THE:BEFOE THE
— OR TIME A' PELLANTS IN THE CASE'OF
I. O'REILLY, AND OTHERS,
K6'l'.                         I I
S. F. B.::,:     S E, A N D 0    T HER S
ON: APPEAL::R.OM TI  CIRCUIT COURT FOR THE, DISTRICT
OF KENTUCKY.
N~W YORK::B AKE:R,:: GOD Wi:&:C O., P RIN T E RS,::[0  ER.Aii:A AND P:PRUCE STREETS.
1853.








ELE CTRI C TELE GARAP H.
ANCe OF TH ARGIM   OF
P. CHASE
BEI'ORE THE
-uremc ut~n i of tkte 4dtttc~ $taies
FOR THE APPELLANTS IN THE CASE OF
H O'REILLY, AND OTHERS
v8.
S. F, B, MORSE, AND  OTHERS,
ON APPEAL FROMI THE CIRCUIT COURT FOR THE DISTRICT
OF KENTUCKY.
NEW  YORK:
BAKER, GODWIN & CO,, PRINTERS,
CORNER NASSAU AND SPRUCE STREETS.
1853.








THE
C TELEGRAPH..:..n      sive field, opened by the Record in this cause,
I can in the limited time remaining for this argument, traverse
but a very small part.
Much has been said by the learned gentlemen on the other
side, which I must leave unnoticed.  Much\, which seems to be
well worth attentive consideration on our own side, I nmust leave
untouched.  To the larger learning, the candid judgment;, and
the impartial justice of this Supreme Tribunal, I must confide
the important interests not more of my immediate clients, than
of the public, involved in this controversy, in the full confidence
that every argument and every authority, pertinent to the matter in hand, will be weighed and considered by the Court,
whetlher urged or overlooked at the bar.
[For the first time, Electro-Magnetism in its applications to
the Arts, is brought under the consideration of this Court. The
subtle element with which this new science deals, and the
wonderful results obtained by the application of its principles
invest this cause with peculiar interest.  Perhaps, also, they
tend in some degree to disturb the even balance of the judgmeit in wveighing the very important questions of fact and law,
presented by the Record.
These questions, stated in their most general form, are two 
T..re the patents to Morse, for the Electro-Magnetic Telegraph or process of Telegraphing by Electro-Magonetism valid
at al..- Acnd, if valid at all, to what extent?




II. Have these patents, or either of them, been infringed by
the appellants.
The first question respects the alleged rights of the appellees,
the second respects the alleged invasions of those rif.kts by the
appellants.
I shall inqlire in the first place, as             t 
patent of 1840, re-ssued in. 1848.
To a correct understanding of this m            e 
consider,
1. What was known of the application
Electro-]Magnetism to Telegraphing,or kindred7,e
YMorse invented lis machine or process.
2. What Morse actually invented and. was entitled to a patent for.
3. What his patent actually purports to cover, and. the
rules of law applicable to his claims.
1. The depositions of:Prof.'F:enry,*' and Messrs. Moss t and
3arnes,4 and the book of Mr. Vai;l, published in 1847, and by
agreement a part of the record, give a clear account of the progress of electric and electromlagnetic experimenlt to the time of
Morse's invention.
lLong before M r. M}orse conceived the idea of a telegraph, and
in fact, long before he was conceived himself, the transmlissibil,
ity of electric currents through  long circuits of wire, or wire
and the earth, connecting the positive and negative poles of a
battery, was well known. And it was ecqually well known that
the breaking of the circuit at any point would interrupt) and
that the closing of it would renew the currentu
The books are full of the details of experiments establishing
these facts.  In 1746 Le  /fonnier sent the electric current
through four thousand feet of wire,. In 1747 Dr. Watson tranis
mitted it across the Thames and back, the river constituting
part, of his circuit  and, in the same year he tried, wiith entire,
r Recod, 4V7,  IR' 1e-cord2 449,  1          VCi 4 a~ 860i' r  ~.Vi]) l)p1 8 &, tul.,




success) the experiment of transmission through wires, two
miles in length, stpported on stdcks o0 poles, tAe earth beingq
nsed f-or th/e reitrn of 1t7e current. The next year Dr. Franklin
successfully repeated on the Schuylkill the experiment of Dr.
Watsa=     _a-_ es..
lectricity used in these and many similar
_   ed from the common electrical machine,
not froern galvanic battery. But it is also true,
~Iectricity.  generated, was identical in most respects,
U-iC   l  Iicity; was exposed to instantaneous transa
to,:~i a     point; was capable of being used to make
was, in fact, transmitted in the identical
m71,       e....d.by Morse for the transmission of electric
currents.
The world had long sought for practicable modes of rapidly
communicating intelligence between remote places. Beacons
blazing from  lofty summits, and semaphores displaying signals in conspicuous positions, had hitherto been the only means
employed for that purpose. It now seemed possible, by means
of this subtile element, traversing, with inconceivable velocity,
indefinitely extended circuits, and revealing its presence by
sparks, by attraction and repulsion of balls, by illumination of
imperfect conductors, at any point, however distant, according
to the will of the operator, to realize the perfection of telegraphic communication.
Various plans of electric telegraphs were speedily proposed before the close of the 18th century.  Lomond, in France,
Reizen, in Germany, Salva and Betancourt, in Spain, had established electric communications between places, more or less
remote, using the various effects of the current at the receiving
station, as signs of letters, words, or sentences. Ronald's ElecG
Iric Telegraph, invented in 1816, was another very ingenions
application of the same principle.
-None of these projects, however, were eventually successful.
The want of sufficient and constant batteries or suppliers of the
electric current and the liability of electricity, generated by
mnachines, to dissipation in the atmospht'reI  and to diversion




from the circuit by other influences and accidents, proved insuperable obstacles.
The year 1800 is distinguished in scientific annals, by the
invention of the voltaic battery. A simple column, composed
of successive series of silver coins and d i            wet
card, of equal circumference, each serie                  a
secquence of silver, zinc and card, conustt e
The first connection of its poles or the          - or- vo
circuit was formed by touching the upper        er coi
a wet finger of one hand, and the lowerrm      o
a finger of the other.           
It is obvious that the circuit might bde
conducting substance, and in fact wire, as th           eTt
conductor has been always employed for the pumrpose.
In this battery we find the first element of the modern
electric telegraph.
It had no sooner been invented than ingenuity busied itself
with schemes of telegraphs, to be operated by its means. Simmering, in 1809, invented one, the signs of which were made
by the decomposition of water, through the action of the electric current, at the receiving station. In 1816, Professor Cox,
of Philedelphia, proposed another telegraph on the same principle, suggesting in addition to the signs of Swnmnering, signs
inade by the decomposition of metallic salts.
Still, however, no practically valuable telegraph rewarded
the labors of invention. The batteries were insufficient, the
electric current was too feeble; the signs made, too doubtful
and evanescent, and the conducting apparatus too complex and
expensive.
About this period, in 1819 and 1820, the investigations of
Oersted, Ampere, Arago and Davy, established the facts that
electric currents, generated by the voltaic battery are:magnetic; and that these currents, passing around pieces or bars of
soft iron, induce or develop magnetism in them;  which magn
netism disappears instantaneously whenever the current ceases
to pass round them.
Ampere now suggested in 1820, a form  of electric telegraph, which) improved, simplified and embodied by the in



ventive geninus of Professor Wheatstone, is actually ill extent
sive use at this dayv  " As many MAGN-ETC NEEDLES," he says,
"as there are letters in the alphabet may be put in action by
conductors; communicating with the battery by meansof KEYS,
which im ie      sed down at pleasure, and thus afford the
m      i             eorrespondmene wlizch would surmount
al                   ronpt as speec4 to transmit thougyht."
4ureo  waB   ext investigator, whose researches con~ qta essenti eprepare the way for the electric telegraph.,'h...... e first electro-magnet, by bending a piece
c"'~";i'~ron   the form of a horseshoe, and winding
ong copper wire with wide spaces between
lth"~l.. ~        o part of the wire should touch any other
part;]  By connecting the two ends of the copper wire, with
wires proceeding from the opposite poles of a battery, a current of electricity was made to pass round the horseshoe wire
which instantly becamze magnetic. This was the first electromagnet. Its magnetic power was sufficient to raise and hold
suspended very considerable weights.
It was now certain that mechanical results could be produced at any distance from the operating station, to which the
electric current could be transmitted. This power once obtained,'could be applied at the distant place with as much facility as steam or any other motive power could be applied at
the place of generation or production.
Power capable of control at the operating station in its action at any distance, had been the great desideratum in telegraphing. Its application, when obtained, involved no serious
difficulty. This power seemed now to be secured.
But the experiments of:Barlow, instituted in the same year,
1825, upon. the transmissibility of electric currents through
wires, extinguished for the time those hopes which Sturgeon's
results were calculated to excite. lie found that the power of
the galvanic current to develop magnetism_ diminished rapidly
in propotrion to the distance from the battery. At the distance
of two hundred feet he found the dminution so great as to convince him that an available electro-magnetic telegraph was imnpossible.  "The publication of Barlow's results,"' says Profes



sor IIENRY in his deposition, CC pt t arest, ir a  time, all attempts to construct an electronmagnetic telegraph"'
It was reserved for a countryman of our own, distinguished
by scientific attainnments and personal worth, to reverse the conelusions of Barlow, by demonstrating the pra   abi~t of transmitting available currents to distant pla                cii'
cuits, and thus establishing the feasib             t
After repeated experiments, Professor  a          ans
intensity battery of his own arrangement,s"e'ded in se-nd
the electric current through a long circuit,:  t any pe'
7ible diminution,0  o f magn.etic Pow=er. H    x    et -
their results were made public in 1831, i       a
and attracted great attention in both heinis t
publication he announeed the applicability of his  isc ry to
the project of the telegraph. In his lectures from the chair of
Natural Philosophy, in Princeton College in 1833, and in every
subsequent year during his connection with the institution, he
mentioned the project of the electro-magnetic telegraph, and
explained how the electro-magnet maight be used to produce
mechanical effects at a distance adequate to malking signals of
various kinds."'
Let us now see what preparation had at this time been
made for a telegraph? What had been accomplished?
a The galvanic, or voltaic battery had been invented and
improved; thus supplying a generator of electricity in suffix
cient quantity and energy.
b. The mode of connecting the poles of the battery by a
wire circuit, whether long or short, was known.
c. The fact that, during this connexion, the electricity generated by the battery, was transmritted instantaneously through
the entire circuit, and that at the instant of breaking the circuit, by severing the wire or otherwise interrupting the connexion, this electricity disappeared, was also known.
d Various convenient modes of breaking and closing the
circuit, and thus interrupting and renewing the current, by
means of a finger key and otherwise, were also known.
* tehnry's JDeposition Record, 421.




e. The fact that the electric current transmitted through
thin paper, moistened by a solution of mineral salts, would
leave a mark upon the paper, was also known.
f. The fact that the electric current, transmitted through
insulated wire composing part of a circuit and wound round
a so o             d excite -lmagnetism in the bar, which magnet:ism w ou<    ftly disappear on breaking the circuit, wa.s
edbhlished. sT    sovery gave the electro-magnet to science
nd-the arts.
g. The fact    t, by the use of electro-magnetism, thus ded Cany.:  nical effects, capable of being produced by
ve power of like energy, could be wrought
at             f'ronom the operating station, to which the electrio current could be transmitted, was also established.
h. The fact that the electric current passing through wire,
surrounding or placed in certain relations to a needle, would, by
its magnetic action, powerfully deflect it, was also established.
i. And, finally, it was established that the electric current,
generated by a proper battery, could be sent through a circuit
of indefinite extent, without any sensible diminution of its
power to excite an electro-imagnet, or to deflect a needle placed
at the remotest point from the operating station.
Is anything needed, beyond this simple recital, to demonstrate that the Magnetic Telegraph was now not possible merely,
but inevitable?  That it was not so truly possible that practically useful applications of these established facts and principles to the transmission of intelligence to distant points should
be,made, as imlpossible that such applications should not be
11made?
It seems to be a part of the great law of progress impressed
upon society, that, whenever the advance of the race requires
a new development and application of material powers, science
shall supply the development and discover the principles of the
application, and that Invention shall ascertain the processes and
means bly which the revelations of Science are mlade practi2




eaily useful to mankind. Clivilisation, Scielce, and Invention:
march together.
The introduction of Steam, as a motive power upon the
water and upon the land, was prepared by many antecedent
discoveries and inventions. So also the introducion of electroma gnetism, as a motive power for the inst   _ m   estation by signs at one place of ideas concei                  another,, was
preceded by many preparatory discoverie  en tions
I have said that the state of science anntion, when
Professor Henry had demonstratedl the pra   ility of p
ducing mechanical effects at great distance   me ns
tric currents and the electro-magnet, made
graph not possible merely, but inevitable.   ve         el
add, that not only was the telegraph inevitable, but various
forms of the telegraph were, also, inevitable.  One inventor
would naturally avail himself of the deflection of the needle;
another of the property of the electric current to decompose
salts; another of the mechanical power of the electro-magnet.
The history of telegraphic invention embodied in the record,
and the works madcle part of it, and in our national public doc.ments prove that what might have been naturally expected
actually happened.
sNo sooner had Professor HI-enry's discoveries been announced to the world than Gauss, and Weber, and Steinheil,
in Germany, Morse in the United States, Cooke and Wheatstone in England, and others of less note elsewhere, busied
themselves in devising and constructing telegraphs upon varions plans, but all agreeing in the use of the electric current to
produce, by its magnetic properties, mechanical effects at a
distance.  The signs of Gauss and Weber's telegraph were
made by the simple deflections of a needle, a single deflection
to the right representing c, ancl a single deflection to the l]eft,
1; the other letters and certain words and sentences being represented by deflections variously combined. This telegraph
was pput in operation in 1833 or 1834. In Steinheil's telegraph,
which was in operation previous to July, 1837, and had been
adopted  by the Bavarian  G-overnment, according to [M5r.
MA[oR s  when. hoe visited rE' }rope in 1.88,8 the regulated (I efiee




11
tions of t[ needle or imagnetic ba'1 of proper size  and l  shape
were employed either to produce sounds by striking bells,
or to record signs lby marking with ink paper moved before
the bar by a roller.  Steinheil first discovered that the return wire could be dispensed with, and that the ground
couldbe:s:n mplete a circuit of galvanic electricity.
I have aleta       ed that Watson, in 1747, had dliscoverled
the same  fac    ec  t to machine electricity. In Cooke and:Wheatstones'tegraph, patented in 1837, the deflections of
the needle were sed to point to words and sentences arranged
-    na disc or-  i. Mr. ATorse found this telegraph, also, in
~ ion;whe   visited Europe in 1838. In Morse's tele~gr    ~~~ ~te n 1840, and first put in operation in 1845, the
electro-magnet was used in connection with other apparatus
to mark or indent paper. The indentations thus made were
used as representatives of letters. Subsequently, in 1846, Bain
nv e nted a telegraph in which the electric current was nmade to
pass through chemically prepared paper, and make marks by
simple chemical action without the use of electromagnetism at
all. The marks thus made were employed as representatives of
letters, words or sentences. About the same time, HTouse perfected the most ingenious telegraph hitherto devised, by means
of which plain Roman letters could be printed at any distance
from the operating station. This telegraph was patented in
1848. Bain received an American patent for his invention in
1849.
I have now traced, although in nlerest outline, the progress
of telegraphic invention and discovery to the date of Ml3orse's
researches. I have also grouped, in a single but most imperfect view, the results obtained by him and by various cotemnporary inventors.
2. I now proceed to the inquiry " What did Norse actually
invent?" 
A general answer may be given in a single sentence. He
invented the first practically useful electro-magnetic macrkin
telegraph. The evidence in this cause, I freely admit, must
satisfy the Court that though his patent and the practical ap



12
plication of his invention were subsequent in date to solmel foreign patents and to the actual construction of some foreign telegraphs, still his was the first practically useful markling telegraph. For that telegraph, beyond a doubt, he was entitled
to a patent. It was a very useful invention. It reflects distinguished honor upon the name of the invent         s me pleasure, now andl here, as it has given mne plea  torefore and
elsewhere, to bear unequivocal testimony   r      mit and' his
merit. More fortunate than most inventors, Itst he may long'
enjoy the solid rewards, as well as the less sultntial, but, to!s
generous mind, more gratifying distinctions 4ich hish 
conception and well-directed and persever:    edptryt
secured for him.
But justice to 1MousR does not require injustice to his fellow
laborers in the same field of invention. Others have invented
telegraphs not less useful and not less ingenious than his owno
Like him, they have obtained patents for the telegraphs invented by themn. To the full extent of their just claims they
are as much entitled to protection as himself.
It is necessary, therefore, to define the precise limits of the
concession that IMorse invented the first practically usefiul
electro-magnetic mnarcki~ng telegraph. lie did not invent the art
of telegraphing by electro-magnetism. He did not invent the
battery; nor the circuit of wire, or wire and earth; nor the
electro-magnet. IHe did not discover the transmissibility of the
electric current through a long circuit.  HIe did not invent the
combination of the battery and its circuit with an electro-magnet, or electro-magnets placed in any part of it so as to move
levers or soft iron bars suspended near their poles and thus
produce mechanical results at a distance. -Ie did not invent
the process of marking paper or other material, moved on a
roller or cylinder, by a marker operated by mechanical
power.  Morse attached a mlarker to the armature of the magnet.  lHe brought the paper and its revolving cylinder within
the stroke of the marker.   He adopted a contrivance for
withdrawing the  marker from  contact with the paper at
the instant of the cessation of the magnetic impulse. The
combination of these contrivances with the known means




13
of operation fr'om the distant station enabled him to produce
marks at a distance, and constituted the essence of his invention.
With the permission of the Court, I will read a few extracts
frolm the elaborate opinion of Mir. Justice WooDBuzY, in the
case of SMITH V. DOWNING, expressing the convictions of that
learned Jud          ect to the extent of Morsels actual invention. OnCp            of the printed opinion, he says, "hle
(Morse) came in    e world too late for claiming mnuch as
truly new."  At pge eighteen, he further says, " as before exained he must -not be considered to have claimed the invenif the general pinciple or art of telegrcphizng,  1y electro-maqor |co I rae, a already s8hown, have protected it if he
hia.    ta:i:i  hclearly claimed was,'a method' of doing it:
an improvement in doing it-and these he has a right to protect, and these only. They were a pin to mark, or trace in the
end of his lever or needle; a happy thought, but the movement
of the paper on a roller was almost as necessary to receive
marks in succession, and his alphabet to be thus applied and
used, was the crowning act of his invention."
On page twenty-seven he also says:
"The lever, of which so much has been said, seems only the
old needle depressed at one end by the magnet;, and of course
elevated at the other till the circuit is broken; and by putting
a pin or pen in the last end, a dot or stroke is made on the paper rolling above or below, and the stenographic signs are then
recorded."
On the same page he further says:
"To be sure he (House), uses also the power of electro-magnetism, but Morse did not invent that power or its employment in
telegraphing.'"
Blefore leaving this branch of the case, I beg leave to invite
attention to Doctor Jackson's participation in the invention of
the electro-magnetic telegraph. Dr. Jackson and Professor
MNorse met, for the first time, as fellow passengers, homeward
bound, on ooard the packet ship Sully, in 1832. Morse was a
painter of considerable reputation in his art. Jackson had cultivated the sciences. Morse was unacquainted with electricity
and electro-magnetism. Jackson was familiar with the results




14
of lEuropeatn research on both subjects;  was fresh fiont the lectures of Pouillet on electro~magnetism  at the Sorbonne; and
had in his possession an excellent electro-magnet,'and two small
galvanic batteries for putting it in action.  Morse admits that
his first idea of a telegraph was conceived during a conversation
among the passengers on the recent disco 0!electro-magnetism, and was suggested by observation    kson upon the
length of wire in the coil of the magnet,  i      instantaneous
transmissibility of the electric current through its entire extent.
Jackson testifies explicitly that he proceeded& at this time  i
answer to an inquiry by:MNorse whether intience could i
be transmitted by this means, to affirm the    iiity of
to describe various modes in which it could  e done   of
which was by impressions on paper by means of a lever attached to the armature of an electro-magnet, and operated by means
of it. Jackson further testifies that during the voyage he made
further practical suggestions to [Morse, who availed himself of
them_; and that immediately after his return, he mentioned the
project of the telegraph to various persons, and, in 1834, actually tried the experiment of marking with an electro-magnet in
the mode which he had suoggested. Jackson is confirmed, in
important respects, by several witnesses, especially by Mlessrs.
-Bigelow, C. Alger, F. Alger, Tracy, and Fisher.  These witnesses stand uwncontradicted. Taken together, I submit that they
establish the fact, that Jackson first suggested the general plan
of Morse's telegraph, though the credit of perfecting the invention, and applying it to a practical purpose, and bringing it
into useful operation, and, consequently, the right to a patent
for it must be conceded to Morse. I ask the attention of the
Court to the depositions of the witnesses I have named.
I have now said all that I deem  essential on the state of
telegraphic invention and discovery at the time Morse directed
his attention to the subject. I have endeavored to show what
had been done by others; what was left to be done to perfect
a practical marking telegraph, and what Morse did.
3. I come now to consider the third question bearing on
the validity of the patent of 1810, re-issued in 1848: namely,




'what does this patent purport to cover? What exclulsivesrights
does Morse claim for himself nnder it?
Mr. Justice WooDBURY, in the case already referred to, expressed the opinion that, taking the whole patent together,
MiMorse must be understood as claiming only the use of electromagnetism'~i~y            of his cpplication, accorddng to Adl
machinery, an  i    e modes hle had described."  But it must
be remembered'th  the copy of the patent, which was then
before the Court, was misprinted.  In that copy, the eighth
laim  asserted the right of Morse to the use of electro-magne-:,; for mnarking or printing intelligible characters, signs ov'~~:'.s'In -th e2correctly printed'copy, now before this Court,
the      is brader. It is for the " use of the current for marking or printing intelligible characters, signs or letters.*  This
clai-m, in this extent, was never brought to the notice of Jcudge
WO shal therefODURre exine this question of the true con
I shall, therefore, examine this question of the true con
struction and import of the various claims of this patent as a
new one.  And I beg that it may be borne in mind that the
patent of 1840, as originally issued, was a patent for a machine
and a system of signs in combination with it,t or which is the
same thing, for "; the process of recording or marking signs of
intelligence," through the agency of electro-magnetism, and by
means of certain devised machinery.  What he actually in-l
vented was a machine operated by electro-magnetism  for making marks, which, like all other marks,  were capable of being
used as representatives of ideas.  The process of making these
marks or signs, was nothing more nor less, than the operation
of the machine.  The machine was worked by electro-magnetisml, precisely as any steam machine is worked by that agent':
being set in motion when the current was 16 let on,' and ceasing
to act when the current was "C shut off."  That mechanical e-ffeets could be produced at any desired distance was known
MAirr GIFrOiDm of counsel for Maorse, here intelposed and stated that the erro*'
occurred by printing from an incorrect copy, MIr, CHASE  disclaimed any inputation of improper conduct to the patentee  It appeared fromn the conversation of
counsel, that the error occurred ijn recording the patent in the patent office, froma
which record the copy used in the Boston Case was taiken, while the copy nused
in this case was freolm t1he Coriginal patent,_:
j Rc-coErd, 53,




and nothing was more common than to mark, by various processes, signs of intelligence.  The telegraph then was a new
application of a known agency to produce known effects. It
was for the machine or process, by which this new application
was effectedl-for the simple, convenient and useful marking
or recording apparatus, and for the compleAx:convenient, and
subsequently discarded apparatus, for bre atn  and connecting
the circuit, devised by him, that Morse  btained his first patent.
B~ut, in his re-issued patent, he greatly enlarges his pretenuions.
The first claim  of his patent, as re-issu-ed in 1848, ass'ers
his title as inventor and improver to the "use; of the  motive
power of macgnetism, wlhen developed by the action of such (i.e,
galvanic) current or currents substantially, as set forth in the,
foregoing description of the first principal part of my invention
as means of operating or giving motion to machinery which may
be used to imprint signals upon paper or other suitable materials, or to produce sounds for the purpose of telegraphic comimunication at any distance."
In the same paragraph he expressly declares that he " does
not claim  the use of the galvanic current or currents Jfor
the purpose of telegrahic commriccation geerally.'  Tlie ad.mits that the galvanic current had been used prior to his Winvention, to deflect bars or needles, and thus produce signs at a distance; but insists that the currents thus employed " had no
power on were nqot applied to record the signs"-(it was necessary to say  "; or,"  else Steinheil's Recording Telegraph
would disprove the assertion.)  He also admits that there were
various nZodes of producing mzotions by electro-magnetism, but
none of them had been applied to actuate printing or recording
nachinCC ery.  He, therefore, " characterizes" his 6 invention as
the frst recording or printing telegrcyph by mzeans-of electromnagnetism," and declares that the application of electro-magnetismn to actuate or give motion to printing or recording.machinery is;6the CHIEF POINT of his invention and improvellent."
IeFe disclaims the exclusive right to use electro-mag netisln to
deflect bars or needles and tlus produce -visible signs of intel,




ligence without markling. Butl he claims the exclusive use of
mnagnetismi, "  when developec d" in the mode described, for
printing or recording signals.  It is not tlhe use, in the  zocde
described, that lie claims, but the ge~neral use, for marking
signals, of the power when develo2ped in the mode described.
Ite means to leave no doubt as to the nature of this claim, for
he specifies themode of development as that which is set forth
in the " descriptioa of thefrst prtincipal part" of his invention.
That description is confined exclusively to the battery, thle circuit of conductors, the contrivance for breaking and closing the
circuit, and the:electro-magnet.  It stops at the point of the
d(evelopment of the power in the electro-magnet.  The register,
by means of which the power is applied to marking, is described
as "' the second princpal part " of his invention.
This claim, then, reduced to its simplest language, is for the
u nse of the motive power of magnetism, when developed " by
means of the battery, circuit, key, and electro-magnet for imprinting signals or producing sounds.
I pass for the present, without observation, the second, third,,
fourth, sixth, and seventh claims.  They are all for machinery
or combinations of machinery, or for effects in combination with
tlhe machinery producing them.
The third claim  is for the "system of signs, consisting of
dots and spaces, and dots, spaces, and horizontal lines, for numerals, letters, words and sentences, substantially as herein set
forth and illustrated, for telegraphic purposes."
The eighth claim is the most remarkable of all   " f eI cZo not.vropose to limit nyself," he says, "to the specific machinery
or parts of machinery described in the foregoing specifications
or claims; the essence of my invention beiny the use (f the motive p2ower of thte electric or galvanic current, which I call electqo-macgnetis2n, however 7developed, for mnarking or printing intelligible chacrvacters, signs, or letters, at any distances; being a
new application of that power, of which I claim to be the first
inventor or discoverer."
This claim, taken in connection with his disclaimers, may
be thus stated:' "I make no pretence to the discovery of the
motive power of electro-nmagnetismn.  I was:,y no neans the




first to demonstrate the applicability of that power to the production of any mlechanical results which its force is adequate
to; but I have invented one set of machinery, and described
one process for the application of that power to marking, by
means of an electro-magnet, dots and lines, with spaces between; I have affixed certain conventionS sgnifications to
these dots and lines, whereby they can be; made available as
representatives of letters or words; I have specified the machinery and process by which I have accomplished this; and I
now claim the exclusive right to the use of this power, however
developed, whether by means of an electro-magnet or without
any electro-magnet, for marking, by whatever machinery`6or
whatever process, symbolic representations of letters and words,
or for printing plain letters themselves.  No machine can be
made) no process can be devised, by which letters are printed,
or marks made, by the motive power of the electric current, for
telegraphic purposes-however distinct the machine or process
from mine-without infringing my rights."l This is the eighth
claim. A2nd yet Mforse invented no new art, discovered no news
prtnceiple, and the body of the patent is expressly confined to an
p' improvement' on p2reviouclty invented electric telegraphs!
Can these claims be Bustained?
Let it be remembered, that as the patent law now stands,
the public has no protection against unjust monopolies, under
the name of patent rights, except in the just determination of
courts to sanctionl in suits for infringement or injunction, no
claim which is not plainly warranted by the law.  There is no
mode in which the patent itself can be reached by ecirefacias;
none in which a judgment of avoidance canbe obtained. Patentees are permitted to disclaim whenever they please; and
reissues are allowed for modified privileges whenever required.
It is even claimed, by our learned opponents, that if this court
should be of opinion, in this case, that certain claims in the patent are void for excess) still the appellees may hav e a decree on
th.e claims to which no objection is taken. Tlnder these circumstances, there can be no ground whatever for construing
away the obvious imnport of language in order to sustain a partifcnlar claimn




I repeat, then, can the three claims I have now especially
brought to the notice of the court, be sustained?
One fundamental rule applicable to this question is, that
every  patentee must be confined to the method, process,
machine, or manufacture which he has described in his specific
cation. He can claim  nothing which he has not described.
That which cannot be described, cannot be patented.
Another fundamental rule is, that there can be no patent
for an effect only, or for an art in the abstract, or for a principle. Theories are not patentable.
Let me consider the second proposition first 
Without doubt, an art can be patented. The statute says
so expressly. But what sort of an art? Reason tells us, and
the books tell us, it must be an art reduced to practice and eim-n
bodied in a recognizable form. (1) Abstract art is theoretical
skill. -- Art in practice is skill applied in material forms, or by
mechanical means, in conformity with theory. It is a process,
a method, a system. I use these words as equivalents.  When
our statute declared an art patentable, it introduced no new
law.  Whatever can be patented in the United States as an
art, can be patented in England as a process. But in neither
country can there be a patent for any other than a devised, specified, and embodied art or process. There can be no patent
for an art generally in all its branches, to one who has shown
but a single mode of exercising it, That would be a patent
for an art in the abstract.
lFaor excample-=The first inventor of the process or art of
measuring gas by the meter could not have a patent for the art
of measuring gas generally, because he had devised and shown
one mode of doing it.
Xor, could the inventor of the art or process of planing
boards by machinery obtain a valid patent for that art generally, but only for his specified method of doing so.
In both cases, however, the patentee for the process is entitied to the benefit of the principle or spirit or character of his
invention. No person, adopting mere variations in detail, but'Lsing the substance of the invention could be protected against
(1) Curtis, ~ 2.




20
the penalties for infriingieellt.  But the patent must be, br the
specified andl described  eetlod or process. Two of the learned
counsel for the appellees, MIessrs. Harding and Canmpbell, say
in their brief, p. 8:' If Morse was the first to discover that the
power of electro-magnetism could be used for the purpose of
recording telegraphic SIGNS, and devised onepraticca mode for
using it, he may, by a general claim, secur& to himself the.riygti of so aypplying it, as well as the particular devices by
which he did so."' This is not in accordance with the view of'
the other counsel for the appellees, Mir. Gifford, who argued
that Morsels claims, rightly construed, were for a process to be
exercised by particular means and in a particular manner. It
will be observed moreover that even Messrs. Campbell and
H1arding do not, in their formal printed proposition, claim the
exclusive use of electro-magnetism to record letters. The reason for their avoiding to make this claim in the above proposition is, that they could not assert that M1orse had "d clevised one
practical mode " of obtaining that result.
All the considered cases, all the reliable authorities, seemrl to
me, when fairly analyzed, to support the positions I maintain.
I will first examine the cases cited on the other side.  The
first is Juzpe v. Pratt, Wft b. Pat. Ucas. 144. In this case, the
plaintiff had planned an expanding table, and had procured a
mechanic to devise machinery by which the expansion could
be effected.  He claimed only the principle of the expansion,
andl not the means or process. The court expressed the opinion that the patent could not be sustained, though the case
turned finally upon a point of pleading.
So far the authority is against our friends.  i3But in this case
occurs the remark of Baron Alderson, cited as an authority by
them. It was a remark in conversation with counsel, of no
authority at all. It is quite plain, also, that Baron Alderson,
when he spoke of "'a patent for a principle coupled with a
mode of carrying it into effect," intended also a patent for a
principle embodied in a machine or process. This construction
reconciles the learned Judge with himself, and with the current
of authority. Upon the construction of the gentlemen on the
other side, the remark would be unwarranted by reason or precedent.




21
We arle next reftrred to Forsyth's Patent, and the notes upon
it. ITebd. Pat Cases, 96, 97. This was a patent for a process of
discharging fire-arms by the use of a detonating powder. It is
stated in one of the notes referred to, that in a case upon this
patent, the alleged doctrine of Alderson's dictum in JPte V.
P~Iatt, was recognized and affirmed; but on turning to page
128, to which the annotator refers, we find absolutely nothing
to sustain the note. We find only a statement by counsel, in
argument, of an observation by Tenterden, that some person had
counterfeited Forsyth's mode of using the detonating powder,
and had thus infringed his patent.
The next authority relied on by the appelees, is Xeilson v.
ICarford, Web. Patl. Cases, 309. This case by no means supports the broad doctrine of my learned friend (Mr. CAMPBELL).
Quite the reverse.
The final judgment of the Court proceeded upon the express
ground that the specification did not claim  a principle, but
a described and embodied process.  "It is very difficult," said
the Court, "to distinguish it from the specification of a patent
for a principle, and trhis at first created in the minds of some
of the Court mnuch cif iculty; but, after full consideration, we
think that the plaintiff does not zmerely clanr aprinciple, but (6
maclcAine enmbodyingy Ca princple, and a very valuable one. We
think the CASE MIUST BE CONSIDERED AS IFg THE PRINCIPLE BEING
WELL iNOWN, the plaintiff had first invented ca mnode of cappiy.,ing it lby a mechanical acpparatus to furnaces; and his invention
then consists in this, by interposing a receptacle for heated air
betzween the blowing aclp)CaraCts and the fitrnace.e"  These citations are sufficient to show that this much misunderstood case
of Neilson v. 17CforCd, fat from. sustaining the doctrine of our
opponents, supports, directly and powerfully, the doctrine for
which we contend.
The Court after taking time to consider, held that N'eilson's
discovery of the fact that hot air was better than cold in a
blast furnace, could not be made the subject of a patent,
directly or indirectly.
The case was considered by the Court as if that principle
had been well known before the patent was issued.  The patent was on its face for a machine, and therefore was good: the




rest was a question of fact for the Jury; and the q(uestion
whether the Judge had properly charged the Jury, was nlot
I)efobre the Court —the motion for a new trial not being on the,round of misdirection. The remarks of the Judges to Counsel in the course of the argument, must be taken subject to the
final and deliberate decision of the Court.
A similar action was tried in Scotland on tlhe patent there.
Treb,.   GC. 673. An appeal from the judgment in favor of the
plaintiff; was taken to the House of Lords for the purpose,
amongst other things, of testing the accuracy of the Judge's
charge to the jury. See page 674. But it was held by the
House of Lords that the form  of the pleadings precluded the
discussion of the question whether the patent was for a principle. (Page, 701).
The counsel for the appellees are hardly more fortunate in
the next case which they cite.  Park, v. little, 3 TFasho 196.
The suit was for an infringement of a patent for alarml bells
for fire engines. In his charge to the jury, Judge Washington
treats the patent as one for the use of bells, affixed to fire engines in a described mode, so as to be rung by the action of the
englines when in motion. There is no intimation that the patent
is fobr the application of bells to fire engines in every mode. On
the contrary, the learned Judge expressly left it to the jury to
say whether the application of bells to engines used by defendants, was an improvement on the plaintiff's application ill
" principle or form," telling them, " If the former, it is no invasion of the plaintiff's privilege, if the latter it is."  The verdict
was for the defendants. The plaintiff was the first to apply
bells to fire engines. Hle claimed every mode of application.
IIe was allowed only his own. The question was between two
methods of application, and the jury found them  distinct in
principle. The case, therefore, is no authority for the doctrine
it is cited to sustain.
The next case cited by the appellees is that of Wallton v.
[Potteer, Tz'eb. Pat. Ccases, 586. In that case, however, there
was no controversy on the question whether a patent for an art
or principle could be sustained. It was assumed on both sides,
that such. a patent would be void; and the only question discussed, was whether the plaintiff's patent was not for an art or




principle, and therefore invalid.  The pleadings did not allow
even this question to be raised; and it was not decided. In
a subsequent case, however, upon the same patent~, RMr. Justice
Cresswell held that the subject of the patent was the combination
of the card teeth with an elastic back, or fillet of caoutchouc for
the production of an improved card. This, it was held, was
such an embodiment of the principle of adopting caoutchouc,
a flexible substance and very suitable for the purpose, as a back
or fillet for the card, as would sustain the patent.  Taken in
connection with its subject matter, I see no objection to the law,
as stated by C. J. Tindal, in the original case, and quoted on
the other side. It was sound doctrine as applied. It does not
touch the case of the appellees here.
The counsel for the appellees, also, seem to rely on the cases
of Crane Y. Pricei,;leb. T Pat. Cases, 375, and Minter v. iedls,
IVed. Pat. Cases, 134. It does not seem necessary to dwell on
these cases. The patent in the first case was for the coinbination of heated air with anthracite coal, for making ironlo Itwas
no patent for a principle; but for a combination.  The patent
in the second case, was for the application of a self-adjusting
leverage to the back and seat of a chair. This was not a patent
for a principle, but for a machine constructed upon a principle.
Lord Lyndhurst, C.B., said: "' The application of the self-adjusting leverage producing the effect, constitute8 the mackine;
and he clcaim2s t/ctt mnachine, and the right to make that machine
by the application of a self-adjusting leverage producing a parn
ticular effect."
Nor is it necessary to advert particularly to the late case
(1850-1) of the Electric Teleyraph Company v. Brett and -little, 4  fno. Law. anC1d -Eq. Rep. It certainly asserts no doetrinelinconsistent with that of the earlier cases. It is, perhaps,
worth while to observe, however, that this case arose -uipon
Wheatstonets patent for an Electric Telegraph making signs
by the deflection of a needle or indicator by means of electrod
magnetism; that this patent was sealed June 12, 1837; and dated 12 December, 1837; and that the case shows that this telegraph is most extensively employed in England.
After this review of the authorities, I think I may safely
affir'l that there is no English case which sustains tile doctrine




of my learned friend (Mir. CAMPBELL,)  Neilson's case is the
one most relied on by him, and yet we have seen the judges
treated Neilson's apparatus as a machize for conveying heated
air to the furnace, and sustained his patent upon that view.
The American cases, except two of which I shall presently
say a word or two, harmonize with the English.  I need only
refer to iVhtlLternore v. Cuttelr, 1 Gall, 478, 480;,Stone v.
Spragce, 1 Story, 270, 272; cand  VJ lyeth v. Stone, 1 Story, 285;
andc, %Smit v. Downoing, of which a pamphlet report is handed
to this Court.
In the first of these cases, Story, J. said "A patent can, in
no case, be for an effect only, but for an effect produced in a
given manner or by a particular operation."
In Stone v. >SprCague, the same learned Judge, after stating
the construction given by the Court to the patent, said,'" We
hold this opinion the more readily, because we are of opinion,
that if it be construed to include algl zocdes of communicating
motion from the reel to the yard beam, and of the connection
of the one to the other generally, it is utterly void, as being
anb cal2en])t to maintdain cpatcentfor an absttract p2rizc2le, or
for callpossible or probcable mnodes whatever of communication,
thonugh they may be invented by others and substantially cdif.
fer, from, the mnode described by the plgaintif i, his specifceation."
In TyJeth v. Stone, it was held also, by M1r. Justice Story,
that the inventor of one?zode of cutting ice by power other
than human, could not take out a patent for the art of cuttinog
ice generally by other than human power.
In S2vith v. DowzinSg, which was a case upon the very patent of Morse, now under consideration-a suit, by an assignee
of Mil[orse's patent, against assignees of HIouse's patent for thle
printing telegraph. A1r. Justice Woodbury reviewed the anthorities, and thus stated his conclusions: " WVhat is to be protected is not an abstract or isolated principle, but trhe embodimnent of a principl)e ieZo ca machline or  nzCufacctue as described in the specification; and it is the invention in conformity to that embodiment or representation of its working, wlhich
the act of Congress will protect." Again, " The impropriety of
claiming a patent for the invention or discovery of a new principlo, however important it may be pcr se, rests onw the idea




tlhat thel exclusive use of the invention for a term  of years is
given to the patentee, to reward his genius and expense in
Inaking the invention and pointing out in his specification, how
it can be used beneficially, and the machine easily made by
any mechanic, for general employment. The patent is, in such
case and must be in order topossess valicity~, not for the princi_le, but for the mode, nachtline or mcanufanctutre to carry out the
}rzey[le, and reduce it to practice. In short, the principle
thus becomes the mnoduts operandi, and rests on the new mode
adopted to accomplish certain results. And though some exprwesszons have been used by one or two Judges, which look i/ke
a sanction to patenting a principle, yet they are used in the
ca7ove sense of a principle in operation in the manner set out in
the specification, or are used too loosely from haste or inadverI have already said that Mr. Justice Woodbury reduced, by
construction, Morse's claims to the simple 6' use of the motive
power of the electric or galvanic current, in the form of his
application according to his machinery, and in the modes he
had described:" without this limitation, the'judge said, "' his
renewed patent of 1848, must be regarded as void for claiming
too much, and for wishing to protect a mere principle or effect,'however developed,' and without reference to any method described by him, and to cover a principle, also, before known.'
Against all this current of authority, there stand two decisions of Judge Kane, of the -District Court for the district of Pennsylvania —a learned and  much respected judge, certainly,
but unable, I apprehend, to overthrow  a rule of law so well
settled as that which I have been endeavoring to set clearly
before the court.  The two decisions referred to, are those of
Parker v. HIichre, and Frenclh v. RZogers.  In the last of these
cases, which was a suit for an infringement of Morse's patent
by the use of PBain's telegraph, patented in England in 184i,
and in the United States in 1849, Judge Kane broadly affirmed
that Morse, in each of his claims, asserted his title to "' no more
then lie was justly entitled to claim. lIe declared the existence
of a Ew ART, asserted his right in it as ITS INTENT.OR ANTD OWNER,
and an.ilorvncing fully its natlure and. elements, laniled, in re4




turn1,c thle contrattec pioteetion of the laws.:it was a letitlMiate
result of this broad (doctrline to hold, as the learned j udge did
h]old, that the use of BEain's patent, which operated by the mere
chemical effects of the transmission of the electric current
through prepared paper, without the use of electro-magnetisim,
and without the use of the recording'apparatus —having, indeed,
nothling in common with A;orse, except the production of visil)le marks, and the same general purpose to use those marks as
representatives of letters and words, for the commullnication of
intelligence-nothing in common, to use other language, except
mere effect and object —-as an infringement of Morse's patent.
In this the learned judge certainly did no more than carry out
hiis principle, which amounts to this: that ZMorse was THE rPROPRtIETOR OF TIIE ELECTRIC CURRENT for telegraphic purposes, and
thlat without discovering any new principle whatever.
I must be allowed to prefer, and I trnst this court wvill pre-'er, the sober and well sustained conclusions of Judge WAoodllry, to such a doctrine, leading to such conclusions.  Even
if one who  has been engaged  il investigations  into  tile
principles of science or thie laws of nature, and has discovw
ered an elementary principle, could monopolise the application
of it, (which I deny), by showing one practical mode of embo-,
(dying such principle; the cluestion arises, what principle has,
~Mr. Morse discovered?  It occurred to him  that the motion
which previous discoverers and inventors hacd been able to prolduce by means of electro-magnetism, might be made to mark
(lots and horizontal lines. A  simple contrivance sufficed for
this.  Could he thereupon take out a patent for the general
idea so as to include all sorts of contrivances for marking, and
all kinds of marks which could be understood  as representalives of letters?  Certainly not. And c fortiori he could not
by his claim cover contrivances for printing letters themselves.
I trust that I may now leave the proposition, tcat zo ccateq,,
caC' be 6&tctained for aCn cat or 2rintcilple or neore qfect, butz ow/ly
for tAe mazcteriaC emboCiment, o~r ti7e cevi'sed mzet7od or iPqoces
c6f c2p)lgicactio 7 of tfle at or pcrincilge
I now beg, the attention of' the court to the lirsi and finmdamental proposition, already stated, especially as boarinfc on tlhe
eihlt;lh of these clmais  IR is, in sitbstance, tliJs.




IVielre (a pat)en  elach2a8 AN EFviEacT W111C11 CANNOT -iBE P't1uO
lUCED by thle invenction as deIcscrib)ed iii the sweYCifCatiom, it C  is
In C'ossley v. Bevoerly, WT6. Pat. Cases, 109, 3rougllham.accurately states the law in this respect thus: 6The patentee
undertakes to guarantee to the community the use of all that lie
claims as his invention.  If he sets fourth five different things,
anc four of them be such as merit the highest planegyric, and
are of the greatest benefit to society, and if the fifth be ever so
t;rifling a pcart of the invention, but fail in either of the following ways; though the invention be truly described as to thle
other four, the patent is void as to these four as mnuch as it is to
the fifth,"
I ask the particuilar attention of the court to the case of
J'14toon  v. Greaves, cited in a note TIVeb. PCat. Cases, 42, and reported in full, 3  "carr &   cPa. 611.  In that case the patent wIas
l-r a "m61achine for sharpening knives, scissors and ratOi",or.'.
The method or machine described in the specification w7as
luncd to be applicable to knives only, and the patemnt was ad.l
judjged void.  This case is directly and completely in point.
The doctrine is thus stated  by Lord Elcdon, in hilt  v.
I7T'olmp)sozn, T-eb. Pat. Ucases, 923:T 1  I aml  compelled to add
that if a patentee seels by his specification any more than lie
is strictly entitled to, his patent is thereby rendered ineffectual,
even to the extent to which lie otherwise would  be fainly
entitlecld.
I refer, also, to IVycth  v. Stone, 1 Story 2S5, and Sln'mithv v.
Downinz?.  In the latter case Judge WAoodbluy said,' "TTe:-lvoidaneo of patents for claliming too much, is of frelquent
occurrence, and needs no explanation as to the reasons fohr it,
whle  an applicant is so improvident or ulljust to others as to
clailm for himself nmore than lhe invented, and the credit or profit
of which belongs to others rather than limself."
Let 3eorse's claims be tested by these legal rules.
Ain.d, first, let nLc ask-As the claim  set utp in the first clause
of thle summarly, onre that ca  be sustained    I hlave shown
what lie invented andl what lie did not invent.  I have analyzed




28
this first claim, and found it to assert Morse's exclusive right
to the use of' the motive power of magnetism  developed by
certain known means, to operate any machinery whatever for
imprinting signals or producing sounds for telegraphic purposes. This is nothing more nor less than a claim for the whole
art of telegraphing by imprinted signals or produced sounds.
HIaving invented one mode of exercising the art, he claims, not
his invented mode, but the whole art. iHe attempts the very
thing which all the English and all the American Judges, except
Judge KIane, say cannot be done.
What is the end aimed at by Morse? Clearly to imprint
signals and produce sounds at a distance. What means does
he propose to employ? The known motive power of electromagnetism in connection with certain machinery devised and
combined by him for marking signs, and making sounds. What
then is the spirit or principle of his invention? The comlbinantion of the electro-magnet and its armature, lever and pen
point, with his specified machinery, moving paper so as to re,
ceive impressions, and with an apparatus for ringing an alarm
bell. This is the essence of his invention. No man, by any
clhanges of form or substitution of equivalents, can deprive him
of that. Neither can he, having invented this combination,
appropriate to himself the end as well as the means, and secure
to himself a monopoly of the art of telegraphing by signels or
sounds, no matter by what combination of machinery or mechanical means, with the electro-magnet. As well might the
first applier of steam-power to the manufacture of cottons have
claimed for himself the use of steam-power by whatever machinery not only for the manufacture of cottons-a claim sufficiently absurd, but for the manufacture of every description of
goods used for clothing. The largest of these claims would
hardly have been a bolder generalization than this claim of
MAorse.
I pray the attention of the Court to what Mlorse calls "1 te
first P2rinci2pagl rart of Ais invention."  Look at the elements
of this " first principal part."  What are they?  A battery or
any known generator of galvanism; a circulit composed of any
known conductors; a port rule and signal lever or other con



29
trivance for closing and breaking the circuit, and an electromagnet. Every one of these elements was well known, except
the port rule and signal lever which turned out to be useless,
and for which the old simple key of Ampere has been stubstituted. But it may be said that these elements separately do
not constitute the "; first principal part."  True; but the coml
bination of these elements, so as to develope the motive power
of electro-magnetism, does; and it so happens that this combination is as well known and almost as old as the electromagnet itself. Now, if this combined apparatus, paraded as the
first principal part of 1MVorse's invention in the body of his
specification, were separately claimed in the summary, the
claim would be incontestibly bad. The combination of this
apparatus with any machinery not devised by Morse, would
furnish no better ground of claim except for the mnere combination; and no claim for a combination can be good where the
elements of it are not specified. Now, in this first claim of
nMorse only those elements are specified which are included in
6 the first principal part," and these are old; the other element,
namely, the machinery to be operated by the electro-magnetism,
is not specified at all.  The claim is for all machinery which
may be used to imprint signals or produce  sounds.  This
machinery is altogether potential. It is not in being, and of
course neither is nor can be described or specified.  It comes
then to thlis, that the claim  is for the combination of a known
motive power with machinery, neither specified nor capable of
being specified.
Can any thing be clearer than that this claim is bad?
I proceed to the consideration of the fifth claim of the summary.  Iere we find a distinct claim  for the system  of
signs, consisting of dots and spaces, and dots, spaces and horizontal lines, by itself and independently of combination.  In
other words, Morse here claims that he invented a system of
signs, substantially as set forth and illustrated in his specification, and that no other person has a right to use this system
for telegraphic purposes.  In the sixth clause of the summary
he claims this system, "; in combination with machinery:" and,




30
if this mleans int comn7bintation   wit7 is M8f9ce(iftc  mehC1'?,incry, thlle
claim may be good enough.  But in this fifth claim, the claim
is made to the system itself and by itself.
I submit that this claim cannot be supported.  Look at the
account given of these dots and lines in the body of the specification.  "  y system  of characters," says M]r. Mforse, (1)
"consists of dots, spaces and lines variously combined to forml
letters and other characters, a specimen of which is represented
in examples 1, 2 and 3.
These dots, lines and spaces, it is obvious, are the imere
effects of opening and closing the circuit. Press down the opcrating key, and thus close the circuit, and instantly the soft
iron bar, whether straight or U shaped, within the coil, instantly becomes a magnet, and attracts its armature, to which one
end of a lever is attached: the other end of course moves in
the opposite direction and carrying a pen point, impinges on
the paper moving before it, and makes a dot: now remove the
pressu'e from the key, and it is immediately retracted by a
spring and the circuit is broken. The armature of the magnet,
instantly released, is also retracted by a spring, and the pell
point is thus withdrawn fiom  the paper, which continues to
move, and thus a space is produced.  Press the key down
again and continue the pressure a little longer than beforoe,
and you have a line.
It is, perhaps, worth notice that in the specification no uscful mode of opening and closing the circuit so as to produce
these clots and lines, is described. The mode specified of thle
signal, lever and port rule has been long abandoned as inlcolvenient and useless, and the mode actually adoptedl, as abo-ve
set forth, is barely alluded to.
There can be no patent for known effects by new models;
but only for new modes of producing known effects. What are
these clots and lines but known effects  Dots and lines are las
old as marking; anld the use of clots and lines to represenllt icldeas
is not new.  MAly learned friendc (Mr. Campbell) was pleased
to indicate the system  of dots and lines devised by Dr. Swain
(1) Record, 77.




as a philanthropic contrivance to enable convicts to hold ilteicourse, The testimony is, that it was devised by Dr. Swain for
the ulse and amusement of himself and his friends.  -But this is
immaterial.  The existence of tIe system, for whatever purpose devised, proves that the representation of letters, etc., by
dots and lines was not new. But it is said that the use of dots
and lines in telegraphing is new.  This is true.  The motive
power of electro-magnetism —the only power yet known by
which mechanical effects at a distance can be produced, was
-first applied by Morse, so fcar as CZt  e evicdeece in Mte'recorsd
fskotos, to mark clots and lines; and these dots and lines are capable, as are all visible marks, of being used as the conventional
representatives of language. ]ut these marks are not the less
mecre effects; though they had not been before produced by
electro-magnetism at a distance, and, of course, had not before
been used for telegraphic purposes.  It is clear I apprehend,
thlat Mi0orse canlnot have a monopoly of these effects, the sinm
plest and most elementary effects of the action of electro-mnagnotic machinery, operated from a distance by means of the
electric current.  lie could not have a patent for marks generally produced by electro-magnetism, nor for marks used as
symbols of' language; for everybody knew that all marks coul d
he so used.  MlAuch less could he have a patent for marks used
as symbols of language, produced without the use of any electro-magnet and by a process entirely distinct from his. IlIe
could have a patent for his systema  of signs —that is to say
for his methodical arrangement of dots and lines so as to form
an alphabet, in combination with his machinery or mneans of
producing them. They are so claimed in the sixth clause of the
summary, and I do not deny the validity of that clailm.  What
I do deny is the patentability of a system  of signs, abstract;
cdly fiom the machinery or process by which the effects, used,
assigns, are wrought. Such a system 1m-ay, indeed, be described
in language  but it can exist only in idea,  It has nothing
nechanical or material about it.  For the description of it a
copyright mighlt be had; but it cannot, in my judgment, be thie
sibjcJGt o[ a    to patena        t would create a moost odious
vnnuoy0olvy,  uu  cut off all improvement by making it unlawful:Fr otllers to use a, y arrangenent(c ofnmarks1 however prodluce(d




and by whatever mecllanical means, a; Symubols of language or
ideas, for the purpose of communicating intelligence at a distance. It would be more than a patent for effects; it would
be a patent for ideas of effects.
I come now to the eighth claim, I have already said that
this is the most remarkable claim of all. It is so. The first
claim is to an exclusive right to all machinery worked  by
electro.magnetism, for imprinting marls or signals: the fifth
seeks to appropriate all marks capable of being used as symbols at a distance, by whatever means made; but in the eighth
claim he limits himself to no machinery, and to no marks or
system of marks. It is a sweeping and comprehensive claim
to the use of the'motive power of the electric current, however
developed, for m'iarking or printing characters, signs, or letters,
at anv distances, far or near.
In one respect, however, this claim is more modest than the
fifth. In this claim the patentee does limit himself to the use
of the motive power of the current:-while in the fifth, he
claims the effects of its application, whether produced by the
same or any other agency.
Blut if the fifth claim is broader in one direction than the
eighth, in another the eighth is broader than the fifth. The
fifth is restricted to simple mnarks or "' dots and lines:" —the
eight comprehends "' letters "' also.
Let me ask the Court to consider the extent of this claim.'What is included under the phrase, " motive power of the
electric current," however developed?  Scientific writers, indeed, one of the learned counsel (MLr. HNarding) have told us
that the magnetism developed in the soft iron bar of the electro-nlagnet is not the only motive power of the electric current.
Even Morse himself, Ihas described this power as used to deflect needles prior to his invention: and the evidence before
t?/e Court in this cause shows that Steinheil used these deflections to make marks before Morse first filed his caveat: —though,
it must be confessed, as I have often admitted, that this
evidence does not show that Steinheil's application of the needle




to this use, preceded in time Morsels application of the armature of the magnet to the same use. Morse's invention included  the electro-magnet, as a means of working  his
marking apparatus: Steinheil employed electro-magnetism in a
different way for his mnarking apparatus.  Now in the eighth
clause under his general description, Morse claims Steinheil's
method as well as his own.
But there are other modes, yet more absolutely distinct froml
Miforse's, in which the motive, power of the electric current can
be employed to imprint characters or letters at a distance.  Of
these modes, some are not included under the general description of methods of using electro-magnetism, though  they
are modes of using the motive power of the electric current,
and therefore come under Morse's description of what he " calls
electro-magnetism." Axial magnetism, spoken of by 3Mr. Justice
Woodbury, as used in Hlouse's printing telegraph, is one of
these. There may be still other undiscovered modes of using
the electric current as a motive power: all these, discovered
and undiscovered, Morse claims in this sweeping clause.
But nMorse does not stop here. I-le does not claim this motive power for imprinting signals or producing sounds, as in the
-first clause, but for marking or printing charcacters, si/ns OR
letters.
Thus, this eighth claim, in its two branches, covers the whole
art of telegraphing, —the whole power, and all possible applications of the power, by marking or printing. If this claim can
be sustained, there can be no improvement during the existence
of the patent. Morse claims the art-and this claim includes
all improvements.  Such a patent, founded on a particular
application of a known motive power, through certain devised
machinery, to the production of particular effects, cannot be
sustained. Mr. Justice Woodbury well states the consequences
of the opposite doctrine. " Such a doctrine"' he says in Snmithl
v. _Downing, "' would discourage progress, rather than encourage useful arts, as the constitution wishes to be done by granting patents. It would after one invention, as to the same subject, or same principle or art, halt and bar all further advances
on the same subject. It would petrify everything as it stood,




to the great loss of mankind, and in derogation of both public
and private rights to advance human  improvements and
human power. It would also, render the first improver a monor
polist, and exclude the exercise or reward of further genius,
science and labor, in the same line, however useful, and however
much needed beyond what has been already accomplished."
In another part of the same opinion, the distinguished judge
says:  "N o lawyer, conversant with the patent system, could
for a moment suppose, that because Arkwright first invented
and perfected the art of spinning by machinery, he could have
taken out a patent generally, and covered and monopolized
all kinds of future and different improvements in that art.  On
the contrary he could shield no mode of the art, but that which
he had devised, used, and described. So, it has been held that
a patent for cutting ice by human power, does not cover any
mode but that described."'
" So, though Woodwortlh first invented planing boards by
machinery, he could not take out a patent for that art, principle, or system generally, and thus either prevent or monopolize
fiture improvements when differing substantially from his machine  Blut the whole effort of Woodworth's assignees, has
been to describe his particular mode of planing, so as not to
omit anything material or to cover too much  and no attempt
is made to protect anything connected with planing by machiL
nery, except the mode thus described, or what is substantially
the same."
In his patent, as we have seen, Mir. Mlorse claimed only his
invented mode of telegraphing.  Subsequently others have become interested in his patent, whose aim naturally is to exclude
all. competition. It is, perhaps, under the advice of these
associates that he has so extended his claims as to embrace the
whole art of telegraphing by imprinting. But certainly he
claims too much; and a patent which claims too much cannot
be supported.
There is another objection to this eighth claim, which, if
less imposing, is not less decisive. In claiming the use of the
motive power of the electric current to iPRINT LETTEiRS, he has
shown no mode in his specification of doing this. There is
nothinlg in hlis description firom which any one could conceive




35
that he even thought thought    printing of ltters possible. Certainly
he had invented no mode of printing letters.  " The inventor
is not to be protected" says Judge Woodbury, in the case so
often cited, " unless he describes fully and plainly what he has
done, so that the public may copy or imitate, and use it after
his term expires."  And again: —6I What he does not describe,
and certainly what in the misty future he cannot describe, he
must be presumled not to have invented."
The case of Felton v. Greatves, 3 (carr. & EPa. 611, also already
cited, is in point, if further authority be needed for this
position.
And there is no decision opposed to this doctrine. The point
did not arise before Judge Woodbnry or Judge Kane. The
copies of the patent before these judges, were incorrect in the respect I have already mentioned. The claim as set forth in those
copies was confined to the production of "; characters, signs of'
letters" instead of character, signs or letters," the words actually
used in the patent. Of course upon the patent as thus printed
this question could not arise; for no one denies that Morse invented a mode of imprinting characters, that is dots and lines or
signs or representatives of letters. For that, he was entitled to
a patent. But he never invented, and has not described, any
muode of printing letters; and yet his patent extends to every
mnode of printing letters. It would be impossible to make letters by the process invented and described by lMorse.  M[achinery to produce that effect must be as different from his, as
that of a steam-engine from that of a watch.
There can be no possible answer to this objection to the
patent, except the assertion that the eighth clause merely claims
the effect which the described invention could produce, and
that the word "' letters" is the mere synonym of " characters" or
4' signs;" the mere synonym, in other words of 6; dots and lines."
I submit, however, that this cannot be the true construction of
the clause. If the intention had been to confine the claim  to
the mere inarking of representations of letters, appropriate language could have been easily found.  But the intention was
obviously otherwise. The first claim is for marking "signals;"
the third is for the "; system of signs;" the eighth for marking




36
or prinl;ing characters, signs, or letters. The intention obvi
ously is to claim everything which canll be effected by the use
of the motive power in the communication of intelligence by
any recording apparatus, whatever the manner or subject of
the record. BMr. Morse, or his advisers, evidently supposed
that he, having invented a method of making visible and permanent impressions by means of electro-magnetism, was entitled to a patent for every mode of using the motive power of the electric current, no matter whether developed in
the mode known to and used by Morse or any other, to make
visible and permanent impressions, by whatever machinery,
and of whatever description. It is true that his counsel, Messrs.
Campbell and IIarding, in their brief, now confine the claim to
6 telegraphic signs," (brief, p. 8,) and that Mr. Gifford's argumrent is inconsistent with the claim even to that extent. It is
true, also, that Judge Woodbury, in tenderness to the patentee,
reduced the claims within legal limits; but he would hardly
have adopted this limited construction, had a correct copy of the
patent been before him.  The only legitimate object of construction is to ascertain the meaning of the persons using the
language. In this case there is no doubt as to that.
To me the conclusion seems irresistible from the arguments
I have now submitted, that the first, fifth and eighth claims of'
the patent of 1840, as re-issued in 1848, are void, because they
claim too much; because they claiml a principle or art generally; because they claim effects, independently of the machinery producing them; because they claim results or operations
which cannot be accomplished by the machinery specified, or
any similar machinery.
It is proper to observe, here, that the legal principles which
condemn these three claims, touch nothing which Morse acttually invented, or for which he originally sought the protection
of a patent. The essence of his invention, as described in the
first specification of the patent of 1840, was the combination of
the electro-magnet, operated by means of the electric current,
with the armature of the magnet and its lever and pen point,
and with the apparatus for moving the paper so as to receive




impressiolns fi'onl the pent point, when moved by the magnet.
This invention was protected by the patent of 1840, as originally issued; and the claims of 1848, so far as they are confined
to this invention, are not disputed. And further, the combination of the whole apparatus with MYorse's system of signs, gives
him the exclusive right to the use of his system in his devised
mode. And, further yet, the claim to the combined circuit
is not disputed, except upon the ground of prior invention
and use. We admit cheerfully the doctrine of Judge Woodbury, with respect to these claims: i" It would amount to an
infringement of such an invention as Morse's, or the patent
of it, to adopt his mode of acting, operating, etc., or merely
to change it by substituting some mechanical equivalent
in a part of it, or altering only the form and proportion so as
not materially to affect results, or making any change merely
evasive, colorable, and not substantial and considerable in its
character." We repeat that we have no desire whatever to deprive Mr. Morse of anything he has invented. We do not dispute
his right to anything covered by his original patent, except
the combined circuit. We contest only those claims which
have been advanced for the purpose of setting up a monopoly
in telegraphing, not thought of when the original patent was
obtained. The rules for which we contend afford ample protection to Morse, while they protect the public against an absurd
and odious monopoly.
I proceed to consider briefly the effect of rejecting the first,
fifth and eighth claims, or either of them, upon the patent, and
upon the pending suit.
It will not be denied, that, as the law stood prior to 1837,
the excessive claims in these three clauses of the summary
would avoid the patent altogether. It is true, there might be a
surrender of a patent defectively specified, and a re-issue for
so much as was truly the invention of the patentee,@- but proof
of excess of claim was a complete defense to any suit for injunction or infringement, founded on the patent vitiated by it.
No disclaimer filed during the pending of any suit could affect
such suit.'t
X Act 1836, Sec. 13.             l Act 1847, Sec 7.




It has been supposed by some, that thle ninth section of the
act of 1837 authorizes suits without any disclaimer, upon pattents otherwise invalid for excess of claim. But it has been
held by Mr. Justice Story, in ifyetUh v. Stone, 1 Story, 194,
that' the disclaimers in the ninth section (of the act of 1837)
apply solely to suits brought after the disclaimer is filed;" and
on the next page he further remarks, that " whatever might be
the right or remedy at law," under this section, "' a Court of
Equity ought not to interfere to grant a perpetual injunction,
unless a disclaimer has been in. fact filed at the patent office beolre the suit is brought."
This ninth section is certainly very loosely and confusedly
worded.  It admits of two constructions: either 1st., that a patentee who has claimed, through mistake, accident, or inadvertence, and without design to defraud or mislead, more than he
has invented or can lawfully claim, may nevertheless maintain
a suit in law or equity for any infringement of such part of the
invention as is truly his own,-such part being substantial and
material, and definitely distinguishable from what was claimed
without rights-without filing any disclaimer; or secondly, that
such suit may be maintained after fling a disclaimer. Taking
the seventh and ninth sections together, and it would seem that
a disclaimer should be filed before suit. At all events, it seems
certain that a suit brought without a disclaimer, can only be
maintained specially for an infringement of tAe apctr of the invention justly claimed. It cannot be a suit on the patent at
large, with a right to recover if any part of the matter patented
sliall turn out to be the invention of the patentee. If this
were so no disclaimers would ever be made.
But could the complainants in the present suit avail themselves of this section, even if, in a proper case, a suit might be
maintained upon all the claims in the patent, and a recovery
had on the good claims only? Can it be said that Nlorse has
by mistake, accident, or inadvertence, inserted these three
claims?  The orig'nal patent was issued in 1840; these claims
were not set up till 1848, when upon the second surrender the
third patent was issued embracing them. And can the claim
of the whole art of telegraphing by imprinting be definitely
distinguished from the valid claims?  If either of these ques



tions must be negatively answered, this section cannot, as it
surely should not, avail the complainants in this cause.
3Moreover, the law did not authorize the re-issued patent to
include claims not mnade in the original patent. It follows that
the' re-issued patent is void; and as the suit is brought upon that
patent and not upon the original patent of 1840, the decree of the
Court below should be reversed. This question has been so
fully argued by mny colleague, that I do not deem it necessary
to examine the statute and tile authorities in detail.
T have thus far considered claims of this patent in respect to
extent, let me now ask the attention of the court to its claim s
in. respect to duration.
On the 18th of August, 1388, Mlorse obtained a patent for
his telegraph in France. On the 20th June, 1840, he obtained
a patent for the same invention here.
Ile first applied for a patent here on the 9th April, 1838o
The bill of complaint is silent in respect to this application, "
and the deposition of Page; and the letter of Ellsworth, which
mentions it, states nothing in respect to its contents. t  The
answer denies that this application was for the patent which
was actually issued. 4   On the 13th May, 1838, Morse requested the commissioner of patents to delay issuing the letters
patent until after advices from himn in Europe, whither he was
to sail the next day.    Naothing more was done for two years:
when M3/orse again applied for his patent, and a correspondence
took place between him and the commissioner,  Upon the suggestions of the latter, the specifications were withdrawn for
amendment, and underwent various alterations;   a fresh oath
was taken  and the corrected specification returned to thoe offi-ce;
when the patent was issued,
These facts warrant us in saying that the true date of the
application upon which the patent was issuecl, was not earlier
than BIay 25 1840: and it is manifest that any other ruling
would open the door to great frauds.
If we are right in this, it cannot be denied that the Ameri.:ican patent shou'ld be limited to fourteen years from  thle l Sth
Record tj?,  |  Ord. 100, 12  Renord(] 2!5    ~ ieordt 98




40
of Augulst, 1840, the date of the French patent, whereas, in
fact, it grants an exclusive privilege from the 20th June, 1840.
3But it may seem proper to the court to hold that an application, once fled, can be suspended, while the applicant goes
abroad, ascertains the results of foreign skill and invention,
and obtains a foreign patent, renewed after his return, with an
amended or altered specification, and yet be treated as filed,
in its final shape, at the date of the original filing.
Upon this hypothesis, how stands the law?
The seventh section of the act of 1836, prohibits the issuing
of a patent to any person where it appears that the invention
"had been patented in any foreign country prior to the application."
A proviso in the eighth section of the same act, allows the
original and true inventor to take out a patent in this country
notwithstanding he may have obtained a foreign patent, " at
any time within sin x moznths next preceding the filing of his
specification and drawings."
The sixth section of the act of 1839 removes this restriction
of six months, and allows any inventor to take out a patent here,
although his invention " may have been patented in a foreign
country more thavn six monrths prior to his application" with
this proviso " that nin all cases every such patent shall be limited to the term of fourteen years from the date or publication
of such foreign letters patent."
Our learned opponents insist that this proviso shall be confined to patents applied for here more than six months cfter
the date of the foreign letters patent; that MWorse's patent was
applied for before the date of his foreign patent; and that
consequently the limitation of term does not apply to him.
We insist on the contrary, that all the provisions respecting
patents issued here after patents issued abroad, are to be taken
together; and that, taken together, they constitute a general
uniform provision, that no person shall be debarred from  obtaining a patent in this country by reason of having obtained a
prior foreign patent, but that in all such cases the American
patent shall be limited to fourteen years from the date of the
foreign patent.
This construction is commended by the uniformity of the




41
rule it establishes cand it manifest accordance with the intention
of the legislature. I see nothing to recommend the construct
tion of our opponents, except that it will screen Morse's patent
from the rnle. But this will be accomplished at the expense of
a mere technical construction, establishing differing rules in
respect to patents granted here after similar grants abroad,
That I am right as to the intent of Congress, is manifest
upon a comparison of the proviso in the act of 1839, with the
proviso in the act of 1836. The language of the former proviso
is taken from the language of the latter. The latter speaks of
"n letters taken out and published in a foreign country."  The
former speaks of the;; date and publication of the foreign let
ters patent',"'fthus showing that the legislature had in mind
not the antecedent clause in the same section only, but the
prior provision of 1836.
it seems to me quite clear, then, that Morse was only entitled
to a patent for fourteen years from the 18th August, 1838. In
granting to him a patent for fourteen years from  o0th June,
1840, the Commissioner exceeded his power. The patent is
consequently invalid. It; might, no doubt, at any time during
its legal term  have been surrendered and reissued, properly
limitec in respect to time  but as it has been suffered to stand,
it cannot be sustained.
I now proceed to the consideration of the patent of 1846
reissued in 1848.
And the first observation which occurs, is that this patent
professes to be for an improvement of the telegraph invented in
1840; and the question is irresistibly suggested:  how  can
Mr. Morse have a patent for an improvemeut, when he already
claims to have a patent for the art in all its branches, and in
every development? If he has that, he already has a patent
for all possible improvements.
But not admitting that the patent of 1840 is for an art in
the abstract, I do not urge this objection to the patent of 1846.
There is a much more serious objection. It is that the claim
for the local circuit in the patent of 1846, is substantially the
same as the claim  for the combined circuit in the patent of
1840. Compare the description of the combined circuit in the
6




42
original patent of 1840O: with the claimn of the local circuit in
the patent of 1846 re-issued in 1848.t
The first, or combined circuit, is described as an original
circuit having within it, at any convenient point, an electromagnet with an armature upon ar lever so arranged as to close
and break a second circuit, with an independent battery, instead
of operating a marking instrument.  In this second circuit
there is a similar arrangenment for closing and breaking a third
circuit with its independent battery; and so on indefinitely;
and in each of these circuits, besides the receiving magnet
employed to close and break the next, there were placed as
many other magnets to work registers as occasion required.
The operator at the transmitting station, pressing his key,
would close the first circuit; when the receiving magnets and
register magnets would instantly act upon their armatures, and
thus close the next circuit and also operate the registers in that
circuit: the next circuit, being thus closed, the same operations
would be repeated in the next, and so on indefinitely.
The second or local circuit, as described in the patent of
1846, is precisely similar to the combined circuit, with this dif
ference only, that the receiving magnets are all placed in one
circuit, instead of a number of successive circuits: but their
function is the same, to close and open second circuits within
which are register magnets performing precisely the same
functions as the register magnets in the combined circuits.
What difference of principle is here? In both, the operation
is the same and the end the same. In both, we have receiving
magnets and register magnets. In both, the operation of the
receiving magnet is to close and break the next circuit. In
both, the operation of the register magnet is to work the marking
apparatus.
One of the counsel for the appellees endeavored to distinguish  them by three circumzstances of difference.-I. That
by the combined circuit pulsations could be transmitted only
one way; while by the mnain and local circuit they could be
transmitted either way.  2. That by an adjustable spring the
armature of the magnet is drawn back when the circuit is
* Record 62:                  f Rlecord 87.




43
broken. 3. That by adjusting screws tile power of the spring
is diminished or increased.
But it so happens that all these circumstances meet in the
combined circuit as well as in the local circuit.
Pulsations can be transmitted either way by the combined,
as well as by the local circuit. All that is necessary is to keep
the several circuits connected by a short piece of wire or any
other conductor.  Then the operator at either end can work
the whole with perfect facility, and this was doubtless done before the employment of the local circuit. Accordingly we find
on consulting the claims and specifications of the two patents,
that Morse himself does not make any such distinction between
the local and combined circuits, as his counsel make for him.
As to the adjustable spring and adjusting screws, no claim
is made to either of them by Morse by his specification of the
patent of 1846, and a glance at the drawing, (example 11, figures 1 and 2), referred to in the specification of the patent of
1-840, re-issued 1848, as illustrative of the combined circuits,
will enable the Court to perceive the identical spring and
screws referred to as distinguishing the local circuits.
I add but a single question;  Can it be believed if any iman
had devised and used the local circuit, that Morse would not
have complained of it as an infringement of his patent for the
comlbined circuit?  Can any body believe that in such a case
Morse would not have claimed the local circuit as identical in
principle, and substantially identical in mode of operation with
the combined circuit?
I pass, barely mentioning it here, Professor Henry's contrivance for breaking and closing a second circuit, used in 1833 or
1834, which left nothing new in point of principle to be invented
by Morse, or any body else, for extending telegraphic circuits.
It is enough for my present purpose to prove that the local
circuit of 1846, was embraced under another name in the
patent of 1840, to take away all ground for sustaining the see
ond patent.
There remains for me but a single topic; all other matters,
not already discussed by me on this occasion, I must submit to
the Court upon our brief in the case, and upon the argument of
my able anid learnede associate, (r. GITLET).




44
The single topic remaining for me is the question of infringement.  And I will not say to the Court upon the evidence in this case thatthe appellants have not, in some respects,
infringed the patent of the appellees. But I will say, that I
believe the ingenious gentlemen, who invented in Kentuclky
the Columbian Telegraph, were far from supposing that, by its
use, they infringed the patent of Morse. And I will say farther that in my judgment the Columbian Telegraph is, in some
important respects, an improvement upon the Morse Telegraph. Learned, skilled and upright men, wholly uncontradieted and wholly unimpeached, testify that the employment
of permanent magnets in the Columbian Telegraph render the
instrument much less liable to disturbance by atmospheric
electricity; so much less that it can be operated several hours
a day upon an average mnore than Morse's. This is a great, a
Tmost valuable improvement.
Nor can the Columbian Telegraph be considered as any infringement of Morse's in any part of its arrangement from the
battery to the electro-magnet; for no part of Morse's arrangement, as actually used, has, within their boundaries, any thing
new in it,
The infringement comnmences with the addition of the pen
point to the lever affixed to the armature of the magnet and the
combination of this lever and pen-point with the registering
apparatus. The infringement not only commences, but it ends
here, unless Morse is entitled to the combined or local circuits
notwithstanding what was done by Professor Henry. If he is
so entitled, the infringement extends also to the use of these
circuits.
These are the limits of the infringement:  but clearly any
ulse of the known battery, the known circuit;, the known key,
the known electric current, and the known electro-magnet, in
their known combination, in any other way than to make signals
substantially in the mode adopted by Morse, would have been
no infringement. This apparatus might be used to make visible
signals without marking; and the impulsion of the armnature
upon the magnet would necessarily produce sounds. These
signals, these sounds might be observed, and thus intelligence
might be imperfectly tra.nsmittetdl  But the decree prolibits




45
the use of even this apparatus, no part of which nor the comnbination of which was invented by  l[orse for making signals or
producing sounds. To this extent the decree must be reversed,
whether all the claims of Morse be sustained or not.
It is perhaps needless to remark, that the only production
of sound claimed by Miorse, is through the ringing of an alarm
bell in the mode specified by him, or in any substantially identical mode. Hie specifies no other mode, and could of course,
have a patent for no other.
I farther submit, that the Court below erred in granting an
injunction, as the validity of the patent was questioned, and
the novelty of the invention patented, was in many respects
denied.
It is not correct to say, that a trial at law  is merely required, in order to satisfy the conscience of the Chancellor before he issues an injunction. Such a trial and a final judgmnent in favor of the plaintiff is required as a condition precedent to the exercise of the Chancellor's jurisdiction, where
there are serious objections to the validity of the patent, or
where there is a reasonable doubt about the alleged infringenent. This is the well established law in England.
I now take my leave of this case. It is one of great interest and expectation. It is one of vast importance to the parties, and in respect to the principles involved, of vast importance also, to the public at large. I commit it cheerfully to
the judgment of this Court. Supplying by your learning the
omissions of counsel, and by your disciplined judgments, the
defects of their a rguments, unmoved fromn established principles of the law by the novelty and wonderful characteristics
of the subtle element, the applications of which are the subject
of controversy, and only stimulated to more diligence in invest;igation and carefulness in conclusion by the difficulty of some
of the questions involved, you will, I am sure, endeavor to do
impartial justice between these parties, by so administering
the law as to protect at once the rights of individuals and of
the Tal)bic. Iln behalf of may clients I ask no imore