain to be considered much more import- ant objections to the plaintiff's right to recover. It is in proof (if the witnesses are credited by the jury) that the machine used by the defendant Graunt, was erected on Kanowrs' land, at his expense. That before it was done, Kanowrs, upon hearing the plan, suggested the improvement of swedges, which was adopted, and has since received the plaintiff's approbation. That the plaintiff frequently ac- knowledged the joint right of the defendant, to the invention, as partnership property ; and that the patent was to be taken in their joint names. If the jury are satisfied of these facts, and that the defendant did not relinquish his right to a joint interest in the patent-right, then the plaintiff was guilty of a fraud, in obtaining it in his own name ; he is in equity a trustee for the defendant, and though possibly, at law, a ver- dict must be rendered for plaintiff, still, the jury may give merely nominal damages. * But there .is another point still stronger. The [ * 172 ] law gives an action against any person who violates the right of the plaintiff, without his consent in writing. Now, this machine was erected on the defendant's land, by the plain- tiff, and at the defendant Kanowrs' expense. After this, the plaintiff took a lease of it for three years ; thereby acknow- ledging the right of the defendant, Kanowrs, to this particu- lar machine, and covenants to deliver it up to him at the end of the term, with every thing belonging to it, in as good order as he received it. That is, to deliver up, not the hammer and anvil in its original form, but the whole tilt, with the im- 1* PATENT CASES. Eeutgen v. Kanowrs and Graunt. 1 Wash. provements made on it by the plaintiff. Now, this covenant acknowledges the right of Kanowrs to this identical machine, and necessarily the right to use it. If he has granted the tilt to the defendant, he has, in law, granted the use of it ; and consequently he cannot now say, that the defendant has used it without his Jjcense in writing. If he has a right to the ma- chine, and to the use of it, he has a right to work it himself, or by his servants, or to lease it out^to any other person. As to the last point made by the defendant's counsel, I am of opinion, that if the above points were in favor of the plaintiff, he might recover against Graunt, though no proof were given against Kanowrs. For all torts are joint, as well as several, and the plaintiff may recover a verdict against one, thoifgh the other defendant be acquitted: otherwise, in contract. Jury found for the defendant. Note. — If the contract of several, be joint, and eitlier of the parties be sued, he may plead in abatement, that the others are not joined ; but he cannot take advantage of it at the trial ; although it appear on the face of the declaration, that there are other parties to the contract. But, if one agree or bind, himself to several, and one sue, the defendant may de- mur, upon oyer, of the contract ; or in assumpsit, he may take advantage of it on the trial. 2 Blac. Rep. 696. 1 Saund. 154. n. 291. If, in trespass against two, they both plead jointly, a several verdict cannot be given against all, if all be found guilty. But, if they [* 173] sever in their * pleas, several damages maybe assessed. The jury may find them severally guilty as to part, and not guilty as to part; but may assess damages severally. 1 Esp.N. P. 419, 420. - BuU. 93. 2 Strange, 1140. 5 Burr. 2790. In aU cases of trespass, the jury may find one defendant guilty, and the other not guilty. 1 Esp. N. P. 322. But in contracts, if the action is against several, and it cannot be supported against all, it -wholly fails. See 3 East, 62. Evans's Pothier, 2 vol. 67. If one of the joint contract- ors be an infant, the other two may be sued ; and if they plead in abate- ment, the plaintiff may reply the infsincy of that one. But if he sue all, and one plead his infancy, judgment must be given against the plaintiff. 2 Evans's Pothier, 67. This is stated in a note, but the authority is not given. — W. PATENT CASES. Evans v. Chambers. 2 Wash. Etans v. Chambers. [2 Wash. 125.] Action for a Tiolation of a pateflt-right.- If the allegations and suggestions in the petition for a patent are substantially recited in the patent, it will be sufficient ; but the omission to do this will inyalidate it. This was an action for infringing the plaintiff's patent-right to certain improvements made in the manufactory of wheat, &c., by means of a hopperboy. The petition, the patent, dated 18th December, 1790, and the specification, were read, with proof that the defendant had erected similar machinery in his mill without permission. Hare and Binney, for plaintiff. Rawle, for defendant. A nonsuit was moved for on the following grounds. First, that the patent does not recite that a petition was presented, and the suggestions and allegations of which are recited in the patent. It begins with reciting that the plaintiff " hath invented," &c. Second ; the allegations and suggestions of the petition are not recited. Third ; there is an interlinea- tion in the patent, and it is this alone which speaks of the hopperboy. This avoids the patent, as it will any deed. That it was interlined after executed, is to be presumed ; 1 Dall. 64. Fourth ; it does not appear that the patent was recorded. Fifth ; the patent is for more than the discovery, and it is therefore void ; Bull. N. P. 77. The discovery is only of the cross-piece to the upright shaft for moving and cooling the flour; and it has been proved that the upright shaft, with a different kind of cross-piece, had been used long before the date of this patent ; so that the patent gives the exclusive use to that in which the plaintiff was not enti- tled to the exclusive property. PATENT CASES. Evans v- Chambers. 2 Wash. [* 126] *For the defendant, it was stated, that the law does not require that the presentation of a petition should be recited. Second; we have produced the petition and the material suggestions are recited. Third ; it is too late to object to the patent, on account of the inter- lineation, after it has been read. Fourth ; the recording of the patent is merely directory to the officer. The right vests independent of it, by the express words of the act of 1790. Fifth ; the patent only grants a right to the upright shaft and the other parts of the machinery, with the improvement of the hopperboy annexed. No person is precluded from using every part of the machine, without the newly invented hop- perboy. By the Coukt. The second ground for a nonsuit is not to be gotten over. If the allegations and suggestions of the petition are substantially recited, it will be sufficient. But in this case they are not. All the recitals in the patent refer to the elevators, and other parts of the mill machinery, ex- cept that the use of the hopperboy is incidentally mentioned, without any description of its use, and the manner in which it is to work. But the petition gives a minute and full de- scription of it, which substantially ought to have been recited ; particularly in this case, where the patent does not in any manner refer to the petition which has been read. Not that we mean to say that such a reference was necessary, if the suggestion of the petition had been substantially recited. Nonsuit awarded. PATENT CASES. Dawson v. FoUen. 2 Wash. Dawson v. Follen. [2 Wash. 311.] In an action for a violation of a patent granted by the United States for an alleged original invention, the plaintiff must satisfy the jury that he was the original inventor, in relation to every part of the world. Although no proof was made, that the patentee knew that the discovery had been made prior to his, still he could not recover, if, in fact, he was not the original inventor. The action was brought for a violation of the plaintiff's patent-right for making suspenders. The case was fully proved on the part of the plaintiff. But the defendant introduced a nunjber of witnesses, who proved in the most positive manner, that suspenders, pre- cisely similar to the plaintiff's, had been used in England and France before the plaintiff pretended to have made the dis- covery, and still longer before his patent issued. Some evi- dence was given, that the plaintiff had in his possession one of those suspenders, before he obtained his patent, and of course knew that they had been invented in Europe. The question was left to the jury, under the charge of the Court. Washington, J., (Peters absent,) informed the jury, that to entitle the plaintiff to recover, they must be satisfied that he was the original inventor, not only in relation to the Uni- ted States, but to other parts of the world ; in which respect, the Act of Congress differed from the law of England on this subject. That even if there were no proof that the plaintiff was acquainted with the circumstance that the discovery had before been made, still he could not recover, if in truth he was not the original inventor. Upon the evidence, the charge was strongly against the plaintiff. I Verdict for defendant. 10 PATENT CASES. Evans v. Weiss. 2 Wash. OiiivEH Evans v. John Weiss. [2 Wash. 342.] Construction of the Act of Congress, passed the 21st of January, 1808, enti- titled, " An Act for the relief of Oliver Evans." Thp general law of patents declares, that the right to the patent belongs to him who is theTirst inventor, even before the patent is granted ; and, there- fore, any person who, knowing that another is the first inventor, yet doubt- ing whether he will apply for a patent, constructs a machine invented by another, acts at his peril, and a subsequent patent will prevent his use of the machine thus erected. This was an action on the case, for a violation of the plaintiff's patent-right, and comes on upon the following case agreed. The plaintiff being the inventor of the improve- ments in the manufacture of flour, hereafter mentioned,, and the patent-right for the same, by him heretofore obtained, having been declared by this Court void, in the action of the said Evans against Chambers, and the time for which the said patent was granted having also run out, an Act of Congress, entitled, "An Act for the relief of Oliver Evans," was passed on the 21st of January, 1808, in consequence of which, the said Evans duly obtained letters-patent, bearing date the 22d of January, 1808, notice whereof was given to the defendant in February last. On the 7th of May,. 1802, during the continuance of the former patent, the defendant purchased of the plaintiff a right to use the said improvements at his mill on Wissihicon creek, in Philadelphia county, in this district, for one wheel and pair of stones; but prior to the passing of said Act of Congress, he had applied and used, and still continues to apply and use the same improvements for two wheels and two pair of stones in the same mill. The question submitted is, [*343] whether the defendant *is liable for damages for the use of said improvements, in their application to this second wheel and pair of stones, since the Act of the PATENT CASES. 11 Evans v. Weiss. 2 Wash. 21st of January last ; and whether, if so, he is liable before notice from the plaintiff. If the opinion be in favor of the plaintiff, judgment to be entered generally, and the amount to be afterwards adjusted by the attorneys. Washington, J., delivered the opinion of the Court. It is contended by the plaintiff, that the defendant is liable for using the plaintiff's improvement, in application to the second wheel and pair of stones, since the 22d of January, 1808 ; or, at all events, since the time when the defendant received notice of the plaintiff's patent; because the proviso in the Act, passed on the 21st of January, 1808, " for the relief of Oliver Evans," extends only to cases of improvements erected for use, or used prior to the passage of that law, and does not protect the defendant from damages for using, after the issuing of the patent under this law, an improvement erected prior thereto. On the other side, it is insisted that such a construction would render this an ex post facto law, and consequently repugnant to the constitution. To avoid which, it should be so construed as to connect with the use of the improvement the erection of it subsequent to the grant of the patent. Although the Court at the last term, and upon the first ar- gument, felt strongly inclined to give it the construction con- tended for by the defendant, yet, upon further reflection, we are satisfied that we should do a violence to the words, which no rule of construction would warrant. The words of the proviso are, " Provided that no person who shall have used the said improvements, or have erected the same for use, before issuing said patent, shall be liable therefor ; " that is, shall be liable for having erected, or for having used the improvement at any time prior to the patent. But with re- spect to the use of it after the issuing of the patent, no pro- tection whatever is afforded against the claim for damages under this law. 12 PATENT CASES. Evans v. Weiss. 2 Wash. [*344] *The next inquiry is, does the general law give to the plaintiff a right of recovery against a person who erected a machine, prior to the issuing of a patent to the first inventor of it, and vrho afterwards made use of the same? The Act of Congress, of the 17th of April, 1800, which, as to this point, is the only law in force, declares that if any person, without permission from the inventor, shall make, de- vise, use, or sell the thing, whereof the exclusive right is se- cured to the patentee, he shall pay three times the damages sustained by the patentee, to be ascertained by a jury. Now, whatever doubt might have existed as to the meaning of the words " devise an,d use," in the fifth section of the Act of the 21st of February, 1793, thus connecting the using with the devising of the improvement, there can be none under the third section of the Act of 1800, which repeals the whole of the fifth section of the old law. It is plain that the using of an improvement invented by another, and secured by pa- tent, is of itself an offence, no matter at what time such im- provement was devised or made. Whether the word devise, which has been a good deal criticized, is synonymous with make, as Mr. Rawle seems to think it is, or means to invent, a mere act of the mind, which we deem very unreasonable, or to contrive, plan, form, or design, it is unnecessary in this case to decide, because the charge against the defendant, is the using of the plaintiff's improvement, unconnected with the making or devising it. But it is objected to this construction, that it would render the law ex post facto in its operation, in respect to one who has erected this improvement, prior to the grant of the pa- tent to the plaintiff. It must be admitted, that cases of great hardship may occur, if, after a man shall have gone to the expense of erect- ing a machine, for which the inventor has not then, and never PATENT CASES. 13 Evans v. Weiss. 2 Wash. may obtain a patent, he shall be prevented from using it by the grant of a subsequent patent, and its relation back to the patentee's * pjfior invention. But the [ * 345 ] law in this case, Ccinnot be termed ex post facto, or even retrospective in its operation ; because the general law declares, beforehand, that the right to the patent belongs to him who is the first inventor, even before the patent is granted ; and, therefore, any person, who, knowing that ano- ther is the first inventor, yet doubting whether that other will ever apply for a patent, proceeds to construct a machine, of which it may afterwards appear he is not the first inventor, acts at his peril, and with a full knowledge of the law, that, by relation back to the first invention, a subsequent patent may cut him out of the use of the machine thus erected. Not only may individuals be injured by a literal construc- tion of the words of the law, but the public may suffer, if an obstinate or negligent inventor should decline obtaining a patent, and at the same time keep others at arm's length, so as to prevent them from profiting by the invention for a length of time, during which the fourteen years is not running on. But all these hardships must rest with Congress to correct. It is beyond our power to apply a remedy. No such hardship exists in this case, where the defendant erected this improvement, with a knowledge not only that the plaintiff was the first inventor, but that he had absolutely ob- tained a patent, although it was afterwards declared invalid. Upon the point of notice, we think that the Act of 1808, being a private one, the defendant is liable only from the time he received notice of the law. Judgment for plaintiff^. Note. — In the case of Evans v. Jordan, February Term, 1815, the Supreme Court unanimously affirmed the construction given, in the above opinion, to the Act of January, 1808. The question of notice did not come up. Cranch's Reports, vol. ix. p. 199, VOL. I. P. C. 2 14 PATENT CASES. Tyler et al. v. Tuel. 6 Cranch. ^ Tyler and Others v. Tuel. (}l/2/i^ 16 Cranch, 324.] . ^^ assignee of part of a patent-right cannot maintain an action on the case for a violation of the patent.^ This was a case certified from the Circuit Court of the district of Vermont. Tyler and others, as assignees of Benjamin Tyler, the original patentee of an improvement in grist-mills, which he called the wry-fly, or side wheel. After a verdict for the plaintiffs, the judges of the court below, upon a motion in arrest of judgment, were divided in opinion upon the question " whether the plaintiffs, by their own showing, are legal assignees to maintain this action." There were two counts in the declaration. The first set forth the substance of the statutes upon the subject of patents for useful discoveries, the facts necessary to entitle the patentee to a patent for his invention, and the patent itself, together with the specification, dated February 20, 1800. The averment of the assignment of the patent-right to the plaintiffs was in these words : "And the plaintiffs further say, that the said Benjamin Tyler afterwards, to wit, on the 15th day of May, in the year last aforesaid, at said Clare- mont, by his certain deed of that date, by him signed, sealed, and to the plaintiffs then and there by the said Benjamin de- livered, and ready to be shown to the court, did, in considera- tion of the sum of six thousand dollars, to him before that time by the plaintiffs paid, grant, bargain, sell, assign [ * 325 ] * and set over to the plaintiffs, their executors, ad- ministrators and assigns, all the right, title and privi- 1 See sec. 11 of the Act of July 4, 1836. PATENT CASES. 15 Tyler et al. v. Tuel. 6 Cranch. lege in, unto, and over the said improvement in the said patent described, and thereby vested in the said Benjamin, in any part of the United States, excepting in the counties of Chit- tenden, Addison, Rutland, and Windham, in the State of Vermont." The second count, omitting the recital of the statutes and of the patent, stated concisely the same facts. The averment of the assignment of the patent-right was as follows : "And the said Benjamin Tyler, afterwards, and before the expira- tion of the said fourteen years, to wit, at said Claremont, on the 15th day of May, in the year last aforesaid, by his certain deed of that date by him then and there signed, sealed, and to the plaintiffs delivered, assigned to the plaintiffs the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, in and throughout the United States, lexcepting in the counties of Chittenden, Addison, Rutland, and Windham, in the State of Vermont, as fully and amply as by said letters-patent the said Benjamin Tyler was thereto entitled, and all his title and interest in and unto said improvement, excepting as aforesaid." Hubbard, for the defendant, contended that the assign- ment, being of pai't of the patent-right only, was not such as would authorize the assignees to maintain an action on the statute. Laws U. S. vol. 2, p. 202, >^ 4, .5. The fourth section of the act declares, " that it shall be lawful for any inventor, his executor or administrator, to assign the title and interest in the said invention, at any time, and the assignee, having recorded the said assignment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsi- bility, and so the assignees of assigns to any degree." The fifth section provides, "that if any person shall make, devise, and use, or sell the thing so invented, the 16 PATENT CASES. Tyler et al. v. Tuel. 6 Cranch. [*326] * exclusive right of which shall, as aforesaid,, have been secured to any person by patent, without the consent of the patentee, his executors, administrators, or as- signs, first obtained in writing, every person so offending shall forfeit and pay to the patentee a sum that shall be at least equal to three times the price for which the patentee has usually sold or licensed to other persons the use of the said invention ; which may be recovered in an action on the case founded on this act, in the Circuit Court of the United States, or any other court having competent jurisdiction." It is evident from the whole purview of the statute, espe- cially from the 4th, 5th, 6th, and 10th sections, that no per- son can be considered as an assignee under the statute, who is not the assignee of the whole right of the original patentee. Rodney, Attorney-General, contra. Upon a motion in arrest of judgment, if the judges are divided, the motion fails, and the judgment must be entered of course. It must follow the verdict, unless sufficient cause be shown to the contrary. 1 Salk. 17. Ld. Raym. 271. 3 Mod. 156. If there can be- no assignment but of the whole right, then the exception ofi particular counties is void ; it being repug- nant to the prior words and intention of the grant. So if the jury find a fact inconsistent with a fact previously found, the latter fact shall be rejected. Cro. Car. 130; 3 East; 6 Eac. Abr. 381; Plowd. 564; I Bl. Com. 89; 2 Co. 83 ; 8 Co. 56 ; Dyer, 351 ; 1 Co. 3 ; 1 Vent. 521 \ Cro. Eliz. 244. The whole passed at law by the deed of assignment. The exceptions are in the nature of equitable assignments. On a subsequent day, the Court directed the following opinion to be certified to the circuit court for the district of Vermont, viz. : PATENT CASES. 17 Park V. Little & Wood. 3 "Wash. * It is the opinion of the Court, that the plain- [ *327 J tiffs, by their own showing, are not legal assignees to maintain this action in their own names, and that the judg- ment of the Circuit Court be arrested. Park v. Little & Wood. [3 "Wash. 196.1 Action for an infringement of the plaintiff's patent-right to alarm-bells for fire- engines. The defendants opposed the claim, because the plaintiff had given the use of his invention to the Philadelphia fire company — that the inven- tion is not an alarm-bell, as mentioned in the patent, nor a hose or fire- engine — that their bells differ in principle with the plaintiff's. The plaintiff, not having assigned the whole of his title and interest in the invention, and no deed of assignment being recorded in the ofBce of the Secretary of State, may recover, notwithstanding any agi-eement to assign. The question, whether the invention is new, will be decided, not by the fact that bells are not new, but whether the mode of ringing them, by the motion of the engine, and not by manual action, is new. The thing for which the patent is granted should be truly and fully described in the specification. The matters not disclosed must appear to have been concealed for the purpose of deceiving the public. If an invention is an improvement in the principle of a machine for which a patent has been granted, it is not a violation of the patent — if it is an ipi- provement in the farm, it is such a violation. Action for the violation of the plaintiff's patent-right to alarm-bells for fire-engines. The specification states the bell to be attached to a horizon- tal piece of iron, fixed into an upright elastic piece, the vibra- tions of which are regulated by a ball of four or five pounds on the top — the whole frame being fastened on the engine, and the bell made to ring by the motion of the wheels on which the engine is fixed. These bells were used on the Philadelphia fire hose engine, for whose use the plaintiff" par- ticularly intended it, for the purpose of informing the mem- 2* 18 PATENT CASES. Pai'k V. Little & "Wood. 3 Wash bers, at night, where to find it. The defendants, being members of another hose company, erected on that engine a frame somewhat like gate-posts, with a post across, [*197 ] to which were suspended two bells, * attached, like the house-bells, to a circular elastic spring. This is the alleged violation. The objections to the plaintiff Js recovery were : — 1. That his counsel stated, in the opening, that plaintiff had given the use of his invention to the Philadelphia fire company. 2. That this is neither a new nor a useful invention. 3. That it is called, in the patent, an alarm-bell for a fire^-engine ; whereas, it is not irttended to give an alarm, but merely to distinguish the members of the Philadelphia company from other companies ; and that a hose engine is not a fire-en- gine. Some other objections were made to the specification. 4. That the bells used by the defendants are on an entirely different principle from those of the plaintiff. Washington, J., charged the jury. First point: The plaintiff is entitled to recover at law, no matter what private agreement subsists between him and any other person or per- sons, unless he has made a legal assignment and transfer of his interest in the invention : now, is this case, it does not appear that such an assignment has been made. 2. Whether this is a new and useful invention, you must decide. But the question is not, whether bells to give alarm or notice are new, but whether the use and application of them to fire-engines, to be rung, not by manual action, but by the motion of the carriage, for the purpose of alarm or notice, is a new invention, or improvement of an old one ? The power of steam is not new, and yet its application for propelling boats would be considered as such. Nevertheless, you must decide, on the evidence, whether the application of these bells to fire-engines is new. As to the question of its PATENT CASES. 19 Park V. Little & Wood. 3 "Wash. utility, it is proved that the plaintiff has received fifty dollars from one fire company in Baltimore for the privilege of using his invention ; and the fire insurance companies of this city, by voting sums of money to the Philadelphia company, on account of their using them, is some evidence of their opinion. * 3, This is called, in the patent, an alarm-bell; [* 198] and so it certainly is, so far as it may give notice of a fire to the inhabitants, and to the members of the company of the engine to which they belong. A hose engine may as properly be called a fire-engine, as any other used for extin- guishing fire. It is true, that the thing for which the patent is granted should be truly and fully described in the specifica- tion ; but if this is done, so as clearly to distinguish it from all other things before known, and so as to enable any person skilled in the art of which it is a branch, or with which it is most nearly connected, to make and use the same, it is suffi- cient ; the matters not disclosed must appear to have been concealed for the purpose of deceiving the public, to invali- date the patent. 4. The last question is, have the defendants, by the devis- ing or using their bells, violated the plaintiff's right? The inquiries under this head are — 1st. Are the defendants' bells, as used by them, an improvement of tlie plaintiff's ? You have seen and tried both, and can decide. 2d. Is it an improvement in the principle or in the form ? If the former, then it is no invasion of the plaintiff's privilege; if the latter, it is. Verdict for defendants. 20 PATENT CASES. Erans v. Jordan & Morehead. 1 Brock. Oliver Evans v. Jordan & Morehead. [1 Brock. 2-t8.] An old patent, securing to the inventor of improved machinery for the manu- facture of flour and meal, the exclusive use of his invention for fourteen yearSj.having ex^ed, J. & M. erected machinery, adopting the improve- ments of the patentee, and subsequently, a special act of Congress was passed, authorizing the Secretary of State to issue a second patent for the same invention, for an additional term of fourteen years, which act contained the proviso, " that no person who shall have used the said improvements, or have erected the same fir itse before the issuing of the said [second] patent, shaU be liable to damages there/or." Seld : That this proviso did not authorize the use of this improved machinery by J. & M. subsequent to the date of the second patent, and for such subsequent use, they were liable to damages to the patentee. This was an action for damages brought by the plaintiff, against the defendants, for an alleged violation of a [* 849] patent issued *to him for certain improvements made by him in the art of manufacturing flour and meal. In the year 1790, Oliver Evans obtained a patent, granting to him, for the term of fourteen years, the exclusive right of making, constructing, using, and vending, his invention in the structure of machinery, to be employed in the art of manu- facturing flour and meal. After the expiration of the terra for which this patent-right was secured, Jordan & Morehead, the defendants in this suit, constructed and used the improved machinery, invented by Oliver Evans. On the 21st of Janu- ary, 1808, Congress passed a special act,i authorizing the Secretary of State, on application in writing, by Oliver Evans, to cause letters-patent to be made out in the manner and form prescribed by the general patent law, granting to him, 1 "An Act for the relief of Oliver Evans." Act of January 21st, ISOS. — lEdiior.'] PATENT CASES. 21 Evans v. Jordan & Moiehead. 1 Brock. "" for a term not exceeding fourteen years, " the full and exclu- sive right and liberty of making, &c., his invention, &c., in the art of manufacturing flour and meal, and in the several machines which he has discovered, invented, improved, and applied to that purpose : Provided, That no person who may have heretofore paid the said Oliver Evans for license to use his said improvements, shall be obliged to renew said license, or be subject to damages for not renewing the same : And provided also, That no person who shall have used the said improvements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages therefor." The second patent was issued on the 22d of January, 1808, and this suit was brought in 1810. The defendants pleaded specially, that they had constructed and used the improved machinery of Oliver Evans, subsequently to the expiration of the first patent, and before the date of the second, and had continued to use the same ever since, as it was lawful for them to do, and to this plea the plaintiff demurred. The same question was also presented in other causes depending, in this Court, in which the said Oliver Evans was plaintiff. * The cause was argued at this Term, 1813, be- [ * 250 ] fore Marshall, C. J., and Tucker, J., and the following opinion was delivered by Marshall, C. J. — These cases came on to be heard on demurrers to several pleas in bar which have been filed by the defendants. It is intended to present two questions for the consideration of the Court. 1st. Is Oliver Evans entitled to maintain this action against a person who has used his machinery subsequent to the date of his patent, but had constructed it previous to the passage of the act by which his patent was authorized ? 2d. Is the case affected by the circumstance, that Oliver 22 PATENT CASES. Evans v. Jordan & Morehead. 1 Brock. Evans had obtained a previous patent for the gftme discovery, which previous patent had expired before the construction of the machine, for the use of which the present suit is in- stituted ? This being one of those subjects which is, by the Consti- tution of the United States, delegated entirely to the govern- ment of the U«ion, the question which has been made must depend on the acts of Congress. The act of 1793 authorizes the Secretary of State to issue a patent to the inventor of any new and useful art, securing to him " for a term, not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery."^ This right could not be full and exclusive, if any other person should have a right to make, construct, use, or vend the invention which was the subject of the patent. The 5th section of the same act subjects to a specific penalty "any person who shall make, devise, and use, or sell the thing so invented." The terms "devise and use" being coupled together, it might well be questioned whether, under this law, any person would be subject to the penalty for using a machine which he had not also made or devised. But this doubt is removed by the act of 1800.^ The [*251 ] *3d section of that act repeals the 5th section of the act of 1793, and subjects to the damages there- in prescribed " any person who shall make, devise, use, or sell," the invention of any other, which that other has secured by a patent. This clause cannot be expressed in terms which would show more conclusively the intention of the legislature to lAct to promote the progress of the useful arts. Feb. 21, 1793. 1 Story's Laws Tl. S., oh. 55, p. SOO. — [Editor.] 2 Act of April 17th, 1800. 1 Story's Laws U. S., ch. 25, p. 752.— lEditor.J PATENT CASES. 23 Evans v. Jordan & Moreliead. 1 Brock, subject each act contained in the enumeration to the penalty of the law, than those which are employed. It has, there- fore, been deemed necessary, by the counsel for the defend- ants, to insist that the obvious construction ought to be over- ruled, either because it is unconstitutional, or because it is a manifest injustice, which ought not be ascribed to the legis- lature. To subject any person to a penalty for using a machine, the invention of another, which had been constructed anterior to the patent, has been pronounced an ex post facto law, and, consequently, void. But an act which prescribes conditions, under which alone a thing may b^ used in future, cannot be ex post facto. It attaches neither guilt nor punishment to a past act, but looks forward to future acts, and prohibits the future use of the machine invented by another, without compensating that other for his invention. But it is contended that the injustice of exposing an indi- vidual to pay for the use of a machine, a sum which he may deem above its value, or to lose one which has been con- structed at considerable expense, when he believed it might be lawfully constructed and freely used, is so glaring, that such a construction ought never, if it can be avoided, to be placed on an aict of the legislature. That an act ought so to be construed as to avoid gross in- justice, if such construction be compatible with the words of the law, will not be controverted; but this principle is never to be carried so far as to thwart that scheme of policy which the legislature has the power to adopt. To that department is confided, without revision, the power of deciding on the justice as well as wisdom of measures relative to subjects on which they have the constitutional power to act. Wherever, then, their language admits of no doubt, their plain and ob- vious intent musl^jrevail. 24 PATENT CASES. Evans v. Jordan & Morehead. 1 Brock. * _^ [ * 252 ] * In cases of patents, although some injustice may ensue from imposing a price to be paid to the inventor, on the future use of a meichine which was constructed before the patent was obtained, yet the great fundamental principles of right, and of property, do not appear to be so vitally wounded as to induce the Court to resist and struggle against the obvious meaning of words. The constitution gives to the legislature a power " to pro- mote the progress of useful arts, by securing, for limited times, to inventors, the exclusive right to their respective dis- coveries." In the exercise of this constitutional power, the legislature has passed an act, prescribing the mode by which a patent to any invention may be obtained, and giving to the patentee the exclusive right to make, devise, use,- or sell it, for fourteen years from the date of the patent. The constitution and law, taken together, give to the in- ventor, from the moment of invention, an inchoate property therein, which is completed by suing out a patent. This in- choate right is exclusive. It can be invaded or impaired by no person. No person can, without the consent of 'the in- ventor, acquire a property in the invention. Whenever, then, previous to a patent, any person constructs a machine dis- covered by another, he constructs it subject to the right of that other. His right to use it is qualified by the paramount right of the inventor to prescribe the conditions on which he shall use it. Were it otherwise, the exclusive right in the discovery which the constitution authorizes Congress to se- cure to the inventor, and the exclusive right to use it after the date of the patent, which the act of Congress cdnfers, would not be exclusive, but would be participated with every person who had constructed the machine previous to the emanation of^the patent. If gentlemen will recollect, that this inchoate and indefea- sible property in the thing discovered commences with the PATENT CASES. 25 Evans v. Jordan & Morehead. 1 Brock. discovery itself, and is only perfected by the patent subject- ing the future use of the machine, constructed previous to a patent, to that price which the inventor demands from others, for the use of it, his discovery will not appear to be one of those violent *invaeions of the sacred rights [ * 253 ] of property, which would justify a Court in disre- garding the plain meaning of words. In deciding this first question, it still remains to inquire, whether, from the particular act under which Oliver Evans has obtained his patent, he derives rights as extensive as would have been conferred by the general law. In the enacting part of the law, reference is made to the general act, and it is declared that his patent grants, " for a term, not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to be used, his invention," &c. In the enacting clause, there is found no difference be- tween this particular law and the general law. A patent issued under the one, or the other, confers equal rights. Is this construction varied by the proviso ? The first proviso is, " That no person who may have heretofore paid the said Oliver Evans for a license to use his said improvements, shall be obliged to renew the said license, or be subject to dama- ges for not renewing the same." The second is, " That no perspn who shall have used the said improvements, or have erected the same for use, before the issuing of the said pa- tent, shall be liable to damages therefor." The second proviso has been supposed to comprehend the case at bar. But, surely, this would be extending the pro- viso far beyond the meaning of the words. Their obvious import is, that no person who shall have used the said im- provements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages for such previous use, or for such previous erection ; but this no more VOL. I. — p. c. 3 26 PATENT CASES. Evans v. Jordan & Morehead. 1 Brock. excepts the future use of a machine previously erected, from the operation of the enacting clause, than it excepts from that operation a machine to be in future erected. The legis- lature, knowing that an inchoate right to the exclusive use of his discovery was vested in the inventor, from the moment of discovery, and only perfected by the patent, might deem it neces'sary to guard against a continuation, which [ * 254 ] would make this patent relate back to * antecedent transactions. This may have been a superfluous caution, but such caution ^s often found in legislative pro- ceedings. This construction derives additional force from the first proviso. This does away the necessity of renewing licenses purchased under the former patent. The words of the pro- viso, certainly, apply to all former licenses, for which pay- ment had been made, not to those for which no payment had been made, and shows that the legislature supposed it possible that the effect of the patent would be extended to such licenses. An attempt has been made to impair the influence of this proviso, by its application to cases in which a license had been obtained and paid for, but the machine had not been constructed. There is nothing in the words to justify the idea that the legislature designed to limit their operation to such particular cases ; and to suppose their existence requires no inconsiderable eff'ort of the imagination. It is difficult to assign a motive for purchasing, just before the expiration of a patent, a license to use a discovery, which the purchaser did not purpose to erect until the patent should expire. It is, then, the opinion of the Court, that the Act for the relief of Oliver Evans, considered independent of any former patent, would authorize him to sustain an action for the use of his invention, after the date of his patent, although the machinery itself had been constructed before its date. PATENT CASES. 27 Evans v. Jordan & Morehead. 1 Brock. Does the existence of a former patent affect the question of law ? The Court can perceive no ground upon which to rest an affirmative answer to this question. That construction of the constitution which admits the renewal of a patent, is not controverted. A renewed patent, then, has the same ob- ligation, and confers the same rights, with an original patent. The inchoate property which vested by the discovery, is pro- longed by the renewed patent, as well as by the original pa- tent. There may be powerful reasons with the legislature for guarding a renewed patent, by restrictions and regulations, not to be imposed on original patents ; but these reasons address themselves to the * legislature only. [ * 255 ] If they have been overlooked or disregarded in the hall of Congress, it is not for this Court to set them up. Note. — The Court being divided in opinion, pro forma, on the ques- tion raised by the demurrer in this cause, the following order was made : " On the trial of this cause, it occurred, as a question, whether, after the expiration of the original patent granted to Oliver Evans, a general right to use his discovery was not so vested in the public, as to require and jus- tify such a construction of the act pMsedin January, 1808, entitled, 'An Act for the relief of Oliver Evans,' as would exempt from either treble or single damages, the use, subsequent to the passage of the said act, of the machinery therein mentioned, which was erected subsequent to the expiration of the original patent, and previous to the passage of the act, entitled ' An Act for the relief of Oliver Evans ? ' " Upon this question, the Court was divided in opinion, and it is, there- fore, ordered to be certified to the Supreme Court for their decision and direction thereon." The Supreme Court of the United States unanimously sustained the above opinion of the Chief Justice. See 9 Cranch, 199; 3 Con. Kep. Sup. Ct. U. S. 358. The decisions of the United States Court, on cases arising under the Patent Act, are collated by Mr. Peters, in a note at the end of the case. — [Editor.'] 28 PATENT CASES. Whittemore v. Cutter. 1 Gall. Whittemore v. Cuttek. [1 Gall. 429.] Under the Patent Act of 2ist February, 1793, ch. H, if the patentee has sold out a moiety of hislpatent-right, a joint action lies, by himself and his assignee, for a violation of it. The making of a patented machine fit for use, and with design to use it for profit, in violation of the patent-right, is of itself a breach of the patent- right, for which an action lies. If there be a mere mating, and no user proved, nominal damages are to be given to the plaintiff. Where the law gives a remedy for a particular act, the doing of that act of itself imports a damage, for which an action lies. If the oath, required by the Patent Act previous to the issuing of a patent, be not taken, still the patent is valid. Under the Patent Act, no defect or concealment in any specification is sufficient to avoid a patent, unless it be with intent to deceive the public. Counsel fees for prosecuting the suit are no proper item of damage in an action for violation of a patent.^ This was an action for the violation of a patent-right in a machine for the making of cotton and wool cards. A ver- dict having been returned against the defendant, [ * 430 ] he moved * for a new trial upon several grounds, which will appear in the opiriion of the Court, de- livered as follows, by Story, J. Several objections, which were taken to the opinion of the Court delivered to the jury at the trial", have been argued on the motion for a new trial, and we are now to pronounce as to their validity. The first objection is founded on the incompetency of the plaintiffs to maintain the present action ; one of the plaintiffs 1 See Allen v. Blunt et al; Boston Manufacturing Co. v. Fiske et al; Stimpson v. The Railroads. PATENT CASES. 29 Whittemore v. Cutter. 1 Gall. being the original patentee, and the other an assignee of a moiety of the patent-right, deriving his title under the pa- tentee. It is contended, that no action will lie in this court for an infringement of a patent-right in favor of an assignee, unless he be the assignee of the whole title arid interest. And the language of the 4th section of the act of 21st Feb- ruary, 1793, ch. 11, and the case of Tyler 8f al. v. Tuel,^ are relied on in support of the position. It is true, that a party relying on an action given by a statute must bring himself vpithin the provisions of the statute. But where, as in the present case, the law is remedial, it should receive a liberal construction, to effectuate the inten- tions of the legislature. Upon the very rigid construction which is assumed by the defendant's counsel, an action could not be maintained, where a joint patent should be obtained by two persons, and one of them should assign his whole interest. The action could not be jointly brought by the patentees, because one would have parted with his whole in- terest ; nor jointly by the patentee and the assignee, for it would then be open to the very difficulty which is pressed upon us in this case ; nor by either party separately, for it would be splitting the cause of action. Other cases might be put, in which the parties would be wholly without remedy. We are well satisfied, however, *that[*431] the direction given at the trial on this point was correct. The statute gives to the assignee all the right and responsibility which the original inventor had in the undivided portion of the patent, which is conveyed ; and an action may well be maintained by all the partiq.s who, at the time of the infringement, are the holders of the whole title and interest. The case of Tyler 8f al. v. Tuel is clearly distinguishable. In the first place, it was brought by persons who did not pur- 1 6 Cranch, 325. 3* 30 PATENT CASES. Whittemoie v. Cutter. 1 Gall. port to have the whole patent-right in themselves. In the next place, there was, technically speaking, no assignment of the patent-right. The instrument could only operate as a covenant or license for the exclusive use of the patent-right in certain local districts. But a patent-right itself is unsus- ceptible of local subdivision. Nor is the present case within any of the mischiefs which were pressed on the Court in that case. The language of the 4th section does not seem to have contemplated the case of joint inventors ; yet there can be no doubt, that being within the reason of the clause, they must be held within the purview. If either should die, can there be a question that the executor or administrator might well maintain an action jointly with the survivor for an in- fringement ? and in what substantial respect can an assignee in law be considered as distinguishable from an assignee in fact? Upon the most mature reflection, we are satisfied that this objection cannot prevail upon the footing of the statute ; and if urged at common law, the case of Boulton &f Watt v. Bull,^ where the action was brought by the inventor and his assignee of two thirds of the patent-right, would afford a complete answer. Another objection is to the direction, that the making of a machine fit for use, and with a design to use it for profit, was an infringement of the patent-right, for which an action was given by the statute. This limitation of the making [*432] *was certainly favorable to the defendant, and it was adopted by the Court from the consideration that it could never have been the intention of the legislature to punish a man who constructed such a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described •effects. 1 2 H. Bl. 463. PATENT CASES. 31 Whittemore v. Cutter. 1 Gall. It is now contended by the defendant's counsel, that the making of a machine is, under no circumstances, an infringe- ment of the patent. The 1st section of the Act of 1793 expressly gives to the patentee, &c., " the full and exclusive rigl;it and liberty of making, constructing, using, and vending to others to be used," the invention or discovery. The 5th section of the same act gives an action against any person who "shall make, devise, use, or sell" the same. From some doubt whether the language of the section did not couple the making and using together to constitute an offence, so that making without using, or using without making, was not an infringement, the legislature saw fit to repeal that section ; and by the 3d section of the Act of 17th April, 1800, ch. 25, gave the action against any person who should " make, de- vise, use, or sell " the invention. We are not called upon to examine the correctness of the original doubt, but the very change in the structure of the sentence affords a strong pre- sumption that the legislature intended to make every one of the enumerated acts a substantive ground of action. It is argued, however, that the words are to be construed distributively, and that " making " is meant to be applied to the case of a composition of matter, and not to the case of a machine. That it is clear, that the use of certain composi- tions, (as patented pills,) could not be an infringement, and unless making were so, there would be no remedy in such cases. We cannot feel the force of this distinction. The word " making " is equally as applicable to ma- chines, as * to compositions of matter ; and we see [ * 433 ] no difficulty in holding, that the'using or vending of a patented composition is a violation of the right of the proprietor. It is farther argued, that the making of a machine cannot be an offence, because no action lies, except for actual da- mage, and there can be no actual damages, or even a rule 32 PATENT CASES. Whittemore v. Cutter. 1 Gall. for damages, for an infringement by making a machine. We are, however, of opinion, that where the law gives an action for a particular act, the doing of that act imports of itself a damage to the party. Every violation of a right imports some damage, and if none other be proved, the law allows a nominal damage. On the wholt, we see no reason for departing from the plain import of the language of the statute, and this objec- tioi> also must be overruled. Another, objection is to the direction, that the oath taken by the inventor not being conformable to the statute, formed no objection to the recovery in this action. The statute re- quires that the patentee should swear, " that he is the true inventor or discoverer of the art, machine, or improvement." The oath taken by Whittemore was, that he was the true " i^- ventor or improver of the machine." The taking of the oath was but a prerequisite to the granting of the patent, arid in no degree essential to its validity. It might as well have been con- tended that the patent was void, unless the thirty dollars re- quired by the 11th section of the act, had been previously paid. We approve of the direction of the Court on this point, and overrule this objection. Another objection is to the direction respecting the speci- fication. It was as follows : " That if the jury should be satisfied that the specification and drawings filed by the pa- tentee in the office of the Secretary of State, were not made in such full, clear and exact terms and manner as to [ * 434 ] * distinguish the same from all other things before known, and to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly connected, to make and use the same, this would not be sufficient to defeat the right of the plaintiffs to recover in this action, unless the jury were also satisfied that the speci- fication and drawings were thus materially defective and ob- PATENT CASES. 33 Whittemore v. Cutter. 1 Gall. scure by design, and the concealment made for the purpose of deceiving the public. In this respect our law differed from the law of England. That if the specification and drawings were thus materially defective, it afforded a pre- sumption of a designed coapealment, which the jury were to judge of. That in deciding as to the materiality of the defi- ciencies in the specification and drawings, it was not sufficient evidence to disprove the materiality, that, by studiously ex- amining such specification and drawings, a man of extraordi- nary genius might be able to construct the machine, by in- venting parts, and by trying experiments. The object of the law was, to prevent the expenditure of time and money in trying experiments, and to obtain such exact directions, that, if properly followed, a man of reasonable skill in the particu- lar branch of the art or science might construct the machine, and if, from the deficiencies, it was impractiable for such a man to construct it, the deficiencies were material." In order fully to understand the objection to this direction, it is necessary to advert to the third section of the act of 1793, which specifies the requisites to be complied with in procur- ing a patent, and the sixth section of the same act, which states certain defences, of which the defendant may avail himself to defeat the action, and to avoid the patent. The third section, among other things, requires the party applying for a patent to deliver a written description of his invention, and of the manner of using, or process of com- pounding the same, in *such full, clear, and exact [*435] terms, as to distinguish the same from all other things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most intimately connected, to make, compound, and use the same ; and in the case of any machine, he shall fully explain the principle, and the several modes, in which he has con- templated the application of that principle, or character, by 34 PATENT CASES. Wliittemore v. Cutter. 1 Gall. which it may be distinguished from other inventions. The sixth section provides, among other things, that the defendant may give in his defence, that the specification filed by the plaintiff does not contain the whole truth relative to his dis- covery, or that it contains more than is necessary to produce the described effect, which concealment or addition shall fully appear tt have been made for the purpose of deceiving the public. It is very clear, that the sixth section does not enumerate all the defences of which the defendant may legally avail himself; for he may clearly give in evidence, that he never did the act attributed to him, that the patentee is an alien not entitled under the act, or that he has a license or authority from the patentee. It is therefore argued, that if the specifi- cation be materially defective, or obscurely or so loosely worded, that a skillful workman in that particular art could not construct the machine, it is a good defence against the action, although no intentional deception has been practised. And this is beyond all question the doctrine of the common law; and it is founded in good reason, for the monopoly is granted upon the express condition that the party shall make a full and explicit disclosure, so as to enable the public, at the expiration of his patent, to make and use the invention or improvement in as ample or beneficial a manner as the patentee himself. If, therefore, it be so obscure, loose, and imperfect, that this cannot be done, it is defrauding [ * 436 ] the public of all the consideration * upon which the monopoly is granted.^ And the motive of the party, whether innocent or otherwise, becomes immaterial, because the public mischief remains the same. It is said, that the law is the same in the United States, notwithstanding the wording of the sixth section, for there is 1 Buller, N. P. 77; Turner v. Winter, 1 T. K. 602. PATENT CASES. 35 Whittemore v. Cutter. 1 Gall. a great distinction between a concealment of material parts, and a defective and ambiguous description of all the parts; and that in the latter case, although there may be no inten- tional concealment, yet the patent may be avoided for uncer- tainty as to the subject-matter of it. There is considerable force in the distinction at first view ; and yet, upon more close examination, it will be difficult to support it. What is a defective description, but a concealment of some parts ne- cessary to be known in order to present a complete view of the mechanism ? In the present case, the material defects were stated, among other things, to consist in a want of a specific description of the dimensions of the component parts, and of the shapes and position of the various knobs. Were these a concealment of material parts, or a defective and am- biguous disclosure of them ? Could the legislature have intended to pronounce, that the concealment of a material spring should not, unless made with design to deceive the public, avoid the patent, and yet that an obscure description of the same spring should at all events avoid it? It would be somewhat hazardous to attempt to sustain such a proposi- tion. It was probably with a view to guard the public against the injury arising from defective specifications, that the statute requires the letters-patent to be examined by the attorney- general, and certified to be in conformity to the law, before the great seal is aflixed to them. In point of practice, this must unavoidably be a very insufficient security, and the policy of the provision that has changed the *com- [ * 437 ] mon law, may be very doubtful. This, however, is a consideration proper before another tribunal. We must administer the law as we find it. And, without going more at large into this point, we think that the manifest intention of the legislature was, not to allow any defect or conceal- ment in a specification to avoid the patent, unless it arose 36 PATENT CASES. Whittemore v. Cutter. 1 Grail. from an intention to deceive the public. There is no ground, therefore, on which we can support this objection. Considering, however, the importance of the question in a general view, if the cause had reited on this point, I should have been disposed to have had it certified, on a division of opinion, for the determination of the Supreme Court. Another objSction is to the direction to the jury, that the letters-patent were to be considered as granted for an im- provement in manufacturing cards, and not for the whole machine described in the specification. This direction was given under impressions derived from the case of Boulton &/• Watts V. Bull; but we are now satisfied that the direction was erroneous. The declaration is for an infringement of the patented machine, and although the letters-patent state, that the grant is for " a new and useful improvement in manufacturing cards," yet the specification must be considered as controlling the generality of expression, and limiting the grant to the machine specifically described therein. It is in- deed clear, from all the other papers in the cause, that the in- vention and the patent have always been considered by the patentees as confined to a specific machine. The last objection which has been urged, is to the direc- tion, that the extraordinary expenses of vindicating the right of the plaintiflfs, such as counsel fees and expenses of wit- nesses beyond the taxable costs, ought to be considered as items of actual damage. And such, at the trial, we had considered the established rule to be in estimating [ *438 ] * damages in cases of mere tort, whether the action was for the redress of a personal injury, or the vin- dication of a personal right. Since the trial, however, we have seen the case of Arcambal v. Wiseman,^ in which the question, as to counsel's fees, was directly before the Supreme iSDaU. 306. PATENT CASES. 37 Woodcock V. Parker et al. 1 Gall. Court. There can be no doubt that the case was founded on a tort ; and we feel ourselves bound by that decision, whatever might have been the opinion we should otherwise have been disposed to entertain. For the errors, therefore,^ in the two last exceptions, a new trial must be granted. A new trial awarded. John Woodcock v. David Parker and Another. [1 GaU. 438.1 The original inventor of a machine, who has reduced his invention to practice, is entitled to a priority of patent-right, although subsequently the same ma- chine may have been invented by another person.' The inventor of an improvement cannot entitle himself to a patent more broad than his invention./^ This was an action on the case for a violation of a patent- right of the plaintiff for splitting leather. The cause was tried at this term before Story, J., in the absence of the Dis- trict Judge. The plaintiff, at the trial, produced his letters- patent, dated 8th May, 1809, securing to him the patent-right of a machine for splitting leather. The defendants admitted 1 See Bedford v. Hunt (1 Mason, U. 302) ; Evans v. Eaton (3 Whea- tnn, K. 434) ; S. C. (1 Peters, C. C. Kep. 322) ; Shaw v. Cooper (7 Peters, S. C. Kep. 292) ; Dawson v. Hillen (2 Wash. C. C. Rep. 311) ; Keutger v. Kanowes et al. (1 Id. 168) ; Whitney v. Emmett (1 Baldwin, C. C. Rep. 303). 2 See LoweU v. Lewis (1 Mason K. 189) ; Moody v. Fiske (2 Id. 112) ; Wyeth II. Stone (1 Story's E. 273). See, also, Brunton v. Hawkea (4 B. & Al. 540) ; The King v. Ellice (Dav. Patent Cases, 144) ; Phillips on Patents, p. 223-231 ; Whitney v. Emmett (1 Baldw. K. 303) ; Earle v. Sawyer (4 Mason, R. 1). VOL. I. — P. 0. 4 38 PATENT CASES. "Woodcock V. Parker et al. 1 Gall. the use of a similar machine, but contended that the ma- chine was the invention of one Samuel Parker, (under whom they claimed,) who had obtained his original letters-patent for _the same invention, dated the 9th July, 1808, and let- [ * 439 ] ters-patent for certain improvements therein, *dated the 26th of April, 1809. The principal questions between the pafties were, 1. Whether Woodcock or Parker was the first inventor of the machine in controversy, and en- titled to the patent. 2. Whether, admitting the plaintiff to be the original inventor of the machine, in its present im- proved state, his patent was not too broad, and did not include machinery previously invented and applied to the same pur- pose by the said Parker, Stort, J., in summing up the cause, directed the jury as follows : The first inventor is entitled to the benefit of his invention, if he reduce it to practice and obtain a patent therefor, and a subsequent inventor cannot, by obtaining a patent therefor, oust the first inventor of his right, or main- tain an action against him for the use of his own invention. In the present case, as the defendants claim their right to use the machine in controversy by a good derivative title from Samuel Parker, if the jury are satisfied that said Parker was the first and original inventor of the 'machine, the plaintiff cannot, under all the circumstances, maintain his action ; not- withstanding he may have been a subsequent inventor, with- out any knowledge of the prior existence of the machine, or communication with the first inventor. It is not necessary to consider, whether, if the first inventor should wholly abandon his invention, and never reduce it to practice, so as to pro- duce useful effects, a second inventor might not be entitled to the benefit of the statute patent ; because here there is not the slightest evidence of such abandonment. Parker is proved to have put his machine in operation ; it produced PATENT CASES. 39 Woodcock V. Parker et al. 1 Gall. useful effects ; and he followed up his invention by obtaining a patent from the department of state. As to the second question, if the machine, for which the plaintiff obtained a patent, substantially existed be- fore, and * the plaintiff made an improvement only [ * 440 ] therein, he is entitled to a patent for such improve- ment only, and not for the whole machine ; and under such circumstances as this present patent is admitted to compre- hend the whole machine, it is too broad, and therefore void. It is not necessary, to defeat the plaintiff's patent, that a machine should have previously existed in every respect simi- lar to his own ; for a mere change of former proportions will not entitle a party to a patent. If he claim a patent for a whole machine, it must in substance be a new machine ; that is, it must be a new mode, method, or application of mechan- ism, to produce some new effect, or to produce an old effect in a new way. In the present case, if all parts of the ma- chine, except the spring plate, (which the plaintiff claims as emphatically his own invention,) existed before, and were applied to produce the same effects in the same manner ; and the plaintiff has established the spring plate to be his exclu- sive invention, still his patent ought to have been confined to such improvement, and not to have comprehended the whole machine. Unless, therefore, the plaintiff establish his ex- clusive right to the whole machine, as now organized, as his own invention, he cannot be entitled to the verdict of the jury. The jury found a verdict for the defendants ; and a bill of exceptions was taken to the direction of the judge, but no writ of error has ever been sued to the Supreme Court. George Blake and Dexter for the plaintiff. Prescott and Otis for the defendants. 40 PATENT CASES. Whittemore el al. v. Cutter. 1 Gall. — — r- Amos Whittemoee et al. v. William F. Cuttek. [1 Gall. 478.] Patent-right. If a person be the inventor of an improvement only, and not of the whole machine, he is entitled to a patent for no more than his im- provement.i % What constitutes the identity or diversity of two machines, so as to give or take away the right to a patent.' If a machine produce several different effects, by a particularcombination of machinery, and these effects are produced in the same way in an- [ * 479 ] other * machine, and a new effect added, the inventor of the latter cannot entitle himself to a patent for the whole machine.^ If an inventor make a gift of his invention to the public, and suffer it to go into general use, he cannot afterwards resume the invention, and hold a patent.* In an action for violation of a patent-right, the plaintiff can recover for actual damages only, and not for a vindictive recompense. If a user of the patented machine be proved, the measure of damages is the ^ value of the use, during the time of the user. If a making only of the ma- J|^ chine be proved, the plaintiff is entitled to nominal damages only. Neither KvSiB price, nor the expense of making the machine, is a proper measure of In an action on a patent-right, thegury are to find single damages, and the court will treble them. This was an action for the infringement of the plaintiff's patent-right, as set forth in the declaration. The cause was tried before Judge Story, at this term, in the absence of the 1 See note to page 438, ante. " See Gray v. James, (1 Peters, C. C. K. 396) ; Phillips on Patents, 128 to 133, where the cases are cited and commented on. 3 See note to 438, ante. * Morris v. Huntington (1 Paine's R. 348) ; Melius v. Silsbee (4 Mason E. 108) ; Bedford v. Hunt (1 Mason, 304) ; Grey v. James (1 Peters, C. C. R. 394) ; Pennook et al.v. Dealogao (2 Peters, S. C. Rep. 1) ; Wyeth w. Stone (1 Story's Rep. 273) ; Reed v. Cutter (1 lb. 590) ; Saunders v. Smith (3 Mylne & Craig, 711, 736). PATENT CASES. 41 Wlittemore et aJ. v. Cutter. 1 Gall. District Judge ; the verdict found by the jury at a former term having been set aside, and a new trial granted.^ After summing up the evidence, the judge directed the jury as fol- lows: If the plaintiff, Amos Whittemore, be not the inventor of the whole machine, but only of an improvement thereof, his patent is too broad, and utterly void ; for it is clearly a patent for the whole machine. Whether he be the inventor of the whole machine is, under all the circumstances of the case, a question of fact. It is difficult to define the exact cases, when the whole machine may be deemed a new invention, and when only an improvement of an old machine ; the cases often approach very near to each other. In the present improved state of machinery, it is almost impracticable not to employ the same elements of motion, and in some par- ticulars, the same manner of operation, to produce any new effect. Wheels, with their known modes of oprfation, and known combinations, must be of very extensive em- ployment in a great variety of new machines ; * and [ * 480 ] if they could not, in the new invention, be included in the patent, no patent could exist for a whole machine em- bracing such mechanical powers. Where a specific machine already exists, producing certain effects, if a mere addition is made to such machine, to pro- duce the same effects in a better manner, a patent cannot be taken for the whole machine, but for the improvement only. The case of a watch is a familiar instance. The inventor of the patent lever, without doubt, added a very useful im- provement to it ; but his right to a patent could not be more extensive than his invention. The patent could not cover 1 Ante, p. 429. 4* 42 PATENT CASES. ■ Whittemore et al. v. Cutter. 1 Gall. the whole machine as improved, but barely the actual im- provement. The same illustration might be drawn from the steam engine, so much improved by Messrs. Watt &, Boul- ton. In like manner, if to an old machine, some new com- binations be added, to produce new effects, the right to a patent is limited to the new combinations. A patent can, in no case, be for any effect only, but for an effect produced in a given manner, or by a peculiar operation. For instance, no patent can be obtained for the admeasurement of time, or the expansive operations of steam ; but only for a new mode or new application of machinery, to produce these effects ; and therefore, if new effects are produced by an old machine in its unaltered state, I apprehend that no patent can be legally supported, for it is a patent for an effect only. On the other hand, if well known effects are produced by machinery in all its combinations entirely new, a patent may be claimed for the whole machine. So if the principles of the machine are new, either to produce a new or an old effect, the inventor may well entitle himself to the exclusive right of the whole machine. By the principles of a machine, (as these words are used in the statute,) is not meant the original elementary principles of motion, which philosophy [* 481]* and science have discovered, but the modus operandi, the peculiar device or manner of pro- ducing any given effect. The expansive powers of steam, and the mechanical powers of wheels, have been understood for many ages ; yet a machine may well employ either the one or the other, and yet be so entirely new in its mode of applying these elements, as to entitle the party to a patent for his whole combination. The intrinsic difficulty is to ascer- tain, in complicated cases like the present, the exact bounda- ries between what was known and used before, and what is new, in the mode of operation. The present machine is to make cotton and woollen cards. PATENT CASES. 43 Whittemore et al. t». Cutter. 1 Gall. These were not only made before the present patent, by ma- chinery, but also by machinery which, at different times, ex- hibited very different stages of improvement. The gradual progress of the invention, from the first rude attempts to the present extraordinary perfection, from the slight combination of simple principles to the present wonderful combinations, in ingenuity and intricacy scarcely surpassed in the world, has been minutely traced by the witnesses on the stand. The jury, then, are to decide, whether the principles of Mr. Whittemore's machine are altogether new, or whether his machine be an improvement only on those which have been in use before his invention. I have before observed, that the principles are the mode of operation. If the same effects are produced by two machines by the same mode of opera- tion, the principles of each are the same. If the same effects are produced, but by combinations of machinery operating substantially in a different manner, the principles are dif- ferent. The great stages, (if I may so say,) in making the cards by Whittemore's machine, which admit of a separate and dis- tinct operation in the machinery, are, 1. The forming *and bending the wire. 2. The pricking [ * 482 ] the leather. 3. The sticking the wire into the leather ; and, 4. The crooking the wire after its insertion. Were either of these effects produced in the machines for- merly in use by a combination of machinery, or mode of operation, substantially the same as in this machine?' If so, then clearly his patent could only be for an improvement, and of course it is void ; if not, then his patent is free from any objection on the ground of being broader than his invention. It will not be sufficient to protect the plaintiflPs patent, that this specific machine, with all its various combinations and effects, did not exist before ; for if the different effects were all produced by the same application of machinery, in sepa- 44 PATENT CASES. ■Whittemore et al. v. Cutter. 1 Gall. rate parts, and he merely combined them together, or added a new effect, such combination would not sustain the present patent, any more than the artist, who added the second hand or repeater to a watch, could have been entitled to a patent of the whole watch.^ Nor will it protect the plaintiff's pa- tent, that Mr. Amos Whittemore was the inventor of all the material improvements in the old machine, (as is asserted,) if he suffered them to be used freely and fully by the public at large for so many years, combined with all the usual ma- chinery ; for in such a case I think he must be deemed to have made a gift of them to the public, as much as a person who voluntarily opens his land as a highway, and suffers it to remain for a length of time devoted to public use. How far there is any such acquiescence or assent to such public use is, of course, open to the consideration of the jury. Such are the material principles, which, as to this point, I think it proper to state. As to the rule, by which the plaintiff's damages are to be estimated, it is clear by the statute, that only the actual da- mages sustained can be given. By the terms [ * 483 ] "actual * damages," in the statute, are meant such damages as the plaintiffs can actually prove and have in fact sustained, as contradistinguished to mere ima- ginary or exemplary damages, which in personal torts are sometimes given. The statute is highly penal, and the legis- lature meant to limit the single damages to the real injury done, as in other cases of violation of personal property, or of incorporeal rights. In mere personal torts, as assaults and batteries, defamation of character, &c., the law has, in pro- 1 BeviU V. Moore (2 Marsh. K. 211) ; HiU v. Thompson (8 Taunt. R. 375) ; Bruntnn v. Hawkes (4 B, & Aid. 540) ; Munter v. Maver (1 Ne- ville & Perry, 595). PATENT CASES. 45 "Whittemore et al. v. Cutter. 1 Gall. per cases, allowed the party to recover, not merely for any actual injury, but for the mental anxiety, the public degrada- tion and wounded sensibility, which honorable men feel at violations of the sacredness of their persons or characters. But the reason of the law does not apply to the mere in- fringement of an incorporeal right, such as a patent, and the legislature meant to confine the damages to such a sum as would compensate the party for his actual loss. If the' jury are of opinion that an user of the machine is actually proved in this case, the rule of damages should be the value of the use of such a machine, during the time of the illegal user. If the jury are of opinion that a making of the machine only is proved, as there is no evidence in the case, to show any actual damages by the making, they ought to give nomi- nal damages to the plaintifis. For where the law has given a right, and a remedy for the violation of it, such violation of itself imports damage ; and in the absence of all other evi- dence, the law presumes a nominal damage to the party. The counsel for the plaintiffs have argued, that although there is no evidence of actual damage, the jury ought to give damages either to the full value of the expense of ma- king the machine, or of the price at which such a machine might be sold. But neither of these estimates can form a * rule for damages for the illegal making of [ * 484 ] the machine. As to the expense of making the machine, it is obvious that it is an expense altogether incurred by the defendant, and is not a loss sustained by the plaintiffs. The latter neither found the materials nor the labor. How then can it be an actual damage sustained by them ? As to the price for which such a machine would sell, it is open to the same, and to this fartlier objection ; that the price is com- pounded of the value of the materials and the workmanship, and also of the right of user of the machine. Now, admit- 46 PATENT CASES. Whittemore et al. v. Cutter. 1 Gall. ting the plaintiffs recover in this action, there can be no pre- tence, that thereby a legal right will pass to the defendant to use the machifte made by him. Every future use will be an infringement of the plaintiff's patent ; and, therefore, if the plaintiffs could in this suit recover such price, they not only would recover for materials and labor which they never fur- nished, and for i right of user which never passed from them, but also for that which might lawfully be the subject of another action, viz. : thd future user of the defendant's ma- chine ; so that there might be a double recovery for the same supposed injury. At the former trial, the Court were pressed with the dif- ficulty of finding any rule to estimate the plaintiff's damages, when none were actually proved, by the making of the ma- chine ; and I still adhere to the decision then made, that in such case the plaintiffs can recover nominal damages only. The jury, if satisfied of the plaintiff's right to recover, will estimate the plaintiff's single damages, according to the principles which I have stated, as they shall find the facts of a making or of a user of the machine. The Court will treble the damages found by the jury in awarding the proper judg- ment. [ * 485 ] * The jury found a verdict for the plaintiffs, that the defendant was guilty of making the machine only, and assessed single damages at $350. Dexter and Prescott for the plaintiffs. Pitman for defendant. PATENT CASES. 47 Sawin et al. v. Guild. 1 Gall. John P. Sawin and Another v. John Guild. [1 Gall. 485.] The sale of the materials of a patexited machine, by a sheriff, on an execution against the owner, is not such a sale as subjects the sheriflf to an action for an infringement of the patent-right, under the Patent Act of the 17 th of April, 1800, ch. 25. Stort, J., delivered the opinion of the Court. This is an action on the case for the infringement of a patent-right of the plaintiffs, obtained in February, 1811, for a machine for cutting brad nails. From the statement of facts agreed by the parties, it appears that the defendant is a deputy sheriff of the county of Norfolk, and having an exe- cution in his hands against the plaintiffs for the sum of $567.27 debt and costs, by virtue of his office, seized and sold, on said execution, the materials of three of said patented machines, which were at the time complete and fit for opera tion, and belonged to the plaintiffs. The purchaser, at the sheriff's sale, has not, at any time since, put either of the said machines in operation ; and the whole infringement of the patent consists in the seizure and sale by the defendant as aforesaid. The question submitted to the Court is, whether the complete materials, of which a patented machine is com- posed, can, while such machine is in operation by the legal owner, be seized and sold on an execution against him. The plaintiffs- contend, that it cannot be so seized and sold, and they rely on the language of the third section of * the Act of the 17th of April, 1800, ch. 25, [ * 486 ] which declares that if " any person, without the consent of the patentee, his or her executors, &,c., first ob- tained in writing, shall make, devise, use, or sell the thing, whereof the exclusive right is secured to the said patentee, such person, so offending, shall forfeit," &c. 48 PATENT CASES. Sawin et al. v. Guild. 1 Gall. It is a sound rule of law, that every statute is to have a reasonable construction ; and its language is not to be inter- preted so as to introduce public mischiefs, or manifest incon- gruities, unless the conclusion be unavoidable. If the plain- tiffs are right in their construction of the section above stated, it is practicable for a party to lock up his whole property, however great,*from the grasp of his creditors, by investing it in profitable patented machines. This would undoubtedly be a great public mischief, and against the whole policy of the law, as to the levy of personal property in execution. And upon the same construction, this consequence would follow, that every part of the materials of the machine might, when separated, be seized in execution, and yet the whole could not be, when united ; for the exemption from seizure is claimed, only when the whole is combined and in actual operation under the patent. We should not incline to adopt such a construction, unless we could give no other reasonable meaning to the statute. By the laws of Massachusetts, property like this is not ex- empted from seizure in execution ; and an officer who neglected to seize, would expose himself to an action for da- mages, unless some statute of the United States should con- tain a clear exception. No such express exception can be found ; and it is inferred to exist only by supposing, that the officer would, by the sale, make himself a wrong-doer, within the clause of the statute above recited. But within the very words of that clause, it would be no offence to seize [ * 487 ] the machine in execution.^ The works or books, viz., in Shaw's Travels, in the first volume of the Univer- sal History, in the first volume of Mortimer's Husbandry, in Ferguson's Mechanics, in Vitruvius, in Bossue's Historic des Mathematiques, in Wolf's Cours de Mathematiques, in Desagulier's Experimental Philo- sophy, and in Proney's Architecture Hydraulique, or in some of them. 6. That the said patent is more extensive than the invention or discovery of the plaintiff, because certain parts of the machine, called an improved elevator, were anterior to the plaintiff's said supposed imrention or dis- covery, described in certain public works or books, viz., the works or books above mentioned, or some of them ; and that the said patent is void, because it neither contains, nor refers to any specification or description, by which the parts so before described, in said public works, (or books,) may be distinguished from those parts of which the plaintiff may be the inventor or discoverer ; protesting at the same time, that he has not been the inventor or discoverer of any of the parts of the said machine. I am, respectfully, C J. Ingersoll, for plaintiff. your obedient servant, March 8, 1816. HOR. BINNEY, for defendant. PATENT CASES. 79 Oliver Evans v. Eaton. 1 Peters, C. C. the art of manufacturing flour and meal, by * means [ * 329 ] of certain machines, which he terms an improved lated or pulverized substances, in a horizontal, ascending, or descending direction. Its use in the process of the art of manufacturing flour, is to convey the meal from the millstones, as it is ground, to the elevator, to be raised, and to keep the meal in constant motion, exposing it to the action of the air ; also in some cases to convey the meal from the elevator to the bolting hopper, and to cool and dry it fit for bolting, instead of the hopper- boy, No. 3 ; also to mix the flour after it is bolted ; also to convey the grain from one machine to another, and in this operation to rub the impu- rities oflF the grain. It consists of an endless screw, set to revolve in a tube, or section of a tube, receiving the substance to be moved at one end, and delivering it at the other end ; but for the purpose of conveying flour or meal, I construct it as follows: instead of making it a continued spiral, which forms the endless screw, I set small boards, called flights, at an angle crossing the spiral line ; these flights operate like so many ploughs following each other, moving the meal from one end of the tube to the other with a continued motion, turning and exposing it to the action of the air to be cooled and dried. Sometimes I set some of the' flights to move broadside foremost, to lift the meal from one side to fall on the other, to expose it to the air more effectually. No. 3. THE HOPPER-BOY. — Its use is to spread any grain, gra- nulated or pulverized substances, over a floor or even surface, to stir it and expose it to the air to dry and cool it, when necessary, and at the same time to gather it from the circumfeKence of the circle it describes, to or near the centre, or to spread it from the centre to the circumferencej and leave it in the place where we wish it to be delivered, when sufficiently operated on. Its use in the process of manufacturing flour, is to spread the meal as fast as it falls from the elevator over the cooling floor, on the area of a circle of from eight to sixteen feet more or less in diameter, according to the work of the miU, to stir and turn it continually, and to expose it t» the action of the air to be dried and cooled, and to gather it into the bolting hoppers, and to attend the same regularly. It consists of an upright shaft made round at the lower end, about two thirds of its length, and set to revolve on a pivot in the centre of the cooling floor ; through this shaft, say five feet from the floor, is put a piece called the lea&er, and the lower end of the shaft passes very loosely through a routid hole in the centre of another piece called the arms, say from eight to six- teen feet in length, this last piece revolving horizontally, describes the 80 PATENT CASES. Olirer Evans v. Eaton. 1 Peters, C. C. elevator, an improved conveyor, an improved hopper-boy, an improved drill, and an improved kiln-drier, which macliines circle of Hie cooling floor, and is led round by a cord, the two ends of which are attached to the two ends of the arms, and passing through a hole at each end of the leader, so that the cord will reeve to pull each end of the arms equally. The weight of the arms is nearly balanced by a weight hung to a cord, which is attached to the arms, and passes over a pulley near to the upper end of the upright shaft, to cause the arms to play lightly, pressing with only part of their weight on the meal that may be under it. The foremost edges of the arms are sloped upwards, to cause them to rise over and keep on the surface of the meal as the quantity increases ; and if it be used separately and unconnected with the elevator, the meal may be thrown with shovels within its reach, while in motion, and it will spread it level, and rise over it until the heap be four feet high or more, which it will gather into the hoppers, always taking from the surface, after turning it to the air a great number of times. The under- side of these arms are set with little inchning boards, called flights, about four inches apart next the centre, and gradually closing to about two inches next the extremities, the flfghts of the one arm to track between those of the other, they operate like ploughs, and at every revolution of the machine, they give the meal two turns towards the centre of the circle, near to which are generally the bolting hoppers. At each extremity of the arms there is a little board attached to the hindmost edge of the arm to move side foremost ; these are called sweepers ; their use is to receive the meal as it falls from the elevator, and trail it round the circle described by the arms, that the flights may gather it towards the centre from eyery part of the circle ; without these, this machine would not spread the meal over the whole area of the circle described by the arms. Other sweepers are attached to that part of the arms which pass over the bolting hoppers, to sweep the meal into them. But if the bolting hoppers be near a wall and not in the centre of the cooling floor, then in this case the extremity of the arms are made to pass over them, and the meal from the elevator let faU near the centre of the machine, and the flights are reversed to turn the meal from the centre towards the circumference, and the sweepers will sweep it into the hop- pers. Thus this machine receives the meal as it falls from the elevator on the cooling floor, spreads it over the floor, turns it twice over at every revolution, stirs and keeps it in continual motion, and gathers it at the same operation into the bolting hoppers, and attends them regularly. If PATENT CASES. 81 Oliver Evans v. Eaton. 1 Peters, C. C. are moved by the same power that moves the mill, or other principal * machinery ; and in their opera- [ * 330 ] the bolting reels are stopped, tliis machine spreads the meal and rises over it, receiving under it from one, two, to three hundred bushels of meal, until the bolts are set in motion again, -when it gamers the meal into the hoppers, as the heap diminishes, it follows it down until all is bolted. I claim as my invention, the peculiar properties or principles which this machine possesses, viz., the spreading, turning, and gathering the meal at one operation, and the rising and lowering of its arms by its motion, to accommodate itself to any quantity of meal it has to operate on. No. 4. THE DBILL. — Its use is to move any grain, granulated or pulverized substance, from one place to another ; it consists, like the ele- vatoi, of an endless strap, rope, or chain, &c., with little rakes instead of buckets, (the whole cased with boards to prevent waste,) revolving round two pulleys or rollers. Its use in the process of the manufacture of flour, is to draw or rake the grain or meal from one part of the mill to another. It receives it at one pulley, and delivers it at the other, in a horizontalj ascending, or descending direction, and in some cases may be more con- veniently applied for that purpose than the conveyor. I claim the exclu- sive right to the principles, and to all the machines above specified, and for all the uses and purposes specified, as not having been heretofore known or used before I discovered them. They may all be united and combined in one flour-mill, to produce my improvement on the art of manufacturing flour complete, or they may each be used separately for any of the purposes specified and allotted to them, or to produce my im- provement in part, according to the circumstances of the case. No. 5. THE KILN-DEIER. — To kiln-dry the meal after it is ground, and during the operation oft the process of manufacturing flour, I take a close stove of any common forra, and inclose it with a wall made of the best non-conductor of heat, leaving a small space between the stove and the wall, to admit air to be heated in its passage through this space. I set this stove below the conveyor that conveys the meal from the millstones as ground, into the elevator, and I connect the space between, the stove and the wall, ^ the conveyor tube by a pipe entering near the elevator, and I cover the conveyor close, and set a tube to rise from the end of the conveyor tube near the millstones, for the heated air to ascend and escape as up a chimney. I make fire in the stove, and admit air at the bottom of the space between it and the wall round it, to be heated and pass along the conveyor tube, meeting the meal which will be heated by the hot air, 82 PATENT CASES. Oliver Evans v. Eaton. 1 Peters, C. C. tion, subdivide any granulated or pulverized substances, elevate and carry the same from place to place, in small and and the superfluous moisture ■will be more powerfully repelled and thrown off, and the meal will be dried and cooled as it passes through the opera- tion of the elevator and hopper-boy. The flour will be fairer than if the grain had been kun-dried, and it will keep longer sweet than flour not kiln-dried. I set all my machines in motion by the common means of cog and round tooth, and pinion straps, ropes, or chains, well known to every millwright. Arrangement and connection of the several machines, so as to apply my principles to produce my improvements complete. I fix a spout through the wall of the mill for the grain to be emptied into from the wagoner's bag, to run into a box hung at the end of a scale-beam, to weigh a wagon load at a draught. From this box it descends into the grain elevator, which raises it to a granary over the cleaning machines, and as it passes through them, it may be directed into the same elevator to ascend to be cleaned a second time, and then descends into a granary, over the hopper of the millstones to supply them regularly, and as ground it falls from the several pair of millstones into the con- veyors, where it is dried by the heated air of the kiln-drier, and is con- veyed into the meal elevator, to be raised and dropped on the cooling floor, within reach of the hopper-boy, which receives and spreads it over the whole area of the circle which it describes, stirring and turning it continually, and gathering it into the bolting hoppers which it attends regu- larly.. That part of the flour which is not sufficiently bolted by the first operation, is conveyed by a conveyor or drill into the elevator, to ascend with the meal to be bolted over again, and that part of the meal which has not been sufficiently ground at the first operation, is conveyed by a con- veyor or drill, and let run into the eye of the millstone to be ground over. Thus the whole of the operations which used to be performed by manual labor, is, from the tune the wheat is emptied from the wagoner's bag, or from the ship's measure, until it enters the bolts, and the manufacture be completed in the most perfect manner, performed by the machinery moved by the power which moves the mill, and this machinery keeps the meal in constant motion during the whole process, drying and cooling it more completely, avoiding all danger from fermentation, and preventing insects from depositing their eggs, and performing all the operations of grinding and bolting to much greater perfection, making the greatest possible quantity of the best quality of flour out of the grain, saving much time PATENT CASES. 83 Oliver Evans v. Eaton. 1 Peters, C. C. separate parcels ; spread, stir, turn, and gather them, by regular and constant motion, so as to subject them * to artificial heat, and the air to dry and cool when [ * 331 ] necessary. It then recites the material parts of the act of Congress, passed on the 2d of January, 1808, " for the relief of Oliver Evans," and concludes by granting " to the said Evans for * fourteen years, the full and [ * 332 ] exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said Oliver Evans himself, in the annexed schedule, and is made a part of these presents." *The schedule describes the, principles of the [*333] machine in the" manner, but more fully than they are stated in the patent, and also the principles, the form, and use of each particular machine; and claims as his invention the peculiar properties or * principles [ * 334 ] which each machine possesses ; and in particular as and labor and expense to the miller, and preventing much from being wasted, by the motion of the machines being so slow as to cause none of the flour to rise in form of dust, and be carried away by the air, and the cases of the machines being made close, prevents any from being lost." OLIVER EVANS. W;tnpwas the sole * and exclu- sive inventor of all the essential parts of the machines aforesaid, described in his specification, and stated in his patent, that they, said jurors of the jury aforesaid, should return a verdict for the complainant. But to this the counsel for the respondent, on his behalf, did then and there insist before the said Hon. Judge, that the matters and evidence aforesaid, so produced and proved as aforesaid, did not amount to, nor ought to be held to be, con- clusive evidence against the said Barrett to prove that his patent aforesaid was obtained surreptitiously or upon false suggestion as aforesaid. And the said Hon. Judge did then and there declare and deliver his opinion to the jury aforesaid, as follows, namely : PATENT CASES. 101 Steams, in error, ». Barrett. 1 Mason. ^; ^?. As to the first point, the Judge directed the jury, that thpugh*- ' it should appear to them ^om the evidence that there were conflicting claims for a patent by the respective parties, at the office of the Secretary of State, and that a reference was recommended or directed, and that said Stearns did ofler to refer such conflicting claims of himself and said Barrett to arbitrators, to be appointed according to the provisions of the law in such case, and named an arbitrator or referee on his behalf, and gave notice thereof to said Barrett ; and though said Barrett should have refused, on his part, to appoint an arbitrator or referee, and afterwards a patent was issued to Stearns, and, subsequent to the date of said Stearns' patent, one was issued to said Barrett, as appears in evidence from their respective dates; yet that these circumstances alone would not constitute an obtainment of the patent surrepti- tiously, or on false suggestion, on the part of said Barrett, within the true intent and meaning of the statute ; and that other evidence besides that, which should establish those facts and circumstances, would be necessary to support the charge of obtaining the patent surreptitiously, or by false suggestion. And in regard to the second point, * the [ * 157 ] said Hon. Judge directed the jury, that the burden of proof lay upon the complainant to support his allegation, in order to maintain the issue joined ; and that as to the ques- tion, who was the true inventor of the machines, it was in- cumbent on th6 complainant to satisfy the jury, beyond a reasonable doubt, that said Barrett was not the true in- ventor of said machine or improvement, or of some essen- tial part of it, to maintain that alleged ground for vacating the respondent's patent. That the objection that this was requiring the complainant to prove a negative, was not appli- cable to this direction; for the complainant might prove the proposition contended for, by proving that another person, besides Barrett, was the inventor ; and as there appeared no 9* 102 PATENT CASES, Steams, in error, v. Barrett. 1 Mason. allegation nor evidence in the cause, nor was it contended by either party, that any other, besides Stearns and Barrett, was the inventor of said machine, it would follow, that unless Stearns should have satisfied the jury that he was the in- ventor of the machine, or some material part of it, they must find a verdict for the respondent ; and with this direction, the said Hon. Jhdge left the cause to the jury." The following points were now made by G. Sullivan, for the plaintifT in error. 1st. That by the finding of the jury, the fact was expressly established, that the respondent was not the sole inventor of any essential part of either of the machines, for which he obtained a patent ; and the conclusion of the verdict in favor of the respondent was therefore repugnant to this finding, and contrary to law. 2dly. That the Hon. Judge ought to have amendeH and worked said verdict into form, and thereupon entered judg- ment for the complainant, or have rejected it, and awarded a venire de novo. 3dly. That the Hon. Judge directed and decided, that it was incumbent on the complainant to prove a nega- [* 158 ] tive * proposition, viz.: That the respondent was not the inventor of the essential parts of said ma- chines, whereas the respondent ought to have been held to prove that he was the inventor. 4thly. That the Hon. Judge directed and decided, that the obtainment, by the respondent, of his said patent, was not surreptitious, although obtained in the manner apparent on the record, viz., after a patent, for the same invention, had been issued to another, upon the refusal of the respondent to submit to arbitration, as required by the ninth section of the Patent Law. 5thly. That the answer of said respondent, under oath, was read to the jury in evidence. PATENT CASES. 103 Steams, in error, v. Barrett. 1 Mason. Under the first point it was contended, that whenever a patentee had obtained a patent upon a specification broader than his invention, the patent was void. As when a patent was obtained for the whole of a machine, and the patentee had invented only an improvement.^ So where the specification imperfectly discloses the mode, of producing the efiect ; or specifies an effect which the means specified will not produce, the patent is void.^ And if the patent obtained really covers the invention of another, it is void.^ Under the second point it was contended, that it was within the power of a court to amend a verdict. And that this might be done by the plea-roll, issue, notes of the Judge, minutes of counsel, or affidavit of facts, proved at the trial.* * As where the jury find a fact, of which there [ * 159 ] was no evidence.^ Where the jury use technical terms, in an improper man- ner.^ Where the jury undertake to collect the contents of a deed, and find the deed in hcec verba, the Court will not^egard the jury's finding of the contents, but will look to the deed.'' Where the jury undertake to find the costs for either party, 1 Woodcock V. Parker, 1 GaU. R. 438. Ante 37. 2 Turner v. Winter, 1 T. R. 602 ; Rowntree's case, Fessenden's Law of Patents, 151. 3 Tenant's case, Fessenden's Law of Patents, 152. 4 Goodlittle v. Otway, 8 East, R. 357 ; Doe v. Perkins, 3 T. R. 749 ; Petrie u. Hannaj, 3 T. R. 659 ; Prest, Direct., and Co. of the High- land Turnpike i>. M'Kean, 11 Johns. R. 100, 101 ; Grant v. AsUe, Doug. R. 723. 5 Manners v. Postan, 3 Bos. & Pul. R. 343. 6 Chester v. Wellan, 2 Saund. R. 97. 7 Row V. Huntington, Vaug. R. 77. 104 PATENT CASES. Stearns, in error, v. Barrett. 1 Mason. of which the law disposes, the Court will not regard the finding.^ Where the jury find the plaintiff was disseised nisi the words contained in a will conveyed a good estate ; the Court held, that the verdict was perfect without the nisi, and so entered for the plaintiff.^ Where the jtiry find, that the defendant did not promise, «fcc., nevertheless if two witnesses are to be believed, and they think they are, they find the verdict for the plaintiff; it was held a good verdict for the defendant.^ Where the jury find the facts at large, and further con- clude against law, the conclusion is ill, and the verdict will be amended according to the facts found.* Where the jury bring in a verdict, and there is surplusage, the Court will reject the surplusage.^ Where the jury find any thing out of the issue, such a verdict, for so much, is void, although it conclude [ * 160 ] in general *for or against the plaintiff or defend- ant. And the rule, by which the Court shall amend verdicts, is the true legal intent and meaning of the jury, if such may be collected from the verdict.^ It was then contended, that the verdict in the case before the Court, was, in substance, a sufficient and distinct answer to the issue, and defective only in form ; and that the Judge should, therefore, have amended it, or, since the verdict was 1 Green v. Cole, 2 Saund. K. 257. 8 West V. Tonson, Cro. Eliz. 480. 3 Sir Kowland Haywood's case, 3 Dy. 371. * Dy. 106, 20 ; PI. Com. 114 ; 11 Kep. 10 ; Priddle's case. 5 11 Mod. 64. 6 Foster V. Jackson, Hob. K. 54 ; Hawkes v. Crofton, 2 Burr. K. 699 ; Doe v. Perkins, 3 T. R. 749 ; Kees v. Morgan, Id. 349 ; Walker v. Gibbs, 2 Dall. R. 211, 212. PATENT CASES. 105 Stearns, in error, v. Barrett. 1 Mason. no part of the record, have entered up judgment for the plaintiff without amending it. Under the third point, it was contended that a scire facias was a summary remedy, in the nature of a quo warranto ; and was sustained at common law, where the subjects were injured by a patent, in order to avoid a multiplicity of suits. That in a quo warranto, the respondent must set out his whole title at length, and that the affirmation necessarily devolved upon the respondent, by the whole course of the pleading; that this process was in the nature of a quo war- ranto, and the whole course of proceedings was the same. Under the fourth point, it was contended, that by the ninth section of the patent law, the legislature had prescribed a mode for the adjustment of interfering applications by a reference ; and that if an applicant, refusing to submit to such reference, was permitted still to obtain a patent, all the ad- vantages to be derived from a patent, which was that of an exclusive privilege, would be lost to the other patentee. Under the fifth point, it was contended, that to permit the answer of the respondent on oath to be read to the jury in evidence, was contrary to the course of proceedings in a quo warranto, and was not, therefore, allowable in this case. *Bigelow and Gorham, for the defendants, con- [ * 161 ] tended that a writ of error would not lie in this case, because the process was not according to the course of the common law.^ That if it were according to the course of the common law, it would be necessary for the complainant to allege himself to be the first patentee, and to set out his right at length, which the complainant, in this case, had not done. iHunt V. Coffin, Dyer E. 197; Melvin w. Bridge, 3 Mass. R. 305; Pratt V. Hall, 4 Mass. K. 241 ; Edgar v. Dodge, 4 Mass. R. 671. 106 PATENT CASES. Stearns, in error, v. Barrett. 1 Mason. That the burden of proof was on the complainant, and he must show, that the patent of the defendant was obtained surreptitiously, and upon false suggestion ; the patent obtained by the defendant being, in itself, prima facie evidence of his right. That the writ of scire facias was a judicial writ founded upon a record ; but that, in this case, there was no record to found the process upon, the District Court not being the repository of the records of patents ; and no process of this kind could have issued from that Court, had not a special power been given to it by the patent law. That the proper mode of procedure would have been by a certiofrari, which being a writ of favor, the truth of the facts and the merits of the case would have been examined under it. It was further contended, that the finding of the jury in this case was not that this was a joint invention of the plain- tiff and defendant, but only that both of them were con- cerned in it ; similar to the case of the invention of a ma- chine by two men, without either's knowing of the invention of the other ; in which case it would not by any means be said, that the patent of the last inventor was obtained sur- reptitiously. If, therefore, the finding of the jury [* 162 ] could by *any means be made consistent, the Court would make it so. Story, J. The first question is, whether this Court has appellate jurisdiction from a judgment, rendered by the Dis- trict Court in proceedings under the tenth section of the Patent Act. Before considering this question, it will be necessary to settle the true nature and character of the proceeding itself. It is not easy to 'give a construction to the tenth section of the Act, that is entirely free from difficulties. It provides, in PATENT CASES. 107 Stearns, in error, v. Barrett. 1 Mason. substance, that upon oath or affirmation being made before the Judge of the District Court, that any patent was obtained surreptitiously, or upon false suggestion, and motion made to the said Court within three years after issuing the patent, it shall be lawful for the sai4 Judge, if the matter alleged shall appear to him sufficient, to grant a ri/Xe that the patentee, or the executor, &c., show cause why process should not issue against him to repeal such patent ; and if sufficient cause should not be shown to the contrary, the rule shall be made absolute ; and thereupon the said Judge shall order process to be issued against such patentee, or his executors, &c., with costs of suit. And in case no sufficient cause shall be shown to the contrary ; or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be ren- dered by such Court for the repeal of such patent. And if the party, at whose complaint the process issued, shall have judgment given against him, he shall pay all such costs as the defendant shall be put to in defending the suit, to be taxed against him by the Court, and recovered in the due course of law. The proceeding is evidently of a peculiar nature. It be- gins by a rule to show cause, which is commonly called a rule nisi, and if no sufficient cause be shown to the * contrary, the rule is to be made absolute. For [* 163] what purpose is it to be made absolute ? Clearly, as the Act declares, that process may issue against the patentee to repeal the patent ; and the section proceeds to direct, that such process shall be issued against the patentee, wifh costs of suit. If the section had stopped here, there could have been little room for doubt; and it would, probably, have been judicially held, that the hearing upon the rule was de- cisive, and final between the parties ; and that if the rule was made absolute, the patent would be in effect repealed ; and the issuing of process would be in the nature of an execution 108 PATENT CASES. Steams, in error, v. Barrett. 1 Mason. to enforce, or make known, the judgment of the Court. The proceedings would^ in this view, bear a strong analogy to the summary proceedings under the statute of 17 Geo. 3, ch. 25, to set aside an annuity, and cancel the bond, or other assur- ance granting the same.' In aid of this construction of the tenth section of the Patent Act, it is material to observe, that, by its terms, the process is to be issued to repeal the patent, and not to show cause why it should not be repealed ; and the process is also to enforce a payment of the "costs of suit," which seems to suppose that the suit is then con- cluded. But it has been supposed that the subsequent clauses of the tenth section contemplate the process to be issued as merely interlocutory process, to bring the party into CourtNto ghow, cause why the patent should not be repealed ; and that, upon the pleadings upon such process, the merits of the ap- plication are to be discussed and decided. And the clause, that " in case no sufficient cause shall be shown to the con- trary, or if it shall appear that the patentee was not the true' inventor or discoverer, judgment shall be rendered by such Court for thp repeal of such patent," is supposed particularly to apply to those ulterior proceedings. In fact, [ * J64 ] * the process is thus deemed, to all intents and pur- poses, a scire facias at the common law to repeal a patent. There is certainly great force in the argument in support of this view of the process, although some differences must be admitted to exist between it and a scire facias at the common law to repeal a patent. In the first place, a scire facias is a judicial process, issuing upon some record already enrolled in the Court. It either issues out of Chancery, where the patent itself is recorded, or from some other Court, 1 1 Tidd's Pr. 436, (4th edit.) PATENT CASES. 109 Steams, in error, w. Barrett. 1 Mason. where a forfeiture or other cause of repeal appears by oflBce, or other matter upon record in the same Court.^ And the patent itself, or an inquisition, which finds a patent and a cause of forfeiture, is a sufficient record to authorize the issuing of the scire facias.^ In this respect, the process from the District Court is different. That Court is not the depository of the records of patents ; but they are recorded in the office of the Secretary of State ; and, if the present argument be right, the process is not founded upon any judgment of the Court, ascertaining a forfeiture or ground of repeal. In the next place, a scire facias is a process altogether confined to the Crown, with the exception of the single case, where two patents have issued for the same thing ; in which case the prior patentee may maintain a scire facias to repeal the second patent.^ But, under our Patent Act, any person, whether a patentee or not, may apply for the repeal. There are other differences, which it is not now necessary to enu- merate. * After considerable hesitation, I have come to [ * 165 ] the conclusion that the proceedings upon the rule nisi are not conclusive j and that the process, to be awarded upon making the rule absolute, is not a final process, but a judicial writ in the nature of a scire facias at the common law. In this view, the preliminary proceedings are analogous to those on a rule for an information in the nature of a qua^ warranto under the English statutes.* Upon this construc- tion, all the words of the statute have a natural connection iThe King v. Butler, 3 Lev. 220; S. C. 2 Vent 344; 4 Inst. 72; 2 Saund. R. 72, p. 9, in note; 1 Tidd's Pr. 966, (4th edit.) 2 Lev. 220 ; Com. Dig., Palent, F, 7 ; Dy. 197, &c. 3Dy. 198, 6; 2 Saund. 72, 8, note; Com. Dig., Patent, F, 2 F, 3. But see 6 Mod. 229. 4 See Kex v. Dawes, 4 Burr. R. 2022 ; Ibid. 2120 ; Kex v. Peacock, 4 T. R. 684. VOL, I. P. C. 10 110 PATENT CASES. Steams,. in error, v. Barrett. 1 Mason. and distinct meaning, referring to the progressive order of the proceedings. The process is called in the statute a pro- cess to repeal the patent, merely as a description of its nature and use, and not because it necessarily and absolutely, per se, repeals the patent ; in the same manner as a scire facias at common law, though, in fact, always a process to show cause, is generally denominated a sci^e facias to repeal a patent.! j^qj. jogg ^j^g addition of the words in the statute, "with the costs of suit," at all impugn this construction ; for the. process is then to show cause why the patent should not be repealed, with costs of suit. In confirmation of this con- struction, it may be remarked, that in the correspondent sec- tion of the Patent Act of 10th of April, 1790, ch. 7, the clause as to the costs of suit is omitted, which clearly shows that these words ought not to change the ordinary construc- tion of the context. The subsequent language of the sec- tion, that " in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such Court for the repeal of such patent," manifestly con- templates some proceedings after the process is [ * 166 ] issued, by * which certain facts may be judicially determined, which are to be the proper foundation of a judgment. It is also of very considerable weight, that this has been, as far as we can obtain information, the prac- tical exposition of the statute. It is consonant to the rules of the common law, which have generally been consulted and followed in all our laws and proceedings, to which they bear any relation ; and it preserves the trial by jury, which the judicial acf^ declares shall be the mode of trial of all issues of fact in the District Court, in all causes except civil causes of admiralty and maritime jurisdiction. Whether a more convenient, as well as a more effectual remedy, might not 1 Dyer, R. 179 6, 198 a; Lilly's Entr. 411 ; 2 Saund. K..72 p, note. 2 Act 24th Sept. 1789, ch. 20, § 9. PATENT CASES. Ill Stearns, in error, v. Barrett. 1 Mason. have been obtained by a bill in equity, to set aside a patent for fraud or imposition, it is not the province of a judicial tribunal to consider or decide.^ It being then ascertained that this is a proceeding in the nature of a scire facias at the common lawr, the next inquiry is, whether this Court has appellate jurisdiction from the judgment rendered therein by the District Court. If this point were to be decided by a mere reference to the common law, no difficulty could arise ; for, upon a judg- ment on a sdre facias, it is very clear that error lies.^ But the appellate jurisdiction of the Circuit Court depends alto- gether upon the positive provisions of our own statutes. It is not a Court originating in the common law, whose jurisdic- tion is to be ascertained by immemorial usage. The Judicial Act of 1789, ch. 20, <5> 22, gives appellate jurisdiction to this Court from all final decrees of the District Court in causes of admiralty and maritime jurisdiction, where the matter in dis- pute exceeds 300 dollars ; and from all final decrees and judgments " in civil actions," where the matter in dispute exceeds 50 dollars. The Act * of 3d [ * 167 ] March, 1803, ch. 93, "J. 2, allows an appeal to this Court from all final judgments or decrees of the District Court, where the matter in dispute exceeds 50 dollars. Whe- ther this last statute applies to any but causes of admiralty and maritime jurisdiction, is questionable,^ and need not now be considered ; for this process comes completely within the description of a "civil action." A scire facias is a judicial writ ; and yet it is held to be an action, because the defend- ant may appear and plead thereto.* And for precisely the 1 See Attorney-General v. Vernon, &c., 1 Vern. R. 277, 370. 2 2 Tidd's Pr. 966, 1028 ; Com. Dig., Pleader, 3, B, 7. 3 United States i>. Wonson, 1 Gall. R. 5, 11. 4 Co. Lit. 290, 6, 291 a; Paltney v. Tonson, 2 W. Bl. 1227; Guy V. Jones, 2 Wils. 251 ; Fenner v. Evans, 1 T. R. 267 ; Winter v. Kretchman, 2 T. R. 45; 2 Tidd's Pr. 966, (4th edit.) 112 PATENT CASES. Steams, in error, v. Barrett. 1 Mason. same reason this process must be deemed an action ; and it is clearly a civil, as contradistinguished from a criminal action. A writ of error, therefore, well lies, if the matter in dispute exceeds the stipulated value. It is conceded, by the counsel on both sides, that the patent-right is of a far greater value ; and, as judicially appears upon the record, that each of the parties claims the invention as his own, each has a matter, in controversy sufficient in value to sustain the jurisdiction. It is not necessary to decide, whether, if the plaintiff had been a mere stranger, claiming no title to the invention, he could have brought a writ of error from the judgment of the Dis- trict Court. The difficulty in such a case would have been, how to estimate the value which the plaintiff could have in the controversy. On this point no opinion is intended to be given. The appellate jurisdiction in this Court being established, we may now pass to the consideration of the other questions arising in the cause. It is deeply to be regretted, that the proceedings were, from accidental causes, conducted in so inartificial and irregular a manner by the parties in the Court below. [ * 168 .] * The scire facias does not express, in the pointed and distinct terms of the statute, the causes for which the patent is sought to be repealed. It ought to have contained a direct allegation or suggestion, that the patent was obtained surreptitiously, or upon false suggestion, and have called upon the defendant for that cause, and for that cause only, to show cause why the patent should not be repealed. Whereas, the sdre facias, after reciting (and, in my judgment, very unnecessarily) the whole proceedings prior to the making of the rule absolute, proceeds to state at large, in a new allegation, a specification of the particulars, in which the plaintiff denied the machine in controversy to be the inven- tion of the defendant, and claimed it to be the invention of PATENT CASES. 113 Steams, in error, v. Barrett. 1 Mason. another (meaning, as the context shows, of the plaintiff him- self) ; and then calls upon the defendant to show cause why the letters-patent for the cause aforesaid, should not be repealed. From the manner, therefore, in which this new allegation is inserted in the seire facias, it is uncertain whe- ther the defendant is to answer to that only, (and it does not contain a syllable as to the patent's having been obtained surreptitiously, or upon false suggestion,) or whether the state- ments in the original affidavit are now included in the charge. This specification was very properly ordered by the Court ; but it was in the nature of a bill of particulars, to assist the defendant at the trial, and by no means a regular part of the sdre facias. It is very probable, that this informality occa- sioned the embarrassment of the subsequent pleadings, in which it is not very easy to discern at once, what was the precise point which the parties meant to put in issue ; whether that the patent was obtained surreptitiously, or upon false suggestion ; or that the improvement, for which the patent issued, was the invention of the defendant. And this again, probably, misled the jury in shaping their verdict. *In my judgment, the plea must be considered, [ * 169 ] substantially, as putting in issue the only point, that, on the scire facias, could be material, namely, whether the patent was obtained surreptitiously, or upon false suggestion ; and, of course, that the residue of the plea is mere surplus- age. The material inquiry then is, whether the jury have, in direct terms, or by nedSssary legal intendment, returned a verdict upon this issue. Many authorities have been cited to show the power of Courts of law to amend verdicts which are defective, so as to conform to the real intentions of the jury. It is unnecessary to examine the nature or limits of this doctrine; for no amendment was made in this verdict by the District Judge ; and a refusal to amend a verdict is not the subject of a writ 10* 114 PATENT CASES. _ , Steams, in error, ». Barrett. I Mason. of error. It is a mere exercise of discretion by the Court below ; and it does not even appear upon this record, that any application was made to the Court for that purpose. The verdict is, therefore, to be taken as it stands upon the record, with all its imperfections on its head. It is clear, that, in terms, it does not find the issue joined by the parties ; if, however, the Court can collect the point in issue out of the verdict, it will be sufficient.^ The plaintiff contends, that the fact found by the jury, that the machine was the joint invention of the plaintiff and the defendant, is decisive in his favor ; and, by inference, includes the point in issue ; and that the subsequent finding for the defendant is repugnant to this fact, and therefore ought to be rejected. On the other hand, the defendant contends, that the general finding is for the defendant ; and the special fact found is not repugnant to it, and may, therefore, be rejected as surplusage. [ * 170 ] If there be a material repugnancy * in the ver- dict, it is not competent for the Court to reject either part of the finding; for it is utterly impossible for the Court to decide which is the truth of the case. And if it were otherwise, there is no authority to substitute its own opinion for that of the jury. In such case, the repug- nancy will be fatal. A verdict, which finds two inconsistent material facts, is void, and cannot be a foundation for a legal judgment.^ On the other hand, a general verdict, (as this must be deemed to be,) which finds the point in issue by way of argument or inference, is^oid, even, as it is said, though the argument or inference be necessary.^ It follows, therefore, that in no event can the verdict be adjudged in favor of the plaintiff. It is either a verdict, which finds the " Hob. 54 ; Com. Dig., Pleader, S, 18, S, 26 ; Hawks v. Crofton, 2 Burr. E. 698. 8 Com. Dig., Pleader, S, 23. 3 Rowe V. Huntington, ( Vaug. R. 66, 75 ; Com. Dig., Pleader, S, 22. PATENT CASES. 115 Stearns, in en-or, v. Barrett. 1 Mason. substance of the issue for the defendant, or it is void for repugnancy, uncertainty, or insufficiency. There are many authorities in the books respecting this subject, some of which are not easily reconcilable with sound sense, or with legal principles. From the mass of cases, however, some rules may be extracted, which commend them- selves to the judgment of all of us. If, for instance, the jury find the point in issue, and also another matter out of the issue, the latter finding is void, and may be rejected as sur- plusage.^ But it is otherwise, if the matter so found be con- tained in the issue ; for then, if it be material and contradict- ory, it cannot be rejected as surplusage. So if the point, on which the verdict is given, be so uncertain that it can- not be clearly ascertained whether the jury meant to find the issue or not, it cannot be helped by intendment ; and, a fortiori, if it be repugnant to other facts expressly found.^ * Let us now apply these principles to the present [ * 171 ] verdict. From the terms in which the verdict is expressed, it seems to be an argumentative finding for the de- fendant. The jury find, that the plaintiff has not supported his allegations, and therefore find for the defendant. What were those allegations? That the patent was obtained sur- reptitiously, and upon false suggestionj as stated in the original affidavit? Or, that the machine in controversy was the sole invention of the plaintiff, as stated in his amended allegation ? The terms of the verdict more correctly apply to the latter than to the former; and there is this additional reason for this construction, that the fact specially found is, in this view, con- sistent with the general finding. For, as the jury find that the plaintiff and defendant were both concerned in the invention, then the allegation of the plaintiff, that it was his sole inven- tion, was not supported. In this view of the verdict, it is void, 1 Com. Dig., Pleader, S, 18, S, 28. « Id., Pleader, S, 2, S, 23. 116 PATENT CASES. Stearns, in error, v. Barrett. 1 Mason. either because it is merely argumentative and uncertain, or, more properly, because it does not find the real point in issue between the parties. On the other hand, if the verdict be supposed to refer to the real issue between the parties, it is to be considered if it be not necessarily repugnant. By the Patent Act, no person could entitle himself to a patent for any machine, unless he was the true inventor of it, and would make oath to that fact before some competent authority. By the expression in the statute, " true inventor," is undoubtedly meant the sole and exclusive inventor ; for if the machine were the joint inven- tion of several persons, neither of them could claim to be the true inventor, having an exclusive title to the patent ; but the interest would be a joint or common interest in the whole. In such a case, therefore, if a party were to obtain a patent for the indention, having sworn that he was the true in- ventor, he would, in the language of the Act, obtain [ * 172 ] it " upon false suggestion " ; * and as such false suggestion would be a surprise and fraud upon the government, it might well also be declared to be obtained " surreptitiously." In the present case, the defendant ob- tained his patent, claiming it to be his own exclusive inven- tion, and asserting the fact upon his oath. The jury have found, " that the plaintiff and defendant were both concerned in the invention." It is said, by the defendant's counsel, that this is not a finding ; that the plaintiff and defendant were jointly concerned in the invention. I confess, that this seems to me an over-refinement, and an exercise of legal astuteness too ingenious, and too subtle to be applied to the language of verdicts. When the jury declare that both were concerned in the invention, the natural mean- ing of the words is, that the invention was the result of their joint, and not of their several and independent labors. However complicated the machine may be, the invention itself is not susceptible of division. If the plain- PATENT CASES. 117 Steams, in error, v. Barrett. 1 Mason. tiff and defendant separately and independently invented several parts of the machine, capable of a distinct use, then those parts might be considered as separate inventions, for which each inventor might, perhaps, be entitled to a separate patent. But the present patent claims the invention, as a whole ; and the jury find, that in this invention they were both concerned ; which I cannot understand in any other sense, than as verifying the invention to be a joint, simulta- neous production of the genius and labor of both parties. The special fact, so found, is necessarily repugnant to any general verdict in favor of the defendant, upon the real issue between the parties. It is a fact, consistently with which no such verdict could be given. It is also a direct contradiction of the allegation in the plea of the defendant, that the im- prQvement was invented by him ; and if that allegation be considered as part of the issue, the finding is so far against the defendant. In either view, the verdict is repugnant in a material point, and consequently void, *In any way, therefore, of considering the ver- [ * 173 ] diet, it cannot, in my judgment, be supported. And I will add, that where a verdict is not expressed substan- tially in the terms of the issue, the case ought to be extremely clear that should ipduce a Court to make it the ground of a final judgment. For this defect in the verdict, the judg- ment of the District Court must be reversed, and a new trial had at the bar of this Court. There are several points, however, made upon the bill of exceptions, which have been fully argued, and as they may be important in the future trial of this cause, I am willing to declare.my present opinion respecting them. Before enter- ing into the merits of them, I cannot forbear to remark upon the inaccuracy with which the bill of exceptions has been framed. It contains, not a statement of the facts, but of the testimony introduced to prove the facts, on each side, in hmc 118 PATENT CASES. Steams, in error, v. Barrett. 1 Mason. verba ; and the counsel for the plaintiff then insisted, that the matters so produced and given in evidence, on the part of the plaintifF, were sufficient, and ought to be admitted and allowed as decisive evidence, that the defendant surrepti- tiously obtained his patent, and that he was not the inventor of all the essential parts of the machine in controversy. There is no rule of law which would have authorized the Court to give such direction to the jury ; for the matters so produced are not distinctly stated, but are mere ques- tions of fact to be ascertained by the jury.^ The bill of exceptions should either have stated the facts, and not merely the evidence of the facts, and prayed the opinion of the Court thereon; or, if the evidence was doubtful, it might have stated that evidence was given to prove certain facts, and then have prayed the opinion of the Court thereon, if the jury should so find the facts. In England, when [ * 174 ] the facts are doubtful, I believe * it is more usual in practice to insert those facts in the bill of exceptions as settled by the jury, and then to allege the opinion of the Court, as an absolute one, upon the trial. Waiving, however, all objections to the terms and form of. the bill of exceptions, let us now proceed to examine the points, stated at the argument. The first objection taken to the opinion of the Court below, is, in substance, that the Court ought to have directed the jury, that the refusal of the defendant to submit his claim to arbitration, under the cir- cumstances detailed in the evidence, (which brought it within the 9th section of the Patent Act,) and subsequently obtain- ing a patent after the plaintiff had obtained his, was conclu- sive evidence that the patent of the defendant was obtained surreptitiously, or upon false suggestion ; whereas the Court held, that tliese facts were not, per se, conclusive to establish 1 Smitli V. Carrington, 4 Cranoh, 62. PATENT CASES. 119 Steams, in error, v. Barrett. 1 Mason. this point. In my judgment, there was no error in this opinion of the Court. If an arbitration had been actually perfected between the parties under the 9th section, the award or decision of the arbitrators would have been final between the parties only so far as respected the granting of the patent. It would not have concluded the parties from showing in the present suit, that it was obtained upon false suggestions. It would not have concluded them, in an action for an infringement of the patent, from asserting any defence allowed by the 6th section of the Patent Act. The sole ob- ject of such an award is, to ascertain who is primd facie entitled to the patent. But when once obtained, the patent is liable to be repealed or destroyed by precisely the same process as if it had issued without objection. If the award itself would not have been conclusive, d fortiori, a refusal to join in an arbitration under the statute cannot be so. Another objection is, that the Court held, that the burden of proof to maintain the issue lay upon the plain- tiff; *and that it was incumbent on him to prove [ * 175 ] that the defendant was not the true inventor of the machine in controversy ; whereas, it is contended that the burden of proof lay on the defendant, and the plaintiff was not bound to prove a negative. In my judgment, there was no error in the opinion of the Court upon this point. By the very form of the pleadings the affirmative rested on the plaintiff". He was bound to prove that the* patent was obtained surreptitiously, or upon false sugges- tion. This is an affirmative proposition ; and to have called upon the defendant to prove the contrary, would have thrown upon him the burden of the proof of a negative proposi- 'tjon. In respect to the point, who was the inventor, the possession of the patent was primd fade evidence for the defendant at least upon this process; and the proof, that another was the inventor, was not the proof of a negative 120 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C proposition. And, at all events, the trial being in substance upon the general issue, the plaintiff could entitle himself to a verdict only by the strength of his own proof, and not by the weakness of that of his adversary. Upon the whole, these exceptions must be overruled ; but for the defect of the verdict a venire facias de novo must be awarded. Judgment reversed. Gray and Osgood v. James, Odion, and Wilson. [1 Peters, C. C. 394.] Action for the violation of a patent-right. Where two machines are substantially the same, and operate in the same man- ner to produce the same kind of result, they must be in principle the same. If an invention for which a patent has been obtained, is improved by any person other than the patentee, the inventor of the original machine has no right to use the improvements ; and the inventor of the improvements has no right to use the original machine without the license of the patentee. A patent " for an improvement in the art of making nails, by means of a ma- chine which cuts and heads the nail at one operation," is not a grant of an abstract piinciple, nor is it the grant of the different parts of any machine ; but of an improvement applied to a practical use, effected by a combination of various mechanical powers to produce a new result. It is not sufficient to invalidate a patent that the specification is materially defective, unless the patentee intended, by concealment of parts of the ma- chine, to deceive ; and where practical mechanics are enabled to supply any omissions in the specification, such an intention will not be presumed. Q/icere. If, in an action for the violation of a patent-right, where the general issue has been pleaded, it is competent to the defendant to give in evidence that the machine is useless, and has been abandoned. After a patent is granted for an invention or discovery, the disuse of it by the patentee is not an abandonment of the rights of the patentee to the same, but fey continue for fourteen years from the date of the»patent. It is the duty of the jury, shoidd their verdict be in favor of the plaintiff, in an action for the violation of a patent-right, to find the actual damages sustained by t&e plaintiff, which the Court will treble. Tkis was an action for a violation of the plaintiff's patent- PATENT CASES. 121 Gray et al. v. James et al. 1 Peters, C. C. right, for an improvement in the art of cutting and heading nails by one operation. The specification, which is part of the patent, describes the machine to consist in an upright and permanent jaw, and a movable jaw, united by a piv»t at the top, representing a vice ; in each jaw there is a cutter fixed, to nip the bar of iron to the size of the nail, a griping die to hold the iron, until the head is made, by what is called a set or heading die, which is placed below. The power which effects and com- pletes this * operation, is generated by a lever of [ * 395 ] the first order, passing through a mortice made in the standing jaw, which acts upon a toggle or double joint connected with the moving jaw of the vice, which in its first movement compresses the jaws so as to cut the iron, and then, as it is further depressed, forces up the set and completes the nail by heading it. This invention was made by Jacob Perkins, some time in the year 1798, who, on the 24th of July of that year, assigned his right to the same to Guppy and Armstrong, to wjjom a patent was granted the 14th of February, 1799, and on the 14th of December, 1801, Guppy and Armstrong assigned the patent to the plaintiffs. The machine, which it was proved had been used by the defendants prior to the expiration of the patent to Guppy and Armstrong, was invented by Jesse Read, who obtained a patent for the same in February, 1807. It consisted of the two jaws of a vice, the one fixed and the other movable, with cutters inserted in each for cutting off the iron intended for the nail, and griping and heading dies for holding and heading it. These jaws are united by a pivot below, in consequence of which a lever, of the second order, is used to generate the power, being forked and embracing the two jaws, which are compressed together by a friction roller, fixed between the VOL. I. — p. c. 11 122 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C. forks of the lever, which acts on an inclined surface of the movable jaw. It was proved by witnesses that more than 200 pounds of iron were made into nails by Perkins's machine which was erected by Guppy and Armstrong at their works at Amesbury ; that for the want of machinery to force the piece of iron down into the griping die, the machine would clog if an attempt were made to work it with rapidity, and on this account it would not make more than thirty or forty nails in a minute ; in consequence of this defect, it was altogether abandoned by Guppy and Armstrong, and it did not appear that Perkins's machine had been ever used afterwards by any person. All the defects in this machine were cured in [ *396 ] Read's. In the * latter there was a forcing slide, which instantly removed the piece of cut iron into the griping die, and thus enabled the machine to operate with all the rapidity that it was capable of, insomuch that it has made in one working day to the amount of 1,500 pounds of nails, and upwards of 200 nails in a minute. From the models of the two machines exhibited in Court, it appeared that independent of the difference in the position of the two machines, of the levers, the friction roller on the inclined plane instead of the toggle joint and the forcing slide, there were others which gave to Read's a preference over Perkins's. For instance, in the former the dies were in con- tact nearly with each other and with the cutters ; they are visible, can be easily taken out and sharpened or otherwise repaired without taking the machine to pieces ; whereas in Perkins's the dies were at such a distance from the cutters, that the witnesses supposed the piece of iron might not always fall regularly into the dies ; and the cutters and dies being concealed in the jaws, they could not be taken out and sharpened and adjusted, but by taking the machine to pieces and wasting much time. PATENT CASES. 123 Gray et al. u. James et al. 1 Peters, C. C. It was proved, by many witnesses examined on the part of the plaintiffs, that the two machines were precisely the same in principle, and that from an inspection of the specification and drawing, they, or any artist skilled in nail machinery, might make the machine. The defendants examined a number of witnesses, who stated that they considered the two machines to be different in prin- ciple from each other, and that, from the specification and drawings, they should not know the form of the cutters and dies, or where or how to fix them, as nothing in relation ^o their form or situation, positive or relative, is stated in the specification or appears in the drawings. The defendants produced a number of patents, for cutting and heading nails at one operation, all prior to Perkins's dis- covery, with the specifications and drawings ; but not a single witness was examined to explain them, so as to show the * principle on which they operated, nor [ * 397 ] did it appear in evidence that any machines for cutting and heading nails, at one operation, had ever been erected or used prior to Perkins's, except that one witness said he had seen, in the year 1797, a machine like Perkins's, invented by Rodgers, which cut and headed nails at one ope- ration, but no particular description of it was given. It was contended, by the defendants' counsel. First, That Perkins is proved not to have been the original inventor of this machine. Second. That the two machines are entirely different in principle from each other. Third. That the patent is for the whole machine, which comprehends the lever, and the other parts of the machine, of which it is agreed Perkins was not the inventor. That the patent, therefore, is broader than the invention, and is, there- fore, void. Fourth. That Perkins's machine was altogether useless, and was abandoned. 124 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C. Fifth. That the specification is not sufficiently precise within the words of the law.^ Washington, J., charged the jury. Many defences have been set up to this action, each of which will require a distinct consideration. I shall derange somewhat the order in which the points have been argued, and present first to the consider- ation of the jury that which is involved in the general issue. First, it is denied that the defendants have at any time used the machine for which a patent was granted to Guppy and Armstrong. It is not denied that the defendants have used a machine for cutting and heading nails at one operation, but it is contended that that machine is different, not only in form, but in principle from the plaintiffs' machine. What constitutes a difference in principle between two machines, is frequently a question of difiiculty, more especially if the difference in form is considerable, and the [ * 398 ] machinery * complicated. But we think it may safely be laid down as a general rule, that where the machines are substantially the same, and operate in the same manner to produce the same result, they must be in principle the same. I say substantially, in order to exclude all formal difference ; and when I speak of the same result, I must be understood as meaning the same kind of result though it may differ in extent. So that the result is the same accord- ing to this definition, whether the one produce more nails, for instance, in a given space of time than the other, if the ope- ration is to make nails. The application of this rule will be more obvious and better understood, by dissecting the machine invented by Perkins, and afterwards the machine which the defendants have used. In the former we find the two jaws of a vice, the one fixed 1 Bull. Nisi Prius, 77 ; 2 H. Blac. 470, 463. PATENT CASES. 125 Gray et al. v. James et al. 1 Peters, 0. C. and the other movable on a pivot at the top, which connects them together. In each of these jaws is fixed a cutter, the use of which is to cut off from the bar of iron as much as will be necessary to form the nail, which, being separated, falls by Its own gravity into a die, which holds it by a firm gripe until the head js formed, by what is called the set or heading die. The power which produces this double operation is a lever of the first order, acting upon a toggle joint which compresses the two jaws, and consequently the cutters together and also raises the set, in such a manner as to head the nail. But the whole is performed by the same movement of the lever. It is impossible to describe the parts of the defendants' machine, and its operation, without using the same expres- sions, except that his is inverted, the pivot of the vice being below, and a lever of the second order, embracing the jaws with a friction roller, acting on an inclined plane made on the moving jaw of the vice, instead of the lever of the first order, and the toggle joint. But it is in full proof that these differences, as to the lever and the friction roller, are the necessary consequences of the machine being inverted. After having made this comparison, and ascertained the mode of operation by each machine, * connected [ * 399 ] with the result of each, the jury can find little difficulty in deciding whether they are the same in principle or not. The witnesses have differed in opinion, as to the compara- tive merit of the toggle joint in Perkins's machine, and the friction roller in Read's. If their operation is precisely the same, the difference in form does not amount to an invention of any kind. If the friction roller is better than the toggle joint, which seems to be the opinion of some of the defendants' witnesses, then Read has the merit of having discovered an improvement on Perkins's machine, and no more. *11 126 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C If the jury should be of opinion that the parts of the two machines which I have noticed are the same in principle, and that each will by the same operation cut and head nails ; then it will follow that the forcing slide, the proximity of the cut- ters and dies to each other, the balance wheel, and some other additiondS parts in Read's machine, which give it a great and acknowledged preference over Perkins's, are merely im- provements, but do not change the principle of the machine. If improvements only, what is the legal consequence ? Most clearly this and no more : that Perkins, and those claiming under his patent, have no right to use those improvements without a license from the inventor. But, on the other hand, neither Read nor any other person, can lawfully use the dis- tjovery of Perkins of the principal machine without a license from him. The law, wisely and with justice, discriminates between, and rewards the merit of each, by granting an exclu- sive property to each in his discovery, but prevents either from 'Invading the rights of the other. If, then, the jury should be of opinion thattlie two machines are the same in principle, it is no defence for the defendants for using Perkins's discovery that they 'have improved it, no matter to what extent. The next objection made to the plaintiffs' right of recovery is, that the plaintiffs' patent is void, for the following reasons: First. Because Perkins was not the original [*400] inventor. It is * insisted that the patents wliich have been read, show that machines for cutting and lieading nails at one operation, had been discovered prior to the discovery by Perkins. Whether this be so or not, this Court feels itself incompe- tent to decide. No explanation of those machines has been given, and we cannot, from the specifications and drawings- which accompany these patents, form the slightest idea of their structure, operation, or result. It will be for the jury to PATENT CASES. 12T Gray et al. v. James et al. 1 Peters, C. C. examine these papers and decide for themselves. It is, how- ever, not unworthy of remark, that in addition to the circum- stance that no explanation of those machines has been given to the jury, it does not appear that any one of them was' ever put into operation. As to Rodgers's machine, there is but one witness who gives evidence respecting it, and that in a very imperfecLjnaiai- ner. It is not mentioned in the notice of special matter to be given in evidence, and although this affords no sufBcient ground for rejecting the evidence, it furnishes a reason why the defendants should be expected to lay before the jury a satisfactory explanation of the principles of that machine, and the manner in which it operated. Upon the whole, the jury, after examining carefully the evidence given in support of this objection, will apply to it the same rule which the Court has laid down under the former head, for testing the similarity between Perkins's and Read's machines, and will be governed by it. Second. The next reason assigned against the validity of the plaintiff's patent, is, that it is too broad ; or if no^ so that the patent is for a principle merely. The Couft is of opinion that there is not the slightest found- ation for this objection. The patent is supposed to be for the machine itself, which is composed of parts which have long become public property. This is not the fact. The patent is for an improvement in the art of making nails, by means of a machine which cuts and heads the nails at one operation. It is, therefore, not the grant of an abstract principle, nor is it the grant * of the differ- [ * 401 ] ent parts of any machine, but of an improvement applied to a practical use, effected by a combination of various mechanical powers to produce a new result. The lever, the vice, the cutters, the dies, Sic, may be used by any person 128 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C. without a violation of the plaintiffs' patent. But they cannot be used in their combined state, to produce, by the same ope- ration the same result, which is the distinguishing character- istic of the plaintiffs' machine, without a license from the owners. If, indeed, Rgrkins was not the original inventor, then the plaintiffs' patent is void, without inquiring whether it is too broad or not. But if the jury should be of opinion that he is the original inventor, then there is nothing in this objection. The third objection made to the validity of the patent is, that the specification is defective. The law declares that it must be full, clear, and explicit, so as to distinguish it from all other machines of the same kind, and to enable any person skilled in the art, of which it is a branch, to make and use the same. These expressions are very strong, and seem intended to accommodate the description which the patentee is required to give, to the comprehension of any practical mechanic skilled in the art of whichf the machine is a branch, without taxing his genius or his invent- ive powers. Whether the specification in this case be defective, within this interpretation of the law, must depend upon the evidence of the practical mechanicians who have testified on each side of the question, as well as upon the judgment of the jury. Those examined, on the part of the plaintiffs, have stated that the position of the cutters and dies would necessarily be understood by any practical mechanic acquainted with nail machines, upon examining the specifications - and drawings. This is denied by some of the defendants' witnesses. T But if the jury should be of opinion that the specification is materially defective, the objection will not be sufficient to invalidate the plaintiffs' patent, unless they should also be satisfied that the concealment of the circumstances not Oft. atfoju rU^ ^ (^Hi'^^'r i, "^ ^^"^ PATENT CASES. 129 Gray et al. v. James et al. 1 Peters, C. C. described was * intended to deceive the public.^ [ * 402 ] What degree of evidence ought to be required to prove such fraudulent intention, must rest with the jury to decide. Positive evidence can seldom be expected, nor is it necessary. The law, it is true, requires that such intention should fully appear ; "but still it may be presumed from cir- cumstances entirely to the satisfaction of the jury, which would be sufficient to authorize them to find the fact. As if the parts concealed are so essential and so obviously necessary to be disclosed, that no mechanic skilled in the art could reason- ably be expected to understand the subject, so as, from the description given, to make the machine ; it would.be difficult to impute the omission of the patentee to a fair motive. But this presumption would seem to be much weakened in a case like the present, where so many practical mechanics have testified that they could not hesitate in supplying the omissions in this specification. With these observations, this objection is submitted to the jury. The last objection to the plaintiffs' patent is, that the ma- chine is not a useful one, and that it was abandoned both by the inventor and his assignees. Whether this objection can, in an action for a violation of a patent-right, upon the general issue, be made to the validity of the patent, may well be doubted. If true, it might afford a good reason against granting the patent as well as for repeal" ing it on a scire facias, on the ground of the patent having 1 If the invention be specifically described in the patent, so as to distin- guish it from -what was before known, the patent is good, although the specification does not describe the invention in such full, exact, and clear terms, that a person skilled in the art or science, of which it is a branchy could construct or make the thing invented ; unless such defective descrip- tion or concealment was made with intention to deceive the public. Mason's Kep. 189. 130 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C. issued upon a false suggestion. But the defence is by no means involved in the general issue, which merely denies that the defendants have used the plaintiffs' machine ; [ * 403 ] nor does the 6th * section of the law authorize the defendants to give it in evidence, on the general issue. They are, therefore, not bound to give notice of such a defence under that section, and the consequence would be, that the plaintiffs could not fail to be surprised at the trial, with a defence which they could not, from the general issue, anticipate. As to this, however, no positive opinion is given. But is not such a defence, in the mouth of these defendants, totally irreconcilable with the act which forms the basis of the action ? If the machine be useless, it may fairly be asked why do they use it ? If they give the answer which has been given in this case by their counsel, that it was used with im- provements which make it valuable, may it not be replied that this proves that the original invention was useful ? For if that had not been made by some person, it is most obvious that the improvements could not have been made. If Per- kins, or some other person, had not made the discovery which he did, can any person doubt that the present improved and valuable nail-machinery would be unknown in the world ? How then, can it be said with truth, that the original disco- very was useless? It is contended that this discovery was abandoned. But after it was patented no disuser of it could amount to aban- donment, so as to deprive Perkins or his assignees of their exclusive right to it for fourteen years. There is no doubt but that it went into disuse in consequence of the subsequent improvements ; but this does not prove it to be useless, any more than it impairs the plaintiffs' right to the original dis- covery. If the jury should be in favor of the plaintiffs upon these points, they will find for the plaintiffs the actual damages sus- PATENT CASES. 131 Lowell ». Lewis. 1 Mason. tained by them, by reason of the use by the defendants of the discovery to which they are entitled ; which the Court will treble. Verdict for 750 dollars single damages ; judgment for the treble damages. Francis C. Lowell v. Winslow Lewis. [1 Mason, 182.] The law entitles a party to a patent for a new and useful invention ; and by " useful " is meant, not an invention in all cases superior to the modes now in use for the same purpose, but " useful " in contradistinction to frivolous and mischievous inventions. The patentee must describe in his patent, in what his invention consists, with reasonable certainty, otherwise it is void for ambiguity. If it be for an im- provement in an existing machine, he must, in his patent, distinguish the new from the old, and confine his patent to such parts only as are new ; for if both are mixed up together, and a- patent is taken for the whole, it is void. But if the invention be definitely described in the patent, so as to distinguisb it from what is before known, the patent is good, although the specification does not describe the invention in such full, exact, and clear terms, that a person skilled in the art or science, of which it is a branch, could constructor make the thing * invented ; unless such defective de- [* 183] Bcription or concealment were with intent to deceive the public. As among inventors, he who is first in time, has a prior exclusive right to the patent for the invention. This was an action on the case for the infringement of a patent-right. In the year 1813, Mr. Jacob Perkins obtained a patent for a new and useful invention in the construction of pumps, and afterwards assigned his interest therein to the plaintiff. The defendant became the assignee of a similar patent, taken out in 1817, by a Mr. James Baker; and it was for the constructing and vending pumps under this second patent, that the action was brought. The principal object of both the inventions, was, by dispensing with the box used 132 PATENT CASES. Lowell V. Lewis. 1 Mason. in the common pumps, to obtain a larger water-way. To effect this, Perkins so constructed the valves of his pump, that they completely filled the area of the shaft, and fell upon its sides in the same manner, as by the old construction they did upon the box ; thus leaving the whole of the area, ex- cepting that occupied by the valves themselves, for a water- way. The valves were of a triangular shape, and adapted only to a pump of a square form. This pump seemed to be principally useful, when it was desirable to throw up large quantities of water in a short space of time, and a number of hands could be put to the working of it. The valves of Baker's pump were fitted to a round shaft, and occupied, like the other, the whole of its area ; but in- stead of resting upon the sides of the shaft, were supported by a brass rim, which prevented the friction against the sides of the shaft consequent upon the other construction, and to obviate which, Perkins, since obtaining his patent, had adopted a check bolt. It appeared, that Baker's invention required fewer hands to work it, and could be applied to the common house pump. [ * 184 ] * Webster and G. Sullivan, for the defendant, con- tended that the invention of Perkins was neither new nor useful, and, therefore, not entitled to a patent. That the specification was so loose and insufficient, as not to answer the requisites of the law in this particular, and the patent,, there- fore, void on that account ; and further, that the invention of the defendant was substantially different from that of the plaintiff. Gorham, for the plaintiff, endeavored to show, that the improvement invented by Perkins was entirely new, and highly useful ; and the specification sufficient to answer the requisites of the law, which only required, that it should be PATENT CASES. 133 Lowell V. lewis. 1 Mason. SO particular, as that persons, acquainted' with the construc- tion of the same kind of machines, might be able to follow the description of it. And that, although diiTering in shape and some other unimportant particulars, it was, in principle, the same as that made and recorded by the defendant, under the patent of Baker. A great number of witnesses were produced on both sides to sustain these positions. Stort, J., in summing up the cause to the jury, stated as follows : The present action is brought by the plaintiff for a supposed infringement of a patent-right, granted in 1813 to Mr. Jacob Perkins (from whom the plaintiff claims by assign- ment) for a new and useful improvement in the construction of pumps. The defendant asserts, in the first place, that the invention is neither new nor useful j and, in the next place, that the pumps used by him are not of the same construction as those of Mr. Perkins, but are of a new invention of a Mr. Baker, under whom the defendant claims by assignment. If the plaintiff is entitled to recover, the patent act gives him treble the actual damages sustained by him ; and the rule for damages * is, in this case, to allow the plaintiff treble the [ * 185 ] amount of the profits actually received by the defend- ant, in consequence of his using the plaintiff's invention. The jury are to find the single damages, and it is the proper duty of the Court to treble them, in awarding judgment. And let the damages be estimated as high as they can be, consistently with the rule of law on this subject, if the plaintiff's patent has been violated ; that wrongdoers may not reap the fruits of the labor and genius of other men. To entitle the plaintiff to a verdict, he must establish that his machine is a new and useful invention; and of these facts, his patent is to be considered merely primd facie evi- dence of a very slight nature. He must, in the first place. Vol. I. — p. c. 12 134 PATENT CASES. Lowell V. Lewis. 1 Mason. establish it to be a useful invention ; for the law will not allow the plaintiff to recover, if the invention be of a mischievous or injurious tendency. The defendant, however, has asserted a much more broad and sweeping doctrine ; and one which I feel myself called upon to negative in the most explicit manner. He contends, that it is necessary for the plaintiff to prove that his invention is of general utility ; so that, in fact, for the ordinary purposes of life, it must supersede the pumps in common use ; in short, that it must be, for the public, a better pump than the common pump ; and that unless the plaintiff can establish this position, the law will not give him the benefit of a patent, even though in some peculiar cases his invention might be applied with advantage. I do not so understand the law. The patent^ uses the phrase " useful in- vention " merely incidentally ; it occurs only in the first sec- tion, and there it seems merely descriptive of the subject- matter of the application, or of the conviction of the applicant. The language is, " when any person or persons shall allege, that he or they have invented any new and useful art, [ * 186 ] *machine," &;c., he or they may, on pursuing the direc- tions of the act, obtain a patent. Neither the oath re- quired by the second section, nor the special matter of defence allowed to be given in evidence by the sixth section of the act, contains any such qualification or reference to general utility, to establish the validity of the patent. Nor is it alluded to in the tenth section as a cause, for which the patent may be vacated. To be sure, all the matters of defence or of objection to the patent are not enumerated in these sections ; ^ but if such an one as that now contended for, had been intended, it is scarcely possible to account for its omission. In my judgment the argument is utterly without foundation. All that the law 1 Act of the 21st of February, 1793, ck 11. ^Whittemore v. Cutter, 1 Gallis. 429, 435. Ante, 28, 33. PATENT CASES. 135 Lowell V. Lewis. 1 Mason. requires is, that the invention should not be frivolous, or injuri- ous to the well-being, good policy, or sound morals of society. The word " useful," therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance a new invention to poison pedple, or to promote debauchery, or to facilitate private assassination, is not a patentable inven- tion. But if the invention steers wide of these objections, whether it be more or less useful is a circumstance very ma- terial to the interest of the patentee, but of no importance to the public. If it be not extensively useful, it will silently sink into contempt and disregard. There is no pretence that Mr. Perkins's pump is a mischievous invention ; and if it has been used injuriously to the patentee by the defendant, it certainly does not lie in his mouth to contest its general utility. Indeed the defendant asserts, that Baker's pump is useful in a very eminent degree, and if it be substantially the same as Perkins's, there is an end of the objection ; if it be not substantially the same, then the plaintiff must fail in his action. So that in either view the abstract question seems hardly of any importance in this cause. *The next question is whether Mr. Perkins's pump be [ * 187 ] a new invention. In the present improved slate of me- chanics, this is often a point of intrinsic difficulty. It has been often decided, that a patent cannot be legally obtained for a mere philosophical or abstract theory ; it can only be for such a theory reduced to practice in a particular structure or combi- nation of parts. In short, the patent must be for a specific machine, substantially new in its structure and mode of ope- ration, and not merely changed in form, or in the proportion of its parts. Mr. Perkins's pump is square, and it is agreed that a piston exactly fitted, and used as in his pump, cannot be found described in any scientific treatise, and has never been seen in operation. The butterfly valve, which approaches very near to it, has certainly been in use, and a triangular 136 PATENT CASES. Lowell V. Lewis. 1 Mason. shape was well known in the perimeter valves. But the ex- act structure and position of a valve Jn a square pump, unit- ing the triangular and butterfly forms, is not known to have been used at any time previous to his invention, in the pre- cise manner in which Mr. Perkins uses them. In shoft, the combination of structure which he uses, is alleged by the plaintiff's witnesses to be new ; and if the jury are satisfied that it is substantially different from any thing before known, in its mode of operation, then the plaintiff has surmounted this objection to his title t6 a recovery. An objection of a more general cast (and which might more properly have been considered at the outset of the cause, as it is levelled against the sufficiency of the patent itself) is, that the specification is expressed in such obscure and inaccurate terms, that it does not either definitely state, in what the invention con- sists, or describe the mode of constructing the machine, so as to enable skilful persons to make one. I accede at once to the doctrine of the authority, which has been cited,^ [ * 188 ] that the patentee is bound to * describe, in full and exact terms, in what his invention consists ; and, if it be an improvement only upon an existing machine, he should distinguish what is new and what is old in his specifi- cation, so that it may clearly appear for what the patent is granted. The reason of this principle of law will be manifest upon the slightest examination. A patent is grantable only for a new and useful invention ; and unless it be distinctly stated in what that invention specifically consists, it is impos- sible to say whether it ought to be patented or not; and it is equally difficult to know whether the public infringe upon or violate the exclusive right secured by the patent. The patentee is clearly not entitled to include in his patent the exclusive use of any machinery already known ; and if he iM'Farlane v. Price, 1 Starkie's E. 192. PATENT CASES. 137 Lowell V. Lewis. 1 Mason. does, his patent will be broader than his invention, and con- sequently void. If, therefore, the description in the patent mixes up the old and the new, and does not distinctly ascer- tain for which, in particular, the patent is claimed, it must be void ; since if it covers the viihole, it covers too much, and if not intended to cover the whole, it is impossible for the Court to say what, in particular, is covered as the new invention. The language of the patent act itself is decisive on this point. It requires (■§> 3) that the inventor shall deliver a written description of his invention " in such full, clear, and exact terms, as to distinguish the same from all other things before known ; and in the case of any machine, he shall fully ex- plain the principle, and the several modes in which he has coirtemplated,. the application of that principle or charac- ter, by which it may be distinguished from other inven- tions." It is, however, suflBcient, if what is claimed as new appear with reasonable certainty on the face of the patent, either ex- pressly or by necessary implication. But it ought to appear with reasonable certainty, for it is not to be left to minute references and conjectures, from what was pre- viously * known or unknown ; since the question is [ * 189 ] not, what was before known, but what the patentee claims as new ; and he may, in fact, claim as new and pa- tentable, what has been long used by the public. Whether the invention itself be thus specifically described with reason- able certainty, is a question of law upon the construction of the terms of the patent, of which the specification is a part; and on examining this patent, I at present incline to the opinion, that it is sufficiently described in what the patented invention consists. A question nearly allied to the foregoing, is, whether (sup- posing the invention itself be truly and definitely describe'd in the patent) the specification is in such full, clear, and exact 12* 138 , PATENT CASES. LoTvell o. Lewis. 1 Mason. terras, as not only to distinguish the same from all things be- fore known, but "to enable any person skilled in the art or Science, of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same." This is another requisite of the statute (<5> 3) and it is founded upon the best reasons. The law confers an exclusive patent- right on the inventor of any thing new and useful, as an en- couragement and reward for his ingenuity, and for the ex- pense aiid labor attending the invention. But this monopoly is granted for a limited term only, at the expiration of which the invention becomes the property of the public. Unless, therefore, such a specification was made, as would at all events enable other persons, of competent skill, to construct simBax machines, the a^vamfeige to the public, which tfie act (X)ntem- platesj would be entirely lost, and its principal object would be defeated. It is not necessary, however, that the specifica- tion should contain an explanation, level with the capacities of every person (which would, perhapB, be impossible) ; but, in the language of the act, it should be expressed in such full, clear, and exact terms, that a person skilled in the art or science, of which it is a branch, would be enabled to con- struct the patented invention. By ihe common law, [ * 190 ] if *any thing material to the construction of the thinginvented be omitted or concealed in the spe- cification, or more be inserted or added than is necessary to produce the required effect, the patent is void. This doctrine of the common law our patent act has (whether wisely, ad- mits of very serious doubts) materially altered ; for it does not avoid the patent in such case, unless the " concealment or addition shall fully appear to have been made for the pur- pose of deceiving the public;" (■§> 6.) Yet certainly the pub- lic may be as seriously injured by a materially defectivie spe- cification resulting from mere accident, as if it resulted hom a fraudulent design. Our law, however, is as I have staited ; PATENT €ASES. 139 LoweQ V, liBwis. 1 Mason. and the question here is, and it is a question of fact, whether the specification be so clear and full, that a pump-maker, of ordinary skill, could, from the terms of the specification, be able to construct one upon the plan of Mr. Perkins. The principal objection to the specification in this case is, that it does not describe the check bolt, or the form, or use, or size of the leather, or the mode of forming its edge and fixing it upon the valve, or the exact position and elevation of the valve. [Here the Judge read the specification, and com- mented on the evidence applicable to these objections;"" and left it to the jury to say, upon the facts, whether the specifica- tion was materially defective, and, if so, whether it was by design to deceive the public] Another (and, under the circumstances of this case, proba- bly, the most material) inquiry is, whether the defendant has violated the patent-right of the plaintiff; and that depends upon the fact, whether the pumps of Mr. Perkins and of Mr. Baker are substantially the same invention. I say substan- tially the same invention, because a mere change of the form or proportions of any machine cannot per se be deemed a new invention. If they are the same invention, then Mr. Perkins, being clearly the first inventor, is entitled exclusively to the patent-right, although Mr, Baker may *have [ * 191 ] been also an original inventor, for the law gives the •right, as among inventors, to him who is first in time. The manner in which Mr. Perkins's invention is, in his specification, proposed to be used, is in a square pump, with triangular valves, connected in the centre, and resting with- . out any box on the sides of the pump, at such an angle as exactly to fit the foim- sides. The pump of Mr, Baker, on the other hand, is fitted only for a circular tube, with butter- fly valves of an oval shape, connected in the centre, and rest- ing, not on the sides of the pump, but on a metal rim, at a given angle, so tha;t the rim may not be exactly in contact 140 PATENT CASES. Gray et al. v. James et aX. 1 Peters, C. C. with the sides, but the valves may be. If, from the whole evidence, the jury is satisfied that these differences are mere changes of form, without any material alteration in real struc- ture, then the plaintiff is entitled to recover ; if they are sub- stantially different combinations of mechanical parts to effect the same purposes, then the defendant is entitled to a verdict. This is a question of fact, which I leave entirely to the sound judgment of the jury. Verdict for the defendant. Gray and Osgood v. James et al. [1 Peters, C. C. 476.] If a machine, In the state in which it was first made, was so far inferior to other machines used for the same purpose, as that it was of no intrinsic value, yet if another person superadd^ to the invention, and remove its defects, the inventor of the improvements derives no right to the original machine from ^having made it of value by addition to it. The declaration ought always to show a title in the plaintiff, and that with sufficient certainty, and to set forth all the matters which are the essence of the action ; without these, the plaintiff fails to show a right in point of law to ask the Court for judgment in hia favor. If the plaintiff's title depends upon the performance of certain acts, he must affirm the performance of those acts. "What defects are cured by verdict 1 Where the declaration describes the plaintiff's improvement in the words of the patent, it is not necessary that the description of the machine, as stated in the specification, should be set forth. If the defendant require the speci- fication in his defence, he may have it placed on the record by asking oyer of it. Two rules were obtained, at the last term, to show cause why a new trial should not be awarded, and why the judg- ment should not be arrested. Washington, J., delivered the opinion of the Court. In PATENT CASES. 141 Gray et al. v. James ct al. 1 Peters, C. C. support of the first rule, the following reasons were assigned : First. That the verdict is against evidence and against the charge of the Court, inasmuch as it was proved to the jury that Perkins was not the original inventor of the Boachine, for the use of which by the defendants, this action was brought; and, secondly, because the damages were excessive. ' First. It is contended, that the priority of invention claimed by Perkins was disproved at the trial by the patents to Chandler, Garretson, Bigelow, Spence, and Read, all granted prior to the alleged discovery of Perkins, for machines, which it is insisted are in principle substantially the same as Perkins's. * As Chandler's machine has been selected by the [ * 477 ] defendants' counsel, as bearing the strongest resem- blance to that which was the subject of this action, the obser- vations of the Court will be principally directed to that ma- chine. This machine consists of a solid piece of iron, into which the under steel cutter is fixed. An iron lever, working in a steel socket at one end, in which lever the upper cutter is^ fixed, and a spring fastened to it to throw it up after it is forced down. The upper lever has also a side cutter screwed to it, for cutting off the rods at the same time that the die cuts and shapes the nail. The heading is formed by concave dies fixed in two side or horizontal levers, in the ends of which are mortices to receive a tenon fitted on the centre bolt, held firm by a pin ; — springs to each of these levers, to throw them back after heading the nail. The lever containing the upper cutter, is forced down by an axis in a shaft, cutting the nails lengthwise of the rod, whilst hot, on the under cutter which holds them fast, while the side levers force up the heading dies, which action is by means of secondary levers, or by the axis of a wheel, during the revolution of which the cutting and heading levers are disengaged, at the same period the nails 142 PATENT CASES. Gray et al. v. James et al. 1 Peters, C. C. are pushed out by springs, and the rods are pushed forward by hand in constant succession. Let us now compare this machine, as to its competent parts and mode of operating, with Perkins's machine. The parts of the former are, as has been stated, cutters fixed in a lever and a fixed piece of iron. Concave dies fixed in side levers for forming the head of the nail, with springs in both sets of levers to open them after they have performed their parts, and other springs to extricate the nails. Secondary levers, or a wheel which, in its revolutions, disengages at the same moment the cutting and heading levers. The manner in which it operates, is by forcing down the upper lever so as to bring the cutlers into contact, and thus to cut and shape the nail. By the pressure of the [* 478 ] horizontal levers * containing the concave dies, against the sides of the cutters when closed, the head is formed, which action is performed by means of secondary levers, or by the axis of a wheel during its revolu- tions ; and the nails, when thus completed, are forced out by springs. The parts of Perkins's machine are the jaws of a vice, the one fixed and the other movable, with cutters fixed in them, and a heading die in the movable jaw ; a lever, with a toggle joint at the end of it, to force the cutters together, and also to force up the heading die at the same pressure of the lever. The manner in which it operates is by the toggle joint, which, by the pressure of the lever, forces the cutters together, so as to cut off the nail, whilst the lever, by an instantaneous, but successive motion, forces up the heading die to complete the nail ; the whole operation being carried on during the same pressure of the lever. The two machines agree in the following particulars : Each of them have cutters for separating the nail from the rod, and dies for forming the heads by pressure. Here the similitude PATENT CASES. 143 Gray et al. v. James et al. 1 Peters, C. C. ceases. The one has one lever, which is the great agent, by the power of which, and at the same motion, the whole ope- ration is performed. The other has a lever for cutting, and levers for heading, which are put into operation by another set of levers, or by the axes of a wheel. The latter requires, as appears by the specification, the aid of a machine which the other does not, that is, a blacksmith's furnace to heat the iron. This is certainly a very material difference, and we must suppose it to be indispensable, and without which the operation could not proceed. But the important difference is in the mode of operating. Perkins's machine makes the nail by one and the same press- ure of the lever ; Chandler's, so far as the Court can perceive, effects nothing more by the pressure of the lever than the cutting of the nail rod ; but by what power the side or hori- zontal levers, which form the head, are moved, does not appear, otherwise *than as it is stated in the [*4'79] specification, to be by the action of what is called secondary levers, or the axes of a wheel during its revolutions. But by what power are these secondary levers or wheel worked ? This is not stated ; and it is most obvious that it cannot be by the downward pressure of the first lever ; and therefore, it is reasonable to conclude that some other power is used to act upon the secondary levers or on the wheel. In short, the Court finds it impossible to discover in what man- ner the complicated parts of this machine are worked, beyond the pressure of the lever which cuts the nail. If they act by means of some other power, it certainly cannot be pretended that the two machines are substantially the same, and operate in the same manner to produce the same result. They are materially unlike in their parts, in their structure, and in their operation. The one operates upon cold iron, and the other, as stated in the specification, requires the aid of a furnace as an appendage. The one operates by means of a single power ; 144 PATENT CASES. &ca,y et al. v. James et al. 1 Feieis, C. C. the other by the aid of more than one power. Or, if this be not so, it behooves the defendants clearly to show the contrary before the Court can listen to a motion to set aside the ver- dict, on the ground that the two machines are substantially alike in principle. From the iiiew which the Court has taken of the other machines, and so far as we have found it possible to compre- hend the numerous and complicated parts of which they are composed, more especially Garretson's and Read's, we are of opinion that the least exceptionable of them are open to the objections stated to Chandler's. The parts are different, the powers are either different, or they are differently applied, and the modes of operating are dissimilar. In some, perhaps in all, the cutting and heading are distinct operations. In two of them, the head of the nail is formed by concussion instead of pressure. In one of them, for want of the toggle joint, or something equivalent to it, the principle of gravitatioil is resorted to, and the vices are opened by weights. As to Rodgers's machine it need only be observed [ * 480 ] that the * jury were left to decide as to the exist- ence, the form, and principles of it, upon the im- perfect account given of it by Howard, the only witness. No model, and no particular specification, was given descriptive of the parts of that machine, their combination, and the mode of operating. It appears, from the verdict, that the jury were not satisfied with the evidence, either as to the existence of such a machine, or as to its resemblance to Perkins's. It would ill become the Court to say that the jury decided this point improperly, even if the inclination of our minds had been different, which it certainly was not. The next reason assigned for a new trial is, that the dama- ~^ges given by the jury are excessive. I do not understand the objection to be to the amount, provided the plaintiff was enti- tled to any thing beyond nominal damages. The argument PATENT CASES. 145 Gray et al. v. James et al. 1 Peters, C. C. is, that Perkins's machine was acknowledged by himself tc^ be worthless, and that it was, in fact, thrown away as a useless thing, and was so considered by those who knew any thing of it ; consequently, his assignees sustained no damage by the use which the defendant made of it. Now the premises may all be admitted, and yet the argu- ment terminate in what is called a non sequitur. Ore in the bowels of the earth would be of no value to the" owner of the land, were it not that other persons can make it valuable by the employment of skill, labor, and money, to render it so. It is not the intrinsic value of the thing itself, but its capacity to be converted into something which may be useful, that gives it value. Admit, for the sake of "the arguiqent, that Perkins's machine, in the form in which it came from his hands, was so far inferior to the common nail machines, then ip use, as to deprive it of all intrinsic value ; still, if another person can superadd to that invention something which will remove all its defects, and render it useful, it immediately becomes valuable; not on account of its own qualities, but because of its capacity to receive the improvement, and with its aid to become useful. The original discovery and the im- provement, became articles of traffic between the * two discoverers, as soon as the improvement was [ * 481 ] made which it was their mutual interest to give value to. I§, the defendants' improved machine valuable ? This is admitted. But why is it so ? Because he has availed himself of Perkins's original discovery on which to ingraft his own, and without which his own would have been useless to himself and to the world. But how did he possess himself of Perkins's discovery ? By an unlawful invasion of property to which Perkins was exclusively entitled. Had he, as he was bound to do, sought to acquire a title to this property by con- tract, is it to be believed that it would have been treated by the parties as of no value ? It is obvious that it would not. VOL. I. — p. c. 13 146 PATENT CASES. Gray et al. o. James et al. 1 Peters, C. C. This course of reasoning is intended to show that when it was stated by the Court to the jury that the charge of worth- lessness against Perkins's machine came with a bad grace from the defendant, who was making so profitable a use of it, it was no answer to say that it is tiseful merely on account of the improvem^t which others had made to it ; because, if it was useful in that respect, and without the original discovery the improvement could not have been made, it followed that the Original discovery was useful and valuable. But the fact is, that Perkins's machine was proved at the trial to possess intrinsic value on the single ground of a saving of labor. Whether the value so proved justified the jury in finding the damages which they did, is a question of which that body were the proper judges upon the evidence laid before them, and the Court see no reason to find fault with their decision. The motion in arrest of judgment is grounded upon certain alleged defects in the declaration. The declaration states that Jacob Perkins having invented a new and useful improvement in the manner of manufactur- ing nails, &c., which had not been known or used before his application, &c., (and so averring a compKance with all the requisitions of the law previous to obtaining the [ * 482 ] patent, and stating the *as8ignment of his right to Guppy and Armstrong, granting to them the full and exclusive right and liberty of making, &c., the said im- provement, &c.,) then sets forth the assignment of Guppy and Armstrong to the plaintiffs ; and the breach is that the defendants, without the consent of the plaintiffs first had in writing, on a certain day and for a long time befSre and con- tinually since, had used in numerous machines the improve- ment aforesaid. It is contended that the et cetera in the description of the discovery renders the patent too vague, and that the material PATENT CASES. 147 Gray et at. v. Ja^aes et al. 1 Peters, C. C. , parts of the specificatioB ought to have been set out in the declaration, so as to leave no doubt as to the particular disccn very fox which the patent was granted, and for the violation of which this suit is brought. It is further objected that the breach is too generally stated* It may be laid down as a general rule, that a declaration ought always to show a title in the plaintiff, and that with convenient certainty. It ought to state all matters that are of the essence of the action, without which the plaintiff fails to show a right in point of law to ask for the judgment of the Court in his favor. If his title depends upon the performance of certain acts, he must affirm the performance of those acts. If enough is stated to show title in the plaintiff, and with sufficient certainty to enable the Court to give judgment, but with less certainty than the case admitted of, and which for the purpose of notice to the adverse party or otherwise, ought to have been stated, the defect is cured by the verdict. The Court will presume that all such omissions were supplied, and obscurities explained, at the trial, by the evidence given to the jury. In this case, the plaintiffs' title is founded on a patent to Guppy and Armstrong, granting them an exclusive right to Perkins's invention of a new and useful improvement in the manner of manufacturing nails, &c., in the words of the declaration. The declaration contains all the necessary alle- gations to show that the patent was regularly granted, and the patent is designated by the terms which itself uses. It is true, that the * specification is referred [ * 483 ] to in the patent as part thereof, but that is merely descriptive of the invention, and not of the patent. It is a matter of evidence to be used at the trial, and if a sight of it be necessary to the defence, the defendant may have it placed on the record by asking oyer of it. The Court are of opinion, that the patent is described with 148 PATENT CASES. Bedford v. Hunt et al. 1 Mason. sufficient certainty even upon a demurrer, and that the breach, if it be too general in not stating the number of machines used by the defendants, (a point not necessary to be decided,) is cured by the verdict, since it is fairly to be presumed that proof of that fact was given to the jury. ■- Both rules tjjerefore must be discharged. John Bedford v. William Hunt et al. [I Mason, 302.] By nsefal invention, in the Patent Act of the "United States, is meant, an in- vention which may be applied to a beneficial use in society, in contradis- tinction to an invention injurious to the moral health or good order of society. It is of no consequence, whether its utility be general, or limited to a few cases ; and it is not necessary to establish that the invention is of such gene- ral utility as to supersede all other Inventions now in practice to accomplish the same purpose. The first inventor who has put the invention in practice, and he only, is entitled to a patent. Every subsequent patentee, although an original inventor, may be defeated of his patent-right, upon proof of such prior invention put in actual use. The law in such case adopts the rule, qui prior est in tempore, potior est in jure. In order to defeat a subsequent patent, it is not necessary to prove, that the invention has been previously in general use, and gene- rally known. It is sufficient, if the same invention has been previously known and put in actual use, however limited the use, or the knowledge of the invention, might have been. This was an action on the case for the infringement of a patent-right. Bedford, in the year 1806, obtained a patent for a new and useful improvement in the making of boots, bootees, and shoes. He afterwards sold out to different indi- viduals the right to use this patent in particular towns. The real plaintiff in this case was William Chadwick, [ * 303 ] to * whom such a right had been sold by Bedford ; and within whose limits the defendant had manu- factured boots, &c., after the manner described in the pa- PATENT CASES. 149 Bedford v. Hant et al. 1 Mason. tent, and vended the same, without having purchased, either ' of the plaintiff or of Chadwick, the right so to do. The general issue was pleaded, and under it the defendant en- deavored to prove, that the improvement, for which the patent was obtained, was not new ; and produced evidence to show, that shoes of the same description had been made inan;^ years before. It was also contended that the invention was not useful ; but upon experience had been found not to answer the pur- pose expected, and that this mode of making boots and shoes had been of late much laid aside. The case was argued by Webster and Thurston for the plaintiff, and by Blake and Orne for the defendants. In the course of the argument, the following questions of law were made to the Court. 1st. What degree of useful- ness in an invention or improvement the law required, in order to support a patent ? 2dly. Into how general use a prior inventor must have introduced an invention or improve- ment, in order to render void the privileges of a subsequent patentee ? On these points the jury were instructed, in the daarge, as follows : Stort, J. (after stating the facts.) No person is entitled to a patent under the Act of Congress, unless he has invented some new and useful art, machine, manufacture, or composi- tion of matter, not known or used before. By useful invention, in the statute, is meant such a one as may be applied to some beneficial use in society, in contra-' distinction to an invention, which is injurious to the morals, the health, or the good order of society. It is not necessary to establish, that the invention is of such general utility, as to supersede all other inventions now in practice to accomplish the same purpose. It is sufficient, * [ * 304 ] that it has no noxious or mischievous tendency ; 13* 150 PATENT CASES, Bedford v. Hunt et al. 1 Mason. that it may be applied to practical uses, and that so far as it is applied, it is salutary. If its practical utility be very limited, it will follow that it will be of little or no profit to the in- ventor ; and if it be trifling, it will sink into utter neglect. The law, however, does not look to the degree of utility ; it simply require^ that it shall be capable of use, and that the use be such as sound morals and policy do not discounte- nance or prohibit. In the present case, there cannot be the slightest doubt, upon the evidence, that the patent is for a useful invention, in a very large sense. It is not sufRcient, however, that the invention is useful ; it must also be new. The statute declares it a good defence to an action for the infringement of the patent-right that the thing secured by the patent was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery of the patentee. The first inventor, who has put the invention in practice, and he only, is entitled to a patent. Every subse- quent patentee, although an original inventor, may be de- feated of his patent-right upon proof of such prior invention being put into use. The law in such case cannot give the whole patent-right to each inventor, even if each be equally entitled to the merit of being an original and independent inventor; and it therefore adopts the maxim, qui prior est in tempore, potior est in jure. And, to the present defendant, it is perfectly indifferent, whether the first inventor has taken out a patent, or has dedicated the invention to the public, or not ; for he may stand upon the defence, that the plaintiff is not the first inventor who put the invention in use. It has been argued by the plaintiff, that the defence set up by the statute does not apply, except in cases where the in- vention, or (as the statute expresses it) the thing originally discovered, has been before generally known, and [ * 305 ] in general use, among persons engaged in the art * PATENT CASES. 151 Bedford v. Hant et al. 1 Mason. or profession, to which it properly belongs. But I do not so understand the language of the statute. To entitle a person to a patent as a first inventor, it is certainly not necessary for him to establish that he has put his invention into general use, or that he has made it generally known to artisans engaged in the same business. And yet, upon the argument we are considering, unless it were so generally known and in use, he would be defeated by a patentee, who was a subsequent independent inventor. The intent of the statute was to guard against defeating patents by the setting up of a prior invention, which had never been reduced to practice. If it were the mere specu- lation of a philosopher or a mechanician, which had never been tried by the test of experience, and never put into actual operation by him, the law would not deprive a subse- quent inventor, who had employed his labor and his talents in putting it into practice, of the reward due to his ingenuity and enterprise. But if the first inventor reduced his theory to practice, and put his machine or other invention into use, the law never could intend, that the greater or less use, in which it might b^, or the more or less widely the knowledge of its existence might circulate, should constitute the crite- rion by which to decide upon the validity of any subsequent patent for the same invention. I hold it, therefore, to be the true interpretation of this part of the statute, that any pa- tent may be defeated by showing, that the thing secured by the patent had been discovered and put in actual use prior to the discovery of the patentee, however limited the use or the knowledge of the prior discovery might have been. And in the present case, I have little difficulty in holding, that the prior use is sufficiently established, if the testimony is be- lieved ; and that the only point of doubt is, as to the identity or diversity of the inventions. Verdict for the defendants. 152 PATENT CASES. Pettibone v. Derringer. 4 Wash. Pettibone ii. Deeeingeh. [4 Wash. 215.] An amhiguity in a patent and specification may be explained by the affidavit annexed to the sptipification. Where a deposition taken de bene esse, is offered in evidence, the party who offers it must prove that he has used due diligence to procure the attendance of the witness. It is no objection to reading the deposition of a witness taken under a rule of court, who lives in another State more than one hundred miles from the place of trial, that he had been in the city during the session of the court, the fact not being known to the party. The letters of the plaintiff to the Secretary of State, containing applications for a patent, aud specifications, certified under the seal of that department as papers remaining in that office, were properly admissible in evidence. I)epositions taken without a commissioner or rule of court, in the State of New York, more than one hundred miles from Philadelphia, but conforming in all respects to the thirtieth section of the Judiciary Act of 1789, may be lead in evidence. A deposition! taken under the thirtieth section ef the Judiciary Act of 1789, cannot be read in evidence, unless the judge certifies that it was reduced to writing, either by himself, or by the witness in his presence. This was an action on the case for an infringement of the plaintiff's patent for " a new and useful improvement in bor- ing muskets, pistols, and rifles, by an auger called the spiral groove, or twisted screw auger." The specification states that this auger consists in the man- ner of making it, or the particular form or construction of the same, as also the mode of application. It then proceeds to state the way in which the auger is made, and that the difference in the form of this improved auger from the com- mon screw auger used for wood is, that the point or cutter is next to the shank, and the auger is less twisted. That the shank is long enough to put through the barrel and fasten to the socket, and the machine that moves or turns the auger. The auger revolves about once per second, and the points or PATENT CASES. 153 Pettibone «. Derringer. 4 Wash. cutters are pressed against the iron that is to be bored from the inside of the barrel, by the force or application of one or more endless screws that revolve in a rack of cogs attached to the carriage, on which the barrels are fastened. The affidavit annexed to the specification states, that the patentee verily believes himself to be the first inventor of the improved method of making augers or bits, for boring muskets, pistols, and rifle barrels, as above specified and described. The defendant's plea was the general issue, and he gave notice to the plaintiff, that " he should give in evidence the following matter to prove that the thing secured by patent was not originally discovered *by the [*216] plaintiff, but had been in use anterior to the supposed discovery, or that he had surreptitiously obtained a patent for the discovery of another person." The notice then proceeds to state the persons by whom the screw auger and the mode of application had been discovered, and the places where they had been used anterior to the plaintiff's discovery. The plaintiflf gave in evidence a letter from himself to the Secretary of State, dated the 21st of January, 1799, and an- nexed a specification of an improvement in boring muskets, &c., agreeing in every material circumstance with that an- nexed to his present patent, except that he states the auger used to be one called the nut bit, invented by M'Cormick. In this letter he claims to be the inventor of the improvement, and claims a patent for the same. He also gave in evidence a similar application to the Secre- tary of State, dated the 12th of August, 1799, accompanied by a similar specification, except that he speaks of and describes the twisted auger as his invention. Both specifications were accompanied by the usual affida- vits. The tendency of the plaintiff's testimony was to prove that 154 PATENT CASES. Pettibone v. Derringer. 4 Wash. he was the first inventor of the twisted auger for boring musket, pistol, and rifle barrels; that he was also the in- ventor of the iBiode of drawing, instead of pushing the auger through the barrel ; and of the application of the end- less screws to produce that effect ; and also of the superiority of the plaintiflf's invention to former modes of boring gun- barrels. The defendant examined a number of witnesses to prove that the plaintiff was not the inventor of the twisted screw auger, nor of the mode of drawing the auger through the barrel, but that both had been invented and used before the plaintiff pretended to have invented either; also, that the difference between M'Cormick's auger, which the plaintiff acknowledged to have been in use before January, 1 799, and the screw auger of which he claimed to be the inventor in August, 1799, was not in principle, but in form only. Also, that M'Cormick's auger was preferable to the plaintiff's, and was more generally in use in the public gun manufac- tories. Charge. Washington, J. The first question is, what is the discovery for which the plaintiff has obtained a patent ? He contends that it is for the twisted auger, made, formedf and used, in the manner set forth in the spedficaticm. The defendant insists that it is confined to the twisted auger, andt to no more. These cases are always embarrassing, because the originality of the patentee's discovery is almost always in issue, which involves not only the construction of the patent^ taken in connection with the specification, which forms a part of it, but also a comparison between the invention for which the patent is granted, and that which is asserted to have been made prior to it. Both of these difficulties occur in the pre- sent case. [ * 217 ] * The patent recites, that the applicant had repre- PATENT CASES. 155 Pettibone v. Derringer. 4 Wash. sented himself to be the inventor of a new and useful improve- ment in boring muskets, &c.,by an auger called the spiral groove, or twisted screw auger. These expressions are perfectly equivo- cal, and may apply as well to an auger constructed for boring muskets, confining the improvement to the auger alone, or to that instrument, and the particular manner of using it, after- wards pointed out in the specification. This latter instrument describes the manner of making the auger, its form, and how it may be used. But taken in con- nection with the patent, it does not necessarily follow that the manner of using the machine forms a part of the discovery j because, if the plaintiff was in fact the inventor of the auger only, and meant to claim no more, it was still proper that he should, under the requisitions of the third section of the laWj describe in his specification the manner of using the auger, with the principle arid several modes in which the application of that principle was contemplated by the inventor. Whether the want of an affidavit will avoid the patent, or will in all cases confine the patent to the invention stated in it, as the defendant's counsel have contended, are questions which need not be decided in this cause. But there can be no doubt, that where the construcstion of the patent and specification, as to the subject of the grant, is doubtful ; the affidavit, if more precise, may be resorted to to explain the ambiguity. It would seem to be particularly proper to do so for restraining general expressions in the specification ; as the oath required to be taken by the A«t of Congress is, that the inventor does verily believe that he is the true inventor of the art, machine, or im- provement for which he solicits a patent. These observations are strikingly applicable to this patent, which, as explained by the specification, contains no specific assertion that the plaintiiT was the inventor of the peculiar manner of using the auger as described in the latter instru- ment, and the affidavit confines the invention to the improved 156 PATENT CASES. Pettibone v. Derringer. 4 Wash. method of making augers or bits, for boring musket barrels, &c., " as above specified and described." These latter expressions obviously refer to the method of making augers for boring muskets, which is distinctly de- scribed in the specification, and not " to the manner of using the auger," which, though described, has nothing to do with the method of'making it. In the case of Evans v. Eaton, the Supreme Court con- strued the patent to amount to a grant to Evans, not only of an exclusive right to the entire improvrment in the manufac- ture of flour, but to the improvement in the separate instru- ments employed in producing the general result. But this construction was formed upon, the supposed intention of the parties to the patent, drawn not only from certain expressions in the specification, and also in the afiidavit, but from the private Act of Congress, passed for the relief of Oliver Evans. In the specification, the patentee, after describing the hopper- boy, the particular machine in controversy, and the other four machines employed in the manufacture of flour, [ * 218 ] adds, that " he *claims, as his invention, the pecu- liar properties or principles which this machine (the hopper-boy) possesses, of spreading, turning, and gather- ing the meal at one operation ; and the affidavit states, " that he verily believes he is the true and original, inventor of the improvements herein above specified, for which he solidts a patent." Upon the whole, we are of opinion that the plaintiff's pa- tent extends only to the auger described in the specification, and not to the method of using it. 2. The next question is, was the plaintiff the inventor of this instrument, as described in the specification ? We have the authority of the plaintiff himself for saying that he made the discovery of that instrument in August, 1799 ; because, in his application to the State department on PATENT CASES. 157 Pettibone v. Derringer. 4 Wash. the 12th of that month, he so alleges the fact. It appears by a letter from Mr. Ames, the manager of the Springfield works, dated in September, 1799, that he had just received from the plaintiff one of these augers, and in that letter he gives to the plaintiff the merit of the discovery. Three witnesses, one of whom is this Mr. Ames, have sworn, that this auger was introduced at the Springfield works by a Mr. Holmes, about six months prior to the period when a. similar one was sent there by the plaintiff. That it was much approved of, and that Holmes not only claimed but was considered at that place to be the inventor. If this evidence is believed by the jury, it is conclusive against the plaintiff. But if the jury should be of a different opinion, then, the next question will be, was the plaintiff entitled to a patent for his improvement? or, in other words, is the twisted auger, of which he claims to be the inventor, an improvement in the principle, or merely a change in the form and proportions of the auger used for boring gunbarrels prior to August, 1799 ? That the auger, styled the nut bit, called M'Cormick's, was in use previous to the year 1799, was acknowledged by the plaintiff in his application to the State department in January, 1799, and was the auger which the plaintiff then contemplated using. This'fact is corroborated by the testimony of three witnesses, who state that M'Cormick's auger was used at the Springfield works in 1797 and 1798, and was drawn, not pushed, through the barrel. Two other witnesses have stated that it was so used at M'Cormick's works, in the summer or autumn of 1798, and a sixth witness declares that it was so used at a still earlier period at Brian's works. On the other side, there are two witnesses who state that the method of drawing the auger through the barrel was not known or practised until the discovery was made by the plaintiff. If the defendant's witnesses are believed, then the plaintiff is deprived, not only of the merit of having invented VOL. I. — p. c. 14 158 PATENT CASES. Pettibone v. Derringer. 4 Wash. the twisted screw auger, but the manner of using it, by draw- ing instead of forcing it through the barrel ; and then nothing win remain to the plaintiff, of all that he has stated in his specification, but the application of the endless screw to move the carriage on which the barrel is placed, instead [ * 219 ] of *tlie long screw, or the lever, or weights, which were used by M'Cormick. M'Cormick's auger or nut bit, as it is called, is made by filing out the grooves from a round solid piece of steel, having the cutters towards the shaft, and is drawn through the barrel. The twisted auger claimed by the plaintiff is made by twist- ing a plate of steel, so as to form the grooves, having the cut- ters next the shaft, and it is drawn through the barrel. That the twisted auger is a great improvement on the old method of boring gunbarrels is undoubted ; but whether it is so of M'Comick's auger, you will judge from the evidence. The question for your determination is, whether it is an improve- ment on the principle of M'Cormick's auger, or whether it is merely a change in the form or proportions of that auger. If only the latter, then it was not such an improvement as the plaintiff was entitled to secure to himself by a patent. . The last question is, whether the defendant has invaded the plaintiff's patent ? This you must decide upon the evi- dence. [The following questions upon evidence were decided upon the trial. 1. That where a deposition taken de bene esse is offered in evidence, the party offering it must prove that he had used due diligence to procure the attendance of the witness, and particularly that he had made inquiries at the last place of abode of the witness, in order to have him served with a subpoena. 2. That it is no objection to reading the deposition of a PATENT CASES. 159 Cutting et al. v. Myers. 4 Wash. witness who lives in another State, more than one hundred miles from the city, taken under a rule of this court, that he had been in Philadelphia during the sitting of this court, where it appeared that the fact of the witness being in the city was unknown to the party at whose instance the deposition was taken. Whether, if the party had known that the wit- ness was in the city, the case would have been altered, was not decided. 3. That the letters of the plaintiff to the Secretary of State of the 31st January and 12th August, 1799, containing ap- plications for a patent, and specifications certified under the seal of that department, as papers remaining in that office, were properly admissible in evidence. See 2 Bioren, 52. 4. That depositions taken without a commission, or rule of court, in the State of New York, more than one hundred miles from Philadelphia, but conforming in all respects to the thirtieth section of the Judicial Act of the 24th September, 1789, might be read in evidence. 5. That a deposition taken under the thirtieth section of the judicial act cannot be read, unless the judge certifies that it was reduced to writing, either by himself, or by the witness in his presence.] Cutting and Others, Exectjtoks of Fulton, v, Myeks. [4 Wash. 220.] The declaration in a patent cause need not state that the stages preliminary to the issuing of a patent were observed. What is required to be stated in such a declaration. The declaration must set forth the attestation of the President of the United States, and that the patent was delivered ; and the want of a statement of either is a cause for general demurrer. It is no cause of demurrer to such a declaration that neither the patent, nor the declaration states in what the improvement consists. If the defendant • wants the specification inserted on the record, he must crave oyer of it. In what manner and form the breach in actions on patents must be laid. 160 PATENT CASES. Cutting et al. v. Myers. 4 Wash. Washington, J. This is an action for the infringement of a patent-right. The declaration contains four counts, to two of which, namely, the second and fourth, the defendant has filed special demurrers. The decision upon either of the counts will decide the fate of the other. The second count states, that by certain letters-patent, made out in due form of law, under the seal and in the name of the United States, dated, &c., which said letters-patent the plaintiffs bring into court, whose date, &c., there was granted to the said Robert Fulton, his heirs, &c., for the term of fourteen years from the said date, the full and exclusive right and liberty of making, con- structing, using, and vending to others to be used, a new and useful improvement in steamboats ; he, the said Robert, being a citizen of the United States, and the true and original in- ventor of the said improvement, &c. The demurrer states for cause, that it is not stated, nor alleged, nor does it appear by the said count, in what the said new and useful improve- ment in steamboats consisted, and that the said count is alto- gether vague, &c. The objections made by the defendant's counsel to this count, are, 1. That it does not sufficiently state that all the steps which the inventor is required by the act of congress to take to entitle him to a patent were observed ; that is to say, that a petition was presented to the Secretary of State ; that the attorney-general's certificate as to the form of the patent was obtained ; that the patent was signed by the President ; or that the conditions prescribed in the third section of the law were complied with. In support of this objection it is contended, that the decla- ration ought to show a title in the plaintiff, and that every thing which is of the essence of the action, was performed by the patentee. That a performance of all the acts required by the first and third sections of the law, are of the essence of the plaintiff's title, and therefore ought to have been precisely averred. PATENT CASES. 161 Cutting et al. v. Myers. 4 Wash. * The validity of this argument will be best [* 221] tested by an attention to the first and third sections of the Act of Congress of the 21st of February, 1793. These sections describe, 1. Who is entitled to the exclu- sive property in any new and useful art, machine, manufac- ture, or composition of matter. 2. They prescribe what shall be the essential parts of the instrument granting such property. And lastly, what the petitioner must do before he can receive a patent. As to the first, to entitle any person to this exclusive right, he must be the inventor of the thing in which he claims an exclusive property, and must allege himself to be such. As to the second, the letters-patent must be made out in the name, and under the seal of the United States, and bear teste by the President of the United States, reciting the alle- gations and suggestions of the petition, giving a short descrip- tion of the invention, and granting to the petitioner, for a certain term, the full and exclusive right and liberty of mak- ing, constructing, using, and vending to others to be used, the said invention. Lastly, to entitle the inventor to receive this patent, he is required to present a petition to the Secretary of State, signi- fying his desire to obtain an exclusive property in his inven- tion, and praying that a patent may be granted therefor. He is also required to swear or affirm that he is the true inventor or discoverer of the art, machine, or improvement, for which he solicits a patent, and further, to make a full disclosure of his invention in the manner prescribed in the third section of the act. The principle contended for by the defendant's counsel, that the declaration must show a title in the plaintiff, is incon- trovertible. But on what does the title of the plaintiff to the exclusive property of an invention rest ? The answer is, on a grant of such exclusive property by the United States ; and 14* 162 PATENT CASES. Cutting et al. v. Myers. 4 Wash. if the declaration avers that such grant, in the form prescribed by law, was issued, it shows the very title on which the action is founded, and on which, primd facie, the plaintiff is enti- tled to recover. It is not necessary for him to aver that those preliminary steps were taken, without which a valid grant could not issue^ because the Court will presume in favor of the grant, that every thing was rightly and solemnly done which the law required, in order to authorize the issuing of the grant. If the pre-requisites to the issuing of the grant were not observed, then the allegation in the declaration, that the patent granted to R. F. the full and exclusive right and liberty of making, &c., his improvement, is not true. As well might it be contended, that in pleading a grant of land, it is necessary to aver the entry, survey, and all the other steps required by law to be taken before a valid grant can issue. They are primd facie implied in the alle- gation that the grant was duly made in the manner prescribed by law. But the Court is of opinion, that within these ['* 222 ] principles there are * two objections to these counts which are fatal, and which the defendant is entitled to the benefit of, upon a general demurrer. The first is, that they contain no allegation that a patent did issue to R. F. ; or secondly, that it was tested by the President. As to the first, the allegation is, that a patent was made out in due form of law under the seal, and in the name of the United States, by which there was granted to the said R. F., &c. But the law proceeds to declare that the patent so made out shall be delivered to the petitioner, and that no person can receive it until he has taken the oath, and made the disclosure prescribed in the third section of the act. Now there is no allegation in these counts that the patent was more than made out, or that it was ever delivered to R. PATENT CASES. 163 Cutting et al. v. Myers. 4 "Wash. F., and consequently, there is nothing averred from which the Court can imply that those conditions were performed, without which R. F. was incapable of receiving a patent. The principle laid down and relied upon by the plaintiff's counsel, that necessary circumstances implied by law from what is expressed need not be expressed, does by no means impugn this argument ? because nothing is expressed to au- thorize a presumption that the requisite conditions were com- plied with. It has been contended that delivery is implied in the alle- gation that the patent was made out, containing a grant of the exclusive right ; and the case of Churchill v. Gardner, 7 T. R. 596, is relied upon. But that was a case at common law, and the implication that the bill of exchange was deli- vered, arising out of the allegation that it was made, was per- fectly natural and reasonable. But it is believed to be a clear principle of law, that if a statute requires certain acts to be performed before a statutory instrument can be delivered or take effect, the plaintiff must aver in his declaration, either the performance of those acts, or the fact of delivery from which such performance may be implied. 2. The plaintiff's title resting upon a patent from the United States, the form of which is prescribed by the Act of Congress, it certainly should be shown, by the declaration, that the patent in question was such as the law requires. Now the attestation of the President is rendered' as necessary to the' form and validity of this patent, as the affixing of the seal of the United States to it ; and the signature of the President can no more be implied from the allegation that the patent was made out containing a grant of the privilege, than the seal could be implied from the allegation that a patent was made out containing the grant. The certificate of the attorney-general forms no part of the patent, and may reasonably be implied from the allegations contained in the counts. 164 PATENT CASES. Cutting et al. v. Myers. 4 "Wash. The second objection made to the counts under considera- tion is, that the improvement for which the patent is all^;ed to have been granted is too loosely described in [ *223 ] the patent itself, as set forth, to * entitle the plaintiff to a judgment. It is contended that it ought to have stated in wiiat particulars the improvement consists. An objection similar to the present, in all respects, was made to the declaration in the case of Pray v. James, and after the most mature consideration by the Court it was over- ruled. With that opinion the Court finds no reason to be dissatisfied. The declaration in that case stated, that Jacob Perkins, having invented a new and useful improvement in the manner of manufacturing nails, &,c., which had not been known or used before his application, &c. (and so averring a compli- ance with all the requisitions of the Act of Congress previous to obtaining a patent, and an assignment of his right to Guppy and Armstrong,) letters-patent were duly made out in the name of the United States, bearing teste by the President of the United States, reciting, &c., and giving a short descrip- tion of the said invention, and granting to the said G. and A., &c., the full and exclusive right and liberty of making, &c., the said improvement, &c. The objection made to this declaration was, that the " et coetera " in the description of the discovery rendered the patent too vague, and ought to have been cured by stating in the declaration the material parts of the specification, so as to leave no doubt as to the particular discovery for which the patent was granted. The Court laid down the general rule, that a declaraticm ought to show a title in the plaintiff, and that with convenient certainty ; and should also state those matters that are of the essence of the action, without which the plaintiff shows no right in point of law to ask for a judgment : but that in that case, the plaintiff's right was founded on a patent which was PATENT CASES. 165 Cutting et al. ». Myers, i Wash. accurately stated in the declaration, the et ccetera forming a part of the former, which was designated in the declaration by the terms which itself uses. That though the specifica- tion was referred to in the patent as a part thereof, it was still merely descriptive of the- invention — a matter of evi- dence to be used at the trial, and might have been spread upon the record by oyer if it was important for the defend- ant to see it. The Court was therefore of opinion, that the patent was described with sufficient certainty, even upon a demurrer. In this case, and upon these pleadings, the Court must pre- sume that the description of the thing granted is as broad as the patent itself, and in all respects corresponds with it ; and upon the principle decided in the above case, we are of opin- ion that the plaintiffs were not bound to go farther, and to set out the specification, either verbatim, or substantially. 3. The last objection to this declaration is, that the breaches are laid too generally. The breach in substance is, that the defendants, without the' leave or license, &c., did use the said improvement so invented by the said R. F., contrary to the form of the Acts of Congress, &c., and against the privileges so granted, &c. The answers given by the plaintiff's counsel to this objec- tion are entirely satisfactory to the Court. 1. The objection is to the form of the declaration, and no such cause is assigned by the demurrer. 2. The breach assigned is as broad as the right set forth in the declaration, and granted by the patent; and this the Court considers to be not only sufficient, but that it is the most correct manner of pleading in this case. But for the reasons mentioned under the first head, the demurrer must be sustained. 166 PATENT CASES. Evans v. Hettick. 3 'Wash. Evans v. Hettick. [3 Wash. 408.] Action for an infringement of the plaintifif's right to the hopper-boy, described in his patent. ^ Evidence was allowed, on the part of the plaintiff, of his declarations in a particular year, that he had discovered and constructed the machine patented, all the parts of which he described. This evidence was admitted to prove, not that the plaintiff was the discoverer, but that he then asserted such a right, and described the machine. A witness who had in use such a machine as that used by the defendant, and who, with other persons sued in similar actions with the present, had contri- buted a common fund to defray the expenses of their witnesses in attending to the suits, was allowed to testify on the part of the defendant in this case. Between the contributors there was no agreement to participate in paying the damages or costs, which might be recovered against either of them in the actions. A verdict in this case, would not avoid the plaintiff's patent; and therefore, the witness had no interest in this case. The counsel for the plaintiff cannot ask the witness if Jacob Stouffer had ap- plied to the plaintiff for a license to use his improved hopper-boy, and had offered to pay for it ; it not being proved that Jacob Stouffer had a hopper-boy of any kind, or had ever used one. [ *^409 ] * The Court would not allow a witness to despose what he had heard said in the family of Stouffer, as to the Stouffer hopper-boy, being so , called ; it being merely hearsay evidence. A deposition of a witness residing in this State, above one hundred miles from the place of holding the Court, taken under a rule entered by the plaintiff in the Clerk's Office, but not in conformity with the requisitions of the 30th Section of the Judicial Act, cannot be read in evidence. An examination of the law in relation to the taking of the depositions of witnesses, residing above one hundred miles from the place of holding the Court. ' A deposition having been read without objection, cannot be afterwards re- jected and withdrawn, because the Court, subsequently, refused to allow a deposition to be read, on account of an exception which would also have excluded the deposition which had been read, had it been ob- jected to. What questions can not be put to a witness called as rebutting evidence. Interest in a witness, short of that which would exclude him on the ground of incompetency, how far it should weigh. If the patent and specification do not state in what the improvement con- sists, in full, clear, and exact terms, where the patent has been granted PATENT CASES. 167 Evans v. Hettick. 3 Wash. for an improrement, the plaintiff cannot recover for an alleged violation of it. Oliver Evans's patent for the improved hopper-boy, is not an exception from the general rale, either by force of the private Act, under which the patent was granted, or the decision of the Supreme Court, in the pase of Evans' y. Eaton. Oliver Evans's patent is not for the whole hopper-boy, — whether he was the original inventor of it or not ; nor does the opinion of the Supreme Court, in Evans v. Eaton, sanction such a claim. Unless Oliver Evans shows himself to be the original inventor of the hopper- bo^ he can claim no right in virtue of the grant made to him by the Act of Assembly of Pennsylvania, passed in 1787. The plaintiff cannot object to the originality or priority and use of another machine, alleged to have been similar to his own, on the ground that it had gone into disuse, or was not notoriously in use ; since it is essential to his case, to prove he was the original inventor of the machine for which he has a patent. Action for an infringement of the plaintiff's right to the hopper-boy, described in his patent. Plea, not guilty, and notice* of special matter, under the sixth section [*410] of the Act of Congress relative to patents. The evidence was the same as in the case of Evans v. Eaton, (1 Peters's Rep. 322,) save that David Aby, one of the defend- ant's witnesses, said the hopper-boy used by the defendant was the Stmiffer hopper-boy. The following exceptions were taken to the evidence: — 1. By the counsel for the defendant, who objected to those parts of the deposition of Enoch Anderson, in which he states, " what the plaintiff told him in the year 1783, rela- tive to a discovery, which he contemplated, and was bringing to - perfection, for an improvement in the manufacture of flour ; in which conversation, he described the different ma- chines for effecting that purpose, and amongst others the hop- per-boy." By the Coukt. Although the information respecting this discovery came from the plaintiff, it is nevertheless a fact, that the disclosure was made at a particular period, and the evi- 168 PATENT CASES. Evans v. Hettick. 3 "Wash. dence to prove that fact is unexceptionable. The question is, when was the discovery made ? If the plaintiff told the wit- ness, in 1783, that he had made it, and described it, which the witness says he did, then it is clear that he made it at that time, or at least supposed he had done so. This is all that it proves. It do^ not prove that he -was the discoverer, but that he said he was so, at that time. 2. David Aby was called as a witness by the defendant, who, it was admitted, used a hopper-boy similar to that for the use of which, by the defendant, this suit was brought. Upon his examination, on his voir dire, he stated, that he, together with six other persons, defendants in suits now depending in this Court for infringements of the patent on which this action was brought, agreed to contribute a fund, to defray the ex- penses of this witness in coming to Philadelphia, remaining here, attending to the business of these suits, and returning; and that the agreement extended no further. That all the counsel fees had been paid ; and there was no engagement to pay more ; and the agreement did not extend to a [ * 411 ] contribution to damages or costs, * either in the Cir- cuit Court, or in the Supreme Court of the United States. If he should, while attending on the trial, advance money for any purpose besides his own personal expenses, the contributors were not bound by the agreement to reimburse him. The witness was objected to by the counsel, for the plain- tiff, on the ground of incompetency. 1st. Because the tend- ency of his testimony was to disprove the originality of the plaintiff's invention of the hopper-boy, for which he has a patent ; and consequently, tQ-induce its avoidance by the judg- ment of the Court, of which the witness could avail himself when the trial of his own case should come on. 2d. Because the witness was a contributor to a general fund, for the ex- penses of this, as vifell as of his own suit ; and stood in the PATENT CASES. 169 Evans v. Hettick. 3 Wash. condition of the insured, under a consolidation rule, or of a commoner. The following cases were cited : — 1 Phil. Ev. 34, 43-4, 49, 50, 95 note, 53, 51 n. 45-6. n. 42; 5 Johns. 258; 1 Mass. Rep. 239 ; 1 Caines's'Rep. 378 ; 2 Day, 472. Washington, J., delivered the opinion of the Court. The plaintiff's claim is to an improved hopper-boy. If that which the defendant and the witness uses, be not that machine, there is no reason, in point of lajv, why the witness and the defendant may not each use the machine, which they have, without offence to the plaintiff. It is sufficient for the defendant, on the general issue, to prove that he is not guilty of using the plaintiff's improved hopper-boy ; although he should use some other machine called by that name, and pos- sessing similar properties with those of the improved hopper- boy ; and a verdict in his favor, upon that issue, can in no respect produce the destruction of the patent ; because the originality of the ii;ivention is not in issue on the plea of not guilty ; consequently, the witness, who owns a hopper-boy similar to the defendant's, may have his wishes, but he has no interest dependent upon the event of this cause. *2. The agreement, which is the foundation of [* 412 J this objection, is for a contribution to a general fund to be used in defraying the expenses of this witness, as an agent to attend to the causes in which the contributors are defendants, and as a witness in these causes ; but the vwtness has distinctly stated, that the fund is not pledged, or intended to answer for damages, or costs, in this or in a superior Court; and that the agreement in no respects binds the parties to it, to participate in any loss, which either or all of them may sustain ; or in any gain, which may result from a successful termination of the suit. Where then is the interest which can disqualify him as a witness ? It must be an interest in the VOL. I. — p. c. 15 170 PATENT CASES. Evans v. Hettick. 3 "Wash. cueraf of the cause ; so much money has already been contri- buted, and placed in the witness's hands, to defray his ex- penses. If it should exceed his wants, he will have to refund the overplus to the other contributors, retaining his own sev- enth part ; and if it should fall short of supplying his wants, his associates ijjay be bound in honor, at least, to make up the deficiency ; but the fund already raised, must be applied to the objects contemplated by the parties, whatever may be the event of this suit, not dependent on that event, but in virtwe of the agreermnt. If the parties are bound by that agreement, to contribute a larger sum in order to defray the expenses of this witness, they must in like manner do so ; not as a consequence of the event of this suit, one way or the other, but because the agreement has bound them to do so ; and even if the witness had a power, under that agreement, to increase the fees of counsel, and to incur any other ex- pense, on account of these suits, the legal result would be the same ; because the creation of these charges upon the fund raised, or to be raised, and their discharge, would be precisely the same, whether th^e plaintiff or defendant should gain the cause. If the former should happen, the deendant would have to pay the plaintiff his costs ; but for which, neither the fund raised, nor the other contracting parties, are bound to contribute one cent. If the latter should take place, [*413]the defendant would recover his costs *of the plaintiff; in which the other parties to the contract, are not entitled, by the terms of it, to participate. So that it is plain that the witness has not a shadow of an interest dependent on the event of the suit ; and he is therefore com- petent to give testimony. The counsel for the plaintiff, tendered a bill of exceptions to this opinion. 3. The witness, David Aby, was asked, upon his examina- tion in chief, by the defendant's counsel, if the hopper-boy PATENT CASES. 171 Evans v. Hettick. 3 Wash. used by the defendant, was like the model of the plaintiff's hopper-boy, then in Court ? This was objected to ; but the Court decided that the question was proper ; and the counsel for the plaintiff took an exception to the opinion of the Court. 4. Philip Frederick, was examined on his voir dire; and stated that he has in his mill what is called a Stouffer, or S hopper-boy, which he described. He was also asked by the defendant's counsel, where was the first hopper-boy he had seen — both of these questions were objected to by the plain- tiff's counsel ; and the same objections to the competency of the witness was made, on a similar ground, as to Aby's ; all of which objections were overruled, and the opinions of the Court were excepted to. 5. Joseph Evans was asked by the plaintiff's counsel, if Peter Stouffer and Jacob Stouffer, offered to take from him licenses to use the plaintiff's hopper-boy, and to pay for the same ? This was objected to; and the Court was of opinion that the question was improper, as it had not been proved that Peter Stouffer and Jacob, Stouffer used, or had in their mills, a hopper-boy of any kind ; and the opinion of the Supreme Court, in the case of Evans v. Eaton, is confined to the case of an offer made by a person having a hopper- boy. Washington, J., stated that he was not willing to go a step further than the Supreme Court had gone, in admitting such evidence. Upon the authority of Evans v. Eaton, we have admitted evidence of Daniel Huston's offer to pur- chase a license *from the plaintiff; because it ap- [ * 414 ] pears that he uses a hopper-boy, and did so when the offer was made. This being the opinion of the Court, an exception was taken to it by the plaintiff's counsel. 6. Christian Markle, was asked, by the plaintiff's counsel, to state what he had heard from the different members of the 172 PATENT CASES. Evans v. Hettlck. 3 Wash. Stouffer family, as to the S hopper-boy being called the Stouffer hopper-boy. The Court decided that this question was improper. The persons from whom the witness received information on this subject, ought to have been called on to give it on oath, and in a regular way. The attempt now is to introduce mere hearsay evidence, of what others told the witness as to the reputation of the name and invention of the machine. 7. Michael Former's deposition, taken under a rule entered by the plaintiff in the Clerk's Office, was offered by the plain- tiff, and objected to, on the ground that the place of resi- dence of the witness is in the District, arid more than one hundred miles from Philadelphia ; and the requisites of the 30th section of the Act of Congress, passed September 24th, 1789, not having been observed, neither did the case come within the provisions of any of the rules of the Court. The counsel for the plaintiff, insisted, that the practice of the Court had always been contrary to what is contended for on the other side. Washington, J. What has been the practice in relation to this matter, is unknown to the Court ; it certainly has not received our sanction, by any one decision. If the practice be contrary to the Act of Congress, it ought to be, at once, put an end to. Even a positive written rule of this Court, repug- nant to that law, would be void. The question is, whether, under the Act of Congress, and the rules of this Court consistent therewith, this deposition can be read ; and this may be as fair an occasion as any that can occur, to examine and to decide this subject, [ * 415 ] that the practice of taking * depositions in and with- ,out the District, may be laid down and pursued, so as to prevent future mistakes. PATENT CASES. 173 Evans v. Hettick. 3 Wash. By the Act of Congress of the 24th of September, 1789, section 30th, it is enacted, that " when the testimony of any person shall be necessary, in any c'ml cause depending in any district in any Court of the United States, who shall live at a greater distance from the place of trial than one hundred miles, or is bound on a voyage to sea, or is about to go out of the United States, or out of such district, and to a greater distance from the place of trial than as aforesaid, before the time of trial, or is ancient or very infirm, the deposition of such person may be taken, de hew esse, before any Justice or Judge of the Courts of the United States, or before any Chan- cellor, Justice, or Judge of a supreme or superior Court, mayor, or chief magistrate of a city, or Judge of a county Court, or Court of Common Pleas, of any of the United States, not being of counsel, or attorney to either of the par- ties, or interested in the event of the cause ; provided that a notification from the magistrate before whom the deposition is to be taken, to the adverse party, to be present at the taking of the same, and to put interrogatories, if he think fit, be first made out and served on the adverse party or his attorney, as either may be nearest, if he is within one hundred miles of the place of such caption, allowing time for their attendance, after notification, not less than at the rate of one day, Sun- days exclusive, for every twenty miles' travel. And in causes of admiralty and maritime jurisdiction, or other cases of seiz- ure, when a libel shall be filed, in which an adverse party is not named, and depositions of persons circumstanced as afore- said, shall be taken before the claim be put in, the like notifi- cation as aforesaid, shall be given to the person having the agency or possession of the property libelled, at the time of the capture or seizure of the same, if known to the libellant. And every person deposing as aforesaid, shall be carefully examined and cautioned, and sworn or affirmed to testify the whole truth ; and shall subscribe the testimony, by him or her 15* 174 PATENT CASES. Brans v. Hettiok. 3 Wash. [ *416 J given, * after the same shall be reduced to writing, which shall be done only by the magistrate taking the deposition, or by the deponent, in his presence. And the depositions, so taken, shall be retained by such magistrate, until he deliver the same, with his own hand, to the Court for which they are taken, or shall, together with the certifi- cate of the reasons, as aforesaid, of their being taken, and of the notice, if any given, to the adverse party, be by him, the said magistrate, sealed up and directed to such Court, and remain under his seal until opened in Court." The rules of Court applicable to the matter, were framed at different times by this Court, for the purpose of regulating its practice. The first bears date on the 23d of May, 1805, and provides that a party may take depositions of witnesses, being within one hundred miles of the place of holding the Court, by entering a rule in the Clerk's Office, giving a rea- sonable notice, which in no case need exceed ten days, to the adverse party, if living within one hundred miles ; otherwise to him or to his attorney, of the time and place of taking such depositions; and the deposition is to be forthwith filed, and is to be considered as taken debene esse.^ '-' The next rule, relating to this subject, was made on the 13th of May, 1814 ; and declares, " that a rule to take depo- sitions on notice given, shall be confined to taking them within April Session, 1805, May 23d. 1 Ordered — That a rule for a commission to any of the United States, or to foreign parts, shall be, of course, and may be, entered by either party in the Clerk's Office ; but the interrogatories must be filed in the Clerk's Office at the time; a copy thereof, and written notice of the rule and of the names of the commissioners, must be served on the adverse party, at least fifteen days before the commission issues, in order that he may file cross interrogatories, or nominate commissioners on his own part, if he shall deem it eligible. PATENT CASES. 175 Evans i;. Hettick. 3 Wash. the district, unless otherwise agreed ; and if taken by agree- ment, out of the district, the description of judicial character, before whom it is agreed to be taken, shall be designated in the rule ; and all depositions are to be considered as taken de bene esse, *if the place of caption [*417] be within the reach of the process of the Court.^ The Act of Congress must necessarily be so construed, as to confine its operation to depositions taken within the district where the witness lives, more than one hundred miles from the place of trial ; because the process, to compel the attendance of witnesses, could run to any greater distance within the district; and on that account, the deposition is to be de bene esse. But a subpoena could not, at that time, run into another district. The Act which declared that such pro- cess for witnesses to attend in one district, might run into any other district, provided, that in civil cases, the witnesses do not live more than one hundred miles from the place of hold- ing the Court, did not pass into a law, until the 2d of March, 1792. But this Act, it is conceived, could not affect the construc- tion of that of September, 1789, before mentioned; because, otherwise, this absurdity would follow, that a deposition, taken de bene esse, might be taken of a witness living in another State, at any distance from the Court, or even beyond seas; because, they would live, within the words of the law, more than one hundred miles from the place of trial. Besides, April Session, 1814, May 13th. 1 Ordered — That a rule to take depositions in any cause, or notice given, be confined to taking such depositions within the District, unless otherwise specially agreed. And if taken by agreement, out of the Dis- trict, the description of the judicial character, before such depositions shall be agreed to be taken, shall be designated in such rule. All deposi- tions to be considered as taken de bene esse, if the place of caption be TvitHin the reach of the process of this Court. 176 PATENT CASES. Evans if, Hettick, 3 Wash. it would h^ve been something like a le^l solecism in the Act of 1789, to declare a deposition taken out of the district, to be de bene esse, when the party had no means to compel the attendance of the witness. The Act of 1789, being confined to depositions of witnesses living within the district, but beyond one hundred [ *418 ] miles from * the place of trial, the rules above no- ticed were framed in order to provide for cases not within the law; that is, where the witness lives within the distance of ope hundred miles from the pl?ice of trial ; and whether within or without the district, or in the words of thf* rule, " within the reach of the process of the Court." These depositions may be taken on rqles entered during the session of the Court, or in the Clerk's Office, in vacation, But in either case, unless the rule specify that the deposition is to be taken without the district, it is to be confined to witnesses living within it ; and such special rule, to extend to witnesses out of the district, must be made by agreement of the parties; and the character of the person taking it must be designated in the rule ; and all such depositions are to he de bene esse. This opinion is not to be construed to exclude cases of depositions taken differently from what the law or rules prescribe, under the agreement of the parties, or any special rule of the Court, in any particular case. Under either rule, reasonable notice of the time and place of taking the depositions, must be served on the adverse party, if living within one hundred miles ; otherwise, upon him or his attorney ; not only because this is reasonable and consistent with the spirit of the law, but because it is required" by the rule of the 23d May, 1805. Where witnesses live out of the district, and more than one hundred miles from the place of trial, their depositions, if taken, must be under a commission, and will, of course, be PATENT CASES. 177 Evans v. Hettick. 3 Wash. absolute. Although the point now in controversy relates only to depositions taken without commissions, it may not be im- proper, in this place, to record two other rules of the Court upon the subject, in order that the whole may be brought into one view. The rule of the 23d May, 1805, provides, that " a rule for a commission to any of the United States, or foreign parts, shall be of course, and may be entered, by either party, in the Clerk's Office. But the interrogatories must be filed in the office at *the time; a copy thereof, and [*419] written notice of the rule, and of the names of the commissioners, to be served on the adverse party, fifteen days, at least, before the commission issues, in order that he may file cross interrogatories, and name commissioners on his part, if he pleases." The rule of the 27th April, 1811, declares, "that a copy of the interrogatories, and written notice of the rule to issue a commission, and of the names of the commissioners, may be served either on the adverse party, or his attorney." 8. As soon as the opinion on the last point was delivered, the plaintiff's counsel moved the Court to reject the deposi- tion which had been read in evidence by the defendant's coun- sel, in the course of the trial, on the ground that this witness resided in Pennsylvania, more than one hundred miles from this city. Br THE Court. The deposition was read in evidence, with- out objection ; and it is now too late to make an objection to it. To this opinion an exception was taken, by the counsel for the plaintiff. 9. Philip Frederick, who was called by the defendant, to rebut what Joseph Evans, one of the plaintiff's witnesses, who had been examined to rebut the defendant's testimony, relative to an application, deposed by Joseph Evans to have been made to him by Frederick, to purchase a license from the plaintiff, 178 PATENT CASES. Evans v. Hettick. 3 Wash. was asked by the plaintiff's counsel, on his cross-examination, " if Daniel Stouffer (one of the defendant's witnesses) was sub- ject to fits of mental derangement ? " - This was objected to and overruled by the Court, as impro- per to be asked in this stage of the cause. If allowed, the whole case might be opened to a new examination of the witnesses, to draw forth testimony which niight have been obtained on the primary examination of the witnesses. The question, the Court observed, is not warranted by any thing which has fallen from the witnesses since the defjisndant closed his testimony, a part of which was Daniel StoufTer's deposit tion. [ * 420 ] * Ingersoll, Rawle, and C. J. Ingersoll, for the plaintiff, continued, — 1st. That the plaintiff's rights under his patent, are to the machine called the hopper-boy, and also to his improvements on that machine ; and that these rights have received the sanc- tion of the Supreme Court, in the case of Evans v. Eaton. 3 Wheaton, 517. Consequently, that if the jury should be of opinion that the plaintiff's improvement on the hopper-boy has not been used by the defendant, still the plaintiff is enti- tled to a verdict, if the jury should be of opinion that the defendant has used the plaintiff's hopper-boy, without his improvernent. 2d. That, upon the evidence, it does not appear that what 15 called the Stouffer hopper-boy was discovered and used before the plaintiff's discovery in 1783 ; and that, in fact, it is only an humble imitation of the plaintiff's invention, though the same in principle ; and although the jury should, upon the evidence^ be of opinion that the Stouffer hopper-boy was invented, and even in use in one or two mills, still this would not be such a use as the law intends, not being public, and generally known to be in use, so as to charge the plaintiff with notice of it ; and that this was the kind of iiotoriety which PATENT CASES. 179 Evans ». Hettick. S Wash. iattended this hopper-boy, is evident, from the circumstance that it was never heard of by the many witnesses produced by the plaintiff, some of whom had travelled through the State before and since 1783. 3d. That the effect of the Act of the Assenably of Penn* sylvania, granting to the plaintiff an exclusive right to his hopper-boy, amounted to a grant of the hopper-boy then in existence, (should the jury believe, that the Stouffer hop- per-boy was in existence and use prior to the plaintiff's discovery,) the same being then the property of the public ; it being competent to the legislature to make such a grant. 4th. That the Stouffer hopper-boy, if invented and used prior to the plaintiff's discovery, fell into disuse ; and if the jury should be of that opinion, then a prior dis- covery and use of that * hopper-boy will present no [ * 421 ] objection to the plaintiff's patent, as an original discoverer. 5th. That though the jury should be of opinion that the j^aintiff is not the original' inventor of the hopper-boy, still the defendant would not be entitled to a verdict. The defend- ant's counsel relied upon the opinion of the Supreme Court in Evans v. Eaton, 3 Wheaton, 519, which states that there is error in the chafge of this Court in saying, " that the said Oliver Evans was not entitled to recover for the hopper-boy in his declaration." Binney, Sergeant, and Joseph R. Ingersoll, for the defend- ant, contended : — 1. That the patent does not grant to the plaintiff any thing more than the general result of the combined power of the different machifaes, and the several improved' machines, or, in other words, his improvements on these several machines ; the Supreme Court having decided that these expressions import substantially the same thing. This construction has received 180 PATENT CASES. Evans v. Hettick. 3 Wash. the sanction of the Supreme Court, as appears from the whole course of the reasoning of the Chief Justice, in the case of Evans v. Eaton. This right to the improved hopper-boy is asserted by Mr. Harper, the plaintiff's counsel in that cause ; and the claim to the hopper-boy itself is distinctly disavowed by him. A patent to the same person for an original invention, and also for an improvement on it, would be a legal absurdity, altogether inconsistent with the provisions of the Patent Laws. The petition and affirmation of Oliver Evans, confine his dis- covery and patent to his improved hopper-boy ; and he could not abtain a patent broader than his petition and affirmation, filed in the Patent-Office. 2. If the rights of the plaintiff be those which his counsel contend for, still, in relation to his claim for a violation of his improved hopper-boy, he cannot have a verdict ; because the nature of his improvement is not stated in his specification. No evidence has been given to the jury to prove what these improvements are, nor have the counsel pretended to [ * 422 ] point them * out. But it is essential to the validity of the patent that they should appear in the specifi- cation, as required by the 3d section of the Patent Law. The Supreme Court, in Evans v. Eaton, page 518, Wheaton's Rep. vol. 3, confirms this doctrine. But even if the plaintiff had shown in what his improve- ments consist, he cannot recover against this defendant, since it is in evidence that he uses only the original Stouffer hop- per-boy. 3. The plaintiff cannot recover as an original inventor of the Stouffer hopper-boy ; the evidence proving, incontestably, that the Stouffer hopper-boy was discovered, and in use, in public use, — though this is not required by the law, in many mills, long prior to the year 17S3, the earliest period of the plaintiff's invention contended for, even by himself. 4. There is no evidence that the Stouffer hopper-boy ever PATENT CASES. 181 Evans v. Hettick. 3 Wash. sunk into disuse ; but if that were proved, still it could not be patented by the plaintiff, as he could not swear that he was the first inventor. Washington, J., charged the jury. After stating the evi- dence on both sides, the facts intended to be proved by the evidence given in this cause, may be arranged under the follow- ing heads : — 1. Such as respect the value of the plaintiff's hopper-boy. 2. The time of its discovery. 3. The kind of machine used by the defendant. 4. The time of its discovery and use. First. As to the first, the Court has no observations to make, except that if you should find a verdict for the plaintiff, you will give the actual damages which the plaintiff has sus- tained, by reason of the defendant's use of his invention, which the Court will treble. Second. The evidence ap[)licable to this head, if believed by the jury, proves that, in 1783, Oliver Evans communica- ted his investigation of the subject of an improvement in the manufactory of flour; and, in the summer of the same year, declared * he had accomplished it. In [*423] 1784, he made a model of his hopper-boy, which had no cords, weights, or pulley ; and, consequently, the lower arm was, for the sake of experiment, turned by the hand. In 1785, it was in operation in a mill, in as perfect a state as it . now is. T%ird. If the witness, who has been called to prove the kind of instrument used by the defendant, is believed by the jury, it consists of an upright square shaft, with a cog- wheel that turns it ; and which is moved by the water-power of the mill. This shaft is inserted into a square mortice in an arm or board, somewhat resembling an S, with strips of wood fixed on its under side ; and so arranged, as to turn VOL, I. — p. c. 16 182 PATENT CASES. Evans v. Hettick. 3 Wash. the meal below it, cool, dry,' and conduct it to the bolting chest. This arm slips with ease up and down the shaft, and must be raised by hand, and kept suspended, until the meal is put under it. It has no upper arm, pulley, weight, or leading lines ; and the strips below the arm, are like the rake, as it^js called, in the plaintiff's hopper-boy. The machine has acquired the name of the S, or Stouffer hopper- boy. Fourth. The witnesses examined to prove the originality and the use of the defendant's hopper-boy, if believed by the jury, date them as early as the year 1765; and its erection and actual use, in many mills, in 1775-78, and progressively to later periods. Objections have been made on each side, to the credit of some of the witnesses who have been examined on the other side ; not on the ground of want of veracity, or character, but of interest short of that which can affect their competency. These objections have been pressed so far beyond their just limits, as to require from the Court an explanation of their real value. Where the evidence of witnesses, opposed by other witnesses, is relied upon by either side to prove a par- ticular fact, the jury must necessarily weigh their credit, in order to satisfy their own minds, on which side the truth is most likely to be; and, in making this inquiry, every [ * 424 ] circumstance, which can affect * the veracity of the witnesses, whether it concern their moral character or arise from some interest which they may have in the ques- tion ; or from feelings and wishes favorable to one or other of the parties, should be taken into the calculation. But, if the fact in controversy may exist, without a violation of proba- bihty, and the proof is by witnesses ejcclusively on that side ; there is nothing to put into the opposite scale, against which to weigh the credit of these witnesses ; and, if the objection to their credit be worth any thing, it must be to the full extent PATENT CASES. 183 Evana v. Hettick. 3 "Wash. of rejecting their testimony altogether, or else it is worth nothing. The jury cannot compromise the matter, or halt between two opinions. They must decide that the fact is so, or is not so; and if the latter, because of objections to the credit of the witnesses, it would amount to a confounding of the question of a competency and credibility ; for the effect would be the same, whether the Court refused to permit the witness to testify, on the ground of incompetency, or the jury should reject the testimony when given on that of want of credibility. We have thought it proper to submit these gene- ral observations to the consideration of the jury. We come now to the question of law which arises out of these facts, which is : — What are the things, in which the plaintiff alleges, and has proved, an exclusive property, which he asserts the defendant has used, and which he denies ? The first claim is for an improved hopper-boy, which the plaintiff insists is granted by his patent, which has received the sanction of the Supreme Court, and which the defend- ant acknowledges. This, then, being conceded ground, the Court will proceed to examine it ; and the inquiry in point of law will be, whether the plaintiff is entitled to a verdict, for an infringement of his patent, for an improved hopper- boy ? The objection stated by the defendant is, that the plaintiff has not set forth, in his specification, what are the improve- ments, of which he claims to be the inventor ; so that a person * skilled in the art, may comprehend [ * 425 ] distinctly in what they consist. This objection is, in point of fact, fully supported ; neither the specification, nor any other document connected with the patent, states, or even alludes to any specific improve- ment in the hopper-boy. Taking this as true, how stands the law? 184 PATENT CASES. Evans v. Hettick. 3 Wash. The 3d section of the Patent Law declares, ." that before an inventor can receive a patent, he shall deliver a written description of his invention, in such full, clear, and exact terms, as to distinguish the same from all other things before known ; and to enable a person skilled in the art, &c., of which it is a br%nch, to make and use the same." What then is the plaintiff's invention, as asserted by the plaintiff, conceded by the defendant, and sanctioned by the Supreme Court, in the case of Evans v. Eaton ? The answer is, an improvement on the hopper-boy, or an improved hop- per-boy, which that Court have declared to be substantially the same. If this be so, then the section of the law, before- mentioned, has declared that he must specify this improve- ment, in full, clear, and exact terms. If he has not done so, he has no valid patent on which he can recover. The English decisions correspond with the injunctions of our law. The American decisions, so far as we have any report of them, maintain the same doctrine. Mr. Justice Story, in the case of Level v. Lewis, lays it down, that "if the patent be for an improvement in an existing machine, the patentee must, in his specification, distinguish the new from the old, and confine his patent to such parts only as are new ; for, if both are mixed together, and a patent is taken for the whple, it is void." What is the reason for all this ? In the first place, it is to enable the public to enjoy the full benefit of the discovery, when the patentee's monopoly is expired, by having it so described upon record, that any per- son, skilled in the art of which the invention is a branch, may • be able to construct it. [ * 426 * The next reason is, to put every citizen upon his guard, that he may not through ignorance violate the law, by infringing the rights of the patentee, and subject- ing himself to the consequences of litigation. The inyentor PATENT CASES. 185 Eyans V. Hettick. 3 Wash. of the original machine, if he has obtained a patent for it, and all persons claiming under him, may lawfully enjoy the full benefit of that discovery, notwithstanding the improve- ment made upon it by a subsequent discoverer. If he has not chosen to ask for a monopoly, but abandons it to the pub- lic, then it becomes public property, and any person has a right to use it. The inventor of the improvement may also obtain a patent for his discovery, which cannot legally be in- vaded by the inventor of the original machine, or by any other person. The rights of each are secured by law, and there is no incompatibility between them. But if a man, wishing to use the original invention, and honestly disposed to avoid an infraction of the improver's right, is unable to ascertain from any certain and known standard, where the original invention ends, and where the improvement commences, how is it possible for him to exer- cise his own acknowledged right, freed from the danger of invading that of another ? -^ and to what acts of oppression might not this lead ? Might not the patentee of his mysteri- ous improvement, obtain from the ignorant, the timid, and even the prudent members of society, who wish to use the original discovery, the price he chooses to ask for a license to use his improvement ; and in this way compel them to pur- chase it, rather than incur expenses and inconveniences far greater than the sum demanded would pay for or compensate ? If this may happen, then the improver enjoys in a degree the benefit of a discoverer, both of the original machine, and also of the improvement. In short, the patentee of the improve- ment may, to a certain extent, keep all others at arm's length as to the original invention, or make them pay him for it in derogation of the rights of the inventor of the original machine. If this be the law applicable to cases in general, is this an * excepted case ? The plaintiff's coun- [ * 427 ] 16* 186 PATENT CASES. Evans v. Hettick. 3 Wash. sel have not directly asserted it to be so ; but they have referred, with some emphasis, to what is said by the Supreme Court, in the case of Evans v. Eaton, 3 Wheaton's Reports, 518. The expressions are, " in all cases where the plaintiff's claim is for an improvement, it will be incumbent on him to show the exten^.of his improvement, so that a person under- standing the subject, may comprehend distinctly in what it consists." This decision does not state in what way the extent of the plaintiff's improvement is to be proved, nor did the case require that the Supreme Court should be more explicit. The obvious conclusion is, that the Court left that matter undecided, and meant that the extent of the plaintiff's im- provement should be shown, according to the rules of law ; a contrary construction would be most unfair, and unwarranted. Is it possible to believe, that if the Supreme Court intended to decide contrary to the 3d section of the Patent Law, and to the English and American decisions, that this was a case without the influence of that law and those decisions, such intention would have been expressed in such guarded terms ? This cannot be admitted. Neither can the private Act, for the relief of Oliver Evans, warrant the argument, that this case is freed from the restrictions contained in the 3d section ■ of the Patent Law ; because, except as to the extent of the grant it refers to", and the Supreme Court, in the case cited, considers it as within the provisions of that law, is it likely that the Supreme Court could have meant that the plaintiff might cure the defect of his specification, by proving to the jury in what his improvements consisted ? If so, th'en, as to the present defendant, such an explanation would be unavail- ing, to save him from the consequences of an error, against which the sagacioiis wit of man could not have guarded him. He has sinned already, if he has invaded the plaintiff's right ; and it is now too late to convince him of his error, if he must PATENT CASES. 187 Evans v. Hettick. 3 Wash. be a viclim of it, for the want of that light which is now shed upon the act, long after his supposed transgression. * But of what avail would this explanation be, [ * 428 ] after the expiration of the plaintiff's monopoly? The parol evidence given in a court of justice, is evanes- cent, and affords the most unsafe notice of facts, particularly when they respect matters of art, that can be supposed. What man, who wishes not to invade the plaintiff's pa- tent, would venture to erect a hopper-boy, merely from the information which he could gather from this trial ? He could obtain none upon which he could safely rely ; nor could any artist, after the expiration of the plaintiff's right, be enabled from such a source to know how to construct this improve- ment. But even if the extent of the improvement could be traced in this way, the plaintiff has not attempted to prove it ; and what is more, his counsel, although repeatedly called on to point it out, have not attempted to do it. Can the jury, without evidence, and without the aid of the plaintiff or his counsel, say in what these improvements con- sist ? If they had never seen another hopper-boy, supposed to be the original, this would be impossible. If, having seen the Stouffer hopper-boy, they can do so, by comparing with it the plaintiff's improved hopper-boy, then the consequence seems to be almost inevitable, that the Stouffer hopper-boy is the original one, the point which, under the next head, is denied by the plaintiff. But if the specification had stated in what the plaintiff's improvement consisted, still he is not enti- tled to a verdict for a violation of that right, unless he has proved, to your satisfaction, that the p^jjptiff has infringed that right. Upon the whole, this patent, so far as it is for an improve- ment, cannot be supported ; and as to any claim founded on that right, the plaintiff is not entitled to your verdict. 188 PATENT CASES. Evans v. Hettick. 3 Wash. 2d. The plaintiff contends, that he is the original inventor, not only of the improved hopper-boy, but of the whole ma- chine ; that his patent grants him the exclusive right to both, and that this claim has received the sanction of the Supreme Court. Whether, in point of fact, he is the original inventor of the hopper-boy, will be attended to hereafter; neither [ * 429 ] shall we stop * to inquire whether the plaintiff's pa- tent grants him the right ; because, if the Supreme Court has sanctioned the claim, that is law for this Court. The part of the decision of that Court relied upon by the plaintiff's counsel, is to be found in page 517, 3 jWheaton's Reports, where the Chief Justice says, — " The opinion of the Court, then, is, that Oliver Evans may claim, under his patent, the exclusive use of his inventions and improvements in the art of manufacturing flour and meal, and in the several machines which he has invented, and in his improvements on machines previously discovered." It would seem almost impossible to misunderstand this posi- tive declaration of the Court. It appears to be the result of the previous reasoning. It states that the plaintiff may claim, 1. The exclusive use of his improvements and inventions in the art of manufacturing flour. 2. In the several machines which he has invented. 3. In his improvements on machines previously discovered. As to the first, there is no dispute in this cause. The third has been already disposed of. The second is now to be examined. It is contended, by the defendant's counsel, that this is not the correct construction of this sentence in the decision of the Court, because it is inconsistent with the pretensions of the plaintiff's counsel, (see Mr. Harper's argument, 3 Wheaton's Rep. page 499,) and with the course of argument of the Chief Justice, throughout the opinion which led to the foregoing conclusion. PATENT CASES. 189 Evans v. Hettick. 3 Wash. This suppolfed inconsistency may, in the opinion of this Court, be explained by the following observations : The ex- ceptions taken to the charge of this Court, in the case of Evans v. Eaton, were — 1st. He stating, that the patent of Oliver Evans was only for the combined effect of all the machines mentioned in his patent; and 2d. In directing the jury to find for the defendant, if they should be of opinion that the hopper-boy was in use prior to the improvement alleged to have been made by Oliver Evans. * These were the only questions presented to the [ *430 ] view of the Supreme Court, upon which it was deemed proper by that Court to give an opinion. The rea- soning of the Chief Justice, therefore, is intended to prove and to correct these errors in the charge, by showing that Oliver Evans was entitled by his patent, and the accompany- ing documents, not only to the general result, but to an im- provement on the hopper-boy, one of the machines used in combination to produce that result. If he had regard to an improvement on the hopper-boy, this Court was clearly wrong, in directing the jury to find a verdict for the defendant, if they should be of opinion, that the hopper-boy was in use prior to the plaintiff's improvement ; because, it was unim- portant who was the original discoverer of the hopper-boy, provided the plaintiff had a patent for an improved hopper- boy, and the defendant used that improvement; and the charge precluded that inquiry. But whilst the Judge aims to prove that Oliver Evans was entitled to this double claim, he does not exclude any other claim. There is one expression relied upon by the defendant's counsel as having this appear- ance ; but it is more likely that the word relied on is a ty]po- graphical error, than that the Court should both deny and affirm the plaintiff's right, as an origifial inventor of the hop- per-boy. When the Court came to state, definitively, what were the 190 PATENT CASES. Evans v. Hettick. plaintiff's claims, under his patent^jjU^^^^^Hpstinctly ^ thorizes a grant to him of his improvement in thTaFrof manufactur- ing flour, and in the several machines which he has invented, and in his improvements, &.c. The Court sajrs, 3 Wheaton's Reports, page 508, that the application " is coextensive with the Act." ^ If, then, in this enumeration of the plaintiff's rights under the patent, that to the machines had been omitted, it might have been supposed that it was not recognized by that Court j and it was consequently introduced in order to prevent a con- clusion against its validity, although it had not been [*431 ] brought *into view in the previous argument, be- cause a matter not in dispute. This course of reasoning is, we think, strongly fortified by what the Court says, 3 Wheaton's Rep. 518. " In all cases where his claim is for an improvement on a machine, it will be incumbent on him to show the extent of his improvement, so that a person understanding the subject, may comprehend distinctly in what it consists." Now, if his claim was con- fined to an improvement, produced by the combined opera- tion of all the machines, and to an improvement in the sepa- rate machines, why should the Court have stated hypotheti- cally what was to be proved, in case the plaintiff claimed for an improvement? This sentence, following immediately that which has been relied upon by the defendant's counsel, seems to explain it, and to fortify the construction which we have given to it. Upon the whole, we are of opinion, that the question, who is the original irrventor of the hopper-boy, is left open by the Supreme Court, and is now to be decided by this jury. If, then, the jury should be of opinion, upon the evidence, that the hopper-boy which the defendant uses, was invented and in use prior to the discovery of Oliver Evans, then your verdict ought to be for the defendant. PATENT CASES. 191 V. Hettick. 3 Wash. But t^^^Bnst^Bfl^Hhere are objections Avhich it is pro- per to not^^^l^B cmffiMed, that the judgment of the Supreme Court, in kvans v. Eaton, 3 Whea ton, page 119, where it is said that there is error in the proceedings below, in that, in the charge, the dpinion is expressed that Oliver Evans is not entitled to recover, if the hopper-boy in his declaration mentioned, had been in use previous to his alleged discovery, entitles the plaintiff to a verdict; although the jury should be of opinion that he is not the original inventor of the hopper-boy. That the Court did not mean this, is most obvious, from what is said in page 517, that " Oliver Evans may claim the exclusive use of the several machines, wMcA Ae has invented;" could the Supreme Court intend to say, immediately after, that *he is entitled to a verdict for a machine [ * 432 ] which he has not invented ? Can it be supposed, that the Court meant to ride over the third section of the Patent Law, and set up a different rule to govern this case, without having stated the reasons for so extraordinary a dis- tinction ? This is altogether inadmissible. Another reason may be urged against the conclusion drawn by the plaintiff's counsel, from the judgment, which is this : The error to be corrected by that part of the judgment relied on, that " the Court instructed the jury to find for the defend- ant, if they should be of opinion that the hopper-boy was in use prior to the invention of Oliver Evans's improvement." Now, the words " in the declaration mentioned," are not in the charge of the Circuit Court, as stated by the Chief Jus- tice, which the Supreme Court proposes to condemn ; and it is the insertion of these words into the judgment, which pro- duces all the difficulty. Leave them out, and then the judg- ment is consistent with the whole reasoning of the Chief Justice, which condemned the charge of the Circuit Court; because it precluded Oliver Evans from obtaining a verdict 192 PATENT CASES Evans v. Hettiek. 3 Was: for his improvement, if he was not thelhyeaHB|!the ele- mentary parts of the machine. K^tafn MM^pRPTit follows, that if Oliver Evans was proved not to be ine inventor of the hopper-boy, in his declaration mentioned, ■ still ihe defend- ant was not entitled to a verdict. This would be in such direct opposition to the 6th section of the Patent Law, that we cannot suppose this was the meaning of the Supreme Court. 2. The next objection to this instruction is, that the Act of the legislature of Pennsylvania conveyed to Oliver Evans the original hopper-boy ; and consequently, its existence and use, at a period prior to the plaintiff's discovery, cannot now be urged to invalidate his patent. There are two conclusive answers to this argument — 1. That it is by no means to be admitted, that the Act operates to make such a transfer; but 2. If it did, still the [*433 ] plaintiff * cannot recover, if he appears not to be the first, or original inventor of the hopper-boy. This daim in this action is not derived either from the State, or from an individual. His suit is founded on his patent, and unless he was himself the original inventor of the bopper-boy, he cannot recover. 3. Another objection stated by the plaintiff's counsel is, that the Stouffer hopper-bpy, although the jury should believe that it was in use in many mills, before the plaintiff's disco- very had fallen into disuse ; and, therefore, it cannot be used to invalidate the plaintiff's right to recover. The answer to this is, that whether it fell into disuse, or not, if it was used before the plaintiff's discovery, the plain- tiff could not obtain a patent for it, so as to exclude the de- fendant from using it, if he chose to do so. 4. The last objection is, that the use of the Stouffer ma- chine, cannot affect the plaintiff's patent, unless it was public, so as to affect the plaintiff, or other inventors with notice. PATENT CASES. 193 ■' Evans v. Eaton. 3 Wash. Whether that hopper-boy was in public use, or not, the jury will judge; from the testimony of the witnesses. It was erected, and used in four or five mills, if the witnesses are believed, who have testified for the defendant on that point. But this argument has no foundation in the Act of Congress, which does not speak of public use, of the nature represented by the counsel. It is immaterial whether the patentee had notice of the prior invention, or not. If it was in use, in any part of the world, however unlikely or impossible that the fact should come to the knowledge of the patentee, his patent for the same machine cannot be supported. Verdict for the defendant. Evans v. Eaton. [3 "Wash. 443.] Where the record of a judgment in the Circuit Court has been sent to the Supreme Court, and an appearance entered there, by the defendant in error, and a decision by the Supreme Court, I'eversing the judgment, and remanding the cause for a new trial, the defendant in error cannot object that the judg- ment, in this cause, is in force and unreversed, upon the ground that no writ of error had been sued out. A witness, who uses a machine resembling that of the plaintiff's is not an incompetent witness for the defendant ; because the patent of the plaintiff may be defective, as the Court cannot, in the case in which he is offered as a witness, declare the patent void, so as to benefit the witness ; although in the case a verdict should be given for the defendant, on the ground that the plaintiff was not the original inventor of the machine. If two machines be substantially the same, and operate in the same manner, to produce the same result, though they differ in form, proportions, and utility, they are the same in principle ; and the one last discovered, can have no other merit than to be an improvement of the other; but for which the inventor can obtain no patent. If the improvement be in the principle, a patent may be obtained for the improvement. To the validity of a patent for an improvement, it is necessary to state, in the specification, in what the improvement consists. This cause came on to be retried, under the mandate of VOL. I. — p. 0. 17 194 PATENT CASES. Evans v. Eaton. 3 Wash. the Supreme Court of the United States, to award a ven.fac. de novo. See 3 Wheaton. When the cause was called for trial, the defendant objected that the judgment of this Court, upon the former trial, was still in force and unreversed, as no writ of error had been sued out to ^pmove the record of that judgment into the Supreme Court ; without which that Court would not take jurisdiction of the cause. By the Court. After an appearance of the defendant in error in the Supreme Court, and pleading, as it [ * 444 ] must be presumed *he did, to entitle him to appear by counsel, and argue the cause, it is too late to take this objection. We must presume that all formal objections, and particularly one to the want of the writ, were waived by consent of parties. The jury being sworn, the competency of Philip Frederick, to give evidence for the defendant, was objected to by the plaintiff, on the ground that he uses a Stouffer hopper-boy ; and that if the defendant should obtain a verdict, upon the ground of the use of the Stouffer hopper-boy by others, prior to the plaintiff's discovery, the Court must declare the patent void, and thus incapacitate the plaintiff to recover against the witness. Br THE Court. This patent, according to the plaintiff's claim, covers eleven distinct things, and may be perfectly good for a part, though not so as to this particular maciiine. If, therefore, the jury should find for the defendant, on the ground that the hopper-boy was known and in use prior to the plain- tiff's discovery, the Court could not declare the whole patent void, on account of the unsoundness of a part of it, in rela- tion to a distinct machine ; and we can find no authority for the judgment which has been hinted at — that is, to avoid the patent, quoad the hopper-boy. It is only in this most extraordinary case, of one patent for PATENT CASES. 195 Evans v. Eaton. 3 Wash. a great number of different inventions, that this difficulty could occur. But we must say that, on that account, it must be exempt from that provision of the 6,th section, as to the judgment, where the objection goes only to the prior use of one of the patented machines. The deposition of Michael Former was offered, and objected to, for the reasons urged against it in the case of Evans v. Hettick. Ante, page 408. The plaintiff's counsel examined the Clerk of the Court, to prove what the practice had been ; who states, that rules to take depositions generally, have frequently been entered in the office ; and depositions of witnesses living within the State, and * above one hundred miles from Phila- [ * 445 ] delphia, have been taken ; that it has been rare, for twenty years past, to take depositions under the Act of Con- gress. The Court rejected the evidence, for the reason assigned in Hettick's case. The counsel for the plaintiff contended that, under his pa- tent, he was entitled to claim, 1. The entire hopper-boy, which is protected by the judgment of the Supreme Court, in this very case, (3 Wheaton, 519) ; although it should ap- pear that he was not the original inventor of it, which, how- ever, they contended he was ; and that the defendant's witnesses, who had testified as to the prior use of the Stouffer hopper-boy, must be mistaken in their recollection of dates. 2. An improvement on a hopper-boy. That it is not neces- sary to the validity of such a patent, to describe in the specifi- cation in what the improvement consists, the 3d section of the law being, in this respect, merely directory to the Secre- tary of State, authorizing him to refuse a patent, if such a specification be not filed. But, however this may be in com- mon cases, they insisted that the Supreme Court having deci- ded that one of the plaintiff's claims, under his patent, is to 196 PATENT CASES. Evans v. Eaton. 3 Wash. an improvement on the hopper-boy, (3 Wheaton, 517,) the requisition, (p, 518,) that he should show the extent of his improvement, must necessarily mean that he should show it by parol evidence ; since the Chief Justice having noticed, in the opinion, (p. 515,) that the specification does not distin- guish the impijDvement from the original machine, the Court would never have sent the cause to another trial, upon the plaintiff's claim to an improvement, if the specification was deemed too defective tp authorize his recovery. Washington, J., charged the jury. This is an action for an infringement of the plaintiff's patent, which the plaintiff alleges to bfe, — [ * 446 ] 1. * For the whole of the machine employed in the manufacture of flour, called the hopper-boy. 2. For an improvement on the hopper-boy. The question is, is the plaintiff entitled to recover upon either of these claims ? The question is stated thus singly, because the defendant admits that he uses the very hopper- boy for which the patent is in part granted, and justifies him- self by insisting, — 1. That the plaintiff was not the original inventor of the hopper-boy, as patented, but that the same was in use prior to the plaintiff's patent. 2. That his patent for an improvement is bad ; because the nature and extent of the improvement are not stated in his specification ; and if they had been, still the patent comprehends the whole machine, and is, therefore, too broad. 1. The first is a mixed question of fact and law. In order to enable you to decide the first, it will be well to attend to the ^description which the plaintiff has given of this machine in his specification, of which a model is now before you. Its parts are — PATENT CASES. 197 Evans v. Eaton. 3 Wash. 1 . An upright round shaft, to revolve on a pivot in the floor. 2. A leader, or upper arm. 3. An arm set with small inclining boards, called flights and sweepers. 4. Cords from the leader to the arm, to turn it, 5. A weight passing over a pulley, to keep the arm light on the meal. 6. A cog at the top of the shaft, to turn it, which is ope- rated upon by the water-power of the mill. The flights are so arranged, as to track, the one between the other, and to operate like ploughs ; and at every revolu- tion of the machine, to give the meal two turns towards the centre. The sweepers are to receive the meal from the elevator, and to trail it round the circle, for the flights to gather it to the centre, and also to sweep the meal into the bolt. * The use of this machine is stated to be, to [ * 447 ] spread any granulated substance over the floor ; to stir and expose it to the air, to dry and cool it, and to gather it to the bolt. The next inquiry under this head is, when was this disco- very made ? Joseph Evans has sworn that, in 1783, the plain- tiff" informed him he was engaged in contriving an improve- ment in the manufactory of flour, and had completed it in his mind some time in July of that year. In 1784, he constructed a rough model of the hopper-boy ; but having no cords from the extremities of the leader to those of the arm, it was necessary, in making his experiments, to turn around the arm by hand. In 1785, he set up a hopper-boy in his mill, re- sembling the model in Court, and the machine described in his specification. The evidence of Mr. Anderson strongly supports this wit- 17* 198 PATENT CASES. Evans v. Eaton. 3 Wash. ness ; and indeed, the discovery, as early as 1784, or 1785, is scarcely controverted by the defendant. The defendant insists that a hopper-boy, sinnilar to the plaintiff's, was discovered and in use many years anterior even to the year 1783, and relies upon the testimony of the following witflesses — Daniel Stouffer, who deposes that he first saw the Stouffer hopper-boy in his father's, Christian Stouffer's mill, in the year 1774. In 1775 or 1776, he erected a similar one in the mill of his brother Henry, and another in Jacob Stouffer's mill in 1778 or 1779. Philip Frederick swears, that in the year 1778, he saw a Stouffer hopper-boy in operation in Christian Stouffer's mill, and in the year 1783 he saw one in Jacob Stouffer's mill and another in U. Charles's mill ; and that it was always called Stouffer's machine. George Roup states, that in 1784, he erected one of these hopper-boys in the mill of one Branneman, and that in 1782, Abraham Stouffer described to him a similar machine which his father used in his mill. Christopher Stouffer, the son of Christian, has [ * 448 ] sworn, that * his father having enlarged his mill in the year 1780, erected a new hopper-boy, of the description above mentioned, which is still in use in the same mill, now owned by Peter Stouffer. If these witnesses are believed by the jury, they establish the fact asserted by the defendant, that the Stouffer hopper- boy was in use prior to the plaintiff's discovery. The next inquiry is into the parts, operation, and use of the Stouffer hopper-boy. This consists of an upright square shaft, which passes lightly through a square mortise in an arm, underneath which are fixed slips of wood, called flights ; and the arm is turned by a cog on the upper end of it, which is moved by the power which moves the mill. PATENT CASES. 199 Evans v. Eaton. 3 Wash. The arm, with the flights, operates as it turns upon the meal placed below it ; and its use is, in a degree, to cool the meal, and to conduct it to the bolt. It will now be proper to compare this machine with the plaintiff's. They agree in the following particulars : They each consist of a shaft, a cog to turn it by the power of the mill, and an arm vyith flights on the under side of it. They each operate on the meal, below the arm, to cool, dry, and conduct it to the bolt. In what do they differ? The plaintiff"'s shaft is round, and consequently could not turn the arm, into which it is loosely inserted, if it were not for the cords, which connect the extre- mities of the arm to that of the leader. The shaft of the S hopper-boy is square, and therefore turns the arm without the aid of a leader or of cords. It has neither a weight nor pul- ley, nor are the flights arranged in the manner the plaintiff's are ; and consequently, it does not, in the opinion of most of the witnesses, cool, or prepare the flour for packing, as well as the plaintiff's. The question of law now arises, which is, Are the two machines, up to the point where the difference commences, the same in principle, so as to invalidate the plaintiff's claim to the hopper-boy, as the original inventor of it? * We take the rule to be, and so it has been set- [ * 449 ] tied in this and in other Courts, that, if the two machines be substantially the same, and operate in the same manner, to produce the same result — though they may differ in form, proportions, and utility — they are the same in princi- ple ; and the one last discovered has no other merit than that of being an improved imitation of the one before discovered, and in use, for which no valid patent can be granted to any one; because he cannot be considered as the original inven- tor of the machine. If the alleged inventor of a machine, which differs from another, previously patented, merely in 200 PATENT CASES. Evans v. Baton. 3 Wash. form and proportions, but not in principle, is not entitled to a patent for an improvement, (which he cannot be, by the 2d section of the law,) he certainly cannot, in a like case, claim a patent for the machine itself. The question for the jury, then, is, are the two hopper-boys substantially th« same in principle ? not, whether the plain- tiff's hopper-boy is preferable to the other. Because if that superiority amounts to an improvement, he is entitled to a pa- tent only for an improvement, and not for the whole machine. In the latter case, the patent would be too broad, and there- fore void, where the patent is single. If you are of opinion that the plaintiff is not the original inventor of the hopper-boy, he cannot obtain a verdict on that claim, unless his is an excepted case. The 1st, 3d, and 6th sections of the general Patent Law, conclusively support this opinion. But the jupigment of the Supreme Court in this case, (3 Wheaton, 5 19,), is relied upon by the plaintiff's counsel, to prove that this is an excepted case ; insomuch that the plain- tiff is entitled to a verdict, although you should be satisfied that he is not the original inventor of the hopper-boy. That declares, " on consideration whereof, this Court is of opinion that there is error in the proceedings of the said Circuit Court, in this, that the said Court rejected testimony which ought to have been admitted ; and also in this, that in the [ * 450 ] charge delivered to * the jury, the opinion is ex- pressed, that the patent on which this suit is insti- tuted, conveyed to Oliver Evans only an exclusive right in his improvement in manufacturing flour and meal, produced by the general combination of all his machinery ; and not to his improvement in the several machines applied to that purpose ; and also, that the said Oliver Evans was not entitled to recover, if the hopper-boy, in his declaration mentioned, had been in use previous to his discovery." PATENT CASES. 201 Evans v. Eaton. 3 Wash. But we are perfectly satisfied that the interpretation put upon this clause, by the plaintiff's counsel, is incorrect; and this for the following reasons. 1. The question of priority of invention, was not before the Supreme Court; and it is there- fore incredible that any opinion, much less a judgment, would have been given upon that point. The error in the charge, which this part of the judgment was obviously intended to correct, is stated by the Chief Justice in the following words : — " This part of the charge seems to be founded on the opinion, that if the patent is to be considered as a grant of the exclusive use of distinct improvements, it is a grant of the hopper-boy itself, and not for an improvement on the hopper- boy." 2. It contradicts what is stated in p. 517, where it is said, that the plaintiff's claim is to the machines which he has invented. Now, if he did not invent the hopper-boy he has no claim to it ; and if so, could the Court mean to say, that he was nevertheless entitled to recover under that claim ? Such a decision was certainly not called for, by the terms of " the Act for the relief of Oliver Evans," but would seem to be in direct violation of it. The Act directs a patent to issue to Oliver Evans, not for his hopper-boy, elevator, &c., but " for his invention, discovery, and improvements in the art, &c., and on the several machines which he has disco- vered, invented, and improved." Now, if the hopper -boy was not invented, &c., by Oliver Evans, this Act, (without which Oliver Evans could not have obtained a patent,) did not authorize the Secretary of State to grant him one for that machine ; or if granted, it is * clear that it [*451 ] was improvidently done. If, indeed, the Supreme Court had been of opinion, that the fact of Oliver Evans's prior invention was decided, and could constitutionally have 202 PATENT CASES. Evans v. Eaton. 3 Wash. been decided by Congress, there might have been more diflS- cjulty in the case ; But the argument of counsel, which pressed that point upon the Court, was distinctly repudiated. We conceive that the meaning of that part of the opinion is, that this Court erred in stating to the jury, that Oliver Evans was not entitled to recover, if the hopper-boy, that is, the original hopper-boy, had been in use prior to the plaintiff's alleged discovery of it ; because, if the plaintiff was entitled to claim an improvement on the hopper-boy, which this Court had denied, and which the Supreme Court affirmed, this Court was clearly wrong in saying to the jury, that the plain- tiff could not recover for his improvement ; which, in effect, was said. Upon the whole, then, the Court is of opinion that Oliver Evans is not entitled to a verdict in his favor, as the inventor of the hopper-boy, if you should be of opinion that another hopper-boy, substantially the same as his in principle, as before explained, up to the point where any alteration or improve- ment exists in his hopper-boy, was invented, and in use prior to the plaintiff's invention and discovery, however they may differ in mere form, proportions, and utility. 2d. The plaintiff's next claim is, to an improvement on a hopper-boy ; which claim, we were of opinion, in another case, has received the sanction of the Supreme Court. His counsel contended, that his improvement is — 1. On the original method of supplying the bolt by manual labor. 2. On his own hopper-boy ; and 3. On some hopper-boy in- vented by some other person. Let this position be analyzed : — I. It is said to be an improvement on the original method by manual labor. But it is obvious, that if this be the inven- tion, it is of an original machine ; because, wherever the Patent Law speaks of an improvement, it is on [ * 452 ] some art, machine, or ' manufacturer, &c. ; and PATENT CASES. 203 Evans v. Eaton. 3 Wash. not on manual labor, which was applied to the various arts, long before the invention of machinery to supply its place. 2. An improvement on his own discovery. But where is the evidence of such invention ? It is true, that Joseph Evans has stated that the plaintiff constructed, in 1784, a rude model of a hopper-boy ; but it was no substitute for manual labor, because, without the cords or leading lines, the arm could not move ; and it was, therefore, turned by hand. It was, in fact, in an incomplete state, — in progress to its completion, but not given out, or prepared to be given out, to the world as a machine, before 1785, when the cords to turn the arm were added. 3. An improvement on a former machine. This is a fair subject for a patent ; and the plaintiff has laid before you strong evidence to prove that his hopper-boy is a more useful machine than the one which is alleged to have been previously discovered and in use. If, then, you are satisfied of this fact, the point of law, which has been raised by the defendant's counsel, remains to be considered ; which is, that the plaintiff's patent for an improvement is void, because the nature and extent of his improvement are not stated in his specification. The patent is for an improved hopper-boy, as described in the specification which is referred to and made part of the patent. Now, does the specification express in what his im- provement consists ? It states all and each of the parts of the entire machine, its use and mode of operating ; and claims, as his invention, the machine, the peculiar properties or principles of it, namely, the spreading, turning, and gathering the meal ; and the raising and lowering of its arm, by its motion, to accommodate itself to the meal under it. But does this description designate the improvement, or in what it consists? Where shall we find the original hopper-boy 204 PATENT CASES. Evans v. Eaton. 3 Wash. described, either as to its construction, operation, or use ; or by reference to any thing by which a knowledge of it may be obtained ? Where are the improvements on [ * 453 ] * such original stated ? The undoubted truth is, that the specification communicates no information whatever, upqp any of these points. This being so, the law, as to ordinary cases, is clear, that the plaintiff cannot recover for an improvement. The 1st section of the general- Patent Law speaks of an improvement as an invention ; and directs the patent to issue for his said invention. The 3d section requires the applicant to swear, or affirm, that he believes himself to be the true inventor of the art, machine, or improvement, for which he asks a patent; and further, that he shall deliver a written description of his invention, in such full, clear, and exact terms, that any per- son, acquainted with the art, may know how to construct and use the same, &c. That it is necessary to the validity of a patent, that the specification should describe in what the improvement consists, is decided by Mr. Justice Story, in the cases referred to in the appendix to 3 Wheaton, and in the English case of Boulton V. Bull, Boville v. Moor, M'Farlane v. Price, Harmar v. Playne, and perhaps some others. What are the reasons upon which this doctrine is founded ? They are to guard the public against unintentional infringe- ments of the patent, during its continuance, and to enable an artist to make the improvement, by a reference to some known and certain authority, to be found amongst the records in the office of the Secretary of State, after the patent has run out. But it is contended, by the plaintiff's counsel, that the law would be unreasonable to require, and, therefore, that it does not require this to be done, unless the improvement is upon a patented machine, a description of which can be obtained by PATENT CASES. 205 Evans v. Eaton. 3 Wash. a reference to the records of the office of the Secretary of State ; that it. might often be impossible for the patentee to discover, and consequently to describe the parts of a machine, in use, perhaps, only in some obscure part of the world. The answer to this is, that an improvement necessarily implies an original ; and unless the patentee is acquainted with the original, which * he supposes he has improved, [ * 454 ] he must talk idly, when he calls his invention an improvement. If he knows nothing of an original, then his invention is an original, or nothing; and the subsequent appearance of an original, to defeat his patent, is one of the risks which every patentee is exposed to under our law. As to the supposed distinction between an improvement on a machine -patented, and one not so, there is nothing in it. , In both cases, the improvement must be described; but with this difference — that, in the former case, it may be sufficient to refer to the patent, and specification, for a description of the original machine, and then to state in what the improvements on such original machine consists ; whereas, in the latter case, it would be necessary to describe the originS machine, and also the improvement. The reason for this distinction is too obvious to require explanation. If the general law upon this subject has been correctly stated, the next question is, is this an excepted case ? It is contended by the plaintiff to be so ; 1st, in virtue of the Act for the relief of Oliver Evans ; and 2d, by the decision of the Supreme Court. 1. Under the private act ; that declares that the patent is to be granted, in the manner and form prescribed by the general Patent Law. What constitutes the manner and form in which a patent is granted by this law ? The obvious answer is, the petition, the patent, with the signature of, the President and the seal of the United States affixed to it — the oath, or affirmation — the specification, or description of VOL. I. P. c. 18 206 PATENT CASES. Evans v. Eaton. 3 Wash. the invention, as required by the 3d section —r- the drawings and model, if required. Will it be contended that a patent would be granted, in the manner and form prescribed by this law, if there were no description whatever of the invention ? And if it would not, which is taken for granted, where is the difference betjyeen the total absence of a specification and one which has no reference at all to the invention [ * 455 ] for which the patent is granted ? This * is not the case of an imperfect or obscure description, but of one which relates exclusively to the whole machine ; whereas the invention, for which the patent is granted, is for an improvement only. 2. The opinion of the Supreme Court, which states, "that it will be incumbent on the plaintiff, where he claims for an improvement, to show the extent of his improvement." ^ But how is it to be shown ? The Court has not pointed out the manner ; and we, therefore, think the only fair implication is, that it must be shown as the statute of the United States, and the general principles of law require, — by the patent and specification, if it may be shown by parol evidence to the jury, as the plaintiff's counsel contend it may, then it may be fairly asked, cut bono 1 What sort of a showing would this be, so far as it could be productive of any useful purpose? As to this defendant, the evidence comes too late to save him from the consequences of an error, however innocently com- mitted. As to the public at large, with a view to caution during the continuance of the patent, and to information of the nature of the improvement, after its termination, the evi- dence given in this cause must be evanescent and totally useless. We feel perfectly convinced that the meaning of the Su- preme Court, as to this subject, is again misunderstood by the ' 3 Wheaton, page 518. PATENT CASES. 207 Barrett et al. v. Hall et al. 1 Mason. plaintiff's counsel ; not only for the reasons above mentioned, but because the extent and construction of the plaintiff's patent, and ^ot the validity of it, in relation to any one of the .machines, were the questions before that Court; and none others, (in reference to the charge,) were argued at the bar, or reasoned upon, by the Chief Justice, in delivering the opinion. Upon the whole, we are of opinion tiiat the plaintiff is not entitled to a verdict, for the alleged infringement of his patent for an improvement on the liopper-boy. Verdict for defendant. Bakektt & Stearns v. Hall et al. [1 Mason, 447.] A joint patent may well be for a joint invention, but not for a sole invention of one of the patentees. If each of the patentees obtain separate patents for the same invention, as his exclasive invention, and afterwards both obtain a joint patent for the same, as their joint invention, they are estopped by the joint patent to assert any title under the several patents. A patent may well be for a new combination of machines, whether the machines be old or new. But one patent cannot, at the same time, include an exclu- sive right in the combination and in each of the machines ; and it is no infringement of a patent for the combination, to use either of the machines separately. There must be several patents for several improvements of distinct machines. A patent for an improved machine must show in the specification, in what the improvement precisely consists ; and the patent be limited to those improve- ments. If not specified, the patent is void for ambiguity ; if broader than the improvements, it is void on other grounds. Where a combination of machinery exists up to a certain point, and the paten- tee makes an improvement, he should not include in his patent the whole machinery ; but only the improvement. If a party make an improvement on an existing machine, or invent a new machine, his patent should not be for a method, but for this machine, or improved machine. Case for the infringement of a patent, granted for " a new 208 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. and useful improvement, being a mode of dyeing and finishing all kinds of silk woven goods." Plea, the general issue, with a specification of special matter of defence. , The patent was granted ofi the 9th day of September, 1818 ; and after reciting that the plaintiffs had alleged that they had invented " a new and useful improvement, being a mode of dyeing and finishing all kinds of silk woven goods," granted to the plaintiff " the full and exclusive right and liberty of mak- ing, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said Abner Stearns and the said William Bar- rett themselves, in the schedule hereto annexed, and is made a part of these presents," for the term of four years from the 12th day of May, 1818. The specification, annexed to the letters-patent, contained a description of two ma- [ * 448 ] chines ; one a reel, * on which spirally to wind and secure the silk, and put it into the dye ; the other, a frame for the purpose of extending and finishing the silk after it is dyed.^ 1 Specification. The reel is designed to extend the silk, when immersed in the dye-stuiF, so that this may pass freely and come in con- tact with the whole surface of the silk or material to be dyed, and yet the silk, or material, shall occupy the smallest possible or convenient space in the dye-tub. This machine consists of two sets of arms, each resembling in form the hub and spokes of a wheel, without the rim or fellies. In the hub of one is formed a female screw ; in the other, a smooth cylindrical hole, in which one end of the axle may freely turn. The axle consists of a inale screw, except that one end thereof is turned smooth to adjust to the whole of the hub that is smooth, and the other end is for an inch or two square, to receive the eye of a winch or crank-. It is about three or five feet long. The male screw of the axle is cut to fit the female screw in the hub, hav- ing the same therein. The two sets of arms are besides connected with each other by two square bars of wood or metallic substance like the axle- One end of each is securely fixed to the hub having the smooth hole, and PATENT CASES. 209 Barrett et al. a. Hall et al. 1 Mason. * At the trial it was admitted that the infringe- [ *449 ] ment of the plaintiff's patent, if any, was by the use the other ends are adjusted to square holes made in the other hub, through which they slip or pass as the hubs or set of arms are made to approach each other, and thus prevent the hubs from turning, as the screw axle is turned round for the purpose of approximating or withdrawing the sets of arms, to or from each other. Thus it is easy to perceive that with one set of arms held on to the smooth cylindrical end of the axle, by a pin and washer or otherwise, so that the axle may freely turn therein, or in the hub thereof, the other set of arms, having the female screw, will be made to approximate to or recede from this, as the screw axle may be turned to or from, by a handle or winch affixed to the square end of the axle. The utility of this movement will presently appear. The hub of the sets of arms may be made of any convenient size. The dimensions adopted in practice at present are as follows : — The material any metal or metallic composition. The last, however, has been adopted in practice. »The hub is about five inches in diameter, and two inches through ; is mortised to receive the arms, which are flat square about six- teen inches long, but tapering from the hub to the end ; and upon the sides of these arms or spokes are secured small brass pins, which are so set in grooves, cut into the sides of these arms transversely and diagonally, that the pins point inward and upwards, and divergently from the axle. The distance between these pins is quite small, about three sixteenths of an inch. The mode of applying the silk and immersing the same, is as follows : — Both sets of arms, being placed on the axle as above repre- sented, the machine is supported by the axle on two standards outside of the arms horizontally. The set with the female screw is then approximated by turning the winch to a distance from the other, a little less than the width of the material to be dyed. One end of the silk is then attached by the operator to opposite arms upon the pins therein nearest to the axle, and then the operator turning the machine a little for himself, the silk is further attached to the next arms by the pins nearest to the axle, and' so on successively till the whole is attached and wound round upon the ma- chine in a spiral form. Then turning the screw axle by the winch, the set of arms having the female screw therein, recedes by a regular motion susceptible of the most accurate adjustment to the width of the silk ; and thus it is held perfectly extended between the arms and by the selvages, in such a manner as not to be in contact with itself, but to leave free pas- 18* 210 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. of the reel only ; and that the defendant did not use the silk frame, either in connection with, or separately from, the reel. sage for the dye-stuff to apply itself equally to every part of the whole surface; and in this state of tension it is immersed by operation, of a tackle and fall atmched to one end of the axle until it is properly saturated or dyed. It is obvious that the silk by this means may be most conveniently rinsed, and most readily drained. Also it is apparent that the position of the pins on the arms, they inclining upwards and bending a little from the operator, as he applies the silk, must facilitate both the application of the material for dyeing, and the disengagement thereof after this operation is performed. There has been, it is said, a reel heretofore in use for like purposes ; but this, if it 'ever were so used, consisted of four arms or two cross pieces, adjusted to a square axle, and the set of arms were kept separate or fixed upon the axle, not by a screw, but by pins passing through holes in said axle. Instead of pins affixed to the arms, there were common tenter hooks driven into the inner side of the arms, and the whole so constructed as to be utterly inapplicable to the purpose of dyeing silk or other goods, without great injury. The machine for which these applicants claim a patent is, in all material respects, an improvement upon this. The design of the silk frame is to extend the silk for drying and finish- ing; and it is contemplated to use it for all kinds of goods, which, in the ' operation of dyeing, require to be so extended. It is a wooden frame consisting of fourteen posts, about four feet or more in height, connected by rails in such a manner as to be perfectly solid and firm. The opposite posts are connected by two strong rails of about eight feet in length, one at the bottom and one within a few inches of the top, well morticed and tenanted into the posts ; while two strong pieces of plank lying upon the bottom connecting rail, leaving a, space of about two feet more or less between them, one firmly secured to these said bottom rails. A strong rail is fastened to the posts throughout the whole length of the frame, and thus gives it all the requisite solidity and firmness. Upon the upper rail connecting the opposite posts, which are placed at a dis- tance of ten feet from post to post along the length of the frame, are lain two pieces of plank sixty feet long, and about eight or ten inches wide. These are made to move or slide in these upper rails, so that when the silk is attached to their inner edges, they may be withdrawn from each other tiU the requisite degree of tension is obtained. PATENT CASES. 211 Barrett et al. v. Hall et al. 1 Mason. The plaintiffs stated tiieir improvements to consist, 1st. In the spiral winding of the silk on more arms than four The mode in -which the silk is attached to the edges of these cheeks, and then the cheeks withdrawn, is as follows : — The inner edges of the cheeks are covered by a thin plate of copper, about half an inch wide, nicely attached thereto. Sixty pieces of wood, cut from board or plank, say from an inch to an inch and a half, or two inches thick, about a foot long on one side, and cut up in a triangular form, are adjusted to each cheek. The base being, as above, one foot in length, it is attached by hinges to the superior surface of the cheeks in such a manner that the edge of the base will coincide exactly with the inner edge of the cheek, whep the piece rests on its base. On this too there is a copper edging, and thus, this copper edging, when these pieces are raised upon their basis, comes closely in contact with the copper edges along the line of the inner edges of the cheeks, and by firm pressure are made to hold the selvages of the silk, &c. To the outer side of these pieces, which are called lap-joints, are attached some iron stays, about six or eight inches long, being a little longer than the lap-joints are wide or high. These stays are attached by a staple, or eye, to the upper part of the lap-joints, and the foot of each is made to slide into a groove, cut in the superior surface of the cheek, and lined with copper, so that by forcing the foot of the stay into the groove, the lap-joint is made to press firmly upon the selvage of the silk, when lain upon the copper edge of the cheek. The silk is first secured by one selvage to one cheek ; then the other cheek being approximated suffici- ently, the operator in like manner applies the selvage to the other cheek edge, and secures it by successively raising up and securing the lap-joints. The former cheek is fastened to the upper rail by strong iron pins passing through this and the said connecting rails of opposite posts. The other cheek, which is called the front cheek, is then gradually withdrawn tiU the silk is perfectly extended. The mode of withdrawing the front cheek is thus : To this cheek, opposite to each post, all of which, on this side, rise two feet above the cheeks, are attached several pieces of iron, long enough to pass through the posts, on which pieces of iron are cut screw threads, so that nuts, being set in wheels and applied to said pieces of iron, by the turning of all the wheels simultaneously and with equal velocity, the whole front cheek is gradually withdrawn till the proper degree of tension in the silk is obtained. These wheels are put in motion by a chain band carefully adjusted, so that the links thereof embrace projections in the periphery, and the power is applied indififerently to either wheel, by 212 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. [ * 450 ] arms, so as to * assume the shape of a circular spiral, instead of a square spiral. 2ndly. In the use of small pins, obliquely placed on the arms of the reels, to hook the selvages of the cloth, and hold it in a spiral form. 3dly. In separating the opposite arms gradually, by the means of a screw, and thus gradually extending the silk. [ * 451 ] 4thly. In the use of side bars to sustain * the screw, and prevent it from turning with the machine, when it was not wished. It appeared in evidence that reels with four arms had been used before the granting of the patent, with tenter-hooks (instead of pins) to wind the. silk on in a square spiral. And the use of a screw, for the purpose of gradually separating the opposite arms, was described in a book printed in London, in a pin six or eight inches long thereto attached, to serve as a handle or winch. There may be other modes of withdrawing the front cheek, tut the special subject of patent, for which letters are claimed, is the mode of securing the silk as above described by lap-Joints, and the gradual and exact tension obtained by the withdrawing of the whole front cheek, simultaneously and equally at one operation as aforesaid. In these and in all material respects, this frame is an improvement upon the pin fram^ formerly in use, and also a frame, that was constructed to hold the selvages by pieces of board lain flat upon the cheeks, and pressed by wooden screws attaching them to the cheeks. The copper edges being a very considerable improvement on this last mentioned frame, which had become useless by reason of the absorption of the dye-stuffs in the wooden edges of the cheeks, and slabs or boards above mentioned. The silk being thus extended, the ends thereof are secured by a cross bar set with pins, or by a piece of wood split so as to hold the ends, and the whole is ready for the operation of drying and finishing, which is done thus : Upon the pieces of plank, which are described as fastened upon the lower cross rails, that connect opposite posts, is placed a movable car run- ning on four wheels, which is made to contain coals and move at pleasure beneath the silk, as the operator proceeds in the finishing. This being accomplished, the silk is delivered from the lap-joints by removing or sliding away the stays, and may be inunediately folded for use. PATENT CASES. 213 Barrett et al. v. Hall et al. 1 Mason. the year 1789, entitled the "Art of Dyeing Cotton and Linen Thread ; together with the Method of Stamping Silk, Cot- tons," &c., p. 501. — " Square vats are therefore constructed, about six feet deep, and three and a half wide, and about three feet in the ground, for the conveniency of the dyer. The cloth is then fixed by the selvages to two wooden frames, each composed of four bars, and of such a length as to be easily moved backward and forward in the vat. These frames are held together by means of a screw, so as to he easily let out or taken in, according to the breadth of the cloth. The cloth is * supported by little iron hooks, [ * 452 ] passed through the selvage at the opposite sides, to keep it as it were in folds throughout the piece. " The whole thus arranged is suspended with a pulley over the vat, by means of cords fixed to each corner of the frame, and uniting in the middle, so that, by slackening the pulley, the linen is dipped without being rumpled. When necessary to air and ungreen, by drawing the pulley the frame rises, and the cloth drains into the vat." The witnesses at the trial gave different opinions as to the exact form of the machine, which was intended in this descrip- tion ; and all seemed to think it somewhat ambiguous. But the fact that the screw was to be used, as in the plaintiffs' reel, was agreed on all sides. The reels, in fact, used by the plaintiffs had eight arms. The reels used by the defendants had ten arms. Instead of pins, the defendants used on their reels staples, with a short barb to catch the silk in the first instance ; and the silk was then secured on the reels by a rod running through the selvage, and through the holes in the staples. Instead of a screw, the defendants used a rack and pinion (which, it was admitted on all sides, was a different mechanical power) to separate the opposite arms after the silk was on the reel. In the spiral winding of the silk, the reels of the plaintiffs and the defendants were alike. Some of the 214 PATENT CASES. Barrett ek al. v. Hall et al. 1 Mason. witnesses were of ppinion that the reels were ahke in what they called principle ; others were of an opposite opinion. All of them, however, agreed as to the specific agreements and differences between them. It further appeared in evidence that in the year 1809, the plaintiffs severally obtained patents from the Department of State for the same invention, each of them then claiming and swearing that he was the sole inventor ; and neither of these patents had ever been re- pealed.^ [ * 453 ] * The jury found a verdict for the plaintiffs. And a motion for a new trial was made by Gallison and Prescott, for the defendants, iipon the following grounds : — 1st. Because if the patent, which is declared upon in this action, be construed as a patent for the entire machine, called a reel, described in the specification, then the same includes parts, which at the trial were proved, and in the same speci- fication are admitted to have existed, in combination in a machine for similar purposes, long before the supposed inven- tion of the plaintiffs, to wit, in the reel composed of four arms, or two cross pieces, on which' it was admitted that the cloth was wound in a square spiral, which reel is described in said specification as before in use ; and the judge, who charged the jury at the trial of said issue, did direct them that merely increasing the number of arms was not an invention that would in law entitle the plaintiffs to a patent, no certain number of arms being claimed in said specification ; and did also direct them, that, as it respected this patent, if the former square reel was believed to have been in use before the invention claimed in this patent, the defendants had a right to use the reel-head^ resembling the hub and spokes of a wheel, and also the spiral form of winding the cloth; and that the said patent, if it extended to the whole machine, and went to secure the exclu- 1 Stearns v. Barrett, 1 Mason, 153, ante, 97. PATENT CASES. 215 Barrett et al. v. Hall et al. 1 Mason. sive right to every part thereof, as the invention of the plain- tiffs, was broader than their invention, and therefore void. And therefore the said jury, upon this construction of the patent, in returning their said verdict, must either have found that the said square 'reel did not so exist, which is against the admission of the specification, and the admissions and evidence of the plaintiffs at the trial ; or, admitting the above fact, they must have gone upon the supposition that, notwithstanding such prior use, the same might be secured by patent to the plaintiffs ; and * that their said patent was [ * 454 ] not thereby rendered void ; in which case their said verdict is against the direction of the judge in the matter of law. 2dly. Because if the said patent be construed as a patent for an improved machine, or for a certain combination, con- sisting of the machine known and used before, as set forth in the specification, and of certain improvements added thereto by the plaintiffs, then the right of the plaintiffs under their said patent must be confined to that precise combination ; and it was necessary, in order to support the plaintiffs' case, and the judge, who tried the cause, did so direct the jury, that the machine used by the defendants should, in all material and essential respects, be like the machine described in the plaintiffs' specification ; otherwise the combinations would not be identically the same, and therefore there would be no infringement ; and that, if the rack and pinion was an essen- tially different mechanical power from the screw, then there appeared a substantial difference between the two machines, which dfestroyed their identity ; and, therefore, inasmuch as it was evident on inspection, that the rack and pinion was employed in the defendants' machine to produce the same effect, for which the screw is employed in the plaintiffs' machine, and it was also proved by divers witnesses on both sides, and was not contradicted, that the rack and pinion is a 216 PATENT CASES. Barrett et'al. v. Hall et al. 1 Mason. mechanical power essentially different from the screw, the said jury must have returned their verdict in this particular, either against the evidence or against the direction of the judge, in the matter of law. 3dly. Because, at the said trial, it was clearly proved by the testimony of Allan Pollock, by the admission of the plain- tiffs, and by a public work, that hooks of different form and sizes, and of different degrees of finish and fineness, accord- ing to the nature of the cloth, had been used for the purpose of extending cloth upon frames, many years before [ * 455 ] * the pretended invention of the plaintiffs ; and this evidence was not contradicted by any other evidence in the cause. And it was also proved by the said public work, and by witnesses produced^ both by plaintiffs and defendants, to show the meaning of the description contained in the said public work, and was not contradicted by any other evidence in the cause, that many years before the said sup- posed invention of the plaintiffs, the screw axis was known, and had been used and applied for the purpose of moving one frame from or towards another, according to the width of cloth attached to said frames to be dyed. And it also appeared, and was admitted by the said plaintiffs in their specification, that before their said supposed discovery, a reel was in use for like purposes, consisting of four arms or two cross-pieces ; and it also appeared, and was admitted, that on such reel the cloth was wound in a square spiral, by means of tenter-hooks set upon the arms; and there were no other improvements claimed to have been made in any essential parts upon the said square reel, admitted by the said specification to have been before in use, excepting only the increasing of the num- ber of arms, (which the said judge directed the jury was not an invention that would in law entitle the party to a patent, no certain number being set out in said specification ; and as to which, it appeared from inspection of the machine used by PATENT CASES. 217 Bairett et al. v. Hall et al. 1 Mason. the defendants, that it consisted of eight arms only, while the machine produced by the plaintiffs consisted of ten,) the using of finished curved hooks, placed diagonally in the sides of the arms instead of tenter-hooks, formerly in use, and the afpre- said application of the screw. And the said judge directed the jury, upon these facts, that if any or all of these improve- ments had been used by the defendants, yet if none of the same was new in its principle or mode of application, the plaintiffs could not, in point of law, support their action for such use ; and therefore the * said ver- [ * 456 ] diet, in this respect, is either against the evidence, or against the direction of the judge in the matter of law. 4thly. Because it appeared in evidence as aforesaid, and was not contradicted by any testimony, that the screw had been applied for stretching cloth between two frames, in the same manner as in the plaintiffs' machine, long before the supposed discovery of the plaintiffs ; and the said judge directed the jury, that, taking this fact to be true, if the said patent was construed as a patent for the improvements made in said square reel by the plaintiffs, then the said patent included what was not invented by the plaintiffs, to wit, the said application of the screw, and, therefore, upon this con- struction of the patent, the said verdict is against the evidence, or against the direction of the judge in the matter of law. Stilly. Because at the said trial it was proved, by an inspec- tion of the machines, that the power which moved the mov- able frame or reel-head in one was a screw, and in the other a rack and pinion ; and it also was testified, and was not contradicted, that these are essentially different mechanical powers. And it also appeared, by inspection of said machines, and from divers witnesses, whose testimony was not contra- dicted, that the cloth upon the defendants' machine is secured to the arms by rods passing through staples, and through the selvages of the cloth ; and that the purpose and design of VOL. I. — p. 0. 19 218 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. certain small barbs, cut upon said staples, is merely to hold the cloth until the rods are pushed through ; and it also ap- peared that said staples and barbs resembled more the tenter- hooks, admitted to have been long in common use, than the hooks or pinion of the plaintiffs' machine ; and it also appeared that in the plaintiffs' machine the cloth is attached and secured by means of curved hooks, or pins passing through the sel- vages, and holding the cloth through the whole operation of dyeing ; and it also appeared that these two parts of [*457 ] the machine *were the only essential parts which had been improved by the plaintiffs, no other im- provement being set out in their specification. Wherefore the said verdict is against the weight of evidence, and also against law, in finding the said defendants guilty of an infringe- ment of the plaintiffs' rights. 6thly. Because the said judge, in charging the jury, did direct them, for the purposes of this trial, that the existence of two prior patents for the same thing, granted to the same patentees respectively, although both of said patents be still in force, did not affect the validity of the patent declared on. And did also direct them, for the purposes of this trial, that the oaths of said plaintiffs, respectively, made when they obtained the said prior patents, that they severally believed themselves to be true and original inventors of said machine, did not conclude them to show a joint invention of the same machine, and no claim as joint patentees therefor, both which directions the said defendants respectively submit are incor- rect in point of law. 7thly. Because the said jury, upon the whole weight of evidence produced at the trial, and upon the matters of law, in which they were instructed by the judge, ought to have returned their verdict, that the defendants were not guilty ; yet, against the said weight of evidence, and against the said directions in matters of law, they have returned their said verdict, that the said defendants are guilty. PATENT CASES. 219 Barrett et al. u. Hall et al. 1 Mason. O. Sullivan, for the plaintiffs, argued contrd. Our statute differs materially from the Statute of James. Under the Statute of James the inventor applies for, and obtains a patent, in which is contained a description, compre- hending his whole invention. But a proviso is inserted in the patent, requiring the inventor to file in chancery a specific and minute statement of what he claims as his invention. This specification is matter of record in chancery ; and whether this describes less than is contained in * the patent, may well be considered, in many cases, [ * 458 ] as mere matter of law. Hence it happens that the question, whether the patent is broader than the invention, is sometimes in England decided by the Court. So, also, under the Statute of James, the Court determines what is principle, or that character which essentially constitutes the difference or identity of machines. But in both these particulars, the Patent Law of the United States makes express provision. In respect to the principle of a machine, the statute expressly defines principle or cha- racter to be that thing, whatever it may be, whether it be found in structure or operation, or modes of operation, whereby the alleged invention may be distinguished from all others. Hence the Courts of the United States are not required to define principle. Nay, they have no power to direct tlie jury that this, or that, or other structure, constitutes the character of a ma- chine, whereby it is distinguished from all other inventions. The judges, as I apprehend the law, must admit all evidence offered by either party, from witnesses acquainted with the particular art or machinery in question, whereby the true character or distinguishing principle of the machinery may be proved. And then they are to put it to the jury as a mere matter of fact, to determine upon evidence, what constitutes the distinguishing principle of the machines in question before them, and whether that distinguishing principle, be it in struc- 220 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. ture, operation, or mode of operation, do or not exist in both machines, so as to constitute them essentially the same or different. If this were not so, the judges would draw to themselves the decision of matters of fact; for surely the question, what it is that constitutes the distinctive character of a machine, ^hereby it is distinguished from all others, is plainly matter of fact ; and it cannot be disputed, that whe- ther this same principle do or not exist in the plain- [ * 459 ] tiffs' and defendants' machine, is also * mere matter of fact. So, whether the patentee have invented any thing that is new and useful, is merely a question of fact ; for otherwise the Court must determine what has existed before ; for what has existed before must be shown in evi- dence, or the Court must be presumed, nay required to know; and surely what has existed, is, beyond all controversy, matter of fact. Suppose the defendants insist that the patent is claimed for a bare philosophical principle. This, in like man- ner, must be referred to the jury, unless mechanical philosophy be law, and as such be presumed to exist in the breast of the Court. So if there be a question, whether the description specified be sufficient to enable artists to manufacture the machine, the sufficiency or insufficiency is matter of fact to be given in evidence by artists, or the Court must assume to itself a paramount knowledge of all arts and manufactures, and in doing so, assume the decision of mere matter of fact. Nay, as I apprehend the law, if there be evidence on both sides, the Court have not the power to determine on which side the weight of evidence appears, this being exclusively within the province of the jury ; and the Court have no power in such a case to set aside a verdict, merely because they think the verdict is against the weight of evidence. So also if there be a patent for an improvement in a patented inven- tion, and the question arise under the second section of the Patent Law, whether the alleged improvement be simply a PATENT CASES. 221 Barrett et al. v. Hall et al. 1 Mason. change in the form or proportions of a machine, this is clearly a question of fact to the jury. In like manner, all the ques- tions arising under the sixth section, whether the specification do or not contain the whole truth relative to the discovery ; whether it contains more or less than is necessary to produce the described effect, and so made for the purpose of deceiving the public ; whether the thing described in the patent was or not originally discovered by the patentee, or had been in use before ; whether * the invention had [ * 460 ] been described in some public work anterior to the supposed discovery of the patentee ; all these are mere ques- tions of fact, and such the statute expressly makes them, when it denominates the subject of these questions special matter, and provides that it may be given in evidence, if notice thereof be filed thirty days before the trial. Thus it appears that whatever may be the practice of the English Courts, under the Statute of James, in relation to the extent of the patent beyond the invention, it is clearly matter of fact here, whether the patent contain more than the invention, that is, in the English technical phraseology, whether the patent be or not broader than the invention. And this brings us to the other point of difference between our Act of Congress and the Statute of James, which respects the power of the Court to decide, if the patent is broader than the invention. And here it is only necessary to remark summarily, after what is said above, that if. the decision of the question is drawn to the Court in England, it is merely a question of fact, in this country, and as such to be determined by a jury upon evi- dence. In this place it may be pertinent to consider what evidence is to be received, touching the difference or identity of ma- chines. Certainly it is not to be expected that the Court should be informed upton all the principles of mechanics, nor, if they were, is it to be allowed that their direction to the jury 19* 222 PATENT CASES. Barrett et al. v. Hall et al. 1 Hason. on these matters of fact can be regarded as more imperative than in other cases of fact. If there be a question of sea- worthiness of a ship, the Court may well lay down the rule, that the vessel must be capable of performing the voyage insured. But after it is proved the vessel was defective in certain of her tiipibers, it surely is competent to both parties to adduce evidence to show that these defects do or not ren- der the ship incapable of performing the voyage. [ * 461 ] And whatever may be the private * opinion of the Court, they must submit the question to the deter- mination of the jury, upon the evidence produced. So in questions of deviation, and many others of the like kind. Now, in the case before the Court, the question of the identity of the machines was a mere matter of fact. It was testified that they had the same character, and were in prin- ciple the same. There was evidence to this point on both sides, and the jury found their identity. They were in fact the same. The substitution of the rack and pinion, it will appear, when the nature of mechanical powers is considered, makes no difference. What are mechanical powers? They are only the means of augmenting the force applied, and this is uniformly done in the inverse ratio of the velocity of that force. These powers are common to the whole mechanical world, and no patent can be obtained for the application of them as powers. But the patent goes for that new and use- ful structure of constituent parts, whereby the powers being applied, certain new and useful effects are produced. Now what was this structure of essential constituent parts in the machines before the Court ? It was the movable iset of arms sliding on the two square bars, passing through the hub of said moving set of arms, whereon this was made to traverse by means of a mechanical power applied. ^ It was obvious to any mechanical mind, and so Col. Baldwin testified^ that the screw, or the rack and pinion might be indifferently applied PATENT CASES. 223 Barrett et al. v. Hall et al. 1 Mason. to the same structure. Indeed, the lever, the pulley, and weight, and other powers, might also be applied to the same structure or constituent parts of the machinery. All these powers would subserve the same purpose, and by precisely the same means, that is, by augmenting the force in the in- verse ratio of the velocity with which the force moved, and of course r^egulating the force by a gradual movement. Indeed there can be no better test on earth of the identity of ma- chines, than that their structure is such that different * powers may be indifferently applied to precisely [ * 462 ] the same constituent parts, and the operations of those parts, and the effects produced by the application of one or other power be the same. At all events, whether the substitution of one power instead of another, do or not con- stitute a difference, must be a question for the jury, which they are to determine upon the evidence of intelligent mecha- nicians. To test this yet farther, let it be supposed that the defendant had applied for and obtained a patent as for an improvement on the plaintiffs' machine, and had specified the substitution of the rack and pinion, it is clear, that in an action by the defendants against a party for an infringement, it would be competent for such party to raise the question, whether the application of the rack and pinion were any thing more than a simple change of form. From evidence disclosed in this case, it might be made to appear that there was no difference in the effect, and no difference in the structure of the constituent essential parts of the machine, whereby the operation of stretching the silk is obtained. It would also appear that the force applied to give motion to the moving set of arms is augmented and graduated in the same ratio, and quoad these machines, if Col. Baldwin and others are believed, is the same. At all events, whether it were so or not, would be a question of fact to the jury ; and if they were of opinion that the substitution of the rack and pinion was 224 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. simply a change in form, the defendants in such case could not hold their patent, because the statute says simply chang- ing the form shall not be deemed a discovery. Again, if on the contrary the application of a rack and pinion were not found to be simply a change in form, but an improvement, and this were^the improvement specified, the defendants could not use the constituent parts of the machine, because the statute, second section, expressly enacts that the patentee of the improvement shall not be at liberty to use the [ * 463 ] original * discovery ; and surely if the defendants could not use the discovery of the plaintiffs, if the defendants were patentees of the application of the rack as an improvement, d fortiori they could not use the plaintiffs' dis- covery now, that they are not patentees of an improvement. Here the defendants may contend that the plaintiffs have not specified their original discovery, so that the same may be distinguished from what was known before ; and whether they have or not, is next to be considered. Now the plain- tiffs, in their specification, first describe the whole reel as used by them, and a machine in magnitude was produced. No objection was taken at the trial, as to the sufficiency of this description. It was fully admitted that the whole machine, such as it appeared, was clearly described. Then the plain- tiffs describe another reel, consisting of four arms and a square axle, through which axle some holes' being made at certain distances, the moving set of arms could be secured at the requisite distance, according to the width of the material wound upon the reel. This also was so clearly and distinctly described, that the defendants therefrom constructed in model a reel, conforming exactly to the description. Whereupon the plaintiffs, in their specifications, say that the new reel is, in all material respects, an improvement upon the old reel, and for these material improvements they claim their patent. Now whether there are any such material improvements was PATENT CASES. 225 Barrett et al. v. Hall et al. 1 Mason. matter of fact to the jury, and what these improvements were, was also matter of fact. Nothing could be plainer than that a material difference existed, both in the effect produced, and in the mode of operation to produce that effect. The jury were satisfied, both as to the difference of the new from the old, and that this difference made the new better than the old ; and what is improvement, but being different and better? But, said the defendants, the patentees ought to have desig- nated, in precise terms, the particular parts which constituted the * difference. The answer to this [ * 464 ] doctrine is found in the statute. The inventor, says the third section, shall fully explain the principles and cha- racter by which the machine may be distinguished from other inventions. Now the new machine was fully described, so that artists could make one from the specification. The old machine was described so that artists could make one like that from the description ; and it was manifest on inspection, and from the evidence, that they were in character materially different. Certainty, to a common intent alone, is required. No precise or technical language is necessary. The public derive all the benefit that the patent law contemplated secur- ing to the public, and the patentee has secured to him no more than his invention. The jury found it so ; and surely the Court cannot otherwise decide, without assuming the determination of matters of fact. In the case of Harmer v. Playne,\ it was held, that a description of the old and descrip- tion of the new machine in the same patent, although the description of the old was merely by recital of the former patent, was description enough of the improvement for which the patent was obtained. In the case of Watt and Boulton v. Bull, it was held, that-the description was suflicient, although no precise form or proportion of the condenser was described, nor 1 11 East's K. 101. 226 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. its relative position to the cylinder named, nor the means of communication between the cylinder and condenser distinctly mentioned. It is enough, said the Court,, if an artist can pro- duce the designed effect from the description contained in the specification. It cannot be that inventors are required to describe pin fgr pin, screv? for screw, and all the numerous unpatentable differences, that must exist in every machine, however new, in common with other machines. There are shades of difference in machines, which result from [ * 465 ] their * original character, and like the shades of difference in the social and professional habits of men, which depend on their predominant passions or qualities, are seen and understood, but yet are without a name, nor is it in the power of language to describe them. It is enough for the public if artists can see and understand these distinctive or essential qualities of the machine from the specification. It is enough for the parties at a trial, if the jury perceive and comprehend them, and find them, in their opinion, sufficiently described in the patent or specification. It comes next in course to consider the novel doctrine assumed by the defendants, that the plaintiffs must be con- sidered as claiming a patent for the combination, such as it was exemplified in their machine, or else they must be con- sidered as limited to special improvements, and these they must designate. Having already considered the latter alter- native, I proceed to consider the former. In the first place, there is not a word of combination in the plaintiffs' patent, nor would this be necessary to secure his invention, if this were in fact only a combination of such parts as, properly speaking, in relation to mechanics, could be combined ; for the inventor is entitled to his patent, if he fully explain his inven- tion, and the principle and character thereof, so as to distin- guish it from all others known or used before ; and surely this might be done in Evans's case without using the word com- PATENT CASES. 227 Barrett et al. v. Hall et al. 1 Mason. bination. But whatsis combination, and what parts may be combined ? Is driving a nail, or turning a screw into a piece of wood a combination ? Is putting arms or spokes to a hub — is putting two wheels to an axis, a combination ? It is obvious enough, what combination is not. Nor is it less plain what it is. The connection of several distinct machines together, like Evans's mill, so as to be operated upon by one power, giving cooperative motion to all, is clearly a combination. * There each machine has its cha- [ * 466 ] racteristic, constituent parts, a being, a life of its own ; but the connection of a thousand dead parts in one machine, having but one single operation, can never be con- sidered a combination. A watch is a combination ; for the main-spring is one power, and puts the whole machine into operation, but the hair-spring is a power that regulates this motion. Here, then, are two distinct operations. So in the card machine of Whittemore, there is a combination of parts, each performing a distinct operation, and the whole acted upon and regulated by numerous powers. But in the plain- tiffs' reel there is but one power, and one single simple opera- tion, that of moving the traversing set of arms ; and it is said " that some machines are so simple, that they cannot be con- sidered as combinations." The reel, therefore, of the plain- tiffs cannot be regarded as a combination. But if it were, and the only alleged difference were the use of the rack and pinion instead of the screw, the question of difference is for the jury ; and they are to decide, " whether, on the whole, there is any substantial difference between the machines, or whether they are substantially the same. Slight or colorable differences will not protect the defendants in their infringe- ment, or defeat the right of the patentee ; " and this brings us back to the general question of identity, which lies exclu- sively within the province of the jury ; for infringement or not, of course identity or not, says Judge Rooke, is for the jury to decide. 228 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. I have now considered the several questions made at the trial, and have shown, as it is believed, that the questions, whether the plaintiffs jointly invented the reel, whether the patent is broader than the invention, and whether the improve- ment, as such, is sufficiently described for all the purposes of the patent law. are all purely questions of fact. And I have also shown, as it is believed, that the doctrine of com- [ * 467 ] bination does not apply to the plaintiffs' reel ; * but whether it does or not, that the question of the identity of the defendants' and plaintiffs' machine is still the same, and is merely a question of fact. In presenting this view of the subject, it will be perceived that I have directly encountered all the objections taken in the defendants' motion, which are comprised in the first five causes assigned for a new trial. The five first causes are so involved with each other, that an attempt to give a special reply to each, would have left the whole subject in confusion. They altogether amount to this merely, that the plaintiffs have invented nothing ; that if they have, their invention is not sufficiently described and distinguished in the specification ; but if it is sufficiently described, the defendants have not used the plaintiffs' invention. All this is matter of fact, and as such was properly submitted to the jury; and on all these points the evidence was either full for the plaintiffs, and uncon- tradicted, or else there was evidence on both sides ; whence it follows that the verdict for either of said five causes, or for the last, cannot be set aside as being against evidence. As to the sixth cause, that the judge misdirected the jury touching the validity of the plaintiffs' joint patent, to wit, that it was valid, although patents for the same invention had been issued, in 1809, to each of the plaintiffs, as sole inventor of the same, and for aught that appeared, both the patents were in force when the action on the joint patent was commenced. The counsel for the plaintiffs is satisfied on authorities, that PATENT CASES. 229 Barrett et al. v. Hall et a1. 1 Mason. this direction was unexceptionable and correct. This is a new question in Court, although a practice in the patent-office has doubtless given many occasions of its being^ raised. But as this is not a point mainly in controversy now, I shall content myself with stating a few points of law, and citing the author- ities that support them. * It is a natural right, which every patentee hath, [ * 468 ] to surrender his invention, if the acceptance of it imposed no condition which remained unperformed. In England a patentee may surrender his patent into Chancery,^ and when the surrender is enrolled a vacatur is entered of course. This is by order of Chancery according to ancient practice. But the Circuit Court of the United States has no cognizance in chancery of patents, nor has the law designated any mode whereby a patentee may surrender his patent. In favor, therefore, of common rights, a Court of Common Law will presume a surrender, wherever it is for the interest of a patentee that he shall be considered as having surrendered. But the subsequent acceptance of a patent, which is incom- patible with a former one, is in law an implied surrender of the former. The patents of 1809 are already inconsistent with the patent of 1818. Nay, the plaintiffs, by their subse- quent oath of joint invention, have utterly defeated all title under their precedent patents, independently of the surrender implied by the acceptance of the last patent. Touching the plaintiffs' oaths as to their respective exclu- sive invention, it was regarded as clearly a matter of mistake, into which joint inventors might naturally fall when ignorant, as they each were, of the extent of the other's design and contrivance. In conclusion it is proper to observe that this motion for a new trial is an application to the sound discre- tion of the Court for an equitable interposition of its powers. 1 See Dyer's case, 1 Dyer, 179, and notes. VOL. I. — P. c. 20 230 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. To what equitable consideration are these defendants entitled? Were they not the clerk and apprentice of the plaintiff, Bar- rett ? Did they not learn of him the use of the machines in question? Did they not employ a workman of his to take the measurement of his machines, and then, from [ * 469 ] the very outset, engage him in a * suite of contri- vances, to approximate to the plaintiffs' machines, and yet to save the appearance of invasion of their rights, while, in fact, the original design of the defendants was un- questionably, by slight and colorable differences, to conceal the infringement they consciously intended ? Surely it must be admitted on all hands, that the plaintiffs have invented a most valuable method of extending the silk for dying ; and if a jury of the country, selected from that public for whose benefit the patent is granted, are in truth satisfied on all the material points, it cannot be justice to perplex and harass the plaintiffs with the necessity of further suit to obtain enjoy- ment of their just right and privilege. Besides, it must be remembered, that patents in England receive a strict construc- tion, because they are there considered as being in derogation of common right. Whereas, in the United States they are more justly regarded as bounties upon the productions of genius, and as means of great . and extensive benefit to the public. As such, they ought here to receive the most liberal construction ; and no patent should be held void, if it in fact fulfil the ultimate design of the patent law ; if it furnish in the specification a description essentially certain, to enable the public to avail itself of the invention after the patent term shall have expired. This is the object of the law ; and to this, as the great end of all its provisions, ought the attention of the judiciary and juries to be directed. Stort, J. This case has been argued for the plaintiffs, as fully and as ingeniously as its merits will allow, upon the same PATENT CASES. 231 Barrett et al. v. Hall et al. I Mason. principles and reasonings, which were pressed upon the Court at the trial. If they have failed to convince the understand- ing of the Court, it is because in some instances the premises, and in others, the conclusions, are radically unsound and in- admissible. I pass over all thie learned lecture, as to what constitutes matter of fact and * what of law, [ * 470 ] and what are the relative rights of Courts and juries as to matters of fact, because no novelty and no instruction can attach themselves to the discussion. The whole doctrine lies in the elements of the Common Law, undisputed and indisputable. As little do I think it necessary to discuss the question, what constitutes the identity or diversity of ma- chines in the abstract ; or to philosopl^ize respecting the different mechanical powers. My humble knowledge does, not permit me to venture on such difficult topics, and fortu- nately my duties as a judge do not require me to master them. I am content on these, as on other occasions, to learn from those who can give the proper instruction, and then to apply it to the solution of such questions of law as are fit to be entertained here. To be sure I must continue to believe, until better instructed, that the diflferent mechanical powers are not one and the same power ; and that a motion, which is communicated by a screw, is not communicated in the same way as that by a lever, a wheel, a wedge, or a pulley. As to the opinion of skilful witnesses, whether the principles of two machines are the same, no person doubts that it is competent evidence to be introduced into a patent cause. But care should be tak^n to distinguish what is meant by a principle. In the minds of some men, a principle means an elementary truth, or power ; so that in the view of such men all machines, which perform their appropriate functions by motion, in whatever way produced, are alike in principle, since motion is the element employed. No one, however, in the least acquainted with law, would for a moment contend 232 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. that a principle in this sense is the subject of a patent ; and if it were otherwise, it would put an end to all patents for all machines, which employed motion, for this has been known as a principle, or elementary power, from the beginning of time. The true legal meaning of the principle of a [ * 471 ] machine, with reference to the * Patent Act, is the peculiar structure or constituent parts of such ma- chine. And in this view the question may be very properly asked, in cases of doubt or complexity, of skilful persons, whether the principles of two machines be the same or differ- ent. Now, the principles of two machiaes may be the same, although the form or proportions may be different. They may substantially employ the same power in the same way, though the external mechanism be apparently different. On the other hand, the principles of two machines may be very different, although their external structure may have great similarity in many respects. It would be exceedingly difficult to contend that a machine, which raised water by a lever, was the same in principle with a machine which raised it by a screw, a pulley, or a wedge, whatever in other respects might be the similarity of the apparatus. But, although the testimony of witnesses be admissible to prove the identity or diversity of machines in principle, yet, after all, it is but matter of opinion ; and its weight must be judged of by all the other circumstances of the case. It is infinitely more satisfactory to ascertain, if we can, the precise differences and agreements ; and when these can be subjected to the eyes, they almost supersede all the evidence of mere opinion. In all my experience I can scarcely recollect a sin- gle instance, in which the general question, whether the prin- ciples of two machines were the same or different, has not produced from different witnesses, equally credible and equally intelligent, opposite answers. This could result only from the different meanings attached to the word, and from confound- PATENT CASES. 233 Barrett et al, v. Hall et al. I Mason. ing its various senses. And this has been completely shown when the same witnesses came to explain the precise agree- ments and differences, in which they have almost uniformly agreed. The case now before the Court is a perfect proof in point. The witnesses differed as to the identity or diversity of the * principles of the machines ; but [ * 472 ] they all agreed in what were the precise differ- ences and agreements in fact. There seemed then nothing left for the jury to decide, but whether these differences were substantial or formal ; if substantial, then the ma- chines were not alike ; if formal only, then they were alike. And the question, whether the principles were the same in both machines, was in reality, when all the facts were given, rather a matter of law, than of the opinion of mechanics ; at least matter of law was necessarily mixed up with it, which mechanics could not be presumed to be acquainted with. The opinion, however, which I shall express, will not turn in any material respect upon any facts controverted at the trial. I shall discuss the motion for a new trial, so far as facts are concerned, upon the admissions and statements, which the plaintiffs did not and could not deny. The doctrine of patents may truly be said to constitute the metaphysics of the law. The difficulty lies not so much in the general prin- ciples as in the minute and subtle distinctions, which occa- sionally arise in the application of those principles. I will endeavor, however, to lay down some general rules, which appear to me to embrace the whole merits of the present con- troversy, and then apply those rules more pointedly to the facts of this case. In the first place, a joint patent may well be granted upon a joint invention. There is no difficulty in supposing, in point of fact, that a complicated invention may be the gradual result of the combined mental operations of two persons acting together, pari passu, in the invention. And if this be true, 20* 234 PATENT CASES. Barrett et al. v. Hall et al. 1 Hason. then as neither of them could justly claim to be the sole inventor in such a case, it must follow that the invention is joint, and that they are jointly entitled to a patent. [ * 473 ] And so are the express words of the Patent * Act,^ which declares that if any persoh or persons shall allege that he Qr they have invented, &c„ a patent shall be granted to him or them for the invention. In the next place, a joint patent cannot be sustained upon a sole invention of either of the patentees ; for the Patent Act gives no right to a patent, except to the inventor ; and requires an oath from the party who claims a patent, that he is the true inventor. In the next place, a joint patent for an invention is utterly inconsistent with several patents for the same invention by the same patentees. For it is impossible that any person can be, at the same time, the joint and sole inventor of the same invention. If, therefore, each of the joint patentees obtains a several patent for the same invention, as his own exclusive invention; and, afterwards, without surrendering the first patent, they obtain a joint patent for the same as a joint inven- tion, either the former sole patents are void, or the joint patent is void. For, besides the apparent inconsistency of the patents, if all could be sustained, then a recovery upon the joint patent would be no bar to a suit upon the several patents; and the parties might obtain a double recompense for the same infringement. There is an additional reason which deserves great consideration; and that is, that if sole and joint patents could be sustained by the same parties for the same invention, they might be successively taken out, so that the term of the exclusive right might be prolonged for a great length of time, instead of being limited to fourteen years. I am, therefore, clearly of opinion that a grant of a subsequent Act of 21 February, 1793; ch. 11, § 1. PATENT CASES. 235 Barrett et al. v. Hall et al. 1 Mason. patent for an invention, is an estoppel to the patentee to set up any prior grant for the same invention, virhich is inconsis- tent with the terms of the last grant. And I have very great doubts whether, when a patent is once granted to any person for an invention, he can legally acquire any right under a subsequent patent for the same invention, unless his . first patent be * repealed for some original [ * 474 ] defect, so that it might truly be said to be a void patent. , In the next place if several patents are taken out by several patentees for a several invention, and the same patentees after- wards take out a joint patent for the same as a joint invention, the parties are not absolutely estopped by the former patents from asserting the invention to be joint; but the former patents are very strong evidence against the joint invention. The reason of this doctrine is, not that estoppels are odious in the law, but that a party may innocently mistake, as to the extent of his own claims. And though a sole and joint invention, by the same persons of the same thing, cannot exist in fact ; yet a party may suppose that he has invented what in truth has been partly suggested by another mind. In the present case each of the plaintiffs (Barrett and Stearns) obtained, in the year 1809, a several patent for the present invention, as his sole invention ; and the patent, on which this action is brought, is a joint patent granted in 1818. In this view the doctrine already stated directly applies in the case. It is the same, as was stated to the jury at the trial, and on the most mature reflection, I adhere to it. In the next place a patent may be for a new combination of machines to produce certain effects ; and this, whether the machines, constituting the combination, be new or old. But in such case, the patent being for the combination only, it is no infringement of the patent to use any of the machines separately, if the whole combination be not used ; for in such 236 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. a case the thing patented is not the separate machine, but the combination ; and the statute gives no remedy, except for a violation of the thing patented. This was the doctrine of Mr. Justice Washington in his most able opinion in [ * 475 ] Evans v. Eaton ; and it has not * been in the slightest degree shaken in the Supreme Court.^ I hesitate not one moment in adopting it, as established on solid foundations. It has indeed been said that vrhere there is a patent for the whole of a machine, whoever imitates it, either in whole or in part, is subject to an action at the suit of the patentee.^ But supposing this doctrine to be true in any case and under any qualifications, (which may well be doubted,) it can apply only where the whole machine is entirely new, and cannot apply where the patent is limited, by its very terms, to the combination of several machines. Further. A patent under the general Patent Act cannot embrace various distinct improvements or inventions ; but in such case the party must take out separate patents. If the patentee has invented certain improved machines, which are capable of a distinct operation ; and also has invented a com- bination of those machines to produce a connected result, the same patent cannot at once be for the combination and for each of the improved machines ; for the inventions are as dis- tinct as if the subjects were entirely different. A very signi- ficant doubt has been expressed on this subject by the Supreme Court ; and I am persuaded that the doubt can never be suc- cessfully removed.^ Further. If a patent be for an improved machine, or for an improvement of a machine, (for 1 follow Mr. Justice Heath* ' Evans v. Eaton, 3 Wheat, K. 454, 476, 506. 2 Bovill V. Moore, 2 Marsh. R. 211. 3 Evans o. Eaton, 3 Wheat. K. 454, 506. 4 Boulton V. Bull, 2 H. Bl. 463, 482. PATENT CASES. 237 Barrett et al. v. Hall et al. 1 Mason. and the Supreme Court^ in thinking that the meaning of the terms is substantially the same,) then the patent must state in what the improvement specifically consists ; and * it must be limited to such improvement. If, there- [ * 476 ] fore, the terms be so obscure* or doubtful, that the Court cannot say what is the particular improvement which the patentee claims, and to what it is limited, the patent is void for ambiguity.^ And if it covers more than the improve- Oient, it is void for another reason, that it is broader than the invention. Further. Where a combination of machinery already exists up toa certain point; and the patentee makes an addition or improvement to the machinery ; he must confine his patent to the improvement ; for if he takes a patent for the whole ma- chine as improved, not distinguishing between the new and old, nor limiting his patent to the improvement, it is void, because, as so claimed, it is not his invention.^ Further. If an invention consist in a new combination of machinery, or in improvements upon an old machine to pro- duce an old effect ; the patent should be for the combined machinery or improvements on the old machine, and not for a mere mode or device for producing such effects, detached from the machinery. This appears to have been the doctrine of all the judges in Boulton v. Bull,* and was illustrated by several of the cases there put. And in a recent case, where a patent was obtained for " an improved mode of lighting cities," it was held, that it was not supported by a specifica- tion describing an improved street lamp ; and that the patent ought to have been for an improved street lamp.^ So, where 1 Evans V. Eaton, 3 Wheat. K. 454. 2 M'Fariane v. Price, 1 Starkie E. 199. 8 Bovill V. Moore, 2 Marsh. K. 211. 4 2 H. BL 463. 5 Cochrane v. Smethurst, 1 Starkie E. 205. 238 PATENT CASES. I Barrett et al. v. Hall et al. 1 Mason. the patent was for " a new invented manufacture of lace, called French, otherwise ground lace," and the specification went generally to the invention of mixing silk and cotton thread upon the frame ; it being proved, that, prior [ * 477 ] to the patent, silk and cotton * thread had been used together and intermixed upon the same frame, the Court held the patent bad, since the plaintiff claimed the exclusive liberty of making lace, composed of silk and cotton thread mixed, and not of any particular mode of mixing it ; and the evidence proved it had been mixed before.^ This doctrine may not be of as extensive consequence under our Patent Act, where the specification forms a part of the patent, and may control its generality, as in England, where the specification is separated from it. But it distinctly shows the necessity of an exact description, so that the patent may con- form to the invention. Let us now apply these principles to the case at bar. The patent is " for a new and useful improvement, being a mode of dyeing and finishing all kinds of silk woven goods." If these terms alone were to be considered as descriptive of the sub- ject-matter of the patent, it would be open to the objection in Cochrane v. Smethurst,^ for the specification shows no other mode of dyeing and finishing silks, than by the use of an im- proved reel and an improved silk frame ; and the patent ought to be for these improvements. But as the specification forms a part of the patent, and controls the generality of the pre- ceding terms, it is to be construed a patent for a mode of dye- ing and finishing silk woven goods, by means of an improved reel and an improved silk frame. The patent, then, is not for a mode of dyeing alone, but of dyeing and finishing silks ; and this, by means of the use of both machines, so that it is a ' The King v. Else, 11 East K. 109, note. 2 1 Starkie B. 205. PATENT CASES. 239 Barrett et al. v. Hall et al. 1 Mason. patent for the machines in combination, and not separately. If so, then the defendants may use either of the machines separately, without infringing the patent-right ; for the exclu- sive right of the combination only is secured to the plaintiffs. In this view, there is an end of the present suit ; for it is admitted by the plaintiffs, * that the defendants [ * 478 ] did not use the silk frame, and that the only infringe- ment, for which they seek a recompense, is the use of the reel. But if the patent could be construed as a patent for each of the machines severally, as well as in the combination, then it would be void ; because two separate inventions cannot be patented in one patent. And the same objection would lie against it, if it were to be construed as a patent for each of the machines severally, and not in combination. If, however, all these difficulties could be surmounted, and the patent were to be construed as a patent for an improved reel and an improved frame separately, there remain other insuperable objections. There is no pretence that the patent can be sustained for the whole reel, as a new invention, although some part of the language of the specification might lead to the conclusion that the plaintiffs so intended to claim ; for reels were in use before for the same purpose. And if it were otherwise, the plaintiffs could not recover ; for the de- fendant does not use precisely the same machine; and if he did, the patent would be broader than the invention, and so void. The patent, therefore, must stand, if at all, as a patent for the improvements only upon the old reel. And what the improvements claimed by the plaintiffs are, must be decided exclusively by the terms of their specification. The words of the specification, after describing the improved reel, are : — "There has been, it is said, a reel heretofore in use for the like purpose ; but this, if it ever were so used, consisted of four arms, or twc^cross piefies, adjusted to a square axle ; and the set of arms were kept separate or fixed upon the axle, not 240 PATENT CASES. Barrett et al. v. Hall et al. 1 Mason. by a screw, but by pins passing through holes in said axle. Instead of pins affixed to the arms, there were common tenter hooks driven into the inner side of the arms, and the whole so constructed as to be utterly inapplicable to the purpose of dyeing silk or other goods without great injury. The [ * 479 ] machine, * for which the applicants claim a patent, is, in all material respects, an improvement upon this." This is the whole statement of the improvements in the reel, in the plaintiffs' specification. And assuming that it is not utterly defective, from omitting to' specify the parti- cular improvements for which the patent is claimed, (for a general statement, that the patented reel is, in all material respects, (without stating what these are,) an improvement on the old reel, is no specification at all,) the plaintifTs have bound themselves to the improvements so specified, and cannot now claim beyond them.^ Now, the plaintiffs have specified no particular number of arms to be used in their machine, as among their improvements, and therefore no particular num- ber of arms is patented. The machine is stated by themselves to consist " of two sets of arms, each resembling in form the hub and spokes of a wheel, without the rim or fellies." There is, therefore, nothing new in this particular ; and, in point of fact, the plaintiffs use eight arms and the defendants ten arms in their respective reels. The two principal improvements, actually specified, are the use of a screw, to separate gradually and keep apart the opposite arms of the reel, instead of a pin passing through a hole in the axle ; and the use of oblique transverse pins to hold the selvages of the silk, instead of tenter hooks. Now, in point of fact, the defendant does not in his reel use the pins described in the specification, but staplesj with a small barb, which are at least as different in form and effect from the pins, as the pins are different from tenter hooks. And pins or hooks of all sizes and finish w»re proved at the J Kex V. Cutler, 1 Starkie R. 354. PATENT CASES. 241 Barrett et al. v. Hall et al. 1 Mason. trial to have been used for at least thirty years last past, for the same purpose. There is no pretence that the staples and barbs used by the defendants are exactly in size, shape, and direction, like the plaintiffs'. Then, as to the screw ; it is a sufficient * answer to the plaintiffs, that, by [ * 480 ] their own showing, the defendant never used the screw in his reels ; but used a rack and pinion, which, it is agreed, is a different mechanical power. The only two im- provements, therefore, which are specified, are not used by the defendant, either separately or in combination. How, then, is it possible to contend that he has violated the plaintiffs' patent ? This^is not all. The pin or hook used for this purpose is not a new invention. It has been long in use, and, as was proved at the trial, at least for thirty years. I do not say that a pin or hook was used exactly of the same shape, dimensions, and oblique position, as that used by the plaintiffs. But it is to be considered that the mere change of the form or propor- tions of any mechanical apparatus is not, by the express terms of the Patent Act, to be deemed a patentable invention. And as to the screw, its use for the very purpose proposed by the plaintiffs, is completely described in the work cited at the bar, printed in 1789. The words are, "these frames are held together by means of a screw, so as to be easily let out, or taken in, according to the breadth of the cloth." If, therefore, the patent could be considered as a patent for each of these improvements separately, it could not be sus- tained ; for neither of them is new in substance. If, for the combined improvement, then, in the first place, the defendant has not used them; and, in the next place, the patent is broader than the invention ; for, up to a certain point, the improvements existed before. The screw was in use for the same purpose, as early as* 1789. But, if we could go beyond the patent and specification, VOL. I. — p. c. 21 24a PATENT CASES. Barrett et al. u. Hall et al. I Mason. and consider the patented improvements to be such improve- ments as the plaintiffs now claim, it would not relieve the case from a single difficulty. The plaintiffs now claim in addition to the improvements already specified, 1st. The use of more arms than four to wind the silk in a spiral form. [*481 ] * Th^silk was wound in a spiral form before ; and surely it cannot be pretended that the use of more than four arms on a reel or wheel was not known as well before as since the plaintiffs' invention. Besides ; the plain- tiffs have not specified any particular number of arms as their invention, and they never used but eight ; and if such use constitute a separate invention, the defendant is at least as well entitled to claim the use of his ten as his own invention. If adding a given number of arms be an invention, adding a different number is not less an invention. 2dly. The plain- tiffs claim the use of the side pieces to support and steady the screw during the operation. This is not, as I recollect, used by the defendants for the same purpose ; nor, if used sepa- rately with the screw, is it any thing new. If, therefore, the whole improvements, as now claimed, were specified in the schedule, the plaintiffs could not legally support a patent for them separately ; and if they are claimed in combination, then the defendants have not infringed upon that combination ; and if they had, the plaintiffs could not recover, because the combination up to a certain point existed (as they have shown) before. So that, to sustain their patent in point of law, the plaintiffs are driven to construe it to be for the combination, and the evidence of infringement fails them ; and to sustain their suit in point of fact, they are obliged to construe their patent to be for the improvements severally, and then they fail upon the clearest principles of law applied to the facts. I have thus gone, over the whole grounds of this cause ; and in every possible view, in which 1 can contemplate the law or the facts of the case, the verdict is wrong. Under such cir- PATENT CASES. 243 Evans v. Eaton. 3 Wheat cumstances, to suffer it to stand, would be a mockery of justice. It would be .surrendering the whole rights of the community to the mistakes or prejudices of juries. The public ought to know that if a jury should be misled by the ingenuity or zeal of counsel, there is a redeeming * spirit in [ * 482 ] the law itself; and that no judge, in these times, can be weak or wicked enough to abandon what his duty plainly and peremptorily enjoins upon him. Let the verdict be set aside, and a new trial granted. New trial granted. Evans v. Eaton.^ [3 Wheat. 454.] Under the 6th section of the Patent Law of 1793, ch. 156, the defendant pleaded /, f4iji4, the general issue, and gave notice that he would prove at the trial, that the machine, for the use of which, without license, the suit was brought, had been C^^AJ^ t- (^ used previous to the alleged invention of the plaintiff, in several places which/ejj.. , . '•' were specified in the notice, or in some of them, " and also at sundry other //t* ' ffLlUt^^ places in Pennsylvania, Maryland, and elsewhere in the United States. The jj. , if <, • ^!t//<.4W defendant having given evidence as to some of the places specified, offered . » •" evidence as to others not specified. Held, that this evidence was admissible. V**** * But the powers of the court, in such a case are sufficient to prevent, and will <( (juyTj!* tftvMX be exercised to prevent, the patentee from being injured by surprise. / ,- / / f Testimony, on the part of the plaintiff, that the persons, of whose prior use ^ ■^ *" ' of the machine the defendant had given evidence, had paid the plaintiff,fi f\^ m t ^' for licenses to use the machine since his patent, ought not to be absolutely 9 • ^ i C rejected, though entitled to very little weight. i ^ Qacere, Whether, under the general Patent Law, improvements on different machines can be comprehended in the same patent, so as to give a right 4o the exclusive use of several machines separately, as well as a right to the exclusive use of those machines in combination 1 However this may be, the act of the 21st January, 1808, ch. 117, " for the relief of Oliver Evans," authorizes the issuing to him of a patent for his invention discovery, and improvements, in the art of manufacturing flour, atul in the several machines applicable to that purpose. Quare, Whether congress can constitutionally decide the fact, that a particular individual is an author or inventor of a certain writing or invention, so 1 See also Appendix, Note 2, to this case. 244 PATENT CASES. Evans v. Eaton. 3 Wheat. as to preclude judicial inquiry into the originality of the authorship or invention ? Be this as it may, the act for the relief of Oliver Evans -does not decide that fact, but leaves the question of invention and improvement open to investi- gation under the general Patent Law. Under the sixth section of the Patent Law, ch. 156, if the thing secured [ * 455 ] by patent had been in use, or had been described in a public * work anterior to the supposed discovery, the patent is void, whether the patentee had a knowledge of this previous use or description, or not. Oliver Evans may claim, under his patent, the exclusive use of his inventions and improvement in the art of manufacturing flour and meal, and in the several machines which he has invented, anrf in his improvement on machines previously discovered. But where his claim is for an improvement on a machine, he must show the extent of his improvement so that a person understanding the subject may comprehend distinctly in what it consists. The act for the relief of O. E. is engrafted on the general Patent Law, so as to give him a right to sue in the Circuit Court, for an infringement of his patent-rights, although the defendant may be a citizen of the same State t^ith himself. Error to the Circuit Court for the district of Pennsylvania. This was an action brought by the plaintiff in error against the defendant in error, for an alleged infringement of the plaintiff's patent-right to the use of his improved hopper-boy, one of the several machines discovered, invented, improved, and applied by him to the art of manufacturing flour and meal, which patent was granted on the 22d January, 1808. The defendant pleaded the general issue, and gave the notice hereafter stated. The verdict was rendered, and judgment given thereupon for the defendant in the court below; on which the cause was brought, by writ of error, to this Court. At the trial in the Court below, the plaintiff gave in evi- dence, the several acts of Congress entitled respectively, "An act to promote the progress of useful arts, and to repeal the acts heretofore made for that purpose ; " "An act to extend , the privilege of obtaining patents, for useful disco- , [*456] veries and * inventions, to certain persons therein mentioned, and to enlarge and define penalties for PATENT CASES. 245 Brans v. Eaton. 3 Wheat. violating the rights of patentees ; " and " An act for the relief of Oliver Evans ; " the said Oliver's petition to the Secretary of State, for a patent,^ and the patent thereupon * granted to the said Oliver, dated the twenty- [ * 457 ] second day of January, in the year 1808 ; ^ and fur- ther gave in * evidence, that an agent for the plain- [ *458 ] tiff, wrote a note to the defendant, in answer to which, he called on the * agent at Chatnbershurg, [ * 459 ] at the house of Jacob Snyder, on the ninth of Au- gust, 1813 ; there were a "number of millers pre- [ *460 ] sent ; the defendant then told the agent that he had got Mr. Evans's Book, a plate in *the Millwright's [ *46r] Guide, and if the agent would take forty dollars, the defendant would give it him ; the * defendant [ * 462 ] said that his hopper-boy was taken from a plate in Mr. Evans's book ; he said he would give no more, alleging, that the hundred dollars the agent asked was too much ; that the stream on which his mill was, was a small head of Cono- gocheage. The agent then declared, that if the defendant would not pay him by Monday morning he would commence a suit in the Circuit Court. The plaintiff further gave in evidence, that another agent for the plaintiff was in the defendant's mill on the second of November, 1814, and saw a hopper-boy there, on the princi- ples and construction of the plaintiff's hopper-boy. This witness had heard that a * right was obtained under [ * 463 ] Pennsylvania ; but did not know of any rights under Pennsylvania sold by the plaintiff; and did not know that it was erected in any mill after the patent under Pennsylva- nia. The * defendant's hopper-boy had an upright [ *464 ] shaft, with a leading arm, in the first place, and a 1 See ante, p. 70. ^ See ante, p. 74. 21* 246 PATENT CASES. Evans v. Eaton. 3 Wheat. [*465 ] large arm inserted *with flights, and leading lines, and sweepers ; a little boSrd, for the purpose of [* 466 ] sweeping the meal in the * bolting hoppers, and spreading it over the floor; a balance weight, to cause the arms to play up and down lightly over the [ * 467 ] meal. The leading arms were about five * feet longy and seemed to be in proportion, the arm about four- teen, and the length of the sweep aboutnine inches. [*468] *And the defendant, having previously given the plaintifi" written notice, that upon the trial of the [ * 469 ] * cause, the defendant would give in evidence, under the general issue, the following special matter, to [*470]*wit: "1st. That the improved hopper-boy, for which, inter alia, the plaintiff" in his declaration [ * 471 ] alleges he * has obtained a patent, was not originally discovered by the patentee, but had been in use anterior to the supposed discovery of the patentee, in sundry places, to wit : at the mill of George Fry and Jehu Hollings- worth, in Dauphin county, Pennsylvania ; at Christian Stauf- fer's mill, in Warwick township, Lancaster county, state of Pennsylvania ; at Jacob Stauffer's mill, in the same county ; at Richard Downing's mill, in Chester county, Pennsylvania ; at Buffington's mill on the Brandy wine ; at Daniel Houston's mill in Lancaster county, Pennsylvania ; at Henry Stauffer's mill in York county, Pennsylvania ; and at Dihl's mill in the same county, or at some of the said places, and also at sundry other places in the said State of Pennsylvania, the [*472 ] State of Maryland, and elsewhere *in the United States. 2d. That the patent given to the plaintiff", as he alleges in his declaration, is more extensive than 1 his discovery or invention, for that certain parts of the machine in said patent, called an improved hopper-boy, and which the plaintiff" claims as his invention and discovery, to wit, the upright shaft, arms, and flights, and sweeps, or some of PATENT CASES. 247 Evans v. Eaton. 3 Wheat. them, and those parts by which the meal is spread, turned, and gathered at one operation, and also several other parts, were not originally invented and discovered by him, but were in use prior to his said supposed invention or discovery, to wit, at the places above mentioned, or some of them. 3d. That the said patent is also more extensive than the plaintiff's invention or discovery ; for that the application of the power that moves the mill or other principal machine to the hopper- boy is not an original invention or discovery of the plaintiff, but was in use anterior to his supposed invention or discovery, to wit, at the places above-mentioned or some of them. 4th. That the said patent is void, because it purports to give him an exclusive property in an improvement in the art of manufac- turing meal, by means of a certain machine, termed an im- proved hopper-boy, of which the said plaintiff is not the ori- ginal inventor or discoverer ; parts of the machine in the description thereof referred to by the patent, having been in use anterior to the plaintiff's said supposed discovery, to wit, at the places above-mentioned, or some of them; and the said patent and description therein referred to con- tains no statement, specification, or description, * by [ * 473 ] which those parts, so used as aforesaid, may be distinguished from those of which the said plaintiff may have been the inventor, or discoverer, protesting at the same time that he has not been the inventor or discoverer of any of the parts of the said machine. 5th. That the improved elevator, described in the declaration, or referred to therein, was not originally discovered by the plaintiff, but was anterior to his said supposed discovery or invention, described in certain public works, or books, to wit, in Shaw's Travels ; in the first volume of the Universal History; in the first volume of Mormer's Husbandry; in Ferguson's Mechanics; in BossueVs Histoire des Mathematiques ; in Wolf's Cours des Mathematiques ; in Desagulier's Experimental Philoso- 248 PATENT CASES. Evans v. Eaton. 3 Wheat. phy, and in Proney's Architecture Hydraulique, or some of them. 6th. That the said patent is more extensive than the invention or discovery of the plaintiff, because certain parts of the machine called an improved elevator, were, anterior to the plaintiff's said supposed invention or discovery, described in certain public works, or books, to wit, tTie works or books above-mentioned, or some of them ; and that the said patent is void, because it neither contains or refers to any specifica- tion or description by which the parts so before described in the said public works, may be distinguished from those parts of which the plaintiff may be the inventor, or discoverer, protest- ing, at the same time, that he has not been the inventor or disco- verer of any of the parts of thesaid machine ; " gave in evidence the existence of hopper-boys prior to the plaintiff's [ * 474 ] alleged discovery at sundry znills in the State * of Pennsylvania, mentioned in the said notice ; and further offered to give in evidence the existence of hopper- boys prior to the plaintiff's alleged discovery, at sundry other mills in the State of Pennsylvania, not mentioned in the said notice ; and the counsel for the plaintiff objected to the admission of any evidence of the existence of hopper-boys in the said mills not mentioned in the said notice. But the court decided that such evidence was competent and legal. To which decision the counsel for the plaintiff excepted. The plaintiff, after the above evidence had been laid before the jury, offered further to give in evidence, that certain of the persons mentioned in the defendant's notice, as having hop- per-boys in their mills, and also certain of the persons not mentioned in the said notice, but of whom it has been shown by the defendant that they had hopper^boys in their mills, had, since the plaintiff's patent, paid the plaintiff for license to use his improved hopper-boy in the said mills respectively. But the counsel for the defendant objected to such evidence as incompetent and illegal, and the court refused to permit the PATENT CASES. 249 Evans u. Eaton. 3 Wheat. same to be laid before the jury. To which decision the plain- tiff's counsel excepted. The court below charged the jury, that the patent con- tained no grant of a right to the several machines but was confined to the improvement in the art of manufacturing flour by means of those machines ; and that the plaintiff's claim must, therefore, be confined to the right granted, such as it was. That it had been contended that the schedule was part of the patent, and contained a claim to the invention of the peculiar properties and principles of the hopper-1)oy as * well as the other machines. But the court was [ * 475 ] of opinion, that the schedule is to be considered as part of the patent, so far as it is descriptive of the machines, but no farther ; and even if this claim had been contained in the body of the patent, it would have conferred no right which was not granted by that instrument. The court further proceeded to instruct the jury that the law authorized the President to grant a patent, for the exclu- sive right to make, construct, use, and vend to be used, any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement in any art, machine, &c., not known or used before the application. As to what constitutes an improvement, it is declared, that it must be in the principle of the machine, and that a mere change in the form or proportions of any machine shall not be deemed a discovery. Previously to obtaining the patent, the appli- cant is required to swear, or affirm, that he verily believes that he is the true inventor or discoverer of the art, machine, or improvement, for which he solicits a patent; and he must also deliver a written description of his invention, and of the manner of using it, so clearly and exactly, as to distinguish the same from all other things before known, and to enable others, skilled in the art, to construct and use the same. That from this short analysis of the law, the following rules might M. SIL ± AlAi.'* J^ V/A&kJXJkJ» Evans v. Eaton. 3 Wheat. be deduced. 1st. That a patent may be for a new and use- ful art ; but it must be practical ; it must be applicable and referable to something by which it may be proved to be use- ful ; a mere abstract principle cannot be appropriated by patent. 2d. The discovery must not only be useful, [*476 ] but new; it must not have been * known or used befijire in any part of the world. It was contended by the plaintiff's counsel, that the title of the patentee cannot be impeached, unless it be shown that he knew of a prior dis- covery of the samfe art, machine, &c. ; and that tme and original are synonymous terms in the intention of the legis- lature. But, as it was not pretended that those terms meant the same thing in common parlance, neither was it the inten- tion of the legislature to use them as such. The first section of the law, referring to the allegations of the application for a patent, speaks of the discovery as something " not known or used before the application ; " and in the 6th section it is declared, that the defendant may give in evidence that the thing secured by patent, was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery. 3d, If the discovery be of an improvement only, it must be an improve- ment in the principle of a machine, art, or manufacture, be- fore known or used ; if only in the form or proportion, it has not the merit of a discovery which can entitle the party to a patent. 4th. The grant can only be for the discovery as recited and described in the patent and specification. If the grantee is not the original discoverer of the art, machine, &c., for which the grant is made, the whole is void. Conse- quently, if the patent be for the whole of the machine, and the discovery were of an improvement, the patent is void. 5th. A machine, or an improvement, may be new, and the proper subject of a patent, though the parts of it were before known and in use. The combination, therefore, of old PATENT CASES. 251 Evans v. Eaton. 3 Wheat. — — . , machines, to produce a new *and useful result, [* 477] is a discovery for which a patent may be granted. The above principles would apply to most of the questions that had been discussed. It was strongly insisted upon by the defendant's counsel, that this patent is broader than the discovery ; the evidence proving that, in relation to the hop- per-boy, for the using of which this suit is brought, the plain- tiff can pretend to no discovery beyond that of an improve- ment in a machine known and used before the alleged dis- covery of the plaintiff. This argument proceeded upon the supposition, that the plaintiff had obtained a patent for the hopper-boy, which was entirely a mistake. The patent was " for an improvement in the art of manufacturing flour," by means of a hopper-boy and four other machines described in the specification, and not for either of the machines so com- bined and used. That the plaintiff is the original discoverer of this improvement, was contested by no person, and, there- fore, it could not with truth be alleged that the patent is broader than the discovery, or that the plaintiff could not support an action on this patent against any person who should use the whole discovery. But could he recover against a person who had made or used one of the machines, which in part constitutes the dis- covery ? The plaintiff insisted that he could, because, hav- ing a right to the whole, he is necessarily entitled to the parts of which that whole is composed. Would it be seriously contended that a person might acquire a right to the exclu- sive use of a machine, because when used in combination with others, a new and useful result is produced, which he could not have acquired independent of that combina- tion ? * If he could, then if A were proved to be the [ * 478 ] original inventor of the hopper-boy, B of the ele- vator, and so on, as to the other machines, and either had obtained patents for their respective discoveries, or chose to 252 PATENT CASES. Evans v. Eaton. 3 Wheat. abandon them to the public, the plaintiff, although it was ob- vious he could not have obtained separate patents for those machines, might, nevertheless, deprive the original inventors, in the first instance, and the public in the latter, of their acknowledged right to use those discoveries, by obtaining a patent for at^, improvement consisting in a combination of those machines to produce a new result. The court further charged the jury, that it was not quite clear that this action could be maintained, although it was proved beyond all controversy that the plaintiff was the ori- ginal inventor of this machine. The patent was the founda- tion of the action, and the gist of the action was, the violation of a right which that instrument had conferred. But th^ exclusive right of the hopper-boy was not granted by this patent, although this particular machine constitutes a part of the improvement of which the plaintiff is the original inventor, and it is for this improvement, and this only, that the grant is made. If the grant then was not in this particular machine, could it be sufficient for the plaintiff to prove, in this action, that he was the original inventor of it ? Again : could the plaintiff have obtained a separate patent for the hopper-boy, in case he were the original inventor of it, without first 'swearing, or affirming, that he was the true in- ventor of that machine ? Certainly not. Has the plaintiff then taken, or could he have taken, such an oath in this case ? Most assuredly he could not ; because the prescribed form [ * 479 ] of the oath * is, that he is the inventor of the art, machine, or manufacture, for which he solicits a patent. But since the patent which he solicited was not for the hopper-boy, but for an improvement in the manufac- ture of flour, he might, with safety, have taken the oath pre- scribed by law, although he knew at the time that he was not the true inventor of the hopper-boy ; and thus it would happen that he could indirectly obtain the benefit of a patent PATENT CASES. 253 Evans v. Eaton. 3 Wheat. right to the particular machine, which he could not directly have obtained, without doing what, it must be admitted in this case, he had not done. But this was not all. If the law had provided for fair and original discoverers a remedy when their rights are invaded by others, it had likewise provided corresponding protection to others, where he has not the merit. What judgment could the district court have tendered upon a scire facias to repeal this patent, if it had appeared that the plaintiff was not the true and original inventor of the hopper-boy ? Certainly not that which the law has prescribed, namely, the repeal of the patent ; because it would be monstrous to vacate the whole patent, for an invention of which the patentee was the acknowledged inventor, because he was not the inventor of one of the con- stituent parts of the invention, for which no grant is made. But the court would have no alternative but to give such a judgment, or, in effect, to dismiss the scire facias; and if the latter, then the plaintiff would have beneficially the exclu- sive right to a machine, which could not be impeached in the way prescribed by law, although it should be demonstrated that he was not either the true or the original in- ventor of it. And * supposing the jury should be [ * 480 ] of opinion, and so find that the plaintiff was not the original inventor of this machine, Would not the court be prevented from declaring the patent void, under the provi- sions of the 6th section of the law, for the reason assigned why the district court could not render judgment upon a scire facias ? Indeed it might well be doubted whether the defence now made by the defendant could be supported at all in this action, (if this action could be maintained,) inasmuch as the defendant cannot allege, in the Words of the 6th section^ that the thing secured by patent was not originally discovered by the patentee, since, in point of fact, the thing patented was VOL. I. — p. c. 22 254 PATENT CASES. Evans v. Eaton. 3 Wheat. originally discovered by the patentee, although the hopper- boy may not have been so discovered. But if this defence could not be made, did not that circumstance afford a strong argument against this action ? If the plaintiff was not the inventor of the parts, he had no right to complain that they were used by others, if not in a way to infringe his right to their combined effect. If he was the original inventor of the parts which constitute the whole discovery, or any of them, he might have obtained a separate patent for each machine of which he was the original inventor. Upon the whole, although the court gave no positive opi- nion upon this question, they stated that it was not to be concluded that this action could be supported, even if it were proved that the plaintiff was the original inventor of the hop- per-boy. But if an action would lie upon this patent for vio- lation of the plaintiff's right to the hopper-boy, still the plain- tiff could not recover, if it had been shown to the [ * 481 ] satisfaction of the * jury, that he was not the origi- nal discoverer of that machine. It appeared, by the testimony of the defendant's witnesses, that Stauffer's hopper-boy was in use many years before the alleged discovery of the plaintiff; that the two machines dif- fered from each other very little in form, in principle, or in effect. They were both worked by the same power which works the mill ; and they both stir, mix, cool, dry, and conduct the flour to the bolting-chest. Whether the flights and sweepers in the plaintiff's hopper-boy were preferable to the slips at- tached to the under part of the arm in Stauffer's ; or whether, upon the whole, the former is a more perfect agent in the manufacture of flour than the latter, were questions which the court would not undertake to decide ; because, unless the plaintiff was the original inventor of the hopper-boy, although he had obtained a separate patent for it, he could not recover in this action, however useful the improvement might be, PATENT CASES. 255 Evans V. Eaton. 3 Wheat. which he had made in that machine. If the plaintiff had ob- tained a patent for his hopper-boy, it would have been void, provided the jury should be of opinion, upon the evidence, that his discovery did not extend to the whole machine, but merely to an improvement on the principle of an old one, and if this should be their opinion in the present case, the plain- tiff could not recover. It had been contended by the plaintiff's counsel, that the defendant, having offered to take a license from the plaintiff, if he would consent to reduce the price of it to forty dollars, he was not at liberty to deny that the plaintiff is the original inventor of this ' machine. This argu- [ * 482 ] ment had no vveight in it, not merely because the offer was rejected by the plaintiff's agent, and was, therefore, as if it had not been made ; but because the law prevents the plaintiff from recovering, if it appear on the trial that he was not the original inventor. If the offer amounted to an ac- knowledgment, that the plaintiff was the original inventor, (and further it could not go,) this might be used as evidence of that fact, but it would not entitle the plaintiff to a verdict, if the fact proved to be otherwise. The plaintiff's counsel had also strongly insisted, that under the equity of the tenth section of the law, the defence set up in this case ought not to be allowed after three years from the date of the patent. This argument might, perhaps, with some propriety, be addressed to the legislature, but was improperly urged to the court. The law had declared, that in an action of this kind, the defendant may plead the general issue, and give in evidence that the plaintiff was not the original inven- tor of the machine for which the patent was granted. The legislature has not thought proper to limit this defence in any mannier ; and the court could not do it. But what seemed to be conclusive of this point was, that the argument would tend to defeat altogether the provision 256 PATENT CASES. Evans v. Eaton. 3 Wheat. of the sixth section, which authorizes this defence to be made ; for, if it could not be set up after three years from the date of the patent, it would be in the power of the patentee to avoid it altogether, by forbearing to bring suits until after the expiration of that period. And thus, although the [ * 483 ] law has ' carefully provided two modes of vacating a patent improvidently granted, the patentee, though not the original inventor, and, however surreptitiously he may have obtained his patent, may secure his title to the exclusive use of another's invention, if he can for three years avoid an inquiry into the validity of his title. The last point was, that Stauffer's invention was abandoned, and, consequently, might be appropriated by the plaintiff. But if Stauffer was the original inventor of the hopper-boy, and chose not to take- a patent for it, it became public pro- perty by his abandonment ; nor could any other person obtain a patent for it, because no other person would be the origi- nal inventor. To this charge the plaintiff's counsel excepted. February 26. Mr. C. J. IngersoU, for ihe plaintiff, pre- mised, that this patent granted an exclusive right for fourteen years in the improvement in the art, by means of the five machines, and for the several machines ; the peculiar proper- ties of each in its practical results, and the improvement of the art by the combination of thfe whole. The proof of this position is, that the defendant uses the precise machine, copied for the plaintiff's application, and offered to pay for it ; but they differed in price, which led to the contesting the originality of the plaintiff's invention. I. It is said, in the charge of the Court below, that the action is founded on the patent, which contains no grant of a right to the several machines, but is confined to the im- provement in the art, by means of those machines. The pa- PATENT CASES. 257 Eyans v. Eaton. 3 Wheat. tent is to be made out in the * manner and form [ * 484 ] prescribed by the general act. What are that man- ner and form ? By reciting the allegations and suggestions of the petition ; giving a short description of the invention, or discovery ; and thereupon granting an exclusive right in the said invention or discovery. The manner and form of these letters-patent are a recital of, 1st. The citizenship of the patentee. 2d. The allegations and suggestions of the peti- tion, as to both the improvement and the machines in a short description, referring to the annexed schedule for one more full and particular in the inventor's own words. 3d. That he has petitioned agreeably to the special act. 4th. A grant of the said improvement. The description must be short and referential. It must be a description. By the first section of the act of the 10th of April, 1790, ch. 34, it was to be described clearly, truly, and fully ; perhaps,because the board, constituted by that law, was to decide whether they deemed the discovery or invention sufficiently useful or important for letters-patent. The patent, by express reference, adopts the special act in extenso. The connecting terms which and said, bind the whole to the granting clause ; the allegations and suggestions recited are part of the grant ; the machines are the means of every end, particular as well as general ; nor can there be any practical result without them. To confine such a patent to one general result from a combination of the whole machines, nullifies it. It is never so in practice, and would operate infinite injustice in other cases. 2. But the schedule is part of the patent in all cases; * in this case it is especially so. By the act of [ * 485 ] 1790, ch. 34, s. 6, the patent or specifications are primd facie proof of every thing which it is incumbent on the plaintiff to establish ; and by the existing law, the speci- fication is considered as explanatory of the terms used in the 22* 258 PATENT CASES. Evans V. Eaton. 3 Wheat. patent, so as to limit or enlarge the grant.^ But it is said in the grant, that the schedule annexed is made part of the pa- tent. It is made so by the public agent to avoid trouble, litigation, and unnecessary recitals. The petition, schedule, and description, are all referred to, and incorporated with the patent. Wha| does the law mean by a recital of allegations and suggestions ? What more can a petitioner do than allege and suggest ? He cannot shape or prescribe the manner and form of the grant. The charge denies that the schedule, at any rate, is more than descriptive of the machines, or that it would confer any right, even if claimed in the patent. But if no right would be conferred by insertion in the grant itself, what becomes of the argument which ascribes such potency to the grant ? The charge says, the grant can only be for the discovery as recited and described in the patent and specifica- tion. The grant ^is not for the parts, because it is for the whole ; not in their rudiments or elements; not for wheels, cogs, or weights, nor for wood, iron, or leather ; but for the peculiar properties, the new and useful practical results from each machine, and the vast improvements from their combi- nation in this art. The charge supposes it impossi- [ * 486 ] ble to obtain a patent * for a hopper-boy, unless the plaintiff could swear that he invented that machine. But the oath is not a material, or at least, not an indispensable perquisite.^ 3. The special act for the relief of the plaintiff, •decides him to be the inventor of the machines and improve- ments for which he has obtained a patent. By the constitu- tion, art. 1, s. 8, Congress have power to promote the progress of science and the useful arts, by securing for limited times;, to authors and inventors, the exclusive right to their respecr tive writings and discoveries. This has been done by Con- gress in the instance of the plaintiff. The special act is an ' Whittemore v. Cutter, 1 Gallis. 429, ante, 28. 2 Whittemore v. Cutter, 1 Gallia. 433, ante, 31. PATENT CASES. 259 Evans v. Eaton. 3 Wheat. absolute grant to him, binding on all the community, and pre- cluding any inquiry into the originality of the invention. It includes a monopoly in his invention, discovery, and improve- ment in the art, and in the several machines discovered, in- vented, improved, and applied, for that purpose. The patent is to issue on a simple application in writing by the plaintiff, without any prerequisites of citizenship, oath, fee, or petition, specification and description to be filed. The act of 1793, ch. 156, requires all these, and then grants a patent for invention or discovery ; whereas this grant is for that, and for improvements in the art, and in the several machines. It is a remedial act, and should receive a liberal construction to efiFectuate the intentions of the legislature.^ The patent is as broad as the law, if the grant be governed by the recital. Its construction is to be against the grantor, and according to the intent ; * nor is it to be avoided by [ * 487 ] subtle distinctions ; if there are two interpretations, the sensible one is to be adopted.^ 4. The improved hopper- boy of the plaintiff is the only new and useful discovery which was in evidence in the case ; the court misconstrued the law in their charge in this respect, inasmuch as the true construction of it is not that the patentee shall be the first and original dis- coverer of a patentable thing, but " the true inventor " of such a thing ; that such a thing was truly discovered and patented without knowledge of its prior use, or public employment, or existence ; more especially where, as in the present instance, the controversy is not between conflicting patents, but between the true patentee of a new and useful patentable thing, and a per- son defending himself against an infringement, on the plea of its prior use by third persons who had no patent, and whose dis- 1 Whittemore v. Cutter, 1 Gallis. 430, ante, 30. 2 Jenk. Cent. 138. Eystor «. Stndd, Plowd. 467 ; The U. S. v. Fisher, 2 Cranch, 386, 399. 260 PATENT CASES. Evans v. Eaton. 3 Wheat. covery, even if proved, was of a thing never in use or public existence, but in total disuse. The stat. 21 Jac. 1, ch. 3, s. 6, an. 1623, grants the monopoly "of the sole working or mak- ing of any manner of new manufactures, within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such grant, shall not use," &c. It is contended, under our law, that the utility is to be ascertained as well the originality ; and that this, as well as that, is partly a question for the jury. The thing patentable must be useful, as well as new. The useful thing patented prevails over one not useful nor patented, though [*488]in "previous partial existence. This is not the case of conflicting patentees ; and to destroy this patent, the previous use must appear, there being no pre- tence of description in a public work. The title of the act is " for the promotion of the useful arts." The first section speaks of " any new and useful arts," not known or used, &c. The sixth, of that which " had been inuse, or described in some public work anterior to the supposed discovery." What degree of use does the law exact ? a use known or described in a public work. Not merely an experimental, or essaying ; nor a clandestine, nor obscure use. It must be useful, and in use, perhaps in known, if not public use ; something equivalent to filing a specification on record. Now here utility was lost sigljt of in search of novelty. It seemed to be taken for granted, that proving the preexistence of an unpatented hopper-boy defeated the plaintiff's patent. The desuetude of the rival hopper-boy from inutility was establish- ed. The question was between a new and useful patented machine, and an useless and obsolete one never patented • and which, not being useful, never could be patented. But that the patentee's is useful nobody questions. At all events, the question of fact, whether in use, should have been left to the jury. The jury are substituted for the hoard, which, PATENT CASES. 261 Evans v. Eaton. 3 Wheat. under the first law, was to decide whether the supposed invention was " sufficiently useful and ■ important " for a pa- tent. The court below suppose Stauffer to have given his discovery to the public. But it fell into disuse ; there was nothing to give. Stauffer did not know its value ; if he * had abandoned a field with unknown trea- [ * 489 ] sure in the ground, could he afterward claim the treasure ? ^ 5. The defendant's testimony of the use of hop- per-boys in mills, not specified in his notice, was erroneously admitted. The object of the provision in the 6th section of the Patent Law of 1793, ch. 156, was to simplify the proceed- ings, and to enable the defendant to give in evidence under his notice, what he would otherwise be obliged to plead spe- cially. The sufficiency of the notice is, therefore, to be tested by the rules of special pleading; which, though technical, are founded in good sense and natural justice, and are intended to put the adverse party on his guard as to what the other intends to rely upon in his defence. But such a notice as this could not answer that purpose. 6. The plaintiff's testimony of the payment for licenses to use his improved hopper-boy, ought not to have been rejected. It ought to have been admitted as circumstantial evidence entitled to some weight. Mr. Hopkinson and Mr. Sergeant, contrd. 1. The ad- missibility of evidence of the use of the hopper-boys, anterior to the plaintiff's alleged invention, in mills not specifically mentioned in the notice, depends upon the construction that may be given to the 6th,section of the act of the 21st of Fe- bruary, 1793, ch, 156, taken in connection with the notice. This section is substituted for the 6th section of the act of 1 Grotius de J. B. ac. P. 1. 3, ch. 20, s. 28. 262 PATENT CASES. Evans v. Eaton. 3 Wheat. the 10th of April, 1790, ch. 34. The office of the [ * 490 ] section, *in each of these acts, is two-fold : 1st. To state what shall constitute a defence. 2d. To state the manner in which the defendant may avail himself of it. And whatever difficulties may exist (if any there be) in the construction ot the section, arise from the combination of this two-fold object. That this was the object of the section is perfectly obvious. The general issue would be a denial of the allegation contemplated by the 5th section of the act of 1793, and the 4th of the act of 1790. If the acts had stop- ped there, it is manifest that the defendant could have had no defence, but what was legally within the scope of the general issue. The 10th section would not have availed him, because, the limitation of time, and the grounds for repealing a patent upon a scire facias, are totally different from those which ought to constitute a defence to the action. The patent may be opposed, in an action, upon the ground that the patentee is not the original inventor ; but it can be repealed only upon the ground that he is not the true inventor. Fraud (proof that it was surreptitiously obtained) is the necessary basis in the one case; but error and mistake is equally available in the other. Neither could the defendant avail himself of the provisions in the prior part of the act; for these are merely directory, and they terminate in the provision made by the 5th section, which would have been conclusive. The 6th section is, therefore, a proviso to the 5th. The 6th sec- tion of 1790, made the patent primd fade evidence only, which would have opened the inquiry as to the truth of the invention. It appears, then, that the object of the [ * 491 ] proviso was, in the first place, * to settle what should constitute a defence. These matters would not have been within the scope of the general issue, by the rules of pleading. They would have presented the subject of a special plea in bar. The act, therefore, at the same time pro- PATENT CASES. 263 Evans v. Eaton. 3 Wheat. vides, that they may be given in evidence under the general issue. The design, in this respect, was to save the necessity of special pleading on the one hand, and, on the other, to give a reasonable notice. Does the law require the evidence to be set out ? No ; and yet, if surprise is to be fully guarded against, this ought certainly to be stated, in order that the plaintiff may prove that it is false, or proceeds from corrupt witnesses, &c. Is it then necessary that all the particulars should be given, the state, county, township, town, street, square, number of the house ? The law does not require it. What certainty, then, is required in the notice ? The answer is obtained by ascertaining the use and intention of the sec- tion, which were to save the necessity of special pleading. What then must be alleged in a special plea ? Not the evi- dence or facts, but the matter of defence, which may be that the plaintiff was not the true inventor, but that the invention was before his supposed discovery. You must state what is the ground and essence of the defence, and nothing more; all else is surplusage. E. G. That the plaintiff was not the true inventor of the hopper-boy, but the same was in use, prior to his supposed discovery, at the mill of A. Now its being in use at the mill of A is not of the essence of the defence, for it is as good if used at the mill of B ; the essence is, that it was used before. The * defendant then [ * 492 ] would be entitled to lay the place under a videlicet, and of course would not be obliged to prove it, but might prove any other. If, then, the law did not mean to increase the difficulty of the defendant, the same may be done in a notice. Consider the inconveniences of a contrary practice. A ma- chine has been used in a foreign country ; the country, town, and place, may be unknown. Shall I, therefore, be deprived of the benefit of my invention ? Again, it is known. I am bound to give thirty days' notice before trial, and no more. Cui bono, that I should mention" a town or place in England ? 264 PATENT CASES, Evans u. Eaton. 3 Wheat. The intention is, that the plaintiff shall come prepared to prove where his invention was made, and not to disprove the defendant's evidence ; that he shall have notice of the kind of defence intended, in order that he may shape his case ac- cordingly. If notice is given that the defendant will give in evidence, that^he plaintiff's machine was used before his sup- posed discovery ; this is notice of special matter, tending to prove that it was not invented by him. The law does not require a statement or description of the special matter, but notice that special matter will be given in evidence, tending to prove certain facts. There is no reciprocity in the con- trary rule. The declaration is general ; it does not specify the date of the invention, the place of the invention, nor the evidence or facts by which the originality and truth of the invention are to be proved. Yet these are all extremely im- portant to the defendant, to enable him to prepare his defence. As to the breach, it is equally general ; it does not state the time except as a mere matter of form, by which the [ * 493 ] * plaintiff is not bound. It does not state the place, except by the very liberal description necessary for the venue, but which is not at all binding. And, finally, the rule contended for is impracticable, consistently with the pur- poses of justice ; for it may, without any fault of the defend- ant, deprive him of the benefit of a perfectly good defence, upon a mere requisition of form, which he cannot possibly comply with. The notice states the use of the hopper-boy at a number of mills, specially described by the state, county, and the name of the proprietor, " and at sundry other places in the said State of Pennsylvania, the State of Maryland, and elsewhere in the United States." It is not alleged, nor could it be, that the defendant had the knowledge that would have enabled him to extend the specification. Nor is it alleged that he could have acquired the knowledge, by any exertion he might have made ; on the contrary, the course he has PATENT CASES. 265 Evans v. Eaton. 3 Wheat. taken is indicative of perfectly fair intention. The exception is, that the defendant was permitted to give evidence that the hopper-boy " had been used at sundry other mills in Pennsyl- vania," precisely in the words of the notice. To sustain this exception, then, the court must decide, that this cannot in any case be done. But if it cannot be shown, that in a sin- gle supposable case, this would work injustice, and defeat the law, it is sufficient. Now it is very clear, that in many cases, this may be precisely the state of the party's knowledge, and all he can obtain, and it may be precisely the state of the evidence. Suppose a witness should know that hopper-boys were used in sundry mills, but not their precise local * situation, name of owner, &.c. Or, suppose he [*494 ] should have seen a hopper-boy that bore the most evident marks of having been used in a mill, or mills. The ^ect of such evidence is quite another question ; its compe- tency and relevancy are for the Court ; its credibility, and the inferences of fact that are to be made from it, are for the jury. The same supposition would apply to its having been described in a public work. Is it necessary to give the title of the book, name of the author, and number of the edition ? This may be impracticable. The defendant may have a witness who has seen the thing in use in a foreign country, and not be able to give a single particular ; or who has seen it de- scribed in a foreign work, of which he can give no further account. Such evidence, if credited, would be entirely con- clusive ; and yet he could have no benefit of it, because he had not done what was impossible. But even if the witness knows all these particulars, the defendant has no means of compelling him to disclose them before the trial. The rules of pleading aim to establish a convenient certainty on the record, by giving the party notice of what is alleged, and furnishing evidence of what has been decided. In many instances, they fall short of this, their avowed design ; in none VOL. I. — p. c. 23 266 PATENT CASES. Evans v. Eaton. 3 Wheat. do they go beyond it. For the purpose of preventing sur- prise, they are wholly ineffectual ; they give no notice of par- ticular facts, of evidence, of witnesses. The corrective of the evil, if evil there be, is to be found in the exercise of the general superinjtending authority of the Court, applied to cases whejjg there may really be surprise or fraud. So [ * 495 ] in this case, if there really had been * surprise, (fraud is out of the question,) the court had the power to grant a new trial. This power is an amply sufficient corrective ; and its existence afTords a decisive answer to the argument drawn from the possible injustice that may be done. 2. The exception to the refusal to admit evidence of the pay- ment for the use of licenses, will be easily disposed of. The fact to be established on the one side, and disapproved on the other, was, that the hopper-boy was in use before the alleged invention or discovery of Evans. The evidence offered had no bearing whatever upon the question of fact. If believed, it went no farther than to show, that those who had paid, thought it best to pay ; a decision that might be equally pru- dent, whether the fact was, or was hot, as alleged. Such 'testimony would be more objectionable than the opinion of the witness ; for it would be only presumptive proof of opi- nion, without the possibility of examining its grounds. As 0pinion, it would be inadmissible ; as evidence of opinion, it would still be more objectionable. 3. The plaintiff's patent can only be considered in one of three points of view. 1st. As a patent for the improvement in the art of manufacturing flour ; that is for the combination. 2d. As a patent for the combination, and also for the several machines; that is, a joint and several patent. 3d. As a patent simply for the several machines. It is very clear that the patent itself is for the combination only ; though it is equally clear, that by the terms of the law, he might have obtained a patent for the whole, and also for the several parts. That this is the PATENT CASES. 267 Evans v. Eaton. 3 Wheat. necessary * construction of the patent, is plain from [ * 496 ] the patent itself, taken in connection with the act of 21st of January, 1808, ch. 117. The act authorizes a patent to be issued for his improvements in the art of manu- facturing flour, and in the sev^al machines, &c. The mat- ters are plainly different. They are the subject of distinct patents, to be obtained in the " manner and form " prescribed by the act of 1793, ch. 156. The object of the special act, was to put Evans upon the same footing as if his former pa- tent had not been issued ; but it did not mean to dispense with any of the requisites of the general law. With the general requisite (that he was the inventor) it could not dis- pense ; the constitution did not permit it. By the general law, improvement in an art, and improvement in a machine, are distinct patentable objects. This patent is only for the improvement in the art of manufacturing flour, and the reci- tal of the special act, and the words " which " and " said " do not at all help it. It is true, it is an improvement operated by means of the machines, but not exclusively. The result may be secured, without securing the means. This patent was granted to the plaintiff ; was received by him ; and must be presumed to be according to his application and his oath. The oath is, that he is the true inventor of the " improvements above specified ; " which term is applied in the specification, as in the patent, only to the art. But, it is said the specifi- cation is a part of the patent, and limits or enlarges it, as the case may be. Mr. Justice Story, in the case which has been cited, only says, that the * specification [ * 497 ] may control the generality of the patent.^ But the specification in the case now before the Court, does not claim the machines. If the patent was for a combination, the plain- J Whittemore v. Cutter, 1 Gallis. 437, ante, 85. 268 PATENT CASES. ETans V. Eaton. 3 Wheat. tiff's action was gone ; he could not maintain it against a person using one of the machines. If the patent was for the combination, and also for the several machines, that is, a joint and several patent, then the patentee might proceed upon it as the one or the other, according to the nature of the alleged invasion. If h$ proceed upon it for a breach of the right to the combination, he must show the originality of invention, and might be defeated by opposite proof. If for a breach of the right to any one of the machines, he might be defeated by showing that he was not the original inventor of the ma- chine. So if it be considered a several patent, that is, as if he had five distinct patents. But, in no conceivable case, can he stand upon any but one of these three grounds, nor claim to have the benefit of a larger, or even of a different patent. 4. From this analysis, which is necessary to prevent confusion, we come to inquire into the nature of the case presented to the Court for decision, aind to which the charge was to be applied ; premising, 1st. That no exception can be taken to what the Court did not give in charge to the jury ; and, 2dly. That no exception can be taken to an opinion, however erroneous, that had no bearing upon the issue to be decided by the jury. It is apparent from the record, that the action of the plaintiff was founded upon the alleged use, [ * 498 ] * by the defendant, of a machine called a hopper- boy, of which the plaintiff claimed to be the in- ventor ; that the evidence on both sides applied to this allega- tion, and to this alone ; the plaintiff claiming to be the inventor, and the defendant denying it. The charge of the Court noticed the several arguments that had been used at the bar, and examined the general question as to the character of the patent ; upon which, however, as it had not been discussed, no opinion was given. This is clear ; for if an opinion had been expressed, it must have been that the action was not maintainable. Nothing short of that would have been mate- PATENT CASES. 269 Evans v. Eaton. 3 Wheat. rial. But the Court left the case to the jury, as of an action that this was maintainable, and instructed them as to the principles by which it was to be decided ; which negatives the conclusion of any opinion having been given, that the ac- tion was not maintainable. If the defendant had required the Court to charge that the action was not maintainable, and they had charged that it was, or declined to charge at all, he would have had ground of exception. But the plaintiff cannot complain, because he has what is equivalent to a decision in his favor. 5. The statute of James, (21 Jac. I. c. 3,) A. D. 1633, confined monopolies to the first and true inventors of manufactures not known or used before. One hundred and seventy years had elapsed when our act passed ; com- merce and the arts had made such advances, such facilities had been created for the diffusion of knowledge, that every thing known by use, or described in books, might be consi- dered as common property. It vjpuld have been strange to adopt a * different principle. The act of [ * 499 ] Congress does not. It is a mistake to suppose there is in this respect any difference between the Act of Congress and the Act of Parliament. One says " useful " inventions, the other " new and useful ; " but both have the expression " not used or known before," A patent can only be upon an allegation that the applicant has invented something new and useful. Its novelty may certainly be questioned ; perhaps its usefulness. But where the defence is, that the thing was known or used before, is it necessary to prove the usefulness of the thing so known or used ? The act does not require it ; nor is there any good reason why the patentee should be permitted to controvert it. Mr. Harper, in reply, insisted, 1. That the Court below had erred in admitting testimony of the use of the plaintiff's machine in mills not specified in the notice. The statute 23* 270 PATENT CASES. Evans v. Eaton. 3 Wheat. was not framed with a view to the benefit of the defendant alone. The notice to be given, is not that vague, indistinct, general notice, which is set up on the other side. It must be an effectual, useful notice ; such a notice as may put the patentee on his guard, and enable him to see what are the precise grounds of defence. It must be more specific than a mere transcript pf the particular class of grounds, of defence, such as suppression of parts, redundancy, &c. The circum' stances of the time, the place when and where used, and by what persons, are essentially necessary in order to enable the patentee to meet the defence. The burden of proof [ * 500 ] is, in eSect, thrown upon the patentee ; and * the law intended that he should meet it fairly. Such a notice as that given in this case would not be good, if put into the form of a special plea. The degree of certainty required in a plea, in a statement of the time and place when and where material facts have happened, is one of the most difficult questions of the law ; but these circumstances must always be laid, and must be proved as laid, whenever it is essential to enable the other party to maintain his case. There is a distinction between the matter of defence and the Evi- dence by which it is to be maintained. A notice of the par- ticulars of the evidence is not required, but of the time and place where the former use of the machine in question occur- red. Nor is this unreasonable ; for it is highly improbable that any body would be able to testify as to the minute par- ticulars of an invention, without being able to remember in what work he had seen it described, or to state in what place and at what time he had seeh it used. 2. The special act for the plaintiff's relief is a distinct, substantive, independent grant, declaring the plaintiff to be the original inventor, and as such, entitled to a patent. It contains no reference to the general Patent Law, nor does it reserve any right in others to contest the originality of his invention. The defendant, PATENT CASES. ^1 Evans v. Eaton. 3 "Wheat. therefore, cannot say that the plaintiff is not the inventor, though he may deny that he has violated the plaintiff's rights as inventor. Congress is not confined by the constitution to any particular mode of determining the fact who are invent- ors or authors. It is true, a patent or copyright can only be granted to an inventor or author ; but the original- ity of the * invention or authorship may be deter- [ * 501 ] mined by Congress itself, upon such testimony as it deems sufficient ; or by an administrative act, by the deci- sion of some board or executive officer ; or, lastly, by a judi- cial investigation ; according as the legislative will may pre- scribe either of these several modes. The Act of Parliament, 15 Geo. 3, for the relief of Watt and Boulton, the inventors of the improved steam-engine, and extending the term of their patent for twenty-five years, contained an express provision that every objection in law competent against the patent, should be competent against the act, " to all intents and purposes, except so far as relates to the term thereby granted." ^ The Act of Congress for the relief of Oliver Evans contains no such provision. The conclusion, therefore, is, that the legis- lature meant to quiet him in his claim, after he had so long enjoyed it, and in consideration of his peculiar merits, and of his former patent having been vacated for informality. 3. The Court below instructed the jury that the patent was not for any one machine, but for the combined effect of the whole ; though they concluded by leaving it upon the prior use, still the intimation that the action could not be maintained, even though the prior use of it was not proved, did not leave the fact to the jury free from bias. Though not a positive direc- tion to the jury to find for the defendant, it had the effect of a nonsuit. The wishes of the grantee, and the intention of ' Hornblower v. Boulton, 8 T. K. 95, 97. 272 PATENT CASES. Evans v. Eaton. 3 Wheat. the grantor, both extended, as well to a patent for [ * 502 ] the several machines, * as to a patent for the com- bined effect of the whole. The word " improve- ment," though in the singular number, extends not only to the plaintiff's improvement in the art of manufacturing flour, but to his improvement in the several machines by means of which the operations of the art are conducted. This was a patent for an improvement on the particular machine in ques- tion, and not for its original invention. In this respect it is like that of Watt and Boulton for their improvement on the steam-engine. 4. The prior use, which is to defeat a patent, ought to be a public use. The defence here set up, under, the 6th section of the Patent Law of 1793, eh. 156, was, that the patentee was not the original discoverer, and that the thing had been in use, &c. But how else could it be shown that he was not the discoverer, but by showing that it had before been in public use ? , A mere secret furtive use would not disprove the fact of his being the original discoverer. If this were so, then the art of printing and gunpowder were not invented in Europe, because they had been before used in a sequestered corner of the globe, like China. But there is a distinction between a ^rsf discovery and an original discovery. The art of printing was originally discovered in Germany, though it was first invented in China. So the plaintiff would not cease to be the original inventor of the hopper-boy, even if it had been proved that another similar machine had been before privately used in a single mill. It ought, therefore, to have been left to the jury to find for the plaintiff, if they believed that the use was a secret use. [ * 503 ] * Marshall, C. J., delivered the opinion of the Court. In this case exceptions were taken in the Circuit Court, by the counsel for the plaintiff in error. PATENT CASES. 273 7 ——— ■ — — — ^ **" Evans v. Eaton. 3 Wheat. 1st. To the opinion of the Court, in admitting testimony offered by the defendant in that Court. 2d. To its opinion in rejecting testimony offered by the plaintiff in that Court. 3d. To the charge delivered by the judge to the jury. Under the 6th section of the act for the promotion of use- ful arts, and to repeal the act heretofore made for that pur- pose, the defendant pleaded the general issue, and gave notice that he would prove at the trial, that the improved hopper- boy, for the use of which, without license, this suit was insti- tuted, had been used previous to the alleged invention of the said Evans, in several places, (which were specified in the notice,) or in some of them, " and also at sundry other places in Pennsylvania, Maryland, and elsewhere in the United States." Having given evidence as to some of the places specified in the notice, the defendant offered evidence as to some other places not specified. This evidence was objected to by the plaintiff, but admitted by the Court; to which admission the plaintiff's counsel excepted. The 6th section of the act appears to be drawn on the idea, that the defendant would not be at liberty to contest the vali- dity of the patent on the general issue. It therefore intends to relieve the defendant from the difficulties of plead- ing, when it allows him to give in * evidence matter [ * 504 ] which does affect the patent. But the notice is directed for th^ security of the plaintiff, and to protect him against that surprise to which he might be exposed, from an unfair use of this privilege. Reasoning merely on the words directing this notice, it might be difficult to define, with abso- lute precision, what it ought to include, and what it might omit. There are, however, circumstances in the act which may have some influence on this point. It has been already observed, that the notice is substituted for a special plea; it is farther to be observed, that it is a substitute to which the 274 PATENT CASES. Evans v. Eaton. '3 Wheat. defendant is not obliged to resort.' The notice is to be gtven only when it is intended to offer the special matter in evidence on the general issue. The defendant is not obliged to pur- sue this course. He may still plead specially, and then the plea is the only notice which the plaintiff can claim. If, then, the defendant rgay give in evidence on a special plea the prior use of the machine at places not specified in his plea, it would seem to follow that he may give in evidence its use at places not specified in his notice. It is not believed that a plea would be defective, which did not state the mills in which the machinery alleged to be previously used was placed. But there is still another view of this subject, which de- serves to be considered. The section which directs this notice, also directs that if the special matter stated in the section be proved, "judgment shall be rendered for the defendant, with costs, and the patent shall be declared void." The notice might be intended not only for the information of [ * 505 ] the plaintiff, * but for the purpose of spreading on the record the cause for which the patent was avoided. This object is accomplished by a notice which spe- cifies the particular matter to be proved. The ordinary pow- ers of the Court are sufficent to prevent, and will, undoubt- edly, be so exercised, as to prevent the patentee from being injured by the surprise. This testimony having been admitted, the plaintiff offered to prove that the persons, of whose prior use of the improved hopper-boy the defendant had given testimony, had paid the plaintiff for license to use his improved hopper-boy in their mills since his patent. This testimony was rejected by the Court, on the motion of the defendant, and to this opinion of the Court, also, the plaintiff excepted. The testimony offered by the plaintiff was entitled to very little weight, but ought not to have been absolutely rejected, Connected with other testimony, and under some circum- PATENT CASES. 275 Evans v. Eaton. 3 Wheat. stances, even the opinion of a party may be worth something. It is, therefore, in such a case as this, deemed more safe to permit it to go to the jury, subject, as all testimony is, to the animadversion of the Court, than entirely to exclude it. We come next to consider the charge delivered to the jury. The errors alleged in this charge may be considered under two heads : 1st. In construing the patent to be solely for the general result produced by the combination of all the machinery, and not for the several improved machines, as well as for the general result. 2d. That the jury must find for the defendant, if they * should be of opinion that the hopper-boy [ * 506 ] was in use prior to the invention of the improve- ment thereon by Oliver Evans. The construction of the patent must certainly depend on the words of the instrument. But where, as in tfiis case, the words are ambiguous, there may be circumstances which ought to have great influence in expounding them. The intention of the parties, if that intention can be collected from sources which the principles of law permit us to explore, are entitled to great consideration. But before we proceed to this investigation, it may not be improper to notice the extent of the authority under which this grant was issued. The authority of the executive to make this grant, is derived from the general Patent Law, and from the act for the relief of Oliver Evans. On the general Patent Law alone, a doubt might well arise, whether improvements on different machines could regularly be comprehended in the same patent, so as to give a right to the exclusive use of the several machines separately, as well as a right to the exclusive use of those machines in combination. And if such a patent would be 276 PATENT CASES. prans v. Eaton. 3 Wheat. irregular, it would certainly furnish an argument of no incon- siderable weight against the construction. But the " Act for the relief of Oliver Evans " entirely removes this doubt. That act authorizes the Secretary of State to issue a patent, grant- ing to the said Oliver Evans the full and exclusive right, in his inventionij. discovery, and improvements in the art of manufacturing flour, and in the several machines [ * 507 ] * which he has invented, discovered, improved, and applied to that purpose. Of the authority, then, to make this patent coextensive with the construction for which the plaintiff's counsel con- tends, there can be no doubt. The next object of inquiry is, the intention of the parties, so far as it may be collected from sources to which it is allow- able to resort. The parties are the government, acting by its agents, and Oliver Evans. The inte*htion of the government may be collected from the "Act for the relief of Oliver Evans." That act not only confers the authority to issue the grant, but expresses the intention of the legislature respecting its extent. It may fairly be inferred from it, that the legislature intended the patent to include both the general result, and the particular improved machines, if such should be the wish of the appli- cant. That the executive officer intended to make the patent coextensive with the application of Oliver Evans, and with the special act, is to be inferred from the reference to both in the patent itself. If, therefore, it shall be satisfactorily shown from his application, to have been the intention of Oliver Evans to obtain a patent including both objects, that must be presumed to have been also the intention of the grantor. The first evidence of the intention of Oliver Evans is fur- nished by the act for his relief. The fair presumption is, PATENT CASES. 277 Evans «. Eaton. 3 Wheat. that it conforms to his wishes ; at least, that it does not tran- scend them. The second, in his petition to the Secretary of State, * which speaks of his having discovered cer- [ * 508 ] tain useful improvements, and prays a patent for them, " agreeably to the Act of Congress, entitled, an Act for the relief of Oliver Evans." This application is for a patent coextensive with the act. This intention is further manifested by his specification. It is not to be denied, that a part of this specification would indicate an intention to consider the combined operation of all his machinery as a single improvement, for which he soli- cited a patent. But the whole taken together, will not admit of this exposition. The several machines are described with that distinctness which would be used by a person intending to obtain a patent for each. In his number 4, which contains the specification of the drill, he asserts his claim, in terms, to the principles, and to all the machines he had specified, and adds, " they may all be united and combined in one flour- mill, to produce my improvement in the art of manufacturing flour complete, or they may be used separately for any of the purposes specified and allotted to them, or to produce my improvement in part, according to the circumstances of the case." Being entitled by law to a patent for all and each of his discoveries ; considering himself, as he avers in his specifica- tion and affirmation, as the inventor of each of these improve- ments ; understanding, as he declares he did, that they might be used together so as to produce his improvement complete, or separately, so as to produce it in part ; nothing can be more improbable, than that Oliver Evans intended to obtain a patent solely for their combined operation. His * affirmation, which is annexed to his specification^ [ * 509 ] confirms this reasoning. To the declaration that VOL. I. — p. c. 24 278 PATENT CASES. Evans v. Eaton. 3 Wheat. he is the inventor of these improvements, he adds, " for which he solicits a patent." With this conviction of the intention with which it was framed, the instrument is to be examined. The patent begin& with a recital, that Oliver Evans had alleged himself to be the inventor of a new and useful im- provement in the art of manufacturing flour, &c., by the means of several machines, for a description of which refer- ence is made to his specification. It will not be denied that, if the allegation of Oliver Evans was necessarily to be.understood as conforming to this recital, if our knowledge of it was to be derived entirely from this source, the fair construction would be, that his application was singly for the exclusive right to that improvement which was pro- duced by the combined operation of his machinery. But in construing these terms, the Court is not confined to their most obvious import. The allegation made by Oliver Evans, and here intended to be recited, is in his petition to the Secretary of State. That petition is embodied in, and becomes a part of the patent. It explains itself, and controls the words of reference to it. His allegation is not " that he has invented a new and useful improvement," but that he has discovered certain useful improvements. The words used by the depart- ment of State in reciting this allegation, must then be ex- pounded by the allegation itself, which is made a part of the patent. The recital proceeds, " which improvement has not been known," &c. These words refer clearly to the [*510] * improvement first mentioned and alleged in the petition of Oliver Evans, and are of course to be controlled in like manner with the antecedent words, by that petition. This part of the recital is concluded by adding, that Oliver Evans has affirmed, that he does, verily believe PATENT CASES. 279 Evans v. Eaton. 3 Wheat. himself to be the true inventor or discoverer of the said improvement. But the affirmation of Oliver Evans, like his petition, is embodied in the grant, and must, of course, expound the recital of it. That affirmation is, that he does verily believe himself to be the true and. original inventor of the improve^ ments contained in his specification. In every instance, then, in which the word improvement is used in the singular number throughout the part of the recital of this patent, it is used in reference to a paper con- tained in the body of the patent, which corrects the term, and shows it to be inaccurate. The patent, still by way of recital, proceeds to add, " and agreeably to the Act of Congress, entitled ' an Act for the relief of Oliver Evans,' which authorizes the Secretary of State to secure to him, by patent, the exclusive right to the use of such improvement in the art of manufacturing flour and meal, and in the several machines which he has disco- vered, improved, and applied to that purpose ; he has paid into the treasury, &c. and presented a petition to the Secre- tary of State, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose." *To what do the words "said improvement" [*5ll ] relate ? The answer which has been given at the bar is entirely correct. To the improvement mentioned in the statute and in the petition, to both of which direct refer- ence is made. But in the statute, and in the petition, the word used is " improvements," in the plural. The patent, therefore, obviously affixed to the word improvement, in the singular, the same sense in which the plural is employed, both in the statute and in the petition. We are compelled from the whole context so to construe the word in every place in which it is used in the recital, because it is constantly 280 PATENT CASES. Evans v. Eaton. 3 Wheat. employed with express reference to the Act of Congress, or to some document embodied in the patent, in each of which the plural is used. When, then, the words " said improvement " are used as a terra of grant, they refer to the words of the recital, which have been alre^y noticed, and must be construed in the same sense. This construction is rendered the more necessary by the subsequent words, which refer for a description of the improvement to the schedule. It also derives some weight from the words " according to law," which are annexed to the words of grant. These words can refer only to the gene- ral Patent Law, and to the " Act for the relief of Oliver Evans." These acts, taken together, seem to require that the patent should conform to the specification, affirmation, and petition of the applicant. It would seem as if the claim of' Oliver Evans was rested at the Circuit Court, on the principle that a grant [ * 512 ] for an improvement, by the combined operation *of all the machinery, necessarily included a right to the distinct operation of each part, inasmuch as the whole comprehends all its parts. After very properly rejecting this idea, the judge appears to have considered the department of State, and the patentee, as having proceeded upon it in mak- ing out this patent. He supposed the intention to be, to con- vey the exclusive right in the parts as well as in the whole, by a grant of the whole ; but as the means used are in law incompetent to produce the effect, he construed the grant according to his opinion of its legal operation. There is great reason in this view of the case, and this Court has not discarded it without hesitation. But as the grant, with the various documents which form a part of it, would be contradictory to itself; as these apparent contradic- tions are all reconciled by considering the word " improve- ment" to be in the plural instead of the singular number; as PATENT CASES. 281 Evans o. Eaton. 3 Wheat. it is apparent that this construction gives to the grant its full effect, and that the opposite construction would essentially defeat it, this Court has, aftqr much consideration and doubt, determined to adopt it, as the sound exposition of the instru- ment. The second error alleged in the charge, is in directing the jury to find for the defendant, if they should be of opinion that the iiopper-boy was in use prior to the improvement alleged to be made thereon by Oliver Evans. This part of the charge seems to be founded on the opi- nion, that if the patent is to be considered as a grant of the exclusive use of distinct * improvements [ * 513 ] it is a grant for the hopper-boy itself, and not for an improvement on the hopper-boy. The counsel for the plaintiff contends, that this part of the charge is erroneous, because, by the "Act for the relief of Oli- ver Evans," Congress has itself decided that he is the in- ventor of the machines for which he solicited a patent, and has not left that point open to judicial inquiry. This Court is not of that opinion. Without inquiring whe- ther Congress, in the exercise of its power " to secure for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries," may decide the fact that an individual is an author or inventor, the Court can never pre'sume Congress to have decided that question in a general act, the words of which do not render such a con- struction unavoidable. The words of this act do not require this construction. They do not grant to Oliver Evans the exclusive right to use certain specified machines ; but the exclusive right to use his invention, discovery, and improve- ments; leaving the question of invention or improvement open to investigation, under the general Patent Law. The plaintiff has also contended, that it is not necessary for the patentee to show himself to be the first inventor or 24* 282 PATENT CASHES. Evans v. Eaton. 3 Wheat. discoverer. That the law is satisfied by his having invented a machine, although it may have been previously discovered by some other person. Without a critical inquiry into the accuracy with which the term invention or discovery may be applied to [ * 514 ] anjfcother than the first inventor, the Court * con- siders this question as completely decided by the 6th section of the general Patent Act. That declares that if the thing was not originally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery of the patentee, judgment shall be rendered for the defendant, and the patent declared void. Admitting the words " originally discovered," to be ex- plained or limited by the subsequent words, still if the thing had been in use, or had been described in a public work, anterior to the supposed discovery, the patent is void. It may be that the patentee had no knowledge of this previous use or previous description ; still his patent is void ; the law supposes he may have known it ; and the charge of the judge, which must be taken as applicable to the testimony, goes no farther than the law. The real inquiry is, does the patent of Oliver Evans com- prehend more than he has discovered ? If it is for the whole hopper-boy, the jury has found that this machine was in pre- vious use. If it embraces only his improvement, then the verdict must be set aside. The difficulties which embarrass this inquiry are not less than those which were involved in the first point. Ambi- guities are still to be explained, and contradictions to be reconciled. The patent itself, construed without reference to the sche- dule and other documents to which it refers, and which are incorporated in it, would be a grant of a single improvement ; PATENT CASES. 283 Evans V. Baton. 3. Wheat. but construed with those * documents, it has been [ * 515 ] determined to be a grant of the several improve- mients which he has made in the machines enumerated in his specification. But the grant is confined to improvements. There is no expression in it which extends to the whole of any one of the machines which are enumerated in his specifica- tion or petition. The difficulty grows out of the complexity and ambiguity of the specification and petition. His schedule states his first principle to be the operation of his machinery on the meal from its being ground until it is bolted. He adds " this principle I apply by various machines, which I have invented, constructed, and adapted to the purposes hereafter specified." His second principle is the application of the power that moves the mill to his machinery. The application of these principles, he says, to manufac' turing flour, is what he claims as his invention or improve- ment in the art. He asserts himself to be the inventor of the machines, and claims the application of these principles, to the improvement of the process of manufacturing flour, and other purposes, as his invention and improvement in the art. The schedule next proceeds to describe the different ma- chines as improved, so as to include in the description the whole machine, without distinguishing his improvement from the machine as it existed previous thereto ; and in his fourth number he says, " I claim the exclusive right to the principles, and to all the machines above specified, and for all the uses and purposes specified, as not having been heretofore known or used before I discovered them." *If the opinion of the Court were to be formed [ * 516 ] on the schedule alone, it would be difficult to deny that the application of Oliver Evans extended to all the machines it describes. But the schedule is to be considered 284 PATENT CASES. Evans v. Eaton. 3 Wheat. in connection with the other documents incorporated in the patent. The affirmation which is annexed to it avers, that he is the inventor, not of the machines, but of the improvements herein above specified. In his peti^on he states himself to have discovered certain useful improvements, applicable to the art of manufacturing flour, and prays a patent for the same ; that is, for his im- provements, agreeably to the Act of Congress, entitled, " an Act for the relief of Oliver Evans." After stating the prin- ciples as in his schedule, he adds, " the machinery consists of an improved elevator, an improved conveyor, an improved hopper-boy, an improved drill, and an improved kiln-dryer." Although, in his specification, he claims a right to the whole machine, in his petition he only asks a patent for the improvements in the machine. The distinction between a machine and an improvement on a machine, or an improved- machine, is too clear for them to be confounded with each other. The Act of Congress, agreeably to which Evans petitions for a patent, authorizes the Secretary of State to issue one, for his improvements in the art of manufacturing flour, " and in the several machines which he has invented, discovered, improved, and applied to that purpose." [ * 517 ] * In conformity with this act, this schedule, and this petition, the Secretary of State issues his pa- tent, which, in its terms, embraces only improvements. Tak- ing the whole together, the Court is of opinion, that the patent is to be construed as a grant of the general result of the whole machinery, and of the improvement in each ma- chine. Great doubt existed whether the words of the grant, which are expressed to be for an improvement or improve merits only, should be understood as purporting to be a patent only for the improvements ; or should be so far controlled by PATENT CASES. 285 Evans v. Eaton. 3 Wheat. the specification and petition, as to be considered as a grant for the machine as improved, or in the words of the schedule and petition, for " an improved elevator, an improved con- veyor, an improved hopper-boy, an improved drill, and an improved kiln-dryer." The majority of the Court came at length to the opinion, that there is no substantial difference, as they are used in this grant, whether the words grant a patent for an improvement on a machine, or a patent for an improved machine ; since the machine itself, without the improvement, would not be an improved machine. Although I did not concur in this opinion, I can perceive no incon- venience from the construction. It is, then, the opinion of this Court that Oliver Evans may claim, under his patent, the exclusive use of his inventions and improvements in the art of manufacturing flour and meal, and in the several machines which he has invented, and in his improvements on machines previously discovered. *In all cases where his claim is for an improve- [ * 518 ] ment on a machine, it will be incumbent on him to show the extent of his improvement, so that a person under- standing the subject may comprehend distinctly in what it consists. Some doubts have been entertained respecting the juris- diction of the Courts of the United States, as both the plain- tiff and defendant are citizens of the same State. The 5th section of the Act to promote the progress of useful arts, which gives to every patentee a right to sue in a Circuit Court of the United States, in case his right be violated, is repealed by the 3d section of the Act of 1800, ch, 179, (xxv.) which gives the action in the Circuit Court of the United States, where a patent is granted "pursuant" to that act, or to the Act for the promotion of useful arts. This patent, it has been said, is granted not in pursuance of either of those acts, but in pursuance of the Act " for the relief of Oliver Evans." 286 PATENT CASES. Evans v. Eaton. 3 Wheat. But this Court is ofopinion, that the Act for the relief of Oliver Evans is engrafted on the general Act for the promotion of useful arts, and that the patent is issued in pursuance of both. The jurisdiction of the Court is, therefore, sustained. As the charge delivered in the Circuit Court to the jury differs in soisne respects from this opinion, the judgment ren- dered in that Court is reversed and annulled, and the cause remanded to the Circuit Court, with directions to award a venire facias de novo, and to proceed therein according to law. Judgment reversed. [*519] 'Judgment. This cause came on to be heard on the transcript of the record of the Circuit Court . for the district of Pennsylvania, and was argued by counsel. On consideration whereof, this Court is of opinion, that there is error in the proceedings of the said Circuit Court in this, that the said Court rejected testimony which ought to have been admitted ; and also in this, that in the charge delivered to the jury, the opinion is expressed that the patent, on which this suit was instituted, conveyed to Oliver Evans only an ex- clusive right to his improvement in manufacturing flour and meal, produced by the general combination of all his ma- chinery, and not to his improvement in the several machines applied to that purpose ; and also, that the said Oliver Evans was not entitled to recover, if the hopper-boy, in his decla- ration mentioned, had been in use previous to his alleged discovery.! Therefore, it is considered by this Court, that 1 There is evidently a mistake in this part of the certificate. It should be, as is manifest from the charge of the Circuit Court, the statement of the 2d question by the Chief Justice {ante, pp. 605, 506,) " that the hop- per-boy was in use prior to the invention of the improvement thereon by Oliver Evans." This is a MS. note made by Judge Story in a volume belonging to the Dane Law Library. PATENT CASES 287 Note on the Patent Laws. App. 3 Wheat. the judgment of the Circuit Court be reversed and annulled, and that the cause be remanded to the said Circuit Court, with directions to award a venire facias de novo.^ iNOTE ON THE PATENT LAWS. [Appendix. 3 Wheat. 655.] The patent acta of the United States are, in a great degree, founded on the principles and usages which have grown out of the English statute on the same subject. It may be useful, therefore, to collect together the cases which have been adjudged in England, with a view to illustrate the corresponding provisions of our own laws ; and then bring in review the adjudications in the courts of the United States. By the Statute of 21 Jac. I. ch. 3, commonly called the Statute of Monopolies, it is enacted, (§1,) "that aU monopolies, and all com- missions, grants, licenses, charters, and letters-patent, heretofore made or granted, or hereafter to be made or granted, to any person or per- sons, bodies politic or corporate whatsoever, of or for the sole buy- ing, selling, making, working, or using of any thing within this realm, or the dominion of Wales, or of any other monopolies, or of power, liberty, or feculty to dispense with any others, or to give license or tole- ration to do, use, or exercise any thing against the tenor or purport of any law or statute, or to give or make any warrant for any such dispen- sation, license, or toleration, to be had or made, or to agree or compound with any others for any penalty or forfeiture, limited by any statute, or of any grant or promise of the benefit, profit, or commodity of any for- feiture, penalty, or sum of money that is or shall be due by any statute, before judgment thereupon had; and all proclamations, inhibitions, straints, warrants of assistance, and all other matters and things whatso- ever, any way tending to the instituting, erecting, strengthening, further- ing, or countenancing the same, or any of them, are altogether contrary to the laws of the realm, and so are and shall be utterly void and of none effect, and in no wise to be put in use or execution." The 6th section, however, provides, " that any declaration before-mentioned shall not ex- tend to any letters-patent, and grants of privilege, for the term of fourteen years, or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of 288 PATENT CASES. Note on the Patent Laws. App. 3 Wheat. maJdng such letters-patent and grants, shall not use, so as also they be not contrary to the law, nor mischievous to the State, by raising prices of com- modities at home, or hurt of trade, or generally inconvenient; the said fourteen years to be accounted from the date of the first letters-patent, or grant of such'privilege hereafter to be made, but that the same shall be of such force as they should be if this act had never been made, and none other." It is under this last section that patents for new and useful inventions are now granted in, England ; and by a proviso, or condition, always in- serted in every patent, the patentee is bound particularly to describe and ascertain the nature of his invention, and in what manner the same is to be constructed or made, by an instrument in writing, under his hand and seal, and to cause the same to be enrolled in the Court of Chancery ■within a specified time. Harmar «. Playne, 11 East, 101; Boulton u. Bull, 2 H. Bl. 463 ; Hornblower v. Boulton, 8 T. K. 95 ; 2 Bl. Com. 407, note by Christian, (7.) This instrument is usually termed the specifi- cation of the invention ; and all such instruments are preserved in an office for public inspection. Upon the construction of the British Patent Act, taken in connection with the conditions inserted in the letters-patent, a great variety of deci- sions have been made. 1. As the statute contains no restriction confin- ing the grants to British subjects, it is every day's practice to grant patents to foreigners, and no such patent has ever been brought into judi- cial doubt. 2. A patent can be granted only for a thing new; but it may be granted to the first inventor, if the invention be new in England, thougb the thing was practised beyond sea before ; for the statute speaks of new manufactures within this realm; so that if it be new here, it is within the statute, and whether learned by travel or study is the same thing.' Edgeberry v. Stevens, 2 Salk. 447 ; Hawk. P. C. b. 1, ch. 79, and see Noy, 182, 183. 3. The language of the statute is new manufacture; but the terms are used in an enlarged sense, as equivalent to new device, or contrivance, and apply not Only to things made, but to the practice of making. Under things made we may class, in the first place, new compo- sitions of things, such as manufactures in the ordinary sense of the word ; secondly, all mechanical inventions, whether made to produce old or new efiects ; for a new piece of mechanism is certainly a thing made. Under the practice of making, we may class all new artificial manners of operat- ing with the hand, or with instruments in common use, new processes in any art, producing efiects useful to the public. When the efiect produced is some new substance, or composition, it would seem that the privilege of the sole working, or making, ought to be for such new substance or com- position, without regard to the mechanism, or process, by which it has PATENT CASES. 289 Note on the Patent Laws. App. 3 Wheat. been produced, which, though perhaps also new, will be only useful as producing the new substance. When the eflfect produced is no new sub- stance, or composition of things, the patent can only be for the mechan- ism, if new mechanism is used ; or for the process, if it be a new method of operating with or without old mechanism, by which the effect is pro- duced. Per Eyre, Ch. J., in Boulton v. Bull, 2 H. Bl. 463, 492, and Lawrence, J., in Hornblower v. Boulton, 8 T. E. 95, 106. A patent, therefore, under certain circumstances, may be good for a method, as well as for an engine, or machine. Ibid, and 8 T. K. 95, 106 ; Rex V. Cutler, 1 Starkie's N. P. E. 354. 4. A patent cannot be for a mere principle, properly so called; that is, for an elementary truth. But the word principle is often used in a more lax sense, to signify constituent parts, peculiar structure, or process; and in specifications it is generally used in this latter sense ; and in this view, it may well be the subject of a patent. Ibid. 5. It was formerly considered that a patent could not be for an improvement (3 Inst. 184) ; but that opinion has been long since exploded ; and it is now held that a patent may well be for a new improvement. Harmar v. Playne, 14 Ves. 130; Ex parte Fox, 1 Ves. & Beames, 67 ; Boulton v. Bull, 2 H. Bl. 463, 488 ; 8 T. R. 95; Bull. N. P. 77. 6. A patent must be of such manufacture or process as no other did, at the time of making the letters-patent, use ; for though it were newly invented, yet, if any other did use it at the time of making the letters-patent, or grant of the privilege, it is declared void by the act. 3 Inst. 184. And in a very recent case of a patent for a new mode of making verdigris, one of the objections was, that the invention was in public sale by the patentee, before the grant of the patent ; and Gibbs, Ch. J., on that occasion said, " with respect to this objection, the question is somewhat new. Some things are obvious as soon as they are made public ; of others, the scientific world may possess itself by analysis ; some inventions almost baffle discovery. But to entitle a man to a patent, the invention must be new to the world. The pubUc sale of that which is afterwards made the subject of a patent, though sold hy the inventor only, makes f^ patent void. It is in evidence that a great quantity was sold in the course of four months, before the patent was obtained." And if the jury were satisfied of that fact, his lordship added, " that he thought the patent void." Wood v. Zinuner, 1 Holt's N. P. Rep. 58. 7. The invention must not only be new, but useful ; for if it be contrary to law, or mischievous, or hurtful to trade, or generally inconvenient, it is, by the terms of the statute, void. 8 Inst. 184. 8. A patent can legally be granted only to the first and true inventor ; for such are the descriptive terms of the statute. 3 Inst. 184. ■ But if the original inventor has con- voL. I. — P. c. 25 290 PATENT CASES. Note on the Patent Laws. App. 3 Wheat . f- fined the invention to his closet, and the public be not acquainted with it, a second inventor, who makes it public, is entitled to a patent. Boulton V. Bull, 2 H. Bl. 463, and DoUand's patent, cited 2 H. Bl. 470, 487. 9. The patent must not be more extensive than the invention; therefore, if the invention consist in an addition or improvement only, and the patent is for the whole machine or manufacture, it is void. Buller's N. P. 76 ; Boulton v. Bull, 2 H. Bl. 463, and cases there cited ; The King v. Else, 11 East, 109, note ; Harmar v. Playne, 11 East, 101 ; S. C. 14 Ves. 180. Therefore, where a patent was for the exclusive liberty of making lace composed of sUk and cotton thread mixed, not of any particular mode of making it, and it was proved that silk and cotton thread were before mixed on the same frame for lace, in some mode or other, though not like the plaintiff's, the patent was held void, as being more extensive than the invention. The King v. Else, 11 Inst. 109, note. A person may obtain a patent forb machine, consisting of an entirely new combination of parts, although the parts may have been separately used in former machines ; and the patent may correctly set out the whole as the invention of the patentee. But if a combination of a certain number of those parts have previously existed, up to a certain point, in former machines, the patentee merely adding other combinations, the patent should comprehend such improvements only. Bevill v. Moore 2 Marshall's B,. 211. 10. If a person has invented an improvement upon an existing patented machine, he is entifled to a patent for his improve- ment ; but he cannot use the original machine until the patent for it has expired. Ex parte Fox, 1 V^s. & Beames, R. 67. 11. Although the specification is not annexed to a patent in England, and the patent con- tains a concise description only of the invention ; yet, as there is a pro- viso in the patent, requiring the enrollment of a specification in chancery, within a specified time, and in default making the patent void, the patent is always construed in connection with the specification, and the latter is deemed a part of the patent, at least for the purpose of ascertaining the nature and extent of the invention claimed by the patentee. Boulton v. Bull, 2 H. Bl. 364 ; Hornblower v. Boulton, 8 T. R. 95. 12. Care should be taken that the specification comports with the patent ; for otherwise it will not sustain the grant. For where a patent was obtained for an im- proved mode of lighting cities, it was held by Le Blanc, J., that it was not supported by a specification, describing an improved lamp. The patent ought to have been for an improved street lamp. Lord Coch- rane V. Smethurst, 1 Starkie's N. P. R. 205. No technical words, however, are necessary to explain the subject of a patent; but the the Court will construe the terms of the patent, and of the specifica- PATENT CASES. 291 Note on the Patent Laws. App. 3 Wheat. tion, in a liberal manner, and give them such a meaning as best comports with the apparent intention of the patentee. Hornblower v. Boulton, 8 T. R. 95 ; Boulton v. Bull, 2 H. Bl. 463. Therefore, where the patent was " for a method of lessening the consumption of steam and fuel in fire-engines," one objection was, that the patent was for a philoso- phical principle only, neither organized nor capable of being organized, whereas it ought to have been for a formed machine ; a second objection was, that if it was a patent for a formed machine, it was for the whole machine, when the invention was only an improvement or addition to an existing machine. But the Court of King's Bench, on examining the specification were of opinion, that both of the objections were unfounded, although the terms of the specification were so doubtful and obscure as to have produced a division of opinion in the Court of Common Pleas. Hornblower v. Boulton, 8 T. R. 95 ; Boulton v. Bull, 2 H. Bl. 463. Both of these cases were very elaborately discussed, and contain more learning on the subject of patents than can be found in any other adjudication, and are, therefore, deserving of the most accurate attention of fevery law- yer. In both of them all the judges agreed, that a mere mistake in terms, or in the correct sense of words, would not vitiate a patent, if the Court could give a reasonable construction to the whole specification. Mr. Jus- tice Heath said, " when a mode of doing a thing is referred to something permanent, it is properly termed an engine ; when to something fugitive, a method." " \{ method and machinery had been used by the patentee as convertible terms, and the same consequences would result from both, it might be too strong to say that the inventor should lose the benefit of his patent by the misapplication of this term." " Method is a principle reduced to practice ; it is, in the present instance, the general application of a principle to an old machine." "A patent for an improvement of a machine, and a patent for an improved machine, are in substance the same. The specification would serve for both patents ; the new organization of parts is the same in both." Mr. Justice Rooke said, " a new invented method conveys to my understanding the idea of a new mode of construc- tion. I think those words are tantamount to fire-engines of a newly in- vented construction ; at least, 1 think they will bear this meaning, if they do not necessarily exclude every other. The specification shows that this was the meaning of the words, as used by the patentee, for he has speci- fied a new and particular mode of constructing fire-engines. It seems, therefore, but reasonable, that if he sets forth his improvement intelligibly, his specification should be supported, though he professes only to set forth the principle." Mr. Justice Buller said, " the method and mode of doing a thint" are the same ; and I think it is impossible to support a patent for 292 PATENT CASES. Note on the Patent Laws. App. 3 Wheat. a method only, without having carried it into eflfect, and produced some new substance." " When the thing is done or produced, then it becomes the manufacture which is the proper subject of a patent." The remarks of Lord Chief Justice Ayre have been ah-eady stated. He, however, con- sidered the patent not to be for a fire-engine, but in effect for a manner ef working a fire-engine, so as to lessen the consumption of steam ; and, he added, " the specification calls a method of lessening the consumption of steam in fire-engines a principle, which it is not ; the act (of parliar ment) calls it an engine,, -Whioh. perhaps, alsOj it is not ; but both the spe- cification and statute are referable to the same thing, and when they are taken with their correlative, are perfectly intelligible." " A narrower ground was taken in the argument, which was to expound the word engine in the body of this act, (meaning the special act of parliament for this patent,) in opposition to the title of it, to mean a method ; and I am ready to say I would resort to that ground, if necessary, in order to sup- port the patent, ut res magis valeat quam pereat." In the King's Bench, Mr. Justice Lawrence observed, " engine and method mean the same thing, and may be the subject of a patent. Method, properly speaking, is only placing several things, and performing several operations, in the most convenient order ; but it may signify contrivance, or device ; so may an engine ; and, therefore, I think it may answer the word method. So, principle may mean an elementary truth ; but it may also mean consti- tuent parts." 13. The patent Jbeing granted upon condition that, the invention is new, (at least in England,) and useful, and also that the patentee shall deliver and enrol in chancery a specification of his inven- tion, it is necessary for the patentee, to establish, by proof, when his in- vention is called in question in a suit, that he has complied with these conditions. If, therefore, the novelty or efiect of the invention be dis- puted, the patentee must show in what his invention consists, ^nd that he produced the effect proposed by the patent in the manner specified. Slight evidence of this, on his part, is suflScient ; and it is then incumbent on the defendant to falsify the specification. Turner v. Winter, 1 T. R. 602. 14. In respect to specifications, (objections to which form the most common, and indeed, usua:lly, the most fatal defence to suits for infringe- ments of patents,) several rules have been laid down. In the first place, a man, to entitle himself to the benefit of a patent of monopoly, must dis- close his secret, and specify his invention in such a way, that others of the same trade, who are artists, may be taught to do the thing for which tiie patent is granted, by following the directions of the specification, without any new invention or addition of their own. Rex v. Arkwright, Bull, N. P. [77.] In the second place, he must so describe it that the PATENT CASES. 293 Note on the Patent Laws. App. 3 Wheat. public may, after the expiration of the term, have the use of the inven- tion in as cheap and beneficial a way as the patentee himself uses it ; and therefore, if the specification describe many parts of an instrument, or machine, and the patentee uses only a few of them, or does not state how they are to be put together or, used, the patent is void. Kex v. Ark- ■wright, Bull, N. P. [77] ; Harmar v. Playne, 11 East, 101. So, if the patentee could only make the article with two or three of the ingredients specified, and he has inserted others which will not answer the purpose, that will avoid the patent. So, if he makes the article with cheaper ma- terials than those which he has enumerated, although the latter will an- swer the purpose, the patent is void. Turner v. Winter, 1 T. R. 602. In the third place, if the specification be, in any part of it, materially false, or defective, or obscure and ambiguous, or give directions which tend to mislead the public, the patent is void. Rex v. Arkwright, Bull. N. P. [77] ; Turner v. Winter, 1 T. R. 602. Therefore, where in a patent for trusses for ruptures, the patentee omitted what was very mate- rial for tempering the steel, which was rubbing it with tallow, Lord Mans- field held the patent, for want of it, void. Liardet v. Johnson, Bull. N. P. [76] ; S. C. cited 1 T. R. 602, 608, per Buller, J. So, where a patent was for a new mode of making verdigris, and the specification omitted an ingredient, (aquafortis,) which, though not necessary to the composition for which the patent was claimed, was a more expeditious and beneficial mode of producing the same efiects, and was as such used by the patentee, Lord Ch. J. Gibbs held the patent void. Wood v. Zimmer, 1 Holt's N. P. R. 58. So, if the specification direct an ingredient to be used which will not answer the purpose, or is never used by the patentee, the patent is void. Turner v. Winter, 1 T. R. 602. So, if the patentee says, in his specification, he can produce three things by one process, and he fails in any one, the patent is void. Turner v. Winter, 1 T. R. 602. So, if the specification direct the same thing to be produced several ways, or by several different ingredients, and any of them fail, the . patent is void. Turner v. Winter, 1 T. K. 602. In the 4th place, if the invention be of an improvement only, it is indispensable that the patent should not be more broad than the invention, and the specification should be drawn up in terms which do not include dny thing but the improvement. Boulton V. Bull, 2 H. Bl. 463 ; Bull. N. P. 76 ; Bovill v. Moore, 2 Marsh. R. 211. And in the specification for such improvement, it is essential to point out precisely what i? new and what is old ; and it is not sufficient to give a general description of the construction of the instrument, without such distinction, although a plate be annexed containing detached and separate representations of the parts in which the improvement consists. There- 25* 294 PATENT CASES. Note on the Patent Laws. App. 3 Wheat. fore, where a patent was " for certain improvements in the making of ■ombrellas and parasols," and the speoificatioii contained a minute descrip- tion of the construction of them, partly including the usual mode .•»!* apparent upon the face of the patent itself, as to turn him / f} (^t if out of court, upon a plea which merely puts that title in 1. ^ ^^ issue ? We strongly incline to think that it would be. The . ,__^. . d. third section requires that a written description of the inven^- J. tion, &c., should be delivered before the inventor can receive tt'i^ tviw-*" a patent. Has the Secretary of State any authority to issue ^•l A«|i,v*i>. the patent, unless this prerequisite be complied with ? We ^^^^ 4£c«iX., think not; and if this conclusion be correct, it follows that the patent, which is the only evidence of the plaintiff's title, 310 PATENT CASES. Kneass v. The Schuylkfll Bank. 4 Wash. is invalid. Without the specification, there would, in most cases, be a total failure of the consideration for which the monopoly is granted ; as no person could guard himself against an infringement of the patent while it continues in force, or be enabled to use the invention after its termination. The same reason would seem applicable to a specification altogether ambiguous and unintelligible ; because the same section requires not only a specification, but that it should be expressed in terms, full, clear, and exact. If the defendant cannot, under the general issue, object to such a specification, I do not perceive in what other way he could avail himself of it, as it is not one of the cases provided for by the sixth section ; nor do I see how it could well be made the subject of a special plea. Before I take leave of the question, what defence may be made under the general issue without notice, it may be pro- per to refer to some others. which are of frequent occurrence — such as that the patent is broader than the discovery ; that it is for an improvement which the specification does not so particularly describe as to distinguish it from the original invention ; that the suggestions of the petition are not recited in the patent ; and perhaps others similar in principle. We come now to the inquiry whether the specification in this case is chargeable with the defects imputed to [ * 1 4 ] it . These are, first, that * it speaks of printing cop- perplates. The answer to this objection is, that the term printing is an error of expression apparent on the face both of the patent and specification, by which no person could be misled. The first describes the invention to be an improvement in printing on the reverse face of bank-notes ; and the latter, when it describes the nature of the plaintiff's claim, speaks of printing copperplate. The next objection to the specification is the omission to describe the mode of printing letter-press, which, it is con- PATENT CASES. 311 Kneass v. The Schuylkill Bank. 4 Wash. tended, was as necessary as it was to describe the mode of copperplate printing. It may safely be admitted that the one was as necessary as the other ; but it is very clear that neither was so, as both modes of printing are well known by persons acquainted with copperplate and type printing, and, of course, neither required a description. The last objection made to the patent, is, that the descrip- tion of the rolling press, given in the specification, makes it part of the thing granted, and, consequently, the patent is broader than the invention, which, it is not pretended, extends to the rolling press. It is very true that the specification, with unnecessary minuteness, describes the rolling press, which is always used in copperplate printing, and also the modus operandi. But then it concludes by declaring for what it is the plaintiff claims a patent, and this claim has no reference to the press. The last objection made to the plaintiff's right of recovery, is, that his action will not lie against a corporation. No cases were cited by the counsel in support of this ob- jection, and we have had no opportunity to refer to any. The general rule certainly is that corporations are not liable to be sued in actions of tort ; but it by no means follows that they may not be sued in actions on the case for injuries done to the rights of others, notwithstanding the plea is not guilty. We incline strongly to the opinion, that where a corporate body, acting in that character, directs an act to be done which infringes the right of another, they may be sued in this form of action ; and in this case we shall so decide. If the jury should find a verdict for the plaintiff, the only remaining inquiry for them will be as to the damages. The Act of Congress has provided a general rule for their govern- ment, from which they cannot depart ; but its application to the particular case is frequently difficult and embarrassing. 312 PATENT CASES. Moody V. riske et al. 2 Mason. The plaintiff is entitled to be compensated for the damages he has sustained by the infringement of his right. What that is, it will not be'easy for the jury to estimate, as no evi- dence upon that subject has been given to them ; for it should be noticed that all the evidence applicable to this subject relates to the^bills used by the defendants. As to the plain- tiff's invention, neither the plates iior any impressions from them have been laid before the jury. All that you can know is that the defendants have issued bank-notes with [*15] * steel-plate; printing on the backs of them, as a security against counterfeits. But what the. parti- cular device intended by the plaintiff is, or how far it is cal- culated to produce the same result with that used by the defendants, cannot be easily perceived by the jury. Wilson stated that he considered the impression made with the mid- dle piece to be a security against counterfeiting the notes ; but without it, a mere impression on the back of the notes was, in his opinion, of no use. Verdict for three cents damages. Charles Ingersoll and Phillips, for plaintiff. Bradford, Joseph Ingersoll, and Smith, for defendants. Paul Moody v. Jonathan Fiske et al.^ (2 Mason, 112.) Where a patent is for several improvements in a machine, and each improve- ment is summed up in the patent as the invention of the patentee; he is bound by his summary, and if any one of the improvements is found not to be new, his patent is void. 1 See Peterson et al. v. Wooden, post; and ninth section of the act of 3d March, 1837. PATENT CASES. 313 Moody V. Fiske et al. 2 Mason. Where several improvements in a machine are distinctly claimed in a patent, an action lies for the piracy of any of the improvements, although the de- fendants have not used the whole of the improvements. Ca.se for an infringement of certain patent rigiits granted to the plaintiff. There were two counts on two distinct patents in the declaration, but the first was the only one relied on at the trial, being on a patent for " an improvement on the double speeder for roping cotton," &c. The cause was tried on the general issue. The patent was dated the 3d of April, 1819, and the specification annexed to it, con- tained a very minute description of the double speeder as im- proved by the plaintiff under distinct articles. In the first article the plaintiff states, " the first part of my invention is a new position of the rollers," which he then proceeds to describe. Tn the sixteenth article, the plaintiff sums up his improve- ments in the following terms. - " The above description exhi- bits all my improvements in the roping machine for roping * cotton, whether called a double speeder [ * 1 13 ] or by any other name. The parts which I claim as new, and as my invention, are the following : — 1st. The position of the rollers. 2d. The two upper cones, with all the mechanism and motions connected with or dependent on them. 3d. The method of moving the belt on the lower cones, and that of communicating motion from the lower driven cone to the spindles, and all the mechanism and method of communicating motion from the upper driven cone to the arbors or axes of the perpetual or endless screws and perpendicular racks, which raise and lower the ~ spindle rail ; but I do not claim the said racks and screws, as these, as well as the common heart wheels, have each before been, or may be, used fpr the same purpose, and either may be applied to my improvement. 5th. The method and ma- chinery by which the said motion of the spindle rail is VOL. I. — p. c. 27 314 PATENT CASES. Moody V. Ksko et al. 2 Mason. changed from an ascending to a descending movement, and the manner of connecting the same with the wagon carriage. 6th. The said wagon, wagon carriage, gallows frame, catch wheels, the cycloid or cycloidal cam, slides, lever, and pulley shaft, which raise the belts on the upper cones, and all the similar parts vi^ich raise the belts on the lower cones, (except the cycloid or cycloidal cam) with all the parts, movements, and mechanism connected with the same. 7th. The flier tubes and methods of applying and using the same. 8th. The rotary motion of the cams, and the intermediate gear work and machinery which produces it." The seventeenth article then proceeds. " The machine referred tOj and from which the description of my improved double speeder is made, as above set forth, has twenty spin- dles, and produces roping of a convenient size and twist for being afterwards spun into a certain kind of thread or yarn ; but I also contemplate the nature and principles of my said invention as applicable to any machine for the like purpose, whether it has more or less spindles, or made to give a greater or less degree of twist. And I do not consider my [ * 1 14 ] said invention * as confined to any particular form, position, kind of material, degree of velocity^ shape, magnitude, or position of the several parts, but the same may be applied to any machine made of iron, brass, copper, or other suitable metal or material ; and all the parts above de- scribed and set forth may be extremely varied to obtain the object for which similar machines have been, are, or may be used or employed. The position of the rollers, which I con- sider as an important improvement, may be applied to any ma- chine for spinning as well as for roping, and I have applied it to an improved spinning and filling frame, a description and drawing of which I have prepared for procuring a patent." The cause was argued by Gorham and Webster, for the plaintiff, and by G. Sullivan, for the defendants. PATENT CASES. 315 Moody V. Make et al. 2 Mason. The defence at the trial turned mainly on two points. 1st. That the machines used by the defendants were not iden- tical with those of the plaintiff. 2d. That part of the im- provements claimed by the plaintiff were known before, and so the patent was broader tlian the invention, and void. The counsel for the defendants contended on these points, following the enumeration of the improvements in the 16th article of the patent. 1st. That the position of the rollers was not new. 2d. That the plaintiff had no right to the two upper cones, they not being his invention. And as to the machinery connected with them, it was not used by the de- fendants. 3d. That the method of moving the belt of the lower cones, and the mechanism connected with it, were not used by the defendants. 4th. That the method of commu- nicating motion from the upper driven cone to the arbors or axes, of the perpetual or endless screws, and perpendicular tacks, &c., were not used by the defendants. The same answer was given to the 5th, 6th, and 7th improvements, spe- cified in the 16th article. 8th. That the rotary motion of the * cones, and the intermediate gear [ * 1 1 5 ] work and machinery, were not new. The proof in the cause being very strong, that the position of the rollers was not new, two questions arose. 1st. Whe- ther the plaintiff was concluded by the summing up in his patent, from contending that the position of the rollers was not a substantial part of his invention, or was not per se patentable. 2d. If not so precluded, and if the patent was not void, whether the defendants were not liable in this action, if they used any one of the plaintiff's improvements, although the proof should be satisfactory that they did not use all the improvements. Stokt, J. Upon the last point, there has hitherto been considerable difficulty in my mind. But after a good deal of 316 PATENT CASES. Moody V. Fiske et al. 2 Mason. reflection on it, I have come to the result, that where the plaintiff claims, as in this case, several distinct and independ- ent improvements in the same machine, and procures a pa- tent for them in the aggregate, he is entitled to recover against any person who shall use any one of the improvements so patented, notviuthstanding there has been no violation of the other improvements. In such case, the patent goes for the whole of the improvements, and if each be new, and be claimed distinctly in the patent, as such, there does not seem any good reason why the party who pirates any part of the invention should not be liable in damages. Take the case of a copyright. It has never been supposed that, in order to maintain an action, the whole book should be pirated. It has been adjudged sufficient if a considerable part of the book be pirated, so that such part be that on which the plaintiff is truly and substantially the author.^ To be sure, a mere ex- tract would not be piracy ; but if the substance of the work be taken, or so large a portion of it as makes it a [ * 1 16 ] substitute for * the original, and materially injures the literary property of the author, it has been thought to be actionable.^ There is no doubt that, by the law of England, a party who pirates any part of the invention of the patentee is liable in damages, notwithstanding he has not violated the whole. I say pirates any part of the invention, for any person may law- fully use any machinery, combined with the patentee's inven- tion, which he does not claim as new, or which, if so claimed, has been previously known and used. This is the doctrine in Bovill v, Moore,^ which was an action for the violation of a patent " for a machine for the manufacture of bobbin lace or twist net, similar to and resembling the Buckinghamshire 1 Carey v. Longman, 1 East, K. 358, and cases there cited. ^ Kowarth v. Wilkes, 1 Camp. R. 94. 3 2 Marsh. K. 211 ; S. C. Davieson Patents, 211. PATENT CASES. 817 Moody V. Fiske et al. 2 Masou. lace net, and French lace net, as made by the hand with bob- bins on pillows." Lord Chief Justice Gibbs there said, — " We must consider what the patent proposes to give to the patentee, and what privileges he would possess under the patent. Now the patentee is entitled to the sole use of this machine, and whoever imitates it, either in whole or in part, is subject to an action at the suit of the patentee." The de- fendants had used the invention in part, but obtained a ver- dict upon the ground that the plaintiff had not invented the whole machine, but had only made improvements in it, the combination having existed up to a certain point before, and therefore his patent was void, as covering more than his invention. It may be that the decisions have turned upon the peculiar language of the English patents, for in ail the precedents which I have seen, the patent gives the exclusive right of the whole invention, and prohibits all other persons, " directly and indirectly, to make, use, or put in practice the said invention, or any part of the same, &c., or in any wise to counterfeit, imitate, or resemble the same, or make or cause to be made any addition thereto, in subtraction from the * same." ^ But as no such intimation is given [ * 117 ] in the reports, I incline to believe that the doctrine stands upon the general principles of law, that he who has the exclusive right to the whole of a thing, has the same right to all the parts which the general right legally includes, that is, (in cases like the present,) to all the parts which he has invented. The principal difficulty that arises is in the application of the doctrine, and that may in most cases be removed by con- sidering the nature and extent of the patent, or rather of the thing invented and patented. Where the patent goes for the whole of a machine as a new invention, and the machine is • See forms in Collier on Patents, 54, 57, and Davies on Patents, 27, 30. 27* 318 PATENT CASES. Moody V. Fiske et al. 2 Mason. in its structure substantially new, any person who pirates a part of the machine, substantially new in its structure, de- prives the inventor so far of his exclusive right in his inven- tion, and may in a great measure destroy the value of the patent. Where the patent is for several distinct improve- ments in an q^isting machine, or for an improved machine, incorporating several distinct improvements, which are clearly specified, then if a person pirates one of the improvements, he violates the exclusive right of the patentee, for the patent is as broad as the invention, and the invention covers all the improvements ; and it is a wrong done to the patentee to deprive him of his exclusive right in any of his improvements. Where a patent is for a new combination of existing ma- chinery or machines, and does not specify or claim any im- provements or invention, except the combination, unless that combination is substantially violated, the patentee is not enti- tled to any remedy, although parts of the machinery are used by another, because the patent, by its terms, stands upon the combination only. In such a case, proof that the machines, or any part of their structure existed before, forms no objec- tion to the patent, unless the combination has ex- [ * 118 ] isted before, *for the reason that the invention is limited to the combination. And yet if the com- bination itself be not wholly new, but up to a certain point has existed before, ^nd the patentee claims the whole combi- nation as new, instead of his own improvements only, as by taking out a patent for the whole machine, doubtless his pa- tent is void, for it exceeds his invention.^ But if there be different and distinct improvements constituting parts of the combination, which are specified as such in the patent and specification, and any one of them be pirated, the same rule 1 Bovill V. Moore, 2 Marsh. K. 211 | Davies on Patents, 361, 398, 404, 511. PATENT CASES. 319 Moody V. Fiske et al. 2 Mason. seems to apply as in other cases where part of an invention is pirated, for the patent then shows that the invention is not limited to the mere combination, but includes the particular improvements specified. It is often a serious difficulty, from the obscure language of the specification, to ascertain what is the nature and extent of the invention claimed by the patentee. Whether his patent be valid or not must materially depend upon the accu- racy and distinctness with which the invention is stated. But in all cases where the patentee claims any thing as his own invention, in his specification, courts of law cannot reject the claim ; and if included in the patent, and found not to be new, the patent is void, however small or unimportant such assert- ed invention may be. This leads me to the first point made at the bar, as to which it appears to me clear, both upon prin- ciple and authority, that where a patentee in his specification states and sums up the particulars of his invention, and his patent covers them, he is confined to such summary ; and he cannot afterwards be permitted to sustain his patent by show- ing that some part which he claims in his summing up as his invention, though not in fact his invention, is of slight value or importance in his patent.^ His patent covers it, *and if it be not new, the patent must be void. [*119] Here the plaintifi" claims a particular position of machinery as his invention, and it clearly appears in evidence that the position is not new. It has existed before, not in machines exactly like the present, but in machines applied to analogous purposes, namely, in machines for roping cotton, and applied for the same purpose as the plaintiff applies them. Without doubt he supposed that he was the first inventor ; 1 Kex V. Cutler, 1 Starkie, K. 354 ; Davies on Patents, 398, 404 ; Bovill V. Moore, S. C. 2 Marsh. R. 211. 320 PATENT CASES. Boston Manufacturing Company t!. Fiske et al. 2 Mason. but that was his mistake, and will not help the case. The objection, therefore, is fatal. , I wish it to be understood, in this opinion, that though several distinct improvements in one machine may be united in one patent, it does not follow that several improvements in two different i^achines, having distinct and independent ope- rations, can be so included. Much less that the same patent may be for a combination of different machines, and for dis- tinct improvements in each. The plaintiff, upon this intimation, agreed to take a verdict against him, declaring his patent void, that he might obtain a new patent. Verdict for defendants. Boston Manufacturing Company v. Jonathan Fiske and Another.^ [2 Mason, 119.] The jury may, if they see fit, in a case for infringing a patent, give the plain- tifi', as part of his "actual da-mage," such expenses for counsel fees, &c., as haye been necessarily incurred in vindicating the plaintiff's right by a suit, and which are not taxable in the bill of costs. Case for infringing a patent for " a new and useful im- provement of a spinning frame for spinning cotton," invented by Paul Moody, and assigned by him to the plaintiffs. The patent was dated the 17th of January, 1818, and [ * 120 ] the assignment * the 14th of January, 1819. The cause was tried upon the general issue, and the 1 See Stimpson v. The Kailroads ; posl. PATENT CASES. 321 Boston Manufacturing Company v. Fiske et al. 2 Mason. principal question was, whether the patentee was the original inventor, it being contended that machines, of substantially the like structure, were known and used before the plaintiff's supposed invention ; and the defendants' counsel cited Rees's Cyclopaedia, article Dressing Machine, vol. 40, pt. 1. A question, however, of law arose at the trial, whether the jury might include in the damages, if their verdict was for the plaintiff, counsel fees and other necessary expenses incurred at the trial, which were not within the taxable costs. Story, J. In one of the earliest cases which came before me, after my advancement to the bench, this very question arose, and at the trial I decided that counsel fees and other necessary expenses, not included in the taxable costs, were proper to be allowed by the jury, if they saw fit, as part of the "actual damage" of the plaintiflF, within the contempla- tion of the Patent Act. But upon a motion for a new trial, the Circuit Court felt itself constrained, upon the authority of Arcambal v. Wiseman, 3 Dall. 306, very much against its own judgment, to declare the contrary doctrine.^ Since that period, I have not been able, upon inquiry, to learn that any of my brethren hold to so rigid a rule, or have felt them- selves bound to limit the discretion of the jury, as to an allowance of items of this nature. Nor can I now deem Arcambal v. Wiseman, an authority on which one ought to repose, in a case of this sort, without very serious doubts. The case appears to have been decided on this point, wjthout much argument, and is very imperfectly reported. I have examined the original record. It was a libel filed by the Spanish consul for restitution of a Spanish vessel, captured 1 Whittemore v. Cutter, 1 Gallis. E. 429, ante, 18. 322 PATENT CASES. Boston Manufaeturimg Company v. Fiske et al. 2 Mason. by an armed French vessel, on the high seas. The [*121] District * Court dismissed the libel, and awarded damages for the delay, Sec, to the captors^ The Circuit Court affirmed the decree, and it was afterwards on error affirmed by the Supreme Court; but a charge of $1,600 for ssounsel fees, appearing on the record to have been allowed as part of the damages, the Supreme Court dis- allowed this item, declaring the general practice of the United States to be in opposition to it, and if that practice were not strictly correct in principle, it ought to be respected until changed by statute. It is to be observed, that this was an admiralty or prize suit. In cases of marine torts, or illegal captures, it is far from being uncommon in the admiralty to allow costs and expenses, and to mulct the offending parties, even in exemplary damages, where the nature of the case requires it. In prize causes it is the usual course to allow the captors their costs and expenses upon restitution being decreed, where the original capture is justifiable, or farther proof is required. It can hardly be presumed, that the Court alluded to cases of this nature — to cases of admiralty and prize jurisdiction, for it is scarcely possible that any general uniform practice had been adopted in the United States, at so early a period ; and if it had been, it must have been founded on a want of accurate knowledge of the principles and doctrines of Courts of Admiralty on this subject. Courts of Admiralty allo\y such items, not technically as costs, but upon the same principles, as they are often allowed damages in cases of torts, by Courts of Common Law, as a recompense for injuries sustained, as exemplary damages, or as a remune- fation for expenses incurred, or losses sustained, by the mis- conduct of the other party. The Court, in the remarks imputed to them by the reporter, must have referred only to the general practice in the Courts of Common Law in the United States, not to tax counsel fees in the bill of costs ; a PATENT CASES. 323 Boston Manufacturing Company v. Make. 2 Mason. practice of the propriety of which, as a general rule, no doubt could be entertained. And in the case then before them, the Court may very properly have disallowed the charge, for reasons * applicable to the particular [ * 122 ] predicament of that case. In any other view, it would be impossible to reconcile the case of Arcambal v. Wiseman, with the general doctrines of Admiralty Courts, or with the more recent and well established practice of the Supreme Court in cases of marine torts and prize.^ I feel myself bound, therefore, to declare, that as the authority of Arcambal v. Wiseman is shaken so far as it can be considered as containing any general doctrine, governing cases of this nature, I return to what I originally considered the true doc- trine ; and that is, that the jury are at liberty, if they see fit, to allow the plaintifi" as part of his " actual damage," any expenditure for counsel fees, or other charges, which were necessarily incurred to vindicate the rights derived under his patent, and are not taxable in the bill of costs. Verdict for plaintiffs, $630, single damages. Gorham and Webster, for plaintiffs. G. Sullivan, for defendants. A motion was afterwards made for a new trial, for misdi- rection on this point, which was refused by the Court, and judgment given for the plaintiffs for the treble damages. 1 The Amiable Nancy, 3 Wheaton, 559 ; The Mary, 9 Cranch, 126, 151 ; The Venus, 5 Wheaton, 127, 131 ; The London Packet, 5 Wheaton, 132, 143. 324 PATENT CASES. Dixon u. Moyer. 3 Wash. Dixon v. Moyek. [4 Wash. 68.] Action for violation of the plaintiff's patent for an impi'DTement in the manu- facture of sadAes. Upon the plea of not guilty the plaintiff must prove, not merely that the defend- ant had made a saddle described in his patent, bat that it substantiaUy resembled the invention of the plaintiff; and if the difference be in form and proportions only, they are fhe same. A patent cannot be said to be obtained in fraud of the right of another, who had given up his rights to the plaintiff, by expressly or tacitly permitting him to obtain a patent for it. [ # 69 ] * It is contended that the plaintiff must date his right from the time of his application for the patent; the distinction is this, he must in all cases prove that the infringement of his right took place after his application or the date of his patent. But if the defendant attempts to avoid the patent by showing that the plaintiff was not the original discoverer, the patent will be considered as relating back to the original discovei-y. The specification must point out the new improvement of the patentee, so as to show in what the improvement consists ; and it will not be sufficient that the same is shown on the trial by exhibiting the invention. Upon a notice of the invention confined to a prior use in the United States, the Court will not permit evidence to be given of a prior use in England. This is an action for violation of a patent-right, for a new and useful improvement in manufacturing men's and women's saddles, without saddle-trees. The schedule states, that " the pad is first cut out, and made in any shape thought proper. The part of a pad usu- ally covered with a saddle-tree, is then covered with a piece of thick leather. A piece of web is then sown across the pad, over the thick leather, sufficiently wide for the girth-straps to be attached to it. A cantle of very strong leather is then put on, and secured to the pad. A plate of iron is then put across the head of the pad, to which the stirrup bars are riveted. This plate goes into case-loops, made on each side of the pad ; and the extremities of the plate are tied in the PATENT CASES. 325 Dixon V. Moyer. 4 Wash. loops to prevent them from working. A seat cloth is then put on, in the same manner as in the common saddle, in which the saddle-tree is used. The seat is then stuffed and set. The leather for the seat is then drawn over it, and the skirts fitted, as in a common saddfe. The seat is then taken off and seamed to the skirts ; the flaps are cut out, and instead of being nailed, are sewed to the skirts, a little below the wealt of the seat. The seat is then drawn on, and instead of being nailed, as in the common saddle, it is sewed. The sad- die, thus made, resembles in appearance the common saddle in which the saddle-tree is used. It is capable of enduring as much hard usage as the common saddle, and is much easier to the rider, and safer to the horse." The patent bears date the 16th of July, 1819 ; but it was proved that the plaintiff had a saddle of the kind above described, made in his shop about the latter end of May pre- ceding. It was also proved that the defendant made and sold saddles without trees, and with skirts and flaps, after the date of the plaintiff's patent, and before the commencement of the suit. In support of the notice given to the plaintiff, " that the defendant would give in evidence under the general issue that the saddle for which the plaintiff had obtained a patent, was not originally discovered by him, but had been in use in various places within the United States, and that the plaintiff had surreptitiously patented the discovery of another person ; " witnesses were examined, who * proved, [ * 70 ] that a saddle, substantially like the plaintiff's, was made and sold by a Mr. Andrews, on or just before the 15th of July, 1819; and that another was made by Hudson, and sold on the 28th of May ; and it was further proved, that another saddle had been made in the month of April preced- ing, differing from the plaintiff's only in the circumstance, that the pad and skirts of that saddle were fastened' together. VOL, I. — p. c. 28 326 PATENT CASES. Dixon V. Moyer. 4 Wash. It further appeared, that one Wimbly, a journeyman in the plaintiff's shop, suggested the improvement for which the patent was obtained ; but that he made no application him- self for a patent ; on the contrary, he asked the plaintiff, if he (the plaintiff) could obtain a patent for the discovery, and that he took diarge of the shop whilst the plaintiff went to Washington to obtain the patent. Many witnesses were examined upon the subjects of iden- tity on the plaintiff's and defendant's saddles, and originality of discovery. Upon the first point, the witnesses pointed out some differences between the two saddles, in the manner of making them, and in their external appearances, but both of them were made with skirts and flaps, and without trees. The skirts in the defendant's saddle were so fastened as to answer as a substitute fpr the draw-down in the plaintiff's, for confining the seat. Upon the second point it was proved, that the pad-saddles without saddle-trees or skirts and flaps, had been in use long before the I6th of July, 1819, and that the common tree- saddles with skirts and flaps, were as old as the memory of the witnesses could reach. Phillips, for the defendant, contended, ,, i 1. That the defendant was not guilty of having invaded the plaintiff's patent, inasmuch as the saddles which he had made, differed in many respects from the one described in the specification, and shown in Court. Q. That the plaintiff's discovery is nothing more than a combination of old materials, without 'any thing new ; or, if there be any thing new, the specification does not distinguish the old from the new, or slate in what the improvement con- sists. 1 Mass. Rep. 182; 3 Wheat. Rep. App. 21. ' 3. That the plaintiff was not tlje first inventor of this sad- dle, but the same was in use prior to the date of the patent, PATENT CASES. 327 Dixon V. Moyer. 4 Wash. which he insisted was the only date to be regarded ; or if the plaintiff has a right go back to the time of the discovery, which was the latter end of May, still the same kind of saddle had been previously made and used. 3 Inst. 184. Wood V. Zimmer, 1 Holt's N. P. 4. That the discovery, if it be one, was made by Wimbly ; who not having assigned his right to the plaintiff, his obtain- ing a patent was surreptitious, in relation to Wimbly ; and for this reason also the patent is void. C. J. Ingersoll, for plaintiff, combated the points made by the defendant's counsel ; and in reference to the second, insisted, that the specification sufficiently describes the improvement, and * distinguishes the old from [ * 71 ] the new materials ; but that even if it does not, the defendant cannot avail himself of defects in the specification under the general issue, and without also showing that they were introduced for the purpose of deceiving the public ; and finally, that artists only are competent to say whether the spe- cifications is sufficiently explicit, to enable one skilled in the art to make such a saddle as is there described. Charge, Washington, J. Upon the plea of not guilty, it is incumbent on the plaintiff to prove, not merely that the defendant had made, used, or sold a saddle ; but that it sub-* stantially resembled the one for which the plaintiff has ob- tained his patent. And if the difference between them be only in form, or proportions, they are the same in legal contem- plation ; since to permit the defendant to shelter himself under a mere formal difference, would be to sanction a fraudulent evasion of the plaintiff's right, and to render the Patent Law a dead letter. The second section of the Patent Law, which declares that simply changing the form or proportions of any machine or composition of matter, shall not be deemed a dis- 328 PATENT CASES. Dixon V. Moyer. 4 Wash. covery, affords a sensible and a just rule, equally applicable to an art or manufacture, and has always been' so considered and treated. In actions of this kind, persons acquainted with the parti- cular art to which the contraversy relates are usually examined for the purpose of pointing out and explaining to the jury the points of resemblance, or of difference, between the thing patented, and that which is the alleged cause of the contro- versy ; and the opinions of such witnesses, in relation to the materiality of apparent differences, are always entitled to great respect. But after all, the jury must judge for themselves, as well upon the information so given to them, as upon their own view, where the articles, or models of them, are brought into Court. The witnesses, who testified in this case, did not entirely agree in opinion as to the nature of the difference between the plaintiff's and the defendant's saddles. Most of them however stated, that it consisted in the workmanship bestowed upon the saddles, and upon their external appearance. You have had an opportunity of examining them, and must decide whether they are, or are not substantially the same. If they are, the plaintiff has made out his case on the general issue ; since it is not denied that the defendant had made and used saddles similar to those produced in Court, subse- quent to the 16th of July, 1819, and before the institution of this action. Another objection to the plaintiff's right of recovery arises out of the special matter given in evidence, of which notice was given by the defendant to the plaintiff. It is, that the plaintiff surreptitiously obtained this patent for a discovery of one Wimbly, who worked as a journeyman in his shop. If the jury are satisfied that the discovery was in reality made by Wimbly, they must be also satisfied that the patent was obtained in fraud of any right which such discovery bestowed PATENT CASES. 329 Dixon V. Moyer. 4 Wash. * upon Wimbly. For if, upon the evidence, you [ * 72 ] should be of opinion, that Wimbly gave up his right of discovery to the plaintiff, by expressly or impliedly permit- ting him to encounter the trouble and expense of obtaining a patent, it cannot be affirmed that the plaintiff obtained the patent surreptitiously, or in fraud of Wimbly's discovery. The next inquiry is, whether the saddle for which the plain- tiff has obtained a patent, was in use prior to his alleged dis- covery ? The patent bears date the 16th of July, 1819; and Taylor, one of the witnesses, has deposed that the first saddle made in the plaintiff's shop, upon which the patent was obtained, was about the latter end of May preceding. Hudson swears that he made a saddle like the plaintiff's, and sold it on the 28th of May, 1819 ; and Andrews swears, that he saw a sad- dle substantially the same, except that the skirts and pad were fastened together, in April of the same year. It is contended by the defendant's counsel, that the plain- tiff's right is to date from the time when he applied for the patent, which, for any thing that appears to the contrary, should be considered as having happened on the same day on which the patent issued. If so, then Hudson's saddle was made and sold before the plaintiff's title accrued. But the Court cannot yield its assent to the doctrine of the defend- ant's counsel. It is incumbent on the plaintiff to show, that the infringement took place after the time of his application, or the date of his patent. But, if the defendant attempts to avoid the patent by showing that the patentee was not the original discoverer of the thing patented, the patent will be considered as relating back to the original discovery. The notice authorized to be given by the sixth section of the law is, that the plaintiff was not the original discoverer, but that the thing patented had been in use, &c., anterior to the supposed discovery of the patentee. 28* 330 PATENT CASES. Dixon V. Moyer. 4 Wash. Taking it for granted that this patent is to date from the latter end of May, there would be some difficulty in deciding the question of priority between the plaintiff and Hudson, whose saddle was made also the latter end of May. Did the cause turn on this point, the jury should require the defend- ant to clear u^their doubts, by satisfying them that the right of priority was due to Hudson ; because upon that fact he grounds the defence, and in his notice he undertakes to esta- blish it. But at all events, if the evidence of Andrews be believed by the jury, and if they are also of opinion that the connecting of the skirts to the pad of the saddle, spoken of by this wit- ness, is a mere difference in form from the patented saddle, the plaintiff cannot be considered as an original discoverer. This, if so found by the jury, is fatal to the plaintiff's right. The last objection, or the second made by the defendant, is, we think, fully made out, and is not less fatal to the plain- tiff's recovery. This is founded on the imperfect description of the thing patented, given in the specification. It [ * 73 ] professes to be an improvement in the * manufac- turing of saddles without trees. The materials and the manner of making the saddles described are all old, or if there be any thing new in the combination, or in the applica- tion of the old to the new, they are not distinguished ; nor does the specification describe, or attempt to describe in what the improvement consists. It is quite impossible to say, -whether it consists in substituting some other material for the tree, so as to constitute an improvement of the old saddle- tree ; or in adding skirts and flaps to the pad-saddle, which was in use long before the date of the plaintiff's discovery, and was made without trees ; or whether it consists in all, or any of the other described operations in the making of saddles. If in all, then the patent is broader than the discovery, since it is clear that the materials, as well as the process in the PATENT CASES. 331 Dixon V. Moyer. 4 Wash. manufacture described in the specification, are old. If the improvement consists in any one or more of the particulars set forth in the specification, it ought to have been so stated, in order that other persons might have known how to avoid any infringement of the plaintiff's right ; and that the public might have the benefit of the discovery, by referring to the specification itself, after the expiration of the plaintiff's monopoly. It is not enough for the plaintiff's counsel or the witnesses to point out at the trial, or even for the jury to perceive by examination of the thing patented, and comparing it with others before in use, what it is that constitutes the improve- ment. This would afford no advantage to third persons, and least of all would it afford consolation to the defendant, who, if he has offended at all, did it innocently, and through ignor- ance, and can make atonement in no other way, but by sub- mitting to the penalty which the law imposes upon him, and the troubles and expense incident to litigation. Third persons wishing to avoid these consequences, can safely depend upon no other information than what the re- cords of the Secretary of State's office may afford. No description of the discovery secured by a patent will fulfil the demands of justice and of the law, but such as is of record there, and of which all the world may have the benefit. It was insisted by the plaintiff's counsel, that this specifi- cation is perfectly intelligible to an artist, who could expe- rience no difficulty in making such a saddle as is there described ; and that if it be not so, still the defendant cannot avail himself of the defect, unless he had stated it in his no- tice, and also proved at the trial an intention in the plaintiff to deceive the public. But these observations are all wide of the objection, which is not that the specification does not contain the whole truth relative to the discovery, or that it contains more than is 332 PATENT CASES. Isaacs V. Cooper et al. 4 Wash. necessary. It is admitted that the specification does not offend in either of these particulars. But the objection is, that throughout the whole of a very intelligible description of the mode of making the saddle, the patentee has not distin- guished what was new, from what was old and before in use, nor4)ointed out in what particulars his improvement [ * 74 ] consisted. * Upon this objection then, the verdict ought to be for the defendant, whatever the jury may think on the other points.^ Plaintiff' suffered a nonsuit. Isaacs v. Cooper et al. [4 Wash. 259.] Rules of the Courts of Equity, as to granting injunctions in patent cases. A patent for an improTement on a horizontal wheel invented by the patentee, without saying what the original invention was, or referring to any thing for information, makes the patent so defective that the Court will not grant an injunction for an alleged invasion of it. I Washington, J. This case comes before the Court upon a motion for an injunction. The plaintiff, by his bill, claims to be the proprietor of " an improvement on the horizontal circular plane or wheel, invented by him, for the purpose of gaining power by applying animal weight to the propelling of boats on water, or to machinery on land ; " which, the bill charges, was secured to him by a patent dated the 17th of 1 The Court refused to allow evidence to be given, to prove that saddles like the plaintiff's had been in use in England many years ago, the notice being special and confined to the alleged use within the -C/hiVed Stales. PATENT CASES. 333 Isaacs V. Cooper et al. 4 Wasli. November, 1819, and that the specification was filed in the Patent-Office on the 13th of April, 1818. The specification states, that " the method used in this new invention is to have the animals harnessed to any particular part of the boat, or machinery, and to have them acting, or walking on the deck, or on a movable or fixed platform, square, circular, or of any other shape — the same being fixed to a perpendicular shaft, and connected by cog-wheels, so as to act on the water-wheel. By which new position or- place in the boat, on which the animals are kept in action, two or four horses will perform, and save the labor of from twelve to twenty when kept moving in the oi"dinary method at present used in team-boats." The bill sets forth a certificate of the Secretary of State that the specification on which the plain- tiff's patent was issued, dated New York, April 9th, 1818, was received and filed in the Patent-Office, on the 13th of April, 1818. The bill charges that the defendants have in use team-boats upon the construction stated in his patent, and prays for an injunction against their continuing to use the same. The answer of four of the defendants admits that the de- fendants use team-boats on the Delaware, under a license from a Mr. Langdon, dated 2d of September, 1820, to use boats constructed according to the plan and improvement secured to the said Langdon by patent dated the 5th of June, 1819, and that they have had the said boats in use since the date of their license. It denies that the plaintiff has used or sold his alleged improvement, or that he, or any other person, has practically tested the use or value of his asserted disco- very; that the boats used by the defendants do not interfere with the plaintiff's patent; and finally, that the plaintiff's patent is void, on account of the defective description given of the alleged improvement in the specification. * After the coming in of this answer, and an [ * 260 ] 334 PATENT CASES. Isaacs V. Cooper et al. 4 Wash. unsuccessful motion for an injunction, because the bill did not state that the plaintiff had ever sold or used his improve- ment, the plaintiff, having obtained leave for that purpose, amended his bill by stating that the plaintiff was, and is, in the actual and profitable enjoyment of his said improvement, and has const»ucted, and caused to be constructed, several boats upon the principles of his said improvement, and has sold four of them for valuable consideration. No answer has been put in to the amended bill. The practice of the Court of Equity, upon motions of this kind, is to grant ap injunction upon the filing of the bill, and before a trial at law, if the bill state a clear right, and verify the same by affidavit. If the bill states an exclusive posses- sion of the invention, or discovery for which the plaintiff has obtained a patent, an injunction is granted, although the Court may feel doubts as to the validity of the patent. But if the defects in the patent, or specification, are so glaring that the Court can entertain no doubt as to that point, it would be most unjust to restrain the defendant from using a machine or other thing which he may have constructed, probably at great expense, until a decision at law can be had. The possession of the patentee against all mankind is stated by Lord Eldon, in Hill v. Thompson, 14 Ves. 132, to have been the ground on which the injunction was granted in the disputed patent of Watts. But, says the same judge, where the patent is modern, and an injunction is applied for, and objec- tions are made to the specification, or to the validity of the patent, the Court wil not, from its own notions respecting the matter in dispute, act on the 'presumed validity, or invalidity of the patent, without the right having been previously as- certained at law ; and will not grant the injunction till the plaintiff has established the validity of his patent at law, which the Court will order. 3 Meriv. 624, 628 ; 6 Ves. 707 ; Coop. Eq. 158. PATENT CASES. 335 Isaacs V. Cooper et al. 4 Wash. The objections to the interposition of the Court, by in- junction, in this case, are numerous and insurmountable. The following are the most promineht. 1. It appears by the answer, that Langdon's patent was prior in date to the plaintiff's, and that he was in the full enjoy- ment and possession of it, by the sale of licenses, and the use of boats constructed upon the plan of his patent and specifi- cation. It is true that the Secretary of State has certified that the plaintiff's specification was filed in the Patent-Office in April, 1818. But that specification cannot possibly be the one upon which the patent stated in the bill was granted, be- cause that is without date, and the specification mentioned in the certificate is described as being dated at New York, April 9th, 1818. 2. The bill, even with the amendment, does not state an exclusive possession of the plaintiff's discovery at any time since the emanation of his patent. The amended bill charges that the plaintiff was *and is, in the [*261 ] actual enjoyment of his improvement ; that he has constructed boats upon the principles of it, and has sold four of them. But when were these acts performed? For aught that appears, they may have been subsequent to the practical employment by the defendants and others of the right acquired under Langdon's patent. 3. The answer positively denies that allegation in the bill which charges that the defendants have in use boats upon the plan of the plaintiff's asserted improvement, and avers that the boats which they have in use do not interfere with the plaintiff's patent. 4. The last, and by no means the least fatal objection, is to the patent and specification, which are so manifestly de- fective, that the Court ought not to interpose until the plain- tiff shall have established his right at law, if he can do so. The patent is for an improvement on the horizontal wheel, 336 PATENT CASES. Evans v. Eaton. 7 Wheat. invented by the plaintiff. But what the nature of the inven- tion was upon which this is alleged to be an improvement, is not stated. Was it patented ; and if not,. is there any other source of information to which others can resort, in order to find it out, so as to enable them to distinguish the improve- ment from t^ original invention, and, in that way, to dis- cover in what the improvement consists ? Neither the patent or specification affords the slightest information upon those points. The invention alluded to may, for aught that appears, be known t6 no other person than the plaintiff. How then can any human being, however skilful in the art, find out, with certainty, or even conjecture, in what the improvement consists, from the patent itself, or from the records in the Patent Office? If the original invention had been patented, the specification should at least have referred, and plainly described it. If it was not, it should have stated what that invention was, and in whjat the improvement consists. As the matter stands, the nature of the improvement is altogether unintelligible. The injunction is denied. Evans v. Eaton. [7 Wheat. 356.] A party cannot entitle himself to a patent for more than his own invention ; and if the patent be for the whole of a machine, he can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation.- If the same combination existed before in machines of the same nature up to a certain point, and the party's invention consists in adding some new ma- chinery, or some improved mode of operation, to the old, the patent should be limited to such improvement ; for if it includes the whole machine, it includes more than his invention, and therefore cannot be supported. When the patent is for an improvement, the nature and extent of the improve- ment must be stated in the specification, and it is not sufficient that it be PATENT CASES. 337 Evans v. Eaton. 7 Wheat. made out and shown at the trial, or established by comparing the machine specified in the patent with former machines in use. The former judgment of this Court in the same case, (ante, vol. iii. p. 454,) commented on, explained, and confirmed. A person having an interest only in the question, and not in the event of the suit, is a competent witness. In general, the liability of a witness to a lilie action, or his standing in the same predicament with the party sued, if the verdict cannot be given in evi- dence for or against him, is an interest in the question, and does not exclude him. Error to the Circuit Court of Pennsylvania. This is the same case which was formerly before this Court, and is reported ante, vol. 3, p. 454 ; and by a refer- ence to that report, the form of the patent, the nature of the action, and the subsequent proceedings, will fully appear. The cause was now again brought before the Court upon a writ of error to the judgment of the Circuit Court, rendered upon the new trial, had in pursuance of the mandate of this Court. Upon the new trial, several exceptions were taken *by the counsel for the plaintiff, Evans. The first [ * 357 ] was to the admission of one Frederick as a witness for the defendant, upon the ground of his interest in the suit. The witness, on his examination on the voir dire, denied that he had any interest in the cause, or that he was bound to" contribute to the expenses of it. He said that he had not a hopper-boy in his mill at present, it being then in Court ; that it was in his mill about three weeks ago, when he gave it to 'a person to bring down to Philadelphia; and that his hopper-boy spreads and turns the meal, cools it some, dries it, and gathers it to the bolting-chest. Upon this evidence, the plaintiff's counsel contended that Frederick was not a com- petent witness. But the objection was overruled by the Court. Another exception was to the refusal of the Court to allow the deposition of one Shetter to be read in evidence by the VOL. I. — p. c. 29 338 PATENT CASES. Evans v. Eaton. 7 Wheat. plaintiff, which had been taken according to a prevalent prac- tice of the State Courts, instead of being taken pursuant to the provisions of the Act of Congress. But the principal exceptions were to the charge by the Circuit Court, in summing up the cause to the jury, which it is deemed necessary here to insert at large. Washington, J. This is an action for an infringe- ment of the plaintiff's patent, which the plaintiff alleges to be, 1. For the whole of the machine employed in the manu- facture of flour, called the hopper-boy. 2. For an improvement on the hopper-boy. The question is, is the plaintiff entitled to recover upon either of these claims ? The question is stated [ * 358 ] * thus singly, because the defendant admits that he uses the very hopper-boy for which the patent is, in part, granted, and justifies himself by insisting, 1st. That the plaintiff was not the original inventor of, but that the same was in use prior to the plaintiff's patent, the hopper-boy as patented. 2d. That his patent for an improvement is bad ; because the nature and extent of the improvement is not stated in his specification ; and if it had been, still the patent compre- hends the whole niachine, and is therefore too broad. 1st. The first is a mixed question of fact and law. In order to enable you to decide the first, it will be well tb at- tend to the description, which the plaintiff has given of this machine, in his specification, a model of which is now before you. Its parts are, (1.) An upright round shaft, to revolve on a pivot in the floor, (2.) A leader or upper arm. (3.) An arm set with small inclining boards, called flights and sweepers. (4.) Cords from the leader to the arm to turn it. (5.) A weight passing over a pulley, to keep the arm tight PATENT CASES. 339 Eyans v. Eaton. 7 Wheat. on the meal. (6.) A log at the top of the shaft, to turn it, which is operated upon by the water power of the mill. The flights are so arranged as to track the one below the other, and to operate like ploughs, and at every revolution of the machine to give the meal two turns towards the centre. The sweepers are to receive the meal from the elevator, and to trail it round the circle for the flights to gather it to the cen- tre, and also to sweep the meal into the bolt. *The use of this machine is stated to be, to [*359] spread any granulated substance over a floor, to stir and expose it to the air, to dry and cool it, and to gather it to the bolt. The next inquiry under this head is, when was this dis- covery made ? Joseph Evans has sworn, that in ] 783 the plaintiff informed him that he was engaged in contriving an improvement in the manufactory of flour, and had completed it in his mind, some time in July of that year. In 1784, he constructed a rough model of the hopper-boy, but having no cords from the extremities of the leader to those of the arm, it was necessary, in making his experiments, to turn round the arm by hand. In 1785, he set up a hopper-boy in his mill, resembling the model in Court, and the machine -. Eaton. 7 Wheat. By this course of proceeding, the defendants were their own witnesses, and the plaintiff was not allowed to discredit them. (4.) The Court should have suffered the plaintiff to prove that the son of one of the Stouffers, and the executors of another, purchased Evans's improvements. On the former occasion, similar evidence was sanctioned as to the Stouffers themselves, the alleged originators of the hopper-boy.i And why not the acknowledgments of their descendants and legal representatives? It was treated before as evidence of opinion. If so, why not the opinion of one generation as well as ano- ther ? But it was more than opinion. It was traditionary his- tory of the invention and improvements. (5.) The Court should have suffered the defendant's witness, Philip Frederick, to be asked whether Daniel Stouffer was subject to fits of mental derangement. Stouffer was the defendant's principal witness ; and that was a most material circumstance in his faculty to bear credible testimony as to remote periods and obscure circumstances. Besides, the witness, Philip Frederick, if he had denied the fact, might have been contradicted by other testimony ; in which respect it was a very important inquiry to be made of him, with a view to Frederick's credit. (6.) The deposition of Michael Forner was overruled, after that of John Shetter had been received under precisely the same circumstances. Neither of them was taken according to the Act of Congress, which is inconvenient and * unfair in its operation. Rules for depositions [ * 374 ] were entered by both parties. Both parties took depositions under these rules. When the defendant offered to read Shelter's deposition, no objection was made, and it was laid before the jury. But when the plaintiff offered to read Forner's, taken in the same manner, and under the same rules, it was objected to, and overruled. The clerk testified, 1 3 Wheat. Kep. 495, 505, ante, 266, 274. 352 PATENT CASES. Evans v. Eaton. 7 Wheat. that for twenty years the practice had been to take depositions by rule, on notice, instead of taking them under the Act of Congress, which requires no notice where the witness lives more than 100 miles from the place of trial. There was, therefore, evidence of mutual consent and understanding between the parties, deducible both from the invariable prac- tice, and from the rules entered and acted on in these cases. Yet the court rejected the plaintiff's proof, and suffered the defendant's to remain as received in force. Thus the plain- tiff was most unexpectedly deprived of some of his most mate- rial testimony, while the defendants themselves were their own witnesses. The main matter in dispute was on the Court's construc- tion of the word improvement, which it imputed to the patent. This radical difficulty escaped notice when these cases were before discussed in the Circuit and Supreme Courts. 1. It was a misapprehension to suppose that the word exists at all in the patent or specification, in connection with the hopper- boy. The patent is for improvements in the art of manufac- turing flour, and for certain other machines, one of which is denominated an improved hopper-boy. But the [ * 375 ] distinction is obvious, between * something patented as an improvement of a hopper-boy, and something patented as an improved hopper-boy. The latter was so called, as substituting mere machinery for manual labor. It might be so called as a caveat against unknown but possibly existing originals, which, in the strong illustration of the Court, would avail a defendant if he could prove their existence in the mountains of China. It might be so called, as meaning no- thing more than a melioration of the inventor's own original essays. Evans's hopper-boy was a great and most beneficial improvement, which he called an improved hopper-boy. But it had no original. Even the bolt-filler, ascribed to Stouffer, PATENT CASES. 353 Evans v. Eaton. 7 Wheat. alleged to be of earlier origin, was as different in principle, as it was inferior in practice, to the plaintiff's machine. 2. It was a second error of the Court, to take it for granted that the improved hopperrboy was not so described in the spe- cification, as to distinguish it from all' things before known or used, and to enable a person skilled in the art to make it. It is so described. [Here the counsel went into a specification of the peculiar structure and properties of the hopper-boy.] No one skilled in the art could misapprehend this description, or be misled by it. The error of the Court was, in conde- scending to consider itself skilled in the art of which this is a branch. The law does not require of patentees to describe new and old, but merely to distinguish new from old. Other- wise a patent would be more complex and voluminous than a Welsh pedigree. Take a boat, for instance ; must every species, from the ark downwards, * be de- [ * 376 ] scribed ? The peculiar properties of the improved hopper-boy are perfectly explained. It is not a mere change of form and proportions, but a combination of well known materials, on new principles, essentially set forth in the speci- fication, so as to prevent all interfering claims during the exclusive term, and to_ impart the rights to the public after- wards. The authorities were misunderstood by tlie Court in this respect. They all require, to be sure, a discrimination, when the subject-matter is an improvement. But they require only an essential improvement ; not a recapitulation of the particulars of both the old rudiments, and the new combina- tions, in detail, distinguishing them in terms. 3. This, however, was a question of fact to have been sub- mitted to the jury, instead of being, as it was, exclusively assumed and determined by the Court. How can a Court decide, whether a person skilled in the art could understand a description, and copy a machine ? The cases are uniformly 30* 354 PATENT CASES. Evans u. Eaton. 7 Wheat. so.i In all these cases, the Court left this inquiry as a fact to the jury. Indeed, the 6th section of the Act of 1793, c. 11, treats it not only as matter of fact, but of fraud. It must appear that the specification is untrue, either deficient or re- dundant, in order to deceive the public. It is matter of con- cealment. CaiP the Court infer this scienter ? 5. Indeed, it may well be doubled whether any discrimi- nation is necessary, where, as in this case, there is [ * 377 ] * but one patent in existence. The second section of the law speaks of the case of a prior patented machine. The Court would have the third section to be sub- stantive, without association with the second and sixth. But how can a patentee describe what he never saw ? If not before patented, how could he see or know ? If he knew, but concealed his knowledge, is it not matter of fraud? The cases, when examined, will be found to have most of them referred their reasoning to the point of conflicting patents. Such is the fact in Harmer v. Playne, Bovill v. Moore, and Lowell V. Lewis. Which explanation is all important to a correct understanding of those cases. 5. The special Act of Congress for the relief of Oliver Evans, vouchsafes him from all technical obstacles. His im- provements by that time were universally acknowledged. Congress did not mean to forestall the ascertainment of their originality, which any citizen might try, if he chose, nor their utility. But the relieving Act dispenses with specifica- tion, oath, fee, and all the other prerequisites of common cases. It was not designed merely to prolong the term of monopoly, but to relieve it from vexations and frivolous embarrassments. 1 8 T. R. 95 ; 11 East's Eep, 101 ; ,2 Marsh. Rep 211 ; Starkie's N. P. Rep. 199 ; 3 Meriv. 622 j 1 Gallis. 488, ante, 86 ; 2 Gallis. 61, ante, 52 ; 1 Mass. 182, 452 ; 3 Wheat. Eep. 614, App. 17, ante, 282, 287. PATENT CASES. 355 Evans v. Eaton. 7 Wheat. Accordingly, it uses the term improvements, in addition to the terms applied to such subjects by the Act of 1793 ; and confers on Oliver Evans an exclusive right in his discoveries,' machines, and improvements in general, and specifically. The obvious design of this act of grace, was to relieve the grantee from all the formalities to which patentees in com- mon are subjected, * leaving the question of priority [ * 378 ] or originality alone open to inquiry by the country. 6. But even this inquiry was not competent to these defend- ants, who are citizens of Pennsylvania. The Act of Assembly of that Commonwealth, in 1786, confers on Evans the exclu- sive right in his hopper-boy, and inflicts penalties on all infrac- tors of it. To this Act, the defendants directly acceded and contributed by their representatives ; and it is a well settled principle, that they are bound by their legislation.^ Nor is this position at all affected by the 7 th section of the Act of 1793, c. 11. Mr. Sergeant, contrd. A patent is intended to secure to an inventor the exclusive right, for a limited time to his inven- tion. At the expiration of the period, the thing thus secured is to become public property, which any one is at liberty to use. In the mean time, every one is to abstain from using the thing patented, at the peril of a severe responsibility in damages. The provisions of the Patent Law have a view to these several objects, all of which are to be promoted as far as possible, and reconciled with each other, the public security and the benefit being protected, as well as the interests of the inventor. He is to enjoy the fruits of his ingenuity, upon terms and conditions, which are compatible with the safety, the peace, and the interests of other citizens. 1 10 East's Rep. 536 ; 3 John. Ch. Kep. 598. 356 PATENT CASES. Evans v. Eaton. 7 Wheat. A patent, therefore, in the first place, can only [ * 379 ] be * for an original invention. It is of no import- ance, that a man really believes himself to be the inventor, or is the frttC' inventor, having made the discovery himself, without even the knowledge, that the thing he sup- poses himself 1^ have invented, was known or used before, or described in some public work. However honest he may be, he has not merit as respects the rest of the community, in discovering what was already known and open to common use, nor will he be allowed to appropriate the thing to him- self, because he has made a mistake. The truth of his in- vention, though not an original one, will protect him against a summary proceeding to set aside his patent under the lOth section of the Act of 1193, c. 11 ; but it will not avail him to enforce his claim in an action against an individual. The want of originality, proved by showing that the thing was used or known before, or described in some public work, is, in every case, a valid and conclusive defence. Again : an invention may be of a machine, or of an improve- ment on a machine ; of something that was entirely unknown before, or of an addition to or alteration in what was pre- viously known, so as to make it more useful. Each of these is a patentable object ; but the patent, as to both, is to be for the invention only, and the laws that govern it, thus under- stood, will be found to be exactly the same. Novelty is an essential part of the merit, and it is only what is new that is to be secured by the patent. A mistake is just as fatal to the patentee in the one case as in the other ; and if [ * 380 ] he should really * believe himself to have invented an improvement, when in truth it was known, used, or described before, he could not give legal effect to his patent. There is, however, one peculiarity in the case of patents for improvements. Improvement being a relative term, presup- poses the existence of something to which it refers, known to PATENT CASES. 357 Evans v. Eaton. 7 Wheat. the inventor at the time of making the supposed improvement. If he does not know of it, he cannot know he has improved upon it; and if he does know of it, he can readily describe the improvement he has made, that is, his own invention. A man who has never heard of a time-keeper, might suppose himself the inventor of one ; but it is impossible to conceive, that a man who has never heard of such a thing, should believe himself to be the inventor of an improvement upon the time-keeper. A patent for an entire machine covers the whole — a patent for an improvement, on the contrary, covers only the improve- ment, and necessarily supposes there are parts which are not patented. It is the line between these, and the parts which are patented, that defines the respective pretensions of the patentee and the public; and unless that line be somehow marked, it is impossible to say where the one terminates, and the other begins. Confusion, uncertainty, extortion, fraud, and litigation would be the inevitable consequence. It is the business and duty of the inventor, then, at the time of applying for his patent, and before he can receive a patent, to deliver a " written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, *and exact terms, as to [ *381 ] distinguish the same from all other things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same," &c., sec. 3. This specification is to remain in the office of the Secretary of State, and a copy of it is everywhere made evidence. The design of this provision is manifest ; it is to secure to the public the use of the invention, after the expiration of the period for which the patent is granted ; and to enable individuals, in the mean time, to know what it is that is in- tended to be secured, so that they may avoid interference, or, 358 PATENT CASES. Evans v. Eaton. 7 Wheat. if they think proper, dispute the claim of originality. For both these purposes, it was necessary that there should be authentic and recorded evidence, accessible to all, and remaining unchangeable and unchanged. Without a specifi- cation, the patent would be void. A specification which does not comply with the requirements of the Act of Congress, is, to all legal intents, no specification, and the patent would be equally void, as if there were literally no specification. In the present case, the patent is to be regarded, either,' (1.) As a patent for the whole machine, or, (2.) As a patent for an improvement on an old and known machine. The utmost that can be contended, is, that the patentee has an election to consider it as the one, or the other ; and that is a very liberal concession, inasmuch as it is founded upon the ambi- guity of his own specification, from which, generally, a man ought not to he permitted to derive an advan- [*382] tage. * But it is clear that it cannot be a patent for both ; that would be a legal absurdity, involving a plain contradiction in terms. 1. As a patent for the whole machine, including the plain- tiflf's alleged improvement, it is void, because the plaintiff was not the original inventor of the machine.' The fact, that a hopper-boy, known by the name of an S. or Stoufier hop- per-boy, having all the essential parts of the plaintiff's' ma- chine, and applied to the same uses and purposes, (whether more or less perfectly, is not material to inquire,) existed, and was in use, before the date of the plaintiff's earliest alleged discovery, has twice been proved to the satisfaction of intelligent juries in each of "these cases, and is now to be taken for granted, as conclusively established. At the for- mer trial, the learned judge who presided (Mr. Justice Wash- ington) instructed the jury, if they should be of opinion that Oliver Evans was not the original inventor, to find for the defendant ; which they did accordingly, being fully satisfied PATENT CASES. 359 Evans v. Eaton. 7 Wheat. of the fact. Upon error to this Court, the judgment was reversed, on the ground that the patent was not for the ma- chine, but for an improvement ; the phrase " improved hop- per-boy," being after much hesitation, deemed equivalent to " improvement " on a hopper-Bby. But the opinion of the Court distinctly admits, what indeed cannot be questioned, that if, as respects the hopper-boy, the patent had been for the whole machine, the direction of the learned judge would have been right. In giving to the plaintiff the benefit of the alternative, the case was put in the most favorable view for him. * He might claim as inventor of the whole machine, [ * 383 ] or he might claim as inventor of the improvement ; but, under this patent he could not claim for both ; and in claiming for either, he must of course abide by the settled principles of law, applicable to the construction of the patent thus adopted. Each must be taken singly. The two could be confounded, so as to entitle him upon the one to the benefit of principles belonging to the other. If the patent be for the whole machine, it is void if he is not the original in- ventor ; and that he is not, has been fully established. It is intimated, however, and will probably be insisted upon hereafter, that admitting the S. or Stouffer hopper-boy to have been previously known and used, the two machines are so entirely different, that Mr. Evans might well be entitled to a patent for the whole. As a question of fact, that has been decided by the verdict of the jury, and the identity of the machine must now be taken for granted, unless the jury were led to the conclusion by an erroneous charge from the Court. What constitutes identity and what diversity, is frequently a question of great difficulty. It was the right and the duty of the judge to inform the jury what were the principles to guide their deliberations in deciding it, and this he has done with admirable clearness, and in conformity with the best authority 360 PATENT CASES. Evans v. Eaton. 7 Wheat. upon this abstruse part of the lavr. " Where a specific ma- chine already exists," (says Mr. Justice Story,) "producing certain effects, if a mere addition is made to such machine, to produce the same effects in a better manner, a [ * 384 ] * patent cannot be taken for the whole machine, but for arn improvement only." ^ And the same learned judge says, " the material question, therefore, is not whether the same elements of giotion, or the same component parts are used, but whether the given effect is produced substan- tially by the same mode of operation, and the same combina- tion of powers, in both machines." ' The identity here is perfectly apparent upon the description, and still more so upon inspection of the models. The object of both is the same — to dispense with manual labor, and supply the hop- per — to supply it gradually, in small, successive, regular por- tions, by means of the power that moves the mill ; sub- stituting mechanical contrivances for human agency. The ^ect is the same, to turn, stir, and cool the flour, and thus prepare it for bolting, before it is delivered. The construc- tion of the machines, as to " the mode of operation," and " the combination of powers," is the same. In both, there is an upright shaft, with a cog, turned by the power that moves the mill ; an arm, resting lightly on the meal, and turned by the upright shaft ; something on the under part of the arm, whe- ther flights or sweepers, to gather in the meal to the hopper. So far, they are the same. Now for the differences. ■ The plaintiff's machine has a round shaft, instead of a square one ; it has leading lines, which are necessary in consequence of the shaft being round, and a weight to balance the arm. These may all be improvements, but they are only improve- 1 Whittemore v. Cutler, 1 Gallis. 480, ante, 28. ^ Odiorne v. Winkley, 2 Gallis. 54, ante, 55. PATENT CASES. 361 Evans v. Eaton. 7 Wheat. ments, and do not make a different machine. The name itself bespeaks * identity ; the old machine [*385] was called a bolt-filler, or hopper-boy ; and the plaintiff's is called " an improved hopper-boy." But if the machines be so entirely different, as to entitle the plaintiff to a patent for the whole, though the S. hopper- boy was previously known and used, then it would necessarily follow, that even if the plaintiff were the original inventor of the improved machine, and that was the first invention, yet any one might with impunity make and use such a machine as the S. hopper-boy ; that is to say, by stripping off some of the parts, he might entitle himself to use the residue. This is a proposition too monstrous to be maintained. If it be sound, it decides this case without any regard to the question of the original invention, for the defendant, Eaton, used only the S. hopper-boy. A sure test, however, of the identity, is to consider what parts are indispensable to both machines. They are, the up- right shaft with a cog in it, the arm, and the sweeps. With these, the machine will work ; without them, it will not. These part? are common to both machines. Wiiat is it that the plaintiff has added ? What is not indispensable, but per- haps better. That is exactly the definition of an improve- ment. Can he, in his improved machine, dispense with any one of the parts that belong to the old machine ? The answer is clear — he cannot. Can we dispense with any of his additions? Yes, with all of them. The machine is com- plete, an efficient agent for its purpose, without them ; the evidence even leaves it doubtful whether apart from' the elevator, it is not the better of the two. It is cer- tainly * in use, and is the very machine for the use [ * 386. ] of which Mr. Eaton is sued. There can be no seri- ous doubt, that if the plaintiff has any claim, it is only for an. improvement. VOL. I. — p. c. 31 362 PATENT CASES. Evans v. Eaton. 7 Wheat. 2. As a patent for an improvement, it is void, because the specification does not show in what the improvement con- sists, or, in other words, what it is that the plaintiff claims as his invention : " the nature and extent of the improvement are not stated in his specification." This was the precise ground of the decision below. The counsel for the plaintiff who opened the argument, was understood to concede, that if the patent be for an improvement, and there be nothing in the circumstances of this particular case to make it an exception from the general rule, the law was correctly laid down. And certainly there can be no doubt of this, whether we consider the spirit and terms of the Act of Congress, the decisions in England, or the adjudged cases in the United States. The current of authority, of every sort, is uniform to esta- blish, that the invention to be patented must be described in such full and exact terms as to " distinguish the same from all things before known." The 2d section of the Act has no relation to this question. That provides for the case, where one man has a patent for a machine, and another for an im- provement, declaring that the one shall not be at liberty to use the invention of the other, and thus precisely limiting their respective rights. Does it follow, that if a machine has not been patsntcd, he who improves uponSt has a right to appropriate the whole to himself, and withdraw [ * 387 ] * what was before public property from the public use ? That no one can afterwards make use of the old and known machine, without the license of the patentee ? The section was made with a different view, and leaves what is not provided for upon the same footing on which it before stood. What was common property remains so ; the pa- tentee of the improvement is at liberty to use it because it is common, and the legislation was necessary to enable him ; but he is not allowed to appropriate it to himself to the exclu- PATENT CASES. 363 Evans v. Baton. 7 Wheat. sion of others, any more than to appropriate the invention of a prior patentee. The 6th section, which makes it a good defence, that the patentee has stated more or less than the truth in his specification, " for the purpose of deceiving the public," has no relation to the question. There is no allega- tion here that the machine will not produce the described effect, or that more or less has been stated for the purpose of deceiving or misleading the public. Nor is this, the Court will recollect, a summary proceeding to set aside the patent under the 10th section. But the question, and the only question is, whether, in an action by a patentee against a person charged with infringing his patent, it is not necessary for the plaintiff to show in what his invention consists. In the former argument of this case, this Court have laid it down expressly, that " in all cases where his claim is for an improvement, it will be incumbent on him to show the extent of his improvement, so that a person understanding the subject may comprehend distinctly in what it consists.^ How is this to be shown ? * The answer is obvious — it is to be shown from [ * 388 ] the specification. That such was the meaning of the Court is evident from their adopting almost the very words of the Act of Congress, which are employed to describe the office of the specification, " so that a person under-stand- ing," &c. That nothing else could be their meaning is evi- dent, for such, it cannot be denied, is the clear design of the Act of Congress, and such is the established law as collected from authoritative decisions. The patent must not be more extensive than the invention ; therefore if the invention con- sists of an addition or improvement only, and the patent is for the whole machine or manufacture, it is void.^ In Eng- i 3 Wheat. Rep. 518, anle, 285. 2 Bull. N. P. 76 ; Boulton v. Bull, H. Bl. Kep. 463. 364 PATENT CASES. Bvang v. Eaton. 7 Wheat. land, the specification is not annexed to the patent, but is enrolled in Chancery. Yet the specification is a part of the patent for the purpose of ascertaining the nature and extent of the alleged invention.^ In this country, it is filed in the department of State. An authenticated mpy of it is always annexed to the patent, and forms a part of the patent, absolutely essential, because the patent, properly so called, in fact gives no description, refer- ring for that to the specification. The established formula used in all patents, and to be found in the present patent, is, " the said improvement, a description whereof is given in the words of the said Oliver Evans himself, in the schedule here- to annexed, and is made a part of these presents." [* 389] Now, what should the patent * comprehend? Where the combination of a certain number of the parts has existed, up to a certain point, in former machines, the patentee merely adding other combinations, the patent should comprehend such improvements only? And the cases that have been already referred to clearly decide, that if the invention be of an improvement only, it is indispensable that the patent should not be broader than the invention ; and the specification should he drawn up in terms that do not in- clude any thing but the improvement. It is essential to point out what is new, and what is old, so as to show precisely the extent of the alleged improvement. " The patentee ought, in his specification, to inform the person who consults it, what is new and what is old. He should say, my improvement consists in this, describing it by words, if he can, or, if not, by reference to figures. But here the improvement is neither described in words or figures ; and it would not be in the wit 1 Boulton V. Bull ; Hornblower v. Boulton, 3 Term B«p. 95. ^Bevill V. Moore, 2 Marsh. Rep. 211. PATENT CASES. 365 Evans v. Baton. 7 Wheat. of man, unless he were previously acquainted with the con- struction of the instrument, to say what was old and what was new. A person ought to be warned by the specification against the use of a particular invention.^ It need not be denied that this description might be sufficiently given by reference ; as to some other patented machine, or to some virell-known machine in familiar use. For instance, to use the illustration employed by Lord *Ellenbo- [ *390 ] rough, if we should say, take a common watch, and add or alter such and such parts, describing them. All that is contended, and that is fully supported by authority, and by reason of the case, is, that the specification must, in some way or other, distinguish the new from the old, the improve- ment from what was known before, so as to show what the patented invention is, or else the patent is broader than the invention, and void. The decided cases in the United States are to the same effect. If the inventor of an improvement obtain a patent for the whole machine, the patent being more extensive than the invention, is void.^ The cases are brought together, well digested, and the principles stated in the Appendix to 3 Wheat. Rep. 13.* How else can the extent of the improvement be shown ? Shall it be by evidence at the trial ? Then the design of the act would be entirely defeated, and the specification useless. The argument of the Court below upon this point is perfectly conclusive. " To say that the patent may be for the whole machine, and the claim for as much as the plaintiff can prove to be original, or rather the defendant cannot disprove, is to make the right depend, not upon the patent, nor even upon iPer Lord EUenborough ; M'Farlane v. Price, 1 Starkie's Rep. 199. ^ Woodworth v. Parker, 1 Gallis. Rep. 439, ante, 38 ; Whittemore v. Cut- ter, 1 Gallis. Rep. 479, unte, 40 ; Odiorne v. Winkley, 2 Gallis. Rep. 51, ante, 62. «Ante, 287. 31* 366 PATENT CASES. Evans v. Eaton. 7 Wheat. the fact of originality, but upon the evidence the party may have it in his power to produce, and his intelligence and skill in applying it. The right, instead of being [*391] uniform *everywhere, might be one thing in one State, and another in another. In different Courts of the same S|f te, it might be different. And even in the same Court, at different times, as the particular evidence hap- pened to vary, it would be more or less extensive. The pa- tent would in effect be nothing but an outline, large enough of course, to be filled up as occasion might serve. This is an absurdity, and, what is worse, a great temptation to fraud. Besides, under this supposition, how is any man to inform him- self what it is that is patented, so that he may avoid the dan- ger of the infringemeat ? It is too late, at the time of trial, to answer any good purpose to the defendant. And how are the public to be informed at the expiration of the time, or how is a person of skill to be able to make the improvement; in short, of what use is the specification, unless it be to define, with precision, the extent and nature of the improvement? The Act of Congress emphatically refers to the specification, and to that alone, as furnishing every thing, without extrinsic aid, and so it must do. If it be broader than the invention, the patent is void. But it is objected here, that this was a question for the jury, and not for the Court. Whether the specification is broader than the invention, may perhaps in some cases be a question of fact, or, a mixed question of fact and of law, the construc- ( tion of the written instrument of specification being for the Court, and the other evidence in the case for the jury. But, if it be " incumbent upon the plaintiff to show the extent and nature of his improvement," and that is to be shown from the specification, then it is plainly incumbent upon [ * 392 ] him to show from the specification, * where he claims for an improvement, that he has described PATENT CASES. 367 Evans v. Eaton. 7 Wheat. an improvement as distinguished from a known maciiine. And that, it is submitted, being exclusively a question arising upon the face of the instrument, is n question for the Court. Let us examine the specification. Is there any thing in it which even professes to describe an improvement, as distin- guished from a machine known or used before ? Does it not plainly, and in terms, include the whole machine? That is evidently a question of law, upon the face of the instrument, and it may be confidently pronounced, that it does include the whole, and that no man can so read the specification, as to ascertain which parts are claimed by the plaintifT, and which are not ; or, that there are any parts which are not claimed by him. But, it is due to the Court, further to say, that the charge in this respect, must, as in all other cases, be under- stood with reference to the allegations and to the evidence. If there had been an attempt to prove, or even an assertion, the most distant intimation, that men of skill in mechanics, bringing to the study of this difficult specification, the aid of peculiar knowledge, could discern in it a line between new and old, or any defined limits of improvement, that would doubtless have been fit to be heard, and whatever matter pro- per for the consideration of a jury might have arisen, would have been submitted to the jury. But no such evidence was offered — the record shows it. No such suggestion even was made ; it was not pretended — the charge shows it ; for the part excepted to was itself a reply by the Court to an argument of the plaintiff's counsel, * which [*393] admitted that the specification did not show in what the improveipent consisted, by contending for the extravagant position that it was competent to show by evidence at the trial, which is in effect to say, that the plaintiff was entitled to whatever the defendant had not disproved. It lias been said, however, and to our very great surprise, that the Court below erred in dealing with this patent as a 368 PATENT CASES. Evans v. Eaton. 7 Wheat. patent for an improvement; that it is not for an improvement, but for an improved hopper-boy. When this case was formerly before the Circuit Court, that Court dealt with the patent as a patent for a hopper-boy, and not for an improve- ment. Upon error to this Court, one error principally relied upon was, that }^e Court below had thus construed it to be a patent for the machine.^ And it was contended that an " improved hopper-boy," and an " improvement on a hopper- boy," were one and the same. "This," says one of the counsel, " was a patent for an improvement on the particular machine in question, and not for its original invention." And of that opinion were the Court, after much deliberation .^ And can it now be contended, in the same Court, and by the same party, that this is not to be dealt with as a patent for an improvement ? But, the truth is, it has been treated in this case as a patent for both the machine and the improvement, so as to give the plaintiff the full benefit of either construc- tion. The real aim of the argument is to maintain, [ * 394 ] * that a patent for the whole may be expounded as a patent for each of the parts, and legally covering as many as the patentee may be able to prove he has in- vented ; that it may be a patent in words for one thing, and in law for another ; that it may have a sort pf elastic ambi- guity, capable of contraction, if not of expansion, so as to adapt itself to whatever it may be found convenient at any given time to embrace. This is against all settled principles ; it is against good policy ; and it is against the words and the spirit of the Act of Congress. Such being unquestionably the established law upon the subject of patents in general, it remains only to inquire^ whether the case of Oliver Evans is on any account an ex- ception. And it is insisted here, that the special act for his 1 3 Wheat. Rep. 486, 502, ante, 258, 272. 2 3 Wheat Rep. 517, ante, 284. PATENT CASES. 369 Evans v. Eaton. 7 Wheat. relief makes it an exception. The history of that act is suffi- cient to show, that its only object was, to authorize a new patent to be issued, by reason of the first having been de- clared void for irregularity of form attributable to the officers of the government. This gave an equitable title to relief. The appropriate relief was an extension of the time, so that the inventor might enjoy the privileges of a patent for the same time that he would have enjoyed them if the irregu- larity had not occurred, that is to say, the same privileges. This was sufficiently liberal, for the first patent had actually expired before the new one was granted. The new patent, too, was made retrospective, and gave to Oliver Evans an exclusive right for eight-and-twenty years, double the usual period ; yet it was contended, formerly, that this special act, liberal as it * confessedly was, went the [ * 395 ] further length of dispensing altogether with the necessity of proving he was the inventor, and even precluded all right to question the invention, which was in effect to say, that the exclusive privilege was secured to him, whether he was the inventor or not. That was overruled by this Court, upon the plainest grounds.^ And the whole scope of the opinion then delivered distinctly establishes, that except the extension of time, and the union of different inventions in the same patent, which otherwise perhaps could not be regu- larly joined, the patent to be issued, was to be in all respects conformable to the general law, and subject to the same regu- lations as other patents. Such was the interpretation of the plaintiff himself : he applied in the usual manner by petition, with a specification and oath. Such was the interpretation of the officers of government : the patent underwent the usual examination, and is in the usual form. Such is at this mo- ment the interpretation : for it is upon the adoption of the 3 Wheat. R6p. 513, ante, 281. 370 PATENT CASES. Evans v. Eaton. 7 Wheat. general law by reference, that the jurisdiction of the Federal Courts in cases growing out of this patent entirely rests. If that law be not applicable, this Court has no power to adju- dicate the cause. It is needless to pursue this further, being already decided by the former decision of this Court. For the terms and conditions upon which the patent was to be granted — the jurisdiction to attach to it — the rules to go- vern it — the special act makes no provision, but [ * 396 ] by reference to the existing laws ; and * but for this reference, we could not advance a single step in the inquiry. All that has been said of the Act of the Legislature of Pennsylvania, passed in the year 1787, may be disposed of in a single word What its provisions were does not appear, and if it did, the right they conferred, whatever it may have been, was surrendered by accepting a patent under the law of the United States. The seventh section of the Act of Congress is express. In conclusion, then, it is confidently submitted, that the patent of Oliver Evans must be considered as a patent either for the machine or for the improvement. That if it be for the machine, it is void ; because it is fully proved that he was not the original inventor, but the ma- chine was known and used before. That if it be for an improvement, it is void ; because it is broader than his invention, and does not specify in what his improvement consists, so as to distinguish it from what was known and used before. The learned counsel also argued the points of evidence in this and the next following case, (Evans v. Hettich,) but as they are so fully noticed in the opinion of the Court, it is not thouglit necessary to report that part of his argument. Mr. Harper, in reply, observed, that, in the opinion of the PATENT CASES. 371 Evans v. Eaton. 7 Wheat. Circuit Court, two propositions were distinctly affirmed : (1.) That Evans's patent of the hopper-boy was a patent for an improvement, and not for an original invention or discovery : and (2.) * That being for an improve- [ * 397 ] ment, it was void, because the specification did not in terms distinguish the improvements from the original ma- chine, called the Stouffer hopper-boy. Both these proposi- tions were indispensable for supporting the judgment below. He denied them both, and should endeavor to show that they were equally void of foundation. If he could succeed in overthrowing either, the judgment of the Circuit Court must be reversed, and the patent-right of the plaintiff supported ;, but he believed, and should endeavor to show, that both were wholly unfounded. And first, is the patent of Oliver Evans a patent for an im- provement, or for an original invention ? The decisions of the Circuit Court maintained the former. He should en- deavor to demonstrate the latter. In the outset of this investigation it would be proper to remark, that the specification makes part of the patent ; and he had the authority of this Court, in the former decision in this case,i for saying, that in order to ascertain what Oliver Evans obtained by his patent, one of the proper points of inquiry was, what did he ask for ? what was it his wish and intention to obtain? This question may be satisfactorily answered, by referring to that part of his specification which relates to the hopper-boy. This specification is printed at length in a note to 3 Wheat. Rep., and the part of it now in question is found at p. 468. The description of the machine is very full, * minute, and clear ; and it [ * 398 ] concludes with this declaration : " I claim as my 3 Wheat. Kep. 507, ante, 276. 372 PATENT CASES. Evans v. Eaton. 7 Wheat. invention the peculiar properties or principles which this ma- chine possesses : namely, the spreading, turning, and gathet- ing the meal at one operation, and the using and lowering its arms by its motion, to accommodate itself to any quantity of meal it has to operate on." This was wfeat he claimed as his invention. For this he asked a patent. Not for the machine which he had thus im- proved, but for the principle on which it was made to operate. He has not very accurately expressed himself, or distinguished between the object to be obtained, and the mode of proceed- ing for its attainment ; between the end and the means; the ^result and the modus operandi by which it is produced. But still his meaning is obvious. The object, the end to be ob- tained, the result, was the " spreading, turning, and gathering the meal, at one operation." The principle of the machine, the modus operandi by which the object was to be accom- plished, in a new and better way, was the power of the ma- chine to raise and lower its arms by its own motion, so as to accommodate itself to any greater or less quantity of flour on which it may have to operate. This, then, is his invention or discovery, which he claims as his own, and for which he demands a patent. His demand is complied with. He gets what he asked. This is what the grantors intended to give him ; and I appeal again to the former decision for the doc- trine, that in order to ascertain what is given, we must look to the request of the receiver, and the intention of the giver. [ * 399 ] * It is, then, a patent for the peculiar principle of his machine, for its new mode of operating, that Oliver Evans asked for and received. That a new modus operandi, by a new combination of old instruments or ma- chines, so as to produce either a new effect, or an old effect in a new way, is the proper subject-matter of a patent, ap- pears from numerous authorities, and may be considered as PATENT CASES. 373 Evans v. Eaton. 7 Wheat. a settled principle of the Patent Law. It was on this principle that Watt's patent for his improvements on the steam-engine, which made so much noise in Westminster Hall, and pro- duced such important effects, was finally supported and established. The English law of patents, though different from ours in its origin, was probably the same in its principles. Indeed, our Act of Congress was a mere enactment of the principles and system which the English Courts had established. That system grew out of the ancient prerogative of the crown in England, to grant monopolies. This power, long and often most oppressively exercised, was abolished in the early part of James the First's reign, by an Act of Parliament, which was one of the earliest fruits of the increase of knowledge, the progress of correct ideas, and the improvement in the condition of society, which, at that time, had begun to ap- pear. But, for the encouragement of industry and ingenuity, a proviso was introduced into the statute, that the king might still grant a monopoly " of any manner of new manufactures," to the first inventors, for any term not exceeding fourteen years.^ Upon this short proviso, this * ap- [ * 400 ] parently scanty foundation, the whole structure of the English Patent Law was raised by the English Govern- ment and Courts. The system which they thus established was adopted by our Act of Congress. This system required a specification. Nothing is said of it by the statute ; but the government required it, by an express clause of every patent. The principle on which it was required, was this : The sta- tute conferred a benefit on the inventor, by giving him a mo- nopoly of his invention for a limited time. For this benefit 1 See the case of Homblower v. Boulton. 8 T. K. 105. The opinioa of Mr. Justice Lawrence. VOL. I. — P. c. 32 374 PATENT CASES. Evans -o. Eaton. 7 Wheat. conferred on the patentee by the community, it was thought just that he should make a return. That return consisted in the knowledge and free use of his invention, which, by his specification, he should enable the community to obtain, after the expiration of his monopoly. This principle enables us not only to und^stand the origin and object of the specifica- tion, but also its nature and character, as its object was to put the public in possession of the invention, after the mo- nopoly had ceased, so as to enable all persons to use it bene- ficially ; it was indispensable that the invention should be so fully and clearly explained, as to enable persons skilled in the same art to make and use it. This was all that was to be effected by the specification, and consequently all that it was required to contain. The very same certainty of description which would enable persons skilled in the art to make and use the invention, after the monopoly should expire, would enable them to avoid making and using it, so as to subject themselves to penalties or loss, during the continuance of the monopoly. [*401 ] *In the same manner it was established, that improvements in old machines or processes, might be combined as " new manufactures," and become the sub- ject of patents. This principle was also incorporated into our Act of Congress, in express terms. And here the same rule was adopted with respect to the specification. The " new manufacture," whether it consisted in a machine or process entirely new, or in the improvement of an old one, was to be described with such certainty, as to enable persons skilled in the art to make and use the invention, after the monopoly should expire, and to avoid it while the monopoly should exist. The principle and object were the same in both caSes, and the same rule was adopted in both, by our Act of Con- gress, as well as by the English decisions. We shall now be able to perceive the application of the PATENT CASES. . 375 Evans v. Eaton. 7 Wheat. case of Watt's patent,^ to the point under consideration ; which, let it be considered, is to ascertain how far the disco- very of a new modus operandi, so as to produce a new effect, or an old one in a new way, is the proper subject of a patent, as a useful invention, and not as an improvement. The expansive power of steam had been many years before discovered by the Marquis of Winchester, who applied it, though very imperfectly, to various mechanical purposes. Among the rest, he employed it to put machines in motion, by communicating to them the movement which the steam was made to produce in beams and levers. Thus was laid the foundation of that wonderful invention, the * steam-engine. Various machines of this kind, [ * 402 ] more or less perfect, were, from time to time, brought into use ; and at length Newcomen made a steam- engine, which was long considered as having attained the utmost point of perfection. It consisted of a cylinder or large tube of iron, made perfectly smooth and uniform within, and completely closed at the bottom, but open at the top. Inside of this cylinder was placed, horizontally, a thick strong plate of iron, so fitted at the edges to the inner surface of the cylinder, as to be air tight, and yet to play easily up and down. Into the centre of this plate was fitted a strong up- right stem of iron, of the length required ; and the stem and plate together made what is called the piston. The upper end of the piston stem was fastened by a joint to a horizon- tal beam, which was made fast by a joint, near the centre or at the farthest end, so as to allow its near end to play up and down with the piston to which it is attached. At the bottom of the cylinder, under the piston, was introduced a pipe or tube, leading from the boiler, where the steam was 1 8 T. R. 95. 376 PATENT CASES. Evans v. Eaton. 7 Wheat. generated, into the cylinder, and furnished with a valve. When this valve was opened, it let the steam through the pipe into the lower part of the cylinder, under the piston, which was thus raised up by the explosive power of the steam, and raised with it the end of the horizontal beam to which it was attached. Whfen the piston, and with it the beam, had been raised as high as was intended, the valve in the steam pipe was shut by the motion of the machine, and, at the same moment, a valve was opened, by the [ * 403 ] same means, in a pipe, which connected the * cy- linder with a vessel of cold water. A quantity of this water was then introduced into the cylinder, under the piston, where it condensed the steam more or less completely, and created a vacuum more or less perfect ; in consequence of which the piston was pressed down by the weight of the at- mospheric air resting upon it, and carried down with it the end of the horizontal beam to which it was attached. When it had subsided as low as was desired, it opened the "steam valve, and let in the steam under the piston, which was raised as before, and again pressed down by the weight of the air, on the steam being again condensed by the introduction of cold water. This operation went on continually, and thus an ascending and descending motion was produced, which was communicated by the horizontal beam to the whole machinery. The defect of this engine at length began to be observed. It consisted in the cooling of the cylinder by the cold water I«t in to condense the steam. The cylin.der being thus ren- dered colder than steam, a considerable portion of the steam introduced was condensed by this coldness, while the piston was rising ; and was thus destroyed before it had done its office. This rendered a greater generation of steam neces- sary, and of course a greater consumption of fuel. The steam, too, was not suddenly or perfectly condensed, so as to PATENT CASES. 377 Evans v. Eaton. 7 Wheat. let the piston descend with sufficient rapidity or force ; by which the power and effect of the machine were diminished. The water, also, into which the steam had been converted by condensation, remained in the bottom of the cylin- der, * and further impeded the descent of the pis- [ * 404 ] ton. These defects were seriously felt in a country where fuel was dear, and became continually more "and more so. At length they threatened to render the engine entirely useless, by creating a greater expense in fuel than could be compensated by the labor-saving power of the macliine. Then Watt arose, who, after long reflection and many ex- periments, conceived the happy idea of condensing the steam in a vessel different from that in which it was to perform its office. This he effected by connecting with the machine another vessel called a connector, which was connected with the cylinder by a pipe with a valve in it. This valve being opened by the motion of the machine, at the same moment when the piston had ascended to its greatest height, the steam rushed through it into the conductor, where it met a stream of cold water, introduced by the same means which had been before employed for letting it into the cylinder. This cold water condensed it as fast as it came in ; and a pump was also contrived, to work by the motion of the machine, and drew out of the conductor all the steam that remained uncondensed and all the water produced by the condensation. Thus a most perfect vacuum was created in the condenser, and consequently in the cylinder connected with it ; the piston descended with freedom, rapidity, and force ; and the cylinder, not beilig touched or affected by the cold water, retained a heat equal to that of steam : so that no portion of the steam introduced into it, was condensed too soon. This was the great improvement; but others were * employed to increase its effect. The cylin- [ * 405 ] 32* 378 PATENT CASES. Evans v. Eaton. 7 Wheat. der was surrounded by a case the best calculated to retain heat, and the space between this case and the cylinder was kept full of steam or boiling water. Thus the cylinder was kept in the hottest possible state ; the state best adapted to the preservation of the steam while performing its office : and as steam thus pfteserved was found to be more effectual than atmospheric air in bringing down the piston, the top of the cylinder vjas closed, and steam was introduced above the piston as well as below it. This stream was conducted into the condenser, and there condensed and pumped out, in the same manner with that introduced below : and thus the pis- ton being alternately pressed up and down, by the elastic power of steam, in its most efficacious condition, gave a most powerful, steady, and uniform motion to the engine. Oily substances were employed instead of water, in keeping the vessels air tight ; especially the top of the cylinder, where the steam of the piston played through it. Thus the ma- chine was rendered as perfect as it seems capable of becoming. Now, in what does this machine differ from the steam-en- gine of Newcomen, which was in use before ? Both had a boiler to produce the steam, and a cylinder to receive it. The piston was the same in both, and connected in the same manner with the horizontal beam, for the purpose of commu- nicating the motion to the rest of the machinery. In both the piston was raised by the expansive power of the steam ; this steam, after its office had been performed, was [ * 406 ] condensed by cold water, so as to create a * va- cuum in the cylinder, and permit the piston to de- scend ; and in both pipes and valves of the same construction were used, for introducing alternately the steam and the cold water. In what, then, did they differ ? Merely in a new modus operandi, by which, with the addition of another ves- sel, the cold water was prevented from cooling the cylinder. PATENT CASES. 379 Evans «. Eaton. 7 Wheat. while it conducted the steam ; and the steam was made to operate in forcing the piston down, as well as in forcing it up. In this new modus operandi, produced by a different arrangement and construction of the old machines, with the addition of one new vessel, to receive and condense the steam, consisted the great invention of Watt ; for which he obtained his patent, avowedly as for a new invention, or in the language of the British statute, a " new manufacture,"' and not for an improvement. His specification is inserted at length in 8 T. R. 96, note (a) where it will appear that he speaks of his discovery as a new invention, and not as an improvement, and never once mentions or alludes to the old machine. In what did this new discovery consist ? I answer with the two judges of the Common Pleas in England, who were in favor of this patent, and one of whom was Lord Chief Justice Eyre,^ and with the four judges of the King's Bench, who were unanimous on the point,^ that it consisted in the new principle on which the steam was condensed, and which was carried into effect by a new combination of the old machinery, with the addition of one new instrument. * The word " principle," as used in relation to [ * 407 ] this subject, is not taken in its general philosophical sense, where it means a law of motion or a property of matter; but in what may be termed its mechanical sense, in which it signifies a method of doing a thing, or of effecting a purpose, in other words, a modus operandi. It is therefore established by this solemn and elaborate decision of six English judges against two, after repeated' arguments and great consideration, that a new principle, or modus operandi carried into practical and useful effect by 1 Boulton V. Bull, 2 H. BI. 463. a g t. R. 95. 380 PATENT CASES. Evans v. Eaton. 7 Wheat. the use of new instruments, or by a new combination of old ones, with or without the addition of one or more new ones, is an original invention for which a patent may be supported, without reference to any former invention or machine, for performing the same or a similar operation. This may be taken as a maxim which the cases referred to will be found fully to support. Let us now apply this maxim to the patent of Oliver Evans. We shall soon see that, according to the doctrine thus established, his discovery was not a mere " improve- ment," as the Court below pronounced it to be, but an ori- ginal invention. The learned counsel here produced two models, one of Evans's hopper-boy, and one of StouflTer's, and explained mi- nutely the difference between their principles, or modus ope- randi, which consisted in this : that in Stouffer's hopper-boy, the arms through a square mortice in which the square up- right post was made to pass, were carried round by means of the upright post pressing upon the sides of the [ * 408 ] square * mortice, which renders it impossible for the arms to rise and fall of themselves, as the meal under them might increase or diminish ; while in the hopper-boy of Evans, the upright post is round, and it pasess loosely through a round hole in the arms, which are carried round by two pieces of timber of the proper length, called leaders, which are inserted firmly into the upper part of the post, and at- tached at their ends by lines or small cords, to the corres- ponding ends of the arms. These lines and leaders being put in motion by the upright post, trail round the arms, which at the same time play loosely on the post, and rise and fall of themselves, as the meal under them increases or diminishes in quantity. And to make them press more lightly on the meal, and rise and fall with more facility, as occasion may require, a weight a little lighter than themselves, is attached PATENT CASES. 381 Evans v. Eaton. 7 Wheat. to them by a cord which passes over a pulley in the upper part of the post. This weight nearly balances the arms, and enables them to play up and down much more easily and effectually. The counsel also produced a drawing of Evans's machine from the Patent-Office, to show that his model was correct, and referred to the facts of the evidence in the record where the machine of Stouffer is described, and its properties and defects explained. He then proceeded to remark that the machine of Evans was obviously constructed upon a new principle ; that the modus operandi was entirely new. The great object of both machines was to conduct the meal into the bolting chest, and to stir, turn, *dry, and cool it on [ * 409 ] its way thither. The essential agents in this opera- tion were the arms, which if they remained stationary on the post, as they must of necessity do in StoufFer's machine, could not possibly perform this operation to advantage. They might sink down on the meal, as its quantity decreased, but could not possibly rise when it was increased ; consequently, when new meal was placed on the floor, the machine must be stopt, and the arms lifted up. Hence, its motion was une- qual, and its operation necessarily very irregular and imper- fect. It also required a hand constantly, or frequently, to be present, and thus increased the expense. Thus the condensation of the steam within the cylinder itself, in Newcomen's steam-engine, cooled the cylinder im- properly, wasted steam, made more fuel necessary, and ren- dered the operation of the machine imperfect, and too expen- sive. Here the similarity of imperfection is complete. Evans removed the imperfection of the hopper-boy, not by merely adding to its parts, but by introducing a totally new principle and modus operandi. He detached the arms from the upright post entirely, and carried them round by means 382 PATENT CASES. Evans v. Eaton. 7 Wheat. of the leaders and lines which have been described,, leaving them to play freely up and down on the post, so as to accom- modate themselves to the decreasing or increasing quantity of meal under them ; and their movement up and down, he facilitated, regulated, and rendered perfect, by means of the weight and pujiey. The modus operandi of the two machines, consisted in the manner of carrying round the arms. [*410] This was *the principle of both machines. That of Evans was new, and infinitely superior. So Watt remedied the defects of Newcomen's steam- engine, by condensing the steam in a different vessel from the cylinder, and increased the effect by introducing the steam above the piston as well as below it. This was a new prin- ciple ; and here again the resemblance between the two cases is complete. It being then clear that Evans had made a new invention as to the hopper-boy^ and not merely what the law on this subject calls an improvement, and the cases showing that such an invention is the subject-matter of a patent for an original invention, it follows that he might have obtained a patent for his invention, as an original invention, and not merely as an improvement. This leads to the inquiry, for what was this patent granted ? Was it for an original invention of his own, or for an improvement on StoufFer's invention ? We have the authority of this Court, in its former decision in this case,^ for saying that when we inquire what was granted, it is proper in the first place to ascertain what the grantee wished to obtain, and next, what the grantor had the inten- tion and the power to give. What Evans wished to obtain, is fully and most explicitly stated in the concluding sen- tence of his specification.^ After describing, most fully and 1 3 Wheat. Kep. 454, ante, 243. 2 lb. 468, note, ante, 246. PATENT CASES. 383 Eyans v. Eaton. 7 Wheat. clearly, the structure, principle, and operation of his hopper-boy, ha concludes thus, " I claim as * my [ * 411 ] invention, the peculiar properties which this ma- chine possesses, namely, the spreading, turning and gathering the meal at one operation, and the rising and lowering its arms by the motion, to accommodate itself to any quantity of meal it has to operate on." Here it is manifest, that he de- scribes the effect intended to be produced, which was the same in both machines, namely, the spreading, turning, and gather- ing the meal at one operation ; and his modus operandi, for producing ' this effect, which was entirely new, namely, the rising and lowering of the arms of the machine, by its own motion, so as to accommodate itself to the increasing or dimi- nishing quantity of meal. For this modus operandi, this pro- perty or principle, he claims a patent. It is equally clear that the grantor of the patent intended to give what he thus asked for ; that is, a patent for this new principle. This appears from the special Act of Congress, on which the patent is founded, and to which it refers ; from the terms of the patent itself; and from the specification which is expressly incorporated into it, as one of its consti- tuent parts. As a further illustration of this position, the most celebrated and important invention of modern times may be referred to, an invention which was destined to produce more important effects than aiiy other single effort of the human mind. He alluded to the steamboat — that sublime conception, which had conferred so much glory on its author and his country. What was a steamboat, but a new combination of these well-known machines, a boat, a steam-engine, *and [*412] a flutter-wheel, machines most familiar to all who knew any thing of such subjects. But they were so com- bined as to produce a new and most surprising effect, by a new modus operandi. This method consisted in attaching 384 PATENT CASES. Evans v. Eaton. 7 Wheat. a steam-engine and two flutter-wheels to a boat of proper dimensions and strength, and arranging them in such a man- ner, that the flutter-wheels were set in motion by the steam- engine, and struck against the water, instead of being struck by it, as they are in a common saw-mill. Thus striking against the water, they act as oars, or rather as paddles, and propel the boat forward. Now, what was there new in this machine ? Not the instruments, but the manner of combin- ing them, and their manner of operating produced by this combination ; and yet no one has denied to the author of this beautiful and sublime idea the merit of an original invention, or called in question his patent, as a patent for an original invention. He, however, merely combined old machines, changing their forms and proportions so as to suit his new purpose. Evans not only combined old machines, but added new and essential parts, and by means of both produced a modus operandi altogether new, and highly useful. Upon what ground, then, can it be said that he is not an original inventor, when Watt was solemnly adjudged, and Fulton unanimously allowed to be so ? I therefore contend, that Evans was an original inventor, and not an improver merely ; and that his patent is for an original invention, and not for an improvement. If [ * 413 ] so, the decision of the Circuit * Court in these two cases ^ must be reversed, and the patent of my client is established. But if it be not a patent for an original invention, but merely for an improvement, the decision below was erroneous, in declaring that the specification is defective. This defect consists, according to the decision below, in the omission to ^ The present case, and the subsequent case of Evans v. Hettich. PATENT CASES. 385 Evans v. Eaton. 7 Wheat. State particularly in what the improvement consists, and to distinguish it in terms from the pree.Kistent machine. Here a very familiar maxim is applicable : quod neminem ad vana aut ad impossibilia lex cogit. The law requires nobody to do that which would be useless if done, or it is im- possible to do. And cui bono make this discrimination ; how can it be made ; and by what provision of the law is it re- q^iired ? On the answer to these three questions the case n^ust depend. If it can be shown that such a discrimination Would be useless if made, or is irliprabticable, and that it is not e.xpressly or positively required by the Act of Congress, it will follow that the judgment below must be reversed. And (1.) cui bono make the discrimination? What good would it, or could it, do to any body ? In order to answer these questions, we must revert again to the object and uses of the specification. The Patent Law confers a benefit on the discoverer of any artful invention, which consists in a monopoly of his inven- tion for a limited time. The consideration which it requires him to pay for this benefit, is to put the public in possession of his invention ; so as to enable all to use it, after this monopoly shall * expire ; and all to avoid in- [ * 414 ] volving themselves in controversies and difficulties, by inadvertently infringing it while it continues. Hence the necessity of a specification ; and here we find its uses, its extent, and its limitations. The British statute said nothing of a specification ; but it was introduced by the executive government, as a condition of every patent, and its character, objects, and properties have been accurately settled by judi- cial decisions in England. From those decisions it was bor- rowed by our Act of Congress, and incorporated into its posi- tive enactments. In both systems, its objects and uses, and, consequently, its nature and properties, are the same. Its object and all is to enable the public to enjoy the invention VOL. I. — P. c. 33 386 PATENT CASES. Evans v. Eaton. 7 Wheat. beneficially and fully, after the monopoly shall have expired, and to avoid interference with it, while it shall continue. Now what is necessary for attaining this object ? certainly nothing more than this, that the invention should be so described in the specification, by writing, and, where the na- ture of the sdbj^t will permit, by drawings and models, as that any one competently skilled in the art or science to which it relates, may be enabled to understand, make, and use it. This is what the English decisions have established as the necessary properties of the specification ; and what our statute expressly and in terms requires. Now it is obvious that, in the case of an improvement, the principle is exactly the same as in that of an original inven- tion. The invention, that is, the thing in its improved state, must be accurately and fully described ; by writing always, and by drawings and models where the nature of [*415] the case will * permit. When this is done, it is manifest that any one who can understand the improved thing, so as to make and use it, may, in every pos- sible case, distinguish the improvement from any and every original or antecedent thing of the same sort. Take these two hopper-boys as an example, and inspect the models which I hold in my hands. Cannot any man, who has sufficient mechtinical skill to make a hopper-boy, and understand its use, see at one glance in what these two machines differ from each other ? Does not the Court see it ? Cannot any such mechanic, therefore, make and use the hopper-boy of Stouffer, if he should think proper, and avoid all interference with the improvement of Evans? It cannot be doubted that he may. And so may a person sufficiently skilled in the art or science to which an improvement relates, in every possible case. When he has the improvement, or the improved thing suffi- ciently described, as the hopper-boy of Evans is admitted to be, and is informed of any preexisting machine, or thing of PATENT CASES. 387 Evans o. Eaton. 7 Wheat. the same general nature which he wishes to make, sell, or use, he can look at that thing, compare it with the improved machine, or with the description, drawings, and models in the Patent-Office ; see the difference, and make and use the ori- ginal or old one, without the lisast danger of interfering with the improvement. Where, then, is the use of describing the original, or the old invention, in the specification of the im- provement ; and of discriminating, in terms, between them? It is manifest that such a description would be perfectly use- less and vain ; and neminem ad vana lex cogit. *2. But admitting that it might be of some [*416] use, would it be possible ? This is the next head of inquiry ; and I contend that it would not. And here let it be remembered, that this doctrine of discri- mination is not confined to such inventions as are express or avowed improvements on particular inventions. It ex- tends necessarily to all inventions which improve any thing that existed before. In the present case there hap- pened, so far at least as is now known, to be but one hop- per-boy, that of Stouffer, in use before Evans's. But sup- pose there had been twenty, of as many different kinds; would they not all have been original with respect to Evans's, or antecedent to it ? Undoubtedly ; and every man, notwith- standing Evans's patent, would have had a right to use them all, or any of them. What reason or principle could require the description of one in the specification of Evans, which would not equally apply to all ? There certainly is none. Let us take the example of a patent for an improved stove, for increasing the heat, or for any other object. How many millions of stoves, of what an endless variety of constructions, are used in the world. Must the patentee of this improved stove, or of this improvement on stoves, describe them all in his specification, and point out in terms the difference between each of them, and his invention ? It is manifest that he must, according to the doctrine of the Circuit Court ; and it is equally 388 PATENT CASES. Evans v. Eaton. 7 Wheat. manifest, that he could not possibly do it. His specification would constitute a library of itself, which no man would or could read, and which the Patent-Office could hardly [* 417 ] contain. So al|0 'improved chimneys, improved carriages, and all the multitude of other improve- ments, real or imaginary, on things in general use, for which patents are obtained, having preexistent things of the same nature, and used for the same general purpose, must be de- scribed in each specification ; which, if it were possible to write it, as it would very seldom be, would be far too volumi- nous to be understood or read. Thus, it is manifest, that the discrimination contended for, would be impossible as well as useless, in relation to improve- ments on unpatented machines. Where, indeed, a machine is already patented, it is very easy to describe it in the speci- fication of the improvement, and point out all the particulars in which they diflfer from each other. The original specifi- cation is in the Patent-Office, and may be referred to ; the drawings and model are there, and may be seen. Here the rule requiring a discrimination in terms between the original invention, and the improvement, would not be unreasonable : and it might be useful ; by tending to prevent disputes be- tween the different patentees. The mistake of which we complain, has probably arisen from not discriminating between improvements on patented and unpatented inventions. In the latter, the discrimination is manifestly impossible, as well as useless. In the former, it would be easy, and might be of some use. It might be proper to require it in one case, whe- ther the law positively enjoins it or not. To require it in the other, would be to make the law require what is both useless and impossible. This can never be done by the con- [*418] struction merely of a statute, which must * always be reasonable. But it may be said that the statute positively enjoins it. If so, we must submit. When the PATENT CASES. 389 Evans v. Eaton. 7 Wheat. legislature has clearly expressed its will, the Court have no duty but to obey. This brings us to the question, what has the legislature enjoined on this subject? 3. All that can be supposed to relate to it is contained in the 2d and 3d sections. The second speaks of improvements ; the third of specifications. It points out the object of the spe- cification, and directs what shall be done for its attainment. The object is to put the public in complete possession of the invention, whether an improvement or an original discovery; so that interference with it may be avoided while the patent continues, and its benefits may be fully enjoyed by the pub- lic, after the patent expires. To this end it enjoins that the applicant for a patent " shall deliver a written description of his invention, and of the manner of using, or process of com- pounding the same ; in such full, clear, and exact terms, as to distinguish the same from all other things before known ; and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same." This is the direc- tory part. The thing is to be described " so as to distinguish it from all other things before known." How distinguish it ? By describing all the things before known, and pointing out in terms in what it differs from them all ? Certainly not ; but by giving a description of it so complete and accurate, as "to enable any person skilled in the art, &c., to make, compound, and use *the same." Is the [*419] discrimination contended for, but not mentioned in the statute, necessary for this purpose? By no means. Any person skilled in the art or science, in order to make, com- pound, and use the new invention, has but to look to the description of the invention itself. He need not know how nearly it resembles, or how widely it differs, from any other thing before known. With these he has no concern. And if, on the other hand, he wishes to use nothing before used 33* 390 PATENT CASES. Evans v. Eaton. 7 Wheat. and known, and to avoid interfering with the patented inven- tion, or improvement, he has only to compare the thing which he so wishes to make or use, with the description of the pa- tented invention, or improvement contained in the specifica- tion ; and he will immediately see wherein they differ, and be enabled to avdid the latter, while he uses the former. This section (the 3d) further directs, with a view to the same objects, that the applicant, the inventor, " in case of any machine," shall " fully explain the principle, and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions." Here, as in the rest of the section, no- thing is said about improvements, as distinguished from ori- ginal discoveries. They are all treated equally as " inven- tions," and are placed precisely on the same ground. They are all to be so described, as that they may be distinguished in their principles and modus operandi, as well as in their construction and composition, from other inventions ; and this is to be efTected by means, not of a formal discrimina- tion, in terms, between them, and any other thing [* 420 ] * or things of the same general nature ; but of a full and accurate verbal description, aided by drawings, models, and specimens, where the matter is of such a nature as to admit their use. In all this, nothing is said or hinted about " improvements," as contra-distinguished from " origi- nal discoveries." All are treated alike as " inventions," and the same means of enabling all concerned, to distinguish them from things before used or known, are provided in relation to both. In fact, what is an " improvement," but a new invention ? Every thing that is made better is improved ; and every thing that makes another better, or does it in a better way, is an improvement. If it be new, it is an invention so far as it goes. The greater the improvement, the greater is the in- PATENT CASES. 391 Evans v. Eaton. 7 Wheat. vention ; and any improvement differs from any other, or from an original discovery, if there be any such thing, not in na- ture but in degree. They may be greater inventions or less ; more or less ingenious ; or more or less useful ; but as far as they are, so they are all inventions, and are treated precisely alike by this portion of the Patent Law ; which, I again re- peat, makes no mention, and gives no hint of a discrimination, in the specification of an improvement, between the improve- ment, or the thing as improved, and the original thing on which the improvement is made. Treating them all alike as " inventions," it requires, with respect to all, that they shall be so described as clearly to distinguish them, that is, as to enable all concerned to distinguish them from all other things of the same * nature, before in use or [ * 421 ] known. To construe the statute, so as to make it require a description not only of the new invention, but of all things of ihe same general nature before known, and a discri- mination. in terms between them, would be as unreasonable in the case of an improvement, as of an original discovery, and would be perfectly unreasonable in either. It would make the statute do that which its terms do not indicate, and which the law can never be presumed to intend. It would make it require what it is not only impossible in a great variety of cases to do, but what, if done, would in every case be wholly useless and vain. This it cannot be so construed as to require ; for neminem ad vana out ad impossibilia lex cogit. The counsel then adverted to the 2d section, where it was supposed, he said, that something might be found to support this doctrine of discrimination. That section spoke particu- larly of improvements, as to which the third was wholly silent. It said nothing whatever of the specification, its objects or motive. It made two provisions, both useful as declarations of the law, to put persons on their guard and prevent mistakes," 392 PATENT CASES. Evans v. Eaton. 7 Wheat. but both undoubtedly law, without any such declaration. The first was, that the discoverer and patentee of an improve- ment in any thing before patented, should not be entitled to make, use, or vend the original ; nor the inventor and patentee of the original to make, use, or vend the improve- ment. Here agf#n they were both considered as inventors, and both put on the same footing. It was declared, for general information, and to prevent doubts and [ * 422 ] * mistakes, that one should not be entitled to the invention of the other ; but nothing was said about the manner of distinguishing these inventions one from the other. That was left to the third section ; where it was done without the least mention or hint of the formal discrimination, in terms, contended for in the judgment below. It was mani- fest that this discrimination could derive no countenance from this branch of the second section. It obviously could derive none from the other branch, which merely, for giving infor- mation to the public, and preventing mistakes, declared " that simply changing the form or proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery." This merely amounts to saying, what would clearly have been the construction of the law without any such declaration, that to constitute a patentable discovery, either original or by improvement, there must be a new prin- ciple or modus operandi, and not merely a change of form or proportion. If the change of form or proportion should be such as to produce a new principle or modus operandi, then it would be a discovery or invention, whether it amounts to an original or an improvement only ; and here again improve- ments were treated as inventions, equally with original disco- veries ; the distinction between them being not in nature, but merely in degree. But the point under consideration has been expressly set- tled, by the former decision in this case ; the same objection, PATENT CASES. 393 Evans u. Eaton. 7 Wheat. for want of this discrimination, was made in the Court below, on the first trial ; apd the same doctrine on the sub- ject expressly laid down * by the Circuit Court ; [ * 423 ] this doctrine formed one of the grounds of objec- tion, distinctly stated in the argument of the former case in this Court, and was distinctly noticed by the Court ; and with this part of the opinion below, and the objection to it, dis- tinctly in view, this Court decided this patent on this same specification to be valid, notwithstanding its want of a discri- mination in terms between the improvement and the original invention ; which was an express decision on this point, in favor of the plaintiff in error. He referred to various parts of the report of the former case of Evans v. Eaton,^ to sup- port these positions ; remarking, that although the Court cer- tainly was not bound absolutely by its own decisions, and ought to overrule them, when satisfied of their incorrect- ness, yet they were the great landmarks of the law, and ought not to be ovprturned or shaken, without the strongest and clearest reasons. The learned counsel also cited the authorities cited in the margin, as to the objection to the charge of the Court below, upon the ground that it had invaded the proper province of the jury, in respect to the sufficiency of the specification, and to the nature of the patentee's invention, as an improvement or an original discovery.^ Mr. Justice Story delivered the opinion of the Court. This is the same case which was formerly before * this Court, and is reported in 3 Wheat. [* 424] Rep. 454, and by a reference to that report, the 13 Wheat. Rep. 454, ante, 215. 2 12 H. Bl. 478, 484, 497; 8 T.R. 99,101, 103; 1 Gallis. 481 ; 1 Mason, 189, 191, ante, 137, 139. 394 PATENT CASES. Evans v. Eaton. .7 "Wheat. form of the patent, the nature of the action, and the subse- quent proceedings, will fully appear. The cause now comes before us upon a writ of error to the judgment of the Circuit Court, rendered upon the new trial, had in pursuance of the mandate of this Court. Upon the new trial several exceptions were taken by the counsel for the plaintiff. The first was to the admission of a Mr. Frederick, as a witness for the defendant. It is to be observed, that the sole controversy between the parties at the new trial was, whether the plaintiff was entitled to recover for an alleged breach of his patent by the defendant in using the improved hopper-boy. Frederick, in his examination on the voir dire, denied that he had any interest in the cause, or that he was bound to contribute to the expenses of it. He said he had not a hopper-boy in his mill at present, it being then in Court ; that it was in his mill about three weeks ago, when he gave it to a person to bring down to Philadelphia; and that his hopper-boy spreads and turns the meal, cools it some, dries it, and gathers it to the bolting chest. Upon this evi- dence the plaintiff's counsel contended that Frederick was not a competent witness, but the objection was overruled by the Court. It does not appear from this examination whether the hopper-boy used by Frederick was that improved by the plaintiff, or not ; but assuming it was, we are of [ * 425 ] opinion that the witness was * rightly admitted. It is perfectly clear, that a person having an interest only in the question, and not in the event of the suit, is a competent witness ; and, in general, the liability of a witness to a like action, or his standing in the same predicament with the party sued, if the verdict cannot be given in evidence for or against him, is an interest in the question, and does not exclude him. If nothing had been in controversy in this case, as to the validity of the patent itself, and the general issue only had been pleaded, the present objection would have PATENT CASES. 395 Evans v. Eaton. 7 Wheat. fallen within the general rule. But the special notice in this case asserts matter, which if true, and found specially by the jury, might authorize the Court to adjudge the patent void, and it is supposed that this constitutes such an interest in Frederick in the event of the cause, that he is thereby ren- dered incompetent. But in this respect, Frederick stands in the same situation as every other person in the community. If the patent is declared void, the invention may be used by the whole community, and all persons may be said to have an Interest in making it public property. But this results from a general principle of law, that a party can take nothing by a void patent ; and so far as such an interest goes, we think it is to the credit and not to the competency of the witness. It is clear that the verdict in this case, if given for Evans, would not be evidence in a suit against Frederick, but Frederick would be entitled to contest every step in the cause, in the same man- ner as if no such suit had existed. Non constat, that Fre- derick himself will ever be sued by the plaintiflF, or that if *sued, any recovery can be had against him, [ * 426 ] even if the plaintiff's patent should not be avoided in this suit. It therefore rests in remote contingencies, whe- ther Frederic will, under any circumstances, have an interest in the event of this suif, and the law adjudges .the party in- competent only when he has a certain, and not a contingent interest. It has been the inclination of Courts of law in modern times, generally, to lean against exceptions to testi- mony. This is a case which may be considered somewhat anomalous ; and we think it safest to admit the testimony, leaving its credibility to the jury. Another exception was to the refusal of the Court to allow a deposition to be read by the plaintiff, which had been taken according to a prevalent practice of the State Courts. It is not pretended that the deposition was admissible according ,to the positive rules of law, or the rules of the Circuit Court ; 396 PATENT CASES. Evans v. Eaton, 7 Wheat. and it is not now produced, so that we can see what were the circumstances under which it was taken. No practice, however convenient, can give validity to depositions which are not taken according to law, or the rules of the Circuit Court, unless the parties expressly waive the objection, or by previous coireent, agree to have them taken and made evidence. This objection, therefore, may at once be dis- missed. The principal arguments, however, at the bar, have been urged against the charge given by the Circuit Court in sum- ming up the cause to the jury. The charge is spread in extenso upon the record, a practice which is unnecessary and inconvenient, and may give rise to minute criti- [ * 427 ] cisms and observations * upon points incidentally introduced, for purposes of argument or illustra- tion, and by no means essential to the merits of the cause. In causes of this nature we think the substance only of the charge is to be examined ; and if it appears, upon the whole, that the law was justly expounded to the jury, general expres- sions, which may need and would receive qualification, if they were the direct point in judgment, are to be understood in such restricted sense. It has been, already stated, that the whole controversy at the trial turned upon the use of the plaintiff's hopper-boy ; and no other of the inventions, included in his patent, was asserted or supposed to be pirated by the defendant. The plaintiff, with a view to the maintenance of his suit, contended, that his patent, so far as respected the hopper-bf^, had a double aspect. 1. That it was to be as a patent for the whole of the improved hopper-boy, that is, of the whole machine, as his own invention. 2. That if not susceptible of this construction, it was for an improvement upon the hop- per-boy, and he was entitled to recover against the defend- ant for using his improvement. The defendant admitted PATENT CASES. 397 Evans u. Eaton. 7 Wheat. that he used the improved hopper-boy, and put his defence upon two grounds. 1. That if the patent was for the whole machine, that is, the improved hopper-boy, the plaintiff was not the inventor of the improved hopper-boy so patented ; 2. That if the patent was for an improvement only upon the hopper-boy, the specification did not describe the nature and extent of the improvement ; * and if it [ *428 ] did, still the patent comprehended the whole ma- chine, and was broader than the invention. To the exami- nation of these points, and summing up the evidence, the attention of the Circuit Court was exclusively directed ; and the question is, whether the charge, in respect to the matters of law involved in these points, was erroneous to the injury of the plaintiff. We will consider the points in the same order in which they were reviewed by the Circuit Court. Was the patent of the plaintiff, so far as respects his improved hopper-boy, a patent for the whole machine, as his own invention ? It is not disputed that the specification does contain a good and suffi- cient description of the improved hopper-boy, and of the 1 manner of constructing it ; and if there had been any dispute on this subject, it would have been matter of fact for the jury, and not of law for the decision of the Court. The plaintiff, in his specification, after describing his hopper-boy, its struc- ture and use, sums up his invention as follows : " I claini as my invention, the peculiar properties or principles which this machine possesses, in the spreading, turning, and gathering the meal at one operation, and the raising and lowering of its arms by its motion, to accommodate itself to any quantity of meal it has to operate upon." From this manner of stating bis invention, without any other qualification, it is apparent that it is just such a claim as would .be made use of by the plaintiff, if the whole machine was substantilialiy in its structure and combinations, new. The plaintiff does not VOL. I. — p. c. 34 398 PATENT CASES. Evans v. Eaton. 7 Wheat. [ * 429] state * it to be a specific improvement upon an existing machine, confining his claim to that im- provement, but as an invention substantially original. In short, he claims the machine as substantially new in its pro- perties and principles, that is to say, in the modus operandi. If this be true, a*id this has been the construction strongly and earnestly pressed upon this Court by the plaintiff's coun- sel, in the argument at the present term, what are the legal principles that flow from this doctrine? The Patent Act of the 21st of February, 1793, ch. 11, upon which the validity of our patents generally depends, authorizes a patent to the inventor, for his invention or improvement in any new and useful art, machine, manufacture, or composition of matter not known or used before the application. It also gives to any inventor of an improvement in the principle of any ma- chine, or in the process of any composition (jf matter which has been patented, an exclusive right to a patent for his im- provement ; but he is not to be at liberty to use the original discovery, nor is the first inventor at liberty to use the im- provement. It also declares that simply changing the form or the proportion of any machine or composition of matter, in any degree, shall not be deemed a discovery. It farther pro- vides, that on any trial for a violation of the patent, the party may give in evidence, having given due notice thereof, any special matter tending to prove that the plaintiff's specifica- tion does not contain the whole truth relative to his discovery, or contains more than is, necessary to produce the effect, (where the addition or concealment shall appear [ * 430 to have been to * deceive the public,) or that the thing secured by the patent was not originally dis- covered by the patentee, but had been in use, or had been described in some public work anterior to the supposed disco- very of the patentee, or that he had surreptitiously obtained a person's invention ; and provides that in either of these PATENT CASES. 399 Evans a. Eaton. 7 Wheat. cases judgment shall be rendered for the plaintiff, with costs, and the patent shall be declared void. It farther requires, that every inventor, before he can receive a patent, shall swear or affirm to the trutli of his invention, " and shall deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same ; and in the case of any machine, he shall fully explain the several modes in which he has contemplated the application of the principle or character by which it may be distinguished from other inventions." From this enumeration of the provisions of the act, it is clear that the party cannot entitle himself to a patent for more than his own invention ; and if his patent includes things before known, or before in use, as his invention, he is not entitled to recover, for his patent is broader than his invention. If, therefore, the patent be for the whole of a ma- chine, the party can maintain a title to it only by establishing that it is substantially new in its structure and mode of ope- ration. If the same combinations existed before *in machines of the same nature, up to a certain [*43l ] point, and the party's invention consists in adding some new machinery, or some improved mode of operation, to the old, the patent should be limited to such improvement ; for if it includes the whole machinery, it includes more than his invention, and therefore cannot be supported. This is the view of the law on this point, which was taken by the Circuit Court. That Court went into a full examination of the testimony, and also of the structure of Evans's hopper- boy, and Stouffer's hopper-boy, and left it to the jury to decide, whether, up to a certain point, the two machines were or were not the same in principle. If they were the 400 PATENT CASES. Evans v. Eaton. 7 Wheat. same in principle, and merely differed in form and propor- tion, then it was declared that the plaintiff was not entitled to recover ; or, to use the language of the Court, if the jury were of opinion that the plaintiff was not the inventor of the hopper-boy, he was not entitled to recover, unless his was a case excepted ffom the general operation of the act. We perceive no reason to be dissatisfied with this part of the charge ; it left the fact open for the jury, and instructed them correctly as to the law. And the verdict of the jury nega- tived the right of the plaintiff, as the inventor of the whole machine. The next inquiry before the Circuit Court was, whether the plaintiff's case was excepted from the general operation of the act. Upon that it is unnecessary to say more than that the point was expressly decided by this Court in the negative, upon the former writ of error. And we think the opinion of this Court, delivered on that occa- [*432] sion, is correctly understood *and expounded by the Circuit Court. It could never have been in- tended by this Court to declare, in direct opposition to the very terms of the Patent Act, that a party was entitled to recover, although he should be proved not to have been the inventor of the machine patented ; or that he should be enti- tled to recover, notwithstanding the machine patented was in use prior to his alleged discovery. There is undoubtedly a slight error in drawing up the judgment of the Court upon the former writ of error ; but it is immediately corrected by an attentive perusal of the opinion itself. And we do not think that it can be better stated or explained than in the manner in which the Circuit Court has expounded it. We are then led to the examination of the other point of view in which the plaintiff's counsel have attempted to main- tain this patent. That is, by considering it, not as a patent for the whole of the machine or improved hopper-boy, but as an improvement of' the hopper-boy. Considered under this PATENT CASES. 401 Evans v. Eaton. 7 Wheat. aspect, the point presents itself which was urged by the de- fendant's counsel, namely, that if it be a patent for an im- provement, it is void, because the nature and extent of the improvement is not stated in the specification. The Circuit Court went into an elaborate e.vamination of the law applica- ble to this point, and into a construction of the terms of the patent itself, and came to the conclusion that no distinct im- provement was specified in the patent ; that such specifica- tion was necessary in a patent for an improvement, and that for this defect, the plaintiff was not entitled to re- cover, supposing his patent to be for an * improve- [ * 433 ] ment only of an existing machine. It may be justly doubted, whether this point at all arises in the cause ; for the very terms of the patent, as they have been already considered, and as they have been construed at the bar by the plaintiff's counsel, at the present argument, seem almost conclusively to establish, that the patent is for the whole ma- chine, that is, for the whole of the improved hopper-boy, and not for a mere improvement upon the old hopper-boy. But, waiving this point, can the doctrine asserted at the bar be maintained, that no specification of an improvement is neces- sary in the patent; and that it is suflicient if it be made out and shown at the trial, or may be established by comparing the machine specified in the patent with former machines in use? That there is no specification of any distinct improve- ment in the present patent, is not denied ; that the patent is good without it, is the subject of inquiry. Let this be decided by reference to the Patent Act. The third section of the Patent Act requires, as has been already stated, that the party " shall deliver a written descrip- tion of his invention, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and to enable any person skilled in the art or science, &c., &c., to make, compound, and use the same." The specifi- 34* 402 PATENT CASES. Evans v. Eaton. 7 Wheat. cation, then, has two objects: one is to make known the manner of constructing the machine (if the invention is of a machine) so as to enable artizans to make and use it, and thus to give the public the full benefit of the disco- [*434]- very "after the expiration *of the patent. It is not pretended that the plaintiff's patent is not in this respect sufficiently exact and minute in the description. But whether it be so or not, is not material to the present inquiry. The other object of the specification is, to put the public in possession of what the party claims as his own invention, so as to ascertain if he claim any thing that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaser or other person using a machine, of his infringement of the patent; and at the same time of taking from the inventor the means of practising upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification. Nothing can be more direct than the very words of the act. The specification must describe the invention " in such full, clear, and distinct terms, as to distinguish the same from all other things before known." How can that be a suffi- cient specification of an improvement in a machine, which does not distinguish what the improvement is, nor sta.te in what it consists, nor how far the invention extends; — which describes the machine fully and accurately, as a whole, mix- ing up the new and old, but does not in the slightest degree explain what is the nature or limit of the improvement which the party claims as his own ? It seems to us per- [ * 435 ] fectly clear that such a specification * is indispen- sable. We do not say that the party is bound to PATENT CASES. 403 Evans v. Eaton. 7 Wheat. describe the old machine | but we are of opinion that he ought to describe what his own improvement is, and to limit his patent to such improvement. For another purpose, indeed, with the view of enabling artizans to construct the machine, it may become necessary for him to state so much of the old machine as will make his specification of the structure intelligible. But the law is sufficiently complied with in relation to the other point, by distinguishing, in full, clear, and exact terms, the nature and extent of his improve- ment only. We do not consider that* the opinion of the Circuit Court difiers, in any material respect, from this exposition of the Patent Act on this point ; and if the plaintiff's patent is to be considered as a patent for an improvement upon an existing hopper-boy, it is defective in not specifying that improve- ment, and therefore the plaintiff ought not to recover. Upon the whole, it is the opinion of the majority of the Court, that the judgment of the Circuit Court oiight to be affirmed with costs. Mr. Justice Livingston dissented. At this late period, when the patentee is in his grave, and his patent has expired a natural death, we are called on to say, whether his patent ever had a legal existence, and it may seem not very import- ant to the representatives of the patentee what may be the decision of this Court. But understanding that many other actions are pending for a violation of this part of the patent- right, and that infractions have taken place for which actions may yet be commenced, and believing that the * decision we are about to make will have a very [ * 436 ] extensive, if not a disastrous bearing on many other patents for improvements, and will in fact amount to a repeal of many of them, I have thought proper to assign my reasons for dissenting from the opinion just delivered. 404 PATENT CASES. Evans v. Eaton. 7 Wheat. In doing this, my remarks will be confined principally to the charge of the Court, so far as it applies to the claim of Evans for an improvement on a hopper-boy. I was much struck with the argument of the plaintiff's counsel in favor of the patent being for an original invention^ and not for an improvement ; nor would it in my opinion be a forced construction, to regard it as a patent for a combina- tion of machines to produce certain results, and not for any of the machines, nor the different parts of which the whole is composed. But considering it as a patent for an improvement on a hopper-boy, in which light it had been regarded as well by the Circuit as by this Court, when this cause was here before, I proceed to examine the charge, so far as it relates to this part of the subject. The Court, after stating in what particulars the plaintiff's counsel contended that his improvement consists, which is unnecessary to repeat here, proceeds — " The plaintiff has laid before you strong evidence to prove that his hopper-boy is a more useful machine than the one which is alleged to have been previously discovered and in use. If, then, you are satisfied of this fact, the [*437] point of law which has been * raised by the de- fendant's counsel remains to be considered, which is,^ that the plaintiff's patent for an improvement is void because the nature and extent of his improvement is not stated in the specification. " The patent is for an improved hopper-boy, as described in the specification, which is referred to and made part of the patent. How does the specification express in what his improvement consists? It states all and each of the parts of the entire machine, its use and mode of operating; and claims as his invention, the peculiar properties or principles of the machine, namely, the spreading, turning, and gather- PATENT CASES. 405 Evans v. Eaton. 7 Wheat- ing the meal, and the raising and lowering of its arms by its motion, to accommodate itself to the meal under it. But does this description designate the improvement, or .in what it consists ? Where shall we find the original hopper^boy described, either as to its construction, operation, or use, or by reference to any thing by which a knowledge of it may be obtained? Where are the improvements on such originals stated ? The undoubted truth is, that the specification com- municates no information whatever upon any of these points." And after some farther reasoning on the subject, and showing that the plaintiff's case is not excepted from the general rule of law, by the act which was passed for his relief, the Court declares that for this imperfection or omission in the specifi- cation, the " plaintiflT is not entitled to recover for an alleged infringement of his patent for the improvement on the hop- per-boy." This was equivalent to saying that for this defect in the specification, the patent for the improved hopper-boy was void, and, * of course, that no ac-'[*438] lion at all, whatever might be the state of the evi- dence, could be maintained for the use of it. , It left nothing, as it regarded the improved hopper-boy, for the jury to de- cide. Such is the charge, and it is delivered in terms too plain to be misunderstood. The objections to it are now to be considered. In doing this it will be shown, 1st. That the specification is not defective, and that although it does not discriminate in what particulars the machine in question does differ from other hopper-boys in use, yet, if from the whole of the description taken together, the machine is specified so minutely, and so accurately, as to be directly and easily distinguished from all other hopper- boys antecedently known, every thing has been done which the law requires, and the patent is good. 2d. That if the specification be vicious in the points men- 406 PATENT CASES. Evans v. E&ton. 7 Wheat. tioned, the patent ought not to be considered as absolutely void ; but it is enough, and the public interest is sufficiently guarded, if care be taken that it shall not be extended to create a monopoly in any other machine, which may or may not be mentioned in the patent, which was previously known or in use. And,* 3d. That if a patent must be set aside for such defect in the specification, it should be left to the jury, on the evidence before them, to decide whether the improvement patented be not set forth with all necessary precision. 1. I have said the specification is not defective. In determining this question, it would seem but [* 439 ]* natural and just that the validity of a patent granted under a particular Act of Congress, should be tested by the terms there used, and by the decisions of our own Courts, so far as they are of authority, and that we should be extremely cautious in adopting the rules which have been introduce^ into other countries, and under laws not in every respect like our own, however respectable the tribunals may be which may have prescribed those rules ; and^ this the more especially, as most of the decisions in England, which are generally cited, and seem to have been implicitly fbllowed in this country, are of a date long subsequent, to the revolution, and many of them posterior to the passage of the Patent Laws in this country, and which could not therefore have been in the contemplation of Congress at the time. Besides, there is somewhat of hardship in constantly applying to a patentee in this country, adjudications made on a British Act of Parliament very unlike our own, and with which de- cisions he has no means of becoming acquainted until long after a knowledge of them can be of any service. Already have we extended to patents for improvements on old ma- chines, several recent decisions in England, although it was long doubted in that country, and as late as the year 1776, PATENT CASES. 407 Evans v. Eaton. 7 Wheat. whether by the Act of the 21 James I. c. 3, there could be a patent for an addition only. When the English Courts de- cided in favor of such patents, they also made rules for their construction, as cases arose ; there being no direct provisions in the statute on the subject. As we have provided by law, not only for the security of inventions entirely new, but also for the * protection of those who may dis- [ * 440 ] cover any new and useful improvement on any art, machine, &c., not known or used before, and have prescribed the terms on which patents under it may be obtained, it would seem, if all those terms are complied with, and the invention be really new and useful, that no Court can have a right to add any other terms, or to require of a patentee any thing more than what the law has enjoined on him. Let us now try the patent before us by this rule : — The Act of the 21st February, 1793, c. 11, after stating in what cases" letters- patent for inventions may issue, and how they are to be obtained, requires, inter alia, that the inventor, before he receives his patent, shall take a certain oath, and shall deliver a written description of his invention, and of the manner of using the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly con- nected, to maJce and use the same. And in the case of a machine, he shall fully explain the principle, and the several modes^in which he has contemplated the application of that principle, or character by which it may be distinguished from other inventions ; and he is to accompany the whole With drawings and written references, where the nature of the case admits of it ; and a model of his machine, if required by the Secretary of State, is also to be delivered. In the present case, the patent is for an improved hop- per-boy; a particular description of which, and its uses. 408 PATENT CASES. Evans v. Eaton. 7 Wheat. [*441 ] will be found in 3 Wheat. Rep. 466. It is *not pretended that this machine, if made in conformity with the description given by Mr. Evans, could not in fact be distinguished from every thing else before known, when brought into comparison with it, nor that a skilful person, from its description, would not be able to make one like it ; which would seem to satisfy every requisition of the law. But the defendant's counsel say this is not enough. It should not only in its organization and aggregate be different from every thing else, but every respect in which it differs in its construction or operation from other machines, should be minutely stated in the specification ; or, in other words, that other machines heretofore used for similar purposes, should be either described or referred to therein, and the differences between the patented machines and those in former use, be carefully designated. The answer to this is, that the law does not require it — that it is impracticable, and would be of no use. We have seen already that the law prescribes no precise form of specification, which would have been impracticable, and imposes no obligation to describe, in any particular mode, the machine in question. Not a word is said as to showing in what particulars the improvement patented differs < from all other machines for the same purpose then in use. If, on the whole description taken together, the machine of the plaintiff can be distinguished from other machines, when compared with his, the words and the object of the law are satisfied. The law appears to have nothing else in view, in requiring a specification, than the instruction of the [ * 442 ] * public ; that is, to guard them against a violation of the paten-ted improvement, and to enable them, when the letters-patent expire, froni the specification filed, to make a machine similar to the one which had been pa- tented. The only inquiry, therefore, ought to be, whether PATENT CASES. 409 Evans v. Eaton. 7 Wheat. this obvious intention of the legislature has been answered by the particular specification which may be the subject of liti- gation ; and if enough appears, either to prevent a person from encroaching on the right of the patentee, or to enable a skilful person to make a machine which shall not only resem- ble the one patented, but produce the like effect ; more ought not to be required. Whether these ends be attained by a particular description of every part of the improved ma- chine, or by describing in what respect it differs from other machines, can make no difference. The information to the public is as valuable and intelligible, if not more so, in the former case, than in the latter. If it be, taken altogether, an improved machine, for the purpose of producing certain results, and so described that it may be distinguished from other machines, and that others may be made on the same model, it is a literal compliance with all that the law requires. If the different parts of the machine, and their combination, or connection, be accurately described, or intelligibly set forth, why should it not be supported, although no reference be made to other machines dissimilar in their construction, and which, although applied for the same purpose, are inferior in the beneficial results produced by them ? To the ob- jection, that it does not precisely appear in *what [*443] the patent hopper-boy differs from those antece- dently in use, the answer is, and it ought to be conclusive, that the patentee does not mean to abridge or restrain the public from using those or any other machines, so that they differ from the one described by him ; and that any mechanic, on having his specification before him, can avoid an inter- ference with his invention. To confine our examination to the only hopper-boy which was produced on this trial, and which was called Stouffer's hopper-boy, and of which a model has been exhibited to the Court, together with a model of Evans's improved hopper-boy, can a doubt be entertained VOL. I. — p. c. 35 410 PATENT CASES. Evans v. Eaton. 7 "Wheat. for an instant, that they are very dissimilar, and that any mechanic would not, in a moment, point out the distinctions between them, either from the specification or the model — or that he would not be able to make a Stouffer hopper-boy, or the improved hopper-boy of Evans, as he might be directed ; and it! like manner he would be able, when brought together, to discriminate between any other hopper- boy and that of Evans, provided they were different, so that those who were desirous of having a hopper-boy, on an old construction, and of not interfering with the rights of Mr. Evans, would labor under no difficulty whatever? But inas- much as Evans himself has not discriminated or exhibited in his specification all the points of difference between his and other hopper-boys, it is supposed that his patent is for some hopper-boy already in use, as well as for his improvement thereon. The very terms of his specification pre- ,[ * 444 ] eluded every supposition of that kind. If * there were a thousand of those machines, on different constructions, in use before the date of his patent, he leaves to the public the undisturbed enjoyment of them. He med- dles not, nor does he pretend to interfere with any of them, until they make or use one constructed, in all its parts, upon his model. That form, and that form alone, he claims as his invention or improvement. It would not have been difficult, even from British authorities, to show that this specifii^tioa. was sufficient ; but I prefer recurring to our own law as the only proper criterion of the validity or invalidity of the speci- fication in question. My opinion is, that it has all the cer- tainty which is required by law. Such a specification as is required by the Circuit Court, is not only not prescribed by law, but, to me, it appears to be one extremely difficult, if not impracticable. If the inventor of an improved hopper-boy is to discrimi- nate, in his specification, between his improvements and any PATENT CASES. 411 Evans v. Eaton. 7 Wheat. particular hopper-boy, which may be produced on the trial, and is to be non-suited for not having done so, however cor- rect and distinguishing it may be in every other respect, he must do the hi^e as to all other hopper-boys ; and if he must describe any, he must describe all others with which he may be acquainted ; and, after all, some one may be introduced at the trial, of which he had never heard, or which he had never seen ; and inasmuch as he had not stated in what respects it was improved by his machine, although this would imme- diately be seen on inspection, he must not only fail * of recovering damages for a manifest violation of [ * 445 ] his right, but must have his patent declared void by the Court, without a trial by jury, and be deprived of the fruits of a most valuable improvement, not because he was not the bond fide in.ventor — not because he had not de- scribed his improvement with sufficient certainty, according to the Act of Congress — but because something more was required of him, of which he had no means of information. The only hopper-boy which made its appearance on this trial, except the plaintiff's, was that known by the name of the Stouffer hopper-boy ; but non constat, that there may not have been a hundred different kinds in use, and some entirely unknown to the plaintifT. If he could have described them all, which would not have been an easy task, and stated in what, particulars his hopper-boy differed from thera all, his specification would have extended to an immoderate length, and, after all, have been less intelligible and satisfactory than a full description, such as is given here, of ail the parts of which his consisted, and of the manner in which they are put to- gether. There may be cases in which an improvement may be so simple as to describe it at once by reference to the thing or machine improved, as in the case of an improvement of this kind on a common watch. But even in the case of a watch, if the improvement pervades the whole machine, it 412 PATENT CASES. Evans v. Baton. 7 Wheat. would be a compliance with the terms of the law, if the pa- tentee described every part of his improved watch, with its principle, without discriminating particularly in what respect his different wheels, &c., varied from all other [ * 446 ] watches * then in use. Many patents have been obtainea for improvements on stoves, locks, &c.; but has it ever been required of the patentee, in such cases, not only to describe in what manner his stove or lock is con- structed, and the benefits resulting from such construction, but to point out every particular in which they differ from those already in use ? This, to say the least, would be a work of great labor, and of little or no use to the public, who would be at liberty to use a stove or lock of any construction, not interfering with the one described in the specification of the patentee. A few observations will show that such a description as the defendant's counsel contend for, would be of no greater use than the one which Mr. Evans has adopted. After all the pains to discriminate had been taken, the question would still recur, how is the improved hopper-boy to be constructed? and if, from the specification, that could not be ascertained, then, and then only, ought it to be pronounced defective. But if, from the description, the improved hopper-boy could be rnade by a skilful mechanic, then the public is informed, not onlj\of what has been patented, but of what still remains common as before, and if an action be brought for a violation of the patented right, and it should appear that the hopper- boy used is not of such construction, the plaintiff must fail in his suit. It cannot be said, with any justice, that if the dis- crimination be not made, the patent includes not only the improvement, but the old machine on which the [ *447 ] improvement is ingrafted. *The old machine still remains public property ; may be used by every one ; nor can any person be considered as infringing on the PATENT CASES. 413 Evans v. Eaton. 7 Wheat. patent-right, until he adjjs to the machine already in use, the improvements of the patentee, or, in other words, until he makes a machine resembling, in all its parts, the one which is described in the specification. 2d. Bat if the specification be defective in the points which have been mentioned, is the patent therefore necessarily void? This is a' question of vital importance to every patentee. I am aware that it has been said in England, that the pa- tent must not be more extensive than the invention ; there- fore, if the invention consists in an improvement only, and the patent is for the whole machine, it is void. But I am not aware that it has ever been decided there, that when a patent is for an " improved machine," and is taken out only for the ma- chine thus improved, and not for the machine as before used, that such patent is void. But whatever may have been some of the late decisions in that country, I prefer, and think it the better course, to consider this question also under our own act, which, in this respect, is difierent from the English sta- tute, and will therefore afford us more light, and be a safer guide than either that statute or the judgment on it. In what part, then, of our act, may it be asked, is an authority given to the Federal Courts to declare a patent void for a » defective specification, however innocently made, and which in its consequences can injure no one? I state the question in this way, not because I think it necessary to show that if injurious consequences * might flow [ * 448 ] from an imperfect specification, a patent must necessarily be declared void, but because I think it must be admitted that there is no evidence whatever in this cause, to induce any one to believe that Mr. Evans either intended to take, or that he did receive a patent for any thing beyond his invention, which was the hopper-boy in the improved con- dition in which he describes it. To declare a patent for a highly usefgl improvement absolutely void, merely for a de- 35* 414 PATENT CASES. Evans v- Eaton. 7 Wheat. fective specification, if this be one, is^ very high penalty, and should not be lightly inflicted, unless rendered absolutely necessary by law ; the more especially as, without recurring to so harsh a measure, a Court and jury will always be able to confine a remedy on the patent to violations of the im- provement actually secured, and if the patentee should be so foolish or ill-advised as to attempt to bring within its reach the machine in its unimproved state, or any other machine before common, he would do it, not only with no prospect of success, but with the certainty of a defeat, attended with a very heavy expense. As long, therefore, as he could main- tain no action, but for his improvement, it is not perceived why he should be visited with so heavy a denunciation as the forfeiture of his improvement, merely because, by some con- struction of his specification, which might after all be a mis- taken one, he had included in his invention, something of ever so trifling a nature, which was already known. But if such be the law, and such the frail tenure on which these rights are held, however hard it may apply in par- [ * 449 ] ticular cases, it must ha.ve its course. But * I can- not think it our duty, or that we have any right to pronounce a patent void on this account; but that this im- portant office is exclusively confided to a jury. Whether we have this right or not, will now be examined. If such sum- mary authority were intended to have been conferred on the Federal Courts, the Patent Law ought to have been, and would have been, explicit. This is so far from being the case, that iri the Patent Law, a provision, but of a different kind, is inserted on this very subject, which is not the case in the statute of James. It was foreseen, that it must sometimes happen, either from the imperfection of language, or the ignorance of a patentee, that defective specifications would be made ; it was also foreseen, that an imperfect specification might.be made from design, and with a view of deceiving the PATENT CASES. 415 Evans v. Eaton. 7 Wheat. public. We accordingly find it provided by law, that among other matters which the defendant may rely on in an action for infringing a patent-right, is, " that the specification filed does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the de- scribed effect, which concealment, or addition, must fully appear to have been made for the purpose of deceiving the public." If judgment is rendered for the defendant on this ground, the patent is to be declared void* This section applies as well to patents for an improvement on an existing .machine, as for an invention entirely new ; and was intended to protect the patent in either case against an avoidance for an imperfect and innocent specification of the invention patented. If, therefore, the defect which is alleged, * really exist in the specification of the patented [*4o0] improvement, the Court is not authorized, on its mere inspection, to declare it imperfect, and the patent on that account void. Both questions are clearly questions of fact, and are so treated by the legislature. The party has a right to insist with the jury, not only that his specification is perfect, but that if it be otherwise, no deception was intended on the public ; and on either ground, they may find a verdict • in his favor. So if, on the allegation, that the thing secured by patent was not originally discovered by the patentee, a verdict passes against the plaintiff, he loses his patent. In like manner, in this case, if it had appeared that the " im- proyed hopper-boy," which was the thirfg secured by patent, had not been originally discovered by Mr. Evans, and a ver- dict had passed against him on that ground, there would have been an end of his patent. From the tenth section, also, an argument may be drawn against the right of a Court to de- clare a patent void on mere inspection, for redundancy or deficiency in a specification. This section provides a mode of proceeding before the District Court, where there may be 416 PATENT CASES. Evans v. Eaton. 7 Wheat. reason to believe a patent was obtained surreptitiously, or upon false suggestions ; and if, on such proceeding, it shall appear that the pateiitee was not the frue inuenf or, judgment shall be rendered by such Court for a repeal of the patent. This is the only case*in which a power is conferred on a Court, to vacate a patent, without the intervention of a jury. If a proceeding of this kind had been instituted before the proper tribunal against Mr. Evans, the Court would [* 451]* have examined witnesses, and have formed its opinion on tbeir testimony ; and it is not clear that even in this case a jury might not have been called in. This section has been taken notice of, to show that it could never have been the intention of the legislature, that a patent should be avoided, on any account whatever, on the opinion of the Court alone, without some examination other than that of the specification, whatever might be its excess, or poverty of description. If it had been intended to vest so important a power in the Court, it would not have been left to mere implicalionj but would have been conferred in terms admit- ting of no doubt. My opinion, therefore, on this part of the charge is, that the Court erred in taking upon itself to pronounce the patent void, even if the specification had been defective, or imperfect, in not particularly describing what the improvements of the patentee were ; this being a power expressly delegated to a jury, who, under all the circum- stances of the case, are to decide both questions of fact ; that is, whether the specification be deficient, or superfluous, and the intention with which it was made so. I repeat once more that, whatever may have been the decisions in England, which are not admitted to be contrary to the view which has here been taken of the subject, they arfe not of authority, and are upon an act so very different in its structure from our own, as to afford little or no useful information upon the subject. One great and important difference in the two laws is, that PATENT CASES. 417 Evans v. Hettich. 7 Wheat. the statute of James I. has not prescribed a mode in which a patent for a vicious specification is to be set aside. *The patent is granted on condition that a speci- [*452] fication be enrolled. I give no opinion on the questions which arise from the admission of certain witnesses, who were Supposed to be dis- qualified, on the score of being interested ; for if the patent for the hopper-boy be void, for a defect in its specification, and that question is not to be referred to the jury, and such I understand to be the opinion of four of the judges, it is very unimportant whether any error was committed in this respect by the Court before which the cause was tried ; as a verdict must ever be rendered against the Representatives of the patentee, on this ground, whatever may be the state of the evidence. Mr. Justice Johnson, and Mr. Justice Duvall, also dissented. Judgment affirmed with costs. Evans v. Hettich. [7 Wheat. 453.'] / It is no objection to the competency of a witness in a patent cause that he is sued in another action, for an infringement of the same patent. The 6th section of the Patent Act of 1793, k. ,1.56, which requires a notice of the special matter to be given in evidence by the defendant under the gene- ral issue, does not include all the matters of defence which the defendant may be legally entitled to make. And where the witness was asked, whether the machine used by the defendant was like the model exhibited in Court of the plaintiff's patented machine, held, that no notice was necessary to authorize the inquiry. Where a deposition has once been read in evidence withoi^t opposition, it can- not be afterwards objected to as being irregularly taken. 418 PATENT CASES. Evans v. Hettich. 7 Wheat. It is no objection to the competency or credibility of a witness, that he is sub- ject to fits of derangement, if he is sane at the time of giving his testimony. Error to the Circuit Court of Pennsylvania. This was an action for the infringement of the same patent as in the preceding case of Evans v. Eaton, and was argued by the same counsel. The points involved will be found to be fully discussed in the argument of that case, to which the learned reader is referred. The following is the charge deli- vered to the jury in the Court below, which it is thought necessary here to insert. After stating the evidence on both sides, Mr. Justice Washington proceeded as follows : The facts intended to be proved by the evidence given in this cause, may be arranged under the following heads : [*454] *(!•) Such as respect the value of the plain- tiff's hopper-boy. (2.) The time of its discovery. (3.) The kind of machine used by the defendant. (4.) The time of its discovery and use. 1st. As to the first, the Court has no observations to make, except that if you should find a verdict for the plaintiff, you will give the actual damages which the plaintifT has sus- tained, by reason of the defendant's use of his invention, which the Court will treble. 2d. The evidence applicable to this head, if believed by the jury, proves, that, in 1783, Oliver Evans commenced his investigation of the subject of an improvement in the manufac- tory of flour ; and in the summer of the same year, he de- clared that he had accomplished it. In 1784, he made a model of his hopper-boy, which had no cords, weight, or pul- ley ; and consequently the lower arm was, for the sake of the experiment, turned by the hand. In 1785, it was in opera- tion in a mill, in as perfect a state as it now is. PATENT CASES. 419 Evans v. Hettich. 7 Wheat. 3d. If the witness who was called to prove the kind of machine used by the defendant is believed by the jjjry, it con- sists of an upright square shaft, with a cog that turns it, and which is moved by the water power of the mill. This shaft is inserted into a square mortice, in an arm or board somewhat resembling an S, with strips of wood fixed on its under side, and so arranged as to turn the meal below it, cool, dry, and conduct it to the bolting chest. This arm slips, with ease, up and down the shaft, and must be raised by hand, and kept suspended * until the meal is put [ *455 ] under it. It has no upper arm, pulley, weight, or leading lines ; and the strips below the arm are like the rake, as it is called, in the plaintiff's hopper-boy. This ma- chine has acquired the name of the S, or the Stouffer hop- per-boy. 4lh. The witnesses examined to prove the originality, and use of the defendant's hopper-boy, if believed by the jury, date it as early as about the year 1 765 ; and its erection and actual use in mills, in 1775 and 1778 ; and progressively to later periods. Objections have been made, on both sides, to the credit of some of the witnesses who have been examined, not on the ground of want of veracity, or of character, but of interest, short of that which can afTect their competency. These objections have been pressed sq far beyond their just limits, as to require from the Court an explanation of their real value. Where the evidence of witnesses opposed by other witnesses is relied upon, by either side, to prove a par- ticular fact, the jury must necessarily weigh their credit, in order to satisfy their own minds on which side the truth is most likely to be ; and in making this inquiry, every circum- stance which can affect the veracity of the witnesses, whether it concerns their moral character, or whether it arises from some interest which they may have in the question, or from feelings favorable to one or the other of the parties, should be 420 PATENT CASES. Evans v. Hettich. 7 Wheat. taken into the calculation. But if the fact in controversy may exist, without a violation of probability, and the proof is by witnesses exfclusively on that side, there is nothing to put into the opposite scale, against which to weigh the credit [ * 456 ] of those witnesses ; * and if the objection to their credit'be worth any thing, it must be to the full extent of rejecting their testimony altogether, or else it is worth nothing. The jury cannot compromise the matter, or hall between two opinions ; — they must decide that the fact is so, or is not so ; and if the latter be cause of objection to the credit of the witnesses, it would amount to the confound- ing of the questions of competency, and credibility ; for the effect would be the same, whether the Court refused to permit the witnesses to testify on the ground of incom- petency, or the jury should reject their testimony, when given, on that of want of credibility. I have thought it pro- per to submit these general observations to the considera- tion of the jury! We come now to the question of law, which arises out of these facts, which is, What are the things in which the plaintiff alleges, and has proved, he has an exclusive property, which he asserts the defendant has used, and which the defendant denies ? The first claim is for an improved hopper-boy, which the plain- tiff insists is granted by his patent, which has received the sanc- tion of the Supreme Court ; and which the defendant acknow- ledges. This being, then, conceded ground, the Court will proceed to examine it ; and the inquiry will be, whether the plaintiff is entitled to a verdict for an infringement of his pa- tent for his improved hopper-boy. The objection relied upon by the defendant is, that the plaintiff has not set forth in his specification what are the improvements of which [ * 457 ] he * claims to be the inventor, so that a person skilled in the art might comprehend distinctly in PATENT CASES. 421 Evans v. Hettich. 7 Wheat. what they consist. This objection, in point of fact, is fully supported. Neither the specification, nor any other document connected with the patent, states, or even alludes to, any specific improvement in the hopper-boy. Taking this as true, how stands the law ? The 3d section of the Patent Law declares, that " before an inventor can receive a patent, he shall deliver a written description of his invention, in swcYi full, dlear, and exact terms, as to distinguish the same from all other things before known, and to enable a person skilled in the art, &c., of which it is a branch, &c., to make and use the same." What, then, is the plaintiff's invention, as asserted by his counsel, conceded by the defendant, andsanctioned by the Supreme Court in the case of Evans v. Eaton ? The answer is^ an improvement of the hopper-boy, or an improved hop- per-boy, which that Court has declared to be substantially the same. If this be so, then the above section of the law has declared, that he must specify this improvement in full, cledr, and exact terms. If he has not done so, he has no valid patent on whic^ he can recover. The English decisions correspond with the injunctions of our law. Boulter v. Bull, Boville v. Moor, M'Farlane v. Price, Harmen v. Playne.^ The American decisions, so far as we have any reports of them, maintain the same doctrine. Mr. Justice Story, in the case of Lovel v. Lewis, lays it down, *"that if the patent be for an improve- [*458] ment in an existing machine, the patentee must, in his specification, distinguish the new from the old, and con- fine his patent to such parts only as are new ; for if both are mixed together, and a patent taken for the whole, it is void." What is the reason for all this ? 1 See 3 Wheat. Eep. App. 21, ante, 288. VOL. I. — P. c. 36 422 PATENT CASES. Evans v. Hettich. 7 Wheat. In the first place, it is to enable the public to enjoy the full benefit of the discovery, when the patentee's monopoly is expired, by having it so described on record, that any person skilled in the art, of which the invention is a branch, may be able to construct it. The next reason is, to put every citizen upon his guard, 4hat he may not, through ignorance, violate the law, by infringing the rights of the patentee, and subject- ing himself to the consequences of litigation. The inventor of the original machine, if he has obtained a patent for it, and all persons claiming under him, may lawfully enjoy all the benefits of that discovery, notwithstanding the improvement made upOn it by a subsequent discoverer. If he has not chosen to ask for a monopoly, but abandoned it to the public, then it becomes public property, and any person has a right to use it. The inventor of an improvement may also obtain a patent for his discovery, which cannot legally be invaded by the inventor of the original machine, or by any other per- son. These rights of each are secured by law, and there is no incompatibility between them. But if a man, wishing to use the original discovery, and honestly disposed to avoid an infraction of the improver's right, is unable to discover, from any certain and known standard, when the original [ * 459 ] invention ends, and * the improvement commences, how is it possible for him to exercise his own ac- knowledged right, freed from the danger of invading that of another ? And to what acts of oppression might not this lead ? Might not the patentee of this mysterious improvement obtain from the ignorant, the timid, and even the prudent members of society, who wish to use only the original discovery, the price he chooses to ask for a license to use his improvement, and in this way compel them to purchase it, rather than incur expenses and inconveniences far greater than the sum de- manded ? If this may happen, then the improver enjoys, in a degree, the benefit of a discoverer, both of the original PATENT CASES. 423 Brans v. Hettich. 7 Wheat. machine, and also of the improvement. In short, the patentee of the improvement may, to a certain extent, keep men at arm's length as to the use of the original invention, or make them p'ay him for it, in derogation of the rights of the inventor of the original machine. If the law, as applicable to cases in general, be rightly laid down, the next inquiry is, is the present an excepted case ? The plaintiff's counsel have not directly asserted it to be so ; but they have referred, with some emphasis, to what is said by the Supreme Court, in the case of Evans v. Eaton.^ The expressions are, " In all cases where the plaintiff's claim is for an improvement on a ma- chine, it will be incumbent on him to show the extent of his improvement, so that a person understanding the subject, may comprehend distinctly in what it consists." This decision does not state in what way the * extent of the plaintiff's improvement is to be [*460] proved ; nor did the case require that the Supreme Court should be more explicit. The obvious conclusion is, that the Court left that matter undecided, and meant that the extent of the plaintiff's improvement should be shown according to rules of law. A contrary construction would be most unfair and unwarranted. Is it possible to believe, that if the Supreme Court intended to decide contrary to the provisions of the 3d section of the Patent Law, and of the English and American decisions, that this was a case without the influence of that law, and those decisions, that such intention would have been expressed in such general terms ? This cannot be admitted ; neither can the private Act for the relief of Oliver Evans warrant the argument, that this case is freed from the restrictions contained in the 3d section of the Patent Law ; because, 1 3 Wheat. Rep. 518, ante, 285. 424 PATENT CASES. Erans v. Hettich. 7 Wheat. except as to the extent of the grant, it refers to, and the Su- preme Court in the before-mentioned case, considers it as within, the provisions of that law. Is it likely that the Supreme Court could have meant that the plaintiff might cure^lhe defects of his specification by prov- ing to the jury in what his improvement consisted ? If so, then, as to the present defendant, such an explanation would be unavailing to save him from the consequences of an error, against which the sagacity of man could not have guarded' him. He has sinned already, if he has invaded the plaintiff's right, and it is too late to convince him of his error, if he must be a victim of it, for the want of that light, which is now shed , upon the act long after his supposed transgression. [ * 461 ] But of * what avail would that explanation be, after the expiration of the plaintiff's monopoly? The parol evidence given in a court of justice being seldom re- collected with accuracy, it affords the most unsafe notice of •facts, particularly when they respect matters of art, that can well be supposed. What man, who wishes not to in- vade the plaintiff's patent, would venture to erect a hopper- boy merely upon the information which he could gather from this trial ? He could obtain none upon which he could safely rely ; nor could any artist, after the expiration of the plaintiff's right, be enabled from such a source-, to know how to construct the improved hopper-boy. But even if the ex- tent of the improvement could be proved in th,is way; the plaintiff has not attempted to prove it, and what is more, his counsel, though repeatedly called upon to point it out, have not been able to do it. Can the jury, without evidence, and without the aid of the plaintiff, or his counsel, say in what those improvements con- sist ? If they had never seen another hopper-boy, supposed to be the original, this would be impossible. If, having seen the Stouffer hopper-boy, they can do by so comparing with it the plaintiff's improved hopper-boy, then the consequence PATENT CASES. 425 Evans v. Hettich. 7 Wheat. seems almost to be inevitable, that the Stouffer hopper-boy is the original one ; the point,, which under the next head, is denied by the plaintiff. But if the specification had stated in what the plaintiff's improvement consisted, still he is not entitled to a verdict for a violation of his patent, unless he has proved, to your satisfaction, that the defendant has infringed it. * Upon the whole, then, this patent, so far as [ * 462 ] it is for an improvement, cannot be supported ; and as to any claim founded on this right, the plaintiff is not enti- tled to your verdict, 2. The plaintiff contends that he is the original inventor, not only of the improved hopper-boy, but of the whole ma- chine ; that his patent grants him the exclusive right for both ; and that this claim has received the sanction of the Supreme Court. Whether, in point of fact, he is the original inventor of the hopper-boy, will be attended to hereafter. Neither shall I stop to inquire whether the plaintiff's patent grants him the right, because if the Supreme Court has sanctioned the claim, that is law to this Court. The part of the decision of that Court, relied upon by the plaintiff's counsel, is found in 3 Wheat. Rep. 517, where the Chief Justice says, "The opi- nion of the Court, then, is, that Oliver Evans may claim under his patent the exclusive use of his inventions and improve- ments in the art of manufacturing flour and meal, and in the several machines which he has invented, and in his improve- ments on machines previously discovered. It would seem almost impossible to misunderstand this posi- tive declaration of the Court. It appears to be the result of the previous reasoning. It states that the plaintiff may claim, (1.) The exclusive use of improvements, and inventions^ in the art of manufacturing flour. (2.) In the several machines which he has invented. (3.) In his improvements on ma- chines previously discovered. As to the 1st, there is no dispute 36* 426 PATENT CASES. Evans v, Hettich. 7 Wheat. [ * 463 ] * in the cause. The 3d has been already disposed of, and the 2d will now be examined. It is con- tended by the defendant's counsel, that this is not the cor- rect construction of the above sentence of the Court, because it is inconsistent with the pretensions of the plaintiff's coun- sel, and with] the argument of the Chief Justice, through- out the opinion, which led to , the above conclusion. This supposed inconsistency may, in the opinion of this Court, be explained by the following observations : The exceptions taken to the charge of this Court, in the case of Evans v. Eaton, wfere, 1st. that Oliver Evans's patent was qnly for the combined effect of all the machines men- tioned in his patent, and, 2d. in directiI^g the jury to find for the defendant, if they should be of opinion that the hopper- boy was in use prior to the improvement alleged to be made by Oliver Evans. These were the only questions presented to the view of the Supreme Court, upon which it was deemed proper by that Court to give an opinion. The reasoning of the Chief Justice, therefore, is intended to prove, and correct these errors in the chstrge, by showing that Oliver Evans was enti- tled, by his patent, and the accompanying documents, not only to the general combination of the different machines, but to an improvement on the hopper-boy, one of the ma- chines used in combination. If he had a right to an improve- ment on the hopper-boy, then this Court was clearly wrong in directing the jury to find a verdict for the defendant, if they should be of opinion that the hopper-boy was in use prior to the plaintiff's improvement ; because it was un- [ * 464 ] important who was * the original discoverer of the hopper-boy, provided the plaintiff had a patent for an improved hopper-boy, and the defendant used that im- provement, and the charge precluded that inquiry. But whilst the Chief Justice aims to prove that Oliver Evans was entitled to this double claim, he does not exclude any other PATENT CASES. 527 Evans v. Hettich. 7 Wheat. claim. There is an expression relied upon by the defendant's counsel, as having this appearance ; but it is more likely that the word relied on is a typographical error, than that the Court should both deny and affirm the plaintiff's right, as an original inventor of the hopper-boy. When the Court came to state, definitively, what were the plaintiff's claims under this patent, the whole are distinctly stated. The Act for the relief of Oliver Evans authorizes a grant to him of his improve- ment, in the art of manufacturing flour, and in the several machines which he has invented, and in his improvements, &c. The' Court says, that " the application is for a patent coextensive with the aet," &c.' If, then, in this enumeration of the plaintiff's rights under the patent, those to the machines had been omitted, it might have been supposed that it was not recognized by that Court, and it is consequently introduced, in order to prevent a con- clusion against its validity, although it had not been brought into view in the previous argument ; because a matter not in dispute. This course of reasoning is, we think, strongly for- tified, by what the Court says, p. 518. " In all cases where his claim is for an improvement," &c. Now, if his claim was confined to an improvement, * produced [ * 465 ] by the combined operation of all the machines, and if an improvement in the separate machines, why should the Court have stated, hypothetically, that which was to be proved in case the plaintiff claims for an improvement ? The sen- tence following immediately that which has been relied on by the defendant's counsel seems to explain it, and to fortify the construction which we have given to it. Upon the whole, we are of opinion, that the question, who is the original in- ventor of the hopper-boy ? is left open by the Supreme Court, 1 3 Wheat. Kep. 508, ante, 277. 428 PATENT CASES. Evans v. Hettieh. 7 Wheat. . and is now to be decided by the jury. If, then, the jury should be of opinion upon the evidence, that the hopper-boy which the defendant uses, was invented, and was in use prior to the discovery of Oliver Evans, then your verdict ought to be for the defendant. But to this construction there are objections made, which it is proper to notice. 1. It is contended that the judgment of the Supreme Court in Evans v. Eaton,^ where it is said that there is error in the proceedings below, in this, that in the charge the opinion is expressed, " that Oliver Evans was not entitled to recover if the hopper-boy in his declaration mentioned had been in use previous to his alleged discovery,"- entitles the plaintiff to a verdict, although the jury should be of opinion that he is not the original inventor of the hopper-boy. That the Court did not mean this is most obvious, from what is said in page 517, that Oliver Evans may claim the exclusive use in the several machines which he has invented. [ * 466 ] Could the Supreme Court * intend to say, immedi- ately after, that he is entitled to a verdict for a machine which he has not invented ? Can it be supposed that the Court meant to ride over the 3d section of the Patent Law, and set up a different rule, to govern this case, without having stated the reasons for so extraordinary a distinction ? This is altogether inadmissible. It is also- worthy of remark, that the words, " in his declaration mentioned," in the judg- ment of the Supreme Court, are not in the charge of the Cir- cuit Court, as stated by the Chief Justice ; and it is the in- sertion of those words in the judgment which produces all the difficulty. Leave them out, and then the judgment is consistent with the whole reasoning of the Chief Justice, which condemned the charge of the Circuit Court, because it 1 3 Wheat. Kep. 5:9, ante, 286. I PATENT CASES. 429 Evans v. Hettich. 7 Wheat. precluded Oliver Evans from obtaining a verdict for his im- provement, if he was not the original inventor of the elemen- tary parts of this machine. Retain them, and it follows, that if Oliver Evans was proved not to be the inventor of the hop- per-boy in his declaration mentioned, still the defendant was not entitled to a verdict. This would be in such direct oppo- sition to the 6th section of the Patent Law, that we cannot suppose this was the meaning of the Supreme Court. 2. The next objection to the construction is, that the Act of the Legislature of Pennsylvania, of 1787, conveyed to Oliver Evans the original hopper-boy, and consequently the existence and use of the,Stouffer hopper-boy, at a period prior to the plaintiff's discovery, cannot now be urged to invalidate his patent. It is by no means to be admitted that the act operates to make such a * transfer. But if it [ * 467 ] did, still the plaintiff cannot recover, if he appears not to be the first or original discoverer of the hopper-boy. His claim is not derivative either from the State or from an individual. His suit is founded on his patent, and unless he was himself the original inventor of the hopper-boy, he cannot recover. Another objection stated by the plaintiff's counsel is, that the StoufTer hopper-boy, although the jury should believe it was in use in many mills before the plaintiff's discovery, had fallen into disuse, and therefore cannot be urged to invalidate the plaintiff's right of recovery. The answer to this is, that whether it fell into disuse or not, if it was used before the plaintiff's discovery, the plaintiff could not obtain a patent for it,»so as to exclude the defendant from using it, if he chose to do so. 4. The last objection is, that the use of the StoufTer ma- chine cannot affect the plaintiff's patent, unless it was public. Whether that hopper-boy was in public use or not, the jury will judge from the evidence. It was erected and used in 430 PATENT GASES. Brans v. Hettich. 7 Wheat. four or five mills, if the defendant's witnesses are believed. But this argument has no foundation in the Act of Congress, which does not speak of public use. It is material whether the patentee had notice of the prior invention or not. If it was in actual use in any part of the world, however unlikely or impossible that the fact could come to the knowledge of the patentee, his patent for the same machine cannot be sup- ported. ,[ * 468 ] * A verdict was rendered for the defendant, and exceptions being taken to the above charge, the cause was brought by a writ of error before this Court. Mr. Justice Story delivered the opinion of the Court. This case is an action for an infringement of the same pa- tent as in Evans v. Eaton ; ^ and many of the remarks in that case are applicable to this ; and therefore the opinion now delivered will refer to such points only as are not completely disposed of by the opinion already delivered. The evidence in this case does not establish that the defendant used the plaintiff's improved hopper-boy ; but the hopper-boy used by the defendant is asserted to be Stouffer's hopper-boy. At the new trial, a Mr. Aby was offered as a witness by th,e de- fendant, to prove the nature and character of the hopper-boy used by the defendant ; the plaintiff objected to his testimony, as incompetent, because he was sued by the plaintiff for an infringement of his patent-right, under circumstances similar to those alleged in proof against the defendant. The Court overruled the objection ; and the witness was then swprn on the voir dire, as to his interest in the suit ; but upon a full examination, it did not appear that he was really interested ; 1 Ante, p. 336. PATENT CASES. 431 Evans v. Hettich. 7 Wheat. and the Court therefore permitted him to be sworn in chief. The plaintiff took an exception to this decision of the Court. The objection to the competency of Aby, so far as he has an interest from being sued, cannot * be dis- [ * 469 ] tinguished, in principle, from that already overruled in the case of Evans v. Eaton. There is this additional cir- cumstance in this case, that Aby was not called as a general witness, but to establish a single fact, namely, the nature of the hopper-boy usecP by the defendant. The other objection upon his answers on the voir dire, is disposed of by the sin- gle remfeirk, that he purged himself of any real interest in the event of the suit. A question was asked of this witness, on his examination in chief, whether the hopper-boy in the de- fendant's mill was like the model exhibited in Court of the plaintiff's patented hopper-boy ; the plaintiff objected to the question, because such testimony could not be given in this case, for want of notice thereof. But the objection was overruled by the Court ; and, in our judgment, with perfect correctness. No notice was necessary to authorize the inquiry ; and if the plaintiff meant to rely on the notice required by the sixth section of the Patent Act, in certain cases, it is only necessary to say, that this was not within the provision of that class of cases. The question was per- fectly proper under the general issue. Similar objections were taken to other witnesses; but it is unnecessary to remark on them. An inquiry was proposed by the plaintiff, to one of the witnesses, whether one Peter Stouffer had paid the plaintiff for a license for his mill ; but the Court refused to allow the question to be asked ; and we see no reason why it should have been allowed, for it merely referred to an act among strano-ers, which ought not^to prejudice the defend- ant. A * similar question was proposed to be asked [ * 470 ] of the same witness, whether the executors of Jacob 432 PATENT CASES. Evans v. Hettich. 7 Wheat. Stouffer had paid the plaintiff for a license for the mill of Jacob ; the Court overruled the question ; and for the same reason, it was rightly overruled. The deposition of one John Shetter was read in evidence by the defendant, without opposition, and afterwards the plaintiff moved to have the same rejected, because not taken according to the rules of the Court ; but the Court refused to reject it; and in our judgment rightly, because it having been once introduced with the acquiescence and consent of the plaintiff, he could not afterwards avail himself of the objection. The plaintiff then proposed to ask a question of a witness, whether Daniel Stouffer was subject to fits of derangement, and whether the witness had said so ; but the Court over- ruled the question. It does not appear distinctly in the re- cord, that Daniel Stouffer was a witness in the cause ; but if he was so, the question was properly overruled, because a person being subject to fits of derangement, is no objection either to his competency or credibility, if he is sane at the time of giving his testimony. The next objection of the plaintiff's counsel, is to the charge of the Court, in summing up the cause to the jury ; but the points on which that charge materially depends, have been so fully discussed in the opinion just delivered in Evans v. Eaton, that it is unnecessary to examine them at large. Upon the whole, it is the opinion of the majority of the Court, that the judgment ought to be affirmed with costs. PATENT CASES. 433 LangdoQ v. De Groot et al. 1 Faine. ■ Lahgdon V, De Gkoot et al. [1 Paine, 203.] An invention or improTement for which a patent has heen obtained, must be useful within the meaning of the Patent Law, or the patent is void. Whether the usefulness of an invention be matter of fact to be left to the jury, or whether the Court are to decide it as matter of law ? Quiere. But, it seems, that if on the plaintiff 's own showing, the invention appears to be useless, and an imposition on the public, the Court should so direct the jniy- An invention of an ornamental mode of putting up thread, which gave it no additional value, but merely made it sell more readily at retail, and for a larger price, was held not useful, within the meaning of the Patent Law. Specification held bad for uncertainty. This was a motion to set aside the verdict in this cause for misdirection of the Court. The declaration was for a breach of a patent-right. S^ :T4.,appeared at the trial, that the plaintiff had obtained let- ters-parent from the President of the United States, for " an improvement in preparing and packing cotton and other thread^' and floss cotton for retailing." The spe- cification was as * follows : — " This improvement [ * 204 ] con^Sts in folding the thread and floss cotton into ^lleins or hanks of a convenient quantity for retailing, with a sealed wrapper round the same, and a label containing the number and description of the article." The Court charged the jury, that this invention was not a useful one within the meaning of the Patent Law, and that the plaintifi" was not, of course, entitled to recover any da- mages for a breach of the patent he had obtained for it. VOL. I. — p. 0. 37 434 PATENT CASES. Langdon t. De Groot et al. 1 Faine. R. Sedgwick for the plaintiff. TV. Slosson for the defendants. Livingston, J. On the trial of this cause the jury gave a verdict for th6 defendants. A motion is now made to set aside, for misdirection of the Court, in telling the jury that the plain- tiff's invention was not a useful one, within the meaning of the Patent Law. This opinion is not only considered errone- ous, but it is said, that the question of utility should have been left to the jury. The opinion of the Court, on the point of utility, has un- dergone no change. To what extent an invention must be useful, to render it the subject of a patent, will depend on the particular circumstances of each case, and for which no gene- ral rule can be given ; but all will agree, that it must in some small measure at least be beneficial to the community ; and when it becomes a matter of inquiry whether its benefits are of sufficient consequence to be protected by the arm of go- vernment, it may be proper to leave such question with the jury. But when the objection raised is, that the invention, on the plaintiff's own showing, is not only of no use, but an imposi- tion on the public, it may be doubted whether a Court trans- cends its prescribed limits, in taking upon itself, as was done here, a decision of it. If a patent were obtained, [ * 205 ] for a new * discovery in the composition of drugs, and it should appear, by the plaintiff's own testi- mony, that of twenty patients, to whom the medicine had been administered, not one had survived, would a Court hesi- tate in telling a jury that the plaintiff had no right to recover? and if they disregarded such direction, would it find any diffi- culty in awarding a new trial ? Now, although the present invention endangered neither the health nor the lives of others. PATENT CASES. 435 Langdon v. De Groot et al. 1 Faine. it was quite palpable, and that without the examination of any witnesses by the defendants, that it was only a mean of obtaining a much larger sum for an article of very exten- sive use, than it could be purchased for at any other stores in the city. The invention is for folding the thread and floss cotton in a manner a little different from the ordinary mode, in which form the cotton will sell quicker, and higher, by 25 per cent, than the same cotton put up in the common way. The cot- ton thus folded is imported from the factory of Holt, in Eng- land. The article itself undergoes no change ; and the whole of the improvement — for it is a patent for an improvement — consists in putting up skeins of it, perhaps of the same size in' which they are imported, decorated with a label and wrap- per; thus rendering their appearance somewhat more attract- ive, and inducing the unwary, not only to give it a prefer- ence to other cotton of the same fabric, quality, and texture, but to pay an extravagant premium for it. When stripped of these appendages, which must be done before it is used, the cotton is no better in anyone respect than that of Holt's retailed in the way put up by him. All this came out on the plaintiff's own testimony. Now, that such a contrivance — for with what propriety can it be termed an useful art within the meaning of the constitu- tion ? — may be beneficial to a patentee, if he can exclude from the market all other retailers of the very same arti- cle, will not * be denied ; and if to protect the inte- [ * 206 ] rest of a patentee, however frivolous, useless, or deceptive his invention may be, were the sole object of the law, it must be admitted that the plaintiff! has mtfde out a satisfactory title to his patent. But if the utility of an invention is also to be tested by the advantages which the public are to derive from it, it is not perceived how this part of his title is in any way whatever 436 .PATENT CASES. Langdon v. De Groot et a1. 1 Paine. established. Is the cotton manufactured by himself which is put up in this way ? The very label declares it to be that of another man. Is any thing done to alter its texture, or to render it better or more portable, or more convenient for use ? Nothing of this kind is pretended. Does the consumer get it for less than 4n its imported condition ? The only ground on which the expectation of a recovery is built is, that he pays an enormous additional price, for which he literally receives no consideration. It was said that many ornamental things are bought, of no intrinsic value, to gratify the whim, taste, or extravagance of a purchaser, and that for many of these articles patents are obtained. This may be so. But in such cases there is no deception, no false appearances ; and the article is bought to be used with all its decorations and ornaments, which may have been the principal inducement to the purchase, and which will last as long as the article itself. In this the sight or pride of the party is gratified. But here it is the cotton alone which it is intended to buy, and the little label and wrapper append- ed to it, and which constitute the whole of the improvement, however showy, are stripped off and thrown away before it can be used. And when that is done, which may be at the very moment of its purchase, the cotton is no better, what- ever the buyer at the time may think, than when it first left the factory. When Congress shall pass a law, if they have the [ * 207 ] right so * to do, to encourage discoveries by which an article, without any amelioration of it, may be put off for a great deal niore than it is worth, and is actually sell- ing for, it will be time enough for Courts to extend their pro- tection to such inventions — among which this may be very fairly classed. ' But a complaint is made that this question should have been submitted to the jury. It may be that the Court expressed PATENT CASES. . 437 Langdon v. De Groot et al. 1 Paine. itself in terms too strong, and should have let the jury pass on this point on the evidence before them ; and were this the only difficulty in the cause, I should not object to giving the plaintiffs an opportunity of obtaining such an opinion, by awarding a new trial ; being never very desirous of treating mere questions of fact, if this be of that description, as ques- tions of law. , But an objection is made to the specification, which, in the judgment of the Court, is conclusive. It is said, and with truth, that it does not appear with suffi- cient precision, in what respects the method of putting up cotton in the plaintiff's way differs from that followed by Holt. It is certain that in two of the particulars in which the improvement is alleged to consist, Holt had anticipated him ; that is, in folding the cotton into skeins of a convenient quantity for retailing, and in putting a label on them. The only remaining direction in the specification is, that these skeins must be furnished with a sealed wrapper. Now, admitting this wrapper to be of the plaintiff's invention, and an improvement on Holt's mode of preparing his cotton for retailing, yet as he has not distinguished between the methods already in use and his own, but has taken a patent for all of them, it is void, in conformity with the decision in Evans and Eaton. If the patent in its present form be good, he may sue any one who retails cotton put up in the form previously practised * by Holt ; nor would so trifling a devia- [ * 20S ] tion from the specification, as the omission of a wrapper, furnish any defence to such an action, any more than changing the form or proportions of a machine would be regarded a discovery. The rule, to show cause why there should not be a new trial is discharged, and judgment must be entered on the verdict. 37* 438 PATENT CASES. Ex parte Wood et al. 9 Wheat. Ex parte Wood & Bkundage. [9 Wheat. 603-] Under the 10th section of the Patent Act of the 21st of February, 1793, eh. 11, upon granting a rule, by the judge of the District Court, upon the patentee, to show cause -whyprocess should not issue to repeal the patent, the patmt is not repealed, de faxto, by making the rule absolute ; but the process to be awarded is in the nature of a scire fadas at common law, to the patentee to show cause why the patent should not be repealed, with costs of suit; and upon the return of suchprocess, duly served, the judge is to proceed to stay the cause, upon the pleadings filed by the parties, and the issue joined thereon. If the issue be an issue of fact, the trial thereof is to be by a jury ; if an issue of law, by the Court, as in other cases. In such a case, a record is to be made of the proceedings, antecedent to the rule to show cause why process should not issue to repeal the patent, and upon which the rule is founded This cause was argued by Mr. Haines,^ in support of the rule, and by Mr. Emmett,^ against it. Mr. Justice Stokt delivered the opinion of the Court. TJie District Judge of the southern district of New York, under the 10th section of the Patent Act, of the 21st of February, 1793, chapter 1 J, granted a rule upon [ * 604 ] Charles Wood and Gilbert * Brundage, at the in- stance and complaint of Jethro Wood, to show cause why process should not issue against them, to repeal a patent granted to them for a certain invention, in due form 1 He cited Stearns v. Barrett, 1 Mason's Rep. 153, ante 97:8 Mod 28 ■ 1 Salk. 144. ' = He cited 1 U. S. Law Journal, 88 \ Ex parte O'Rielly, 1 Ves. jun. 112 ; Ex parte Pox, 1 Ves. & Beames, 67 ; Jefferson's Case, 2 Saind. 15. PATENT CASES. 439 Ex parte Wood et al. 9 Wheat. of law ; and upon hearing the parties, no sufficient cause being, in his judgment, shown to the contrary, he, on the 2d day of July, 1823, passed an order, that the said rule be made absolute, and that the said patent be repealed ; and that process issue to repeal the said patent, and for the costs of the complainant. The patentees, by their counsel, moved the Court to direct a record to be made of the whole pro- ceedings, and that process, in the nature of a scire facias, should be issued, to try the validity of the patent. The Court denied the motion," upon the ground that these were summary proceedings, and that the patent was repealed de fapto, by making the rule absolute ; and that the process to be issued, was not in the nature of a scire facias, to try the validity of the patent, but merely process repealing the patent. A motion was made, on a former day of this term, in be- half of the patentees, for a rule upon the district judge, to show cause why a mandamus should not issue from this Court, directing him to make a record of the proceedings in the cause, and to issue a scire facias, for the purpose of try- ing the validity of the patent. The rule having been granted, and due service had, the case has since been argued by counsel, for and against the rule ; and the opinion of this Court is now to be delivered. Two objections have been urged at the bar, * against the making this rule absolute. The first [ * 605 ] is, that these proceedings, being summary, are not properly matters of record. The second, that this is not a case in which, by law, a scire facias, or process in the nature of a scire facias, can be awarded, to try the validity of the patent. Both of these objections are founded upon the provisions of the 10th section of the Patent Act, and must be decided by a careful examination of those provisions. The words 440 PATENT CASES. Ex parte Wood et al. 9 Wheat. are, " that upon oath or affirmation being made, before the judge of the District Court, where the patentee, his execu- tors, &c., reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said Court within three years after issuing the said patent, but not afterwards^ it shall and may be lawful for the judge of the said District Court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee, or his executor, &c., show cause why process should not issue against him, to repeal such patent ; and if sufficient cause shall not be shown to the con- trary, the rule shall be made absolute; and thereupon, the judge shall order process to be issued against such patentee, or his executors, &c., ioif A costs of suit. And in case no sufficient cause shall be ^hown to the contrary, or if it shall appear that the patentee was not the true inventor or disco- verer, judgment shall be rendered by such Court for the re- peal of the said patent. And if the party at whose complaint the process issued, shall have judgment given against [ * 606 ] him, he shall pay all * such costs as the defendant shall be put to in defending the suit, to be taxed by the Court, and recovered in due course of law." Upon the slightest inspection of tiiis section, it will be at once perceived, that however summary the proceedings may be, they are of vast importance to the parties, and involve the whole right and interest of the patentee. The jurisdiction given to the Court, is not general and unlimited, but is con- fined to cases where the patent was obtained surreptitiously, or upon false suggestions ; where the patentee resides within the district ; and where the application is made within three years after the issuing of the patent. It is, therefore, cer- tainly necessary, that all these facts, which are indispensable to found the jurisdiction, should be stated in the motion and PATENT CASES. 441 Ex parte Wood et aL 9 Wheat. accompanying affidavits ; and without them, the Court cannot be justified in awarding the rule. It follows, of course, that in any record that is to be made of the proceedings, they con- stitute the preliminary part, and ought not be omitted. In the present case, they have been wholly omitted, and the record is, in this respect, incomplete and inaccurate. But it is said that, technically speaking, these proceedings are not matters of record. They are certainly proceedings of a Court of record, for such are all the Courts of the United States, in virtue of their organization, both upon principles of the common law, and the express intendment of Congress. In general, the interlocutory proceedings in suits are not entered of record, as they are deemed merely colla- teral incidents. But where * a special jurisdiction [ * 607 ] is given to a Court, as in the present instance, it appears to us that, in conformity to the course of decisions in this Court, upon the subject of jurisdiction, all the preli- minary proceedings required to found that jurisdiction should appear of record, as they constitute an essential part of the case. In general, motions and rules made in the course of suits, over which the Court has an acknowledged jurisdiction, are not entered of record. But where a rule is the sole foun- dation of the suit, and the first step in its progress, that rule can only be granted under special circumstances prescribed by law ; it is not sufficient to show that the rule itself was granted, but it must also appear, by the proceedings, that it was rightfully granted. But the more material question is, whether the proceedings, so far as the rights of the patentees are concerned, terminated with the rule being made absolute, so that, ipso facto, the patent was repealed, and the process to be issued was only process to enforce or declare the repeal ; or whether the pro- cess was in the nature of a scire facias at common law, to 442 PATENT CASES. Ex parte Wood et al. 9 Wheat. repeal the patent, if upon a future trial, the same should be found invalid. This question must be decided by the terms of the section in controversy ; but in the interpretation of those terms, if their meaning is somewhat equivocal, that construction ought certainly to b§ adopted, which, not departing from the sense, is most congenial to our institutions, and is most convenient in the administration of public justice. The secur- [ * 608 ] ing * to inventors of an exclusive right to their in- ventions, was deemed of so much importance, as a means of promoting the progress of science and the useful arts, that the constitution has expressly delegated to Congress the power to secure such rights to them for a limited period. The Inventor has, during this period, a property in his inven- tions ; a property whichis often of very great value, and of which the law intended to give him the absolute enjoyment and possession. In suits at common law, where the value in controversy exceeds twenty dollars, the constitution has secured to the citizens a trial by jury. In causes of equity and admiralty jurisdibtion, they have the security of a regular and settled course of proceedings, where the rules of evidence and the principles of decision are well established. And in all these cases, there is the farther benefit conferred by our laws, of revising the judgments of the inferior Courts, by the exercise of appellate jurisdiction. It is not lightly to be pre- sumed, therefore, that Congress, in a class of cases placed peculiarly within its patronage and protection, involving some of the dearest and most valuable rights which society ac- knowledges, and the constitution itself means to favor, would institute" a new and summary. process, which should finally adjudge upon those rights, without a trial by jury, without a right of appeal, and without any of those guards with which, in equity suits, it has fenced round the general administration of justice. The Patent Acts have given to the patentee a PATENT CASES. 443 Ex parte "Wood et al. 9 Wheat. right to sue at common law, for damages for any violation of his * invention ; and have given him a [ * 609 ] farther right to claim the interference of a Court of equity, by way of injunction, to protect the enjoyment of his patent. It would be somewhat surprising if, after such anx- ious legislation, there should exist in the act a clause which, in a summary manner, enables any person to repeal his pa- tent, and thus sweep away his exclusive property, without interposing any guards by way of appeal, or any regular pro- ceedings, by which the validity of titles, in ordinary cases, is examined and contested. With these considerations in view,let the 10th section of the act be examined. Its object is to provide some means to repeal patents which have been obtained surreptitiously, or upon false 'suggestions ; the very cases for which a scire facias issues at the common law. As the patents are not enrolled in the records of any Court, but among the rolls of the De- partment of State, it was necessary to give some directions as to the correct time and manner of instituting proceedings to repeal them. It accordingly directs, that the District Judge may, upon proper evidence, under oath, and motion made t6 the Court, in his discretion, " grant a rule that the patentee, &c., show cause why process should not issue against him, to repeal such patent ; and if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and there- upon the judge shall order process to be issued against such patentee, &c., with costs of suit." It is obvious, from the language of this clause, that the rule is a rule not to repeal the patent, if it is made absolute, but a * rule [ * 610 ] for process to issue to repeal the patent. It is not then the rule, but the process contemplated by the act, that repeals the patent. It is not a mere form, but it is of the essence of the proceedings, without which, the rule has no efficacy. Is the process to be issued a process which, per se, 444 PATENT CASES. Ex parte Wood et al. 9 Wheat. repeals the patent, or are the words " to repeal such pa- tent," to be construed as merely descriptive of the nature of the process, and of the effect of it, if judgment shall be finally pronounced in support of it ? In other words, is it a process in the nature of an execution, or a judicial process in the nature of a scife facias, calling for further proceedings? If the words of the section had stopped at the clause already referred to, it would, perhaps, have been difficult to find a suffi- cient explanation of the legislative will, to have led the Court to the eonclusion, that judicial process, in the nature of a scire facias, was certainly intended, there would have been some rea- son for hesitation ; but, even then, an interpretation against such process would not have been without serious embarrassments. It pould not be arrived at, without leaving much of question- able reasoning behind. But the section does not stop herei. It goes on to make further provisions, which, if the process absolutely repealed the patent, could have no operation, and no intelligible meaning. On the other hand, if the process was to be in the nature of a scire facias, all the words are sensible and operative, and describe the proper progress and proceedings upon such a writ. The clause is in [*611 ] these words: "And, in case no * sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such Court for the repeal of the patent." These words follow after the clause awarding the process, and, of course, suppose the process already issued. The party is supposed to be called upon to show cause, which is precisely what a scire facias requires in its oflScial mandate ; and if no sufficient cause is shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, then the patent is to be repealed. If the process is merely to repeal the patent, and not to institute a trial, how can the party show cause ? how can it judicially appear PATENT CASES. 445 Ex parte "Wood et al. 9 Wheat. that the patentee is not the inventor ? These provisions are intelligible in a scire facias, for that authorizes subsequent inquiry into the lav? and the facts. But, farther, " judgment " is to be rendered. Now, it is not necessary to lay any parti- cular stress on this word, as a known juridical phrase, expres- sive of the final decision of the Court ; but if the making the rule absolute repealed the patent, and the process is merely an execution, how could any subsequent judgment be rendered in the case ? It would be contrary to all analogy, to all rules of judicial interpretation, to suppose that judgment is to suc- ceed, and not to precede, the writ of execution. The clause goes on, " and if the party, at whose complaint the process issued, shall have judgment against him, he shall pay all such costs as the defendant shall be put to in defending the suit, to be taxed *by the Court, and recovered [ * 612 ] in due course of law." The language is here still more distinct and persuasive. It imports, in a clear manner, that some proceedings were to be had after the process issued, by which the case might be farther investigated; and if upon such investigation judgment should be against the complain- ant, the patentee should recover his costs. The language is, that the party, at whose complaint the process issued, not the rule issued, shall have judgment against him. Upon what ? the rule ? Certainly not ; but upon the process issued. He shall pay the costs to which the defendant is put in defending the suit. What suit is here intended ? We think it is clear that it means the suit upon the process, that is, upon the scire facias ; for the proceedings upon the rule are not, in a technical, or in any accurate sense, a suit. The costs of defending the suit are to be paid. But how can any costs arise from a defence upon a process which is final and abso- lute ? It appears to the Court, that to give the construction contended for by the counsel against the rule, would be to reject the plain and obvious purport of the whole of the last VOL I. — p. c. 38 446 PATENT CASES. Ex parte Wood et al. 9 Wheat. clauses of the section, and make them a perfect nullity^ In the other view, they have the entire effect, and are as reason- able and just, in themselves, as the^ are promotive -of the security of vested rights and property. Nor does the occurrence of the words " costs of suit," in the preceding ]Bart of the section, where it is said that \' the process shall be issued, &c., with costs of suit," in [ * 613 ] the slightest degree iqipugn * this interpretation. • The true meaning of these words in this connection, is not that costs of suit, already incurred, shall be paid and collected, but that the process shall be, to show cause why the patent shall not be repealed, and costs of suit given to the complainant. In this view, it fortiRes the construction already asserted by the Court. That this is the true exposition of the words, is made apparent by examining the 5th section of ther Patent^Act of 1790, ch. 34, which is exactly similar in terms to the 10th section of the present act, except that it omits, in this place, the words "costs of suit." These words, there- fore, were not intended to change, and cannot be admitted to change, the natural meaning of other parts of the section. And if the other words used in this connection are descriptive of the nature of the process, these words are merely explana- tory of the legislative intent, that the costs of the suit should follow upon the final judgment in favor of the complainant. Without this provision, as the other clause, giving costs, applies to the patentee only, the complainant, although he should prevail in the suit, would not be entitled to any costs. This was a real defect in the first act, and is cured by the insertion of the words under consideration. Nor are there any public mischiefs which will result from the view which the Court takes of this section. On the con- trary, it will subserve the purposes of general justice. If a patent has'beerj fraudulently obtained, or upon false sug- gestions, it may be repealed within three yearfe, if a jury PATENT CASES. 447 Ex parte "Wooi et al. 9 Wheat. *upon a trial, shall be satisfied of the fact. If [*614] such a repeal be not had, still the public have a perfect security. They may violate the patent virith impunity, and if sued for the violation, any person may show the same facts in his defence, and they will constitute a complete bar to the suit, by the express provisions of the 6lh section of the Patent-Act. Here, also, the trial will be ordinarily by a jury, and if the verdict is found, upon such facts, in favor of the defendant, the law expressly declares that "judgment shall be rendered for the defendant, with costs, and the patent shall be declared void." Many patents, under this section, have already, in such suits, been adjudged void; so that the danger of extensive imposition or injury is wholly chimerical. On the other hand, if, by any acci- dent or mistake, the patentee should neglect to appear to oppose the rule, upon the argument on the other side, he may be remediless. But, upon the exposition of the statute adopted by the Court, he will still be entitled to appear to the scire facias, and have a more deliberate opportunity to defend his right. Upon the whole, it is the opinion of the Court, that the ' rule ought to be made absolute, and that a peremptory man- damus issue to the Judge of the District Court, directing him to enter upon record the proceedings in this cause, antece- dent to the granting of the rule, and upon which it was founded ; that he awarded a process, in the nature of a scire facias, to the patentees, to show cause why the patent should not be rfepealed, with costs of suit ; that upon such process being returned, * duly executed, he proceed [ * 615 ] to try the same cause, upon the pleadings filed by the parties, and the issue joined thereon ; and that, if the issue so joined be an issue of fact, then the trial thereof to be by a jury ; if an issue of law, then by the Court, as in other cases. . Mandamus accordingly. 448 PATENT CASES. Morris v. Huntington. 1 Paine. Judgment. Upon the hearing of this cause upon the rule to show cause, heretofore awarded by this Court, and on con- sideration of the arguments of counsel for and against making the same rule absolute, it is ordered and adjudged by the Court, that the same rule be, and hereby is, made abso- lute. And it* is further ordered by the Court, that a peremptory mandamus issue to the District Judge of the Southern District of New York, commanding him to enter upon record the proceedings in this cause, antecedent to the granting by him of the rule to show cause why process . should not issue to repeal the patent in the proceedings men- tioned, and upon which the said rule was founded ; count charged, that the defendants did make divers ploughs, parfit/ on the improved plan, and partly in imitation of the invention of the plaintiff. On the 1st of October,, 1825, letters-patent were issued to the plaintiff, granting to him for the space of fourteen years, the exclusive right of constructing, &c., ploughs upon his im- proved plan, and to the patent was annexed a diagram and schedule, which were made a parf thereof, descriptive of the improvements which the plaintiff claimed to l^ave discovered. The specification describing the face of the mould-board of the new plough, is as follows : r-^ " The general principle heretofore concurred in by all scientific men, who have turned their attention to this subject, is, that as the furrow-slice is detached from the solid ground, at a straight line parallel to the surface, at such depth as may be required, that it should be raised and turned over, so as to retain as far as possible the same flat shape. In order to accommodate the face of the mould-board to this idea of raising the furrow-slice up and turning it over, it has been so constructed as to form straight lines lengthwise, either horizontal or a little inclined, and also to correspond with another set of straight lines at right angles with the land-side, or nearly so, commencing at the point touching the edge of the share, and lower edge of the mould-board. These "last mentioned straight [ * 301 ] * lines, as they recede from the point of commence- ment, gradually change from a horizontal to a per- pendicular direction, and even pass beyond the perpendicular so far as to give the proper overjet behind. It has been thought that mould-boards so constructed would fit and em- PATENT CASES. 521 Davis V. Palmer; Same v. M'Cormick. 2 Brock. brace every part of the furrow-slice in the operation of turning it over, not observing that the furrow-slice must necessarily acquire a convex form on the under side, during the opera- tion by which it is raised up and turned over. " The truth is, however, that in raising and turning over the furrow-slice, it always either acquires a convex form on the under side, or else it is broken off into pieces, and thrown over ; as might therefore be anticipated, it will be found that all these mould-boards which are constructed on these princi- ples, wear through, in the operation of ploughing, about mid- way, while the upper and lower edges are scarcely rubbed. It also necessarily results, that ploughs of this construction work hard, and are of heavy draught, because the mould- board, not being adapted to the convex form which the furrow-slice is disposed to assume, lifts the furrow-slice at a single point, and that in the middle, instead of being equally applied throughout the entire operation. " In order to meet and remedy ihe inconveniences arising from this form of structure, I form my mould-board into a different shape ; and instead of working the moulding part, or face of the mould-board to straight lines, my improvement is to work it to circular or spheric lines. By repeated experi- ments, I have ascertained, that in one direction, - namely : from o, (the point of the share) inclining to the back part of the mould-board, the circle or segment to which the mould- board is wrought, should have about three times the radius of the smaller segments, represented by the letters c, c, &c., the . former being about thirty-six inches, the latter twelve. In order then, to shape the moulding part, or the face of the mould-board, having obtained a suitable block, I begin by laying off the bottom, (fig?. 3 and 4,) by circular or spheric lines at a, a, a, a. If I intend to * con- [ * 302 ] struct a plough of the proper size to cut and turn a twelve inch furrow, I strike this segment of a circle of thirty- 44* 522 PATENT CASES. Davis V. Palmer ; Same v. M'Cormick. 2 Brock. six inches radius, (fig. 1,) and at twenty-four inches back from the point to 6, at right angles with the land-side, this circle will intersect the angle line. This circle is extentted out from the land-side. Then I work the block to fit the same segment inclined from a, (fig. 4,) at the point of the share to a, at a perpendicular raised twelve inches from the horizon, with the circle extended in towards the land-side. Then, having wrought the shape of these two lines, I apply the circular part of. the smaller segment, (fig. 2,) and work the face of the mould-board until that segment will have an equal bearing on all parts, corresponding with the cross-lines c, c, c, &c., which, if produced, would all terminate at a point at d, which is about thirty-six inches from the perpen- dicular where the line a, a, crosses the line d, b. This being thus worked off, uniformly forms a section of a loxodromic, or spiral curve, and when applied to practice, is found to fit or embrace every part of the furrow-slice, far more than any other shaped plough. Tlje plough may be made larger or smaller, suited to deep or shallow ploughing, by enlarging or diminishing the radii of the segments which it is wrought by. " Believing that this mode of shaping the moulding part, or face of the mould-board is an original invention of my own, not heretofore used- or known, and that it is a most important improvement in the shape of the plough, I claim the exclu- sive privilege of making, using, and vending the same." The defendants pleaded " not guilty," and on the trial, moved the Court to give the jury a series of instructions, which are stated and discussed in the following opinion. Marshall, C. J. These suits are brought by the plaintiff, to recover damages for the alleged violation of his patent, for an improvement on the plough. His improvement is, in part, made on the face, throat, and hind part of the mould-board. The counsel for the defendants have moved the Court, PATENT CASES. 523 Davis V. Palmer ; Same v. M'Cormick. 2 Brock. 1. To declare the patent void, because the spe- cification, so * far as it regards the improvements [ * 303 ] irt»lhe mould-board, does not describe this, part of the improvement with the certainty required by the Act of Congress.^ Should the patent be submitted to the jury, they then move that it be accompanied with the following instructions : 1. That so much of the patent as respects the face of the mould-board is n6t violated, unless the defendants have adopted the same spheric lines as are described in the plaintiff's specification. 2. That the jury must be satisfied that the former mould- board is described with sufficient certainty, to distinguish between it and the improvement claimed. 3. If the jury shall be satisfied that M'Cormick has made and used mould-boards, worked out by transverse and con- cave circular lines, before the plaintiff obtained his patent, or made his alleged improvement, then the particular spheric lines described in his specification constitute only a change of form and proportion, and is not an invention capable of being patented. In the course of the argument, the counsel have also con- tended that the same uncertainty exists in that part of the specification which describes the throat and hind part of the mould-board, as in that which describes its face. 1. We will first consider the proposition, that the patent is void for uncertainty. It is, undoubtedly, the province of the Court to construe every written instrument offered in evidence ; and it results from this duty, that if the instrument be so uncertain in its terms as to have no meaning ; if it be insensible, or have no 1 See Act of Feb. 21, 1793, Story's Laws U. S. Vol. I. p. 301 ; sec. 3. See Appendix to Vol. ILposi. 524 PATENT CASES. Dayis v. Palmer ; Same v. M'Cormick. 2 Brock. application to the case, it may be rejected. Is tiie patent, on which the present actions are founded, of this description ? The specification, No. 1, relates to the face of the inouid- board. It consists, first, of a general, and then of a more particular description of this part of the improvement. The defendants cofttend that these descriptions are uncertain in themselves, and that there is also a fatal uncertainty [ * 304 ] which of * them describes the improvement for which the plaintiff claims his patent. The plaintiff, after a general description of the mould- board then in use, and the inconveniences arising from its form, proceeds thus : — "In order to meet and remedy the inconveniences arising from this form of structure, I form my mould-board into a different shape, and, instead of working the moulding part, or face of the mould-board to straight lines, tny improvement is to work it to circular or spheric lines." The specification then proceeds to a more particular description of the lines used, and of the manner in which they are applied, in order to form the face of the mould- board. The counsel for the plaintiff seem disposed to consider this general description, as constituting the essential part of the specification, and the subsequent more particular description, as merely an illustration of the general principle, as one mode of carrying it into execution. If the specification will admit of this construction, then the subsequent and particular description may be expunged with- out affecting the patent. A principle remains the same, whether it be accompanied by any case put for illustration or not. It may be comprehended more easily, but is not varied by the illustration. . If we consider this general part of the specification as standing alone, and as describing this part of the improve- mentj.it is not liable to the charge of uncertainty. It claims. PATENT CASES. 525 Dayis v. Palmer ; Same v. M'Cormick. 2 Brock. as an improvement, " to work it (the mould-board) by cir- cular or spheric lines." Every mould-board worked by cir- cular or spheric lines, however those lines may cross each other, and whatever may be their relative proportions, is within the plaintiff's patent. If the face of no mould-board previously in use will fit this description, the plaintiff's patent may, perhaps, legally cover the broad ground it would oc- cupy. But if any mould-board previously in use would fit this description, then the plaintiff would claim, as his inven- tion, that which was previously known, and his patent would be void. * But we do not think the specificatibn will ad- [ * 305 ] mit of this construction. It proceeds to say, " By repeated experiments I have ascertained, that in one direc- tion, namely, from a, fig. 4," (which is the point of the share) " inclining to the back part of the mould-board, the circle or segment to which the mould-board is wrought, should have about three times the radius of the smaller segments repre- sented by the letters c, c, &c., the former being about thirty- six inches, the latter twelve." This is intended for a plough which will turn a furrow-slice of twelve inches. The specifi- cation then proceeds to detail minutely the mode of operation by which these lines are to be applied, in order to give the face of the mould-board the required shape, and says : " The plough may be made larger or smaller, suited to deep or shal- low ploughing, by enlarging or diminishing the radii of the segments which it is wrought by." " Believing," the specification adds, " that this mode of shaping the moulding part, or face of the mould-board, is an original invention of my own, not heretofore used or known, and that it is a most important improvement in the shape of the plough, I claim the exclusive privilege of making, using, and vending the same." This claim applies conclusively, we think, to the particular 526 PATENT CASES. , Davis V. Palmer ; Same v. M'Cormick. 2 Brock. and labored description of the mould-board which imme- diately precedes it. The language seems to us to require this construction ; and the subject seems also to require it. If the patent were to extend to all mould-boards worked out to circular lines, crossing each other in any direction, or in any proportion^ it would be unnecessary to describe with so much labor and minuteness, the direction of the longitudinal and perpendicular circular lines, by which the face of the mould-board should be worked out, and the proportions those lines should bear to each other, and the size of the plough. It is obvious, then, that the person who makes his, improve- ment to consist in the peculiar shape given to the face of his mould-board, and who describes the lines and their several proportions, which will give that peculiar shapCj must mean to appropriate the shape produced by the applica- [ * 306 ] tion * of those new lines. We are then decidedly - of opinion, that a mould-board conforming to the particular description contained in the specification, is the invention which the plaintiff claims, and that instead of being a mere illustration of the principle stated in the introductory part of the specification, it is itself the essential improvement, of which only a general idea was given in the introductory part. It is contended on the part of the plaintiff that, if the pa- tent be limited to the more particular part of the specifica- , tion, still the claim is not confined to mould-boards worked out by segments of circles of the exact form and proportions mentioned in the specification. To support this argument, counsel rely on the word " about," which is introduced into the description ; he has found Mr. Davis says, by repeated experiments, that the segment of the larger circle should have about three times the radius of the smaller segments, &c. The claim, therefore, is not for a mould-board of the precise shape described, but for one " about " the shape described. PATENT CASES. 527 Davis ». Palmer; Same «. M'Cormick. 2 Brock. It will at once be perceived, that unless the extent of this word " about," be limited, it introduces all the uncertainty which it was supposed would be fatal to the patent, accord- ,ing to the general description contained in the introductory part of the specification. If, instead of thirty-six inches and twelve, the proportions may be thirty-seven and eleven, thirty-eight and ten, why not forty and eight, or thirty-five and fifteen ? The proportions may be enlarged or dimin- ished, and with every change of proportion, the shape of the mould-board will be changed. If this be the construction of the patent, then it covers all the various forms of mould- boards which may be made under this latitudinous exposition of its terms ; and if any mould-board has been previously used, whose face may be formed by transverse segments of circles, whose radii bear to each other "about" the propor- tion of thirty-six to twelve, the patent is void. Will it be said that it may be left to the jury to determine what is " about " the proportion particularly desig- nated ? This * expedient will not remove the diffi- [ * 307 ] culty. We doubt how far it may consist with the principle that the Court is to construe every written instru- ment. But, waiving this doubt, if the word has any limits, they must be always the same. When applied to a mould- board, it cannot be endowed with an elastic principle, to expand or contract itself according to circumstances. It cannot admit of being varied to a certain extent, if no mould- board has been in use of the shape which that degree of variation would produce, and at the same time of being restricted, if a mould-board of such a shape has been in use. The word " about," cannot be equivalent to a general claim of the exclusive right to all concave mould-boards, varying in any degree from those previously in use. The definiteness of the shape, which the specification professes to give to the mould-board, cannot be sacrificed by this loose word. It is 528 PATENT CASES. Dayis v. Palmer ; Same v. M'Cormiek. 2 Brock. further observable, that where the specification describes the process of the workman, it drops the word' " about." It has been supposed that the precise proportion required between the radii of the larger and smaller segments of cir- cles, may be relaxed under the concluding part of 'the descrip- tion. After giving the mode of operation, the specification adds : — " This being thus worked off", uniformly forms a section of a loxodromic or spiral curve, and when applied to practice, is found to fit or embrace every part of the furrow- slice, far more than any other shaped plough." The argument is, that it is a mould-board whose face forms a section of a loxodromic or spiral curve that is patented, and that any lines which will give such a service, are within the specification, and consequently, within the patent. Without noticing the difficulties growing out of this con- struction, it is sufficient to say, that the specification does not claim the loxodromic or spiral curve as the invention, but states it as the result of the prescribed application of the transverse circular lines, the application of which, in the rela- tive proportions prescribed, is the invention. The language of this part of the specification, tends to confirm, [ * 308 ] we think, the opinion already * indicated, that the plaintiff intended to claim a mould-board of the precise and definite shape prescribed, not one about that ?hape. He says his mould-board, " so worked off," " when applied to practice, is found to fit or embrace every part of the furrow-slice, far more than any other shaped plough." In construing this specification, we must keep in view the notice of the improvement which Mr. Davis claims to have invented, and to describe. It is an improvement in the shape of a machine which has been in common use a great number of years, and in a great variety of shapes. The concave mould-board has been long -considered as the most eligible shape that part of the plough can assume, and multiplied PATENT CASES. 529 Davis V. Palmer; Same v. M'Cormick. 2 Brock. essays have been made to perfect it. Mr. Davis has receptly added to their number ; he professes to have discovered that precise concavity in the service of the mould-board, which will, better than any other, fit every part of the furrow-slice, and, consequently, turn it over with less labor. For this dis- covery he claims a patent ; we may reasonably expect, that a specification for such a patent, will give a precise and definite shape to the improvement to be patented. We are then decidedly of opinion, that in construing this specification, the word "about" must be disregarded, and the patent be restricted to the mould-board as described, inde- pendent of that word. If we consider the particular part of the specification as describing the object to be patented, the defendants insist that the description given in that part is not sufHciently clear to enable a skilful mechanic to construct the machine: It may not, perhaps, be easy to draw a precise line of dis- tinction between a specification so uncertain, as to claim no particular improvement, and a specification so uncertain as not to enable a skilful workman to understand the improve- ment, and to construct it. Yet, we think, the distinction exists. If it does, it is within the province of the jury to decide, whether a skilful workman can carry into execution the plan of the inventor. In * deciding [ * 309 ] this question, the jury will give a liberal, common- sense construction to the directions contained in the specifi- cation.^ If the patent be submitted to the jury, the defendants re- quest the Court to give the several instructions which have been already mentioned. 1 See the able opinions of Mr. Justice Story, in Ames v. Howard et al., reported in 1 Sumner's Rep. 482, and of Mr. Justice Baldwin, in Whit ney et al. v. Emmett et al. 1 Baldwin's Rep. SOS, post. VOL I. F. 0. 45 530 PATENT CASES. Davis u. Palmer; Same w. M'Cormick. 2 Brock. 1. The first is, that so much of the patent as relates to the face of the mould-board is not violated, unless the defendants have adopted the same circular lines as are described in the specification. This instruction will be given. But it may perhaps be understood with some slight modification. The patent, un- doubtedly, covers only the improvement precisely described. But if the imitation be so nearly exact as to satisfy the jury that the imitator attempted to copy the model, and to make some almost imperceptible variation, for the purpose of evad- ing the right of the patentee, this may be considered as a fraud on the law, and such slight variation be disregarded. 2. The second instruction is, that the jury must be satisfied that the former mould-board is described with sufficient certainty, to distinguish between it and the improvement claimed. We do not think a particular description of the former mould-board is necessary. A general reference to it, either in general terms which are not untrue, or by reference to a particular mould-board, commonly known, accompanied by such a description of the improvement as will enable a work- man to distinguish what is new, will be sufficient. 3. The Court is also requested to instruct the jury that, if M'Cormick has made and used mould-boards, worked out by transverse circular lines, so as to produce a concave surface, before the plaintiff obtained his patent, or made his alleged improvement, then the particular lines described in his speci- fication, constitute only a change of form and proportion, not an invention capable of being patented. [*310] *Itis stated on both sides, that the clause in the statute, to which this instruction refers, is one of considerable doubt. It is in these words : "And it is hereby enacted and declared, that simply changing the form or the PATENT CASES. 531 Treadwell et al. v. Bladen. 4 Wash. proportion of any machine, shall not be deemed a disco- very." 1 In construing this provision, the word " simply," has, we think, great influence. It is not every change of form and proportion which Js declared to be no discovery, but that which is simply a change of form or proportion, and nothing more. If, by changing the form and proportion, a new effect is produced, there is hot simply a change of form and propor- tion, but a change of principle also. In every case, therefore, the question must be submitted to the jury, whether the change of form and proportion has produced a different effect. With respect to the throat and hind part of the mould- board, the Court need only say, that the description of the specification iS general, not giving the particular shape of those parts of the mould-board. If either the throat or hind part of a mould-board, was in use before, which answers the description contained in this specification, then the plaintiff has patented what belonged to the public, and his patent is void. Note. After the opinion of the Court was delivered, both suits were dismissed agreed ; each party paying his own costs. Tkeadwell and Watson v. Bladen. [4 Wash. 703. October T. 1827.] Action for the infringement of a patentright. To proye that the plaintiff was not the original inventor, the defendant gave in evidence a prior patent to A, 1 Act, 1793, before referred to. Story's Laws U. S. Vol. I. p. 301, sec. 2. Appendix to Vol. n. 532 PATENT CASES. Treadwell et al. v. Bladen, i Wash. for a machine alleged to have been the same in principle with the plaintiif 's, and his assignment of the same to the defendant, and offered A as a witness to prove the priority of the invention. A is a competent witness, having no interest in the event of the suit. If the defendant's notice of special matter states that the thing patented was known and used by A, B, C, and others, prior to the plaintiff's discovery, the defendant must prove its use by others than those named. Proof by a witnes *hat he had seen an article which might have been made by a machine similar to that for which the plaintiff afterwards obtained his patent, or in some other way, is not sufficient to deprive the plaintiff of his claim to be the original inventor; unless the jury should be satisfied from the evidence that the article was made by a machine similar to it in prin- ciple. What constitutes the form, and what the principle of a machine ? It is the use, and not the intention, of an inventor to use an improvement, to be found in the plaintiff's machine, that can invalidate the plaintiff's patent under the sixth section of the Patent Act. To invalidate the plaintiff's patent, it is not sufficient to show that the thing pa- tented was used prior to the plaintiff's application for his patent ; but it should be shown that it was prior to his discovery. What amounts to an abandonment of his invention by an inventor, so as to invalidate his patent. A person cannot have two subsisting valid patents for the same thiog at the same time. But if he has obtained a patent, which he afterwards finds to be too broad, by having included in it the discovery of another, he may -obtain a second valid patent for such parts of the machine as were discovered by him, and not by another. Qucere, Whether a disclaimer in the specification annexed to the grand patent of those parts, which were not the invention of the patentee, is sufficient to remove the objection to the patent ? [ * 704 ] * This was an action on the case for an infringement of a patent granted to Edward Treadwell on the 18th of May, 1826, for an improvement in the art of manufacturing biscuit and sugar bread. The schedule describes the whole in- strument, namely, the circular knives, dotters,clearers, the holes and the niches for connecting the cakes and clearing away the loose dough, as in the former patent. But it disclaims the piercers or dotters, as used in the well-known dotter used by hand, and declares that the patentee does not claim as his improvement either the circular knives, the dischargers, or PATENT CASES. 533 Treadwell et al. v. Bladen. 4 Wash. clearers, or the use of the knives to cut, the piercers to prick, nor the clearers to discharge the biscuit, these having been long known and occasionally used by many persons. " What he claims is, his improvement in this machine for saving labor are, the contrivance specified for attaching and keeping the biscuit in clusters, particularly the small cuts, niches, or places filed away for attaching the biscuits, and the holes for the pas- sage of the dough through the plate, and the circular connec- tion of the cluster of seven knives in this new combination to save labor." On the 23d of May, 1826, Edward Treadwell, in consideration of ^700, assigned to Elizabeth Watson, the patent-right, so far as the same applies to the city and county of Philadelphia, and all other towns and villages bordering on the- River Delaware from Easton to Newcastle, inclusive. The plaintiff gave evidence to prove that the defendant used a machine for making biscuit and sugar bread, with the improvement mentioned in the specification to Treadwell's patent, and claimed by him, and that the improvement was new and useful. He also gave some evidence of the 'value of the use this improvement. The defendant having pleaded the general issue, gave notice of special matter of defence, that Edward Treadwell was not the original inventor ; but that the improvement claimed by the plaintiff had been in use, prior to the application of Tread- well, by J. Siddons, Peter Christian, and Daniel Poole ; and, generally, it had been used before the application of Tread- well. The defendant having given in evidence a patent to Daniel Poole for the machine used by the defendant, dated the 24th of December, 1824, and his assignment of the same for a valuable consideration to the defendant on the 25th of Fe- bruary, 1825, offered Poole as a witness to prove the priority of his invention. 45* 534 PATENT CASES. Treadwell et al. v. Bladen. 4 Wash. An objection to his competency was made, but overruled by the Court. WashingtoNj J. The witness can have no interest in the event of this suit, as the verdict could not be given in evi- dence, should t^e plaintiffs obtain it, in any action which the defendant might bring against him, for the purchase-money, or for damages. What interest he has, is in the question merely, and even that is remote. Whatever objection can be raised can go only to his credit. The witness was asked generally, if he knew that [ * 705 ] this improvement * had been in use by any person prior to the application of Treadwell ? This was objected to by the plaintiff's counsel, the notice having desig- nated three persons by name who had so used it. Washington, J. This objection was taken in the case of Evans v. Eaton ; was overruled by this Court ; and that deci- sion was approved by the Supreme Court on a writ of error. The present objection must meet the same fate. Poole proved that l\is invention was made about the 1st of Jsinuary, 1824. That he had seen gingerbread at Boston, before the year 1819, connected together ; but he knew not by what machine they were made, never having seen any, nor did he know that they were formed by a machine. Christian gave the same evidence as he did at the former trial. Siddons stated, that in July, 1820, he had a machine made with cutters, cleavers, and dotters, holes and niches, but he never used it. . That he got his first idea of, the machine from Edward Treadwell, whose machine was then in opera- tion. The plaintiff then gave evidence to prove that Edward Treadwell invented his machine prior to 1819, and that, in PATENT CASES. 535 Treadwell et al. v. Bladen. 4 Wash. the latter part of that year, it was made and in use in this city. Some contradictory evidence was given as to the use of the plaintiff's improvement, and as to its difference from Chris- tian's machine both in principle or in form. The following objections were made by. the defenda.nt's counsel to the validity of the plaintiff's patent : 1. That the first patent of Treadwell, as well as the evi- dence in the cause, show that this improvement was known, and in use, before the application for the present patent. 2. That a party cannot have, at the same time, two valid patents for the same thing. The first patent is yet in exist- ence, which invalidates the second. Morris v. Huntington, 1 Paine's Rep. 348 ; 2 Mass. 30. 3. That the alleged improvement of Treadwell upon Chris- tian's invention is not in principle, but in form only ; as Christian stated in his evidence that he had provided in his machine for the use of a wire which was to operate as a clearer of the loose cut dough ; which, if it had been used, would have produced the same effect as the holes in Tread- well's machine. 4. Treadwell was not the first inventor of the improvement which he has patented. The plaintiff.'s counsel cited, on the first point made by the defendant's counsel, Evans v. Weiss, 2 Wash. C. C. Rep. 342 ; 1 Gall. 438; 1 Paine's Rep. 300, 348. Washington, J. The plaintiffs have laid before you a patent, for the improvements of which they claim Edward Treadwell to be the original inventor, and have given evidence to prove * the improvement to be [ * 706 ] useful, and that Treadwell was the original inventor of it. If they have succeeded in satisfying you of these facts, they are entitled to a verdict ; unless the objections relied 536 PATENT CASES. Treadwell et al. v. Bladen. 4 Wash. upon by the defendant's cdunsel, or some one of them, should be well founded. As to the fact of original inventions, it must depend upon the evidence, of which you are exclusively the judges. The only evidence, relied upon by the defendant to disprove the claim of TreaAwell to this discovery, is that given by Poole, who ^states that, in the year 1819, he saw ginger cakes in clus- ters and connected together to the number of six or seven ; but ^he admits that he had no knowledge how they were made, whether with a machine or by hand. The legal ground of this defence is, that the improvement claimed and patented by Treadwell, was not originally disco- vered by him, but had been in use prior to the alleged discovery by him. This improvement, as you perceive by the machine before you, consists in what is termed, in the specification, niches, or contrivances for attaching the biscuits in clusters, and the holes for the passage of the surplus dough through the plate. Now, if the ginger cakes spoken of by the witness were made by hand with a cup, or in a very different princi- ple from that stated in Treadwell's specification, it cannot be legally affirmed that the improvement claimed by the plaintiffs had been in use prior to the alleged discovery of Treadwell. It is for jou to say, whether, from the appearance of those ginger cakes, you can safely conclude that they were made by an instrument having the improvement for which this patent was granted? As to the machines discovered by Christian, Poole, and Siddons, they most obviously do not interfere With the improvement of Treadwell. The contri- vance to connect the biscuit, and the holes to vent the sur- plus dough are not in Christian's macliine ; and those ' made by Poole and Siddons were not earlier than 1824, about five years posterior to the discovery and use by Treadwell. The next objection raised against the discovery of Tread- PATENT CASES, 537 Treadwell et al. v. Bladen. 4 Wash. well is, that what he ^alls an improvement upon Christian's machine, is in form only, and not in principle. What constitutes form, and what principle, is often a nice question to decide ; and upon none, are the witnesses who are examined in patent causes, even those who are skilled in the particular art, more apt to disagree. It seems to me that the safest guide to accuracy in making the distinction is, first to ascertain what is the result to be obtained by the discovery ; and whatever is essential to that object, independent of the mere form and proportions of the thing used for the purpose, may generally, if not universally, be considered as the principles of the invention. What, for example, is the object of Treadwell's improvement upon Chris- tian's machine ? The answer is, to render the operation of that machine more expeditious in the making of biscuit, by uniting the cakes, so that seven of them may be removed * from the place where they are, and with [ * 707 ] the same labor which would be required to remove a single one ; and by enabling the operator, with greater faci- lity, to extricate the machine from the loose dough. These results are produced by two contrivances not to be found in Christian's machine, and which constitute the principles of Treadwell's improvement. But it is contended that, as Christian contemplated using wires in his machine, the operation of which would be to clear away the loose dough, the holes in Treadwell's machine differ in form only from the wires before spoken of. The answer to this is, that the wires were never attached to Christian's machine, and were never used with it; and, consequently, the objection has no foundation in the sixth section of the Patent Law. It is, in the third place, objected to the validity of Tread- well's patent, that his improvement was .known, and in use, prior to his application for a patent ; it was used by Watson, 538 PATENT CASES. Tireadwell et al. v. Bladen. 4 Wash. and by the defendant for some years prior to May, 1826. If there be any solidity in this argument, the Patent Law would very nearly become a dead letter ; as every inventor uses the mathine he invents before he applies for a patent, with a view to satisfy himself whether it answers the purpose for which it was intended. But it is probable that the counsel did not intend to direct their objection to this kind of use ; but to a general use of it, for some length of time, by the inventor, or by others. In this view of the question, it is certainly not without difficulty, and it was felt by this Court when the case of Evans v. Weiss was decided. The difficulty is created by the first section of the Act of 1793, which authorizes the issuing of a patent to any citizen of the United States who shall allege himself to be the inventor of any new and Useful art, machine, &c., not known or used before the application, &c. To construe those expressions, uninfluenced by other parts of the Patent Law, to mean the knowledge of, or use by the inventor him- self, would, for the reason before mentioned, render the act afelodese; and even to extend those expressions to the knowledge of the third person surreptitiously obtained, and his consequent use of the invention, without the consent of the inventors, would be unreasonable and manifestly repug- nant to the whole spirit and design of the patent, system. But whatever difficulty may arise out of the first section of the act, it is, I think, cleared away by other parts of the Acts of 1793 ; particularly by that clause of the sixth section which authorizes the defendant to give in evidence, under the gene- ral issue, that the thing patented was not originally discovered by the patentee, but had been in use or described in some public work anterior to the supposed discovery of the paten- tee. Here we find the expression " supposed discovery " substituted for " application " in the first section, and the word PATENT CASES. 539 Treadwell et al. v. Bladen. 4 Wash. '( known," in that section, is altogether omitted in the sixth ; * and, upon the whole, I take the true [ * 708 ] construction of the act to be, that to invalidate the patent, the thing patented must have been used prior to the alleged discovery, and that is it not sufficient to show that it was so prior to the application. That was the opinion of this Court in the case of Evans v. Weiss, 2 Wash. C. C. Rep. 342, and the same opinion has been held in Goodyear v. Mathews, 1 Paine's Rep. 300 ; Morris v. Huntington, 1 Paine's Rep. 348 ; and by Mr. Justice Story, in the case cited from 1 Gall. 438. I admit that great public and private inconvenience may result from this construction, (although not so great as that which the other circumstances would produce,) where an in- ventor postpones unreasonably the exercise of his privilege of taking out a patent; thus keeping all the world at arm's length, so that no person can, in the mean time, safely con- struct, or use the thing invented, nor for fourteen years after the issuing of the patent, in case one should be taken out. But this is an inconvenience which it is competent for Con- gress alone to remove. If, before the patent is taken out, the inventor looks on, and sees his invention going into gene- ral use, without objection on his part, the Courts will treat his conduct as equivalent to an abandonment or transfer of his exclusive right to the public. And it is possible that, without such use by others, an unreasonable and causeless, or faulty , delay, in taking out his patent, might be justly, and upon legal principles, considered as amounting to an abandonment ; as to which, however, I avoid giving an opinion in this case,, because it is unnecessary. For I hold it to be perfectly clear, that Treadwell is not chargeable with a causeless or faulty delay in securing the exclusive right to what he supposed to be his invention. He made the discovery some time in the 540 PATENT CASES. Tr^adwell et al. v. Bladen. 4 Wash. year 1819, and during the latter part of that year, he put it into practical use, and on the 10th of January following, he obtained his patent, not only for the improvement secured by the last patent, but for those other parts of the machine of which he alleged, and, so far as the evidence has gone to war- rant a contrary conclusion, we are bound to say, he supposed himself to be the original inventor. The appearance of Christian's machine', which, from the place where it had for many years been reposing, was brought to the bar of this Court upon a former trial between these parties, satisfied the patentee, as it did the Court and jury on that occasion, that Treadwell was not the original inventor of the cutters^ the dot- ters, or the cleavers. This was the misfortune of the paten- tee, as well as of the plaintiff in that cause ; but it surely would be very harsh to conclude that it was the fault of Treadwell to include in his patent the invention of another person, so as to invalidate a patent. Lastly, it is objected that the existence of the patent of January, 1820, at the time the patent of May, 1826, was obtained, invalidated the latter. I entirely concur in the decisions in the cases cited [ * 709 ] from 1 Paine, * 348, and 2 Mass. 30. The prin- ciple there decided is, that a person cannot have two subsisting valid patents at the same time, for the same invention. The question in this case then is, are the two pa- tents to Treadwell for the same invention? I think most clearly that they are not. The first patent was for an im- provement in the art of making crackers and sugar biscuit by the combined operation of a cutter, a cleaver, a dotter, and contrivances, (as they are called,) for connecting the cakes, and freeing the board from the loose dough. The second patent is for an improvement on Christian's machine by adding to it the contrivances for connecting the PATENT CASES. 541 Treadwell et al. v. Bladen. 4 Wash. cakes or biscuit, and for relieving the board or machine from the loose dough. But it is insisted that the first patent, which was for the combined operation of those five parts, was necessarily a pa- tent for all and each of the parts, and consequently for those two for which the last patent was granted. This argument was urged in the case of Evans v. Eaton, and was rejected by this Court, and that refutation was approved by the Su- preme Court on a writ of error, so far as it was rested on the general Patent taw. The difference between that case and this is, that there the Court was confined to a private act for the relief of O. Evans, and upon that point, I freely acknow- ledge that this Court was mistaken. These two patents can no more be said to be for the same invention, than the patent to O. Evans for the combined ope- ration of the five instruments for which his patent was issued, and a patent for the hopper-boy, had one been granted, could be said to be for the same invention, had the private act been out of the question. But even if these patents were substantially for the same invention, I should strongly incline to the opinidh (without meaning, however, to give a positive decision on the point) that the disclaimer of all title under the first patent to the three material parts of the invention for which it was granted, would operate as an estoppel to any remedy which might be prosecuted for a violation of that patent ; and if all remedy for a breach of that patent be defeated, can any right under it remain ? If, upon the whole, the jury be satisfied that the defend- ant has used the improvement for which the plaintiff has a patent, between the date of the patent and the institution of this suit ; that the improvement is useful, and that Tread- well was the original inventor of it, the plaintiffs are entitled VOL. I. — p. c. 46 542 PATENT CASES. Fennock et al. v. Dialogue. 2 Peters. to a verdict. The amount of the damages is for the jury to assess. Verdict for $25 damages. C. J. Ingersoll, for plaintiffs. M'llvaine and Dallas, for defendant. Abraham L. Pennock and James Sellers, Plaintiffs in Error v. Adam Dialogue. [2 Peters, 1. January T. 1829.] The record contains, embodied "in the bill of exceptions, the whole of the testi- mony and evidence offered at the trial of the cause by each party in support of the issue. It is very voluminous, and as no exception was taken to its competency or sufficiency, either generally or for any particular purpose ; it is not properly before the Court for consideration, and forms an expensive and unnecessary burden upon the record. This Court has had occasion, in many cases, to express its regret on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record ; since the opinion of the Court, deli- vered to the jury, presented a general principle of law; and the application of the evidence to it was' left to the jury. [15] It is no ground of reversal, that the Court below omitted to give directions to the jury upon any points of law which might ai;ise in the cause, where it was not requested by either party at the trial. It is sufficient for us, that the Court has given no erroneous directions. [16] If either party considers any point presented by the evidence, omitted in the charge of the Court, it is competent for such party to require an opinion from the Court upon that point. The Court cannot be presumed to do more in ordinary cases, than to express its opinion upon questions, which the parties themselves have raised on the trial. [16] It has not been, and indeed it cannot be denied, that an inventor may abandon* his invention, and surrender or dedicate i^ to the public. '■ J This inchoate right, thus gone, cannot afterwards be resumed at his pleasure ; for when gifts are once made to the public in this way, they be- PATENT CASES. 543 Peunock et al. v. Dialogue. 2 Peters. come absolute. The question which generally arises on trials is a question of fact, rather than of law ; whether the acts or acquiescence of the party, furnish, in the given case, satisfactory proof of an abandonment, or dedica- tion of the invention to the public. [16] It is obvious, that many of the provisions of our Patent Act, are derived from the principles and practice which have prevailed in the construction of the law of England in relation to patents. [18] Where English statutes, such for instance as the statute of frauds, and the sta- tute of limitations, have been adopted into our own legislation ; the known and settled construction of those statutes by Courts of, law, has been consi- dered as silently incorporated into the acts ; or has been received with all the weight of authority. This is not the case with the English statute of mono- polies, which contains an exception, on which the grants of patents for in- ventions have issued in that country. The language of that clause in the statute is not identical with the Patent Law of the United States ; but the construction of it adopted by the English Courts, and the principles and practice which have long regulated the grants of their patents; as they must have been known, and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it. [18] The true meaning of the words of the Patent Law, " not known or used before the application ; " is, not known or used by the public, before the application. [19] If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention ; if he should, for a long period of years, retain the monopoly, and make and sell his invention publicly ; and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structm'C ; and then, and then only, when the danger of competition should force him to procure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any further use, than what should be derived under it, duri»g his fourteen years ; it would materially retard the progress of sciefice and the nsefal arts ; and give a premium to those who should be least prompt to communicate their discoveries. [19] If an invention is used by the public, with the consent of tlie inventor, at the time of his application for a patent ; how can the Court say, that his case is nevertheless such as the act was intended to protect ? If such a public use is not a use within the meaning of the statute, how can the Court extract the case from its operation, and support a patent, when the suggestions of the patentee were not true ; and the conditions, on which alone the grant was authorized, do not exist t [21] The true construction of the Patent Law is, that the first inventor cannot acquire a good title to a patent, if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent. This voluntary act, or acquiescence in the public sale or use, is an abandonment of his right ; or rather, creates a disability to comply with the terms and conditions of the law ; on which alone the Secretary of State is authorized to grant him a patent. [23J 544 PATENT CASES. Fennock et al. v. Dialogue. 2 Peters. [ * 3 ] * This case was brought before the Court, on a writ of error to the Circuit Court for the eastern district of Pennsylvania. In that Court, the plaintiffs in error had instituted their suit against the defendants, for an infringement of a patent- right, for " art ^ improvement in the art of making, tubes or hose for conveying air, water, and other fluids." The inven- tion claimed by the patentees, was in the mode of making the hose so that the parts so joined together would be tight, and as capable of resisting the pressure as any other part of the machine. The bill of exceptions, which came up with the record, contained the whole evidence given in the trial of the cause in the Circuit Court. The invention, for which the patent- right was claimed, was completed in 1811 ; and the letters- patent were obtained in 1818. In this interval, upwards of thirteen thousand feet of hose, constructed according to the invention of the patentees, had been made and sold in the city of Philadelphia. One Samuel Jenkins, by the permission of, and under an agreement between the plaintiffs as to the price, had made and sold the hose invented by the plaintiffs, and supplied several hose companies in the city of Philadel- phia with the same. Jenkins, during much of the time, was in the service of the plaintiffs, and had been instructed by them in the art of making the hose. There was no positive evidence, that the agreement between Jenkins and the plain- tiffs in error was known to, or concealed from, the public. The plaintiffs, on the trial, did not allege or offer evidence to prove that they had delayed making application for a patent, for the purpose of improving their invention ; or that from 1811 to 1818, any important modifications or alterations had been made in their riveted hose. The plaintiffs claimed be- fore the jury, that all the hose which had been made and sold to the public, prior to their patent, had been constructed and vended by Jenkins under their permission. PATENT CASES. 545 Fennock et al. v. Dialogue. 2 Peters. Upon the whole evidence in the case, the Circuit Court charged the jury : * " We are clearly of opinion that if an inventor [ * 4 ] makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice ; he abandons the inchoate right to the exclusive use of the inven- tion, to which a patent would have entitled him, had it been applied for before such use. And we think it makes no dif- ference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured : and even if it be made public, but accompanied by an assertion of the inventor's claim to the discovery, those who should make or use the subject of the invention would at least be put upon their guard. But if the public, with the knowledge and the tacit consent of the in- ventor, is permitted to use the invention without opposition, it is a fraud upon the public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public ; and may have sup- posed that by giving permission to a particular individual to construct for others the thing patented, he could not be pre- sumed to have done so. But it is not a question of intention, which is involved in the principle which we have laid down, but of legal inference, resulting from the conduct of the in- ventor, and afTeciting the interests of the public. It is for the jury to say, whether the evidence brings this case within the principle which has been stated. If it does, the Court is of opinion that the plaintiffs are not entitled to a verdict." To this charge the plaintiffs excepted, and the jury gave a verdict for the defendant. 46* 546 PATENT CASES. Fennock et al. v. Dialogue. 2 Peters- Mr. Webster, for the plaintiff in error, contended, 1. That the invention, being of such a nature that the use of it, for the purpose of trying its utility and bringing it to perfection, must necessarily be open and public ; [ * 5 ] the * implication of a waiver or abandonment of the right,%furnished by siich public use, is rebutted by the circumstance that the article was made and sold only by one individual ; and that individual was authorized and per- mitted so to do by the inventors. 2. That the use of an invention, however public, if it be by the permission and under the continual exclusive claim of the inventor, does not take away his right, except after an unreasonable lapse of time, or gross negligence, in applying for a patent. 3. That the jury should have been instructed, that, if they found the riveted hose, which was in use by the hose com- panies, had been all made and sold by Jenkins, and by no one else, prior to the grant of the patent, and that he was permitted by the inventors, under their agreement, so to make and sell the same ; that such use of the invention, not being adverse to their claim, did not take away their exclusive right, nor imply an abandonment of it to the public. 4. That, if they found the hose had not been made or sold, prior to the grant of the patent, by any person but Jenkins^ then the giving of permissionwto him, being in itself an asser- tion of claim, was not a dedication to the public ; and that the public, by purchasing and using the hose, thus made by the permission of the inventors, acquired no title to the in- vention ; but, on the contrary, if the price, paid included a premium for the invention, the public, by so purchasing, admitted the right of the inventors. 5. That, at any rate, there being no use, by the public, of this invention, it should have been left to the jury, to say, whether, under all the circumstances, considering the nature PATENT CASES. 547 Pennock et al. v. Dialogue. 2 Peters. of the invention, and the time necessary to perfect it, the plaintiffs have been guilty of negligence, in not sooner apply- ing for a patent. Mr. Webster stated, that the question to be decided by the Court laid within a narrow compass. The defence set up was, that the plaintiffs had suffered their invention to * be used before their application for a patent ; [ * 6 ] and had thus lost all right to the exclusive use of it. The Court, in this case, would be called upon to reverse the English decision relative to abandonments ; for it was admitted, that those cases had gone to the whole extent of the principles applied to this case in the Circuit Court. Those cases have decided, that any public use of an invention, even for experiment, renders it no longer a new machine. In the Courts of the United States, a more just view had been taken of the rights of inventors. The laws of the United States were intended to protect those rights, and to confer benefits ; while the provisions in the statute of England, under which patents are issued, are exceptions to the law prohibiting mo- nopolies. Hence, the construction of the British statute had been exceedingly strait and narrow, and different from the more liberal interpretation of our laws. By the decisions of our Courts, there must be a voluntary abandonment, or negligence, or unreasonable delay in ob- taining letters-patent, to destroy the right of the patentee, Goodyear v. Mathews, Paine's Rep. 300 ; Morris v. Hunting- ton, Id. 348. The exception to the charge of the Court is, that the jury should' have been instructed to decide upon the evidence, whether the plaintiff meant to abandon his invention by the permission to Jenkins to use it. Jenkins must be considered as the privatp agent of the inyenters ; and their agreement with hipi, under which he made the hose, is to be considered rather as an assertion of their exclusive right to the invention 548 PATENT CASES. Pennock et al. v. Dialogue. 2 Peters. than a surrender of it. By omitting to leave to the jury this -question of an intention to abandon, the case was erroneously withdrawn from them. The rights of the parties also entitled them to have the causes of their delay in patenting their in- vention inquired of by the jury. As the case is presented on the bill of eUceptions, the Court in their charge undertook to state the whole law of the subject-matter to the jury; and the omission to instruct them on any one point is error. [ * 7 J * If, in this charge of the Court, any thing is omitted which was matter of law for the jury, it is misdirection. In a case in Massachusetts, said to be reported in 4th Ma- son's Rep., it was left to the jury to decide whether seventeen years' delay could be accounted for. Under the provisions of the laws of the United States, the right is created by the invention, and not by the patent. The Court, therefore, may have misled the jury, in stating that the plaintiffs allowed the invention to be used. The thing invented was only permitted to be used. The suggestion, that by adopting the language of the Eng- lish statute, the cases decided in England upon that statute are adopted, may be answered, by a reference to those cases. They have all arisen within a few years, since the enactment of our law ; and, except the dictum of Lord Coke in 2d In- stitute, the authorities are all of modern date. If this Court shall be of opinion, that as no instructions were particularly asked upon the questions raised here, the Court below were not bound to notice them in the charge, and that the Court did not undertake to decide the whole law ; the plaintiff in error can make out no case here. But if this Court shall consider the questions now submitted, doubtful, as the rights of the plaintiffs may not have been fully investigated, by sending the case back to the Circuit PATENT CASES. 549 Pennock et al. v. Dialogne. 2 Peters. Court, a more full investigation of all the points involved in it may be made. Mr. Sargeant, for the defendant, insisted, 1. Thit mere , invention gives no right to an exclusive use, unless a patent is obtained ; and that if at a time when no right is infringed, the public fairly acquire possession of it, the inventor cannot, by subsequently obtaining a patent, take it away. 2. That the inventor, by abstaining from getting a patent, encouraged the public to use the article freely, and thus benefited his own manufactory. And he is not at liberty, when this advantage is exhausted, to turn round, and * endeavor to reach another and a different [ * 8 ] kind of advantage, by appropriating the use exclu- sively to himself. In the circuit where this cause was tried, it was not the practibe to ask the Court for special instructions to the jury. After the evidence had been closed, and counsel heard, a charge was given to the jury, according to the nature of the case, upon the points made by counsel, or which might sug- gest themselves to the mind of the judge. It was competent, however, to either party, after the charge, to ask the opinion of the Court upon any point supposed to have been omitted, which was material to the decision. In this case, no such request had been made ; and no objection can now be made to the charge, for any imputed omission. The only question was, whether the principles laid down to the jury for their guidance were correct, and according to law, in the particular, excepted to. The charge must of course be considered with reference to the facts, the whole of which appear upon the record. The petition of the plaintiffs to the Secretary of State stated, in the words of the Patent Law, that they were the inventors 550 PATENT CASES. Pennock et al. v. Dialogne. 2 Peters. of a " new and useful improvement," " not known or used before their application." The " application " was made in July, 1818. Their averment therefore, upon which they ob- tained their patent was, that the rivet hose was a new inven- tion, not " known or used " before the year 1818. The facts proved uffcn the trial were, that the invention had been completed and published in the year 1811, seven years before the application. That during all that period, it had been known and used as common public property, (and not as private property) which any one might use as publicly known. And that it was so known and used with the knowledge of those 'who now claim to be the inventors; without any asser- tion or claim on their part of exclusive property, and without notice of intention to make such claim. There was not a single circumstance offered to explain the delay. There was an attempt to show, that the making of the article for use, was limited by the authority and [ * 9 ] permission * of the plaintiffs, and thence to infer that they did not intend to give it to the public. A witness, produced by them, and the only person who ap- peared to have made the article, declared in substance, " that he was taught by the plaintiffs in 1811 to make hose ; that in that year he made a certain quantity of it for the Philadel- phia Hose Company, plaintiffs beings-members of the conlmit- tee ; and that by permission of the plaintiffs he made about thirteen thousand feet of hose, for different hose companies, from 1811 to the time of granting the patent." Thus, in point of fact, nearly two miles and a half in length of hose, had been made at different times in the course of seven years before the patent ; and had been sold to different hose companies ; not to experiment with, in order to bring the invention to perfection ; but for public use, as a thing already completed, and adapted to the purpose of arresting the ravages of fire. It was so used ; and from the year 1811 PATENT CASES. 551 Pennock et al. v. Dialogue. 2 Peters. to the year 1818, it was never materially altered or improved. The thing patented in 1818 was precisely the thing invented, completed and used in 1811. Were the plaintiffs, under these circumstances, entitled to a patent ? Or could a patent, thus obtained, be supported ? The authorities upon the subject are decisive. He did not admit that the weight of judicial or legal opinion in England was lessened by the supposed difference in the policy of the two countries, or that in fact any such difference existed. It was true, that the process or mode of legislation was varied according to the existing state of thii^gs. The statute of James was made to abolish monopolies ; but it saved, by ex- ception, the rights of the inventors of new and useful inven- tions, who had before enjoyed exclusive privileges. The Constitution of the United States and the Act of Congress, on the contrary, having no monopolies to deal with, created exclusive privileges in favor of the same description of per- sons. The one preserved to them a preexisting monopoly, and the other conferred it upon them. Both were influenced by the merits of the inventor, and the public advantage of encouraging inventive genius. And they were * equally influenced by these considerations; for it [ * 10 ] required at least as strong a sense of their just claims to distinction, to except new and useful inventions from the statutory odium and denunciation of monopolies, as it did to confer upon them the benefits of monopoly by direct enactment. There was no reason, therefore, why the judi- cial construction of the statute of James, (from which our act of Congress was in this respect copied,) which had become, as it were, incorporated with and part of the statute, should not be as much respected as in the instance of any other sta- tute. The adoption of the language of the statute, was the adoption also of its settled interpretation. It could not surely be insisted tliat England was wanting in intelligence to dis- 552 PATENT CASES. Fennock et al. u. Dialogue. 2 Peters. cern the value of genius, or in liberality to reward it ; or that there was a prevailing bias in her judiciary towards an unjust restriction of the rights of meritorious inventors. The senti- ment of the nation, and the government, in all its branches, was the opposite of this. Before referftng to the cases, it might be well, however, to examine the matter a little upon principle. What is the right of an irfventor ? It is the right, given to him by the law, to apply for and obtain a patent for his invention. The patent, when duly obtained, secures to him the exclusive enjoyment. Has he any other right before he obl&ins a patent than the one just stated ? It is obvious that he has not. This, then, is what the learned judge, in his charge, styles, with peculiar aptness, an inchoate right ; that is, a right to have a title upon complying with the terms and conditions of the law. It is like an inchoate right to land, or an inceptive right to land, well known in some of the States, and everywhere accom- panied with the condition, that to be made available, it must be prosecuted with due diligence, to the consummation or completion of the title. If the condition be not complied with, the right is abandoned or lost, and the rights of others are let in. The abandonment is not a question of intention of the party, but it is the legal construction of his acts or omissions. Had the plaintiffs ever such an inchoate right? [ * 1.1 ] According *to the opinion of the judge, they un- doubtedly had such a right by their invention in 1811. Then, they could have made out the case required by the first section of the Act of Congress — they could have stated with truth, that the thing invented " was not known or used before their appUcation." But in the year 1818 it was no longer true. It might be stated, but it could not be truly stated. They were unable to comply with the condition of law. For, if the inventor, as was the case here, voluntarily PATENT CASES. 553 Fennock et al. v. Dialogue. 2 Peters. permit his invention to be known and used, as a thing not intended to be patented, how can he make this statement ? By so doing, he abandons his inchoate right ; he proclaims to the world that he does not mean to secure it by patent, and every one is at liberty to consider it abandoned, - because every one acquainted with the law knows that he has incur- red a disabihty. This is the inevitable legal conCstruction of his conduct, and is altogether independent of his intention ; unless we suppose the act to be guilty of the absurdity of requiring that to be stated which it does not require to be true. But the terms of the act are in this respect too plain to admit of a doubt. Suppose an applicant should state, that his invention had been known and used for seven years be- fore his application, could he obtain a patent ? Suppose he should state, that he had always intended to reserve to him- self a right to obtain a patent, would that help him ? Or, if he should state that it had been so known and used only by his permission ? The language of the act is plain and im- perative. There is no scope for interpretation. The pre- scribed condition is express. And there is no doubt that it was the intention of Congress to refer to the " application," as the period before which the thing was not known or used ; for in the subsequent Act of 17th April, 1800, conferring the privileges of the Patent Law upon resident aliens, the same word is used for the same purpose. And it is declared that the patent shall be void if the thing patented was known or used before the application. Act of 17th April, 1800, section 1. * It is not contended, that if the invention should [ * 12 ] be pirated, the use or knowledge, obtained by the piracy, or otherwise obtained without the knowledge or con- sent and without the fault of the inventor, would bar him from getting a patent. Nor is it contended that his own roii. I. — p. c. 47 554 PATENT CASES. Fennock et al. v. Dialogue. 2 Peters. knowledge an4 use would be a bar. The latter is a neces- sary exception out of the generality of the terms of the law, because every inventor must know his invention, and must use it to the extent of ascertaining its usefulness, before he applies for a patent. The former is a case where there is no fault on the part of the inventor. But it is contended, that the inventor who means to rely upon a patent must make his application within a reasonable time ; and that if he permit his invention to be publicly known and used before he ap- plies, he cannot obtain a patent. He abandpns his right, if he sell it for public use himself, and d fortiori, if he permit another so to sell it. There is a cautious intimation in the charge, that possibly there might be some saving efficacy in accompanying the use with an assertion of claim by the inventor. And it is also put as a circumstance against the plaintiffs (which was clearly in evidence) that there was no such assertion or notice. The charge is therefore applicable only to a case of unqualified public use, without notice or assertion of claim. That such a notice would be available, or that there can be any other assertion of claim than the legal assertion by applying for a patent ; are propositions which it is not now necessary to ex- amine. They were not affirmatively laid down by the Court, nor otherwise adverted to than for the purpose of showing that the facts did not entitle the plaintiffs to the benefit of them. They cannot therefore complain. Whether such assertions or notice, contradicted by the acts of the inventor, will be available, is a question not decided below. Certain it is, that a secret permission given to their own agent, can no more be an assertion or notice, than a resolution locked up in their own breasts. The construction contended for is in accordance with the policy of the law. Patents are intended to [ * 13 ] be granted * for a limited time, beginning with the PATENT CASES. 555 Fennock et al. o. Sialogne. 2 Peters. ^ — ^ - invention. He who asks for one must describe his invention with such certainty as will ensure to the'public its use, when the patent expires ; and at the expiration of the time, the thing invented is public property. The inventor, to enjoy its benefits, must place his whole reliance upon it. Is it compe- tent for him, then, to secure to himself the advantages of his own peculiar knowledge and skill, as long as these will avail him, and when they are exhausted, to apply for a patent ? There are many inventions, the secret of which is not at once discoverable from an inspection of the thing invented. The inventor may keep that as long as he can. He may have ex- traordinary skill or methods of working which will enable him to keep the market to himself. May he enjoy these exclusive privileges for seven years, and then obtain a patent for fourteen more? He would then have the exclusive use for twenty-one years. If for seven, why not for fourteen, or twenty-one, or any other assignable time ? The moment that his invention comes into the most common or public use, is the moment when he applies for a patent. When the public hav^ fully got possession of it, he seeks to withdraw it from the common stock and appropriate it to himself. This is directly contrary to the design of the law. It extends the term, and inverts the ord^r of proceeding. The inconve- niences would be very great. Those who were engaged in making the article must stop. Those who had arranged for making it must abandon their arrangements. Those who had employed their time in learning to make it must lose their lime and their labor. And even a bond fide inventor, who had discovered the same thing by his own study and experi- ments, would be deprived of the fruits of his ingenuity and exertions. And why ? Siniply because the first inventor did not choose sooner to take out a patent, as he might have done. The conditions of the law being such as he can com- ply with, and ought to comply with, he postpones a compli- 556 PATENT CASES. Fennock et al. v. Dialogue. 2 Peters. ance for his own profit, and leads the community [ * 14 ] into an injBrious error. If it be designed, * it is a wrong. If it be without design, it is negligence.' Ought he to be benefited by his own wrong or negligence ? The authorities are against him. He cited 3 Inst. 184; Wood V. Zinfhier, 1 Holt's N. P. Rep. 58; Whittemore v. Cutter, 1 Gall. 482 : and referred to Evans v, Eaton, 1 Pe- ters's C, C. Rep. 348; Thompson v. Haight, 1 U. S. Law Journal, 563. He t^en examined the several points stated for the defend- ant, contending that some of them were unsupported by the facts, and others by the law. Under the second he argued that there had been an " unreasonable lapse of time," and "gross negligence." That seven years (the period here unexplained) were beyond all reasonable bounds. He contended, also, that due diligence, where there were no circumstances of explanation, was a question of law ; and that it consisted in applying for a patent as soon after the invpntion was completed as could reasonably be done : and, finally, that due diligence required that the application should be made before Ihe thing invented was publicly known and used with the consent of the inventor. Mr. Justice Stoet delivered the opinion of the Court. This is a writ of error to the Circuit Court of Pennsylva- nia. The original action was brought by the plaintiiFs in error for an asserted violation of a patent, granted to them on the 6th of July, 1818, for a new and useful improvement in the art of making leather tubes or hose, for conveying air, water, and other fluids. The cause was tried upon the general issue, and a verdict was found for the defendant, upon which judgment passed in his favor ; and the correct- ness of that judgment is now in controversy before this Court. At the trial, a bill of exceptions was taken to an opinion PATENT CASES. 557 Feunock et al. v. Dialogue. 2 Peters. delivered by the Court, in the charge to the jury, as foljows, namely, " That the law arising upon the case was, that if an Inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice, he abandons * the inchoate right to the [ * 15 ] exclusive use of the invention, to which a patent would have entitled him had it been applied for before such use. And, that it makes no difTerence in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. And, thereupon, did charge the jury, that if the evidence brings the case within the princi- ple which had been stated, the Court were of opinion that the plaintiffs were not entitled to a verdict." The record contains, embodied in the bill of exceptions, the whole of the testimony and evidence offered at the trial, by each party, in support of the issue. It is very voluminous, and as no exception was taken to its competency, or suffi- ciency, either generally or for any particular purpose, it is not properly before this Court for consideration, and forms an expensive and unnecessary burden upon the record. This Court has had occasion, in many cases, to express its regret, on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record, since the opinion of the Court, delivered to the jury, presented a general principle of law, and the application of the evidence to it was left to the jury. In the argument at the bar, much reliance has been placed upon this evidence, by the counsel for both parties. It has been said, on behalf of the defendants in error, that it called for other and explanatory directions 'from the Court, and that the omission of the Court to give them, in the charge, fur- 47* 558 PATENT CASES. Fennock et al. v. Dialogue. 2 Peters. nishes a good ground for a reversal, as it would have furnished in the Court below for a new trial. But it is no ground of reversal that the Court below omitted to give directions to ■ the jury upon any points of law which might arise in the cause, where it was not requested by either party at the trial. ~~It is sufEcientrfor us that the Court has given no erroneous directions. If either party deems any point presented by the evidence to be omitted in the charge, it is competent for such party to require an opinion from the Court upon [ * 16 ] that point. If he does not, it is a waiver of * it. The Court cannot be presumed to do more, in ordi- nary cases, than to express its opinion upon the questions which the parties themselves have raised at the trial. On the other hand, the counsel for the defendant in error has endeavored to extract from the same evidence, strong confirmations of the charge of the Court. But, for the reason already suggested, the evidence must be laid out of the case, and all the reasoning founded on it falls. The single question then is, whether the charge of the Court was correct in point of law, It has not been, and indeed cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure ; for, where gifts are once made to the public in this way, they become absolute. Thus, if a man dedicates a way, or other easement to the public, it is supposed to carry with it a permanent right of user. The question which gene- rally arises at trials, is a question of fact, rather than of law, whether the acts or acquiescence of the party furnish, in the given case, satisfactory proof of an abandonment or dedica- tion of the invention to the public. But when all the facts are given, there does not seem any reason why the Court may not state the legal conclusion deducible from them. In this view of the matter, the only question would be, whether. PATENT CASES. 559 Pennock et al. v. Dialogue. 2 Peters. upon general principles, th^ facts stated by the Court would justify the conclusion. In. the case at bar, it is unnecessary to consider whether the facts stated in the charge of the Court would, upon general principles, warrant the conclusion drawn by the Court, independently of any statutory provisions ; because, we are of opinion, that the proper answer depends upon the true exposition of the Act of Congress, under which the present patent was obtained. The Constitution of the United States has declared, that Congress shall have power " to promote the progress of science and useful arts, by securing/or limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." It contemplates, there- fore, that this exclusive right shall exist but for a * limited period, and that the period shall be subject [ * 17 J to the discretion of Congress. The Patent Act, of the 21st of February, 1793, ch. 11, prescribes the terms and conditions and manner of obtaining patents for inventions ; and proof of a strict compliance with them lies at the foun- dation of the title acquired by the patentee. The first sec- tion provides, " that when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new or useful art, machine, manufac- ture, or composition of matter, or any new or useful improve- ment on any art, machine, or composition of matter, not known or used before the application, and shall present a petition to the Secretary of State, signifying a desire of ob- taining an exclusive property in the same, and praying that a patent may be granted therefor, it shall and may be lawful for the said Secretary of State, to cause letters-patent to be made out in the name of the United States, bearing teste by the President of the United States, reciting the allegations and suggestions of the said petition, and giving a short description of the said invention or discovery, and thereupon granting 560 PATENT CASES. Fennock et al. v. JUsilogae. 2 Peters. to the said petitioner, k,c., for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery, &c." The third section pro- vides, " that every inventor, before he can receive a patent^ shall swear, or affirm, that he does verily believe that he is the true inventor or discoverer of the art, machine, or im- provement for which he solicits a patent." The sixth section provides that the defendant shall be permitted to give in defence, to any action brought against him for an infringe- ment of the patent, among other things, " that the thing thus secured by patent was not originally discovered by the pa- tentee, but had been in use, or had been .described in some public work, anterior to the supposed discovery of the patentee." These are the only material clauses bearing upon the ques- tion now before the Court; and upon the construction of them, there has been no inconsiderable diversity of [ * 18 ] * opinion entertained among the profession, in cases heretofore litigated. It is obvious to the careful inquirer, that many of the pro- visions of our Patent Act are derived from the principles and practice which have prevailed in the construction of that of England, It is doubtless true, as has been suggested at the bar, that where English statutes, such for instance, as the Statute of Frauds, and the Statute of Limitations, have been adopted into our own legislation, the known and settled construction of those statutes by Courts of law, has been considered as silently incorporated into the acts, or has been received with all the weight of authority. Strictly speaking, that is not the case in respect to* the English Statute of Mo- nopolies, which contains an exception on which the grants of patents for inventions have issued in that country. The language of that clause of the statute is not, as we shall PATENT CASES. 561 Fennock et al. v. Dialogue. 2 Peters. presently see, identical with ours ; but the construction of it adopted by the English Courts, and the principles and prac- tice which have long regulated the grants of their patents, as they must have been known find are tacitly referred to in some of the provisions of our own statute, afibrd materials to illustrate it. By the very terms of the first section of our statute, the Secretary of State is authorized to. grant a patent to any citizen applying for the same, who shall allege that he has invented a new and useful art, machine, &c., &c., "not Tcnown or used before the application." The authority is a limited one, and the party must bring himself within the terms, before he can derive any title to demand, or to hold a patent. What then is the true meaning of the words " not known or used before the application V They cannot mean that the thing invented was not known or used before the application by the inventor himself, for that would be to prohibit him from the only means of obtaining a patent. The use, as well as the knowledge of his invention, must be indis- pensable to enable him to ascertain its competency to the end proposed, as well as to perfect its component parls. The words then, to have any rational interpretation, must "mean, not known or used by others, before [ * 19 ] the application. But how known or used ? If it were necessary, as it well might be, to employ others to assist in the original structure or use by the inventor himself; or if before his application for a patent his invention should be pirated by another, or used without his consent ; it can scarcely be supposed, that the legislature had within its con- templation such knowledge or use. We think, then, the true meaning must be, not known or used by the public, before the application. And, thus con- strued, there is much reason for the limitation thus imposed by the act. While one great object was, by holding out a 562 . PATENT CASES. Pennock et al. v. Dialogne. 2 Peters. reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius, the main object was " to promote the pro- gress of science and useful arts ; " and this could be done best, by giving the public at large a right to make, construct, use; and vend the thing invented, at as early a period as pos- sible ; having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the know- ledge of the public the secrets of his invention ; if he should, for a long period of years, retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure, and then, and then only, when the danger of com- petition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts, and give a pre- mium to those who should be least prompt to communicate their discoveries. A provision, therefore, that should withhold from an in- ventor the privilege of an exclusive right, unless he should, as early as he should allow the public use, put the public in possession of his secret, and commence the running of the period, that should limit that right, would not be deemed unreasonable. It might be expected to find a place [ * 20 ] in a * wise prospective legislation on such a subject. If it was already found in the jurisprudence of the mother country, and had not been considered inconvenient there ; it would not be unnatural that it should find a place in our own. Now, in point of fact, the statute of 21 Jac. ch. 3, com- naonly called the Statute of Monopolies, does contain exactly such a provision. That act, after prohibiting monopolies PATENT CASES. 563 Pennock et al. v. Dialogue. 2 Peters. generally, contains, in the sixth section, an exception in favor of " letters-patent and grants of privileges for fourteen years or under, of the sole working or making of any manner of new manufactures within this realm, to the true and first in- ventor and inventors of such manufactures, which others, at the time of making such letters-patent and grants shall not use." Lord Coke, in his commentary upon this clause or proviso, (3 Inst. 184,) says that the letters-patent "must be of such manufactures, which any other at the time of making such letters-patent did not use ; for albeit it were newly in- vented, yet if any other did use it at the making of the letters- patent, or grant of the privilege, it is declared and enacted to be void by this act." The use here referred to has always been understood to be a public use, and not a private or sur- reptitious use in fraud of the inventor. In the case of Wood v. Zimmer, 1 Holt's N. P. Rep. 58, this doctrine was fully recognized by Lord Chief Justice Gibbs. There the inventor had suffered the thing invented to be sold, and go into public use for four months before the grant of his patent ; and it was held by the Court, that on this ac- count the patent was utterly void. Lord Chief Justice Gibbs said, "To entitle a man to a patent, the invention must be new to the world. The public sale of that which is after- - wards made the subject of a patent, though sold by the in- ventor only, makes the patent void." By " invention," the learned judge undoubtedly meant, as the context abundantly shows, not the abstract discovery, but the thing invented ; not the new secret principle, but the manufacture resulting from it. The words of our statute are not identical with those of * the statute of James, but it can scarcely [ * 21 ] admit of doubt, that they must have been within the contemplation of those by whom it was framed, as well as the construction which had been put upon them by Lord 564 PATENT CASES. Femnock et al. v. Dialogue. 2 Peters . Coke. But if there were no such illustrative comment, it is difficult to conceive how any other interpretation could fairly be put upon these words. We are not at liberty to reject words which are sensible in the place where they occur, merely because they may be thought, in some cases, to im- port a hardship^ or tie up beneficial rights within very close limits. If an invention is used by the public, with the consent of the inventor, at the time of his application for a patent, how can the Court say, that his case, is, nevertheless, such as the act was intended to protect ? If such a public use is not a use within the meaning of the statute, what other use is ? If it be a use within the meaning of the statute, how can the Court extract the case from its operation, and support a patent, where the suggestions of the patentee are not true, and the conditions on which alone the grant was authorized to be made, do not exist ? In such a case, if the Court could perceive no reason for the restrictions, the will of the legislature must still be obeyed. It cannot and ought not to be disregarded, where it plainly applies to the case. But if the restriction may be perceived to have a foundation in sound policy, and be an effectual means of accompUshing the legislative objects, by bringing inventions early into public and unrestricted use ; and above all, if such policy has been avowed and acted upon in like cases in laws having similar objects; there is very urgent reason to suppose, that the ^ act in those terms embodies the real legislative intent, and ought to receive that construction. It is not wholly insignificant in this point of view, that the first Patent Act passed by Con- gress on this subject, (Act of 1790, ch. 34, [ch. 7,] ) which the present act repeals, uses the words " not known or used before" without adding the words " the application ; " and in connection with the structure of the sentence in which they stand, might have been referred either to the time of the invention, or of the application. The addition of the PATENT CASES. 565 Fennock et al. v. Dialogue. 2 Peters. * latter words in the Patent Act of 1793, must, [ * 22 J therefore, have been introduced, ex industria, and with the cautious intention to clear away a doubt, and fix the original and deliberate meaning of the legislature. The Act of the 17th of April, 1800, ch. 25, which extends the privileges of the Act of 1793 to inventors who are aliens; contains a proviso declaring, " that every patent which shall be obtained pursuant to the act for any invention, art or dis- covery, which, it shall afterwards appear, had been known or used previous to such application for a patent, shall be void." This proviso certainly certifies the construction of the Act of 1793, already asserted ; for there is not any reason to suppose, that the legislature intended to confer on aliens, privileges essentially different from those belonging to citi- zens. On the contrary, the enacting clause of the Act of 1800 purports to put both on the same footing ; and the pro- viso seems added as a gloss or explanation of the original act. The only real doubt which has arisen upon this exposition of the statute, has been created by the words of the sixth section already quoted. That section admits the party sued to give in his defence as a bar, that " the thing thus secured by patent was not originally discovered by the patentee, but had been in use anterior to the supposed discovery of the patentee." It has been asked, if the legislature intended to bar the party from a patent in consequence of a mere prior use, although he was the inventor; why were not the words " anterior to the application," substituted, instead of " ante- rior to the supposed discovery 1 If a mere use of the thing invented before the application were sufficient to bar the right, thpn, although the party may have been the first and true inventor, if another person, either innocently as a second inventor, or piratically, were to use it without the knowledge of the first inventor ; his right would be gone. In respect to a use by piracy, it is not clear that anjisuch fraudulent use is VOL. I. — p. c. 48 i: x\. JL iui.\ d. \yixaiutJ, Pennock et al. v. Dialogue. 2 Peters. within the intent of the statute ; and upon general principles it might well be held excluded. In respect to the [ * 23 ] case of a second iqvention, it is questionable * at least, whether, if by such second invention a public use was already acquired, it could be deemed a case within the protection {tf the act. If the public were already in pos- session and common use of an invention fairly and without fraud, there might be sound reason for presuming, that the legislature did not intend to grant an exclusive right to any one to monopolize that which was already common. There would be no quid pro quo — no price for the exclusive right or monopoly conferred upon the inventor for fourteen years. Be this as it may, it is certain that the sixth section is not necessarily repugnant to the construction which the words of the first section require and justify. The sixth section cer- tainly does not enumerate all the defences which a party may make in a suit brought against him for violating a patent. One obvious omission is, where he uses it under a license or grant from the inventor. The sixth section in the clause under consideration, may well be deemed merely affirmative of what would be the result from the general principles of law applicable to other parts of the statute. It gives the right to the first and true inventor and to him only ; if known or used before his supposed discovery he is not the first, although he may be a true inventor ; and that is the case to which the clause looks. But it is not inconsistent with this doctrine, that although he is the first, as well as the true inventor, yet if he shall put it into public use, or sell it for public use before he applies for a patent, that this should furnish another bar to his claim. In this view an interpreta- tion is given to every clause of the statute without introducing any inconsistency, or interfering with the ordinary meaning of its language. .No public policy is overlooked ; and no injury can ordinarily ocicur to the first inventor, which is not PATENT CASES. 567 Whitney et al. v. Ernmett et al. 1 Bald. in some sort the result of his own laches or voluntary inaction. It is admitted that the subject is not wholly free from diffi- culties ; but upon most deliberate consideration we are all of opinion, that the true construction of the act is, that the first inventor cannot acquire a good title to a patent ; if he suffers the thing invented to go into public use, or to be * publicly sold for use, before he makes application [ * 24 ] for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right ; or rather creates a disability to comply with the terms and con- ditions on which alone the Secretary of State is authorized^ to grant him a patent. The opinion of the Circuit Court was therefore perfectly correct; and the judgment is 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 district of Pennsylvania, and was argued by counsel ; on con- sideration whereof, it is the opinion of this Court, that there is no error in the judgment of the said Circuit Court. Where- upon, it is considered, ordered, and adjudged by this Court, that the said judgment of the said Circuit Court in this cause, be and the same is hereby affirmed with costs. Whitnet and othees v. Emmett and otheks. [1 Baldwin, 303. April T. 1831.] If the deposition of a witness who is attending in Court is read without objec- tion, he may be examined in chief by the party who read his deposition. 568 PATENT UASJKS. Whitney et al. v. Emmett et al. 1 Bald. A patented invention is deemed useful if it is not friTolous ; the want of utility is good cause for not granting the patent, but not for setting it aside. The prior knowledge and use of the inyention which avoids a patent, relates to the time of the application, not the discovery, and to public use with the ]^owledge and privity of the patentee, not to a private or surreptitious use in fraud of the patent. If the application is made in a reasonable time after the discoTery, any inter- mediate knowle%e or use will not affect the patent. But the invention must be new to all the world. If the patent is for an improvement, it must be substantially new, one capable of application by the means pointed out by the patent, specification, drawing, ' model and the old machine. If by these means the invention and the mode of using it are intelligible to persons skilled in the subject, the requisite of a specification by the third section of the Act of 1793, are complied with. It is not necessary that the disclosure of the secret should be such as to enable the public to use the invention after the patent has expired, as in England, such being the consideration on which patents are granted there. The dif- ference between their Patent Laws and ours explained. If the patent is broader than the invention, if not sufficiently descriptive, taken in connection with the specification, &c., the plaintiff cannot recover. But though the patent is too broad in 'its general terms, it will be limited by a summary and disclaimer, if they show the thing intended to be patented, and that no claim is made to any thing before known or used. A patent is a contract with the public in the terms of the law, which must be complied with in the same good faith as other contracts, but as it gives a right of property, it ought to be protected by a liberal construction of the law and the acts of the patentee. A Circuit Court can give a judgment declaring a patent void only in the cases provided for in the sixth section. If the patent is defective for any other cause, the Court can only render a general judgment for the defendant. What is a proper subject for a patent, &c. ' This was an action to recover damages for the violation of a patent for an improved method of making glass knobs, as described in the specification. " To all persons to whom these presents shall come, Henry Whitney, agent of the New England Glass Company, and Enoch Robinson, mechanician, both of Cambridge in the County of Middlesex, and State of Massachusetts, send greet- ing: PATENT CASES. 569 Whitney et al. v. Bmmett et al. 1 Bald. * " Be it known, that we, the said Henry Whit- [ * 304 ] ney and Enoch Robinson, have invented, construct- ed, made, and applied to use, a new and useful improvement in the mode of manufacturing by machinery, at one operation, glass knobs or trimmings for doors, stoves, drawers, sideboards, bureaus, wardrobes, and all kinds of furniture, and other things where glass handles, knobs, or ornaments may be used and fastened by spindles running through the centre of them, specified in the words following, to Wit : " This improvement in making knobs, consists in compress- ing them in moulds, in the manner following. The mould is made of a composition of brass and copper, cast-steel or other metal, of a size and shape suitable to contain the knob, of which mould a model and drawing is deposited in the Patent Office. It is in two parts, a top part and bottom part ; the lower or bottom part is to receive the melted glass and form the main part of the knob, and the top part is to press the knob, form its ornamental face, and to perforate it with a pin longitudinally. The bottom part is made in two piecesj fastened together by a hinge on the back side, with handles on each side, in front, to open and shut if, and a clasp to fas- ten it together, while receiving the melted glass and the im- pression. The bottom part terminates upward by a tube, cylindrical or nearly so, from one eighth to four eighths of an inch high, according to the size of the article to be made, into which the top part of the mould enters to compress and form the knob and stamp its face. The top part is of a size and shape suitable to enter and fill the cylindrical space at the top of the bottom part ; on its face or underside is a die, figured with circles, rings, hearts, roses, leaves, fruit, animals, or any other fancy or ornamental shape, which has been or may be used in brass or other ornaments, or the face may be made plain. " Into the top part is fastened a steel pin, of a square, 48* 570 PATENT CASES. Whitney et al. v. Emmett et al. 1 Bald. round, or any other shape, projecting from it perpendicularly downward, of a length sufficient to penetrate quite through the article to be made. To reject the surplus quantity of glass, and prevent its accumulation in the mould from the quantity displaced by the pin in perforating the knob, a hole, nearly of the ^ze and shape of the pin, is made perpendicu- larly downwards, through the under part of the bottom piece of the mould, through which the surplus glass is driven, by the expression, in forming the article. " To use the mould, we place the bottom part on a table, on which is perpendicularly erected a standard [ * 305 ] twelve or fourteen inches high, * for the purpose of attaching to it a lever, to force down the top part and give the impression, and to hang a gate turned on a pivot, to which the top part of the mould is fixed. On the end of the lever behind the standard, a spiral or other spring is fastened, which is also fastened to the table, to suspend the top part of the mould when it is raised by the lever. The position of the top is so adjusted, with reference to the bot- tom part of the mould, by a guide fastened to the standard, that when the power is applied to the lever to compress the glass, the top exactly shuts into the bottom part and forces the pin through the knob into the hole below it. " The mould being thus prepared for use, the top is raised by the lever and turned a little on one side by the gate, to give room to drop the melted glass into the bottom part of the mould. The glass is then gathered from the pot and dropped into the bottom part of the mould, which is already closed and secured against opening by the clasp ; the gate is then turned back against the guide, so that the top of the mould is brought directly over the bottom, and by the appli- cation of power to the lever the article is at once compressed, formed and finished ; the top is then raised by the lever, the clasp on the bottom part is unfastened, the mould is opened by the handles, and the knob taken out, so entirely finished, PATENT CASES. 571 Whitney et al. v. Emmett et al. 1 Bald. that it only requires fire polishing to make it a neat article fit for immediate use. " We do not claim to be the original inventors of the mould, as applied to the formation of glass wares, but admit that for many purposes it has been heretofore used. Our invention consists in this : a new combination of the various parts of the mould, with the use of the pin and machinery before describ- ed, in such a manner as, without any blowing, to produce a finished knob, with a hole perforated through it, and a neck or enlargement, so that it will not come out of the mould with- out opening it, at one operation, by compression merely. " In testimony that the above is a true specification of our said improvement, as above described, we have hereunto set our hands and seals, this 22d day of August, in the year of our Lord 1826." A drawing and model of the improved machine were pro- duced at the trial, as also the old machine, and the one used by the defendants, which was alleged to be the same in sub- stance as the one patented ; the fact and extent of the infringement were admitted, * as well as the [ * 306 ] general utility of the improved machine, so far as was required by law. The cause turned on the validity of the patent, which was alleged to be void, because the invention was not new, and the specification defective; much evidence was heard and read on the questions of fact, but no questions of law arose except such as were founded on the patent and specifica- tion. Mr. C. Ingersoll and Mr. C. J. Ingersoll for defendants. The patent is void on account of the defect in the spe- cification, in not describing what parts of plaintiff's machine are old and what parts are claimed as his invention ; it is the more necessary in this case as the patent embraces the whole 572 FATliiiMT UAHiliiS. Whitney et al. v. Emmett et al. 1 Bald. machine, whereas, it is admitted that only parts j were in- vented by the plaintiffs. If the improvement is not so sped" fied as to discriminate between the original and improved machine, and the patent is taken according to its terms, it > is broader than the invention, and therefore void. 1 Qall. 479,480; 11 Bast. 110. The law requires the specificar tion to explain the precise improvement patented; if it is for a new combination of the old parts, the improved mode of operation and construction must be particularized ; if for any new parts or additions, they must be specified, and their connection with the old parts explained. The specification is defective in both particulars ; the law requires that it should set out every thing necessary to enable others to avoid any interference with the thing, invented, to describe it in such clear terms that others can use it, and the public have the benefits of it after the patent-right has expired, otherwise it is void, although we do not make out a case of fraudulent addition or concealment, according to the terms of the sixth section of the law. If the specification is not strictly conformable to law, the patent is void, to whatever cause it is owing ; it must speak for itself, (Say. 254,) so as to be intelligible without extraneous explanation, for the full and perfect explanation and descrip- tion of the thing patented is the consideration of the grant, for want of which it is void. 7 Wheat. 423, 468. A perfect description is the plaintiff's only title, which he must make out affirmatively on the face of the specification, for the benefit of the public, who are parties to all suits on patents, and public policy declares them void if they do not meet every requisition of the law. Davis on Patents, 55, 56. Patents being monopolies, in derogation of com- [ * 307 ] mon-law rights, * are deemed odious in the law, unless they are clearly for an invention of the pa- tentee ; if the subject-matter is not new, though new to the PATENT CASES. 573 Whitney et al. v. Emmett et al. 1 Bald. inventor, his patentns void, or if the patent embraces any thing not new. In this case the summary, which is the outline of the patent, refers to the whole machinery, without a clue to separate the old from the new, the parts disclaimed are use- less, and those claimed are a mere change of the forms and proportions of the old parts. Judging from the specification, the patent is not for an improvement on a machine, or an im- proved machine, but for a result which is pointed out ; it is wholly obscure as to the mode of operation, and the particular combination of the old and new parts which pro- duce this result ; on this account the patent is void. But if it is valid the plaintiff" cannot recover in this case, because his patent is for a combination of machinery, and he has not shown that our machine adopts his whole combination, (1 Ma- son, 474, 475,) or in what particular it is an infringement of his right. Mr. Cadwalader and Mr. Sergeant, for plaintiffs. If inventors are not protected, great injustice is done them, because they cannot be restored to their rights after they have disclosed their invention to the public by a specification, which enables any person to take advantage of it. In this case the invention is very plainly described, in detail, in the body of the specification, and in summing it up, at the close, by de- claring it to consist of a new combination of the various parts of the mould, &c. ; disclaiming its original invention and ad- mitting its former use. It is not necessary to describe the old machine or its parts, which are as well known and fami- liar to a person who understands machinery, as a watch ; a patent for an improvement on a watch is good without de- scribing the watch, (Davis 45, 56,) so of a steam-engine, (8 Durnf. &, East. 98,) or an improvement in mill machinery, (3 Wheat. 511,) &c. The specification is addressed to engi- neers and persons skilled in the business to which the im- 574 PATENT CASES. Wliitiley et al. o. Emmett et al. 1 Bald. provement relates. Davis, 214, 216. If they understand the invention, and can produce the result, the object of the law is answered. When others are enabled to make the improved machine from the directions given in the specification, this is the scope and end of the matter, (PI. 18,) required by the law ; and when this*can be done the patent is good, though the de- scription may be imperfect, if it is not designedly so to mislead the public, (1 Peters's C. C. Rep. 400; 1 Gall. 479, [ * 308 ] 480,) and the disclosure made in the * same good faith that is required in other contracts. 14 Ves. 131, 136 ; 1 Durnf. & East, 606. By applying the specifica- tion to the old and improved machines, and putting them into operation, the invention is at once intelligible ; and the summary and disclaimer limit it to the new combination, (2 Mason, 1 12 ; 8 Durnf. & East, 103,) so that it is as broad as the patent. By applying the same test to the defendants' machine, it is apparent that the whole improvement of the plaintiffs is used. If thiey allege that any part of what is claim- ed as the invention had been known or used before our appli- cation for a patent, the burden of proof rests on them to prove it to have been a public use, and not one in fraud of the pa- tent, or after notice of the application. Pennock v. Dialogue^ 1 Peters, 4, 14. Patents give a right of property in the in- vention ; they are construed as other grants are, liberally, in favor of the grantee, and so that they shall be sustained, where there has been a substantial compliance with the law, and the subject-matter is a practical improvement. 1 1 East, 110 ; 2 H. Bl. 495 ; 1 Duinf. «fc East, 606. Baldwin, J., to the jury. The plaintiffs' patent is for a new and useful improvement, in the mode of manufacturing glass knobs by machinery at one operation, by spindles running through the centre of the knob, without blowing. The specification describes the man- PATENT CASES: 575 WhitneT et al. v. Emmett et al. 1 Bald. ner of doing it, and concludes with a declaration, sunnniing up th^ invention and disclaiming the right to the exqlusive use of the mould, as formerly used, but claiming the invention to be a combination of the parts, with the use of the pin and machinery before described. It is admitted by the defendants that they have infringed the right of the plaintiffs as claimed by their patent, to the extent set forth in an account furnished under an order on the equity side of this Court ; also that the subject-matter of the patent is so far useful as to come within the, meaning of the law. But it is contended that the patent is void for two reasons. 1. Because the thing patented was not a new in- vention of the plaintiffs. 2. Because the specification which accompanies the patent is defective, in not discriminating be- tween the old and new machine, and specifying the improve- ment patented ; and by embracing in it the old. parts of the machine, making the patent broader than the invention. These objections depend on the Acts of Congress directing patents to be issued on certain * conditions, [ * 309 ] which must be complied with in order to give action to the special, authority conferred. 2 Peter, 18, 21. The subject-matter of a patent is " the invention of any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereon, not known or used before the application." Act of 1793, 1 Story, 300, 301, &c. No question is raised as to the utility of the plaintiffs' ma-; chine j the word " useful," in the law, is well settled to be used in contradistinction to frivolous improvements and in- ventions, or such as are injurious to the public. 1 Mason's Rep, 185, 302 ; 4 Mason's Rep. 6. The want of utility may be a good reason for not issuing a patent, but is no cause for avoiding it, 1 Peters's C. C. Rep. 403, 480 ; 4 Wash 12. The first importEint inquiry therefore is, whether the plaintifTs' 576 PATENT CASES. Whitney et al. v. Emmett et al. 1 Bald. patent is for a new improvement or invention made by them. It had been the subject of much difference of opinion, whether the words, " not known or used before the application}" in the first section, meant, " but had been in use or described in some public work anterior to the supposed discovery," as in the sixth section ; or, '*known or used previous to the application for a patent," as in the first section of the Act of 1800, (1 Story, 753.) It had been decided in the Circuit Courts that the previ- ous knowledge and use related to the discovery, and that a patent was good though the invention was known and used at the time of the application, as the patent would relate to the discovery, unless the patentee had permitted its use under such circumstances as to authorize the presumption of aban- donment, or dedication of the invention to public use. 1 Paine, 300, 352 ; I Gall. 472 ; 4 Wash, 72, 541, 708 ; 2 Wash. 345 ;4 Mass. 111. But in Pennock v. Dialogue, the Supreme Court have re- ferred the words " known or used " to the application for the patent, according to the construction given by the English Courts to the statute 21 Jac. 1, ch. 3, sect. 5, (3 Ruff. 92,) the words of which are, " which others at the time of making such letters-patent and grants shall not use," which is thus construed ; for albeit it were newly invented, yet if any other did use it at the making of such letters-patent, or the grant- ing the privilege, it is declared and enacted to be void by this act. 3 Co. Inst. 184 ; Vide 3 Wh. 514, S. P. A previous use, to avoid a patent, must not be a private or surreptitious use in fraud of the patentee, but a public use by his consent, by a sale by himself, or by others with [ * 310 ] his acquiescence, by which * he abandons his right, or disables himself from complying with the law ; it is deemed a fraud in law to take out a patent after such use. 2 Peters 20 ; 4 Wash. 538 ; Holt's N. P. 58, 60. PATENT CASES. 577 Whitney et al. v. Ernmett et al. 1 Bald. But unless the invention has been more or less used by others, or publicly communicated by the patentee, his patent will be sustained ; the rule is well illustrated in the English cases, as adopted by the Supreme Court. If the first inventor makes the discovery in his closet, and confines the know- ledge to himself, such knowledge will not invalidate a subse- quent patent to another for the same thing. On the other hand, though persons engaged in the business to which it re^ lates are generally ignorant of the invention, yet if one person had used it for some time with the knowledge of his two part- ners, and two servants engaged in its manufacture, and it ap- peared that a chemist had, in conversation with the patentee, suggested the basis of the invention ; or when he had been informed of it by a person whom he employed to make models of the machine ; or had adopted a machine which had been in a degree before used by a few, though a general ignorance of it was proved by many persons engaged in the trade, the patent is not good. Davis's Pat. Gas. 61 ; 2 H. Bl. 470, 487 ; 8 Taunt. 396, &c,, and cases cited ; S. C. 4 C. L. 375. The priority of knowledge and use is a question of fact, which a jury may decide on the evidence of one witness ; though numerous others of the greatest knowledge and skill in the matter are wholly ignorant of the invention, the question is on the credibility, not the number of witnesses. 8 Taunt. 395 ; 4 Wash. 69, 72, 543, 544. The time during which the thing patented had been known and used is not material, the criterion is its public, not its private or surreptitiousvuse, but the use, with the consent of the inventor, express or implied from circumstances. A patentee may take a reasonable time to make his specification, drawings, model, to try experiments on the effect and operation of his machinery, in order to know whether the thing patented can be produced in the mode spe- cified ; he may disclose his secret to those he may wish to VOL. I. — p. c. 49 578 l-ATEJNT UABJiS. Whitney et al. v. Emmett et al. 1 Bald. consult, or call to his assistance any persons to aid him in making or using his machine, and preparations for procuring his patent. So if the machine is to operate publicly, as in steamboats, a public experiment may be made, or if the pa- tentee is informed that others are using his invention, he may disclose it to 4hem in order to give notice of what it consists, and caution them against its infringement. In either of these and like cases, a disclosure of the secret would not [ * 311 ] be such * previous knowledge, or the use of the in- vention be such an use, as would impair the patent if taken out in a reasonable time after the discovery ; the ques- tion of due diligence or negligence is for the jury, on all the circumstances of the case. Though the discovery by the patentee is new, yet if he is guilty of negligence in procuring his patent, by which the invention has become publicly known, and used by any persons, he has no right of action, the use must be surreptitious in fraud of his right in order to protect it. As to the novelty of the invention the rule is this, " it must be new to all the world, not the abstract discovery, but the thing invented ; not the new secret principle, but the ma- nufacture resulting from it ; it must be new at the time of the application for the patent, in the words of the law ; (2 Peters, 20, 22 ;) but it will be considered as new then, if the applica- tion is within a reasonable time after the discovery, if the patentee has not sold or permitted the use of the invention. There is this difference between the Patent Law of England, and the United States, arising out of the phraseology of their respective laws ; the words of the statute of James are, " new manufacture within this realm," which are held to authorize a patent for an invention known and used in other countries, if it is new in England. 1 Salk. 446, 447. By' the Act of 1800, which is a gloss or commentary on the Act of 1793, (2 Peters, 22,) the patentee must prove that the " invention hath not been known or used in this or any foreign country ; " PATENT CASES. 579 liVhitney et al. v. Emmett et al. 1 Bald. hence it is held void if known or used before anywhere. 1 Peters, C. C. Rep. 400; 1 Wash. 170; 2 Wash. 311; 3 Wash. 433 ; 4 Mass. 109. The novelty of an invention is either the manufacture produced, or the manner of producing an old one ; if the patent is for the former, it must be for something substantially new, different from what was before known ; if the latter, the mode of operation must be different, not a mere change of the form and proportions ; if both are the same in principle, structure, mode of operation, and pro- duce the same result, they are not new, though there may be a variance in some small matter for the purpose of evasion, or as a color for a patent. Nor is a discovery of some new prin- ciple, theory, elementary truth, or an improvement upon it, abstracted from its application, a new invention. But when such discovery is applied to any practical purpose, in the new construction, operation, or effects of machinery or composition of matter, producing a new substance, or an old one in a new way, by new machinery, or a new combination of the parts of an old one, operating in a peculiar, better, cheap- er, *or quicker method, a new mechanical employ- [ * 312 ] ment of principle already known, the organization of a machine embodied and reduced to practice on some- thing visible, tangible, vendible, and capable of enjoyment, some new mode of practically employing human art or skill. It is a " discovery," " invention " or " improvement," within the Acts of Congress, and a " new manufacture by the sta- tute of James." 2 Gall. 55 ; 1 Mas, 191 ; 3 Wash. 449 ; 4 Wash. 71, 542; 7 Wheat. 361, 431; 8 Taunt. 391; 4 Burr. 2361 ; 2 H. Bl. 468 ; 8 D. & E. 95 ; 2 B. & A. 349; 1 Gall. 481 ; 4 Mason, 6, 9. A patent may be for a mode, or a method of doing a thing ; mode when referred to something permanent, means an engine or machine; when to something fugitive, a method, which may mean engine, contrivance, device, process, instrument, mode and manner oou rAi\ti\r v^AHJCiS. Whitney et al. v. Emmett et al. I Bald. of effecting the purpose ; the word principle may mean engine, in an Act of Parliament under which the patent issued, or may mean the constituent parts thereof. A patent for a method of producing a new thing, may apply to the mechanism, a new method of operating with old machinery, or producing an old substance ; a^atent for a mode or method detached from all physical application, would not refer to an engine or machine ; but when referred to the mode of operation, so as to prodiice the effect, would be considered as for an engine or machine- The words used as mode or method, are not the subject of the patent ; it is the thing done by the invention, and patents are so construed wf res magis valeat quam peredl. On this principle the patent of Mr. Watt " for a method of lessening the consumption of steam and fuel in fire-engines," was sustained ; as the intent was apparent, no technical words were deemed necessary to explain its object, and it was held to be a patent for an engine, machine, and manufacture ; such is the established law here and in England. 3 Wheat. 512 ; 8 Durnf. & East, 107, 108 ; 3 Ves. 140. You will apply these rules and principles of law to the whole evidence, without regarding so much the words as the evident intention of the patent ; ascertain what is tlie subject- matter of the patent, and the thing patented, next whether it was invented by the plaintiffs, and then whether it had been known and used before the application for the patent, in this or any other country, in such a manner as, within the rules laid down, would invalidate the right of the' privilege granted. The plaintiffs must make out their case to be [ * 313 ] within the law in * all the particulars required ; slight evidence is sufficient. 1 Durnf. &, East, 606, 607 ; 2 Peters, 18, 19. If you believe plaintiffs' witnesses, their tes- timony is in law sufficient to establish their right, so far as respects their invention and its novelty ; the burden of prov- PATENT CASES. 581 Whitney et al. v. Emmett et al. 1 Bald. ing the previous invention, knowledge, or use of the thing pa- tented is on the defendants. They have given evidence sufR- cient in law to prove it, if you are satisfied of its truth in fact ; the plaintiffs must rebut it by legal and credible evi- dence, or your verdict must be for the defendants. On this part of the case you will decide according to your opinion as to the mattei; of fact. Should you find that the plaintiffs are the inventors of the thing patented, and that it was not known or used so as to affect the validity of the patent, the next ques- tion is one of law, whether the invention claimed is a proper subject-matter for a patent. On this point we have no hesi- tation in instructing you, that it is an improvement on a ma- chine, manufacture, or composition of matter, within the words and meaning of the law. The next inquiry is, whether the patent is affected by the objections founded en the specification, namely^ that it is broader than the invention, and otherwise defective. This depends on the construction of the words used to denote the intention of grantor and grantee, " as the end and scope of the matter, which is t^e matter itself, and the intent thereof also accomplished." PI. 18, a. The patent is for a new and useful improvement in the mode of manufacturing glass knobs, which is broad enough to include the whole machinery described in the specification,' including the old machine and the old process of manufac- ture, not claimed by the plaintiffs as their invention. But the subsequent words, summing up the invention intended to be patented, disclaiming the invention of the mould and otheir parts of the old machine, and declaring the patent to be for a new combination of the various parts of the mould, with the use of the pin and machinery before described, operate as a proviso restraining and limiting the patent to the object so specified, and excepting all other parts from the more gene- ral description. The disclaimer, at the close of the specifica- 49* 582 PATENT CASES. Whitney et al. v. Emmett et al. I Bald. tion, estops the patentee from setting up any privilege to the part disclaimed, and the summary is equally binding on him, as a limitation to the thing patented. 2 Mason, 112; 4 Wash. 14, 704 ; 8 Durnf. & East, 96, 103, 107. The specification is a part of the patent, and, taken together, they show that the Subject-matter patented is not the old machine, [ * 314 ] or its *c9nstituent parts in their distinct operations; but the combined result of the new and old machin- ery, produced by a new combination, addition, and .improve- ment. " The distinction between a machine and an im- provement on a machine, or an improved machine, is too clear for them to be confounded ; a grant of the exclusive use of an improvement in a machine, principle, or process, is not a grant of the improvement only, but the improved machine ; an improvement on a machine and an improved machine are the same." 3 Wheat. 456, 509, 517; 7. Wheat. 356, 423; 4 Wash. 9, 14, 709 ;■ 1 Gall. 482. A patent for a machine, consisting of an entire new combination of all its parts, is good, though each part has been used in former machines, if the machine is substantially new in its structure and mode of operation ; but if the same combination existed before, in machines of the same nature, up to a certain point, and the invention consists in adding some new machinery, in some improved mode of operation, or some new combination, the patent must be limited to the improvement ; if it includes the whole machine it cannot be supported. 7 Wheat. 430, 431 ; 2 Marsh. 211, 213; 2 H. Bl. 487; 1 Peters's C. C. Rep. 343 ; 1 Gall. 482 ; 2 Mason, 1 16 ; 4 Wash. 543. A patent must not be broader than the invention, or it will be void, not only for so much as had been known or used before the ap- plication, but also for the improvement really invented. Bull. N. P. 76 ; 11 East, 110 ; 1 Gall. 440 ; 2 Gall. 54 ; 1 Mason, 188; 2 Mason, 109, 111. The improvement patented must be the improvement in- PATENT CASES. 583 Whitney et al. v. Emmett et al. 1 Bald. vented. 8 Taunt. 394 ; 3 Mer. 629. If for a discovery, it must be for something new, not for an improvement only ; each item must be a new invention, and the discovery must not fail in a material part. 2 B. &, A. 345, 351 ; 4 B. & A. 549, 552 ; 1 Durnf. & East, 605, 606 ; 2 Marsh. 213, 214 ; 7 Wheat. 430. If for an improvement on a machine, the pa- tentee must show the extent of the improvement, so that a person who understands the subject may know in what it consists. 3 Wheat. 518. It need not describe the old ma- chine, but must limit the patent to such improvement. 7 Wheat. 435. In using the word patent, in reference to the description of the thing patented, we must be understood as including the patent, the specification attached to it, with the model and drawing in the Patent Office, all of which are to be taken together as the description. In deciding on its sufficiency, the Court inspect the whole description as one paper, which they assume to be true in fact, and if found * to be in conformity with [ * 315 ] the requisitions of the law, so that it appears with reasonable certainty, either from the words used or by neces- sary implication, in what the invention or improvement consists, as claimed by the patentee, they will adjudge it sufficient. 1 Mason's Rep. 188, 189. A description, though in some respects obscure, imperfect, or not so intelligible as to fully answer all the objects of the law, is good if it enables the Court to specify the improvement or invention patented, from the face of the patent and accompanying papers. It is enough if there is a substantial description of the thing patented, though defective in form or mode of explanation. In this respect the papers will be viewed in the same light as a decla- ration in a suit at law ; the Court, looking on them as a statement of the patentee's right and title, will overlook all defects in the mode of setting it out, if it contains a substan- 584 PATENT CASES. Whitney et al. v. Emmett et al. 1 Baljl. tial averment of such matter as suffices in law to make out a cause of action. This is a question of law which the Court decides; it is a question for the jury to decide, whether the statements are true in fact ; the Court does not look beyond the patent and the other papers, but the jury decide from the papers, the evidence of the witnesses, an inspection of the old and new machine and the model, to ascertain whether in point of fact the specification, as made out at the trial, is sufficient. 7 Wheat. 366, 428, 433, 435, 456, 457 ; 1 1 East, 113; 14 Ves. 131, 135; 3.Ves. 140; 1 Paine, 207, 446 ; 1 'Durnf. &; East, 602, 604 ; 8 Durnf. & East, 100, 108 ; 2 H. Bl. 473 ; 8 Taunt. 401 ; 1 Mason's Rep. 189. In the present case our opinion is, that the description is sufficient in law, but whether it is sufficient in fact, is for you to decide according to your own opinion on the evidence, a comparison of the old and new machines, the mode of operation, the effect produced, and an examination of the model and all the papers. If the machine, and its mode of construction and operation, is so explained as to enable you to specify the distinct improvement patented, then the specification is good in law and fact, unless it appears that something has been omitted which is required by the Acts of Congress to make the patent valid. The third section of the Act of 1793, directs certain things to be done by the applicant for a patent before he is entitled to it, and gives the reasons therefor, but does not declare that the patent shall be void, if all the acts directed have not been complied with previously to its being granted. [ * 316 ] * The sixth section specifies the cases in which the patent shall be void, which are not the omission of what was directed in the third section, but the defendant proving " that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described PATENT CASES. 585 Whitney et al. v. Emmett et al. 1 Bald. effect, which concealment or addition shall fully appear to have been made for the purpose of deceiving the public, or that the thing thus secured by patent was not originally dis- covered by the patentee, but had been in use, or had been described in some public work anterior to the supposed disco- very of the patentee, or that he had surreptitiously obtained a patent for the discovery of another person, in either of which cases judgment shall be rendered for the defendant, with costs, and the patent shall be declared void." It is the exclusive province of the legislature to discrimi- nate between what acts are to be done to authorize a patent to issue, and those which will make it void if done or omitted. When this has been done in clear, explicit terms, a court can- not superadd requisites to the grant of the patent, or include other acts than those specified, whidi authorize them to de- clare it void, or so declare it if the specified acts or omissions are not proved to be fraudulent, or the thing patented was not new, &c. Laws are construed strictly to save a right or avoid a penalty ; they are construed liberally to give a remedy, or to carry into effect an object declared in the law ; but if a court, by construction, add an object not so declared, apply the penal provisions of the law to a case not within its defini- tion, or exclude from the remedy provided a case defined, it is judicial legislation of the most odious kind, necessarily re- trospective, and substantially and practically ex post facto. It is equally so to confound the parts of a law which are merely directory as to the acts to be done, with those which prescribe acts as conditions precedent to the vesting a right, or define those acts or omissions which authorize a court to annul a grant ; for the direct effect would be, to impose on a plaintiff in a patent cause a forfeiture of his right by con- struction, when by the provisions of the law he was entitled to damages treble the amount of the injury he had sustained. No case could arise in which the language of the Supreme aae rAijaiN r uAiSi^e. Whitney et al. v. Emmett et al. 1 Bald. Court, in Fletcher v. Peck, would be more forcibly applicable ; the character of ex post facto legislation, so severely repro- bated in their opinion, would not depend on the tribunal which exercised it. Vide 6 Cranch, 138, 1 39. We cannot, therefore, give our sanction to the [ * 317 ] positions assumed by * the defendants' counsel, that the patent is void if the specification is in any re- spect defective, or for whatever cause, and that the public are parties to all suits for the infringement of patent-rights. Con- gress have, in the sixth section, prescribed the rules of our decision in cases between individuals, and defined the causes for declaring a patent void on proof by a defendant ; the trial is on a question of property, of private right, unconnected with the public interest, and without any reference to the public, unless a case is made out of a design to deceive them, and we cannot better express our sentiments on this subject, than in the words of a great English judge. " It is said it is highly expedient for the public, that this patent having been so long in public use, after Mr. Arkwright had failed in that trial, should continue to be open ; but nothing could be more essentially mischievous, than that questions of property be- tween A and B, should ever be permitted to be decided upon considerations of public convenience or expediency. The only question that can be agitated in Westminster Hall is, which of the two parties, in law or justice, ought to recover." By Lord Loughborough. Arkwright v. Nightingale, Davies's Patent Cases, 56. We know of no principle which affords to this Court a safer guide in administering justice in this building. Congress seem to have adopted it in the tenth section, by authorizing the District Court, in certain cases, by a summary process in the nature of a scire facias, to repeal the patent, which is a public prosecution in which public considerations operate ; the sixth section is confined to civil suits in the Circuit Court. PATENT CASES. 587 Whitney et al. v. Emiuett et al. 1 Bald. Herein consists an important difference between tlie Patent Law of England and this country. The statute of James I. did not regulate the action for an infringement of a patent- right, consequently the English courts could only render judg- ment for the defendant, if the patent was not valid ; they could not declare it void by a regular judgment, and the plaintiff could bring successive actions. The patent could be annulled, only by a scire facias in chancery, at the suit of the king ; (King V. Arkwright, Davies, 144 ;) and in a suit for damages, nothing could be decided but the right of property. Davies, 56. The law of England having been thus declared in 1785, accounts for the sixth and tenth sections of the Act of 1793,- which were evidently predicated on these decisions, and passed with a direct reference to them, as held by the Supreme Court in 2 Peters, 14. Ill referring to the English adjudications on tne statute of James, * we must, therefore, be careful [ * 318 ] to take the expressions of the judges in civil suits at common law, that a "patent is void," as not meaning that it becomes void by a judgment in favor of a defendant, on the gropnd of its invalidity in law ; but only that it is voida- ble in chancery on a scire facias for that cause, and in a court of law, void as a legal foundation for an action for damages. A judgment in a court of law concludes only the parties to the suit, the patent may be given in evidence in other suits against new defendants, till it is cancelled in chan- cery ; here it becomes annulled by a judgment in favor of a defendant in a Circuit Court, on proof of the kind required by th^ sixth section, or a judgment in the District Court against the patentee, according to the provisions of the tenth. In England a patent is granted as a favor, on such terms as the king thinks proper to impose. Godson, 46, 48 ; 4 B. & Aid. 553. Here a p^nt is a matter of right, on complying 5»a l-ATJiJMT UAISiiS. Whitney et al. v. Emmett et al. 1 Bald. with the conditions prescribed by the law. 1 Paine, 355. There the patent is not accompanied with a specification ; none is filed or enrolled at the time, but it is done within the period {Prescribed in a proviso, setting forth the requisites of the specification, as conditions to be performed in order to make the patent vali^ ; if not done it declares the patent void. These conditions are in the discretion of the king, but neither they nor the objects or reasons for granting the patent are declared or set forth; but the patent contains a declaration, that it shall be construed and adjudged, most favorably and benignly for the best advantage of the grantee, notwithstanding any defective and uncertain description of the nature and quality of the invention and its materials. Godson, 50, 155, 157, and cases cited ; Bull. N. P. 76 ; 1 1 East, 107 ; 14 yes. 136. In deciding on the sufficiency of these specifications. Lord Mansfield states the questions to be, whether it is sufficient to enable others to make up the thing patented, and the public to have the benefit of the invention after the patent has expired. Bull. N. P. 76, 77 ; Liardet v. Johnson, 1778. These are the two tests which are applied to the specifica- tion, not by the words of the statute, but by the courts, in order to eflectuate its supposed policy, as is very clearly ex- pressed by Buller, J., in the King v. Arkwright. " The party must disclose his secret, and specify his invention in such a way that others may be taught by it to do the thing for which the patent is granted ; for the end and meaning of the speci- fication are to teach the public after the term for [*319] which *the patent is granted what the privilege expired is, and it must put the public in possession of the secret in as ample and beneficial a way as the patentee himself uses it. This I take to be clear law as far as respects the specification, for the patent is the reward which, under an Act of Parliament, is held out for a discovery, and there- PATENT CASES. 589 Whitney et al. v. Emmett et al. I Bald. fore, unless the discovery be true and fair, the patent is void ; (Davies, 106, 128) ; such is the settled rule in England. Da- vies, 55 to 60 ; 1 Durnf. fe-East, 605, 608. In its practical application it has been uniformly held, that the clearness of the specification must be according to the subject-matter of the patent, it is addressed to persons in the profession, having knowledge and skill in the subjept-matter, from the nature of their business ; if they can so understand it as to make the thing patented, by following the directions of the specification and plan, taking the old machine to their assistance, without any new invention of their own, then the patent is good, though men ignorant of the subject to which it relates may not understand it. Davies, 56, 128 ; 11 C. L. 472 ; 1 1 East, 108. The patentee must specify his invention clearly and ex- plicitly ; any ambiguity affectedly introduced into the speci- fication, or any thing done to mislead the public, will make it void. 1 Durnf. & East, 606, 607. If the specification is sufficient in any part, any other part which is not necessary to understand it may be rejected as surplusage ; (2 H. Bl. 489 ; 11 East, 111); one part may be substituted for another. 1 C. & P. 566 ; 11 C. L. 468. If the patentee of an old machine procures a new patent, with certain improvements on the old machine, reciting the old patent, and with a spe- cification of the whole machine so improved, but not describ- ing the new parts or referring to the old specification, the, new patent was held good by a reference to the old specification and drawing, and comparing the new with them; (11 East, 101, 1 13) ; the patent of Mr. Watt was sustained on the same principle ; the description was held good by referring a work- man to the old engine. The great object of the specification is to prevent the pub- lic from being misled by an evasive one having such ten- dency. A psrttent is a bargain with the public, in which the VOL. I. — p. c. 50 590 JfATi;JNT UAfcJliiS. Whitney et al. y. Emmett et al. 1 Bald. same rules of good faith prevail as in other contracts, and if the disclosure communicates the invention to the public the statute is satisfied. 14 Yes. 131, 136; 1 Durnf. & East, 606, 607. As the English statute does not require a specification, these rule^ and principles are matters of judicial construc- [ * 320 ] tion, on which tl^e * English Courts act without any statutory directions. Their Patent Law is a proviso, excepting from the general prohibition of grants of monopolies by the king, " grants of privilege " " for the sole working or making of any new manufacture within this realm, to the true and first inventor. and inventors of such manufac- tures, which others at the time of making such letters and patents shall not use, so as they be not contrary to law," &c. Sect. 5 ; 3 Ruff". 92. On this proviso their whole system of jurisprudence as to patents is built, by a series of adjudication according to what the judges presumed to be the object and intention of Parliament. The silence of the law left a wide field open to the discretion of Courts, in adopting such rules as would best effectuate its design, and best promote the in- terests of the public. But in this country the law is more explicit. The Constitution gives Congress the power " to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries," This is a declaration by the supreme law of the land, of its objects and purposes, and the means of effecting them, which leaves no discretion to the judges to assign or presume any other or different ones. The Acts of Congress, of 1790, (1 Story, 80,) and of 1793, (1 Story, 300,) are the execution by Congress of their consti- tutional powers ; the title of these p,ots is " to promote the progress of the useful arts ; " the mode of "doing it is by PATENT CASES. 591 Whitney et al. v. Emmett et al. 1 Bald. granting patents pursuant to the enacting clauses. The con- ditions of such grants are prescribed, among which is a speci- fication or description of the invention to be patented, the requisites of which are defined : " and shall deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and ex- act terms as to distinguish the same from all other things be- fore known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same. And in case of any machine, he shall fully explain the principle and the several modes in which he has contemplated the applica- tion of that principle or character, by which it may be distin- guished from other inventions." As to the specification, then, nothing is left to construction as to its requisites or purposes, both are so clearly defined, and in such a manner, as to leave no discretion in Courts to presume what was intended, to alter, add, or diminish, where the law is so explicit. * With the Constitution, the English statute, and [ * 321 ] the adjudication upon it before them. Congress have declared the intention of the law to be to promote the progress of the useful arts by the benefits granted to invent- ors ; not by those accruing to the public, after the patent had expired, as in England. This is most evident from their im- posing as conditions, that the invention must be new to all the world, and the patentee be a citizen of the United States. If public benefit had been the sole object, it was immaterial where the invention originated, or by whom invented ; but being for the benefit of the patentee, the meritorious cause was invention, not importation, and the benefit was not extend- ed to foreigners, in which respects the law had been other- wise settled in England. , Her6 the patent cdntains no proviso declaring it void, if the specification is not in conformity with the law ; this is 592 PATEJXT CASES. , Whitney et al. v. Emmett et al. 1 Bald. provided for in the sixth section as a substitute for the proviso, and defines the causes for which a Circuit Court can adjudge a patent void, in a civil suit, for defects in the specification. These are concealment or addition, fully appearing to have been made for the purpose of misleading the public, which is wilful fraud clsirly proved ; but the Court cannot bring within this definition of a patent with a specification defective on other grounds, still less act upon the English principle, that the specification is for the purpose of giving the public the benefit of the invention, after the expiration of the patent, as that would be in contradiction to the Act of Congress ex- pressly assigning other reasons. Such has been the uniform construction of the law in the Circuit Courts, that a patent can be declared void for no other defect in the specification than fraudulent concealment or addition. 1 Peters's C. C. Rep. 401 ; 1 Wash. 171 ; 3 Wash. 198 ; 1 Mason, 180, 190 ; I Gall. 434 ; 7 Wheat. 429, 430. No discretion is left to the Circuit Courts to annul a patent for any reason not contained in the Acts of Congress ; they have not left us free to infer motives, objects, and grounds of supposed policy for -requiring specifications ; the third section of the Act of 1793, defines them without any declaration, that the patent shall be void if the specification is defective. Eng- lish decisions, therefore, founded on the assumed reason for the grant of a patent, are not of authority here where the Constitution and laws give other reasons, and omit the one founded on the public benefit to result from the disclosure after the expiration of the privileged You will, therefore, not make that a subject of deliberation, for it is not material [ * 322 ] whether the * public can profit by the invention during or after the term of the patent. The true inquiry is whether, in the spirit of the law, the plaintiffs have made such a description of the thing patented as to distin- guish it from all others before known, and to enable others PATENT CASES. 593 Whitney et al. v. Emmett et al. 1 Bald. skilled in the matter, to make, compound, or use it, and to ex- plain the principle and mode of application by. which it can be so distinguished from other inventions. If from the pa- tent, specification, drawings, model, and old machine, clear ideas are conveyed to men of mechanical skill in the subject- matter, by which they could make or direct the making of the machine by following the directions given, the specifica- tion is good within the Act of Congress. 3 Wheat. 518 ; 7 Wheat. 435. If the plaintiiFs' patent is valid, it gives them a right of pro- perty in the thing patented, which is entitled to full protection in Courts, the wise policy of the Constitution and laws, for securing to inventors the exclusive privilege to use their disco- veries for a limited time, has been fully illustrated by the great results produced by the skill of our citizens. Intended for their protection and security, the law should be construed favorably and benignly in favor of patentees, in the spirit of the proviso in patents in England. When the invention is substantially new, is useful to the public, and the disclos- ure by the specification and other papers, is made in good faith, and fairly communicated in terms intelligible to men who understand the subject, juries ought to look favorably on the right of property and to find against a plaintiff only for some substantial defect in his title papers, or proof. Having given you our opinion on all the questions of law applicable to the case, it is submitted to your verdict. If you think the thing patented not new, but had been known or used anywhere, before the application for the pa- tent, you will find generally for the defendants ; so you will find, if the alleged improvement is in fact only a change of the form and proportions of the old machine or process. If you think the specification,' &c., not descriptive of the invention, so as to be in compliance with the requisitions of the third section of the law, through accident, mistake, or 50* 594 PATENT CASES. Whitney et al. v. Emmett et al. 1 Bald. ignorance, you will find for the defendants, and specify the ground of your verdict. If you think the defect in the specification was intended to mislead the public, or should find against the plaintiffs on any other ground specified in the sixth section, you will [ * 323 ] speiify it in your * finding, so that the Court may render the proper judgment, either generally for defendants, or add a judgment the efifect of frhich will annul the patent. If you think the plaintiffs have made out their case, you will find such damages as they have proved they have actually sustained ; they must prove their damages ; if they have not done so you are not to supply the defect. Verdict for plaintiffs, 500 dollars. A motion was made for a new trial for excessive damages, which was argued at October term, 1831. Mr. C. Ingersoll and Mr. C. J. Ingersoll, for defendant. The jury have exceeded the actual damage sustained by the plaintiff, which the law has made the standard for their verdict. By the fourth section of the law of 1790, (1 Story, 81,) the plaintiff was to recover " such damages as shall be assessed by a jury ; " by the fifth section of the Act of 1793, " three times the price of a license to use the invention," (1 Story, 30-2) ; by the third section of the Act of 1800, (1 Story, 753,) " three times the actual damages sustained from or by reason of such ofience." The meaning of this clause is apparent by a reference to the statute of James I., section 4, " shall reco- ver three times so much as the damages he or they shall have sustained by means or ocdasion," &,c. (3 Ruff. 92) ; by ad- ding the word " actual," Congress intended to exclude poten- tial or speculative damages ; actual means " real, not poten- PATENT CASES. 595 Whitney et al. v. Emmett et al. 1 Bald. flal," (Johnson's Diet.) ; " real or effective," " that exists actually," " existing in fact," (Webster's Diet.) ; not what may be ; (1 Gall. 485) ; the Court must decide what are actual damages ; even in case of a tort the jury ought to give the rea- sons of their verdict ; (Comb. 357 j 2 Wils. 160) ; the Court may ask them what they have made the standard of their ver- dict in patent cases. 1 Gall. 485. In 1 Wash. 403, 480, Judge Washington referred to the profitable use of the invention by the defendant. In 3 Wheat. App. 26, the value of the use to the defendant is stated as the rule of d,amages. The injury done to the character of the plaintiffs was by the defendants making an inferior article; the reduction of the price by competition are merely speculative damages; the actual damage sustained, is to be ascertained as in cases of waste, the, value of the property or estate wasted. The actual loss sustained by the infringement of a patent, is the * profit made by the defendant while he uses [ * 324 ] the invention, the saving of labor by the improved machine, without regarding the value of the use of the parts not patented ; the difference in the profits resulting from the use of the old as compared with the new, calculated by the time and extent to which the defendants have used it, is the true rule. In this consists the difference between a common law tort and a patent tort, in the former the jury have a dis- cretion in awarding damages, in the latter they have a stand- ard prescribed to them, as definite as on a contract for the payment of money or the delivery of goods ; the damages cannot exceed the interest, so in patent cases, the defendant's profits are the measure of the plaintiff's loss. Mr. Cadwalader and Mr-. Sergeant, for plaintiffs. The third section of the Act of 1800, is a substitute for the fifth section of the Act of 1793, and actual damages mean, the injury actually sustained, and the consequences of 596 PATENT CASES. Whitney et al. v. Emmett et a1. 1 Bald. the infringeflient, which are not too remote to be traced to it, the words " for or by reason of," &c., put a patent tort on the same footing as any other tort. 1 Peters's C. C. Rep. 397. A consequence of increased competition is a reduction of pro- fits, the putting an inferior article into the market, tends to throw out thef>ressed knob and substitute the blown knobin its place, whereas, on a fair comparison, the pressed are pre- ferred. H^e, as the infringement has been intentional, the plaintiff ought to recover the difference between the cost and the selling price of the knobs made by the defendants, by the use of the plaintiffs' improvement which the jury have not exceeded, though they might have made an allowance for damages occasioned by wilful vexation, as may be done in trover, (6 Serg. &, Rawle,426) ; no new trial will be granted, unless there has been a plain mistake in law or fact, 3 Binn. 320 ; or if damages are too small or too large, unless for some other cause in addition ; (1 Wash. 154, 202) ; the case in Comb, 857, 358, only shows that the jury will not be allowed to exercise a despotic power. In 1 Gall. 485, 350 dollars were given for merely making the machine, and a new trial refused. S. P., 1 Peters,,397. These cases establish the rule that the jury may judge of the actual damage, as in the case of tort generally ; those which affect the person or reputation of another are exceptions. The true question is, not what profits the defendants have made by the infringement, but what loss the plaintiffs have sustained ; of this the [ * 325 ] jury are the * proper judges, and the Court will not disturb their verdict, unless they decide positively that the plaintiffs have not sustained 500 dollars damages in any view of the case. The jury may ascertain the damages from any cause which has injured the plaintiff, the difficulty of liquidating them under any definite head, as a matter of account, is no objection to their putting an estimate on the amount ; as the loss of sales which the plaintiffs would have PATENT CASES. 597 Whitney et al. v. Emmett et al. 1 Bald. made had there been no infringement. In a word, the jury may allow the plaintiff whatever they may think from the evidence he has lost by the violation of his right by the de- fendants, and put him in the same situation as if he had had the exclusive use of his invention during the time the defend- ants have used it. The opinion of the Court was delivered by Hopkinson, J. The motion for a new trial in this case is rested on the alleged excessiveness of the damages. The Act of Congress gives the rule of damages, and if it has been violated, the ver- dict ought not to stand ; on the other hand, the finding of a jury on a question so peculiarly within their province, will not be disturbed, unless it be made clear that they have dis- regarded and exceeded the measure of the law. The Congress of the United States, after two attempts, which proved to be unsatisfactory, to fix the amount of dama- ges to be recovered from any person who should make, de- vise, use, or sell 'the thing whereof the exclusive right is secured to a patentee, by an act passed on tlie 17th of April, 1800, established a rule which has since remained as the law of such cases. The third section of the act enacts, that any person offending as above mentioned " shall forfeit and pay to the said patentee, his executors, administrators, and assigns, a sum equal to three times the actual damage sustained by such patentee, his executors, administrators, or assigns, from or by reason of such offence." The practice under this act has been for the jury to find the actual or single damages, which are afterwards trebled by the order or judgment of the Court. It is obvious that the directions of the last Act of Congress are not, and could not be precise on such a subject, and that a considerable latitude is necessarily given to the jury in esti- mating what they shall consider to be the actual damage sus- 598 PATENT CASES. Whitney et al. v. Emmett' et al. 1 Bal^. tained by a patentee by the viola'tion of his right ; and the Courts of the United States have shown no disposi- [*326 ] tion to draw the power of the jury, in this * respect, within close and narrow limits. The elements of such a calculation in various cases that occur, are so various, and sometimes*in their nature so uncertain, that the estimate of a jury must be very extravagant to enable the Court to say, that they have so disregarded the rule of the law, and so clearly exceeded the limits of their authority, that their ver- dict cannot be supported. Are the jury to take, as the actual damage sustained by the patentee, the benefit or profit made and received by the offender by the use of the invention? or the profit which the patentee would have made by the same use of his invention, but has lost by the illegal interfer- ence with his right ? May they deduce the latter from the former, and consider proof of the profits made by the offender to be evidence in fact of the injury or damage sustained by the patentee ? This is broad ground, on which the jury may rightfully move ; and the error of their calculation must be made clear and*certain, before the Court can undertake to correct it by overthrowing their verdict. Still wider limits have been insisted upon for the jury by the counsel of the plaintiffs. They have contended that, as an item in the estimation of actual damages, the jury may examine and determine the loss sustained by the reduction of the price of the articles manufactured by the patented machine, in conse- quence of the competition brought into the market against them, when the patentee had a right to a monopoly ; and going yet further, they say, that the injury done- to the repu- tation of the manufacture, by the inferior skill and workman- ship of the offender, may be fairly and legally brought into the calculation of actual damage. Whether this may or may not be done, must depend upon the particular case under consideration, and the nature of a question of damages shows PATENT CASES. 599 Whitney et al. v. Emmett et al. 1 Bald. that what may be a good rule in one case, would be altoge- ther inadmissible in another. All the items or elements above mentioned may be brought into the account, provided that there be evidence satisfactory to the jury to bring them within the character and description of " actual damages," proved in fact to have fallen upon the plaintiff, " from or by reason of" the offence of the defendant ; but they should not be allowed when they are merely hypothetical, imaginary or speculative. It is not enougM that injury may have been suf- fered by these means ; the plaintiff has a right to recover only such damages " as he can actually prove, and has in fact sus- tained." It must not rest in conjecture, but must be suscept- ible of proof, and be actually proved. While the Courts of the United States sitting on patent cases, have * adhered to these principles in [ * 327 ] their construction of the Act of Congress, they have not been inclined to interfere with verdicts, but keeping them within this boundary, have rather given a loose rein to juries in the exercise of their power over the damages. This is abundantly shown by the cases referred to "at the bar. In Whittemore v. Cutter, decided in 1813, and reported in 1 Gall. 478, the question of the damages to be recovered for the violation of a patent-right, was considered by Judge Story. In that case, the plaintiff proved only that the defendant had made his patented machine, and not that he had ever used it. Here there was neither profit made by the defendant or lost by the plaintiff, nor any reduction of the price of the article manufactured by a competition in the market ; nor an injury to its reputation by inferior workmanship. Where, then, are we to look for the constituents of damage in such a case ? The counsel for the plaintiffs contended, " that although there is no evidence of actual damage, the jury ought to give da- mages either to the full value of the expense of making the machine or of the price at which such a machine might be 600 PATENT CASES. Whitney et al. v. Emmett et al. 1 Bald. sold." The judge rejected these pretensions for the most satisfactory reasons. He stated to the jury, that " it is clear by the statute that only the actual damages sustained can be given ; " and he explains this actual damage to mean " such da- mages as the plaintiff can actually prove, and has in fact sus- tained, as contradistinguished to mere imaginary or exemplary damages." This is a rational and satisfactory interpretation of the phrase.' The judge thus instructs the jury, that " if they are of opinion that a usi of the machine is actually proved, the rule of damages should be the value of the use of such machine, during such illegal use." This language is not exactly precise. It is not clear whether the judge would be understood ; when he* speaks of the value of the use of the machine, " he means its value to the illegal use of it, or the value which its owner could or might have derived from it during the time of the illegal use." The rules are or may be very different. If the latter were intended by the judge, it is in fact the direct and actual damage sustained by the pa- tentee ; if the former, it is the profit or-advantage made of the machine by the offender, which may be more or less than the patentee wobld have derived from it. We see, however, no objection to another explanation of the language of the judge, that is, that the jury ought to take the value of the use of the machine to the spoliator, not as the direct ground of their verdict, but as a test or means by which, in the ab- [ * 328 ] sence * of other proof, they might estimate the da- mage done to the plaintiff. In either construction the judge meant to conform to the language of the Act of Congress, and affirm the rule he set out with, " that only the actual damage sustained can be given." The jury gave 350 dollars single damages, finding at the same time, " that the de- fendant was guilty of making the machine only ; " no attempt appears to have been made to disturb the verdict, although PATENT CASES. 601 — — — —— — — • — Whitney et al. v. Emmett et al. 1 Bald. the judge had charged the jury, that in such a case, " the plaintiff can recover nominal damages." The case of Gray v. James, decided in this circuit in 1817, and reported in 1 Peters, 394, was an action for violating the plaintifT's patent-right in the art of cutting and heading nails by one operation. Jacob Perkins was the inventor of this machine, which was so defective that, after a trial, it was altogether abandoned; and it did not appear that it had ever been used afterwards by any person. The defects of Perkins's patent were cured by one Jesse Reed, who pa- tented his improved machine ; but the two machines were precisely on the same principle. The jury gave a verdict for the plaintiff, and assessed his single damages at 750 dollars. A motion was made on the part of the defendant for a new trial and in arrest of judgment. One of the reasons in sup- port of the motion was, that the damages given by the jury were excessive, and the argument was, that Perkins's machine was acknowledged by himself to be worthless ; and that it was in fact thrown away as a useless thing, and was so con- sidered by those who knew any thing about it, consequently his assignees sustained no damage by the use which the de- fendant made of it. The judge was of opinion that " the premises may be admitted, and yet the argument terminated in what is called a non sequitur." We cannot Sky that we are satisfied with the ingenious reasoning of the learned judge, to support this opinion ; nor do we see how the owner of a thing, absolutely worthless, and which he had thrown away as useless, can sustain any actual damages, by the use of this thing, made useful only by being combined with something else, or so changed in its operation by an invention to which the owner of the worthless machine had no title or claim. He has lost nothing, he has been deprived of nothing that was of any value to him, what then has been his injury or damage ? VOL. I. — p. c. 51 602 PATENT CASES. Whitney et al. u. Emmett et al. 1 Bald. If the Act of Congress had given the advantage or use made by another of a particular machine as the rule of damages, then indeed a worthless invention, made valuable [ * 329 ] by an improvement, might entitle the' * inventor to compensation for the use of his invention, and per- haps on principles of equity and justice, he ought to have it. But the law does not take this rule, but the damages actually sustained by a patentee by the use of his invention, and not the value that has been imparted to it by a subsequent inventor; nor the use which such inventor has made of it, provided he has not by such use inflicted any loss, injury, or damage upon the patentee. His damages, and not another's gain, are made the rule for the jury. It is not like the case of Whitte- more v. Cutter, where the machine made by the defendant was the same with that patented by the plaintiff, and where we have agreed that, in the absence of other evidence, the jury may assume the value of the use of the machine to the spoliator as proof of the damage or injury done to the pa- tentee. The judge who decided the case of Gray v. James, seems to be hardly satisfied with supporting the verdict on the reasoning we have quoted, for he adds, " but the fact is that Perkins's machine was proved at the trial to possess in- trinsic value on the single ground of saving labor ; whether the value so proved justified the jury in finding the damages which they did, is a question of which this body were the proper judges upon the evidence laid before them, and the Court sees no reason to find fault with them." A patentee, however, whose invention, though worthless to himself, has become useful to another may not be deprived of it without his consent, for it is his property ; nor can ano- ther use it for any purpose without responsibility to him. Such as it is, of much value or little value, or of no value, the law has guaranteed the exclusive possession of it to the in- PATENT CASES. 603 Whitney et al. v. Emmett et al. 1 Bald. ventor, and the law will prevent any interference with his right, and every use of the thing invented against the will of the owner. Although no damages can be recovered by the provisions of the Act of Congress, in a case where no da- mages have actually been sustained, the patentee has neverthe- less a remedy for the invasion of his right peculiarly appropjri- ate for such a case. He may have an injunction upon the wrongdoer, which will prevent the unauthorized use of his invention, and put it in his power to compel the invader either to abandon it or make him a just compensation for the use of it. The Court would exercise this power jto do what is right and equitable between the parties, and so as to prevent imposition and wrong by either. Without embarrassing the question now to be decided with a review of all the evidence that has been brought into the discussion, * it will be sufficient to advert [ * 330 ] to the admitted fact that the defendants manufac- tured five hundred and sq,venty-one dozen of glass knobs, by the use of the machine invented and patented by the plain- tiffs ; all of which were sold by the defendants, with the ex- ception of some that were imperfect. From the bill produced of one of the sales, these knobs were sold at a great profit. The profit obtained by the defendants on the sale of these knobs was a fair and legal subject for the calculation and judgment of the jury on the evidence laid before them ; and they had the same right to take this profit as the rule or mea- sure by which they would estimate the actual damage sus- tained by the plaintiffs by this invasion of their rights. Al- though the profit gained by the defendants is not the amount to be recovered by the plaintiffs as their damage, yet it is that from which a calculation or estimate of that damage may be rightfully made by the jury. If in this case the jury have taken this profit as their guide and measure in assessing the actual damage sustained by the plaintiffs, can the Court say that 604 PATENT CASES. Grant et ai. v. Raymond. 6 Peters. they have done wrong, or that, under the evidence laid before them, we could give them a better rule ? Can we say that they have exceeded the power and discretion allowed to them, so that it becomes the duty of the Court to undo all that they have done, and set aside their verdict as contrary to the law or evidence of the case ? We think not. If the payment of the sum for which a judgment must be rendered against the defendants shall be oppressive or incon- venient to them, we shall regret it, because they appear to have acted under a mistaken opinion of the rights of the plaintiffs, from misinformation in relation to the validity of their claims of invention, and not from an obstinate or ma- licious design to injure them or benefit themselves by a wil- ful disregard of the rights of the plaintiffs. An intelligent and impartial jury have passed upon the case; "and the Court sees no reason to find fault with them." The plain- tiffs having established their right, and having no reason to apprehend any further interferenqip with it, it would have been satisfactory to the Court if some reasonable and liberal compromise could have been made with the defendants, who appear to be industrious and useful mechanips, which would have made our judgment unnecessary. We do not feel authorized to press the suggestion further. Rule discharged^ Joseph Grant and others v. E. and H. Raymond. [6 Peters, 218. January T. 1832.] Action for damages for an infringement of a patent-right, granted to the plain- tiif in 1825. The plaintiff recited that a former patent had been issued in 1821, to the same person, for. the same improvement, " which had been can- PATENT CASES. 605 Grant et al. v. Raymond. 6 Peters. celled, owing to the defective specification on which the same was granted." The exclusive privilege given by the patent on which the suit was brought, is to continue fourteen years from the day on which the original was issued. On the trial, the defendants , objected that the Secretary of State had no power, by law, to accept a surrender of, and to cancel the first letters-patent ; or to inquire into, and decide upon the causes for so doing ; or to grant the second patent for the same invention with an amended specification, for the unexpired portion of the term of fourteen years which had been granted by the first patent. The Circuit Court of the southern district of New York decided, in conformity with its former decisions, that such surrender might be made when the defect arose from inadvertence or mistake ; and without any fraud or misconduct on the part of the patentee : and that the Secretary of State had authority to accept such surrender, and cancel the record of the patent ; and to issue a new patent for the unexpired part of the fourteen years granted under the first patent. By the Court: It will not be pre- tended that this question is free from difficulty. . But the executive depart- ments, it is understood, have acted on the construction adopted by the Circuit Court, and have considered it as settled. "We would not willingly disregard the settled practice, in a case where we are not satisfied it is contrary to law ; and where we are satisfied it is required by justice and good faith. To promote the progress of useful arts, is the interest and policy of every en- lightened government. It entered into the views of the framers of our Con- stitution, and the power " to promote the progress of science and useful arts by securing, for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries," is among those expressly given to Congress. It is the reward stipulated for advantages derived by the pub- lic for the exertions of individuals ; and is intended as a stimulus to those exertions. The laws which are passed to give eflfect to this purpose ought to be construed in the spirit in which they have been made, and to execute the contract fairly on the part of the United States, where the full benefit has been received; if this can be done without transcending the intentions of the statutes, or countenancing acts which are fraudulent, or may prove mis- chievous. If a mistake should be committed in the department of State, no one would say it ought not be corrected. All would admit, that a new patent, correct- ing the error, and which would secure to tlie patentee the benefits which the law intended to secure, ought to be issued ; and yet the law does not, in terms, authorize a new patent, even in such a case. Its emanation is not founded on the words of the law, but it is indispensably necessary to the faithful execution of the solemn promise made by the United States. Why should not the same step be taken, for the same purpose, if the mistake' has been innocently committed by the inventor himself? The great object and intention of the act is to secure to the public the advan- tages to be derived from the discoveries of individuals ; and the means it employs are the compensation made to those individuals for the time 51* 606 . PATENT CASES. Grant et al. v. ^Raymond. 6 Peters. [ * 219 ] and labor * devoted to those discoveries, by the exclusive right to make up and sell the things discovered for a limited time. That which gives complete effect to this object and intention, by employing the same means for the correction of inadvertent error, which are directed in the first instance, cannot be a departure from the spirit and character of the act. Qjiare, What would be the effect of a second patent, issued after an innocent mistake in the specification, on those who, skilled in the art for which it was granted, perctiving the variance between the specifications and the machine, had constructed, sold, and used the machine. This question is not before the Court, and is not involved in the opinion given in the case. The defence, when true in fact, may be sufficient in law, notwithstanding the validity of the new patent. The defendant in the Circuit Court, in his plea, assigned the particular defect supposed to exist in the specification, and then proceeded to answer in the very words of the act, " that it does not contain a written description of the plaintiff's invention and improvement, and manner of using it, in such full, clear, and exact terms, as to distinguish the same from all other things before known, so as to enable any person skilled in the art to make and use the same. The plea alleged, in the words of the act, that the prerequisites to issuing a patent had not been complied with. The plaintiffs denied the facts alleged in the plea, and on this issue was joined. At the -trial, the counsel for the defendants, after the evidence was closed, asked the Court to instruct the jury, that if they should be of opinion that the defendants had maintained and proved the facts alleged in their plea, they must find for the defendants. The Court refused this instruction, and instructed the jury that the patent . would not be void on this ground, unless such defective or imperfect specifi- cation or description arose from design, or for the purpose of deceiving the public. By the Court : The instruction was erroneous, and the judgment of the Circuit Court ought to be reversed. This instruction was material if the verdict ought to have been for the defend- ants ; provided the allegations of the plea were sustained, and if such verdict would have supported a judgment in their favor ; although the defect in the specification might not have arisen from design, and for the purpose of deceiving the public. That such is the law, the Court is entirely satisfied. The third section of the act requires, as preliminary to a patent, a correct specification and description of the thing discovered. This is necessary in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of the power to issue a patent. The necessary consequences of the ministerial character in which the secretary acts, is, that the performanpe of the prerequisites to a patent must be examinable in any suit brought upon it. If the case was of the first impression, the Court would come to this conclusion ; but it is understood to be settled. Courts did not, perhaps, at first, distinguish clearly between a defence which would authorize a verdict and judgment in favor of a defendant in an action PATENT CASES. 607 Grant et al. v. Kaymond. 6 Peters. for the yiolation of a patent, leaving the plaintiff free to use his patent and to bring other suits for its infringement ; and one which, if successful, would require the Court to enter a judgment not only for the defendant in the par- tictilar case, but one which declares the patent to be void. This distinction is now well settled. If the party is content with defending himself, he may either plead specially, or plead the general issue and give the notice required by the sixth section, of any * special matter he means to use at the trial. If he [ * 220 ] shows that the patentee has failed in any of those prerequisites on which the authority to issue the patent is made to depend, his defence is complete. He is entitled to the verdict of the jury, and the judgment of the Court. But if, not content with defending himself, he seeks to annul the patent, he must proceed in precise conformity with the sixth section. If he depends on evidence " tending to prove that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the desired effect ; " it may avail him so far as respects himself, but will not justify a judgment declaring the patent void ; unless such " concealment or addition shall fully appear to have been made for the purpose of deceiving the public ; " which purpose must be found by the jury, to justify a judgment of vacatur. The defendant is permitted to proceed according to the sixth section, but is not prohibited &om proceeding in the usual manner, so far as respects his defence ; except that special matter may not be given in evidence on the general issue, unaccompanied by the notice which the sixth section requires. The sixth section is not understood to control the third. The evidence of fraudulent intent is required only in the particular case, and for the particu- . lar purpose stated in the sixth section. This case came before the Court, in the first instance, on a certificate of division in opinion in the Circuit Court of the United States for the southern district of New York. On inspecting the record, it appeared that on the trial of the cause in the Circuit Court, the counsel for the defendants had excepted to the decisions of the Court on various matters which had been presented for the consideration of the Court ; and that a bill of exceptions had been sealed by the Court on their motion. The record proceeded to state, that the cause afterwards came on for argument on a motion for a new trial, when the opinions of the two judges of the Circuit Court were opposed 608 PATENT CASES. Grant et al. v. Baymond. 6 Peters. ' upon questions, presented for the decision of the Court, excepted to on the trial, as stated in the bill of exceptions : " that upon the questions thus occurring before the Court, the opinions of the said two judges were opposed ; and upon request of the counsel for the plaintiflFs, the points upon which the disagreen^nt happened, were stated under the direction of the judges, and certified under the seal of the Court to the Supreme Court." Mr. Webster stated, that a question, preliminary to the argument of the case, was presented for the decision of the Court. It was, whether the Court would entertain the case as it came up from the Circuit Court on a division [ * 221 ] in that Court on a motion * for a new trial. This Court had exercised their right to decide in cases where the opinions of the judges of the Circuit Court on ques- tions of law had been opposed, when a motion for a new trial was before the Court. Mr. Justice Story. In the cases referred to, the division of the Court took place on the trial of the cause before the jury, as well as. on the motion for a new trial. Mr. Chief Justice Marshall suggested that the case might be brought on if the parties would agree that it should stand as if a judgment had been given- by the Circuit Court on the exceptions. The case, he said, could not be heard on a dif- ference in opinion of the judges of the Court, on a motion for a new trial. The counsel for the plaintiffs and defendants having agreed that the case should stand as suggested by the Chief Justice, and an agreement in writing to that effect having been filed, the Court made the following order. PATENT CASES. 609 Grant et al. v. Baymond. 6 Peters. It is now here by the Court considered and ordered, that this cause shall now be heard and decided, as on a writ of error brought after verdict and judgment in the Circuit Court, on the exceptions which were taken in that Court ; that the cause shall now proceed, as if judgment had been actually entered in the Circuit Court for the plaintiffs there, and that the certificate in the case shall be taken, regarded, and treated as a writ of error, sued out by the defendants below, on the judgment of the Circuit Court, and that the question shall be, as in other cases, whether the said judgment ought to be reversed or affirmed: but that this Court will reserve its opinion and judgment in this cause till the defendants in the Court below shall have sued out a writ of error in this cause to the said Circuit Court, and filed a return thereto, with a bill of exceptions in this cause, in the usual form, signed by the Court below, in this Court. The case came on for ai^ument, after the defendants had sued out a writ of error on a judgment entered in the Circuit * Court for the plaintiffs, in conformity [ * 222 ] with the suggestion and order of this Court. The case was as follows : The action was brought to recover damages for an alleged infringement of a patent-right, and came on for trial in the Circuit Court in November, 1828, when a verdict was ren- dered for the plaintiffs for three thousand two hundred and sixty-six dollars sixty-six cents. The plaintiffs gave in evidence a patent from the United States, in the following terms, the same being the patent declared upon : " Whereas Joseph Grant, a citizen of the United States, hath alleged that he hath invented a new and useful improve- ment in the mode of manufacturing hat bodies by the combi- nation of motions, namely, the rotary and revolving motion. 610 PATENT CASES. Grant et al. v. Baymond. 6 Peters. with the vibrating or transverse motion, which forms the two hat bodies by machinery, and crosses the wool from one ex- tremity of the hat bodies to the other at one operation, called Grant's improved winding machine for setting up hat bodies — his former patent for the same invention, dated the 1 1th day of Augiitt, 1821, having been cancelled, owing to the defective specification on which the same was granted — which improvement he states had not been known or used before his application — hath made oath that he does verily believe that he is the true inventor or discoverer of the said improvement ; hath paid into the treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, sig- nifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose. " These are, therefore, to grant, according to law, to the said Joseph Grant, his heirs, administrators, or assigns, for the term of fourteen years, from the 11th day of August, 1821, the full and exclusive right and liberty of making, construct- ing, using, and vending to others to be used, the said im- provement, a description whereof is given in the words of the said Joseph Grant himself in the schedule hereunto annexed, and is made a part of these presents. " In testimony whereof, I have caused these letters to be made patent, and the seal of the United States to be hereunto affixed. Given under my hand, at the city of [ * 223 ] Washington, this 28th * day of April, in the year of our Lord 1825, and of the independence of the United States of America the forty-ninth. [l. s.] J. Q. Adams. By the President. H. Clat, Secretary of State. City of Washington, to wit: — I do hereby certify, that the foregoing letters-patent were delivered to me on the 28th PATENT CASES. 611 Grant et al. v. Baymond. 6 Peters. day of April, in the year of our Lord 1825, to be examined ; that I have examined the same, and find them conformable to law, and I do hereby return the same to the Secretary of State within fifteen days from the date aforesaid, to wit, on this 28th day of April, in the year aforesaid. William Wirt, Attorney-Oeneral of the U. S. The schedule referred to in these letters-patent, and making part of the same, contained a description, in the words of the said Joseph Grant himself, of his improvement in the mode of manufacturing hat bodies by the combination of motions, namely, the rotary or revolving motion, with the vibrating or transverse motion, which forms the two hat bodies by ma- chinery, and crosses the wool from one extremity of the hat bodies to the other at one operation, called Grant's improved winding machine for setting up hat bodies ; his former patent for the same invention, dated on the 11th day of August, A. D. 1821, having been cancelled, owing to the defective specification on which the same was granted. The schedule, which contained a full description of the invention, and of the mode of using it, was also given in evidence. The counsel for the plaintiffs also produced and read in evidence a certificate of the Secretary of State, duly authen- ticated under his hand and o%;ial seal, and certain papers thereto annexed, in the words and figures following : To all to whom these presents shall come greeting : I certify that the annexed is a true copy of the record of cancellation of a patent granted to Joseph Grant on the 11th of August, 1821, and cancelled on the 28th of April, A. D. 1825; also, that the annexed is a true copy of the petition praying for the cancellation, and the issuing of another patent for the same invention. In testimony whereof, I, Henry Clay, Secretary of State 612 PATENT CASES. Grant et al. v. Eaymond. 6 Peters. of the United States, havfe hereunto subscribed my [ * 224 ] name, and * caused the seal of the department of state to be affixed. Done at the city of Washing- ton, this 19th day of May, A. D. 1828, and of the independ- ence of the United States of America, the fifty-second [l. s.] H. Clat. This patent was returned to the Patent Office, the seal broken, and now stands cancelled, owing to the defective specification on which it was issued, and another patent grant- ed (with a corrected specification) on the 28th day of April, 1825, bearing date with the first, and for the same invention. The petition of Joseph Grant, of Providence, in the county of Providence, and State of Rhode Island, hatter, a citizen of the United States of America, respectfully represents, that your petitioner has invented a new and useful improvement in the mode of manufacturing hat bodies by the combination of motions, namely, the rotary or revolving motion with the vibrating or transverse motion, which forms the two hat bodies by machinery, and crosses the wool from one extremity of the hat bodies to the other at one operation, called "Grant's improved winding machine for setting up hat bodies," according to the specification, explanations, and drawings, herewith presented ; which the subscriber prays may be taken as a part of his petition — an improvement not used or known before his* application, the advantages of which your petitioner is desirous of securing to himself and his legal representatives. Your petitioner would further state, that he has, heretofore, namely, on the 11th day of August, A. D. 18^1, obtained letters-patent from the President of the United States for his said improvement, but, owing to a defective specification on which the same were granted, he prays that the said patent may be cancelled, and a new and correct one granted, em- bracing the same improvements, so far as the same are set PATENT CASES. 613 Grant et al. v. Baymondu 6 Peters. forth itt the accompanying specification, drawing, and expla- nations. Your petitioner therefore prays that letters-patent of the United States may be issued^ granting to your peti- tioner, his heirs, administrators, or assigns, the full and exclu- sive right of making, constructing, using, and vending to others to be used, his said improvement, according to the specification and drawings hereto annexed, agreeably to the Act of Congress in such case made and provided ; your petitioner having paid thirty dollars * into the [ * 225 ] treasury of the United States, and complied with other provisions of the said act. As in duty bound, will ever pray. Joseph Grant. To the Hon. Henry Clay, Secretary of State of the United States of America. -^ Providence, April 20, 1825. As the assignee of David Curtis, who was the assignee of Joseph Grant, of one moiety of the original patent, I unite in the prayer of the above petitioner, that the original patent may be cancelled, and a new one granted to the said Joseph Grant, as above set forth. Solomon Townsend. To the Hon. Henry Clay, Secretary of State of the United States of America. Providence, April 20, 1825. The counsel for the defendant objected that the Secretary of State had no power, by law, to accept a surrender of and to cancel said letters-patent, or to inquire into or decide upon the causes for so doing, or to grant said second patent for the same invention, with an amended specification, for the unex- pended portion of the term of fourteen years, which had been granted by the first patent. The Court decided that such surrender might be made, when the defect in the specification arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee ; and that the Secretary of State had authority VOL I. — p. c. 52 614 PATENT CASES. Grant et ^1. v. Baymond. 6 Peters. to accept such surrender, and cancel the record of the patent, and to issue a new patent for the unexpired part of the four- teen years granted under the old patent in manner aforesaid. To which decision the counsel for the defendant excepted. The fourth plea, filed on the part of the defendant, after reciting the Specification annexed to the patent of the plain- tiffs, averred as follows : " And the defendants aver that said specification does not correctly or accurately describe the improvement claimed by, the said Joseph Grant as his inven- tion ; but said specification, and the drawings thereto an- nexed, are altogether defective in this, among other things, namely : in said specification no proportions, sizes, or dis- tances, are given, and the bigness or size of none of the prin- cipal parts of said machine is given in said specifications or drawings, but the same is wholly omitted ; and, in [ * 226 ] other particulars, said specification * and drawings are altogether defective. And the defendants aver that said specification, annexed to and making part of said letters-patent, with the drawings thereto annexed, do not contain a written description of his, the said Joseph Grant's invention and improvement aforesaid, and manner of using it, in such full, clear, and exact terms as to distinguish the same from all other things before known, and so as to enable any person skilled in the art of which said machine or im- provement is a branch, or with which it is most nearly con- nected, to make and use the same ; and that, for the cause aforesaid, said letters-patent are void. All which the de- fendants are ready to verify ; wherefore they pray judgment if the said Joseph Grant and Solomon Townsend ought to have or maintain their aforesaid action against them, and for their costs." To which plea the following replication was filed: "And as to the plea of the said Eliakim Raymond and Henry Raymond, by them fourthly above pleaded, the said PATENT CASES. 615 Grant et al. v. Baymond. 6 Feterg. ■ Joseph Grant and Solomon Townsend say, that, by reason of any thing in the said last-mentioned plea alleged, they ought not to be barred from having and maintaining their aforesaid action thereof against them, the said Eliakim Raymond and Henry Raymond, because they say that the specification mentioned in the said last-mentioned plea does correctly and accurately describe the improvement claimed by the said Joseph Grant, as his invention ; and because they say further, that neither the said specification, nor the drawings thereto annexed, are defective in any of the particulars in that behalf alleged in the said last-mentioned plea ; and this they, the said Joseph Grant and Solomon Townsend, pray may be in- quired of by the country ; and the said Eliakim Raymond and Henry Raymond do the like," &c. The counsel for the defendants on the said trial introduced sundry witnesses to prove the allegations traversed in the sai^ fourth plea, and insisted that they had proved the same, and that the said specification of the said Joseph Grant did not describe the improvement which he claimed to have invented, in such full, clear, and exact terms as to distinguish the same from all other things before known, nor so as to enable a per- son skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make and use the same ; * and they requested the Court [ * 227 1 to charge the jury, that if they found that the de^ fendants had maintained and proved their averments in that respect, that they must find the same for the defendants ; which instructions the Court refused to give, but instructed the jury that the patent would not be void on this ground, unless such defective or imperfect specification or descrip- tion arose from design, and for the purpose of deceiving the public ; to which opinion the counsel for the defendants also excepted. The case was argued by Mr. Webster, for the defendants 616 PATENT CASES. Grant et al. v. Raymond. 6 Peters. in the Circuit Court, now before the Court as plaintiffs in error ; and by Mr. Ogden, jbr the defendants, plaintiffs in the Circuit Court. ' Mr. Webster stated, that the first question for the decision of the Court %as, whether the Secretary of State can accept the surrender of a patent, cancel it, and grant a new one for then nexpired term for which a patent had been granted, on a suggestion that the specification is defective through inad- vertence or mistake ? It cannot but be doubted whether such cancellation can be made anywhere, so as to take out a new patent. The whole system of patents rests on statute provision. There is no common-law power, or prerogative right, in the President to issue a patent. In this particular, our law is different from the English. Ours is a statute grant ; theirs is an emanation out of a statute prohibition. With us, the fountain is statute; with them, prerogative. Our statute makes no provision for any surrender, and the issuing of a new patent thereon. Indeed, it seems impossible to reconcile such a proceeding to the requisitions of the act. How can the patentee allege, or assign for his second pa- tent, that his improvement had not been known before that application. That is a statute requisition ; here, in the case before the Court, it had been in use three years. The party must claim, and in this case does claim, under his second patent, as a new and substantive patent ; not under his first, with an amended specification. On surrender or cancellation of the patent, the party comes for a new patent, for the same invention. Now, in [ * 228 ] all such * cases, it must be that the thing has been used or known before that application. In this very case, it does not appear that his petition contained the statute requisites ; it refers it to his former application. PATENT CASES. 617 Grant et al. v. Raymond. 6 Peters. But however this may be, the Secretary of State has no authority to make a record of cancellation, and to issue a new patent. The Secretary of State is a merely ministerial officer. All the laws relating to granting patents regard him as merely ministerial. His department is denominated an executive department. He has no where any particle of judicial power. On the subject of patents, as well as all others, he acts wholly ministerially. ' By the first Patent Law, April 10, 1790, the Secretaries of State, War, and Attorney-General, were invested with au- thority to grant or refuse patents. But this was repealed by the existing law of February 21, 1793. The power of grant- ing or withholding patents, was by this act taken away from everybody. The Secretary was to give the patent out, on certain requisitions being complied with, without exercising any judgment, or making any inquiry ; and the patent was to avail the grantee what it might, according to the truth of the representatipns of the patentee. It is matter of right, and matter of course, to issue the patent ; if. the requisites of the law be complied with. The Secretary has nothing to do but ' make out the patent. He is applied to as keeper of the seal. And if a dispute arises between inventors, the Secretary cannot decide it ; he is to appoint umpires. Sect. 9. He is not trusted to decide even whether the /orm of the letters-patent be conformable to law ; that belongs to the Attorney-General. The general power of the Secretary is commented on in Marbury v. Madison, 1 Cranch, 159, 160. He is to record diplomatic transactions ; but he cannot alter or cancel those records. He records treaties and Acts of Congress ; but those, of course, he cannot alter. The Secretary has no power to record in his office any transaction, not his own, except so far as authorized by statute. 52* 618 PATENT CASES. Grant et al. v. Eaymond. 6 Peters. In regard to patents, the statute declares what shall be re.corded. 1. The patent itself. 2. The assignment of it, [ * 229 ] if requested. * These are all. The Secretary has nothing more to do. As to cancelling a patent, he \s functus offltio. The breaking the seal, or other cancellation by the patentee of his patent, is just as effectual if done anywhere else as if done at the State department. It is not a transaction which the law has prescribed for recording anywhere. He can neither authorize this cancellation nor forbid it, nor make it matter of official record. The vacating and cancelling the record of a patent is in its nature a judicial act. The Act of 1793 treats it as such, and provides two modes of such vacation. Cited the 6th and 10th sections of the act. The common law, also, provides a mode. The Court can- not add a new section to the act. In England, the repealing of patents is always regarded as a judicial act. Godson on Patents, 200. The limitations, under which the Court below thought the Secretary could vacate one patent and issue another, show that the power he is expected to exercise is judicial. The 4efect must arise from inadvertence or mistake, without fraud or misconduct. The power of the Secretary to act, then, depends upon his having adjudged the case to be one of mis- take, and not a case of fraud. This is judicial power. How can the Secretary make this judicial investigation. 1. He has no parties before him, and no power to bring persons before him. When done in Court, this is done in the presence of litigant parties. - 2. He cannot summon wit- nesses before him, and if they should come voluntarily, he cannot administer an oath to them. Such oaths would be extra-judicial and nugatory. He cannot require the party's own oath. PATENT CASES. 619 Grant et al. d._ Raymond. 6 Peters. Now, whether the want of a proper specification be the effect of accident or of fraud, is a question of fact ; and it is to be decided by the Secretary, without parties, oaths, or witnesses. Besides, the surrender is to be accepted only when the specification is defective. Is not that very question a ques- tion of fact, or a mixed question of law and fact ? Certainly it is. It is for the jury : even a Court cannot determine it without a jury. By Act of April 20th, 1818, the Secretary of State ap- points a superintendent. Does he delegate to him his judi- cial power ? * There is but one way of answering this view of [ * 230 ] the subject. It must be contended, that in every case, on the mere suggestion of the patentee, a new patent is to be issued for the residue of the term, with an amended specification : leaving it to be decided, when suit should be brought, whether the defect was inadvertent or fraudulent. This would change the whole Patent system. Its effects would be monstrous. Patentees would try their claims under one specification ; they might fail ; and they would call it inadvertence, and try another experiment. A man builds an expensive factory, puts in costly ma- chinery, not patented, not described in any specification ; he expends much money ; by and by, he is sued for violating a patent, and he finds that since he built, an old patent has come out with a new specification. A hearing, of which he knew nothing, has been had before the Secretary, and a new patent has issued, and he is called on to stop his factory. Now this supposed case is the very case before the Court. The defendants erected their works in 1823, 1824. They knew of the plaintiff's patent of August 11, 1821, bbt it did not describe any machinery used by them. But in 1825 he surrendered his first patent, took out another, with a specifi- 620 PATENT CASES. Grant et al. v. Baymond. 6 Peters. tion describing their machinery, and sued them. Under the direction of the Court he has recovered a verdict for three thousand two hundred and sixty-six dollars ; and is entitled, of course, to have this trebled, and the defendants are ruined. Is this legal 1 A bill in equity is pending also, l,o stop the defendants' f^ptory. Now, what reason is there for saying that defendants shall suffer these losses, even by the mistake or inadvertence of the patentee. The invention had become public, and if not protected by the first patent, it was 'gone forever. A bad patent is no patent. 1 Barn. & Aid. 386. It may be well for Congress to give the Courts or judges power to vacate patents on patentee's own motion ; but then Congress^ would provide limitations and securities for innocent persons. On the doctrine of this case there are no securities. What are the consequences of such a principle ? A man finds out that there are other machines made like [ * 231 ] his, which he * would like to stop ; he sets up in- advertence, gets a new patent, and stops them. Jff" he swears it, who can deny it 1 It is of younger date, and he swears he meant to describe it. This would furnish irre- sistible temptation to perjury. There is a deeper objection. A man makes an invention ; he gets a patent, but his specification does not describe it, but describes something else. In the mean time, the public use, not what he has patented, but what he has not. Now, how is the public to be deprived of the use of this ? It is denied that they can be prevented this use. The decision of this Court in Pennock v. Dialogue, proves this cannot be. The invention was used and known before it was patented. A patent, not describing an invention, is void as to that in- vention, and does not protect it. The invention, by a single month's use, unprotected by a patent, becomes public pro- perty and can never be resumed. PATENT CASES. 621 Grant et al. v. Raymond. 6 Peters. Whether the patent be void through fraud or inadvertence, if it does not describe the invention, then the invention is not protected, but has become public property. Pennock v. Dia- logue so decides. In England a scire facias to repeal a patent is a criminal proceeding, and does not allow cbsta. 7 Term Rep. 367 ; Godson, 201. This case was tried in New York before Pennock v. Dia- logue was decided in this Court. The only case applicable to the one now before the Court is Morris v. Huntington, 1 Paine, 348. That was decided in 1824. Its doctrine was materially charged by Pennock and Dialogue. After all, that case only decides, that a patent, while another is in existence, is void. The judge then goes on to say, it may be surrendered. It seems admitted that the new patent ought not to reach back so as to affect those who had already used the inven- tion. But how can this distinction be made? Cited to this point, Brooke v. Clarke, 1 B. &, A. 396, note. The great and conclusive objection is this ; the new patent is granted on the new application, and the invention had been public four years. This is fully settled in the case of Pen- nock V. Dialogue. The second point is presented on the defendants' fourth plea. * The Court instructed the jury that [ * 232 ] the patent would not be void, unless the defective or imperfect specification arose from design, or the purpose of deceiving the public. This point presents two questions, 1. Whether the patent would be void or not, for the rea- sons stated ; the direction of the Court was not pertinent to the issue. The parties were at issue on a question of fact; witnesses were examined, and counsel had summed up ; but the Court told the jury the issue was immaterial, and un,der this question the jury found a verdict for plaintiff. 622 PATENT CASES. Grant et al. v. Baymond. 6 Peters. It can require no argument to prove that this is an illegal direction. 2 Day's Reports,' 519 ; 1 Starkie, 388 ; 9 Cranch, 339, 355. 2. If the question had legally arisen, the law was wrongly stated. It is insistefi, that the plea was a good bar. If the specifi- cation was defective, as set forth in the plea, the plaintiff could not recover, whether that defect arose from accident or design. The very words of the third section of the statute require this. There are certain conditions precedent to be complied with, before an inventor can obtain a patent. This is one of them. The language of this section is emphatic and absolute ; it could not be stronger. Courts may just as well dispense with the oath. Suppose he omit to deliver any written specification what- ever ; can he afterwards say that omission was owing to inad- vertence ? Yet a defective specification, or bad specifica- tion, is no specification. The same law that requires a written specification, requires a full and accurate one. A defective one is no better than none at all. Suppose he omit to sign the syecification, can that be cured ? A party is to describe his invention so as to answer two purposes : 1. To distinguish it from all other things before known. 2. To enable any person skilled in the art to make and use it. If he fail in either of these, he fails in a condition precedent. This is all very clear, and there would be no doubt about it but for the sixth section. That section has been supposed to raise the doubt. This section, as has been observed by most [ * 233 ] judges, is inartfuUy * drawn. It speaks of the right of a defendant to give this act in evidence, in an action founded on the act itself. It is not grammatical. It seems borrowed from the law of 1791. PATENT CASES. 623 Grant et al. v. Baymond. 6 Peters. The first important remark is, that the preceding sections have described the whole extent of the patentee's right. This section has for its object, the giving of immunities and pro- tection to those who may be sued by patentees. Therefore, its object was not to enlarge the right of patentees. Second, most of its provisions are only affirmative, and the right ex- isted before. The action being case, all the material defences are competent. Third, it gives some matters as a defence not mentioned in the first act, such as license or abandon- ment to the public. Fourth, it does not repeat the same objections to specification. It allows the defendant to prove three things as fatal de- fects in his specification. 1. That it does not contain the whole truth relative to the discovery, with intent to deceive the public. This provision may stand with the first section. 2. That it contains more than is necessary to produce the described effect: with intent to deceive the public. This may stand with the third section. 3. That the thing had been used, or described in a public work. This may also stand. Now, the fraudulent intent is applied only to the two first. In these cases Congress may say that fraud shall be proved ; because, even with these defects, it may be a patent, and a very useful patent. It may be a valid patent, though the patentee take it but for part of his invention ; yet if he fraudulently deceive the public by keeping back part, it shall be void. So it may be a good and valuable patent, though it contain more than is necessary to produce the described effect. But if it be not so described as to be distinguished from other things before known, or so that skilful persons can use it, it is no patent, or of no use at all. These last objections go to its very existence ; and are therefore made prerequisites. They are absolute conditions precedent. 624 PATENT CASES. Grant et al. v. Raymond. 6 Peters. But the main consideration yet is, that this sixth section has an object of its own. It looks, not so much to the de- fence in its suits, as to the judicial vacation of the patent. It does not look mainly to the defence of the [ * 234 ] suits, because it leaves * out several known grounds of (ffefence. 1. License. 2. Abandonment to the public. 3. That the patent is broader than the invention. 4. That the machine is not well described. '■All these are defences, and yet not mentioned here. The object of the sixth section is like that of the tenth, to repeal for fraud proved. All this may stand, without con- tradicting the third section, or doing violence to its language. Indeed, Pennock and Dialogue, (2 Peters, 1,) has appa- rently decided this. The sixth section speaks of inventions known before the patentee's discovery. This does not con- tradict the third section — " known before application." The Court has settled this, and it decides this case. The plaintiff relied below on the following cases. Park v. Little and Wood, 3 Washington, 196, in April, 1813 ; Grdy et al. v. James, 1 Peters's C. C. Rep. 401, 1817. Butit does not appear in this case whether the defendant was or was not proceeding with a view to vacate the patent. Most probably he was ; for at that time such was the prac- tice. This is rendered still more probable by a decision looking the other way in 1820, by the same judge. Kneass V. Schuylkill Bank, 4 Wash. C. C. Rep. 13. This case is clearly for tiie p)aintiffs in error. The case of Whittemore v. Cutter, 1 Gallison, 419, decided in May, 1813, was probably a caSe to vacate ; at any rate the judges doubted, and would have divided if the case had turned on this point. The case of Lowell v. Lewis, 1 Mason, 183, in 1817, was probably a similar case; page 189 cited particularly. How can the Court dispense with the express words of the PATENT CASES. 625 Grant et al. v. Baymond. 6 Peters. third section. Here they are put into the form of a special plea ; can they be disregarded 1 Suppose there be but one witness ; though this is merely a formal requisite, can the Court dispense with it ? Besides, why should the statute require a specification, unless it was to be full and accurate 1 For what purpose should an insufficient specification be enjoined ? The Court may as well say there shall be none. The statute says as im- peratively what the specification shall contain, as that there shall be a specification at all. If an imperfect or defective specification does not render a patent void, what harm does it do to it ? Let this question be answered. * Now, tBe patentee says his specification in [ * 235 ] 1821 was defective, not through fraud, but defective. But why was not that patent good, or this ? If defective through fraud, he could not get another. It must be pre- sumed to be defective through inadvertence. If so, what need of a new one ? Compare the two rules of law decided in this case together. 1. The judge held, that a party might surrender his patent and take a new one, when the specification in the first was defective through mistake, and without fraud. 2. The Court ruled, that though a specification be altogether defective, yet the patent is not void, unless such defect arise from design.. How can these things stand together ? If the last propo- sition be true, all inquiry about the first is idle ; unless the question be, whether a man having one good patent may sur- render it and take out another good one for the same thing. It is now matter of settled law, that if a patent be broader than the invention it is void ; and it is never inquired whether this arise from design or accident. In nine times out of ten it arises from inadvertence. Now, on what principle is this ? Not because the plaintiff's invention has not been invaded. VOL. I. — p. c. 53 ^26 PATENT CASES. Grant et al. ». Baymond, 6 Peters. It may have been exactly copied. It is because he has not rightly described what he claimed, and therefore his patent protects him in nothing. So if a patent be for an improvement of an old machine, it must state the improvement accurately, and distinguish be- tween what 'n old and what new. Finally, the English statute has always been construed the other way. Our sixth section is a substitute for the English scire facias. Cited Davis's Patent Cases, 413 ; Gddson, 124 ; Holroyd, 100, note. Cited also Dodson's Patents, 56; 1 Term Rep. 605; 1 Wash. C. C. Rep. 71 ; 3 Wash. C. C. Rep. 198 ; 1 Mason, 189, 190; 4 Id. 9, 10; 3 Wheat. 518 ; 2 Hen. Black. 478; 1 Ves. and Beames, 67 ; 8 Term Rep. 101 ; 2 Car, and Paine, 558, 535; 11 East, 107; 14 Ves. 131. Mr. Ogden, for the defendants in error. The first question is, whether the Secretary of State of the United States has a power by law to accept of the [ * 236 ] surrender of * and to cancel a patent which had once been issued, and to grant a second patent for the same invention, with an amended specification for the unexpired portion of the term of fourteen years which had been granted by the first patent ? Upon this question there is not known a single case where the point has been expressly decided in the United States. The Patent Law is silent upon the subject ; and the question must then be decided upon general principles. A patent for a useful machine is a grant of the exclusive privilege of making and using the machine for a limited time. Now it would seem that a grantee may surrender his grant. A man who has a privilege may surrender that privilege. If a man cancels his patent upon record, it amounts to a sur- render of it. PATENT CASES. 627 Grant et al. v. Saymond. 6 Peters. The difficulty in question, if there be any, must be in the other branch of it. Has the Secretary of State the power, after the surrender of one patent, to grant a new one for the same invention, with an amended specification for the unex- pired portion of the term of fourteen years which had been granted by the first patent ? Why should he not ? When the first patent is cancelled, the invention is unprotected. If a useful one, why should not the inventor have the benefit of it? He certainly never intended to abandon the benefit of it to the public. His first patent is evidence of that. A specification requires to be drawn with great accuracy. Mechanics, by whom machines are usually invented, it can- not be supposed are capable of drawing a proper specifica- tion. Can it be supposed that the law ever intended to punish their ignorance in drawing a very special legal paper by a forfeiture of all the advantages of their invention ? It is apprehended that the issuing a new patent in England, where there has been no sufficient specification to comply with the condition of the first patent, is pretty much a matter of course. In the case Ex parte Beck, 1 Bro. Ch. Rep. 575, the Lord Chancellor says, " that perhaps upon the petitioner's applying for a new patent, the officers might, under these circum- stances, be induced to remit their fees ; but that he could give no relief upon the present petition." Here the Lord Chancellor speaks of the issuing of a Tiew patent as a matter of course. * In our Patent Law, the inventor must file his [ * 237 ] specification before he can procure his patent. In England, the patent contains upon its face a condition that if the patentee shall not make and file a specification within a limited time after the date of the patent, then the patent, and all the liberties and advantages under it, shall cease and be void. 628 PATENT CASES. Grant et al. v. Baymond. 6' Peters. One of the cases cited by the plaintiff in error shows that the specification is not filed within the time mentioned in the patent ; although the patent is void, a new one may be taken out by the inventor for the same invention. , This case, in principle, seems to support the proposition for which th» defendant in error contends ; that if a first pa- tent is void for want of a specification, or for want of a suffi- cient specification, a new one may be issued for the same invention to the same inventor. In the case of Morris v. Huntington, 1 Paine's Rep. of Cases in the Second Circuit, 355, Mr. Justice Thompson says, " I see no insuperable objection to entering a vacatur of the patent of record in the department of State, if taken out inadvertently, or by mistake. All the proceedings in that department on the subject of patents are ex parte, except in the case of interfering appli- cations. The department acts rather ministerially than judi- cially, and upon the representation of the applicant, without entering into an examination of the question of right ; and there seems to be no good reason why, on a like ex parte application, the patent may not be surrendered and cancelled of record, if no misconduct be imputable to 'the patentee in taking it out." Cited also page 356. So far then as this question has ever arisen in any of our Courts, the right to surrender an old patent and procure a new one has been recognized. Cited also Barrett et al, v. Hall, 1 Mason, 475, as to the second point. The second point is settled by the express terms of the Pa- tent Law, and by the adjudications which have taken place under it. 1. By the express terms of the Patent Law. The sixth section of the Patent Act declares, " that the defendant shall be permitted to plead the general issue, and give this act and any special matter in evidence, of which notice in writing must have been given, &c,, thirty days PATENT CASES. 629 Grant et al. v. Baymond. 6 Fetera. before the trial ; tending to prove that the specifica- tion filed by the plaintiff * does not contain the [ * 238 ] whole truth relative to the discovery, or that it con- tains more than is necessary to produce the described eflTsct, which concealment or addition shall fully appear to have been made/or the purpose of deceiving the public, ifC, Sfc. So, therefore, if the specification does not contain the whole truth relative to the discovery, or if it contains more than is necessary to produce the described effect, the patent shall not, for these causes, or either of them, be evidence un- less " the concealment or addition shall fully appear to have been made for the purpose of deceiving the public." 2. By the adjudications which have taken place under the law. The first case in which the question came up, was the case of Whitney v. Carter, in the Circuit Court of Georgia. That case is cited in Mr. Fessenden's Essay on the Law of Patents^ 123. His honor, Judge Johnson, in charging the jury in that case, said, " he considered the defendants' second objection equally unsupported, and referred to the sixth section of the Patent Law, by which it is required that the concealment alleged (in order to defeat the patentee's recovery) must appear to have been made for the purpose of deceiving the public. That Mr. Whitney could have no motive for such concealment,'' &c., &c. In the case of Gray and Osgood v. James et al. 1 Peters's C. C. Rep. 394, this question came up before the Circuit Court in Pennsylvania. Judge Washington says, " but if the jury should be of opinion that, the specification is materially defective, the objection will not be sufficient to invalidate the plaintiff's patent, unless they should also be satisfied that the concealment of the circumstances not described, was intended to deceive the public." 53* 630 PATENT CASES. Grant et al. v. Baymond. 6 Peters. In the case of Whittemore v. Cutter, 1 Gallis. 429, Mr. Justice Story says, " any defect or concealment in a specifi- cation to avoid a patent, must arise from an intention to de- ceive the public." In the case of Lowell v. Levi^is, 1 Mass. 189, the same leairned judge makes a.similar declaration. Mr. Chief Justice Marshall delivered the opinion of the Court. [ * 239 ] * This action was brought by Grant and Town- send against E. and H. Raymond, to recover damages for an infringement of their right under a patent granted to the plaintiff, Joseph Grant, in April, 1825. It recited that a former patent had been issued in August, 1821, to the same person for the same improvement, " which had been can- celled, owing to the defective specification on which the same was granted." The exclusive privilege given by the patent on which the suit is brought, is to continue fourteen years from the day on which the original was issued. One of the pleas filed by the defendants, contained the following averment : and the defendants aver that the said specification does not correctly or accurately describe the im- provement claimed by the said Joseph Grant as his invention, but said specification, and the drawings thereto annexed, are altogether defective in this, among other things, namely : in said specification no proportion, sizes, or distances are given, and the bigness or size of none of the principal parts of said machine is given in said specification or drawings, but the same is wholly omitted ; and in other particulars, said speci- fications and drawings are wholly defective : and the de- .fendants aver that said specification annexed to and making part of said letters-patent, with the drawings thereto annexed, do not contain a written description of his the said Joseph Grant's invention and improvement aforesaid, and manner of using it, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and so as to PATENT CASES. 631 Grant et al. v. Raymond. 6 Peters. enable any person skilled in the art of which said machine or improvement is a branch, or with which it is most nearly con- nected, to make and use the same ; and that, for the cause aforesaid, said letters-patent are void." The plaintiffs reply that they ought not to be barred, " be- cause they say that the specification mentioned in the said last-mentioned plea, does correctly and accurately describe the improvement claimed by the said Joseph Grant as his in- vention ; and because they say further, that neither the said specification, nor the drawings thereto annexed, are defective in any of the particulars, in that behalf alleged in the said last- mentioned plea, and this they pray may be inquired of by the country," On this replication issue was joined. * At the trial the counsel for the defenda.nts ob- [ * 240 ] jected that the Secretary of State had no power by law to accept a surrender of, and to cancel the said letters- patent, or to inquire into or to decide upon the causes for so doing, or to grant said second patent for the same invention with an amended specification, for the unexpired portion of the term of fourteen years which had . been granted by the first patent. The Court decided that such surrender might be made when the defect arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee ; and that the Secretary of State had authority to accept such surrender, and cancel the record of the patent, and to issue a new patent for the unexpired part of the fourteen years granted under the old patent, in manner aforesaid. To which decision the counsel for the defendants excepted. After adducing the testimony on which they relied to sup- port their plea herein before stated, the counsel for the defendants moved the Court to instruct the jury that if they found that the defendants had maintained and proved their averments in that respect, that they must find the same for 632 PATENT CASES. Grrant et al. v. Baymond. 6 Peters. the defendants, which instructions the Court refused to give ; but instructed the jury that the patent would not be void on this ground, unless such defective or imperfect specification or description arose from design, and for the purpose of deceiving the public ; to which opinion the counsel for the defendants alsO excepted. The jury found a verdict for the plaintiffs, and assessed their damages to three thousand two hundred and sixty-six dollars sixty-six cents : the judgment on which is brought before this Court by a writ of error. The first question in the ca«tee respects the power of the Secretary of State to receive a surrender of a patent, cancel the record thereof, and issue a new patent for the unexpired part of the fourteen years for which the original had been granted. The Court was of opinion that this might be done " when the defect in the specification arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee." The right of the patentee to surrender his patent has not been denied, but the plaintiffs in error insist that no power exists to grant a new patent for the unexpired [*241 ] term. The * words of the act, they say, do not confer this power. It cannot be exercised with its necessary guards by the Department of State ; and inconve- nience of no inconsiderable magnitude might result to the public from its exercise. The Secretary of State is, in the act of making out patents, a mere ministerial ofiicer, and can exercise no power which is not expressly given. It is undoubtedly true, that the Secretary of State may be considered, in issuing patents, as a ministerial officer. If the prerequisites of the law be complied with, he can exercise no judgment on the question whether the patent shall be issued. It is equally true that the Act of Congress contains no words which expressly authorize the Secretary to issue a corrected PATENT CASES. 633 Grant et al. v. Baymond. 6 Peters. , patent, if the original, from some mistake or inadvertence in the patentee, should be found incompetent to secure the reward which the law intended to confer on him for his inven- tion. The force of this objection, and of the argument founded on it is felt. If the new patent can be sustained, it must be on the general spirit and object of the law, not on its letter. To promote the progress of useful arts, is the interest and policy of every enlightened government. It entered into the views of the framers of our Constitution, and the power " to promote the progress of science and useful arts, by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries, is among those expressly given to Congress. This subject was among the first which followed the organization of our government. It was taken up by the first Congress at its second, session, and an act was passed authorizing a patent to be issued to the inventor of any useful art, &c., on his petition, "granting to such petitioner, his heirs, administrators, or assigns, for any term not exceeding fourteen years, the sole and exclusive right and liberty of making, using, and vending to others to be used, the said invention or discovery." The law farther declares that the patent " shall be good and available to the grantee or grantees by force of this act, to ail and every intent and purpose herein contained." The emendatory Act of 1793, contains the same language, and it cannot be doubted that the settled purpose of the United States has ever been, and continues to be, to confer on the authors of useful inven- tions an exclusive right in their inventions for the time mentioned in theif patent. It is * the reward [ * 242 ] stipulated for the advantages derived by the public for the exertions of the individual, and is intended as a stimu- lus to those exertions. The laws which are passed to give effect to this purpose ought, we think, to be construed in the 634 PATENT CASES. Grant et al. v. Bavmond. 6 Peters. spirit in which they have been made ; and to execute the contract fairly on the part of the United States, where the full benefit has been actually received : if this can be done without transcending the intention of the statute, or counte- nancing acts which are fraudulent or may prove mischievous. The public yitlds nothing which it has not agreed to yield ; it receives all which it has contracted to receive. The full benefit of the discovery, after its enjoyment by the discoverer for fourteen years, is preserved ; and for his exclusive enjoy- ment of it during that time the public faith is pledged. That sense of justice and of right which all feel, pleads strongly against depriving the inventor of the compensation thus solemnly promised, because he has committed an inadvertent or innocent mistake. If the mistake should be committed in the Department of State, no one would say that it ought not to be corrected. All would admit that ^a new patent, correcting the error, and which would secure to the patentee the benefits which the law intended to secure, ought to be issued. And yet the act does not in terms authorize a new patent, even in this case. Its emanation is not founded on the words of the law, but is indispensably necessary to the faithful execution of the soleihn promise made by the United States. Why should not the same step be taken for the same purpose, if the mistake has been innocently committed by the inventor himself? The counsel for the plaintiffs in error have shown very clearly that the question of inadvertence or mistake is a judi- cial question, which cannot be decided by the Secretary of State. Neither can he decide those judicial questions on which the validity of the first patent depends. Yet he issues it without inquiring into them., Why may he not, in like manner, issue the second patent also ? The correct perform- ance of all those preliminaries on which the validity of the original depends, are always examinable in the Court in which> PATENT CASES. 635 Grant et al. d. Haymond. 6 Peters. a suit for its violation shall be brought. Why may not those points on which the validity of the amended patent depends, be examined * before the same tribunal ? [ * 243 ] In the case under consideration those questions were not supposed by the Circuit Court to have been decided in the Department of State, but were expressly submitted to the jury. The rightfulness of issuing the new patent is declared to depend on the fact, that " the defect in the speci- fication arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee." The jury were of course to inquire into the fact. The condition on which the right to issue the patent depended, could be stated to them for no other purpose. It has been said that this permission to issue a new patent on a reformed specification, when the first was defective through the mistake of the patentee, would change the whole character of the Act of Congress. We are not convinced of this. The great object and in- tention of the act is to secure to the public the advantages to be derived from the discoveries of individuals, and the means it employs are the compensation made to those individuals for the time and labor devoted to these discoveries, by the exclusive right to make, use, and sell, the things discovered for a limited time. That which gives complete effect to this object and intention, by employing the same means for the correction of inadvertent error which are directed in the first instance, cannot, we think, be a departure from the spirit and character of the act. An objection much relied on is, that after the invention has been brought into general use, those skilled in the art or science with which it is connected, perceiving the variance between the specification and the machine, and availing themselves of it, may have constructed, sold, and used the machine without infringing the legal rights of the patentee. 636 PATENT CASES. Grant et al. v. Haymond. 6 Peters. or incurring the penalties of the law. The new patent would retroact on them, and expose them to penalties to which they were not liable when the act was committed. This objection is more formidable in appearance than in reality. It is not probable that the defect in the specification can be so ap^rent as to be perceived by any but those who examine it for the purpose of pirating the invention. They are not entitled to much favor. But the answer to the objec- tion is, that this defence is not made in this case ; [ * 244 ] and the * opinion of the Circuit Court does not go so far as to say that such a defence would not be successful. That question is not before the Court, and is not involved in the opinion we are considering. The defence when true in fact may be sufficient in law, notwithstanding the validity of the new patent. It has been also argued that the new patent must issue on the new specification, and on the application which accompa- nies it. Consequently, it will not be true that the machine was " not known or used before the application." But the new patent, and the proceedings on which it issues, have relation to the original transaction. The time of the privilege still runs from the date of the original patent. The application may be considered as appended to the original application ; and, if the new patent is valid, the law must be considered as satisfied if the machine was not known or used before that application. It has been urged that the public was put into possession of the machine by the open sale and use of it under the defective specification, and cannot be deprived of it by the grant of a new patent. The machine is no longer the sub- ject of a patent. This would be perfectly true, if the second patent couTd be considered as independent of the first. But it is in no respect so considered. Tlie communication of the discovery to the PATENT CASES. 637 Grant et al. v. Eaymond. 6 Petars. public has been made in pursuance of law, with the intent to exercise a privilege which is the consideration paid by the public for the future use of the machine. If, by an innocent mistake, the instrument introduced to secure this privilege fails in its object, the public ought not to avail itself of this mistake, and to appropriate the discovery without paying the stipulated consideration. The attempt would be disreputable in an individual, and a Court of Equity might interpose to restrain him. It will not be pretended that this question is free from difficulty. But the executive departments, it is understood, have acted on the construction adopted by the Circuit Court, and have considered it as settled. We would not willingly disregard this settled practice in a case where we are not satisfied it is contrary to law, and where we are satisfied that it is required by justice and good faith. * We will now proceed to the second exception. [ * 245 ] The plea assigns the particular defect supposed to exist in the specification, and then proceeds to aver, in the very words of the act, that it " does not contain a written description of his, the said Joseph Grant's, invention and improvement aforesaid, and manner of using it, in such full, clear, and exact terms as to distinguish the same from all other things before known, and so as to enable any per;son skilled in the art, &c., to make and use the same," &c. The plea alleges, in the words of the act, that the pre- requisites to the issuing a patent had not been complied with. If the matter alleged in this plea constituted no bar to the action, the plaintiffs might have demanded, and have submit- ted the question of law to the Court. But they have chosen to deny the facts alleged in the plea, and to aver in their repliSation " that neither the specification nor the drawings thereto annexed, are defective in any of the particulars in VOL. I. — p. c. 54 638 PATENT CASES. Grant et al. v. Baymond. 6 Peters. that-behalf alleged." Issue was joined upon this replication, and it is that issue which the jury were sworn to try. At the trial, the counsel for the defendants, after the evi- dence was closed, asked the Court, in substance, to instruct the jury that if they should be of opinion that the defendants had maintairited and proved the facts alleged in their plea, they must find for the defendants. The Court refused this instruction. Ought it to have been refused ? If in the opi- nion of the jury the defendants have proved and maintained every fact alleged in the plea, on which the issue they are sworn to try is joined, ought not the jury to find that issue for the defendants? Is not this required by their oaths? The conclusion, " and that for the cause aforesaid, said let- ters-patent are void," is an inference of law from the facts previously alleged ; not the allegation of a distinct fact to be submitted to the jury. The Court proceeded to instruct the jury, " that the patent would not be void on this ground, unless such defective or imperfect specification or description arose from design or for the purpose of deceiving the public." Now this " design," this "purpose of deceiving the pub- lic," constituted no part of the issue. The defendants had not alleged it, and could not be supposed to come prepared to prove it. A verdict for them would not imply [ * 246 ] it. The instruction is * understood to direct a verdict which finds in fact that the description or specification is not defective; a.nd this verdict against the evidence is to be found because that defect "arose not from design, or for the purpose of deceiving the public." But we must inquire whether the instruction, independent of its departure from the issue, be consistent with law. It is " that the patent would not be void unless," &c. The fifth section of the act gives the party aggrieved an action for the infringement of his patent-right. The sixth PATENT CASES. 639 Grant et al. v. Raymond. 6 Peters. provides " that the defendant in such action shall be permit- ted to plead the general issue, and give this act in evidence, and to give in evidence any special matter, of which notice in writing may have been given to the plaintiff" or his attorney thirty days before trial, tending to prove that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect ; which concealment or addition shall fully appear to have been made for the purpose of deceiving the public ; or that the thing thus secured," &c., " in either of which cases judgment shall be rendered for the defendant with costs, and the patent shall be declared void." Courts did not, perhaps, at first distinguish clearly between a defence which would authorize a verdict and judgment in favor of the defendant in the particular action, leaving the plaintiff* free to use his patent, and to bring other suits for its infringement ; and one which, if successful, would require the Court to enter a judgment not only for the defendant in the particular case, but one which declares the patent to be void. This distinction is now well settled. If the party is content with defending himself, he may either plead specially ; or plead the general issue, and give the notice required by the sixth section of any special matter he means to use at the trial. If he shows that the patentee has failed in any of those prerequisites on which the authority to issue the patent is made to depend, his defence is com- plete. He is entitled to the verdict of the jury and the judgment of the Court. But if, not content with defending himselfi he seeks to annul the patent, he must proceed in precise conformity to the sixth section. If he depends on evidence " tending to prove that the specification filed by the plaintiff" * does not contain the whole [ * 247 } truth relative to his discovery, or that it contains more than is necessary to produce the described effect," it 640 PATENT CASES. Grant et aL v. Raymond. 6 Peters. may avail him so far as respects himself, but will not justify a judgment declaring the patent void, unless such " conceal- ment or addition shall fully appear to have been made for the purpose of deceiving the public ; " which purpose must be found by the jury to justify a judgmen^ of vacatur by the Court. The defendant is permitted to proceed according to the sixth section, but is not prohibited from proceeding in the usual manner, so far as respects his defence ; except that special matter may not be given in evidence on the general issue unaccompanied by the notice which the sixth section requires. The sixth section is not understood to control the third. The evidence of fraudulent intent is required only in the particular case, and for the particular purpose stated in the sixth section. This instruction was material if the verdict ought to have been for the defendants, provided the allegations of the plea were sustained, and if such verdict would have supported a judgment in their favor ; although the defect in the specifica- tion might not have arisen from design, and for the purpose of deceiving the public. That such is the law we are entirely satisfied. The third section requires, as preliminary to a patent, a correct specification and description of the thing discovered. This is necessary in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of the power to issue the patent. The necessary consequence of the ministe- rial character in which the Secretary acts, is that the perform- ance of the prerequisites to a patent must be examinable in any suit brought upon it. If the case was of the first impres- sion, we should come to this conclusioi) ; but it is understood to be settled. The Act of Parliament concerning monopolies contains an exception on which the grants of patents for inventions have issued in that country. The construction of so much of that PATENT CASES. 641 Grant et al. v. Baymond. 6 Peters. exception as connects the specification with the patent, and makes the validity of the latter dependent on the correctness of the former, is applicable, we think, to proceedings under the third section of the American act. The Eng- lish books * are full of cases in which it has been [ * 248 ] held that a defective specification is a good bar when pleaded to, or a sufScient defence when given in evi- dence on the general issue, on an action brought for the infringement of a patent-right. They are very well summed up in Godson's Law of Patents, title Specification : and also in the chapter respecting the infringement of patents : also in Holroyd on Patents; where he treats of the specification, its form and requisites. It is deemed unnecessary to go through the cases, because there is no contrariety in them, and because the question is supposed to be substantially settled in this country. Pennock and Sellers v. Dialogue, 1 Peters, 1, was not, it is true, a case of defect in the specification or descrip- tion required by the third section, but one in which the ap- plicant did not bring himself within the provision of the first section, which requires that before a patent shall issue the petitioner shall allege that he has invented a new and useful art, machine, &c., " not known or used before the applica- tion." This prerequisite of the first section, so far as a failure in it may effect the validity of the patent, is not distinguishable from a failure of the prerequisites of the third section. On the trial evidence was given to show that the patentee had permitted his invention to be used before he took out his patent. The Court declared its opinion to the jury, that if an inventor makes his discovery public, he abandons the in- choate ri^ht to the exclusive use of the invention. "It is possible," added the Court, " that the inventor may not have intended to give the benefit of his discovery to the public." " But it is not a question of intention," " but of legal 54* 642 PATENT CASES. Grant et al. v. Raymond. 6 Peters. inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say whether the evidence brings this case within the principle which has been stated. If it does, the Court is of opinion that the plaintiff is not entitled to a verdict." The jury found a verdict for the defendants; an exception was taken to the opinion, and the judgment was affirmed by this Court. This case affirms the principle that a failure on the part of the patentee, in those prerequisites of the act which authorize a patent, is a bar to a recovery in an action for its infringe- ment ; and that the validity of this defence does [ * 249 ] not depend on * the infintion of the inventor, but is a legal inference upon his conduct. Upon these authorities and this reasoning we are of opinion that the instruction was erroneous, and that the judgment ought to be reversed and the cause remanded. One of the judges composing the majority thinks, that the direction would have been erroneous on a plea properly framed upon the third section of the act, and averring the facts of a defective speci- fication, and a non-compliance with the other requisitions of that section, for that such a plea would be a good bar and defence to the action : but, in his view, the plea relies upon the facts as avoiding the patent entirely, and avers it to be void. He thinks, however, that the replication puts the facts, and not the point whether void or not, in issue ; and that the direction of the Court was erroneous, since it was equivalent to a declaration, that if all the facts were proved, the issue ought not to be found for the defendants, unless the imper- fection of the specificatioii arose from a fraudulent design. The judgment is reve^rsed, and the cause remanded with directions to issue a venire facias de novo. This cause came on to be heard on the transcript of the PATENT CASES. 643 Shaw V. Cooper. 7 Peters. 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 the opinion of this Court that the said Circuit Court erred in instructing the jury, " that the patent would not be void on this ground, unless such defective or imperfect specification or description arose from design, and for the purpose of deceiving the public." Where- upon it is ordered and adjudged by this Court, that the judg- ment of the said Circuit Court in this cause be, and the same is hereby reversed, and that this cause be, and the same is hereby remanded to the said Circuit Court, with directions to award a venire facias de novo. Joseph Shaw, plaintiff in eeror v. Joseph Cooper.^ [7 Peters, 292. January T. 1833.] Action for an alleged violation of a patent for an improTement in guns and fire-arms. The letters-patent were obtained in 1822; and in 1829, the patentee having surrendered the same for an alleged defect in the specification, obtained another patent. This second patent is to be considered as having rela,tion to the emanation of the patent of 1822 ; and not as having been issued on an original application. The holder of a defective patent may surrender it to the Department of State, and obtain a new one, which shall have relation to the emanation of the first. The case of Grant and others v. Kaymond, 6 Peters, 220, cited and affirmed. A second patent, granted on the surrender of a prior one, being a continuation of the first, the rights of a patentee must be ascertained by the law under which the original application was made. By the provisions of the Act of Congress, of 17 April, 1800, citizens and aliens, 1 See sec. 7 of the Act of 3d March, 1839. Appendix, 2d vol. 644 PATENT CASES. Shaw V. Cooper. 7 Peters. as to patent-rights, are placed substantially upon the same ground. In either 1 case, if the Inrention was known or used by the public before it was patented, the patent is void. In both cases, the right must be tested by the same rule. What use by the public, before the application is made for a patent, shall make void the right of a patentee. Prom an examin^ion of the various provisions of the Acts of Congress rela- tive to patents for useful inventions, it clearly appears that it was the inten- tion of the legislature, by a compliance with the requisites of the law, to vest the exclusive right ii) the inventor only ; and that, on condition that his in- vention wag neither known nor used by the public, before his application for a patent. If such use or knowledge shall be proved to have existed prior to the application for the patent, the Act of 1793, declares the patent void ; and the right of an alien is vacated in the same manner, by proving a foreign use or knowledge of his invention. That knowledge or use which would be fatal to the patent-right of a citizen, would be equally so to the right of an alien. The knowledge or tise spoken of in the Act of Congress of 1793, could have referred to the public only ; for the provision would be nugatory if it were applied to the inventor himself. He must necessarily have a perfect know- ledge of the thing invented, and of its use, before he can describe it, as by law he is required to do preparatory to the emanation of a patent. There may be cases in which a knowledge of the invention may be surrepti- tiously obtained and communicated to the public, that do not affect the right of the inventor. Under such circumstances, no presumption can arise in favor of an abandonment of the right to the public by the inventor ; though an acquiescence on his part will lay the foundation for such a pre- [*293] sumption. *It is undoubtedly just that every discoverer should realize the benefits resulting from his discovery, for the period con- templated by law. But those can only be reserved by a substantial compli- ance with every legal requisite. , This exclusive right does not rest alone on 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 have been communicated to the public before a patent is obtained, any acquiescence in the public use by the inventor' will be an abandonment of the 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. His' right would be secured by giving public Botice that he was the inventor of the thing used, and that he should apply for a patent. 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 know- ledge may be presumed from the circumstances of the case. This will, in general, be a fact for a jury ; and if the inventor do not, immediately after PATENT CASES. 645 Shaw V. Cooper. 7 Peters. this notice, assert his rightj it is such evidence of acquiescence in the public use, as forever afterwards to prevent him from asserting it. After his right shall be perfected by a patent, no presumption arises against it from a sub- sequent use by the public. A strict construction of the Act of Congress, as it regards the publie use of an invention before it is patented, is not only required by its letter and spirit, but also by sound policy. The question of abandonment to the public, does not depend on the intention of the inventor. Whatever may be the intention, if he suffers his invenlioa 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 circumstances protect his right. In error to the Circuit Court of the United States for the Southern District of New York. At the October term, 1829, of the Circuit Court for the Southern District of New York, the plaintiff in error, Joseph Shaw, instituted an action against the defendant, Joseph Cooper, for an alleged violation of a patent granted to him by the United States, dated the 7th of May, 1829, for " a new and useful improvement in guns and fire-arms, which improvement consisted in a priming head and case applied to arms and fire-arras, for the purpose of priming and giving them fire by the means or use of percussion, fulminating, or detonating powder ; " by which patent the plaintiff alleged that there was granted to him, &c., for the term of fourteen years from the 19th of June, * 1822, the [ * 294 ] exclusive right to the said invention, and by virtue of which he became entitled* to the same for the residue of the term unexpired on the 7th day of May, 1829. The decla- ration averred that the defendant had violated the patent- right of the plaintiff, on the 1st day of August, 1829; and afterwards between that day and the institution of the suit. The defendant pleaded not guilty, and gave the following notice of the matters of defence : " Please to take notice, that on the trial of the above cause the above named Joseph Cooper will, under the plea of the 646 PATENT CASES. Sfaaw V. Cooper. ^7 Peters. general issue aforesaid, insist upon, and give in evidence, that the pretended new and useful improvement in guns and fire- arms, mentioned and referred to in the several counts of the said Joshua Shaw's declaration, was not originally discovered or invented by the said Joshua Shaw ; also, that the said pre- tended new aifd useful improvement, or the material or essen- tial parts or portions thereof, or some or one of them, had been kriown and used in this country, namely, in the city of New York, and in the city of Philadelphia, and in sundry other places in the United States, and in England, and in France, and in other foreign countries, before the said Joshua Shaw's application for a patent, as set forth in his said declaration ; and also, before the alleged invention or supposed discovery thereof by the said Joshua Shaw. " And further, that the said alleged new and useful improve- ment, or the material or essential parts or portions thereof, or some or one of them, or the principle thereof, was the inven- tion or discovery of a gunmaker, or of some other person, residing in England. And further, that the said patent was void, because in and by the specification or description therein referred to, no distinction or discrimination is made between the parts and portions previously known and used as aforesaid^ and any parts or portions of which the said Joshua Shaw may be the inventor or discoverer ; the said Joseph Cooper at the same time protesting that he, the said Joshua Shaw, has not been the inventor or discoverer of any part or portion of the said alleged improvement. " And further, that the said patent is void, because the said specification or description does nbt describe [ * 295 ] the improvement * of which the said Joshua Shaw claims to be the inventor or discoverer, in such full, clear, and exact terms, as to distinguish the same from all other things before known, nor so as to enable a person skilled in the art or science of which it is a branch, or with which it PATENT CASES. 647 Shaw V. Cooper. 7 Peters. is most nearly connected, to make and use the same. And further, that the said patent is void, because it was not granted, issued, or obtained, according to law. And further, that the said patent is void, because it was surreptitiously obtained by said Joshua Shaw." The cause was tried in January, 1832, and a verdict and judgment given for the defendant. The plaintiff prosecuted this writ of error. The following bill of exceptions was tendered by the coun- sel for the plaintiff, and sealed by the Court: — " The plaintiff, to maintain the issue on his grant, gave in Evidence the letters-patent of the United States of America, as set forth in the declaration of the said plaintiff, issued on the 7th day of May, 1829; and also that the improvement for which the said letters-patent were granted, was invented or discovered by the said plaintiff in the year 1813 or 1814, and that the defendant had sold instruments which were in- fringements of the said letters-patent. And thereupon the said defendant, to maintain the said issue above joined on his . part, then and there proved by the testimony of one witness, that he had used the said improvement in England, and had purchased a gun of the kind there, and had seen others use the said improvement, and had seen guns of the kind in the Duke of York's armory, in 1819 ; and also proved by the tes- timony of five other witnesses, that, in 1820 and 1821, they worked in England at the business of making and repairing guns, and that the said improvement was generally used in England in those years, but that they never had seen guns of the kind prior to those years ; and also proved that, in 1821, it was known and used in France, and also that the said improvement was generally known and used in the United States of America after the 19th day of June, 1822, Where- upon the said plaintiff, further to maintain the said issue on his part, then and there gave in evidence, that the said plain- 648 PATENT CASES. Shaw V. Cooper. 7 Peters. tiff, not being a worker in iron in 1813, or 1814, [* 296 ] employed his brother, * in England, under strict in- junctions of secrecy, to execute or fabricate the said improvement for the purpose of the said plaintiff's making experiments. And that the said plaintiff, afterwards, in 1 817, left England, %nd came to reside in the United States of America ; and that, after the departure of the said plaintiff from England, namely, in 1817 or 1818, his said brother divulged the said secret for a certain reward to an eminent gunmaker in London ; that the said plaintiff, on his arrival in this country^ in 1817, disclosed his said improvement to a gunmaker, whom he consulted as to obtaining a patent for the same, and whom he wished to engage to join and assist him. That the plaintiff made said disclosures under injunctions of secrecy, claiming the improvement as his own, and declaring that he should patent it. That the said plaintiff treated his invention as a secret after his arrival in this country, often declaring that he should - patent it; and that he assigned as a reason for delaying to patent it, that it was not so perfect as he wished to make it before he introduced it into public use ; and that he did make alterations in his invention up to about the date of his patent, which some witnesses considered as improvements, and others did not. That, in this country, the said invention was never known or used prior to the said 19th day of June, 1822; that, on that day, letters-patent were issued to the "said plaintiff, being then an alien, for his said invention ; and that the said plaintiff immediately brought the said invention into public use under the said letters-patent. That afterwards, and after suits had beien brought for violation of the said letters-patent, the said plaintiff was advised to surrender them on account of the specification being defective, and that he did accordingly, on the 7th day of May, 1829, surrender the same into the department of the Secretary of State of the United States of America ; and that, thereupon the letters-patent first above PATENT CASES. 649 Shaw V. Cooper. 7 Peters. mentioned were issued to the said plaintiff. And the said plaintiff also gave in evidence that, prior to the said 19th day of June, 1822, the principle importers of guns from England, in New York and Philadelphia, at the latter of which cities the plaintiff resided, had never heard any thing of the said inven- tion, or that the same was known or used in Eng- land ; and that no guns of the kind were * imported [ * 297 ] into this country until the years 1824 or 1825. And that letters-patent were granted in England on the 1 1th day of April, 1807, to one Alexander J. Forsyth, for a method of discharging or giving fire to artillery, and all other fire- arms ; which method he describes in his specification as con- sisting in ' the use or application as a priming, in any mode, of some or one of those chemical compounds which are so easily inflammable as to be capable of taking fire and ex- ploding without any actual fire being applied thereto, and merely by a blow, or by any sudden or strong pressure or friction given or applied thereto, without extraordinary vio- lence ; that is to say, some one of the compounds of combus- tible matter, such as sulphur or sulphur and charcoal, with oxmuriatic salt ; for example, the salt formed of dephlogisti- cated marine acid and potash, (or potasse,) which salt is other" wise called oxmuriate of potash ; or such of the fulminating metallic compounds as may be used with safety ; for example, fulminating mercury, or of common gunpowder, mixed in due quantity with any of the above-mentioned substances, or with any oxmuriatic salt as aforesaid, or of suitable mixtures of any of the above-mentioned compounds ; ' and that the said letters-patent continued in force for the period of fourteen years from and after granting ot the same. (It is understood that the patent and specification of Forsyth, may be at any time referred to on the argument for correction or explana- tion of the bill of exceptions.) And thereupon the defend- ant, further to maintain the said issue on his part, gave in VOL. I. — p. c. 55 * 650 PATENT CASES. Shaw V. Cooper. 7 Peters. evidence a certain letter from the plaintiff to the defendant, dated in December, 1824, from which the following is an ex- tract : ' Some time since I stated that I had employed counsel respecting regular prosecutions for' any trespasses against my rights to the patent ; I have at length obtained the opinions of Mr, SergeEhit of this city, together with others eminent in law, and that is, that I ought (with a view to insure succesg) to visit England, and procure the affidavits of Manton and others to whom I made my invention known, and also of the person whom I employed to make the lock at the time of in- vention ; for it appears very essential that I should also prove that I did actually reduce the principle to practice, otherwise a verdict might be doubtful. It is, therefore, my [ * 298 ] intention to visit * England in May next, for this purpose ; in the mean time, proceedings which have commenced here are suspended for the necessary time.' , " And the said judges of the said Court did thereupon charge and direct' the said jury, that the patent of the 7th day of May, 1829, having been issued, as appeared by its recital on the surrender and concealment of the patent ot the 19th day of June, 1822, and being intended to correct a mistake or remedy a defect in the latter, it must be considered as a continuation of the said patent, and the rights of the plaintifT were to be determined by the state of things which existed in 1822, when the^patent was obtained. " That the plaintiff's case, therefore, came under the Act passed the 17th day of April, 1800, extending the right of obtaining patents to aliens, by the first section of which, the applicant is required to make oath that his invention has not, to the best of his knowledge or belief, been known or used in this or any foreign country. That the plaintiff most proba- bly did not know, in 1822, that , the invention for.which he was taking out a patent, had, before that time, been in use in a. foreign country ; but that his knowledge or ignorance on PATENT CASES. 651 Shaw V, Cooper. 7 Peters. that subject was rendered immaterial by the concluding part of the section, which expressly declares, that every patent obtained pursuant to that act, for any invention which it should afterwards appear had been kniwn or used previous to such application for a patent, should be utterly void. That there was nothing in the act confining such use to the United States ; and that, if the invention Vas previously known in England or France, it was sufficient to avoid the patent under that act. That the evidence would lead to the conclusion that the plaintiff was the inventor in this case ; but the Court were of opinion that he had slept too long on his rights, and not followed them up as the law requires, to entitle him to any benefit from his patent. That the use of the invention, by a person who had pirated it, or by others who knew of the piracy, would not affect the inventor's rights, but that the law was made for the benefit of the. public as well as of the in- ventor ; and if, as appeared from the evidence in this case, the piiblic had fairly become' possessed of the invention be- fore the plaintiff applied for his patent, it was suffi- cient, * in the opinion of the Court, to invalidate [ * 299 ] his patent, even though the invention may have originally got into public use through the fraud or miscon- duct of his brother, to whom he intrusted the knowledge of it." The case was submitted to the Court, on printed arguments, by Mr. Paine, for the plaintiff in error ; and Mr. Emmet, for the defendant. For the plaintiff in error, it was contended, that the case fell within the principles which had been uniformly acknow- ledged and supported in the Circuit Court of the United States J and which were not intended to be disavowed, 652 PATENT CASES. Shaw V. Cooper. 7 Peters. but sanctioned by, this Court in Pennock v. Dialogue, 2 Peters, 1. In this country many strong cases of public use, prior to the application for a patent, have been brought before the Courts, where the public had been long in possession ; and the Courts hd^e allowed the inventor to show in different ways, that he had not the/eby abandoned his use to the pub- lic. How much more favorable to us are the circumstances of our Case, as respects a prior use. Before we took out our first patent, the invention had never been seen or heard of in this country. It was not then known to ourselves, nor to any others in this country, that it had been used in England ; and it had been so used only one or two years — a short period, compared with the many cases which have been sustained by the Courts. Even if this use had been an American use, it would not have been an extraordinary one. But it was not an American, but a foreign use ; and, therefore, not a use by the public, who contest our exclusive right, by saying that they had become the innocent possessors of our invention. Not one of that public had gotten possession of it. The case does not seem to be fairly stated, when it is said that, although the invention was disclosed by piracy, yet the public have innocently got possession of it by that means. The only public who can set up the innocence of their pos- . session as against us, did not get their possession by the piracy ; but under the invalid patent. And if this be so, what differ- ence does it make that afterwards guns were brought [ * 300J from England ? * Does such a circumstance bear, can it be made to bear at all upon the merits of the case ? The parts of the charge to the jury of the Circuit Court which are objected to, as understood by the counsel for the plaintiflF, may be stated thus : That the use of the invention abroad, acquired through a PATENT CASES. 653 Shaw V. Cooper. 7 Peters. fraudulent or piratical disclosure of the secret, for a period of only one or two years before the application for the pa- tent, and that use entirely unknown to the inventor here, avoids the patent, because it was obtained under the alien act. That our. patent of 1829, obtained under the citizen's act, is, in respect to the prior foreign use, to be construed as if obtained under the alien act, because it was obtained on the surrender of the patent of 1822, which was obtained under the alien act, the one being only a continuation of the other. That the inventor (the Court are understood to have been speaking, in this part of the charge, without reference to the question as to whether the patent was obtained under the alien or citizen's act, but to have designed their remarks to apply to patents generally) had slept too long on his rights, and not followed them up as the law requires, to entitle him to any benefit from his patent ; that the use of the invention, by a person who had pirated it, or by others who knew of the piracy, would not affect the inventor's right; but that the law was made for the benefit of the public, as well as of the inventor ; and if, as appeared from the evidence in this case, the public had fairly become possessed of the invention before the plaintiff applied for his patent, it was sufficient to invalidate his patent, even though the invention m^y have originally got into public use through the fraud or miscon- duct of his brother, to whom he intrusted the knowledge of it. The following points comprehend these objections to the charge of the Court. 1. The second patent is original and independent, and not a continuation of the first patent. When patents are surrendered and cancelled in England, they are entirely vacated and gone, and as if they had never 55* 654 PATENT CASES. Shaw V. Cooper. 7 Peters.' existed ; and the king can grant out the right, de novo, either to the same, or to any other person. 17 Vin. Abridg. [ * 301 ] 1 14, * Prerogative of the King, R. b. paragraph 9 ; 17 Vin. Abridg. 151, Prerogative, &c. M. C. para- graph 2, 3, 4, 6, 10, 14. Godson on Pat. 200 ; Com. Dig. Patent, G. ♦ If this is the effect of a surrender there, it must be the same here. Not a dictum can be found in the English books, that a second patent is a continuation of the first. No such idea can be found in our own books, although cases of surrender have come before our Courts. The right of an inventor to surrender an invalid patent, and take out a new one, being admitted, it follows, that if, be- tween the two patents, he has been naturalized, he must, oif necessity, take out a patent under the citizen's act ; because he is no longer an alien. If he, rightfully, takes a patent under the citizen's act, he is entitled to all the advantages that act confers ; and among them, to have his patent construed and adjudicated upon, under the provisions of that act and of no other. 3. A fraudulent or piratical use of the invention, either at home or abroad, before the application for a patent, cannot have any other or greater effect to invalidate a patent ob- tained under the alien act, than one obtained under the citi- zen's act. On general principles it cannot ; for, as to all kinds of pro- perty, no one can acquire a right to it except by the consent of the owner. Theft or fraud can never enable one who gets possession by those means to transfer the property. See authorities cited under next point. It is on this principle that the Courts first began to con- strue the citizen's act, by arraying the sixth section against the first. They said the legislature meant to provide by the PATENT CASES. 655 Shaw V. Cooper. 7 Peters. sixth section for the exception of cases of fraud, &c., out of the too rigid and literal operation of the first section. After- wards, the Courts took a more liberal view of the act, and held that, even without the sixth section, the legislative in- tention to except such cases from the first section would be presumed ; and this is the doctrine finally settled in Pennock V. Dialogue. The construction given by this Court in the case of Pen- nock V. Dialogue, 2 Peters, 22, is entirely in favor of the plaintiff in error. The Court there say, in that case, " the Act of 17th April, * 1800, ch. 25, which extends the privi- [ * 302 ] leges of the Act of 1793, to inventors who are aliens, contains a proviso, declaring that ' every patent which shall be obtained pursuant to the act, for any invention, art, or discovery, which it shall afterwards appear had been known or used previous to such application for a patent, shall be void.' This proviso certainly certifies the construction of the Act of 1793, already asserted ; for there is not any reason to sup- pose that the legislature intended to confer on aliens privileges essentially difierent from those belonging to citizens ; on the contrary, the enacting clause of the Act of 1800 purports to put both on the same footing, and the proviso seems added as a gloss, or explanation of the original act." Now the proviso is the only thing in the alien act which can make it at all different in this particular from the citizen's act; and the Courts say that it does not make any difference, but merely expresses more fully what was the meaning of the citizen's act. 3. If an invention has been pirated or fraudulently divulged, the inventor cannot thereby lose his right to his own inven- tion and property ; and it makes no difference that the public have acquired the use of the invention without any participai- tion in the fraud, unless the inventor has acquiesced in such 656 PATENT CASES. , Shaw V. Cooper. 7 Peters. use ; the only principle to be found in the American decisions on this subject being, that a public use does not affect the inventor's right, unless it proves that he has dedicated or abandoned his invention to the public. And in this case there is no evidence of such delay or neglect as would amount to an abandonmsnt, nor of any intention to dedicate the inven- tion to the public. It is a general principle as to all kinds of personal property, that even a bond fide purchaser for a valuable consideration can never acquire property of which another has been de- prived by fraud, theft, or violence, or even by a bailment. 1 Wils. Rep. 8; 2 Str. Rep. 1187; 3 Atk. Rep. 44; Salk. Rep. 283. In this respect, no difference has ever yet been made be- tween a man's property in his inventions, and his other pro- perty ; and there seems to be no reason or principle making a distinction. The statute of Massachusetts securing copyrights (before the federal union) begins with a preamble declar- [ * 303 ] ing that " no * property is more peculiarly a man's own, than that which is produced by the labor of his mind." Cited, i Dane's Abridg. 527. In Miller v. Taylor, 4 Burr.2303, seven judges against four held that at common law the author of a literary composition did not lose his right by publishing it. So far, then, as the natural rights of men to this species of property, (copyright,) independently of statutory provisions, are in question, they retain all their rights to such property, notwithstanding the public have jnnocently got possession of it, and even with the author's consent ; and there surely can be no difference, when we go back to natural rights at com- mon law, whether the property is the subject of a copyrigl^t or of a patent ; whether it be a book or a machine ; the pub- lic, having got the use or possession, must have as much right PATENT CASES. 657 Shaw V. Cooper. 7 Peters. to make copies of the book as of the machine ; both are the produce of the mind. This view is taken merely to show that this species of property has been treated as subject to the same rules of law as other kinds of property, that is, except so far as the statute makes a difference. Now it is admitted, that under the statute, neither the pirate, nor any one parti- cipating in his piracy, can acquire any rights against the in- ventor. And why? Because the same rules of justice which apply to all other kinds of property, are applied by the Courts to this, as being the intention of the statute, although against its letter. But why stop at the pirate, and say that you will not extend the rule to the public, when they have innq- cenlly got the possession ? Do you stop thus as to other kinds of property ? No. You say, no one, however inno- cent of fraud, can become the lawful jproprietor. Why, then, not carry the principle to its full extent ? How can it be in- ferred that the statute intends to go a part of the way of a general principle, and there stop ? The principle is a rule drawn by analogy from other kinds of property, on the ground that, the analogy being general, the rule should be so too. But the analogy is also complete between this and other kinds of property, and the rule ought therefore to be complete, and applied in its full extent. But there is even a stronger reason why this principle of law should be applied to this species of property in its full extent, * rather than to the case of a bond [ * 304 ] fide purchaser of any other kind. There h^ has paid a consideration, an equivalent. It is a hard case ; one of' two innocent persons must suffer. Not so here. What does the public lose ? That which has cost it nothing ; for which it has given no equivalent ; and all we seek of them is the consideration, the equivalent, which they have never yet paid to any one. But if we examine the American cases on this subject prior 658 PATENT CASES. Shaw V. Cooper. 7 Peters. to Pennock v. Dialogue, we shall find that the principle has always been applied to inventions, in its full extent. The' counsel then proceeded to examine the following cases, and argued that they fully sustained the principles claimed for the plaintiff in error. Whittemore v. Cutter, 1 Gall. 482; troodyear v. Mathews, 1 Paine's Rep. 301; Morris v. Huntington, 1 Paine, 354; Mellers v. Silsbee, 4 Mason's Rep. 108; Treadwell v. Bladen, 4 Wash. C. C. R. 703. The bill of exceptions says, " that the plaintiff assigned as a reason for delaying to patent it, (the invention,) that it was not so perfect as he wished to make it before he in- troduced it to public use ; and that he did make alterations in his invention up to about the date of his patent, which some witnesses considered as improvements, and others did not." ' ■ This was sufficient to account for the delay ; and it is un- important whether the alterations were improvements or not ; for he was trying to make them, arid said that was his motive for the delay ; and the motive for the delay is the only gues- tion. 1 Paine's Rep. 354. The patent grated to Forsyth, in England, which gave him the exclusive right to use the percussion powders in any mode, down to April, 1821, accounts for not taking out a patent in England. Finally, the counsel for the plaintiff in error contended : 1. That if the rights of the patentee were the same as under an ordinary citizen patent, then he had never dedicated or abandoned his invention to the public; and that there has been no use of it which invalidates his patent. 2. That his rights are the same as those under an ordinary citizen's patent ; the patent having been granted under the citizen's act, and not being affected by the previous vacated patent. PATENT CASES. 659 Shaw V. Cooper. 7 Peters. * 3. That even if he is to be considered as hav- [ * 305 ] ing a patent under the alien act, his rights, under the circumstances of this case, are the same as if it was a citizen's patent. In conclusion, he remarked, that the jury found their ver- dict entirely under the charge of the Court, considering that the charge, as to the points of law, precluded them from find- ing a verdict for the plaintiff; however well they might be satisfied upon every matter of fact. It was believed the jury, as well as the Court, were entirely satisfied that the plaintiff was the inventor, and that his invention had been used with- out his knowledge or suspicion ; and that he had never dis- closed it, except in confidence, arid under the strictest injunc- tions of secrecy. The letter from plaintiff to defendant should not have been put in the bill of exceptions, because it only presented ques- tions of fact purely, not affecting any of the points of law on which the Court charged the jury. This Courl will not re- gard a mere isolated fact, when it is apparent that all the facts of the case are not given, but only such as are essential to show how the jury were charged as to the law. It is im- possible for this Court to say how the jury would have found upon the whole evidence. It is sufficient to add, that the meaning of that letter was satisfactorily explained to the jury by the plaintiff's counsel. It was explained, that the know- ledge of his invention, which the plaintiff in that letter says he communicated to " Manton and others," was simply the knowledge of the fact, that he had made an important invention, without disclosing what it was. On any other supposition, this letter was contradicted by all the rest of the evidence in the case, and the uniform conduct of the plaintiff. Mr. Emmet, for the defendant in error. 660 PATENT CASES. Shaw V. Cooper. 7 Peters. The bill of exceptions in this cause, discloses in substance the following case : In 1813 or 1814, the plaintiff, residing in England, invented what he claims to be secured to him by his patent. Between that time and his coming to the United States, he made his invention known to his brother, also to Mr. Manton, a gun- maker in London, and others — as is shown by his letter to defendant. [ * 306 ] * In 1817, the plaintiff came to the United States, and shortly afterwards disclosed his secret to a gun- maker in Philadelphia. In 1817 or 1818, plaintiff's brother sold the secret to a gunmaker in London. In 1819, the invention was sold and used in England. In 1820 or 1821, it was in general use by the public there. In 1821, it was in general use in France. In 1822, (19th June,) plaintiff took out his first patent as an alien, under the Act of 1800. In 1829, (7th May,) he surrendered that patent as defect- ive and took out a new one with an amended specification, as a citizen, under the Act of 1793, upon which patent his suit is brought. The case also sets forth, that in April, 1807, a patent had been granted in England to one Forsyth, for an invention on the same subject, and that such patent continued in force for fourteen years, or until April, 1831. This was offered by the plaintiff, and made a part of the case, for the purpose, doubtr less, of accounting for his not having taken out a patent for his invention in England previous to 1817 ; the terms of For- syth's patent being, as he supposed, sufficiently comprehen- sive to embrace his discovery, and to tie up his hands during its continuance. From these facts, it would at least appear that the public PATENT CASES. 661 Shaw V. Cooper. 7 Peters. had somewhere become fully possessed of the use of the in- vention, and that they had enjoyed such use for not less than about two years before the plaintiff took any steps to obtain his first patent. Without stopping now to inquire what should be considered as the public in respect to a case of this kind, let us examine how far the acts of the plaintiff himself have precluded him from ever controverting the right of that public to the use of the thing in question. The principle upon which previous public use of an inven- tion invalidates a patent, undoubtedly is, that the inventor can no longer give any consideration or equivalent for the exclusive privilege claimed by him ; and the law, to sustain a principle so necessary and just in itself, presumes an aban- donment by the inventor. This abandonment may be either actual, as by * voluntary dedication or [ * 307 ] constructive, as by negligence or unreasonable delay. Paine's Rep. 300. In the present case, can it be pretended that there was neither negligence, nor unreasonable delay 1 The plaintiff would have it appear, that up to 1822 he was maturing his inv^ention, and yet what he then took out a patent for, was the very thing, and no improvement upon that, which for two or three years previous had been generally known and used in England and France. But admitting this explana- tion to stand for what it is worth, how does it tally with his other ground of excuse. He says Forsyth's patent restrained him in England. Be it so — and what is the fair inference ? Why, that if it had not been for Forsyth's patent he would have applied there for one before 1817 ; and if he would, his invention was matured before he came to the United States ; and nothing but his alienism stood in the way of his applying for a patent immediately after his arrival. Being an alien, the law required him to delay two years. In 1819, therefore, VOL. I. — p. c. 56 662 PATENT CASES. Shaw V. Cooper. 7 Peters. he might and ought to have taken out his patent ; and if he had done so, he would have anticipated the public use of the invention in England and France. But he delayed until 1822, a period of three years. His own story shows that such delay was without sufficient cause. It was, therefore, unreasonable ; and the law in protection of the right acquired in the mean time by the public, construes his acts into an abandonment. It would appear that, even to the mind of the plaintiff's counsel, this view of the case is conclusive, unless the fact of the invention having got into public use before the first patent was taken out, can be shaken ; for they say, that the use, in this case, was not an American, biit a foreign use, and there- fore not a use by the public, who contest their exclusive right. This distinction is directly opposed to the Act of 1800, which uses the language " known or used, in this or any foreign country;" and it is equally opposed to the intent and mean- ing of the Act of 1793. We are perfectly willing to admit that, in this respect, the' construction of both acts should be the same ; and that the proviso at the end of the first section of the Act of 1800 applies to every patent, whether obtained under that Act or the Act of 1793. In the words [ * 308 ] of Mr. Justice Story, the Act of * 1800 affords, in this respect, a gloss or explanation of the original act. Pennock v. Dialogue, 2 Peters's S. C. Rep. 22. This only tends to show, that if the plaintiff had been a citizen in 1822, and had taken out his first patent under the Act'of 1793, his case would have been just as objectionable as it is now. But where do the plaintiff's counsel find any law for such a distinction between Anperican and foreign public use, or how could it be sustained on principle ? If the doctrine be a sound one, it would go to this extent — I dedicate my invention to the public in Europe ; the European public be- ing thus legally possessed of it, the article is manufactured PATENT CASES. 663 Shaw V. Cooper. 7 Peters. and exported in large quantities ; I immediately come over here, take out a patent, and prevent the use of the article in the United States, thereby prohibiting the European public from engaging in a traffic or commerce which was an imme- diate incident to my own grant or dedication to them. The impolicy of recognizing such a distinction, would afford a sufficient argument against it, even if the terms of the sta- tute were not explicit ; and if nothing had ever fallen from the bench to give a construction to the expression " public use." But there is positive and high authority on this sub- ject. Lord Chief Justice Gibbs says, " to entitle a man to a patent, the invention must be new to the world." 1 Holt, N. P. Rep. 58. And such, we submit, is the settled law on this point. It would seem to be of little importance in this cause to discuss the plaintifPs position " that the second patent is original and independent, and not a continuation of the first patent ; " because the only object of disconnecting the two patents in this case, would be to rescue the second patent from the operation of the Act of 1800, under which the first patent was taken, (the judge having charged the jury that the Act of 1800 was sufficient to control the case.) Now, we not only admit that the Act of 1793, should receive a simi- lar construction with that of 1800, as to previous knowledge or use of an invention, but the plaintiff's counsel labor to establish this very ground. Their position, however, is not a correct one. The object of cancelling a first patent, and taking out a second/ is not to take a fresh start for the term of years during which the law allows the exclusive right to be conferred. It is to enable the * inventor [ * 309 ] to enjoy, for the remainder of that term, the privi- lege which was originally intended to be granted. And in this view, even if the cpnstruction of the two acts was dif- ferent, we apprehend that the judge laid down the law cor- 664 PATENT CASES. Shaw V. Cooper. 7 Peters. rectly, namely, that the plaintiff's rights depended upon the state of things in 1822, and upon the Act of 1800. It is only necessary to follow the plaintiff's argument on his third point, to perceive the impediment which the first section of the Act of 1800, taken either in reference to that act only, or as explanatory of the Act of 1793, offers to his case. To get rid of this difficulty, it is in substance contend- ed by his counsel, that the legislature did not mean what they have said in this section, when certain cases came to be con- sidered ; and that the positive and unequivocal language used by them is, in this respect, unimportant. Now, the very fact that this section was intended to be declaratory of the law in all cases, whether arising under that, or the former Act of 1793, shows that the explicit language used, was considered to be all-important by the legislature ; and it certainly was not contemplated that this explicit language should be frit- tered away to suit particular cases. If the facts of this case, as we have endeavored to show, make out a negligence or unreasonable delay on the part of the plaintiff in taking out his patent ; and that such negligence or unreasonable delay amounts in law to an abandonment; the case is disposed of. We contend also that the delay was not accounted for ; the alleged reason for it being virtually con- tradicted by the testimony offered to make out his case ; and further, that the finding of the jury is conclusive as to this point. The intent of the delay of the patent, and whether the allowing the invention to be used without a patent, should not be considered an abandonment, or a present of it to the pub- lic, are questions for the jury. Morris v. Huntington, Paine's Rep. 22. The principles which we contend for, being recognized in many of the cases cited on the part of the plaintiff, (particu- larly the case of Pennock v. Dialogue,) it has been deemed PATENT CASES. 665 Sha\r V. Cooper. 7 Peters. unnecessary to refer to those cases more particularly. If the * charge of the judge was not erroneous as [*310] to the law, there can be no ground for granting a ' new trial. Mr. Justice M'Lean delivered the opinion of the Court. This writ of error brings before this Court, for its revision, a judgment of the Circuit Court of the United States for the Southern District of New York. An action was brought in the Circuit Court by Shaw against the defendant Cooper, for the violation of a certain patent- right, claimed by the plaintiff. The defendant pleaded the general issue, and gave notice that on the trial he would prove " that the pretended new and useful improvement in guns and fire-arms, mentioned and referred to in the several counts in the declaration ; also that the said pretended new and useful improvement, or the essential parts or portions thereof, or some or one of them, had been known and used in this country, namely, in the city of New York and in the city of Philadelphia, and in sundry other places in the United States, and in England, in France, and in other foreign coun- tries, before the plaintiff's application for a patent as set forth in his declaration," &c. On the trial, the following bill of exceptions was taken : " to maintain the issue joined, the plaintiff gave in evidence certain letters-patent of the United States, as set forth in the declaration, issued on the 7th day of May, 1829 ; and also that the improvement for which the letters were granted, was invented or discovered by the plaintiffs in 1813 or 1814; and that the defendant had sold instruments which were infringe- ments of the said letters-patent. " And the defendant then proved, by the testimony of one witness, that he had used the said improvement in England, and had purchased a gun of the kind there, and had seen 56* 666 PATENT CASES. Shaw V. Cooper. 7 Peters. others use the said improvement, and had seen guns of the kind in the Duke of York's armory, in 1819. And also proved by the testimony of five other witnesses, that, in 1820 and 1831, they worked in England at the business of making and repairing guns, and that the said improvement was generally used in England in those years ; but that they had [ * 3 1 1 ] never seen guns * of the kind prior to those years ; and also proved that in the year 1821, it was used and known in France ; and also that the said improvement was generally known and used in the United States after the 19th day of June, 1822. " And the plaintiff, further to maintain the issue on his part, then gave in evidence, that he not being a worker in iron in 1813 or 1814, employed his brother in England, under strict injunctions of secrecy, to execute or fabricate the said improve- ment for the purpose of making experiments. And that the plaintiff afterwards, in 1817, left England and came to reside in the United States; and that after his departure from Eng- land, in 1817 or 1818, his said brother divulged the secret for a certain reward to an eminent gunmaker in London. That on the arrival of the plaintiff in this country, in 1817, he dis- closed his said improvement to a gunmaker, whom he con- sulted as to obtaining a patent for the same, and whom he wished to engage to join and assist him. That the plaintiff made this disclosure under injunctions of secrecy, claiming the improvement as his own, declaring that he should patent it. That the plaintiff treated his invention as a secret after his arrival in this country, often declaring that he should patent it ; and that this step was only delayed, that he might make it more perfect before it was introduced into public use ; and that he did make alterations which some witnesses considered improvements in his invention, and others did not. That in this country the invention waS never known or used prior to the said 19th day of June, 1822 ; that on that day letters- PATENT CASES. 667 Shaw V. Cooper. 7 Peters. patent were issued to the plaintiff, being then an alien, and that he immediately brought his invention into public use. That afterwards, and after suits had been brought for a viola- tion of the said letters-patent^ the plaintiff was advised to surrender them on account of the specification being defec- tive; and that he did accordingly, on the 7th day of May, in the year 1829, surrender the same into the department of the Secretary of State, and received the letters-patent firstjabove named. " And the plaintiff also gave in evidence, that prior to the 19th day of June, 1822, the principal importers of guns from England in New York and Philadelphia, at the latter of which cities the plaintiff resided, had never heard any thing of the *said invention, or that the same was [ *312] used or known in England ; and that no guns of the kind were imported into this country, until the years 1824 or 1825. And that letters-patent were granted in England on the 1 1th day of April, 1807, to one Alexander J. Forsyth, for a method of discharging or giving fire to artillery and all other fire-arms ; which method he describes in his specification as consisting in the • use or application as a priming, in any mode, of some or one of those chemical compounds which are so easily inflammable as to be capable of taking fire and explod- ing without any actual fire being applied thereto, and merely by a blow, or by any sudden or strong pressure or friction given or applied thereto, without extraordinary violence ; that is to say, some one of the compounds of combustible matter, such as sulphur or sulphur and charcoal, with an oxmuriatic salt ; for example, the salt formed of dephlogisticated marine acid and potash, (or potasse,) which salt is otherwise called oxmuriate of potash ; or such of the fulminating metallic com- pounds as may be used with safety ; for example, fulminating mercury, or of common gunpowder mixed in due quantity with any of the above-mentioned substances, or with any ox- 668 PATENT CASES. Shaw V. Cooper. 7 Peters. muriatic salt, as aforesaid, or of suitable mixtures of any of the before-mentioned compounds ; ' and that the said letters- patent continued in force for the period of fourteen years from the time of granting the same." And the defendant, further to maintain the issue on his part, gave in evid§;ice a certain letter from the plaintiff to the de- fendant, dated in December, in the year 1824, from which the following is an extract : " Some time since! stated that I had employed counsel respecting regular prosecutions for any trespass against my rights to the patent; I have at length obtained the opinion of Mr. Sergeant of this city, together with others eminent in the law, and that is, that I ought (with a view to insure success) to visit England, and procure the afSdavits of Manton and others, to whom I made my inven- tion known, and also of the person whom I employed to make the lock at the time of invention ; for it appears very essential that I should prove that I did actually reduce the principle to practice, otherwise a verdict might be doubtful. It is, therefore, my intention to visit England in May [ *313 ] next, for this purpose ; in the mean time * proceed- ings which have commenced here are suspended for the necessary time." And the Court, on these facts, charged the jury that the patent of the 7th of May, 1829, having been issued, as ap- pears by its recital, on the surrender and cancelment of the patent of the 19th day of June, in the year 1822 ; and being intended to correct a mistake or remedy a defect in the latter, it must be considered as a continuation of the said patent, and the rights of the plaintiff were to be determined by the state of things which existed in the year 1822j when the patent was first obtained. That the plaintiff's case, therefore, came under the Act passed the 17th day of April, 1800, extending the right of obtaining patents to aliens ; by the first section of which the PATENT CASES. 669 Shaw V. Cooper. 7 Peters. applicant is required to make oath, that his invention has not, to the best of his knowledge or belief, been known or used in this or any foreign country. That the plaintiff most probably did not know, in the year 1822, that the invention for which he was taking out a patent, had, before that time, been in use in a foreign country ; but that his knowledge or ignorance on that subject was rendered immaterial by the concluding part of the section, which expressly declares, that every patent ob- tained pursuant to that act, for any invention which, it should afterward appear, had been known or used previous to such application for a patent, should be utterly void. That there was nothing in the act confining such use to the United States ; and that, if the invention was previously known in England or France, it was sufficient to avoid the patent under that act. That the evidence would lead to the conclusion that the plaintiff was the inventor in this case, but the Court were of opinion that he had slept too long on his rights, and not fol- lowed them up as the law requires, to entitle him to any bene- fit from his patent. That the use of the invention, by a per- son who had pirated it, or by others who knew of the piracy, would not affect the inventor's rights, but that the law was made for the benefit of the public as well as of the inventor ; and if, as appears from the evidence in this case, the public had fairly become possessed of the invention before the plaintiff applied for his patent, it was sufficient, in the opinion of the Court, to invalidate the * patent ; even though [ * 314 ] the invention may have originally got into public use through the fraud or misconduct of his brother, to whom he intrusted the knowledge of it. Under this charge the jury found a verdict for the defend- ant, on which a judgment was entered. There is a general assignment of errors, which brings to the consideration of the Court the principles of law which 670 PATENT CASES. Shaw V. Copper. 7 Peters. arise out of the facts of the case, as stated in the bill of excep- tions. / It may be proper, in the first place, to inquire whether the letters-patent which were obtained in 1829, on a surrender of the first patent, have relation to the emanation of the patent in 1822, or shall be considered as having been issued on an original application. On the part of the plaintiff it is contended, that " the se- cond patent is original and independent, and not a continua- tion of the first patent." That in adopting the policy of giv- ing, for a term of years, exclusive rights to inventors in this country, we adopted at the same time the rules of the com- mon law as applied to patents in England ; and that by the common law, a patent, when defective, may be surrendered to the granting power, which vacates the right underwit, and the king may grant the right de novo either to the same or to any other person. This being the effect of the surrender of a patent in Eng- land, it is insisted, that the same consequence sjhould follow a surrender in this country. On this subjiect it is said, that the decisions of the English Courts are uniform, and that not even a dictum can be found, that a second patent is a conti-, nuation of the first. The counsel seems to consider this point of great import- ance, as the plaintiff was an alien when the first patent was obtained, but had become naturalized before the date of the second ; and, consequently, that his rights under the second patent, cannot be governed by the law applicable to aliens. As the inquiry on this head is, whether the second patent has relation to the first, it is not necessary to look into the laws to ascertain the respective rights of aliens and citizens on this subject. In regard to the right of the patentee to surrender a defective patent, and take out a new one, there can be no difference between a citizen and an alien. PATENT CASES. 671 Shaw V. Cooper. 7 Peters. *That the holder of a defective patent may sur- [ * 315 ] render it to the department of State, and obtain a new one, which shall have relation to the emanation of the first, was decided by this Court at the last term in the case of Grant and others v. Raymond, 6 Peters, 220. The Chief Justice, in giving the opinion of the Court, says, "but the new patent, and the proceedings on which it issues, have re- lation to the original transaction. The time of the privilege still runs from the date of the original patent. The applica- tion may be considtsred as appended to the original applica- tion ; and if the new patent is valid, the law must be con- sidered as satisfied, if the machine was not known or used before that application." As this decision must be considered as settling the con- struction of the Patent Laws on this point, it is conclusive in the present case ; and it is therefore unnecessary to examine the, argument of the plaintiff 's counsel, which was designed to lead to a different conclusion. The second patent being a continuation of the first one, the rights of the plaintiff must be ascertained by the law under which the original application was made. This law was passed on the 17th of April, 1800, and pro- vides " that all and singular the rights and privileges given to citizens of the United States respecting patents for new in- ventions, &IC., shall be extended to afiens, who at the time of petitioning, shall have resided for two years within the United States, &c. Provided, that every person petitioning for a patent for any invention, art, or discovery, pursuant to this act, shall make oath or affirmation before some person duly au- thorized to administer oaths, before such patent shall be granted, that such invention, art, or discovery, hath not, to the best of his or her knowledge or belief, been known or used, either in this or any foreign country ; and that every patent which shall be obtained pursuant to this act, for apy inven- 672 PATENT CASES. Shaw V. Cooper. 7 Peters. tion, art, or discovery, which, it shall afterwards appear, had been known or used previous to such application for a patent, shall be utterly void." By the Act of the 21st of February, 1793, which limits patent-rights to citizens, it is provided " that every [ * 316 ] person or persons, *in his or their application for a patent, shall state that the machine, &c., was not known or used before such application." The sixth section of this act provides that a defendant, when prosecuted for a violation of a patent-right, may give in evidence, under a notice, among other matters, " that the thing secured by patent was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery of the paten- tee, or that he had surreptitiously obtained a patent for the discovery of another person ; in either of vvhich cases, judg- ment shall be rendered for the defendant with costs, and the patent shall be declared void." It would seem, from the above provisions, that citizens and aliens, as to patent-rights, are placed substantially upon the same ground. In either case, if the invention was known or used by the public before it was patented,' the patent is void. In both cases the right must be tested by the same rule. From the facts in the case, it appears that the plaintiff, while residing in England, in 1813 or 1814, invented the in- strument secured by his patent. That before he came to the United States, he made known his invention to his brother, to Mr. Manton, a gunmaker in London, and to others. That shortly after he came to the United States, in 1817, he dis- closed his invention to a gunmaker in Philadelphia, and that in 1817 or 1818, the plaintiff's brother sold the invention to a gunmaker in London. That in 1819 the invention was sold and used in England ; and' that in the two following PATENT CASES. 673 Sha-w V. Cooper. 7 Peters. years it was in public use there, and in the latter year also in France. That on the 19th of June, 1822, his first patent was obtained. It also appears that in April, 1807, a patent was granted in England to one Forsyth, for fourteen years, for an invention on the same subject. This fact was shown by the plaintiff, it is presumed, as a reason why he did not take out a patent in England. The question arises from these facts, and others which be- long to the case, whether there was such a use in the public, of this invention, at the date of the plaintiff's first patent, as to render it void. * By the plaintiff's counsel it is insisted, that if an [ * 317 ] invention has been pirated, or fraudulently divulged, the inventor cannot thereby lose his right to his own inven- tion and property ; and it makes no difference that the pub- lic have acquired the use of the invention without any parti- cipation in the fraud, unless the inventor has acquiesced in such use. The right of the plaintiff to his invention, is compared to his right to other property, which cannot be divested by fraud or violence ; and the case of Miller v. Taylor, 4 Burr. 2303, where seven judges against four held, that, at common law, an author by publishing a literary composition does not abandon his right, is referred to as illustrative of the prin- ciple. Several decisions by the Circuit Courts of the United States are cited to sustain the right of the plaintiff. In the case of Whittemore v. Cutter, 1 Gall. 482, the Court say, " it will not protect the plaintiff's patent, that he was the inventor of the improvements, if he suffered them to be used freely and fully by the public at large for so many years, combined with all the usual machinery ; for in such case, he must be deemed to have made a gift of them to the public, as much as a VOL. I. — p. c. 57 674 PATENT CASES. Shaw V. Cooper. 7 Peters. person who voluntarily opens his land as a highway, and suffers it to remain for a length of time devoted to public use." In the case of Goodyear v. Mathews, 1 Paine's Rep. 301, the Court, in substance, say, " that if the plaintiff be the in- ventor, it is immaterial that the invention has been known and used for years before the application." And in the case of Morris v. Huntington, 1 Paine, 354, the Court say, that " no man is to be permitted to lie by for years, and then take out a patent. If he has been practising his invention with a view of improving it, and thereby rendering it a greater benefit to the public, before taking out a patent, that ought not to pre- judice him. But it should always be a question submitted to the jury, what was the intent of the delay of the patent, and whether the allowing the invention to be used without a pa- tent, should not be considered an abandonment or present of it to the public." This was a case where a second patent had been obtained, the first being defective, and this, it would seem, was deemed sufficient to protect the right of the plaintiff, though [ * 318 ] the public * had been in possession of the invention for six years before the emanation of the second patent. Of the same import are the cases cited from 4 Mason, 108 ; and 4 Washington, 438 and 703. The question, what use in the public, before the application is made for a patent, shall make void the right of the paten- tee, was brought before this Court by the case of Pennock and Sellers v. Dialogue, reported in 2 Peters, 1. In this case the Court say that "it has not been, and indeed cannot be denied, that an inventor may abandon his invention and sur- render or dedicate it to the public. This inchoate right, thus gone, cannot afterwards be resumed at his pleasure ; for when gifts are once made to the public in this way, they become ab- PATENT CASES. 675 Shaw V. Cooper. 7 Peters. solute." And again, " if an invention is used by the public, with the consent of the inventor, at the time of his application for a patent, how can the Court say, that his case is neverthe- less such as the act wfis intended to protect ? If such a pub- lic use is not a use within the meaning of the statute, how can the Court extract the case from its operation, and support a patent, when the suggestions of the patentee were not true, and the conditions, on which alone the grant was authorized, do not exist." " The true construction of the Patent Law is," the Court say, " that the first inventor cannot acquire a good title to a patent, if he suffers the thing invented to go into public use, or to be publicly sold for use before he makes application for a patent." In this case it appeared that the thing invented had been in use by the public, with the consent of the inventors, and through which they derived a profit, for seven years before the emanation of a patent. And this use was held by the Court to be an abandonment of the right by the patentees. The policy of granting exclusive privileges in certain cases, was deemed of so much importance in a national point of view, that power was given to Congress in the federal Con- stitution, " to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and disco- veries." This power was exercised by Congress, in the passage of the acts which have been referred to. And from an examination of * their various provisions, it clearly [*319] appears, that it was the intention of the legislature, by a compliance with the requisites of the law, to vest the exclusive right in the inventor only ; and that, on condition that his invention was neither known nor used by the public before his application for a patent. If such use or knowledge 676 PATENT CASES. Shaw V. Cooper. 7 Peters. shall be proved to have existed, prior to the application for the patent, the Act of 1793, declares the patent void ; and, as has been already stated, the right of an alien is vacated in the same manner, by proving a foreign use or knowledge of his invention. That knowledge or use which would be fatal to the pat^t-right of a citizen, would be equally so to the right of an alien. The knowledge or use spoken of in the Act of 1793, could have referred to the public only, for the provision would be nugatory if it were applied to the inventor himself. He must, necessarily have a perfect knowledge of the thing invented and its use, before he can describe it, as by law he is required to do preparatory to the emanation of a patent. But there may be cases, in which a knowledge of the invention may be surreptitiously obtained and communicated to the public, that do not affect the right of the inventor. Under such circum- stances no presumption can arise in favor of an abandonment of the right to the public, by the inventor ; though an acqui- escence on his part, will lay the foundation for such a presump- tion. In England it has been decided, that if an inventor shall suffer the thing invented to be sold, and go into public use for four months ; and, in a later case, for any period of time, before the date of his patent ; it is utterly void. In that country the right emanates from the royal preroga- tive ; in this, it is founded exclusively on statutory provisions. But the policy in both governments is the same, in granting the right, and in fixing its limits. Vigilance is necessary to entitle an individual to the privi- leges secured under the Patent Law. It is not enough that he should show his right by invention, but he must secure it in the mode required by law. And if the invention, through fraudulent means, shall be made known to the public, he should assert his right immediately, and take the necessary steps to legalize it. PATENT CASES. 677 Shaw V. Cooper. 7 Peters. * The Patent Law was designed for the public [ * 320 ] benefit, as well as for the benefit of inventors. For a valuable invention, the public, on the inventor's complying with certain conditions, give him, for a limited period, the profits arising from the sale of the thing invented. This holds out an inducement for the exercise of genius and skill in mak- ing discoveries which may be useful to society, and profitable to the discoverer. But it was not the intention of this law, to take from the public, that of which they were fairly in pos- session. In the progress of society, the range of discoveries in the mechanic arts, in science, and in all things which promote the public convenience, as a matter of course, will be enlarged. This results from the aggregation of mind, and the diversity of talents and pursuits, which exist in every intelligent com- munity. And it would be extremely impolitic to retard or embarrass this advance, by withdrawing from the public any useful invention or arf, and making it a subject of private monopoly. Against this consequence, the legislature have carefully guarded in the laws they have passed on the sub- ject. It is undoubtedly just that every discoverer should realize the benefits resulting from his discovery, for the period con- templated by law. But these can only be secured by a sub- stantial 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 communi- cated to the public, before a patent is obtained ; any acquies- cence in the public use, by the inventor, will be an abandon- ment of his right. If the right were asserted by him who fraudulently obtained it, perhaps no lapse of time could give 57* 678 PATENT CASES. Shaw V. Cooper. 7 Peters. it validity. But the public stand in an^ entirely different re- lation to the inventor. The invention passes into the possession of innocent per- sons, vfho have no knowledge of the fraud ; and at a consi- derable expense, perhaps, they appropriate it to their own use. The irfventor or his agent has full knowledge of these facts, but fails to assert his right ; shall he afterwards be per- mitted to assert it with effect? Is not this such [*321 ] evidence of acquiescence *in the public use, on his part, as justly forfeits 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 prin- ciple 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 any thing more than reason- able diligence on the inventor ? And would any thing 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 know- ledge 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 acqui- escence 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 re- quired to do so, under the solemn obligations of an oath. If PATENT CASES. 679 Shaw ?;. Cooper. 7 Peters. 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 evi- dence 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 it regards the public use of an invention, before it is patented, is not only required * by its letter and spirit, but also by sound [ * 322 ] policy. A term of fourteen years was deemed suffi- cient 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 pubhc in this respect, as artifice might be used to cover the transaction. The doctrine of presumed acqui- escence, 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 680 PATENT CASES. Shaw V. Cooper. 7 Peters. 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 sus- tained ? 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, can- not 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 to 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 and Sellers v. Dialogue. They made the question of abandonment to turn [ * 323 ] upon the * intention of the invention. But such is not considered to be the true ground. Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsover, without an immediate assertion of his right, he is not entitled to a patent ; nor will a patent, obtained under such circumstances, 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. PATENT CASES. 681 Dobson V. Campbell. 1 Sumner. Isaac Dobson v. Benjamin Campbell. [1 Sumner, 319. May T. 1833.] If the declaration npon an assignment of a patent-right omit to state, that the assignment has been duly recorded in the State Department, the defect is cured by a verdict for the plaintiff. Where a fact must necessarily have been prored at the trial to justify the ver- dict, and the declaration omits to state it, the defect is cured by the verdict, if the general terms of the declaration are otherwise sufficient to comprehend the proof. Case for infringement of a patent-right for the double reflecting baker, brought by the plaintiff, as assignee of the patent. The declaration, after alleging the obtaining of a patent by one Williston, proceeded : " The said Williston did always, from the time of making and granting the said letters- patent, as aforesaid, exercise and enjoy the right, privilege, and liberty aforesaid, to wit, at Norwich aforesaid, until the 20th day of June, in the year of our Lord one thousand eight hundred and thirty-one, to great profit and advantage, when the said Williston, for a valuable consideration, by his writing under his hand of that date, sold and conveyed all his right and claim in said patent-right to one John Robinson of Nor- wich aforesaid ; as by said assignment in writing, in Court to be produced, will fully appear ; whereby the said John Robin- son, as assignee of said Williston, became and was the true and lawful owner of said right, so as aforesaid patented, with the full and sole power in him, his heirs, administrators, and assigns, to make, use, and vend to others to be used, the said new and useful improvement, agreeably to the statutes afore- said recited. And the plaintiff farther says, that the said Robinson did always, from the time of making and executing the said assignment as aforesaid, exercise, use, and enjoy the 682 PATENT CASES. Dobson V. Campbell. 1 Sumner. right, liberty, and privilege* aforesaid, to wit, at Norwich aforesaid, until the twenty-ninth day of July, in the [ * 320 ] year of ^ our Lord one thousand eight hundred and thirty-one, when the said Robinson, by assignment of that date under his hand and seal, and in Court to be produced, for a valuable consideration therein expressed, did grant, sell, and convey all his right, title, and interest in the said letters-patent, and improvement therein specified and set forth, to the plaintiff, his heirs, and assigns. And the plain- tiff farther says, that he, the said plaintiff, /rom the time of making and executing said last-mentioned assignment, did use and enjoy the right, liberty, and .privilege aforesaid, to wit, at Norwich aforesaid, to wit, at Portland and Bangor in said District of Maine, and has exercised, used, and enjoyed the same right, liberty, and privilege to the day of the pur- chase of this writ by himself and servants, and his deputies, to his great profit and advantage, to wit, at Portland and Bangor. Yet the defendant," &c. At the trial upon the general issue the plaintiff obtained a verdict ; and now Sprague for the defendant moved in arrest of judgment, upon the ground, that the declaration was substantially defective. He argued as follows. The case presented is not a case of a title defectively stated, but the statement of a defective title. There is a material difference in the allegations with respect to the rights of Robinson, the first assignee, and of the plaintiff, the second assignee. As to Robinson, it is in- deed alleged, that " he became and was the true and lawful owner of said right," which general assertion of title might have been sufiScient after verdict, if he had not himself nar- rowed it, by setting forth specifically what his title was, namely, the assignment only, adding, " whereby he became and was," &c. This is alleged to be his title ; the conclusion is where- PATENT CASES. 683 Dobson V. Campbell. 1 Snmner. by, &c., excluding the recording and all other facts, but such as are stated, as constituting title. It is the state- ment of a defective title, if any other requisite, not specified before the whereby, is essential. Such a requisite is the recording. *The allegation, that Robinson "used, exer-[*321] cised, and enjoyed " the right aforesaid, adds nothing to avail the plaintiff. It is " that from the time of making and executing the said assignment, as aforesaid, did exercise," &c. 1st. It is mere use, which might be with the temporary assent of the patentee ; it certainly does not embrace a recording, &c. 2d. The right aforesaid. 3d. From the time of assignment, excluding any other act or interval of time. 4th. Assignment as aforesaid. In the statement of the title of the plaintiff, the important allegation, that he " became and was the true and lawful owner of said right," is wholly omitted ; and no such allegation, nor any allega- tion, that the plaintiff ever became the lawful owner of the right, is to be found in the declaration. The title, which the plaintiff has from Robinson, is stated, namely, a written as- signment under seal. This is a defective title; the recording in the office of the Secretary of State being essential, and made so expressly by statute. (Stat, of 1793, ch. 156, § 9.^ The allegation, that the plaintiff " used, exercised, and enjoyed," is subject to the same remarks that have been applied to Robinson's title, with this striking addition, that the plaintiff adds, that said use, &c., was "by himself, and servants, and deputies," demonstrating, that it is the uses merely, that is intended, not the legal title. The following cases relate to the point under consideration. Kingsley v. Bill et al. 9 Mass. R. 198. In error after verdict, omission to allege publication of an award ; Stetson v. Tobey, 2 Mass. R. 521 ; arrest of judgment ; Commonwealth v. McCurdy, 5 Mass. R. 324, ib, ; Brent's Executors v. Bank of the Metropolis, 1 Peters, S. C. R. 684 PATENT CASES. Dobson V. Campbell. 1 Snmner. 89-93; Lynn v. The Mechanics Bank of Alexandria, Id, 67, 68 ; Executors of Fulton v. Myers, 4 Wash. C. C. R. 220. An averment more specific than necessary must be proved as made, The Friendship, 1 Gall. R. 45-51 ; Renner [ * 322 ] V. Bank of Columbia, * 9 Wheat. R. 581 ; Wilson v. Lellox et al., 1 Cranch R. 195. The true rule is laid down by Buller, J., in Spieres v, Parker, 1 T. R. 145 ; and also, in other language, in Smith v. United States, 1 Gall. R. 267. In the case before the Court, the verdict does not find or assert the fact of recording the assignments, because it is no- where alleged by itself, nor comprised in any other allegation. All the facts alleged in the declaration may be true, and yet no record ever made. The allegation, that there was an " assignment," or that the right was " assigned," does not embrace a recording. The assignment is one thing, the record- ing of that assignment is another, and so clearly distinguished by the statute. It is not like stating, that the plaintiff had a grant by deed, without stating a delivery ; delivery, being of the essence of a deed, may be considered as comprised in the allegation of a grant, or conveyance by deed. It is, perhaps, more analogous to the recording of a levy of an execution on real estate, or the registry of a deed. Calvert v. Bovill, 7 T. R. 519, 522, 523 ; decided on the ground, that a statement of particular facts excludes the idea, that other facts are em- braced. Bishop V. Haywood, 4 T. R. 470-472, per Buller, J. ; De Costa v. Clarke, 2 Bos. & Pulj. R, 257 - 259. Fessenden and Greenleqf for the plaintiff. The point to which we shallconfine ourselves is, that the plaintiff has not directly averred in his declaration, that the assignments, from the original inventor to Robinson, and from Robinson to the plaintiff, were recorded, as required by the fourth section of the Statute of 1793, and on this ground it is moved to arrest the judgment after verdict. PATENT CASES. 685 Dobson V. Campbell. 1 Sumner. In Smith v. The United States, 1 Gall. R. 267, the Court say : " It is a general rule, that wheresoever it may be pre- sumed, that any thing must of necessity be given in evidence, * the want of mentioning it in the record [ * 323 ] will not vitiate it, after a verdict." In Jackson v. Pesked, 1 Made & Selwyn R. 237, Lord Ellenborough eays : " Where a matter is so essentially neces- sary to be proved, that, had it not been given in evidence, the jury could not have given such a verdict, there the want of stating that matter in express terms in the declaration, pro- vided it contains terms sufficiently general to comprehend it in fair and reasonable intendment, will be cured by a verdict." In Sergeant Williams's Notes to 1 Saunders R. 228, a, it is said, in relation to the same subject, " that where there is any defect, imperfection, or omission in any pleading, whether in substance or form, which would have been a fatal objection upon demurrer, yet, if the issue joined be such as necessarily required on the trial proof of the facts, so defectively or im- perfectly stated, or omitted, and without which it is not to be presumed, that either the judge would direct the jury to give, or the jury would have given, the verdict, such defect, imperfection, or omission, is cured by the verdict by the common law." It is believed, that an examination of the case at bar, upon the principles above stated, will result in establishing the suf- ficiency of the plaintiff's declaration, in the present stage of the case. The section of the statute before cited renders it necessary that an assignment should be recorded, in order that the as- signee may " stand in the place of the original inventor, both as t6 right and responsibility." Thus the recording is by the words of the statute rendered necessary, in order that the assignee may support an action for the breach of the patent, VOL I. — p. c. 58 685 PATENT CASES. Dobson V. CampbeU. 1 Sumnei'. in his own name. Without proof of such recording, a paper purporting to be an assignment could not be given [ * 324 ] in * evidence. It would, in fact, be no assignment within the words of the statute. The same princi- ple applies to this, as to an instrument required by law to be stamped. If not stamped, it could not be given in evidence, and this is all the effect which results from it. The fact, that such an instrument was " stamped," is never averred. In relation to the assignment to Robinson, it is averted, that Williston, by his writing, " sold and conveyed all his right," (fcc, " as by said assignment, &c., will fully appear," " whereby the said Robinson became and was the true and lawful owner of said right." ' Now, by the express words of the statute, the recording was indispensable to convey the right. " Stand in the place of the original inventor " are the words of the statute ; and the allegation is, that Williston conveyed " all his right." Again, the allegation is, that thereby the said Robinson be- came and was " the true and lawful owner." He could not become so, unless said assignment had been recorded. Again, it is averred, that he exercised the « right, liberty, and privilege aforesaid." What right, liberty, and privilege? That which was secured to Williston by the patent, who had conveyed "all his right" to Robinson. Another averment here made is, that, by said conveyance, Robinson received "the full and sole power" to make, vend, &c. Had not the requisite of recording been complied with, he could not have received such a power. Any one might have exercised it, so far as he was concerned, without remedy for him. Again, he became seised of this power " agreeably to the statutes aforesaid recited." By these statutes recording is essentially requisite. This averment, it is believed, would be sufficient of itself, had the others, above referred to and relied on, been wanting. PATENT CASES. 687 Dobson V. Campbell. 1 Sumner. *The averments in the plaintiflF's declaration, [* 325 ] touching the assignment of Robinson to the plain- tiff, are substantially the same. It is averred that Robinson conveyed " all his right," and that in consequence the plaintiff did use and enjoy the " right," and has used it. It will be noticed, that, in the assignment of Williston to Robinson, is the expression, " the right so as aforesaid pa- tented," and then in the assignment to the plaintiff is found the expression, the " right, &c., aforesaid," referring to the right mentioned in the first assignment. This right is in both instances alleged to be conveyed. All the right is conveyed to Robinson, and then all the right is conveyed to the plain- tiff. If, then, the statute makes the recording necessary to the conveyance, these allegations are of themselves sufficient. At all events, these allegations are sufficient after verdict. These assignments could not have been given in evidence, had they not been recorded, and the fact, that they were so, is not denied. In the language of the Court, in the case cited from Galli- son, the recording " must of necessity have been given in evidence." It was " so essentially necessary to be proved, that, had it not been given in evidence, the jury could not have given such a verdict." The issue joined was " such as necessarily required, on the trial, proof of the fact." Without such proof, " the judge could not have directed the jury to give, neither could the jury have given the verdict." • ' The general issue being pleaded and joined, the " right" claimed by the plaintiff, was directly denied, and it was neces- sary for him to prove any thing rendered necessary by the statute to the existence of such right ; and the existence of such right is found by the verdict. See also Hitchins v. Stevfens, *2 Shower R. 233, and the [*326] 688 PATENT CASES. Dobson V. Campbell. 1 Sumner. Other cases cited in the note of Sergeant Williams before referred to. Story, J. We are of opinion, that the motion in arrest of judgment ought to be overruled. We accede to the doctrine stated at thei-bar, that a defective title cannot, after verdict, support a judgment; and therefore it constitutes a good ground for arresting the judgment. But the present is not such a case ; but is merely the case of a good title defectively set forth. The defect, complained of, is the omission to state, that the assignments, on which the plaintiff's title is founded, were duly recorded in the office of the Department of State, which is made essential to pass the title of the origi- nal patentee by the fourth section of the Patent Act of the 21st of February, 1793, ch. 55. The general principle of law is, that, where a matter is so essentially necessary to be proved, to establish the plaintiff's right to recovery, that the jflry could not be presumed to have found a verdict for him, unless it had been proved at the trial, there the omission to state that matter in express terms in the declaration is cured by the verdict, if the general terms of the declaration are otherwise sufficient to comprehend it. This was the doctrine of Lord Ellenborough in Jackson v. Pesked, (1 M. &, Selw. R. 234) ; and it is very elaborately expounded by Mr. Ser- geant Williams in his learned note to Saunders R. 228, a. The other authorities cited on behalf of the plaintiff are to the same effect. Novy, it seems to us, that taking the whole declaration together, (however inartificially drawn,) the plain- tiff sets up a title to the patent-right by assignment, and an enjoyment and use of the right under .that title, and that he has been injured in that right under that title, by the piracy of the defendant. This cannot be true, nor could a verdict for the plaintiff have been found by the jury, if the deeds of assignment had not been duly recorded; for, unless PATENT CASES. 689 Ames V. Howard et al. 1 Sumner. that was done, * nothing would pass by the deeds. [ * 327 ] The cases of Hitchins v. Stevens, (2 Shower R. 233,) and McMurdo v. Smith, (7 T. R. 518,) cited at the bar, seem to us very strongly in point. So is France v. Trin- ger, Cro. Jac. 44. There are stronger analogous cases in equity ; for it has been held, that if a feoffment is stated without any averment of livery of seisen, or a bargain and sale without stating an enrolment, it is not a good cause of demurrer, but the Court will intend it perfect.^ As to livery of seisin, it is far from being certain, that, if a feoffment is in terms pleaded, it is necessary, even at law, to aver it, since it is implied.^ Upon the whole, judgment must be entered for the plaintiff according to the verdict. Judgment accordingly. John Ames v. Charles Howard and others. [1 Sumner 482. October T. 1833.] Patents and specifications annexed thereto should be construed fairly and liberally, and not subjected to any over-nice or critical refinements. Where an invention is so loosely and inaccurately described in the specificsr tion, that the Court cannot, without resorting to conjecture, gather what it is, then the patent is void ; but if the Court can clearly see the nature and extent of the claim, however imperfectly and inartificially it may be ex- pressed, the patent is good. A patent contained the following words in the description of the invention: " I 1 Harrison v. Hogg, 2 Ves. Jun. Hf. 323, 328. 2 See Co. Litt. 303, b. Throckmorton v. Tracy, Plowden K. 144. See Spieres v. Parker, 1 T. E. 145, per BuIIer, J. ; 1 Saund. R. 228, a, Williams's note. 58* 690 PATENT CASES. Ames V. Howard et al. 1 Sumner. do not claim the felting, vats, rollers, presses, wire-cloth, or any separate parts of the above described machinery or apparatus, as my invention ; what I do claim as new, and as my invention, is the construction and use of the peculiar cylinder above described, and the several parts thereof in combina- tion for the purpose aforesaid." Held, that it is not the cylinder alone, or its several parts, which are claimed per se, but they are claimed in their actual combiimtion with the other machinery, to make paper. Semble, that no previous notice or claim of a right to the exclusive use of an invention is necessary to enable a patentee to maintain an action for an alleged violation of his patent-right. It is the practice of this Court, in all cases of surprise at the trial, by new mat- ter proving a ground material to either party, and clearly made out by affi- davit, to postpone or continue the cause. If the party interested, however, elects to go on with the cause, relying upon other matters, he is understood to waive the matter of surprise, and^e cannot take his chanco with the jury, and, if successful, then move the matter as a ground for a new trial. A new trial is not granted upon mere cumulative evidence. The defendants cannot put in new rebutting evidence to affidavits of the plain- tiff, offered in reply to those first offered by the defendants. [ * 483 ] *Case for an infringement of a patent-right for a new and useful improvement in the machinery for making paper. The specification annexed to the patent contained the following summary of the invention, as claimed by the patentee : " The drawing hereto annexed is to be taken and considered as a part of this specification. But it is to be understood, that I do not claim the felting, vats, rollers, presses, wire-cloth, or any separate parts of the above described machinery or ap- paratus, as my invention. And I hereby declare, that what I claim, as new and as my invention, is the construction and use of the peculiar kind of cylinder above described, and the several parts thereof in combination for the purposes afore- said." The cylinder here referred to is particularly described in the specification, and it is there stated to be partly im- mersed and used in the vat containing the paper pulp, " hav- ing one end of the cylinder close to the side of the vat, which forms a covering therefor." And in another part of the spe- cification it is stated : " One end of the cylinder thus formed is to be covered, and made water-tight by a copper or other ^ PATENT CASES. 691 » ' Ames V. Howard et al. 1 Sumner. sufficient covering, and the other end, uncovered, is to be brought and kept in close contact with the side of the vat or reservoir aforesaid, which is to be so adapted to it, as to form a covering water-tight for that end of the cylinder, lyhich while it revolves is below the top of the vat or reservoir." The specification then proceeds to describe the mode in which the water, draining through the cylinder, is to be conducted off through a hole in the side of the vat, which covers the open end of the cylinder. It was not disputed at the trial, that the cylinder was not capable of, nor intended for, any distinct use separate from the vat ; and that to make paper on it, it was indispensable that it should be placed in the vat in the manner above described. Plea, the general issue, with notice of special matter. *At the trial it was contended by the defend- [*484] ants, that the true construction of the patent was, that the plaintiff claimed only the cylinder, and the several parts thereof, in combination with each other, as his peculiar invention. The Court thought otherwise ; and declared to the jury, "that the patent is for the construction and use of the peculiar kind of cylinder, and the several parts thereof, in combination with the other parts of the machinery, for the purpose of making paper. It is for the combination, and not for the separate parts thereof. It is not for the peculiar structure and use of the cylinder alone, as the invention of the plaintiff; but it is for it in, and as a part of, the combina- tion. Nor is it alone for the several parts of the cylinder, in actual combination by themselves with each other ; but in the combination with other parts of the machinery to produce paper." At the trial the cause was argued by William Bliss and Band for the plaintiff, and by George Bliss and Fletcher for 692 PATENT CASES. Ames V. Howard et al. 1 Sumner. the defendants. The jury found a verdict for the plaintiff, for $412.50, single damages. A motion was afterwards made by the defendants for a new fial, the grounds of which appear in* the opinion of the Court, and was argued by Rand for the plaintiff, who cited Smith V. Brush, 8 Johns. R. 84 ; Pike v. Evans, 15 Johns. R. 210 ; Williams v. Baldwin, 18 Johns. R. 489 ; Strong v. Hogg, 2 Wm. Black. R. 802; Ford v. Tilly, 2 Salk. R. 653 ; Watson V. Sutton, 1 Salk. R. 272 ; Cooke v. Berry, I Wils. R. 98 ; Gist v. Mason, 1 Term R. 84 ; Slander v. Edwards, 1 Ves. Jr. R. 134. Fletcher, for the defendants, cited Smith v. Brush, 8 Johns. R. 84 j Pike v. Evans, 15 Johns, R. 213; Guyot v. Butts, 4 Wendell R. 579; Warren v. Hope, 6 Greenl. R. 480. Story, J. The first ground of the motion is on account of a supposed misconstruction of the patent of the [ * 485 ] plaintiff by * the Court. And the question now is, whether the direction of the Court was right in point of law. Patents for inventions are not to be treated as mere monopolies odious in the eyes of the law, and therefore not to be favored; nor are they to be construed with the utmost rigor, as strictissimi juris. The Constitution of the United States, in giving authority to Congress to grant such patents for a limited period, declares the object to be to pro- mote the progress of science and useful arts, an object as truly national, and meritorious, and well founded in public policy, as any which can possibly be within the scope of na- tional protection. Hence it has always been the course of the American Courts, (and it has latterly become that of the English Courts also,) to construe these patents fairly and liberally and not to subject them to any over-nice and critical refinements. The object is to ascertain, what, from the fair PATENT CASES. 693 Ames V. Howard et al. 1 Samner. sense of the words of the specification, is the nature and extent of the invention claimed by the party ; and when the nature and extent of that claim are apparent, not to fritter away, his rights upon formal or subtile objections of a purely technical character. Now, let us see, what is the invention, as claimed by the plaintiff in the specification in this case. I agree, that if he has left it wholly ambiguous and uncertain, so loosely defined, and so inaccurately expressed, that the Court cannot upon fair interpretation of the words, and without resorting to mere vague conjecture of intention, gather what it is, then the pa- tent is void for this defect. But if the Court can clearly see, what is the nature and extent of the claim, by a reasonable use of the means of interpretation of the language used, then the plaintiff is entitled to the benefit of it, however imper- fectly and inartificially he may have expressed himself. And for this purpose we are not to single out particular phrases standing alone, but to take the whole in connection. The plaintiff * begins by stating negatively, what he [ * 486 ] does not claim as his invention ; and this may well help us to ascertain what he does claim. He says he does not claim " the felting, vats, rollers, presses, wire-cloth, or any sepa- rate parts of the above described machinery or apparatus," as his invention. Now, among the above described inachinery is the cylinder, and the several parts thereof. The cylinder therefore may fairly be deemed a separate part of the ma- chinery, for it constitutes a part separable in its nature, and distinct in its formation, thopgh adapted to a particular mode of use. He then proceeds to say, "What I do claim, as new and as my invention, is the construction and use of the pecu- liar cylinder above described, and the several parts thereof in combination for the purpose aforesaid." Now the defendants read this language, as if the words were, I claim the- con- struction and use of this peculiar cyhnder, and I claim the 694 PATENT CASES. Ames V. Howard et al. 1 Sumner. several parts thereof in combination with each other to form a cylinder for the purpose of making paper. Let us see whether this is consistent with giving a due effect to all the words used, and with the antecedent negative declarations of the plaintiff. He before has said, that he does not claim, as his invention, any of the separate parts of the machinery ; therefore it is very clear that he does not claim the separate parts of the cylinder. But then, it is said, he claims these parts in combination with each other. But these parts in ^ combination with each other constitute neither more nor less than the cylinder itself ; so that, upon this construction, the words, "and the several parts thereof in combination," are mere repetition and tautology, and have no distinct meaning. The claim is read exactly, as if these words were struck out. Certaimly no court of justice is at liberty to strike out any words, which are sensible in the place where they occur, and are capable of a distinct application. We are to [ * 487 ] give, if practicable, * effect to all the words, as con- taining a distinct expression of the intention of the party. Besides, upon this interpretation of the language, the party does not claim the construction and use of the cylinder as his own, but the application of it to a particular purpose, as his own. It requires no commentary to establish, that the application of an old thing to a new use, without any other invention, is not a patentable contrivance. A man, who should use a common coffee-mill for the first time to grind peas, could hardly maintain a patent for it. A man, who should for the first time card wool on a common cotton card- ing-machine, would find it difficult to establish an exclusive right to the use of it for such a purpose. So that this construction, of the words of the specification could hardly be presumed to express the intention of the party ; for then he would not claim the thing, but a particular use of the thing for a particular purpose. The plaintiff in the present case PATENT CASES. 695 Ames V. Howard et al. 1 Sumner. claims more than the mere use ; he claims the construction of this peculiar cylinder, and the several parts of it. And how does he claim them "in combination"? In what manner? In cqmbination with each other ? No ; but " in combination for the purpose aforesaid ; " that is, for the purpose of making paper. The grammatical connection of the passage, then, requires that we should read it, that he claims, as his inven- tion, the cylinder itself, (as well as the several parts thereof,) in combination for the purpose of making paper. It is not then the cylinder alone, or its several parts, which are claimed per se ; but they are claimed in their actual combi- nation with the other machinery to make paper. In this view of the clause full effect is given to all the words, and the sense is at once natural and consistent. My judgment, there- fore, is, that the construction given by the Court at the trial is correct ; and that, as matter of law, there is no error in it. * The next objection is necessarily out of the [ * 488 ] case ; for the comment attributed to the Court was, upon a suggestion of the defendants' counsel, immediately withdrawn from the jury by the Court ; and the whole matter of fact contained in Gilpin's deposition, as well as its credi- bility, was left entirely open and free to the jury. I cannot say, that they have misunderstood it ; or that they have not drawn the right conclusion deducible from it. It was a mat- ter peculiarly within their province ; and the ample comments on Gilpin's testimony, at the trial, by the counsel on both sides, sufficiently evinced, that it was in some parts confused and unsatisfactory, and susceptible of different interpretations. The next objection is, that in point of law the plaintiff is not entitled, without some previous notice, or claim, to main- tain this action under his patent against the defendants, for continuing the use of the machines erected and put in use by them before the patent issued. This objection cannot prevail. 696 PATENT CASES. Ames V. Howard et al. 1 Snmner. I am by no means prepared to say, that any notice is, in cases of this sort, ever necessary to any party who is actually using a machine in violation of a patent-right. But it is very clear, that in this case enough was established in evidence to show, that the defendants had the most ample knowledge of the original patent taken out by the plaintiff in 1822, and of which the present is only a continuation, being grounded upon a surrender of the first for mere defects in the original specification. Whoever erects or uses a patented machine, does it at his peril. He takes upon himself all the chances of its being originally valid ; or of its being afterwards made so by a surrender of it, and the grant of a new patent, which may cure any defects, and is grantable according to the prin- ciples of law. That this new patent was so grantable is clear, as well from the decision of the Supreme Court in Grant v. Raymond (6 Peters R. 218,) as from the Act of [ * 489 ] * Congress of the 3d of July, 1833, ch. 162. There is no pretence to say, that the defendants were bond fide purchasers without any knowledge or notice of any ad- verse claim of the plaintiff under this original patent ; and the damages were by the Court expressly limited to damages, which accrued to the plaintiff by the use of the machine after the new patent was granted to the plaintiff. Without doubt the jury conformed in their verdict to this direction of the Court. The other original objections may be passed over without notice, and indeed are insupportable in point of law. But another ground for a new trial has been since filed, founded partly upon surprise at the trial, and partly upon the discovery of new evidence applicable to the point, stated at the trial, which constitutes the matter of surprise. It came out in evidence on the trial, in the course of the cross-exami- nations, that the original cylinder constructed by the plaintiff had bars of wood, instead of brass ; and one or more of the PATENT CASES. 697 Ames V. Howard et al. 1 Samner. witnesses asserted, that the brass bars were substituted for wood after the grant of the original patent in 1822. This was explicitly denied by other witnesses on behalf of the plaintiff, who asserted, that the brass bars were substituted ' before the patent. Upon this point the parties were at. issue at the trial ; and it was made a strong ground of defence. No application was made to the Court by the defendants for a postponement or continuance of the cause for the purpose of a more full and thorough examination of the point, or to search for farther testimony. The uniform practice of this Court is, in all cases of surprise at the trial by new matters, forming a ground important to either party, and clearly made out by affidavit, to postpone or continue the cause. And if the party interested makes no such application, but elects to go on with the cause, relying upon his other strength to sus- tain his claim or defence, he is understood to waive the * matter of surprise ; and he cannot be permit- [ * 490 ] ted to take his chance with the jury, and, if unsuc- cessful, then to move the matter, as a ground for a new trial. The purposes of justice would be defeated and not advanced by any different course. And Courts, which adopt a different rule, act upon the ground, that in their own modes of trial and practice the party has no opportunity to postpone or continue the cause ; but is compellable to proceed in the trial. Upon this short ground, therefore, the objection of surprise is removed. from the case. But it is by no means clear, that the matter so waived was, in point of law, a good ground of defence to the action. That depended upon the fact, whether the plaintiff made it by his specification a constituent part of his invention, that the bars should be of brass, and not of wood ; for if they might be made of either, consistently with his general claim, then there was no objection to the patent in this respect. Now, the Court was by; no means satisfied, at the trial, that such VOL. I. — p. c. 59 698 PATENT CASES. Ames V. Howard et al. 1 Sumner. was in fact the claim of the plaintiff. But for the purposes of the trial, the evidence was left to the jury, as if it consti- tuted a complete ground of defence. The jury so acted upon it ; and, having decided against it, as matter of fact, it would be a strong ground for the Court to interfere now upon a mere doubt,«vhether the plaintiff's claim had, in point of law, such an extent or not. I do not statie this with any other view, than to say, that it is a matter still sm6 Jwdice, upon which my mind is not so clear, as to induce me to grant a new trial, merely with a view to open anew the discussion of it. But, then, as to the new evidence offered, what is its na- ture ? It is merely cumulative ; and the settled practice of this Court is never to grant a new trial upon mere cumulative evidence, where there is no other ground of objection to the verdict. That point has been fully considered in [ * 491 ] the case * of Alsop v. The Commercial Insurance Company at this term. But it has been long since established in the habitual course of proceedings of the Court. The counter affidavits, however, offered on behalf of the plaintiff, go to establish strong cumulative proofs the other way. And under such circumstances, the Court will always decline to interfere; because it will not under- take to measure the weight of the ne\y testimony on either side, or send the parties again to litigation upon the chances of a verdict;, upon new conflicting evidence. The defendants have asked, if they may put in new rebutting evidence to the affidavits of the plaintiff, offered in reply to those first offered by themselves. Certainly not. They must present their- whole case at once to the Court ; and not lead it on through a series of confirming and rebutting proofs, thus protracting the cause to an unreasonable extent. There is another view, which may properly be taken of this point. The special written notice of defence by the PATENT CASES. 699 Ames V. Howard et al. 1 Samner. defendants, actually includes within its reach the very matter now set up as a surprise. It states, that the invention claimed by the plaintiff by his patent in 1832, " is, according to the specification thereof, wholly different and distinct " from the pretended invention mentioned in the patent of 1822. Of course this notice covers the whole claim of each patent ; and it puts in controversy every part of the last patent, which is distinguishable from the first, and does not constitute a part of the invention claimed in the first. The defendant, there- fore, was, by his own special notice of defence, bound to insti- tute all proper inquiries into the nature and actual structure of the original machine, and all the differences between that and the structure of the machine described in the patent of 1832. If he had used ordinary diligence, it is now manifest, that he might have obtained full evidence to any point, which * could properly sustain the defence. [*492] He came to the trial, content witn the preparation and the points, to which his evidence actually led him ; and there can be no reason for letting him into a new trial, merely because he could now, upon farther reflection and farther lights, have made a fuller or a better defence. Interest reipubliccB ut finis esset litium, is an old maxim deeply fixed in the fundamentals of the common law. And Voet .beautifully expressed its true reason, when he said, "Ne autem lites immortales essent, \dum litigantes mortales sint." 1 The motion for a new trial is therefore overruled. Motion overruled. 1 Voet ad Pand., Lib. 5, tit. 1, § 63, p. 328. 700 PATENT CASES. Delano v. Scott. 1 .Gilpin. Jesse Delano, Junior, v. John Scott.^ [1 Gilpin, 489. August T. 1834.] 1. The provisions of the sixth section of the Act of 21st February, 1793, are in- tended to declare the defence that shall be available to a party charged by a patentee with a violation of hiS right. 2. The provisions of the tenth section of the Act of 21st February, 1793, apply only "to cases in which a patent has been obtained by fraud, surreptitiously, or by false suggestions, and are intended to protect the public from imposi- tion. 3. Though a patentee believes himself, hand file, to be the original inventor of the improvement patented, yet the fact of his not being so, if it does not con- stitute a false suggestion in obtaining it, appears to be a sufficient ground for repealing it. 4. The mere existence of a previous patent or specification of an im- [ * 490 ] provement * is not sufficient to establish the fapt of fraud in a subse- quent patentee of a sffiiilar improvement ; actual knowledge of it must be proved. 5. If there be a false suggestion in any of several material facts set forth in a specification, the patent is invalid. 6. An order, on a rule to show cause why a scire facias should not issue to repeal a patent, is merely a preliminary proceeding, and does not determine the question of the validity of the patent. 7. An exemplification of a patent afterwards surrendered and cancelled, maybe given in evidence to show that an improvement, subsequently patented, is not original. 8. A mere workman, employed by a person who is not the patentee, to make* parts of a patented machine, is not liable to a penalty under the provisions of the Act of 21st February, 1793. 9. A mere difference in the manner and form of applying an invention, which is the same in principle with one previously used, will not justify a new patent. 10. A judgment against a patentee, on a scire facias issued to obtain a repeal ^ The provisions of the Act of 1793, relating to the repeaZ of patents by scire facias, have not been reenacted by the Act of 1836, revising the previous Patent Laws, and are not now in force. See Evans v. Eaton, ante, 68, 193, 243. PATENT CASES. 701 Delano v. Scott. 1 Gilpin. . — - — ^ of a patent, vacates the same ; but a judgment in his favor will not prevent his right being contested in a suit he may subsequently institute for its vio- lation. This was a suit brought by scire facias, for the purpose of repealing a patent obtained by the defendant from the United States, under which he claimed the sole and exclusive right of using, and vending to others, certain improvements in making iron chests or safes. This patent, the plaintiff alleged, he had obtained surreptitiously and on false sugges- tions. The original proceedings in the case were as follows. On the 29th October, 1833, the plaintiff appeared before the dis- trict judge of the United States for the Eastern District of Pennsylvania, and on his oath declared and complained — that the defendant, who was a resident of the district, had, on the 12th November, 1830, and within three years from this ap- plication, as well as within three years from the issuing of the patent in question, obtained the same from the United States ; that it purported to secure to hini the right above stated for fourteen years from the date thereof ; that it was obtained by the defendant surreptitiously and on false suggestions ; that he was not the true inventor of the improvements described in it ; and therefore praying that a rule might be granted, calling on the defendant to show cause why process ' should not be issued, for * the purpose of repealing [ * 491 J the patent, according to the provisions of the Act of Congress, in such case made and provided. On the 14th March, 1834, this application was argued by Perkins for the plaintiff, and Earle for the defendant. On the 21st March, Judge Hopkinson delivered the follow- ing opinion : The affidavit of the complainant in this case was made on 59* 702 PATENT CASES. Delano v. Scott. I Gilpin. the 29th day of October, 1833, and set forth, that the defend- ant, John Scott, within three years antecedent to the date of the said affidavit, to wit, on the 12th day of November, 1830, had obtained, from the United States, a patent, to secure to him for fourteen years the sole and exclusive right to vend to others certetin improvements in making iron chests or safes ; that this patent was obtained by the said Scott surreptitiously and upon false suggestions; and that the said Scott is not the true inventor or discoverer of the said improvements. Upon this affidavit a rule was granted, calling on the said Scott to show cause why process should not issue to repeal the said letters-patent. The rule was duly served on the defendant, and he has appeared, by his counsel, to show cause against the issuing of the process demanded.. The affidavit contains two allegations, distinctly made. 1. That the patent in question was obtained surreptitiously and by false suggestions. That the patentee is jiot the true inventor or discoverer of the improvement patented. To maintain these allegations, the complainant has given in evidence a patent granted to himself for the same improve- ments, as he avers, dated the 7th March, 1826 ; and also the depositions of several witnesses to prove the identity, at least, substantially, of the improvements patented in the two patents, and also to show the fraud of the defendant in obtaining his patent. These witnesses swear, in general, that the improve- ments are substantially the same, and particularly describe both. They also testify, that th? defendant, Scott, was em- ployed by the complainant as a workman in doing [ * 492 ] the iron work of these chests, for about * two years, having, during that time, had free access to all parts of the work carried on in the shop, and there become ac- quainted with the business of making iron chests and safes, and with the peculiar method of saturating the wood with certain materials, so as to render it incombustible. Other PATENT CASES. 703 Delano v. Soott. 1 Gilpin. circumstances are detailed, which need not be repeated now, to show that the patentee got his whole knowledge of the improvements in question by working, in the shop of the com- plainant, and there seeing the manner in which his iron chests were prepared and made. No evidence was produced, on the part of the defendant, to rebut or explain the inference that would be drawn froni these facts, to wit, that wheh he took out his patent he knew that he w^s not the inventor or discoverer of the improvements he claimed and patented. Nor has he given any testimony of persons skilled in the manufacture of the article in, question, to show that his man- ner of preparing and making these chests is not substantially and truly the same, with that before used and patented by the complainelnt. If the alleged improvements in both patents are the same, and if the defendant acquired his knowledge of them by working in the shop of the complainant, where they were made, then the whole case of the complainant is made out, to wit, that the defendant is not the true inventor or dis- coverer of the thing he has patented, and that he did obtain his patent surreptitiously an* by false suggestions, by swear- ing to that which he knew to be untrue. This is not the stage of this proceeding when I am called upon definitively to affirm or deny either of these allegations ; they are questions of fact on which the defendant has a right to the opinion and verdict of a jury of his country, on such evidence and arguqients as it may hereafter.be in his power to oflTer to them. Having already acted on the opinion, that the matter alleged in the complainant's affidavit was sufficient to grant the rule upon the patentee to show cause why process should not issue against him, to repeal his patent, I have only now to decide whether he has shown such cause, and removed the effect of the complainant's affidavit. I think he has not done so; on the contrary, he has offered no *evi- [*493 ] dence to repel, or weaken, or discredit the allega- 704 PATENT CASES. , i Delano v. Scott. 1 Gilpin. tions of the complainant, who has strengthened himself by the depositions of several witnesses. I repeat that the whole case is nevertheless open to the defendant; he may reserve his defence for the future inquiry before a jury, and will not then be prejudiced by any omissions on his part, at this incipient hearing, or by any opinion I may express of his case as it now stands. Some questions of law, on the construction of the tenth section of the Patent Law of 21st February, 1793, have been mooted in the argument of the case, which I will briefly notice. If I were called to give a construction, for the first time, to this section, I confess I should have some embarrassment to reconcile and satisfy all its parts. But happily this section has been carefully and critically examined, not .only by a learned judge~6f the Supreme Court of the United States in his circuit, (Stearns u. Barrett, 1 Mason, 153,) but afterwards by that Court itself, (Ex parte Wood, 9 Wheaton, 603.) The decisions of that Court on the doubtful points in this law, not only bind me by their authority, tjut entirely satisfy and accord with my own judgment. They give the fullest justice to the • parties interested, while they do no violence to any part of the act, but make all its provisiorts consistent with each other, and with the general principles of justice and law. The folr lowing points seem to me to be the settled construction of the section in question. 1. That the proceeding given by it, to procure the repeal of a patent, applies only to cases in which the patent has been obtained by fraud, surreptitiously, by false suggestions, by some wilful misrepresentation and de- ception. The mere fact that the patentee was not the origi- nal inventor of the thing patented, is not such a false sugges- tion as is contemplated by the act, although there are some words in it which seem to favor that construction, provided that the patentee, bond fide believed himself to be the true inven- PATENT CASES. 705 Delano v. Scott. 1 Gilpin. tor, when he applied for and received his patent, and did not know of any antecedent use and invention of the thing claimed by him. There must be an intended deception and fraud upon the * government and the public ; a [ * 494 ] wilful wrong to the true inventor, (post p. 713.) 2. That the hearing, on the return of the rule to show cause, is merely an initial proceeding, for a more full and deliberate examination and trial of the cause of complaint, if, in the opinion of the judge, there shall be a good and sufficient ground laid for such further examination ; that the order of the judge, on this hearing, cannot be that the patent is invalid, but only that process shall issue for a trial of its validity ; and it is upon such trial that the question of validity is to be de- termined, or an issue to be made between the parties, arid the letters-patent to be repealed by the judgment of the Court, if the issue shall be decided against the patentee. 3. That on the return of the process issued on the rule, the parties will make up their issue according to the case in controversy ; and the trial will be by a jury or the Court, according as the issue shall present a question of fact or of law. The decision against the patentee will repeal and vacate his letters-patent, but a decision of this issue in his favor will give no strength or confirmation to them, to prevent his right from being con- tested and tried in any suit he may afterwards bring for a vio- lation of it. The summary proceeding under the tenth sec- tion was probably given to protect the public from manifest frauds, in taking out patents, (the fees of office being no ch?ck,) for known and common things. The imposing ap- pearance of the patent would deceive the timid and ignorant, who might believe it was conclusive evidence of right, or who might be- unable or unwilling to take upon themselves the hazard, and the certain loss of time and money, in which they would be involved by litigation. They would, therefore, wisely prefer to pay something for the peaceable use of the 706 PATENT CASES. Delano v. Scott. 1 Gilpin. pretended invention. Such frauds have been, more than once, successfully practised. It is ORDERED, that the rule in this case be made absolute, and that process issue, in nature of a scire facias, to the pa- tentee, to sBow cause why the patent should not be repealed, , virith costs of suit. [ * 495 ] * On the 2d May, 1834, the writ of scire facias issued, to which the defendant subsequently plead- ed not guilty, with leave to give the special matter in evi- dence. On the 27th May, 1835, the case came on for trial before Judge HopKiNsoN and a special jury. It was argued by Per- kins, for the plaintiff, and Earle and Dallas for the defend- ant. Perkins, for the plaintiff. This suit is a proceeding under the tenth section of the Act of Congress of 21st February, 1793, (1 Story's Laws, 303,) directing the manner in which a patent may be repealed, if it has been obtained surreptitiously or upon false suggestions. The plaintiff invented a mode of making iron chests so as to render them incombustible. On the 7th March, 1826, he took out a patent for his improvements, which are detailed in his specification. In October, 1827, Scott, the defendant, came to work in the plaintiff's shop, who was then making iron chests according to his patent. He remained working in his shop until September, 1829, vvhen he went to Ohio. He returned to New York in about a year. The plaintiff had heard in the mean time that he had been making iron chests ; he charged him with it, but he denied it. He was then allowed to go over the factory. He went away, declin- PATENT CASES. 707 Delano u. Scott. 1 Gilpin. ing employment by Delano, and came to Philadelphia where he set up a manufactory of iron chests the same as those made by Delano. In October, 1830, he took out his patent for them, making the usual affidavit. It is to repeal this pa- tent, as having been obtained surreptitiously and by false suggestions, that this proceeding has been instituted. The affidavit of Scott, made before Alderman Badger on the 29th October, 1830, was then read. In this he swears that he believes himself to be the true and original inventor of the improvements within specified and described ; and that the same, to the test of his knowledge and belief, had not been known or used either in this or any foreign country. The counsel for the plaintiff then stated in detail the im- provements claimed by' Scott, amounting to ten. He then * offered a certified official copy of a pa- [ * 496 ] tent taken out by the plaintiff, which was afterwards surrendered and cancelled on account of a defective specifi- cation ; and a new patent obtained on 13th August, 1834. This cancelled patent was offered to show that Scott's first specification had been previously patented ; it was to be fol- lowed by evidence of its use in the plaintiff's shop when Scott worked there. t!iarle and Dallas, for the defendant. We object to this evidence. The paper is imperfect. We should know when it was cancelled ; how and for what defect or reason. If the plaintiff can show that he had used pot- ash in New York, and that Scott knew it, that is sufficient without this paper. He should first show that Scott knew the existence of this paper. Perkins, for the plaintiff, in reply. By the third section of the Act of 21st February, 1793, (1 Story's Laws, 302,) "certified copies are competent evi- 708 PATENT CASES. Delano v. Scott. 1 Gilpin. dence in all Courts when any matter or thing, touching a patent-right, shall come in question." Judge HoPKiNsoN delivered the following opinion : 1 admit the evidence. The plaintiff is to prove two things ; 1. That S(3Dtt is not the inventor of the improvement in question. 2. That he obtained his patent surreptitiously. To prove the second point, he must show knowledge of, the defendant, that he was not the inventor ; though he need^not do so to prove the first. This evidence is good for the former purpose, that is, to show he was not the original inventor. The copy offered proves the existence of the original in the department of State. ■ Perkins, for the plaintiff, in continuation. All the specifications of Scott's patent show that none of them were his inventions. A grpat number of witnesses ex- amined, all show that these improvements were in Delano's patent ; that they were used by him before Scott's applica- tion for a patent ; and that Scott had full knowledge [ * 497 ] that they were so used. * They further prove that Scott's first knowledge of the business was obtained in Delano's shop ; he was entirely ignorant of every part of it when he came there. Thomas Archbold, being offered by the plaintiff' as a witness, was sworn on his voire dire. He said he had made springs to the bolt, such as are described in Scott's patent. Earle and Dallas, for the defendant, object. The witness is not competent ; he has an interest in the event of the suit. If, by this verdict and judgment, Scott's patent should be affirmed, it might be given in evidence against the witness in a suit for infringing the patent ; he PATENT CASES. 709 Delano v. Scott. 1 Gilpin. has, therefore, an interest to destroy it in order to ssgsure himself. Scott might sue on his patent, even if the verdict and judgment here should declare it invalid. Agents who vend a patented article are liable to damages. The witness has admitted that he has violated the patent ; and is, there- fore, liable for damages. He cannot be permittted' to take away from Scott the capacity to sue him. Hayes v, Grier, 4 Binney, 83 ; Conrad v. Keyser, 5 Serg. &, Raw. 371. The witness, being called back by the judge, says, that he has made these bolts in the shop of Mr. Delano, as one of his workmen. Judge HoFKiNsoN stopped the counsel for the plaintiff, who was about to reply. On general principles I should think the evidence admis- sible. To exclude it, the interest of the witness should be more certain and immediate ; not so contingent, remote, and dubious. The possibility that an action might be brought against him, in case his tes'timony should not prevail, or the tendency of his testimony to render his liability less probable, would not exclude him ; it may affect his credit, but not his competency. * 1 StarRie, Ev. 86, 88. But it is clear to me that the witness would not be liable to any damages for the violation of Scott's patent, should it be found to be a good and valid one. He is not within the terms of the fifth sec- tion of the act. It is there enacted, " that if any person shall make, * devise, and use, pr sell the [ * 498 ] thing so invented, he shall forfeit and pay to the patentee." In my opinion, this description does not, and was never intended, to embrace every workman who may be em- ployed in making parts of a patented machine ; nor one who may sell them as the shopman or clerk of another. The maker and seller intended by the act, is the principal who employs tnese subordinate agents ; the person for whom, by VOL. I. — p. c. 60 710 PATENT CASES. Delano v. Scott. 1 Gilpin. whofe direction, and on whpse account, the machines are made and sold ; the person who receives the profit of the sale ; he is the seller and the maker. It is he who claims title and property in the thing, and who undertakes to trans- fer it to the purchaser. The workmen employed by him for stipulated v|^ges, have nothing to do with his righ^, or with his invasion of the lights of another. They work under his direction, and sell on his account. There may be a dozen or more mechanics employed in making one machine ; and several attending in the shop where it is , sold. Is each of these liable for damages, that is, to forfeit and pay to the par tentee a sum at least three times the price for which the pa- tentee has usually sold his invention ,? If this be the law, the patentee would recover for every invasion of his right, for every machine made and sold, not three times but fifty or an hun- dred times the price of it ; although no one of the defendants made the machine, but it was the joint work of all. The witness now offered, and objected to, made nothing but the spring bolts of the chests. So, as to the persons who may sell it, as the shopmen or clerks of the owner. In com- mon parlance, as well as in the understanding of the law, the seller of an article is the owner for whom it is sold; not the man or boy in the shop who delivers it to the buyer and receives his money. If sold on credit, the buyer becomes the debtor of the owner, of the master of the shop, as the seller. Perkins, for the plaintiff. The evidence being closed on both sides, the case was argued by the counsel for the plaintiff, who cited [*499] Odiorne *v. Winkky, 2 Gallison, 51 ; Stearns v. Barrett, 1 Mason, 153, 171 ; Evans v. Eaton, Peters, C. C. Rep. 342 ; Same case, 3 Wheaton, 454 ; Ike parte Wood, 9 Wheaton-, 603. PATENT CASES. 711 Delano v. Scott. 1 Gilpin. Earle and Dallas, for the defendant. The evidence of the case shows, that some of the improve- nnents introduced by Scott, were new and useful ; but the main question is not, whether he was or was not the mventor of them or any of them ; but whether he has falsely and surreptitiously taken a patent for that of which he then knew he was not the inventor. Evans v. Eaton, Peters, C. C. Rep. 342. Judge HoPKiNsoN delivered the following charge to the jury: ■ The issue you are now trying, is made under the provisions of the tenth section of the Act of 21st. February, 1793. *rhe question is on the repeal of the patent granted to the defend- ant ; you will observe that a patent may also be annulled un- der the sixth section of this act. By the terms of that sec- tion, if the specification of the patentee does not contain the whole truth relative to his discovery; or contains more than is necessary, for the purpose of deceiving the public ; or if it was not originally discovered by the patentee ; or he had sur- reptitiously obtained a patent for the discovery of another person, judgment shall be rendered for the defendant, and the patent shall be declared void. Under the tenth section, the patent will also be repealed, if the patentee was not the true inventor of the thing ; or had obtained the patent surrepti- tiously. These sections, however, are essentially different in their objects and provisions. The sixth section declares the defences that shall be available for a party against whom a patentee has brought suit for the invasion of his right ; but no process or means are given for the examination of a patent- right, however false and fraudulent it may be, if the patentee will be content to forbear to bring a suit against those who use it. He may thus avoid all examination of his right, and he may go on imposing upon the ignorant or timid, and lay 712 PATENT CASES. Delano v. Scott. 1 Gilpin. his unjust contributions upon them. A case is re- [ * 500 ] corded of a patent for using the * common stone coal in a ccJmmon blacksmith's fqrge. The paten- tee went through the country exhibiting his parchment patent with the great seal of the department of Stated and the sig- natures of she high officers of government appended to it. This would naturally alarm an ignorant Smith, and as the pa- tentee would sell him a right for two or three dollars, or for whatever he could get for it, a prudent man would prefer pay- ing so small a sum, rather than go to law with an adversary apparently so well armed. To protect the public from such imppsitions, this tenth section was enacted, and gives the power, to any person, interested or not in the discovery, or the patent, to call upon the patentee for an examination of his right, and have it" repealed, if it shall be found that he is not entitled to it. This proceeding, however, must be in- stituted within three years ; for if the public acquiesces for that period in the claim of the patentee, it shall only be questioned by one against whom a suit is brought for a vio- lation of it, when the defendant will always have the benefit of the defence provided for him by the sixth section of the act. With this explanation of these sections of the Patent Act you will inquire whether the specifications contained in Scott's patent, or any of them, are substantially the same with those used in Delano's chests, or in any other chest, French, Eng- lish, or German, antecedent to Scott's patent, and his claim of invention. I say substantially, for a difference in the manner or form of applying the invention, if it be the same principle, will not jusjify Scott's patent. I have also said, ' or any of thejn,' for the petition and oath claim all and each of them ; and if there be a false suggestion in a material fact, the patent is invalid. So, on another settled principle of law, he must not patent more than his invention, or all is invalid. If you PATENT CASES. 713 Delano v. Scott. 1 Gilpin. hall think that all or any of Scott's specifications were used •efore by Delano, or any other person, his patent can give liin no title to them. But you have to inquire into another question here. Did he defendant obtain his patent " surreptitiously or upon a- alse suggestion ? " If he knew that Delano, or ny other person, had * previously used his pre- [ * 501 ] ended inventions, he certainly obtained his patent ly falsely suggesting that he was the inventor. An import- nt question on the construction of this section of the act ere presents itself ; whether the mere fact that the allega- ion or suggestion of the patentee was false ; that is, that in ruth he was not the inventor, when he alleged that he was ; rill be sufficient to warrant a verdict and judgment against lim, repealing his patent, in this proceeding ; or, whether the omplainant must not go further,'and show that the defendant new that Tie was not the inventor, and of course knew that is allegation was false, and therefore wilfully deceived the overnment and the public in obtaining the patent. When he application in this case was made. to me, in March, 1834, Dr a rule upon the defendant to show cause why process hould not issue to repeal his patent, the question now pro- losed was not much attended to. The argument was more n the mode of proceeding than the merits of the case. In lie opinion (ante, p. 493) I then said, that I considered it to e the settled construction of this section " that the proceed- fig given by it to procure the repeal of the patent, applies nly to cases in which the patent has been obtained by fraud, urreptitiously, by false suggestions, by some wilful misrepre- entation and deception. The mere fact that the patentee ^as not the original inventor of the thing patented, is not iich a false suggestion as is contemplated by the act, (although lere are some words in it which seSm to favor that construe- on,) provided that the patentee, bond fide, believed himself 60* 714 PATENT CASES, Belano v. Scott. 1 Gilpin. to be the true inventor, when he applied for and received his patent, and did not know of any anteciedent use and invention of the thing claimed by him. Tiiere must be an intended deception and fraud upon the government and the public; a wilful wrong to the true inventor." On a further considera- tion of the sijbject, I am led to doubt the correctness of this opinion ; indeed, it is but one of several difficulties which occur, in reconciling the different parts and provisions of this law. The first part of the section unequivocally requires that the oath or affirmation, which is the commence- [ * 502 ] ment of the * proceedings the very foundation of the complaint, shall affirm that the patent " was obtain- ed surreptitiously or upon false suggestions." If I were left to give a meaning to these words alone, with nothing more in the act to show the intention of the legislature, I should ad- here to the opinion that the falsehood alludedto was aknown and wilful untruth, the fraud a surreptitious application, a designed and wilful deception. But when the process has been issued on this affidavit, and the parties appear here, the one to maintain his complaint as set forth in the affidavit, and the other to defend himself against that complaint, which is, that he obtained his patent surreptitiously or by false sugges-* tion, we find the ground of inquiry miich widened, and this Court is directed to render a judgment for the repeal of the patent, "in case no sufficient cause shall be shown to, the contrary, or if it shall appear that the patentee was not the true inventor or discoverer." The manner of obtaining the patent, whether by fraud and falsehood, whether bond fide or surreptitiously, is left out of the case, and it is your duty and mine to repeal the patent on the grounds I have men- tioned. While this obscurity in the law has brought me to doubt the construction I formerly gave to it, I shall nevertheless in* struct you, in your consideration of this case, to take the law PATENT CASES. 715 Delano v. Scott. 1 Gilpin. to be as I held it on the application for this process. I must presume that the defendant has prepared his defence on the law as I then laid it down, and it would be unjust to place him on a worse footing now. He shall have the benefit of my mistake, if it was one, and the other party will have the opportunity, should it be necessary, to have the question more deliberately argued and decided, by this or another Court. For the purpose of this trial you will hold it to be necessary, to justify a verdict against the defendant, that when he applied for and took his patent, he knew that the things, or some of thein, that he claimed as his inventions, had been used before, and were not his discoveries. Knowledge, then, being necessary to bring the defendant under the penalty of this section of the act, we must inquire * what the knowledge is that will be [ * 503 ] sufficient for his condemnation. The complain- ant,in the first place, insists upon the legal or presumptive knowledge arising from the record of Delano's patent, long before that obtained by the defendant. The record of Dela- no's patent and its specification could be no notice of his dis- coveries to Scott, unless there is a substantial identity between the specifications of the two patents. This you will decide. You have them both, and have heard the elaborate arguments of the counsel of the respective parties, affirming and denying this identity. If you shall be satisfied that such identity does exist between the two specifications of Delano and Scott, the question then occurs, whether the record of Delano's patent in the office of the department of State, was such a notice to Scott of that patent and its specifications, as will bring him within the provisions of the tenth section of the Patent Law ? Is it such a knowledge or notice as will render his suggestion or allegation that he was the inventor, surreptitious and false, according to the construction I have given to that section ? Must actual knowledge be brought home to him of a previous 716 PATENT CASES. Delano v. Scott. 1 Gilpin. use or patent of the same inventions ; or will a legal con- struction or presumptive knowledge be sufficient ? With the interpretation I have adopted of this section of the act, a constructive notice of a preceding patent will not be sufficient for the condemnation of the defendant ;, to fix the charge (|f actual falsehood and fraud upon him, actual knowledge must be proved. It is not like the case of a dis- puted right to property between two purchasers, where, if the first buyer has put his deed on record, he has given all the notice of his title the law requires, and a subsequent purchaser who neglects to make the inquiry at the proper place, will buy at his peril.'' ' The case of Odiorne v. Winkley, 2 Gallison, 51, was a suit brought under the sixth section of the act for the invasion of a patent-right. It is probable, however, that' you will make up your opinion respecting the knowledge that Scott had of Delano's inven- tions from the direct evidence in the cause. It is [ * 504 ] certain that Scott * knew Delano had a patent for improvements in making iron chests, and being about to get a patent himself for the^ same object, you will judge whether it is not to be presumed that he did inquire at the Patent Office, what the improvements of Delano were. In addition to this reasonable presumption, much stronger than the ordinary constructive notice afforded by a recorded instrument, you have evidence that Scott Came to Delano's shop as a common smith, having never before been engaged in making iron chests, nor, as far as we know, having ever seen one made; and that, if you are satisfied of the identity of the improvements claimed, the chests of Scott are the same with those he saw made, and assisted in making, in Delano's shop. If this evidence is relied upon, it brings home to Scott the full knowledge of Delano's iniprovements, and, of course, when he obtained a patent for them for himself, he did it sur- reptitiously and by false suggestion. (The judge then reca- PATENT CASES. 717 "Wood V. Williams. 1 Gilpin. pitulated to the jury the prominent parts of the testimony, to show the actual knowledge of the defendant, that the improve- ments he has patented, were those previously patented by Delano', and that he obtained his knowledge of them in De- lano's shop.) The jury found a verdict for the plaintiff. Benjamin Wood v. William Williams. [t Gilpin, 517. November T. 1834.] 1. A controversy, respecting the validity of a patent-right, is one strictly be- tween the parties immediately concerned, although the public may have an eventual interest in it 2. Under the Patent Laws, the United States are not a party in a litigation re- specting the validity of any rights claimed or denied by virtue of those laws. 3. Where the district Court, under the provisions of the Act of 21st February, 1793, orders a scire facias to be issued against a patentee, on the prayer of a petitioner, they wiU not permit the United States to be substituted as plaintiffs in the place of the petitioner. On the 23d May, 1834, a rule was granted on the defend- ant, to show cause vt^hy process should not be issued to re- peal his patent, for a certain machine for hulling and clear- ing clover seed ; under the provisions of the tenth section of the Act of Congress of 21st February, 1793, 1 Story's Laws, 303. On the 9th December, 1834, the case was argued by Meredith, for the plaintiff, and KUttera, for the defendant. 718 PATENT CASES. Wood V. Williams. 1 Gilpin. Meredith, for the plaintiff. The affidavit of the plaintiff, on which the rule was granted, was read. ^This affidavit was not received as evidence, but read, de bene esse, by consent. The depositions of several witnesses, taken under a rule of Courtj were also read to sup- port the molion. Kittera, for the defendant. It is denied that either the deposition of the plaintiff on which the rule was granted, or a subsequent deposition made by him, is any evidence on this hearing. If the other testi- mony of the plaintiff furnishes a probable case against the defendant, then the scire yacias will be issued ; otherwise the pVocess will be refused. The facts of the case do not furnish such a one as will warrant the process prayed for. [ * 518 ] Meredith, for the plaintiff, in reply. The deposition of the plaintiff is evidence on this hear- ing. This is a prosecution, by the government of the United States, to repeal a patent improvidently issued by them ; and the complainant is but the mover of the proceeding. The opinion of this Court, in the case of Delano v. Scott, (ante, p. 492,) shows that the original affidavit, on which the rule was granted, is good evidence at this hearing. Judge HoPKiNSON delivered the following opinion : No such thing was decided, or intended to be so, in that case. No such question was raised. In my opinion, I refer- red to the affidavit of the complainant, as exhibiting the ground of the application, and showing the allegations of the complainant against the defendant. I then proceeded to state the evidence by which the complainant "had maintained his allegations; to wit, 1. A certain patent; 2. Depositions of witnesses. The affidavit of the complainant-is not mentioned PATENT CASES. 719 Wood V. Willlama. 1 Gilpin. as any part of the testimony. The paragraph quoted, towards the conclusion of the opinion, is a simple declaration, that the defendant had given no evidence to contradict the allegations of the complainant in his affidavit. From this it cannot be inferred that the affidavit was a part of the evidence on which the Court acted. Whether, under the Act of Congress, this affidavit would be sufficient primd facie evidence, to call for some proof on the part of the defendant, and would be enough to grant the process upon, if not impeached or contradicted, is a question that remains open. Meredith, in continuation. It is contended that, on a full examination of the depositions produced, they are sufficient to sustain this application with- out the complainant's affidavit. Judge HopKiNsoN observed that there was sufficient cause on the other depositions, exclusive of that of the complain- ant, which he put out of the case, without giving any opinion on * its competency. It was unneces- [ * 519 ] sary. A probable case had been made out against the defendant. Rule made absolute, and process in the nature of a scire facias ordered to issue. Afterwards the counsel for the complainant, previous to taking out the scire facias as above ordered, moved the Court for an order,, that the cause be recorded and docketed, as an action wherein the United States are plaintiffs and William Williams is the defendant, and that the process of scire facias be issued as between those parties. After hearing the argument, on the 9th December, 1834, 720 PATENT CASES. Wood V. Williams. 1 Gilpin. for this motion, Judge Hopeinson delivered the following opinion : The petitioner, in this case, has so far sustained his com- plaint, in the manner prescribed by the Act of Congress, that process has been ordered to issue against the said William Williams to«epeal his patent. This process is a ^cire facias, and, previous to taking it out, the complainant has moved for an order, that the cause be now recorded or docketed, as an action wherein the United States, are plaintiffs, and the said William Williams is the defendant ; and that the process of sdre facias be issued as between these parties. No decision or practice, under the Patent Laws of the Uni- ted States, has been adduced to support this motion ; but a reliance is had upon the practice in the Courts, of England, in cases for the repeal of patents. The whole proceeding, both for obtaining a patent, and for revoking it, is so different in England from that prescribed by our law; the character aird foundation of the right, are so dissimilar in the two coun- tries, that we cannot look, for a rule on this question, to the Courts of England ; especially if, upon an examination' of our act, we shall there find such an indication of the course of proceeding intended to be given, as will guide us through the present difficulty. In the case of Stearns v. Barrett, 1 Mason, 153, Judge Story adverts to the difference between our Patent Laws and those of England. He says, " A scire facias is a process altogether confined to the crown, with the exception of the sbgle case, where two patents [ * 520 ] * have issued for the same thing, in which case the prior patentee may maintain a sdre facias to repeal the second patent. But under our Patent Act, any person, whether a patentee or not, may apply for the repeal. There are other differences which it is not now necessary to enu- merate." I shall not find it necessary to go further than the Act of PATENT CASES. 721 Wood V. Williams. 1 Gilpin. Congress, and the practice that has been adopted under it, so far as I have been able to obtain a knowledge of it, for the decision of the question now under consideration. This sim- ply is, when process has been ordered and issued, by this Court, for the repeal of a patent, -and the allegations, upon which the process was ordered, are to be put in a shape for trial, who are the parties to the suit ? By and between whom is the issue to be made ? Are the United States to be intro- duced as the plaintiiTs to maintain the issue, to prove the truth of these allegations against the patentee, who is, of course, the defendant ? Is th& petitioner or complainant, at whose instance and on whose affidavit of the truth of the cause of complaint, the proceeding was commenced, who called upon the patentee to answer the complaint, at whose prayer the process was granted, who, up to this point, has appeared alone as the adversary of the patentee, now to withdraw himself from the record and the case, and, at his pleasure, without the cooperation or assent of any officer or authority of the United States, to put them in his place to carry on the war which he has provoked ; which he only has the means of sus- taining, or ought to have had when he commenced it ? On a careful ' review of the Patent Laws of the United States, I have found no indication of an intention, that the United States are to be brought in as a party to a litigation, respecting the validity of any rights claimed or denied under those laws. On the contrary, these rights are considered as the private rights of the party who has duly obtained them, and are afterwards to be impeached and defended as such. The parties to every suit for the trial of the right are the pe- titioner, on whose complaint the inquiry was insti- tuted, and the patentee who asserts the * right. The [ * 521 1 first is bo^nd to make good his allegations that the patent was obtained surreptitiously, or upon false suggestions, and the other to defend himself against them. It is a contro- VOL. I. — p. c. 61 722 PATENT CASES. Wood V. 'Willialns. 1 Gilpin. versy strictly between these parties, although the public may have an eventual interest in it. They have the same inte- rest in every suit, in which the validity of a patent is contest- ed ; for if it be defeated, the pretended invention becomes a common property, as fully as if the letters-patent had beeii repealed bjb \he proceeding here adopted. The proceeding, now in progress before the Court, was in- stituted under the authority and directions of the tenth sec- tion of the Act of 21st February, 1793. Do any of the pro- visions of this section give any countenance to the motion of the complainant ? The first step in the proceeding to obtain the repeal of a patent, is an oath or affirmation, made before the District Judge by the petitioner for the repeal, that the patent was obtained surreptitiously, or upon false suggestions^ Upon this the judge, if the matter alleged appear to him to be sufficient, shall grant a rule, that the patentee show cause why process should not issue against him to repeal such pa- tent. If, on the return and hearing of this rule, the cause shown to the contrary shall not be sufficient, the judge shall order process to be issued against the patentee. This pro- cess is a scire facias, upon which an issue is made, of fact or law as the case may be, and, on the trial, the petitioner or complainant is bound to make good the allegations con- tained in his petition and verified by his affidavit. He must prove affirmatively that the patent was obtained surrepti- tiously or upon false suggestions. The issue being thus tried, what is the judgment which, by the directions of the act, the Court must render, as it is determined, for the one party or the other ? If it shall be against the patentee, the judgment is, that his patent be repealed ; " and if the party, (so he is denominated) at whose complaint the process issued, shall have judgment against him, he shall pay all such costs as the defendant shall be put to, in defending the suit, to be taxed by the Court." PATENT CASES. 723 "Wood V. Williams. 1 Gilpin. * Is it not clear that the makers of this law consi- [ * 522 ] dered the parties before the Court, the parties to the suit commenced by the process of scire facias, to be the peti- tioner or complainant, now the plaintiff, on the one side, and the patentee, now the defendant, on the other ? There is no meaning in the language of the act, on the other construc- tion. The complainant is expressly called the party, against whom, if the complaint is not sustained, the judgment of the Court is to be rendered ; and who, by that judgment, is to be compelled to pay the costs of the patentee or defendant, as in other cases. Can the judgment in any suit be rendered against a person not a party to it ? Is any one of these pro- visions consistent with the idea, that the United States are, at any stage of the proceeding, to be brought in by the motion of the complainant, and put upon the record as the plaintiffs in the suit, to have a judgment for costs rendered against them as " the party at whose complaint the process issued." The person or party, at whose complaint the process did issue and who was bound to sustain the allegations upon which it was issued, withdraws himself, on his own motion, from the controversy, and puts the United States there in his place, to suffer the penalty of his failure to support his own cause of action or complaint. The judgment is to be rendered against the party at whose complaint the process issued, and this cannot be done, unless the same party is also the party to the suit when the issue is tried and the judgment upon it rendered. The Act of the 7th June, 179d, was passed to restore suits which had been commenced under the Act of 10th April, 1790, and had been suspended or abated by the repeal of that law. The enactment is, that such suits and process may be restored at the instance of the plaintiff or defendant, and " the parties to the said suits, actions, process, or proceedings are entitled to proceed, provided that, before any order or 724 PATENT CASES. Wood V. Williamg. 1 Gilpin. proceeding, other than for continuing said suits, after the re- instating thereof shall be entered or had, the defendant or plaintiff, as the case may be, against whom the same may have been reinstated, sliall be brought into Court [ * 523 ] by summons, attachment, or such other * proceed- i% as is issued in other cases, for compelling the appearance of a party." Assuredly this provision was never intended for a suit to which the United States are a party ; nor could the Court compel their appearance by summonsj attachment, or any other proceeding. The complainant and the patentee are clearly considered by this act to be the par- ties plaintiff and defendant in the suit. The practice of the Courts, so far as I have obtained a knowledge of it, is in conformity with this view of the law. The case of Stearns v. Barrett, 1 Mason, 153, stands on the docket, as reported, as a suit between the complainant and the patentee. Upon the return of the scire facias, the pa- tentee, (that is, Barrett,) as the defendant, pleaded, " that his letters-patent were not upon false suggestion or surreptitiously obtained, as set forth in the said writ, and thereof he puts himself upon the country ; and the plaintiff (that is, Stearns) puts himself, as to this issue, upon the country likewise." Upon the issue thus formed the parties, that is, Barrett and Stearns, went to trial before a jury. A special verdict was returned, in which the complainant and patentee, and nobody else, are treated and spoken of as the parties plaintiff and defend- ant. The jury find that the plaintiff has not supported his allegations, and therefore they find for the defendant; and accordingly, the judgment of the Court was rendered for the defendant. The learned judge, throughout a long exa- mination of the case, on several controverted points, uni- formly, as the jury in their verdict had done, speaks of the complainant and the patentee, as the plaintiff and defendant in the suit, and no other party is alluded to, PATENT CASES. 725 Ryan et al. v. Goodwin et al. 3 Sumner. The clerk of this Court has examined its records, and pro- duced several actions for the repeal of patents. Some of them are upon motions for process, and some after the scire facias has issued. In all, the parties are stated on the record to be the complainant, as the plaintiff; and the patentee, as the defendant. Not an instance, in which the United States were introduced as the plaintiffs, or, in any other way, as a party to the * proceeding or suit,«has been [ * 524 ] shown by the counsel for this motion, or come to the knowledge of the Court. - The motion was overruled. Ryan and Others v. Goodwin and Others. [3 Sumner, 514. May T. 1839.] It is not necessary to the validity of a patent for a new and useful invention, that any of the ingredients should be new or unused before for the purpose. The true question is, whether the combination of materials by the patentee is substantially new. The public use or sale of an invention, in order to deprive the inventor of his right to a patent, must be a public use or sale by others, with his knowledge and consent, and before his application therefor. A sale or use of it, with such knowledge or consent, in the intermediate time between the application for a patent and a grant thereof, has no such effect. The Court will give a liberal construction to the language of all patents and specifications ; and will, in all cases, by taking the whole together, adopt *that interpretation of a specification, which will give the [*515] fullest effect to the nature and extent of the claim made by the inventor. The inventor of a new compound, wholly unknown before, is not limited to the use always of the same precise ingredients in making that compound ; and if the same purpose can be accomplished by him by the substitution in part of other ingredients in the composition, 'v^ch have never been so used before, 61* 726 PATENT CASES. Eyan et al. v. Goodwin et al. 3 Snmner. he is at liberty to extend liis patent so as to embrace them also. Thus, where an inventor claimed as his invention the combination of phosphorus with chalk, or any other absorbent earth or earthy material, and glue, or any otlier ght- tinous substance, using the materials in the proportions substantially as set forth in the^ specification, in making matches ; it was held, that the patent was not void as being too broad, and comprehensive. Case for an infringement of a patent for " a new and useful improvement in the manufacture of friction matches for the instantaneous production of light." Plea, the general issue ; with notice of special matters of defence. At the trial, it ap- peared, that the patent was obtained by Alonzo D. Phillips, of Springfield, Massachusetts, on the 24th of October, 1836, and had since been assigned to the plaintiffs. The common proofs, that Phillips was the inventor ; that it was a useful invention ; and that the defendant had used the same, were all offered to the jury. The defence turned upon the following points, which were stated in the special notice. 1. That Phillips was not the original inventor. 2. That the invention was publicly known, and in public use in divers parts of the United States, (specifying the places and persons,) before the supposed invention of the plaintiff. 3. That the invention was in public use, and the sale with the consent and allowance of Phillips in divers parts of the United States, and particularly in Massachusetts, Connecticut, New Hampshire, New York, and Philadelphia, before the application of Phillips for a patent therefor, specifying the names of the persons, who so used and sold the same. 4. That the specification annexed to the patent was vague, ambiguous, and uncertain, and did not describe in a full, clear, and^exact manner, and [*516] with sufficient * certainty, the invention, and the- manner of making and compounding the matches ; and that the use of chalk, carbonate of lime, or other ab- sorbent earths or materials, referred to in the specification, was wholly unnecessary and useless, and designed to mislead and deceive the public. 5. That the claim for inventing a PATENT CASES. 727 Ryan et al. v. Goodwin et al. 3 Sumner. mode of putting up the matches was frivolous, and the method not new. The specification was in the following words : -^ "To ALL WHOM IT MAY CONCERN. Be it knowu that I, Alonzo D. Phillips, of Springfield, in the county of Hamp- den, and State of Massachusetts, have invented certain new and useful improvements in the mode of manufacturing fric- tion matches, for the instantaneous production of light, which improvements consist in a new composition of matter for pro- ducing ignition, and in a new mode of putting the matches up for use, by which the danger of ignition from accidental friction, or from other causes, is obviated. And I do hereby declare that the following is a full and exact description thereof. " The composition used in preparing the matches usually called loco-foco, and which light by slight friction, is a com- pound of phosphorus, chlorate of potash, sulphuret of anti- mony, and gum arabic or glue. That which I use consists simply of phosphorus, chalk, and glue, and in preparing it I use the ingredients in the following manner and proportions. I take one ounce of glue and dissolve it by the aid of water and heat, in the usual manner ; to this glue I add four ounces of finely pulverized chalk or Spanish white, stirring it in so as to form a thick paste. I then put in one ounce of phosphorus, keeping the materials at such a degree of heat as will suffice to melt the phosphorus, and incorporate the whole together. Into this composition the matches are dipped, after being previously dipped in sulphur in the usual manner. The composition may be varied in its proportions, but those I have given I consider the best. The ingredients also may be varied ; as gum arabic * or other gum may [ * 517 ] be substituted for glUe, and other absorbent earths, or materials may be used instead of the carbonate of lime. " In order to prevent the danger from accidental ignition, I 728 PATENT CASES. Hjaa et al. v. Goodwin et al. 3 Sumner. prepare the pine wood for my matches in the following man- ner. I cut my pine into thin slabs about the usual thickness of veneers ; these I cross-cut into lengths for matches, and by means of gangs of circular saws, cut these comb fashion and lengthwise of the grain of the wood leaving a portion of one end uncut, 4>olding the strips together like the back of a comb ; the number of matches on each slab may be about a dozen. These are then dipped in the sulphur, and afterwards in the above named composition, a^d put up for sale by lay- ing the slabs upon long slips of paper, cut wide enough to lap over the ends of the matches ; the slabs are then doubled up in the paper, much in the manner of papering pins. A slab, when wanted, may be taken out without disturbing the remainder, and the paper effectually removes all danger from friction. " What I claim as my invention, is the using of a paste, or composition to ignite by friction, consisting of phosphorus, an.d earthy material, and a glutinous substance only, without the addition of chlorate of potash or of any highly combusti- ble material, such as sulphuret of antimony in addition to phosphorus. I also claim the mode herein described of putting up the matches in paper, so as to secure them from accidental friction." The case was argued to the jury by iS D. Parker and E. Smith, Jr., for the plaintiffs, and by Rand and Fiske for the defendants. Story, J., in summing up to the jury, said : — The main points of the defence are, — 1. That the invention claimed in the letters-patent is not new. 2. That if new, the patentee had suffered his invention to be in public use and [*518] on public * sale, long before his application for a patent. 3. That the terms of the specification are PATENT CASES. 7 29 Eyan et al. v. Goodwin et al. 3 Sumner. too vague and indefinite, and the claim too broad to support the patents As to the first point, it is mainly a question of fact. It is certainly not necessary, that every ingredient, or, indeed that any one ingredient used by the' patentee in his invention, should be new or unused before for the purpose of making matches. The true question is, whether the combination of materials by the patentee is substantially new. Each of these ingredients may have been in the most extensive and common use, and some of them may have been used for matches, or combined with other materials for other purposes. But if they have never been combined together in the manner stated in the patent, but the combination is new, then, I take it, the invention of the combination is patentable. So far as the evidence goes, it does not appear to me, that any such com- bination was known, or in use before Phillips's invention. But this is a matter of fact, upon which the jury will judge. The combination is apparently very simple ; but the simplicity of an invention, so far from being an objection to it, may constitute its great excellence and value. Indeed, to produce a great result by very simple means, before unknown or un- thought of, is not unfrequently the peculiar characteristic of the very highest class of minds. As to the second point, it is clear by our law, whatever it , may be by the law of England, that the public use or sale of an invention, in order to deprive the inventor of his right to a patent, must be a public use or sale by others with his knowledge and consent, before his application therefor. If the »se or sale is without such knowledge or consent, or if the use be merely experimental, to ascertain the value or utility, or success of the invention, by putting it in practice, that is not such a use, as will deprive the inventor of 730 PATENT CASES. Byan et al. i>. Goodwin et aL 3 Samser. [*519] his title. Our law^ also requires, * that the use or sale should not only be with the knowledge and consent, of the inventor, but that it should be before his ap- plication for a patent. A sale or use of it with such know- ledge or consent, in the intermediate time between the appli- cation for a, patent and a grant thereof, has no such effect. It furnishes no foundation to presume, that the inventor means to abandon his invention to the public ; and does not, because it is not within the words of our act, create any sta- tute disability to assert his right to a patent. It appears from the evidence in the present case, that as early as the 15th of February, 1836, Phillips procured an original specification of his invention to be drawn up, and an application was there- upon made to the proper office for a patent. It does not appear, that any use or Sale was allowed to be made by Phil- lips of his invention until some time afterwards, namely, in March, 1836. The delay in obtaining the patent, which was not granted until October, 1836, was solely owing to certain defects in the original specification, which was returned to the inventor, and afterwards was amended and sent back to the Patent Office. Now, if this be the real state of the facts, (and of this the jury will judge) it seems clear, that in point of law the second objection falls to the ground ; for no use or sale is shown with the knowledge and consent of the inventor, until after he had made an application for a patent. Then as to the third point. This turns upon the supposed vagueness, and ambiguity, and uncertainty of the specifica- tion and claim of the invention ther;eby. The specification, after adverting to the fact, that the loco-foco matche|, so called, are a compound of phosphorus, chlorate of potash. 1 Act of 1793, oh. 65, sects. 3, 6. Act of 1836, ch. 357, sects. 6, 15. Pennock ». Dialogue, 2 Peters, K. 1 ; ante, 542. PATENT CASES. 731 Byan et al. v. Goodwin et al. 3 Sumner. sulphuret of antimony, and gum arable or glue, proceeds to state that the compound which he (Phillips) uses, " consists simply of phosphorus, chalk, and glue ; " and he then states the mode of preparing the compound, and the proportions of the ingredients ; so that as here steted, the essential difference between his own matches and those called loco- foco, consists in the omission of chlorate * of potash [ * 520 ] and sulphuret of antimony, and in using in lieu thereof chalk. He then goes on to state, that " the propor- tions of the ingredients may be varied, and that gum arable, or other gum, may be substituted for glue ; and other absor- bent earths or materials may be used instead of the carbonate of lime." He afterwards sunls up his invention in the fol- lowing terms. " What I claim as my invention is the using of a paste or composition to ignite by friction, consisting of phosphorus, and [an] earthy material, and a glutinous sub- stance only, without the addition of chlorate of potash, or of any other highly combustible material, such as sulphuret 'of antimony, in addition to the phosphorus. I also claim the mode herein described of putting up the matches in paper, so as to secure them from accidental friction." Upon this last claim I need not say any thing, as it is not in contro- versy, as a part of the infringement of the patent, upon the present trial. Now, I take it to be a clear rule of our law in favor of inventors, and -to carry into effect the obvious object of the Constitution and laws in granting patents, " to promote the progress of science and useful arts," to give a liberal con- struction to the language of all patents and specifications, (ut res niagia valeat, quam pereat,) so as to protect, and not to destroy the rights of real inventors. If, therefore, there be any ambiguity or uncertainty in any part of the specification ; yet, if taking the whole together, the Court can perceive the exact nature and extent of the claim made by the inventor, it 732 PATENT CASES. Byan et al. v. Goodwin et al. 3 Snmner. is bound to adopt that interpretation, and to give it full effect. I confess, that I do not perceive any ground for real doubt in the present specification. The inventor claims as his inven- tion the combination of phosphorus with chalk or any other absorbent earth, or earthy material, and glue, or any other glutinous substance in making matches, using the ingredients in the proportions, substantially as set forth in the specifica- tion. Now, the question is, whether such a claim [ * 521 ] is good, or whether it is void, as being too * broad and comprehensive. The argument seems to be, that the inventor has not confined his claim to the use of chalk, but has extended it to the use of any other absorbent earths or earthy materials, which is too general. So, he has not confined it to the use of glue, or even of gum arable, but has extended it also to any other gum or glutinous substance, which is also too general. Now, it is observable, that the Patent Act of 1793, ch. 55, does not limit the inventor to one single iriode, or one single set of ingredients, to carry into effect his invention. He may claim as many modes, as he pleases, provided always, that the claim is limited to such as he has invented, and as are substantially new. Indeed, in one section, (§ 3,) the act requires, in the case of a machine, that the inventor shall fully explain the principle, and the several modes, in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions. The same enactment exists in the Patent Act of 1836, ch. 357, sec. 6. I do not know of any prin- ciple of law, which declares, that, if a man makes a new compound, wholly unknown before for a useful and valuable purpose, he is limited to the use of the same precise ingredi- ents in making that compound ; and that, if the same purpose canr" be accomplished by him by the substitution in part of other ingredients in the composition, he is not at liberty to extend his patent so as to embrace them also. It is true, that PATENT CASES. 733 Kyaa et aL v. Goodtrin et al. 3 Sumner. in such a case he runs the risk of having his patent avoided, if either of the combinations, the original, or the substituted, have been known or used before in the Hke combination. But, if all the various combinations are equally new, I do not perceive how his claim can be said to be too broad. It is not more broad than his invention. There is no proof in the present case, that the ingredients enumerated in this specifi- cation, whether chalk, or any other absorbent earth, or earthy substance, were ever before combined with phosphorus, and glue, or any other gum or other glutinous substance, to produce a compound for matches. The * ob- [ * 522 ] jection, so far as it here applies, is not, that these gums or earths have been before so combined with phospho rus, but that the inventor extends his claim, so as to include all such combinations. There is no pretence to say, upon the evidence, that the specification was intended to deceive the public, or that it included other earthy materials than chalk, or other glutinous substances than glue, for the very purpose of misleading the public. The party has stated frankly, what h&deems the best materials — phosphorus, chalk, and glue, and the proportions and mode of combining them. But, because he says, that there may be substitutes of the same general character, which may serve the same purpose, thereby to ex- clude other persons from evading his patent, and depriving him of his invention, by using one or more of the substitutes, if the patent had been confined to the combination solely of phosphorus, chalk, and glue, I cannot hold that his claim is too broad, or that it is void. My present impression is, that the objection is not well founded. Suppose the invention had been of a machine, and the inventor had said, I use a wheel in a certain part of the machine for a certain purpose, but the same effect may be produced by a crank, or a lever, or a tog- gle joint, and therefore I claim those modes also ; it would hardly be contended, that such a claim would avoid his i)a- voL I. — p. c. 62 734 PATENT CASES. Blancbard v. Spragne. 3 Snmner. tent. I do not know, that it has ever been decided, that, if the claim of an inventor for an invention of a compound states the ingredients truly, which the inventor uses to pro- duce the intended effect, the suggestion, that other ingredi- ents of a kindred nature may be substituted for some part of them, has bgen held to avoid the patent in toto, so as to make it bad, for what is specifically stated. In the present case it is not necessary to consider that point. My opinion is, that the specification is not, in point of law, void, from its vague- ness, or generality, or uncertainty. The jury found a verdict for the plaintiff. Judgment accordingly. Thomas Blanchakd v. Chandler Sprague. [3 Sumner, 535. May T. 1839.] Patents are entitled to a liberal construction, since tbey are not granted as restrictions upon the rights of the community, but " to promote science and useful arts." A patent ■mil not be valid, which is simply for a principle or function detached from machinery. Congress has general power, under the Constitution of the United States, to grant patents to inventors ; and it rests in the sound discretion of Congress to say, when and for what length 6f time, and under what circumstances, the patent for an invention shall be granted. Therefore, an Act of Congress, granting a patent, was not unconstitutional, though it operated retrospec- tively to give a patent for an invention, which, though made by the patentee, was in public use, and enjoyed by the community at the time of the passage of the act. A patent was granted by Act of Congress of 1834, ch. 213, but declared void by the Court, on the ground of a defect in the act. Afterwards the grant of the patent was renewed by another Act of Congress, (1839, ch. 14.) Qucere, whether the latter act would be constitutional, if it gave damages for the construction or use of the machine before the grant of the patent under the act. An act of Congress ought to be construed so as not to operate retrosjectively ox ex post facto, unless that construction is unavoidable. PATENT CASES. 735 Blanchard v. Sprague. 3 Sumner. Case for violation of a patent-right. An action between the same parties for an alleged violation of a patent under the Act of Congress of 1834, ch. 213, was dismissed at a former term. (See ante, p. 33.) Since then a new grant of letters- patent was made by Act of Congress, 1839, ch. 14, under which the present action was brought. • i The plaintiff's declaration set forth the grant of letters- patent to him for his invention, on the 6th of September, 1819; that these letters were cancelled, being deemed inope- rative by reason of a defective specification, happening through inadvertency and mistake, without any fraudulent or deceptive intention ; that new letters-patent for the same invention were granted to him on the 20fh of January, 1820, for the term of fourteen years ; * that [ * 536 ] afterwards, by an Act of Congress, passed the 30th of June, 1834, there was granted to the plaintiff the right of making, using, and vending his invention, for the term of fourteen years from January 12, 1834, which in the said act was described as "An invention of a machine for turning or cutting irregular forms," a description of which is given in a schedule or specification, annexed to the letters-patent granted to the plaintiff for the said invention, which said letters-patent are in the said act by mistake stated to have been granted on the 12th of January, 1820, when in fact, the letters-patent last above-mentioned were meant and intended to be referred to; that by an Act of Congress, passed 6th of February, 1839, entitled "An Act to amefidand carry into effect an act entitled an act to renew the patent of Thomas Blanchard," approved , June 30th, 1834, it was enacted, that the rights secured to the plaintiff by letters-patent granted on the 6th of September, 1819, and afterwards on a corrected specifica- tion on the 20th of January, 1820, be granted to the plaintiff for the further term of fourteen years from January 20th, 1834 ; and the declaration alleged an infringement by the 736 PATENT CASES. Blanchard v. Sprague. 3 Samner. defendant by using the machine within the terra mentioned in the last act. These are the material parts of the declara- tion, which recited at length both the acts last referred to, and set forth the above facts. The facts, so far as they related to- the granting of the letters-paten^ and the acts passed with a view to the renewal of them, were not contested. The second lettera-patent were granted before the Act of July 3d, 1832. The plaintiff, in his specification declared, that " as to the mechanical powers, by which the movements are obtained, he claims none of them as his invention. These movements may be effected by application of various powers indifferently. Neither does he claim as his invention the cutter wheel or cutters, or friction wheel as such, nor the use of a model to guide the cutting instrument as his invention. All [ * 537 ] these are common * property, and have been so for years, but he claims as his invention the method or mode of operation in the abstract explained in the second articlfe, whereby the infinite variety of forms, described in general terms in this article, may be turned or wrought." In another part of his specification he said : " In explaining and describing the different modes, in which he contemplates the application of the principle or character of his said machine, or invention, he does this in compliance with the require- ments of the law, and not by way of extending his claim for discovery or invention. His invention is described and ex- plained in the second article of this specification, to which reference is hereby made for information of that which con- - stitutes the principle or character of his machine or invention, and distinguishes it, as he verily believes, from all other ma- chines, discoveries, or inventions, known or used before." In the second.artiole, to which he refers, the plaintiiT ex- plained the principle and character of his machine, and the mode of constructing it to effect the different objects to be PATENT CASES. 737 Blanchard v. Sprague. 3 Samner. accomplished, and the mode of operation. This was done at considerable length. The parties agreed to submit the matters of fact in dispute to a master, instead of a jury, who was to report the facts and his opinion thereupon to the Court, in order that his report might be acceipted or rejected, as might be deemed right upon a revision of the evidence to be reported, and that the Court might decide upon the whole case for the plaintiff or the defendant ; and if the decision should be for the plaintiff, damages were to be assessed according to an agreement between the parties. After the examination of a great number of witnesses, most of whom were practical engineers or machinists, occupying the greater part of eighteen days, and hearing the counsel on both sides, upon the various questions raised, the master reported the facts, and the testimony and proofs, from which he drew his * conclusions. And upon the first [ * 538 ] quiestion, whether the plaintiff's specification was couched in terms so full, clear and exact, as to distinguish it from all other inventions, and to enable any machinist, rea- sonably and competently skilled in the business, to construct the machine, in all its forms, from the directions there given and Olher drawings annexed, the master reported his opinion in the affirmative. Upon the second question, whether there was a mode, clearly described in the specification of con- strupting a machine capable of producing, from one model or pattern, different sizes, preserving the proportions as stated in the specification, he reported that a mode was described of effecting it sufficiently near for all practical purposes. Upon the third question, whether the machine patented and claimed, or any material part thereof, was known or used before the invention thereof by the plaintiff, and particularly, whether it was so known to one Woolworth, he reported in the negative. Upon the fourth question, whether the rights 62* tSS PATENT, GASES. Blanchard v. Spragne. 3 Sumner. secured as alleged in the declaration, had been infringed by the defendant, he reported in the afl5rmative, and assessed damages at $521.27. Upon the hearing before the Court upon the whole case, it was contended by the counsel for the defendant, J:hat the plaintiff's sfrecification was defective, that he claimed the functions of the machine, and not the machine itself, and that the description of the machine, so far as it related to the making of things of different sizes from the same model, as well as to the designation of what was intended to be claimed, was unintelligible and wholly insufficient. It was also con- tended, that the last act for renewing the letters-patent was inoperative, inasmuch as it granted only the rights secured by the patents of September 6, 1819, and January ^Otfa, 1820, both of whidh were supposed to be void ; and that the act was also retrospective, so far as it regarded those who had used the machine between the time of the expiration of the letters'-patent and the renewal of them by the last men- tioned act. [ * 539 ] B. Rand and Fiske, for the plaintiff. Willard Phillips and Parsons, for the defendant. Story, J. My opinion is, that the master has drawn the true conclusions from the facts, which are stated in his re- port; and I have not the slightest hesitation in adopting them as the basis of my own opinion. The objections, which have been taken at the argument to the present patent granted to the plaintiff by the Act of Congress of the 6th day of Febru- ary, 1839, ch. 14, 1 shall now proceed to dispose of, in as few words as may be practicable. In the first place, as to the point, whether the plaintiff has sufficiently expressed in his specification the true nature, character, and extent of the inveijtion, which he claims. 1 am of opinion that he has. PATENT CASES, 739 Blanchard v. Sprague. 3 Sumner. Formerly, in England, courts of law were disposed to indulge in a very close and strict construction of the specifications, accompanying patents, and expressing the nature and extent of the invention. This construction seems to have been adopted upon the notion, that patent-rights were in the nature of monopolies, and, therefore, were to be narrowly watched, and construed with a rigid adherence to their terms, as being in derogation of the general rights of the community. At present a far more liberal and expanded view of the sub- ject is taken. Patents for inventions are now treated as a just reward to ingenious men, and as highly beneficial to the public, not only as holding out suitable encouragements to genius and talents and enterprise, but as ultimately securing to the whole community great advantages from the free com- munication of secrets, and processes, and machinery, which may be most impcfftant to all the great interests of society, to agriculture, to commerce and to manTifactures, as well as^to the cause of science and art. In America, this liberal view of the subject has always been taken ; and, indeed, it is a natural, if not a necessary result, from the very language and intent of the power given to Congress * by the Constitution, on this sub- [ * 540 ] ject. " Congress " (says the Constitution) " shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclu- sive right of their respective writings and discoveries." Pa- tents then are clearly entitled to a liberal construction, since they are not granted as restrictions upon the rights of the community, but are granted " to promote science and useful arts." Looking at the present specification, and construing all its terms together, I am clearly of opinion, that it is not a patent claimed for a function ; but it is claimed for the machine spe- cially described in the specification ; that it is not for a mere 740 PATENT CASES. Blanchard v. Spragae. 3 Sumner. function but for a function as embodied in a particular ma- chine, whose mode of operation and general structure are pointed out. < In the close of his specification, the patentee explicitly states, that his " invention is described and ex- plained i(i the second article of his specification, to which reference is jpade for information of that, which constitutes the principle or character of his machine or invention, and distinguishes it, as he verily believes, from all other machines, discoveries, or inventions known or used before." Now, when we turn to the second article, we find there described, not a mere function, but a machine of a particular structure whose modes of operation are pointed out, to accomplish a particular purpose, function, or end. This seems to me suffi- ciently expressive to define and ascertain, what his inveiltion is. It is a particular machine, constituted in the way pointed out, for the accomplishment of a particular end or object. The patent is for a machine, and not for a principle or func- tion detached from machinery. Then it is objected, that the description of the mode of constructing the machine is so defective, that it is not practi- cable for persons skilled in the art or science to which it be- longs or relates, to construct the machine. This objection is put an end to by the master's report, and the facts there stated by intelligent witnesses. [ * 541 ] * Then, it is suggested, that the grant of the pa- tent by the Act of Congress of 1839, ch. 14, is not constitutional; for it operates retrospectively to give a patent for an inventjon, which,.though.made by the patentee, was in public use and enjoyed by; the community at the time of the passage of the act. But this objection is fairly put at rest by the decision of the Supreme Court in the case of the patent of Oliver Evans. Evans u. Eaton, (3 Wheat. R. 545.)^ 1 See, also, Evans v. Eaton, 7 Wheat. K. 356, ante, 336 ; Evans v. Het- ticb, Id. 453, ante, 417. PATENT CASES. 741 Blanchard v. Spragne. 3 Sumner. For myself, I never have entertained any doubt of the consti- tutional authority of Congress to make siich a grant. The power is general, to grant to inventors ; and it rests in the sound discretion of Congress to say, when and for what length pf time and under what circumstances the patent for an invention shall be granted. There is no restriction, which limits the power of Congress to enact, where the invention has not been known or used by the public. All that is required is, that the patentee should be the inventor.^ The only remaining objection is, that the act is unconstitu- tional, because it makes the use of a machine constructed and used between the time of the passage of the Act of 1834, ch. 213, and the grant of the patent under the Act of 1839, ch. 14, unlawful, although it has been formerly decided, that under the Act of 1834 the plaintiff had no valid patent; and so the defendant, if he constructed- and used the machine during that period, did lawful acts, and cannot now be retro- spectively made a wrong-doer. If this were the true result of the language of the act it might require a good deal of consideration. But I do not understand, that the act gives the patentee any damages for the construction or use of the machine, except after the grant of the patent under the Act of 1839, ch. 14. If the language of the act were ambiguous, the Court would give it this construction, so that it might not be deemed to create torts * retrospec- [ * 542 ] tively, or to make men liable for damages for acts, lawful at the time when they were done. The act of Con- gress passed in general terms ought to be so construed, if it may, as to be deemed a just exei;cise of constitutional au- thority. And not only so, but it ought to be construed, not to operate retrospectively, or ex post facto, unless that con- 1 Ibid. 742 PATENT CASES. . ^ — — — I Blanchard v. Spragne. 2 Story. struction is uiiavoidable ; for even if a retrospective act is, or may be constitutional, I think I may say, that, according to the theory of our jurisprudence, that interpretation is never adopted without absolute necessity ; and courts of justice always lean to a more benign construction. " But, in the present case,*there is no claim for any damages, but such as have accrued to the patentee from a use of his machine since the grant of the patent under the Act of 1839, ch. 14. I am, therefoi-e, of opinion, that there ought to be judg- ment for the plaintiff for the damages, agreed by the parties. Judgment accordingly. Thoj^as Blanchard v. Chandler Sprague. ■ [2 Story, 164. May T. 1839.] Patents for inventions are not granted as monopolies or restrictions upon the rights of the community, but " to promote science and the useful arts," and are to be liberally construed. The power of Congress to grant to inventors is general ; and it is in their dis- cretion to say, when, and for what length of time, and under what circum- stances, the patent'for an invention shall be granted. Congress has power to pass an act, which operates retrospectively to give a patent for an invention already in public use ; but no act will be construed to operate retrospectively, unless such a construction is unavoidable. In the present case. It was held, that the patent was for a machine, and not for a principle or function ; and therefore was valid. This was an action on the case for the infringement of a patent-right of " a machine for turning and cutting irregulart forms." The facts were as follows : Letters-patent were granted to the plaintiff on the 6th of September, 1819; and being PATENT CASES. 743 Blanchard v. Sprague. 2 Story. deemed inoperative, by reason of a defective speci- fication, * new letters-patent were granted on the [ * 165 ] 20th of January, 1820, for the space of fourteen years. Afterward, by Act of Congress passed the 30th of June, 1834, the sole right was granted to the plaintiff, to make, use, and vend his invention for the term of fourteen years, from the 12th of January, 1834. This act not being thought to describe with sufficient accuracy the letters-patent, to which it was intended to refer, an additional act was passed on the 6th of February, 1839, renewing the Act of the 30th of June, 1834, and correcting the date of the 12th of January, 1834, to the 20th of January, 1834. The last act was as follows : "An Act to amend and carry into effect the intention of an act entitled an act to renew the patent of Thomas Blan-' chard, approved June ZOth, 1834. " Sec. 1 . Be it enacted by the Senate and House of Repre- sentatives of the United States of America in Congress as- sembled. That the rights secured to Thomas Blanchard, a citizen of the United States, by letters-patent granted on the sixth of September, eighteen hundred and nineteen, and after- wards on a corrected specification on the twentieth day of January, Anno Domini eighteen hundred and twenty, be granted to the said Blanchard, his heirs and assigns, for the further term of fourteen years from the twentieth of January, eighteen hundred and thirty-four, said invention so secured being described in said last mentioned letters as an engine for turning or cutting irregular forms out of wood, iron, brass, or other material which can be cut by ordinary tools. Provided, that all rights and privileges heretofore sold or granted by said patentee to make, construct, use, or vend the said inven- tion, and not forfeited by the purchasers or grantees, shall enure to and be enjoyed by such purchasers or grantees re- spectively, as fully and upon the same conditions during the 744 PATENT CASES. Blanchard v. Spragae. 2 Stoiy. period hereby granted as for the term that did exist when such sale or grant was made. [ * 166 ] " Sec. 2. And be it further enacted, that any per- son who had bond fide erected or constructed any manufacture or machine for the purpose of putting said in- vention into use, in any of its modificatioDS, or was so erecting or constructing any manufacture or machine for the purpose aforesaid, between the period of the expiration of the patent heretofore granted on the thirtieth day of June, one thousand eight hundred and thirty-four, shall have and enjoy the right of using said invention in any such manufacture or machine erected or erecting as aforesaid, in all respects as though this act had not passed. Provided, that no person shall be en- titled to the right and privilege by this section granted, who has infringed the patent-right and privilege heretofore granted, by actually using or vending said machine before the expira- tion of said patent, without grant or license from said patentee or his assigne.es to use or vend the same. " Approved, February 6th, 1839." The plaintiff, in his specification, declares, that " As to the nliechanical powers by which the movements are obtained, he claims none of them as " his invention. These movements may be effected by application of various powers indifferently. Neither does he claim as his invention the cutter wheel or cutters, or friction wheel as such, nor the use of a model to guide the cutting instrument as his invention. All these are common property, and have been so for years. But he claims as his invention the method or mode of operation in the abstract explained in the second article, whereby the infinite variety of forms, described in general terms, in this article, may be turned or wrought." In another part of his specifica- tion he says, " In explaining and describing the different modes in which he contemplates the application of the prin<- PATENT CASES. 745 Blanchard v. Sprague. 2 Story. ciple or character of his said machine, or invention^ he does this in compliance with the requirements of the law, and not *by way of extending his claim for [* 167] discovery or invention. His invention is described and explained in the second article of this specification, to which reference is hereby made for information of that which constitutes the principle or character of his machine or inven- tion, and distinguishes it, as he verily believes, from all other machines, discoveries, or inventions, known or used before." In the second article, to which he refers, the plaintiff ex- plains the principle and character of his machine, and the mode of constructing it to effect the different objects to be accomplished, and the mode of operation. This is done at considerable length. The parties agreed to submit the matters of fact in dispute to a master instead of a jury, who should report the facts and his opinion thereupon to the Court, in order that his report might be accepted or rejected, as might be deemed right upon a revision of the evidence to be reported, and that the Court might decide upon the whole case for the plaintiff or the defendant ; and if the decision should be for the plain- tiff, damages were to be assessed according to an agreement between the parties. The substance of the master's report was as follows : Upon the first question, whether the plaintiff's specification is couched in terms so full, clear, and exact, as to distinguish it from all other inventions, and to enable any machinist, reasonably and competently skilled in the business, to con- struct the machine, in all its forms, from the directions there given and other drawings annexed, the master reported his opinion in the affirmative. Upon the second question, whether there is a mode, clearly described in the specification, of constructing a machine capable of producing, from one model or pattern, different sizes, preserving the proportions VOL. I. — p. c. 63 746 PATENT CASES. Blanchard v. Spraguft. 2 Story. as stated in the specificatioh, he reported, that a mode was described of effecting it sufficiently clear for all [ * 168 ] practical * purposes. Upon the third question, whether the machine patented and claimed, or any material part thereof, was known or used before the invention thereof by tfee plaintiff, and particularly whether it was so known to one Woodworth, he reported in the negative. Upon the fourth question^ whether the rights secured as alleged in the declaration, had been infringed by the defend- ant, he reported in the affirmative, and assessed damages at $521.27. Upon the hearing before the Court upon the whole case, it was contended by the counsel for the defendant, that the plaintiff's specification was defective, that he claimed the functions of the machine and not the machine itself, and that the description of the machine, so far as it related tp the making of things of different sizes from the same model, as well as to the designation of what was intended to be claimed, was unintelligible and wholly insufficient. It was also con- tended, that the last act for renewing the letters-patent was inoperative, inasmucb^ as it granted only the rights secured by the patents of September 6th, 1819, and January 20th, 1820, both of which were supposed to be void ; and that the act was also retrospective, so far as it regarded those who had used the machine between the time of the "expiration of the letters-patent, and the renewal of them by the last men- tioned act. Rand and Fiske for the plaintiff. W. Phillips and Par- sons, for the defendant. Stort, J. My opinion is, that the master has drawn the true conclusions from the facts, which are stated in his re- port ; and I have not the' slightest hesitation in adopting them PATENT CASES. 747 Blanchard v. Sprague. 2* Story. as the basis of my own opinion. The objections, which have been taken at the argument to the present patent, granted to the plaintiff by the Act of Congress of sixth day of February, 1839, ch. 14, I shall now proceed to dispose of, in as few * words as may be practicable. In the first [ * 169 ] place, as to the point, whether the plaintiff has sufficiently expressed in his specification the true nature, character, and extent of the invention, which he claims. I am of opinion that he has. Formerly in England, courts of law were disposed to indulge in a very close and strict construction of the specifications accompanying patents, and expressing the nature and extent of the invention. This construction seems to have been adopted upon the notion, that patent-rights were in the nature of monopolies, and therefore were to be narrowly watched, and construed with a rigid adherence to their terms, as being in derogation of the general rights of the community. At present a far more liberal and expanded view of the subject is taken. Patents for inventions are now treated as a just reward to ingenious men, and as highly beneficial to the public, not only by hold- ing out suitable encouragements to genius and talents, and enterprise ; but as ultimately securing to the whole commu- nity great advantages from the free communication of secrets and processes, and machinery, which may be most important to all the great interests of society, to agriculture, to com- merce, and to manufactures, as well as to the cause of science and art. In America this liberal view of the subject has always been taken ; and indeed it is a natural, if not a necessary result from the very language and intent of the power given to Congress by the Constitution on this subject. Congress (says the Constitution) shall have power " To promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective 748 PATENT CASES. Blanchard ». Sprague; 2 S0ry. writings and discoveries." Patents then are clearly entitled to a liberal construction, since they are granted not as restric- tions upon the rights of the community, but are granted " to promote science and useful arts." Looking at the present specification, and construing [ * 170 1 all its * terms together, I am clearly of opinion, that it is not a patent claimed for a mere function ; but it is claimed for the machine specially described in the speci- fication; that is, for a function as embodied in a particular machine, whose mode of operation and general structure are pointed out. In the close of his specification, the patentee explicitly states that his " invention is described and explained in the second article of his specification, to which reference is madejbr information of that which constitutes the princi- ple or character of his machine or invention, and distinguishes it, as he verily believes, from all other machines, discoveries^ or inventions known or used before." Now, when we turn to the second article, we find there described not a mere function, but a machine of a particular structure, whose modes of operation are pointed out, to accomplish a particu- lar purpose, function, or end. This seems to me sufficiently ex[^ssive to define and ascertain what his invention is. It is a particular machine, constituted in the way pointed out, for the accomplishment of a particular end or object. The patent is for a machine, and not for a principle or function detached from machinery. Then, it is objected, that the description of the mode of constructing the machine is so defective, that it is not prac- ticable for persons skilled in the art or science to which it belongs or relates, to construct the machine. This objection is put an end to by the master's report, and the facts there stated by intelligent witnesses. Then, it is suggested, that the grant of the patent by the Act of Congress of 1839, ch. 14, is not constitutional ; for it PATENT CASES. 749 Blanchard v. Sprague. 2 Story._ operates retrospectively to give a patent for an invention, which, though made by the patentee, was in public use and enjoyed by the community at the time of the passage of the act. But this objection is fairly put at rest by the decision of the Supreme Court in the case of the patent of Oliver Evans. * Evans v. Eaton, (3 Wheat. R. [* 171 ] 545) .1 For myself, I never have entertained any doubt of the constituJional authority of Congress to make such a grant. The power is general to grant to inventors ; and it rests inthe sound discretion of Congress to say, when and for what length of time and under what circumstances the patent for an invention shall be granted. There is no restriction which limits the power of Congress to cases where the invention has not been known or used by the puBlic. All that is required is, that the patentee should be the inventor.^ ' The only remaining objection is, that the act is unconstitu- tional, because it makes the use of a machine constructed and used before the time of the passage of the Act of 1834, ch. 213, and the grant of the patent under the Act of 1839, ch. 14, unlawful, although it has been formerly decided, that under the Act of 1834 the plaintiff had no valid patent ; and so the defendant, if he constructed and used the machine during that period, did lawful acts, and cannot now be retro- spectively made a wrong-doer. If this were the true result of the language of the act, it might require a good deal of consideration. But I do not understand, that the act gives the patentee any damages for the construction or use of the machine except after the grant of patent under the Act of 1839, ch. 14. If the language of the act were ambiguous the Court would give it this construction, so that it might not be deemed to create rights retrospectively, or to make men 1 See also Evans v. Eaton, 7 Wheat. K. 356, ante, 336 ; Evans v. Hettich, 7 Wheat K. 453, ante, 417. 750 PATENT CASES. Blanchard v. Sprague. 2 Story. liable for damages for acts lawful at the time when they were done. The Act of Congress passed in general terms ought, to be so construed, if it may, as to be deemed a just exercise of constitutional authority ; and not only so, but it ought to be construed not to operate retrospec- [ * 172 ] tively, or ex post facto, unless that * construction is unavoidable ; for even if a retrospective act is or may be constitutional, I think I maj; say that, according to the theory of our jurisprudence, such an interpretation is never adopted without absolute necessity ; and courts of jus- tice always lean to a more benign construction. But in the present case there is no claim for any damages but such as have accrued to the patentee from a use of his machine since the grant of the patent under the Act of 1839, ch. 14. I am, therefore, of opinion, that there ought to be judgment for the plaintiff for the damages agreed by the parties. i Judgment accordingly. END OF VOL I. KF 3109 R63 2. Author Vol. Rnhhj .Tampsn f^iT-dh 1 ™'A collection of patent cases ^"p" Date Borrower's Name ... •