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A COLLECTION

PATENT CASES,

DECIDED IS THE

SUPREME AND CIRCUIT COURTS

OF THE

UNITED STATES,

FROM THBIR OBGANIZATION TO THE TEAR 1850.

WITH

NOTES, AND A COPIOUS INDEX TO THE SUBJECT-MATrER.

WEC

By JAMES B. ROBB,

COUNSELLOR AT'lj^W.

• •,

• •

( »

» ■< ^

VOL. n.

BOSTON:
LITTLE, BROWN AND COMPANY.

X DCCO UT.

Entered according to Act of Congress, in the year 18^4, by Littlx, Bbows
ASD CoMFAKT, in the Clerk^s Office of the District Cionrt of the District of Massa-
chusetts.

323619

< *

• *

KIVEBSIDS, CAMBRIDGE:
riUNTED BT H. O. HOUGHTON AND GOMPANT.

TABLE OF CASES.

Abbott, (Howe r.) 99

Aiken t;. Bemis . . 644

Alden et al. v, Dewey et al 17

Allea tJ. Blunt 288

Same v. Same et al 530

Ball et al., (Root v.) 513

Barnum, (Wilson v,) 749

Bean v. Smallwood 133

Bemis, (Aiken v.) 644

Bicknell et al., (Brooks t7.) 118

Blanchard v. Eldridge 737

Blunt, (Allen v.) 288

Same et al., (Same v.) 530

Bod fish, (Eastman v.) . . . . . .72

Boyd V, Brown 203

Same v. McAlpin 277

Braintree Manufacturing Co., (Carver v.) . 141

Brooks et al. v, Bicknell et al. 118

Same v, Byam et al. . . . . . . . 161

Same et al. v. Stotley 281

Brown, (Boyd v.) ....... 203

"T%-

IV 0A8ES REPORTBD.

Brown, (Davoll et al. v.) 303

Bryce v. Dorr et al 302

Buck et al. v. Gill et al 510

Byam et al., (Brooks t^.) 161

Calvert, (Nesmith v.) .,,... 31 1

Carver v, Braintree Manufacturing Co 1^1

Case V. Redfield et al 741

Cheever et al, (Woodworth v.) 257

Comstock, (Phillips v.) 724

Corbin, (Parker v.) . ^ ...... 736

Curtis, (Woodworth ».) .603

Cutter et al., (Reed v.) 81

Davoll V. Brown 303

Dewey et al.,' (Alden et al. v.) 17

Dorr et al., (Bryce v.) 302

Draper et al., (Prouty et al. v.) 75

Eagle Screw Co., (Pearson ».) . . . . . 268

Eastman v. Bodfish 72

Edwards et al., (Woodworth et al. v.) • . . • 610

Eldridge, (Blanchard v.) 737

Emerson, (Hogg et al. v.) 655

Gill et al., (Buck et al. ».) 510

Grould, (Washburn et al. v.) . . • . . . 206

Greenwood et al., (Hotchkiss, Executrix, v.) . . . 730

tn^^r

CA8BB KBPOBIBD.

Hall et al., ( Woodworth et al. r.) 495

Same et al., (Same et al. v.) 517

Haworth, (Parker v.) 726

Hotchkias, Executrix V. Greenwood et al. . . • 780

Hogg et al. V. Emerson ...... . 6&5

Hovey v. Stevens 567

Same, in Equity r. Same ...*... 479

Howe V. Abbott 99

Kingsland, (McCIurg v.) 105

L.
Littlefield et al., (Orr v.) 828

McAlpin, (Boyd v.) 2T7

McCIurg V. Kingsland 105

Merrill, (Orr v.) 831

Nesmith t;. Calvert 811

Orr v. Littlefield et al 828

Same v. Merrill ' . . 881

Parker v. Haworth 725

0A8BS BBPOBTED.

Parker v, Corbin

Pearce, (Smith v.)

Pearson v. Eagle Screw Co

Peterson et al. v. Wooden ....
Philadelphia and Trenton Railroad Co. v. Stimpson
Phillips V, Comstock . . • . •

Pitts V, Whitman

Prouty et al. v. Draper et al.

Same et al. t;. Ruggles et al

Providence Railroad, (Winans v.)

736

268

116

724

189

136

Railroads, The (Stimpson v.)
Same, (Wilton v,) .
Redfield et al., (Case v,)
Reed v. Cutter et al.
Roberts et al. v. Ward et al.
Rogers et al., (Woodworth et al. v.
Root V. Ball et al.
Rousseau et al., (Wilson v.)
Ruggles et al., (Prouty et al. v.)

)

595
641
741

81
746
625
513
372

Sherman, (Woodworth v.)

Simpson at al. v, Wilson

Smith V, Pearce et al.

Small wood, (Bean v.) .

Sprague, (Stone v,) ^ .

Stanley v, Whipple

Stevens, (Hovey, in Equity v.)

Same, (Same v.)

Stimpson, (P. & T. Railroad v,)

Same v. The Railroads

Same v. West Chester Railroad

Stone V. Sprague

Same, (Woodworth et al. r.)

257
469

13
133

479

567

46
595
335

10
296

CASES BSPORTED.

Vll

Stone et al., (Wyeth et a1. t;.)
Stotley, (Brooks et al. v.)

281

Turner, (Wilson v.) 467

Underbill et al., (Wood t;.)

568

Ward et al., (Roberts et al. v.)

Wasbburn et al. v, Gould

West Cbester Railroad, (Stimpson v.)

Whipple, (Stanley t;.)

Whitman, (Pitts v.)

Wilson V, Bamum . . . ,

Same v. Rousseau et al.

Same, (Simpson et al. r.)

Same v. Turner et al.

Same et al., (Woodwortb et al. v,)

Wilton V, The Railroads

Winans v. Prov. Railroad Co.

Wood V, Underbill et al. .

Wooden, (Peterson et al. t;.)

Woodwortb v. Cheever et al.

Same v, Curtis • . >. .

Same et al. v, Edwards et al.

Same et al. v. Hall et ah

Same et al. v. Same et al.

Same et al. v, Rogers et al. . " .

Same v. Sherman

Same et al. v. Stone

Same et al. v. Wilson et aL

Wyeth et al. v. Stone et al,

746
206
335
1
189
749
372
469
467
473
641
136
588
116
257
603
610
495
517
625
257
296
473
23

. • • •

V .• •.

A COLLECTION

• • •

PATENT CASES

DICXOBB IH THS

CIRCUIT AND SUPREME COURTS

THE UNITED STATES.

Henbt Stanley v. Emor Whipple.
[S McLean, 85. December T. 1889.]

To entitle an indiyidiial to an ezdasiye right, under the Patent Law, his inyen-

tion must be mibetantiallj difibrent ftom anj machine or thing in use.
A patent is void where, In his specificationB, the patentee dainu morn than he

has invented.
Under the Patent Law of 1886, a patent which contains corrected specifications^

has relation back, and, for all legal pniposes, coyers ihe whole time, from

the emanation of the first patent, which, for defoctiye specifications, had been

declared yoid.
In SQch case a contract to sell the right is made good hj the second patent
A patent to be yalid, must be of some ntiHtj.
The books of a party are not eridenoe, unless made so by a call to produce

them, &c.
A Terdlct will not be set aside where the eyidence conflicts. It was for the jniy

to weigh the eyidence. A declaration mnst contain a statement of fiusts,

which, in law, giyes the plaintiff a right to recoyer.
This is the question to be answered on a demurer. Bat after yeidict, defects,

in substance, are cured, if, from the issue in the case, the focti omitted, or

defectiyely stated, may fisirly be presumed to haye been proyed on the triaL

TOL. II. — P. O. 1

2 /PATENT CASES.

•-•

■ ».

■«*•

V S<«nlef V. Whipple. 8 McLmb.

• • •- *
Where a oontMW^ wds the defbndant to pay flre doDan for etch itoTe sold, m

M in fhij «caM,'^e special contract need not be dedared on; the amount

reoev^'^iilty be recoTered on the general count for money had and le-

• •

'l Mb. Chase appeared for the plaintiff, and Messrs. Storer
' and Eells for the defendant.

Opinion of this Court.

The defendant's counsel moved the Court for a new trial
on the following grounds : —
[ * 36 ] * First : That the verdict of the jury is against
law and evidence. ;

Second : The damages given by the verdict are excessive ;

Third : Because the Court erred in its instruction to the
jury to exclude the evidence from the defendant's books ;

Fourth : Because the Court erred in its instruction to the
jury, that the second patent, if valid, had relation back to the
time when the first patent was obtained.

The Court will consider the first and fourth grounds' in
connection.

The contract, on which this action is brought, is dated the
3d of October, 1833, in which Stanley agroes to sell to the
defendant the right of making and vending a stove, for which
he claims a patent, (which patent is not yet obtained,) in the
city of Cincinnati, Ohio, <&^., for which the defendant ag^pees
to ^y five dollars for each stove that he shall make and
sell, &c.

The plaintiff, after proving the contract, and giving it in
evidence, introduced his patent, dated the 88th November,
1836.

This patent is objected to, on the ground that its date is
long subsequent to the date of the contract ; and, it is con-
tended, that it does not make good the right of the plaintiff

PATENT CASES. 9

Stanley v, Whipple. S MeLean.

from the time he originally applied for a patent and obtained
one^ which proved to be inoperatire and void.

It appears the first patent of the plaintiff, for his inventioni
was obtainedthe 17th December, 1832 ; and which was de-
clared to be void and inoperative by the Circuit Court of the
United States, for the Southern District of New Tork^ on
the ground that the specifications claimed more than the
patentee had invented. And, particularly, that he claimed,
as his invention, a rotary top, &c., which was in use before
he set up any right to it.

*The plaintiff, after this decision, obtained ano- [ * 37 ]
ther patent, on different specifications, dated as above.

It is insisted that the specifications of the second patent are
defective, attd that the plaintiff cannot sustain an exclusive
right under it.

The Court think that, on this ground, the second patent is
not objectionable.

The specifications show clearly what parts of the stove the
patentee claims to have invented ; and the stove is so clearly
described, in its structure,- as to enable a person, possessing
ordinary skill in the construction of stoves, to build one ; and
this is all the certainty which the law requires.

Under the thirteenth section of the Patent Law, passed the
4th July, 1836, the second patent has relation bacH to the
emanation of the first patent, as fully for every legal purpose,
as to causes subsequently accruing, as if the second patent
had been issued at the date of the first one.

It is under this patent, then, that the right of the plaintiff
must be examined.

In the defence it is strongly insisted, that the contract was
made with a reference to the stove for which the first patent
was obtained, and that the specifications used in the first
patent, were supposed, by the defendant, to be the improve*

PATENT CASES.

Stanley v, Whipple. S McLean.

ments of the plaintiff, and constituted the consideration of the
contract ; and that, as these specifications were limited to the
parts of the stove invented by the plaintiff, by reason of which
the first patent was void, there was a failure of the considera-
tion of the contract

The contract was respecting " a stove for which the plain-
tiff claims a patent." There was no description of the con-
stituent parts of the stove, or of the parts which the plaintiff

claimed as his invention, in the contract.
[ * 38 ] * Whatever remarks may have been made by
either of the parties, while n^otiating respecting the
contract, it is very clear that such remark cannot be given in
evidence. The contract was reduced to writing, and there
is nothing ambiguous on its face ; the parties, therefore, can-
not, by parol evidence, change, in any respect, the clear im-
port of the written agreement.

The defendant, in his advertisements respecting the stove,
calls it ^< Stanley's patent stove."

The second patent legalizes the rights of the patentee, from
the date of the first patent ; and, if this effect be given to it,
it must sustain the contract made in this case. Stanley hav-
ing an exclusive right, could convey it in whole, or in part.
And it must be immaterial to the defendant whether the right
of the plaintiff was made good by the first patent, or, by re-
lation, under the second patent.

It appears a stove was invented by Towns and Gould, in
1824, which had a rotary top, but it seems not to have had
any of the improvements which the plaintiff claims to have
invented in his second specifications. Nor is it proved that
there was any stove in use, prior to that of the plaintiff's, with
a rotary top, moved by a cog and pinion, and put in motion
by a crank ; or which contained a combination of parts, or
application of principles, similar to those in the plaintiff's
second and corrected specifications.

mni^^

PATENT CASES.

Stanley v, Whipple, t HdEjean.

The lever applied on the top part of the stove, which seve-
ral of the witnesses speak of, as an improvement on Stanley's
invention, was subsequently applied, and was done to evade
Stanley's patent, as some of the witnesses expressly state. If
it was, in the language of the witnesses, an improvement
upon Stanley's plan, of course, it must have been subsequent
to it.

The jury were instructed that a mere formal difference can
not be protected by a patent. That the difference
must be * substantial ; and that, if they shall find [ * 39 ]
that a stove was in use prior to the pldntiff's inven-
tion, substantially like his, he can claim no exclusive right
under his patent.

There was, however, no such evidence before the jury j
and, on this part of their verdict, there is no ground of com-
plaint.

But, it is contended, that the invention must be shown to
be of some utility ; and that, in this respect, the plaintiff has
foiled.

It was wholly unnecessary for the plaintiff to introduce any
evidence to prove that which, the defendant so repeatedly and
publicly admitted.

In his advertisement of his stove, he speaks of it as one of
the most useful inventions ; and that, in the parts of the coun-
try where it had been introduced, it had superseded all others.
And, in addition to this, be states, that he has evidences of
the great utility of the stove, from gentlemen of great respec-
tability in our eastern cities ; and he publishes the certificates
of more than twenty citizens of respectability in Cincinnati
to the same effect.

We are satisfied, therefore, that the verdict of the jury
should not be set aside on any of the arguments urged, under
the first and fourth grounds assigned.

!•

■ffT

PATENT CASES.

Stanley v. Whipple. S McLean.

The ground that the Court erred in excluding the copy
from the books, as evidence, will be next considered.

The counsel do not contend that the books are, in them-
selves, evidence ; but they insist that the copy from them,
attached to the deposition of the bookkeeper, which he swears
is a true copy, is made evidence by the counsel of the plain-
tiff.

The counsel for the plaintiff did not call for the books, or
ask a single question in regard to their contents. How, then,

has he made the book evidence ?
[ * 40 ] * He admonished the bookkeeper, sometime be-
fore his deposition was taken, to be cautious in his
statements, as there was some discrepancy in a deposition or
depositions, which he had formerly given on the subject ; and
the coutisel had advised him to refresh his memory by a re-
ference to the books.

This does not make the books, or their contents, evidence
in this cause ; and, consequently, the Court, very properly,
excluded the above copy from the jury.

The counsel insist that the damages are excessive, and that,
on this ground, a new trial should be granted. The damages
assessed by the jury, being fifteen thousand dollars, are large ;
and it is a subject of regret, that a less sum had not been
found. But we must look into the evidence, and see whether
the verdict is sustained by it.

The depositions of Snyder, Woodruff, and Roff, go the
whole length of the verdict. And although the defendant's
witnesses place a lower estimate on the number of stoves sold,
yet they do not speak positively ; and, if they did, it was the
province of the jury to weigh the evidence. Where the evi-
dence sustains the verdict, the Court cannot say that the jury
should have given greater weight to other parts of the testi-
mony, which would have limited the damages assessed to a
less sum.

PATENT CASES.

Stanley v. Whipple. 2 McLean.

This verdict, though large, we cannot say is against evi-
dence, or, that it is not supported by the evidence ; and the
moUon for a new trial is overruled.

A motion, in arrest of judgment, has also been made and
argued ; and the ground is, that the plaintiff does not aver in
his declaration that he ever obtained a patent, or had an ex-
clusive right to the stove, which was the subject-matter of the
contract

In the first count is stated, in the words of the agreement,
that the plaintiff sold to the defendant the right of making
and vending a stove, for which he claims a patent
(which patent is * not yet obtained) in the city of [ * 41 ]
Cincinnati, &c., for which the defendant agreed
to pay five dollars for each stove that he should make and
sell.

The allegations in the second and third counts, are substan-
tially the same. The fourth count is for money had and re-
ceived. A declaration is a statement of facts, which, in law,
gives the plaintiff a right to recover. And, if a demurrer
had been filed in this case, the only question would have been,
does the statement of facts, in this declaration, give the plain- *
tiff, in law, a right to recover. And we will first consider the
question as if raised by demurrer.

Suppose the plaintiff, on the trial, had, after proving the
contract, introduced evidence that, at the time the contract
was entered into, he did claim a patent-right for the stove,
and had here closed his evidence. Could he have recovered ?
If he could not recover on this evidence, can the declara-
tion be sustained ? It is materially defective, if, to lay the
foundation of a recovery, the proof must go farther than the
allegations it contains.

This is, therefore, a safe and sure test of the goodness of
the declaration.

The plaintiff, on the trial, did not stop, on showing that

8 PATENT CASES.

Stanley v. Whipple. S McLeaiL

he claimed the patent-right. This was, in fact, shown by
the contract itself. But he gave his patent in evidence,
and proved that he not only claimed a patent, bat that he
had obtained one, which was the evidence of his exclosive
right.

The declaration does not aver that a patent had been ob-
tained, nor that the exclusive right was vested in him. And
if he did not possess the exclusive right, there was no suffi-
cient consideration to support the contract. It is an instru-
ment not under seal, and does not, on its face, purport a con-
sideration.
[ * 42 ] * We think the declaration is defective in not
containing the necessary averments ; and if the
question had been raised by general demurrer, the objection
must have been fatal. But the point is brought to our con-
sideration after verdict, on a motion in arrest of judgment ;
and it is important to inquire, whether the defect is cured by
the verdict.

The statute of jeofaile cures all defects of form, but a ver-
dict often cures matters of substance. This is done by a legal
intendment after verdict. Mr. Chitty, 1 vol. Plead. 712, says,
that where there is any defect, imperfection, or omission, in
any pleading, whether in substance or form, which would
have been a fatal objection upon demurrer, yet if the issue
joined be such as necessarily required, on the trial, proof of
the facts defectively, or imperfectly stated, or omitted, and
without which it is not to be presumed that either the judge
would direct the jury to give, or the jury would have given,
the verdict, such defect, imperfection, or omission, is cured by
the verdict. 1 Saund. 228, n. 1 .

And again, he remarks, the expression, cured by verdict,
signifies that the Court will, after a verdict, presume, or in-
tend, that the particular thing which appears to be defectively,
or imperfectly stated, or omitted, in the pleading, was duly

PATENT CAapS

Stanley v. Whipple. S McLean.

proved at the trial. And such intendment must arise, not
merely from the verdict, but from the united effect of the ver-
dict, and the issue upon which such verdict was given. On
the one hand, the particular thing which is presumed to have
been proved, must always be such as can be implied from
the allegations on the record, by fair and reasonable intend
ment.

In illustration of this rule several cases are referred to, and,
among others, one from 2 Bing. 464. The plaintiff in an ac-
tion of assumpsit stated, that he had retained the defendant,
(who was an attorney,) to lay out seven hundred pounds in
the purchase of an annuity, and that the defendant
promised * to lay it out securely ; that the plaintiff [ * 43 ]
delivered the money to the defendant accordingly,
but that the defendant laid it out on a bad and insufficient
security. After verdict, it was objected, on a writ of error,
that no consideration appeared in the declaration ; that it was
not averred that the promise was in consideration of the re-
tainer, nor that the retainer was for reward ; but the Court
held that it was absolutely necessary, under the declaration,
that the plaintiff should have proved, at the trial, that he had
actually delivered the money to the defenddnt, and that the
latter had engaged to lay it out ; that the delivery of the mo-
ney, for this purpose, was a sufficient consideration to support
the promise ; and that, although it was not expressly allied
in the declaration, was, in fact, the consideration for the pro-
mise^ the Court would intend, after verdict, that such was
the consideration.

And so in the case under consideration. The declaration
does not aver that the plsuntiff had obtained a patent, or that
the exclusive right was vested in him ; but he states that he
claimed a patent, and that the defendant possessed and en-
joyed the right under the contract ; and from these statements,
and the issue that was made up, the Court must presume

10 PATENT CASES.

Stone V. Spra^e. 1 Storj.

that, on the trial, the exclusive right was proved to be in the
plaintiff. The plaintiff's title was defectively set out, and, in
such cases, after verdict, the Court will presume that the
facts showing the right were proved on the trial. This in-
tendment, we think, is fairly presumed from the allegations on
the record.

As, in our opinion, the defect in the declaration is cured by

the verdict, it is unnecessary to say any thing on the general

codnt for money had and received. To recover, under that

count, it is necessary to show that money has been received ;

but a jury might well infer the receipt of the money from the

fact of the sale of the stoves. And, although the

[ * 44 ] contract was * special, yet, if it appear to be etecut-

ed, and not open and subsisting, it is a well-settled

principle that the plaintiff may recover on the general count,

for money had and received.

If the action be brought for a breach of the contract, and
it has not been put an end to, by the act of the party, the
remedy is on the contract, and not on the general count. In
this case the plaintiff claims a right to recover only five dol-
lars for each stove which the defendant has made and sold.
He, therefore, goes for the money received, and not for da-
mages for any other violation of the contract.

The motion in arrest of judgment is overruled.

Amasa Stone v. William and Amasa Sprague.

[1 Story, 270. June T. 1840.]

Where a patent for an Smprovement on looms set forth, aa the invention
claimed, ** The commonieation of motion from the reed to the yam beam, in
the connection of the one with the other, which is produced as followB," de-

PATENT CASES. U

Stow p» Spxagne. 1 Storj.

KBKpnag tbs mode j it was held, that the laTontion was limited to the speci-
fic madiinery and mode of commnnicating the motion, &c., speciallj described
in the specification. It it were otherwise construed, as indnding aU modes of
eofloJMuieatiBg the motion, &c^ it would be nttaily yo]d,as being an attempt
to patent an ahetraet piindplel or for all possible and practicabb modes of
commnnicatiiig motion whatsoeyer, thongh inyented by others, and substan-
tially di£ferent firom the mode stated in the patent

Case for an infringement of a patent-fight for a ne<^ an
oaefiil improvement on looms, not known or used before,
nea, not gaiky, with notice of special defence. At the tiial
it appeared, that the patent was dated on the 3CMh of April,
1880, and the ipecitottion was as foUows. " Be it known
that I, Amafla Stone, of, ^c, have invented a new and useAil
improvenmit in looms, not known or used before my disco-
very, whidi coMists in the communication of fnofton ^om
iht reed to the yam beam, and in the connection
f^ the OM with the ^other, whidi ie produced and [ * 371 ]
deeeribed ae faUoweJ^ Then follows a minute
description of the particular machinery. The specification
then concluded as follows, after setting forth the advantages
of the invention : ^ I daim as my invention the connection of
the reed with the yarn beam, and the communication of the
motion from the one to the other, which may be done ae
''above epecified.^^

Several points were made at the trial, upon which a good
deal of evidence was offered. The defendants contended,
(1.) That the invention was known before. (S.) That the
loom used by them was not identical with the invention and
machinery used by the plaintiff; but was a substantially dif-
ferent invention (3.) That the patent was in fact a patent
for an abstract principle, or all modes by which motion could
be communicated from the reed to the yam beam, and the
connection of the one with the other, and not merely for the
particular mode of communication specified in the machinery

' 12 PATENT CASES.

Stone V. Spngoe. 1 Stoiy.

described in the specification ; and that it was therefore Yoid.
On the other hand the plaintiff contended, (1.) That he was
the first and original inventor. (2.) That the machines used
by the defendants were substantially the same invention as
his, and an infringement of it. (3.) That the patent, if it
embraced all modes of communication of motion from the
reed to the yam beam, and in the connection of the one to
the other, (as the plaintiflf insisted it did,) was still good and
maintainable in point of law. (4.) That if the specificatioQ
did not justify this interpretation of the plaintiff's claim, it
vras still good, and clearly supported the claim to the parti-
cular machinery described in the specification, which the
defendants had patented, and his patent had been infringed
by the defendants.

The case was argued by AtweU and iSKcpfe«, of New York,
for the plaintiff, and by Pratt and R. W. Chteney
[ * 272 ] for the * defendants ; and finally, the parties con-
sented to a verdict for the defendants, upon the
points of law ruled by the Court, and took a bill of excep-
tions thereto.

Stort, J. Upon the question of the true interpretation of
the specification, the Court entertains some doubt But, on
the whole, ut res valeat, quam pereai^ we decide, that,
although the language is not without some ambiguity, the
true interpretation of it is, that the patentee limits his inven-
tion to the specific machinery and mode of communication
of the motion from the reed to the yam beam, set forth and
specially described in the specification. We hold this ofM-
nion the more readily, because we are of opinion that, if it
be eonstraed to include all other modes of communication
of motion from the reed to the yarn beam, and for the con-

PATENT CASES. 13

Smith v. Pearce. 2 McLean.

nection of the one to the other generally, it is utterly void, as
being an attempt to maintain a patent for an abstract princi-
ple, or for all possible and probable modes whatsoever of such
communication, although they may be invented by others,
and substantially differ from the mode described by the plain-
tiff in his specification. A man might just as well claim a title
to all possible or practicable modes of communicating motion
from a steam-engine to a steamboat, although he had invented
but one mode ; or, indeed, of communicating motion from
any one thing to all or any other things, simply because he
had invented one mode of communicating motion from one
machine to another in a particular case. This is our decided
opinion ; and if the counsel are dissatisfied, it will be easy to
take the case by a bill of exceptions to the Supreme Court.

Verdict for defendants ; and a bill of exceptions was taken
by the plaintiff accordingly.

Jesse C. Smith t;. John Peabce and H. Pearce.

[2 McLean, 176. JolyT. 1840.]

Where the specificationB of a patent are defectiye, under the late Act of Con-
gress, a new patent may be obtained with corrected specifications, which re-
lates back to the date of the original patent.

A patent for an improyement in a machine, which had been preyionslj pa-
tented to another person, cannot protect the right of the patentee, unless the
improvement be snbstantiallj different in principle from the original inren-
tion.

An alteration merely formal, or a slight improrement, will give no right.

The jury will determine, from the models exhibited, and the other evidence,
whether there is a difference in principle between the two machines. That

VOL. II. P. c. 2

14 PATENT CASES.

Smith V. Pearoe. S McLeaa.

is called principle in a maehine whicli H^pliei, modifiei, or oembiiiefl mecha-
nScal powers to prodaoe a certain result

This cause was argued by Mr. Fox for the plaintifT, and
by Mr. Green, for the defendants.

Opinion or the Coitrt.

This action is brought for the infringement of a patent-
right, by the defendants, claimed by the plaintiff.

The plaintiff's patent is dated 25th September, 1837, and,
under the late Act of Congress, relates back to the 9th of
January, 1830, the date of his first patent, for the same in-
vention, which was invalid by reason of a defective specifica-

. tion.
[ ^ 177 ] ^ In the specification, or schedule, the plaintiff
claimed to have invented a '^ new improved mode
of grinding, holding, and accommodating millstones," for
grinding grain, &c.

<< The nature of the invention consists in the peculiar con-
struction of the husk or frame, to be used for the purpose of
accommodating and securing millstones for grinding grain into
meal or flour, or any other business calculated to be done
under the operation of grinding. The husk or frame is made
of iron, compact and firmly secured together by bolts. The
mills are calculated to be transported with safety, all finished
in a perfect and workmanlike manner ready for grinding.
They are to be put in motion either by straps or cog-gearing,
whichever the purchaser shall choose.'' A drawing with a
particular description accompanied the application for a pa-
tent*

The defendants pleaded not guilty, and gave in evidence
a patent to Henry Pearce, one of the defendants, for an im-
provement upon the plaintiff's patent. In the specification
the improvement is stated to *' consist in the manner in which
the patentee constructs the part which he denominates the

PATENT CASES. 16

Smith 9. PeMce. 2 McLean.

pressure rod, which is intended to elevate the bridgetree, and,
consequently the running stone, and to regulate the action of
the mill in that particular part" This specification was, also,
accompanied by a drawing.

Several machinists, and other witnesses, testified that the
invention of the plaintiff was of great utility. That each
run of stones would make thirteen barrels of flour in twenty-
four hours, and that the flour is of a better quality than that
which is manufactured in the ordinary way, and sells higher.
That a steam-engine of fourteen horse-power, which will con-
sume a small amount of fuel, will be sufiicient to turn five
pairs of stone.

* The plaintiff, also, proved that for some years [ ^ 178 ]
the defendants had been engaged in making mills
on the same principle at the plaintiff's patent, for sale ; and
that he had sent great numbers of them to Mississippi and
Louisiana ; also, some evidence as to the profit on the mills
thus constructed and sold.

The principal question in the case is, whether Pearce's
improvement on^ the plaintiff's patent is such as protects him
in the right which he has exercised.

That part of the plaintiff's patent which he claims to be
new, and of his own invention, is ^' connecting the bridgetree
with the top part of the frame, or whatever may be used as a
substitute, in the manner herein described, or any other man-
ner, embracing the same principles and producing the same
effect. And the mode or manner of depressing, as well as
elevadng, the running stone l>y application of the screw to
the bridgetree, in the manner here described, or any other
producing the same effect."

A slight alteration in the structure of a machine, or in the
improvement of it, will not entitle an individual to a patent.
There must be a substantial difference in the principle, and
the application of it, to constitute such an improvement as the
law will protect.

16 PATENT CASES.

Smith V. Pearce. S McLean.

The principle here spoken of is not a new mechanical
power. For centuries no new power in mechanics has been
discovered. But the powers known have been so modified
and combined as to produce results the most extraordinary.
Results which have distinguished the present age. The prin-
ciple consists in the mode of applying or combining mecha-
nical powers which produce a certain result. The law which
secures to the inventor the exclusive benefit of disposing of
his invention, for a term of years, is founded upon considera-
tions of sound policy. And the right, thus secured,
[ * 179 ] is not to * be destroyed by open infraction, or a mere
colorable improvement.

The jury are to judge by an inspection of the models and
from the evidence, whether the XWo machines di&r in princi-
ple. ^

Nothing is more common than for persons skilled in the

structure of machines, to disagree in regard to the principles
of them. As it respects their form there can be but little
difference of opinion among those who examine the machines.
In this case machinists, who have been sworn as witnesses, do
not agree, but the greater number seem to think that there is
no substantial difference, in principle, between the two struc-
tures.

In their form the machines are alike. Indeed, it would
seem to require a nice observer to point out the difference.

The principle of elevating and lowering the upper stone
seems to be that which is new, and which gives value to the
machine. And it will be for tfie jury to say, whether the rod
with screws at both ends of it, by which the bridgetree, and,
consequently, the upper stone is elevated or lowered, is not
in principle the same ; whether it rests by a shoulder on the
middle or lower part of the frame, or whether, in fact, there
be one rod or two.

The main question is, whether the principle, by which the

PATENT CASES. 17

Aldea et al. v. "Dewtj et al. 1 Story.

upper stone is elevated and lowered, is sabstantially the same
in both machines. If this be the case, your verdict must be
for the plaintiff, with such damages as you shall think him en-
titled to. There are some cases of violation of patent-rights
more aggravated than others. And the Court would remark
to the jury, that, in the present case, there do not seem to be
any circumstances which should much, if any, increase the
damages beyond what may be supposed the reasonable profit
of the defendants in manufacturing and selling the machine
in question. The defendants may have supposed
they were * protected under their patent. But if [ * 180 ]
the jury shall think, on a full view of the case, that
there is not a mere formal difference, but a substantial one,
in the principles of the machines, they will find for the de-
fendants. 4 Wash. C. C. 706; Phil, on Patents, 372;
2 Brock. 310 ; 3 Wash. C. C. Rep. 449; 3 Car. and Payne,
502 ; 1 Peters, C. C. Rep. 342, 398, 399 ; 1 Gall. 429.

The jury found for the plaintiff, and assessed his damages
at $2,150, on which judgment was entered.

C7RQ3 Alden and Others t;. Timotht M. Dbwet and

Another.

[1 Stoiy, 336. October T. 1840.]

In an action for an infringement of a plttent-right, evidence that the invention
of the defendant is better than that of the plaintiff, is improper, except to
show a sabstantial difference between the two inventions.

Where the defendant offered evidence to show that the invention waa not
original with the plaintiff, but that the improvement, for which he had taken
ont letters-patent, had been snggested to him, although the precise mode of
carrying it into operation had not been snggested, the Ck>art instmcted the
joiy, that the tnie question was, whether the improvement was tubtUmtiaOijf
communicated to the plaintiff, so that wUh/mt more inventive power^ he could
have applied it, or not.

18 PATENT CASES.

Alden et aL v. Dewey et aL 1 Storj.

In considerinii; the qaesUon of the originality of an invention, the oath of the
inyentor made prior to the issue of the letters-patent, that he was the true
and first inventor of the improvement, may be opposed to the oath of a wit-
ness in the case, whose testimony is offered to show, that the invention was
not original.

This was an action for an infringement of a patent-right
for an improvement in scythe snathes. The original patentee
was Dexter Feirce, who took out letters-patent, March 11th,
1837. He afterwards assigned his right and interest under
these letters-patent to several persons, who again assigned to
the plaintiffs in the present case. The special improvement,
which formed the subject-matter of the present suit, was
described in the claim as follows: '^What I claim as my own
invention, and not previously known, and desire to secure by
letters-patent, is my constructing the nib or thole irons and
woods, 80 as by the extension of the iron beyond the wood,
with a screw and nut to regulate and fasten the nibs or tholes
in any situation desirable on the snead."

Before the patent of Peirce, the nibs of scythes had been
clumsily fastened to the snathe by means of an iron
[ * 337 ] ring, * tightened by wedges. These wedges were
, easily loosened by the use of the scythe. The
defendants manufactured and sold a large number of nibs,
which were secured to the snathe by a ring at the end, of an
iron stem. This stem passed through the wood of the nib,
was threaded at the top, and fitted into a nut, which was
adjusted in the end of the wood. The wood moved in a
brass cellar, which was at the bottom, and being turned by
' the hand, operated as a wrench upon the nut, and was pressed
upon the scythe snathe ; and in this way the nib was secured
and regulated in any situation desirable on the snead. The
nib used by the defendants, is usually known as Clapp's
method or improvement. It was contended, by the plaintiffs'
counsel, that this was substantially the same with the im-
provement of the plaintiffs. Several witnesses were exam-

PATENT CASES. 19

Alden et al. v, Dewey et al. 1 Story.

ined, as experts, who testified, that the tvro differed in certain
particulars and details, but that they were the same in
principle.

For the defence it was urged, that the plaintiffs could not
have an exclusive right to the use of the screw for purposes
of fastening. But it was answered, that the claim was not
for this element, biit simply for a combination, into which it
entered ; and this view was sustained by the Court. It was
also urged, that the two nibs were unlike ; and that the nib of
the defendants was not an infringement of the right of the
plaintiffs. No witnesses were called to this point by the
defendants. Evidence was given to show, that the nib of
the defendants was better than that of the plaintiffs, and that
it found a readier market. But the Court instructed the jury
to disregard this consideration, except so far as it went to
show a substantial difference between the two nibs. It was
no matter if the defendants' nib was more polished, or even
worked better tha^ the plaintiffs', provided it embodied the
principle of the plaintiffs'. It did not follow, be-
cause the defendants * improved the machine of the [ * 338 ]
plaintiffs, that therefore, they could use it.

Another defence was set up, which received particular
attention from the Court. Daniel Draper testified, that, in
conversation with Dexter Peirce, the patentee, sometime at
the end of the winter, or beginning of the spring of 1835, he
remarked, that he found great difficulty in suiting his custom-
ers, in respect to the nibs of scythe snathes ; and that he
thought they might be improved by the application of the nut
and screw to the nib or thole. He did not suggest any mode
of doing this. He never reduced his idea to practice. The
witness said, that Peirce treated the idea as impracticable,
and laughed at it. It appeared on cross-examination, that
the witness had been, in the early part of his life, a tanner,
and then went into the patent wood-ware business, in which

so PATENT CASES.

Alden el aL o. Dewey et aL 1 Storj.

he continued till January 1, 1835, when be formed a copart-
nership with another person for the manufacture of hammers
and scythe snathes ; but that he did not continue to make
snathes more than six months. The witness knew that Peirce
took out a patent, in March, 1837, for his improvement in
the. scythe snathe, and that he had assigned the same for a
valuable consideration ; but he never spoke to him on the
subject, or reminded him of the suggestion he had made,
though he was in the habit of seeing him from time to time.

Fletcher and Charles Sumner^ for the plaintiffii. B. Rand
and B. R. Curtia, for the defendants.

Stort, J., on these facts, submitted to the jury this ques-
tion : Did Draper communicate to Peirce substantially the
improvement, for which he took out his patent, so that with-
out more inventive power, Peirce could have applied it? It
was not enough that Draper gave a hint ^•nor, on the other

hand was it necessary, that he should communicate
[* 339] every * minute thing about the invention ; but he

must have communicated the substance. He further
instructed the jury, that the original patentee had sworn that
he was the true and first inventor of the improvement, for
which he had taken out letters-patent; that this oath was
required by law, prior to the issue of the letters-patent ; so
that, supposing the jury should be of opinion that the asserted
communication of Draper covered the substance of Peirce's
invention, then there would be oath against oath. If they
should be of opinion that Draper simply gave a hint, which
Peirce afterwards reduced to practice, then the two oaths
would not conflict. If Peirce swore falsely that' he was the
first and true inventor, then he was liable to indictment for
perjury. The testimony of Draper with regard to Peirce was
in the nature of confessions, and this was always regarded as

PATENT CASES. 21

Alden et al. 9. Dewey et al. 1 Story.

an uncertain kind of evidence. The conversation was in
in private^ and nobody could contradict the witness. The
judge stated, that this was the first time, within his long ex-
perience on the benc(l> that such a conversation had been set
up as a ground for destroying the title of a patentee to his
invention.

The judge further instructed the jury, that it was not
necessary that the two nibs should be identical, in order to
make one an infringement of the other. The true question
was, Are the means used substantially the same, although not
in every minute particular? With regard to damages, the
jury were told not to give extravagant or vindictive damages ;
but such as would establish the right of the plaintiffs, and
indemnify them against all the expenses of litigating their
right. If the defendants were sued a second time for viola-
ting the right of the plaintiSs, then it might be proper to give
vindictive damages. The jury thereupon found a verdict for
the plaintiffs, for $1,167.66.

* At a subsequent day of the term, (December [ * 340 ]
21 ,) the case came on ogain, on a motion for a new
trial. The motion was grounded upon the following reasons.
(1.) That the judge ruled in the course of the trial, that one
Peirce, who was offered as a witness, was interested and could
not be examined as a witness. (S.) That the judge further
ruled, that an affidavit made by the said Peirce, before he
took out his patent and in order to obtain the same, was
evidence in the cause, although it appeared that the said
Peirce was interested at the time he made the said affidavit.
(3.) That the judge instructed the jury that they were to
take into consideration the said oath of Peirce, and that only
one witness having sworn that he communicated to Peirce
the substance of the invention, and Peirce having sworn by
his said affidavit that he believed himself to be the original

22 PATENT CASES.

Alden et aL v. Dtwj et aL 1 Storj.

inventor, the jury had oath against oath, and that the jury
must decide whether the solemn oath of Peirce had been thus
overcome by the testimony of one witness. (4.) That the
damages assessed by the jury were exc^teive.

B. R, Curtis urged, in support of the first three grounds of
the motion, that the ruling of the Court was inconsistent with
the general principles of the law of evidence ; that it con-
flicted with the rule, requiring an opportunity to cross-ex-
amine a witness; also with the other rule, excluding the
testimony of an interested witness. In support of his views,
he cited the English cases in actions on the case for a mali-
cious suit. He also relied upon the proceedings of courts of
justice under the registry laws and bankrupt laws. He further
urged that the statute, requiring the oath of the patentee, was
intended to secure the public against fraud. But that if the
construction of the Court was to prevail, it would operate as
a security to the patentee, and would be, not a shield to the

public, but a sword against it. He also urged in
[ * 341 ] support of * the last ground of the motion for a

new trial that the damages were excessive.

Stort, J., without hearing the other side, ruled, as at the
trial that the patent was primd facie evidence in the case ;
that the patent recited the oath, and that the jury had cogni-
zance of it ; in short, that* the oath was in the case, and the
jury were entitled to judge of its force. This was the foun-
dation of the onus probandi, that was thrown upon the
defendants in a patent cause. The Courts of the United
States had constantly acted upon this view. With regard to
the question of damages, the judge confessed that the da-
mages awarded by the jury were greater than were antici-
pated. But still there did not seem to be any such gross
mistake in the jury as would authorize setting aside their
verdict. It was a matter submitted to their fair judgment.

Judgment according to the verdict.

PATENT CASES. S3

Wyeth et aL v. Sfone et al. 1 Story.

Nathaniel J. Wteth and Frederick Tcdor v. Stone

Ajxn Others*

[1 Story, 278. October T. 1840.]

In a bill In equity fbr a perpetual injanction of the defendants, on acoonnt of
an asserted violation of a patent-xight for an inrention, it is a good defence
that, prior to the granting of the patent, the inrentor had allowed the inTcn-
tion to go into public use, without objection. But it should be clearly esta-
blished by proof, that such public use was with the knowledge and consent
of the inrentor. The mere user by the inventor of his inrention, in trying
experiments, or by his neighbors, with his consent, as an act of kindness for
temporary and occasional purposes only, will not destroy his right to a pa-
tent therefor.

If the defendants use a. substantial part of the invention patented, although
with some modifications of form or apparatus, it is a violation of the patent-
right. So, if the patent be of two machines, and each is a new invention,
and the defendant use only one of the machines.

If the patentee, after obtaining his patent, dedicates or surrenders it to public
use, or acquiesces for a long period in the public use thereof, without objec-
tion, he is not entitled to the aid of a court of equity to protect his patent ;
and such acquiescence may amount to complete proof of a dedication or
surrender thereof to the public

*But to entitle the defendants to the benefit of sudi a defence, [* 874]!
the fiuHs mast be explicitly relied on, and put in issue by their an-
swer; otherwise the Court cannot notice it.

In the present case, the patent and specification claimed for the patentee, as his
invention, the cutting of ice of a uniform sixe by means of an apparatus
worked by any other power than human. It claimed, also, not only the in-
vention of this art but also the particnlat method of the application of the
principle stated in the specification, which was by two machines described
therein, called the saw and the cutter. It was hdd by the Court, that the
specification, so far as it claimed the art of cutting ice by means of an appa-
ratus worked by any other power than human, was the claim of an abstract
principle, and void ] but so iar as it claimed the two machines described in
the specification, it might be good, if a disclaimer were made of the other
parts, according to the Patent Act of 1837, ch. 45, S 7 and \ 9, within a rea-
sonable time, and before the suit were brought. But a disclaimer, after the
suit brought, would not be sufficient to entitle the party to a perpetual in-
junction in equity, whatever might be his right to maintain a suit at law on
liie patent.

If the patentee has assigned his patent in part, and a joint suit is brought in

a4 PATENT CASES.

Wyeth et al. v. Stone et al. 1 Storjr.

equity for a perpetual injanction, a disclaimer by the patentee alone, without
the assignee's uniting in it, will not entitle the parties to the benefit of the
7th and 9th sections of the Act of 1837, ch. 45.

A single patent may be taken for several improyements on one and the same
machine, or for two machines, which are inyented by the patentee, and con-
duce to the same common purpose and object, although tiiey are each capa-
ble of a distinct use and application, without being united together. But a
single patent cannot be taken for two distinct machines, not conducing to
the same common purpose or object, but designed for totally different and
independent objects.

An inyentor is bound to describe in his specification, in what his invention
consists, and what his particular daim is. But he is not bound to any pre-
cise form of words, provided their import can be clearly ascertained by fair
interpretation, even though the expression may be inaccurate.

The assignee of a patent-right, in part or in whole, cannot maintain any stut
at law, or in equity, either as sole or as a joint plaintiff thereon, at least as
against third persons, until his patent has been recorded in the proper
department, according to the requisitions of the Patent Acts.

Bill in equitjr for a perpetual injunction, and for other
relief, founded upon allegations of the violation, by the de-
fendants, of a patent-right granted originally to the plaintiff,
Wyeth, as the inventor, by letters-patent, dated the 18th of
March, A. D. 1829, <^ for a new and useful improvement in

the manner of cutting ice, together with the ma-
[*375] chinery and * apparatus therefor,'' as set forth in

the schedule to the letters-patent ; and afterwards
with a small reservation assigned to the other plaintiff, Tudor,
on the 9th of February, 1832, by a deed of assignment of
that date, but which had never been recorded. The sche-
dule set forth two diflferent apparatuses or machines for cut-
ting ice, the one called the saw, the other the cutter, which
are capable of being used separately or in combination, and
described in their structure, and the mode of applying them,
as follows :

(1.) Two bars of iron, or other material, secured to each
other by cross bars : the two first mentioned to be of such
distance apart as the dimension of the ice is required to be.

PATENT CASES. 25

Wyeth et aL v. Stone et al. 1 Stoty.

(2.) On each outside bar is bolted a plate of iron as long as
the bar, and at right angles with the cross bars. These plates
to be so bolted to the bars as to project three inches each on
one side of the bars to which they are bolted, and one of
them to project on the other side of the bar two inches ; the
other, one inch. These projections may be yaried, according
to the desired depth of the cut. (3.) These plates, both on
the upper side and on the under side of the bars, are to be
cut at four equidistant points each, at an angle of forty-five
degrees, or thereabouts, to the bar, thereby forming a cutting
point of forty-five degrees, or thereabouts ; to this point is
welded a piece of steel, to form the chisel. The rear end of
the plates to be of the before specified width from the bar,
but to diminish towards the front end one fourth of an inch
at each point, thereby giving each succeeding point a clear
cut of one fourth of an inch deeper than its precursor. (4.)
The mouths, by which the chips cut from the ice by the
chisels are discharged, are made similar to that of a carpen-
ter's plough. (5.) To the middle of t^e front cross-bar is
fixed a ring, for the purpose of attaching a draught chain, to
which the horse that draws the cutter is to be har-
nessed. (6.) This * first part of the apparatus for [ * 276 ]
cutting ice is called the cutter, and is used as fol-
lows : The cutter is laid on the ice, with the three-inch side
plates downward, and drawn forward in a straight line as far
as is required, thus making two grooves of an inch deep.
The horse is then turned about, and the cutter turned over,
so that the two inch-side of the plate shall be in one of the
first grooves cut, and the one-inch side on the ice ; and as the
cutter is drawn* forward, the two-inch side makes one of the
first grooves an inch deeper, and the one-inch side forms a
new groove of an inch deep. Proceed in this manner until
as many grooves are cut as are wanted ; then turn the cutter
over upon the three-inch side, go over the whole again with

▼OL. II. — p. c. 3

26 PATENT CASES.

Wyeth et al. v. Stone et al. 1 Story.

this side, and they are finished. Repeat the same process at
right angles with the first grooves, and the operation with
this part of the apparatus is finished.

Part Second of Apparatus for Cutting Ice. (1.) Two
spur-wheels, about three feet six inches, more or less, in diame-
ter, connected together by an axletree of iron, or other ma-
terial, from the centre of each to the other, fixed immovable
in each. (2.) A pair of fills, proceeding from the axletree,
and secured to it by a pair of composition boxes, admitting
the axletree to turn in them. (3.) A cog-wheel, about three
feet two inches in diameter, more or less, fixed in the centre
of the axletree, so as to be incapable of turning except with
the axletree. (4.) A pair of handles attached to the axletree,
in the same manner as the fills, so as to admit of the motion
of an axletree in them ; these handles to be placed one on
each side of the cog-wheel in the centre of the axletree, and
to be connected together by a permanent bar, at a suitable
distance from the axletree. (5.) Two cog-wheels, about four
inches diameter more or less, one of which to work on the
large cog-wheel, and the other to work on the one so work-
ing, and both to be secured by pintles passing
[ * 277 ] through * the handles ; the small cog-wheel not
working on the large cog-wheel to have secured
beside it a circular saw about two and a half feet diameter,
more or less. (6.) The proportion between the large and
small cog-wheels is varied, to obtain greater or less velocity
for the saw, as may be wanted. This part of the apparatus
for cutting ice is called the saw, and is used as follows : Put
the saw into one of the outside grooves made by the cutter ;
drive the horse forward, following the groove made by the
cutter ; at the same time a man who manages the handles
presses them down as much as the strength of the horse will
admit of. This operation is followed back and forth until the
ice is cut through. The same is done with the outer parallel

PATENT CASES. 27

Wyeth et al. v. Stone et al. 1 Storjr.

groove on the opposite side of the work> and also on one of
the end grooves, running at right angles with these. By this
process the ice on the three sides of the plat or work marked
by the cutter is cut through. When this is done, take an
iron bar, (one end of which is wide and fitted to the groove,
and the other end of which is sharpened as a chisel,) and
insert the end which is fitted to the groove into the groove
next to and parallel with the end groove which is cut through ;
pry lightly in several places, then more strongly until the ice
is broken off; then strike lightly with the chisel end of the
bar into the cross grooves of the piece split off, and it easily
separates into square pieces. Thus proceed with the whole
plat marked out by the cutter. It is claimed as new to cut
ice of uniform size, by means of an apparatus worked by any
other power than human. The invention of this art, as well
as of the particular method of the application of the principle,
are claimed by the subscriber.

The answer insisted upon various grounds of defence,
which are fully stated in the argument and in the opinion of
the Court. ♦

W. H. Gardiner^ for the plaintiffs, contended,
that the right * acquired by the patent had not been [ * 278 ]
lost by any act of the plaintifis, the evidence not
disclosing any abandonment or dedication to the pubUc;
Pennock v. Dialogue, 2 Peters, R. 16 ; Shaw t;. Cooper,
7 Peters, R. 292 ; Melius t;. Silsbee, 4 Mason, 108 ; Good-
year V. Matthews, 1 Paine, 301 ; Phillips on Patents, 184,
186. That the specification was sufficient on^ its face; and
if not, that the fault was cured by the disclaimer; Ames t;.
Howard, 1 Sumner, 48 ; Phillips on Patents, 93 ; Whittemore
V. Cutter, 1 Gal. 437 ; Lowell v. Lewis, 1 Mason, 182. That
superfluous matter in the specification did not vitiate it ; Lewis
V. Mayling, 1 Lloyd & Welsh. 28 ; Moody v. Fiske, 2 Ma-

28 PATENT CASES.

Wyeth 6t aL v. Stone et aL 1 Story.

son, 112; Phillips on Patents, 286. And that the seveml
matters were well embraced in it ; Evans v. Eaton , 3 Wheat.
454 ; Stearns v. Barrett, 1 Pick. 448 ; Barrett t;. Hall> 1 Ma-
son, 216; Phillips on Patents, 216, 219, 229, 246, 274.

S. GreerUeaf and G. T. BigdoWy for the defendants, con-
tended that the invention was not new and original, being
merely the common carpenter's plough ; that the specification
was bad, as it contained not only more than theplaintiflT, Wyeth,
invented, but also, as it included two distinct machines, and a
combination of different machines ; Barrett t;. Hall, 1 Mason,
447,475; Moody t;. Fiske, 2 Mason, 112, 119; Evans t;.
Eaton, 3 Wheat 454, 506 ; 4 Barn. & Aid. 540 ; Whitte-
more v. Cutter, 1 Gall. 438 ; Cochrane t;. Smethrust, 1 Stark.
R. 205 ; Phillips on Patents, 102, 104, 275 ; that if it could
be upheld at all, it was only for cutting two grooves by one
operation, which the defendants had not invaded ; that the
case was not within the relief of the Patent Act of 1837, sec.
7, 9 ; that the invention had been published previous to the
issuing of the patent; (Phillips on Patents, 184;) and that
after the patent was issued, the plaintifli abandoned
[ * 279 ] the use to the public, and thereby * betrayed the
defendants into the use of the machine ; which, in
equity was a good bar to the claim of damages, and entitled
the defendants to costs. Walcott t;. Walker, 7 Ves. 1 ; Pratt
V. Button, 19 Ves. 447.

Stort, J., delivered the opinion of the Court, as follows :
I have considered this cause upon the various points suggested
at the argument by the counsel on both sides, with as much
care as I could, in the short time which I have been able to
command, since it was argued ; and I will now state the
results, with as much brevity as the importance of the cause
will permit.

PATENT CASES. 29

Wyeth et al. v. Stone et al. I Story.

The first point is^ whether the invention claimed by the
patentee is new, that is, substantially new. The patent is
dated on the 18th of March, 1829, and is for '^a new and
useful improvement in the manner of cutting ice, together
with the machinery and apparatus therefor.^' Assuming the
patent to be for the machinery described in the specification,
and the description of the invention in the specification to be,
in point of law, certain and correctly summed up, (points
which will be hereafter considered,) I am of opinion that the
invention is substantially new. No such machinery is, in my
judgment, established, by the evidence, to have been known
or used before. The argument is, that the principal machine,
described as the cutter, is well known, and has been often
used before for other purposes, and that this is but an appli*
cation of an old invention to a new purpose ; and it is not,
therefore, patentable. It is said, that it is in substance iden-
tical with the common carpenter's plough. I do not think
so. In the common carpenter's plough there is no series of
chisels fixed in one plane, and the guide is below the level,
and the plough is a movable chisel. In the present machine,
there are a series of chisels, and they are all fixed.
The successive chisels * are each below the other, [ * 280 ]
and this is essential to their operation. Such a
combination is not shown ever to have been known or used
before. It is not, therefore, a new use or application of an
old machine. This opinion does not rest upon my own skill
and comparison of the machine with the carpenter's plough ;
but it is fortified and sustained by the testimony of witnesses
of great skill, experience, and knowledge in this department
of science, namely, by Mr. Treadwell, Mr. Darracott, and
Mr. Borden, who all speak most positively and conclusively
on the point.

The next point is, whether the ice machine used by the
defendants is an infringement of the patent; or in other

30 PATENT CASES.

Wyeth et al. r. Stone et aL 1 Story.

words, does it incorporate in its structure and operation the
substance of Wyeth's invention ? I am of opinion, that it
does include the substance of Wyeth's invention of the ice-
cutter. It is substantially, in its mode of operation, the same
as Wyeth's machine ; and it copies his entire cutter. The
. only important difference seems to be, that Wyeth's machine
has a double series of cutters, on parallel planes ; and the
machine of the defendants has a single series of chisels in one
"plane. Both machines have a succession of chisels, each of
which is progressively below the other, with a proper guide
placed at such distance as the party may choose to regulate
the movement ; and in this succession of chisels, one below
the other, on one plate or frame, consists the substance of
Wyeth's invention. The guide in Wyeth's machine is the
duplicate of his chisel plate or frame ; the guide in the de-
fendants' machine is simply a smooth iron, on a level with
the cutting single chisel frame or plate. Each performs the
.^^^^,T same service, substantially in the same way.

X In the next place, as to the supposed public use of Wyeth's
machine before his application for a patent. To defeat his

right to a patent, under such circumstances, it is
[ ^^ 281 ] essential, * that there should have been a public use

of his machine, substantially as it was patented,
with his consent. If it was merely used occasionally by him-
self in trying experiments, or if he allowed only a temporary
use thereof by a few persons, as an act of personal accommo-
dation or neighborly kindness, for a short and limited period,
that would not take away his right to a patent. To produce
such an eflect, the public use must be either generally allowed
or acquiesced in, or at least be unlimited in time, or extent,
or object. On the other hand, if the user were without
Wyeth's consent, and adverse to his patent, it was a clear
violation of his rights, and could not deprive him of his
patent.

PATENT CASES. 31

Wyetii et aL v. Stone et aL 1 Story.

Now, I gather from the evidence, (which, however, is
somewhat indeterminate on this point,) that Wyeth's ma-
chine, as originally invented by him, was not exactly like that
for which he afterwards procured the patent. On the con-
trary, he beems to have made alterations and improvements
therein. Pratt (the witness) says that he made the iron part
of the first machine of Wyeth, which was partly of wood and
partly of iron, in December, 1825, or in January, 1826 ; and
that he afterwards, in December, 1827, made the machine
which was patented for Wyeth ; and it was not patented until
March, 1829. So that the latter seems to have been more
perfect than the former. But, at all events, I cannot but
think that the evidence of the user, as a public user, of the
invention before the patent was granted, is far too loose and
general to found any just conclusion that Wyeth meant to
dedicate it to the public, or had abandoned it to the public
before the patent. It appears to me, that the circumstances
ought to be very clear and cogent, before the Court would be
justified in adopting any conclusion so subversive of private A

"fights, when the party has subsequently taken out a patent.

'"In the next place, as to Wyeth's supposed aban-
donment of ^ his invention to the public, since he [ * 282 ]
obtained his patent. I agree, that it is quite com-
petent for a patentee at any time, by overt acts, or by express
dedication, to abandon or surrender to the public, for their
use, all the rights secured by his patent, if such is his plea-
surcj clearly and deliberately expressed. So, if, for a series
of years, the patentee acquiesces without objection in the
known public use by others of his invention, or stands by and
encourages such use, such conduct will afford a very strong
presumption of such an actual abandonment or surrender.
A forHori^ the doctrine will apply to a case, where the pa-
tentee has openly encouraged or silently acquiesced in such
use by the very defendants whom he afterwards seeks to pro-

PATENT CASES.

Wjeth e( al. n. Stone et bL 1 61017.

hibit, by injunction, from any further use ; for in this way, he
may not only mislead Ihem into expenses, or acts, or con-
tracts agunst which they might otherwise have guarded them-
selves ; but his conduct operates as a surprise, if not as a
fraud upon them. At all events, if such a defence were not
a complete defence at law, in a suit for any infringement of
the patent, it would certainly furnish a clear and satisfactory
ground why a court of equity should not interfere either to
grant an injunction, or to protect the patentee, or to give any
other relief. This doctrine is fully recognized in Rundell v.
^ Murray, Jacob's R. 311,316, and Saunders v. Smith, 3 Mylne
&. Craig, 711, 728, 730, 735. But if there were no autho-
rity on the point, I should not have the slightest difficulty in
asserting the doctrine, as found in the very nature and cha-
racter of the jurisdiction exercised by courts of equity on this
and other analc^ous subjects.

There is certainly very strong evidence in the present case,
affirmative of such an abandonment or sairender, or at least
of a^deliberate acquiescence by the patentee in the public use
of his invention by some or all of the defendants, without ob-
jection, for several years. The patent was obtained
[ • 283 ] in 1829; 'and no objection was made, and no suit
was brought against the defendants for any infringe-
ment until 1839, although their use of the invention was,
during a very considerable portion of the intermediate period,
notorious- and constant, and brought home directly to the
knowledge of the patentee. Upon this point, I need hardly
do more than to refer to the testimony of Stedman and Bar-
ker, who assert such knowledge and acquiescence for a long
period, on the part of the patentee, in the use of these ice-
's by difTerent persons (and among others by the defend-
on Fresh Pond, where the patentee himself cut his own
It is no just answer to the facts so stated, that until
, the business of Wyeth, or rather of his assignee, the

PATENT CASES. 33

Wyeth et al. v. Stone et aL 1 Story.

plaintiff, Tudor, was altogether limited to shipments in the
foreign ice trade, and that the defendants' business, being
confined to the domestic ice trade, did not interfere practi*
cally with his interest under the patent. The violation of
the patent was the same, and the acquiescence the same,
when the ice was cut by Wyeth's invention, whether the ice
was afterwards sold abroad, or sold at home. Nor does it
appear that the defendants have as yet engaged at all in the
foreign ice trade. It is the acquiescence in the known user
by the public, without objection or qualification, and not the'
extent of the actual user, which constitntes the ground upon
which courts of equity refuse an injunction in cases of this
sort. The acquiescence in the public use, for the domestic
irade, of the plaintiff's invention for cutting ice, admits that
the plaintiff no longer claims or insists upon an exclusive
right in the domestic trade under the patent ; and then he has
no right to ask a court of equity to restrain the public from
extending the use to foreign trade, or for foreign purposes.
If he means to surrender his exclusive right in a qualified
manner, or for a qualified trade, he should at the very time
give* public notice of the nature and extent of his
allowance of the * public use, so that all persons [ * 284 ]
may be put upon their guard, and not expose them-
selves to losses or perils, which they h^ve no means of know-
ing or averting during his general silence and acquiescence. v«^

The cases which have been already cited, fully establish
the doctrine, that courts of equity constantly refuse injunc-
tions, even where the legal right and title of the party are
acknowledged, when his own conduct has led to the very act
or application of the defendants, of which he complains, and
for which he seeks redress. And this doctrine is applied, not
only to the case of the particular conduct of the party towards
the persons with whom the controversy now exists, but also
to cases where his conduct with others may influence the

1 '

34 PATENT CASES.

WyeUi et aL v. Stone et al. 1 Story.

Court in the exercise of its equitable jurisdiction.^ Under
such circumstances, the Court will leave the party to assert
his rights, and to get what redress he may at law^ without
giving him any extraordinary aid or assistance of its own.

X But the difficulty in the present case arises not so much
from the doctrine considered in itself, as from the utter im-
i [-^ practicability of applying it on account of the state of the
pleadings. The point is not raised, or even suggested in the

.: /answer, in any manner whatsoever, as a matter of defence;
and, of course, it is not in issue between the parties ; and the
whole evidence taken on the point is irrelevant, and cannot
be looked to, as a matter in judgment. This defect in the
pleadings, therefore, puts the question entirely beyond the
reach of the Court.

In the next place, as to the objections taken to the specifi-
cation. The question here necessarily arises, for what is the
patent granted ? Is it for the combination of the two ma-
chines described in the specification, (the cutter
[ * 285 ] and the saw,) * to cut ice ? Or for the two ma-

/ chines separately? Or for the. two machines, as

well separately as in combination ? Or for any mode what-
soever of cutting ice by means of an apparatus, worked by
power, not human, in the abstract, whatever it may be ? If
it be the latter, it is plain that the patent is void, as it is for
an abstract principle, and . broader than the invention, which
is only cutting ice by one particular mode, or by a particular
apparatus or machinery. In order to ascertain the true con-
struction of the specification in this respect, we must look to
the summing up of the invention, and the claim therefor,
asserted in the specification ; for it is the duty of the patentee
to sum up his invention in clear and determinate terms ; and

1 Rundell v. Murray) Jacob's B.' Sll, S16 : Saunders v, Smitli, 8 Mylne
& Craig, 711, 728, 780, 785.

PATENT CASES. 35

Wyeth et al. v. Stone et al. 1 Story.

his summing up is conclusive upon his right and title. This
was the doctrine maintained in Moody v. Fiske,^ 2 Mason,
R. 112, 118, 119; and I see no reason to doubt it, or to
depart from it.

Now, what is the language in which the patentee has sum-
med up his claim and invention ? The specification states :
*^ It is claimed as new, to cut ice of a uniform size, by means /
of an apparatus worked by any other power than human.
The invention of this art, as well as the particular method of
the application of the principle, are claimed by the subscri-
ber,'' (Wyeth.) It is plain, then, that here the patentee
claims an exclusive title to the art of cutting ice by means of
any power, other than human power. Such a claim is utterly
unmaintainable in point of law. It is a claim for an art or
principle in the abstract, and not for any particular method
or machinery, by which ice is to be cut. No man can have
a right to cut ice by all means or methods, or by all or any
sort of apparatus, although he is not the inventor of any or
all of such means, methods, or apparatus. A claim
broader than *the actual invention of the patentee [ * 286 ]
is, for that very reason, upon the principles of the
common law, utterly void, and the patent is a nullity.^ Un-
less, then, the case is saved by the provisions of the Patent
Act of 1836, ch. 357, or of the Act of 1837, ch. 45, which
will hereafter be considered, the present suit cannot be
sustained.

But, besides this general claim, there is another claim in
the specification for the particular apparatus and machinery
to cut ice, described in the specification. The language of

1 See also EBll v. Thompson, 8 Taunt. B. 375.

9 Moody V. Fiske, 2 Mason, R 112, ante, 812; Branton v. Hawkes,
4 Bam. & Aid. 541 ; Hill v. Thompson, 8 Taunt B. 375, 899, 400: Evans
V. Eaton, 7 Wheat. B. 856, ante, 836; Phillips on Patents, ch. 11, s. 7,
p. 268 to 282.

36 PATENT CASES.

Wyeth et aL v. Stone et aL 1 Story.

the specification here is : " The invention of this art," (the
general claim already considered,) ''as well as the particular
method of the application of the principle/' (omitting the
words of reference, as above described,) '< are claimed by the
sabscriber." Now, assuming the former objection, that the
claim for a general or abstract principle is not a fatal objec-
tion in the present case, it has been argued, that the specifi-
cation is too ambiguous to be maintainable in point of law ;
for it does not assert what is claimed as the patentee's inven-
tion ; whether it be the two machines separately and dis-
tinctly, as several inventions, or the combination of them, or
both the one and the other.

It appears to me, that the language of the summary may
be, and indeed ought to be construed, ut res magis valeai^
quam pereat, to mean by the words '' the particular method
of the application," the particular apparatus and machinery
described in the specification to effect the purpose of cutting
ice. I agree, that the patentee is bound to describe, with

reasonable certainty, in what his invention consists,
[ * 287 ] and what * his particular claim is. But it does not

seem to me that he is to be bound down, to any
precise form of words ; and that it is sufiicient, if the Court
can clearly ascertain, by fair interpretation, what he intends
to claim, and what his language truly imports, even though
the expressions are inaccurately or imperfectly drawn.

Is the patent, then, a patent for the combination of the two
machines, namely : the saw and the cutter ? If it be, then
the defendants clearly have not violated the patent-right ; for
they use the cutter only ; and the saw-machine has been
abandoned in practice by the patentee himself, as useless, or
unnecessary. It appears to me, that the patent is not for the
combination of the machines, but for each machine separately
and distinctiy, as adapted to further and produce the same
general result, and capable of a separate and independent

PATENT CASES. 37

Wyeth et aL v. Stone et ol. 1 Stoiy.

use. In short, the one may be auziliaryy but is not indispen-
sable to the use of the other. I deduce this conelusimi from
the descriptive words of the specification, which show, that
each machine is independent of the other in its operations,
and from the silence of the patentee as to any claim ton a
combination. This claim, thra, for <^ the particular method
of the application of the principle," although inartificial, may
be reasonably interpreted, as used distributively, and as ex-
pressive of a distinct claim of each particular method set forth
in the specification. I deem the patent, then, to be a daim
for each distinct machine, as a separate invention, but con-
ducing to the same common end. Of course, if either ma-
chine is new, and is the invention of Wyeth, and it has been
actually pirated by the defendants, the plaintiff is entitled to
maintain a suit therefor, under the Acts of 1836 and 1837,
although not at the common law. Afartiariy the same doc-
trine will apply, if both machines are new, upon the prindples
of the common law.

But it has been said, that if each of the machines
patented * is independent of the other, then sepa- [ * 28^ ]
rate patents should have been taken out for each ;
and that they cannot both be joined in one and the same pa-
tent ; and so there is a fatal defect in the plaintiff's title.
And for this position the doctrine stated in Barrett v. Hall,
1 Mason, R. 473, and Evans v. Eaton, 3 Wheat. R. 454,
506,^ is relied on. I agree, that under the general Patent
Acts, if two machines are patented, which are wholly inde-
pendent of each other, and distinct inventions, for uncon-
nected objects, then the objection will lie in its full force and
be fatal. The same rule would apply to a patent for several
distinct improvements upon different machines, having no

^ See slflo FhiUipe on Patents, pp. 214, 215, 216.
VOL. n. — p. c. 4

38 PATENT CASES.

Wyeth et al. v. Stone et aL 1 Story.

common object or connected operation. For, if different
inYcntions might be joined in the same patent for entirely
different purposes and objects, the patentee would be at
liberty to join as many as he might choose, at his own mere
pleasure, in one patent, which seems to be inconsistent with
the language of the Patent Acts, which speak of the thing
patented, and not of the things patented, and of a patent for
an iuYention, and not of a patent for inventions ; and they
direct a specific sum to be paid for each patent. Besides,
there would arise great difficulty in applying the doctrines of
the common law to such cases. Suppose one or more of the
supposed inventions was not new, would the patent at the
common law be void in Mo, or only as to that invention, and
good for the rest ? Take the case of a patent for ten differ-
ent machines, each applicable to an entirely different object,
one to saw wood, another to spin cotton, another to print
goods, another to make paper, and so on ; if any one of these
machines were not the invention of the patentee, or were in
public use, or were dedicated to the public before the patent
was granted, upon the doctrines of the common
[ * 289 ] law the patent * would be broader than the inven-
tion, and then the consideration therefor would fail,
and the patent be void for the whole. But if such distinct
inventions could be lawfully united in one patent, the doc-
trine would lead to consequences most perilous and injurious
to the patentee ; for, if any one of them were known before,
or the patent as to one was void, by innocent mistake or by
priority of invention, that would take away from him the title
to all the others, which were unquestionably his own exclu-
sive inventions. On the other band, if the doctrine were
relaxed, great inconvenience and even confusion might arise
to the public, not only from the difficultyof disting uishing
between the different inventions stated in the patent and
specification, but also of guarding themselves against fraud

PATENT CASES. 39

Wyeih et al. v. Stone et al. 1 Stoiy.

and imposition by the patentee, in including doubtful claims
under cover of others, which were entirely well founded. In
construing statutes upon such a subject, these considerations
are entitled to no small weight. At least, they show that
there is no ground, founded in public policy, or in private
right, which calls for any expanded meaning of the very words
of the statute ; and that to construe then^ literally is to con-
strue them wisely. It is plain, also, that the Act of 1837, ch.
45, in the ninth section, contemplated the rule of the com-
mon law as being then in full force ; and, therefore, it seeks
to mitigate it, and provides, ^^ that whenever, by mistake, ac-
cident, or inadvertence, and without any intent to defraud or
mislead the public, any patentee shall have, in his specifica-
tion, claimed to be the original and first inventor or discoverer
of any material or substantial part of the thing invented "
(not of different things invented) ^^ of which he was not the
first and original inventor, and shall have no legal or just
right to claim the same, in every such case the patent shall
be good and valid for so much of the invention or discovery "
(not inventions or discoveries) ^<as shall be truly
and band fide, his own ; * provided it shall be a [ * 290 ]
material and substantial part of the thing patented,
and be definitely distinguishable from the other parts so
claimed without right as aforesaid." This language mani-
festly points throughout to a definite and single invention, as
the ^^ thing patented," and does not even suppose that one
patent could lawfully include^divers distinct and independent
inventions, having no common connection with each other,
nor any common purpose. It may, therefore, fairly be deemed
a legishtive recognition and adoption of the general rule of
law in cases not within the exceptive provision of the Act of
1837.

And this is what I understand to have been intended by
the Court in the language used in Barrett v. Hall, 1 Mason,

40 PATENT CASES.

Wyeth et al. v. Slono et al. 1 Story.

447, 475, 478. It was there aaid, (p. 475,) that << a patent
under the general Patent Act cannot embrace various distinct
improyements and inventions ; but in such a case the party
must take out separate patents. If the patentee has invented
certain improved machines, which are capable of a distinct
operation, and has also invented a combination of these ma-
chines to produce ^ connected result, the same patent cannot
at once be for the combination and for each of the improved
machines ; for the inventions are as distinct as if the subjects
were entirely different." And again, (p. 478,) ** if the patent
could be construed as a patent for each of the machines
severally, as well as for the combination, then it would be
void, because two separate inventions cannot be patented in
one patent." It is obvious, construing this language with
reference to the case actually before the Court, that the Court
were treating of a case where each of the patented machines
might singly have a distinct and appropriate use and purpose,
unconnected with any common purpose, and therefore each
was a different invention. In Moody v. Fiske, 2 Mason, 112,

119, the judge alluded still more closely to this dis-
[ * 291 ] tinction, and * said : '^ I wish it to be understood,

in this opinion, that though several distinct improve-
ments in one machine may be united in one patent, [yet] it
does not follow, that several improvements in two different
machines, having distinct and independent operations, can
be so included ; much less, that the same patent may be for
a combination of different machines, and for distinct improve-
ments in each." It is perhaps impossible to use any general
language in cases of this sort, standing almost upon the meta-
physics of the law, without some danger of its being found
susceptible of an interpretation beyond that which was then
in the mind of the Court. The case intended to be put in
each of these cases, was of two different machines, each ap-
plicable to a distinct object and purpose, and not connected

PATENT CASES. 41

Wyetfa et eL v. Stone et aL 1 Stoiy.

together for any common object or purpose. And> under-
stood in this way, it seems to me, that no reasonable objection
lies against the doctrine.

Construing, then, the present patent to be a patent for
each machine, as a distinct and independent invention, but
for the same common purpose and auxiliary to the same com-
mon end, I do not perceive any just foundation for the objec*
tion made to it. If one patent may be taken for different
and distinct improvements made in a single machine, which
cannot well be doubted or denied,^ how is that case distin-
guishable in principle from the present ? Here, there are
two machines, each of which is or may be justly auxiliary to
produce the same general result, and each is applied to the
same common purpose. Why then may not each be deemed
a part or improvement of the same invention ? Suppose the
patentee had invented two distinct and different machines,
each of which would accomplish the same end, why may he
not unite both in one patent, and say, I deem each equally
useful and equally new, but, under certain circum-
stances, * the one may, in a given case, be prefera- [ * 293 ]
ble to the other ? There is a clause in the Patent
Acis, which requires, that the inventor, in his specification or
description of his invention, should ^' fully explain the princi-
ple and the several modes in which he has contemplated the
application of that principle or character, by which it may be
distinguished from other inventions." Now, this would seem
clearly to show, that he might lawfully unite in one patent all
the modes in which he has contemplated the application of
his invention, and all the different sorts of machinery, or
modifications of machinery, by which or to which it might be
applied ; and if each were new, there would seem to be no

1 See Moody v. Flake, 2 Mason, R. 112, 117, 118, ante, YoL L 812.

42 PATENT CASES.

Wjeth 6t al. V. Stone et iL 1 Story.

jQ8t groand of objection to hii patent reaching them alL^ A
fortiori, this rule would seem to be applicable, where each of
the machines is but an improvement or invention oondncing
to the accomplishment of one and the same general end.

But let OS take the case in another view, (of which it is
certainly susceptible,) and consider the patent as a patent,
not for each machine separately, but for them conjointly, or
in the aggregate, as conducing to the same common end ; if
each machine is new, why may they not both be united in
one patent, as distinct improvements ? I profess not to see
any good reason to the contrary. If they may be so united
and were both new, then, upon the principles established in
Moody V. Fiske, (3 Mason, R. 113, 117, 118, 119,) it is not
necessary, in order to maintain a suit, that there should be a
violation, of the patent throughout It is sufficient, if any one
of the invented machines or improvements is wrongfully
used ; for that, pro tanto, violates the patent. In this view,
therefore, the use of the cutter of the inventor, without any
use of the saw, would be a suffident ground to support the
present bill, if it were not otherwise open to objection.
[ * 393 ] * We come, then, to the remaining point, whether,
although under the Patent Act of 1793, ch. 65,* the
patent is absolutely void, because the claim includes an ab-
stract principle, and is broader than the invention ; or whether
that objection is cured by [the disclaimer made by the pa-
tentee, (Wyeth,) under the Act of 1837, ch. 45. The
seventh section of that act provides, ** That whenever any
patentee shall have, through inadvertence, accident, or mis-
take, made his specification too broad, claiming more than
that of which he was the original or first inventor, some ma-
terial and substantial part of the thing patented being truly

1 Act of 1798, cL 55, ja. 3. Act of 1836, ch. S57.

PATENT CASES. 48

Wyeth et aL v. Stone et al. 1 Stoiy.

or jufldy his own, any such patentee, his administrators^ exe-
cators, or assigns, whether of the whole or a sectional part
thereof, may make disclaimer of such parts of the thing pa-
tented, as the disclaimant shall not claim to hold by virtue of
the patent or assignment, <&c., &c. And such disclaimer
shall be thereafter taken and considered as a part of the
original specification, to the extent of the interest which shall
be possessed in the patent or right secured thereby by the
disclaimant, &c. Then follows a proviso, that ** no such dis-
claimer shall affect any action pending at the time of its being
filed, except so far as may relate to the question of unreason-
able neglect or delay in filing the same.'' The ninth section
provides, <' That whenever, by mistake, accident, or inadvert-
ence, and without any wilful default or intent to defraud or
mislead the public, any patentee shall have, in bis specifica-
tion, claimed to be the firpt and original inventor or discoverer
of any material or substantial part of the thing patented, of
which he was not the first and original inventor, and shall
have no legal or just right to daim the same, in every such
case the patent shall be deemed good and valid for so much
of the invention or discovery as shall be truly and bond fide
hia own ; provided it shall be a material and substantial part
of the thing patented, and shall be definitely distin-
guishable * from the other parts so claimed without [ * 294 ]
right as aforesaid.'' Then follows a clause, that in
every such case, if the plaintiff recovers in any suit, he shall
not be entitled to costs, *^ unless he shall have entered at the
Patent-Oflice, prior to the commencement of the suit, a dis-
claimer of all that part of the thing patented, which was so
claimed without right; with a proviso, <<That no person
britlging any such suit shall be entitled to the benefits of the
provisions contained in this section, who shall have unreason-
ably neglected or delayed to enter at the Patetit-Oflice a
<Usclaimer as aforesaid."

44 PATENT CASES.

Wyeth et al. v. Stone et al. 1 Story.

Now, it seems to me that, upon the true constructioD of
this statute, the disclaimer mentioned in the seventh section
must be interpreted to apply solely to suits pending, when
the disclaimer is filed in the Patent-Office ; and the disclaimer
mentioned in the ninth section to apply solely to suits brought
after the disclaimer is so filed. In this way, the provisions
harmonize with each other ; upon any other construction they
would seem, to some extent, to clash with each other, so
far as the legal effect and operation of the disclaimer is
concerned.

In the present case, the suit was brought on the first of
January, 1840, and the disclaimer was not filed until the
twenty«fourth of October, of the same year. The proviso
then, of the seventh section, would seem to prevent the dis-
claimer from afiecting the present suit in any manner whatso-
ever. The disclaimer, for another reason, is [also utterly
without effect in the present case ; for it is not a joint dis-
claimer by the patentee and his assignee, Tudor, who are
both plaintiflb in this suit ; but by Wyeth alone. The dis-
claimer cannot, therefore, operate in favor of Tudor, without
his having joined in it, in any suit, either at law or in equity.
The case, then, must stand upon the other clauses of the

ninth section, independent of the disclaimer.
[ * 295 ] * This leads me to say that I cannot but consider

that the claim made in the patent for the abstract
principle or art of cutting ice by means of an apparatus
worked by any other power than human, is a claim founded
in inadvertence and mistake of the law, and without any wil-
ful default or intent to defraud or mislead the public within
the proviso of the ninth section. That section, it appears to
me, was intended to cover inadvertences and mistakes of the
law, as well as inadvertences and mistakes of fact; and,
therefore, without any disclaimer, the plaintiffs might avail
themselves of this part of the section to the extent of main-

PATENT CASES. 45

Wyeth et al. v. Stone et ol. 1 Stoxy.

taining the present suit for the other parts of the invention
daimed, that is, for the saw and for the cutter, and thereby
protect themselves against any violation of their rights, unless
there has been an unreasonable neglect or delay to file the
disclaimer in the office. Still, however, it does not seem to
me that a court of equity ought to interfere to grant a per-
petual injunction in a case of this sort, whatever might'be the
right and remedy at law, unless a disclaimer has been in fact
filed at the Patent-Office before the suit is brought. The
granting of such an injunction is a matter resting in the sound
discretion of the Court ; and if the Court should grant a per-
petual injunction before any disclaimer is filed, it may be that
the patentee may never afterwards, within a reasonable time,
file any disclaimer, although the act certainly contemplates
the neglect or delay to do so to be a good defence both at
law and in equity, in every suit brought upon the patent, to
secure the rights granted thereby. However, it is not indis-
pensable in this case to dispose of this point, or of the ques-
tion of unreasonable neglect or delay, as there is another
objection, which in my judgment is fatal, in every view, to
the maintenance of the suit in its present form.

The objection which I deem fatal, is, that the bill states
and admits that the assignment to the plaintiff, Tu-
dor, (made *in February, 1832,) has never yet [*296]
been recorded in the State Department, according
to the provisions of the Patent Act of 1793, ch. 55, § 4.
That act provides, ^' That it shall be lawful for any inventor,
his executor or administrator, to assign the title and interest
in the said invention at any time; and the assignee having
recorded the said assignment in the office of the Secretary of
State, shall thereafter stand in the place of the original inven-
tor, both as to right and responsibility." It seems a neces-
sary, or, at least, a just inference from this language, that
until the assignee has so recorded the assignment, he is not

46 PATENT CASES.

The Philadelphia & Trenton Bailroad Ck>. v. Stimpion. U Peten.

substituted to the right and responsibility of the patentee, so
as to maintain any suit at law or in equity, founded thereon.
It is true that no objection is taken in the pleadings on ac-
count of this defect; but it is spread upon the face of the bill,
and therefore the Court is bound to take notice of it. It is
not the case of a title defectively set forth, but of a title de-
fective in itself, and brought before the Court with a fatal
infirmity, acknowledged to be attached to it. As between
the plaintiffs and the defendants, standing upon adverse titles
and rights, (whatever might be the case between privies in
title and right,) Tudor has shown no joint interest sufficient
to maintain the present bill ; and, therefore, it must be dis-
missed with costs.

The Philadelphia and Trenton Railboad Company,
Plaintiffs in error, v. James Stimpson, Defendant in

ERROR.

[U Peters, 448. January T. 1840.]

Action for the violation of a patent-right, granted to the patentee for " a new
and useful improyement in turning short curves on railroads."

On the 26th September, 1835, a second patent was granted, the original patent,
granted in 1831, having been surrendered and cancelled on account of a
defective specification ; the second patent being for fourteen years from the
date of the original patent The second patent was in the precise form of
the original, except the recital of the fact, that the former patent was can-
celled " on account of a defective specification," and the statement of the
time the second patent was to begin to run. It was objected that the second
patent should not be admitted in evidence on the trial of the case, because it
did not contain any recitals that the prerequisites of the Act of Congress of
1836, authorizing the renewal of patents, had been complied with. Hdd:
that this objection cannot, in point of law, be maintained. The patent was
issued under the great seal of the United States, and is signed by the Presi-

PATENT CASES. 47

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Feten.

dent, and conntenigned by the Secretary of State. It is a presumption of law
that all pablic officers, and especially such high functionaries, perform their
proper official duties, until the contrary is proved. Where an act is to be
done, or patent granted upon eyidence and proofs to be laid before a public
officer, upon which he is to decide, the fact that he has done the act, in grant-
iug the patent is prima facie eyidence that the proofs haye been regularly
made, and were satisfactory. Ko other tribunal is at liberty to reexamine or
controvert the sufficiency of such proofs, when the law has made the officer
the proper judge of their sufficiency and competency.

Patents for lands, equally with patents for inventions, have, in Courts of justice,
been deemed primd facie evidence that they have been regularly granted,
whenever they have been produced under the great seal of the, government,
without any recitals or proofs that the prerequisites of the acts under which
they have been issued have been duly observed. In cases of patents, the
United States have gone one step further ; and as the patentee is required
to make oath that he is the true inventor, before he can obtain a patent,
the patent has been deemed prima facie evidence that he has made the inven-
tion.

It is incumbent on those who seek to show that the examination of a witness
has been improperly rejected, to establish their right to have the evidence
admitted ; for the Court will be presumed to have acted correctly, until the
contrary is established.

To entitle a party to examine a witness in a patent cause, the purpose of whose
testimony is to disprove the right of the patentee to the invention, by show-
ing its use prior to the patent by others, the provisions of the Patent Act of
1836, relative to notice, must be strictly complied with.

It is incumbent on those who insist upon the right to put particular questions
to a witness, to establish that right beyond any reasonable doubt, for the
very purpose stated by tlAn ; and they are not afterwards at liberty to desert
that purpose, and to show the pertinency or relevancy of the evidence for any
other purpose not then suggested to the Court.

A party has no right to cross-examine any witness, except as to facts and cir-
cumstances connected with the matters stated in his direct examination. If
h& wishes to examine him on other matters, he must do so by making the
witness his owuj and calling him as such, in the subsequent progress of the
cause. 'A party cannot, by his own omission to take an objection to the
admission of improper evidence, brought out on a cross-examination, found
a right to introduce testimony in chief, to rebut it or explain it.

Parol evidence, bearing upon written contracts and papers, ought not to be ad-
mitted in evidence, without the production of ^h written contracts or papers ;
so as to enable both the Court and the jury to see whether or not the admis*
sion of the parol evidence in any manner, will trench upon the rule that
parol evidence is not admissible to vary or contradict written contracts or
papers.

As a general rule, and upon general principles, the dedaraiions and conversa-

48 PATENT CASES.

The Philadelphia & Trenton Batlioad Co. v, Stimpson. 14 Feten.

tions of the plaintiff are not admissible eWdenoe in Hyot of his own rights.
This is, however, but a general role, and admits and requires yarioos excep-
tions. There are many cases in which a party may show his deda-

[*449 ] rations comport with acts in his own fiivor, as a part of the * res
g«$ta. There are other cases in which his material dedarmtions
hayebeen admitted.

In an action for an assault and battery and wounding, the declarations of the
plaintiff to his internal pains, aches, injuries, and symptoms, to the physician

' attending him, are admissible for the purpose of showing the nature and ex-
tent of the injuries done to him. In many cases of inyentions, it is hardly
possible in any other manner to ascertain the precise time and exact origin
of the inyention.

The oonyersation and declarations of a patentee, merely affirming tiiat at some
former period he had invented a particular machine, may well be objected to.
But his conversations and declarations, stating that he had made an inven-
tion, and describing its details, and explaining its operations, are properly
deemed an assertion of his right at that time, as an inventor, to the extent of
the facts and details which he then makes known, although not of their exis-
tence at an anterior time. Such declarations, coupled with a description of
the nature and objects of the invention, are to be deemed a part of the rea
ffestce^ and legitimate evidence that the invention was then known and
claimed by him ; and thus its origin may be fixed at least as early as that
period.

If the rejection of evidence is a matter of resting in the sound discretion of the
Court, this cannot be assigned as error.

The mode of conducting trials, the order of introducing evidence, and the times
when it is to be introduced, are properly matters belongLog to the practice
of the Circuit Courts, with which the Supreme Court ought not to interfere ;
nnless it shall choose to prescribe some fixed ^neral rules on the subject,
under the authority of the Act of Congress. The Circuit Courts possess this
discretion in as ample a manner as other judicial tribunals.

Testimony was not offered by a defendant, oi; stated by him as matter of de-
fence, in the stage of the cause when it is usually introduced according to
the practice of the Court. It was offered after the defendant's counsel had
stated in open Court, that they had closed their evidence, and after the plain-
tiff, in consequence of that declaration, had discharged his own witness. The
Circuit Court refused to admit the testim<Hiy. Hdd^ that this decision was
proper.

In error from the Cm^uit Court of the United States for the
Eastern District of Pennsylvania.

At the April session of the Circuit Court, James Stimpson

PATENT CASES. 49

The Philadelphia & Trenton Bailroad Co. v. Stimpson. 14 Peters.

. _ _■ _ — ^ I

instituted an action against the plaintiffs in error, for the re-
covery of damages, for the violation of a patent granted to
him by the United States, on the 26th day of September,
1835, for ^' a new and usefal improvement in the mode of
turning short curves on railroads/'

The case was tried on the 16th day of February, 1839;
and a verdict was rendered for the plaintiff, for the sum of
four thousand two hundred and fifty dollars. On the 6th of
May, 1839, a remittiter was entered on the docket of the
Court, for the sum of one thousand dollars ; and a judgment
was entered for the plaintiff for three thousand two hundred
and fifty dollars.

On the trial of the cause, the defendants tendered a bill of
exceptions to the decision of the Court, on their admitting the
patent to the plaintiff in evidence ; and to other rulings of the
Court in the course of the trial. The defendants prosecuted
this writ of error.

The patent granted by the United States to James Stimp-
son was as follows :

'^ The United States of America ; to all to whom these
letters-patent shall come.

<^ Whereas, James Stimpson, a citizen of the United States,
hath alleged that he has invented a new and useful
improvement in the *mode of turning short curves [*450]
on railroads, for which letters-patent were granted
the twenty-third day of August, 1831; which letters being
hereby cancelled on account of a defective specification ;
which improvement, he states, has not been known or used
before his application, hath made oath that he does verily be-
lieve that he is the true inventor or discoverer of the said im-
provement, hath paid into the treasury of the United States
the sum of thirty dollarlb, delivered a receipt for the same, and
presented a petition to the Secretary of State, signifying a de-
sire of obtaining an exclusive property in the said improve-

VOL. II. — p. c. 5

50 PATENT CASES.

The Philadelphia ft Trentoa Railroad Co. v, Stimpson. 14 Peters.

menty and praying that a patent may be granted for that pur-
pose. These are, therefore, to grant, according to law, to the
said James Stimpson, his heirs, administrators, or assigns, for
the term of fourteen years from the twenty-third day of Au-
gust, 1831, the full and exclusive right and liberty of making,
constructing, using, and vending to others to be used, the
said improvement, a description whereof is given in the words
of the said James Stimpson himself, in the schedule hereto
annexed."

Tested at Washington, under the seal of the United States,
on the 26th day of September, 1836, by the President of the
U nited States ; and certified in the usual form by the Attor-
ney-General of the United States.

<< The schedule referred to in these letters-patent, and mak-
ing a part of the same," contained " a description in the
words of the said James Stimpson himself, of his improve-
ment in the mode» of turning short curves on railroads, for
which letters-patent were granted, dated the twenty-third day
August, 1831, which letters-patent being hereby cancelled, on
account of a defective specification."

Ttie specification describes the invention with minute par-
ticularity, and concludes : " What I claim as my invention
or improvement, is the application of the flanches of the
wheels on one side of railroad carriages, and of the treads of
the wheels on the other side, to turn curves upon railways,
particularly such as turning the corners of streets, wharves,
&c., in cities and elsewhere, operating upon the principle
herein set forth."

The bill of exceptions stated, that the counsel for the plain-
tiff offered in evidence the patent and specification, to the
admission of which in evidence, the counsel for the defendant
objected ; but the objection was overruled by the Court, and
the evidence was admitted.

2. The defendants ofifered to give in evidence, by Josiah

PATENT CASES. 51

The FhiladelphU & Trenton Bailroad Co. v, Stimpson. 14 Peters.

White, the description of a flange upon one side of the railroad
cars, and the running upon the tread of the wheel upon the
other side, with the flange in a groove, for the turning of
curves, which he had seen in use before the date of plaintifi*'s
patent ; which was objected to by the counsel for the plain*
tiff, and the objection sustained by the Court. The objection
of the counsel for the plaintiff to the introduction of the tes-
timony of Josiah White, was founded on the absence
* of the notice required by the Act of Congress of [ * 451 ]
the use of the machine at Mauch Chunk ; at which
place, it was said, his testimony would show it had been
used.

3. The third exception was to the refusal of the Court to
allow the defendants to introduce proof of the conversation
between the patentee and the counsel of the Baltimore and
Ohio Railroad Company, while an arrangement of a suit
against the company was made, as to the character and effects
of the arrangements.

4. The counsel for the plaintiff, by rebutting evidence, to
extend his claim to the invention prior to the time at which
the defendants had proved the reduction of the same into use
and practice by others, o&red to give evidence by witnesses
of the conversations of the patentee on the subject of his in-
vention at an anterior period i which conversations were in-
tended to show the making of the invention by the patentee,
before and at the period when the same took place. The
counsel for the defendants objected to the admission of this
testimony ; but the Court overruled the objection.

5. The fifth exception was to the refusal of the Court to
admit the examination of Dr. Thomas P. Jones. The plain-
tiff had discharged his witnesses on the declaration of the de-
fendants' counsel that they had closed their evidence. The
testimony asked from Dr. Jones, was to new facts. The
Court refused to admit the testimony, on the ground that

52 PATENT CASES.

The Philadelphia & Trenton Railroad Co. v, Stimpson. U Peten.

the testimony was improper, and that it was offered too
late.

The case was argued by Mr. Cox, and Mr. Southard^ for
the plaintiffs in error ; and by Mr. J. R. Ingersolly for the
defendant.

Mr. Cox and Mr. SotUhard, on the first exception.

The patent should not have been admitted in evidence.
On its face it is inoperative, and invalid. It is not a patent
under the Act of Congress of 1793 ; but it purports to be
a substituted patent for one which had been surrendered. It
gives to the patentee the same privileges as those which were
given by the first patent. It, therefore, should be in strict
and exact conformity with the law of 1793, as well as with
the subsequent Act of Congress, authorizing the surrender of
a patent for an imperfect specification, and the issue of another.
I The Act of 2Ist February, 1793, requires, by its third sec-
tion, that the applicant shall be the true inventor of the ma-
chine, &c. This is made a sine qua nan to the granting the
patent, and the oath of the claimant is required to this fact.
This provision makes the oath necessary, before the Secretary
of State has authority to grant the patent. There is no re-
medy, if this has been omitted.

There was no decision before the case of Morris v. Hunt-
ington, Paine's Reports, 348, which afiirmed the right of
a patentee to surrender his patent for an erroneous or
imperfect specification. After this case. Congress
[ * 452 ] authorized such a surrender. Act of Congress * of
July 3d, 1832. By this act the cause of the sur-
render must be made out to the satisfaction of the Secretaiy
of State, when a second patent is asked for. It has been
decided, that a patent is primd facie evidence of the state-
ments on the face of the patent. This does not give any

PATENT CASES. 53

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters.

other validity to those statements ; and it is not sufficient that
some of the requirements of the Act of Congress are stated.
All must be set forth, and an averment must be made that
every thing has been done. There is no halting point.
Those requirements exist as to any patent granted after the
surrender of a patent. The errors or imperfections in the
specification, on which the surrender has been made, should
be stated. Grant t;. Raymond, 6 Peters, 218. In the case
cited, there was a recital of the surrender of the patent, and
the cause of its surrender.

There is in the patent, which was before the Circuit Court,
no recital of the imperfections of the first specification ; no
allegation that there was no fraud in the transaction. There is
nothing shown but the gratuitous act of the officer in granting
th^ second patent. And yet all the prerequisites to the grant-
ing of a second patent should appear in it, as well as be of
record in the Patent-Office.

Without these essential features in a patent given on the
surrender of a previous one for the same invention, it cannot
be read in evidence to a jury. The requirements in both
the Acts of Congress of 1793, and 1832, must appear in it.
If all those matters are not shown, the second patent stands
as a new patent ; and by allowing it to be given in evidence,
the Court altogether disregard the law. If the patent, in this
imperfect form, is admitted as primd facie proof, all the bur-
den of contradicting it is thrown on the opposite party.
Cited, on these pdnts, Shaw v. Cooper, 7 Peters, 245.

In support of the second exception, the counsel contended
that the notice given was sufficient to authorize the introduc-
tion of the testimony of Josiah White. Cited, on this point,
Evans v. Eaton, Peters, C. C. R. 322. Wheat. Rep. S. C.
The notice would have been Sufficient under the Act of Con-
gress of 1793, and why not under the Act of July 3d, 1836 ?

The objection to the introduction of the evidence by the

5»

54 PATENT CASES.

The Fhilfldelphia & Trenton Railroad Co. v. Stimpson. U Peten.

counsel for the defendants, which was sustained by the Court,
and which is the subject of the defendant's third exception,
was well taken. It was in the power of the plaintiff to have
produced his contract with the Baltimore and Ohio Railroad
Company, and have rendered this evidence unnecessary.
He did not do so.

As to the fourth exception. It is admitted, that it was the
right of the plaintiff to prove, by legal rebutting evidence,
that the invention made by him, and for which be held the
patent, was in use before the period in which the defendant
had proved the invention by him. But this evidence could
not be given, by shoving the conversations of the plaintiff
on the subject of the invention before the date of the first
patent.

Conversations on the subject of an invention fire
[ * 453 ] not the * invention ; nor are the ideas of the inven-
tion its actual development. There must be an
application of the thought, in the construction of the ma-
chine.

This is an attempt to give the declarations of a party in
evidence, after the actual occurrence of the transaction. No
declaration of a person that he intended to take out a patent,
could be given in evidence. Cited, on this point, I Wheat.
Rep. 313 ; 10 Serg. & Rawle, 27 ; 5 Serg. & Rawle, 395 ;
Roscoe on Evidence, 21 ; 4 Wash. C. C. R. 58 ; 5 Mason, 6 ;
1 Gallis. C. C. R. 438.

As to the 5th exception, the counsel contended, that the
evidence of Dr. Jones was rebutting evidence and was re-
gular ; as it was offered to meet and disprove the plaintiff's
declarations, which the Court had admitted as testimony.

Mr. IngeraoU, for the defericlants in error.

1. The objection to the certificate of the Secretary of
State should apply rather to the effect than the admissibility
of the document. That officer is authorized by law to issue

PATENT CASES. 55

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters.

patents, and the presumption is, that he has done so rightfully.
Possession of the document does not aflect the intrinsic rights
of any one. Every question of merit is still open. It enables
the patentee to sue ; but it neither secures him in the enjoy-
ment of the alleged invention, nor precludes others from con-
testing the validity of his claims. In the different cases cited,
the patent appears to have been received in evidence exactly
in the form now exhibited, although it may have availed no-
thing to the plaintiff afterwards.

Sullivan v. Redfield, 1 Paine, 447 : << The patent is primd
• facie evidence of the right." The Margaretta, 2 Gall. 519 ;
Remission, though not valid was given in evidence. See
also Bingham v. Cabot, 3 Dall. 19; Bell v. Morrison, 1 Pe-
ters, 355 ; Ke^ne v. Meade, 3 Peters, 6 ; The United States
, Liddle, 2 Wash. C. C. Rep. 205.

2. The testimony of Josiah White would have been admit-
ted under the sixth section of the law of 1793. But the fif-
teenth (or corresponding section, of the law of 1836, requires
notice of place, person, and residence. As the law previously
stood, great injustice might have been done, unless the Court
had construed it so as to invest the judge with power to pre-
vent the plaintiff from being taken by surprise. Evans v.
Eaton; 3 Wheat. 505. The law now wisely anticipates the
necessity for an exercise of judicial discretion and possible
delay ; and requires notice of the place where the improve-
ment is supposed by a defendant to have been previously
used. This was not given, and the testimony was necessarily
rejected.

3. Although, in truth, the offer to examine Mr. Latrobe
upon certain points was not rejected by the Court, but with-
drawn by the counsel, yet as it appears by the record to have
been a point decided, I will submit to treat it accordingly.
The testimony would no doubt have been rejected

if the offer had been persisted in, and the * delay [ * 454 ]

56 PATENT CASES.

The PhiUdelphia & Trenton RailioAd Co. v. Stimpson. U Peters.

that would be requisite to put the record right would be deeply
injurious to my client*

(1.) The inquires suggested for the witness are impracti-
cable, and they lead to impracticable results. The inquiry
refers to a ^^ negotiation/' '* arrangement/' and " settlement"
It asserts the fact that a *^ grant" or *^ contract," was made.
Negotiation is the necessary preliminary to a contract, is
absorbed in it, and forms a part of it. How can you separate
them ? Out of one identified existence, two things are to
be made, essentially distinct from each other. That is im-
possible.

(2.) The inquiries are irrelative. The arrangement con-
templated was res inter alios acta. The plaintiffs in error
were altogether strangers to it. Many inducements may lead
to a settlement with one person which would not render it
desirable with another. If it were not that Ross Winans had
previously been cross-examined by the counsel for the plain-
tiffs in the Circuit Court, to the point of settlement with the
Baltimore and Ohio Company, no pretence for the inquiry
would exist. If that was wrong, this will not make it right.
It was not objected to. If not strictly cross-examination, we
had no right to resort to it. EUmaker v, Buckley, 16 Serg.
& Rawle. If it was regular cross-examination, it cannot jus-
tify the proposed irregularity. But we were bound to put
the witness on his guard as to a collateral fact which might
impeach his testimony. Rule in the Queen's case.

(3.) The object attempted to be proved was a mere entity ;
an abstraction ; nothing actually done, but at best something
omitted or avoided ; a conclusion or construction ; a contin-
gency without a substantial thing to support it

(4.) It was an attempt to prove by parol some known
written arrangement, which was susceptible of being pro-
duced.
4. Explanations of the patentee himself were good evidence

PATENT CASES. 5*7

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters.

to prove the genuineness of his claims to originality. It is
necessary to understand the manner in which this testimony
was produced. PlaintifT at first simply produced his patent,
and called a witness who proved its utility and infringement
by the defendants. Then the defendants went at large into
proof of alleged priority of the invention by other persons.
All of this went to show a use before the date of the plaintiff's
patent. A necessity was therefore thrown upon him of prov-
ing that his invention existed, and was communicated by him
to different persons at a still earlier period. No doubt of the
importance of such proof. It consisted of evidence of plain-
tiff's invention prior to the defendant's knowledge, or the
knowledge of those persons on whom they relied. To meet
this particular exigency, that is, to show invention, it is diffi-
cult to conceive what can be authentic except what comes
from the inventor himself. He therefore produced several
individuals, who stated that he described the improvement to
them at a period considerably earlier than defendants had
fixed for its earliest use. If he described it, he must have
known it. If he knew it before any other person,
he must have * invented it. That prior knowledge [ *455 ]
was invention ; and that was the very thing to be
proved.*

Two objections were taken to the character of the proof;
1st. That it was derived from the plaintiff himself; 2. That
the alleged improvement was not then brought into practical

use by him.

Answer 1st. It was an invention; else not patentable ; in
other words, it must spring from himself. An exhibition of
it must necessarily in some shape or other be his act. What-
ever might be said or done by others could not be available
to him. The exhibition might be effected by deed, signs, or
words. It matters not in what particular manner the effect
is produced, but the discovery must make manifest its pater-

58 PATENT CASES.

The Philadelphia & Trenton Railroad Co. v. Sdmpson. 14 Peters.

nity ; and it can do so only through the medium of its proper
parent.

This may be done by his works — a machine constructed.
Let it be produced ; original, practical, perfect in all its parts.
Nothing is gained by the author unless something more than
all this appears, namely, authorship. However eloquent the
machine may be as to its uses, it cannot speak for itself
as to its author. The nearest it can come to speech would
be an inscription or label on its front : " J. S. fecit," for ex-
ample.

That would at best be a written declaration. What dif-
ference would it make that the writing, or stamping, or print-
ing, should be in a book ? That description of evidence in a
sister department of the law, is conclusive of important rights.
In maintaining copyrights, the writing of the party is the es-
sence of the discovery, and the sole proof of invention or ori-
ginality. If, instead of writing with his own hand, the same
author dictates to another person, cannot the amanuensis
prove the dictation, and hence the authorship? A blind
author has often given to the world the result of his genius,
through the pen of another. On a question of aOthorship,
surely the testimony of the scribe would be received as com-
petent.

Another species of proof of invention remains, namely, oral
explanation alone. Why may it not be received ? It is the
very thing itself. To speak it, was to create it, if it did not
already exist in thought; and if it did, it must prove it.
The proof was given to counteract the allegation of earlier
discovery. It produces the effect by showing that the earlier
discoverers, as they are regarded, received from the plaintiff
the information which enabled them to put the invention in
use, and then attempt to deny the right of showing how the
information was communicated and obtained. One of the
very pieces of testimony objected to, consisted of a conversa-

PATENT CASES. 59

The Philadelphia & Trenton Bailroad Co. v. Stimpson. 14 Feten.

tion with the person who claimed to be an inventor in prefer-
ence to the plaintiff.

The declarations did not stand alone ; they were accom-
panied by two drawings and a model. The date of the exis-
tence of these monuments is clearly proved. The conversa-
tions became but a part of the rea gestce.

There are many occasions on which one's own sayings and
doings are good evidence ; in some instances the
best, and in others the only * evidence. The present [ * 456 ]
is an anomaly unless it concurs. It does not follow
that the expressions of an individual are the illegal creation
of testimony for himself. Such are, 1. Various kinds of de-
clarations ante litem motam ; 2. When the sayings are the
doings, as in cases of notice ; 3. Where the expressions of an
individual are the test of a given state of things, as intellect ;

4. Proof of a contract, as marriage, by words de presenti;

5. Almost any other discovery or invention, not connected
with the useful arts. A reward is offered for lost property ;
the finder informs of the finding of it ; the declarations can
be proved.

Answer 2d. As to the objection that the explanations were
not reduced to practice. Here, too, the objection loses sight
of the fact that our evidence was not original, but merely
designed to meet a collateral issue as to the period of inven-
tion, and not exactly as to invention itself. On any ground,
however, the question of invention does not. depend upon
whether the thing has been reduced to practice, but whether
it can be. Not whether it is actually practised, but practica-
ble. Drawings, descriptions, and models are sent to the Pa-
tent-Ofiice. These are miniature likenesses, not the thing
itself. Any other course would, in many instances, be quite
impracticable. A ship, a house, a town, are often the reci-
pients of an improvement which cannot be practically exhi-
bited, except in connection with the vast object to which it is

60 PATENT CASES.

The Philadelphia & Trenton Bailroad Co. v. Stimpson. 14 Peters.

applied. Sometimes the reducing to practice might be de-
structive of life or property. A guillotine need not be rehearsed
in order to prove its power.

Besides, it might destroy the very intention, to insist on
practical exercise. It might be regarded as giving the in-
vention to the public, and then the patent-right is gone for-
ever.

5. Thomas P. Jones was called by the defendants after all
the testimony in chief, on both sides ; and the plaintiff's re-
butting testimony also had been given, and his witnesses dis-
missed ; and much time had been occupied in giving rebut-
ting testimony for the defendants. The declared object was
to prove that the invention described in the plaintiff's patent
of 1835, was different from the invention described by him
in his patent of 1831 ; in other words, that the patent which
purported to be a mere correction of form, was in substance
a totally different thing. We are struck at once with an in-
consistency between this point, and the whole tenor of the
defendant's case. The notice which they gave, the aim of
their evidence, their great design, is to show that the thing
relied on by the plaintiff, which was patented by him in 1835,
was well known and used in 1831 ; known to everybody,
publicly, notoriously. Yet we are now told that it was not
known even to the plaintiff himself; but that he found it
necessary four years afterwards to desert the alleged inven-
tion of 1831, and surreptitiously to foist in a different thing,
which then became known to him for the first time. Unless
this is the true meaning of the point, it has none.

The evidence offered was original and direct. It contra-
dicted nothing already asserted in evidence. It
[ • 457 ] was directed to a point in * no way collateral. It
went immediately to the essential merits of the case.
It was of great importance undoubtedly. Nothing .could be
more conclusive against the plaintiff. Not only would it be

PATENT CASES. 61

The Philadelphia & Trenton Railroad Co. v, Stimpson. U Peters.

destructive of his claim to originality ; but it would prove a
most audacious fraud, abortively attempted, and calculated,
when detected, to deprive him of all standing in or out of
Court, and to render his defeat as dii^^ceful as it was inevi-
table.

Notice of all this ought to have been given, perhaps. It
is not urged, however, as an argument, that none was receiv-
ed ; although it might have been calculated to take the plain-
tiff by surprise. But it was a fact, above all others, requiring,
and in its nature admitting, of countervailing proof. Not a
clerk in the office, probably, could have failed to give material
testimony in reply. These persons were at a distance ; and we
should have been left to the question of probability, whether
a man, in any extremity of impudent fraud, would have ven-
tured to place two totally different patents side by side in
the office, asserting that they were in substance identical.

The evidence offered was not the best the nature of the
case admitted of. Contradiction was to be proved between
two written instruments, with, perhaps, a model accompanying
each of them. Copies would be the proper sources of illus-
tration. Were copies not accessible? We do not know.
No inquiry was made. A thousand copies may have been
made before the Patent-Office was destroyed. Plaintiff him-
self, no doubt, had such copies in his possession. No notice
was given to him to produce them, before this violent attempt
was made to introduce the secondary evidence.

To get rid of all this, the argument was that the difference
was only to be inferred between the patents from a difference
between the conversation and one of them. But that would
rebut nothing. No person denied that plaintiff's conversa-
tions with the witnesses he produced, were as they were sworn
to be. Other conversations with other persons might show
descriptions of other inventions ; but they could not possibly
show that the first conversations did not take place* The

VOL. II. — p. c. 6

,.*•

PATENT CASES.

The Philadelphia & Trenton Railroad Co. v, Stimpson. U Peters.

judge gave two reasons for rejecting the testimony. One
was, that it was offered at too late a stage of the cause. That
was ruled in his sound discretion. From the exercise of that
discretion there is no appeal. No attempt was made to take
one. On both of his grounds he was right. But one was
sufficient to cover the whole question, and it is inaccessible
to review here.

Mr. Justice Stobt delivered the opinion of the Court.

This is a writ of error to the judgment of the Circuit Court
for the Eastern District of Pennsylvania, rendered in an action
brought by Stimpson, the defendant in error, against the
plaintiffs in error, for a violation of a patent-right granted to
him for a new and useful improvement in the mode of turning
short curves on railroads.

A patent was originally granted to Stimpson, for the same
invention, on the 23d day of August, 1831 ; and the renewed
patent, upon which the present suit is brought, was
[ * 458 ] granted on the 26th of * September, 1835, upon the
former letters-patent ^' being cancelled on account
of a defective specification ; " and the renewed patent was
for the term of fourteen years from the date of the original
patent. With the exception of the recital of the fact that the
former letters-patent were canceUed '< on account of a defect-
ive specification,'' and the statement of the prior date from
which the renewed patent was to begin to run, the renewed
patent is in the precise form in which the original patents are
granted.

At the trial upon the general issue, a bill of exceptions was
taken to certain rulings of the Court upon points of evidence,
to the consideration of which we shall at once proceed with-
out any further preface.

The first exception taken is to the admission of the renew-
ed patent as evidence in the cause to the jury. The Patent

PATENT CASES. 63

The Philadelphia & Trenton Bailioad Co. v. Stimpson. 14 Peters.

Act of 1832, ch. 162, sec. 3, under which this patent was ob-
tained, provides, that whenever any patent shall be inopera-
tive or invalid, by reason that any of ^he terms or conditions
prescribed by the prior Acts of Congress, have not, by inad*
vertence, accident, or mistake, and without any fraudulent or
deceptive intention, being complied with on the part of the
inventor, it shall be lawful for the Secretary of State, upon
the surrender to him of such patent, to cause a new patent to
be granted to the inventor, for the same invention, for the
residue of the period then unexpired for which the original
patent was granted, upon his compliance with the terms and
conditions prescribed by the third section of the Act of the
21st of February, 1792, ch. 55.

Now, the objection is, that the present patent does not
contain any recitals that the prerequisites thus stated in the
act have been complied with, namely, that the error in the for-
mer patent has arisen by inadvertency, accident, or mistake,
and without any fraudulent or deceptive intention ; and that
without such recitals, as it is the case of a special authority,
the patent is a mere nullity, and inoperative. We are of opi-
nion that the objection cannot, in point of law, be maintained.
The patent was issued under the great seal of the United
States, and is signed by the President, and countersigned by
the Secretary of State. It is a presumption of law, that all
public oiEcers, and especially such high functionaries, perform
their proper official duties until the contrary is proved. And
where, as in the present case, an act is to be done, or patent
granted upon evidence and proofs to be laid before a public
officer, upon which he is to decide, the fact that he has done
the act or granted the patent, is primd facie evidence that
the proofs have been regularly made, and were satisfactory.
No other tribunal is at liberty to reexamine or controvert the
sufficiency of such proofs, if laid before him, when the law
has made such officer the proper judge of their sufficiency and
competency. It is not, then, necessary for the patent to con-

64 PATENT CASES.

The Philadelphia & Trenton Bailroad Co. o. Stimpson. 14 Peters.

tain any recitals that the prerequisites to the grant of it have
been duly complied with, for the law makes the presumption ;
and if, indeed, it were otherwise, the recitals would
[ * 459 ] not help the case without the * auxiliary proof that
these prerequisites had been, de fadOy complied
with. This has been the uniform construction, as far as we
know, in all our Courts of justice upon matters of this sort.
Patents for lands, equally with patents for inventions, have
been deemed primd facie evidence that they were regularly
granted, whenever they have been produced under the great
seal of the government; without any recitals or proofs that the
prerequisites of the acts under which they have been issued
have been duly observed. In cases of patents, the Courts of
the United States have gone one step further, and as the pa-
tentee is required to make oath that he is the true inventor,
before he can obtain a patent, the patent has been deemed
primd facie evidence that he has made the invention. This
objection, then, is overruled ; and there was no error in the
Circuit Court in the admission of the patent.

The next exception is to the refusal of the Court to allow
a witness, Josiah White, to give a description of an invention
which he had seen on the Mauch Chunk Railroad, in 1827,
which had a groove on one side, and run on the other on a
flange for crossing, for the purpose of showing that the sup-
posed invention of the plaintiff was known and in use by
others, before the date of his patent. By the Patent Act of
1836, (which was applicable to the present point,) it is pro-
vided, in the fifteenth section, that whenever the defendant
relies in his defence on the fact of a previous invention, know-
ledge, or use of the thing patented, he shall state in his notice
of special matter to be used in his defence, the names and
places of residence of those whom he intends to prove to have
possessed a prior knowledge of the thing, and where the same
had been used. The object of this most salutary provision is
to prevent patentees being surprised at the trial of the cause.

PATENT CASES. 65

'* The Philadelphia & Trenton Bailroad Co. v, Stimpson. 14 Peters.

by evidence of a nature which they could not be presumed to
know, or be prepared to meet, and thereby to subject them
either to most extensive delays, or to a loss of their cause. It
is incumbent on those who seek to show Uiat the examination
of a witness has been improperly rejected, to establish their
right to have the evidence admitted ; for the Court will be
presumed to have acted correctly, until the contrary is esta-
blished.

In the present case, there is no proof on the record that
notice had been given according to the requirements of the
the statute, that White was to be a witness for the purpose
above stated. Unless such notice was given, it is plain that
the examination could not be rightfully had. The onus pro-
bandi is on the defendants to show it, and unless they pro-
duce the notice, the objection must fail. In point of fact, it
was admitted by counsel, at the argument, that no such no-
tice was given. In either view, then, from the admission, or
from the defect of the preliminary proof of notice in the re-
cord, the exception is not maintainable.

The next exception is to the refusal of the Court to allow
certain questions to be put by the defendants to John H. B.
Latrobe, a witness introduced by the defendants to maintain
the issue on their part. Latrobe, on his examination,
stated, ^' I know Mr. Stimpson * by sight and cha- [ * 460 ]
racter. He granted to the Baltimore and Ohio Rail-
road Company the privilege of using the curved ways on their
railroad, and all lateral roads connected therewith. I fix the
date of the contract in the early part of October, 1834, be-
cause I have then a receipt of Mr. Stimpson's counsel, for
two thousand five hundred dollars. Mr. Stimpson laid his
claim against the Baltimore Company for an infringemeht of
his patent, in 1832. It was referred to me by the company,
and I advised them." The counsel for the defendants then
offered to prove by the same witness, the declarations of the

66 PATENT CASES..

The Fbiladelphia & Trenton Bailroad Co. v. Stimpson. 14 Feten.

plaintiff and his agent, to the witness, that the settlement
made with the Baltimore and Ohio Riulroad Company with
the plaintiff, was not an admis8i<)n by the said company of
the plaintiff's right in the alleged invention, but a mere com-
promise of a pending suit, disconnected with a grant, in writ-
ing, made by the plaintiff to the said company ; and to that
end proposed to put the following questions, respectively,
and in order, to the witness: "1. Do you known who was
the agent or attorney of James Stimpson, in negotiating the
arrangement and settlement between him and the company
referred to ? Who was he ? 2. State if any conversations
occurred between James Stimpson, or his agent, or counsel,
at any time, during the negotiations, regarding the rights
claimed by him in the patent for curved ways, without refer- .
ence to the existence of a written contract, or its contents ?
3. What were they ? " The Court refused to allow these
questions to be put, for the purpose aforesaid.

Now, (as has been already intimated,) it is incumbent
upon those who insist upon the right to put particular ques-
tions to a witness, to establish that right beyond any reason-
able doubt, for the very purpose stated by them ; and they
are not afterwards at liberty to desert that purpose, and to
show the pertinency or relevancy of the evidence for any
other purpose, not then suggested to the Court. It was not
pretended at the argument, that the evidence so offered was
good evidence in chief, in behalf of the defendants upon the
issue in the cause. It was res inter alios acta^ and had no
tendency to disprove the defendant's title to the invention,
or to support any title set up by the defendants; for no
privity was shown between the defendants and the Balti-
more Company. As evidence in chief, therefore, it was irre-
levant and inadmissible. The sole purpose for which it was
offered, so far as it was then declared to the Court, was to
show, that the compromise with the Baltimore Company was

PATENT CASES. 67

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters.

not founded on any admission of the plaintiff's right in the
invention. Be it so ; it was then inconsequential ; for it cer-
tainly had no just tendency to disprove his right. If the
compromise had been offered on the part of the plaintiff, for
the purpose of establishing his right to the invention, there is
no pretence to say that it would have been admissible against
the defendants. In the converse case, it is equally inadmis-
sible for the defendants.

But it is now said that the evidence was in fact offered for
the purpose of rebutting or explaining certain state-
ments made by one * Ross Winans, a witness called [ * 461 ]
by the defendants, in his answers upon his cross-
examination by the plaintiff's counsel. Now,) this purpose
is not necessarily, or even naturally ,^suggested by the purpose
avowed in the record. Upon his cross-examination, Winans
stated : ^' I understood there were arrangements made with
the Baltimore Company. I heard the Company paid five
thousand dollars." Now,, certainly these statements, if object-
ed to by the defendants, would have been inadmissible upon
two distinct grounds. ] • First, as mere hearsay ; 2. And,
secondly, upon the broader principle, now well established,
although sometimes lost sight of in our loose practice at trials,
that a party has no right to cross-examine any witness except
as to facts and circumstances connected with the matters
stated in his direct examination. If he wishes to examine him
to other matters, he must do so by making the witness his
own, and calling him, as such, in the subsequent progress
of the cause. The question then is presented, whether a
party can, by his own omission to take an objection to the
admission of improper evidence brought out on a cross-exami-
nation, found a right to introduce testimony in chief to rebut
it or explain it. If, upon the cross-examination, Winans's an-
swer had been such as was unfavorable to the plaintiff, upon
the collateral matters thus asked, which were not founded in

68 PATENT CASES.

The Fhikdelphia & Trenton Railroad Co. v, Stimpson. 14 Peters.

the issue, he would have been bound by it, and not permitted
to introduce evidence to contradict it. There is great diffi-
culty in saying that the defendants ought to be in a more fa-
vored predicament, and to acquire rights founded upon the
like evidence to which they did not choose to make any ob-
jection, although otherwise it could not have been in the
cause* But waiving this consideration, the grounds on which
we think the refusal of the Court was right, are : first, that it
was not distinctly propounded to the Court, that the evidence
was oflTered to rebut or explain Winans's testimony ; and,
secondly, that in the form in which it was put, it proposed to
separate the written contract of compromise from the conver-
sations and the negotiations which led to it, and to introduce
the latter without the former, although it might turn out that
the written paper might most materially affect or control the
presumptions deducible from those conversations, and nego-
tiations. We think that, upon the settled principles of law,
parol evidence, bearing upon written contracts and papers,
ought not to be admitted without the production of such writ-
ten contracts or papers, so as to enable both the Court and
the jury to see whether or not the admission of the parol evi-
dence in any manner will trench upon the rule, that parol evi-
dence is not admissible to vary or contradict written contracts
or papers.

The next exception is to the admission of the evidence of
William A. Stimpson, Richard Caton, and George Neilson, as
to certain declarations, and statements, and conversations of
the plaintiff, as to his invention prior to the date of his ori-
ginal patent ; in order to rebut the evidence of the defendants,

as to the invention or use by other persons of the
[ * 462 ] same contrivance, before that date. The * objection

is, that upon general principles, the declarations
and conversations of a plaintiff, are not admissible evidence
in favor of his own rights. As a general rule, this is undoubt-

PATENT CASES. 69

The Philadelphia & Trenton Bailroad Co. v, Stimpson. 14 Peters.

ediy true. It is, however, but a general rule, and admits and
requires various exceptions. There are many cases in which
a party may show his declarations conflict with acts in his
own favor, as a part of the res geatis. There are other cases,
again, in which his material declarations have been admitted.
Thus, for example, in the case of an action for an assault and
battery, and wounding, it has been held, that the declarations
of the plaintiff, as to his internal pains, aches, injuries, and
symptoms, to the physician called to prescribe for him, are
admissible for the purpose of showing the nature and extent
of the injuries done to him. See I Phillips on Evidence,
ch. 12, sec. ] , p. 200 - 202, eighth ed., 1838. In many cases
of inventions, it is hardly possible in any other manner to
ascertain the precise time and exact origin of the particular
invention. The invention itself is an intellectual process or
operation ; and, like all other expressions of thought, can in
many cases scarcely be made known, except by speech. The
invention may be consummated and perfect, and may be sus-
ceptible of complete description in words, a month, or even a
year before it can be embodied in any visible form, machine,
or composition of matter. It might take a year to construct
a steamboat, after the inventor had completely mastered all
the details of his invention, and had fully explained them to all
the various artisans whom he might employ to construct the
different parts of the machinery. And yet from those very
details and explanations, another ingenious mechanic might
be able to construct the whole apparatus, apd assume to him-
self the priority of the invention. The conversations and de-
clarations of a patentee, merely affirming that at some former
period he invented that particular machine, might well be
objected to. But his conversations and declarations, stating
that he had made an invention, and describing its details and
explaining its operations, are properly to be deemed an asser-
tion of his right, at that time, as an inventor, to the extent of

70 PATENT CASES.

The Philadelphia & Trenton Railroad Co. v. Stampson. 14 Peters.

the facts and details which he then makes known ; although
not of their existence at an antecedent time. In short, such
conversations and declarations, coupled with a description
of the nature and objects of the invention, are to be deemed
a part of the res gestcB ; and legitimate evidence that the in-
vention was then known to and claimed by him, and thus its
origin may be fixed at least as early as that period. This
view of the subject covers all the parts of the testimony of the
witnesses objected to in the Circuit Court ; and we are
of opinion, that the Court were right in admitting the evi-
dence.

The next and the last exception is, to the rejection of the
evidence of Dr. Jones, who was offered to prove that there
were material differences between the patent of 1831 and
the renewed patent of 1835, and to explain these differences.

No doubt can be entertained that the testimony thus
[ * 463 ] offered was, or might be, most material to * the

merits of the defence. And the question is not as
to the competency or relevancy of the evidence, but as to the
propriety of its being admitted at the time when it was offer-
ed. It appears that the testimony was not offered by the de-
fendants, or stated by them as a matter of defence, in the
stage of the cause when it is usually introduced according to
the practice of the Court. It was offered after the defend-
ants' counsel had stated in open Court, that they had closed
their evidence, and after the plaintiff, in consequence of that
declaration, had discharged his own witnesses. The question,
then, is, whether it was at that time admissible on the part of
the defendants as a matter of right, or whether its admission
was a matter resting in the sound discretion of the Court. If
the latter, then it is manifest that the rejection of it cannot
be assigned as error.

The mode of conducting trials, the order of introducing
evidence, and the times when it is to be introduced, are, pro-

PATENT CASES. 71

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters.

perly, matters belonging to the practice of (he Circuit Courts,
with which this Court ought not to interfere ; unless it shall
choose to prescribe some fixed, general rules on the subject,
under the authority of the Act of Congress. Probably the
practice in no two States in the Union is exactly the same ;
and therefore, in each State, the Circuit Courts must necessa-
rily be vested with a large discretion, in the regulation of their
practice. If every party had a right to introduce evidence at
any time, at his own election, without reference to the stage
of the trial on which it is offered, it is obvious that the pro-
ceedings of the Court would often be greatly embarrassed,
the purposes of justice be obstructed, and the parties them-
selves be surprised by evidence destructive of their rights,
which they could not have foreseen, or in any manner have
guarded against. It seems to us, therefore, that all Courts
ought to be, as indeed they generally are, invested with ja
large discretion on this subject, to prevent the most mischiev-
ous consequences in the administration of justice to suitors ;
and we think that the Circuit Courts possess this discretion
in as ample a manner as other judicial tribunals. We do not
feel at liberty, therefore, to interfere with the exercise of this
discretion ; and, indeed, if we were called upon to say upon
the present record, whether this discretion was, in fact, mis-
applied or not, we should be prepared to say, that we see no
reason to doubt that it was, under all the circumstances,
wisely and properly exercised. It is sufficient for us, how-
ever, that it was a matter of discretion and pjactice, in respect
to which we possess no authority to revise the decision of the
Circuit Court.

Upon the whole, we are of opinion, that the judgment of
the Circuit Court ought to be affirmed with costs.

72 PATENT CASEa

Eastman v. Bodfiah. 1 Story.

Robert Eastman v. William H. Bodfish.

[1 Story, 528. May T. 1841.]

Where a patent for the circular saw clapboard machine expired by lapse of
time on the 15th of March, 1834, and Congress, by the Act of 3d of March,
1835, ch. 86, renewed it to A for the space of seyen years, from the time
when it expired, and the declaration in the writ, which was dated on the 13th
of January, 1838, recited the original patent and the subsequent Act of Con-
gress, and then stated generally a violation of the patent-right for a long
time, to wit, for the space of three years and eight months, next preceding
the date of the writ : It was held^ that if the plaintiff intended to claim under
the old patent, he should have filed a distinct and independent count ; and
that he had restricted himself to proof of a violation of the paten^right
during the space of the said three years and eight months, specified in the
declaration.

Whenever time is material, whether in matters of contract, or of tort, the plain-
tiff is strictly bound by the time specified in the declaration.

Case for infringement of a patent-right '^ for a new and
useful invention called the Circular Saw Clapboard Machine."
The cause was tried upon the general issue. The original
patent was granted to the plaintiff^ Eastman, and one Josiah
Jaquith, as the original inventors, on the 16th of March,
1820. The patent expired by lapse of time ; and Congress
by the Act of 3d of March, 1835, oh. 86, Jaquith being then
dead, granted to the plaintiff, as survivor, the full and exclu-
sive right and liberty of making, constructing, and vending
to others to be used, the same invention for the term of seven
years, from the 15th of March, 1834, when the original
patent expired.

The declaration was founded upon the Act of 1835, ch.
86, and after reciting the original patent and the Act of Con-
gress of 1835, and the new patent granted under the same,
alleged as a breach, that the defendant <' unlawfully, against
the will of the plaintiff, and without any permission or license

PATENT CASES. 73

EaJtman v. Bodfish. 1 Story.

of the plaiiitiff^ in infringement of the right and privilege

secured to the plaintiff by the letters-patent, &c., did make,

constructy and use, and vend to others to be used,

the said saw and useful * invention and continue [ * 529 ]

the use thereof for a long time previous to the date

of the writ, to wit, for the space of three years and eight

months next preceding the date thereof." The writ was

dated the 13th of January, 1838.

DebloiSy for the plaintiff, contended that he was entitled
under the allegations in the declaration, to go into evidence
to establish a violation of the patent by the defendant, under
the original patent, which had expired, as well as under that
ofthe Actof 1835.

Fox and Codman^ a contrdy insisted, that the plaintiff
could not go into evidence of any such violation of the origi-
nal patent ; but was confined to the time, since the grant of
the patent under the Act of 1835 ; and at all events, that the
breach itself tied up the inquiry to the period of three years
and eight months before the date of the writ«

Stort, J. I have no doubt whatsoever in the present case.
By the frame of the declaration, the right of action is exclu-
sively founded upon the Act of 1835; and there is nothing in
the declaration, which points to any breach under the old
patent, which expired on the 15th of March, 1834. In short,
I cannot understand that the declaration purports to found
any claim under the old patent, but the latter is merely recited
as introductory to the right and title under the Act of 1835,
and the violation thereof. If the plaintiff intended to have
made any claim under the old patent, he should have filed a
distinct and independent count.

Moreover, I am of opinion, in this case, that the plaintiff

VOL. II. — p. c. 7

74 PATENT CASES.

Eutman v. Bodfish. 1 Storf.

has by the breach^ as stated in the declaratioiii tied himself
up to a violation of the patent-right within three years and
eight months before the date of the writ ; that is, before the
13th of January y 183^ In cases under the patent laws, I

conceive, that the plaintiff is confined to giving evi-
[ * 530 ] dence of * the making, constructing, or using the

invention in violation of his patent-right during the
period which he specifies in his declaration. If it were
otherwise, the recovery in the suit would be no bar to another
action for any anterior breach, since it could not judicially
appear, that any damages had been recovered for any such
anterior breach ; and the form of the declaration itself, speci-
fying the term, would repel any presumption to the contrary.
Besides, the length of time of the use is, or at least may be,
a very material ingredient in the ascertainment and assess-
ment of the damages by the jury, and the plaintiff ought to
give notice by his declaration of the term of the user, for
which he seeks damages. It is by no means true, that the
specification of time is in all cases immaterial to be proved,
as laid in the declaration. Wherever time is material, not
only in matters of contract, but in matters of tort, the plain-
tiff is strictly bound by that time. Now, in trespass with an
allegation of a cantinuando, or diverHa diebuSf if the plain-
tiff insists upon proving repeated acts of trespass, he will not
be allowed to give evidence thereof, unless committed within
the time specified.^ In truth, the usual mode of declaring in
actions for an infringement of a patent is, to allege, that the
defendant on such a day (naming it) << and on divers other
days and times between that day and the day of the com-
mencement of the suit (or exhibiting the bill) did unlawfully.

* Chitty on Plead. 8d edit. p. 258 ; 1 Saund. Bep. by Williams, p. 24,
note 1 ; Brook v. Bishop, 2 Ld. Bajm. 828 ; Monkton v. Pashley, Id. 974,
976; Com. Dig. Pleader, C. 19 ; 2 Starkie on Evid. 210, 2d Lond. edit

PATENT CASES. , 75

Proaty et al. v. Draper et al. 1 Story.

<&c.9 make and sell and use, &c." ^ The district judge con-
curred in this opinion.

Mem. The cause afterwards proceeded before the jury,
who found a verdict for the defendant.

David Proutt and Another v. Draper, Ruggles, <& Co.

[1 Story, 568. October T. 1841.]

Where the plaintiff churned the combinatioa of three things, as his inTention,
in a patent for an improvement in the constmction of ploughs -, it was hdd^
that the patent was for the entire combination of the three, and not for a
combination of any two of them; and, therefore, it was no infringement of
the patent to constract plonghs containing two of them.

This was an action on the case for an infringement, by the
defendants, of a patent of the plaintiffs, for 'f a new and use-
ful improvement in the construction of the plough." The
defendants pleaded the general issue, and also filed a specifi-
cation of special matters of defence under the Patent Act of
4th of July, 1836, ch. 357.

At the trial, various questions, both of law and fact, were
made by the defendants, under their different specifications
of matters of defence ; but the cause finally went off upon a
question of law, arising upon the construction of the specifi-
cation of the patent. The patent was dated the 4th of
March, 1836. The specification was as follows :

Be it known, that we, the said Prouty and Mears, have
jointly invented, made, and applied to use a new and useful
improvement in the construction of the plough, which inven-

i 2 Chitty, PI. 8d ed. p. 356, 857 ; Phillips cm Patents, p. 522, ed. 1887.

76 . PATENT CASES.

Fiooty et aL v. Dmpcr et aL 1 Stoty.

tton and improvement we describe and specify as follows,
namely :

Heretofore, the standard and landside of the plough has
been placed perpendicular to, and at right angles with, the
plane of the share. On this standard the beam has been
placed in such a manner, as to form an acute angle with the
landside, of such extent as to place that part of the beam, to
which the moving power is applied, at the distance of three
or more inches from an extended line of the land-
[ * 569 ] side to the right, * while the after part of the beam
extends one or more inches to the left of the per-
pendicular of the landside near the handle. The object has
been to cause the plough " to run to land," or hold its width
of furrow ; the effect produced has been an uneasy, struggling
motion, as it meets resistance at the point, wing, or heel.

We make our ploughs with the standard and landside
forming an acute angle with the plane of the share, the stand-
ard inclining to the right or funow side, in such manner as to
enable us to place the centre of the beam on a line parallel
with the landside, the forepart thereof at such distance from
the extended line aforesaid, as to cause the plough to hold its
width of furrow, and the after part falling within the perpen-
dicular of the landside of the plough, the centre of it being
nearly perpendicular to the centre of resistance on the mould-
board ; which we conceive to be at about one fourth part of
the lateral distance from the landside to the wing of the
share, and at about one third part of the perpendicular height
from the plane of the share to the upper edge of the mould-
board. This location of the centre of resistance, we base on
the &ct, that many ploughs, which have been used in sharp,
sandy soils, have been worn quite through at that point. The
result of this formation of the plough, is a steady, well-ba-
lanced motion, requiring less power of draft, and less effort
in directing the plough in its course.

PATENT CASES. 77

FtOttty et aL v. Dn^per et al. 1 Stoiy.

The inclination of the standard and landside, causes the
plough to cut under and take up the furrow in the form of an
oblique-angled parallelogram^ or like a board feather-edged,
which, being turned over, falls in level with the last furrow
more readily than the right angled or square-edged work.

The coulter or knife, having a similar inclination, cuts the
roots of the grass, &c.j and leaves all vegetable matter on the
surface, at a greater distance from the under edge
of the * furrow, which, being turned over, more [* 570]
readily falls in, and is far better covered than with
square-edged work. The top of the standard, through which
the bolt passes to secure the beam, is transversely parallel to
the plane of the share, and extends back from the bolt to
such a distance, as to form a brace to the beam, where the
after part is pressed down by lifting at the forepart, the share
being fast under a rock, or other obstruction. The after part
of this extension is squared in such manner, that, being jog-
ged into the beam, it relieves the bolt in heavy draft.

The bolts, which we use to fasten the pieces of cast iron
(of which our ploughs are made) together and to the wood-
work, are round, with inverted convex heads, or like the
woodscrew, with a projection on the under side of the head
of semicircular form, which fits into a groove in the coun-
ter-sink part of the bolthole, as it is cast to receive it, which
not only prevents its turning, but also diminishes the liability
of breakage at the corners of square holes ; all which will
more fully appear by reference to the drawing annexed to and
forming part of this specification.

We hereby declare, that what we claim as new, and of our
invention, is the construction of such ploughs as aforesaid,
and the several parts thereof, not separately, but in combina-
tion for the purposes aforesaid, namely : 1st. The inclining the
standard aiid landside so as to form an acute angle with the
plane of the share. 3d. The placing the beam on a line

78 PATENT CASES.

Piouty et al. v. Dnper et al. 1 Story.

parallel to the landside within the body of the plough, and its
centre nearly in the perpendicular of the centre of resistance.
3d. The forming the top of the standard for brace and draft

We do not intend to confine our claim to any particular
form or construction, excepting such form as may be neces-
sary to place the beam in the perpendicular of the centre of
resistance, and parallel to the landside ; and also, to
[ * 571 ] such * form of the top of the standard^ as shall serve
for brace and draft, but have given such form, as
we deem to be most convenient, which may be varied, as is
obvious.

It was admitted at the trial, that the defendants' ploughs
were exactly in all respects like those of the plaintiffs, except
that the defendants did not in their ploughs extend ba^ the
top of the standard, or jog, in the manner stated in the speci-
fication, and described in the third part of the summing up
of the invention.

It was contended by the counsel for the defendants, Dex-
ter, Rugglesy and AUen, that as the defendants' plough did
not embrace the whole combination, which the plaintiffs'
plough did, and as the patent was for a combination only,
there was no infringement of the plaintiffs' patent. On the
other hand, it was contended by the plaintiffii' counsel, Charles
G. Laring, and Grey, and Gleason, that the use of two parts
of the combination, without embracing the third, was an
infringement of the patent.

Stort, J. I am entirely satisfied, that the true construc-
tion of the present patent is that it is a patent for a combina-
tion and for a combination only. The combination, as stated
in the summing up, consists of three things ; and it is as fol-
lows : " 1st. The inclining the standard and landside so as to
form an acute angle with the plane of the share. 2d. The

PATENT CASES. 79

Proiity et al. v. Draper ct aL 1 Story.

placing the beam on a line parallel to the landside within the
body of the plough, and its centre nearly in the perpendicular
of the centre of resistance. 3d. The forming the top of the
standard for brace and draft." Unless, then, it is proved,
that the whole combination is substantially used in the
ploughs of the defendants, it is not an infringement of the
plaintiffs' patent, although one or more of the parts, as above
specified, in the summing up in the patent, may be
* used in combination by the defendants. The [ * 573 ]
plaintiffs' patent is for an entire combination of all
the three things, and not for a combination of any two of
them. A patent for a combination of A, B, and C, cannot
be technically or legally deemed at once a combination of A,
B, and C, and of A and B alone. I think, also, that the
plaintiff, by the summing up in his patent, has treated the
jogging of the standard behind, as well as the extension
thereof to be essential parts of his combination, for the
purpose of brace and draft ; and not deemed either of them
separately, and alone, and independent of the other. I
deduce this from the language used in the third part of the
summing up, which has a necessary reference to, and is ex-
plicable only by the antecedent descriptive part of the specifi-
cation, as to the forming of the standard " for brace and
draft." The language there used is as follows: — " The top
of the standard, through which the bolt passes to secure the
beam, is transversely parallel to the plane of the share, and
extends back from the bolt to such a distance as to form a
brace to the beam, where the after part is pressed down by
lifting at the forepart, the share being fast under a rock or
other obstruction. The after part of this extension is squared
in such a manner, that, being jogged into the beam, it relieves
the bolt in heavy draft." If the reference had been direct
and positive to the descriptive part of the specification in the
summing up, as by adding after the words << for brace and

80 PATENT CASES.

Proaty et al. v. Draper et al. 1 Storj.

draft/' the words '^ in the manner above mentioned/' or '< by
the extension and jogging as aforementioned/' there could be
no doubt, in my judgment, that both were treated by the plain-
tiff in his patent as essential parts of his combination for the
very purposes stated, namely, ^^ for brace and draft." Now,
it seems to me, that this is the necessary interpretation of the
summing up, precisely as if the words had been actually used ;

and that it would not be intelligible without them.
[ * 573 ] * I regret that this is the conclusion to which my

mind has arrived ; but I cannot avoid it. I shall
still more regret, that the cause should be decided upon this
mere technical point, when, if the other points of defence,
taken by the defendants' counsel, are made out by the proofs,
there is an end of the cause, independently of this technical
construction. For example, if it is established in proof, as
the defendants' counsel insist, that they can establish, that
the inclining of the standard and landside, so as to form an
acute angle with the plane of the share has been long known
before, (for the defendants certainly have a right to use what
was common before, and as far as it was common,) it will
then amount only to this, that, as the defendants have not
used the whole combination, but a part or parts only thereof,
there has been no infringement of the plaintiffs' patent. So,
if there is, in fact, no such centre of resistance, as stated in
the specification, or if the formulary for placing the beam will
not place it parallel to that centre of resistance within the
plough, the same difficulty in maintaining the patent may
arise. However, it is for the parties to say, whether they
will proceed in the cause on these and the other points in
controversy.

Mem. The defendants declined to proceed ; and a verdict
was taken for the defendants, with the understanding, that a
bill of exceptions would be taken to the decbion of the Court

PATENT CASES. 81

Reed v. Catter et ol. 1 Storj.

for the purpose of a final decision in the Sapreme Court.
The cause was accordingly carried to the Supreme Court
upon a bill of exceptions, and at January term, 1842, the
judgment of the Circuit Court was affirmed.

Jesse Reed v, Elisha P. Cutteb and Othebs.

[1 Stozy, 590. October T. 1841.]

Under the Patent Laws of 'the United States, the applicant for a patent
must be the first, as well as the original inventor ; and a snbseqaent in-
ventor, although an original inventor, is not entitled to a patent, .if the inven-
tion is perfected and put into actual use by the first and original inventor ;
and if it is of no consequence, whether the invention is extensively known or
used, or whether the knowledge or ose thereof is limited to a few persons, or
even to the first inventor himself, or is kept a secret by Uie first inventor.

The decision in Dolland^s case, that a first and original inventor, who had
kept his invention a secret so that the public had no benefit thereof, could
not defeat the patent of a subsequent original inventor, may be « correct ex-
position of the Statute of Monopolies, (Stat, of 21 James I. ch. 3, § 6) ; but
it is not applicable to the Patent Law of the United States.

The language of the Patent Act of 1836, ch. 357, 4 6, *'not known or used by
others before his or their disodVery thereof,^ does not require that the inven-
tion should be known or used by more than one person, but merely indi-
cates that the use should be by some other person or persons than the
patentee.

Under the Patent Act of 1836, (ch. 357, ^ 15,) an inventor, who has first
actually perfected his invention, will not be deemed to have snrreptionsly or
unjustly obtained a patent for that which was in fact first invented by
another, unless the latter was, at the time, using reasonable diligence in
adapting and perfecting the same. But he who invents first is entitied to
the prior right, if he is using reasonable diligence in adapting and perfecting
the same, although the second inventor has in fact first perfected the same,
and first reduced the same to practice in a positive form.

An imperfect and incomplete invention, resting in mere theory, or in intellec-
tual notion, or in uncertain experiments, and not actually reduced to prac-
tice, and embodied in some distinct machinery, apparatus, manufacture, or
composition of matter, is not patentable under the laws of the United States.
He is the first inventor in the sense of the Patent Act of the United States,

82 PATENT CASES.

Reed v. Cutter et al. 1 Story.

and entitled to a patent for his invention, who has first perfected and adapted
the same to nse ; and, nntil the invention is so perfected and adapted to nse,
it is not patentable.
It seems that in a race of diligence between two independent inventors, he
who first redaoes his invention to a fixed and positive fonn, is entided to a

priority of a right to a patent therefor.
[• 591 ] • A disclaimer, to be eflbctnal for all intents and purposes, under the

Act of 18S7, ch. 45, (H 7 and 9,) must be filed in the PatentrOffiee
before the suit is brought Unless it is so filed before the suit, the plaintiff
will not be entitled to recover costs in such suit, even if he should establish
at the trial, that a part of the invention, not disclaimed, has been infringed
by the defendant. Where a disclaimer has been filed, either before or after
the suit is brought, the plaintiff will not be entitied to the benefit thereof, if
he has unreasonably neglected or delayed to enter the same at the Patent-
Office ; for an unreasonable neglect or delay will constitute a good defence
and objection to the suit.

Case for infringement of two patent-rights; one for '^A
new and useful improvement in the pump;" the second for
"A new and useful improvement in the cast-iron pump/'
The declaration contained two counts, one applicable to each
patent

The first patent was to Jesse Reed, the plaintiff, and was
dated August 5th, 1831. The improvement claimed by this^
and which it was alleged the defendants had infringed, was
described in the specification as follows:^' Under the flange
is a plate about twelve inches in diameter, of suitable thick-
ness for the strength required ; near the circumference of the
plate are a sufiSicient number of holes for wood screws or bolts,
that said plate may be attached to any board or plank in
whatever place said pump may be used." .... ^^The
lower valve is attached to the lower plate by copper screws
or rivets, so that the pump may be taken off to come at the
lower valve without disturbing the lower plate or pipe." The
words of the claim of that part alleged to have been infringed
by the defendants, were as follows : ^^ The bottom plate in a
horizontal manner with a valve attached to it, and playing
upon said elevation, and the manner of connecting it with the
plate, as set forth in th& specification."

PATENT CASES. 83

Heed v. Cntter et al. 1 Storj.

The second patent was to Jesse Reed and Josiah Reed,
and was dated 19th NoTember, 1833. Subsequently, Josiah
assigned his interest to Jesse. Among other im-
provements * claimed by this last patent is that, [ * 592 ]
which is now in so general use in metal pumps, of
letting off the water from the cylinder of the pump, by throw-
ing up the handle. The lo^er valve is armed with a projec-
tion, which, when the handle is thrown up to its greatest
extent, opens the valve of the piston, at the same time that
the lower valve itself is opened by means of the pressure of
this projection against the internal sides of the piston. In
this way water in the cylinder may be let off readily, and the
important object attained of guarding effectually against the
effect of frost in the cold season of the year. It was alleged,
that the defendants had infringed this part of the plaintiff's
patent. Plea, the general issue, with special matters of
defence filed.

At the trial, evidence was offered tending to show, that the
improvement of letting off the water, claimed, in the second
patent, had been invented and reduced to practice by Anthony
D. Richmond, of New Bedford, some time in 1828, and that
be had made several pumps containing this improvement,
before the date of the plaintiff's patent. It was suggested
by the counsel for the plaintiff, that there was evidence tend-
ing to rebut this evidence ; and a question was raised, as to
the degree of use and publicity of a prior invention, which
would operate, in point of law, to defeat a bond fide original
invention, which had been pateYited.

Charles Sumner, for the plaintiff. (1.) The object of the
exclusive privilege of a patent is to secure to the public the
communication of a species or mode of industry, which it did
not before possess. Therefore, the patent of a bond fide
original inventor will be valid, unless an invention be shown,

84 PATENT CASES.

Beed r. Cutter et al. 1 Btorj. «

which, anterior to the invention of the patentee, was reduced
to practice in such a way and to such an extent, as to give
the public knowledge of its existence.

The statute of the United States of 1836, cap.
[ * 593 ] 357, ^ 6, * provides, that ^^ any person or persons
having invented any new and useful art, machine,
d^c, not known or used by others, before his or their disco-
very or invention thereof," and who makes oath, that he
verily believes, that ^' he is the original and first inventor or
discoverer," (&c., shall be entitled to a patent. In another
section of the same statute, ^ 15, it is provided, that the
defendant may give in evidence, <^ that the patentee was not
the original and first inventor or discoverer of the thing pa-
tented," &c. If we were to con3ider the first clause by itself,
without reference to that in the 16th section, it would seem
clear, that an invention must have been known and used by
others, before the discovery of the patentee, in order to defeat
the patent The term " others " would seem to imply general
and plural knowledge, in contradistinction to knowledge by
an individual. Unless this efiect is given to this word, it loses
much of its significance. The word, however, is borrowed
from the English Statute of Monopolies, out of which the
English Patent Law is carved, which secures a patent to the
first and true inventor of an art, ^' which others at the time of
making such letters-patent and grants shall not use." These
words have received repeated constructions in England. It
has there been decided, that a prior invention, in order to
defeat the patent of a subseqlient true and original inventor,
must have been ^^ generally known ; " that it must have been
in '^ public use and operation ; '^ '^ used openly in public," and
not abandoned as useless by the first inventor. See Lewis t;.
Marling, 10 Barn. & Cress. 22; S. C. Godson's Supplement,
6, 7, 8 ; Jones v. Pearce, Id. 10, 12. Mr Godson's own lan-
guage (p. 4, of the Supplement) admits the above cases to
be law.

PATENT CASES. 85

Reed v. Cotter et aL 1 Story.

The statute of the United States of 1793, cap. 65, ^ 1,
says, " not known or used before the application," &e. These
words have received a construction from the Su-
preme Court * of the United States. Story, J., in [ * 594 ]
delivering the opinion of the Court, in Pennock v.
Dialogue, (2 Peters, S. C. R. 19,) said: "We think, then,
the true meaning must be, not known or used by the public
before the application. McLean, J., in delivering the opinion
of the Court, in Shaw v. Cooper, (7 Peters, 319,) said : ''The
knowledge or use spdien of in the Act of 1793 could have
referred to the public only." The words used by the Court
are broad, explicitly declaring, that the knowledge and use
must be by the public It appears, that in the cases actually
before them, the knowledge and use had been derived from
and under the patentee, having crept abroad before he had
secured his invention by letters-patent. But, it is submitted,
that in view of the language employed by the Court, and
afterwards in the statute, the difference between those cases
and the present does not authorize a different construction.
How can the Court restrain the word " others" to mean only
those, who have derived their knowledge from the patentee?
Particularly when this word is employed in the English sta-
tute, and has there received the construction now contended
for?

The clause in the 16th section can hardly throw doubt upon
this construction. The clause in the Ist section is the grant-
ing part of the statute, which is to be construed amply for
the citizen, particularly in an act of the present nature. The
whole act must be construed, so as to give each clause its
fullest efiect ; and no word or phrase is to be curtailed of its
proportions, unless it is essential to a reasonable construction
of the whole statute. If, in the present case, it is necessary
to abate from any clause of the statute any of the just effect,
which such clause would have, if taken by itself, we must

VOL. 11. — p. c. 8

86 PATENT CASES.

Reed V. Catter et aL 1 Stoiy.

restrain the clause in the 16th section ; or in other words, it
must be construed by reference to the granting clause in the

Ist section. He must be considered the first and
[ * 595 ] original inventor, ^ who has invented an art or

machine, not known or used by others before his
discovery thereof.

In confirmation of this view is DoUand's case, (2 H. Black.
R. 487; Phillip's Patents, 165,) where the first inventor
reduced his invention to use, but kept it secret, and showed
an intention not to give the public the benefit of it. It was
the case of an improvement in the object-glass of telescopes,
invented by Mr. Hall, but suppressed by him until Mr. Dol-
land had subsequently made the same invention, and procured
a patent for it, the validity of which was disputed on the
ground that he was not the first inventor. ' But the patent
was held to be valid. Mr. Phillips (Patents, 165) says this
case must stand on the ground that the first inventor did not
give the public that advantage which it was the intention of
the Patent Laws to secure ; he should not stand in the way of
a subsequent inventor, who should be ready to give the public
such advantage at the end of the period provided for by the
Patent Laws. This doctrine was recognized in a subsequent
case. Forsyth v. Reviere, (Chitty, Jr. Prerog. of the Crown,
182, n.)

The object of the Patent Law is to promote the progress
of useful arts: 1st, by stimulating ingenious minds to make
inventions : 2d, to secure to the public the benefit of the
inventions, by having the secret fully divulged on the expira-
tion of the patent. It is said, indeed, that the future divulg-
ing of the secret is the consideration of the grant of exclusive
privileges. Let us bear this in mind in construing these
words ^' known and used." If the thing be known and used,
the public good does not require the interference of the
Patent Law, either to stimulate inventors or to secure the

PATENT CASES. 87

Keed v. Cotter et al. 1 Storj.

divalging of the secret, for the invention is already made, and

the secret is divulged. If the thing, however, be not so known

and used that the public will eventually have it, as if it be

kept an entire secret, like Dolland's glass, or if it

be thrown by as * useless, or if it be used in private [ * 596 ]

and in a comer, then it will justify the protection of

the Patent Law : — Diffnua vindice nodus. It is effectually

reached by its spirit, and is not discharded by its letter. The

originaHnventor, who afterwards band fide hits upon it, and

matures it into something useful, deseryes well.

The Patent Laws of Austria, (^ 27, (a,) (d,) Phillips on
Patents, 516, 517,) provide that every discovery, invention,
improvement, or change, shall be held as new, if it is not
known in the monarchy, either in practice or by a description
of it contained in a work publicly printed."

(2.) The counsel for the plaintifi submitted another pointy
in the words of Mr. Phillips, in his work on Patents, (p. 395,)
being a construction which this acute and learned author has
put upon two clauses of the 15th section of the Patent Law
of 1836. It was as follows : '^ If the patentee is the original
inventor of the thing patented, his patent shall not be defeated
by proof that another person had anticipated him in making
the invention, unless it also be shown that such person was
adapting and perfecting bis invention."

Befgamin Randy for the defendants, e contrd.

Stort, J., overruled both points, and said : Under our Pa-
tent Laws, no person, who is not at once the first, as well as
the original inventor, by whom the invention has been per-
fected and put into actual use, is entitled to a patent. A
subsequent inventor, although an original inventor, is not
entitled to any patent. If the invention is perfected and put
into actual use by the first and original inventor, it is of no

88 PATENT CASES,

Beed v. C«tter et •!. 1 Story.

coDsequence^ wbether the inveation is exteneively knowo or
uaed, or whether the knowledge or uae thereof is limited to a
few persons, or eien to the first inventor himself. It is suffi-
cient that he is the first inyentor, to entitle him to
[ * 597 ] a patent ; and no subsequent * inventor has a right
to deprive him of the right to use his own prior in*
vention. The language of the Patent Act of 1836, cb. 357,
^^ 6, 15, and of the Patent Act of 1837, ch. 45, ^ 9, fully
establifthes this construction ; and, indeed, this has been the
habitual, if not invariable interpretation of all our Patent Acts
from the origin of the government.^ The language of the
Act of 1836, ch. 357, ^ 6, '^ not known or used by others
before his or their discovery thereof,'' has never been sup-
posed to vary this construction, or to require that the inven-
tion should be known to more than one person, if it has been
put into actual, practical use. The Patent Act of 1790, used
the language, <^ not before known or used," without any ad-
junct, (Act of 1790, ch. 34, ^ 1) ; and the Act of 1793, used
the language ^'not known or used before the application,'^
(Act of 1793, ch. 55, ^ 1) ; and the latter act (^ 6,) also made
it a good matter of defence that the thing patented " had
been in use " anterior to the supposed discovery of the pa-
tentee. It early became a question in our courts, wbether a
use by the patentee himself before his application for a patent
would not deprive him of his right to a patent. That ques-
tion was settled in the negative ; and the language of the first
section of the Act of 1793, ch. 55, was construed to be quali-
fied and limited in its meaning by that of the sixth section ;

1 See Phillips on Patento, ch. 6, § 4, p. €5, 66, edit 1837. Woodcock
v. Parker, 1 GalliB. B. 488, ante^ YoL I. 87 ; Gnj v, James, Peters, Cir.
R. 894, ante. Vol. L 120; Rut^n v. Eanowrs, 1 Wash. Cir. B. 168, ante,
YoL J. 1 ; Eyans v. Eaton, 3 Wheat K. 454, ante, Vol. I. 248 ; Pennock
V. Dialogue, 2 Peters, R. 1, 16, 20, 21, 22, ante. Vol. I. 542.

PATENT CASES. 89

Beed v. Cotter et al. 1 Story,

and the words <^ not known or used before the application/'
in the first sectioni were held to mean, not known or used
by the public before the application.^ The case of Pennock
V. Dialogue, (2 Peters, R. 1, 18 to 22,) is a direct
authority to this * effect. And it was probably in [ ^ 598 ]
reference to that very decision, that the words *' by
others " were added in the Act of 1836, ch. 357, ^ 6, by way
of explanation of the doubt formerly entertained on the sub-
ject. The words " by others " were not designed to denote
a plurality of persons, by whom the use should be, but to
show that the use should be by some other person or persons
than the patentee. It would be strange, indeed, if, because
the first inventor would not permit other persons to know his
invention, or to use it, he should thereby be deprived of bis
right to obtain a patent, and it should devolve upon a subse-
quent inventor merely from his ignorance of any prior inven-
tion or prior use ; or that a subsequent inventor should be
entitled to a patent, notwithstanding a prior knowledge or
use of the invention by one person, and yet should be
deprived of it by a like knowledge or use of it by two per-
sons. In Pennock v. Dialogue, (2 Peters, R. 1, 23,) the
Supreme Court expressly held, that the sixth section of the
Patent Act of 1793, ch. 55, then m force, (and on this point
the law has not undergone any alteration,) " gives the right
to the first and true inventor, and to him only; if known or
used before bis supposed discovery, he is not the first, although
he may be the true inventor ; and that is the case to which
the clause looks."

I am aware of DoUand's case ; but I do* not consider it to
be a just exposition of the Patent Law of this country, how-

1 See Morris 9. Huntington, Faine, Cir. R 348, ante, YoL L 418 ; Pen-
nock V. Dialogae, 2 Peters, B. 1, 18, 19, 21, 22, ante, Yol. I. 542 ; Melius
V. Silflbee, 4 Mason, B. 108, ante. Vol. L 506.

90 PATENT CASES.

Reed V. Cutter ei •!. 1 Story.

ever correctly it may have been decided under that of Eng-
land. In that case, it seems to have been held, that Dolland
was entitled to his patent, because be was an inventor of the
thing patented, although there was a prior invention thereof
by another person, who, however, bad kept it a secret, so that
the public had no benefit thereof. And, perhaps, this was
not an unjustifiable exposition of the Statute of Monopolies,
(Stat, of 21 James I. ch. 3, ^ 6,) under which pa-
[ * 599 ] tents are * granted in England. But the language
of our Patent Acts is different. The Patent Act of
1836, (eh. 257, <^^ 7, 8, I3| 15, 66,) expressly declares that
the applicant for a patent must be the first as well as an
original inventor.

The passage cited from Mr. Phillips's work on Patents,
(p. 395,) in the sense in which I understand it, is perfectly
accurate. He there expressly states, that the party claiming
a patent must be the original and first inventor ; and that his
right to a patent will not be defeated by proof, that another
person bad anticipated him in making the invention, unless
such person '^ was using reasonable diligence in adapting and
perfecting the same." These latter words are copied from the
fifteenth section of the Act of 1836, (chapter 357,) and con-
stitute a qualification of the preceding language of that sec-
tion ; so that an inventor, who has first actually perfected his
invention, will not be deemed to have surreptitiously or
unjustly obtained a patent for that, which was in fact* first
invented by another, unless the latter was at the time using
reasonable diligence in adapting and perfecting the same.
And this I take to be clearly law ; for he is the first inventor
in the sense of the Act, and entitled to a patent for his inven-
tion, who has first perfected and adapted the same to use;
and until the invention is so perfected and adapted to use, it
is not patentable. An imperfect and incomplete invention,
resting in mere theory or in intellectual notion, or in uncer-

PATENT CASES. 91

Beed v. Cutter et al. 1 Storj.

tain experiments, and not actually reduced to practice^ and
embodied in some distinct machinery, apparatus, manufacture,
or composition of matter, is not, and indeed cannot be pa-
tentable under our Patent Acts ; since it is utterly impossible,
under such circumstances, to comply with the fundamental
requisites of those acts. In a race of diligence between two
independent inventors, he who first reduces his invention to
a fixed, positive, and practical form, would seem to
be entitled * to a priority of right to a patent there- [ * 600 ]
for.^ The clause of the fifteenth section, now under
consideration, seems to qualify that right, by providing that
in such cases, he who invents first shall have the prior right,
if he is using reasonable diligence in adapting and perfecting
the same, although the second inventor has, in fact, first per-
fected the same, and reduced the same to practice in a posi-
tive form. Jt thus gives full effect to the well known maxim,
that he has the better right who is prior in point of time,
namely, in making the discovery or invention. But if, as the
argument of the learned counsel insists, the text of Mr. Phil-
lips means to aflirm, (what I think it does not,) that he, who
is the original and first inventor of an invention, so perfected
and reduced to practice, will be deprived of his right to a
patent, in favor of a second and subsequent inventor, simply
because the first invention was not then known of used, other
persons, than the inventor, or not known or used to such an
extent as to give the public full knowledge of its existence, I
cannot agree to the doctrine ; for, in my judgment, our Patent
Acts justify no such construction.

In respect to another point stated at the argument, I am of
opinion that a disclaimer, to be efiectual for all intents and
purposes, under the Act of 1837, ch. 45, ^ 7 and 9, must be

1 Woodcock V, Parker, 1 Galiis. B. 438 ; ante, Vol. L 37.

92 PATENT CASES.

Prontj et al. v. Baggies et al. 16 Peters.

filed in the Patent-Office before the suit is brought. If filed

during the pendency of the suit, the plaintiff will not be en*

titled to the benefit thereof in that suit. But if filed before

the suit is brought, the plaintiff will be entitled to recover

costs in such suit, if he should establish, at. the trial, that a

part of the invention, not disclaimed, has been infringed by

the defendant. Where a disclaimer has been filed, either

before or after the suit is brought, the plaintiff will

[ *^ 60 1 ] not be * entitled to the benefit thereof, if he has

unreasonably neglected or delayed to enter the same

at the Patent-Office. But such an unreasonable neglect or

delay will constitute a good defence and objection to the suit

Mem. The cause was then continued on the motion of
the plaintiffs.

David Proutt and John Mears, plaintiffs in error, v
Draper Ruggles et al., defendants in error.

[16 Peters, 836. January T. 1842.]

The plaintiffs, in the Circuit Coort, claimed damages for the infringement of
their patent for " a new and nsefnl improvement in the construction of a
plough.** The claim of the patentee was for the combination of certain parts
of the plough, not for the parts separately. The Circuit Court charged the
jury, that unless it is proved that the whole combination is substantially used
in the defendant's plough, it is not a violation of the plaintiff's patent ;
although one more of the parts specified in the letters-patent may be used in
combination by the defendant. The plaintiffs, by their specification and
summing up, treated the parts described as essential parts of their combina-
tion, for the purpose of brace and draft ; and the use of either alone by the
defendant would not be an infringement of the combination patented. J9e2tf ,
that the instructions of the Circuit Court were correct

The patent is for a combination, and the improvement consists in arranging
different portions of the plough, and combining them together in the manner
stated in the specification, for the purpose of producing a certain effect.

PATENT CASES. 98

Froaty et al. v. Boggles et al. 16 Peten.

None of the ports referred to are new, and none are claimed as new; nor b
any portion of the combination less than the whole claimed as new, or stated
to produce any given result The end in view is proposed to be accomplished
by the union of all, arranged and combined together in the manner described ;
and this combination, composed of all the parts mentioned in the specifica-
tion, and arranged with reference to each other, and to other parts of the
plough in the mafiner therein described, is stated to be the improYcment, and
is the thing patented. The use of any two of these parts only, or of two com-
bined with a third, which is substantially different in the form, or in the man-
ner of its arrangement and connection with the others, is, therefore, not the
thing patented. It is not the same combination, if it substantially differs
from it in any of its parts.

In error to the Ctrcait Court of the United States, for the
district of Massachusetts.

The plaintiffs in error instituted a suit in the Circuit Court
of Massachusetts, for the recovery of damages for the viola-
tion of a patent granted to them by the United States, for
a new and useful improvement in the construction of a
plough.

The cause was tried before a jury, at October Sessions of
the Circuit Court, in 1841, and a verdict and judgment were
rendered for the defendant. The plaintiffs took exceptions
to the charge of the Court, and prosecuted this writ of error.

The case was submitted to the Court on printed
arguments by * Mr. Choate, for the plaintiffs in [ * 337 ]
error ; and by Mr. Dexter, for the defendants. The
case was fully stated in the opinion of the Court

Mr. Chief Justice Tanet delivered the opinion of the
Court.

This cdse is brought here by a writ of error to the Circuit
Court of the United States, for the district of Massachusetts.

The action was instituted for the purpose of recovering
damages for an infringement of a patent, which the plaintiffs

94 PATENT CASES.

Frontj et aL v. Raggles et al. 16 Peten.

bad obtained for an improvement in the construction of the
plough.

The invention is described in the specification, as follows :

<' Be it known, that we, the said Prouty and Mears, have
jointly invented, made, and applied to use, a new and useful
improvement in the construction of the plough, which inven-
tion and improvement we describe and specify as follows,
namely :

Heretofore, the standard and landside of the plough has
been placed perpendicular to, and at right angles with the
plane of the share ; on this standard the beam has been plac-
ed in such manner as to form an acute angle with the land-
side, of such extent as to place that part of the beam to which
the moving power is applied at a distance of three or more
inches from an extended line of the landside, to the right ;
while the after-part of the beam extends one or more inches
to the left of the perpendicular of the landside, near the han-
dle ; the object has been to cause the plough ' to run to land,'
or hold its width of furrow. The effect produced has been
an uneasy, struggling motion, as it meets resistance at the
point, wing, or heel.

We make our plough with the standard and landside form-
ing an acute angle with the plane of the share, the standard in-
clining to the right or furrow side, in such manner as to enable
us to place the centre of the beam on a line parallel with the
landside, the forepart thereof at such a distance from the ex-
tended line aforesaid, as to cause the plough to hold its width
of furrow, and the after-part falling within the perpendicular
of the landside of the plough, the centre of it being nearly
perpendicular to the centre of resistance, on the mould-board,
which we conceive to be at about one fourth part of the la-
teral distance from the landside to the wing of the
[ * 338 ] share, and at about one third part of the ^ perpen-
dicular height from the plane of the share to the
upper edge of the mould-board.

PATENT CASES. 95

Froaty et al. v. Baggies et al.. 16 Peters.

This location of the centre of resistance, we base on the
fact, that many ploughs which have been used in sharp, sandy
soils have been worn quite through at that point. The result
of this formation of the plough, is a steady, well-balanced
motion, requiring less power of draft, and less effort in direct-
ing the plough in its course.

The inclination of the standard and landside causes .the
plough to cut under, and take up the furrow in the form of
an oblique-angled paralellogram,or like a board, feather-edged,
which, being turned over, falls on a level with the last furrow
more readily than right-angled or square-edged work.

The coulter or knife, having a similar inclination, cuts the
roots of the grass, &c., and leaves all vegetable matter on the
surface, at a greater distance from the under edge of the fur-
row, which, being turned over, more readily falls in, and is far
better covered than with the square-edged work.

The top of the standard, through which the bolt passes to
secure the beam, is transversely parallel to the plane of the
share, and extends back from the bolt to such a distance as to
form a brace to the beam, when the after-part is passed down
by lifting at the forepart ; the share being fast under a rock,
or other obstruction, the after-part of this extension is squared
in such manner, that being jogged into the beam, it relieves
the bolt in heavy draft. ^

The bolts which we use to fasten the pieces of cast iron, of
which our ploughs are made, together, and the wood-work,
are round, with inverted convex heads, like the wood-screw,
with a projection on the under side of the head, of semicircu-
lar form which fits into a groove in the counter-sink part of
the bolt hole, as it is cast to receive it, which not only pre-
vents its turning, but also diminishes the liability of break-
age at the corners of square holes ; all which will more fully
appear by reference to the drawing annexed to, and forming
part of this specification.

96 PATENT CASES.

Pnmtj «t al. v. Boggles «t aL 16 Peters.

We hereby declare, that what we claim as new, and of our
invention, is the construction of such ploughs as aforesaid,
and the several parts thereof, not separately, but in combina-
tion, for the purposes aforesaid, namely :
[•339] * 1. The inclining the standard and landside so
as to form an acute angle with the plane of the
share*

2. The placing the beam on a line parallel to the landside,
within the body of the plough and its centre, nearly in the
perpendicular of the centre of resistance.

3. The forming the top of the standard for brace and draft.
We do not intend to confine our claim to any particular form
or construction, excepting such form as may be necessary to
place the beam in the perpendicular of the centre of resistance,
and parallel to the landside, and also to such form of the top of
the standard, as shall serve for brace and draft, but have given
such form as we deem to be most convenient, which may be
varied, as is obvious."

The plaintiffs offered to prove the utility of the alleged im-
provement, which proof was dispensed with by the defend-
ants. Certain ploughs alleged by the plaintifls to be made in
conformity with their letters-patent, and certain ploughs made
by the defendants, which were the alleged infringement of
the plaintiff's patent, were produced in Court ; and no sub-
stantial difference between them was shown by the defend-
ants to exist, unless the fact, that the top of the standard in
the defendant's plough was not jogged into the beam, and
did not extend so far back upon the beam, was to be so con-
sidered.

And the plaintiffs offered evidence to show that the top of
the standard formed, as stated in the specification, would
serve for both purposes of brace and draft, although not jog-
ged into the beam.

The defendants introduced no evidence. The counsel for

PATENT CASES. 97

Frontf et al- v. Boggles et aL 16 Peten. -

the plaintiffs requested the Court to instruct the jury as fol-
lows, to wit :

The counsel of plaintifis respectfully move the Court to in-
struct the jury, that if the defendants have used, in combina-
tion with the other two parts, a standard of the description
set forth in the specification, and it is proved to serve both for
brace and draft, such use was an infringement of the plain-
tiffs' claim in that particular, although the defendants may
not have inserted it into a jog in the beam.

Also, that if any two of the three parts described, as com-
posing the construction claimed in the specification,
had been used in * combination by the defendants, [ * 340 ]
it was an infringement of the patent, although the
third had not been used with them.

The Court refused to give the instructions so prayed, or
either of them, in manner and form as prayed by the plain-
tiffs ; but did instruct the jury as follows, to wit :

That upon the true construction of the patent, it is for a
combination, and for a combination only. That the combi-
nation, as stated in the summing up, consists of three things,
namely :

1. The inclining the standard and landside so as to form
an acute angle with the plane of the share.

2. The placing the beam on a line parallel to the landside,
within the body of the plough and its centre, nearly in the
perpendicular of the centre of resistance.

3. The forming the top of the standard for brace and
draft.

That unless it is proved, that the whole combination is
substantially used in the defendant's ploughs, it is not a viola-
tion of the plaintiffs' patent, although one or more of the parts
specified, as aforesaid, may be used in combination by the
defendants. And that the plaintiffs, by their specification and
summing up, ^ave treated the jogging of the standard behind,

VOL. II. — p. c. 9

98 PATENT CASES.

ProQty et al. v. Buggies et al. 16 Peters.

as well as the extension, to be essential parts of their combi-
nation for the purpose of brace and draft ; and that the use
of either alone by the defendants would not be an infringe-
ment of the combination patented.

And thereupon the jury rendered their verdict for the de-
fendants.

The first question presented by the exception is, whether
the extension of the standard, and the joking of it into the
beam, are claimed as material parts of the plaintiff's improve-
ment. We think they are. In the paragraph in which it is
described, he states that it " extends back from the bolt to
such a distance as to form a brace to the beam ; " and also,
that being jogged into the beam it relieves the bolt in a heavy
draft." And in their summing up, they declare that they
claim as new, and of their invention, the construction of such
ploughs as aforesaid, and the several parts thereof, not sepa-
rately but in combination ; and proceeding then to specify
the parts so claimed, they mention, " the forming of the top
of the standard for brace and draft." They indeed say that
they do not mean to confine their claim to any par-
[ ** 34 L ] ticular form of construction, ** except " to such form
of the top as shall serve for brace and draft." That
is to say, the top is to be so formed and so connected with
the beam as to answer both purposes. And as those pur-
poses, according to the preceding part of the specification, are
to be accomplished by its extension back from the bolt, and
by jogging it into the beam, these two things are essential
to it, whatever variation may be made in its shape or size.
They are, therefore, material parts of the improvement they
claim.

The remaining question may be disposed of in a few words.
The patent is for a combination, and the improvement con-
sists in arranging diflferent portions of the plough, and com-
bining them together in the manner stated in the specification

PATENT CASES. 99

Howe V. Abbott. 2 Story.

for the purpose of produciog a certain effect. None of the
parts referred to are new, and none are claimed as new ; nor
is any portion of the combination less than the whole claimed
as new, or stated to produce any given result. The end in
view is proposed to be accomplished by the union of all, ar-
ranged and combined together in the manner described. And
this combination, composed of all the parts mentioned in the
specification, and arranged with reference to each other, and
to other parts of the plough in the manner therein described, is
stated to be the improvement, and is the thing patented. The
use of any two of these parts only, or of two combined with a
third, which is substantially different, in form or manner of its
arrangement and connection with the others, is therefore not
the thing patented. It is not the same combination if it sub-
stantially differs from it in any of its parts. The jogging
of the standard into the beam, and its extension backward
from the bolt, are both treated by the plaintiffs as essential
parts of their combination for the purpose of brace and draft.
Consequently the use of either alone, by the defendants, would
not be the same improvement, nor infringe the patent of the
plaintiffs.

The judgment of the Circuit Court must therefore be
affirmed.

Elias Howe v. Ebenezer E. Abbott.

[2 Story, 190. May T. 1842.]

The application of an old process to produce a new result, is not a patentable
invention ; there mast be, also, some new process or mode. But the produc-
tion of an old result by a new process is patentable.

Where a patent was taken out for a combination and an entire process ; It was

100 PATENT CASES.

Howe V, Abbott 9 Storf .

htH that the use of* part of the process and oombination was not an inficinge-
ment thereof.

Case for the infringement of a patent. The suit was brought
on a patent granted on the 18th day of March, 1841, to the
plaintiff, Elias Howe, assignee of Joseph C. Smith (the asserted
original inventor). The invention was described in the let-
ters-patent, to be **a, new and useful improvement
[ * 191 ] * in the application of a material called palm leaf, or
brub grass, to the stuffing of beds, mattresses, sofas,
cushions, and all other uses for which hair, feathers, moss, or
other soft and elastic substances are used." The letters-pa-
tent stated, that the invention was originally secured by letters-
patent, dated on the 3d of March, 1833, to Joseph C. Smith,
and that these latter letters-patent had been cancelled on
account of a defective speciGcation, and the present letters
granted to Howe, as his assignee, upon such cancellation.
The breach alleged was an unlawful making and using of
the invention.

The defendant pleaded the general issue, with notice of
special matters of defence.

The specification annexed to the letters-patent was as fol-
lows :

" To enable others skilled in the art to which this apper-
tains, to make and use my invention, I shall now proceed to
describe the method of preparing or manufacturing the same.

" The first operation is to Yeduce the palm leaf, or brub
grass, to filaments or fibres, sufficiently fine to be spun, which
filaments or fibres I then spin, and form into a rope ; which
should be twisted as hard as possible, so as to kink, or cause
the rope to form in balls or coils. This spinning and twisting
should be done upon machines similar to those used for spin-
ning and twisting hemp. After the aforesaid process of

PATENT CASES. 101

How« V. Abbott S BUStfi ;

twisting is completed^ the coils, balls, or twisfed Jlftnks, should
be placed in a steam, or any other kind of ovenr, vhere they
should be baked to such a degree, as to permanedtljr.fix the
curl or twist in the fibres or filaments. When this 'effect is
properly produced, the coils should be untwisted ; which o]pe-.
ration may be effected by a reverse motion of the same m^-^- * .
chinery by which it was twisted.

^^ After passing through these several preparative processes,
the fibres of palm leaf or brub grass are left in a
light, and * durably elastic, and curly state, and are [ * 192 ]
suitable for stufiing any of the various articles here-
in above enumerated.

'^ I shall claim as my invention the process of preparing or
durably curling palm leaf, or brub grass, by reducing the leaf
to small filaments, or fibres, and likewise spinning, baking, q\
steaming, and untwisting the same ; the whole operation be-
ing substantially as herein above described, and for the pur-
pose above specified.

Elias How^."
Witnesses :

II. H. Eddt,

Ezra Lincoln, Jr.

At the trial it appeared in evidence, that the mode stated
in the specification for spinning and curling the palm leaf,
after it was reduced to filaments or fibres, was precisely the
same process, by the same machinery, as had long before been,
and now was used to spin, and twist, and curl, hair stuffing
for beds, mattresses, sofas, cushions, &c. But it did not
appear, that the palm leaf was ever actually spun or curled in
this way, for the purpose of stuffing beds, &c., until about the
time when the original patent to Smith was granted.

There was also evidence to show, that, in point of fact.
Smith did not invent the application. But that, a short time

102 JPATENT CASES.

' Howe V, Abbott. 9 "Storf .

before the origlQicI patent was granted, Smith carried some of
the palm- Joafj cut into strips and filaments^ to the shop of one
Jonatbdjn J). Bosson, a manufacturer of curled hair for beds,
&c., iif itoxbury ; and Bosson showed him how it might be
spun and curled for beds, &c., and actually did spin and curl
*sDme of it in Smith's presence by his own hair machinery ; and
^ that Smith immediately returned home, put the same process
in operation, and obtained his original patent. Smith (who
was examined as a witness for the defendant) admitted that
he had carried the palm leaf to Bosson's shop ; but he denied
that Bosson told him how to spin and curl it, or
[ * 193 ] that he spun or ** curled it on his machinery as Bos-
son had stated. There was other evidence to show,
that long before Smith's supposed invention, and at least ten
or twelve years ago, the same process had been applied by
other manufacturers of curled hair to other grasses and vegt'
table substances, namely, to Manilla grass, to common sedge,
to Sisal grass, and to a substance called coir, of which sofas
are made.

It was also proved, that the defendant did not bake or steam
his palm leaf, after it was stripped, and spun, and curled ;
but stopped his process with the mere spinning and twisting.
AH the witnesses concurred in opinion, that the process was
far more sure and perfect, so far as the curling was concerned,
by baking or steaming the palm leaf after it was spun ; and
they thought it so essential, that the defendant's process would
be defective in attaining the object, and that the curls would
not be permanent without it.

B. R. CurtiSy for the defendant, insisted, (I) That the pa-
tent was not valid, because it was not for any new process, but
merely for preparing palm leaf, to produce certain results by
an old method. (2) That the patent, according to the spe-

PATENT CASES. 103

Howe*o. Abbott 2 Story.

cificatiofi, was for a combination and an entire process ; and
that the defendant did not use the whole combination or
entire process, but a part only, which was well known and
in use before.

H. Puller and Russell, for the plaintiff, contended, a corUrd,
that the objections were not well taken.

Stort, J. I shall not interfere to stop the cause from going
to the jury. But it strikes me, that both of the objections are
well founded. In the first place, it is admitted on all sides,
that there is no novelty in the process, by which the stripping,
or twisting, or curling, the palm leaf, is accomplished.
The * same process of twisting, and curling, and bak- [ * 194 ]
ing, and steaming, has been long known and used in
respect to hair used for beds, mattresses, sofas, and cushions.
It is, therefore, the mere application of an old process and old
machinery to a new use. It is precisely the same, as if a cof-
fee mill were now, for the first time, used to grind corn. The
application of an old process to manufacture an article, to
which it bad never before been applied, is not a patentable
invention. There must be some new process, or some new
machinery used, to produce the result. If the old spinning
machine to spin flax were now first applied to spin cotton, no
man could hold a new patent to spin cotton in that mode ; much
less the right to spin cotton in all modes, although he had
invented none. As, therefore. Smith has invented no new
process or machinery ; but has only applied to palm leaf the
old process, and the old machinery used to curl hair, it does
not strike me that the patent is maintainable. He, who pro-
duces an old result by a new mode or process, is entitled to
a patent for that mode or process. But he cannot have a
patent for a result merely, without using some new mode or
process to produce it.

104 PATENT CASES.

Howe V. Abbott. 2 <6toiy.

The other objection strikes me upon the evidence, which is
not controTerted, to be equally fatal. The specification in
the summing up is manifestly for the entire process or combi-
nation, and not for the several parts thereof. Now, the defend-
ant does not use the entire process or combination, but a
part thereof only, which certainly, therefore, is not a violation
of the thing patented, which is the entire combination. Be-
sides ; the parts used were well known before ; and, indeed,
the entire process was well known before, as the evidence
clearly shows. It may be, and it strikes me, that the defend-
ant's process is, probably, far less perfect in accomplishing
its purposes, than that used by the plaintiff. But that con-
stitutes no ground for a recovery. The question
[ ^ 195 ] is not, * which is best, or is most perfect ; but whe-
ther the one mode or combination is an infringe-
ment of the rights secured by the other mode or combination. I

There are other difficulties upon the evidence ; but I ven-
ture to suggest, that unless these objections can be overcome
or the evidence controlled, they seem to be fatal.

Mem. The plaintiff, upon these suggestions, consented to
have a verdict taken for the defendant, with liberty to move
for a new trial, if he should, upon further examination, think
that he could change the posture of the case.

Verdict for defendant, accordingly.

PATENT CASES. 105

MeClnrg et al.v. Kingsland et al. 1 How.

William T. McCluro, John C. Parrt, and Enoch J.
HiGBTy Partners, doing business under the firm or
McCluro, Parry, and Higbt, Assignees of James Har-
LET, Plaintiffs in error, v. Lawrence Kingsland, Isaac
Lightner, and James Cuddt, Partners, doing business
under the firm of Kingsland, Lightner, and Cuddt,
Defendants.

[1 Howard, 202. Jannary T. 1843.]

If a person employed in the manufactory of another, whQe recemng wages,
makes experiments at the expense and in the manufactory of his employer ;
has bis wages increased in conseqaence of the nsefnl result of the experi-
ments ; makes the article invented and permits his employer to use it, no
compensation for its use being paid or demanded ; and then obtiuns a patent,
these facts wUl justify the presumption of a license to use the inyention.

Such an unmolested and notorious use of the invention prior to the application
for a patent, will bring the case within the provisions of the 7th section of the
Act of 1839, ch. 88.

The assignees of a patent-right take it subject to the legal consequences of the
previous acts of the patentee.

The 14th and 15th sections of the Act of 1836, ch. 357, prescribe the rules
which must govern on the trial of actions for the violation of patent-rights ;
and these sections are operative, so far as they are applicable, notwithstand-
ing the patent may have been granted before the passage of the Act of 1886-

The words, "any newly invented machine, manufacture, or composition of
matter,*' in the 7th section of the Act of 1839, have the same meaning as
" invention," or " thing patented."

This case was brought up by writ of error from the Circuit
Court of the United States for the western district of Penn-
sylvania.

The facts are sufficiently stated in the opinion of the Court.

The bill of exceptions which was taken on the trial below
was as follows :

And the plaintiff thereupon excepted to certain parts of

106 PATENT CASES.

McCloig et aL v. Kiogsland et al. 1 How.

the instructions so given by the Court to the jury, which
instructions so excepted to are hereinafter set forth, to wit :

'^ It has, however, been urged by the plaintiff's counsel that
the right to the continued use is restricted to the ^ specific
machine, manufacture, or composition of matter so made or
purchased,' so that a defendant is protected no farther than
in the case of the invention (for which this patent was granted)
prior to the application, and is liable to damages if he makes

any rolls by Harley's plan afterwards.
[ ♦ 203 ] ♦ " We, therefore, feel bound to take the words,
'newly invented machine,' in the Act of 1839,
manufacture, or composition of matter and such invention, to
mean the invention patented, and the words ' specific ma-
chine,' to refer to the thing originally invented, whereof the
exclusive right is procured by patent, but not to any newly-
discovered improvement to an existing patent.

'* The use of the patent must be of the same specific im-
provement originally invented, as was, before the application,
used by any person who had purchased or constructed the
machinery on which he operated to produce the effect de-
scribed in the specification ; but when such person confines
the future case to the specific mode, method, manner, and
process of producing the described effect, it is, by the words
and true meaning of the law, without liability to the inventor
or other person interested in the invention, so construed ;
and by thus protecting the person who has engaged the use
of an invention before the application for a patent, the great
object of the Patent Law8,^as declared in the fourth section
of the Act of 1837, will be consummated ; that is, to protect
the rights of the public and ' of patentees in patented inven-
tions and improvements.' 4 Story, 2547. A different con-
struction would make it necessary to carry into all the former
laws the same literal exposition of the various terms used to
express the same thing, and thereby changing the law accord-

PATENT CASES. 107

McCltug et aL v. Kingsland et al. 1 How.

ing to every change of phraseology, make it a labyrinth of
inextricable confusion.

''Our opinion, therefore, is, that the defendants have a
right to the continued use of the improvement patented to
Harley ; the facts of the case, which are not controverted,
have equal eifect with a license, and the evidence brings the
defendant under the protection of the Act of 1839, by the
unmolested notorious use of the invention before the applica-
tion for a patent. Nothing has been shown on the part of
the plaintifls to counteract the effect of this prior use; as
the assignees of Harley, they stand in his place as to right
and responsibility ; they took the patent, subject to the legal
consequences of his previous acts, and connecting these with
the want of an assertion of a right, to the use by the de-
fendants of the invention patented, till this suit was brought
in September, 1835, protects them from liability.

* '* In our opinion, your verdict ought to be for the [ ** 204 ]
defendants. Verdict accordingly, and judgment for
defendants."

Durdap^ on behalf of the plaintiffs in error, contended that
the Court below had erred in charging the jury.

1. That the facts justified the presumption of a license or
grant to use the invention, and that defendants were pro-
tected thereby, independent of any Act of Congress.

2. That the words, '' specific machine," in the 4th section
of the Act of 1839, referred to the invention itself, and that
the authority to use it before the patent carried the right to
continue to make and use it after the patent had issued.

Mr. Justice Baldwin delivered the opinion of the Court.

This case comes here on a writ of error to the Circuit
Court for the Western District of Pennsylvania, in an action
brought by the plaintiffs, assignees of James Harley, against

108 PATENT CASES.

McClnig et al. v, KiDgsland et aL 1 How.

the defendants, for the infringement of a patent granted to
Harley for an improvement in the mode of casting chilled
rollers and other metallic cylinders and cones, in which judg-
ment was rendered for the defendants. On the trial it ap-
peared in evidence that it had long been a desideratum to
find out some mode by which iron rollers or cylinders could
be so cast that when the metal was introduced into the mould
it should cause a swyrl or rotatory motion, by which the flog
or dross would be thrown into the centre instead of the sur-
face of the cylinder. By the old mode, the metal was con-
veyed from the furnace to the mould through a gate, or pipe,
placed in a horizontal or perpendicular direction. The mode
alleged to have been invented by Harley is thus described in
the specification annexed to the patent : '' The tube or tubes,
or passages called gates, through which the metal to be con-
veyed into the moulds, shall not enter the mould perpendicu-
larly at the bottom, but slanting, or in a direction approaching
to a tangent of the cylinder, or if the gates enter the moulds
horizontally or nearly so, shall not enter in the direction of
the axis of the cylinder, but in a tangent form, or inclining
towards a tangent of the cylinder."

This was the thing patented, consisting solely in changing

the direction of the tube, which conveyed the metal

[ * 205 ] to the mould, * from a horizontal or perpendicular

position to an angular one ; it produced the desired

efiect and was highly useful.

The novelty of the invention was much contested at the
trial, but as the case turned on other points, that became an
immaterial question ; as the case comes before us, on ezcep*
tions to the charge of the Court, which assumed that Harley
was the original and true inventor of the improvement, and
put the case to the jury on the following facts, which were in
full proof, in nowise contradicted, and admitted to be true.

That Harley was employed by the defendants at their

PATENT CASES. 109

McClnrg et al. v. Eingsland et al. 1 How.

foundry in Pittsburg, receiving wages from them by the week ;
while so employed, he claimed to have invented the improve-
ments patented, and after several unsuccessful experiments
made a successful one in October, 1834 ; the experiments
were made in the defendants' foundry, and wholly at their
expense, while Harley was receiving his wages, which were
increased on account of the useful result. Harley continued
in their employment on wages until January or February,
1835, during all which time he had made rollers for them ;
he often spoke about procuring a patent, and prepared more
than one set of papers for the purpose ; made his application
the l7th February, 1835, for a patent; it was granted on the
3d of March, assigned to the plaintiffs on the 16th of March,
pursuant to an agreement made in January.

While Harley continued in the defendants' • employment,
he proposed that they should take out a patent and purchase
his right, which they declined ; he made no demand on them
for any compensation for using his improvement, nor gave
them any notice not to use it, till, on some misunderstanding
on another subject, he gave them such notice, about the time
of his leaving their foundry, and after making the agreement
with the plaintiffs, who owned a foundry in Pittsbuig, for an
assignment to them of his right. The defendants continued
to make rollers on Harley's plan ; the present action was
brought in October, 1835, witliout any previous notice by
them. The Court left it to the jury to decide what the &cis
of the case were ; but if they were as testified, dharged that
they would fully justify the presumption of a license, a spe-
cial privilege, or grant to the defendants to use the invention ;
that the facts amounted to " a consent and allowance of such
use," and show such a consideration as would sup-
port *an express license or grant, or call for the [*206']
presumption of one to meet the justice of the case,
by exempting them from liability ; having equal effect with a

VOL. II. — p. c. 10

PATENT CASES.

MeCSoTg et ■!. e. Eingtland et a).

license, and giving the defendants a ri^t to the continaed
UK of the inventioo. The Court also cha^d the jury, that
the facts of the case, which were not controverted, brought it
within the provisions of the 7th section of the Act of 1839,
by the nnmdested, notorious use of the invention, before the
application for a patent by Harley, and that nothing had been
shown by the plaintiffs to counteract the eflect of this prior
use. That as assignees of Harley, the plaint)^ stand in his
place, as to right and responsibility ; they took the assignment
of the patent, subject to the legal consequences of his previous
act8,-and connecting these with the absence of an assertion
of a right adverse to the defendants' use till this suit was
brought, protected the defendants from liability for any
damages therefor.

The exceptions to the charge were confined to these two
points, which constitute the only subject for our considera-
tion. Whether these exceptions are well taken or not, must
depend on the law as it stood at the emanation of the patent,
t<^ther with such changes as have been since made ; for
though they may be retrospective in their operation, that is
not a sound objection to their validity ; l)ie powers of Con-
gress to legislate upon the subject of patents is plenary by the
terms of the Constitution, and as there are no restraints on
its exercise, there can be no limitation of their right to modify
them at their pleasure, so that they do not take away the
rights of property in existing patents.

When the patent to Harley was granted and this suit
brou^t, the Acts of 1793 and 1800 were the tests of its
validity, but the 81st section of the Act of 1836 repealed all
existing laws on the subject of patents, with a proviso, that
" luits brought before may be prosecuted in the same man-
as if that act had not been passed, " excepting and saving
application to any such action, of the provision of the 14th
15th sections of this act, so far as they may be applicable

PATENT CASES. Ill

McClnig et al. v. EingBland et al. 1 How.

thereto." This repeal, however, can have no effect to impair
the right of property then existing in a patentee, or his as-
signee, according to the well-established principles of this
Court in (8 Wheat. 493) ; the patent must therefore stand
as if the Acts of 1793 and 1800 remained in force ; in other
respects the 14th and 15th sections of the Act of
* 1836 prescribe the rules which must govern on [ * 207 ]
the trial of actions for the violation of patented
rights, whether granted before or after its passage.

In Pennock v. Dialogue, this Court held, in 1829, <' That
if an inventor makes his discovery public, looks on, and per-
mits others freely to use it, without objection or assertion of
claim to the invention, of which the public might take notice ;
he abandons the inchoate right to the exclusive use of the
invention, to which a patent would have entitled him, had it
been applied for, before such use, and that it makes no dif-
ference in the principle, that the article so publicly used, and
afterwards patented, was made by a particular individual who
did so by the private permission of the inventor." 2 Peters,
14, 15; S. P. Grant v. Raymond, 6 Peters, 248, 249; Shaw
V. Cooper, 7 Peters, 313-323.

On this construction of the Acts of 1793 and 1800, Har*
ley's patent would have been void, on the evidence in this
case. Such seems to have been the sense of Congress, as
expressed in the Act of 1832, which authorized the issuing a
new patent, when an original one was invalid by accident,
inadvertence, or mistake, and without any fraudulent intent,
by reason of the terms of the 3d section of the Act of 1793
not having been complied with, '' Provided, however, that
such new patent so granted shall in all respects be liable to
the same matters of objection and defence as any original
patent, granted under the said first-mentioned act. That no
public use or privilege of the invention so patented, derived
from or after the grant of the original patent, either under any

112 PATENT CASES.

McClurg et al. v. Kingsland et ah 1 How.

special license of the inventor, or without the consent of the
patentee that there shall be free public use thereof, shall in
any manner prejudice the right of recovery for any use or
violation of his invention after the grant of such new patent,
as aforesaid." 4 Story, 2301.

This act is an affirmance of the principles laid down by
this Court in the three cases before referred to, and as the
exception to the proviso is limited to an use of the invention
under a special license of the inventor after the grant of the
original patent, it leaves the use prior to the application for
such patent clearly obnoxious to the principle established in
2 Peters, 14, 15, whereby the patent would become void.

The same conclusion follows from the 15th section
[ * 208 ] of the Act * of 1836, which declares, that if the thing
patented ** had been in public use, or on sale, with
the consent and allowance of the patentee, before the appli*
cation for a patent," judgment shall be rendered for the
defendant with costs. 4 Story, 2511. The case before us is
one of this description : the defendants use the invention of
Harley for four months before his application for a patent ;
this use was public, and not only with his express consent and
allowance, but he himself made the rollers on the plan he
invented during those months, from the time when he had
ascertained the utility of his invention.

It would, therefore, be no strained, if not the fair construc-
tion of this act, if under such and the other circumstances in
evidence in the cause, the Court had charged the jury, that
if they believed the witnesses, the patent subsequently ob-
tained was void. The Circuit Court, however, did not go so
far : they held that the defendants might continue to use the
invention, without saying that the public might use it with-
out liability to the plaintiffs, in which we think there was no
error in their direction to the jury ; that they might presume
a license or grant from Harley, or on the legal effect of the

PATENT CASES. 113

McClmg et aL v, Kingtland et al. 1 How.

uncontroverted evidence as to the right of recovery, by the
plaintiffs, or on the construction of the Acts of 1793, 1800,
1832, and 1836.

The remaining exception is to the charge of the Court be-
low, on the effect of the 7th section of the Act of 1839, which
is in these words : '' That every person or corporation who
has, or shall have purchased or constructed any newly-invented
machine, manufacture, or composition of matter, prior to the
application by the inventor or discoverer of a patent, shall be
held to possess the right to use and vend to others to be
used, the specific machine, manufacture, or composition of
matter, so made or purchased, without liability therefor to the
inventor, or any other person interested in such invention ;
and no patent shall be held invalid by reason of such pur-
chase, sale, or use prior to the application for a patent as
aforesaid, except on proof of abandonment of such invention
to the public, or that such purchase, sale, or prior use has
been for more than two years prior to such application for a
patent/' Pamphlet Laws, 1839, 74, 75.

The object of this provision is evidently twofold ; first, to
protect the person who has used the thing patented,
by having purchased, * constructed, or made the [ * 209 ]
machine, &c., to which the invention is applied,
from any liability to the patentee or his assignee. Second,
to protect the rights, granted to the patentee, against any
infringement by any other persons. This relieved him from
the effects of former laws and their construction by this Court,
unless in case of abandonment of the invention, or a con-
tinued prior use for more than two years before the applica-
tion for a patent, while it puts the person who has had such
prior use, on the same footing as if he had a special license
from the inventor to use his invention ; which, if given before
the application for a patent, would justify the continued use
after it issued without liability.

10*

114 Latent cases.

McClnrg et al. v. Kingsland et aL 1 How.

At the trial below, and here, the plaintiflf's counsel have
contended, that this act cannot apply to the present case,
inasmuch as the protection it affords to the person who
had the prior use, is confined to the specific machine, &c.,
and does not extend to such use of the invention, or thing
patented, if it does not consist of a machine, &c., as contra-
distinguished from the new mode or manner in which an old
machine or its parts operates, so as to produce the desired
effect ; but we think that the law does not admit of such con-
struction, whether we look at its words or its manifest objects,
when taken in connection with former laws, and the decisions
of this Court in analogous cases.

The words '' such invention" must be referred back to the
preceding part of the sentence, in order to ascertain the sub-
ject-matter to which it relates, which is none other than the
newly-invented machine, manufacture, or composition of
matter constituting the thing patented ; otherwise these words
become senseless when the invention is not strictly of a ma-
chine, &c. Now, in the present case, we find the invention
consists solely in the angular direction given to the tube
through which the metal is conducted into the cylinder in
which the roller is cast. Every part of the machinery is old ;
the roller itself is no part of the invention, and cannot be the
machine, manufacture, or composition of matter contemplated
by Congress ; nor can the word " specific '' have any practical
effect unless it is applied to the thing patented, whatever it
may be, without making a distinction between a machine,
&o., and the mode of producing a useful result by the mere

direction given to one of the parts of an old ma-
[ * 210 ] chine. Such a construction * is not justified by

the language of the law, and would defeat both of
its objects. If it does not embrace the case before us, the
consequence would be that the use of the invention, under
the circumstances in evidence, would, according to the deci-

PATENT CASES. 115

McClmg et al. v. Kingsland et al. 1 How.

sion in 2 Peters, 14, 15, invalidate the patent ; for if the act
operates to save the avoidance of the patent, it must, of con-
sequence, protect the person who uses the invention before
the application for a patent. Both objects must be effected,
or both must fail, as both parts of the act refer to the same
thing, and the same state of things, as affecting the person
using the newly-invented machine, or the thing patented, as
well as the inventor. Had the words '^ invention," or ''thing
patented," be.en used instead of machine, &c., there could
have been no room for doubt of the application of the act to
the present case ; and by referring to the phraseology of the
different Acts of Congress denoting the invention, it is appa-
rent that, though there is a difference in the words used, there
is none as to their meaning or reference to the same thing.
Thus we find in the 14th section of the Act of 1836, relating
to suits for using " the thing whereof the exclusive right is
secured by any patent," in the 15th, ''his invention, his dis-
covery, the thing patented," " that which was in fact invented
or discovered," "the invention or discovery for which the
patent issued," " that of which he was the first inventor."
In the first section of the Act of 1837, "any patent for any
invention, discovery, or improvement," "inventions and dis-
coveries;" in the 2d section, " the invention ; " in the 3d,
" invention or discovery ; " in the 4th, " patented inventions
and improvements;" in the 5th, "the thing as originally
invented." 4 Story, 25 1 0, 25 L 1 , 2546.

We, therefore, feel bound to take the words " newly-in-
vented machine, manufacture, or composition of matter " and
"such invention," in the Act of 1839, to mean the " inven-
tion patented," and the words " specific machine," to refer to
" the thing as originally invented," whereof the right is se-
cured by patent; but not to any newly-invented improvement
on a thing once patented. The use of the invention before
an application for a patent must be the specific improvement

Jl<

PATENT CASES.

>'«Mnaa «t .1. r. Woodea. 3

««. d. ^'^«^^ «?««»«. of the Ulrica. u«n. «ed tT^
ii*ext,ic«Ue eoofurioo. '^"*'*W' ""^^ '» • W»ynnth of

<J*r«* <^ a,e Court below. ««, th.t if j„dg»en. be .ffi™«d.

Order.
T/<« euue came on to be heani «„♦!..
record froo, the Circait ^^ ,'1 " *"™^P' "^ »^

^^^ ca««» be and the «me i, hereby affirmed, with

I'kTBHSON & P.TEMON ». WoODEN.

fa McLmh, 248. July T. 1843.]

It tint fiiiU<iiU<» clulm* mora than ha ho. •

tt,i(i»r Urn former l«w j but. w fcr m m. in *.°^ ""^ P*^"* " "•" ^oM, as
««i */.»,• tim «!«(,„ i. fer .„ lmp«,ye«e« T. "fT' ''\" ''""**'»^-

»li(iw Ih tflml tli.1 improTement coniiits ™«»»n8, the patentee miut

III a <lm.|nri.ll..»i. llie Improvement mn« bo itated aa .n

pWnilfl". rl«l.. i and if thl. be not done the d^ll^^'T'" ^"^ °' **

"««amtion u demunable.

.SVor«r, nppoarod for the plaintiffs.

PATENT CASES. 117

Peterson et al. v. Wooden. 8 McLean.

Fox, for the defendants.

Opinion of the Court.

This is an action for the violation of a patent*right. In
their declaration, the plaintiffs state, that they have invented
a " new and useful improvement in the cooking-stove/' which
improvement, they state, has not been known or used. The
schedule which is set out in the declaration, describes the
structure of the stove in all its parts, but nowhere describes
in what the improvement consists. And on that ground the
defendants demurred to the declaration.

Prior to the Act of the 4th of July, 1836, if the patentee
claimed more than he had invented, his patent was void.
But, under the decision of the Supreme Court, he was per-
mitted to surrender his patent and take out a corrected one.
The 13th section of the above act provides, that ^< where a
patent is invalid by a defective or insufficient description or
specification, or by reason of the patentee claiming in his spe-
cification, as his own invention, more than he had invented,
if done through inadvertence, or in surrendering the patent, the
patentee may obtain a new patent for the residue
* of the period unexpired of the original patent." [ * 249 ]
And in all cases of infringement subsequent to the
date of the amended patent, it is declared to be valid. The
fifteenth section of the same act provides, that, under the
general issue and notice, the defendant may controvert the
truth of the specification.

The ninth section of the Act of 3d March, 1837, provides,
that, where the patentee has claimed more than he has in-
vented, ^^ the patent shall still be deemed good and valid for
so much of the invention as shall be truly and bond fide his
own, provided it shall be a material and substantial part of
the thing patented, and be definitely distinguishable from the
other parts so claimed without right as aforesaid."

PATENT CASES.

Biwki m al. V. Bicknell ct bL S H<I.md.

Now although tbe patent is not vend when the patentee
claims more than he has iDTeated, yet, in his speciGcatioa,
he must stale in what his improvement consists. He does
not claim in this case the invention of a cooking-stove, but
an improvement on such stove ; but in no part of the decla-
ration is it stated what this improvement is. Had he claimed
the invention of the stove, under the above statute of 1837,
the invention would have been good, so far as it extended.

This is an essential part of the plaintiff's case, and should
be set out in the declaration. And as this has not been done,
the declaration is demurrable.

Leave is given to the plaintiffi to amend their declaration.

Brooks anr Morris t>. Bicknell ahd Jenkins.

[3 McLean, 250. July T. 1813.]

An answer to an injunction bill, thongh filed withoat a nle, wilt be treated aa

an answer on ■ modon to grant, or continne, an injaoctioa.
Affidavils may be read, on both sidM, a« to facta nnconnected with tbe title.
If a patentee be dead, bia adminiatralor maj renew the patent.
Tbe Board, on wbose judgment a renewal is granted, may be aaid to act jadi-

cially. Their judgment is not conclniiTe as to the right ; but of certain facts,

it most be conaidered conclnaiTe.
The specifioitions of an imprOTement of a machine, most be so clear as to

enable a person acqoainted with the etmcture of snch a machine, to build

In aneh description it is sufficient to refer genoraUy to the machine improved,

without giving a particular description of it-
It is uot material, in the description, to say, whether cert^n parts of the machine

nhoold be made of wood or metal.

bere witnesses differ on the (act of an infringement, tbe matter should be

inbmitted to a jury, either by an action at law, or an issne directed by chan-

:ery.

difference in form, or proportions only, makes no difference in the prindplea

PATENT CASES. 119

Brooks et al. v, Bicknell 6t al. S McLean.

of the machmes. If they operate on the same principle, in the amplication
of the power, in law, the machines are considered identicaL

A patent is invalid, if the thing claimed to have been invented, has been made
in a foreign country, or described in some pnblic work. Bat in this, as on
the fact of infringement, the machine, or thing invented, must in principle,
be the same:

The assignee of a patent-right, in part, can, in law, or equity, sustain a suit, for
a violation of the patent, without uniting the name of the patentee.

Wright, Coffin, and Minor, for complainants.
WalkeT, for defendants.

Opinion of the Court.
The complainants represent in their bill, that on or about
the 4th of December, 1828, William Woodworth, now de-
ceased, was the inventor of a certain improvement, or machine,
for planing, grooving, and tonguing boards, and
* other materials, and for which, after having com- [ * 25L ]
plied with every legal requisite, he obtained a patent,
dated the 27th of December, 1828, to him, his heirs, execu-
tors, administrators, or assigns, for the term of fourteen years.
That the patent, after the 15th day of December, 1836, was
duly recorded anew, in the Patent-Office, as required by law.
That the patentee having departed this life on the 14th day
of February, 1839, letters of administration were granted on
his estate, by the surrogate of the county of New York, to
William W. Woodworth. That afterwards he presented
to the proper department of the government, a petition for
an extension of the patent, and having in all things com-
plied with the law, on the 16th day of November, 1842, a
renewal and extension of the patent, for seven years, were
granted.. That during the original patent, the patentee
assigned one half of his interest in the same to James Strong,
and afterwards, on the 29th day of July, 1830, Strong and
Woodworth, by deed, transferred to Isaac Collins and Bar-

120 PATENT CASES.

Brooks et al. v. Bicknell et al. 3 McLean.

ziHai C. Smith, all their right under the patent, in the State
of Ohio, and other territory therein named ; and on the 12th
day of April, 1831, Collins and Smith conveyed to Lewis
Sanders the exclusive right to make, construct, use, and vend,
one hundred machines, above patented, for the county of
Hamilton, Ohio, as well as other territory. That said San-
ders, on the 18th of August, 1831, transferred to Thomas D.
Carneal and Charles Neave, one equal undivided half of his
right. That Carneal and Neave, on the 9th of July, 1834,
transferred all their interest in the patent to the complainants ;
and on the same day Sanders conveyed to them all his in-
terest. That all the above assignments have been duly re-
corded in the Patent-Office, except the assignment to San-
ders, which has been lost, or mislaid. That on the 2d of
January, 1843, Collins and Smith transferred to Wil-
[ * 252 ] liam W. Wood worth their interest in the * renewal
of the patent, which has been duly recorded. That
Woodworth, while in possession of the right, on the 2d of
January, 1843, executed a certain instrument of disclaimer,
as to the exclusive right, or interest, in circular saws for
reducing floor planks, or other materials, to the same width,
which was also recorded. That afterwards Woodworth
assigned his interest in the renewed patent, for the county of
Hamilton and other territory specified, to Wilson, and Wil-
son assigned the same to the complainants, which assign-
ments are of record. That the complainants have been in
the use of their right, which was well known to the defend-
ants, but in disregard of such right, defendants are making,
or causing to be made, setting up, and about to put in opera-
tion, in the city of Cincinnati, one or more machines, for
planing boards and other materials, or have made, set up, and
put in operation, such machines, in said city ; which machines,
and all the material parts thereof, are substantially like, and
upon the plan of Woodworth's. And they represent that

PATENT CASES. 121

Brooks et aL V. Bicknell et al. 8 McLean.

defendants have little or no property, and in a pecuniary
point of view are wholly irresponsible. An injunction is
therefore prayed, &c.

The answer admits the emanation of the patent, the death
of the patentee, the appointment of administrator, the several
assignments, with some exceptions, qnd the disclaimer of the
administrator — denies that the defendants are not pecuniarily
responsible — admits the possession and use, under the patent,
of a certain machine, but denies that it is the machine patent-
ed, and points out six substantial differences — denies that
the invention was Woodworth's, and points out similar ma*
chines, used and patented before — denies the validity of the
patent, on account of defects in the specifications, and points
out seven — denies the validity of the renewal to
the administrator — admits the construction * of a [* 253 ]
machine, by the defendants, and gives the specifica-
tions and drawings ; but denies that it is an infringement, and
points out what is claimed as new.

On the hearing plaintiffs insisted, that the answer was no-
thing more than an afiSdavit, until time for answering expired ;
and cited 1 Cond. Eng. Chanc. R. 66 ; 1 Smith's Chanc.
Prac. 595.

Defendants, objected to the reading of aflUdavits. Plain-
tiffs cited 3 P. Wms. 255 ; 3 Merivale, 622 ; 1 Vesey, 427 ;
1 Baldwin, 206.

As to the practice in granting injunctions, plaintiffs insisted,
that though there might be doubts about the validity of the
patent, if there had been an exclusive use for a length of time,
the injunction would be granted. 6 Vesey, 707 ; Phillips on
Patents, 461 ; 4 Wash. 534 ; 9 Johns. 470 ; 3 Merivale, 622 ;
1 Mad. Chanc. Prac. 113; 14 Vesey, 131. Defendants ad-
mitted this to be the law ; but denied any use of the machine
patented, insisting that it was substantially different.
VOL. IL — p. c. 11

122 PATENT CASES. -

Brooks et al. v. Bicknell et al. 3 McLean.

Defendants for the present admitted plaintiffs' title as set
out ; but opposed the injunction on three grounds:

1. The patent is invalid for defects in the specifications;
there are no written references to drawings, as required by
law; and the description is too general and ambiguous to
enable a practical machinist to construct a machine. 2 Mc*
Lean's R. 37. This question is a matter for the Court. 2 Brock.
298. But the affidavits of men of skill may assist.

2. The administrator cannot renew, but only the patentee.
Act of 1836, sec. 18. Where the right is to extend to re«
presentatives and assigns, it is specially provided for, as in
sections 5, 10, 13, and the latter part of 18. The design is
to reward the inventor, and not speculators. Plaintiffs cited
Van Hook t;. Scudder et al. (reported in New York Herald
of June 20, 1843) ; and also claimed that the opinion of the

board was entitled to weight.

[ * 254 ] * 3. There was no infringement. Plaintiffs claimed

a particular application, or combination, of known

principles. Defendants had made a different one — cited

1 Peters's C. C. R. 398 ; 4 Wash. 706 ; 2 Kent, 370 ; 7 Wheat.

361, to show what amounts to an infringement.

Two preliminary points are made, which it may be proper
to settle, before the main questions are considered.

1. The effect of the answer. As it has been voluntarily and
prematurely filed, it is contended, it can have no other effect
than the affidavit of the defendants, in regard to the motion
now made. It is true there has been no rule for answer, but
this seems to be no satisfactory reason why it should not be
treated as an answer. The complainants call upon the de-
fendants to answer, and, on many points, the answer h respon-
sive to 4he bill.

By the fortieth rule of practice, '^ a defendant is not bound
to answer any statement or charge in the bill, unless specially
and particularly interrogated thereto." And the same rule

PATENT CASES. 123

Brooks et al. v. Bicknell et al. 3 McLean.

declares, that if '' a defendant shall answer any statement or
charge in the bill, to which he is not interrogated, only by
stating his ignorance of the matter so stated or charged, such
answer shall be deemed impertinent."

From this rule it is clear that the defendant is in no default^
by refusing to answer any part of the bill to which he is not
specially interrogated. And if he expresses *' ignorance of
the matter, his answer shall be deemed impertinent ; " but the
rule does not say that if the answer respond to the charges in
the bill, it shall be held impertinent.

By the fifth section of the Act of the 2d of March, 1793,
it is declared, that '^ no writ of injunction shall be granted in
any case, without reasonable previous notice to the adverse
party, or his attorney, of the time of moving for the same." And
by the fifty-fifth rule it is declared, that *^ special injunctions
shall be grantable only upon due notice to the other
parly, by the Court in term, or by a judge * thereof [ * 255 ]
in vacation, after a hearing, which may be ex parte^
if the adverse party does not appear at the time and place
ordered."

Both from the statute, and the rule of practice, it is clear,
a hearing of both parties is contemplated on an application
for an injunction. And there can be no objection, it would
seem to me, if time be given, to an answer of the allegations
in the bill.

2. An objection is made to the afiidavits ofiered in support
of the bill, and in contradiction of the answer. That affida-
vits are read to support the injunction, on a motion to dissolve
it, on the coming in of the answer, is a well-established rule
in England. Gibbs v. Cole, 3 P. Wms. 255 ; 2 Eq. Cases
Ab. 14 pi 2 ; Isaacs v. Hampage, 3 Bro. Ch. 483 ; 1 Yes. Jr.
427. In Morphet v. Jones, 19 Ves. 350, it is said, << there
are many cases of injunction where you may reply to the an-
swer by afiidavits, not on the question of title, but on mere

134 PATENT CASES.

Brooks et al. v. Bicknell et aL 3 McLean.

facts, as in the instance of waste, on such questions of fact
though not on the title, affidavits in reply to the answer may
be read."

It is said, in I Smith's Ch. Pr. 595, that '' if the plaintiff,
instead of applying for the injunction upon affidavit, waits
until the defendant has answered, he must rest his case upon
the disclosures made by the answer, and he is not entitled,
either for the purpose of obtaining or continuing an injunc-
tion, to read any aflSdavits in support of his motion, in oppo-
sition -to the answer." But cases of waste, or of mischief
analogous to waste, are an exception to this rule, where the
affidavits do not refer to title.

The ill^ality of the extension of the patent, is the princi-
pal ground of objection to the complainant's right.

The eighteenth section of the Patent Law of July the 4th,
1836, provides, " that whenever any patentee of an invention
or discovery, shall desire an extension of his patent, he may
make application therefor, in writing, to' the com-
[ * 256 1 missioner * of the Patent Office," &c. The Secre-
tary of State, the commissioner of the Patent Office,
and the solicitor of the treasury, constitute a board to deter-
mine on the right of the applicant to an extension ; and if
their judgment shall be in his favor, the patent is extended
seven years beyond the original grant of fourteen years.

This privilege, or right, it is contended, b given to the pa-
tentee, and to no other person. And that as the above ex-
tension was granted, after the decease of the patentee, and
to his administrator, it was unauthorized, and is consequently
void.

To William W. Woodworth, the administrator of the pa-
tentee, Collins and Smith, on the 2d of January, 1843, trans-
ferred all their interest in the renewal of the patent. So that
in fact when the administrator applied for a renewal of the
patent, he held, as assignee, an interest in it But the appli-

PATENT CASES. 125

- __i»iaiii-

Broc^ et aL v. Bicknell et al. 3 McLean.

cation for a renewal was made by Woodworth in his capa-
city as administrator of the patentee^ and on that ground the
question must be considered.

There is no express statutory provision, authorizing the
administrator of the patentee to apply for a renewal of the
patent.

By the tenth section of the above act, it is provided, that
when the inventor or discoverer dies before a patent is ob-
tained, his executor or administrator shall have the right to
apply for and obtain the patent, in trust, for the heirs or de-
visees of the deceased. And in the thirteenth section, where
the specification has claimed more than the patentee has in-
vented, and he is dead, his executor, administrator, or assignee,
has a right to surrender the patent, and have the specification
cinrected.

To entitle a patentee to an extension of his patent, he must
make application in writing to the commissioner of the Pa-
tent Office, setting forth the grounds thereof, ^^^ and, on the
applicant's paying forty dollars, the commissioner
* causes a notice to be published in one or more of [ ^ 257 ]
the principal newspapers in the city of Washing-
ton," &c., stating ^* the time and place where the same will
be considered, that any person may appear and show cause
why the extension should not be granted." And the board, ^
constituted for this purpose, are required to meet at the time
and place specified ; before whom the applicant is required
to state, under oath, the value of the invention, and of his re-
ceipts and expenditures, sufficiently in detail to exhibit a true
and faithful account of loss and profit in any manner accruing
to him from and by reason of said invention." <<And if, upon
hearing, it shall appear to the entire satisfaction of the boa
that the term should be extended by reason of the pa-
tentee, without neglect or fault on his part, having failed to
obtain, from the use and sale of his invention, a reasonable

11*

126 PATENT CASES.

- —

Brooks et al. v. Bicknell et aL S McLean.

remuneration for the time, ingenuity, and expense bestowed
upon the same and the introduction thereof into use, it shall
be the duty of the commissioner to renew the patent, &c., and
the judgment of the board shall be entered on record in the
Patent Office," &c.

Now this language would seem to limit the right of renewal
to the patentee, not only from the use of his name in the first
part of the section, but from the object of the grant of renewal,
it being '< to secure to him a reasonable remuneration, for his
time, ingenuity, and expense." But still, '^ the benefit of the
renewal extends to the assignee of the right, to the extent of
his interest." And where the assignment of the whole right
has been made by the patentee, it is difficult to perceive how
a renewal could operate beneficially to him. There are cases,
no doubt, in which the principal expense has been incurred
by the assignee, who has constructed and introduced the ma-
chine into use.

In the case under consideration, however, the
[ * 258 ] heirs of the * patentee, at the time of the renewal,
held a principal interest in the patent, and its re-
newal was for their benefit.

It is intimated that the decision of the board, as to the ex-
tension of the patent is conclusive, both as to the right granted,
and the mode of granting it.

There can be no doubt that where a special tribunal is con-
stituted, with full powers to act in certain cases, its decisions,
within the scope of its authority are conclusive, if there be
no superior supervising tribunal. And in this case the matter
of expense, the payment of the money required, and the no-
tice, are conclusively settled by the decision. But the quels-
tion of law, as to the right of renewal, by the administrator,
is not concluded.

The board seem not to have acted inconsiderately in the
-case. Having met on the day designated in' the public notice.

PATENT CASES. 127

Brooks et al. v. Bicknell et al. 3 McLean.

they adjourned to the 16th day of November^ 1842, when
they '< lipard the eyidence produced before them, both for
and against the extension of the patent/' and they, in the
very words of the ]aw granted the extension.

Now, although this decision is not conclusive as to the legal
right of the administrator, yet it cannot be wholly disregarded.
It shows, at least, a practical construction, by the executive
branch of the government, that the heirs of the patentee may,
through their trustee, procure a renewal of a patent. There
is nothing in the spirit or policy of the Patent Law, against
this construction. On the contrary, it is in accordance with
the principle and policy of that law. The same reason that
would give a renewal to the patentee, would be equally strong
in behalf of his heirs. If the term of the original grant had
not given an adequate remuneration for " the time, ingenuity,
and expense," of the patentee ; on every principle of public
policy, in the event of his decease, there should be a renewal
for the benefit of his heirs.

^ That a man should be secured in the fruits of [ ^ 259 ]
his ingenuity and labor, is a sound maxim of the
common law. And it seems difficult to draw a distinction
between the fruits of mental and physical labor. But, it must
be admitted, that as the right asserted by the. complainants
arises under a statute, a substantial compliance with the requi-
sitions of such statute must be shown. This seems to have
been done, as regards the renewal of the patent in all the
essential requirements of the law. If the law does not, in
terms, give the right of extension to the administrator of the
patentee, in behalf of his heirs, it recognizes the right of
an assignee for a patent, on its extension ; and in other cases
the rights of the administrator and heir of the patentee,
are recognized and protected. From the prindple of the law,
its policy, and every consideration connected with the sub-
ject) it would seem that the construction of the act, in this

128 PATENT CASES.

Brooks et al. v. Bicknell et al. ' 3 McLean.

respect, has been rightfully settled by the executive depart-
ment. In this matter the board may be said to h^^ve acted
judicially.

But this view does not rest alone on the consideration of
the policy and principle of the law, but it has been judicially
sanctioned by the Circuit Court of the second circuit. Judge
Thompson, it seems, on this very patent, and subsequently to
the extension of it, treated it, in granting an injunction, as a
valid patent. No new patent was issued to the administrator,
but a certificate of the extension of the original patent, in
pursuance of the judgment of the board, was recorded. The
rights under this patent, before its extension, remain, in every
respect, the same, after its extension. The administrator acts
as the trustee of the heirs ; he represents the deceased. And
it would seem to be a convenient and fit mode of securing
that remuneration, <' for the time, ingenuity, and expense," of
the patentee, which is given by law, for the administrator to
apply for the renewal of the patent. He can pay
[ ^ 260 ] the money and make the exhibits * required. In
this duty he does nothing more than the law requires
him to do, in regard to other interests of the deceased. Upon
the whole, and for the purposes of this motion, I shall consi-
der the extension of the patent, as having been legally granted.
It is argued that the specifications in this patent, are essentially
defective. If this be so, the right asserted by the complainants
must fail.

The specifications must contain reasonable certainty. They
must so describe the parts of a machine as to enable a person,
skilled in the construction of machines, to build one. And
if the patent be for an improvement, the improvement must
be described with the same precision. This description need
not be so clear as to be understood by an individual wholly
unskilled in the structure of machines.

On the 2d day of January, 1843, the administrator dis-

PATENT CASES. 129

Brooks et al. v. Bicknell et al. 3 McLean.

claimed '^ all and any exclusive right, title, property, or inte-
rest, of, in, or to, the application of circular saws for reducing
floor plank, or other materials, to a width," &c., as stated in
the specifications.

To a person unacquainted with the structure and operation
of machinery, the specifications which constitute a part of the
above patent, may not be easily and correctly understood. But
taking them in connection with the drawing by which they
were accompanied, if the affidavits of intelligent machinists
can be relied on, they describe the machine so as to enable a
skilful mechanic to construct it. It is true that several affi-
davits were presented by the defendants, of persons who think
the specifications are defective. Some of the persons are
represented to be mechanics, and well acquainted with the
structure of machinery. But the majority are on the side of
the plaintifis. And in addition to this it would seem, that
the opinions of several of the affiants, from their opportuni-
ties and experience, are entitled to greater weight
than some *of the defendants' witnesses. Judging, [ * 261 ]
however, from the schedule itself, it seems to con-
tain nothing which an intelligent mind, though but little vers-
ed in mechanics, may not fully comprehend. The moving
power of the machine,, as described in the schedule, in some
of its parts are stated in the alternative ; but this creates nei-
ther doubt nor difficulty. The eflfect is the same, whether
produced by one mode or the other. Nor does the patentee
state of what material every part of the machine should be
made ; but this cannot be material. The principle is the
same, whether such part be composed of wood or metal.

In Turner t;. Winter, 1 Term Rep. 606, it is said, ^< the
patent and specification should be liberally construed." And
in 3 Sumn. 374, Mr. Justice Story states it <^ as a clear rule
of law in favor of inventions, and to carry into effect the ob-
vious object of the constitution and law, to give a liberal con-

180 PATENT CASES.

Brooks ct al. 0. BickneU et al. S McLean.

struction to the language of patents, so as to protect and not
destroy the rights of real inventors." The Court, he says,
" will in all cases adopt that interpretation of a specification
which will give the fullest efiect to the nature and extent of
the claim made by the inventor.

In describing the improvement of a machine in use and
well known, it is not necessary to state in detail the structure
of the entire and improved machine. It is only necessary to
describe the improvement, by showing the parts of which it
consists, and the effects which it produces. Such a descrip-
tion in reference to the machine improved is sufficient.

An objection is made, that it does not appear there were
written references to the drawings, which accompanied the
specifications. The act does provide that the applicant for
a patent, <^ shall accompany the whole with drawings and
written references, where the nature of the case admits of
drawings," &c. Now unless these references were necessary
to an understanding of the improvement, according
[ * 262 ] to ^ the authorities above cited, their omission can-
not vitiate the patent. The description of the ma-
chine or improvement, accompanied by a drawing, may be,
in many cases, perfectly understood without references.

It is further contended, that the machine set up by the de-
fendants, does not infringe the patent under which the plain-
tiffs claim. There is a conflict in the affidavits presented by
the parties on this point. The weight of the evidence pro-
duced seems to be with the plaintiffs. But as this question
will be submitted to a jury, either by an action at law or an
issue directed by this Court, it may not be proper to express
a decided opinion on the subject. It may be proper, however,
to remark, that a mere colorable or slight alteration of a ma-
chine, or a change in its proportions, gives no ground for a
patent ; nor can it shelter an individual from the consequences
of an infringement. In such cases the inquiry always is whe-

PATENT CASES. 131

Broolu et al. v. Bicknell et a1. 3 McLean.

I - 1 .r [ "^ ■ ■ ■■ .1- — ■ . — I - ■ — ■■ I .^.^^-^^

ther the principle of the two machines is the same. If the
principle on which the machinery works is the same, and the
effect is similar in both, in contemplation of law the machines
are identical. A change in the position of the operating pow-
ers, or in the thing on which the effect is produced, is of no
importance. Such a modification does not rise to the dignity
of an invention. There must be an essential difference in
the application of the mechanical power, to make the machines
dissimilar.

Making, using, or selling a patented machine, is an infringe-
ment. I Gall. Rep. 429; Whittemore v. Cutter, Phillips on
Pat. 361,371.

Is this a case for an injunction ?

In most cases the Court will not enjoin, until the right of
complainant has been established at law. But where the in-
jury would be irreparable, an injunction will be granted. A
case of waste constitutes an exception to the general rule, and
also the infringement of a patent. This is clearly
*the English rule, and that is the rule of this Court, [ ^263 ]
unless a different one has been adopted. It is in-
sisted that as this is an exception to the general rule in the
English Chancery, that it is not binding on this Court.

The rule of the Supreme Court adopts the mode of pro-
ceeding in the High Court of Chancery in England, in cases
where no special rule has been provided. Now the rule ap-
plicable in England to suits for waste and on patents, is as
applicable here as any other rule. The exception constitutes
the rule.

The complainants state that the defendants have little or
no property, aiid could not pay the damages which might be
recovered against them for an infringement of the patent.
On this ground, as well as on the ground that the complain-
ants' right is clear, an injunction is prayed. For fifteen years,
the claimants, under Woodworth's patent, have enjoyed all

132 PATENT CASES.

Brooks et al. v. Bicknell et al. 3 McLean.

the rights secured by it. This is an important fact^ and it
cannot be disregarded in his application. 6 Veseyi 707 ;
Phillips, 401 ; 4 Wash. C. C. Rep. 584; Livingston t;. Van
Ingen, 9 Johns. Rep. 570; lb. 585; 1 Mad. Ch. Pr. 113;
14 Ves. 131.

The suggestion that the improvement for which Woodworth
received a patent, was not an original invention, seems to be
sustained.

<< If the thing secured by patent had been in use, or had
been described in a public work, anterior to the supposed
discovery, the patent is void, whether the patentee had a
knowledge of the previous use or description or not." Evans
V. Eaton, 1 Peters's Rep. 322. And this rule holds if the
machines are the same in principle, though they may differ
in proportions and form. Woodward t;. Parker et al. 1 Gall.
438.

In Rees' I^ncyclopedia, under the head of ^' Planing Ma-
chines," it appeared that Bentham obtained a patent in Eng-
land, for such a machine in 1791 ; and B^amah,
[ * 264 ] for ^ a different one in 1802. But these machines
were in principle, structure, and effect, essentially
different from Woodworth's. At least my mind has been
brought to this result, from an examination of the evidence
before me.

The injunction heretofore granted in this case will be dis-
solved, on the defendants giving bond and security, within
five days, in the sum of fifteen hundred dollars, to account to
the plaintiffs, &c., should their right be finally established.

Should the defendants fail to give the above security, the
injunction will be continued, on the plaintiffs giving bond and
security in the like sum of fifteen hundred dollars, Sec.

PATENT CASES. 183

Bean v, Smallwood. 8 Story.

Sabiuel Bean v. Thomas Smallwood.

[2 Story, 408. October T. 1843.]

A machine is only patentable, when it is substantially new; bat the applica-
tion of an old machine to a new purpose is not patentable.

In the present case the inrention was held not to be patentable, becanse it was
merely the application of an old apparatus to a new purpose.

Case for infringement of a patent^ doted 30th of March,
1840, for ''anew and useful improvement in the rocking-
chair.'' The specification annexed to the patent stated as
follows: ^'The principal feature of this invention and ifh-
provement consists in making the seat and stool of the chair
in two parts, so that whilst the stool remains stationary, the
seat is made to rock on the top of it; thus doing away with
the long and cumbersome rockers on the common chair, which
occupy a great deal of room, and are very destructive to car-
pets, and which also renders the back of this improved chair
susceptible of being fixed in a reclining position at any angle
to suit the wishes of the sitter, and at the same time rendered
perfectly secure from being thrown off the stool.

^Plea, the general issue, with a notification of[*409]
special matters of defence, (1). That the invention
was not new, but is described in certain books, naming them,
and invented and used before by certain persons, naming
them.

B. R. Curtis, for the defendant, at the trial, cited London
Journal of Arts and Sciences, (of the conjoint series,) vol. 7,
1836, p. 161, describing an easy-chair, patented in 1833.
The chair is in two parts, on curved surfaces ; he also cited
Phillips on PatenU, 102, 106.

VOL. II. — p. c. 12

134 PATENT CASES.

Bean v. Smallwood. 2 Storj.

He also read the specification of Simmons's patent for '' an
improvement in rockers for chairs, cradles, or other things
intended to be rocked," granted in 1819.

SewaUy for the plaintiff, admitfed, that the two first parts
in the claim in the plaintiff's specification of his invention were
similar to those in Simmons's patent ; but he insisted, that the
third part in his claim in the specification was the plaintiff's
invention, and under the Patent Act of 3d March, 1837, ch.
812, sec. 9, he was entitled to maintain his present suit for an
improvement thereof, as the patent was by the act good pro
tanto. He added, that the third claim was new, and if not,
it was an application to a new purpose.

Curtis^ e contrd, contended, that the section applied only
to cases where the patent was broader than the invention, by
mistake, accident, or inadvertence. He further insisted, that
the plaintiff's patent was substantially, in all respects, like
Simmons's patented invention, with unimportant differences
of form. And he called a witness who established the facts ;
and his testimony was admitted by the plaintiff to be unim-
peachable.

Story, J. It seems to me, that, upon the evi-
[*410] dence * admitted by the parties, the plaintiff has no
case. His patent is not (as the plaintiff admits) for
a new combination of old materials, or for a new rocking-
chair, framed in a manner unknown before. If it were, it
seems admitted by the plaintiff, that, upon the evidence, it
would not be maintainable. It would seem open to one of
two objections ; (1). That the defendant does not use pre-
cisely the same combination, but a modification thereof;
that is to say, although he uses the two first specifications of
the claim in the patent, he does not use the third ; but an

PATENT CASES. 135

Bean v, Smallwood. 2 Story.

apparatus to accomplish the same purpose, of a somewhat
diflferent structure. Or, if the last apparatus be substantially
like the plaintiflf's, then that the same apparatus is not new,
nor the combination in any part new. But he contends, and
it seems to roe, that it may perhaps be deemed a fair inter-
pretation of the words, in which the claim is summed up in
the specification, that it is a claim for three distinct and seve-
ral things, and that if either is new, pro tanto, he is entitled
to maintain his suit under the 9th section of the Patent Act
of 1837, ch. 45. Now, the summing up of his claim is as
follows : '^ What I claim as my invention, and desire to se-
cure by letters-patent, consists, (1). In making the seat and
stool of the chair in two parts, so that the seat shall rock on
.,' the top of the stool, instead of having the parts permanently
united with rockers on the legs of the stool as heretofore. (2).
And also the mode of connecting together the seat and stool
by the vertical plates attached to the seat, passing through
the stool, with shoulders projecting from the sides thereof,
which catch against the under side of the stool when the seat
is rocked to or fro. (3). And likewise the manner of reclining
the back of the seat at any angle required, by the lock, plates,
and notches in the hanging plates, which receive them as be-
fore described."

The two first specifications of claim are admitted to be the
same as in Simmons's patent, and therefore are not
new or "^^^ patentable. The third and last speci- [*411]
fication of claim, upon the testimony of Mr. Eddy,
which is admitted to be true, is equally unsupportable. He
says, that the same apparatus, stated in this last claim, has
been long in use, and applied, if not to chairs, at least in
other machines, to purposes of a similar nature. If this be so,
then the invention is not new, but at most is an old invention,
or apparatus, or machinery, applied to a new purpose. Now,
I take it to be clear, that a machine, or apparatus, or other

136 PATENT CASES.

WinaoB v. Boston & PiOTidenoe Railroad Co. 8 Btory.

mechanical contrivance, in order to give the party a claim
to a patent therefor, must in itself be substantially new. If it
is old, and well known, and applied only to a new purpose,
that does not make it patentable. A coffee mill applied for
the first time to grind oats, or corn, or mustard, would not
give a title to a patent for the machine. A cotton gin applied
without alteration to clean hemp, would not give a title to a
patent for the gin as new. A loom to weave cotton yarn
would not, if unaltered, become a patentable machine as a
new invention by first applying it to weave woollen yarn. A
steam-engine, if ordinarily applied to turn a grist mill, would
not entitle a party to a patent to it, if it were first applied by
him to turn the main wheel of a cotton factory. In short, the
machine must be new, not merely the purpose to which it is
applied. A purpose is not patentable; but the machinery
only, if new, by which it is to be accomplished. In other
words, the thing itself which is patented must be new, and
not the mere application of it to a new purpose or object.

Under the circumstances, upon the admissions of the par-
ties, it does not strike me that the action is maintainable.

The plaintiff submitted to a nonsuit.

Ross WiNANS V. Boston and Providence Railroad

Company.

[2 Story, 412. October T. 1843.]

Where the plaintiff, in the specification of his patent, claimed as his invention
" an improvement in the construction of the axles or bearings of railway, or
other wheeled carriagr s," and it appeared, that the improvement, though it

PATENT CASES. 137-

Winans v. Boston & Froyidenco Bailroad Ck). 2 Story.

had never before been applied to railway carriages, was well known as
applied to other carriages ; It was hdd^ that the patent was not good.

Case for infringement of a patent dated the 30th of July,
I83I9 for '^ a new and useful improvement of railway and
other wheeled carriages." Plea, the general issue with special
matters of defence, (1). That the invention was not new.
(2). That the invention was in public use before the patent,
with the consent of the patentee. The specification annexed to
the patent was in substance as follows : '' To all whom it may
concern^ be it known, that I, Ross Winans, have invented an
improvement in the construction of the axles, or bearings, of
railway, or other wheeled carriages, and that the following is
a full and exact description thereof:

<< The axle, with my improved journals, or bearings, may
be made straight, and the wheels placed thereon in the usual
way ; but instead of forming the bearing under the body of
the carriEige, and within the naves, or hubs, of the wheels,
there to sustain the weight of the load, I extend the axles out
at each end, projecting beyond the naves to such a length as
shall enable me to form them into gudgeons. The lengths
and diameters of these gudgeons, I regulate according to the
load they are intended to sustain, and to other circumstances.
In all cases, however, the value of my invention depends upon
the gudgeons having their diameters as small as a due atten-
tion to the strength required will allow. The caus-
ing the ''^ axles to run in boxes, or upon bearings, [ * 413 ]
without the naves, admits of their being made much
smaller than usual, the degree of diminution which I have
found to answer well in practice, will hereafter be stated.
They should be formed of good wrought iron, and case-har-
dened ; or overlaid, or cased with the best steel, and har-
dened, which materially diminishes the extent of bearing sur-
face necessary to enable them to receive and resist the pres-

12*

138 PATENT CASES.

Winans v. Boston & ProTidence Railroad Co. 2 Stoiy.

sure of the load, and their tendency to wear ; they may there-
fore be short, and are consequently strong, when of compara-
tively very small diameter.

^' The tendency to lateral movement is checked, or limited
by forming the end, or point of the axle, or gudgeon, so as to
be met occasionally by the external cap or cover of the gud-
geon box, when lateral pressure occurs.

^' By placing the bearing outside, (as aforesaid,) the diame-
ter of the wheels may be enlarged with more advantage than
formerly, as the axles between the wheels may be made of
any required strength, (to resist the increased stress thrown
on to that part of them by an enlargement of the wheels,)
without affecting the size or strength of the bearing journals.

'^ By the foregoing means, the leverage of the wheels (or
the mechanical advantage with which the moving power acts,
to overcome the resistance to motion) is increased and con-
sequently the friction or resistance to motion in railroad car-
riages, diminished to a greater extent than heretofore.

^^ This improvement in the axles and journals of railway
carriages, was devised and carried into operation on my ex-
perimental railway, and exhibited to various persons in the
early part of the year 1827 ; and it was put into practical
operation, under my direction, on the Baltimore and Ohio,
and on the Liverpool and Manchester Railroads, in the early
part of 1829, in connection with another improvement for the
further diminution of friction, by means of a revolv-
[*414] ing bearing, *or friction wheel, for which other
improvement a patent was granted to me on the
nth of October, 1828.

<< The object of the invention, and a practical demonstration
of its utility having been shown, its application and adaptation
to the different railroad carriages, burdened wagons, locomo-
tive engines, &c., and to the different bearing boxes that may
be preferred for different purposes, (either revolving or com-

PATENT CASES. 139

Winans v. Boston & Proyidence Railroad Co. 2 Story.

mon,) will be evident and easy, to any person acquainted
with the building of railway carriages. But to render it still
more so, the following general directions and proportions are
given, &c.

^^I therefore declare that the improvement, or improve-
ments, above explained and described, in diminishing the
resistance to motion in wheeled carriages to be used on rail-
ways, which I claim as my own invention, is the extending
the axles each way outside of a pair, or pairs, of wheels, far
enough to form external gudgeons to receive the bearing box
of the load body, and diminished as aforesaid with a view to
lessen the resistance of friction, as small as its situation, with
the use of the most favorable metal for wear, will permit.
Thus conveniently increasing the leverage of the wheels, with-
out! mpairing their effective strength or durability."

At the trial it appeared that Winans had obtained a patent
for the invention in England in Oct. 1828, and afterwards on
the 30th of July, 1831, he took the present patent.

It was argued by B. R. CurtiSy for the defendants, that
this was too late ; and Shaw v. Cooper, 7 Peters' R. 292,
320, 322 ; Act of 1 839, ch. 88, sec. 7; and McClurg v. Kings-
land, 1 How. Sup. Ct. R. 202 ; S. C. 17 Peters' R. 228,
were cited. But the main ground was, that the invention
was not new, but had been before applied to other carriages,
although not to railway carriages, before the paten-
tee applied it to * railways. The •patent was not [ * 415 ]
for the application of the improvement to railway
carriages alone, but it was <^ to railway and other wheeled
carriages." Edgeworth on Roads and Carriages, printed in
1817, appendix 2, pages 71, 73, 76; and Dr. Hook's Essay
upon Carriages, printed in 1684, pages 145, 146, were cited
in support of the objection.

140 PATENT CASES.

Winana v. Boston & Frovidence Railroad Co. 2 Story.
; ,

C. G. Loring, for the plaintiflf, argued, that it was the ia-
tention of the plaintiff to claim as his invention the application
of extended axles of wheels to carriages with flanges on rail-
roads ; that the plaintiff claimed this particular combination
as new and it was so. But he did not mean to claim the in-
vention as applicable to all other wheel carriages.

Stort, J. I fear that it is impossible to give this limited
interpretation to the plaintiff's patent. The patent itself is
for <' a new and useful improvement of railway and other
wheeled carriages;" and the specification expressly states,
that the patentee has invented '^ an improvement in the con-
struction of the axles, or bearings, of railway, or other wheeled
carriages," and then he proceeds to give a description thereof.
It is plain from this language that he does not limit his inven-
tion to railway carriages ; but he insists, that it is new as to
other carriages. It is true, that i^ summing up his claim, in
the close of the specification, he seems to use language some-
what more restrictive ; but even there he says, that what he
claims as his invention is, << the extending the axles each way
outside of a pair or pairs of wheels, far enough to form ex-
ternal gudgeons to receive the bearing box of the load body,
and diminished as aforesaid with a view to lessen the resist-
ance of friction, as small as its situation, with the use of the
most favorable metal for wear, will permit ; thus conveniently
increasing the leverage of the wheels without impairing their
effective strength or durability." Now the inven-
[*416] tion, as "instated in this general form, is precisely
what the defendants insist is not new, but was well
known before, as applied, not to railway, but to other car-
riages. If this be true, it seems difficult to perceive how the
present patent can be maintained.

A verdict was thereupon taken pro formd for the defend-

PATENT CASES. 141

Carver v. Braintree Manufactaring Co. 2 Story.

ants, with liberty to move a new trial upon the question of
law. No such motion was made.

Eleazer Carver v. Braintree Mamufacturino Company.

[2 Story, 432. October T. 1843.]

The Patent Act of 18S6, cb. 357, sect. 13, and the Act of 1837, ch. 45, sect. 8,
aathorizing the reissne of a patent, becaoBe of a defectiye or redandant spe-
cification or description, without fraud, or for the purpose of adding thereto
an improrement, do not require the patentee to claim, in his renewed patent,
all things which were claimed in his original patent, bat gives him the pri-
vilege of retaining whatever he deems proper.

Where the plaintiff, in a patent for " a new and useful improvement in the ribs
of the cotton gin," claimed as a part of his invention, the increasing the
space between the upper and lower surface of the rib, either " by making the
ribs thicker at that part, or by a fork, or by any other variation of the parti-
cular form ', It was hddy that the claim was sujficiently accurate as a matter
of law, and that it waa not necessary that he should describe all possible
modes by which the rib might be varied, but only the most important, and
that mere formal variations therefrom would be violations of the patent

Objections, that a patented invention is old ; or that the specification in a pa-
tent does not clearly describe the mode of making the machine ; or that the
original and the renewed patent are not for the same invention ; or that
either were obtained with a fraudulent intent ; all involve matters of fact,
and are for the jury, upon the evidence, to decide.

Where the original patent was for " a new and useful improvement in the ribs
of saw gins for ginning cotton,'' and the renewed patent was for " a new and
useful invention in the manner of forming the ribs of saw gins for
ginning * cotton," and in the renewed patent^was claimed, in addi- [ * 433 ]
tion to the thickness of the rib, the sloping up of it so as to leave
no shoulder ; It was hdd, that the claim in the renewed patent, was not for
two distinct improvements, but for additional parts of the same improve-
ment, and that the same thing was patented in both patents.

Patents are to be interpreted by a consideration of the whole instrument, and
it is to be thereby determined what thing is intended to be patented.

The Statute of Massachusetts of 1821, ch. 28, relating to the individual liabili-
ties of members of manufacturing corporations, is to be construed as a reme-
dial statute, and the phrase " debts contracted," as employed therein, means

142 PATENT CASES.

Canrer o. Braintree Manafactttring Co. 2 Story.

not only debts in the strict sense of the term, bat any liabilities incurred by
the corporation. If the liability be for unliquidated damages arising from
contract or tort, it relates to the time of its origin, and not of its liqui-
dation ; and, therefore, It toas held, that the testimony of Edson, who was a
member of the corporation at the time when the liability asserted in the
present suit arose, must bo rejected, although he had since sold out all his
interest.

Case for infringement of a patent, dated the 16th of No*
vember, 1839, for '* a new and useful improvement in the
ribs of the cotton gin." The present patent was a renewed
patent, granted upon the surrender of the original patent,
dated the 12th of June, 1838, which was cancelled on ac-
count of a defective specification. The specification annexed
to the original patent was as follows, *^ To all whom it may
concern : Be it known that I, Eleazer Carver, of Bridgewater,
in the county of Plymouth, and State of Massachusetts, have
invented a certain improvement in the manner of forming the
ribs of saw gins, for the ginning of cotton, and I do hereby
declare, that the following is a full and exact description
thereof:

*' In the cotton gin, as heretofore known and used, the

fibres of the cotton are drawn by the teeth of circular saws

through a grating formed of a number of parallel bars or

ribs, having spaces between them suflicient to allow the saws

to pass, carrying the fibres of the cotton with them, (which are

then brushed off by a revolving brush,) but not wide enough

to let the seeds and other foreign substances pass

[ * 434 ] through. * Above the saws, the ribs come in close

contact, thus forming a shoulder at the top of the

space between them.

"Various forms have been given to the bars or ribs, with a
view to procure a free passage for the cotton, but the cotton
gin, as heretofore made, has been always subject to the incon-
venience of the grate becoming choked by hard masses of
cotton, and motes, or false seeds, collecting in the upper part .

PATENT Cases. 143

Carrer v. Braintree Manufacturing Co. 2 Stonr.

of the spaces between the ribs, and impeding the action of
the saws, and also preventing the mass of cotton, which is
drawn by the saws up to the top of the spaces, but not drawn
through them, from rolling back freely, so as to pass again
over the saws, as it should do.

'^ My improvement, which I am about to describe, is in-
tended to obviate these dilSiculties, and it' consists in giving a
new form to the ribs composing the grate. Instead of making
the ribs of a bar of iron of equal thickness throughout, so that
the upper and under services shall be parallel, I so form the
. rib that at the part where the saws pass through, carrying the
cotton with them, the space or depth between the upper or
outer surface, and the lower or inner sur&ce, shall be greater
than the thickness of the rib in other parts has heretofore
been, or needs to be, and so great as to be equal to the length
of the fibre of the cotton to be ginned, so that the fibre shall
be kept extended between the ribs for about its full length,
while it is drawn through them by the saws. This will, of
course, require either that the rib should be as thick at that
part as the length of the fibre, or that the rib should be forked
or divided about that part, so that the upper or outer surface
and the under or inner surface shall diverge to that distance
from each other, instead of being parallel, as formerly, when
the rib was made of one bar of uniform thickness. This
under or inner surface then takes a new direction upwards,
and slopes toward the upper or outward surface, until the
two surfaces meet above the periphery of the saw.
* This last described part of the under surface is [ * 435 ]
fastened against the framework of the gin.

'^ The operation of this improvement is, that those fibres of
the cotton, which are so firmly caught by the teeth of the
saws as tcr be disengaged from the mass of the cotton to be
ginned, are drawn out to their full length, and pass clear
through the grate, and are then brushed off by the revolving

144 PATENT CASES.

Carrer v, Braintree ManafictariDg Ck>. 2 Stoiy.

brush, while the fibres that are drawn into the grate, but are
not caught by the teeth of the saws firmly enough to be car-
ried quite through, are disengaged, and pass up to the point
where the under surface meets the upper surface above the
saws, and finding no obstruction there, pass back out of the
grate without choking it, and roll down again with the mass
of the unginned cotton, and are then caught below by the
saws and carried up again, and so on, until all the fibres are
drawn through.

" Having thus described my improved rib, and its advan-
tages, I now claim as my invention, and desire to secure by
letters-patent, the increasing the depth or space between the
upper or outer surface of the rib and the lower or inner sur-
face of it, at the part where the cotton is drawn through the
grate, so that it shall be equal to the length of the fibre of the
cotton to be ginned, (whether this be done by making the
ribs thicker at that part, or by a fork or division of the rib, or
by any other variation of the perpendicular form) ; and I also
claim, as part of the same improvement, the sloping up of the
lower or inner surface of the rib, so as to meet the upper or
outer surface above the saws, leaving, when the rib is inserted
into the frame, no break or shoulder between the two sur-
faces, but a smooth and uninterrupted passage upwards be-
tween the ribs as above described."

The defendant pleaded the general issue, and also filed
special matters of defence.

[ * 436 ] * WiUard PhiUips and Fktchery for the defend-
ants, at the trial made several points of defence,
which, however, are sufficiently referred to in the opinion of
the Court, delivered at the trial, and hereinafter stftted.

Franklin Dexter^ for the plaintifi*, denied the validity of all

PATENT CASES. 145

Carrer v. Braintree MaanflEictitiing Co. 2 Story.

the objections. As the matters of objection were afterwards
fully considered in the arguments for a new trial, they are
here also omitted.

At the trial one Edson, who was a member of the corpora-
tion (the defendants) at the time of the supposed infringe-
menty but had since sold out his interest, was offered as a
witness for the corporation. But upon an objection by the
plaintiff, his testimony was rejected, as being inadmissible, as
he still had an interest in the event of the suit. The Court,
however, ruled out the testimony, heManieri expressing a
desire to reexamine it, if the verdict should be for the plaintiff.

A great deal of evidence was introduced on each side ; but
the questions, on which the cause seemed principally to rest,
were questions of law, and were accordingly argued by the
counsel in the course of the trial.

Stort, J., upon the close of the ailments, said : So far as
the questions of fact are concerned, I shall leave Xhetn for the
consideration of the jury, if upon the whole evidence the
counsel desire it. But the questions of law are those, upon
which I am ready to express my present opinion, subject to
reexamination, if the counsel shall wish any of them to be
more deliberately considered. The first objection is, that the
specification has not sufficiently described the mode of mak-
ing the improvement, or in such full, clear, and exact terms as
to enable a skilful mechanic, skilled in the art or science to
which it appertains, or with which it is most nearly connected,
to make or construct it. This is certainly a matter
mainly of * fact. It is true, that the plaintiff, in [ * 437 ]
his specification, in describing the thickness of the
rib in his machine, declares, that it should be so thick, that
the distance or depth between the upper and the lower sur-
face should be " so great as to be equal to the length of the
fibre to be gmned," which, it is said, is too ambiguous and

VOL. II. — p. c. 13

146 PATENT CASES.

Garrer o. Braintrae MumActuring Co. 2 Story.

indefiaite a description to enable a mechanic to make it, be-
cause it is notorious, that not only the fibres of different kinds
of cotton are of different lengths, long staple, and short sta-
ple, but that the different fibres in the same kind of cotton
ate of unequal lengths. And it is asked, what then is to be
the distance or depth or thickness of the rib ? Whether a
skilful mechanic could from this description make a proper
rib for any particular kind of cotton, is a matter of fact, which
those only, who are acquainted with the structure of cotton
gins, can properly answer. If they could, then the descrip-
tion is suflicient, although it may require some niceties in
adjusting the different thicknesses to the different kinds of
cotton. If they could not, then the specification is obviously
defective. But I should suppose, that the inequalities of the
different fibres of the same kind of cotton would not necessa-
rily present an insurmountable difficulty. It may be, that
the adjustment should be to be made according to the ave-
rage length of the fibres, or varied in some other way. But
this is for a practical mechanic to say, and not for the Court
What I mean, therefore, to say on this point is, that, as a
matter of law, I cannot say, that this description is so ambi-
guous, that the patent is upon its face void. It may be less
perfect and complete, than would be desirable ; but still it
may be sufficient to enable a skilful mechanic to attain the
end. In point of fact, is it not actually attained by the me-
chanics employed by Carver, without the application of any
new inventive power, or experiments ? If so, then the objec-
tion could be answered as a matter of fact or a practical

result.
[ ^ 438 ] * The next objection is, that the patentee has

omitted some things in his renewed patent, which
he claimed in his original patent as a part of his invention,
namely, the knob, the ridge, and the flaring of the lateral
sur&ce of the rib above the saw, and that he claims in his

PATENT CASES. 147

Carrer o. Bndntree Manafmctnriiig Co. 2 Storj.

renewed patent the combination of the thickness and the slope
of the front and back surfaces of the rib* Now, by the 13th
section of the Patent Act of 1836, (ch. 857,) it is provided,
that whenever any patent, which is granted " shall be inopera-
tive or invalid by reason of a defective or insufficient descrip-
tion, or specification, or by reason of the patentee claiming in
his specification as his own invention more than he had or
shall have a right to claim as new, if the error has or shall have
arisen by inadvertency, mistake, or accident, and without any
fraudulent or deceptive intention, it shall be lawful for the
commissioner, upon the surrender to him of such patent, and
the payment of the further sum of fifteen dollars, to cause a
new patent to be issued to the inventor for the same inven-
tion, for the residue of the period then unexpired for which
the original patent was granted, in accordance with the pa-
tentee's corrected description and specification." And it is
afterwards added, that, ^^ whenever the original patentee shall
be desirous of adding the description of any new improve-
ment of the original invention or discovery, which shall have
been invented or discovered by him subsequent to the date of
his patent, he may, like proceedings being had in all respects
as in the case of original applications, and on the payment of
fifteen dollars, as hereinbefore provided, have the same an-
nexed to the original description and specification." The
Act of 1837, (ch. 45, ^ 8,) further provides, ^< that whenever
any application shall be made to the commissioner for any
addition, or a newly discovered improvement, to be made to
an existing patent, or whenever a patent shall be returned for
correction and reissue, the specification annexed to every
such patent shall be subject to revision and restrict
tion, * in the same manner as original applications [ * 439 ]
for patents ; the commissioner shall not add any such
improvement to the patent in the one case, nor grant the re-
issue in the other case, until the applicant shall have entered

148 PATENT CASES.

Carrer o. Braintree Biannfactaring Co. 3 Story.

a disclaimer, or altered his specification of claim, in accord-
ance with the decision of the commissioner." ^

Now, I see nothing in these provisions which upon a re-
issue of a patent requires the patentee to claim all things in
the renewed patent, which were claimed as his original inven-
tion, or part of his invention in his original patent. On the
contrary, if his original patent claimed too much, or if the
commissioner deemed it right to restrict the specification, and
the patentee acquiesced therein, it seems to me, that, in each
case, the renewed patent, if it claimed less than the original,
would be equally valid. A specification may be defective
and unmaintainable under the Patent Act, as well by an ex-
cess of dum, as by a defect in the mode of stating it. How
can the Court in this case judicially know, whether the pa-
tentee left out the knob, and ridge, and flaring of the lateral
surface of the rib, in the renewed patent, because he thought,
that they might have a tendency to mislead the public by in-
troducing what, upon further reflection, he deemed immaterial
or unessential, and that the patent would thus contiun more
than was necessary to produce the described efiect, and be
open to an objection, which might be fatal to his right, if it
was done to deceive the public ? ' Or, how can the Court
judicially know, that the commissioner did not positively
require this very omission ? It is certain, that he might have
given it his sanction. But I incline very strongly to hold a
much broader opinion ; and that is, that an inventor is always

at liberty in a renewed patent to omit a part of his
[ * 440 ] original invention, if he * deems it expedient, and

to retain that part only of his original invention,
which he deems it fit to retain. No harm is done to the public
by giving up a part of what he has actually invented ; for the

1 See Act of 1836, ch. 857, § 7/ See Appendix.
3 Act of 1836, ch. 857, § 15. lb.

PATENT CASES. 149

Carver v, Braintree Mannfactmiiig Co. 2 Stoiy.

public may then use it ; and there is nothing in the policy or
terms of the Patent Act^ which prohibits such a restriction.

The other part of the objection seems to me equally unte-
nable. If the description of the combination of the thickness
and the slope of the front and back surfaces of the rib, were
a part of the plaintiff's original invention, (as the objection
itself supposes,) and were not fully stated in the original spe-
cification, that is exactly such a defect, as the Patent Acts
allow to be remedied. A specification may be defective, not
only in omitting to give a full description of the mode of con-
structing a machine, but also in omitting to describe fully in
the claim the nature, and extent, and character of the inven-
tion itself. Indeed this latter is the common defect, for which
most renewed patents are granted.

Another objection is, that the plaintiff, in his claim, has
stated, that the desired distance or space between the upper
and the lower surfaces of the rib, whether it " be done by
making the ribs thicker at that part, or by a fork or division
of the rib, or by any other variation of the particular form,''
is a part of his invention. It is said that the modes of fork-
ing and dividing are not specified, nor the variations of the
particular form given. This is true ; but then the Patent Act
requires the patentee to specify the several modes, '^ in which
he has contemplated the application of the distinguishing
principle or character of his invention."^ Now, we all know
that a mere difference of form will not entitle a party to a
patent. What the patentee here says in effect is : One im-
portant part of my invention consists in the space
or distance between the * upper and lower surfaces [ * 441 ]
of the ribs, and whether this is obtained by making
the ribs solid, or by a fork, or division of the rib, or by any

^ Act of 1886, cH. 857, § 6. See Appendix.
13*

150 PATENT CASES.

Carrer v, Braintree Maoiifactaring Co. 2 Story.

Other Yariation of the form of the rib, I equally claim it as my
invention. The end to be obtained is the space or distance
equal to the fibre of the cotton to be ginned; and you may
make the rib solid, or fork it, or divide it, or vary its form in
any other manner, so as that the purpose is obtained. The
patentee, therefore, guards himself against the suggestion,
that his invention consists solely in a particular form, solid,
or forked, or divided; and claims the invention to be his,
whether the exact form is preserved, or not, if its proportions
are kept so as to be adapted to the fibre of the cotton which
is to be ginned. In all this I can perceive no want of accu-
racy or sufiiciency of description, at least so far as it is a mat-
ter of law, nor any claim, broader than the invention, which
is either so vague or so comprehensive, as, in point of law, not

be patentable. It was not incumbent upon the patentee
to suggest all the possible modes by which the rib might be
varied, and yet the efiect be produced. It is sufficient for him
to state the modes which he contemplates to be best, and to
add, that other mere formal variations from these modes he
does not deem to be unprotected by his patent.

Another objection is, that the patentee has not sufficiently
described the slopes between his ribs, so as to make the de-
scription intelligible, or to enable a skilful mechanic to con-
struct them. Whether this be so, or not, is not a matter of
law upon the face of the patent, but a matter of fact for the
jury, if there be any serious doubt about it.

Some other objections have been taken, such as, that the
invention is not new, that the original patent and the renewed
patent are not identical for the same invention, and that the
patent was obtained with a fraudulent intent, for the purpose
of covering the invention of Copeland, which has been pa-
tented and sustained in this Court against the claim
[ *442 ] of the * plaintifi*. But these all involve matters of
fact, which belong to the province of the jury, upon

PATENT CASES. 151

Carver v. Braintree Manafactoring Co. 2 Story.

the evidence, with which I do not intermeddle, and upon
which the parties are at liberty to take the opinion of the
jury.

I have thus stated summarily, according to the suggestions
of the counsel for the defendants, my own views of the pa-
tent ; and of the objections taken thereto. I have stated
them in my own language ; and with a view to make my own
meaning clear. I cannot admit, that I am bpund to respond
to the very terms, in which the objections are taken, or to
give instruction to the jury, affirming or denying them, with-
out qualification or explanation. If the counsel for the de-
fendants wish for a more deliberate examination of the points
of law, after the trial is over, they can be brought again before
this Court; upon a motion for a new trial i or, if a verdict is
given to the plaintiflf to an amount, which will justify an ap-
peal, the opinion of the Supreme Court may be taken upon
the matters of law.

Upon these statements of the Court, the defendant's coun-
sel elected not to go to the jury, and a verdict was by consent
taken for the plaintiff, for $960.50, subject to the opinion of
the Court upon the matters of law ; and also to the ruling of
the Court as to the inadmissibility of one Edson, who was, at
the time of the supposed infringement, a member of the cor-
poration, and had since sold out his interest ; and whom the
Court rejected as a witness for the corporation.

In the trial of this case the following rulings were excepted
to by the defendants :

The defendants understand the following points to have
been ruled by the Court, namely, '^ That the describing apd
clcdming the increasing of the distance from where the cotton
goes in, to where it comes out from between the
grates, to be equal * to the length of the fibres of [ * 443 ]

152 PATENT CASES.

Carver v. Braintree Manufactnring Co. 2 Story.

cotton to be ginned) is a sufficiently accurate, specific, and
definite description and claim.

<< That the patentee had a right to drop the things patented
in his original patent, namely, the knob, the ridge, and the
flaring of the lateral surface of the rib above the saw, and pa-
tent in his renewal the combination of the thickness and the
slope of the front and back surfaces of the rib.

^^ That the claiming of the increasing of the distance from
where the cotton enters to where it comes out from between
the ribs, by forking, division, or any variation of the particular
form, is not claiming too much.

<' That the patentee had a right to claim, and patent, the
knob or pfojection F, in his renewal, of the same width as the
rib, notwithstanding he had described and patented the same
in his original as narrower than the rib.

" That the patentee was not bound to specify the modes of
forking, and division, and variations of the particular form
claimed and patented by him.

'' That the original was invalid and inoperative, within the
provisions of the Patent Law for a renewal.

" That the patentee, by specifying the distance, which the
cotton is carried between the ribs, and not claiming the same
as an element of his patent, did not thereby abandon the
same.

<' That the patentee, by distance, which the cotton was so
carried to be equal to the ^^fuU" length of the fibre in the
original, was not thereby precluded from claiming and patent-
ing that distance, caused by thickness of the rib or otherwise,
equal to the average length of the fibres on one seed, in his
renewal.

<<That the patent describes, and claims with sufficient
clearness, and exactness, a slope between the ribs.

'^ That the specification states sufficient elements
[ * 444 ] for a * patent for a combination, and adequately
specifies, points out, and claims a combination.

PATENT CASES. 153

Carver v. Braintree Mannfactaring Co. 2 Storj.

<< That John Edson was interested in the event of the suit,
and by reason of such interest, was incompetent as a witness.

^' It was, as the counsel for the defendants understood the
case, established by the testimony, and not disputed, that the
thickness of the grate, or distance that the cotton passed be-
tween the grates, and the obliquity or slope of the shoulder,
as specified by the plaintiff, were neither of them new."

PhiUips and Fletcher^ for the defendant, now moved for a
new trial.

Franklin Dexter, for the plaintiff.

Stort, J. To many of the objections, stated in the mo-
tion for a new trial, to the supposed rulings of the Court, a
very brief answer may be given. In the first place, I cannot
admit, that they are in terms the actual rulings of the Court,
upon the points in controversy at the trial ; and since they
have been furnished to me, I have drawn out at lai^ the
views, which I then su^ested upon the points in controversy
at the trial ; so that my actual meaning should be accurately
understood. Upon further reflection, I do not feel it neces-
sary to add to the views there suggested. They were as fol-
lows: [Here the judge recapitulated the remarks already cited
as made at the trial.] I see no reason to be dissatisfied with
what was then said ; and if the observations then made were
correct, it seems to me, that they dispose of the principal ob-
jections, at least, so -far as my own judgment is concerned.
They might be elaborated ; but they contain the substance of
all that I desire to say on these points.

One point is, however, now brought out upon the argu-
ment for a new trial, which was not so fully sugr
gested at the * trial, and, indeed, which arose so [ * 445 ]
incidentally, that it was scarcely a matter calling for

154 PATENT CASES.

Canrer v, Braintree KanufSACturing Co. 2 Story.

any very positive expression of the opinion of the Court. It
is now said, that the plaintiff's claim is, in fi^ct, for a new
combination, a combination of a rib of a particalar thickness,
with the particular sloping up of his rib, as described in the
specification ; and that it is not the thing which is patented.
It appears to me, that there is more of refinement in the form
of this objection, than there is of difiiculty in resolving it.
The renewed patent is, in terms, a patent for " a new and
useful improvement in the ribs of saw gins for ginning cot-
ton." The original patent is substantially like it in the
descriptive words. It is for " a new and useful improvement
in the manner of forming the ribs of saw gins for ginning
cotton." The language of the specification annexed to the
renewed patent is, for " an improvement in the manner of
forming the ribs of saw gins for ginning cotton." So that in
substance we may clearly see, that the same improvement is
designed to be included in the descriptive words. In the
summing up of his claim in this last specification the patentee
says : ^' I now claim as ray invention, and desire to secure by
letters-patent, the increasing the depth or space between the
upper or outer surface of the rib, and the lower or inner sur-
face of it, at the part where the cotton is drawn through the
grate, so that it shall be equal to the length of the fibre of the
cotton to be ginned (whether this is done by making the ribs
thicker in that part, or by a fork, or division, or by any other
variation of the particular form) ; and I also claim as a part
of the same improvement the sloping up of the lower or inner
surface of the rib, so as to meet the upper or outer surface
above the saws, leaving, when the rib is inserted into the
frame, no break, or shoulder between the two surfaces, but a
smooth and uninterrupted passage upwards between the ribs,
as above described." The drawings annexed to the specifi-
cation are designed to make the description more
[ * 446 ] * palpable and clear. And it is not without signifi-

PATENT CASES. 155

Carver v. Braiatree Manufiu^nring Co. 2 Story.

cance in the case to remark that, as the patent is for an
improvement upon the common cotton gins, it presup-
poses, on the part of those interested in the matter, a full
knowledge of the machinery and structure of the common
gins. Now, to me it is perfectly clear, that the present pa-
tent is founded upon a claim for one entire thing, that is, for
an improved rib, or a specified improvement upon the com-
mon rib of cotton gins. It is not a claim for two distinct and
independent improvements, each susceptible of a distinct
operation, or each claimed as a distinct invention ; but both
are claimed as parts and parcels of the same improvement,
and necessary thereto. I do not say, whether each of the
specified things, going to make up the entire improvement,
might not have been separately claimed as several inventions.
That is not a necessary point in the present case. What I
mean to say is, that they are not so summed up in the claim ;
but they are summed up as making an entirety. They go to
make up the improved rib, which is patented. That rib is
the thing claimed, and not the thickness or depth or space of
the fib alone, or the sloping up of the surfaces thereof alone.
Both are claimed as parts of the same improvement, but
neither alone as constituting it. I see no objection to its
being called a combination of particular forms and arradge-
mentB of structure to complete the improved rib. In a just
sense, that is a combination which requires different things or
different contrivances or different arrangements to be brought
together, to accomplish the given end. But it is far from
following from this, that the combination is not and may not
be treated as an entirety.

There is no magic in words ; and above all, in patents, the
Court looks through the whole patent and specification, in
order to ascertain what the thing claimed and patented is ;
whether it is for an entirety, or for various distinct improve-
ments, capable of a distinct operation and independent

156 PATENT CASES.

Carrer v. Braintree Mana&ctiiriDg Co. 2 Story.

[ * 447 ] use * in the same machiney or for both ; or
whether it is for a combination of two or more
things in a particular machine, to produce a given result, or
for a simple or single improvement in a particular machine ;
or whether it is for any one or more of them. There is no
artificial or universal rule of interpretation of such instrument
beyond that which common sense furnishes, which is to con-
strue the instrument as a whole, and to extract from the
descriptive words and the claim, what the invention is, which
is intended to be patented, and how far it is capable of exact
ascertainment, and how far it is maintainable in point of law,
supposing it clear from all ambiguity.

Now, looking at the present patent, it seems to me impos-
sible to entertain any real doubt as to its true interpretation.
It is, as the words of the claim state it to be, for a single
thing — "an improved rib." The improvement is upon the
existing rib in the cotton gin, and consists in two things,
neither of which (as has been already suggested) is claimed
separately, but both together, as constituting one conjoint
improvement. It appears to me, that the claim sufficiently
expresses the real nature, extent, and character of the im-
provement, and is in perfect compliance with the 6th section
of the Patent Act of 1836, ch. 357. I should not have
thought it necessary to consider this objection so far, if it had
not been for the zeal and ingenuity with which it has been
pressed upon the Court Call the improvement an entirety
or a combination, as we may please, it is still a patent for
" an improved rib," and nothing more*

The remaining objection is to the rejection of the testimony
of Edson. And here it is^ that I have entertained some
doubt, upon which I was desirous of hearing the further argu-
ment which has now been had. The defendants were created
a corporation by the Statute of Massachusetts of the 14th of
June, 1823, and were, of course, made subject to all the lia-

PATENT CASES. 157

Canrer v. Braintree Manafaetnring Co. S Story.

bilities and requirements of the general statute of
1821, (ch. 28,) ^ respecting Uie liabilities of manu- [ * 448 ]
facturing corporations. That statute provides '^ that
every person, who shall become a member of any manufac-
turing corporation, which may be hereafter established in this
Commonwealth, shall be liable in his individual capacity for
all debts contracted during the time of his continuing a mem*
ber of such corporation." The question turns, therefore,
upon the meaning of the words '^ debts contracted," in the
statute. Do they mean literally and strictly such debts as are
due and payable in money, ex contractu^ by the positive or
implied engagements of the corporation, and resolve them-
selves into liquidated or determinate sums of money, due as
debts,^ or do they extend to all legal liabilities incurred by
the corporation, and which, when fixed by ia judgment, or
award, or otherwise, are debts of the corporation ? And if
the latter be the true meaning, then, does the statute liability
exist only from the time when it becomes an ascertaiped debt
of the corporation, or does it relate back to the origin of the
liability, and bind the corporators from that time ?

If the words ^Mebts contracted," in the statute, are to
receive the limited construction, that they are applicable only
to debts in the strict sense of the term, that is, contracts of
the party for the payment of money, and nothing else, it is
obvious, that the purposes of the statute, which although, in
some sense, it may be deemed penal, is also in another sense
remedial, would be comparative of little value. Suppose the
case of a contract by the corporation to do work, or to manu*
facture goods of a particular quality or character, or to furnish
materials, or to buy cotton or W09I undelivered, or to build
houses, or to employ workmen ; and the contract should be

1 See 2 Black. Comm. 464; 8 Blaek. Comm. 154.

VOL. II. P. €• 14

158 PATENT CASES.

Canrer v. Braintree MannfActaring Co. 2 Storj.

entirely unperformed, and broken, and refused to be per-
formed, so that the right of the other party would
[ * 449 ] be, not to money, but to unliquidated * damages
for the non-performance or refusal to perform ; if
these, which are by no means uncommon contracts, should be
without the purview of the statute, it would have a very
narrow and inadequate range and operation. Yet such cases
.sound merely in damages. Suppose a manufacturing cor-
poration to obstruct its neighbor's mill-privilege, or stop his
mill works, by back flowage, if such acts be not within the
protection of the statute, we see, at once, that an insolvent
corporation might do irreparable mischief without any just
redress to the other party. Suppose such an insolvent cor-
poration should unlawfully, under an unfounded claim of
righl, convert 100 or 1000 bales of cotton belonging to a third
person, we see, that the mischief could be redressed only by
an action of trover for unliquidated damages ; and if the indi-
vidual corporators were not liable therefor, after an unsatis-
fied judgment, the statute would be little more than a delusion.
If, on the other hand, we should construe the statute broadly
as a remedial statute, and give to the word '^ debts," a mean-
ing, not unusual, as equivalent to ^' dues," and to the word
<^ contracted," a meaning, which, though more remote, is still
legitimate, as equivalent to ^^ incurred;" so that the phrase,
^^ debts contracted," in this sense would be equivalent to
'^ dues owing," or ^^ liabilities incurred," the statute would
attain all the objects for which it seems designed. The Su-
preme Court of Massachusetts, in the Mill-Dam foundry v.
Hovey, (21 Pick. 455), held, under the Statute of 1829,
(ch. 53, <^ 6,) which mak^s the stockholders liable for the
debts of the corporation, that the term ^^ debts " included a
claim for unliquidated damages. That was a case arising ex
contractu; but the language certainly extends the term
'^ debts" beyond its close and literal meaning. And if it

PATENT CASES. 159

Carver v. Braintree Manufacturing Co. 2 Storj.

covers cases of unliquidated damages, ex contractu^ it is diffi-
cult to say, why it should %top there, and n<|t go further and
cover cases of unliquidated damages arising from
torts to property. In each case there is * no debt [ * 450 ]
until the damages are ascertained and liquidated ;
and then the debt seems to relate back to its origin. Black-
stone sfiys, '^ a debt of record is a sum which appears to be
due by the evidence of a court of record : thus when any,
spelific sum is adjudged to be due from the defendant to thd
plaintiff in an action or suit at law, this is a contract of the
highest nature, being established by the^ sentence of a court
of judicature.''^ Here Blackstone manifestly included, all
sorts of actions or suits, where the judgment is for a sum
certain, whatever may be its nature or origin.^
^ I agree that it is no part of the duty or functions of courts
of justice, to supply the deficiencies of legislation, or to cor-
rect mischiefs which they have left unprovided for. That is
not the question here. But the question is, whether, if the
words of a statute admit of two interpretations, one of which
makes the legislation incomplete for its apparent object, and
the other of which will cover and redress all the mischiefs,
that should be adopted, in a statute confessedly remedial,
which is the most narrow, rather than that which is the most
comprehensive, for the reason only, that the latter will create
an obligation or duty, beyond what is imposed by the com-
mon law ?

It seems clear, that, in common parlance, as well as in
law, the term is in an enlarged sense sometimes used to de-
note any kind of a just demand.^ And in the Roman law it

1 2 Black. Comm. 464 ; 8 Black. Comm. 160.

3 2 Black. Comm. 464; 3 Black. Comm. 160, 161; Com. Dig. Debt,
A. 2.

9 See Commonwealth v. Keeper of Philadelphia Prison (4 Sei^g. & R.
506) ; Gray v. Bennett (8 Metcatf, B. 52^, 526).

160 PATENT CASES.

Carver v. Braintree Mannftctniiiig Co. 2 Story.

had somietimeB the like enlaiged signification. Sed utrum
ex ddicto an ex contractu Debitor eii, nihil refertf says the
Digest.!*

Upon this subject I confess that with all the
[ * 451 ] lights which * have been thrown upon the question
by the able arguments at the bar^ I am not without
some lurking doubts. But having reflected much upon the
subject, and being in the same predicament, which Lord El-
don is said to have suggested as having sometimes occufoed
to himself, that he ielt doubts, but was unable to solve them
to his own entire sa^^faction, I have at length come to the
conclusion that the rejection of the witness as an interested
witness was right I follow out the doctrine of the case of
the Mill-Dam Foundry v. Hovey (21 Pick. R. 455), which
as far as it goes, disclaims the interpretation of the word,
<^ debt," as limited to contracts for the payment of determin-
ate sums of money. Passing that line, it does not seem to
me easy to say, that if cases of unliquidated damages may be
treated as debts, because they end in the ascertainment of a
fixed sum of money, that we are at liberty to say, that the
doctrine is not equally applicable to all cases of unliquidated
damages, whether arising ex contractu or ex delido. If ulti-
mately it ends in a debt, as a' judgment for damages does,
that case asserts, that its character as a debt relates back to
its origin. Besides, it seems to me upon principle to be rea-
sonable, if not absolutely justified by authority, to hold, that
if the transaction occurs while a person is a member of the
corporation, and he would, if he remained a member, be
liable for the ultimate debt adjudged, it may well be treated
as an inchoate debt consummated by the judgment. Since
the argument was had, my attention has been called to the

i Dig. Lib. 5, tit 3, 1. 14; Fotiiier, Fluid. Lib. 50, tit 16, n. 69.

PATENT CASES. 161

BrookjB V. Bjam et al. 2 Story.

case of Gray v. Bennett (3 Metcalf's R. 522, 530, 531),
which, in several respects; confirms the reasoning, which I
had previously adopted, in relation to the meaning of the
word '^ debt/' and the construction which it ought to receive
in a remedial statute. If I Had seen that case at an earlier
period, it would have somewhat abridged my own researches ^
on the same subject.

The result is, that the motion for a new trial is overruled,,
and judgment must pass for the plaintiff.

William Baoodcs v. Ezekiel Byam and Others.

[2 Story, 525. October T. 1843.]

A patentee of friction matches, by a deed under seal, undertook as foUows :
** to grant, bargain, sell, conyey, assign, and transfer to B, his executors,
administrators, and cusigns^ the right and priyilege, hereinafter mentioned,
of making, using, and selling the friction matches," patented, and to have
and to hold ^ the right and pririlege of manufacturing the said matches, and
to employ in and about the some six permmsj and no more, and to rend the said
matches in any part of the United States." 2t teas hdd, that this was a
license or anUioritj from the patentee, and need not be recorded in the Pa-
tent Office, under the Patent Act of 1836, ch. 857, s. 11.

A license need not be recorded in the Patent Office, unless there be some posi-
tiye proyision of the Patent Act, which renders it an indispensable prerequi-
site to its validity.

The recording within three months, according to the statute, is merely direc-
tory ; and any subsequent recording of an assignment will be suffident to
pass the title to the assignee, except as to intermediate bond Jide purchasers,
without notice.

The Patent Act of 1836, ch. 357, s. 11, provides for the recording of three kinds
of assignments, and of no others ; first, an assignment of the whole
* patent ; secondly, an assignment of any undivided part thereof; [*526 ]
and, thirdly, a grant or conveyance of the exclusive right under the
patent within any specified part of the United States.

It woi hdd, that the right granted by the above deed was a license or authority,

14 •

162 PATENT CASES.

BrookB o. Byam et al. 2 Story.

ocmpled with an interest in the execation, to the gnntee and fix persons to
be employed by him in making matches ; that the right was an entirety, in-
capable of being apportioned or divided among different persons ; that, there-
for«, an assignment by B of a right to make as many matches as one person
could roll np, was void.

Quare, if the license is not such a personal prinlcge, that the intirety cannot
be assigned, notwithstanding it was given to B and Ats atngtu.

The general mle of the common law is, that contracts are not apportiottable ;
and this mle seems oidinaiily, though not nnivenally tnie, where the appor-
tionment is by the act of the par^, and not by mere operation of law; or
where the contract is only in part performed, and is not in its own nature

severable.
CJucere, if by the maritime law the contract in the case of Cutter v. Powell, 6 T.

R. 820, was not divisible.
No apportionment or division of a license or privilege can be made, if it bo

contrary to the true intent of the parties thereto.
C^uere, if an owner grant to A the privilege of cutting timber off his land, widi

the assistance of four men employed by himj can A sell the license and right

of employment to the extent of one man's share ?
An authority to A, cannot be aligned or executed by B. A fortiori^ it is not

apportionable, so that a part may be executed by B, and a part by C, and a

part by D, and the residue by A.

Bill in equity for an injunction and for relief. This is the
same case which has already been before the Court on an in-
terlocutory motion {ante, 1 Story R. 296.) It also relates to
the same patent which formed the subject of inquiry in Ryan
[Byam] t^. Goodwin (antey 3 Sumner R. 514.)

The bill states that one Alonzo D. PhilKps d>taiQed letters-
patent for the making of friction matches ; that he sold six
rights therein, that is, the right to employ six persons at the
same time, in the manufacture of the said matches, to one
John Brown ; and that Brown sold one such right to the plain-
tiff; but that the deeds of conveyance, both to Brown and the
plaintiff, were not recorded in the Patent Office* It also states
that the defendants, claiming to be the sole assignees
[ • 527 ] of Phillips, * by i deed of conveyance, bearing date
July 20th, 1838, from him to Byam, and from Byam
to the other defendants, but of later date than the deed to the

PATENT CASES. 163

Brookfl V. Byftin et al. 2 Story.

plaintiff, had commenced a luit against him, in the Circuit
Court of the United States, for the district of Massachusetts,
for an alleged invasion of their said right ; the plaintiff aver-
ring that he has done nothing therein not granted to him by
the deeds from Phillips to Brown, and from Brown to him*

The bill further alleged, that at the time of the assignment
from Phillips to Byaro, and before delivery of the deed, the
said Byam and the other defendants knew, or had good
cause to know, of the said conveyances from Phillips to Brown,
and from Brown to the plaintiff.

Evidence was taken tending to show knowledge on the
part of the defendants, as alleged in the bill ; but the case
was argued on other grounds.

The following are the conveyances from Phillips to Brown,
and frdm Brown to Brooks, the plaintiff:

<^Copy of Assignment from John Brown to William
Brooks. An agreement made this eighteenth day of Sep-
tember, A. D. 1837, by and between John Brown, of Fitch-
burg, of the one part, and William Brooks, of Ashburnham,
of the other part Witnesseth —

<< That the said Brown, in consideration hereinafter men-
tioned, agrees to sell and convey unto the said Brooks a right
of manufacturing friction matches according to letters-patent
granted to Phillips and Chapin of Springfield, in said town of
Ashburnham, to the amount of one righiy embracing one per-
son only so denominated in as full and ample a manner to the
extension of the said one right, as the original patentee. And
the said Brown further agrees to go to Ashburnham and as-
sist the said Brooks in learning the art and mystery of manu-
flicturing said friction matches for the term of two days, and
also to furnish from his, the said Brown's establish-
ment in * Fitchburg, one girl, adiuainted with said [ * 528 ]
manufactory, to instruct other girls in said Brooks's
€mpbyraent in the said art and mystery of folding and binding

164 PATENT CASES.

Brookfl V. Byam et aL 2 Storj.

up said matches, for the term of two weeks. Also the said
Brown further agrees with said Brooks, not to sell any right
of manufacturing said friction matches, or of vending the
same to any person living or intending to manufacture or vend
s^d matches within forty miles of said Ashburnham.

<^And the said Brooks, on his part, agrees with said
Brown, upon condition that the said Brown keeps and truly
observes all and each of his agreements aforesaid, to pay him,
the said Brown, the sum of fifty dollars in six months from
this date.

<< And it is mutually agreed between the parties, that if it
should turn out, upon legal investigation, which is now in
progress, that said Phillips's and Chapin's patent-right is in-
valid and of no effect in law, then said Brooks is not to pay
said Brown any part of the said sum of fifty dollars, but only
the reasonable expenses for the services of the said Brown,
and the girl, for the term aforesaid*

" John Brown.
^^ William Brooks*
" Witness,*

^< Edmund SAiq>ERS0N.

<< Joseph Meriam.

« September ( ), 1837.
'^ Renewed the said Brooks's note for the sum oC twenty-
five dollars to this agreement.

<< Patent Office. — Received and recorded. Liber D. of
Transfers of Patent-Rights, page 96. July 15th, 1839.

^^ Henrt L. Ellsworth,

<< Commissioner of Patents.'' •

" Copy of Assignment of "Phillips and Brown. — Know all

men by these presents, that I, Alonzo D. Phillips

[*529]of Springfield, "^in the* County of Hampden and

PATENT CASES. 165

Brooki V. Bjam at al. 2 Story.

Commonwealth of Massachusetts, in considerati n of three
hundred dollars to me paid by John Brown of Warren, in
the County of Merrimac and State of New Hampshire, the re-
ceipt whereof I do hereby acknowledge, have granted, bar-
gained, sold, and conveyed, and do by these presents for my-
self, my executors and administrators, grant, bargain, sell, con-
vey, assign, and transfer to him the said Brown, his executors,
administrators, and assigns, the right and privilege hereinafter
mentioned, of making, using, and selling the ' friction match-
es,' an invention of the said Phillips, and patented to him by
letters-patent of the United States, bearing date October 24,
1836, for the term of fourteen years. To have and to hold to
him the said Brown, his executors, administrators, and assigns,
as fully as I can or may, by virtue of said letters-patent, the
right and privilege of manufacturing the said matches, and
to employ in and ab6ut the same six persons and no more,
and to vend said matches in any part of the United States*
And I do covenant and agree with the said Brown, that I
have full power and lawful authority to convey the said right
and privilege, and will warrant and defend the same, fof the
purposes aforesaid. Provided, however, that nothing herein
contained shall prevent or restrict me from making and vend-
ing the same or of selling and conveying similar rights and privi-
leges to others. Provided also, that the said Brown shall not
manufacture the said matches in any place' within forty miles
of Methuen.

^< In witness whereof I have hereunto set my hand and
seal this 2d day of January, A. D. 1827.

'' Alonzo D. Phillips. [L. S.]

<' Signed, sealed and delivered, in presence of
^^ Rhodolphus Kinslt.
'^ Artema Rogers."

« • Hampden, ss. January'2d. A. D. 1836.— Per- [ * 530 ]

166 PATENT CASES.

Brooks V. Bjam et al. 2 Story.

sonally appeared the above Alonzo D. Phillips, and acknow-*
ledged the foregoing instrument to be his free act and deed.

^* Before me, R. E. Bemis, Justice of the Peace.

<< Patent OfGce. — Received and recorded. Liber D. of
Transfers of Patent-Rights, page 89. July 15, 1839.

** Henkt L. Ellsworth,

" Com.missioner of Patents."

It will be observed that these were not recorded until some
time subsequent to the conveyance to Byam.

The cause being set down for a hearing upon the bill, an-
swers, and evidence in the cause, was argued by C. Sumner
and GreenUafy for the plaintiff, and by E. Smith and Dexter,
for the defendants. '

The first question that was presented, was whether it was
requisite to the validity of the deeds from Phillips to Brown,
and from Brown to Phillips, that they should be recorded in
the Patent OfGce.

Sumner, for the plaintiffs, argued, that recording is not re-
quired by the common law, or any general principles of la^.
It is of Statute origin ; and we are, therefore, to look to the
legislation on the subject of patents, to ascertain if there be
any requisition applicable to these deeds. He then reviewed
all the Patent Laws of the United States, those bbsolete, as
well as those in force, to show that the recording of a mere
license under a patent, had never been required.

Dexter, for the defendants, said he should not contend that
it was necessary that the license assigned by the patentee,
Phillips to Brown, or by Brown to Brooks, should be recorded

PATENT CASES. 167

> _ ■ ■■ _■ _ ■■ - .

Brooks V. Bjam et al. 2 Story.

in the Patent Office. But he argued^ that the assignment by
Brown to Brooks was utterly void, because the
license to * Brooks by the patentee was an entirety, [ * 531 ]
and incapable of being divided. It- was transmissi-
ble, but not apportionable.

The Court then requested Sumner and OreehUaf to con-
fine their argument to this last point.

The argument for the plaintiff was as follows : The ancient
rule of the common law was, that a contract could not be ap-
portioned. The reason of this was expressed by Holt, C. J.,
in Hawkins v. Cardell (1 Salk« 65,) where he said, "where
a man's contract has subjected him only to one action, it can-
. not be divided^ so as to subject him to tu)o.^^ Finch says,
<^ the duty growing upon a contract cannot be apportioned.^^ ^
The rule seems to 4iave been of the same class with the rule
prohibiting the assignment of a chose of action ; and also pro-
hibiting maintenance. Both of these^ in various ways, have lost
much of their original stringency. Choses in action, through
the intervention of equity, are now assignable ; and the com-
missioners for the reform of the criminal law in England, in
their seventh report, recently offered, class maintenance vnnong
the offences, " the policy of retaining which is at least doubt-
ful."— Law Magazine, No. 61, p. 3. The sanie policy,
which has gradually restrained the ancient rules in the two
last cases, would bear in restraint of the rule against the ap-
portionment of a contract.

Bat even in the earliest times this rule was very much re-
strainedf or rather, received a very limited application.

1 See Finch's Law, book IL cap. 18.

168 PATENT CASEa

BrookB V. Byam et aL 2 Storj.

Let U8 consider first the cases to which the rule was ap-
plied.

Apportionment did not take place in the following cases :
(1.) Debt. Brooke^ Abr. Apportionment, pL 17 ; 3 Viner,
Abr. Appt. A. ^ 7. (3.) Cantrad. 3 Viner,
[*532] Appt. ^11. *(3.) Obligation. 3 Viner, Appt.
^ lO* These three instances are only expressions
of the rule we are considering. (4.) Jtent^charge. 3 Viner,
Appt. $ 1. (5.) RetU'Seckl 3 Viner, Appt. § 2. The last two
instances are where there was an obligation, debt, or contract,
so that in principle they are like the others. (6.) A Condi*
tion cannot be apportioned except by act of law. 3 Viner,
Appt. § 17. (7.) A Bdief. 3 Viner, Appt. ^ 18. (8.) An
Assent. 3 Viner, Appt. <^ 5. Both of these last are techni-
cal, and applicable the first to feuds, and the second to attorn-
ments. (9.) An Authority (as of a sheriff to his undersherifiT
not to meddle with executions beyond such a sum,) cannot
be apportioned. Norton t^. Simms (Hobart, 13); 3^iner,
Appt. <^ 25. This case might be extended to all <^ces,
which implied a personal confidence.

Let us now consider the cases where apportionment has
been allowed. And here we remark one element common to
these cases, namely, that wherever the right in question is in
the nature of property , in contradistinction to a mere chose in
action, it may be apportioned.

1. Common appurtenant to land for cattle, levant, and couch-
ant, by grant shall be apportioned, if part of the land is grant-
ed over to another. Danver's Abr. p. 504. This principle
was established in a case in Hobart's Rep. 235 a. Where it
was adjudged, that,where one had a common appurtenant to
ten acres of land, &.c., and sold part of it, that the common
should be apportioned, and every one should have com-
mon for his beasts, levant and couchant, upon his part ; for

PATENT CASES. 169

Brooks V. Byam et al. 2 Storj.

these are things entire in several degrees ; save that it cannot
be divided by any act of the parties, as warranty, conditions,
and such other, which yet by act in law are divided. But the
case of common is not so strict an entirety ; and the mischief
of generality of the case requires an extension for the general
good.

* Another instance where common was appor- [ * 533 ]
tioned is in Danver's Abridgt. Apportionment B. ^
19 : '* If a man prescribes to have common for two yard-lands
for four beasts f four horses, and sixty sheep, &c., and after
. he leases for years one of the yard-lands, the lessee shall have
common, pro ratdJ* The principle of the apportionment
in this case seems like that which should govern the license
from Brown to Brooks, to exercise a right to the extefnt of
what one girl could roll up. The right to the whole common
for the two yard-lands was not conveyed, but only such a
right as was attached to one yard-land.

Another instance, which is in the nature of common, is in
3 Yiner's Abr. Apportionment, A. <^ 22: ^^ Fotd-course ap-
purtenant to a manor for 300 sheep iii 70 acres, &c., may be
well divided,*^ &c.

Another instance in Danvers, Abr. Appt. B. ^ 18 : ^^If a
man, seised of 60 acres of land, prescribes to have common
in other land for all his cattle, levant and couchant thereupon,
and he makes a feofiment in fee of five of these acres, his
feofiee shall have common proportionally, pro ratd!^

2. BjenJt, We have seen, that certain kinds of reni could
not be apportioned. But the disposition to break in upon
the rigor of the rule has been very strong. It will not be
necessary to go over all the cases where rent has been appor-
tioned. " If there be lord and tenant of 20 acres by fealty,
and 10 shillings rent, and the tenant aliens two acres in fee,
the alienee shall hold the two acres, &c., and the rent shall

VOL. II. — p. c. 15

170 PATENT CASES.

Brooks r. Byam et aL 2 Storj.

be apportioned according to the valueJ* Danvers, Appt. B.

'< If the king's tenant leases for years, rendering rent, and
after grants the reverson of two parts to another, and dies,
and his heir is in ward for the third part of the reversion,
which descended, and the king grants the third part over,
the grantee shall have an action of debt far the third part of
the rent; for it shall be apportioned.^^ 3 Viner, Abr. Appt.

B. $3.
[ * 534 ] ^^'\i lessee for 20 years leases for 10 years, ren-
dering 341. 6«. 8d., and after devises 20^. of this
rent to three persons, to hold to each of them one third part
divided, and dies, this rent ehaU be apportioned according to
the devise, and each devisee may have an action of debt
againet the lessee for his part, namely, 6^. 8<I., though

HEREBY THE LESSEE MAT BE CHARGED IN SEVERAL ACTIONS."

Danvers Appt. B. ^ 4 ; S. C. 3 Viner, Appt B. § 4. See
also Fit^erbert, N. R. 235.

<^ If one have a rent'Service of money, or corn, or pepper,
&.C., issuing out of land, and purchase part of it in fee, the
whole rent is not extinct, but shall be apportioned juarto valo^
rem teme ; and so also it is of other services, if thet be
DiviBiBLE, but if they be entire and valvuible, as a horse^ or
the like, then they be gone and extinct*" Shepperd's Epitome,
Appt. cap. 14, p. 100.

3. &rvices s^all be apportioned upon dissebin. 3 Viner,
Appt. § 4. The case in 8 Edward III. Year Book, I have
not been able to find. An exception to this is with regard
to suit of Court, which is not apportionable. Shepperd's
Epitome, p. 103, Appt. And. they shall be apportioned evea
without disseisin. ^' Where a man is bound to repair a bridge
by reason of his land, and aliens part of it, he shall be rated
according to the portion." 3 Viner, Appt. A. <^ 9. A writ
in this case is given in Fitzherbert, N. B. p. 235.

PATENT CASES. 171

Brooks V. Bjram et a1. 2 Story.

4. TUhes. '< Money, payable for tithes by composition or
sale of part of the land, shall be apportioned ; and each pur-
chaser shall pay his share," &c. 3 Viner, Appt. A. <^ 19.

5, Power. ^' A power is apportionable ; but a seignory or
condition is not/' Slc. Edwards v. Slater, Hardres, 416;
3 Viner, Appt. A. ^ 25.

It would seem, from this survey of the cases on the subject
of apportionment f that the Courts have endeavored to extri-
cate themselves as much as possible from the rule. The
ancient cases have been invaded by many excep-
tions ; and * even the rule tvUh regard to contracte [ ^ 535 ]
has only a modified application now, compared with
what it once bad.

There is another principle which bears on this subject;
the rule that a contract could not be apportioned, is a rule of
the common law, and is not to be extended beyond the proper
influence of this jurisprudence. There are some ingenious
remarks by Mr. Hammond, in his Nisi Priua, p. 409, (note,)
Replevin, cap. 3, pi. 6, which illustrates this : '^ Rent reserved
upon a tenure (he says) is apportionablehj act of contracting
parties ; because the first is the ofispringof ih^ feudal system^
and, therefore, amenable, to its rules only ; the other, the
creature of our own common law, and, therefore, subject to
the maxim that a contract cannot, but by act of law, be di-
vided."

Let us now apply the result of these authorities to the deed
from Brown to Brooks.

In the first place, this deed does not concern any interest
known to the ancient common law ; it is not a contract in
the view of the old law. It is evidence of property ; or, to
use the language of the deed, it is a '^ right and privilege,^*
under the Patent Law of the United States ; a system of legis-
lation more distinct from the common law than the feudal
law, which, according to Mr. Hammond, was a distinct system.

172 PATENT CASES.

Brooks V. Bjam et al. 2 Story.

This consideration serves to remove the question from the
immediate stress of the ancient rule.

But, in the second place, it is not only under rules different
from those of the common law ; but it does not come within
any of the things to which this old rule has been applied. It
is not a debt; nor a contract ; nor an obligation ; nor a rent*
charge ; nor rent-seek ; nor a condition ; nor a relief; nor
an assent ; nor an authority (according to the acceptance of
this word in the old cases.)

It is a certain interest under the Patent Laws ; an interest
first provided for expressly by the Act of Congress,
[ * 536 ] April • 10th, 1760, cap. 34, <^ 4. It has been
called a licensey and, in some senses, may be re-
garded as such. But if a simple machine, that has been pa-
tented, should be conveyed to a person, this conveyance comes
with an implied license to use the same ; and the machine
with the license would be valuable as property. Such is the
character of the '^ right and privilege " in the present case, to
make matches. It is property.

As property^ it is not touched by any of the ancient cases,
which are adduced as autlu)rities against its division or ap^
portionment.

But, further, it is in its nature ^^ dividible;'^ and this of
itself is a reason, according to Shepperd's Epitome, p. 100 for
allowing the division. It is a right to make as many matches
as six girls can roll up ; if it were to make as many as one
girl could roll up, it might well be doubted whether it was
'^ dividible ; " but one sixth of the original right is, at once, a
fractional part of that right, and a unit in itself. It is like a
rent-service of six horses, which would be " dividible"

To this reasoning it is objected, that, by this division, the
original patentee would be put to {he trouble of watching six
persons, instead of one, and that this should noC be imposed
on him. But, it is submitted that, in point of fact, no greater

PATENT CASES. 178

Brooks V. Byam et al. S Story.

trouble will be imposed on him thaa he has already assumed.
It seems to be admitted, that Brown might send his six girls
to six diffisrent sections of the country, each girl carrying on
in her section a separate establishment. Here would be six
establishments for the patentee to watch. The only difference
asserted between such a. case and that now 'before the Court,
is, that in the one case, Brown, the original assignee, would
be primarily liable for any misuser of the right ; whereas, in
the present case, the patentee would be driven to look to the
several parties to whom the right had been conveyed. But
this difference in reality is very slight ; it is what Lord Eldon
would have called ^^ very thin."

* But suppose this additional trouble of watching [ * 537 ]
•tar persons J instead oC one, is imposed by the divi-
sion^ it is confidently submitted that, in point of strict law,
this would not prevent the division. The case in Danvers,
Abr. Appt. B. ^ 4, was where an apportionment was allowed,
^* though thereby the lessee might he charged in several ac-
tions J^ The cases, with regard to apportionment of common,
all recognize the same principle. In all these the trouble is
imposed upon the parties interested in the common to watch
a larger number of persons. The other cases, already cited,
where apportionment has been allov^d, as of rent, &c., all
involve the same '^trouble," multiplied by every divisira.
And yet these cases were decided in the early periods of our
law, when the rule against apportionment was regarded with
more favor than at present.

Another consideration remains, whether there is any thing
in this so-called license^ which is i^er^onal, and, in its nature,
not to be assigned. In determining this, we are to look again
at the laws from which it draw^ its origin — Patent Laws.
The license to make matches is a sale of the ^' right and
privilege " to make matches ; it being a certain interest under
the patent, which, according to the spirit of the Patent Laws,

15*

174 PATENT CASES.

_ _ ^^ ^

Brooks V. Byam et al. 2 Story.

is saleable. In its character, it does not differ from the sale
of a patented machine, as of a pump, which carries with it a
license to use. But has any one ever contended that a pa*
tented pump may not be sold and resold, as often as the own-
ers of it may desire ? No sale is personal. An article once
sold is given to the world.

The very language of the deed from Phillips to Brown is
in confirmation of this view. The words of grant are the
strongest known to our law. The language denotes, that it
was considered property , and not a mere chose in action. It
is essential, thdt all the words employed should have an ope-
rative meaning. The law does not, of itself, strike
[ * 538 ] out words, * which the parties have introduced. It
construes an instrument so as to give reasonable
ethci to all the words; ut res magis valeat quam pereat.
Lord Bacon has expressed the rule on this subject in dis-
tinct words. Verba aliquid operari debenty verba' cum
(ffedu sunt accipienda. Maxims of the Law Regula, III.

But if it should be doubted whether effect is to be given to
this word ^' assigns/^ and further, whether the deed is capa-
ble of division^ then we rely upon another rule of interpreta-
tion, which is adapted to a case like this. Verba fortius a4>
dpiuntur contra prof erfntem. Lord Bacon has clearly pointed
out the reason of this rule, and the cases, which will justify
its application. ^ Maxims, Reg. III.

The argument for the defendants was as - follows : It is a
mistake to call this property, in any sense which is decisive of
the question. It is not an assignment of any part of the
patent-right, as the grant of it in no degree abridges the re-
maining right in the hands of the patentee. It is not classed
among assignments in the Patent Act. It needs not to be re-
corded, and the licentiate can maintain no action in his own
name. It is a valuable right, and in no other sense is it pro-

^ PATENT CASES. 175

Brooks V. Byam et al. 2 Story.

perty ; but rights are not dividible, because they are valuable.
It is strictly a permission to do that which none but the pa-
tentee can do without his consent. The right to make, does
not imply the right to sell that privilege, much less to sell six
privileges, where only one was granted.

Such is not the compact made between the parties ; it is an
executory contract, or, at least, a Continuing contract, and not
in the nature of a grant of property. Property, once con-
veyed, without any peculiar restriction, is as completely at the
disposition of the grantee, as it was at that of the grantor ;
but that right, which consists in the liberty of continuing to
do a thing, must be taken and used as it is given.
The * grantee of the power cannot vary or add to the [ * 539 ]
terms of the contract* The case falb precisely within
that class of '^ authorities " which, according to the cases cited
on the other side, cannot be apportioned. The authority given
by a sheriff to his deputy, according to the case in Hobart, is
not more strictly a new authority than that of a license by a
patentee, which conveys to the grantee no portion of that ex-
clusive right, which the patentee derives from his patent. It
is asked whether the vendee of a patented machine may not
sell it with the implied right of using it. ' Certainly he may ]
because the machine is property, in the strict sense of the
word ; and the right of using it is but appurtenant to the pos-
session. Upon a similar distinction proceeds that class of
cases in which the right of common is held to be divisible, be-
cause it is appurtenant to land, which is itself divisible, and so
the man, who bought six patent machines, bought therewith
the right of use appurtenant to each, and could, therefore, sell
them each with the right annexed.

If I may be> permitted to use the expression, the fallacy of
the argument on the other side consists in treating this con-
tract as a sale of as many matches as six girls can roll up ;
thereby making the right of manufacturing a mere appurte-

176 , PATENT CASES.

Brooks V. Bjam et al. 3 Story.

nant to the principal grant ; like the cases put of a sale of as
many bricks from a yard as two horses can haul, &c. In all
these cases it is a sale of clay> timber, or wood, with a right
to take it from the vendor's land,^ and this brings them within
\he reason of the cases of common rent, and other things
issuing out of land, where the principal thing is a divisible
property, and the appurtenance follows the principal ; but the
present case contains no contract of sale of the matches, nor
of any of the materials of which, they are composed ; it is
simply a license to Brown to take his own wood, phosphorus,
chalk, glue, and brimstone, and make them up into matches

according to the vendor's patent ; it]samere{)ower,
[ * 540 ] coupled * indeed with an interest, and, therefore,

not revocable. There is something of a personal
trust in the contract, as the vendor might prefer to trust one
man rather than another with a power so likely to be abused.
Perhaps the use of the word assigns in the deed, though of
no force at law, if the thing be not assignable, might protect
an assignee of the whole in equity. But it is unnecessary to
pursue this inquiry, because there are no words in the deed
contemplating a division. It is not agreed, that by a fair in-
terpretation of the license. Brown could establish six manufac*
tories in six difierent places. The license provides that Brown
shall not manufacture in any place within forty miles of Me*
thuen. This shows the place of manufisicture was thought of
some importance, although the right is given to vend in any
part of the United States ; but supposing such a right to exist,
it is by no means true, that the same inconvenience would
follow from it to the patentee, as from the establishment of six
independent manufactories. The patentee would thereby
lose the responsibility of the peraon with whom he con*
tracted for the conduct of his' subordinates, though perhaps
the same evil to a less extent might result from the general
assignability of the contract.

PATENT CASES. 177

Brooks r. Byam et aL 2 Storj.

But no answer has been given to the more weighty objec-
tion urged at the bar, and that is, that by this subdivision six
competitors with the patentee are brought into the market
instead of one, each with the power, and under the obvious
temptation, to undersell the other in a manufacture, in which
the materials cost almost nothing, the consumption is almost
unlimited, and the profit very great. We think this decisive^
and that Mr. Phillips and his assignee may well say that they
have made no such contract with Brown.

As to the point, that if Brooks took no legal title, he ought,
at least, to be protected as an equitable assignee, it is obvious
that this construction would leave the patentee and
his * assignees exposed to all the disadvantages of a [ * 541 ]
legal title in Brooks. The cases of Dunlap t;. Stet-
son, and Moody v. Towle, 4 Mason, 349 ; 5 Greenl 415,
cannot be applied to this ; for in those cases the thing divided
was of a divisible nature, although the note, the evidence of
the debt, was not.

The following cases were cited by the counsel for the de»
fendant. Robson v. Drummond, S. B. & Ad. 303 ; Planche
V. Cobum, 5 Car. &. Payne, 58 ; S. C. 8 Bing. 14 ; Hall t;.
Gardner et al., 1 Mass. R. 172; Davis t;. Coburn, 8 Mass. R.
399.

Story, J. The question, which seems originally to have
been one of the main hinges of this controversy, and to which,
as a matter of fact so much of the evidence is addressed, is,
whether Byam, at the time of the purchase of the patent-right
of Phillips, which was subsequent to the license granted by
the patentee to Brown, had notice of the license so granted to
Brown. That point becomes wholly immaterial, if the license
itself is not by law required to be recorded. And independent
of the admission of counsel, I am entirely satisfied, upon the

178 PATENT CASES.

Brooks p. Bjua «t al. 3 81017.

true construciioQ of the Patent Act of 1836, ch. 357, ^ 11,
that such a license is not required by law to be recorded in
the Patent Office, in order to give it effect and validity. Iq
this view of ihe matter, I adopt throughout the argument of
the learned counsel, who opened the cause for the plaintiff.
My reasoning upon the point is briefly this. The licenK is
Dot per w required to be recorded, unless there be some posi-
tive provision of the Patent Act, which renders it an indis-
pensable prerequisite to its validity and obligation. There is
no other act in force requiring any assignment of any patent-
right to be recorded, eicept the Act of 1636 ; and the eleventh
section of that act ia in these words : " That every patent
shall be assignable in law, either as to the whole
[•542] interest, or 'any undivided part thereof, by any
instrument in writing; which assignment, and also
every grant and conveyance of the exclusive right under any
patent to make and use, and grant to others to make and use,
the thing patented within and throughout any specified part or
portion of the United States, shall be recorded in the Patent
Office within three months from the execution thereof, for
which the assignee or grantee shall pay to the commissioner
the sum of three dollars."

I have already, in other cases, had occasion to decide that
the recording within three months is merely directory, and
that, except as to intermediate bond fide purchasers, without
notice, any subsequent recording of an assignment will be
sufficient to pass the title to the assignee. Now, as has been
well observed by the counsel for the plaintiff, three coses only
of the recording of assignments are provided for in the fore-
going section ; first, an assignment of the whole patent ;
secondly, an assignment of any undivided part thereof; and,
dly, a grant or conveyance of the exclusive right under the
ent within any specified part or portion of the United States.
e present case falls not within either predicament It is

PATENT CASES. 179

Brooks r. Byam et al. 2 Story.

not a grant of any exclusive right ; but at most the grant of a
right of privilege of manufacturing matches under the patent
in any place not within forty miles of Methuen, and to vend
them in any part of the United States concurrently with the
patentee and any other grantees under him. It is in no sense,
therefore,^ an exclusive right. It is not an assignment of the
patent itself, or of any undivided part thereof, or of any right
therein limited to a particular locality. In truth, in propriety
of language, it is strictly a license or authority from the patentee
to Brown to make and vend the matches, without giving him
any exclusive right except as to the matches he shall manufac-
ture, exactly as the sale of a patented machine by the paten*
tee would give to the purchaser the right to use the same,
without in any manner restricting the patentee in
his right to grant or *sell other similar machines to [ * 543 ]
any other persons for use. The language of the
instrument of conveyance to Brown by the patentee, is that
he doth '< grant, bargain, sell, convey, assign, and transfer to
him the said Brown, his executors, administrators, and assigns,
the right and privilege hereinafter mentioned of making, using,
and selling the friction matches " patented, and to have and
to hold *^ the right and privilege of manufacturing the said
matches, and to employ in and about the same six persons,
and no more, and to vend said matches* in any part of the
United States." Then comes the proviso, that nothing herein
contained, shall prevent or restrict the patentee from " making
and vending the same, or of selling uid conveying similar
rights and privileges to others ; " and a further proviso, that
^< the said Brown shall not manufacture the said matches in
any place within forty miles of Methuen." It seems to me
that this language admits of no other rational interpretation,
than that which I have already put upon it. My judgment
accordingly is, that no recording of this instrument was ne-
cessary to give it complete validity ; and therefore the question

180 PATENT CASES.

Brooks V. Byam et al. 2 Stoij.

of noUce thereof by Byam, at the time of his purcbase, be-
comes unnecessary to be decided.

The other question as to the indivisibility of the license
granted to Brown, involves considerations of more nicety and
difGculty. By the agreement between Brown and Brooks,
(18th of September, 1837,) it was agreed by Brown to sell
and convey unto Brooks '< a right of manufacturing friction
matches according to letters-patent, granted to Phillips, &c.
in the said town of Ashburnham, to the amaufU of one right,
embracing one person only, so denominated, in as full and
ample a manner to the extension of the said one right as the
original patentee ; " and Brown further agrees " to go to
Ashburnham and assist Brooks in learning the art and mys-
tery of manufacturing such friction matches, &c., &c. ; " and,
also, '^ not to sell any right of manufacturing said
[ * 544 ] friction matches, or of vending * the same to any
person living, or intending to live, to manufacture or
▼end said matches within forty miles of said Ashburnham."
The question, then, is, whether the license or privilege grant-
ed by the patentee to Brown is not an entirety, and incapable
of being split up into distinct rights, each of which might be
assigned to different persons in severalty. I do not meddle
with another point, and that is, whether the entirety of the
license or privilege t* Brown was capable of being assigned,
though if it were intended to be a personal privilege or license,
it might open a ground for argument, notwithstanding the
use of the word " assigns.'' That point does not arise in the
present case ; for here the whole license or privilege is not
sold or assigned ; but one right, embracing one person only.
It has been well said that the right or license may be trans-
missible, although not apportionable* There is some obscu-
rity in the language of the instrument, which makes it some-
what difficult to give a definite interpretation to it. Brown's

PATENT CASES. 181

Brooks v. Byam et al. 2 Story.

privilege or license is at most to himself and his assigns, and
" to employ in and about the manufacturing of the matches
six persons, and no more." Brown agrees to sell to Brooks
<< one right, embracing one person." Now, the privilege or
license to Brown, (assuming it to be capable of assignment,)
is to him, and to his assigns, to employ six persons. Who-
ever is employed is- to be employed by Brown and his assigns.
It would seem to be a reasonable interpretation of this lan-
guage to say, that all of these persons should be employed by
one and the same party, either all by Brown, or all by his
assigns. But the sub-agreement with Brooks conveys to him
one right in severalty, embracing one person, that is, (as I
understand it,) the right to employ one person in the manu-
facture of the matches. So that if this agreement be valid,
then the original privilege or license, granted by the patentee
to Brown, upon this construction, includes six distinct and
independent rights, each of which may be granted to
a different • person in severalty. Now, I roust con- [ • 545 ]
fess, that such a construction is open to all the ob-
jections stated at the bar. It exposes the patentee to the com-
' petition of six different distinct persons, acting in severalty,
and independently of each other. It may make an essential
difference to the patentee in his own sales, whether the whole
of the right or privilege granted to Brown be in the possession
of one, or more persons, having a joint interest, and of seve-
ral persons, each having a separate and independent interest.
The danger to the patentee of an abuse or excess of the right
or privil^e granted by him is materially enhanced by the cir-
cumstance, that each of the sub-holders may be acting at dif-
ferent places at the same time, and the nature and extent of
their claim and use of the right or privilege may be difficult
for him to ascertain, and leave him without any adequate re-
medy for any such excess or abuse of it. The language
VOL. II. — p. c. 16

182 PATENT CASES.

Brooks V, Byam et al. 2 Storj.

ought, in my judgment, to be exceedingly clear, that should
lead a Court to construe an instrument of this sort, granting
a single right or privilege to a particular person or his assigns,
as also granting a right or license to split up the same right
into fragments among many persons in severalty, and thus to
make it apportionable as well as transmissible. The patentee
might well agree to convey a single right as an entirety to one
person to manufacture the matches and to employ a fixed
number of persons under him, when he might be wholly op-
posed to apportioning the same right in severalty among many
persons. I observe, that the parties are admitted, both by
the evidence and at the bar, to have adopted, and to be will-
ing to abide by, a construction of the grant to Brown, which
I confess, I should hardly have arrived at by an examination
of the words of the instrument. That construction is, that the
grant to Brown was to manufacture as many matches as six
girls could roll up in a day ; and that as many other persons

might be employed by him to prepare the work, as
[ * 546 ] might be necessary to accomplish this * end. (See

Printed Record, p. 20, 64, 125.) But the employ-
ment of six girls by one or more persons holding the entire
right, might be very different in the effect upon the value of
other rights, grantable by the patentee, from ^hat it would
or might be, if there were six se[)arate owners, each entitled
to employ one girl, with all the proper auxiliaries.

TheYe are many rights and privileges which are grantable,
but which, at the same time, are not assignable. And the
rules on this head, are founded, sometimes upon the consider-
ation of the nature synd objects of the grant, and sometimes
upon a supposed personal confidence, and sometimes upon
the apparent inconvenience of allowing an assignment. Some
of the cases on this subject will be found collected in Com.
Dig. Grant D., and Assignment, C. I. Even transmissible

PATENT CASES. 183

Brooks V. Byam et al. 2 Stoiy.

rights are not always severable or apportionable. Of this,
several illustrations may be found in Coke oii Litt., I64by
165a, and Ck>m. Dig. Parcener, A 2.

But, what is more immediately to our present purpose, there
are many rights, which, although assignable as an entirety,
are not apportionable or divisible by assignment. Thus, for
example, it is said ia Com. Dig. Grai)t D., that if A hold three
acres by fealty and rent, and the lord grant the services of
one of the acres,' it is void ; for he cannot make severance of
the tenure. And the same doctrine is laid do^n, by Perkins,
Grant, 67, and by Littleton, J,, in the Year Book, 7 Edw. 4,
S5. The like rule is laid down in Coniyns's Dig. Grant, D.,
and in Perkins, Grant, 66, where three jointments hold, and
the lord grants the services of one of them unto a stranger ; for
the grant is Void for the like reason.

But the case of Lord Mountjoy, reported in Godbolt, R. 17,
Moore, R. 174, and more fully upon the same points in An-
derson, R. 307, approaches by a very near analogy to the
present case. There, Lord Mountjoy granted by indenture
a certain manor to one Browne in fee, and there was
a proviso in the * indenture, and a covenant by [ * 547 ]
Browne, that Lord Mountjoy, his heirs, and assigns,
might dig forbore in the lands, parcel of the manor, and dig
for turf also, for the purpose of making alnm^ Lord Mount-
joy demised his interest for a term of years to one L., and L.
assigned over the same to two other persons ; and among
other questions, one was, whether Lord Mountjoy could assign
over his right, and if the subsequent assignment to the two
were good. Godbolt says, that it was decided by the judges, that
the assignment to the two persons was good ; but that the two
assignees could not work severally, but together with one stock,
or such workmen as belonged to them both. Lord Coke, who
was counsel in the case of Lord Mountjoy, and who reported

184 PATENT CASES.

Brooks V. Byam et al. 2 Story.

to the Privy Council^ where the question arose^ the opinion of
the judges, confirms in Co. Litt. 165a the report of Godbolt^
and says, that the judges, among other things, resolved, ^^ That
the Lord Mountjoy might assign his whole interest to one,
two, or more ; but then, if there be two or more, they could
make no division of it, but work together with one stock ;
neither could the Lord Mountjoy, &c., assign his interest in
any part of the waste to one or more, for that might work a
prejudice and a surcharge to the tenant of the land." And,
therefore, Lord Coke adds, if such an uncertain inheritance
descendeth to two partners, it cannot be divided between
them. It is true (as Mr. Butler, in his Note, Co. Litt. 165 a,
note 1, has observed) that Lord Anderson's Report takes no
notice of the point of indivisibility, nor is it contained in the
certificate, there stated to have been given by the judges. But
that is quite consistent with Lord Coke's account of the mat-
ter, which does not merely refer to the certificate, but to the
reasoning of the judges ; and the point of indivisibility was
certainly fairly open before the judges, in considering the sub-
ject. Lord Coke, from his position in the case, could scarcely
have been mistaken upon so important a point, which went

to limit, and not to enlarge, the rights of his client.
[ * 548 ] * Now, it seems to me, that, in tHIs aspect, the

case of Lord Mountjoy has a very striking applica-
tion to the present case. The grant was of a mere right to
dig ore, &c. ; and yet upon the ground of possible or probable
prejudice to the grantor (Browne) of this privilege, it was held
to be indivisible.

A great many cases were cited at the argument by the
learned counsel for the plaintifi*, turning upon the genera]
doctrine of apportionment, and the analogies furnished thereby
to illustrate the present ^ase. Some of those cases are ex-
ceedingly obscure ; others turn altogether upon principles of

, PATENT CASES. 185

Brooks V. Byam et al. 2 Story.

the feudal law, applicable to rent service, and other kindred
tenures, since the Statute of Quia Eniptores;^ others again
are cases of very doubtful authority, such as Ardes v. Watkins,
(Cro. Eliz. 637, 651,) where the Court were at first divided,
and Popham, Chief Justice, xlissented from the final opinion ;
and others, again, turn upon apportionments by operation of
law, and independent of the acts of the parties. The general
rule of the common law is, that contracts are not apportion-
able ; and this rule seems ordinarily, although not universally,
true, where the apportionment is by the act of the party, and
not by mere operation of law ; or where the contract is only
in part performed, and is not in its own nature and terms se-
verable.^ The case of Cutter v. Powell (6 Term R. 320) is
directly in point, although I entertain considerable doubt, whe-
ther, by the maritime law, the contract in that case was not
divisible. In respect to rent, there are doubtless, many cases,
where, at the common law, it is apportionable by operation of
law, when it could not be by the act of the parties.^ And in
some cases also it may be apportioned even by the act of the
party entitled thereto, as is shown in the cases •
put in Bacon's * Abridgment, Rent, M.^ But the [ * 549 ]
grounds, upon which this is supported, are not al-
ways clearly stftted or defined, or made consistent with each
other. Thus, it is there said, that if I make a lease of three
acres, reserving 3^. rent, as I ma/dispose of the whole re-
verson, so I may also of any part of it, since it is a thing in
its own nature severable, and the rent, as incident to the re-
version may be divided, too. This is intelligible enough ; but

^ See Yiner's Apportionment, b. pi. 1 ; Bac. Abridg. Eent M. 1.
3 See 1 Story Eq. Jurisp. s. 471, a. 472, s. 476, s. 480, s. 481.

3 Co. Litt 1476, 145a, 1486, 1496 ; Bacon Abridg. Rent, M. ; Wotton v.
Shirt, (Cro. Eliz. 742) ; Viner, Abridg. Apportionment, B.

4 See also Yiner, Abridg. Apportionment, B.

16*

186 PATENT CASES,

Brookj V. Byam et al. 2 Storj.

then it turns upon the very ground, that a reversion is sever-
able ; and the very question raised in the case now before
^he Court is, whether this license is so severable or divisible.
It is upon the like reason that the case of Ardes t;. Watkins
(Cro. Eliz. 637, 681) is there attempted to be supported. In
Ewer V. Moyle, (Cro. Eliz. 771,) the Court found great diffi-
culty in allowing an apportionment of rent, where there had
been a devise, and finally adjudged, '< that there should be an
apportionment, in regard it was not a division by the act of the
party, but by the law, namely, the Statute of Wills ; '' which
seems a strange reason for tKe case, as the devise was clearly
the act of the party. In Bacon's Abridgment, (Rent M. 1,)
it is said that the law allowed of grants of rent-chai^e, and
thereby established such sort of property, and it would be
unreasonable and severe to hinder the proprietor to make pro-
per distribution for the promotion of his children, or to provide
for the contingencies of his family, which were in his view.
If this be a good reason, it would carry the doctrine of ap-
portionment to a vast many other cases, which it has never
been supposed to reach. The case in Hobart's Rep. 235,
where it was adjudged that where one had a common appur-
tenant to ten acres of land for all his beasts, levant and cou-
chant, on the land, and sold part of it, the common was ap-
portionable, and every one should have common for his beasts,

levant and couchant, upon his part, turned upon the
[ * 550 ] * ground that the right of common there was several

in its nature, and is not so strict an entirety, as a war-
ranty, a condition, &c., which cannot be divided by the act
of the parties, which yet by act of law are divided. The same
doctrine was applied in the case cited from Danvers's Abridg-
ment, Apportionment, B. 4, and to be found also in Viner's
Abridgment, Apportionment B. pi. 19, and reported as the
case of Morse v. Well, in I Brownlow, R, 150, S Brownlow, R.
297, and in Morse and Well's case, in 13 Co. R. 65, upon the

PATENT CASES. 187

Brooks V. B7M11 et ftL 2 Slory.

ground that the common was severable, and belonged to each
portion of. the land ratably.

I have dwelt somewhat upon these cases of apportionment
because they were greatly relied upon at the bar in the argu-
ment But I cannot say that they have any very forcible ap-
plication to the present case, because they are either distin-
guishable from the present case in their circumstances, or stand
upon grounds of reasoning, often obscure, and subtle, and
unsatisfactory; or because, admitting their authority, they
proceed upon the ground that, in general, apportionment is
not allowed in contracts by the mere acts of the party, although
it may be by act of law ; and therefore they rather stand as
exceptions, than as illustrations of a general principle, to be
applied by analogy to other casesJ The cases of rent-service
are admitted by the authorities to stand upon a peculiar ground,
resulting from the feudal law and feudal tenures, and are
unquestionably exceptions to the general doctrine.

What I proceed upon is, that every conveyance of this sort
must be decided upon its own terms and objects, and that it
is very clear that no apportionment or division of the license
or privilege can be made, if it is contrary to the true intent
and meaning of the parties in the conveyance.

It is said that the present conveyance is the grant of an in-
terest and right and property ; and, therefore, it is divisible
in its own 'nature. It is unnecelssary to dispute
about terms ; * if I were called upon to character- [ * 55 L ]
ize the present grant, I should rather call it an
authority, or license, coupled with an interest in its execution.
It seems to me not so much a property or interest in rem, as a
right of user for the benefit of the licensee. It is like a right
of way granted to a man for him and his domestic servants to
pass over the grantor's lands.

Many cases have been put at the argument to sustain the
views of the counsel for the plaiirtiff. But in my judgment.

188 PATENT CASES.

Brocks V. Byam et al. 2 Storj.

they are all distinguishable from the present case ; and perpe-
tually admonish us of the truth of the maxim, Nullum simile
^8t idem. Thus, it is said, that if I buy as many bricks from
^ kiln as two horses can haul in an ordinary wagon, or as one
mason can lay on the wall of my house in a day, it is a valid
sale of the quantity of bricks when ascertained. Certainly it
is ; but then it is a valid sale of the bricks as property, not the
sale of the mere privilege to manufacture bricks at my kiln.
So, it is asked, if the owner of a brickyard sells to A the right
of making as many bricks on any land, as six men can strike
in a day, whether it may not make a valid sale to a third per-
son of all that one man can strike ? Certainly he may ; but
then he sells the ascertained quantity of bricks ; and not the
right to make them. So, in the case at l^ar, Brown might
well sell to any person or persons all or any undivided portion
of the matches made by him under his license ; but that would
be a very different thing from a sale of a fraction of the privi-
lege to make them. The case of the sale of timber to be cut
off lands in Maine, is of the same nature as those already
stated. The subparties purchase the timber' when cut, not
the privilege of cutting it. But, suppose the owner grants to
A the privilege of cutting timber off of his land, with the assist-
ance of four men employed by him, can he sell the license
and right of emplpyment to each of four men in severalty for
one man's share ? That would be very near the present case.
But can we, by any straining, declare that a license
[ * 552 ] to A to employ his four * servants on my land, is a
license assignable tb B to employ his four servants ?
Or if assignable, would A have a right to assign the right to
employ one servant to B, another to C, and another to D in
severalty ? Now, that is the very hinge of the case at the
bar. It was the very point in Lord Mountjoy's case, in God-
bolt, R. 17. We all know that an authority granted to A
cannot be assigned or executed by B. A fortiori it is not

PATENT CASES. 189

Pitts V, Whitman. S Storj.

appoctionable, so that a part may b6 executed by B, and a
part by.C, and a part by D, and the residue by A.

Upon the whole, I retain the opinion that the license in this
case was an entirety, and incapable of division, or of being
broken up into fragments in the possession of different persons.
The right granted is to the grantee and six persons to be em-
ployed by him in making matches ; and if it be assignable,
the assignment must be of the entirety of the license to the as-
signee, and it cannot l^e apportiojied among different persons
in severalty.

It has been suggested; that, whatever may be the case at
law, the plaintiff has an equitable right, which the Court ought
to enforce. The short answer to this is, that the plaintiff has
no equity, as against Byam and the othe^r defendants, to do an
act, for which he had no authority, or to exercise a right never
assignable to him. If he has any equity, it is against Brown,
and not against the defendants.

The bill, therefore, must be dismissed ; but the question of
costs will be reserved, if the parties desire it "" «

Hiram A. Pitts v. Luther Whitman.

[2 Story, 609. October T. 1843.]

Wbere the plaintiff, in the specification of his patent, described bis inyention
to be "a new and osefal improyement," whereas, in fact, it consisted of a
combination of sereral impxx>yement8, distinctly set forth in the specifica-
tion! ^t ^<^8 ^^^? ^^^^ ^^6 patent was good, not only for the combination, bnt
for each distinct improyement, so far as it was his inyention, and that the
descriptiye words were to be constmed in connection with the specification.

Where the plaintiff claimed, as his invention, ^^ the construction and nse of an
endless apron, divided into troughs and cells, in a machine for cleaning
grain, operating snbstantiaUy in the way described," it was hetd, that the

190 PATENT CASES.

Pitts V, Whitman. 2 Story.

claim was for a combination of the etidless apron with the machine for clean-
ing grain, and that, if the combination were new, it was patentable, although
a part of the apparatas were old.

The Act of 1836, ch. 357, s. 11, relating to the recording of assignments of pa-
tents, is merely directory, for the protection of hon&fide purchasers without
notice, and does not require the recording of an asugnment within three
months, as a prerequisite to its validity.

It is immaterial whether an assignment of a patent, offered in evidence, was
recorded before or after the suit was brought.

The Court is never bound to give an instruction to a jury on a point of law, in
the precise form and manner in which it is put by counsel, but only in such
a manner as comports with the r€al merits and justice of the case.

A motion having been made in arrest of judgment in this case, on the ground,
that no description of the patent was set forth in the declaration, it was Ae&f,
that the profert of the letters-patent made them, when produced, a part of
the declaration, and gave the invention all the requisite certainty.

This was a case for the infringement of a patent granted
to Hiram A. Pitts and John A. Pitts, as inventors of "A new
and useful improvement in "^the machine for threshing and
cleaning grain/' The patent was dated on the 29th of De-
cember, A. D. 1837^ The writ was dated on 3d of October,
1840; and the plaintiff in his declaration alleged an assign-
ment by John A. Pitts to himself of all his (John A.
[ * 610 ] Pitts's) right in the * invention, for, in, and within
the State of Maine ; and the breach alleged was,
that the defendant, after the assignment, unlawfully made,
used, and vended the said improvement in the said State of
Maine. The cause was tried upon the general issue before
the district judge, at the last May term ; and a verdict was
then taken for the plaintiff.

In order to understand the case, it is necessary to state,
that the patent was for ^' A new and useful improvement in
the machine for threshing and cleaning grain," and the spe-
cification annexed to the letters-patent was in the following
terms :

^' To all whom it may concern. Be it known, that we,
Johh A. Pitts and Hiram A. Pitts, of Winthrop, in the county

PATENT CASES. 191

Pitts V. Whitman. 2 Stoiy.

of Kennebec, cLnd State of Maine, have invented a new and
improved combination of machinery for separating grain from
the straw and chaff, as it proceeds from the threshing ma-
chine ; and we do hereby declare, that the following is a full
and exact description thereof."

The specification then describes the invention, referring to
an accompanying drawing. The claim was as follpws :

^^ (1.) We claim as our invention the construction and use
of an endless apron, divided into troughs or cells, in a ma-
chine for cleaning grain, operating substantially in the way
described. (2.) We claim also the revolving rake for shaking
out the straw, and the roller for throwing it off the machine,
in combination with such a revolving apron, as set forth.
(3.) We claim the guard slats E in combination with a belt
constructed substantially as above described ; and, (4.) the
combination of the additional sieve and shoe with the elevator
for carrying* up the light grain in the manner and for the
purpose herein set forth.

A motion was afterwards made, on behalf of the defendant
in arrest of judgment, and, also, for a new trial, and
was * argued at the present term, by Preble and [*611 ]
Samuel Feasenden for the defendant, and by Cod-
man and Fox for the plaintiff.

The motion in arrest of judgment was substantially as
follows :

<' 1. Because it is not alleged in said writ what is the new
and useful improvements in the machine . for threshing and
cleaning grain, which the plaintiff claims to have invented,
and which he alleges that the defendant has violated.

" 2. Because the plaintiff has not, in his said writ i^nd
declaration, anywhere set forth what he does claim as his
invention, or the extent of his claims.

^' 3. Because the plaintiff, in his said writ and declaration,

192 PATENT CASES.

Fitto V. Whitman. 2 Story.

has not set forth, or in any manner described the new and
useful improvement in the machine for threshing and cleaning
grain, which he claims as his invention."

The motion for a new trial was founded upon the following
grounds stated by the defendant : " The plaintiff offered in
evidence a deed from John A. Pitts to the plaintiff, dated
April 17, 1839, and recorded in the Patent Office, April 19,
1841 ; to the admission of which the plaintiff objected, for
the reason, that the said deed was not recorded within three
months from its date, and because it was not recorded until
long after the action was commenced. But the judge admit-
ted it as evidence' to the jury, and overruled the objection.
For which erroneous ruling, the defendant moves, that the
verdict be set aside and a new trial be granted.

^^The counsel for the defendant contended, that by his
claim the plaintiff claimed, that John A. Pitts and Hiram A.
Pitts did claim to be the inventors of said endless apron, so
as aforesaid constructed, i. 6., divide^ into troughs or cells, in
a 9iachine for cleaning grain, and operating substantially in
the way described, and that if, in fact, they were not the
inventors of an endless apron divided into troughs
[ * 612 ] or cells, biit ''*' were the inventors only of an appli-
cation of such an apron to a machine for threshing
and cleaning grain in the way described, then, that their claim
was too broad, and, therefore, void. And they contended
further, that if, in fact, they were not the inventors of an end-
less apron, divided into troughs or cells, then the application
of it to a machine for threshing and cleaning grain substan-
tially in the way described, was not the subject of a patent,
as an application of an old machine to a new use or purpose
was not patentable. And the judge was requested to give
the construction contended for by the defendant's counsel, to
the said claim ; but the judge refused, and ruled, that the
claim could not, and ought not to be so construed. That

PATENT CASES. 198

Pitts V, Whitman. 2 Story.

the true coDStruction was, that the said Pittses did not claim
to be the inventors of an endless apron^ or an endless apron
of troughs or cells^ but that they claimed it only in a machine
far threshing and cleaning grain, operating substantially in
the way described ; and that their claim was good and valid,
as the inventors of its application to such a machine in the
manner described. And for this ruling, which the defendant
contends is erroneous, he moves the Court for a new trial.

^< The counsel for the defendant further contended, if an
endless belt of troughs or cells was known and used at the
time of, and prior to the supposed invention of said Pitts d&
Pitts, then the mere application of an endless belt of troughs
or cells to the new purpose of separating straw and grain, in
a machine for threshing and cleaning grain, is not the subject
of a patent, ai^d any patent taken ,out for the use of such a
belt for that purpose is void. The judge declined to give
such instructions, for which cause the defendant moves for a
new trial.

<^ The counsel for the defendant further contended, that, if
the claim of the plaintiff to the construction and use
of an * endless belt, with troughs or cell^, embraces [ * 613 ]
any other different form substantially of construc-
tion, than the one by him particularly specified, the claim, in
that case, would be too broad, and the action could not be
sustained. This instruction the judge declmed to give. For
which cause, also, the plaintiff moves for a new trial."

There was also an exception taken to another supposed
ruling of the judge at the trial, which was afterwards aban*
doned, as it turned out to be incorrectly stated, and therefore
it is here omitted.

Preble and Fessendeny for the defendant, in their argu-
ment, mainly relied upon the grounds stated in the foregoing
motions* They cited. Patent Act of 1836, ch. 357, <^ 11;

VOL. 11. — p. c. 17

194 PATENT CASES.

Pitta V. Whitman. 2 Stoiy.

Wyeth V. Stone, 1 Story's R. 273, 295, 296 ; Prouty v. Rug^
gies, 1 Story's R. 568; S. C. 16 Peters's R. 336.

Codman and Fox, for the plaintiff, argued as follows : X»
the objection, that plaintiff cannot maintain this action, be*
cause his deed from his co-patentee was not recorded within
three months, and not till long after this suit was commenced,
the answer is, that it is not necessary as between these
parties. The defendant does not claim title by purchase,
extent of execution, or otherwise ; he resists the validity of
the patent. It is enough, that it was recorded, before it was
offered in evidence. The object of the requirement of the
statute, that such a record should be made within three
months was to protect subsequent purchasers, &c., and to
give sufficient time for first purchasers to have their deed
recorded.

The case of Wyeth v. Stone, (1 Story, R. 273,) cited by

defendant, does not apply to this case. It was based upon

the Statute of 1793, which, in terms and substance, is ma*

terially different from the Statute of 1836. See

[ * 614 ] United States v. * Slade, 2 Mason, 71 ; Prescott v.

Potter, 3 Pick. 391 ; Welch v. Joy et al. 13 Pick.

477; Emerson v* Towle, 5 Greenl. 197.

Under the general Registry Statute of Massachusetts and
Maine, it has been repeatedly held, and is well-setded law,
that notice or even possession is equivalent to registry.
Priest V. Rice, 1 Pick. 165; and see Brooks t;. Byam et al.
1 Story, 296.

As to the motion to set aside the verdict, we are unable to
perceive any just ground of support for either branch of it ;
it is believed to be in strict conformity with both law and evi-
dence. Moreover, there is no report of the evidence, and we
believe that this Court cannot entertain the motion to set
aside the verdict on the ground of its being against the
evidence.

PATENT CASES* 195

Pitts V. Whitnum. 2 Story.

Stokt^ J. There is no ground to support the motion in
arrest of judgment, which indeed ought properly to be heard
after the motion for a new trial, which, if granted, might
supersede the other motion. The short answer to be given
to the motion in arrest of judgment is, that the profert of the
letters-patent (of which the specification constitutes a part)
makes the letters-patent, when produced, a part of the decla*
ration, and so gives all the certainty as to the invention and
improvement patented, which is required by law. It wbuld
indeed be more formal to annex a copy of the letters-patent
and specification to the declaration, and to refer thereto in
the declaration. But the common practice is according to
the declaration in the present case ; and there seems to be no
substantial objection to it.

The first objection, taken upon the motion for a new trial
is, that the deed of assignment from John A. Pitts to the
plaintifT, dated on the 17th of April, 1838, was not recorded
in the Patent Oflice until the 19th of April, 1841, after the
present suit was commenced ; whereas it ought to
have *been recorded within three months after the [*615 ]
execution thereof. By the Patent Act of 1793, ch.
55, ^ 4, every assignment, when recorded in the oflSce of the
Secretary of State, was good to pass the title of the inventor,
both as to right and responsibility ; but no time whatever was
prescribed within which the assignment was required to be
made. By the 11th section of the Act of 1836, ch. 357, it is
provided, ^^That every patent shall be assignable in law,
either as to the whole interest or any undivided part thereof,
by any instrument in writing; which assignment, and also
every grant and conveyance of an exclusive right under any
patent to make and use, and to grant to others to make and
use, the thing patented within and throughout any specified
portion of the United States, shall be recorded in the Patent
Oflice within three months from the execution thereof."

196 PATENT CASES.

Tim V. Whitaan. 2 Story.

Now J it is observable, that there are no words in this enact-
ment, which declare, that the assignment, if not recorded,
shall be utterly void ; and the question, therefore, is, whether
it is to be construed as indispensable to the validity of an
assignment, that it should be recorded within Ihe three
months, as a sine qua nan ; or whether the statute is merely
directory for the protection of purchasers. Upon the best
reflection, which I have been able to bestow upon the sub-
ject, my opinion is, that the latter is the true interpretation
and object of the provision. My reasons for this opinion are,
the inconvenience, and difliculty, and mischiefs, which would
arbe upon any other construction. In the first place, it is
difficult to say, why, as between the patentee and the as-
signee, the assignment ought not to be held good as a sub-
sisting contract and conveyance, although it is never recorded
by accident, or mistake, or design. Suppose the patentee
has assigned his whole right to the assignee* for a full and
adequate consideration, and the assignment is not recorded
within the three months, and the assignee should
[ ^616 ] make and use the patented machine * afterwards;
could the patentee maintain a suit against the as-
signee for such making or use as a breach of the patent, as if
he had never parted with his right ? This would seem to be
most inequitable and unjust; and yet if the assignment be-
came a nullity and utterly void by the non-recording within
the three months, it would seem to follow as a legitimate con-
sequence, that such suit would be maintainable. So strong
is the objection to such a conclusion, that the learned counsel
for the defendant admitted at the argument, that as between
the patentee and tlie assignee, the assignment would be good,
notwithstanding the omission to record it. If so, then it
would seem difficult to see, why the assigninent ought not to
be held equally valid against a mere wrongdoer, piratically
invading the patent-right.

PATENT CASES. 197

Pitts V. Whitman. 2 Story.

Let us take another case. Could the patentee maintain a
suit against a mere wrongdoer, after the assignment wq^
made, and he had thereby parted with all his interest, if the
assignment was not duly recorded? Certainly it must be
conceded that he could not, if the assignment did not
thereby become a mere nullity, but was valid as between
himself and the assignee ; for then there could accrue no
damage to the patentee, and no infringement of his rights
under the patent. Then, could the assignee, in such a case,
maintain a suit for the infringement of his rights under the
assignment? If he could not, then he would have rights
without any remedy. Nay, as upon this supposition, neither
the patentee nor the assignee could maintain any suit for an
infringement of the patent, the patent-right itself would be
utterly extinguished, in point of law, for all transferable pur-
poses. Again, could the assignee, in such a case, maintain a
suit for a subsequent infringement against the patentee ? If
he could, then the patentee would oe in a worse predicament
than a mere wrongdoer. If he could not, then the
assignment would become, ^ in his bands, in |i[*617]
j>ractical sense worthless, as it would be open to
depredations on all sides.

On the contrary, if we construe the 10th section of the act
to be merely directory, full effect is given to the apparent
object of the provision, the protection of purchasers. Why
should an assignment be required to be recorded at all ? Cer-
tainly not for the benefit of the parties, or their privies ; but
solely for the protection of purchasers, who should become
such, bond fide, for a valuable consideration, without notice
of any prior assignment. By requiring the recording to be
within three months, the act, in efiect, allows that full period
for the benefit of the assignee, without any imputation or im-
peachment of bis title for ladies in the intermediate time. If
he fails to record v the assignment within the three months,

17*

198 PATENT CASES.

Pitts 0. WfahmaiL S Story.

then every subsequent bond fide purchaser has a right to pre-
sume that no assignment has been made within that period.
If the assignment has not been recorded until after the three
months, a prior purchaser ought, upon the ground of laches,
to be preferred to the assignee. If he purchases after the
assignment has been recorded, although not within the three

months, the purchaser may justly be postponed, upon the
ground of tnald fidea^ or constructive notice of the assign-
ment. In this way, as it seems to me, the true object of the
provision is obtained, and no injustice is done to any party.
In respect to mere wrongdoers, who have no pretence of
right or title, it is difficult to see, what ground of policy or
principle there can be in giving them the benefit of the ob-
jection of the non-recording of the assignment. They violate
the patent-right with their eyes open ; and as they choose to
act in fraudem legiSy it ought to be no defence, that they
meant to defraud or injure the patentee, and not the assignee.
Indeed, if the defence wctc maintainable, it would seem to be
wholly immaterial, whether they knew of the assignment or not.
In furtherance, then, of right, and justice, and
[ * 618 ] the 'apparent * policy of the act, ut res magie valeat
quam pereaty and in the absence of all language
importing, that the assignment, if unrecorded, shall be deemed
void, I construe the provision as to recording to be merely
directory, for the protection of band fide purchasers without
notice. And assuming that the recording within the three
months is not a prerequisite to the validity of the assignment,
it seems to me immaterial (even admitting, that a recording at
some time is necessary), that it is not made until after the
suit is brought. It is like the common case of a deed required
by law to be registered, on which the plaintiff founds his title,
where it is sufficient, if it be registered before the trial, al-
though after the suit is brought ; for it is still admissible in
evidence as a deed duly registered.

PATENT CASES. 199

Pitta V. Wbttniu. S Story.

The next objection taken is to the ruling of the district
judge upon the point of the coofltruction of the claim in the
specification in the patent. The learned Judge ruled " That
the true construction of the patent was, that the Pittses did
not claim to be the inventors of an endless apron, br an end-
less apron of troughs or cells. But the true construction must
be, that they claimed it onlj in a machine for threshing and
cleaning grain, operating substantially in the way described ;
and that their claim was good and valid as the inventort of
its application to such a machine in the monner described."
I am of opinion, that the construction thus given by the
learned judge of the claim of the patentees in the specifica-
tion is the true one. What is the language of the specifica-
tion ? " We claim as our invention the construction and use
of an endless apron, divided into troughs or cells, in a ma-
chine for cleaning grain, operating substantially in the way
described;" that is, described in tRe specification. It is,
therefore, clear, that it was not a claim of an invention of an
endless apron of troughs or cells ; but of an endless apron
of troughs and cells combined with a particular threshing ma-
chine, described in the specification. If this com-
bination was * new, and invented by the patentees, [ * 619 ]
then it was valid in point of law, which is all that
the learned judge purported to state. And this disposes in
effect of the next objection ; for if the combination was new,
it is a patentable matter, although a part of the apparatus
might have been applied to similar purposes in other and
different machines. Under such circumstances it would not
be a mere application of an old apparatus to a new purpose,
but a new combination of machinery, incorporeting, in part,
an old apparatus for a new purpose.

The third instruction, asked, and refused by the Court, is
objectionable in several respects. It proceeds upon the as-
sumption of the existence of facts, which it was no part of

200 PATENT CASES.

Pitts V. Whitmui. 9 Stoiy.

the duty of the Court to assume or affirm. It undertakes to
put a construction upon the invention, as claimed by the pa-
tentees, which is not (as has been already suggested) correct.
It separates the consideration of the endless belt of troughs
from the other machinery, with which it was combined, as
though it were claimed as a distinct invention, and not in
combination, and asks the Court to give an instruction founded
upon that supposition. It was no part of ^ the duty of the
Court thus to break up the case into fragments, or to give an
instruction as to abstract points, not actually presented by the
state of the cause. The like answer may be given for similar
reasons to the fourth instruction asked and refused.

The fifth instruction asked, and refused, involved matter of
fact, namely, the character of Parsons's machine, and in what
respects it was identical with, and in what respects it differed
from, the machine of the Pittses, and that of Whitman ; and
therefore was properly Infused ; for the learned judge had no
right to determine upon any such matters, or to give the in-
struction prayed for. The instruction upon this point sup-
posed in the motion for a new trial to have been given by
him, was in fact (as he states) never given. On the contrary,
he gave the instruction in the form and manner,
[ * 620 ] which are * stated by the counsel for the plaintiflf
in their written objection to the motion for a new
trial. In short, he left the whole as a matter of fact for the
consideration of the jury, with such observations on his own
part, as were fit to be submitted by way of commentary on
the evidence, for their consideration.

It may here be proper to add, that the Court is never
bound to give an instruction to a jury upon a point of law,
even when pertinent, and relevant to the fact of the case,
precisely in the form and manner in which it is put by
counsel ; for that may sometimes have a tendency to mislead
the jury, and withdraw their attention from the merits of the

PATENT CASES. 201

Pitts 9. Whitman. 2 Story.

case. All that is the duty of the Court is, to giye such in<-
structions to the jury in point of law, as clearly arise upon
the evidence, and are proper for the consideration of the jury,
upon the issue before them, in such terms and in such manner
as shall comport with the real merits and justice of the case^
and enable the jury to give a proper verdict in point of law.
Having done this, the Court has discharged its entire duty,
and is not bound to respond to instructions asked, which are
of a more general form, or of an abstract nature, or are f(ot
necessary for a just decision of the cause.

Before cMing this opinion, it is fit to take notice of an
objection, raised in the argument at the bar on behalf of the
defendant, that the present patent is professedly for ^* a new
and useful improvement," and not for new and useful im-
provements (in the plural) ; and that consequently it covers
only the whole combination in its entirety; and not the
several improvements specified in the claim, separately and
distinctly from each other. The conclusion, intended to be
deduced from this argumenf, is, that inasmuch as the evi*
dence did not show a violation of the whole combination, but
of one only of the asserted improvements, therefore, the
present suit is not maintainable. I cannot assent either to
the premises, or to the conclusion; and, in my
judgment, each is unsupportable in * point of law. [ *621 ]
There is, in my judgment, no difficulty in maintain-
ing the validity of a patent (as in the present case) for a
machine combining several distinct improvements, each of
which is the invention of the patentee, and also of including
in the same patent a right to each of these several and dis-
tinct improvements. In other words, the patentee may in

such a case take out a valid patent for the combination, and
also include therein a right to each distinct improvement
severally contained in the same machine. Such was the
doctrine maintained by this Court in Wyeth v. Stone (I Story,

202 PATENT CASES,

Pitts p. Whitmao. 2 Story.

R. 273) ; and it stands confirmed by the obvious intent of the
9th section of the Patent Act of 1837, ch. 45, which gives to
the patentee a right of action for a piratical use of any one of
his invented improvements, which is distinctly stated in his
patent, although he may, by mistake, accident, or inadver-
tence, have claimed others in his specification, of which he
was not the inventor.

In construing a patent for an invention we are not to look
alone to the descriptive words contained in the letters-patent,
but we are to construe those words in connection with the
specification, which in our law is always annexed to and
made a part of the letters-patent. Here, indeed, the letters-
patent described the invention to be ''a new and useful im-
provement (this is the common formulary) in the machine for
threshing and cleaning grain ; " but then it is afterwards added,
^^ a description whereof is given in the words of the said John
A. Pitts and Hiram A. Pitts, in the schedule hereto annexed,
and is made part of these presents." So, that for the nature
and character of the improvement and the claim of the
invention we are to look to the specification. Now, in the
specification, the patentees begin by saying, that they " have
invented a new and improved combination of machinery for
separating grain from the straw and chafi*, as it proceeds from
the threshing machine ; " so that we here clearly
[ * 622 ] see, that the patentees * claim the entire combina-
tion of the machinery as new. In the summing up
of their invention they claim four distinct improvements in
the machinery, as their invention. The words are: "We
claim as our invention, (1). The construction and use of an
endless apron divided into troughs or cells in a machine for
cleaning grain, operating substantially in the way described
(i. e., in the specification). (2). We claim also the revolving
rake for shaking out the straw, and the roller for throwing it
off the machine, in combination with such a revolving apron

PATENT CASES. 203

Boyd V, Brown. 8 McLean.

as set forth. (3). We claim the gua^ slats, E, in combina-
tion with a belt constructed substantially as above described ;
and, (4). The combination of the additional sieve atid shoe,
with the elevator for carrying up the light grain in the man-
ner and for the purpose herein set forth." It is plain, there-
fore, that the patentees not only claim the entire machinery
in combination, but also for four improvements above enu-
merated as their invention. And if they are their invention,
there is no objection, in point of law, to (heir claim. And a
violation of any one of the specified improvements, without
any violation of the others, by the defendant, is sufficient to
entitle the patentees, or their assignees, to an action for the
infringement.

So that in every way, in which I am able to contemplate
the case, the motion for a new trial and in arrest of judgment
ought to be overruled. The District Judge concurs in this
opinion, and, therefore, the motion is overruled.

BoTD V. Bbown.

[3 McLean, 295. December T. 1843.]

The exclosiTe grant in a patent is, the constmction and nse of the thing pa-
tented.

Where the right consists in certain instmments by which a bedstead of a par-
ticniar stmctore is made, the stractore or nse of these instraments is pro-
hibited. •

A patentee for a flonring mill of a certain stmctnre has an exclasive right to
make and use snch mill, bat he can claim no monopoly in the sale of the flour
he manafactares.

The Conrt wiU not enjoin the sale of a similar article under the same patent
in a particnlar district assigned to an indiridaal, thongh mannfactnred in a
different district

Kenna appeared for the plaintiff.
Chase for the defendant.

204 PATENT CASES.

Bojrd V. Brown. 3 McLean.

QpiNION OF THE QoURT.

The complainant filed his bill, representing that he is the
legal owner of a certain patent-right, within the county of
Hamilton, Ohio, for making bedsteads of a particular construc-
tion, which is of great value to him ; that the defendant, pro-
fessing to have a right under the same patent, to make and
vend bedsteads in Dearborn county, Indiana, which the com-
plainant does not admit, but denies ; that the defendant sends
the bedsteads he manufactures to Hamilton county to sell in
viplation of the complainant's patent; and he prays
[ * 296 ] that the defendant may be enjoined ''^from manu-
facturing the article and vending it within Hamil-
ton county, &c.

The defendant sets up in his answer a right duly assigned
to him to make and vend the article in Indiana, and that he
is also possessed of an improvement on the same ; and he
denies that the sales in Hamilton county, complained of by
the complainant, are made at his instance, or for his benefit.

A motion is now made for an injunction, before the case is
prepared for a final hearing.

On the part of the complainant, it is contended, that, by
his purchase of the right to make and vend the article within
Hamilton county, he has an exclusive right to vend as well as
make, and that his right is infringed by the sales complained
of; that his right is notorious, and is nol only known to the
defendant, but to all those who are engaged in the sales
stated.

If the defendant, who manufactures the bedsteads in In-
diana, be actually engaged in the sale of them in Hamilton
county, it might be necessary to inquire whether this is a vio-
lation of the complainant's right. But, as this fact is denied
in the defendant's answer, for the purposes of this motion,
the answer must be taken as true, and that question is not
necessarily involved.

PATENT CASES. 205

Boyd V. Brown. 3 McLean.

The point for consideration is, whether the right of the
complainant is infringed by a sale of the article within the
limits of the territory claimed by complainant.

It is not difficult to answer this question. We think that
the article may be sold at any and every place, by any one
who has purchased it for speculation or otherwise.

There can be no doubt that the original patentee, in sell-
ing rights for counties or States, might, by a special covenant,
prohibit the assignee from vending the article beyond the
limits of his own exclusive right. But, in such a case, the
remedy would be on the contract, and not under
* the Patent Law. For that law protects the thing [ ♦ 297 ]
patented, and not the product. The exclusive right
to make and use the instruments for the construction of this
bedstead in Hamilton county, is what the law secures, under
his assignment to the complainant* Any one violates this
right who either makes, uses, or sells these instruments within
the above limits. But the bedstead, which is the product, so
soon as it is sold, mingles with the common'mas» of property,
and is only subject to the general laws of property.

An individual Has a patent-right for constructing and using
a certain flouring mill. Now, his exclusive right consists in
the construction and use of this mill ;. the same as the right of
the complainant to construct and use the instruments in Ha-
milton county, by which the bedstead is made. But can the
patentee of the mill prohibit others from selling 'flour in his
district ? Certainly he could not. The advantage derived
from his right, is, or may be, the superior quality of the flour,
and the facility with which it is manufactured. And this suffi-
ciently illustrates the principle involved in this motion.

The injunction is refused.

VOL. 11. — p. c. 18

206 PATENT CASES.

Washburn et al. v. Gould. 3 Stoiy.

William Washburn, et al. v. James Gould.

[3 Story, 122. May T. 1844.]

The extension of a patent may be granted to an administrator.

Whoever finally perfects a machine, and renders it capable of aseful operation,
is entitled to a patent, althoogh others may have had the idea, and made
experiments towards putting it into practice, and although all of the compo-
nent parts may have been known under a different oombioation, or used for
a different purpose.

Drawings, not referred to in the specification of a patent, may be treated as
part of the specification, and used to explain and enlarge it.

A new trial will not be granted for surprise on account of new eyidence, when-
ever, by reasonable diligence, it could have been previously obtained.

The meaning of technical words of art in commerce and manufactures, used in
a patent, as well as the surrounding circumstances, which may materially
affect their meaning, are to be interpreted by the jury.

Every instrument is to be interpreted by a consideration of aU its provisions,
and its obvious design is not to be controlled by the precise force of single
words.

Where a grant was made of a right to construct and use fifty machines within
certain localities, reserving to the grantor the right to construct, and to
license others to construct, but not to use them therein, it was hdd^ that the
grant was of an exclusive right under the Statute of 1836 in regard to pa-
tents, and that suits were to be brought in the name of the assignees, even
though agreed to be at the expense of the grantor.

Where a patent has been granted, and there has been an exclusive possession
of some duration under a patent, an injunction will be granted, without
obliging the patentee previously to establish the validity of his patent by an
action at law. But it is otherwise, if the patent be recent, and the injunction
be resisted on the ground, that the patent ought not to have been granted, or
is imperfectly stated in the specification.

Heid^ That the patent in the present case was, upon the true interpretation of
the specification, a patent for an improved machine;

Tuis was an action on the case for the infringement of a
patent-right for ^^ a new and useful improvement in the
method of planing, tonguing, grooving, and cutting into
mouldings, or either, plank, boards, or any other materia), and

PATENT CASES. 207

Washborn et aL v. Goald. 3 Stoiy.

for reducing the same to an equal width and thickness ; ^nd
also for facing and dressing brick, and cutting mouldings, or
facing metallic, mineral, or other substances," and described
in the schedule annexed to the letters-patent, and forming a
part thereof, in the following words :

* ^' The plank, boards, or other material, being [ * 123 ]
reduced to a width by circular saws, or friction
wheels, as the case may be, is then placed on a carriage rest-
ing on a platform, with a rotary cutting wheel in the centre,
either horizontal or vertical. The heads, or circular plates,
fixed to an axis, may have one of the heads movable to ac-
commodate any length of knife required. The knives fitted
to the heads with screws or bolts, or the knives or cutters for
moulding, fitted by screws or bolts to logs connecting the
heads of the cylinder, and forming, with the edges of the
knives or cutters, a cylinder. The knives may be placed in
a line with the axis of the cylinder or diagonally. The plank,
or other material resting on the carriage, may be set so as to
reduce it to any thickness required, and the carriage moving
by a rack and pinion, or rollers, or any lateral motion, to the
edge of the knives or cutters on the periphery of the cylinder
or wheels, reduces it to any given thickness. After passing
the planing and reducing wheel, it then approaches, if required,
two revolving cutter wheels, one for cutting the groove, and
the other for cutting the rabbets, that form the tongue. One
wheel is placed directly over the other, and the lateral motion
moving the plank, or other material, between the grooving
and rabbeting wheels, so that one edge has a groove cut the
whole length, and. the other edge a rabbet cut on each side,
leaving a tongue to match the groove. The grooving wheel
is a circular plate, fixed on an axis, with a number of cutters
attached to it to project beyond the periphery of the plate, so
that, when put in motion, it will perform a deep cut or
groove, parallel with the face of the plank or other materia^

5508 PATENT CASES.

Washbrnn et al. r. Gould. 3 Story.

The rabbeting wheel also of similar form, having a number of
cutters on each side of the plate, projecting, like those on the
grooving wheel, cuts the rabbet on each side of the edge of
the plank, and leaves the tongue or match for the groove.
By placing the planing wheel axis and cutter knives vertical,
the same wheel will plane two planks, or other ma-
[♦124]terial in the same time of * one, by moving the
plank or other material opposite ways, and parallel
With each other, against the periphery of the planing or
moulding wheel. The groove and tongue may be cut in the
plank or other material, at the same time, by adding a groov-
ing and rabbeting wheel.

<^ Said William Woodworth does not claim the invention
of circular saws or cutter wheels, knowing they have long
been in use, but he claims as his invention the improvement
and application of cutting or planing wheels to planing boards,
plank, timber, or other material; also his improved method of
cutters for grooving, and tonguing, and cutting mouldings on
wood, stone, iron, metal, or other material, and also for facing
and dressing brick, as all the wheels may be used single, and
separately, for moulding, or any other purpose before indica-
ted. He also claims as his improved method the application
of circular saws for reducing floor plank and other materials
to a width.

" Dated Troy, Dec. 4th, 1828.

"William Woodworth.

" Witnesses, Henrt Everts,

D. B. Gleason."

The original patentee was William Woodworth, to whom
the aforesaid letters-patent were granted on the 27th day of
December, 1828, and who died on the 9th day of February,
1839. On the 14th day of February, 1839, administration
of the goods and estate of the said William Woodworth was

PATENT CASES. 209

Washbarn et al. v. Gould. S Story.

granted in the Stale of New York, to his son, William W.
Woodworth, who subsequently, on the I6th day of Novem-
ber^ 1842^ obtained a renewal and extension of the said let-
ters-patent for the additional term of seven years from the
expiration thereof. On the 2d day of January, 1843, the'
said administrator disclaimed so much of the claim in the said
letters-patent as embraced the application of circular saws to
reduce floor plank and other materials to a width ;
and * afterwards, on the 2d day of January, 1843, [*125]
he granted to William Washburn and Charles W.
Brown, the present plaintiffs, certain rights to use the said
patent, by the following deed, which was duly recorded in
the Patent Office :

*' This indenture of three parts, made and concluded on
the second day of January^ in the year eighteen hundred and
forty-three, by ^nd between WilKam W. Woodworth, of the
town of Hyde Park, of the county of Duchess, and State of
New York, Esq., as he is administrator of the goods and estate,
which were of William Woodworth, hereinafter mentioned,
deceased, of the first part^ William Washburn, and Charles
W. Brown, both of Boston^ in the county of Suffolk, and
State of Massachusetts, carpenters^ of the second part, and
James G. Wilson, of the city, county, and State of New York,
gentleman, of the third part, witnesseth :

'^ That whereas letters-patent bearing date on the twenty-
seventh day of December, in the year eighteen hundred and
twenty-eight, were granted to William Woodworth, now de-
ceased, by the United States of America, for an improvement
in the method of tonguing, grooving, and cutting into mould-
ings, or either/ plank, boards, and other materials, aqd for
reducing the same to an equal width and thickness, and also
for facing and dressing brick, and cutting mouldings on, or
facing metallic, mineral, or other substances.

^^And whereas the term for which the said letters-patent

18*

210 PATENT CASES.

Washbam et al. v. Goald. 3 Story.

were granted, did expire by the limitation contained therein,
on the twenty-seventh day of December now last past, and
before the expiration of the said term, snch proceedings were
had, that, pursuant to act of Congress in such case made and
provided, the said letters-patent were renewed and extended
for the further period of seven years from and after the expi-
ration of the said first term, the certificate of renewal whereof
bearing date on the sixteenth day of November, being granted
unto the party of the first part, one of the heirs, and the
administrator of the said William Woodworth, de-
[ * 126 ] ceased ; * and whereas the parties of the second
part have paid to the party of the first part the sum
of five hundred dollars, and have given to the paVty of the
first part their negotiable promissory notes, bearing even date
with these presents, one for the sum of one thousand dollars,
payable in ninety days from the date thereof; one for the
same sum, payable in six months from the date therebf ; one
for the same sum, and payable in twelve months from the
date thereof; one for the same sum, and payable in eighteen
months from the date thereof; one for the same sum, and
payable in two years from the date thereof; one for the same
sum, and payable in thirty months from the date thereof; and
the last for the sum of five hundred d^lars, payable in three
years from the date thereof, and all the said seven promissory
notes bearing interest from their date.

^'And whereas, in consideration of the said money and
notes, the party of the first part hath agreed to license and
empower the parties of the second part to construct and use,
and to license others to construct and use fifty of the said pa-
tented machines, within the counties of Suffolk and Norfolk,
and in the towns of Charlestown, Cambridge, West Cambridge,
Watertown, Medford, and Maiden and Rockbottom village,
in the county of Middlesex, in the State of Massachusetts —
in such manner, nevertheless, that the license and authority

PATENT CASES. 211

Washbnrn et al. v. Gould. 3 Story.

SO granted shall stand and be as security unto the party of
the tirst part, and his assigns, for the payment of each and all
of the said promissory notes.

" Novir, the said parties have covenanted, granted, and
agreed in manner following.

First. The party of the first part does hereby license and
empower the parties of the second part, and their executors
and administrators, to construct and use fifty of the said pa-
tented machines within the territory aforesaid ; and also with-
in the same territory to license and empower other person or
persons to construct and use one or more of the
said patented * machines, during the whole period [ * 127 ]
for which the said letters-patent have been granted;
but the whole number of machines by the parties of the
second part, and by all persons empowered by them, con-
structed and used during the said period in the said territory,
shall not, at any one time, exceed the said number of fifty
machines.

"And provided also, that if at any time or times the parties
of the second part, or their representatives, shall make any
default in the payment of the said promissory notes or either
of them, it shall be lawful for the party of the first part, or his
assigns, at any time while such neglect or default shall con-
tinue, to give notice in writing to the parties of the second
part or their assigns, and to any person or persons, licensed
and empowered by them to use the said machine, to cease
and discontinue the use thereof; and if they or either of them
shall fail so to do for the space of ten days after such notice,
' the parties of the second part hereby covenant with the party
of the first part, and his assigns, that it shall be lawful for
any court of equity, having jurisdiction of the premises, to
enjoin the parties of the second part and their assigns, and
all persons empowered by them as aforesaid, from using the
said machines, until the further order of the Court ; and if
such neglect or default should continue for the space of thirty

212 PATENT CASES.

Washbam et al. v. Gould. 3 Story.

days after such notice, it shall and may be lawful for the
party of the first part, or his assigns, to sell at public auction,
in the city of Boston, after advertising the same six times in
some newspaper printed in the said city, all the right, title,
and interest which, by these presents, are in any way granted
unto the said parties of the second part ; and the party of
the first part, or his assigns, may bid at such sale, and in the
names of the parties of the second part, or their assigns, as
the case may require, may convey and assure the same to the
purchaser, and thereupon all license, power, and authority of
the parties of the second part and their assigns, and of all
persons empowered by them shall cease, and thereupon it
shall and may be lawful for any court of equity-
[ * 128 ] ''^having jurisdiction of the premises, perpetually to
enjoin the parties of the second part and their as-
signs, and all persons empowered by them, from constructing
or using any of the said patented machines. And the pro-
ceeds of such auction sale, after deducting all necessary ex-
penses, shall be applied to the payment of all such of the said
promissory notes as then remain unpaid, without prejudice to
any remedy, which the party of the first part or his assigns
may have for any balance, which may remain due to him ;
but if the said proceeds should be more than sufficient to pay
the amounts remaining due on the said notes, such excess is
to be paid to the parties of the second part, or their represen-
tatives or assigns.

Second. The parties of the first part and third part cove-
nant with the parties of the second part, that they will insti-
tute suits at law, and in equity, against any and all person or
persons who shall infringe upon the patent aforesaid, within
the territory aforesaid, during the period of two years from
the date hereof, upon receiving notice of such infringement
from the parties of the second part, that they will prosecute
the said suits at their own expense to£nal judgment with due
diligence, and that, after deducting all the expenses of such

PATENT CASES. 213

Washburn et al. v. Gould. 3 Stoiy.

suits, and a reasonable compensation for their own expenses,
time, and pains in prosecuting them, they will pay over the
damages recovered therein unto the parlies of the second
part, or their representatives or assigns.

Third. If it should be finally decided in either of the suits,
commenced as aforesaid, within the said period of two years,
by the highest court, to which the said parties of the first and
third part, or the defendants in such suit shall carry such suit
by writ of error or appeal, that the said extended and renewed
letters-patent are void, the parties of the second part shall be
thereby released and discharged of and from the payment of
all such of the said promissory notes as shall then remain un-
paid ; and if either of the said notes shall then be paid, the
said party of the first part^ and the said party of the
* third part, each of them, severally, and not jointly, [ * 129 ]
covenants with the parties of the second part, thalt
each of them will repay to the parties of the second part, one
half of whatever sum shall have been so paid on the said
notes, with interest from the several times of payment, de-
ducting, however, a reasonable compensation for any benefits,
profits, or advantages, which shall then have been received
by the parties of the second part, under or by virtue of the
license hereby granted.

Fourth. The parties of the second part covenant with the
parties of the first and third parts that they will at all times,
during the said term of two years, suffer and permit the par-
ties of the first and third parts to use their names in all such
suits as may be commenced as aforesaid, and that they will
aid and assist the parties of the first and third parts in^ pro-
curing the necessary evidence to sustain such suits when
commenced.

Fifth. The party of the first part covenants with the party
of the second part, that he will not license and empower any
person or persons to use any of the aforesaid machines within

214 PATENT CASES.

Washburn et al v. Gonld. 3 Storj.

the territory before named, during the said term of seven
years, for which the said letters-patent have been extended ;
but nothing herein contained shall be so construed as to pre-
vent the party of the first part from constructing or licensing
the construction of the said machine to be used elsewhere
than in the territory aforesaid.

In testimony whereof, the said parties have set their hands
and seals, on the day and year first above written, to this and
to two other instruments of like tenor and date.

W. W. WOODWORTH,

W. Washburn,
Charles W. Brown,
James G. Wilson.
Sealed and delivered in presence of
Horace Philbrook.

[ * 130 ] * The plea was the general issue, and a notice of
special defence was filed.

The present action is brought by the plaintiffi for an alleged
violation of their right under the said deed by the defendant,
and the damages were laid at $2,500.

Franklin Dexter and B. R. CurtiSy for the plaintifis.

C. G^. Loringy Joel GileSy and W. Dehon^ for the defend-
ants.

At the trial the following points were made by the counsel
for the defendants.

1st. That the plaintifis could not bring the present action,
they being merely limited licensees, and not exclusive owners
of a right in the patent. That under the existing Patent
Law, the plaintifis must be either grantees of an undivided

PATENT CASES. 215

Washburn et aL v. Qould. 8 Stoiy.

interest in the patent, or grantees or owners of the exclusive
right in the patent within a given territory. That the term
^' exclusive/' signified the " whole " interest, which the patent
conferred, and that the patentee, having reserved to himself,
by a clause in the contract with the plaintiffi, the right to
construct and to license others to construct these machines
within the territory for which the right was granted to the
plaintiffs, the plaintiffs could in no sense be considered as
possessing the exclusive right.

To this it was answered, in behalf of the plaintiffs, that the
person actually interested in the patent-right, was authorized
by the law to bring an action for a violation thereof; and that
although the said clause in the contract was, taken separately,
ambiguous, yet that the' whole covenant, and especially that
portion, providing that the parties of the first and third parts
might use the name of the party of the second part, plainly
indicated, that the grant was of an exclusive right ;
* and that, if the plaintiffs could not bring the ac- [ * 131 ]
tion, no one could, for they were the only parties
having an exclusive right and interest.

Stort, J., said, — The language of the Patent Act, of 1836,
<^ 11, refers to the grant of an exclusive right in a patent, and
ahe term exclusive comprehends not only an exclusive right
to the whole patent, but an exclusive right to the patent in a
particular section of country. The action for the violation of
an exclusive right is confined to the owner of such a right.
But the right granted to the plaintiffs in this case is exclusive,
for the limitation of the number of the machines does not
destroy the character of that right. That the exclusive right
in certain territories does exist in the assignees, is clearly in-
dicated by the fourth clause in the indenture, and the grant
of such a right is not inconsistent with the reservation, that the
grantor might construct machines there, because he might do

216 PATENT CASES.

Wftshbara et al. v. Gould . 3 Story. "*

that by way of a license reserved to him under 'his assignees.
The present judgment of the Court is, that the grant to the
assignees is of an exclusive right, and suits are to be brought
in the name of the assignees, but at the expense of the grantor.

The second point raised by the defendants' counsel, viras
that, under the Patent Laws, nobody but the patentee was
entitled to an extension or renewal of the patent, and that ii)
this case, the patentee having died previous to such an exten-
sion, no pne else was authorized to procure it. That such a
right was nowhere given by the statute to the legal represen-
tative of a patentee, but solely and exclusively to the patentee
himself, and that it was manifest, from all previous and sub-
sequent legislation in the United States, that the absence of
any such provision was not an accidental omission, but the
result of design. That the right of renewal was intended as
a personal privilege of the patentee alone.

. [ * 132 ] * To this point, it was answered by the counsel
for the plaintifis, that no new patent was issued,
and no new right granted, but that there was a mere exten-
sion of an existing right for an increased length of time. That
the design and policy of the act were to reward the inventor
by securing to him, his family and representatives, the benefit
of the invention, and consequently the grant was to him, his
heirs, administrators, or assigns ; and that this policy was in-
consistent with the idea, that the benefit of his invention was
to be strictly limited to the inventor. That there was nothing
in the Statute of 1832 to show, that an assignee was not
entitled to a renewal ; and that the counsel for the defendant
had confounded the term '^ patentee " with that of ^' inven-
tor," and assumed what the law did not, that one must neces-
sarily be the other. But that, in point of fact, the term
<' patentee " applied to any person having a right under the

PATENT CASES. 217

Washburn et aL o. Gould. 3 Story.

patent, whether as executor, administratory or assignee. That
the right of the original grantee to make a contract for the
renewed right, clearly established his power to make a valid
assignment of all his rights and privileges in the patent ; for
it was not possible, that Congress could have designed, that
the deathr of the patentee should operate to pat an end to
that right, when vested in his grantee. That the application
for the patent must, indeed, be in the name of the patentee,
and that the holder of the legal interest must apply for it, and
then that it would enure to the holder of the beneficial inte-
rest That such was the practice of the board of commission-
ers for patents, and that such had been decided to be the law
by Judge Thompson, in the case of Van Hook v. Scudder,^
which was subsequently reaffimied by him. That an injunc-
tion had been granted by Judge McKinley on the same
ground ; and that the same doctrine had been affirmed by
Judge McLean in the case of Brooks v. Bicknell et al.
(Walker's Western Law Journal, January, 1844.)

•Stort, J., said, — The rule of comity always [ • 133 ]
observed by the Justices of the Supreme Court in
cases which admitted of being carried before the whole
Court, was to conform to the opinions of each other, if any
had been given. Such decisions amounted to authority,
which, though not conclusive, were operative, whenever the
question should be carried up ; and therefore, although his
mind was not withdui much difficulty on this point, he should
rule for the plaintiffs, in conformity with the opinion of Mr.
Justice McLean.

3d. Another point made by the defendants was, that as the
drawings of Woodworth's machine were not referred to in
the specification, they could not be used to explain, aid, or
enlarge it This point was elaborately argued on both sides,.

VOL. n.— p. c. 19

218 PATENT CASES,

Waflhbnm et aL v. Gould. 3 Storj.

and was ruled by the Court in favor of the plaintiffs, in ac-
cordance with the decision of Mr. Justice McLean, in Brooks
V. BicknelK

4th. Another point contended for by the defendants was,
that all parts of Woodworth's machine were previously known,
and could be found described in Bentham's specification.

Stort, J., said, -^ The law is, that whoever first perfects
a machine, is entitled to the patent, and is the real inventor,
although others >may previously have had the idea, and made
some experiments towards putting it in practice. In England,
the law goes even so far as to grant such an one the patent,
although the antecedent experiments of others were known
to and used by him in perfecting his machine. The law in
this country has not gone quite so far, but I do not mean to
say, that there would be any difficulty in going to that extent.
At any rate, he is the inventor, and is entitled to the patent,
who first brought the machine to perfection, and made it
capable of useful operation.

[ * 134 ] * Various other points were made by the defend-
. ants, which, together with the ruUng of the Court,
are sufficiently stated in the charge and in the opinion on
the motion for a new trial. Much evidence was introduced
by the defendants, to prove the vagueness and insufiiciency of
Woodworth's specification; and also to prove, that every
thing claimed by Woodworth was to be found in the specifi-
cation of the patent granted to Samuel Benthqjn, in England,
April 23d, 1793, and printed in the Repertory of Arts and
Manufacture, Vol. X. published in London, A. D. 1799 ; also
in the specification of the patent granted to Bramah in
England, A. D. 1803, and published in Rees's Encyclopedia,
Vol. XXVIIL ; also in the specification of the patent granted
to Malcpm Muir, of the city of Glasgow in Scotland, dated

PATENT CASES. 219

Washbnm et al. v. Gould. 3 Storj.

Jane 1, A. D. 1827, an abstract of which was published in
the London Journal of Arts, second series, Vol. II. p. 68, and
a notice whereof was published in the United States, in the
Franklin Journal, Vol. I. for A. D. 1828; also in the specifi-
cation of the patent granted in the United States, to James
Collins of Anson, in the State of Maine, A. D. 1827, for
shearing cloth by revolving shears. In rebutter of which,
much evidence was also introduced on behalf of the plaintiffii.
In the course of the trial, the following question was sug-
gested by the counsel for the defendants: Whether a license
purchased under the original patent, would cease on the ex-
piration of the patent, or continue in force during the subse-
quent extension.

Stort, J. I have an impression, but it is not a very dis-
tinct one, that some question of an analogous nature arose
under the act of Congress for the renewal of the patent of '
Oliver Evans, (Act 22d Jan. 1808, chap. 117,) which was,
of course, governed by the old Acts of 1798 and 1800 ; and
that it was then held, that any future use of the patented
machine of Evans, after the renewal, except so far
as it was * saved by the proviso of that act, would [ * 135 ]
be an infringement of his patent. Whether that ap-
plied to cases of Kcenses, I do not exactly remember.^ But I
have had occasion recently >to decide the very point, in a case
in Maine, in respect to a license. And I there held, upon
full consideration, that every license, or assignment, under
the old laws, before the Act of 1836, expired with the limita-
tion of the original patent, unless it was expressly in terms so
granted as to be applicable to any renewal of the patent
afterwards. The decbion of the Court proceeded upon the

1 The case referred to, probably, was Evans r. Jordan, 9 Cranch, R.
199. See Vol. I. page 57.

220 PATENT CASES.

Washburn et aL v. Qonld. 3 Stoiy.

ground J that under the old laws, before the Act of 1836, the
licensee's, or assignee's right, was necessarily bounded by the
same limits as that x>f the licensor, or patentee, — that is to
say, to the original term granted by the patent to the licensor
or patentee. If, afterwards, the patent was renewed, it was
a new grant independent of the old, and the patentee was
entitled to the sole and exclusive benefit thereof, unless the
licensees or assignees under them had, by their original con-
tract, secured to themselves by express covenant or grant, a
right to the benefit of the renewed patent.

Stobt, J., afterwards charged the jury as follows :

This is a case, gentlemen of the jury, which, as you are
well aware, has taken up a vast deal of time and attention.
And, indeed, I may truly say, that it has been the most pro-
tracted civil cause ever tried in this Court.

Undoubtedly this planing machine is an invention of great
utility, and the patent^right, therefore, is the more likely to
be contested ; and it often happens, that in this class of ac-
tions, many points are made in the opening and perhaps
much dwelt upon in the trial, which ultimately prove of small
importance, and are abandoned or waived in the sequel.
You have seen this in the present case. I do not
[ * 136 ] feel called * upon to go into any minute discussion
of the points raised here, for after the full and
elaborate aiguments of the counsel, I could not aid your
judgments by going over the whole ground ; and shall only
present to you a general view of the mass of the evidence, as
it has been given.

But before doing this, I shall take notice of what has been
entirely omitted on each side. Not a word has been said as
to the amount of damages, in case the verdict should be in
favor of the plaintiffs. And this has been omitted, on the
long-settled and very proper ground, that whenever a patent-

PATENT CASES. 221

Washbarn et al. v. Gould. 3 Storj.

right is contested here for the first dme — fully and fairly
contested — it is only for the sake of determining whether
th^ patent be yalid or not. If its validity be sustained, then
the patentee can obtain from the equity side of the Court, an
injunction to restrain a party from using the invention to the
injury of the owner. Still, it is your duty, if you find for the
plaintiff, to give him such reasonable damages — not vindic-
tive— but such as are not covered by any of the costs he will
recover, to indemnify him for the necessary and unavoidable
expenses of establishing his right. Observe, you are not
always bound to do this ; for I can conceive of cases, where
only nominal damages should be rendered ; as where a pa-
tentee fraudulently leads a party to infringe on his right, and
then brings an action against him merely to gratify his own
malice or revenge. But you should suffer no valid patent to
go out of court without indemnifying the owner for his rea-
sonable and necessary charges in establishing his true right ;
in other words, he should not be sent away worse than he
came into court. Therefore, if you find for the plaintiffs, you
will award such damages as you think them fairly and rea-
sonably entitled to, under all the circumstances.

A considerable number of questions of Jaw have been
raised by the defendant, and reduced to writing, most of
which have been disposed of, but which I will recapitulate
before coming to the matters of fact.

* These questions are stated as follows : [ * 137 ]

1st. That the grant of an extension of patent to
an administrator, is not within the Statute of 1836.
- This point is overruled.

2d. That plaintiffs have not such title to any exclusive
right as enables them to maintain this action under the inden-
ture in their declaration mentioned.

Overruled.

3d. That the patent was void at the time when, and from

19*

222 PATENT CASES.

Washbnm et al. v. Qoald. 3 Story.

which, the contract between the plaintiffs and the administra-
tor, and Wilson, took effect ; because it purports to grant a
right under the patent, as including the circular saw, which
is disclaimed, and admitted not to be valid ; and at the time
of the date of said contract, the disclaimer of the circular saw
had not been filed or recorded.

Overruled.

4th. That the contract between the patentee and Strong,
on one part, and Emmons and Toogood and others, of the
other part, avoids both patents, being a mutual admission,
that neither patent was good, because purporting, that each
was of equal validity, whereas both could not be good ; and
because such contract operates as a fraud upon the public.

Overruled as an admission in point of law. And I hold
that the occasion of the contract may be established by other
evidence, and the reasons why it was entered into ; and if
the jury believes . the evidence on this point in the case, the
contract was a compromise on both sides, without any admis-
sion, of, or intent to admit, on either side, the invalidity of
the patent.

5th. That the surrender of the patent by the administrator
defeated the title of plaintiflEs.

Overruled.

6th. That the patent is imperfect and void, for the want

of suitable drawings and references, and that if the

[ * 138 ] drawings * may be referred to, they should be as

composing part of the description, and not part of

the claim.

Overruled. The drawings are to be treated as part of the
written specification, and ipay be referred to, to show the na-
ture, and character, and extent of the claim, as well as to
compose a part of the description.

7th. That the patent is void, for uncertainty and ambiguity
in the description ; and also for uncertainty and ambiguity in
the claim.

PATENT CASES. 223

Washburn et aL v. GonU. 3 Story.

Answer. Whether the patent is void for uncertainty and
ambiguity in the description, is a matter of fact to be decided
upon the evidence of experts. The patent is not void for
uncertainty and ambiguity in the claim, for the written speci-
fication of the claim may be, and is, aided by reference to
the drawings. Upon examining the written specification, in
connection with the drawings, the claim, so far as it is a mat-
ter of law, must be deemed to be a claim for an improved
machine, as described in the written specification and draw-
ings.

8th. That the patent is void for multiplicity of claim.

Overruled.

9th. That the patent is void for falsity of claim.

Answer. This is not a mere matter of law, but involves
matters of fact.

10th. That the disclaimer of the circular saw was not made
within a reasonable time.

Answer. This is not a mere matter of law in this case,
but is to be judged of with reference to all the circumstances
in evidence.

11th. That the claim stated by the counsel as that relied
on in this trial, *^ as one for the whole machine or apparatus
as an improved machine, capable of three distinct operations,
or of producing three results, to wit: planing, tbnguing and
grooving at the same time in the manner described ; and also
of performing each of those operations, or producing each of
those results separately, in the manner described,"
is not set * forth in the specification; or, in other [* 139]
words, that the claim therein stated is not reasona-
bly susceptible of this construction.

Overruled, as a matter of law. The drawings are to be
deemed a part of the specification, and taking the whole to-
gether, the patent is for an improved machine^ and, as such,
is not open to the objection stated.

224 PATENT CASES.

Washburn et ak v, Gould. 8 Stoiy.

12th. That the drawings cannot be referred to for the
purpose of adding any thing to the specification or claim not
specifically contained or mentioned therein ; so that if top
pressure rollers be not described in the specification, recourse
cannot be had to the drawings to supply or describe them, as
making part of the specification or claim.

Overruled. The drawings are to be deemed a part of the
specification, and may be referred to for the purpose sug-
gested in the objection.

13th. That the specification and drawings do not contain
any description or claim of top pressure rollers with such
reasonable certainty and precision, as the law requires, to
constitute a valid claim therefor, as a part of the machine de-
scribed, either separately or in combination with the cutting
wheel.

.Answer. This is not a matter of law, but involves a mat-
ter of fact, as to the Certainty and sufficiency of the descrip-
tion, in the particulars mentioned.

14- That the patent cannot be maintained for a mere com-
bination or connection of the top pressure rollers with the
rotary cutting wheel, because the claim set forth in the spe-
cification, and as made by counsel, described and embraced
an organized machine, designed to be used in many cases
without them, and where they cannot be applied.

Answer. This is not a mere matter of law, but involves
matter of fact. The (Nitent is not understood by the Court
to be for a mere combination or connection of the top pres-
sure rollers with the rotary wheel, considered alone
[ * 140 ] per sesCf but * in combination with the other parts
of the machine; and whether the to'p pressure
rollers can be applied, or not, for all the uses described in the
specification and drawings, is a matter of fact for the consi-
deration of the jury.

ISth. That if top pressure rollers for the purpose of con-

PATENT CASES. 225

Waihbiim et al. v. Gould. 3 Stoiy.

fining the. plank to the carriage, are embraced in the patent,
nevertheless the defendant has not infringed, because he uses
rdlers, only for the purpose of feeding, and not for the pur-
pose of confining the niaterial to the carriage, as he uses no
carriage ; and the incidental eflfect of their serving as pressure
rollers, if they do so, is no infringement of their patent, be-
cause the specification admits of feeding rollers as one means
of lateral motion not claimed as an invention.

Answer. This is a question of fact for the consideration
of the jury.

16th. If plaintiffs have a valid patent for the organized
machine described therein, the defendant has hoi infringed
upon it ; because the machine used by defendant is substan-
tially different from that patented, the machine patented hav-
ing as a part of its spedfied organization, a carriage, which is
iessential to many of the operations, which it is described as
desigiied to perform, and several of which it cannot perform
with the use of feeding rollers, and to which carriage alone
the moving power is directed to be apfdied, and which car-
riage is described and pointed out as the only means of ad-
justing the material or machine for producing the various
thicknesses that may be required ; whereas the machine of
defendant has no carriage, but applies the moving power al-
ways directly to the material, and no carriage can ever be
useful for the purpose for which it is constructed and used,
and the adjustment for producing various thicknesses is regu-
lated by means of boxes and apparatus applied to the cutting
wheel for the purpose of raising or depressing it, as occasion
may require.

Answer. This, likewise, is a question of fact.

* 17th. Plaintiffs' claim is for a combination of [ * 141 ]
machines, or mechanical means, all old, and none
applied to a new use, and is not for an organized machine
embracing any new part or parts put to new uses, and is,

226 PATENT CASES.

Washbimi et rfL v. Goold. 3 Story.

therefore, for a combination merely, and unless we infringe
the whole, we do not viohte the patent.

Answer. This is not a mere matter of law. The Court
cannot judicially know, whether the machine patented is
composed of parts, none of which are substantially new in
their application.

18th. That the patent in this case, according to the speci-
cation and claim as therein contained and stated by the coun-
sel, is not for any particular form or construction of a rotating
cutting wheel, nor for any particular form of platform, nor for
any particular form of carriage, nor for any particular mode
of efiecting the lateral motion of the carriage to the cutting
wheel ; and therefore, that if any machine described in Ben-
tham's patent/ or either of those testified to by Blanchard,
was composed of a platform or bench with a sliding bed or
carriage to which the material was attached, and which car-
riage was moved by any lateral motion to and along the cut-
ting wheel, in such manner as that the surface of the material
was cut, or planed, or reduced by the cutter wheel, and such
machines were, in these respects, suitable for that purpose,
then the defendant has not infringed the patent of the plaio-
tifi*s in these particulars or either of them.

Answer. This is also not a mere matter of law, but in-
volves facts and skill and knowledge in mechanics. The jury
must decide on the facts.

Having thus disposed of the questions of law, we come to
those of fact relied upon by defendant, which naturally ar-
range themselves in four classes. The defendant alleges :

1st. That Wood worth's specification is too vague to enable
a competent mechanic to construct a machine from it.

2d. ThA the invention was not new on the part

[ * 142 ] of Woodworth, * but previously known both to Ben-

tham and Blanchard, the former having described

it in bis specification, and the latter having actually carried it

into efiect.

PATENT CASES. 227

Washburn et al. v. Gould. 3 Stoiy.

3d. That Gould's machine is substaQtially different from
Woodworth's ; and^ as auxiliary to this,

4th. That Woodworth did not contemplate feeding rollers
as a mode of operating his machine.

Now, gentlemen, it is for you to say, whether the invention
belonged to Woodworth, or whether the planing machine
was known and used prior to the issue of his patent. If you
think the latter, you need go no further, but find for the de-
fendant at once. But as to this point, the burden of proof
rests upon the defendant He must satisfy you beyond a
reasonable doubt, that there was a prior invention to Wood-
worth's, because the plaintiff has a right to rest upon his
patent for his invention, till its' validity is overthrown. And
consequently, if it should so happen, that your minds are led
to a reasonable doubt on the question, inasmuch as it is in-
cumbent on the defendant to satisfy you beyond that doubt,
you will find for the plaintiff so far as this point is concerned.

In relation to this alleged priority of invention, there are
but two modes' in which it is attempted to be made out ;
namely, by Bentham's description, and by Blanchard's ma-
chine. Blanchard refers us to 1822-23, and gives a de-
scription of a machine, which he then constructed and used
to plane blocks and gunstocks. He used a roller, to which
knives were attached, but he did not use it long.

In answer to a direct question put by the Court, he said
his machine was not like the one in evidence, and, as I un-
derstood, did not pretend, that he ever made a machine,
which operated substantially by the same means as Wood-
worth's. He considered the movements of all these machines
the same, but the means of operation different But if the
means are substantially different in any supposed cases, then
there is or may be invention. The spinning ma-
chinery now so universal * is an example of this ; [ * 143 ]
and the complicated means now used to produce ,

228 PATENT CASES.

Waihbani et «1. v. Qonld. 8 Story.

the same result, formerly obtained by hand labor, and with
infinitely more rapidity and r^ularity, no one will deny to
be a great invention. Blanchard's machine was burnt, and
we have nothing novi( before as, but his recollection of what
it was ; and it is for you to say, whether he has satisfied you,
that it was substantially the same invention as Woodworth's.
It is probable, however, that you will find it necessary to
go further, and look into Bentham's description, which has
been so copiously commented on in this case. For one, I do
not comprehend a tithe of what may be found there ; but the
question is for your judgments, aided by the testimony of the
experts, whether Woodworth's planing machine is contained
in that description. Now, you have found, that the experts
are not agreed, and, indeed, in the course of thirty years' ex-'
perience, I have never, I think, known them to agree in opi-
nion, as to whether any machine was really an invention or
not. You will weigh their testimony and give it its proper
efiect. The whole argument, in regard to Bentham, turns on
this question. Does he substantially describe, not a machine
by which planing may be done, but a machine. like the plain*
ti&' ? He does describe various things, which will accom*
plish various purposes. But the question is not, whether by
using some parts of his invention we may mal^e a machine,
which will plane, but whether that machine will be substan-
tially the same as the one Woodworth patented. That is the
sole question ; for he may have suggested fifty difierent modes
or methods of planing, aud still if this very mode be not
there, it cannot be properly said, that he has described the
plaintifis' machine. You most see, in efiect, that this s^me
machine was substantially in Bentham^s eye when writing his
specification, and would be in the eye of an expert on read-
ing it. I am not mechanic enough to aid you in explaining
that specification ; but you have heard several of
[* 144 ] the plaintifi''s * witnesses testify, that they could

PATENT CASES. 299

Wuhlmni ei «1. v, Ooald. 3 Storf .

not discern this machine in it, that they coald not make
it from it. They are all able and ingenious men. Mr.
Keller, whose opinion may well be regarded as of the very
highest authority, since it is impossible for any man to have a
more weighty experience on this subject, he having for so
long incessantly devoted his attention to machinery and to
patents, —- Mr. Keller tells you distinctly, that there is no
such machine as Woodworth's in Bentham's specification.
On the other hand, Mr. Adams, also an eitremely able and
experienced man, states directly the contrary. And so of the
others. You will remember the names of the witnesses on
the one side and on the other, and also the diversity of their
opinions on this point. Now, after all, in relation to this
various evidence, all honestly and clearly given, by men of
great skill and ability, what is your conclusion ? Have you
evidence, which leaves no reasonable doubt in your minds,
that Bentham really does substantially describe Woodworth's
machine ?

Upon this point, the counsel for the plaintiff made a sug-
gestion, towards the close of his argument, which struck the
Court as possessing great force.< Bentham's specification was
known and filed so early as 1793, while Woodworth's patent
was not taken out till 1828. It is universally admitted, that
the leaning machine is a most valuable invention. The
counsel have said, indeed, that it is the most valuable of all,
which have been made ; and though, for myself, I should
scarcely go so far as that, but regard the cotton-gin, next
after Fulton's wonderful invention of the steamboat, whose
incalculable benefits the whole civilized world is eyery day
experiencing, in the comparative annihilation of distance and
time, and the consequent advancement of human improve-
ment, as perhaps the most important invention within my
knowledge ; still I can have no hesitation in conforming to the
general high estimate of the importance and utility of the

VOL. II. — F. c. 20

280 PATENT CASES.

Wuhbam et al. v. Qovld. 3 Stoiy.

planing machine. Bat in the best scientific works
[ * 145 ] of the * day, no planing machine like Woodworth's
was ever alluded to, till after his patent was taken
out, though Bentham's specification was constantly spoken
of, and the planing machine he patented in 1791 was well
known and is described. Now, with so many ingenious and
inquiring minds constantly at work upon the construction
and improvement of machinery, both in Great Britain and
America, all having easy access to well-known publications
relating to science and the arts, how could it have happened,
that down to the year 1828, no man should ever construct
this machine from Bentham's specification of 1793, if it is so
clearly to be found therein ? Why should it be, that for a
period of thirty-five years, not a man in America or England,
dreamt of constructing this machine, which has proved of
such vast utility, from Bentham, if Bentham really had de-
scribed it? Certainly, it could not haye been from ignorance
of the specification, for the Repertory of Arts, in which it was
published, was a work of much authority in England, and
was, besides, as well known here, as on the other side of the
Atlantic. This seems to me a fact of great importance,
though I have no right to say how far it ought to afiect your
minds. But is not this total silence for so long a time, a
circumstance, which may naturally aid you in forming a con-
clusion on this controverted point ? And if, as I have before
said, you are in doubt, your verdict in regard to this point
must be for the plaintifis.

But the great question of the case is, as indeed from an
early period of the trial I thought it would be, this: — Is the
machine used by the defendant, substantially the machine
which Woodworth invented? And in regard to this, like-
wise, there is very great diversity in the testimony of the
experts. At the opening for the plaintiff, four or five very
intelligent men gave their evidence, that there is no substan-

PATENT CASES. 231

Washbnm et al. v. Goald. 3 Story.

tial difference between the two ; that a portion of the appara-
tus is different, but that substantially the mode of operation
is the same ; and that, in truth, the substance of
defendant's * machine is Woodworth's invention. [ * 146 ]
But on the other hand, the testimony is just as posi-
tive, explicit, and strong \the other way. And the burden
here is upon the plaintiff, who must show, that there has been
an infringement upon his right. This is a point which will
merit and require your deliberate and careful attention.

Woodworth's claim is substantially for a planing machine ;
for a mode of accomplishing a particular end by certain
means ; and to maintain his case, the plaintiff must show, that
there has been a substantial invasion of his machine by the
defendant

There are various modes of operation mentioned in Wood-
worth's specification. He speaks in the first place of *' rack
and pinion," but does not confine himself to that means; for
he says the carriage may be moved '^ by. rollers, or by any
lateral motion, to the edge of the knives or cutters." You
will obsepre, that he contemplates the use of knives, as dis-
tinct from teeth or burrs. He speaks likewise of a carriage,
throughout. He ** does not claim the invention of circular
saws, or cutter wheels," but he does claim *' the improve-
ment and application of cutter or planing wheels to planing
boards, plank, timber, or other material." His claims, in
effect, may be stated thus : " I claim this planing apparatus as
my invention ; but though I have pointed out one particular
mode of operating it, I do not confine nfiyself to that mode,
but mention, that any lateral motion may be employed to ad-
vance the work to the cutting wheel."

Now, if Gould in his machine only dispensed with the
rack and pinion, still continuing to use the carriage, beyond
all question there would be a plain invasion ; for the rack
and pinion are not made essential to the machine. It is true.

PATENT CASES.

>. Ooald. 3 8u>r;r-

ibat Woodworth always speaks of a carriage. There ii no-
thing to show that he ever dispenses with it. But he says,
that the movement may be given to the carriage by any of
various ways. And here arises the question, whe-
[ * 147 ] ther, if an * invention in the aggregate be new, and
a party omits one part of ihe machine always used
by the inventor, such mere omission will operate to deprive
the inventor of his patent-right ? But the real pinch of .this
part of the case, is in this inquiry : Does the defendant, in
usinga part of Woodworth's machine, adopt a mode of move-
ment essentially different from that pointed out by the in-
ventor, or is that mode substantially within the scope of the
invention ?

Woodworth speaks throughout of a carriage. Gould does
not use any carriage, in the technical sense of the term, but
employs a platform. He uses feeding rtdlers to conduct the
work lo the cutters. He has no rack and pinion, for none is
necessary. And his argument is, that as he uses merely
feeding rollers, without a carriage, he employs a mode of ope-
ration not at all indicated in Woodworth's specification, and
substantially diSerenl from moving a carriage by rollers or
any other lateral motion. If there is this essential difference,
Ihe case is his. But if you are satisfied, that this principle of
feeding rollers is substantially embraced in the specification
and drawings, a mere change in the form or poalion of the
rollers will not change the character of the patentee's right.
The defendant contends, that neither in the specification nor
the drawings, is there any reference lo rollers as a moving
power, distinct from a carriage ; that feeding rollers, as such,
e nowhere pointed out; and that the rollers, which are to
t found in Woodworth, arc merely friction or guiding roll-
B. On the other aide, the plaintiff maintains, that even in
e vertical machine represented in the drawings, the rollers
e pressure rollers ; that in changing the machine to a hori-

PATENT CASES. 233

Wafihbnm et al. v, Gonld. 3 Story.

zontal form, which the inventor expressly indicates may be
done, they would operate as feeding rollers ; and that any
competent mechanic would understand them as so intended,
and would contrive means to make them rise and fall, as ne-^
cessary to produce the very result contemplated by the in-
ventor.

* Now, are these rollers, as to this mode of opera- [ * 148 ]
tion, substantially described in the patent? The
language relates to rollers generally. Their use is not pointed
out in words, except so far as it mentioned, that the motion
of the carriage may be given by rollers. Supposing the ma-
chine to be, horizontal, say the plaintiffs' counsel, what office
would these rollers perform ? Those below the plank, by be-
ing geared, would produce its motion to the cutter wheel ;
those above the plank and beyond the wheel would serve to
keep it steady, and would operate as pressure rollers to the
extent necessary for that object. So that in point of fact, the
rollers above and below would operate as, and would be, feed-
ing rollers. If it is true, that the rollers indicated in the draw-
ings .would perform this office, were the machine horizontal,
and if a skilful machinist would know, that they necessarily
must perform it, and would therefore give them the necessary
means of adjustment to produce the intended result — then
the point appears to be with the plaintiff. But the counsel
on the other side take the opposite ground, and maintain
that nothing is to be applied in the horizontal machine except
in the precise manner, in which it is indicated to be applied
in the vertical ; that the vertical rollers are not geared in the
drawings, and therefore we cannot suppose the inventor in-
tended, that gearing should be given to the horizontal. I
am not sufficiendy acquainted with mechanical science to be
able to decide about this ; but I can scarcely think it an un-
reasonable supposition, that, where an inventor contemplates
different forms and positions of his machine from that in

20»

234 PATENT CASES.

Wathlrara et aL v. Gould. 3 Stoiy.

which he describes it, a skilful machinist, in making the
change of form, would also make the requisite changes in the
parts, from his own knowledge. But there is a good deal of
forcible aigument on the part of the defendant, that these
vertical rollers could never have been intended as feeding
rollers, and that they could not perform such an office ; though

it is unnecessary to dwell on that part of the aigu-
[ * 149 ] ment * founded on the want of top-journals in the

drawing, because any skilful mechanic in building
the machine would naturally, and almost of course, confine
the rollers at both ends, whether they were intended for feed-
ing, or pressure, or guiding rollers. And as to the rollers in
the drawings, which are represented as beyond the cutting
cylinder, the plaintiff says, as we have seen, that they are press-
ure rollers to some extent, and were meant as such ; while
the defendant again contends, that in the vertical machine
they are guides. inerely, and in the horizontal machine would
be nothing but the same guides. That is a question for your
consideration, for on this point you are better judges than I
possibly could be. That in the vertical machine with the car-
riage they are friction rollers in form, is, however, of no im-
portance ; for a change of form is not a change of substance.
The defendant admits, too, that incidentally his feeding roll-
ers comprehend, to some extent, pressure rollers. It is dear
they must. But he alleges that their primary object is to.
draw the work along to the cutting cylinder, and that the
character of pressure rollers is but an incidental, though ne-
cessary, result of their office. But on the other hand, the
argument is just as good for the plaintiff, that his pressure
rollers incidentally comprehend feeding rollers, and would
operate to feed the work to the cutting wheel.

But again. Is the carriage, in Woodworth's specification,
treated of as an essential and indispensable part of the in-
vention, or might the machine be complete without the car-

PATENT CASES. 235

Wuhbam et oL v. Gould, d Story.

riage, and by the -substitution of some other means ? If in all
cases the inventor contemplated the use of a carriage, and of
no other means, and if the defendant in dispensing with it
thereby employs what the inventor never thought of, that is
a good ground of defence. You are the judges of this ; and
if you find, that the defendant's feeding rollers are not sub-
stantially in the patent, and that the carriage is an
essential part * of the Wood worth machine, your [ * 150 ]
, verdict, in that respect, must be for the defendant.

But then comes another consideration. Admitting all this
to be true, as the defendant alleges, is there any other part
of Woodworth's machine, on which he has infringed ? Be-
cause, if his dispensing with the carriage and using the feed-
ing rollers constitute the only differences in the two machines,
and if the rest be the invention of Woodworth, not known
be(ore, then Gould has merely improved upon Woodworth,
and has no right to use Woodworth's invention, up to the
point where the difference commences. He might, to be
sure, have a clear title to a patent for his improvement, but
it must be as an improvement ; and it woufd give him no au-
thority to use the <)ther parts of the machine, which Wood-
worth invented. Therefore it is not sufficient for him to
show that his machine is a great deal better than Wood-
worth's; he must establish the fact, that he uses nothing
which Woodworth invented. Now, he does not use Wood-
worth's carriage, nor the rack and pinion, nor, his pressure
rollers, except in so far as his feeding rollers are necessarily
pressure rollers. What of his, then, does he use ? The emit-
ters. No particular form of the cutting knives is mentioned
in Woodworth's specification ; nor was it necessary, because
a change in the form, while the principle remains the same,
will not escape a violation of patent-right.

The question here for the jury to determine is, whether
the defendant's improvement is made on the plaintiff's ma-

236 PATENT CASES.

Washbnm et al. v. Gould. 3 Stoiy.

chine as a whole, by taking out part and substituting some*
thing better, but still retaining a part or parts of the original
invention ; or whether the plaintiff's machine is a mere ag*
gregate, a congregation of parts, alf old in themselves, con-
stituting a unit, to which the carriage, in combination with a
rack and pinion, or rollers, or some lateral motion, is abso-
lutely essential ; and which unit, defendant has not invaded

because he dispenses with some of its indispensable
[ * 151 ] constituent * parts. If you think, that there is any ^

such invention, on the whole, as the patentee claims,
and that defendant's alterations in the machine are mere im-
provements, but the residue in the aggregate is the invention
of the patentee, and was not known before him, then your
verdict will be for the'plantiffs. The difficulty, lies in saying,
where the invention was ; and you are to consider, whether,
taking out the carriage,. this machine in its other parts was an
invention of those parts, or any of them, or whether it was
merely a combination or aggregate. I confess, that my im-
pression has been, that Woodworth meant his claim to be
for an aggregate ftiachine, but such is its obscurity, that I am
unable to say, decidedly, what, in this respect, he did mean
it to be. If you should be of opinion, that the original machine
is composed of parts, all of which were known before, and
that Woodworth's invention was merely of a new aggregate
or combination of those parts, to which the carriage was in- *
dispensable, you will find for the defendant. But if, on the
contrary, you think, that the defendant uses parts of Wood-
worth's real invention, or if his machine is but an improvement
on the original, and not substantially and essentially different
from it, the verdict should be for the plaintiffs.

I do not know, gentlemen, that, by saying any thing more, ,
I could aid you at all in coming to a conclusion, and indeed
I fear, that I have not made myself so clearly understood
throughout, as I could desire. But before leaving the case

PATENT CASES. 237

Wofllibani et al. v. Gould. 3 Stoiy.

in your hands, I must take notice of the point of law, upon
which the plaintiff's counsel have asked me to instruct you.
The ground they take I consider clearly correct, and you will
therefore regard it as the law, that the plaintiff's patent is not
avoided by the publication of Bentham's specification, unless
you are satisfied, that that specification contains an intelligi-
ble description of an organised machine, fit for the planing
of plank or boards, substantially like plaintiff's ; and that if
every part of plaintiff's machine can be found de-
scribed in * Bentham's specification as parts of other [ * 152 ]
machines, but not as combined in one machine in
such a manner as to be fit for planing boards and plank, it will
not avoid the plaintiff's patent.

The jury rendered a verdict for plaititifli, with $50 dama-
ges.

On a subsequent day, a bill of equity was filed, setting
forth the facts heretofore stated, and praying, that an injunc-
tion should be issued against the defendants, to restrain them
from the further use of the machines, which were the subject
of the present patent. Two motions were made, one on the
law side of the Court for a new trial, and the other on the
equity side of the Court for an injunction, — which were
both argued at the same time.

The motion for a new trial viras as follows:

William Washburn et al. v. Jambs Gould.

And now after verdict and before judgment, the defend-
ant respectfully prays this honorable Court, that a new trial
may be granted to him for the following reasons :

1st. Because the honorable judge, who presided at the
trial, instructed the jury as matter of law, that the plaintiffs
under their indenture with the administrator of the patentee

238 PATENT CASES.

Washburn et al. v. Goald. 3 Story.

and Wilson, mentioned in the declaration, had title to such
an exclusive right as would enable them to maintain this
action.

2d. Because the honorable judge, who presided at the trial,
instructed the jury as matter of law, that the patent was not
void at the time when and from which, the indenture be-
tween the plaintiffs and the administrator and Wilson took
effect, by reason of its purporting to grant a right under the
patent, as including the circular saw, which was afterward
disclaimed, timd is admitted not to be valid ; and which dis-
claimer at the time of the date of s^id contract had
[ * 153 ] not been * filed. Whereas the jury should have
been instructed, that the patent was lioid, because
at the time of the date^of said indenture, when and from which
said indenture took effect, it purported to grant a right under
the patent, as including the circular saw, which has since been
disclaimed and is admitted not to be talid ; but which disclaim-
er had not been filed according to law at the time of the date
of said indenture.

3d. Because the honorable judge, who presided at the
trial, refused to instruct the jury, that the patent was imper-
fect and void for want of suitable drawings and references,
and that if the drawings may be referred to they should
be as composing part of the description and not part of the
claim.

4th. Because the honorable judge, who presided at the
trial, instructed the jury as matter of law, that the patent was
not void, for ambiguity and uncertainty in the claim.

5th. Because the honorable judge, who presided at the
trial, refused to instruct the jury as prayed for by defendant's
counsel, that the patent was void for multiplicity of claim.

6th. Because the honorable judge, who presided at the
trial, refused to instruct the jury as matter of law, that the
drawings could not be referred to for the purpose of adding

PATENT CASES. 239

Waahbam et al. «. GoaU. 3 Stoiy.

any thing to the description or claim^ not specifically mention-
ed therein ; so that if top pressure rollers were not described
in the specification, recourse could not be had to the drawings
to supply or describe them, as making part of the specification ;
whereas the jury should have been instructed as prayed for
by the defendant's counsel.

7th. Because the honorable judge, who presided at the
trial, refused to instruct the jury, that if top pressure rollers
were embraced in the patent, for the purpose of confining the
plank to the carriage, nevertheless defendant had not infringed
in that respect, if he used rollers only for the purpose of feed-
ing, and not for the purpose of confining the material to the
carriage, and that the incidental effect of their serv-
ing *as pressure rollers j if they did so, would not [ * 154 ]
be an infringement of the patent, as the specification
admitted, of feeding rollers as one means of lateral motion
not claimed as new ; whereas the jury' should have been in-
structed as prayed for by defendant's counsel.

8th. Because the honorable judge, who presided at the
trial, refused to instruct the jury, that if the plaintifis' ma-
chine consisted of a* com position of machines or mechanical
means, all old and none applied to new uses ; and did not
embrace any new parts, or parts put to new uses ; it was in
point of law a claim for a combination ; and that if the de-
fendants did not use the whole combination they did not in-
fringe ; whereas the jury should have been so instructed as
prayed for by defendant's counsel.

9th. Because the honorable judge, who presided at the
trial, refused to instruct the jury as prayed for by defendant's
counsel, that the patent, according to the specification and
claim, as therein contained, was not for any particular form
or combination of a rotary cutting cylinder — nor for any
particular form of platform, nor for any particular form of
carriage, nor for any particular mode of effecting the lateral

240 PATENT CASES.

WMhlmrn et al. v. Goald. 8 Story.

motion of the carriage to the cutting wheel, and therefore,
that if any nnachine described in Bentham's patent, or either
of those testified to by Blanchard, was composed of a plat-
form or bench, with a sliding bed or carriage, to which the
material was attached, and which carriage was moved by any
lateral motion to and along the cutting wheel, in such man-
ner as that the surface ^of the material was cut or planed or
reduced by the cutter wheel, and that such machines were
suitable for that purpose, then, the defendant had not in-
fringed the patent in these particulars or any of them.

10th. Because the honorable judge, who presided at the
trial, instructed the jury, /that the plaintifls' patent was not
avoided by the publication of Bentham's specification, unless
the jury we|[e satisfied, that the specification con-
[ * 135 ] tained an * intelligible description of an organized
machine fit for the planing of plank or board, sub-
stantially like the plaintiffs. And that if any parls of the plain-
tiffs' machine could bq found described in Bentham's specifi-
cation as parts of other machines, but not as combined in one
machine in such a manner as to be fit for planing boards and
plank, it would not avoid plaintifii' patent.

11th. Because the honorable judge, who presided at the.
trial, omitted to construe the claim set forth and made by the
patentee, but left it to the jury to decide, whether or not the
claim was for an organized machine or for a combination
merely.

12th. Because the honorable judge, who presided at the
trial, instructed the jury, that it was not sufficient for defend-
ant to show, that defendant's machine was a great deal better
than Woodworth's, but the defendant must establish the fact,
that he used nothing that Woodworth had invented. That
defendant did not use his carriage, nor rack and pinion, nor
his pressure rollers, excepting in so far as his feeding rollers
were pressure rollers, but that he did use the cutters. That no

PATENT CASES. 241

WMhbara et «1. v. Gould. 3 Storj.

particular form of cutter knives was mentioned in this sped*
fication. Nor was it necessary, because a change in form,
while the principle remains the same, would not escape a viola-
tion of the patent-right ; by means whereof the jury were led
to understand, that the use of a cutting roller by the defend-
ant was a violation of the right claimed by plaintiff.

13th. Because, by the course and result of the trial, the
defendant is precluded from carrying up for final decision in
the Supreme Court, the points of law, which were ruled
against him for the purposes of the trial.

14th. Because the verdict was against the weight of evi-
dence.

15th. Because of the discovery since the trial of new evi-
dence, which defendant is advised, is material to the right
decision of the case.

*In support of this last point of his motion for a [ * 156 ]
new trial, the defendant stated, that he should rely
chiefly, but not exclusively, upon the deposition of Isaac
Adams, the evidence of Thomas Blanchard, Charles M. Kel-
ler, and the charge of the judge, as published ; and that the
new evidence would be disclosed in the affidavit of Daniel
Dunbar, to be filed in the equity suit, on plaintiffs' motion for
for an injunction, to be heard at the same time as the above
motion for a new trial.

The motion for a new trial was then briefly spoken to by
the counsel on both sides. Upon the motion for An injunc-
tion,

•
B. R. Curtis, for the plaintiffs, argued, that the injunction

should be granted upon three grounds. Istr Because of the

long possession by the patentee and his assigns under the

patent ; to which point he cited Bolton v. Bull, 3 Vesey, 140 ;

Universities of Oxford, &c. v. Richardson, 6 Vesey, 707 ;

VOL. 11, — p. c. 21

242 PATENT CASES.

Washburn et al. v, Gould. 8 Story.

Harmer v. Plane^ 14 Vesey, 130. 3d. Because of the re-
newal of the patent by the board of commissioners, which
was a strong circumstance to show that the possession was
lawful. 3d. Because of the verdict in the trial at law, which
was a decisive reason why it should be granted ; and to this
point he cited Bolton t;. Bull, 3 Vesey, 140.

Dehon and GUeSj for the defendant, argued, that the pos-
session, which would entitle a party to an injunction, must be
long and undisputed ; whereas the present patent had been
disputed. To this point was cited Collard v. Allison, 4 Mylne
& Craig, 487 ; Hill t;. Thompson, 3 Meriv. 622.

Stort, J. After the very elaborate arguments had at the
trial at law in this case, and unexampled in length in this
Court, I do not deem it fit or proper to go over the various
grounds for a new trial, which have again been argued at
large at the bar. Some of the questions, which then occuir
red, were new to my mind, and upon which I en-
[ * 157 ] tertained * considerable doubts ; but, after all, I then
pronounced the opinion respecting them, whicb^
upon the fullest reflection, I entertained. These doubts,
whatever they were, have not been strengthened by the ar-
guments since had. On the contrary I must say, that I have
since felt far greater difficulties in supporting the opposite con-
clusions. And on the whole, I wish now to say, that I feel
no inclination to change those opinions.

As to the points which had been ruled by my brethren on
other circuits, and which I adopted from that just comity
wliich belongs to their learning and ability, and which has
long been adopted as a fit rule to govern me in my circuits,
sdnce I know of no higher authority except that of the Su-
preme Court of the United States, I shall continue to adhere

PATENT CASES. 243

Washburn et aL v, Gonld. 3 Stoiy.

to their doctrine, as I hate not the presumption to suppose
my own judgment entitled to more weight than theirs.

There are a few grounds only, upon which I shall deem it
necessary to add any thing beyond what was suggested at the
trial. In the first place, as to the supposed surprise by new
evidence on the part of the defendant, not known to him at
the time of the trial. Several answers may be justly given
to this su^estion, but I shall limit myself to two. The first
is, that, by reasonable diligence, the information might have
been obtained ; the second is, that it was, in point of fact,
within the reach of the party before the trial was concluded.
I ought to add, that every person, who violates a patent, is
bound, before he does so, to know that he puts himself to the
peril of establishing a good defence, and he has no right to
violate it, and then to seek indulgence from the Court to find
out some possible ground or some probable evidence to sup-
port him in his acts.

In respect to another objection, namely, that the Court was
bound to state what, in point of law, the invention claimed by
the patentee was, I agree, that this is generally true, so far as
the construction of the words of the patent, and spe-
cification *is concerned. But then this doctrine is [.* 158 ]
to be received with qualifications, and sub modOy as
the very opinion of Mr. Baron Parke, cited by the counsel, in
the case of Nelson v. Harford, (Webster's Reports on Patents,
pp. 275, 370,) abundantly shows ; and the jury are to judge
of the meaniug of words of art, and technical phrases in com-
merce and manufactures, and of the surrounding circumstan-
ces, which may materially aflfect, enlarge or control the mean-
ing of the words of the patent and specification. But I do
not proceed upon this ground. The Court did explicitly give
to the jury its construction of the patent in the present case,
and that was, that it was for an improved machine. But then
it was necessarily open to the jury to say, what part or parts of

244 PATENT CASES.

Washburn ei al. v. Gould. 8 Btory.

ibis improved machine were new ; in other words, what parts
and combinations of parts in the same were the invention of
the patentee, and what were known before. If the defendant
did not infringe the whole of the improved machine, that is,
by making or using one entirely identical ; yet if he did make
and use a substantial part thereof, which was exclusively the
invention of the patentee, and distinguishable from other parts
of the machine, that would be an infringement of the patent
according to our law. This was not a matter of mere law,
but involved matter of fact, and left it open to the jury to
say, what, upon the whole evidence connected with the patent
and specification, was the extent of the plaintiff's invention.
Did the plaintiff invent the aggregate or combination only in-
corporated in the machine ? Or did he invent certain parts
also of the machine distinguishable from the rest, which were
unknown before ? It was to this part of the case, which
seems to have been misunderstood by counsel, that the lan-
guage referred to in the charge was addressed, when the
Court said : '^ If you (the jury) should be of opinion, that
the original machine is composed of parts, all of which were
known before, and that Woodworth's invention was a mere

aggregate or combination of those parts, to which
[ * 159 ] the carriage * was indispensable, you will find for

the defendant. But if, on the contrary, you think,
that the defendant uses parts of Woodworth's real invention,
or if his machine is but an improvement on the original, and
not substantially and essentially different from it, the verdict
should be for the plaintiffs."

The next ground, which has been most elaborately aigued,
is, indeed, to a point, confessedly merely technical and aside
from the real merits. It is, that the assignment under which
the plaintiffs claim, does not convey to them a territorial or
sectional right under the patent in the sense of the Patent
Act of 1836, ch. 357, and the subsequent acts. I say, that

PATENT CASES. 24Si

Waflhbnm et al. v, Gould. 3 Stoty.

this is purely technical} and aside from the merits, and would
involve a mere question of costs, since it was admitted at the
trial, that, by agreement between the parties, it was arranged,
that the name of the patentee or other proper party might be
substituted, if the Court thought the objection valid. To al-
low this objection now to prevail, if upon the merits the case
were otherwise unobjectionable, would be in effect, therefore,
to turn the parties round to a new suit, upon a ground that is
not entitled to any favor, and stands upon the very limits
8trictis9imi Juris. So far as the law goes, the party is entitled
to it ; but certainly not beyond that.

Let us now proceed to consider the language of the instru-
ment or indenture of assignment of the 2d January, 1 843.
It is difficult to make the whole force of the argbment under-
stood, without citing at large some of the clauses, which I
shall accordingly refer to as before the Court.

The indenture, after reciting, that for certain considerations,
therein stated, the patentee " hath agreed to license and em-
power parties of the second part (the plaintifis) to construct
and use, and to license others to construct and use, fifty of
the said patented machines, within the counties of Suffolk,
and Norfolk, and in the towns of Charlestown, Cambridge,
West Cambridge, Watertown, Medford, and Maiden
and * Rockbottom village, in the county of Middle- [ * 160 ]
sex, in the State of Massachusetts ;^in such manner,
nevertheless, that the license and authority so granted shall
stand and be as security unto the party of the first part (the
patentee) and his assigns, for the payment of each and all of
the said promissory notes," (the consideration-money,) pro- '
ceeds to say : '^ First, The party of the first part (the paten-
tee) does hereby license and empower the parties of the second
part, (the plaintiffs, and their executors and administrators,)
to construct and use fiftv of the said patented machines within
the territory aforesaid ; and also within the same territory to

21*

846 PATENT CASES.

Washburn at al. v, Gonld. 8 Story.

license arid empower other person or persons to construct and
use one or more of the said patented machines during the
whole period for which said letters-patent have been granted ;
but the whole number of machines by the parties of the se-
cond part, (the plaintiflTs;) and by all persons empowered by
them, constructed and used during the said period in the said
territory, shall not at any one time exceed the said number of
fifty machines/'

Then follows a proviso, providing for a sale of the right
granted to the plaintifis, in case of a default in the payment
of the notes given for the consideration-money. I do not
know, that any thing very important can be gathered from it,
to assist our inquiries upon the present occasion, unless it be,
that it speaks in one place of the sale of <^ all the ri^hty ti^Ie,
and interest which are in any way granted unto " the plain-
tifis ; and, in another place, .that, upon the sale, the patentee
may, in the names of the plaintifis or their assigns, <' convey
and assure the same to the purchaser, and thereupon all li-
cense, power , and authority ^^ of the plaintifis and their assigns,
&c., ''shall cease." If the language of this proviso is to
have any distinct efiect, with reference to the point before
the Court, it is, that it is explanatory of the preceding clause,
and shows that the words << right, title, and interest
[• 161 ] granted," *and ''license, power, and authority,"
were used by the parties as precise equivalents.

Then comes the second clause, by which the party of the
first part (the patentee) and the -party of the third part (Wil-
son) covenant with the plaintifis, that they will institute suits
at law, and in equity, against any and all persons, who shall
infringe upon the patent aforesaid, within the territory afore-
said, during the period of two years from the date of the in-
denture, at their own expense ; and after deducting the ex-
penses of the suits, &c., to pay over the damages recovered
to the plaintifis.

The third clause may be passed over as not important.

PATENT CASES. 247

- - ■ ■

Washburn et al. v. Gould. 3 Storj. ^

The fourth clause then provides, and the plaintifli covenant
with the patentee and Wifson, that they will at all times,
during the said term of two years, suffer and permit the pa-
tentee and Wilson to use their names in all such suits as may
be commenced as aforesaid, and that they will aid and assist
them (the patentee and Wilson) to procure the necessary evi-
dence to sustain such suits when commenced.

The fifth clause contains a covenant by the patentee with
the plaintiffs, " That he will not license and empower any
peiison or persons to use any of the aforesaid machines with-
in the territory before named during the said term of seven
years for which the said letters-patent have been extended.
But nothing herein contained shall be so construed as to pre-*
vent the party of the first part (the patentee) from construct-
ing or licensing the construction of the said machines to be
used elsewhere than in the territory aforesaid."

Such are the most material parts of the indenture, which
are necessary to be brought directly under review in the pre*
sent discussion. The whole argument of the defendant's
counsel turns upon this, that the instrument amounts, not to
a grant of sectional rights of the patent in a particular terri-
tory, but as merely a license to construct and use fifty ma-
chines within the prescribed territory.

* There is no magic in particular words ; but we [ * 162 ]
must understand them, as they stand and are used
in the particular inst^ment ; and in searching for the true
interpretation, we must look to all the provisions of the instru-
ment, and give such effect to it, as its obvious objects and
designs require, without nicely weighing the precise force of
single words. Much stress has been laid upon the words
"license and empower" in this instrument; as though they
imported something different from "grant" There is no
doubt, that the words may be used in contradistinction to
" grant ; " but it by no means follows, that they are or must

248 PATENT CASES.

^ Washbam et al. v. Goald. 3 Story.

naturally or necessarily be so construed. In a broad and
general sense, in common parlance, we use the words indis-
criminately. We say, that a, license or power is granted to
do so and so ; and no one ever perceives any impropriety in
the language. A mere license, properly so speaking, passeth
no interest in the thing, but only makes an action lawful,
which without it would have been unlawful. But if it passeth
an interest theriein, then it is no longer a mere license, but a
grant. So the law is laid down in Thomas v. Sorrell, (Vaugh,
R. 351.)^ In Brooke's Abridg., License, pi. 19, it is laid
down, that if a man license one to enter into his land and
occupy it for a year, &rC., it is a lease, and should be so
pleaded, and not as a license. And for this he cites 5 Henry
VII. 1, which, upon examination, I find fully supports the
proposition, if indeed it were possible to entertain a doubt
upon the point.^ Now, in the present case, there can be no
doubt, that the instrument did not convey a mere license, but
a license coupled with an interest in the machines, and in
the patent-right itself, so far as concerned these machines.
So that there is nothing in the language, which in any man-
ner restricts the interpretation ; and we are at full
[*163] liberty to construe the words ^Micense and * em-
power " to mean a grant, if that will effectuate the
true intent and apparent objects of the parties.

Now, what were the true intent and objects of the parties
in the present instrument? They were, in my judgment, to
give the exclusive right, for the purpose of profit, to construct
and use the patented machines, and with them the exclusive
^ right to the patent itself, as an appropriate incident, within
the prescribed territorial limits. This is made clear by the

1 See also Warren v. Arthur, 2 Mod. R 817.

9 S. P. Hull V. Seabright, 2 Eeble, R. 561 ; 1 Mod. R. 14 ; 1 Siderf. 428.

PATENT CASES. 249

Waahbam at aL v. Gould. 8 Storj. ^

— ■ ■ — - - ■ . — - . - - — * -

covenant on the part of the patentee^ that he will not license
and empower any other person to use the same machines,
within the same territory, daring the whole period of the run-
ning of the patent'-right under the patent. Then comes the
proviso, that nothing in the instrument shall be so construed
as to prevent the patentee from constructing or licensing the
construction of the said machine to be used elsewhere than
in the prescribed territory. It is suggested, that this proviso
shows, that it was the intent of the parties to allow the pa*
tentee, and any. other persons licensed by him, to construct
machines within that territory, to be used elsewhere, which is
a right inconsistent with the supposition, that the patent-right
had passed to the plaintiffs. I confess, that, upon a close ex*
amination of the language, I entertain great doubts, if this is
to be deduced as a very clear inference from the language
used. The word '* elsewhere," in its actual connection, is
susceptible of being applied, as well to the construction, as
the use of the machine elsewhere, and thus to be deemed a
mere cautionary {Provision, very proper in cases of this sort,
to prevent misinterpretation. And if the other parts of the
instrument would justly lead to the conclusion, that the
patent-right was intended to be exclusively granted to the
plaintiffs within the prescribed territory, I should not scruple,
ut rea magis vahaty quam pereaty to adopt it.

But assuming the true interpretation of the words to be,
as the defendant contends, it by no means leads to the con-
clusion for which it is urged. Even upon his construction,
the patentee, or his licensees, could not ube or sell
for use * any machines within the territory, if they [ * 164 ]
could construct them there. Now, the right to use
the machines is as much a part of the patent, as the right to
construct them ; and supposing the patent-right to be, in con-
templation of law, an entirety, then we should have a case,
in which the intent of all the parties, upon the very face of

250 . PATENT CASES.

Washbom et al. v. Gould. 3 Stoiy.

the iastrument, would be utterly defeated, and the instrument
itself become a nullity, or neither party would have any right
whatsoever against third persons under the patent, for any
violation thereof. The patentee intended to convey to the
plaintiffs and their assigns, the sole and exclusive right to use
the machines constructed by them, within the territory, and
to reserve to himself and his licensees at most only- a concur-
rent right to construct machines, but not to use them within
the territory, so that nothing was intended to be reserved to
the patentee but a naked concurrent right to construct, and
to the plaintiffs a similar right to construct, with the full and
exclusive use of all the machines constructed by them within
the territory. If by law such an intent cannot be carried
into effect, because the patent is, as to all the operative rights
granted therein, " the full tind exclusive right and liberty of
making, using, and vending to others to be used, the inven-
tion," entire and indivisible, then, as has been sug^sted, the
instrument is a mere nullity. If, on the other hand, it is an
operative instrument, then, as the exclusive use of the ma-
chined within the territory has passed to the plaintiffs, the
patented can maintain no suit for any violation thereof, there-
in, for he has no residuary right to such use ; and the plain-
tiffs caii maintain no suit for such violation, according to the
argument of the defendant, because they are not assignees of
the entirety, of any territorial right. I confess, that if I were
driven to make a choice under such difficulties — in order to
escape from such consequences, going manifestly to defeat all
the proper purposes of the Patent Acts — I should rather
construe these acts distributively, and say, that the patent-
right ought not to be deemed an entirety, but to be
[ * 165 ] divisible, so as * to permit a grant of the exclusive
right to construct to one person, to use to another,
and to vend to another.

But I am not driven to make any such choice. .On the

PATENT CASES. . 251

Washbarn et al. v. Gonld. 3' Story.

contrary, a construction of the instrument perfectly consistent
with its terms and intent and objects, taking all the clauses
t<^ther, may be adopted, which shall give full effect to every
part thereof. Suppose the instrument had in terms declared,
that the patentee granted the exclusive right of the patent
within the territory of the plaintiflfs, but the plaintiffs were
still to permit and allow the patentee and his assigns to con-
struct machines within that territory, to be used and sold
elsewhere, there could be no difficulty, in law, in giving full
effect to such a provision. The patent-right would pass to
the plafntiffs within the territory, ahd the patentee and his
assigns would still be entitled, as licensees under the plain-
tiffs, to construct machines, without infringing the grant,
within the territory. Now, this is precisely what, in my
judgment, the parties intended in this case to do, and what,
taking all the clauses together, they have actually done. In
the first place, the grant, for so I call it, was not a mere per-
sonal naked license to the plaintiffs ; but it was intended to
be an assignable interest. The plaintiffs were to construct
and use, and to license others to construct and use, machines
within the territory. They might assign their whole right to
all the machines, or to any one or more of them. Suppose
a man should sell a horse to another, and the buyer were to
agree, that the seller should have the privilege to use the
horse once a week, as his occasions may require, would not
the exclusive property in the horse pass to the buyer ? Sup-
pose a person should buy of another a loom for weaving, and
he should agree, that the seller might weave certain cloth in
it, would not the sale convey the entire title to the loom to
the buyer? Suppose a person should buy a corn-mill of
another, and should agree at the same time, that the seller
might grind his own corn therein, would not the
entire title *to the mill pass? I put these cases, [ * 166 ]
because they stand upon a strong analc^y, and

252 A PATENT CASES.

Washbuni et al. v. Qoald. 3 Story.

Bhow that there is nothing unreaBonable or repugnant in giv*
ing such constructions to instruments of this nature.

In the next place, if there was any violation of the patent-
* right withip the territory, in whose name was the suit con-
templated to be brought? Plainly, as the fourth clause,
already referred to, shows, in the name of the plaintifb, and
yet at the expense of the patentee ; and the plaintiffs were to
receive all the damages recovered, after deducting the costs
and expenses of the suits. Now, this very clause is decisive
to show, that all the parties contemplated, that the patentee
had parted with all his patent-right within the territory, and
that it was exclusively vested in the plaintiffs. If that was
the intent — the true and sincere intent, what is there in the
law which prevents this Court from giving full efiect to it ?
But it is said, that the parties acted under a mistake of the
law on this subject. But how does that appear ? It is as-
suming the very matter in controversy, and assuming it, when,
upon the interpretation of the instrument itself, already sug-
gested, there was no mistake of law at all. It is clear that
the parties intended no mistake of law, and we are not at
liberty to defeat their intentions by assuming, that one did
exist.

The very proviso already commented on, corroborates the
views already taken by the Court. If the parties did not in-
tend, that the plaintiffs should have the exclusive right to the
patent within the territory, but rheant, merely, that the plain-
tiffs should possess a limited license therein, the proviso, so
sedulously incorporated into the fifth clause, was utterly use-
less and unnecessary. But, if the plaintiffs were to have such
an exclusive right, then the proviso may have a very just, and,
in one view, a very important Operation. Upon the construc-
tion contended for by the defendant, it secures a license to the
patentee, to construct machines within the territory,
[ * 167 ] * although not to use them or vend them there.

PATENT CASES. 253

Wftflhbitm et aL V. Gould. 3 Stoiy.

In the other aspect, it exclades any conclusion, that the
patentee did not ''elsewhere" retain his' full and exclusive
right and liberty to make, use, and vend any machines,
whatsoever, under the patent.

But it is suggested, that the limitation of the right, granted
to fifty machines, shows, that the patentee contemplated a
license for that number only, and not an exclusive grant of
the patent to construct and use machines within the territory.
I profess not to feel the force of this, as an independent, or
cogent objection. It is a circumstance, in the case, fit to be
weighed. But it is by no means one that is, in itself, enti-
tled to very grave consideration. The limitation of the num-
ber of machines, to be made or used under a patent, is not
inconsistent with the grant of an exclusive right in the patent,
within a particular territory. It is a matter of policy, or con-
venience, or profit, to be judged of by the parties, as to its
eflfects upon the value of the patent-right, oyt of that parti-
cular territory. Suppose a patentee should sell an undivided
moiety of his patent to another person, and should agree with
him, that neither of them should erect more than a given
number of machines ; so that the market should not be un-
duly glutted with them, either for use or sale ; or suppose
that the patentee should sell the exclusive right of his patent
to A., in six of the United States, to B. in six other States,
and to C. in six other Slates, retaining the remaining States
to himself, and he and they should mutually agree not to
make or use, or vend, more than a fixed number of the pa-
tented machines in any one State, what would there be in
such an agreement inconsistent with the exclusive right of
each within his* prescribed circuit of States? I profess to be
unable to perceive any legal objection to such an agreement,
or to its legal operation, as an exclusive grant of the patent,
within the prescribed Slates. There is, or at least may
be, a wide difierence between the right to a thing, and

VOL. II. — p. 0. 22

254 PATENT CASES.

Washburn et al. v. Gould. 3 Story.

[ * 168 ] the unrestricted * exercise of that right, under a
grant. A man may purchase a house in fee, and
yet he may limit himself, as to his mode of enjoyment there-
of; as, for example, he may covenant not to carry on a par-
ticular trade there, nor to let it for a tavern, or not to let it in
parts to more than four families at the same time. The
house is still in his exclusive ownership, although he should
thus qualify the general rights, ordinarily incident to that
ownership.

The limitation of the number of machines in this case,
was, at least, as far as we can gather from the nature and
apparent objects of the instrument, not designed to prevent
an exclusive patent-right within the territory, but to exclude
an injurious competition to the patentee, elsewhere. If the
plaintiffs were at liberty to construct and use as many ma-
chines as they pleased, within the prescribed territory,, the
value of the patent-right, to the patentee, in all the adjacent
and neighboring territory, might be materially impaired, if
not totally extinguished. The limitation, then, was designed,
not to change the nature of the right, but to limit its exer-
cise. It was not to reduce it from a grant to a mere license,
but to limit the extent of the actual exercise of the right
granted. It is not, properly speaking, an exception of a part
out of the thing granted, ejusdem generis ; but it is a restric-
tion upon the mode and extent of using it.

There are many other suggestions, which might be made
upon the true character and interpretation of this instrument,
and various other expositions have been relied on, at the ar-
gument, upon which I forbear to comment, because they do
not appear to me materially to alter, or control those, which
have been already considered. I do not say, that the inter-
pretation of this instrument is free from all doubt. But tliat .
which approves itself best to my judgment, is that which has
been already stated. The opposite conclusion could not,Mn

PATENT CASES. 255

Washburn et al. v. Goald. 3 Story.

my judgment, be arrived at, without encountering more diffi*
culties — some of which strike me to be almost in-
superable* * On the wliole, therefore, I hold, that [ * 169 ]
the interpretation given to the instrument at the trial
was the true one, and it has not been shown to be erroneous.

For the reasons already given on the other points, as well
as on this point, the motion for a new trial must be overruled,
and judgment pass upon the verdict for the plaintiffs. I have
the less hesitation in coming to this conclusion, because- the
present trial is^not absolutely final ; and the merits of the case
may be fully considered in the bill in equity, and carried for
a final decision to the Supreme Court.

Upon the other motion for an injunction, founded on the
bill in equity, it is not necessary to say much. The injunc^
tion is asked for, upon the ground of long possession, the
renewal of the patent, and the legal effect of the trial at law.
In respect to the possession, the case is certainly very strong.
The original patentee, (Woodworth,) went to his grave in
full possession of it, if not undisturbed apd undisputed, as to
his title to the invention patented, at least without any suc-
cessful impeachment of it. The patent has been renewed,
since his decease, by the board of commissioners, after full
examination and deliberation, in favor of his administrator.
I think, too, that it was clearly established at the recent trial,
that Woodworth was the true and original inventor of the
machine patented, and it was so found by the jury. Indeed,
the only question, upon the merits, was, whether the defend-
ant used the patent machine, or one substantially different
from it. Upon that, as a question of fact, there was a consi-
deVable conflict of evidence. But the jury found a verdict
upon that point, also, for the plaintiff, and, as it appears to
roe, according to the preponderance of the evidence. The
defendant has established no title in himself, or in any other
person, to use the patented invention ; and he has failed in
his defenqe, that he did not violate it.

266 PATENT CASES.

Wuhborn et al. v. Gould. 8 Stoiy.

The doctrine laid down by Lord Eldon^ in Hill r. Thomp-
son^ (3 Meriv. R. 622|) is, in my judgment^ the true
[ * 170 ] doctrine, * and is indispensable to the repose of
titles, and the security of patentees. It is this, —
that where a patent has been granted, and an exclusive pos-
session, of some duration, under it, the Court will interpose
its injunction, without putting the patentee previously to es*
tablish the validity of his patent by an action at law. But
where -the patent is but of yesterday, (meaning, that it is
recent,) and upon an application being made for an injunc-
tion, it is endeavored to be shown, in opposition to it, that
there is no good specification, — or otherwise, that the patent
ought not to have been granted, the Court will not, upoa its
own notions respecting the matter in dispute, act upon the
presumed validity or invalidity of the patent, without the
right having been ascertained, by a previous trial at law ; and
will send the patentee to law, and oblige him to establish the
validity of his patent, in a court of law, before it will grant
him the benefit of an injunction. Correctly considered, there
is nothing in I^ord Cottenham's judgment, in CoUard i;. Alli-
son, (4 Mylne & Craig, 487,) which in any manner impugns
or shakes this doctrine. In that case, a new trial at law had
been granted, and therefore his lordship held the legal title
of the parties, as still undecided. I have, myself, in former
cases, adopted Lord Eldon's doctrine, and especially, in the
case of Ames's paper manufacturing patent, which was, at
the time, most strenuously contested upon various grounds,
and, especially, upon the ground, that the invention was not
new. Yet the jury having, after a great conflict of evidence,
established the validity of Ames's patent, an injunction was
granted.

I shall, therefore, direct an injunction to issue, and to
remain, until the hearing of the cause, or the further order of
the Court.

PATENT CASES. 257

Woodwordi V. Sheimaa. 8 Story.

William Woodworth v. Abraham P« ^Sherman.
The Same v, William A Cheeyer, and eighteen others.

[3 Stoiy, 171. May T. 1844.]

Where a bill in equity was brought for an injunction against the defendants,
to restrain them from using and selling a planing machine, constnicted ac-
cording to the specification in the plaintiff's patent — It ioa$ hdd, that, after
the lapse of' time which had occurred, since the patent was granted, taken
together with the other circumstances of the case, the affidavit of a single
witness was not sufficient to outweigh the oath of the patentee, and the
general presumption arising from the grant of the letters-patent.

The Patent Act of 1836 authorizes the granthig of an extended term of a pa-
tent to an administrator, as well as to the patentee.

The assignee or grantee, under the original patent, does not acquire any right
under (he extended patent, unless snch right be expressly conveyed to him
by the patentee.

Inihis curcolt the practice in patent cases has not been to require the plain-
tiff to give security for costs.

These were bills in equity. Bled in the Circuit Court of the
United States, in this district, to obtain injunctions against
the defendants, in twenty suits, to restrain them from using
or selling any planing machine, constructed substantially
according to the specification under William Woodworth's
patent. (See the preceding case of Washburn v. Gould.)
The complainants produced affidavits, stating that the several
defendants were using a planing machine substantially the
same in its construction and mode of operation as the ma-
chine of James Gould of Charlestown, and the bill, among
other things, averred, that the plaintiffs had already recovered
a judgment in an action at law, against the said Gould, for
the use of his machine. Various points were relied on in
answer to the motion for an injunction. It was contended :

22*

358 PATENT CASES.

Woodworth v. SbermaiL 3 Story.

Ist. That Wood worth was not the sole ioTentor, but that
one Dunbar was a joint inventor with him.

2d. That the act of Congress did not authorize the grant-
ing of the extended term of the patent to an administrator,
but only to the patentee.

8d. That some of the defendants had purchased
[ * 172 ] rights * under the original patent, and that, by
virtue of the act of Congress, the same interest that
they had in the original patent enured to them in the ex-
tended patent.

B. R. Curtis, for the plaintiff.

/. Giles Buitfick and William D. Sohier, Jr., for the
defendants.

Stort, J., granted the injunction prayed for in each case.
As to the iGirst point, he said, it had been before him in
another case, and he then declared, that the affidavit of a
single witness, after the lapse of so much time, and after the
occurrence of some other circumstances, which were in proof,
was not sufficient to outweigh the oath of the patentee, and
the general presumption arising from the grant of the letters-
patent

As to the second point, he said, that, on the fullest reflec-
tion, he had come to the opinbn, that Mr. Justice McLean
was right in his decision,^ that an administrator was compe-
tent to apply for and receive this grant. That to hold other-
wise, would be going contrary to the whole spirit and policy
of the Patent Laws.

As to the third point, he said, that he had already decided.

^ Brooks V. Bicknell, (Walker's Western Law Journal, January, 1844.)

PATENT CASES. 259

Woodworth v. Shennan. S Stoiy.

after full argument and great consideration, in a case tried in
Maine, and not yet reported, that the assignee or grantee,
under the original patent, did not acquire any right under the
extended patent, unless such right was expressly conveyed to
him by the patentee.

In the course of the case, the judge remarked, that he ob-
served that the bills contained a charge of an actual combina-
tion to resist the patent. That it was a question of much
importance, what would be the legal effect of such a combi-
nation. That he did not intend to express any opinion on
this part of the case, but that in a former case, he
had * occasion to declare, that it seemed to him [ * 173 ]
that it approached very near^ if it did not actually
reach, a criminal conspiracy. That, in many cases, it was
lawful for individuals to do what could not lawfully be done
by a combination. That an individual patentee might suc-
cessfully resist an individual, but it was much more difficult
to resist the combined force of a great number of persons
united to oppose a patent.

In thd course of the case a question having arisen whether
the plaintiff, in patent cases, was required to furnish security
for costs,

SxoBT, J., said : In my circuit the plaintiff in patent cases
has never been required to give any security for costs. .But
I do not recollect any reported case, in which that point was
decided.

The following opinion wieus afterwards written out.

Stort, J. When these cases were heard before me at
Chambers, I expressed my opinion briefly on the three points
made at the argument, not then having time to gainto them
at large. J do not desire to say any thing further upon the
first two points. But the last point involves a question of so

260 PATENT CASES.

Woodworth v. Sherman. 3 Story.

much general importance, that it has appeared to me a duty,
which I owe to the public, as well as to the parties, to give at
large the reasons which influenced my opinion, and governed
the decision. I do this the more readily, because I have not
been able to find among my papers any statement reduced
by me to writing, of the particular circumstances attending
the case in Maine, to which I have already alluded, or any
report of the grounds on which that decision was made. If
I prepared, after the term, any written opinion, (of which I
am not certain,) it has been mislaid, and after considerable
search, I have not been able to find any. I rather think,
from ray general recollection, that the question arose incident-
ally upon a renewed patent, granted by ^a special
[* 174] act of Congress, * after the first patent had regu-
larly expired, and before the passage of the Patent
Act of 1836, ch. 357. It may, perhaps, have been in a case
involving the validity of the renewed patent, granted by the
Act of Congress of 3d of March, 1835, to Eastman, for ^'a
new and useful improvement, called the Circular Saw Clap-
board Machine.'' But of this I am not quite sure, and I have
not within my reach, at this moment, the means of verifying
the conjecture. The' doctrine, however, which I then held,
was, that every license and assignment under the old laws,
before the Patent Act of 1836, expired with the limitation of
the original patent, unless it was expressly, in terms, so
.granted as to be applicable to any renewal of the patent
afterwards ; for, otherwise, the licensee's or assignee's right
was necessarily bounded by the same limits as that of the
licensor or. assignee, that is to say, by the original term
granted by the patent to the licensor or patentee. The
doctrine proceeded upon the plain ground, aflSirmed by the
common law, that a man can pass by a grant or assignment
only that which he now possesses, and which is in existence,
at the time, either actually ^r potentially. His grant or

PATENT CASES. 261

Woodworth v. SheniMn. 8 Story.

aasignment is, therefore, by its natural interpretation, limited
to the rights and things which are then in existence, and
which be has power to grant, unless he uses other language,
which imports an intention to grant what he does not now
possess, and what is not now in existence. In the latter case,
the language does not even then operate strictly as an assign^
ment or grant, but only as a covenant or contract, which a
court of equity will carry into full effect, when the right or
thing comes in esse. Thus, it is laid down in Comyos's Di-
gest, (Assignment, c. 1, c. 2, c 3. Id. Grant D,) and better
authority could not be, for, as was well observed by Lord
Kenyon, he was the greatest lawyer of his day in all West-
minster Hall, that an assignment or grant cannot, at law, be
of a chose in adton, bare right, or possibility. And in a case
in Lord Hobart's Reports, it was said, that although
* a man may, by grant or assignment, assign all the [ * 175 ]
wool then growing on the backs of the sheep owned
by him ; yet he cannot grant or assign the wool that shall
grow upon the backs of the sheep he shall hereafter buy.^
And this doctrine was fully recognized by Lord Eldon in the
case of Curtis v. Amber, I Jac. & Walk.. 506, 512. But I
need not dwell on this point, because if came under the full
consideration of the Court in Mitchell v. Winslow, (2 Story,
R. 630, 639 to 644,) where the principal authorities were
collected and commented upon at large; so that the only
remedy for the licensee or assignee, where a grarvt or assign-
ment has been made to him and his heirs, of a right to a
thing not then in existence) but which is to operate infuturOy
when the thing is created or comes in esse, is in equity, by
way of specific enforcement of a covenant or contract.^
Now, it appears to me, that this doctrine is expressly ap-

1 Grantham v, Hawley, Hob. K. 132.

9 See 2 Story, Eq. Jur., J 1040 to § 1041, 8d edit.

362 PATENT CASES.

Woodworth v. Sherman. 3 Stoiy.

plicable to licenses and assignments ander the Patent Act of
1836, andy indeed, as I think, d fortiori applicable, because
the whole design of the 18th section of the act, providing for
renewed patents, is, in terms, exclusively confined to the
original inventor, and to be for his sole benefit, and not for
the benefit of his licensee or assignee ; and, therefore, that
section is to receive a correspondent construction in favor of
the inventor alone, unless the particular clause of the section,
which I shall presently consider, does, by natural or necessary
implication, confer the right upon the licensee or assignee.

Let us then, for this purpose, examine the 18th section of
the Patent Act of 1826. It enacts, that, whenever any
patentee (not any assignee) shall desire an extension of his
patent beyond the term of its limitation, he may maice appli-
cation therefor to the commissioner of the Patent Office, set*
ting forth the grounds thereof; and then, after prescribing the
notice, &c., to be given of the application, it pro-
[ * 176 ] vides, that * the Secretary of State, the Commis*
sioner of the Patent Office, and the Solicitor of the
Treasury, shall constitute a board to hear and decide upon
the evidence produced before them for and against the exten-
sion ; and the^ patentee is required to furnish to the board a
statement in writing, under oath, of th6 ascertained value of
the invention, and of his receipts and expenditures, sufficient
to exhibit a true and faithful account of loss and profit accru*
ing from or by reason of the said invention. The section
then proceeds to declare, that " If, upon a hearing of the
matter, it shall appear to the full and entire satisfaction of the
board, having due regard to the public interest therein, that
it is just and proper that the term of the patent should be ex*
tended, by reason of the patentee, (not the assignee,) without
neglect or fault on his part, having failed to attain from the
use and sale of his invention a reasonable remuneration for
the time, ingenuity, and expenne bestowed upon the same, and

PATENT CASES. 263

Woodworth V. Sherman. 8 Story.

the introduction thereof into use, it shall be the duty of the
commissioner to renew and extend the patent, by making a
certificate thereon of such extension, from the term of seven
years from and after the expiration of the first term, &c. ;
and therefore the said patent shall have the same effect in
law as though it had been originally granted for the term of
twenty-one years/' Now, bearing in mind that, at this time,
no patent could by law issue except to the inventor, and that
it was only by the subsequent Act of 3d of March, 1837, ch.
45, <^ 6, that it could be issued to the assignee, we have, at
once, a perfect key to the true o]bject and purpose of this 18th
section of the Act of 1836, that the word " patentee" is used
therein as equivalent to *' inventor," and that the law looked
to him as the sole object of its bounty, tmd meant to reward
him, and him alone, for his time, ingenuity, and expense in
perfecting his invention. Another consideration is also im-
portant to be borne io mind ; and that is, that the 18th section
refers solely to applications to be made before the
original patent has expired. Indeed, the * very [ * 177 ]
proviso to the section contemplated, that the appli-
cation not only may be, but must be made while the term of
the original patent is yet running, and before it has expired ;
for it expressly declares " that no extension of a patent shall
be granted after the expiration of the term for which it was
originally issued." Now, keeping this in view, we see, at
once, the object of the clause of the same section immediately
preceding the proviso. It is in these words: ^'And the benefit
of such renewal shall extend to assignees and grantees of the
right to use the thing patented to the extent of their respect-
ive interest therein.^' The clause does not mean to enlarge
the right of the assignees or grantees to use the thing patented
beyond the extent of the interest originally granted to them.
If that interest was, from its nature, or character, or just
interpretation, limited to the original term, for which the in-

964 PATENT CASES.

Woodwprth V. Sherman. 8 Story.

ventor held the patent, then the assignees and grantees were
to have no benefit ultra in the renewed patent. But if the
original assignment or grant had expressed in terms, or by
just implication conferred on the assignees or grantees a right
or interest in the renewed patent, then that interest was to be
protected ; for it was a possibility, for the benefit of which
the assignees or grantees had originally stipulated, and for
which they must be presumed to have paid a valuable con-
sideration. In this view of the matter, there would be good
sense in the clause, founded upon the actual intentions of the
parties to the original assignment or grant upon a just inter-
pretation of the language used by them. But what is the
consequence of adopting a diflferent interpretation of the
clause, and applying it indiscriminately to all cases of grants
and assignments of or under the original patent, where no
such auxiliary intentions can be deduced from the language
of the assignment or grant ? Let us suppose the case, where
an assignment has been made by the inventor of his whole
patent-right under bis patent for a small, and (comparativ<ely

speaking) an utterly inadequate compensation, con-
[ * 178 ] sidering its * real value, and this has been forced

upon him by embarrassment, or poverty, or public
indifference, or his own mistaken estimate of its value, (a
case by no means uncommon in the history of inventors,)
could it be for a moment imagined, that the 18th section
intended, contrary to its professed object, to benefit, not the
inventor himself, but his assignee ? That the latter and not
the former was to receive the whole profits accruing from the
renewed patent ? Or, that, in such a case, the inventor would
not be entitled to talce out a. renewed or extended patent ?
And yet, if the argument be worth any thing, the 18th sec-
tion applies, as fully to such a case, as it would apply to any
other case; and we cannot except it from the pressure of the
section, unless we look broadly into the objects, which it

PATENT CASES. 265

*i— — I > !■ I I I ■— — ^— — — I I ■ I I 11- I . I II II II

Woodworth v, Sherman. 3 Story.

purports to accomplish, and limit the language to cases,
where the inventor iias intended to part, not merely with all
his present rights, but prospectively with all the future rights
and possibilities which he might acquire by a renewed or
prolonged patent. Now, the words of the clause extend
to the assignees and grantees of the right, (that is, of the
patent-right,) the benefit of the renewal " to the extent of
their 4'e8pective interest therein" that is, of the patent-
right, and no more. Now, what is the extent of their in-
terest therein ? Clearly, upon the principles of the common
law,^ neither more nor less than the assignor or the grantor
then poraessed, and was capable of assigning or granting at
the time of the assignment or grant, for to that the language
of the grant or assignment, must, in reason and good sense,
be limited, unless the grantor or assignor has by express
words or necessary implication shown a broader intention, an
intention not merely to grant or assign the right, which he
now possesses, but the possibilities, which he may hereafter
acquire. ' And these are the best grounds to support such a
limitation and interpretation of the grant or assignment.

In the first place, the grantor or assignor cannot be pre-
sumed to have received any compensation or con-
sideration * except for the very thing, and to the [* 179 ]
very extent, which the language properly indicates.
In the next place, no court is at liberty to add to the terms
used any meaning beyond their ordinary import, unless there
are some supplementary expressiona to justify such a con-
struction. In the present case, there is no ground to suppose^
that either party contemplated, that the grant, or assignment,
or license was to be prolonged beyond the term of the origi-
nal patent, and there are no words requiring a more expanded
interpretation. In the next place, to give such an expanded
interpretation, for which the inventor has received no consi-
deration, would be to transfer the bounty intended by the

VOL. II. — p. c. 23

266 PATENT CASES.

Woodworth v. Shermaii. 9 Sloiy.

government for the benefit of the inventor, whose genius had
brought it out, and brought it to perfection, and who had not
received a reasonable remuneration therefor, to the grantee
or assignee} who had paid nothing and done nothing to
deserve it, but had simply given the quid pro, quo to the
extent of the right or interest conferred upon him under the
existing patent The inventor may, from necessity or expe-
diency, or otherwise, (as has been already suggested,) have
conveyed bis whole right and interest under the original pa-
tent, for a sum utterly unworthy of its intrinsic value. The
grantee or assignee may have grown rich by the success of
the inventor, and the inventor himself may be now languish-
ing in poverty. Can it be, that the section, professing to
intend a remuneration and bounty to the inventcMr, should, at
the same time, have intended to sweep from him the future
profits of the renewed invention ? That if he should have
parted with the half, or two thirds, or the whole of his rights
and interests, under the original patent, he shall be narrowed
down to a corresponding part, or excluded from all the profits
of the renewed patent ? If so, it would be but another sad
illustration of the fate of genius, SHc voa non vchis. Besides,
we are to recollect, that this section of the Act of 1^6, is

not limited to caj9es of future* patents, or to future
[ * 180 ] gmnts or assignments thereof; but * it applies to

past also ; and that the language, if applicable at
ail, reaches to both classes, the past, as well as the future ;
and the present case is one of the prolongation of a patent
issued long before the Act of 1836. So that the section is
thus made to apply to a case, where neither party could have
contemplated any right of renewal, or any possibility of a
future interest therein. The patentee had no right of renewal
either in ease or in posse. The whole vested in the exercise
of a sound discretion by Congress, which it would or might
apply singly to the merits of each particular case, as it should^
be presented to them for consideration.

PATENT CASES. 367

Woodworth v. Sherman. 3 Stofy.

Now, if we construe the language of this clause with refer-
ence to the scope of the antecedent language, and the pro-
fessed objects of the section, however loose and general it
may, at first view, seem to be, it admits of an easy and satis-
factory exposition. The rights of assignees and grantees to
use the thing patented, and to have the benefit of the renewal,
is to be to the extent of their respective interests therein, and
no more. If that interest was short of the whole of the origi-
nal term, for which the patent was originally issued, it^s not
to reach the renewed term. If it was limited to the extent of
the original term, it is still to be bounded by it. But if it is
an interest in terms, designed to be coextensive with all the
interest, which the patentee now has, or may hereafter ac-
quire, not merely to his present rights in esse, but with bis
contingent rights inposse^ then the section makes that a
legal interest, which, otherwise, would be but a mere poten-
tial, equitable interest, to be enforced in equity, as a mere
right under contract, and not as a fixed, present, vested inte-
rest. In this way, the whole structure of the section becomes
harmonious with its professed objects, the benefit and remu-
neration of the inventor, and it saves only those rights in the
renewed patent for which the inventor has already secured a
compensation, and to which he has voluntarily extended his
original grants, and assignments, and licenses to the
* very terms and intent thereof. Interpret the sec- [ "^ 181 ]
tion in any other manner, and it speaks an inten-
tion in one part, which it contradicts or controls in another.
It takes from the inventor, what he never intended to part
with, and may deprive^im in part, or in the whole, accord-
ing to circumstances, of the reward, which the section seemed
so studiously to hold out to encourage his genius and skill,
and to reimburse his expenditures.

These are some of the reasons, which have influenced my
mind in arriving at the conclusion which I have before stated.

268 PATENT CASES.

Fieraon v. The Eagle Screw Co. 3 Story.

If they are erroneous, it will belong to the Supreme Court to
correct the errors, and to adopt a rule, which, adhering to a
literal interpretation of the clause, may, at the same time,
deprive the inventor of all motives to* renew the patent, or
make the renewal worthless to him, and injurious to the
public.

JsREinAH H. PiERSON V. The Eagle Screw Company.

[3 Story, 403. Jaoe T. 1844.]

To entitle a person to claim the benefit of the 7th aection of the Patent Act of
1839, ch. 88, he mast be a person, who is a purchaser, or who has used the
patented inyention before the^ patent was issaed, by a license or grant, or
by the consent of the inventor, and not be a purchaser under a mere wrong-
doer.

The case of McCloig v, Kingsland, 1 How. Sap. Ct R. 202, commented on
and explained.

In canses for violation of a patent, the jury are at liberty to give sach reaaon-
able damages as shall vindicate the rights of the patentee, and shall indem*
nify him for all expenditures necessarily accrued in the suit beyond what
the taxable costs will repay.

This was an action of the case brought by the plaintijfT, as
assignee of a patent " for an improvement in the machine for
cutting the threads of wood and other screws," for an in-
fringement of the patent. The patent under which the plain-
tiff claimed was taken out by one Henry Cnim, as the
inventor, and bore date November I4th, 1836. The assign-
ment was made by Cram to the plaintiff on the 20th of
January^ 1 838. No question was made at the trial as to the
substantial identity of the machines used by the Eagle Screw
Company, with the improvement patented by Crum,
[ * 403 ] which * improvement consisted mainly in a feed-
ing-wheel, called the wheel (D,) in Crumbs specifi-

PATENT CASES. 269

Fienon v. The Eagle Screw Co, 3 Story.

cation, of a tambourine shape, which supplied, with regularity
and precbion, the blanks to the cutters or dies, for the pur-
pose of cutting the threads of the screws.

At the trial, John P. Knowles and Richard W. Greene for
the defendants, rested their defence mainly upon two grounds.
First, they denied that Crum was the original and first in-
ventor of the feeding-wheel of the machine, and claimed to
use it under a patent taken out for a similar cutting machine,
which embraced a feeding wheel substantially the same, which
patent was taken out by one Clement O. Read, on December
15th, 1837, and had been by mesne assignment vested in
them. The testimony, however, clearly proved, that Crum
was prior in time in his invention as well as in bis patent ; and,
indeed, the counsel for the defendant, upon the coming in of
the proof at the trial, did not contend before the jury for the
priority of Read's invention, but rather, in reference to the
question of damages, that it was an independent invention of '
Read's, prior to Crum's patent or application for a patent,
though posterior in point of time to Crum's invention.

The second point of defence was, that the Eagle Screw \
Company had purchased a right to use a certain number of )
cutting machines, embracing the improvement in question, of
the Providence Screw Company, as assignees of Read, an
independent inventor, prior to Crum's application for his pa-
tent ;and that, notwithstanding Crum was first inventor and
patentee of the improvement, they had a right to use the ma-
chines actually in operation in their works, under and by .vir-
tue of the 7th section of the Patent Act of 1839, without
accountability to Crum or his assignee.

They cited the case of M'Clutg et al. t;. Kingsland et al.,
(I Howard's Sup. pt. Rep. 202,) and insisted, that the opi-
nion of the Supreme Court in that case, and, especially, that

23*

a^i

270 PATENT CASES.

Fienon v. The Eagle Screw Co. 3 Stoiy.

portion of it (pages 208, 209) in which they say,
[ * 404 ] '^ The * object of this provision (7th section of tife

Act, 1839) is evidently twofold. First, to protect
the person who has used the thing patented, by having
purchaaedf constructed, or made the ihachine, &c., to which
the invention is applied, from«any liability to the patentee or
his assigns. Second, to protect the rights granted to the pa-
tentee against any infringement by any other person, &c."

Samuel Ames and Seth P. StapUSy in behalf of the plain-
tiff contended, that the case cited was to be distinguished from
the case at bar in this, that, in the case cited, the purchase of
the machine or right was from the first inventor and onlypO'
tentee^ made, it is true, prior to his obtaining his patent, whereas
in the case before the Court, the purchase by the defendant,
was from one whose invention and patent were subsequent in
point of time to the invention and patent of the plaintiff, and
could vest no greater right than he had — and that the de-
fence was therefore nothing more than the setting up a sub-
sequent invention of patent against a prior invention and pa-
tent, which, if permitted to prevail, would operate as a virtual
repeal of the Patent Law, and take away all protection from
inventors. It was said, that the general language of the
Court in M'Clurg t;. Kingsland was of course to be construed
in reference to the facts before them.

They farther contended, that Crum's patent, under which
the plaintiff claimed, was taken out in 1836, nearly three years
prior to the passage of the Act of 1839, and that rights had
vested under it prior to that Act ; and that, in the case of
M'Clurg V. Kingsland the Court say, (page 206,). that Acts of
Congress " may be retrospective in their operation, and that is
not a sound objection to their validity ; the powers of Con-
gress to legislate upon the subject of patents is plenary by the
terms of the Constitution, and as there arc no restraints in its

PATENT CASES. 271

Pierton v. The Eagle Screw Co. . 3 Story.

exercise, there can be no limitation of their rights to modify
{hem at their pleasure, ao thai they do not take away the
rights , of property in existing patents.'*

* In M'Clarg v. Kingsland the patent was de- [ * 405 ]
stroyed by public use of the thing patented prior
to the application for the patent, and could be sustained
only by the help of the seventh section of the Act of 1839,
passed subsequently to the issuing of the patent. The same
seventh section, which held up the patent in that case, killed
the case itself; so that though retroacting, it could not be
said in this case to take away the rights of property in existing
parents.

Stort, J., in summing up to the jury, said : I have aU
ready in the course of the discussion at the bar had occasion
to express my opinion upon the second point made at the bar,
as a matter of law ; for there is no dispute as to the facts. I
shall now, therefore, merely recapitulate it. For the defend-
ants the argument is, that the Eagle Screw Company had a
right to use the machines purchased by them from Read be-
fore Crum's patent was obtained, although Crum was the prior
and true inventor and patentee under the 7th section of the
Patent Act of ISSQ, ch. 88 ; and great reliance is placed
upon the case of M'Clurg v. Kingsland, 1 How. Court R.
202. In my opinion, neither the Act of Congress, nor the
case of M'Clurg t;. Kingsland, justifies such a doctrine. Sup-
posing the aigument to be well founded, what would be the
legal result ? Why, that a mere wrongdoer, who by fraud or
artifice, or gross misconduct, had gotten knowledge of the
patentee's invention before he could obtain his patent, with-
out any laches on his part, could confer upon a purchaser un-
der him — bond fide and without notice — a title to the pa-
tented machine, which he himself could not exercise or pos-
sess. Certainly there is no ground to say, that a person, who

272 PATENT CASES.

Pienon v. Tho Eagle Screw Co. 3 Story.

pirates the invention of any party prior in point of time and
right, can make any valid claim thereto against the prior and
true inventor. How, then, can he confer on others a title,

which he himself does not possess ? Upon general
[ * 406 ] principles, * the assignee can ordinarily claim no

more than bis assignor can lawfully grant.
But it is said, that the 7th section of the Act of 1839, ch.
88, declares, '* That every person or corporation, who has or
shall have purchased or constructed any newly-invented ma-
chine, manufacture, or composition of matter, prior to the ap-
plication by the inventor or discoverer for a patent, shall be
held to possess the right to use and vend to others to be u|ed
the specific machine, manufacture, or composition of matter
so made or purchased, without liability therefor to the in-
ventor, or any other person interested in the invention ; and
noj>atent shall be held to be invalid by reason of such pur-
chase, sale, or use, prior to the application for a patent as afore-
said, except on proof of abandonment of such invention to the
public, or that such purchase, sale, or prior use, has been for
more than two years prior to such application for a patent."
Certainly the language in the first clause of this section is very
general, not to say loose, in its texture. But if it stood alone,
a first interpretation of it might fairly lead to the conclusion,
that the purchaser there spoken of was a purchaser, not from
a mere wrongdoer, but from the first and true inventor, be-
fore he had obtained his patent. The. language of the clause
does not even include the qualification, that the purchaser
should be a bond fide purchaser for a valuable consideration,
without notice of the claim or title of the inventor, or of any
fraud of the vendor upon that claim or title. Yet, surely, it
could never have been the intention of this clause to confer
on a fraudulent purchaser, or a purchaser with full notice, a
right to use an invention pirated from the original inventor,
by wrong. If, on the other hand, we interpret the language

PATENT CASES.

273

Pienon v. The Eagle Screw Co. 3 Story.

to mean a purchaser from the inventor himself, before his ap-
plication for a patent, the omission of such qualifying words
is at once material and consistent with the apparent objects of
the section. But the remaining clauses of the section render
this interpretation perfectly clear and right. These clauses
point solely to the inventor, and demonstrate, that .
* the purchaser before spoken of was a purchaser [ * 407 ]
from the inventor himself. The language is, << and
no patent shall be held 'to be invalid by reason of any such
purchase, sale, or use prior to the application for a patent, as
aforesaid, except on proof of an abandonment of such inven-
tiori to the public.

Now, the inventor, and the inventor alone, is competent to
abandon his invention to the public, and no use by the public

exceptjvith his knowledge and^consent canTe deemed an

abandonment of his invention tojh^_public. It is, therefore,
put as an exception carved out of the preceding words ; and
if the purchase, sale, or prior use were from or under the in-
ventor, and with his consent and knowledge, the exception
would have its appropriate effect. It is an exception ejusdem
generis. The clause would then read in legal effect thus —
the patent shall not be held invalid, by reason that the inven-
tor has sold or allowed his invention to be used prior to the
application for a patent, unless he has abandoned it to the
public. Then follows the remaining clause : " Or that such
purchase, sale, or prior use, has been for more than two years
prior to such application for a patent ; " which also imports
another exception, limiting, the right to make application for
a patent to the period of two years after the inventor has sold
or allowed his invention to be used by others. Any other
construction of these clauses would lead to this extraordinary
conclusion, that the inventor would be deprived of the benefit \
of his invention and his right to a patent without any laches^
or misconduct on his own part, by the mere acts of a wrong-

274 PATENT CASES.

Fienoa v. The Eagle Screw Co. 3 Story.

'doer without his knowledge or against his will ; and the ex-
ceptions, in a practical sense, would become nullities. But
construed^as we construe them, and they have a plain, ap-
propriate, and satisfactory meaning. This view of the matter
is in entire coincidence of the whole theory and enact*
ments of all the other Patent Acts, and with the judicial in-
terpretations, which have be^n constantly put upon them. It
has been the uniform doctrine of the Courts of the

[ * 408 ] United States, ^ that no fraudulent or wrongful use
of an invention, and no public use without the con-
sent or knowledge or sanction of the Inventor. woul<f deprive

lim of his right to a patent.^

' The case of M'Clurg v. Kingsland, 1 How. Sup. Ch. R.
202, properly considered, contains nothing in conflict with
this doctrine. The learned judge (Mr. Justice Baldwin) who
delivered the opinion of the Court, in commenting upon the
7th section of the Act of 1839, said : " The object of this
provision is evidently twofold; first, to protect the person,
who used the thing patented by having purchased^ constructed,
or used the machine, &c., to which the invention is applied,
from any liability to the patentee, or his assignee ; second, to
protect the rights granted to the patentee against any infringe-
ment by any other persons." This language is certainly
general ; but then, in order to understand it correctly, we
must apply it to the very case then before the Court ; and in
this view, it was perfectly accurate and appropriate. What
was that case ? It was a case, where the patentee, before he
attained his patent, allowed the defendants to use for their

* See Pennock v. Dialogue, 2 Peters Sup. Ct K. 1, Vol. I. 542 ;• Grant v.
Raymond, 6 Peters Sup. Ch. R. 248, 249, Vol I. 604 ; Shaw v. Cooper,
7 Peters Sup. Ch. B. 292, Vol. I. 648 ; McCIuig v. Kingsland, 1 How.
Sup. Ch. R. 202, 207^ ante, 105. See Act of 8d July 1832, ch. 162, sec.
3 ; Act of 1886, ch. 857, sec. 15, Appendix, Vol. 11.

PATENT CASES; 275

Fienoa v. The Ea^e Screw Co. 3 Story.

own profit the very improTements ioTented by him ; and in-
deed, the improvement was invented by the patentee, while
he was in their employment and receiving wages from them,
and he freely allowed them to use it. Afterwards, the assignee
of the patentee brought the suit against the defendants for using
the improvement after the patent was granted. The Circuit
Court held, that the facts justified the jury in presuming, that
the defendants used the improvement under a license or pri-
vilege originally granted to them by the inventor, and that
the facts of the case brought it directly within the 7th section
of the Act of 1839. Mr. Justice Baldwin presided in the
Circuit Court at the trial, and he also delivered the
opinion in * the ^ufMreme Court. So that, putting [ * 409 ]
both opinions tc^ther on the points in controversy,
it is plain that the learned judge, by the language above stated,
meant to affirm no more than that where the invention had,
before the patent, been used under a license or grant of the
patentee, that license or grant being a purchase, or sale, or
use with the consent of the patentee, was within the provision
of the 7th section of the Patent Act of 1839. It seems to us,
that no reasonable objection exists to this doctrine; and it
is in conformity to and in illustration of the very doctrine
already stated by us as the true meaning of the section.

Indeed, the context immediately following the passage here
cited from the opinion of the learned judge, shows this to have
been his meaning. In the former part of the opinion he had
endeavored to show, that, under the prior acts of Congress, if
the patentee allowed not merely the public use, but even a
free individual use of his invention before he obtained a pa-
tent, that would deprive him of his right to a patent ; and
that the 7tb section of the Act of 1839 was intended to curq
this inconvenience and defect in the law. '< This," [section]
says the learned judge, '^ relieved him (the patentee) from the
efiect of the former laws and their constructions by thi#ik>urt.

276 PATENT CASES.

Pierson v. The Eagle Screw Co. 3 Story.

iic*y &C., while it puts the person who has had such prior use
on the same footing, as if he had a special license from the
inventor to use his invention ; which, if given before the ap-
plication for a patent, would justify the continued use after it
issued without liability." So that here we have expressed in
a pointed manner the true object and intent of the 7th section
of the Act of 1839, which was to give validity to the patent,
and yet to secure to a purchaser from him before the patent,
the same right to use the same after the patent which he pre-
\^ viously possessed.

The other point of the defence is so completely met by the
evidence, that it is unnecessary to comment on it. It seems

to be admitted that the evidence is too strong in
[ * 410 ] favor of the * plaintiff, and against the defendant,

to admit of any reasonable doubt ; and accordingly
the counsel for the defendants, considering the law upon the
other point ruled against them, have confined themselves
mainly in the closing argument to the question of damages.
1 shall leave the whole evidence for your consideration with-
out remark. But upon the question of damages I would upon
this occasion state, (what I have often ruled before,) that if
the plaintiff has established the validity of his patent, and that
the defendants have violated it, he is entitled to such reason-

able damages as shall vindicate his right, and reimburse him
for all such expenditures as have been necessarily incurred by
him beyond what the taxable costs will repay, in order to
establish that right. It might otherwise happen, that he would
go out of Court with a verdict in his favor, and yet have re-
ceived no compensation for the loss and wrong sustained by
him. Indeed, he might be ruined by a succession of suits, in
each of which he might, notwithstanding, be the successful
party, so far as the verdict and judgment should go. My un-
derstanding of the law is, that the jury are at liberty, in the
exerdipe of a sound discretion, if they see fit, (I do not say

PATENT CASES. 277

Boyd V. M'AIpin. 3 McLean.

■' ' "1 ' ....

that they are positively and absolutely bound under all circum-
stances) to give the plaintiff such damages, not in their nature
vindictive, as shall compensate the plaintiff fully for all his
actual losses and injuries occasioned by the violation of the
patent by the defendants.

Verdict for the plaintiff, $2,000.

Henbt Botd v. Henry M'Alpin.

[3 McLean, 427. July T. 1844.]

Under the eleventh section of the Act of 1836, respecting patent-rights, the pa-
tentee may assign any part of his patent so as to vest in the assignee the legal
right.

By the same section every assignment of a patent-right is required to be
. recorded in three months from the time of its execution.

A failure to record such patent assignment does not forfeit the right of the
assignee.

Should the same right be assigned, after the expiration of the three months, to
a stranger, the assignee would hold it, whether he had or had not notice of
the previous assignment

The sale of the product of a patented machine is not an infringement of the
patent.

Bat, if the person who sells is connected with the nse of the machine, he is
responsible for damages and may be enjoined.

And this may be done where the Court have jurisdiction of the person, although
the machine may be used beyond the jurisdiction of the Court

Kenna appeared for the plaintiff.

Storer for the defendant.

Opinion op the Court.
In his bill the plaintiff represents that he holds by assign-
voL. II. — p. c. 24

278 PATENT CASES.

Boyd o. M'Alpm. S McLean.

. — II. i .

ment the exclusive right, within the county of Ha-
[ ^ 428 ] milton, ^ in this State, to make and sell ^^ a new and
useful improvement in the machine for cutting
screws on the ends for the rails of bedsteads," patented to
Lindley. And he charges that the defendant, Henry M'Al-
pin, in connection with one William Brown of Lawrenceburgh,
' county of Dearborn, and Stat^ of Indiana, in disregard of, the
complainant's right, constructed, and has now in operation in
. the said town of Lawrenceburgh, one or more machines, in
'all the .material parts thereof substantially like and upon the
plan and arrangement and contrivance of the machines in-
vented, improved, patented, and put in operation by the said
Lindley, and described in said letters-patent." And the bill
prayed for an injunction to restrain the said M'Alpin from
using said machine or selling the product thereof.

On the filing of the bill a motion is made for an injunction,
until the final hearing, &c. And on the argument of this
motion it is objected to the defendant's title, that two of the
assignments which he claims were not recorded within the
time limited by the Act of Congress, and that they are, con-
sequently, void.

By section II, of the Act of 1836, the patentee may assign
any part of his patent, which assignment shall vest in the as-
signee the legal right to such part. And the same section
provides, ''that every such assignment shall be recorded in
the Patent Ofiice, within three months from the execution
thereof."

In the case of Dobson v. Campbell, 1 Sum. 319, Mr. Jus-
tice Story held, that, under the fourth section of the Act of
1793, '' the recording of the assignment was indispensable to
convey the right." The words of that section are, " and the
assignee having recorded the said assignment in the office of
the Secretary of -State shall, thereafter, stand in the place of
tlie original inventor both as to right and responsibility." After

PATENT CASES. 279

Bojd 9. M'Alpin. 3 McLean.

the recording, by the words of that act, the right
vested in the assignee ; of course it could not ♦ vest [ * 429 ]
before the recording. But the Act of 1836 affixes
no penalty.or condition, on a failure, to have the assignment
recorded in three months. That the assignment takes effect
from its date is clear, and if it be not recorded in three months,
the act imposes no forfeiture. In this aspect, the question «
must be considered as between the assignor and the assignee.
And it is not perceived how any sound construction of the
act can cause the right to revert to the assignor, if the as*'
signee fail to record the assignment within three months.
After the expiration of three months, no record having been
made of the assignment, if another assignment of th'e same
right shall be made, the last assignment would be valid. The
doctrine of notice, as applied to land titles, could not operate
in such a case. There is no exception in the statute, as to
purchasers without notice. And this seems to me to be the
proper efiect to be given to the act.

It is insisted that a sale of the thing manufactured by the
patented machine, is a violation of the patent. But this po-
sition is wholly unsustainable. The patent gives <^ the exclu-
sive right and liberty of making, constructing, using, and vend-
ing to others to be used, the said improvement." A sale of
the product of the machine, is no violation of exclusive right
to use, construct, or sell the machine itself. If, therefore, the
defendant has done nothing more than purchase the bedsteads
from Brown, who may manufacture them by an unjustifiable
use of the patented machine, still the person who may make
the purchase from him has a right to sell. The product can-
not be reached, except in the hands of one who is in some
manner connected with the use of the patented machine.

There are several patents of milla for the manufacture of
flour. Now, to construct a mill patented, or to use one, would
be an infringement of the patent. But to sell a barrel of flour

280 PATENT CASES.

Boyd V. M'Alpin. 3 McLean.

manufactured at such mill, by one who had purchased it at
the mill, could be no infringement of the patent.
[ * 430 ] ♦ And the same may be said of a patented stove, used
for baking bread. The purchaser of the bread is
guilty of no infringement. But the person who constructed
the stove, or who uses it, may be enjc^ined, and is liable to
damages. These cases show, that it is not the product, but
the thing patented, which may not be constructed, sold, or used.
This doctrine is laid down in Keplinger v. De Young, 10
Wheat. 358. In that case watch chains were m'Sinufactured
by the use of a patented machine, in violation of the right of
the patentee ; the defendant, by contract, purchased all the
chains so manufactured, and the Court held, that as the de-
fendant was only a purchaser of the manufactured article, and
had no connection in the use of the machine, that he had not
infringed the right of the patentee.

But in the case under consideration, the bill charges that
the defendant, in connection with Brown, constructed the
machine patented ; and that they use the same in making
the. bedsteads which the defendant is now selling in the city
of Cincinnati. If this allegation of the bill be true, the de-
fendant is so connected with the machine in its construction
and use as to make him responsible to the plantiff. The
structure and' use of the machine are charged 9s being done
beyond the jurisdiction of the Court, but having jurisdiction
of the person of the defendant, the Court may restrain him from
using the machine and selling the product. When the sale
of the product is thus connected with the illegal use of the
machine patented, the individual is responsible in damages,
and the amount of his sales will, in a considerable degree,
regulate the extent of his liability.

Whether, if the defendant acts as a mere agent of Brown,
who constructed the patented machine and uses it in Indiana
in making bedsteads, is responsible in damages for an infringe-

PATENT CASES. 281

Brooks et al. v, Stolley. 3 McLean.

men! of the patent and may be enjoined, is a question which
need not now be determined. Such a rule would, undoubt-
edly, be for the benefit of Brown, who, according to
*the bill, had openly and continually violated the [*431 ]
patent in the construction and^use of the machine.
There are strong reasons why the interest of the principal
should, by an action at law, and also by a bill in chancery, be
reached through his agent. Injunction allowed, &c.

Brooks & Morris v. Stolley.

[3 McLean, 523. April T. 1845.]

The Circnit Court of the United States has no jaiisdiction to enforce the speci-
fic execation of a contract for the nse of a patent-right, where the parties lire
in the Statd where soit is brought ; bat thej maj, bj injunction, protect the
right of the patentee or his assignee from infringement

If a license to use a patented machine be conditional, the conditions most be
performed, or there can be no right to the nse.

The nse of the machine, under such circumstances, is an infringement, and may
be enjoined. ,

There is no pretence of right, under the license, in such a case, and the question
must be considered as though no license had been granted.

When a license to use a patented planing machine was granted, on rendering
a weekly account of the boards planed, and paying on each thousand feet
planed one dollar and twenty-five cents, and other conditions, the payment
must be made weekly, &c., to authorize the use. Any alleged failure by the
patentee or his assignee, under the contract of license, will not authorize the
use, unless the defendant has done every thing in his power to perform the
contract. In such a case there is no adequate remedy at law.

As the defendant justifies under the license, he must show the performance of
the conditions of the grant.

A party claiming a right under a contract, must take it as agreed to by the
parties.

Equity will direct the caneelment of a contract for fraud or mistake, but it can-
not alter the contract.

24*

282 PATENT CASES.

Brooks et al. v, Stolley. 3 McLean.

Jurisdiction being acquired, on tbe ground of infringement, the Court may set-
tle other matters between the parties in the case, which do not afford original
ground of jurisdiction.

The defendant will be enjoined except on the terms of the license.

Under the circumstances, the failure of the defendant cannot be considered as
an abandonment' of the license. »

Wright and Coffin, for the complainants.
Walker for the defendant.

. Opinion or Judge McLean.

This is an application at Chanoibers for an injunction to
restrain the defendant from using a certain planing machine,
claimed by the complainants under Woodworth's patent. In
their bill, the complainants set out the obtainment
[ * 524 ] of the * original patent by Wood worth, and*the re-
newal of it by his administrator, the 16th Novem-

ber, 1842, all of which proceedings are alleged to be formal
and valid ; and they further state that they are the assignees
of the patent for Hamilton county, Ohio, and other territory,
as specified in the assignment ; that in the above county, they
have had for a long time the machine in operation and that
the defendant, having full knowledge of this, applied for a
license to run said machine in Hamilton county, which was
granted by the complainants, agreeably to the terms of a seal-
ed contract, dated the 11th of September, 1843 ; that, by the
contract, defendant bound himself to pay to the complainants
one dollar and twenty-five cents for every thousand feet of
boards he should plane, to be paid on Monday of every week,
and that he should render an account, if required, under oath,
and also should keep books, to which the complainants should
have access, and in which the boards planed should be enter-
ed ; that the defendant should require payment in cash before
the boards planed, except those planed for himself, should be

PATENT CASES. 283

Brooks et al. v. StoUey. 3 McLean.

taken out of his possession ; that, for a short time, the defend-
ant complied with the contract by making payment, &.C., but
for some time past he has utterly refused to make the stipu-
lated payments to the complainants, and in other respects has
refus)ed to be governed by the contract, although he still con-
tinues to run the machine ; and on this ground an injunction
is prayed, &c.

The defendant admits the obtainment, renewal, and assign-
ment of the patent, as stated by the complainants ; but he
denies the validity of the renewed patent. He denies that he
has refused to render an account of the plank planed, or that
he has rendered a false account. His books, he alleges,. have
always been accessible to the complainants, but he admits the
failure to make payment, and he avers that the com-
plainants have, in several respects, violated * the [ * 525 ]
contract on their part ; that he was deceived as to
the import of certain parts of the contract, &c., and he in-
sists that the complainants have ample remedy at law, &c.
The application is'made on the bill and contract referred to ;
and on these it must be considered, in connection with the
answer.

In the argument, an objection is made to the jurisdiction ;
and this will be first examined.

It is su^ested, that, as the whole controversy in the case
arises under the contract of license, the parties to which being
citizens of this State, the federal court cannot take jurisdic-
tion. The objection would be^ unanswerable, if no right were
involved in the controversy, except what arises out of the con-
tract ; as, for instance, the Circuit Court could take no juris-
diction under the contract of an action, merely to recover the
sums agreed to be paid by the defendant ; but, in the present
aspect of the case, it is not limited to the contract. The
complainants set up their right under the patent, and allege
that the defendant is infringing that right ; that the license

PATENT CASES.

Brookt et «1. n. SloUcf. 3 McLeoD.

affords no justification whatever to the derendant. The right
then of the complainaots to an injunction, is not founded by
them on the contract, but on the assignment of the patent.
If the object of the bill were merely to enforce a specific exe-
culion of the contract, the Circuit Court of the United States
could esercise no jurisdiction in the case.

It must be admitted that the contract constitutes an impor-
tant part of the case. Except on the ground that ^'i^ patent
is invalid, under which the complainants claim, there is no
pretence of right by the defendant to use the machine, unless
he derives it from the contract. In this view, the contract
must be considered as a license to the defendant, and its
terms must be construed.

As the. validity of Woodworth's patent, and the assign-
ment to the complainants, as for as regards the right .to an
injunction, has been heretofore considered and de-
[ * 526 ] cided, on * this motion that question will not be ex-
amined. It may not be improper, however, to sug-
gest, whether the defendant, having acknowledged the vali-
dity of the complainants' right, under his hand and seal, is
not estopped now from denying it. If in this admission he
was misled, and on that ground contends that he is not bound
by it, he must repudiate the contract, and claim nothing under
it. He cannot claim that part of the contact which may be
favorable to his interest, and reject that which operates against

jfendant admits that he has failed to make pay-
ich is the important fact of the agreement, as it
d the only motive which the complainants could
to enter into the agreement. But as the weekly
may be enforced at law, it is contended that the
at law, and not in equity. Whatever right the
: can have to run the machine, arises under the con-
1 the payment of the consideration is the foundation

PATENT CASES. 285

Brooks et al. v. Stolley. 3 McLean.

of that right. Can he claim a benefit under a contract which
he has refused to perform ?

The defendant by the agreement was to use the machine,
in the language of the writing, '^ on conditions hereinafter
mentioned." The weekly payments,planing for cash only,
no credit, &.C., &c., being stated, the contract proceeds :
^^ now in consideration of the propositions aforesaid, to wit,
that the said John StoIIey shall pay said Brooks & Morris
one dollar and twenty-five cents for each and every thou-
sand feet of boards he may plane, payable on Monday of
every week, &c., and shall do the other things stipulated,
the said Brooks & Morris license said Stolley the right of
running either of his two machines provided he does not run
both at the same time, &c., and provided also he shall keep
and perform on his part all the stipulations aforesaid."

Now the terms of the contract make the performance of
its stipulations by the defendant a condition to his continued
use of the machine ; and if the words of the contract did not
import, and indeed clearly sustain this view, equit-
able * considerations, arising from the nature of the [ * 527 ]
contract, would require such a construction of it.
The payment is to be made weekly. Could any reasonable
construction of the contract give the right to run the machine
by the defendant, in default of such payment ? The frequent
' settlement and payments show that longer indulgence was not
intended by the parties, and a remedy at law would be no
adequate relief to the complainants. To enforce the pay-
ments by legal means, would require a weekly suit ; and this
would subject the complainants to inconvenience, delay, and
expense, which would nearly, if not quite, be equal to the

amount recovered. Such a construction of the agreement
would be as inequitable as the remedy proposed would be
inadequate.

If the defendant claims any right under the contract, he

PATENT CASES.

Brook* ct nL v. Stoltef. 3 McLean.

must show that he ha£ done ever; thing on his part, which
in equity he can be required lo do, to entitle him to the right
asserted. He has a license to use the machine on certain
conditions ; btit it does not follow that he ma; use it without
conditions. The alleged violation of the contract by the
complainants, does not help the equity of the defendant.
He asks a specific execution of the contract, for he justifies
under it. Can he do this on the ground that the complain*
ants have given a license to others lo use Woodworth's
patent, in violation of the agreement? In admitting his
ftulure to make the weekly payments, he, in effect, admits
that he lias doae nothing to entitle him to the use of the ma-
chine.

The complainants, in the close of the contract, reserve the
right, under certain circumstances, to give other licenses.
This the defendant avers was not understood by him, and
that he was overreached by it. If the defendant be dissatis-
6ed with the contract, he has only to abandon it. He is
under no obligation to run the machine. But if he do run
it, he must conform to the conditions on which the right to

do so was granted.
[ * 528 ] *The complainants invoke the aid of equity, not
to decree a specific execution of the contract, but to
protect their rights as assignees of the patent. This right they
all^e has been infringed. The defendant relies on the license
contained in the contract; but having failed (o make the
weekly payments^ he has no pretence of right to run the ma-
chine. To entitle himself to the benefit of the license, it is
incumbent on (he defendant to do all which he is bound to do ;
and then, if he fail in the strict performance, by reason of the
act of the complainants, he will be equally entitled to the use
machine, as if he had literally and fully performed his
f the contract, — as if he had tendered the weekly pay-
, having kept a regular account, and the complainants

PATENT CASES. 287

Brooks et al. v, Stolley. 3 McLean.

refused to receive the money, the defendant's right could not
be questioned. But he has failed either to make or tender
these payments. He, therefore, can have no standing or
claim in law or equity, either to the use of the machine or to
damages from the complainants.

A question is made whether the failure of the defendant
to make the weekly payments operates as a forfeiture of the
contract. There is no condition of forfeiture in the contract.
Whether it has been abandoned by the defendant must depend
upon the circumstances of the case. A Court of Chancery will
not decree the cancelment of a contract, except for fraud or
mistake. In this case, the party who has violated the con-
tract, and complains of its unfairness, claims the benefit of it.
A Court of Equity, as well as a Court of Law, must act upon
a contract as it is ; or, for sufficient reasons. Chancery will
direct it to be delivered up and cancelled.

The right claimed by the complainants is an equitable
right, which is protected by the exercise of the extraordinary
jurisdiction of a Court of Chancery ; and in this view, it is of
no importance whether the alleged violation is under
the * pretence of a license or not. If the defendant [ * 529 ]
have no license to use the machine, as be is now
using it, he is without right or excuse.

An injunction is prayed, which, in effect, will annul the
contract. Now, although it may be admitted that the de-
fendant, as the facts of the case stand, could not successfully
invoke in his behalf the action of a Court of Equity or of law,
yet, under the relief asked by the complainants, a somewhat
different view may be taken. Are the complainants entitled
to an absolute injunction, which shall annihilate the contract?
It appears to me, that short of this, adequate relief may given.
In this respect the case is altogether different from an ordi-
nary case of infringement, where no contract has been made
by the parties. In that case an absolute injunction is the only

PATENT CASES.

Allen v. BlQDt et aL 3 SUiry.

adequate relief; but, in the case under consideration, the
complainants have licensed the defendant to use the patented
right on certain conditions. If the use go beyond these con-
ditions, there is an infringement,' which must stand upon the
general ground, unaffected by the contract ; and as to such
an use, the injunction should be absolute. On this ground
the jurisdiction of this case is sustainable ; and, having juris-
diction, the Court may dedde other matters between the par-
ties, which, of themselves, might not afibrd ground for the
original exercise of jurisdiction.

Upon the whole, I will allow the writ prayed for, to enjoin
(he defendant for the use of the planing machine described
in the bill, unless he shall pay, or ofTer to pay, to the com<-
pjainants, one dollar and twenty-five cents for each and every
thousand feet of boards he may have planed, the preceding
week, every Monday, during the urieipired term of the pa-
lent ; and unless he shall keep a regular account of the plan-
ing done, and permit the complainants to have access to the
books, and unless the defendant shall also do the other things,
which, by the contract, he is bound to do, as the conditions
on which he is authorized to use the machine.

Ethah Allen v. Okison Blumt, ahd Anotheh.*
[3 Sioiy, 742. tfay T. 1S45.J

m or the CDininiBs[ciiicr of Palcnu is conclnaive bs to the law and
ling under an application for a patent, ddIgbb it be impcacbed for

counsel-fees, see WLittemore v. Cutter, anle. Vol. I. 28 ; Boatoi
ring Co. v. Fiske et al., anle, Yol. I. 320. Also Stimpson i
oads, post.

PATENT CASES. 289

AUen V. Blnnt et aL 3 Story.

frand or connirance between him and Ij^e patentee ; or unlets his excess of
authority be manifest on the face of the papers.

Where a particular aathoritj is confided in a public officer, to be exercised in
his discretion upon an examination of facts, of which he is the appropriate
judge, his decision upon ihose facts, is, in the absence of any controlling pro-
Yision, absolutely conclusire.

A verdict upon an issue, ordered by a Court of Equity, is not final upon the
facts it finds, nor binding upon the judgment of the Court, unless it is sanc-
tioned and adopted by the Court upon the subsequent hearing on the merits.

Qfuare — Whether a verdict in a suit at law, is evidence of any thing but the
fact that it was rendered, unless a judgment be duly rendered thereon.

The Patent Act contemplates two classes of persons, as peculiarly appropriate
witnesses in patent cases, namely : 1st. Practical mechanics, to determine
the sufficiency o(the specification as to the mode of constructing, compound-
ing and usiifg the patent. 2d. Scientific and theoretic mechanics, to deter-
mine whether the patented thing is substantially new in its structure and
mode of operation, or a mere change of equivalents ; and the second class is
by far the higher and most important of the two.

CxsE for infringing of a patent for <<An improvement
in the method of constructing locks for fire-arms.'^ Plea
the general issue, with a special statement of matters of de-
fence.

At the trial it appeared that the origiial patent
was granted * on the 1 1th of November, 1837, and [ * 743 ]
was surrendered for some imperfections in the spe-
cifications, and a new amended patent was taken out on the
the 15th of January, 1841, which was again, for a like defect,
surrendered, and k new, amended patent was taken out on
the 3d of August, 1844.

Upon the opening of the defence, Gray, (with whom was
Dexter,) for the defendants, took a preFiminary objection, that
the last (the present) patent was not good as an amended
patent, for the specifications attached to the three patents
were for different things and not for one and the same inven-
tion ;.and that consequently the Commissioner of Patents had

VOL. II. — p. c. 25

PATENT CASES.

Allea V. Blunt et al. 3 Slw?.

exceeded his authority in granting the present patent, and he
cited the I3th section of the Patent Act of 1836, ch. 357.

B. R. Cttrtis and R. Ckoate, for the plaintiff, contended,
that the present patent was for the same invention as the two
former ; and they also insisted that the Commissioner of Pa-
tents was the proper jndge of the matter, and his decision in
granting the patent was conclusive.

Stobt, J. The 13th section of the Patent Act of 1836, ch.

357, enacts, (hat whenever any patent shall ba inoperative or

invalid, by reason of a defective or insufficient description or

specification, or by reason of the' patentee claiming in his

specification, as his own invention, more than he had, or shall

have a right to claim as new, if the error has or shall have

arisen by inadvertency, accident, or mistake, and without any

fraudulent or deceptive intention, it shall be lawful for the

commissioner, upon the surrender to him of such patent, and

the payment of the further duty of fifteen dollars, to cause

a new patent to be issued for the same invention for the

residue of the term then unexpired, for which the original

patent was granted, in accordance with the patentee's cor-

">cted description and spedfication. Now the specification

may be defective or insufficient either by a mbtake

*744 ] of law, *as to what is^required ICbe stated therein

in respect to the claim of the inventor, or by a mis-

:e of fact, in omitting things which are indispensable to the

mpletenesB and exactness of (he description of the inven-

n, or of the mode of constructing, or making or using the

ne. Whether the invention claimed in the original patent,

d that claimed in (he new amended patent, is substantially

i same, is and must be in many cases a matter of great nicety

d difficulty to decide. It may involve considerations of

;t as well as of law. Who is to decide the question ? The

PATENT CASES. 291

Allen 17. Blunt et al. 3 Story.

troe answer is, the Commissioner of Patents ; for the law in-
trusts him with the authority, not only to accept the surren-
der, but to grant the new amended patent. He is bound,
therefore, by the very nature of his duties, to inquire into and
ascertain, whether the specification is definite or insufficient,
in point of law or fact, and whether the inventor has claimed
more than he has invented, and in each case, whether the
error has arisen from inadvertency, accident, or mistake, or
with a fraudulent or deceptive intention. No one can well
doubt, that, in the first instance, therefore, he is bound to de-
cide the whole law and facts arising under the application for
the new patent. Primd faciei therefore, H must be presumed
that the new amended patent has been properly and rightfully
granted by him. I very much doubt whether his decision is
or can be reexaminable in any other place, or in any other
tribunal, at least, unless his decision is impeached on account
of gross fraud or connivance between him and the patentee;
or unless his excess of authority is manifest upon the very
face of the papers ; as, for example, if the original patent
were for a chemical combination, and the new amended pa-
tent were for a machine. In other cases, it seems to me,
that the law, having intrusted him with authority to ascertain
the facts, and to grant the patent, his decision, bond fide made,
is conclusive. It is like many other cases, where the law h&s
referred the decision of a matter to the sound discretion of a
public officer, whose adjudication becomes conclu-
sive. Suppose the Secretary of the Treasury * should [ * 745 ]
remit a penalty or forfeiture incurred by a breach of
the laws of the United States, would his decision be reex-
aminable in any Court of law upon a suit for the penalty or
forfeiture ? The President of the United States is, by law,
invested with authority to call forth the militia to suppress in-
surrections, to repel invasions, and to execute the laws of the
Union ; and it has been held by the Supreme Court of the

PATENT CASES.

Allen t>. Blunt et d. 3 Story.

United Stales, that his decision as to the occurreotre of the
exigency, is conclusive.^ In short, it may be laid down as a
general rule, that, where a particular authority is confided to
a public officer to be exercised by him in bis discretion upon
an examination of facts, of which he is made the appropriate
judge, his dedsion upon these facts is, in the absence of any
controlling provisions, absolutely conclusive as to the exist-
ence of those facts. My opinion, therefore, is, that the grant
of the present amended patent by the Commissioner of Pa-
tents is conclusive as to the existence of all the facU, which
were by law necessary to entitle him to issue it ; at least,
unless it was apparent on the very face of the patent itself,
without any auxiliary ervidence, that he was guilty of a clear
excess of authority, or that the patent was procured by a
fraud between him and the patentee, which ia not patented
in the present case.

The defence upon the merits turned upon two points :
(I.) That the defendants did not use the same combination
as the plaintifT, and consequently there was no violation of his
patent.

(2.) That the invention patented did not belong to the
patentee, he not being the first inventor thereof.

In Uie course of the trial, the counsel for the defendant, in
support of their defence, offered in evidence the record of a
suit in equity between the same parties in the Circuit
[ • 746 ] Court •of the United Stales, for the district of New
York, in which the Court had directed an issue upon
the same points, which were now in controversy, &nd the jury
found a verdict upon these points in favor of the defendanU.

'Martin v. Mott, 12 Wheat. E. I

PATENT CASES. 293

Allen V. Blunt et al. 3 Stoiy.

But it further appeared upon the record, that no further pro-
ceedings were had upon the^verdict, jand no hearing was had
upon the merits of the case by the Court ; but the plaintiff, by
the leave of the Court, was allowed to dismiss his own bill
without any final hearing thereon.

Curtis and Choatey for the plaintiff, contended that, under
these circumstances, the record was not admissible as eyi-
dence. Gray and Dexter^ for the defendants contended that
it was, being a verdict upon the very points now in contro-
versy.

Stort, J. My opinion is, that the record is not admissi-
ble as evidence. No hearing was ever had by the Court sub-
sequently to the verdict, and no decree rendered upon the
merits of the case. A verdict upon an issue ordered by a
Court of Equity is, in no just sense, final upon the facts it
finds, or binding upon the judgment of the Court. The
Court may at its pleasure set it aside, and grant a new trial,
or, disregarding it; may proceed to hear the cause and decide
Jn contradiction to the verdict ; or it may adopt the verdict,
sub modoy and give it a limited effect only. But it can never
be known what effect is given to the verdict, or whether any
is given to it, until the subsequent hearing upon the merits,^
and a decree rendered thereon by the Court. Under such
circumstances, it is plain to me, that this verdict is not admis-
sible in evidence, for it has not been sanctioned or established
by the Court, and without such sanction it is no proof of any
fact, but that it was actually rendered in the case, and not
proof of the facts found thereby. Indeed, I entertain great
doubts, whether a verdict given in a suit at law |s ever evi-
dence of any thing but the fact that it was rendered,
unless a * judgment has been rendered thereon ; for [ * 747 ]
judgment may have been arrested therein, or a new

25*

294 PATENT CASES.

Alien V. Blant et al. S Stoiy.

trial granted ; and then the verdict would become a nuUitjr.^
But in a Court of Equity, the verdict, independent of the adop-
tion and sanction of it by the Court, can establish nothing in
the case.

The cause was afterwards ai^ed to the jury upon the
facts.

Story, J., in summing up to the jury, said : There is one
consideration applicable to the evidence, which has been
much discussed by the learned counsel, and upon which it is
proper that I should say a few words. It is as to the relative
weight of the evidence of persons practically engaged in the
trade, employment or business of the particular branch of
mechanics to which the patent-right applies, and the evidence
of persons who, although not practical artisans, are thoroughly
conversant with the subject of mechanics as a science. It ap-
pears to me, that the Patent Acts look to both classes of per-
sons not only as competent, but as peculiarly appropriate
witnesses, but for difTisrent purposes. Two important points
are necessary to support the claim to an invention : First, that
it should be substantially new, as, for example, if it be a piece
of mechanism, that it should be substantially new in its struc-
ture or mode of operation. Secondly, that the specification
should express the mode of constructing, compounding, and
using the same in such full, clear, and exact terms, *^ as to en-
able any person skilled in the art or science, to which it ap-
pertains, or with which it is most nearly connected, to make,
construct, compound, and use the same." Now for the latter
purpose, a mere artisan, skilled in the art with which it is

1 Phillips & Ames on Evidence, pt 2, cb. S, § 1, p. 618, edit. 18S8.
See Phillips on Evidence, by Cowen & Hill, vol. 8, note 729, p. 1070.

PATENT CASES. 296

Allen V. Blunt et al. 3 Story.

connected, may in many cases be an important and satisiac-
tory witness. If, as a mere artisan, he can, from the descrip-
tion in the specification, so make, construct, com-
pound, and * use the same, it would be very cogent [ * 748 ]
evidence of the sufficiency of the specification.
Still, it is obvious, that although a mere artisan, who had no
scientific knowledge on the subject, and who was unacquaint-
ed with the various mechanical or chemical equivalents em-
ployed in such cases, might not be able to make or compound
the thing patented, from the specification ; yet a person who
was skilled in the very science on which it depended, and
with the mechanical and chemical powers and equivalents,
might be able to teach and demonstrate to an artisan, how it
was to be made or constructed, or compounded or used. A
fortiori he would be enabled so to do, if he combined practi-
cal skill with a thorough knowledge of the scientific principles
on which it depended. But upon the question of the novelty of
an invention, and in reference to this, the identity or diversity
of two or more machines, or compounds, it is obvious, that
mere artisans, however well skilled in the mere details of their
art, might be wholly incapable of giving a satisfactory answer ;
when a person trained in the' science to which it belonged,
would, at a glance, ascertain whether the mechanical appara-
tus or chemical compound was identical in its composition
and structure or not, or whether the differences consisted in
the mere change of one known mechanical equivalent for ano-
ther. In short, science alone would be able to answer the
question whether or not a particular machine was substantially
in its mode of operation new, or identical with another, al-
though with apparent differences of form and structure, which
might mislead the unscientific mind. The like considerations
would apply to a chemical compound ; Sir Humphry Davy,
for example, might, from his vast knowledge of the chemical
affinities of different substances, be able to tell, what must be

296 PATENT CASES.

Woodworth et al. v. Stone. 3 Story.

the effect of the combination thereof from their known qoali-
ties, and what what would be a mere change of known chemical
equivalents without any exercise of the inventive powers, al-
though he might, never perhaps have made the particular com-
pound then before the Court. I should, therefore,
[ * 749 ] saj to the jury, that * each of these classes of wit-
nesses was important and competent for different
purposes in causes respecting patents for inventions. But that ^
the very highest witnesses to ascertain and verify the novelty
of an invention, dnd the identity or diversity of mechanical
apparatus and contrivances and equivalents, were, beyond all
question, all other circumstances being equal, scientific mecha-
nics ; that they were far the most important and most useful
to guide the judgment, and to enable ,the jury to draw a safe
conclusion, whether the modes of operation were new or old,
were identical or diverse.

The judge then proceeded to sum up the facts, and left
them to the jury. The jury, not being able to agree upon a
verdict, were discharged.

William W. Woodworth, Administrator, and Oth£rs,

V. Joel Stone.

[3 Story, 749. May T.,1845.]

An injanction granted on an original bill, before the surrender of a patent,
cannot be maintained upon the new patent, unless a supplemental bill be
filed, founded thereon.

A patentee cannot, by a surrender of his patent, affect the rights of third per-
sons, to whom he has previously assigned his interest in the whole or a part
of the patent, unless the assignees consent to the surrender.

To support an action at law for the breach of a patent, it is indispensable to

. PATENT CASES. 297

Woodworth et al. v. Stone. 3 Btorj,

prove a breach before the action is brought \ bat, if the patent-right be ad-
mitted or established, a bill in equity quia timet will lie ibr an injanction, npon
well-grounded proof of anj apprehended intention of the defendant to
Tiolate it
The decision of the Commissioner of Patents in respect to accepting a surrender
of an old patent> and granting a new one, is not reexaminable elsewhere,
unless it appear on the face of the patent, that he has exceeded his anthoritj.

This was the case of a bill in equity, brought for an in-
fringement of what is commonly called Woodworth's Plan-
ing Machine. The bill prayed for an injunction
and other * relief. Upon an interlocutory hearing [ * 750 J
a temporary injunction was granted by the district
judge.

Pending the proceedings, the patent was surrendered on
account of a defect in the speciBcation, and a new patent
was granted ; and upon this new patent a supplemental bill
was filed against the defendant for the continuance of the
injunction and other relief.

Giles, for the defendant, now moved to dissolve the origi-
nal injunction ; and contemporaneously, B. R, Curtis, for the
plaintiff, moved for the continuance of the injunction upon
the supplemental bill.

Various objections were urged for the defendant against
the motion for the continuance of the injunction on the sup-
plemental bill, and the surrender of the old patent was relied
upon in support of the motion to dissolve the injunction
granted on the original bill.

These 6bjections were replied to on behalf of the plaintiff,
and the propriety of continuing the injunction insisted on.
It is not, however, necessary to repeat the arguments, as they
are sufficiently stated in the opinion of the Court.

Stort, J. If the present case had stood merely upon the
original bill, it appears to me clear, that the motion to dissolve

298 PATENT CASES. .

Woodworth et aL v. Stone. 3 Storj.

the injunction granted upon that bill, ought to prevail, be-
cause, by the surrender of the patent, upon which that bill is
founded, the right to maintain the same would be entirely
gone. I agree that it is not in the power of the patentee, by
a surrender of his patent, to affect the rights of third persons,
to whom he has previously, by assignment, passed his interest
in the whole or a part of the patent, without the consent of
such assignees. But, here, the supplemental bill admits, that
the assignees, who are parties to the original and supple-
mental bill, have consented to such surrender. They have,

therefore, adopted it ; and it became theirs in the
[* 751 ] same * manner as if it had been their personal act,

and done by their authority.
The question, then, is precisely the same, as if the suit
were now solely in behalf of the patentee. In order to un-
derstand with clearness and accuracy some of the objections
to the continuance of the injunction, it may be necessary to
state, that the original patent to William Woodworth, (the
inventor,) who is since deceased, was granted on the 21ih of
December, 1828. Subsequently, under the 18th section of
the Act of 1836, ch. 357, the Commissioner of Patents, on
the 16th of November, 1842, recorded the patent^in favor of
William W. Woodworth, the administrator of William Wood-
worth, (the inventor,) for seven years from the 27th of De-
cember, 1842. Congress, by an act passed at the last session,
(Act of 26th February, ch. 27,) extended the time of the
patent for seven years from and after the 27th of December,
1849, (to which time the renewed patent extended) ; and the
Commissioner of Patents was directed to make a certificate of
such extension in the name of the adminis^trator of William
Woodworth, (the inventor,) and to append an authenticated
copy thereof to the original letters-patent, whenever the same
shall be .requested by the said administrator or his assigns.
T^e Commissioner of Patents, accordingly, on the 3d of

PATENT CASES. 299

Woodworth et al. v. Stone. S Story.

March, 1845, at the request of the administrator, made such
certificate on the original patent. On the 8th day of July,
1845, the administrator surrendered the renewed patent
granted fto him <' on account of a defect in the specification."
The surrender was accepted, and a new patent was granted
on the same day to the administrator, reciting the preceding
facts, and that the surrender was " on account of a defective
specification," and declaring that the new patent was ex-
tended for fourteen years from the 27th of December, 1828,
'< in trust for the heirs at law of the said W. Woodworth, (the
inventor,) tlieir heirs, administrators, or assigns."

Now, one of the objections taken to the new pa-
rent is, that * it is for the term of fourteen years, [ * 752 ]
and not for the term of seven years, or for two suc-
cessive terms of seven years. But it appears to me that this
objection is not well founded, and stands inter Apices juris ;
for the new patent should be granted for the whole term of
fourteen years from the 27th of December, and the legal
effect is the same as it would be, if the patent was specifically
renewed for two successive terms of seven years. The new
patent is granted for the unexpired term only, from the date
of the grant, namely, for the unexpired period existing on
the 8th of July, 1845, by reference to the original grant in
December, 1828. It is also suggested, that the patent ought
not to have been in trust for the heirs at law of the said W.
Woodworth, their heirs, administrators, or assigns." But this
is, at most, a mere verbal error, if indeed it has any validity
whatsoever ; for the new patent will, by operation of law,
enure to the sole benefit of the parties, in whose favor the law
designed it should operate, and not otherwise. It seems to
me that the case is directly within the purview of the 10th
and 13th sections of the Act of 1836, ch. 357, taking into
consideration their true intent and objects.

Another objection urged against the continuation of the

PATENT CASES.

Woodworth ct •]. v. Stone. 3 SC017.

iDJunclioD is, that the breach of the pateot assigned in tbe-
original bill can have no application to the new patent, and
there is no ground to suggest, that, since the injunction was
granted, there has been any new breach of the old patent, or'
any breach of the new patent. But it is by no means neces-
sary, that any such new breach should exist. The case is
not tike that of an action at law for the breach of a patent, to
support which it is indispensable to establish a breach before,
the suit was brought. But in a suit in equity, the doctrine is
far otherwise. A bill will lie for an injunction, if the patent-
right is admitted or has been established, upon well-grounded '
proof of an apprehended intention of the defendant (a violate
the patent-right A bill, quia timet, is an ordinary
[ • 753 J • remedial process in equity. Now, the ifijunction
already granted, (supposing both patents to be for
the same invention) is primd facie evidence of an intended
violation, if not of an actual violation. And the affidavit of
James N. Bu£fum is very strong and direct evidence to this
same effect.

But the most material objection taken is, that the new
patent is not for the same invention as that which has been
surrendered. And certainly, if this be correct, there is a fatal
objection to the prolongation of the injunction. But is the
objection well founded in point of fact ? It is said, that the
present patent is for a combination only, and that the old pa-
tent was for a combination and something more, or different.
But I apprehend that, upon the face of the present patent, the
question is scarcely open for the consideration of the Court ;
and, at all events, certainly not open in this stage of the
cause. 1 have already, in another cause, had occasion to
that where the Commissioner of Patents accepts a sur-
of an old patent and grants a new one, under the Act
>, ch. 357, his decision, being an act expressly confid-
lim by law, and dependent upon his judgment, is not

PATENT CASES. 301

.Woodworth et al v. Stone. 8 Story.

reexaminable elsewhere ; and that the Court must take it to
be a lawful exercise of his authority, unless it is apparent
upon the very face of the patent, that he has exceeded his ,
authority, and there is a clear repugnancy between the old
and the new patent, or the new one has been obtained by
collusion between the commissioner and the patentee. Now,
upon the face of it, the * new patent, in the present case,
purports to be for the same invention and none other, that is
contaiined in the old patent The avowed difference between
the new and the old, is, that the specification in the old is
defective,, and that the defect is intended to be remedied in
the new patent. It is upon this very ground, that \he old
patent was surrendered and the new patent was granted.
The clatkn in the new patent is not of any new in-
vention ; but of * the old invention more perfectly [ * 754 ]
described and ascertained. It is manifest that, in
the first instance, the commissioner was the proper judge
whether the invention was the same or not, and whether
there was any deficit in the specification or not, by inadvert-
ence, accident, or mistake ; and consequently, he must have
decided that the combination of machinery claimed in the old
patent was, in substance, the same combination and invention
claimed and described in the new. My impression is, that at
the former trial of the old patent before me, I held the claim
substantially (although obscurely worded) to be a claim for
the invention of a particular combination of machinery for
planing, tonguing, and grooving, and dressing boards, &c. ;
or, in other words, that it was the claim of an invention of a
planing machine or planing apparatus such as he ha{l describ-
ed in his specification.

It appears to me, therefore, that primd faciei and, at all
.events, in this stage of the cause, it must be taken to be true,
that the new patent is for the same invention as the old pa-
tent; and^that the only difference is, not in the invention

VOL. II. — p. c. 26

PATENT CASES.

B17M tt. Don & JoDM. 3 MeLaMi.

itself, but in the tpecificatiot] of it. In the old, it was defect-
ively described and claimed. In the oetr, the defecta are
ioteaded to be remedied. Whether they are effectttaily
remedied ia a point not now properly before the Court. Bat
as the Commiafiioner of Patents haa granted the new patent aa
for the same inrention as tbe old, it doea not appear to me,
that thia Court ia now at liberty to revise his jadgment, or to
WBj, that he haa been' guilty of an exceas of authority, at least,
(as has been already suggested,) not in thia stage of the
cause ; for that would be for the Court of itaelf to assume to
decide many matters of fact, as to the specification, and tbe
coinlHnation of machinery in both patents, without any ade-
quate means of knowledge or of guarding itself from gross
error. For tbe purpose of the injunction, if for nothing elae,

I most take the invention to be the same in both
[ * 755 ] patents, * af^er the Conuniinoner of Patents has so

decided, by granting the new patent
Upon the whole, therefore, I do order and direct, that the
injunction do stand continued, aa to the new patent, stated
in tbe supplemental bill, until the hearing or farther order of
Court.

BrTCE v. DoBR AMD JoNES.

[3 McLmd, SSI. June T. IMS.]

iWBt-riglit ia inMuged, by ""^"g tbs iMng pUeatcd, thongli emplojed
' another to do lo.

when the thiDg wu made without the knowledge of iu harlng been p«-
itod, more than nominal damigei ahoaU not be giren.

i&ttglaas for plaintiC

'by 6f Porter for defendants.

PATENT CASES. 303

DaroU et aL v. Brown. 1 Wood. A Minot.

Opinion or the Coute.

This action is brought for the violation of a paten t-right,
by the defendants, in casting at their foundery water-wheels
for mills.

* It was proved that several wheels were cast on [ * 588 ]
the same principle of the plaintiff's patent. The
model was furnished by Sage. Only two wheels were cast
after the defendants came to the knowledge of the plaintiff's
patent.

As the defendants were employed by Sage to cast the
wheels, it was insisted that the action should have been
brought, against him, and was not maintainable against the
defendants. But the Court held the defendants were liable
for an infringement of the patent. But, as the defendants
had cast but a few wheeUy and, with the exception of two of
them, had acted without a knowledge of the plaintiff's right,
they suggested to the jury that nominal damages were all
that the plaintiff could demand. Nominal damages were
found.

William C. Davoll and Othkhs t^. Jambs S. Bbown.

[1 Woodbniy and Minot, 53. October T. 1845.]

It is the duty of the Court, rather than the jury, to constme the lang^ge used
in a specification of a patent, if no parol eyidence is offered in explanation,
or none which is contradictory.

A patent is not to protect a monopoly of what existed before and belonged to
others, bnt to protect something, which did not exist before, and which be-
longs to the patentee.

A construction of patents, liberal for the patentees, is proper. Bnt the descrip-
tion of fhe patent most be so certain, as to be nndentood by those acquainted
with the subject-matter.

Bnt the whole of the specification, as well aa the summary and the drawings,
are generally to be examined and compared, and not one alone looked to, in

304 PATENT CASES.

DftToll et aL v. Brown. 1 Wood. & Miaot

order to decide what new part or new combination !• claimed to be inTented
and protected.
In coming to a result, practical yiews, rather than subtle distinctions, most
gOTem.

This was an action on the case for a violation of a patent-
right, owned by the plaintifi, for an improvement in the
speeder for roving cotton.
[ * 54 ] * The letters-patent were averred to have issued

May 19th, 1843.
The general issue was pleaded, and notices given of several
defences, all of which at the trial here at this term were found
by the jury against the defendant.

He then moved for a new trial, on account of a supposed
misdirection by the Court to the jury, in relation to the speci-
fication, a copy of which is annexed.^

1 The Schednle referred to in these Letters-Patent, and making part of

the Mune.
To all whom it may concern. Be it known, that I, William C. Daroll,
of Fall Hirer, in the county of Bristol, and State of Massachosetts, haye
invented certain new and useful improvements in the machine known by
the name of Speeder, Double Speeder, or Fly-frame, used for roving cot-
ton, preparatofy to spianing, and I do hereby declare that the following is
a full and exact description thereof: — My nuun improYement consists in
the manner in which I arrange the spindlei), in two rows, hj means of
which arrangement only about one half the room is required to receive the
same number of spindles ; the operator can also attend td a greater number
than usual ; much less power will be required to put them in motion ; the
cost per spindle will also be much less, the double i^w requiring but little
more gearing than a single row, and the machine will bear running at a
much higher velocity than the English Fly-firame. In the accompanying
drawing, figure 1 represents an end view of the machine, and figure 2 a
top view of a spindle or flyer-raiL The position these rails occupy in the
machine, is shown at n and o, figure 1, n being an end view of the spindle,
and 0 of the flyer-rail, with the requisite gearing upon them, which is the
same on each of them. These rails, instead of being drilled, Hke those in
common use, with a single row of holes for supporting the spindles which

PATENT CASES. 30S

DatoU et bL v. Brown. 1 Wood. & Minot.

* The grounds for the motion will ai^)ear in the [ * 55 ]
opinion of the Court.

B* IL Curtis and Warren, for the plaiotifis.

paaB through them, are drilled with a double row, at ffhown afc a a, and h b^
figore 2. The back jtow, 5 &» ii placed about Avt inohea fiom the front
row, a a, or about the width of the flyer to be used. The holes b b, of the
back roW| are drilled intermediate between those of the front row a a, and
hy this arrangement the bobbins h are readily changed. Hie spindles
ee Cy fignre 1, work np and down through the rows of holes a a, and b 5,
and through the tubed wheeb e «, figures 1 and 2, and also through the
bottoms of the fl/ers as seen at a. The reqpectiTe retolTiag and yertical
motions of the spindles and flyers are efiected in any of the known modes.
The flyers, as shown in the back row at t, figure 1, are made to stand with
their planes at right angles to those of the front row h ; this, with their
intermediate portion, greatly facilitatiog the changing of the bobbins. To
the bottom of each flyer a tube wheel is attached, as seen at e, figures 1
and 2 ; and a similar wheel is attached to each spindle, as shown at e c,
figure 1 i and motion is consequently communicated to them independently ;
but the respective flyers and spindles of both rows are geared into the
same intermediate wheels, //, as shown in figure 2. The abore consti-
tutes the whole gearing few ^ving motion to the back voir of flyen and
spindles.

It will be seen, that the flyers, as used by me and shown at » t, and kk^
are made in one continuous piece, instead of being open at the bottom as
is the case with those generally used in the English fly-frame, and this,
among other reasons, enables me to give the increased Telocity above
referred to.

Haring thus fully described the nature of my inyention, in the im-
proved construction of the Speeder, Double Speeder, or Fly-frame, what
I claim therein as new, and desire to secure by letters-patent, is the ar-
rangement of the spindles and flyers in two rows, in combination with the
described arrangement of the gearing. And tins I claim, whether the
said gearing be arranged precisely as herein represented, or in any other
manner whidi is substantially tiie same, producing a like result, upon the
principle. ' William C. Davoll.

( B. K. MORSBLL,

WUneues, | Edwik L. Brundage.

306 PATENT CASES.

DaToll et al. v. Brown* 1 Wood. & Minot

Dexter and AmeSy for the defendant.

WooDBURT, J. This motion is founded upon the position,
that, by the specification, the improvement of the plaintiff is
not confined to the use of the bow-flyer, that is, the flyer in
*^ one continuous piece," as part of his new combination ; and
that the Court, in charging the jury that it was so confined,
on a fair construction of the whole specification and drawing,
erred in ppint of law.

In the argument, the counsel seemed to contend, that there
was another error, in not leaving the point to the jury, as a
question of fact, whether the bow-flyer required a different
gearing from the open flyer, and if it did, then the
[ * 56 ] * bow-flyer formed a part of the new combination
claimed; but if it did not require a different gear-
ing, then the bow-flyer was not in point of law a portion of
the new combination.

But it is enough to dispose of this last position, to see that
it would narrow the question of law as to what kind of flyer
was contemplated in the patent, and that it must depend on
a single fact, to be found by the jury. Whereas, in truth,
that question depended mainly on the language used in the
specification and on the drawing, and not upon any fact in
the case, which was in dispute at the trial, and dehors or
independent of the writing. Nor was the Court, at the trial,
requested to charge the jury, that the construction of the
writing in this respect depended on any such fact ; nor was
it understood to be argued to the jury by the counsel, th^t
the construction depended on it, but rather on the writing
itself and the drawing, with some two or three, other facts,
about which no controversy or conflicting evidence existed.

It is well settled law, also, as to all written instruments,
that their meaning in general is to be collected from the lan-
guage of the instruments themselves.

PATENT CASES. 307

DaTott et al. v. Brown. 1 Wood. & Minot.

The construction seldom rests on facts to be proved by
parol, unless they are so referred to, as to make a part of the
description and to govern it ; and when^it does at all depend
on them, and they are proved, or admitted, and are without
dispute, as here, it is the duty of the Court, on these facts, to
give the legal construction to the instrument.

But whether the Court gave the right construction to the
patent in dispute, so far as regards the kind of flyer to be
used in it, is a proper question for consideration now ; and if
any mistake has occurred in relation to it, in the hurry and
suddenness of a trial, it ought to be conected, and will be
mosttsheerfully. There is no doubt as to the general princi-
ple contended for by the defendant in this case, that 41 pa-
tentee should desciKbe with reasonable certainty his invention.
Several reasons exist for this. One is, the act of

Congress itself requires, that he " shall particularly [ * 57 ]
specify and point out the part, improvement, or
combination which he claims as his own invention?" Act of
July 4, 1835, ch. 357, ^ 6; 5 Stat, at Large, p. 119. And
another is, that unless this is done, the public are unable to
know whether they violate the patent or not, and are also
unable, when the term expires, to make machines correctly,
and derive the proper advantages from the patent. Bovill t;.
Moore, Davies's Case8,^361 ; Phillips on Patents, 286 ; Lowell
V. Lewis, 1 Mason, 18S, 189.

These principles, however, are not inconsistent with ano- /^
ther one, equally well settled, which is, that a liberal construc-
tion is to be given to a patent, and inventors sustained, if
practicable, without a departure from sound principles. Only
thus can ingenuity and perseverance be encouraged to exert
themselves in this way usefully to the community ; and only
in this way can we protect intellectual property, the labors of
the mind, productions, and interests as much a man's own,
and as much the fruit of his honest industry, as the wheat he

308 PATENT CASES.

DaroU et al. v. Brown. 1 Wood, k IGoot.

cultivates, or the flocks he rears. Grant «. Raymond, 6 Pe-
ters, 218. See also Ames v. Howard, 1 Sumn. 482, 485;
Wyeth V. Stone, 1 Sjlory, 273, 287 ; Blanchard v. Sprague,
2 Story, 164.

The patent laws are not now made to encourage monopo-
lies of what before belonged to others, or to the public, —
which is the true idea of a monopoly, — but the design is to
encourage genius in advancing the arts, through science and
ingenuity, by protecting its productions of what did not be-
fore exist, and of what never belonged to another person, or
the public

In this case, therefore, the jury were instructed to codlsider
the case under these liberal views, but not to hold the patent
valid, unless the invention, such as the Court construed it to'
be in point of law, was described with so much clearness and
certainty, that other machines could readily be made from it,
by mechanics acquainted with the subject
[ * 58 ] * * Looking to the whole specification and draw-
ing, both the figure and language, could any one
doubt that bow-flyers were intended to be used in the new
combination which was patented ? The figure is only that
of a bow-fiyer, so is the language. First, the spindles are
described as working up and down ^* through the bottom of
the flyers, as seen at a," which is not possible in case of the
open flyer, as that has no bottom for the spindle to work in.

Again the specification says, " to the bottom of each flyer
a tdbe wheel is attached, as seen at 6, figures 1 and 2,''
which is impracticable with an open flyer. Again it says,
motion is communicated to the flyer independently, but that
is not feasible with the open flyer. And finally, towards the
close, in order to remove all possible doubt, the specification
adds, — '' it will be seen, that the flyers, as used by me, and
shown at t i and Jc ft, are made in one continuous piece, in-
stead of being open at the bottom, as is the case with those

PATENT CASES. 309

DaYoU et al. v. Brown. 1 Wood. & Minot.

generally used in the English fly-frame." All know, that the
flyer, in one continuous piece, is the bow-flyer. Besides this,
other admitted or apparent facts tended to show, that the
bow*flyer alone was intended. One great advantage, claimed
from the new combination in the patent, was an increased
velocity of the spindle. Thus, in the early part of the speci-
fication, it is stated, among the advantages of his improve-
ment, that " the machine will bear running at a much higher
velocity than the English fly-frame." And towards the close,
he says, that it is the use of the flyer in '^ one continuous
piece," i. e., the bow-flyer, instead of the open one, as in the
English fly-frame, which; <' among other reasons, enables me
to give the increased velocity above referred to." How could
'there, then, be any reasonable doubt, that in his patent it was
this bow-flyer he intended to use in his new combination ?

In truth he not only says so, and could not otherwise ob-
tain one of his principal objects and advantages,
but it is * manifest from the form of the flyer itself, [ * 59 ]
and was not doubted at the trial, that only the
bow-flyer could be geared, as he described his flyer to be, in
two places, through its bottom ; the other form of the open
flyer confessedly having no bottom susceptible of being used
or geared in this manner.

But it is said, the clause at the end does not specify this
kind of flyer, and therefore all the rest of the specification
is useless, redundant, and entitled to no weight in deciding
what kind of a flyer is referred to in the closing part of the
specification.

We think otherwise. Sometimes the preamble, even, may
be resorted to for ascertaining the object of the specification.
Winans v. Boston & Prov. R. R. Co. 2 Story, 412. Some-
timeSy the body of the specification. Russell v, Cowley,
1 Cromp. Mees. <& Rose. 864, 876. Sometimes, the sum-
ming up. Moody V. Fiske, 2 Mason, 112, 118. And some-
times, the formal clause at the end of the specification.-

310 PATENT CASES.

DaroU et al. «. Bxowil 1 Wood, ft Minot •

Generally, all of them are examined together, unless the
formal clause seems explicitly to exclude the rest, and require
a decision on itself alone. McFarlane v. Price, 1 Starkie, R.
199 ; Rex t;. Cutler, Ibid. 354 ; 1 Story, 285 ; 2 Story, 169,
170; Ames v. Howard, I Sumn. 482, 485 ; 11 East, 101.

But there is no such exclusion or conflict between the
formal clause and the rest of the specification. On the con-
trary, it speaks of no difierent spindles from what he had just
described and boasted of, as giving the increased velocity his
machine possessed. And when he proceeds to describe what
he claims therein, as new, to be, '^ the arrangement of the
spindles and flyers^ in two rows, in combination with the de-
scribed arrangement of gearing," he manifestly refers, not to
spindles or flyers generally, but the spindles and flyers before
exhibited in his drawing, and described in his specification,
namely, the short spindle and bow-flyer, rather than the long
spindle and open flyer. rAnd it is not pretended,
[ • 60 ] * that any other kind of spindle or flyer could act in
combination with the described arrangement of
gearing," which he had before given, of spindles working
through the bottom of the flyere, and a tube wheel attached
to the bottom of each flyer.

There was no fact in doubt about this, to be left to the
jury ; and there was but one construction as to the kind of
flyer intended to be used, that was consistent either with the '
drawings, or the express language employed, or the chief
object of the machine in its increased velocity, or in the prac*
ticability of gearing it in the manner before described by him
in two important particulars, or of giving motion to it " inde-
pendently." It is as clear and decisive on this point as if he
had said, the before described spindles and flyers, because he
says the spindles and flyers, '^ with the described arrangement
of gearing;" and no other spindles or flyers, but the short
spindles and bow-flyere, could be geared in the manner before
described, through the bottoms of the latter.

PATENT CASES. 8U

• Nesmith et aL v. Caltert «t al. 1 Wood. & Miaot

Matters like these must be received in a practical manner,
and not decided on. mere metaphysical distinctions. Crossley
V. Beveley, 3 Carr. <& Payne, 513, 514.

Taking with us, also, the settled rules, that specificatimis
must hb sustained, if they can be fairly, (Russell v. Cowley,
1 Cromp. Mees. k Rose. 864, 876 • Wyeth v. Stone, 1 Story,
273, 287,) that we should not be astute tp avoid inventions,
and that it is a question for the Court, and not the jury, w
whether the specification <5an be read and construed intelligi-
bly in a particular way, (Whitney v. Emmett, Baldw. 303,
315 ; Blanchard v. Sprague, 2 Story, 164, t69,) we think the
instructions given at the trial in this case were correct, and
that no sufficient ground has been shown for a new trial.

MMan refused.

John Nesmith and Others v. Francis A. Calvert and

Others.

[I Woodhvry and Miiiot, 34. October T. 1845.J

Where a bill in eqaitj alleged, that one of leveral defendants contracted to
transfer a patent (not then obtained) for a machine, and that after it was
obtained he refused so to do ; and that the other defendants, knowing these
Ikcts, bought machines of him; Ae^, that as the snit coald be maintained
against him alone, the fact that some of the other defendants were dtisens of
the same State with the plaintiffs, was not fatal to the jarisdiction.

A bill in equity to enforce a specific performance of a contract to conrej a
patent, is not " a case arising under the laws of the United States'* as to
patents, 80 as alone to give jurisdiction to its courts.

Bat an objection on that account, or on account of the residence of the parties,
should be taken oefore the pleadings are closed, and the evidence published.
Seadie,

If ihe bill prays for an injunction against the use of a patent, the question as
to 'the issuing of that may come within the above laws of the United States.

A contract may be made to convey a future invention, as well as a past one,
and for any improvement, or maturing of a past one. Allegations in bills

312 PATENT CASES.

Nwmith et •!. v. CalT«rt et al. 1 Wood. & Kinot. •

need not set oat all the facta, in detail, which are to be proTed ; but if thejr
do not, they must contain general statements, under which the details prored
are pertinent.
A deed, or other docnmentary exhibit, may be put in after the eTidenoe la
published.

This was a bill in equity, complaining that, about the 15th
of February 9 1841, Francis A. Calvert had invented a ma-
chine for picking and cleaning wool and cotton, and was
then contemplating to make improvements thereon, and was
preparing to take out letters-patent for the machine and im-
provements. That the plaintiffi, with Royal Southwick and
William W. Calvert, being engaged in the woollen manufac-
ture, and knowing the facts aforesaid, and the skill and inge-
nuity of said Francis, agreed with him that he should ga on
and mature and perfect his invention and improvements, and
take out letters-patent therefor, and assign and transfer the
same to them, so far as they related to the subject of cleaning
or burring wool.

That about the 15th of February aforesaid^, Francis A.
Calvert proceeded to execute a deed to them, which was re-
corded in the Patent Office of the United States on
[ * 35 ] the 25th *of that month, selling and assigning to
them the exclusive right of using said machine and
improvements for the purpose last mentioned, and covenanted
that he would use due diligence in maturing said invention
and taking out letters-patent therefor, and would assign the
same, when procured, to them, so far as regards wool, and
would assign them to no other persons. That William W.
Calvert in the same year conveyed his interest in the subject-
matter to the complainants, and said Southwick his interest
to William C. Appleton, who, in September, 1843, transferred
it to the complainants ; that they thus became entitled to the
exclusive use of F. A. Calvert's inventions, so far as respects
the cleaning of wool ; and that F« A. Calvert then proceeded

PATENT CASES. 313

• Netinitfi et aL v. CalTWt et al. 1 Wood. & Minot

to mature his improTement^ and about 25tb November, 1841,
applied for letters-patent ; and they were then given to him
in due form.

The bill then avers, that about the third day of June, 1843,
F. A. Calvert obtained other letters-patent for additional
improvements in deanfng cotton and wool ; that the improve-
ments, described in the two letters-patent, are thosB contem-
plated and referred to in F. A. Calvert's deed to the com-
phunants, and are embraced in its grants and covenants, and
the complainants are entitled to transfers of them, so far as
they relate to the latter subject ; that the complainants hoped
said Francis would assign them ; but, on the contrary, he has
combined with the defendants and others, and utteriy rejects
and refuses to conoiply with his agreements, covenants, and
grants, and to transfer to them so much of them as concern
wool, and has used, and allowed others to use them, and sold
the same to the other defendants, and has derived great
advantage therefrom.

The bill then proceeds to pray for answers to certain
interrogatories, and that F. A. Calvert may be required to
perform specifically his agreements, and to transfer to them
the patents aforesaid, so far as they relate to the cleaning of
wool.

* And that an account may be taken of the ma- [ * 36 ]
chines made by him and the other defendants ; and
that they be restrained^ from the further use of said patents
for the purposea before named.

The joint and several answer of the defendants admits, on
the part of F. A. Calvert, his inventions, and an agreement
for the conveyance of the right to use the first one for clean-
ing wool, to the persons named in the bill, and to mature the
same; but denies that the agreement extended to the im-
provement contained in the second patent, or that the last
improvement was contemplated in that agreement He

VOL. II. — p. c. 27

314 PATENT CASES.

Neunith et aL v. Calrert «t al. t Wood. & Minot

further denies any use of the machine invented in 1841, by
himself, or others under him, for cleaning wool, except by
way of experiment.

The answer further avers, that after maturing his first
patent, February IS, 1841, he did, on the 14th of October,
1841, convey to the complainants his said invention, and the
letters-patent about to be obtained for it, and received $ 1,000
instead of the one fourth part of the income reserved in the
former deed, and said F. A. Calvert is now, and always has
been ready to make any other deed desired, of said first
named patent; but the same has never been requested as to
either patent.

The answer moreover, throughout, denies any connection
between the two patents, or any contemplation of the second
one when the agreement was made and the first patent taken
out, or any profit from either beyond an indemnity for ex-
pense, or any right in the complainants to any interest what-
ever in the last patent.

The interrogatories are answered at length, and the other
defendants profess to be either ignorant of the matters con-
cerned generally, or admit or deny to the extent to which F.
A. Calvert does. They, however, deny that they have made,
or are making for F. A. Calvert, several of the machines
included in the last patent.
[ * 37 ] * Some minor matters are stated in the ;an8wer,
which need not be detailed here, but will be re fer-
red to, so far as material, in the opinion of the Court, as also
will be the evidence ofiered that has a bearing on the essen-
tial points in the case. , I

Warren and Randy counsel for the complainants.

GUes and Dexter^ for the respondents.

PATENT CASES. 315

Nesmith et al. v. CalTert et al. 1 Wood. & Minot.

>' I I ■ ■ —I.I .1111

WooDBURT, J. There is a preliminary objection to the
jurisdiction of this Court in the present case, which must first
be considered.

It was not made till the argument, after the pleadings to
the merits, and after the evidence was taken and published.

The ground of it is, that the matter in dispute does not
arise out of or under the Patent Law itself, but under a con-
tract to transfer a patent.

I am inclined to think this objection is well founded in
respect to the subject-matter, as our jurisdiction is extended
in this class of cases so far as regards the subject-matter only
to '^ all actions, suits, controversies, and cases, arising under
any law of the United States, granting or confirming to in-
ventors the exclusive right to their inventions or discoveries,"
&c. Act of July 4th, 1836, ^ 17 ; 5 Statutes at La^e, 134.

The present action or controversy arises rather under a
contract concerning a patent afterwards to be obtained, than
under the Patent Law itself.

But the objection, if good against the jurisdiction of this
Court, merely on account of the subject-matter, does not im-
pair it over Francis A. Calvert personally, as he belongs to a
different State from the complainants ; and his interests are
several, and capaMe of being severed from those of the other
respondents. The bill then, as against him, both on principle
and precedent, gives the Court jurisdiction by his residence,
even if it does not by its subject. Ward t;. Arre-
dondo, * 1 Paine, C. C. 414. See Shute v. Davies, [ * 38 ]
1 Peters, C. C. 431, note ; Cameron i;. McRoberts,
3 Wheat. 591 ; Strawbridge v. Curtiss, ^ Cranch, 267.

The same reasoning authorizes it to be sustained as against
Gay, who belongs to New Hampshire.

But the objection is probably made too late to operate in
favor of any of the respondents, as it was not stated till after
answers were put in to the merits, replications filed, and the

316 PATENT CASES.

Nwmith et al. v. Calrert et aL 1 Wood. & Minot.

evidence published. See D' Wolf t;. Rabaud, 1 Peters, 476,
498 ; 1 Sumner, 578 ; 1 Story, 64 ; 2 Sumner, 252 ; Skil-
lern's Ez'rs v. May's Ez'rs, 6 Cranch, 267.

There seems, also, so far as regards the -prayer for an in-
junction against the use of the patents, to be one ground of
jurisdiction given over all the respondents on account of the
subject-matter.

Under these considerations, the preliminary objection to
our jurisdiction must be overruled.

The next inquiry is, whether the complainants have made
out a case justifying an interference to compel a specific per-
formance, or an account, or to issue an injunction such as is
prayed for.

This depends upon the true intent of the original contract
between the parties. The chief inquiry is, was that intended
to include any thing not actually embraced in the first patent?

This is resolved into two subordinate inquiries, ramifica-
tions of that. One is, did that contract by its terms, in their
proper extent and meaning, look beyond the firat patent, and
thus mean to include more ? And the next is, if not so, did
it include more than was in the patent in consequence of
some further improvement being known and contemplated at
the time of the firat patent, which was not inserted in it,
though covered by the contract ; being withheld as not ma-
tured and being suppressed, and afterwards introduced into

the second patent.
[ * 39 ] * In either of those events, the complainants ace
entitled to the benefit of the improvement, and it
ought, under the c<yitnict, to be conveyed to them ; but not
otherwise.

The clauses in the original agreement, relied on to sustain
the view, that all improvements, then or afterwards to be
made by F. A. Calvert, in machines for burring wool, were to
be conveyed to the complainants and no other persons, are

PATENT CASES. 817

Nesmith et al. v. Calrert et aL 1 Wood. & Hiaot

these. He sells to them the exclusive right to clean wool, &c.,
'^upon the machines invented or improved by" him, and
<^ for which improvements I am now preparing to obtain let-
ters-patent of the United States." He then covenants to
/' use all due diligence and efibrt to mature my said inven-
tions and improvements for cleaning wool, as soon as possi-
ble," and to take out letters-patent therefor, and assign the
same for cleaning wool to the complainants and to no other
persons.

To bear on the construction of this instrument, it is further
proved or admitted, that the complainants were manufacturers
of woollens, and anxious to obtain possession and control of
all the inventions for cleaning wool ; that the said F. A. Cal-
vert was an ingenious mechanic, and supposed to be making
and able to make great improvements in the machinery for
that purpose ; that by an agreement made at the same time
with1 that referred to, he was to receive one fourth of the
profits from the use of all said improvements by the com-
plainants ; and that afterwards, on the 14th of October, 1841,
he transferred that one fourth to them for the gross sum of
($1,000, using language still stronger than the first deed, and
illustrative of it.

In this last conveyance, after describing it as transferring
his right under the original agreement, he adds, ''Also my
right to a certain improvement in burring wool," '' to have
and to hold " the same, as " described in his specification and
caveat, and all my right and claim of whatever nature, under
or by virtue of said agreement, and all my improve-
ments in *■ machines for burning wool, and all my [ * 40 ]
right to any letters-patent which may be obtained
for the same."

But the respondent, F. A. Calvert, denies that, either by
the first or sexx>nd deed, any intention existed to convey any
improvements he might make, except those then contem-

27*

318 PATENT CASES.

TTwiilh «t aL ». Calnrt «t aL 1 Wood, ft Minot

plated, and afterwards patented in November, 1841. The
natural import of the language in the first deed certainly
accords with this, rather than a more extended engagement,
such as the complainants infer more particularly from the last
deed, looking to all improvements on this subject made by
him in all future time.

The attendant circomstances of the parties and the subject-
matter, so far as bearing on the construction of the agreement
in the first deed, would not necessarily enlarge the constmc-
tion to this extent They are all consistent with the idea
that improvements then thought of or started were the only
subject-matler then contemplated to be transferred.

Had the parties oontemplated more, and wished to cover
all improvements ever made at any future time by F. A. Gal-
vert, explicit language to that effect would be likely to have
been selected, as it would have been equally easy and more
natural. Iggulden v. May, 7 East, 337, 241.

Bat in the second deed by F. A* Calvert to the plaintiff, it
is equally true there are some expressions that will bear a
wider meaning, and they may have been introduced to cover
what was doubtful in the first deed, and in consequence of a
change in the consideration paid to F. A. Calvert, being, per-
haps, deemed more advantageous to him ; as it was a gross
sum at once, instead of a riiare in remote and uncertain pro-
fits. Hence, after referring to the first improvements and
the agreement in relation to them, he adds, as a part of the
subject-matter conveyed in the second deed, what is suscep-
tible of a construction much broader, namely : ''All m'y im-
provements in machines for burring wool, and all

[ * 41 ] my right * to any letters-patent which may be ob-
tained for the same."

This language might, without any very strained interpre-
tatbn, be extended to future improvements, as well as those
already made, or to a second as well as first patent for them,

PATENT CASES. 319

et at o. Calvert et aL 1 Wood. & Ifiifcot.

and especially when it is' recollected, that the complainants
were desiring to purchase from F. A. Calvert and others all
the machines, which might be useful in relation to this sub-
ject-matter : that F. A. Calvert was in embarrassed circum-
stances, and the complainants relieved him by the advances
made in October, when the second deed was executed ; and
that such engagements for the real benefit of inventors as well
as the public, ought to be viewed literally when they tend to
enaUe the inventors to continue t)ieir ^orts, and eventually
CQOtribute to the public means and instruments for advancing
useful industry and the arts.

But it is not necessary to form a decisive opinion on this
point of the case, as I am satisfied on the other point that the
balance of the testimony is in favor of the fact, that F* A*
Calvert, before maturing his improvements and taking out his
patent in 1841, had in contemplation, and had considered the
further improvement patented in 1843. It would seem, how-
ever, that either, because he feared infringing Crane's rights,
or had not time to finish the improvement in 1841, or enter-
tained doubts of its superiority, or wished to reserve it for
himself, he took out the patent of 1841, without including
the same in it. It is not averred, nor is it necessary to infer,
that he did this fraudulently. But that the principle of it had
occurred to him in 1841, and had been in some degree tested,
is quite clear, notwithstanding his denial, if we credit the tes-
timony of William W. Calvert his brother, and of Mr. Crane.
It is true, that William W. Calvert, though a brother, was a
rival,*and once had interests and feelings opposed to Francis
A. Calvert But he has no such interesti at this time. So
Crane was once interested in the patent. But
neither of them * seem now to be incompetent ; and [ * 42 ]
their manner of testifying is distinct and credible^
Indeed, besides Crane's denial of any interest in it himself,
the Gompbunants offer now to show by a deed, that he had

320 PATENT CASES-

Nesmith et al. v. Calvert et al. 1 Wood. & Biinot

parted with all he possestsed before giving his deposition, and
put that in now as a documentary exhibit, though the evi-
dence has been published. 3 Daniels, Ch. Pr. (Perk. Ed.)
1025.

These witnesses testify to facts, which show distinctly,
that the differences between the first patent, in November,
1841, and the second one in June, 1843, consisted chiefly in
this — that the first had the angular tooth guard ; and the
latter dispensed with it, by using a receiver beneath, and
bringing the saw cylinder nearer to the fine-toothed comb
cylinder.

Crane swears, that as early as the spring of 1841, Francis
A. Calvert said the machine <^ could work without it," that
is, without the angular tooth guard. And whenever he said
that, a caution was given to him that he might then encroach
on Crane's and William W. Calvert's patent, which seemed
to deter him from then maturing such a change. Again, as
to the angular tooth guard. Crane says, ^' I don't recollect
that he said what he should use as a substitute, but he said
he could do without it." The idea then had occurred to
him, and the matter had been discussed, before his contracts
with the complainants.

William W. Calvert testifies, that the angular tooth guard
could be dispensed with by bringing the cylinders nearer
together and using a receiver, and such was the course of
experiments tried in April, 1842, by his brother and himself.
This was the second step in relation to the subject, — a series
of experiments testing vifhat he had thought of and talked of
previous to his conveyances. ^

He seems to have been deterred from resorting to this
change in the spring of 1841, for some reason or other, and
probably in part from threats of Crane that it would
[ * 43 ] encroach ^ on his rights ; but that it vi^s contem-
plated, can hardly admit of doubt on examining the

PATENT CASES. 321

Nesmith et al. v, CalToit et aL 1 Wood. & Minot

evidence. When he afterwards, in 1842, proceeded to
develop this idea in a machine, he seems to have been con-
scious that it did not diflfer materially in principle from what
he had patented in 1841, and should- have. been included in
that ; and hence he proposed to the complainants to buy back
from them the patent of that year.

The change was rather a further progress in the same
machine, than inventing a new one ; was maturing its form
without introducing any new principle — was merely with-
drawing the angular tooth, and substituting for it the receiver,
and a nearer position of the saw cylinder to the fine-tooth
comb cylinder. He told Crane that the machine would work
without the angular teeth, before he obtained his 'first patent;
and his brother came to that same conclusion with him ; but
the precise substitute, if any, or the change throughout, which
he had in his mind, was not developed to them in detail, if it
was matured, till 1842.

But it being admitted, that in the winter of 1841 he had
not matured any part of his invention — that his plans were
but partially explained to any one — that the plaintifis then,
in advance of their completion and a patent, bought and he
conveyed all of his improvements, such as they would be
when n<atured — it was a natural form and design of the
contract to reach every thing then in embryo in his mind on
th» subject ; and after such a contract, it is equitable and just
that it should pass the perfection or progress at any future
day of any improvement in these machines, which he had
thought of in 1841, and should at some future day complete.

Vnder these ^circumstances, as the improvement in 1842 of
what was patented in 1841, is proved in point of fact to have
beea only a further development of ideas entertained in 1841
on the same subject, we see no just reason why it
should not * be considered as assigned and granted [ * 44 ]
to the complainants as was stipulated to be done in

322 PATENT CASES. ^

Nesmith et al. v. Calvert et al. 1 Wood. & Minot

February as well as October^ 1841, in terms covering at least
all improvements he had then contrived.

It is hardly necessary to go much into various other points
pressed by the counsel on the one side or the other. The bill
distinctly avers that the improvements patented in 1843 were
contemplated by said Francis A. Calvert in 1841, and hence
the proof on this point is admissible, and the probata thus
correspond, as they should, with the allegata. Story's Eq.
Plead. <^ 264; 2 Story, 469; 18 Ves. 312.

I do not by this remark mean to be understood as express-
ing an opinion, that no evidence can be put in which is not
alleged or specifically described in the bill ; but there must
be in the bill allegations broad enough to cover any evidence
offered, before it becomes admissible. After that, confessions,
or declarations, or documents, or cumulative facts are admis-
sible to support any general allegations to which they apply ;
and such general allegations are alone often sufficient to
render the introduction of such evidence proper. Smith v.
Bumham, 2 Sumn. 612; Jenkins t;. Eldredge, 3 Story, 181.

Nor is it necessary to examine in detail another question
which the counsel have discussed, — whether a demand
should be made for, a conveyance of the patent of 1841 or
1843, before Francis A. Calvert is bound to convey them.

For in all views of the deed and the testimony, he must
be considered as having covenanted unconditionally to trans-
fer them when obtained. He has long since received the
consideration for doing it, and he now refuses absolutely to
assign or grant the use of the last patent of 1843, which is a
neglect of duty and violation of his contract sufficient to
sustain the bill.

Believing, for the reasons assigned, that he is bound to do

it, so far as regards its use for cleaning wool, I think

[ ^^ 45 ] the "* prayers in the bill against F. A. Calvert ought

to be granted ; and the use of both patents for that

^ PATENT CASES. 323

Z 5^^

Orr V. Littlefield et wl. 1 Wood. & Minot.

purpose be assigned to the complainants, — conferring on
them an exclusive license to use both in that way, and an
injunction issue also to all the respondents, as all have inter-
fered in making, or using, or vending these machines, to do
so no more, for cleaning wool ; and that they render an ac-
count of whatever has hitherto been received for the same
beyond the expenses incurred.

Decree far Plaintiffs.

Matilda K. Orr, Administratrix or Isaac Orr v. James

Littlefield and Others.

[1 Woodbury and Minot, 13. October T. 1845.J

In a suit in equity for the violation of a patent-right, an injunction will not be
granted before a hearing upon the merits, merely npon proof that the com-
plainant has obtained a patent

But proof of undisturbed possession and user of the paten^right, for a reasona-
ble length of time, by the complainant, is ground for granting an injunction.

It is also ground for granting an injunction, that the complainant has prose-
cuted other persons for violations of the same patent, and recovered judg-
ment against them ; and it makes no difference that such judgment was
rendered by agreement of parties, where there was no collusion, or under i.
specification of this patent, which has been surrendered as defective, and a
new one taken out.

An injunction will not be dissolved, as a matter of course, on the coming in of
the answer, denying the equity of the bill, if the complainant has adduced
auxiliary evidence of his right, as in the present case.

This was a bill in equity. It alleged, that before the 20th .
of January, 1836, Isaac Orr, whom the complainant repre-
sented, was the inventor of a new improvement in stoves,
called the air-tight stove, and on that day obtained a patent
therefor. But the specification being made out inaccurately,
he caused the patent, on the 12th of November, 1842, to be

324 PATENT CASES.

Onr V. LitUefidd et aL 1 Wood. & ICmot

cancelled, and a new one to be issued. It further
[ * 14 ] averred ^ that the patent was valuable during hb

life, which terminated in 1844, and had since
yielded large sums to her as administratrix. The bill con-
twied further averments as to the violation of the patent by
Hunneman & Son, and a recovery of damages in a suit
at law therefor, in October, 1843 ; and that the respond-
ents had not respected her rights under the patent, but made
and sold stoves like those described in his specification ; and
hence the bill prayed, among other things, for an injunction
to restrain the respondents from making or selling any more
air-tight stoves, during the residue of the time the patent has
to run.

The case, was heard before Woodbury, J., at Portsmouth,
on the 13th of October, when the complainant moved for -an
injunction, in conformity to the prayer of the bill. In sup-
port of this motion, she ofibred in evidence the patent, which
-appeared to have been issued, cancelled, and re-issued, as
stated in the bill ; and which claimed the invention to be a
new combination of particulars in a stove for heating rooms.
She ifext ofiered copies of a case in which Isaac Orr reco-
vered damages against Hunneman & Son, for a violation of
this patent in October, 1846. She next gave in evidence
another recovery of damages and costs against Ira Hazelton,
for breach of this patent in May, 1845; and the issue of an
injunction in her bill against Badger, for another breach, in
October, 1844. After that, she read the affidavits of nine
persons, showing, that Isaac Orr received about five thousand
dollars for licenses and plates to use his stove, the three years
previous to his death, and the complainant a like sum since ;
that the combination in Orr's stove were new and useful :
that his right was unquestioned till the stoves came into
. general use ; and that all using them since, as well as before,

PATENT CASES. 325

z. t

On V. Littlefidd et aL 1 Wood. & Minot

had paid wben requiredi except the persons before named
and the respondents, who had made and sold stoves similar
to them, and refused to pay for the right now, though in 1844
they had purchased some of the plates, which were given as
evidence of license.

*0a the part of the respondents, evidence was [ * 15 ]
then offered that the judgment against Hunneman
&, Son was rendered on a verdict, taken by agreement of the
parties, but without any proof of collusion or fraud. They
showed, further, that the judgment against Haselton was on
a default by agreement ; and offered the affidavits of four
witnesses, stating that the invention of the complainant's
intestate was not new, but had been used previously to the
original issue of his patent.

The motion was aigued by S. E. SewaU (of Boston) and
Hacketty for the complainant ; and Hatch for the respond-
ents. Subsequently, at Boston, the opinion of the Court was
delivered by

•

WooDBUBT, J. This motion for an injunction is in accord-
ance with a special prayer in the bill ; and hence it is properly
asked for. 2 Dallas, 360 ; 2 Story, Eq.^ur. 156. The sub-
ject-matter of the bill is, also, one in which it is usual and fit
for the Court to interpose by this remedy, and on a proper
state of facts before a final decision is had on the merits ;
because every stove sold is an injury if the patent is valid,
and without such a remedy, — the supposed offence being
constantly repeated, — the causes of action and the multi-
plicity of suits would probably become much extended, and
relief, in that way, prove very defective. Harmer v. Plane,
14 Ves. Jr. 130; Livingston t;; Van Ingen, 9 Johns. R. 507,
570; 9 Wheat. 738, 845; ?wt v. Carleton et al. 3 Sumn.
70. An injunction, in such a case, proves to be useful as a

VOL. II. — p. c. 28

PATENT CASES.

On V. LittlilMd et al. 1 Wood. & Uinot.

bill of peace. On the contrarjr, however, such injuncUoni
are a checlc on the buBiness of respondents j and interference!
■ubjecting others lo a loss before a full trial between the same
parties, are not always to be jnatiSed.

In whet cateB, then, should injunctions issue ? It is not
enough that a party has taken out a patent, and thus obtained
fi public grant, and the sanction or opinion of the
[ * 16 ] * Patent Office in favor of hit ri^t, ihongh that
opinion, since the laws were passed reqairing some
examination into the originality and utility of inventions, pos-
sesses more wei^t. But the complainant myst fumisb some
further evidence of a probable' right ; and though it need not
be conclnnve evidence, — else additional hearing on the bill
wonld thus be anticipated and superseded, — yet it must be
something stronger than the mere issue, however careful and
public, of the patent, conferring an exclusive right ; as, in
doing that, there is no opposing party, no notice, no loi^
public use, no trial with any one of his rights. The kind of
additional evidence is this. If the patentee, after the pro-
imeot of his patent, conferring an exclusive right, pro-
Is to put that right into exercise or use for some years,
KMit its being disturbed, that circumstance strengthens
h the prc^bility that the patent is good, and renders it
kely, as alone often to justify the issue of an injunction
id of it Ogle v. Ege, 4 Wash. C. C. 584 ; 2 Story, £q.
310; Drew, on Injunc. 2S2; PhiL on Pat. 46'2. After
it becomes a question of public policy no less than pri-
justice, whether such a grant of a right, exercised and m
esnon so long, ought not to be protected, until avoided
1 full healing and trial. Hanner v. Plane, 14 Ves. 130.
1 this case, the evidence is plenaty and uncontradicted w
he use and sale of this patent by the inventor and his
esenlative for several years, publicly and without dispute,
iputi^ from the ori^nal grant, the time, is over nine

PATENT CASES. 387

. - ■ ^ ^ I ■ ■■ ■ ■! Ill I I

Orr tf. Litdefield et aL 1 Wood. 6 Minot

years, and since the reissue of the letters-patent it is nearly
three. I concur in the opinion delivered by Judge Sprague
in Orr v. Badger, that the time to be regarded under this
view is what has elapsed since the original issue or grant.
Law Reporter for February, 1845. In Thom|^on v. Hill,
(3 Meriv. 622,) the time was only three years from . the first
grant. In Ogle v. Ege, (4 Wash. C. C. 584,) it was but six
years. And though in some cases reported, it had
*been thirteen, and in others twenty years, (14 [ * 17 ]
Yes. 130,) yet it is believed, that seldom has a court
refused an injunction in applications like this, on account of
the shortness of time after the grant, however brief, if long
enough to permit articles or machines to be constructed by
the patentee in conformity to his claim, and to be sold pub-
licly and repeatedly, and they have been so sold and used
under the patent without dispute. Here the sales were eX"*
tensive and profitable from 1836 downwards, and the right as
well as the possession does not appear to have been contested
till 1842. In Hill v. Thompson, (3 Meriv. 622, 624,) it is
true that the Court dissolved an inju.notion, when only about
one year had elapsed since any work had been completed
under the patent, and only two years since the specification
was filed, the chancellor calling it a patent <' but of yester-
day ; '' but, he added, that he would not dissolve it, if an
"exclusive possession of some duration'' bad followed;
though an answer had been put in denying all equity, and
doubts existed as to the validity of the patent ; and no sales
under it were proved in that case. So though the patent
had been issued thirteen years, and the evidence is doubtful
as to acquiescence in the possession or use, an injunction
may be refused. Cdlard v. Allison, 4 Mylne & Craig, 487.
Bat in the present case, the acquiescence appears to have
been for several years universal.

Another species of evidence, beside the issue of the patent

338 PATENT CASES.

OiT e. LitUefield et al. 1 Wood. & Minot

ilielfy and long use and possession ander it, so as to render it
probable the patent is good and to justify an injunction, is
the fact, that if the patent becomes disputed, the patentee
prosecutes for a violation of his rights, and recovers. Same
authorities ; ^y t;. Marshall, 1 Mylne & Craig, 373. Thia
goes upon the ground, that he does not sleep over his claims
or interests, so as to mislead others, and that, whenever the
validity of his claim has been tried, he has sustained it as if

good. But such a recovery is not regarded as bind-
[ "* 18 ] ing the * final rights of the parties in the bill, be*

cause the action was not between them; though
when the judgment is rendered without collusion or fraud, it
furnishes to the world some strong as well as public assurance,
that the patent is a good one. In this view of the evidence
of this character in the present action, it is not contradicted,
nor impaired at all, by the judgments having been given on
verdicts and defaults under agreements. Such judgments,
when, as is admitted hei^, not collusive, are as strong, if not
stronger evidence of the patentee's rights, than they would
have been, if the claim was so doubtful as to be sent to a jury
for decision, rather than to be so little doubtful as to be ad-
mitted or agreed to. after being legally examined. Both of
these circumstances, therefore, possession and judgments,
unite in support of an injunction in the present case.

The only answer to the motion as made out on these
grounds, is, the evidence ofiered by affidavits on the part of
the respondents, tending to cast doubt on the originality of
the invention of the patentee. I say, tending to this, because
some of the affidavits, at least, do not distinctly show that
the persons making them intended to assert that the whole
of any one of the combination of particulars contained in Dr.
Orr's claim in his specification, had been used before his
patent issued i because, they are counteracted by other testi-
mony, from the witnesses of the complainants, more explicit

PATENT CASES, 329

Orr V, Litdefield et al. 1 Wood. & Minot

and in larger number ; and because, in this preliminary in-
quiry, where the evidence is taken without the presence or
cross-examination of the opposite party, it would be unsafe
to settle and decide against the validity of the patent, when
a full and formal trial of it is not contemplated till further
progress is made in the case. All that is required in this stage,
is, the presumption before named, that the title is good. This
presumption is stronger here than usual, as it arises from the
issue of the patent and an enjoyment and possession of it
undisturbed for several years, beside the two recoveries
against those chaiged with violating it.

^ After these, other persons can, to be sure, con- [ ^^^ 19 ]
test the Talidity of the patent, when prosecuted
either in equity or at law ; but it is hardly competent for them
to deprive the complainant of her right, thus acquired to an
injunction, or, in other words, to be protected in so long a
use and possession, till her rights are disproved after a full
hearing; surely it is not reasonable to permit it when the
affidavits of the respondents to invalidate or cast a shade over
her right are met by that which is stronger, independent of
the long possession^ judgments, and presumptions before men-
tioned* But another objection has been urged in argument.
When an answer to the bill denies all equity in it, the re-
spondents contend that an injunction would be dissolved, and
hence it ought not to be imposed, if the respondent denies
equity by affidavit. This may be correct, in respect to in-
junctions termed common^ as there affidavits and counter
affidavits are inadmissible ; Eden, 326, 1 17 ; yet in these, the
denial must be very positive and clear. Ward v. Van Bockelen,
1 Paige, 100; Noble v. Wilson, lb. 164. But the position
cannot be correct in the case of injunctions called special^
like the present one, and» where facts and counter evidence
show the case to be different from what is disclosed in the
affidavits or an answer of the respondents alone. No usage

28»

330 PATENT CASES.

Orr V. Litdefield et al. 1 .Wood. & Minot

or cases are found where the injunctions are dissolved^ as a
matter of course on such answers, if the complainant has ad-
duced auxiliary presumptions in favor of his right like those
in the present instance. On the contrary the cases are nu-
merous where the whole is regarded as still within the sound
discretion of the Court whether to issue the* injunction or
refuse it ; or if issued, to dissolve or retain it. 8 Merivale,
622, 624 ; 2 Johns. Ch. R. 202; 3 Sumn. 74; Livingston t;.
Van Ingen, 9 Johns. R. 507, 570; Rodgers v. Rodgers,
1 Paige, 426. And where the complainant has made out not
merely a grant of the patent, but possession and use and sale

under it for some time undisturbed, and beside this
[ '^ 20 ] a recovery against * other persons using it, the

courts have invariably held that such a strong color
of title shall not be deprived of the benefit of an injunction,
till a full trial on the merits counteracts or annuls it. In
several cases, Mfhere the equities of the bill were even denied,
and in others, where strong doubts were raised whether the
patent could in the end be sustained as valid, the courts
decided, that injunctions should issue under such circum-
stances as have before been stated in favor of the plaintiff,
till an answer or final hearing ; or, if before issued, should
not be dissolved till the final trial, and then cease, or be made
perpetual, as the result might render just. The chancellor in
Roberts v. Anderson, 2 Johns. Ch. R. 202, cites 2 Vesey, 19,
and Wyatt's P. R. 236; Boulton v. Bull, 3 Ves. 140; Uni-
versities of Oxford and Cambridge v. Richardson, 6 Ves. 689,
705 ; Harmer v. Plane, 14 Ves. ] 30 ; and Hill v. Thompson,
3 Mer. 622, 624.

But if this injunction leads to serious iiyury in suspending
works, the Court can require security, if desired, of the com-
plainant, to indemnify for it, if th« patent is avoided, or can
make orders to expedite a final hearing and decision. 4 Paige,
447; 2 Paige, 116. So the defendants can have security

PATENT CASES. 381

Orr V. Merrill. 1 Wood. & Minot

given for costs, especiaUy as the plaintiffs live out of the
State. Let the injunction issue till after a final hearing ; and
as the defendants request it, security be filed by the plaintiffs
for costs in thirty days.

If^undton granfed.

Matilda K. Obr, Administratrix or Isaac Orr, in
EQUITY t;. William Merrill. •

[1 Woodbury & Minot, S76. October T. 1846.]

Where a bill in chancery asks for an injunction against the use of a patent
stove, and for an acconnt of sales, and on proof of former recoyeries of
others and long possession, an injunction had been granted, the Court will
not dissolve it merely on an answer denying the yalidity of the patent ; bat
will, if requested, direct an issue to be tried at law on that point, or, if not
requested, continue the injunction and dissolve it at the next term, if in the
mean time a suit at law is not brought to test the tide.

An answer is sufficient for this purpose, though it do not set out the
names of the * persons, who used the stove patented, or knew it [*S77 ]
before the patentee did, nor the names of the places where it was
used or kftown.

But the answer at law should set them out, and so should the answer and
notice od which in chancery an issue is asked to be formed and tried at law.

This was a bill in chancery, filed the 9th of September^
1845, charging the defendant with selling Orr's Patent Air-
tight Stoves, without a license from the <;ompIainant She
was averred to be the owner of said patent procured by her *
husbandi and to have supported her right to it and the valid-
ity thereof in several former trials, and to have been for some
years in the possession and sale of it.

The bill prayed an injunction against farther sales, and an
account of prior ones, afld a disclosure of certain facts in
reply to several interrogatories.

On a notice to the respondent, and a failure to appear, an

332 PATENT CASES.

Orr V. Merrill. 1 Wood. & Minot.

injunction issued September 17th, 1845, which the respond-
ent now moves to have dissolved.

In the mean time, November 27th, 1845, the respondent
had filed an answer,, in which he denied generally the ori-
ginality of the patent claimed by the plaintiff, and also the use
of it by the respondent, though admitting he made other but
different air-tight stoves, and stated his inability therefore to
exhibit any account as asked for.

The complainant filed exceptions to the answer. Ist.
That the denial of the originality of the plaintiff's patent does
not specify the names of the persons who before invented or
used it, nor the names of the places where it was used or
known, before the invention of the plaintiff's patent.

2d. That it is imperfect and deficient in other respects.
But these it is not material to detail, in the view of the sub-
ject taken by the Court.

Fox, counsel for the plaintiff; WdlSj counsel for the re-
spondent.

WooDBURT, J. It is proper in this case to look

[ * 378 ] at the * answer and exceptions, before deciding on

the motion to dissolve the injunction.

The answer, if it was intended to form an issue to try the

validity of the patent, because not original, ought probably to

contain more allegations, and set out the names of places and

, persons, where and by whom, a like stove had before been

used. Story, Eq. PI. ^ 852.

For in a trial of such a question at law, the act of Congress
is peremptory, that such notices shall be given in writing ;
and it would not do in equity to place a patentee on a ground
less favorable than he is placed in a trial at law.

But the answer here is sufiicient for another purpose, and
that for which it was probably filed. It shows, that the de-

PATENT CASES. 333

Orr V. Merrill. 1 Wood. & Minot

fendant denies, and wishes to have tried in a proper way, the
validity of the plaintiff's patent, and also denies his own use
of it, if it turn out on a trial to be valid.

But where is that trial to be had ?

Not usually by this Court in chancery, nor often in issues
sent from here to the law side of the Court to be settled by a
jury, ilnless requested by the respondent.

But when it is to be done in the last mode in any case, on
request or otherwise, it^ would be proper under those issues to
have all the specific notices given by the defendant in detail
of persons and places connected with the former use of it

Here, however, no such request being preferred by either
side,' the trial of the validity of the patent could be had most
properly in a new action brbught at law, and there, in such a
defence as this answer discloses, all the notices must be set
out which the plaintiff claims to have done, before he is
allowed to be driven to trial on the merits. Phillips on Pat.
p. 392, and cases there cited.

Again, bills brought in equity for injunctions are usuaUy
instituted after the title of the patent has been established at
law against the defendant, or some other person
using it; "^^and the expectation is, that the only [^^ 379]
questibns agitated will be as to the amount to be
accounted for, and the restrictions for the future, and not the
validity of the right.

But if the right is put in question by the defendant, and an
injunction has been already granted, it may be dissolved, if
not proper to be retained, and the plaintiff referred to a court
of law to try the validity of the patent there. Or the injunc-
tion may be retained as proper till the validity of the patent
is settled between them, if it appears as here, that the plain-
tiff has supported the validity of the patent in other trials,
and been some time in the use and possession of it. See Orr
t;. Littlefield, ante, 223.

334 PATENT CASES.

Oir V. Merrill 1 Wood. & Minot.

That question can be settled by an issue framed and sent
to a jury, under this bill, and to the law side of the court,
when desired by the respondent, or by a new action brought
at law for damages. See cases in Pierpont v. Fowle, Mass.
Dist. Oct. 1846.

A common injunction is dissolved on an answer denying
title, &c., but a special one is not, unless the denial is justi*
fied by something else, or the claim is strengthened by some
evidence. See all the cases and decisions noticed in Poor t;.
Carleton, 3 Sumn. 82.

In special injunctions, a motion to dissolve depends on the
sound discretion of the Court, after affidavits as to merits, if
required, and on the nature of the case. Ibid.

Here, the answer is full enough and direct enough to show

that the defendant denies the validity of the patent, so as to

render a trial necessary ; but till sustained by the result of

such a trial in favor of the defendant, this naked denial is

not sufficient to overcome the former i-ecoveries and long

possession of the plaintiff in favor of retaining the injunction

that has before been granted. Perfect justice, however, can

be enforced for both parties, as no desire is expressed to form

an issue here on the matters in dispute to be tried by a jury.

We can direct, as we do, that the plaintiff must

[ * 380 ] institute a *8uit at law before the next term, to try

the validity of her patent with the defendaat, and

his use of it or not, if valid, else the injunction will then be

dissolved.

But sufficient cause does not seem to be now shown to
render the dissolution of it proper at thiB time.

Motion refused.

PATENT CASES. 336

Stimpson v. The West Chester Railroad Co. 4 How.

James Stimpson, Plaintiff in error, t;. The West Ches-
ter Railroad Company, Defendants.

[4 Howard, 380. January T. 1846.]

The practice of excepting, generally, to a charge of the Coart to the jury, with-
out setting ont, spediically, the points excepted to, censured. The writ of
error not dismissed, only on account of the peculiar circumstances of the
cause.

Where a defective patent had been surrendered, and a new one taken out, and ^
the patentee brought an action for a violation of his patent-right, laying the
infringement at a date subsequent to that of the renewed patent, proof of the '^ ^^ ^'
use of the thing patented during the interval between the original and re-
newed patents will not defeat the action.

The seventh section of the Act of March 3, f 839, has exclusive reference to an
^original application for a patent, and not to a renewal of it.

An original patent being destroyed by the burning of the Patent Office, and the
only record of the specifications being a publication in the Franklin Journal,
thQ claim is not limited by that publication, because the whole of the speci-
fications are not set forth in it.

■v.

Whether a renewed patent, after a surrender of a defective one, is substantially
for a different invention, is a qu^tion for the jury, and not for the Court

As the thirteenth section of the Act of 1836, provides for the renewaljof a pa-
tent, where it shall be " inoperative or inyalid by reason of a defective or
insufficient description or specification," '* if the error shall have arisen by
inadvertence, accident, or mistake, and without any fraudulent or deceptive
intention," the fact of the granting of the renewed patent closes all inquiry
into the existence of the inadvertence, accident, or mistake, and leaves open
only the question of fraud for the jury.

This case was brought up, by writ of error from the Cir-
cuit Court of the United States for East Pennsylvania.

It was a suit brought, in the Circuit Court, by Stimpson
against the Railroad Company, for a violation of his patent-
right.

On the 23d of August, 1831, Stimpson took out letters-
patent for an improvement in the mode of turning short curves
on railroads. These letters were not given in evidence upon

336 PATENT CASES.

Stimpflon v. The West Chester Railroad Co. 4 How.

the trial, having been burned in the conflagration of the Pa-
tent Office, in December, 1836, and no copy could be found.
Secondary evidence was given of their contents by the follow-
ing publication in the Franklin Journal: —

<^For an improvement in the mode of turning short curves on

railroads, such as the corners of streets ; James Stimpson,

city of Baltimore, August 23.

<< 37. The plan proposed is to make the extreme edges of
the flCinches flat, and of greater width than ordinary, and to
construct the rails in such a manner that.where a short turn
is to be made, the extreme edge of the flanch shall rest upon
it, instead of upon the tread of the wheel, thus increasing the
efiective diameter of the wheel in a degree equal to twice the
projection of the flanch. fl'he claim is made to Uhe applica-
tion of the flanches of railroad carriage-wheels to turn short
curvatures upon railroads or tracks, particularly turning the ^
corners of streets, wharves, crossing of tracks or roads, and
passing over turnabouts,' &c.'' Franklin Journal, vol. 9,

p. 124.
[ ♦ 381 ] •On turning to pages 270 and 271, vol. 4, there
will be found specifications of two patents granted
to James Wright, of Columbia, Pennsylvania, for the mode
of turning curves claimed by Mr. Stimpson. The only dif-
ference is, that Mr. Wright proposes to adapt his cars to seve-
ral diflerent curves by having three oi^ more ofisets in his
wheels when necessary.

On the same day, namely, the 23d of August, 1831, Stimp-
son took out, also, letters-patent for an improvement in the
mode of forming and using cast or wrought iron plates or rails,
for railroad carriage-wheels to run upon. These letters being
also destroyed, the following extract from the Franklin Jour-
nal was given in evidence.

Franklin Journal, vol. ^9, p. 125. ^'39. For an improve-
ment in the mode of forming and using cast or wrought

• PATENT CASES. 337

StimpBon V. The West Chester Reilrotd Co. 4 How.

iron plates, or raiU, far railroad carriage-wheds to run
upon; James Stiropson, city of Baltimore/ Maryland, August
33> 1831.

*^ The claim in this case is to ^ the application of cast or
wrought iron plates for the use of railways on the streets or
wharves of cities or elsewhere. The objects of said improve-
ment being to employ rails that will not present any obstacles
to the ordinary use of streets, or sustain injury therefrom, and
so to form the plates at the intersections of streets or other
crossings, that cars will readily pass over them, and also on
circles of small radius.'

The rails are to be formed with a groove, in them to re-
ceive the flanches of the wheels ; on one side of the groove,
the width is to be sufficient for the tread of the wheel, on the
other, it need not exceed three quarters of an inch. These
rails are to be laid flush with the pavement of the streets.
At corners to be turned, the rails are to be cast, or made of
the proper curvature, one of them only being provided with a
groove, as the flanch b to run upon the other, upon the prin-
ciple described in No. 37. Provision is to be made by scrap-
ers, or brushes, preceding the carriages, to clear the grooves
of dust, ice, and other obstructions."

In 1835, the first mentioned of these letters^ namely, for an
>< improvement in the mode of turning short curves on rail-
roads," were surrendered on account of a defective specifica-
tion, and on the 26th of September, 1835, a renewed patent
was issued for the term of fourteen years from the 23d of
August, 1831. The schedule referred to in this patent was
as follows : —

'< Short Curves.
<<23d August, 1831. Renewed 26(A September, 1835.
<' To all whom these presents shall come : Be it known,
that I, James Stimpson, of the city and county of Baltimore,
VOL. II. — p. c. 29

338 PATENT CASES. ^

Stimpson v. The West Cheiter Bailroad Co. .4 How.

and the State of Maryland, haYe invented a new and useful im-
provement in the mode of turning short curves upon railroads
with railroad carriages, particularly those round the
[ * 388 ] comers of streets, wharves, &c., and * that the fol-
lowing is a full and exact description of said inven-
tion or improvement, as invented or improved by me, namely :
I use or apply the common peripheries of the flanches of the
wheels for the aforesaid purpose, in the following manner : I
lay a flat rail, which, however, may be grooved, if preferred,
at the commencement of the curvation, and in a position to
be' centrally under the flanches of the wheeb upon the outer
track of the circle, so that no other part of the wheels which
run upon the outer cirde of the track rails shall touch or bear
upon the rails, but the peripheries of the flanches ; they bear-
ing the whole weight of the load and carriage, while the op-
posite wheeb, which run u|>on the inner track of the circle,
are to be run and bear upon their treads in the usual way, and
their flanches run freely in a groove or channel ; which treads
are ordinarily about three inches in diameter less than the
peripheries of the flanches.

" Were the bearing surfaces of the wheels which are in
contact with the rails while thus turning the curve, to be con-
nected by the straight lines from every point, there would
thus be formed the frustrums of two cones, (if there be four
wheels and two axles to the carriage,) or if ibut one axle and
two wheels then but one cone; which frustrums, or the
wheels representing their extremities, will, if the wheeb are
thirty inches in diameter, and are coupled about three feet
six inches apart, turn a curve of about sixty feet radius of the
inner track rail. The difference in diameter between the
flanches and treads before stated, the tracks of the usual
width, and the wheeb coupled as stated, would turn a curve
of a somewhat smaller radius, if the axles were not confined
to the carriage in a parallel position with each other ; but this

PATENT CASES. 389

Stimpflon v. The West Chester Bailroad Co. 4 How.

being generally deemed necessary, the wheels run upon lines
of tangents, and these upon the inner track being as wide
apart in the coupling as the outer ones, keep constantly in-
clining the carriage outwards, and thus cause the carriage to
tend to rUn upon a larger circle than the difference in dia-
meter of the treads and flanches would otherwise give ; but
the depth of the flanches and the couplings may be so varied
as to turn any other radius of a circle desired.

'^ What I claim as my invention or improvement is the ap-
plication of the flanches on the wheels on one side of railroad
carriages, and of the treads of the wheels on the other side,
to turn curves upon railways, particularly such as turning the
corners of streets, wharves, d&c, in cities and elsewhere, ope-
rating upon the principle herein set forth.

James Stimpson.

" Witnesses,

^' James H. Stimpson,
" George C. Penniman.'^

In October, 1840, Stimpson brought his action
against the * West Chester Railroad Company for [ * 383 ]
a violation of this renewed patent, and laid the in-
fringement to have taken place in 1839..

In April, 1848, the case came on for trial.

The plaintiff produced his patent, and gave evidence that
the defendants had used upon their road several curves of
this description. '

The defendants disputed the originality of the invention of
the thing patented, under which head of defence much evi-
dence was given ; and also contended that the groove was
not claimed in the first patent of 1831, and therefore was not
included in the renewed patent of 1835. The evidence of
Dr. Jones upon this last head being referred to by the Court
below, it is proper to insert that part of it.

340 PATENT CASES.

SUmpson v. The West Gliester Bailroad Co. 4 How.

" Interrogatory fifth. What are the contents of the spe-
cification of the alleged improvement of August S3, 1831 ?
What are your means of knowing what were their contents?
If you know them, are they dissimilar or similar to those of
the plaintifT's specification of September 26, 1835, a copy of
which marked A, is hereto ^annexed? If dissimilar, state in
what particulars, and whether they are as to matters of form
and substance, and particularly describe the difference, if any*.
Answer fully."

" To the fifth interrogatory, I answer, that the plaintiff ex-
hibited to me the specification in question, previously to his
filing the same in the Patent Ofiice ; as he likewise did at the
same time the specification of a patent for ^ forming and using
cast-iron plates or rails for railroad carriage-wheels to run
upon,' which last patent is noticed on page 125, vol. 9 se-
cond series, of the Journal of the Franklin Institute. I then
examined them cursorily, and expressed an opinion, that the
improvements described in the two specifications might have
been embraced in one, and that it would have been better to
have pursued that course. The specification of the mode of
turning short curves appeared to me incomplete ;' an essential
feature of it being contained in that for ^ forming and using
cast-iron plates,' &c. The papers, however, remained as
drawn up by Mr. Stimpson's legal adviser, and when the pa-
tents were subsequently surrendered in 1835, it was thought
best to preserve the division into two ; it was probably in fact
necessary to pursue this course, as I am not aware of any
precedent for uniting two patents into one, although one may
be divided into two or more.

'^ Nearly ten years have elapsed since I first saw the speci-
cations upon which these patents were first issued, and nearly
six years since I last read them ; and ray recollection of them
extends to certain prominent pointer only. The claim under
the patent for turning short curves, as given in vol. 9, p. 1 24,

PATENT CASES. 341

Stimpson v. The West Chester Bailroad Ck>. 4 How.

of my Journal is, I' have no doubt, literally correct. There
has been an omission in the printing of inverted commas [^']
after the word ' turnaboiut/ &c. In this specifica-
tion it was proposed to make the extreme * edges [ * 384 ]
of the fianches flat, and of greater width than ordi-
nary ; this, however, did not enter in the claim, and it is not
probable that I should have recollected the fact, had it not
been noted in my Journal, or called up by some other colla-
teral circumstance. The main defect, in my judgment, of
the original specification, in the patent for turning short curves,
was the omission of the mention of the groove in the inner
rail. I believe, however, that it was alluded to in this speci-
fication, but the description of it was contained principally, if
not wholly, in the specification of the patent for f forming and
using cast-iron or wrought plates,' be, above noticed, as may
be inferred from a reference to my Journal, vol. 9, p. 125,
patent 39.

^^ Cross Interrogatories. 1 • Did you or did you not pre-
pare the papers of the plaintiff when his patent for short curves
was surrendered and renewed? What was the object of
such surrender and renewal ? Was it or was it not that the
claim of running over or across tracks at right angles might
not continue any longer to be incorporated in the same
patent with the claim for 6hoft curves, as it had been there-
tofore ?

*' To the first cross interrogatory, I answer, that I did pre-
pare the papers of the plaintiff when his patent for turning
short curves was surrendered for reissue ; that the object of
such surrender and renewal was to limit and confine it to the
turning short curves in streets^ &c., by leaving out certain
matters in it respecting the crossing of tracks or roads, and the
passing over turnabouts ; and to define the subject-matter of
the patent more clearly, without its being necessary to- refer

29*

342 PATENT CASES-

Stimpson V. The West ChMter Bailroad Co. 4 How.

to that simultaneously obtained for < forming and using cast oi:
wrought iron plates/ &c."

The bill of exceptions taken by the plaintiff was to
the following part of the charge of the Court to the jury,
namely : —

" Having thus presented you with a view of the rules and
principles of the common law applicable to the renewal of
patents, as laid down by the Supreme Court, together with
the provisions of the different Acts of Congress on this sub-
ject, we will now state to you what is, in our opinion, their
legal result.

<' To authorize the surrender of anold patent and issue of
a new one, consistently with the provisions of the original Pa-
tent Law of 1793, and the decisions of the Supreme Court,
independently of any Act of Congress conferring such power,
there are these requisites indispensable to the power arising.
(1.) The original patent must be inoperative or invalid for
the causes set forth in the Act of 1832 — the non-compliance
with the third section of the Act of 1793, for the want of a pro-
per specification of the thing patented, through inadvertence,
accident, or mistake, without any fraudulent or deceptive inten-
tion. This being the only case embraced in the law to which
the authority conferred applies. (2.) 1, The defect in the spe-
cification, which makes it incompetent to secure the rights of
the patentee, must have arisen from inadvertence,
[ * 385 ] accident, * or mistake, and 2, not from any fraud or
misconduct. The reissue of the patent by the ap-
propriate officer is presumptive evidence that the requisites of
the law have been complied with, on the production of such
evidence or proof otherwise as justified it ; but the question
of the validity of the new patent is a judicial one, depending
on the fact of inadvertence or fraud, as you shall find it ; and
the opinion of the Court on matters of law involved in the
inquiry. 14 Peters, 458 ; 6 Peters, 243 ; 7 Peters, 321 ;

PATENT CASES. 343

Stimpson o. The West Chester Bailroad Co. 4 How.

Act of 1839 (5 Little b Brown's ed. 353.) The leason why
there must be an inquiry into both the inadvertence and fraud
arises from the settled construction of the Act of 1793, that
where the defect is not owing to fraud, the defendant is enti-
tled to a verdict and judgment in his favor, but not to a judg-
ment that ttie patent is void for the defect, unless he shows
that the defect was owing to fraud. 1 Bald. ; 6 Peters, 246.
Yon must then be satisfied, affirmatively, that the defect of
the patent arose from the inadvertence of the patentee, and
negatively, that it did not arise from his fraud or misconduct,
or, in the words of the Acts of 1832 and 1836, ^ without any
fraudulent or deceptive intention.' The finding of the fact
of inadvertence may negative the fact of fraud, but in this, as
in other cases, fraud may be inferred from gross inadvert-
ence or n^ligence, such as may be the indication of a design
to deceive the public. The defects in the old patent must be
in the specification, when^t does not comply with the requi-
sites of the third section of the Act of 1793, calling for a cor*
rect description of the thing patented (6 Peters, 247) ; a new
one may be issued on compliance with those requisites, which
are there prescribed. But the new patent must be confined to
the thing patented by the old one — the thing invented or
discovered — ^ the same invention ; ' it cannot embrace ano-
ther substantive and essential matter, which was not before
patented ; the thing, the invention, must be the same in both
patents ; the only object in the renewal being to cure a defect
in the description, not to supply the omission of an essential
part of the invention ; the new patent cannot be broader than
the old one. If the thing patented is the same in both pa-
tents, its public use did not, under the former laws, amount
to an abandonment, or such an acquiescence as to affect the
new patent on the ground of delay or negligence in the asser-
tion of the right of the patentee, from the date of the old
patent to its reissue. But when an essential part is omitted,

V •

344 PATENT CASES.

Stimpson v. The Weit Chaster Railroad Co. 4 How.

and the patentee suffers it to remain unpatented till it has
come into public use, before the nevr patent issues, it will be
subject to the same rules which apply to an original patent,
making it incompetent to protect the patentee in his claim to
such part in virtue of the patent reissued, if it was not de-
scribed in the one surrendered. The thirteenth section of
the Act of 1836 authorizes a new improvement, invented
since the first patent, to be added in a renewed
[ * 386 ] * one ; no law gives any authority to add an improve-
ment, which had been invented by the patentee be-
fore the original grant ; for it is not and cannot be any part
of the description or specification of another distinct improve-
ment. A patent for the combination of the parts of an old
machine must show wherein such combination exists ; what
parts compose it; how they are combined in their action. If
the description is defective, it may be corrected by a new
one; the correction, however, musf not extend beyond the
combination of the parts first specified, as the introduction of
other parts, not before specified, makes an entire new com-
bination ; consequently the thing patented becomes essentially
different, being not the same invention, but a new one, made
by a combination of a part not combined before, which might
be a proper subject of an original patent, yet would not be
authorized in a renewed one.

'^ These are the tests which the law applies to the descrip-
tion of the thing patented, in order to ascertain whether, in
the words of the Act of 1832, the old patent was ' invalid or
inoperative ' by reason that the conditions of the former law
not having been complied with, or, in the language of the
Supreme Court, >he patent ^ is found to be incompeten't to
secure the reward which the law intended to confer on the
patentee for his invention.' In such case, the patent may be
surrendered for reissue, in order to correct the defects which
invalidated the first, but the law expressly makes the new pa-

PATENT CASES. 345

Stimpson o. The West Chester Raihroad Co. 4 How.

tent < in all respects liable to the same matter of objection and
defence ' as the old one, and imposes on the patentee the ob-
ligation of ' compliance with the terms and conditions pre-
scribed by the third section of the Act of 1793.' This is
done by showing, according to its requisitions, what was the
invention, the thing patented, by a designation of the inven-
tion principally, made in fuller, clearer, and mor^ exact terms
than those used, so as to give it validity and effect, and se-
cure the same invention, which is the only legitimate oflSce of
the renewed or reissued patent. A specification consists of
two parts — description and claim. The descriptive part is the
explanation of the improvement in all the particulars required
by the law ; the claim, or summary, at the close of the descrip-
tion or specification, is the declaration of the patentee of what
he claims as his invention, by which he is bound, so that he
can claim nothing which is not included in the summary, and
could disclaim nothing which was included in it till the pas-
sage of the Act of 1837. But the summary may be referred
to the description, and both will be liberally construed to as-
certain what was claimed, and if the words will admit of it,
Jboth parts will be connected in order to carry into effect the
true intention of the patentee, as it may appear on a judicial
inspection of the whole specification. This makes it a ques-
tion of law what is the thing patented, depending not on the
actual or supposed intention of the patentee, but the
conclusion of the law * on the language he has used [ * 387 ]
to express it ; a part of the description may be con-
strued as a claim, and carried into the summary, and made a
part of the thing patented, the effect of which is the same as
if it was included in the summary in express terms. Cooper v.
Matheys, C. C. MS. To authorize a recovery for the vio-
lation of a patent-right, the plaintiff must show that he is the
inventor of every thing he claims as new, that it is embraced
in the patent, and that every thing so claimed and patented

346 PATENT CASES.

Stimpson V. The West bhefter ]EUdlroad Co. 4 How.

has been iDfringed by the defendant ; thus, where the patent
is for a particular combination of the parts of an old machine,
and the defendant has not used the whole combination as spe-
cified in the description, and carried into the suipmary, the
• plaintiff ^annot recover. Prouty et al. vJ Ruggles, 1 6 Peters,
336.''

The Couit then proceeded to state the substance of the
plaintiff's declaration, and referred to the patent of 1835, and
the specification thereto attached, in order to ascertain the
thing patented by that patent which was stated therefrom ;
they then inquired what was the thing patented in 1831, by
referring to the evidence of Thomas P. Jones, contained in
the deposition aforesaid, in connection with the Journal of the
Franklin Institute, referred to by him. The Court, remarking
that there being in evidence no copy of the patent of 1831,
any drawing or specification of the thing patented, or other
proof of the contents of either than was contained in the de-
position and Journal aforesaid, then gave their opinion to the
jury, that, on this evidence, the use of grooves was not claim-
ed, and was no part of the thing patented in 1831 for turning
short curves, but was a part of the thing patented in 1835.
That it was an essential part of this invention, as Jones tes-
tified, and without which all the witnesses agreed that the
invention was useless ; as without the groove the cars would
run off the road, and that the patent was not for any parts of
the machine which were new, but for a new combination of
the old parts. It was then submitted to the jury, whether, on
the evidence aforesaid, the omission of the groove in the pa-
tent of 1831 arose from inadvertence, and if it was done con-
trary to the advice of Jones, and in conformity with the q)i-
nion of the legal adviser of the plaintiff, and whether, without
the groove, the description of the thing patented was sufficient,
under the third section of the Act of 1793, which was read
and commented on by the Court, who then proceeded as foU
lows :

PATENT CASES. 847

Stimpgon v. The West Chester Baibroad Co.. 4 How.

The Secretary of State is a ministerial oJfficer> who must
issue a patent if the requisites are performed. 6 Peters, 241.
The question of inadvertence or mistake is a judicial one,
which the Secretary cannot decide, nor those judicial ques-
tions on which the validity of the patent depends. He issues
the patent without inquiry. The correct perform-
ance of all the preliminaries to the * validity* of [ * 388 ]
the original patent are always examinable in the
Court where the fact is brought. 6 Peters, 6, 47, 242.

^^ In the application of the law to the evidence before you,
the first inquiry is into the state of facts existing at the time
of granting the patent of 1835; did they present a case for
renewal, under the rules of law on which we ^ have given you
our instructions ? Whether the original patent was invalid or
inoperative is more a question of law than fact, to be ascer-
tained on a judicial inspection of the patent, specification, draw-
ings, models, and the evidence of the contents; the Court must
construe all written evidence ; but as depositions are consi-
dered merely as oral testimony, a jury must decide what parts
are proved by them. The Court must take as true the state-
ments of witnesses as they are made, and lay down the law
on the assumption of their credibility, and both Court and
jury must take an agreed or admitted uncontested state of
facts to be their rule of action ; a jury may. deem a witness
unworthy of credit, or not believe his statement, but ought to
do neither without good cause. Whether the defects in the
old patent arose from inadvertence or otherwise is also a
mixed question of law and fact — of law so far as depends on
written, and of fact as to parol evidence ; on this subject you
have the evidence of Dr. Jones, who officially examined the
old patent, &c., and made out the new, and we are mainly
left to ascelrtain the facts in relation to both patents from him.
In laying down the law to you, we assume his verity in all he
says, and, taking his statement as proof of the facts there ex-

348 PATENT CASES.

Stimpson v. The West Chester Railroad Co. 4 How.

• ! ,^

isting, our opinion is, that, connected with the publication in
the Journal of the Franklin Institute, in 1832, when the mat-
ter was fresh in his recollection, and the specification in the
new patent, the old one was invalid and inoperative, by rea-
son of non-compliance with the requisites of the Act of 1793.
That it did not embrace the groove, which was essential to
its validity, that the new patent is not for the same invention,
and that the plaintiff has not made out a case of such inadvert-
ence, accident, or mistake as justified the issue of the new
patent, inasmuch as it appears from the patent for plates on
railroads, issued at the same time with the one for short curves,
that he had known and described the grooves.

" It is for you to say, whether you will take this evidence
as we do ; if you discredit it, in the whole or in part, you will
find accordingly.

<< Another important question arises in this case, on the
construction of the seventh section of the Act of 1839, taken
in Connection with former laws, which is, whether the plain-
tiff can sustain an action for the use of his invention in the
construction of his curves, before the granting of the patent of
1835.

" This section provides — * That every person or corporatioD
who has, or shall have, purchased or constructed any newly-
invented machine, manufacture, or composition of
[ * 389 ] matter, prior to * the application by the inventor or
discoverer for a patent, shall be held to possess the
right to use, and vend to others to be used, the specific ma-
chine, manufacture, or composition so made or purchased,
without liability therefor to the inventor, or any other person
interested in such invention ; and no patent shall be held to
be invalid by reason of such purchase, sale, or use prior to
the application for a patent as aforesaid, except on proof of
abandonment of such invention to the public, or that such

PATENT CASES. 349

Stimpflon v. The West Chester Bailroad Co. 4 How.

purchase, sale, or prior use has been for more than two years
prior to such application for a patent.'

** Though this act is retrospective in its effects on then ex*
isting patents, it is not Toid on that account ; it was within the
constitutional power of Congress to enact it as a rule for all
cases to which its words and intentions applj, by its fair and
legal interpretation, which we must ascertain by looking at
the old law ; the mischief and the remedy, which must be
traced through the decisions of the Supreme Court, and the
Acts of Congress on the same subject.

"In 1808, an act was granted to Oliver Evans, renewing
his patent, which had expired by its own limitation ; in the
interval, the defendant had constructed a machine of his in-
vention, and continued to use it; after the new patent issued,
he was held liable, according to the words of the law, for such
subsequent use, but the Supreme Court thus express their
opinion of the case, had it rested on general principles : —
* The legislature might have proceeded still further, by provid-
ing a shield for persons standing in the situation of these
defendants ; it is believed that the reasonableness of such a
provision could have been questioned by no one, &c., &c.
The argument, founded on the hardship of this and similar
cases, would be entitled to great weight, if the words of this
proviso were obscure and open to construction.' Evans v.
Jordan, 9 Cranch, 203."

And thereupon the counsel for the plaintiff did then and
there except to the aforesaid charge and opinion of the said
Court.

The above not being enough of the charge of the Court
below to the jury, the counsel for the plaintiff in error applied
for and obtained a writ of certiorari to bring up additional
extracts.

The return was as follows :

VOL. II. — p. c. ' 80

350 PATENT CASES.

Stimpaon v. The West Chester Beilroad Co. 4 How.

On searching the record and proceedings of the Circait
Court of the United States, in and for the Eastern Dbtrict of
Pennsylvania, in the third Circuit, in a certain cause therein
lately depending between James Stimpson, plaintiff, and the
West Chester Raifaroad Company, defendants, we find the fol*
lowing omission in the charge of the judge to the jury, which,
in obedience to the annexed writ of certiorari, is hereby cer-
tified, to wit : —

^^ In Morris v. Huntington, Judge Thompson held, that after
a patent was surrendered, the invention would be
[ * 390 ] open to public use * without hazard, so far as de-
pends on such patent. 1 Paine, 335. Jn Grant v.
Raymond, the Court notice the case of the use of the inven-
tion between the date of the old and before the -new patent,
but remark, that that defence is not made ; and the Circuit
Court did not say that such defence would not be successful ;
and they add — ^The defence, when true in fact, may be
sufllicient in law, notwithstanding the validity of the new pa-
tent' 6 Peters, 244. The Court, in this and the subsequent
case of Shaw v. Cooper, held that the new patent was a con-
tinuation of the old, but gave no opinion on the question,
whether damages could be recovered for the intermediate use
of a machine constructed after the first.

'^ This question was, however, put at rest by the last clause
of the Act of 1832, which, assuming that damages could not
be recovered for a use of the patented invention, before the
new patent, provides : — 'But no public use or privilege of
the invention so patented, derived from or after the grant of
the original patent, either under any'' special license of the in-
ventor, or without the consent of the patentee that there shall
be a free public use thereof, shall in any manner prejudioq
his right of recovery for any use or violation of his invention,
after the grant of such new patent as aforesaid.' The Act of

PATENT CASES. 851

Stimpton V. The West Chester Railroad Go. 4 How.

1836, 18 still more explicit, by providing for the right of re-
covering damages only for * causes subsequently accruing.'

^< It thus appears that the Act of 1839, goes only one step
beyond those of 1832 and 1836, and is a dead letter, if it
protects the person who has purchased, constructed, or used
the machine invented by the patentee no farther than from
damages accruing prior to the new patent, for the same pro-
tection is given by those laws.

To have any effect, it must be held to be, in the words of
the Supreme CSourt, ^ a shield,' which covers the party from
all liability, and by so construing it, the Act of 1839 embodies
the very principle, and none other, which, in Evans t^. Jordan,
9 Cranch, 203, that Court declared to be one which they be-
lieved that no one could question its reasonableness, in order to
prevent the hardship of a case precisely similar in principle to
that presented. Such construction is the more reasonable,
when it is considered that the protection is confined to the
specific machine used before the patent, and cannot be ex-
tended to protect the use of any new or other machine, or
construed to invalidate the patent, or justify the subsequent
use by any other persons than those so protected.

y That such was the intention of Congress in relation to an
original patent cannot be doubted, and we can perceive no
reason why they should omit the very case on which the Su-
preme Court had so explicitly declared their opinions, if the
words of the Act of 1808 would have permitted them to ap-
ply an unquestionable principle. The Act of 1839 not onl^
does not exclude its application, but authorizes and
requires it. In referring to the application *for a [ *391 ]
patent, it was evidently intended to apply it to the
' jfNitent on which the patentee sought to recover, the renewed
one, on which alone his right rested, for the law cannot be
presumed to be intended to apply to a patent which, being
invalid or inoperative, as a ground of action, had been sunen-

353 PATENT CASES.

Stimpeon v, Tlw West Caietter RaanMd Co. 4 How.

dered, cancelled, and cancelled by the Act of the patentee
himselfy and was thus divested of all intrinsic efficiency by
the Acts of 1832 and 1836. It could have no effect without
the aid of the new one, and it would be absurd to suppose that
the law overlooked the application for the only effective pa-
tent, and looked only to that which derived new life from
it ; besides, the Act of 1839 would take from a defendant
the protection of the Acts of 183i2 and 1836, by confining its'
operation to the old patent, for damsiges could then be reco-
verable for the use between the date, and the renewal — a
conclusion wholly inadmissible on a sound construction of
either the acts in question*

*' The Act of 1832 expressly declares that the new patent
shall be subject in all respects to the^same matters of objection
and defen<^ as the original one ; from which it necessarily
follows, that if the purchase or construction of a machine, be-
fore the application for an original patent, would protect a
defendant from all liability, to the patentee, the same defence
is available when applied to the new one*

<< This view of the Act of 1839, suffices for the purposes
of the present case ; a broader one has been taken of it, in aU
its bearings, in another district in this circuit, which it is not
now necessary to examine to decide the point now under
consideration.

'^ In the case before us, it clearly appears that the defend-
ants constructed their railroad with the plaintiff's curves in •
1834, one year or more before the plaintiff's application for
his renewed patent ; consequently, they may continue its use
without liability to the plaintiff."

The case was argued by C. J. JngeraoU and J. R. J&igtfr-^
soUf for the plaintiff in error, and MiUSy for the defendants
in error.

PATENT CASES. 358

Stimpson v. The West Chester Bailroad Co. 4 How.

The brief of the coansel on the part of the plaintiff in error
was as . follows :

This case comes up for argument upon a bill of exceptions
taken by the plaintiff to the charge of the learned judge in
the Court below, by which, in effect, the jury were directed
to find for the defendants, which they accordingly did.

"The plaintiff took a patent the 23d of August, 1831, for
an invention or improvement in the application of the flanches
of the wheels on one side of railroad carriages and of the treads
of the wheels on the other side, to turn short curves upon
railroads.

It was surrendered in consequence of a defect in the speci*
fication, and a new patent taken by him the 26th of Sep-
tember, 1835.

* '^ The object of such surrender and renewal [ * 392 ]
(see deposition of Dr. Thomas P. Jones, a witness
for the defendant, in ansiver to the first cross-interrogatory,
antey p. 384) was to limit and confine it to the turning short
curves in streets, &c., by leaving out certain matters in it re-
specting the crossing of tracks or roads, and the passing over
turnabouts, and to define the subjectrmatter of the patent
more clearly, without its being necessary to refer to that simul-
taneously obtained, for forming and using cast or wrought
iron plates, <Slc."

The action was brought at the October session, 1840. The
curves used by the defendants were said to have been con-
structed and first used by them between the dates of the first
and second patents, the use being continued by them since
the date of the second patent.

The learned judge, after considering at length the law
touching this part of the case, said to the jury : —

^^ It clearly appears that the defendants constructed their
railroad with the plaintiff's curves in 1834, one year or more
before the plaintiff's application for his renewed patent ; con-

30*

854 PATENT CASES.

Stimpion v. The West Chester Batlroad Co. 4 How.

sequently, they may continue its use without liability to the
plaintiff."

In Grant v. Raymond, 6 Peters, 244, the defendant made
it a question, whether the patentee who took an amended
patent could recover damages &>r the defendant's use, subse-
quent to the amendment of the patent, of machinery which
had been constructed prior to the amendment. The Court
did not decide the point, thinking it did not come directly up
for decision. But they said of it, — ^' This objection is more
formidable in appearance than in reality. It is not probable
that the defect in the specification can be so apparent as to
be perceived by any but those who examined it for the pur-
pose of pirating the invention."

Grant v. Raymond was decided early in 1832.

On the 3d of July, 18 32, was passed (4 Little & Brown's
ed. 559) the first act by which the amendment of patents
for defective specifications was statutorily recognized. The
third section of the act contains a proviso, that the new pa-
tent shall be open to all objections which existed against the
old one, by virtue of which, if the phrase stood alone, a de-
fendant, in this case, for example, might say, I used your
curves before 1835 — before the date of your patent, — that
is, between the new patent and the old one, and as a use by
the public prior to the date of the patent would be fatal as
against the old patent, so it is against the new.

Now to meet such an argument, the same proviso goes on
to say, that no use of the patented invention between the
dates of the first and second patents, excepting under a surren-
, der of the invention to public use, shall prejudice the patent-
ee's right to recover damages "for any use" after the grant
of the new patent.

We quote at length the proviso of the third section.

[ * 393 ] * " Prainded, hawevefy That such new patent so

granted shall, in all respects, be liable to the same

PATENT CASES. 365

Sftimpion v. The West Ch«iter Railroad Co. 4 How.

matters of objection and defence as any original patent granted
under the said first-mentioned act.

" But no public use or privilege of the invention so patented,
derived from or after the grant of the original, either under
any special license of the inventor, or without the consent of
the patentee that there shall be a free public use thereof, shall,
in any manner, prejudice his right of recovery for any use or
violation of his invention after the grant of such new patent
as aforesaid."

It is submitted, that by the terms of this statute, to use,
after date of the second patent, the patented machinery, even
though the specific machine used had been constructed and
used between the dates of the first and second patents, is ex-
pressly denied to the public.

On the faith of this statute of the 3d July, ] 832, the plain-
tiff, in September, 13*5, surrendered the patent granted him
the 2dd August, 1831, and took an amended one.

Has any Act of Congress changed the law in this particu-
lar since 1832?

As any such law, so far as regards this plaintiff, would be
retroactive, it ought to be clearly expressed.

On the 6th July, 1836, was passed the new Patent Act,
by which the whole system was recast, but the thirteenth
section, which relates to amended patents, says in broad
terms : —

<^ And the patent so reissued, together with the corrected
description and specification, shall have the same effect and
operation in > law, on the trial of all actions hereafter com-
menced, for causes subsequently accruing, as though the same
had been originally filed in such corrected form before the
issuing of the original patent."

It is submitted that the words, " for causes subsequently
accruing," are not to be strained from their natural construc-
tion, in <vder to be made to retroact against the rights already

356 PATENT CASES.

Stimpson v. The West Chester Railroad Co. 4 How.

vested under the protection of a statute ; and that the cause
of action against these defendants, as far as concerns their
use of the patented invention since the 26th of September,
1835, is a cause subsequently accruing within the just and
obvious meaning of the act. .

In 1837, the 3d of March, was passed an amendment to
the law of 1836.

The plaintiff submits that the seventh and ninth sections of
the Act of 1837 bear on his case, by analogy. They permit
a patentee who has patented too much, and more than he in-
vented, to make disclaimer of the excess, with the same effect,
as regards the validity of the patent, as if his disclaimer were
part of his original specification. That is to say, the patentee
shall recover as if his patent had been originally right instead
of wrong; and no exception is made in favor of
[ * 394 ] parties who, like the defendants here, use, * after
disclaimer, one of the patented things, which they
had constructed and begun to use while the patent was too
broad ; the legislature being influenced, perhaps, by the sugges-
tion of this Court in Grant v. Raymond, that that party is not
entitled to much favor, who scans a specification in order
to pirate it. '

On the 3d. of March, 1839, the latest amendment of the
patent laws was passed.

The seventh section of this act is cited by the learned
judge, who asks, what this section means, if it do not mean
that the use of a patented machine shall be free to a de-
fendant after the patent, if he constructed it before. It reads
thus : —

<^ Sect. 7. And be it further enacted^ That every person
or corporation who has, or shall have, purchased or constructed
any newly invented machine, nianufacture, or composition of
matter,' prior to the application by the inventor or discoverer
for a patent, shall be held to possess the right to use, and to

PATENT CASES. 367

Stiinpioii V, The West Chester Baflivaid Co. 4 How.

vend to others to be used, the specific machine, or manufac^
tare, or compositioDof matter so made or purchased, without
liability therefor to the inventor, or any other persoii interest-
ed in such invention ; and no patent shall be held to be inva-
lid by reason of such purchase, sale, or use, prior to the ap-
plication for a patent as aforesaid, except on proof of aban-
donment of such invention to the public, or that such purchase,
sale, or prior use has been for more than two years prior to
such application for a patent"

It is admitted, in answer to the learned judge, that the
seventh section of the Act of 1839 was intended to protect
defendants, constructors of machinery prior to the patent, in
the use of such machinery after the grant to the patentee.
This section, which has no reference to renewed or amended,
more than to all other, patents, is believed to provide for a
case, till 1839 unprovided for; namely, the case in general,
whether it arise under an original patent, or under one which
has been amended, or which has been modified by disclaimer
of the use by a defendant, after the issuing of the letters, of a
machine such as they patent, but which specific machine was
purchased or constructed before their date. But it is respect-
fully submitted, that this prior use meant a use prior to the
first or original application of the inventor for his patent, and
that the legislature had not in their contemplation the second
application of the inventor, when they used the words ^' prior
to the application of the inventor or discoverer for a patent."
The last clause of the section has obvious reference to the
original -application alone, when it is declared that <^such pur-
chase, sale, or use, prior to the application for a patent," shall
not (except under certain circumstances) make the patent
invalid ; for it was clear already, and quite independently of
this statute, that no renewed or amended patent could be
worth paying for, if the use of the patented machinery

358 PATENT CASES.

Stimp0on v. The West Chester Railroad Co. 4 How.

by third persons, prior to the renewal, could make it in-

valid.
[ * 395 ] * Gtant t;. Raymond, however, furnishes the best
answer to the learned judge's position, that the plain-
tiff's patent is liable to be damaged by what has taken place
since the date of the original letters. At page 244, (6 Peters,)
the Court says : —

^' It has also been argued, that the new patent must issue
on the new specification, and on the application which ac-
companies it. Consequently, it will be true that the machine
was ' not known or used beO>re the application.' But the
new patent, and the proceedings on which it issues, have
relation to the original transaction. The time of the privi-
lege still runs from the date of the original patent The ap-
plication may be considered as appended to the original appli-
cation."

The plantiff in error contends, that a true interpretation of
the letter of these several acts, and a due regard to the spirit
of all recent legislation on the subject of patent-rights, which
has been kind and liberal towards patentees, enforce the con-
clusion, that it was meant, when the new patent was granted,
to give to the new, in all particulars, the charter of the old,
unless when restrained by express words to narrower limits.
And further, that while, for obvious reasons, the acts deny to
the patentee a right to recover damages, under the new
patent, for a use of the invention of earlier date than the pa-
tent itself (which denial is in terms) no express words of the
statutes, or fair or necessary implication from them, or lean-
ing, can be found,' in the whole course of the legislation since
1833, to warrant the conclusion that the new patent does not
confer upon the grantee an entire monopoly of the fruits of
his invention, from the date of the second letters to the ex-
piration of the fourteen years from the date of the first.

The plaintiff in error therefore assigns for error the learned

PATENT CASES. 359

Stimpflon v. The West Chester Bailroad Co. 4 Hov.

judge's instructions to the jury, recognizing the defendants'
right to use the patented invention, after the date of the se-
cond patent, provided they had commenced its use prior to
that date, and continued after that date to use only the spe-
cific machine at first used.

The learned judge also charged the whole case to be against
the plaintiff upon another question, namely, that of the descrip-
tion of the ^^ groove," in the original patent.

The judge was of opinion that the groove was not in the
first patent, and was in the second ; and therefore that the
second was broader than the first, and not confined to the thing
there patented, and thus was defective as an amended patent.
The plaintiff's patent being, as he supposed, established fully
by judicial sanction of the highest sort, in his contest with
the Trenton Railroad Company, reported in 14 Peters, 448,
had not even brought with him, when he came to try his cause
in Philadelphia, the original letters-patent, and the drawings
which accompanied them. Nor was any notice given him by
the defendant to produce them.

The result of bis suit against the Baltimore and
Susquehanna * Railroad Company, tried in the [ * 396 ]
Maryland District, in April term, 1843, when both
tlie original patent and the drawings^ were produced in Court,
proved to be quite ill founded, the attempt of the defendants,
in the present case, to criticize his second patent as actually
varying from the first, by the addition of this new matter, the
groove.

He is aware, however, that he must sustain his case as it
appears by this record, and he proceeds to do so.

The whole invention of the pbuntiff consisted of a new
method of attaining conical action in turning short curves on
railroads. And the groove had no more to do with it than
this : — that when to attain this action the outer wheel was
mounted upon its flanch, the groove, by receiving the inner

360 PATENT CASES.

Stimpion v. The WMt CbMter Bailroftd Co. 4 How.

wheel, pieveated the car from dipping off the track — - a very
material consideration, it is true — in taming the corner ; and
so was the car, or the steam-engine that drew the car ; but
neither of them had any thing to do with the plaintiff's me-
thod of producing conical action. Without a groove, just as
without steam, a horse, or other power, the comer could not
be turned ; and therefore, in describing the plaintiff's inven-
tion, both this power and the groove must needs be referred
to ; but it is respectfully denied, that more than the merest
allusion to either is necessary, neither of them being any
part of the invention, nor so occuk as to demand, for even
the most unenlightened observer, more than a mere allusion
to it

Now it was in proof from the witness called by the defend-
ant to testify to thd contents of the original specification, that
it alluded to the groove.

*^ I believe, however, that it (the groove) was alluded to in
this specification." Evidence of Dr. Jones.

This allusion to the groove in the first patent, the learned
judge rules, in his charge to be insufficient, and in the para-
graph ante^ pp. 387, 368, after so holding, he goes on to de-
clare, that the groove should have been <^ claimed." It may
be mentioned that it is not claimed in the new patent, nor
even alluded to in the summary of the specification ; so col-
lateral is it to the invention.

The plaintiff in error further assigns for error, in this por-
tion of the charge touching, the groove the learned judge's
decision against the plaintiff's right to claim under his patent,
because of his alleged omission in regard to the groove ; and
particularly to the judge's saying, that, assuming the troth of
Dr. Jones's deposition, the opinion of the Court was, that the
old patent was << invalid and inoperative by reason of^ non-
compliance with the requisition of the Act of 1793. That

PATENT CASES. 361

Stimpflon 9. The West Chester Beilioed Co« 4 How.

it did not embrace the groove, which was essential to its vali-
dity ; that the new patent is not for the same inventioa.^'

Also, the learned judge's taking from the jury the question,
which came fairly up as a question of fact, namely,
whether this mention * of, or alluuon to, the groove [ * 397 ]
was or was not too slight a description of that part
of the combination to enable one skilled as an engineer to
make a curve, or to stand for a compliance, by the patentee,
with the requisition of the statute touching the proper descrip-
tion of the invention.

Also, the learned judge's deciding it to be a matter of law,
and not of fact for the jury, what the thing patented in 1831
was, when the evidence of what it was lay not in a written
paper, which the judge could read and construe, but in parol
evidence, and explanations per testes.

Also, the learned judge's not giving the due legal eSsci to
the secretary's seal and letters-patent, as primd facie evidence
that the second patent legitimately succeeded to the first, and
to his assuming, on the contrary, that it was incumbent on
the plaintiff, and not on the defendant, (who assailed it,) to
show what the first patent contained, and what its character
and defects were, and in the absence of the patent, and of
any notice or call for it by the defendant, and in the absence
of any satisfactory account of its contents to the learned judge,
making the plaintiff and not the defendant, responsible for
the imperfectness of the proofs regarding the same.

The judge left nothing to the jury, as distinctly appears in
his summing up, in regard to the groove, (antey p. 388,) but
the question whether Dr. Jones's testimony was to be believed
or not. If believed, he told the jury they must find for the
defendants, the old patent being defective, in not embracing
the groove, and the new patent, which he said did embrace
it, being therefore for a different invention altogether.

The plaintiff in error also assigns it for error, that the learn-
VOL. II. — p. c. 31

362 PATENT CASES.

Stimpson v. The West Chester Bailroed Qo. 4 How.

ed judge ruled <^ mistake/' in the statute about amending
patents, to mean inadvertence or accident onlj, and excluded
cases of honest mistakes of judgment.

Mr. Miles, for the defendants in error, filed the following
brief: —

Abstract of Cast.

1. This is a writ of error to the Circut Court for the East-
em District of Pennsylvania. The plaintiff in the Circuit
Court is the plaintiff in error in this Court. The verdict in
the Circuit Court was for the defendants.

2. The action was brought to recover damages for an alleg-
ed infringement by the defendants of an exclusive right, alleg-
ed to belong to the plaintiff, to make^ use, construct, and vend
an improvement '^ in the mode of turning short curves on rail-
roads," of which he claimed to be the original inventor, and
alleged to have been secured to him by letters-patent of the
United States, according to the Acts of Congress.

The plaintiff claimed under letters-patent, dated

[ * 398 ] September 26th, * 1835, which recited that letters

for the same improvement were granted to him on

August 23d, 1831, bqt which were '< hereby cancelled on ac^

count of a defective specificaUon."

3. The plaintiff declared on the letters-patent of September
26tb, 1835, in four counts, (only varying in the allegation of
different modes of infringement, namely, making, constructing,
selling, and using,) all setting forth that << the said letters-
patent (that is, of August 23d, 1831) were cancelled in due
form of law, on account of a defective specification.".

4. The defendants pleaded not guilty, gave due notice to
the plaintiff, under the Acts of Congress, of a defence based
upon the want of originality of invention of the thing patented

PATENT CASES. 363

Stimpsoa v. The West Chester lUilroad Co. 4 How.

on the part of the plaintiff, under the several patents of 1831
and 1836, said notice including the prior use and knowledge
of other persons, and of prior printed and published descrip-
tions of the same, &c., and under such plea and notice gave
evidence to the jury.

The original letters of the 23d of August, 1831, were not
in evidence, they having been destroyed in the conflagration
of the Patent Office in December, 1836, ncfr was there any
copy of them given in evidence.

Their loss or destruction having been proved, secondary
evidence was given of their contents. (Journal Franklin
Institute, vol. 9, p. 124, No. 37 ; and by deposition of Dr.
Thomas P. Jones.)

The claim by this evidence, under the patent of 1831, was
'' to the application of the flanches of railroad carriage wheels
to turn short curvatures upon railroads or tracks, particularly
turning the corners of streets, wharves, crossing of tracks or
roads, and passing over turnabouts," &c. No mention was
made therein of the use of a groove upon the inner circle for the
flanch to run in, so as to enable the wheel on the inner circle
tarun on its tread» without which there was evidence tending
to show that the whole alleged invention was useless.

The claim under the* patent of 1835 was to "the applica-
tion of the flanches of the wheels on one side of railroad car-
riages, and of the treads of the wheels on the other side, to
turn curves upon railways,'' <&c., ^^ operating upon the prin-
ciples herein set forth." The specification referred to in this
summary describes the use of the flanch running on the sur-
face of the outer rail, and of the tread running on the inner
rail, which is formed with a groove to receive the flanch of
the wheel on the inner rail, as the essential parts, which, com-
bined together, form the improvement.

5. Upon the trial, several questions of law and of fact arose.
His Honor, Mr. Justice Baldwin, charged the jury upon the

364 PATENT CASES.

Stimpson o. The West Cheftter Bailroad Co. 4 How.

law, and left the facts falling within the fcope of the princi*
pies of the law, as laid down hj hinii to the determination of
the jury.

[ * 399 ] • Points of Law arising under the Charge oonr

tended for hy Defendants.

The third section of the Act of 2l8t February^ 1793| in sub*
stance, provides that the applicant for a patent shall give a
description, in full, clear, and exact terms, of the thing invent-
ed, and its modes of application.

By the sixth section of the same act, a defendant in a suit
brought on letters-patent may show that the description (that
is, specification) does not contain the whole truth relative to
his discovery, or that it contains more than is necessary to
produce the desired effect, which concealment or addition
shall fully appear to have been made for the purpose of de*
ceiving the public, or that the thing secured by patent was
not originally discovered by the patentee, &c.

The third section of the Act of July 3, 1832, provides, in
substance, that if any patent shall be invalid or inoperative
by reason of noncompliance with the terms of the third sec*
tion of 1793, by ^inadvertence, accident, or mistake,'' and
'' without any fraudulent or deceptive intention/' it ony be
lawful for the Secretary of State, on surrender of the original
patent, to grant a new patent, on compliance with the condi-
tions of the third section of the Act of 1793, for the rendue
of the term unexpired.

The thirteenth and fifteenth sections of the kti of 4tb July,
1836, which supplied the former laws enacted on the subject,
contain in substance the same provisions as to the inoperation
of a patent by reason of the defective description, and allow-
ing a surrender and regrant where the defect arose from '^ in-

PATENT CASES. 36S

' Btimpson v. The W«t Chester Bailroad Co. 4 How.

adyertency, accident, or mistake, and without any fraudulent
or deceptive intention,"

The seventh section of the Act of March 3, 1839, provides,
'^ that every person or corporation who has, or shall have, pur-
chased or constructed any newly invented machine, &c., prior
to the application by the inventor, &c.,, for a patent," may use
and vend it at all times, without liability to the inventor or
any person, &c.

Under these acts, the following points are submitted to have
been judicially decided, ^

1. That where a patentee, under the Act of February 21st,
1793, has not complied with the terms of its third section,
even through inadvertence, accident, or mistake, the plaintiff
cannot recover for an infringement prior to a surrender and
new grant. Grant t^. Raymond, 6 Peters, 244 ; Shaw t^.
Cooper, 7 Peters, 320 ; Whitney v. Emmett, 1 Bald. 303.

2. That if the patentee under the Act of 1793 has not
complied with the terms oiMta third section, through fraudu-
lent and deceptive intention, by the concealment of

or addition to his real discovery, his * patent, by [ * 400 ]
the sixth section, is absolutely void. Grant tr. Ray-
mond, 8 Peters, 246, 247 ; Whitney v. &mmett, 1 Bald. 303.

3. (1.) That a surrender under the Act of 1832, and a new
grant are only sustainable where the defect in the description
of the first patent was the result of inadvertence, accident, or
mistake. Grant v. Raymond, 6 Peters, 246, 247. (2.) That
a new grant, on such a surrender, is not sustainable, but is

^ absolutely void, if it appear that the defect in the description
of the first patent, whether of concealment or addition, was
the result of a fraudulent and deceptive intention on the part
of the patentee. (3.) Th^t if a, patentee surrendered his first
patent, and, under pretence of an inadvertence, accident, or
mistake in its description, obtained a new patent, adding
thereto a new material or element of which he was not the

31*

366 PATENTT CASES,

Stimpson v. The West Chester Baflnoad Co. 4 How.

original inventor, and which is necessary to make the thing
patented useful, thus in the second patent specifying another
combination, constituting a mode or a machine substantially
different from that described and claimed in the^ first, it is
fraud in the patentee, and the patent is void. Grant o. Ray-
mond, 6 Peters, 218, 244 ; Philadelphia Railroad t^. Stimpson,
14 Peters, 462 ; Shaw v^ Cooper, 7 Peters, 292.

Note. The Act of 1832 (July 3d,) authorizing a surrender
and regrant, shortly followed the decision in Grant v, Ray-
mond, 6 Peters, (January term, 1832,) and by express. enact-
ment provided for that which had before been allowed by
practice and judicial construction only.

4. That an original patent, as well as that granted on a
surrender of the first under these acts, are primd facie evi-
dence only of the novelty and utility of the alleged invention,
and of the compliance by the^patentee with the terms of the
several acts of Congress entitling him to a patent ; but their
validity is examinable in a judicial proceeding upon any such
patent, part of the inquiry being within the province of the
Court where the construction of written documents is to be
made, and part being for the determination of the jury where
questions of fact are involved. Grant v. Raymond, 6 Peters,
218; Shaw v. Cooper, 7 Peters, 292; Philadelphia Rkil-
road V, Stimpson, 14 Peters, 448 ; Prouty v, Ruggles, 16 Pe-
ters, 336.

5. If a patentee's first patent be inoperative for want of a-
fdll and exact description, and he stands by for a long and
unreasonable period of time, without surrendering and reme-
dying the defect by furnishing such*a description, and obtain-
ing a regrant, and in the mean time permits others to use what
he subsequently claims to be his invention, with a knowledge
of such use without objection or asserting his right, this is
evidence from which a jury may infer his acquiescence and

PATENT CASES. 367

Stimp0on v. The West Chester Railroad Co. 4 How.

abandonment to the public as a matter of fact. Shaw v. Coo*
per, 7 Peters, 320 - 322.

6. Under the act of 1839, if the defendant^ purchased or
constructed this mode of turning curves, before the
application for the * patent of 1835, and this com- [ * 401 ]
bination or mode described in that patent was newly
invented by the patentee, the plaintiff cannot recover, notwith-
standing the Act of 1839 was subsequent to the dates of such
purchase or construction, and the patent of 1835. Shaw v.
Cooper, 7 Peters, 320-322; M'Clurg v. Kingsland, 1 How.
204 ; Evans o. Jordan, 9 Cranch, 201.

Note 1. This statute was intended to provide expressly and
in* terms (designating a specific point of time) for all that class
of cases of implied acquiescence and waiver in favor of the
public, resulting from the negligence of the patentee, by which
judicial construction held that the patentee had no claim
against persons using or constructing the alleged invention
under such circumstances.

Note 2. This action was brought in the Circuit Court after
the passage of the Act of 1839, to wit, at the October session
1840.

The charge of the Court left all the facts falling within the
scope of the legal principles therein stated to the determina-
tion of the jury.

1. ^^The question of the validity of the new patent is a
judicial oiie, depending on the fact of inadvertence or fraud,
as you shall find it.'' " You must then be satisfied affirma-
tively," <&c. '* The finding of the fact of inadvertence may
negative the fact of fraud," &c.

2. <' It was then submitted to the jury, whether, on the evi-
dence aforesaid, the omission in the patent of 1831 arose from
inadvertence," &c.

3. << Depositions are considered merely as ori^l testimony ; a
jury must decide what facts are proved by them, ....

368 PATENT CASES.

Stimpson v. The West Chester Railroad Co. 4 How.

a mixed question of law and fact ; of law so far as depends
on written, and of fact as to parol evidence/' Slc.

4. " It is for you to say, whether you will take the evidence
as we do ; if you discredit it, in whole or in part, you will find
accordingly."

Mr. Justice McLean delivered the opinion. of the Court.

The plaintiff brought an action against the defendant for
an infringement of his patent, for a '^ new and useful improve-
ment in the mode of turning short curves on railroads." The
questions for decision arise on exceptions to the charge of the
Court to the jury. And here it may be proper to remark,
that the exceptions are to the charge as published at length,
and not to the points ruled by the Court, as is the correct
practice. Under the peculiar circumstances of this case,
the Court will not dismiss the writ of error upon this ground,
but it is expected that a different course will hereafter be pur-
sued.

On the 21st of Aygust, 1831, the plaintiff obtained a patent
for an invention or improvement in the application of the Ranch-
es of the wheels on one side of railroad carriages and
[*402] of the treads of * the wheels on the' other side, to
turn short curves upon railroads. The specification
of this patent being defective, it was surrendered the 26th of
September, 1835, and a renewed one obtained, in order, as
proved, '^ to limit and confine it to the turning short curves in
streets, &c., by leaving out certain matters in it respecting
the crossing of tracks or roads, and the passing over turn-
abouts, and to define the subject-matter of the patent more
clearly, withoiit its being necessary to refer to that simultane-
ously obtained, for forming and using cast or wrought-iron
plates," &c.

In his charge, the judge said to the jury : — << It clearly
appears that the defendants constructed their railroad with the

PATENT CASES. 369

Stimpsoa v. Tba WMt ChMter BailrMid C!o. 4 How.

plaiDlifT'B curvet in 1834) one year or more before the plain-
tiff's application for his renewed patent ; consequently, they
may continue its use without liability to the plaintiff.'^

The patent was surrtndered, and a new one obtained, under
the third section of the << Act concerning Patents," of the 3d
of July, 1832; and the correctness of the above opinion is to
be ascertained by a reference to the proviso of that section.
It is there declared — ** No public use or privilege of the
invention so patented, derived from or after the grant of
the original patent, either under any special license of the
inventor, or without the consent of the patentee that there
shall be a free public use thereof, shall, in any manner, pre-
ju<)ice his right of recovery for any use or violation of his
invention, after the grant of such new patent as aforesaid.'^

The charge of infringement, in the declaration, is laid some
years after the new patent, so that the question does not arise,
whether an action could be sustained for a violation of the
right prior to the corrected patent. The above proviso would
seem to be susceptible of but one constrtiption ; and that is,
that the patentee may sustain an action " for any use or vio-
lation of his invention after the grant of a new paten t.'^ Now
it is plain that no prior use of the defective patent can autho*
rize the use of the invention after the emanation of the re-
newed patent under the above section. To give to the pa-
tentee the fruits of his invention was the object of the provi-
sion ; and this object would be defeated, if a right could be
founded on a use subsequent to the original patent and prior
to the renewed one. *

The thirteenth section of the Act of the 4th of July, 1836,
which remodelled the Patent Law in this respect, made no
material change in the Act of 1832. The words in the lat-
ter act are, — ^'And the patent, so reissued, together with
the corrected description and specification, shall have the same
effect and operation in law, on the trial of all actions hereafter

370 PATENT CASES.

Stimpson v. The West Chester Bailroad Co. 4 How.

commenced for causes subsequently accruing, as though the

same had been originally filed in such corrected form, before

the issuing out of the original patent." Now any person

using an invention protected^ by a renewed patent

[ ^ 403 ] * subsequently to the date of this act, is guilty of

an infringement, however long he may have used

the same after the date of the defective and surrendered

patent.

The Circuit Court relied upon the seventh section of the
Act of the 3d of March, 1839, as sustaining their construc-
tion in re^rd to the use of the invention after the renewed
patent. But that section has exclusive reference to an origi-
nal application for a patent, and not to a renewal of it. We
think the Court erred in their instruction to the jury above
stated.

In their charge, the Court said — *' The use of grooves was
not claimed and was no part of the thing patented in 1831,
for turning short curves, but was a part of the thing patented
in 1835." ^^ Tha^ it was an essential part of the invention."
And further, ^' in taking the statement " of Dr. Jones ^' as proof
of the facts there existing, our opinion is, that, connected with
the publication in the Journal of the Franklin Institute, in
1832, when the matter was fresh in his recollection, and the
specification in the new patent, the old one was invalid and
inoperative, by reason of non-compliance with the requisites of
the Act of 1793. That it did not embrace the groove, which
was essential to its validity ; that the new patent is not the
same invention, and that the plalhtiff has not made out a case
of such ' inadvertence, accident, or mistake,' as justified the
issue of the new patent, inasmuch as it appears, from the pa-
tent for plates on railroads issued at the same time with the
one for short curves, that he had known and described the
grooves." '

The original patent, as proved by Dr. Jones, was burnt

PATENT CASES. 371

Stimpion v. Th« West CSieiter Bailroad Co. 4 How.

II , - I

with the, Patent Office, and no part of the specifications is
preserved, except that which was published by the witness in
the Franklin Journal. That publication does • not purport to
give the whole of the specifications, and, consequently, the
claim is not limited by the notice in that journal. Doctor
Jones, speaking of the patent issued in 1831, says, — '^The
main defect, in my judgment, of the original specifications in
the patent for turning short curves was the omission of the
mention of the groove in the inner rail. 1 believe, however,
that it was alluded to in the specifications, but the description
of it was contained principally, if not wholly, in the specifica-
tion of the patent for forming and using cast-iron or wrought
plates,'' &c.

That there was a defect in regard to the grooves in the spe-
cifications of the first patent is shown, and also that the patent
was surrendered in order to remedy that defect. But whe-
ther this vitiated the patent is not a question in this case, as
it does not affect the right now asserted, if the first patent
were void. Whether the new patent was, substantially for a
different invention from the first one, was a question for the
jury on the evidence. But the Court ruled this point, with-
drawing the facts from the jury. The witness thinks <^ that
in the first patent the grooves were alluded to," but
the * terms used are not recollected by him, and as [ * 404 ]
the patent has been burnt, they cannot now be prov-
ed. We think the Circuit Court erred in not leaving the
jury to act upon the facts, as regards the' difference between
the original and the renewed patent. On the facts^ we should
draw a different conclusion from that which was given to the
jury by the Circuit Court. An allusioix to the grooves in this
specification, as more particularly described in the other pa-
tent, would at least show the intention of the patentee, if it
did not make good his patent.

By the thirteenth section of the Act of 1836, " if the patent

872 PATENT CASES. .

Wilson V. Boassean et al. 4 How.

shall be inoperative or invalid, by reason of a defective or in-
sufficient description or specification," dLC^ *^ if ^h® error has
or shall have arisen by inadvertency, accident, or mistake,
and without any fraudulent or deceptive intention, it shall be
lawful " to surrender it, d&c. Now, as in granting the renew-
ed patent, the officers of the government act under the above
provisions, their decisions must at least be considered as
primd facie evidence that the claim for a renewal was within
the statute. But this would not be conclusive against fraud
in the surrender and renewal, which, on the evidence, would
be a matter for the jury. And we suppose that the inquiry
in regard to the surrender is limited to the fairness of the
transaction. In whatever manner the mistake or inadver-
tence may have occurred is immaterial. The action of the
government renewing the patent must be considered as clos-
ing this pointy and as leaving open for inquiry, before the Court
and jury, the question of fraud only.

The judgment of the Circuit Court is reversed, and the
cause remanded to that Court, with instructions to award a
venire/aciaa de novo.

James 6. Wilson, PLAiNTirr, v. Lewis Rousseau and

Charles Easton.

[4 Howard, 646. Jannarj T. 1846.]

The eighteenth section of the Patent Act of 1836 aathorized the extension of a
patent, on the application of the executor or administrator of a deceased
patentee.

Sncfa an extension does not inure to the benefit of assignees nnder the original
patent, but to the benefit of the administrator (when granted to an adminis-
trator) in his capacity as such. Bat those assignees who were in the nse of
the patented machine at the time of the renewal have still a right to nse it

The extension conld be applied for and obtained by the administrator, olthoagfa

PATENT CASES. 373

Wilson 17. Boiuseaa et al. 4 How.

the original patentee had, in his lifetime, disponed of all his interest in the
then existing patent Saoh sale did not carry any thing beyond the term of
the original patent

A covenant by the patentee, made prior to the law authorizing extensions,
that the oorenantee should haTO the benefit of any improrement in the ma-
chinery, or alteration or renewal of the patent, did not include the extension
by an admmistrator, under the Act of 1836. It mnst be construed to include
only renewals obtained upon the surrender of a patent on account of a de-
fectire specification. Parties to contracts look to established and general
la^fs, and not to special acts of Congress.

A plaintiff, therefore, who claims under an assignment from the administrator,
can maintain a suit against a person who claims under the covenant

An assignee of an exclnsire right to use two machines within a particular dis-
trict can maintain an action for an infringement of the patent within that
district, even against the patentee.

In the case of Woodworth's planing machine, the patent granted to the ad-
ministrator was founded upon a sufficient specification and proper drawings,
and is valid.

The decision of the board of commissioners, to whom the question of renewal
is referred, by the Act of 1836, is not conclusive upon the question of their
jurisdiction to act in a given case.

The Commissioner of Patents can lawfully receive a surrender of letters-latent
for a defective specification, and issue new letters-patent upon an amended
specification, after the expiration of the term for which the original patent
was granted, and pending the existence of an extended term of seven years.
Such surrender and renewal may be made at anytime daring such extended
term.

This case, and the three subsequent ones, namely, Wilson
V. Turner, Simpson et al. v. Wilson, and Woodworth & Bann
V. Wils6n, were argued together, being known as the patent
cases. Many of the points of law invojved were common to
them all, and those which were fully argued in the first case
which came up were but incidentally^ touched in
the discussion of the subsequent cases. * They all [ * 647 ]
related to the rights which were derived under a
patent for a planing machine, taken out by Woodworth, and
renewed and extended by his administrators. The validity
of the original patent was questioned only in one case,
namely, that which came from Kentucky, which was the last

VOL. II. — p. c. 32

374 PATENT CASES.

Wilson V. Bonssean et al. 4 How.

argued. There were four cases in all, namely, one from
New York, one from Maryland, one from Louisiana, and one
from Kentucky. In the course of the argument, counsel
referred indiscriminately to the four records, as some docu-
ments were in one which were not to be found in another.

The cases will be taken up and reported seriatim^ and the
documents which are cited in the first will not be repeated in
the others.

The first in order was the case from New York, the titling
of which is given at the bead of this report.

It came up from the Circuit Court of the United States
for the Northern District of New York, on a certificate of
division in opinion.

On the 26th of November, 1838, William Woodworth,
presented the following petition.

<< To the Honorable Henry Clay, Secretary of State of the

United States.

'< The petition of William Woodworth, of the city of Hudson,
in the county of Columbia and State of New York, respect-
fully represents:

<< That your petitioner has invented a new and improved
method of planing, tonguing, grooving, and cutting into
mouldings, or either, plank, boards, or any other material, and
for reducing the same to an equal width and thickness ; and
also for facing and dressing brick, and cutting mouldings on,
or facing, metallic, mineral, or other substances, not known
or used before the application by him, the advantages of
which he is desirous of securing to himself and his legal
representatives. He therefore prays that letters-patent of the
United States may be issued, granting unto your petitioner,
his heirs, administrators, or assigns, the full and exclusive
right of making, constructing, using, and vending to others
to be used, his aforesaid new and improved method, agreeably

PATENT CASES. 375

Wilson V. Ronsse&a et al. 4 How.

to the acts of Congress in such case made and provided ; your
petitioner, having paid thirty dollars into the treasury of the
United States, and complied with the other provisions of the
said acts. William Woodworth.

" November 26tA, 1828."

On the 4th of December, 1828, Woodworth executed to
James Strong the following assignment.

" Whereas I, William Woodworth, of the city of Hudson,
in the State of New York, heretofore, to wit, on
the 13th day of * September, 1828, assigned and [ *648]
transferred, for a legal and valuable consideration,
the one equal half of all my right, title, claim, and interest in
and to the invention or improvement mentioned and intended
in the foregoing petition, oath, and specification, to James
Strong, of the city of Hudson.

''And whereas, also, the subjoined assignment is intended
only to convey and assign the same interest transferred and
assigned in the assignment of the 13th of September above
mentioned, without any prejudice to my one equal half part
of said invention or improvement, which is expressly reserved
to myself and my legal representatives.

" Now, know all men, that 1, the said William Woodworth,
for and in consideration of the sum of ten dollars, and other
valuable considerations me moving, have, and do hereby, for
myself and legal representatives, give, assign, transfer, and
assure to the said James Strong and his legal representatives
the one full and equal half of all my right, title, interest, and
claim in and to my new and improved method of planing,
tbnguing, grooving, and cutting into mouldings, either plank,
boards, or any other material, and for reducing the same to
an equal width and thickness, and also for facing and dress-
ing brick, and cutting mouldings on, or facing, metallic,
mineral, or other substances, mentioned and intended to be

376 PATENT CASES.

Wilion V. Boiuaeaa et aL 4 How.

secured by the foregoing petition, oath, and specificatioD,

together with all the privileges and immunities, as fully and

absolutely as I do or shall enjoy or possess .the same; to have

and to hold and enjoy the same, to the said James Strong,

and his legal representatives, do or may.

<< In witness whereof, 1 have hereunto set my hand and

seal, the 4th day of December, 1828.

William Woodworth. [Seal.]
Witnesses : —

HfiNRT Everts,

Datid Gleasok."

On the 6th of December, 1828, Woodworth took the fol-
lowing oath.

'* Stale of New York, Rensselaer Counly, ss. :

'^ On this sixth day of December, A* D. 1828, before the
subscriber, a justice of the peace in and for the county of
Rensselaer aforesaid, personally appeared the aforesaid Wil-
liam Woodworth, and made solemn oath, according to law,
that he verily believes himself to be the true and original in-
ventor of the new and improved method, above described and
specified, for planing, tonguing, grooving, and cutting into
mouldings, or either, plank, boards, or any other material,
and for reducing the same to an equal width and thickness ;
and also for facing and dressing brick, and cutting
[ * 649 ] * mouldings on, or facing, metallic, mineral, or
other substances ; and that he is a citizen of the
United States.

John Thomas, Justice of the Peace.^^

The above documents appear to be recorded in the third
volume of Transfers of Patent Rights, pages 155, 15Q, in the
Patent Office of the United States.

On the 27th of December, 1828, a patent was issued as
follows.

PATENT CASES. 371

Wilson V. Ronflsean et al. 4 How.

'' Letter a-Patent to W. Woodworih.
" The United States of America to all to whom these letters-
patent shall come :
" Whereas William Woodworth, a citizen of the United
States, hath alleged that he has invented a new and useful
improvement in the method of planing, tonguing, grooving,
and cutting into mouldings, or either, plank, boards, or any
other material, and for reducing the same to an equal width
and thickness ; and also for facing and dressing brick, and
cutting mouldings on, or facing, metallic, mineral, or other
substances, which improvements, he states, have not been
known or used before his application ; hath made oath that
he does verily believe that he is the true inventor or disco-
verer of the said improvement ; hath paid into the treasury of
the United States the sum of thirty dollars, delivered a receipt
for the same, and presented a petition to the Secretary of
State, signifying a desire of obtaining an exclusive property
in the said improvements, and praying that a patent may be
granted for that purpose. These are, therefore, to grant,
according to law, to the said William Woodworth, his heirs,
administrators, or assigns, for the term oC fourteen years from
the 27th of December, 1828, the full and exclusive right and
liberty of making, constructing, using, and vending to others to
be used, the said improvement, a description whereof is given
in the words of the said William Woodworth himself, in the
schedule hereto annexed, and is made a pert of these presents.
^* In testimony whereof, I have caused these letters to be
made patent, and the seal of the United States to
be hereunto affixed. Given under my hand, at the
[l. s.] city of Washington, this 27th day of December, in
the year of our Lord 1828, and of the independence
of the United States of America, the fifty-third.
(Signed,) J. Q. Adams*

" By the President.

(Signed,) H. Clay, Secretary cf StateJ'

32*

378 PATENT CASES.

Wilson V, Bonssean et al. 4 How.

Certificate of WUliam Wirty Attorney-General of the United

Stales.

" City of fVashingtonj to wit :

" I do hereby certify, that the foregoing letters-
[ * 650 ] patent were * delivered to me on the 21th day of
December, in the year of our Lord 1828, to be
examined ; that I have examined the same, and find them
conformable to law ; and I do hereby return the same to the
Secretary of Stat6, within fifteen days from the date afore-
said, to wit, on this 27th day of December, in the year afore-
said. Wm. Wirt,

Attomey-Oeneral of the United ^atesJ'

Schedule.

<<The schedule referred to in these letters-patent, and
making part of the same, containing a description, in the
words of the said WilHam Woodworth himself, of his im-
provement in the method of planing, tonguing, grooving, and
cutting into mouldings, or either, plank, boards, or any other
material, and for reducing the same to an equal width and
thickness ; and also for facing and dressing brick, and cutting
mouldings on, or facing, metallic, mineral, or other substances.

*^ The plank, boards, or other material, being reduced to a
width by circular saws or friction-wheels, as the cajse may be,
is then placed on a carriage, resting on a platform, with a
rotary cutting-wheel in the centre, either horizontal or verti-
cal. The heads or circular plates, fixed to an axis, may have
one of the heads movable, to accommodate any length of
knife required* The knife fitted to the head with screws or
bolts, or the knives or cutters for moulding fitted by screws or
bolts to logs, connecting the heads of the cylinder, and form-
ing with the edges of the knives or cutters a cylinder. The
knives may be placed in a line with the axis of the^ cylinder,
or diagonally. The plank, or other material resting on the

PATENT CASES. 379

J —

Wilaon v, Ronsseaa et al. 4 How.

carriage, may be set so as to reduce it to any thickness* re-
quired ; and the carriage, moving by a rack and pinion, or
rollers, or any lateral motion, to the edge of the knives or
cutters on the periphery of the cylinder or wheel; reduces it
to any given thickness^ After passing the planing and re-
ducing wheel, it then approaches, if required, two revolving
cutter-wheels, one for cutting the groove/ and the other for
cutting the rabbets that form the tongue ; one wheel is placed
directly over the other, and the lateral motion moving the
plank, or other material, between the grooving and rabbeting
wheels, so that one edge has a groove cut the whole length,
and the other edge a rabbet cut on each side, leaving a
tongue to match the groove. The grooving-wheel is a cir-
cular plate fixed on an axis, with a number of cutters attached
to it to project beyond the periphery of the plate, so that
when put in motion it will perform a deep cut or groove,
parallel with the face of the plank or other material. The
rabbeting-wheel, also of similar form, having a number of
cutters on each side of the plate, projecting like those on the
grooving-wheel, cuts the rabbet on the side of the edge of the
plank, and leaves the tongue or match for the
* groove. By placing the planing-wheel axis and [*651 ]
cutter-knives vertical, the same wheel will plane two
planks or other material in the same time of one, by moving
the plank or other material opposite ways, and parallel with
each other against the periphery of the planing or moulding
wheel. The groove and tongue may be cut in the plank or
other material at the same time, by adding a grooving and
rabbeting wheel.

" Said William Woodworth does not claim the invention
of circular saws or cutter-wheels, knowing they have long
been in use; but he claims as his invention the improvement
and application of cutter or planing wheels to planing boards,
plank, timber, or other material ; also his improved method of
cutters for grooving and tonguing, and cutting mouldings on

380 PATENT CASES.

Wilson V. RooBsean et al. 4 How.

wood, stone, iron, metai, or other material, and also for facing
and dressing brick ; as all the wheels may be used single and
separately for moulding, or any other purpose before indicated.
He also claims, as his improved method, the application of
circular saws for reducing floor plank, and other tnaterials, to
a width.

« Dated Troy, December Ath, 1828.

William Woodwobth.

" Henrt Everts, ■>

. S. Gleason, 5

On the 25th of April, 1829, one Uri Emmons obtained a
patent for a new and useful improvement in the mode of
planing floor-plank, and grooving, and tonguing, and straight-
ening the edges of the same, planing boards, straightening
and planing square timber, dLc, by machinery, at one ope-
ration, called the cylindrical planing machine. The said
letters-patent, and specification attached thereto, being in the
following words and figures.

Uri Emmone^e Patent.

" United States of America to all to whom these letters-patent

shall come.
^' Whereas, Uri Emmons, a citizen of the United States,
hath alleged that he has invented a new and useful improve-
ment in the mode of planing floor-plank and grooving and
tonguing the edges of the same, planing boards, straightening
and planing square timber, &.C., by machinery, at one opera-
tion, called ' the cylindrical planing machine,' which improve-
ment he states has not been known or used before his appli-
cation, hath made oath that he does verily believe that he is
the true inventor or discoverer of the said improvement, hath
paid into the treasury of the United States the sum of thirty
dollars, delivered a receipt for the same, and presented a
petition to the Secretary of State, signifying a desire of ob-
taining an exclusive property in the said improvement, and

PATENT CASES. 381

Wilson V. Bouseeau et al. 4 How.

praying that a patent may be granted for that purpose.
These are .therefore to grant, according to law, to
the said Uri Emmons, his * heirs, administrators, or [ * 65S ]
assigns, for the term of fourteen years from the
twenty-fifth day of April, one thousand eight hundred and
twenty-nine^ the full and exclnsive right and liberty of mak-
ing, constructing, using, and vending to others to be used, the
said improvement, a description whereof is given, in the words
of the said Uri Emmons himself, in schedule hereto annexed,
and is made a part of these presents.

<< In testimony whereof, I hav^ caused these letters to be
made patent, and the seal of the United States to be here-
unto affixed.

'^iSiven under my hand, at the city of Washington, this
twenty-fifth day of April, in the year of our Lord one thou-
sand eight hundred and twenty-nine, and of the independence
of the United States of America the fifty-third.
[seal.] (Signed,) Andrew Jackson.

" By the President.

(Signed,) M. Van Buren."

'* City of JVashingtonf to wit : —

^< I do hereby certify that the foregoing letters-patent were
delivered to me on the twenty-fifth day of April, in the year
of our Lord one thousand eight hundred and twenty-nine, to
be examined ; that I have examined the same, and find them
conformable to law ; and I do hereby return the same to the
Secretary of State, within fifteen days from the date afore-
said, to wit, on the twenty-fifth day 5>f April in the year
aforesaid.

(Signed,) J. Macpherson Berrien,

Attomey-'General of the United States.^'

382 PATENT C4SES.

Wilson V, Roussean et al. 5 How.

Schedule.

^'The schedule referred to in these letters-patent, and
making part of the same, containing a description, in the
words of the said Uri Emmons himself, of his improvement in
the mode of planing floor-plank, and grooving, and tonguing,
and straightening the edges of the same, planing boards,
straightening and planing square timber, &c., by machinery,
at one operation, called the cylindrical planing machine.

'' The machinery for the improvement consists, —

" 1st. Of a frame of wood or metal.

" 2d. Of the gear and fixtures combined and connected
together for* the above-named operation, the principle of
which consists in running the plank, boards, or timber over,
under, or at the sides of a cylinder of wood or metal, on
which knives are placed, straight or spiral, with their edges
exactly corresponding with each other, having from two to
twelve knives or edges ; also burrs or saws, similar to those
used for cutting teeth in brass wheels, to groove and. tongue
the edge of the boards or plank as they pass through between
rollers, or on a carriage, by the surface of the cylin«
[ * 653 ] der. * The shape, form, and construction of the
above principle may be varied in shape and posi-
tion, dimensions, &c., still the same in substance, — the same
principle producing the same efiect. I have, by experimental
operation, found that the following mode in form is the best :

'' 1st. A frame composed of two pieces of timber, from
twelve to eighteen feet long, about six by ten inches broad,
placed about fifteen inches apart, framed together with four
girths, one at each end, and at equal distances from the cen-
tre, and flush with the under side. This frame is supported
by posts of a proper length, framed into the under side of the
above pieces of timber, and braced so as to be of suflicient
strength, to maintain the operative posts. There is placed a
roller in the centre, of metal or hard wood, across the frame,

PATEJJT CASES. 383

Wilson V. Rousseau et al. 4 How.

the surface of the roller being even with the surface of the
frame ; directly above, and parallel with this roller, is hung
the cylinder, with two or four spiral edges or knives, six to
ten inches diameter, and hung on a cast^steel arbor, resting
in movable boxes attached to the sides of the frame, so as to
set the cylinder up and down from the roller, to give the
thickness of the timber to be planed. On each side of the
cylinder is placed a pair of feeding-rollers, of hard wood or
metal, the under one of each pair being level with the centre
one. Tjie upper ones are hung in boxes, which are pressed
down with springs or weights, so that when the timber comes
between them, they will hug and carry it through. These
rollers are connected and turned by wheels, at a velocity of
about twelve feet surface of the roller per minute. The
cylinder with tWo edges to make about two thousand five
hundred revolutions per minute, cutting five thousand strokes
every twelve feet ; this can be varied according to the number
of edges, power, and velocity of the different parts. The
power is attached to the cylinder by a bolt running on a pul-
ley, on the outward end of the cylinder shaft. Each way
from the feeding rollers is placed rollers about two feet apart
for the timber to rest on while running through. On one side
of the frame is fastened a straight edge, to serve as a guide,
lined with metal ; on the other side, rollers are placed in a
piece of timber, which is pressed up to the plank or board to
keep it close to the guide or straight edge by a spring. The
grooving and tonguing is done by burrs or circular cutters
similar to a saw ; these burrs are hung on perpendicular spin-
dles, the arbors of which rest in boxes attached to the inward
side of the frame, a burr on one side to cut the groove, and
on the other is placed two burrs, just as far apart as the
thickness of the above one, for cutting the groove. At or
near one end of the frame is hung a shaft, with a drum or
roller, from which belts pass over to pulleys on each spindle
of the burrs or circular cutters, which must have about the

384 PATENT CASES,

Wilaon v. Bonsseau et al. 4 How.

same velocity of the cylinder. Theie burrs are placed on
one side of the cylinder, opposite to each other, so
[ * 654 ] * as to cut the tongue to match the groove ; on the *

other side of the cylinder is an arbor parallel with
the cylinder, on which is placed circular cutters for planing
the edges of the board or plank as they pass through. The
cutter on the side next to the guide is stationary on the ar*
bor ; the opposite one is movable in the arbor, but fastened
with screws to set it for different widths. A belt runs from a
pulley on the end of the arbor, outside the frame, to the said
drum, as also the same from the cylinder, each having about
the same motion. The feeding-rollers are put in motion by
a belt from the slow part of the driving power. I have also
put in operation a carriage for feeding, but rollers save the
time of running the carriage back.

'< Now, what I, the said Uri Emmons, consider and claim
as my improvement, and for which I solicit a patent, is as >
follows, namely : —

1st. The principle of planing boards and plank with a ro-
tary motion, with knives or edges on a cylinder, placed on
the same, straight or spiral, as before described, which I put in
operation, at Syracuse, in the county of Onondaga, in the
State of New York, in the early part of the year 1824.

'^ 2d. The burrs for grooving and tonguing, in contradis-
tinction from the mode used by William Woodworth, he using
the duck-bill cutters.

^<3d. The feeding, by running the timber through on a
carriage, or between feeding-rollers, guided by a straight
edge, as before described.

" In testimony that the aforegoing is a true specification of
my said improvement, as before described, I have hereunto
set my hand and seal, the eighth day of April, in the year of
our Lord one thousand eight hundred and twenty-nine.

(Signed,) Ubi Ebimons.

"Witnesses — Thos. Thomas, Silas Hathaway."

PATENT CASES. , 385

Wilflon V. BoQueftu et al. 4 How.

On the 16th of Mayf 1829, the said Emmons sold his en-
tire interest in the last mentioned patent to Daniel H. Too-
'good, Daniel Halstrad, and William Tyack, by the following
instrument :

Deed from Emmons to Toogood, Halateady and Tyack.

" Whereas Uri Emmons, of the State of New York, ma-
chinist, has received letters-patent of the United States of
America, dated April 25th, one thousand eight hundred and
twenty-nine, [for] the full and exclusive right and liberty of
making, constructing, using, and vending to others to be used,
a new and useful improvement in the mode of planing floor-
plank*, and grooving, and tonguing, and straightening the
edges of the same, planing boards, straightening and planing
square timber, &c., by machinery, at one operation, called
the cylindrical planing machine.

* " Now, know all men by these presents, that [ * 655 ]
I, Uri Emmons, of the city of New York, in con-
sideration of five dollars, to me in hand paid by Daniel H.
Toogood, Daniel Halstead, and William Tyack, all of said
city of New York, who fully viewed and considered the said
improvement, and the said patent and specifications therein
contained, have granted, sold, and conveyed, and* by these
presents do grant, sell, and convey, to the said Daniel H.
Toogood, Daniel Halstead, and William Tyack, their heirs,
executors, administrators, and assigns, the full and exclusive
right and liberty derived from the said patent, of making,
using, and vending to others to be made, used, and sold, the
said improvement, within and throughout the United States
of America. To have and to hold and enjoy all the privi-
leges and benefits which may in any way arise from the said
improvement by virtue of said letters-patent. And I do
hereby empower the said Daniel H. Toogood, Daniel Hal-
^ stead, and William Tyack, their heirs, executors, administra-
tors, and assigns, to commence and prosecute to final judg-

voL. II. — p. c. 33

386 PATENT CASES.

Wilfon p. Boufleaii et al. 4 How.

ment and execution, at their own « cost, any suit or suits
agunst any person or persons who shall make, use, or vend
the said impro?ement, contrary to the intent of the said let-*
ters-patent and law in such case made and provided, and to
receive, for their own benefit, the avails thereof, in such man-
ner as I might do.

" In witness whereof, I have hereunto set my hand and
seal, this sizteentli day of May, in the year of our Lord one
thousand eight hundred and twenty-nine.

Ubi "Emmons, [seal.]

<< Witnesses, Thomas Ap Thomas.

Alex. Deddeb."

" CUy and County of New York, as. :

^^ Be it remembered, that on the sixteenth day of May, in
the year of our Lord one thousand eight hundred and twenty-
nine, before me, personally appeared Uri Emmons, known to
me to be the person described in, and who executed the
within deed, and acknowledged that he executed the same
for the purposes therein mentioned ; and there being no ma-
terial alterations, erasures, or interlineations, I allow the same
to be recorded.

Thomas Thomas, Comtmssionery fycJ'

On the 28th of November, 18S9, the following mutual
deed of assignment was executed between Woodworth and
Strong, on the one part, and Toogood, Halstead, Tyack, and
Emmons, on the other part, by which Woodworth and Strong
convey to Toogood, Halstead, and Tyack all their interest in
the pateiit of December 27th, 1828, in the following places,
namely : — In the city and county of Albany, in the State of
New York ; in the State of Maryland, except the western
part which lies west of the Blue Ridge ; in Tennessee,
Alabama, South Carolina, Georgia, the Floridas, Louis-

PATENT CASES. 387

Wilson V. Bofusean «t al. 4 How.

iana, ^ Missouri, and the territory west of the [ * 656 ]
Mississippi; and Toogood, Halstead, Tyack and
'Emmons conveyed to Strong and Woodworth all their inte-
rest in Emmons's patent of 25th April, 1829, for the rest and
residue of the United States; by which mutual deed of as-
signment the parties agreed, that any improvement in the
machinery, or alteration, or renewal of either patent, such
improvement, alteration, or renewal should accrue to the
benefit of the respective parties in interest, and might be ap-
plied and used within their respective districts.

Mutual Deed between Woodworth, Strong, Toogood, HaU

steady Tyack, and Emmons.

** Know all men by these presents, that Wilfiam Wood-
worth, now of the city of New York, the patentee of an im-
proved method of planing, tonguing, grooving, &c., &c.,
plank, boards, &c., by letters-patent from the United States,
dated December 29th, 1828, and James Strong, of the city
of Hudson, in the State of New York, the assignee of one
equal half of the rights and interests secured by the aforesaid
letters-patent, of the one part, and Uri Emmons, of the city
of New York, the patentee of an improvement in the mode
of planing floor-plank, and grooving, tonguing, and straight-
ening the edges of the same, &c., by letters-patent from the
United States, dated April 25th, 1829, and Daniel H. Too-
good, Daniel Halstead, and William Tyack, of the city of
New York, the assignees, by deed dated the 16th d^y of
May, 1829, of all the rights and interest secured by the last
aforesaid patent to said Emmons, of the other part, in con-
sideration of the following covenants and agreements, do
hereby covenant and agree as follows : —

" First. The said Woodworth and Strong, and their as-
signs, have, and hereby do- assign to the said Toogood, Hal-
stead, and Tyack, and their assigns, all their right and interest

388 PATENT CASES.

Wilson V, Rooflseaa et al. 4 How.

in the aforesaid patent to William Woodworth, to be sold and
used, and the plank or other materials prepared thereby to be
vended and used, in the following places, namely : — In the
city and county of Albany, in the State of New York ; in the
State of Maryland, except the western part thereof which
lies west of the Blue Ridge ; in Tennessee, Mississippi, Ala-
bama, South Carolina, Georgia, the Floridas, Louisiana,' and
the territory west of the River Mississippi, and not in any
other State or place within the limits of the United States or
the Territories thereof. To have and to hold the rights and
privileges hereby granted to them and their assigns for and
during the term of fourteen years from the date of the pa-
tent ; and they are also authorized to prosecute, at their own
costs and charges, any violation of the said patent, in the
same manner as the patentee, Woodworth, might lawfully do.
^' Secondly. The said Emmons, Toogood, Halstead,
[*657 ] and Tyack, *in consideration aforesaid, have, and
hereby do covenant and agree to assign, and do
assign, for themselves and assigns, to the said Woodworth
and Strong and their assigns, all their right and interest
in the aforesaid patent granted to the said Uri Emmons, to
be sold and used, and the plank or other material prepared
thereby to be vended and used, in all and singular the rest
and residue of the United States, and the Territories thereof,
that is to say, in all places other than in those especially
assigned to the said Toogood, Halstead, and Tyack, as afore-
said. To have and to hold the said rights and privileges
hereby granted to them and their assigns for and during the
term of fourteen years from the date of the said letters-patent
to the said Uri Emmons; and they are also authorized to
prosecute, at their own costs and charges, any violation of
the said patent, in the same manner as the patentee, Uri Em-
mons, might lawfully do.

'^ Thirdly. And the two parties further agree, that any im-
improvement in the machinery, or alteration, or renewal of

PATENT CASES. 389

Wilson V. Boussean et al. 4 How.

either patent, such alteration, improvement, or renewal shall
accrue to the benefit of the respecti?e parties in interest, and
may be applied and used within their respective districts as
hereinbefore designated.

^* Witness our hands and seals, at the city of New York,
the S8th of November, 1829.

William Woodwobth. [seal.]
James Stbono. [seal.]

William Ttacx. [seal.]

D. H. Toooooo. [seal.]

Daniel Halstead. [seal.]

Uri Emmons. [seal.]

'' Sealed and delivered in presence of
Thomas Ap Thomas,
Witness to the signing of Toogood, Tyack,
Halstead, and Emmons."

Under this mutual assignment, the respective parties and
their assignees would possess the following rights, namely :
if they claimed under Woodworth's patent, to use the same
for fourteen years from the 29th of December, 1828, that is
to say, until the 29th of December, 1842; and if they claimed
under Emmons's patent, to use the same for fourteen years
from the 25th of April, 1829, that is to say, until the 25th of
April, 1843.

On one or the other of these days, therefore, if things had
remained in the same condition, all rights either in the
patentees or their assignees would have ceased, as far as
respected an exclusive use of the thing patented.

In 1836, Congress passed an act from which the following
is an extract, and the construction of which was the chief
controversy. (Act approved 4th July, 1836, ch.
351, 5 LitUe & Brown's ed. 117,*^ 18.) «And[*658]
be it further enacted, that whenever any patentee

33*

390 PATENT CASES.

WiUon V. Rousseau et al. 4 Hov.

of an invention or discovery shall desire an extension of his
patent beyond the term of its limitation, he may make appli-
cation therefor, in writing, to the Commissioner of the Patent
Office, setting forth the grounds thereof; and the commis-
sioner shall, on the applicant's paying the sum of forty dollars
to the credit of the treasury, as in the case of an original ap-
plication for a patent, cause to be published in one or more
of the principal newspapers in the city of Washington, and
in such other paper or papers as he may deem proper, pub-
lished in the section of country most interested adversely to
the extension of the patent, a notice of such application, and
of the time and place when and where the same will be con-
sidered, that any person may appear and show cause why the
extension should not be granted. And the Secretary of
State, the Commissioner of the Patent Office, and the Solici-
tor of the Treasury shall constitute a board to hear and decide
upon the evidence produced before them, both for and against
the extension, and shall sit for that purpose at the time and
place designated in the published notice thereof. The pa-
tentee shall furnish to the said board a statement in writing,
under oath, of the ascertained value of the invention, and of
his receipts and expenditures, sufficiently in detail to exhibit
a true and faithful account of loss and profit, in any manner
accruing to liim, from and by reason of said invention. And
if, upon a hearing of the matter, it shall appear to the full and
entire satisfaction of said board, having due regard to the
public interest therein, that it is just and proper that the term
of the patent should be extended, by. reason of the patentee,
without neglect or fault upon his part, having failed to obtain,
from the use and sale of his invention, a reasonable remunera-
tion for the time, ingenuity, and expense bestowed upon the
same, and the introduction thereof into u de, it shall be the
duty of the commissioner to renew and extend* the patent, by
making a certificate thereon of such extension, for the term

PATENT CASES. 391

Wilson V. BoasMaa et al. 4 How.

of seven yeare^ from and after the expiration of the term ;
which certificate, with a certificate of said board of their
judgment and opinion as aforesaid, shall be entered on record
in -the Patent Office ; and thereupon the said patent shall
have the same effect in law as* though it had been originally
granted *for the term of twenty-one years. And the benefit
of such renewal shall extend to assignees and grantees of the
right to use the thing patented, to the extent of their respective
interest therein. Provided, however, that no extension of a
patent shall be granted after the expiration of the term for
which it was originally issued."

On the 3d of February, 1839, William Woodworth, the
patentee, died; and on the 14th of February, 1839, William
W. Woodworth took out letters of administration upon his
estate, in the county of New York.

In 1842, William W. Woodworth, the adminis-
trator, applied for * an extension of the patent [ * 659 ]
under the above-recited Act of 1836, and on the
16th of November, 1842, the board issued the following
certificate.

'^ In the matter of the application of William W. Wood-
worth, administrator of the estate of William Woodworth,
deceased, in writing to the Commissioner of Patents for the
extension of the patent for a new and useful improvement in
the method of planing, tonguing, and grooving, and cutting
iiito roouldings^or either, plank, boards, or any other mate-
rial, and for reducing the same to an equal width and thick-
ness; and also for facing and dressing brick, and cutting
mouldings on, or facing, metallic, mineral, or other sub-
stances, granted to the said William Woodworth, deceased,
on the 27th day of December, 1828, for fourteen years from
said 27 th day of December.

'^ The applicant having paid into the treasury the sum of

392 PATENT CASES.

Wilson V. Konssean et al. 4 How.

forty dollars, and having furnished to the undersigned a state-
ment in writing, under oath, of the ascertained value of the
invention, and of the receipts and expenditures thereon, suffi-
ciently in detail to exhibit a true and faithful account of loss
and profits in any manner Accruing to said patentee from or
by reason of said invention ; and notice of application having
been given by the Commissioner of Patents, according to law,
said board met at the time and place appointed, namely, at
the Patent Office, on-- the 1st September, 1842, and their
meetings having been continued by regular adjournments
until this 16th day of November, 1842, they, on that day,
heard the evidence produced before them, both for and
against the extension of said patent, and do now certify, that,
upon hearing of the matter, it appears to their fiill and entire
satisfaction, having due regard to the public interest therein,
that it is just and proper that the term of tlie said patent
should be extended, by reason of the patentee, without
neglect on his part, having failed to obtain from the use and
sale of his invention a reasonable remuneration for the time,
ingenuity, and expense bestowed upon the same, and the
introduction thereof into use.

" Washington city, Patent Office, November 16th, 1842.

Daniel Webster,

Secretary of State.

Chas. B. Penrose,

Solicitor of the Treasury.

Henrt L. Ellsworth,

Commissioner of Patents.^^

And on the same day the Commissioner of Patents issued
the following certificate.

" Whereas, upon the petition of William W. Woodworth,
administrator of the estate of William Woodworth, deceased,

PATENT CASES. 393

Wilson V, Eonsseaa et al. 4 How.

for an ^extensioD of the wivhin patent, granted to [ * 660 ]
William Woodworth, deceased, on the 27th day of
December, 1828. The board of Commissioners, under the
eighteenth section of the Act of Congress approved the 4th
day of July, 1836, entitled an Act to promote the progress of
useful arts, to repeal all acts and parts of acts heretofore
inade for that purpose, did, on the 16th day of November,
1842, certify that the said patent ought to be extended.

"Now, therefore, I, Henry L. Ellsworth, Commissioner
of Patents, by virtue of the power vested in me by said
eighteenth section, do renew and extend said patent, and
certify that the same is hereby extended for the term of seven
years from and^fter the expiration of the first term, namely,
the 27th day of December, 1842, which certificate of said
board of commissioners, together with this certificate of the
Commissioner of Patents, having been duly entered of record
in the Patent Office, the said patent i^ow has the same effect
in law as though the term had been originally granted for the
term of twenty-one years.

" In testimony whereof, I have caused the seal of
[seal.] the Patent Office to be hereunto affixed, this 16th
day of November, 1842.

Henrt L. Ellsworth,
Commissioner of Patents"

On the 2d of January, 1843, William W. Wood worth, the
administrator, filed the following disclaimer.

" To all men to whom these presents shall come, I, Wil-
liam W. Woodworth, of Hyde Park, in the county of Duchess
and State of New York, Esq., as I am administrator of the
goods and estate which were of William Woodworth, deceas-
ed, hereinafter named, send greeting :

"Whereas letters-patent, bearing date on the twenty-

394 PATENT CASES.

Wil«on V. Boiusean et aL 4 How.

seventh day of December, in the year of our Lord eighteen
hundred and twenty-eight, were granted by the United States
to William Woodworth, now deceased, for an improvement
in the method of planing, tonguing, grooving, and cutting
into mouldings, or either, boards, plank, or any other mate-
rial, and for reducing the same to an equal width and thick-
ness; and also for facing and dressing brick, and cutting
mouldings on, or facing, metallic, mineral, or other sub*
stances. And whereas, before the term of fourteen yeai^,
for which the said letters-patent were granted, had fully ex-
pired, such proceedings were had that, pursuant to the act
of Congress in such case made and provided, the said letters-
patent were renewed or extended for the term of seven years
from and after the expiration of the said term of fourteen
years, and to the certificate granting the said extension and
renewal unto me in my said capacity, bearing date on the
sixteenth day of November now last past, and which is duly
recorded according to act of Congress in that be-

[*661 ] half, reference is * hereby made, as showing my
title and interest in and to the said letters-patent.
''And whereas the said William Woodworth, through in-
advertence, accident, or mistake in his application for letters-
patent, made his specification of claim too broad, in this,
namely, that he, the said William Woodworth, claimed as his
improved method the application of circular saws for reducing
floor-plank and other material to width, of which he was not
the original and first inventor. And whereas some material
and substantial part of the said patented thing was justly and
truly the invention and improvement of the said William
Woodworth.

'' Now therefore know ye, that I, the said William W. Wood-
worth, in my capacity aforesaid, and as the person to whom
the said certificate was granted as aforesaid, have disclaimed,
and do by these presents, for myself, and for all claiming

PATENT CASES. 895

Wilson V. Bonssean et al. 4 How.

under me, disclaim, all and any exclusive right, tide, pro-
perty, or interest of, in, or to the application of circular saws
for reducing floor-plank or other materials to a width, by rea-
son of the aforesaid letters-patent, and the aforesaid renewal
or extension thereof.

^<In testimony whereof, I have hereto, in my capacity
aforesaid, set my hand and seal, on this second day of
January; in the year eighteen hundred and forty-three.

William W. Woodwobth, r ,

[seal.]

Administrator of W. Woodworthy deceased.
<^ Executed in presence of
Chas. W. Emesn,

B. R. CUETIS."

In March, 1843, Wood worth, the administrator, made an
assignment of his patent-rights in some of the States to James
6. Wilson, the plaintiff. At what time the assignment was
made for New York, the record in that case did not state,
but it was one of the admitted facts that he was the grantee.
The assignment first referred to was recorded in the Patent
Office, in Liber 4, pp. 291, 292, on the 20th of Martch, 1843.

On the 9th of August, 1843, the administrator assigned his
right to Wilson, in and for the State of Maryland.

On the 26th of February, 1845, Congress passed the fol-
lowing act.

^^An Ad to extend a Patent heretofore granted to William

Woodworth.
^' Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled.
That the patent granted to William Woodworth on the
twenty-seventh day of December, in the year one thousand
eight hundred and twenty-eight, for his improvement on the

396 PATENT CASES.

Wibon V. Boosseaa et al. 4 How.

method of planing^ tonguing, grooving, and cutting
[ * 662 ] into mouldings, or eitiier, plank, boards, or * any
other material, and for reducing the same to an equal
width and thickness; and also for facing and dressing brick,
and cutting mouldings on and facing several other substances,
a description of which is given in a schedule annexed to the
letters-patent granted as aforesaid, be, and the same is, hereby
extended for the term of seven years from and after the 27th
day of December in the year one thousand eight hundred and
forty-nine ; and the Commissioner of Patents is hereby di-
rected to make a certificate of such extension in the name
of the administrator of the said William Woodworth, and to
append an authenticated copy thereof to the original letters-
patent, whenever the same shall be requested by the said ad-
ministrator or his assigns.

"Approved February ,26, 1845.

^'A true copy from the roll of this office.

R. K. Crai^le, Chitf Clerk.
" Department of State, March 3, 1B45."

And on the 3d of March, 1845, the following certificate
was issued.

" In conformity, therefore, with the directions in the said
act contained, I, Henry L. Ellsworth, Commissioner of Pa-
tents, do hereby certify, that the patent therein described is,
by the said act, extended to William W. Woodworth, admi-
nistrator of said William Woodworth, for the term of seven
years from and after the twenty-seventh day of December, in
the year one thousand eight hundred and forty-nine ; and
this certificate of such extension is made on the original letters-
patent, on the ^application of William W. Woodworth, the
administrator of the said William Woodworth.

" In testimony whereof, I have caused the seal of the Pa-

PATENT CASES. 397

Wibon V. Rontfean et id. 4 How.

tent Office to be hereunto affixed, this 3d day of March,
1845.
[l. 8.] HcNtir L. Ellsworth,

CommUsi&ner of Patents.^'

On the 8th of July, 1845, a new patent was issued, with
an amended specification as follows : -^-^

" The United States of America to all to whom these letters-
* patent shall come !

"Whereas, William W. Woodworth, administrator of
William Woodworth, deceased, of Hyde Park, N. Y., has
alleged that said William Woodworth invented a new and
useful improvement in machines for planing, tonguing, and
grooving, and dressing boards, <bc., for which letters-pa-
tent were granted, dated the 27th day of December, 1828,
which letters-patent have been extended (as will appear by
the certificates appended thereto, copies of which are hereunto
attached) for fourteen years from the expiration of said let-
ters-patent; and which letters-pafent are hereby
cancelled on ^ account of a defective specification, [ * 663 ]
which he states has not been known or used before
said William Woodworth's, application ; has made oath that
he is, and that said William Woodworth was, a citizen of the
United States ; that he does verily believe that said William
Woodworth was the original and first inventor or discoverer
of the said improvement, and that the same hath not, to the
best of his knowledge and belief, been previously known or
used ; has paid into the treasury of the United States the sum
of fifteen dollars, and presented a petition to the Commis-
sioner of Patents, signifying a desire of obtaining an exclusive
property in the said improvement, and praying that a patent
may be granted for that purpose.

** These are, therefore, to grant, according to law, to the
said William W. Woodworth, in trust for the heirs at 14^ of

VOL. II. — p. c. 34

398 PATENT CASES.

Wilson V. Bonsseaa et al. 4 How.

said W. Woodworthy their heirs, administrators, or assigns,
for the term of twenty-eight years from the twenty-seventh
day of December, one thousand eight hundred and twenty-
eight, the full and exclusive right and liberty of making, con-
structing, using, and vending to others to be used, the said
improvement, a description whereof is given in the words
of the said William W. Woodworth, in the schedule here-
unto annexed, and is made part of these presents.

" In testimony whereof, I have caused these letters to be
made patent, and the seal of the Patent Office has
l^* *'J been hereunto affixed.

*^ Given under my hand, at the city of Washington, this
eighth day of July, in the year of our Lord one thousand
eight hundred and fortyrfive, and of the independence of the
United States of America the seventieth.

James Buchanan,
Secretary of Safe."
^^ Countersigned, and sealed with the seal of the Patent
Office.

Henrt H. Sylvester,
Acting Commissioner qf PatentsJ^

''The schedule referred to in these letters-patent, and mak-
ing part of the same : —

'< To all whom it may concern : — Be it known, that the fol-
lowing is a full, clear, and exact description of the method
of planing, tonguing, and grooving plank or boards, invented
by William Woodworth, deceased, and for which letters-
patent of the United States were granted to him on the 27th
day of December, in the year one thousand eight hundred
and twenty-eight ; the said letters-patent having been surren-
dered for the purpose of describing the same invention, and
pointing out in what it consists, in more clear, full, and exact
terifs than was don6 in the original specification.

PATENT CASES. 399

Wilson V. RoosBean et al. 4 How.

* " Amended Specification. [ ^ 664 ]

'^ The plank or boards which are to be planed, tongued, or
grooved are first to be reduced to a width by means of circu-
lar saws, bj reducing-wheels, or by any other means. When
circular saws are used for this purpose, two such saws should
be placed upon the same shaft, on which they are to be capa*
ble of adjustment, so that they may be made to stand at any
required distance apart ; under these the board or plank is to
be forced forward, and brought to the width required ; this
apparatus and process do not require to be further explained,
they being well understood by mechanicians.

*' When what has be6n above denominated reducing-wheels
are used, these are to consist of revolving cutting-wheels,
which resemble in their construction and action the planing
and reducing-wheel to be presently described ; these are to
be made adjustable like the circular saws, but the latter are
preferred for this purpose. The plank may be reduced to a
width on a separate machine.

'^ When the plank or boards have been thus prepared (on
a separate machine) they may be placed on or against a suit-
able carriage, resting on a frame or platform, so as to be acted
upon by a rotary cutting or planing and reducing-wheel;
which wheel may be made to revolve either horizontally or
vertically, as may be preferred. The carriage which sustains
the plank or board to be operated upon may be moved for-
wards by means of a rack and pinion, by an endless chain or
band, by geared friction-rollers, or by any of the devices well
known to machinists for advancing a carriage or materials to
be acted upon in machines for various purposes. The plank
or board is to be moved on towards the cutting edges of the
cutters or knives, on the planing-cylinder, so that its knives
or cutters, as they revolve, may meet and cut the plank or
board in a direction contrary to that in which it is made to

400 . PATENT CASES.

Wilion V, BoasseMi eC al. 4 How.

advaDce ; the edges of the cutters are, in this method, pre-
vented fr6in coming first into contact with its surface, and
are made to cut upwardly from the reduced part of the plank
towards said surface, by which means their edges are protected
from injury by gritty matter, and the board or plank is more
evenly and better planed than when moved in the reversed
direction.

<< After the board or plank passes the planing-cylinder, and

as soon, or fast, as the planing^cylinder has done its work on

any part of the board or plank, the edges are brought into

contact with two revolving cutter-wheels, one of which wheels

is adapted to the cutting of the groove, and the other to the

cutting of the two rebates that form the tongue. When the

axis of the planing and reducing-wheel stands vertically, the

grooving and tonguing wheels are placed one above

[ * 665 ] the other, with the plank edgewise between * them ;

when the axis of the planing-wheel stands horixon-

tally, these wheels are on the same horizontal plane with each

other, standing on perpendicular spindles.

'< The grooving-wbeel consists of a circular plate fixed on
an axis, and having one, two, three, four, or more cutters,
which are to be screwed, bolted, or otherwise attached to it,
the edges of which cutters project beyond the periphery of
the plate to such distance as is required for the depth of the
groove ; their thickness may be such as is necessary for its
width I they are, of course, ao situated as to cut the groove
in the middle of the edge of the boaKl,vor as nearly so as may
be required. The tonguing-^wheel is similar in form to the
groovipg-wlieel, but it has cutters on each of its sides, or
otherwise, so formed and arranged as to cut the two rebates
which are necessary to the formation of the tongue.

'^ The grooving and tonguing cotters, at the same time and
by the same operation, reduce the board or plank to an exact
width throughout. When the axis of the planing-wheel 19

PATENT CASES. 401

WHson V. Rooflfean et tl. 4 How.

placed vertically, the knives or cutters may be made to plane
two planks at the same time ; the planks being in this case
moved in contrary directions, and so as to meet the edges of
the revolving knives or cutters. When the machine is thus con-
structed, a second pair of grooving and tonguing wheels may be
made to operate in the same way with those above described.
A machine to operate upon a single plank or board, and hav-
ing the axis of the planing-wheel placed horizontally, will
however be more simple and less expensive than that intended
to operate on two planks simultaneously.

'' In the accompanying drawing, fig. 1 is a perspective re-
presentation of the principal operating parts of the machine
when arranged and combined for planing, tonguing, and
grooving ; and when so arranged as to be capable of planing
two planks at the same time, the axis of the planing-wheel
being placed vertically. A A is a stout substantial^ frame of
the machine, which may be of wood or iron, and may be va-
ried in length, size, and strength, according to the work to be
done. B B are the heads of the planing-cylinder, and C C the
knives or cutters, which extend from one to^ the other of said
heads, to the peripheries of which they may be attached by
means of screws. The knives C C, with the faces forming a
planing angle, may be placed in ^ line with the axis, J, of the
cylinder, or they may stand obliquely thereto, as may be pre-
ferred ; but in the latter case the edge should form the seg-
ment or portion of a helix ; b represents a pulley near to the
upper end of the axis J ; and I, a pulley or drum, which may
be made to revolve by horse, steam, or other motive power,
and from which a belt may extend around the pulley 6, to
drive the planing-cylinder and other parts of the machinery ;
G is the carriage, which is represented as being
driven forward by means of a rack ^ and pinion, H ; [ *^ 666 ]
against this carriage, the plank K, which is to be
planed, tongued, and grooved, is placed, and is made to ad-

34 ♦

409 PATENT CASES.

WiUon V, BoiasMA •! al. 4 How.

vance with it. It will be maoifi^st, however, that the plank may
be moved forward by other means, as, for example, by ao
endless chain or band, passing around drums or chain^wheels,
or by means of geared friction-wheels borne up against it
To cause the carriage and plank to move forward readily,
there may be frictioii»roller8,///, placed horizontally, and
extending under them ; the rollers,///, which stand verti-
cally, are to be made to press against the plank and keep U
close to the carriage, and thus prevent the action of the cut-
ters from drawing the plank up from its bed in cutting from
the planed surface upwards ; they may be borne against it by
means of weights or springs, in a manner well known to
machinists. In a single horizontal machine, the horizontal
friction-rollers may be geared, and the pressure-rollers placed
above them to feed the board with or without the carriages,
a bed-plate being used directly under the planing-cyliader*

'^ Fig. 2 is a separate view of the planing-cylinder, with its
knives or cutters ; and fig. 3, an end view of one of the heads.
£ E are the revolving cutters, or tonguing and grooving-
wheels, and D D, whirls upon their shafts, which may be
driven by bands, or otherwise, so as to cause said wheels to
revolve in the proper direction'.

'^ Fig. 4 is a side view of one of these wheels ; fig. 5 is an
edge view of the tonguing- wheel ; and fig. 6, an edge view
of the grooving-wheel ; the latter being each shown with two
cutters in place. The number of cutters on these wheels
may be varied, but they are represented and furnished with
four. The cutters may be fixed on the sides of circular
plates, with their edges projecting beyond the periphery of
said plate.

<* The edges of the plank, as its planed part passes the
planing-cylinder, are brought in contact with the above-de-
scribed tonguing and grooviog-wheels, which are so placed
upon their shafts as that the tongue and groove shall be left
at the proper distance from the face of the plank, the latter

PATENT CASES. 403

Wilson V. Roniseatt ek al. 4 How,

beiDg sustained against the planing^cylinder by means of the
carriage or bed-plate, or otherwise, so that it cannot deviate,
but must be reduced to a proper thickness, and correctly
tODgued and grooved.

*' In fig. 1, above referred to, only one carriage and one
pair of cutter-wheels are shown, it not being deemed neces-
sary to represent those on the opposite side, they being simi-
lar in all respects.

** Fig. 7 represents the same machine, with the axis of the
planing-cylinder placed horisontally, and intended to operate
on one plank only at the same time. A A is the frame ;
B B, the heads of the planing-cylinder ; C C, the knives or
cutters attached to said heads. To meet the differ-
ent thicknesses of the planks *or boards, the bear- [*667 ]
ings of the shaft or cylinder may be made movable,
by screws or other means, to adjust it to the work ; or the
carriage or bed-plate may be made so as to raise the board
or plank up to the planing-cylinder. E and E' are the re-
volving cutters, or tonguing and grooving wheels, which are
placed upon vertical shafts, having upon them pulleys, D D,
around which pass belts or bands fVom the main drum, I, to
which a revolving motion may be given by any adequate mo-
tive power.

'^ From the drum, I, a belt, L, passes also around the pul-
ley, 6, on the shaft of the planing-cylinder, and gives to it the
requisite motion. There may in this machine be a horizontal
carriage moved forward by a rack and pinion, in a manner
analogous to that represented in fig. 1 ; but in the present in-
stance the plank is supposed to be advanced by means of one
or two pairs of friction or feed rollers, shown at/y^; the up-
permost, J^J^f of the pairs of rollers may be held down by
springs, or weighted levers, which it has not been thought
necessary to show in this drawing, as such are in common use.
The lowermost of these rollers may be fluted or made rough on
their surfaces, so as to cause friction on the under side of the

404 PATENT CASES.

Wilton r. BooBsean et al. 4 How.

plaok. M M^ are pulleys on the axles of these lower rollers
which are embraced by bands, N N^ which also pass around a
pulley, O, on a shaft which crosses the frame, A A, and has
a pulley, T, on it, which is embraced by the belt, P, on a pul-
ley, d, on the shaft of the main drum, I ; these bands and
pulleys serve to give motion to the feed-rollers, as will be
readily understood by inspecting the drawing. R R are
guide-strips, used in place of the rollers used for the same
purpose, and also for bearing or friction rollers, when the
machine is vertical, to direct one edge of the plank, and
against its opposite edge ; any pressure may be used equal to
the weight of the board or plank, when worked in a vertical
position. One of the cutter-wheels should be made adjust-
able, to adapt it to stuff of different widths.

'^ The planing-cylinder, and likewise the cutter or tonguing
and grooving wheels, may be constructed in the manner re-
presented in figures 2, 3, 4, 5, and 6, and hereinbefore fully
described. One of the heads of the planing-wheel may be
made movable, to accommodate its width to the width of the
boards or plank to be planed.

i' The respective parts of this machine may be varied in
size, as may also the velocity of the motion of the planing-
cylinders and cutter-wheels ; but the following has been found
to answer well in practice. The planiqg-cylinder, having
four knives or cutters, may be twelve inches in diameter, and
may make two thousand and upwards revolutions in a minute*
In a machine like that shown in fig. 7, the main drum, I, may
be two feet in diameter, and may be driven with the speed of

five hundred, and upwards, revolutions in a minute*
[*668 ] The pulleys on the planing-cylinder, and on *the

cutter-wheels, may be six inches in diameter. The
plank should be moved forward at the rate of about one foot
for every hqndred revolutions of the cutter-wheel ; and, of
course, the diameter of the feed-rollers and of the pulleys by
which they are turned must be so graduated as to produce

PATENT CASES. 405

Wilson V. BooBseau et «1. 4 How.

this result. The size and speed of the above parts of this
machine may be in some degree varied ; but the above have
been found to work well.

'' Having thus fully described the parts and combination of
parts, and operation of the machine for planing, tonguing, and
grooving boards or plank, and shown various modes in which
the same may be constructed and made to operate without
changing the principle or mode of operation of the machine,
what is claimed therein as the invention of William Wood-
worth, deceased, is the employment of rotating planes, substan-
tially such as herein described, in combination with the roll-
ers, or any analogous device, to prevent the boards from being
drawn up by- the planes when cutting upwards, or from the
reduced or planed to the unplaned surface, as described.

<<And also the combination of the rotating planes with the
cutte.r-wheels for tonguing and grooving, for the purpose
of planing, tonguing, and grooving boards, <bc., at one
operation, as described. And also the combination of the

■

tonguing and grooving cutter»wheels for tonguing and groov-
ing boards, and at one operation, as described. *

^'And, finally, the combination of either the tonguing or the
grooving cutter-wheel for tonguing or grooving boards, &c.,
with the pressure-rollers, as described, the effect of the pres-
sure-rollers in these operations being such as to keep the boards,
&c, steady, and prevent the cutters from drawing the boards
towards the centre of the cutter-wheels, whilst it. is moved
through by machinery. In* the planing operation, the tenden-
cy of the plane is to lift the boards directly up against the
rollers ; but in the tonguing and grooving, the tendency is
to overcome the friction occasioned by the pressure of the
rollers. William W. Woodworth,

Admini$tratar of WiUiam Woodworth^ deceased,
" Witnesses,

James Milholland,

Chas. M. Keller."

406 PATENT CASES.

Wilson V. RoaBsean et al. 4 How.

The above (mpe'ra show the title of the administrator^ who
was the grantor of Wilson, the plaintiff in the suit. The
record in the New York case was exceedingly brief, and con-
tained neither the declaration nor pleas, but only the state of
the pleadings and the existence of demurrers. But from the
eighth fact in the statement of facts, in which it is said that
'^ the defendants trace no title to themselves to a right to use
said machines from the assignment made by Wil-
[ ^ 669 ] liam ^ Wood worth and James Strong to Halstead,
Toogood, and Tyack," the inference must be, that
their defence was in showing an outstanding title.

The following is the the entire case presented by the New
York record.

" United States of America^ Northern District qf New

York :

(<At a Circuit Court of the United States, begun and held
at Albany, for the Northern District of New York, on Tues-
day, the twenty-first day of October, in the year of our Lord
one thousand eight hundred and forty-five, and in the seven-
tieth year of American independence.

'^ Present, the Honorable Samuel Nelson and Alfred Conk-
ling, Esquires.

" James iGr. Wilson

Lewis Rousseau and Charles Easton.

'' State of the Headings.

" This is an action on the case to recover damages for the
alleged infringement of letters-patent issued to William Wood-
worth, on the 27th day of December, 1828, for the term of
fourteen years, for an improvement in machinery for planing,

PATENT CASES. 407

Wilson V, Botuseau et al. 4 How.

tODguing, and grooving boards and plank* at one operation ;
which letters-patent were on the 16th day of November, 1842,
extended for seven years more, such extension being granted
to William W. Woodworth, as administrator of said William
Woodworth.

" To the first count of the plaintiff's declaration, the de-
fendants interposed three several special pleas in bar, to each
of which pleas the plaintiff demurred, and the defendants
joined in demurrer. To the second count of the plaintiff's
declaration, the defendants demurred, and the plaintiff joined
in demurrer.

'< The case coming on to be argued at this term, the follow-
ing questions occurred for decisions, to wit : —

^* L Whether the eighteenth section of the Patent Act of
1836, authorized the extension of a patent on the application
of the executor or administrator of a deceased patentee.

^< 2. Whether, by force and operation of the eighteenth
section of the Act of July 4th, 1836, entitled ^' An act to pro-
mote the progress of the useful arts," <bc., the extension
granted to William W. Woodworth, as administrator, on the
16th. day of November, 1842,. inured to the benefit of as-
signees, under the original patent granted to William Wood-
worth, on the 27th day of December, 1828, or whether said
extension inured to the benefit of the administrator only, in
his said capacity.

^' 3. Whether the extensioh specified in the foregoing se-
cond point inured to the benefit of the administra-
tor to whom the same * was granted, and to him in [ * 670 ]
that capacity exclusively ; or whether, as to the ter-
ritory specified in the contract of assignment made by Wil-
liam Woodworth and James Strong to Toogood, Halstead,
and Tyack, on the 28th day of November, 1829, (and set
forth in the second plea of the defendants to the first count
of the declaration,) and by legal operation of the covenants

408 PATENT CASES.

Wilson V, Booflsean et al. 4 How.

contained in said contract, the said extension inured to the
benefit of the said Toogood, Halstead, and Tyack, or their
assigns.

'< 4. Whether the plaintiff, claiming title under the exten-
sion from the administrator, can maintain an action for. an in-
fringement of the patent-right within the territory specified in
the contract of assignment to Toogood, Halstetfd, and Tyack,
against any person not claiming under said assignment ; or
whether the said assignment be of itself a perfect bar to the
plaintiff's suit.

'< 5. Whether the extension specified in the second point
could be applied for and obtained by William W. Woodworth,
as administrator of William Woodworth, deceased, if the
said William Woodworth, the original patentee, had in his
lifetime, disposed of all his interest in the then existing patent,
having, at the time of his death, no right or title to, or inte-
rest in, the said original patent ; or whether such sale carried
with it nothing, beyond the term of said original patent ; and",
if it did not, whether any contingent rights remained in the
patentee or his representatives.

'< 6. Whether the plaintiff, if he be an assignee of an ex-
clusive right to use two of the patented machines within the
town of Watervliet, has such an exclusive right as will enable
him to maintain an action for an infringement of the patent
within said town ; or whether, to maintain such action, the
plaintiff must be possessed, as to that territory, of all the rights
of the original patentee. •

" 7. Whether the letters-patent of renewal issued to Wil-
liam W. Woodworth, as administrator aforesaid, on the 8th
day of July, 1845, upon the amended specification and ex-
planatory drawings then filed, be good and valid in law ; or
whether the same be void, for uncertainty, ambiguity, or mul-
tiplicity of claim, or any other cause.

<< 8. Whether the Court can determine, as matter of law,

PATENT CASES. 409

Wilson V. Roassefta et al. 4 How.

upon an inspection of the said two patents and their respect-
ive specifications, that the said neyr patent of the 8th of July,
1845} is not for the same invention for which the said patent
of 1828 was granted.

<^ 9. Whether the decision of the Board of Commissioners,
who are to determine upon the application for the extension
of a patent, under the eighteenth section of the Act of 1836,
is conclusive upon the question of their jurisdiction to act in
the given case.

<^ 10. Whether the Commissioner of Patents can lawfully
receive a surrender of letters-patent for a defective specifica-
tion, and issue new letters-patent upon an amended specifica-
tion, after the expiration of the term for which the
original patent was granted, and * pending the ex- [ *671 ]
istence of an extended term of seven years; or
whethpr such surrender and renewal may be made at any time
during such extended term.

<^On which questions the opinions of the judges were
opposed. .

" Whereupon, on a rtiotion of the. plaintiff, by William H.
Seward, his counsel, that the points on which the disagree-
ment hath happened may, during the term, be stated under
. the direction of the judges, and certified under the seal of
the Court to the Supreme Court, to be finally decided.

" It is ordered that the foregoing state of the pleadings,
and the following statement of facts, which is made under
the direction of the judges, be*certified, according to the
request of the plaintiff by his counsel, and the law in that
ccise made and provided, to wit : —

^'1. That William Wood worth, as the inventor of a ma-
chine, or improvement in machinery, for planing, tonguing,
and grooving boards and plank at one operation, on the 27th
day of December, in the year 1828, applied to the proper
department of the government for a patent for said invention,

VOL. II. — p. c. 35

PATENT CASES.

Wikon V. BoiuMan et al.

and upon the same day, od filing his specifications and ex-
planatory drawings, and complying with the other l^al pre-
requisites, letters-patent, signed by the President, and under
the seal of the United States, were duly issued to the said
William Woodworth, granUng to him the exclusive right,
throughout the United States, to construct and use, and vend
to others to be used, the machine or improvement patented,
for. and during the term of fourteen years from the said 37lh
day of December, 1838.

" a. That subsequently, to wit, on the 28th day of Novem-
ber, 1839, the said William Woodworth and James Strong,
who had become jointly interested with said Woodworth in
the rights secured by the said letters-patent by contract of
assignment of that date, transferred to Daniel H, Toogood,
Daniel Halstead, and William Tyack all their right and inte-
rest in and to the said patent for certain parts and portions
of the United States in said contract specifically set forth,
including the city and county of Albany, in the State of New
York, which is the domial of the defendants.

" 3. That the habandum in said contract of aqpignment is
in the words following, to wit : —

" < To have and to hold the rights and privileges hereby

d for and during the term of fourteen years from the

f the patent,' ,

id that the third clause in add contract of assignment

lie following words, to wit: —

nd the two parlies further agree, that any improvement
machinery, or alteration or renewal of either patent,

mprovement, alteration, or renewal, shall inure to the

I of the respective parties interested, and may be ap-

ind used within their respective districts, as hereinbe-
Yore designated.'

'2 ] * " 4. That previous to the expiraUon of the four-
teen years' limitation of said patent, William Wood-

PATENT CASES. 411

Wilson V. Boiufleaii et al. 4 How.

worth, the patentee, died, to wit, on the 9th of February,
1839 ; that William W. Woodworth was thereupon duly ap-
pointed, and now is, administrator of the estate of the said
William Woodworth, and that said Woodworth, in his life-
time, had sold all his interest in 4he said original patent.

^' 5. That William W. Woodworth, as administrator afore-
said, on the 16th day of November, 1842, under the eighteenth
section of the Act of Congress of July 4th, 1836, applied to
the board of commissioners created by the said section for an
extension of said patent ; and that, upon complying with the
requisites in said section prescribed, an extension of said pa-
tent was granted by said board to William W. Woodworth,
as administrator of the estate of William Woodworth, on said
16th day of November, 1842, and letters-patent of extension
were on said day duly issued to him^ granting to him in his
aforesaid capacity, the exclusive right to make and use, and
vend to others to be used, the said invention or improvement,
for the term of seven years from and after the term of limit-
ation of said original patent.

''6. That on the 8th day of Jijly, 1845, the said William
W. Woodworth, in his capacity as administrator aforesaid,
and in accordance with the provisions of the thirteenth sec-
tion of the said Act of July 4th, 1836, made a surrender to
the Commissioner of Patents of the letters-patent to him
granted on the 16th day of November, 1842, for an insuffi-
ciency of the specification upon which the said original patent
was issued, and upon filing a corrected and amended specifi-
cation, with explanatory drawings, a copy of which is annexed
hereto and made a part of this statement, the said commis-
sioner, on the said 8th day of July, 1845, issued to the said
William W. Woodworth new letters-patent of said invention
for the unexpired term of the first extension thereof, and of
the extension granted by special Act of Congress on the 26th
day of February, 1845.

412 PATENT CASES.

Wilfon o. BomMwi' et al. 4 How.

<< 7. That the defendanis in this action have erected and
put in operation, in the town of Watervliet, which is within
the county of Albany and State of New York, one or more
machines for planing, tonguing, and grooving boards and
plank, substantially the same in principle and mode of opera-
tion as that the subject of the patent granted to William
Wood worth.

'< 8. That the defendants trace no title to themselves to a
right to use said machines from the assignment made by
William Woodworth and James Strong to Halstead, Too-
good, and Tyack. *

<< 9. That the plaintiff in this action is the grantee of Wil-
liam W. Woodworth, as administrator, of the exclusive right
to construct and use, and vend to others to be used, two of
s&id patented machines within the said town of Watervliet,
in said county of Albany and State of New York."

[*673] . *The case was argued by Mr. Seward^ Mr.
Latrohe, and Mr, Webster^ (the two latter dividing
the points,) on behalf of the plaintiff, and Mr. Stevens, for
the defendants. The reporter has been kindly furnished
with the arguments of these gentlemen, but his limits will not
permit their publication in extenso, and he is unwilling to
take^the responsibility of condensing them.

. Mr. Justice Nelson delivered the opinion of the Court.

The questions in this case come before us on a certificate
of 'division of opinion from the Circuit Court of the United
States for the Northern District of New York, involving the
construction of various provisions of the act of Congress to
promote the progress of useful arts, commonly called the
Patent Act. We shall examine the questions in the order in
which they appear on the record. The first is as follows : —

] . Whether the eighteenth section of the Act of 1836 au-

PATENT CASES. 413

Wilson V. Boussean et al. 4 How.

thorized the extension of a patent on the application of the
executor or administrator of a deceased patentee.

The eighteenth section provides, in substance, that when-
ever any patentee of an invention or discovery ^hall desire an
extension of his patent beyond the term of its limitation, he
may make application therefor, in writing, to the Commis-
sioner of the Patent Office, setting forth the grounds thereof.
That the Secretary of State, the Commissioner of the Patent
Office, and the Solicitor of the Treasury shall constitute a
board to hear and decide upon the application ; the patentee
shall furnish to the board a statement in writing, under oath,
of the value and usefulness of the invention, and of his re-
ceipts and expenditures, sufficiently in detail to exhibit a true
and faithful account of loss and profit in any manner accru-
ing to him from and by reason of the invention ; and if, upon
a hearing of the matter, it shall appear to the satisfaction of
the board, having a due regard to the public interest, that it is
just and proper that the term of the patent should be ex-
tended, by reason of the patentee, without neglect or fault on
his part, having failed to obtain, from the use and sale of his
invention, a reasonable remuneration for the time, ingenuity,
and expense bestowed upon the same, and the introduction
thereof into use, it shall be the duty of the commissioner to
renew and extend the patent, by making a certificate thereon
of such extension for the term of seven years from and after
the expiration of the first term, &.c. ^

This is the substance of the section, so far as is material to
the consideration of the question ; and it will be seen, that,
according to the words of the provision, the application is to
be made by, and the new term to be granted to, the patentee
himself, and hence the objection on account of its having
been granted to the administrator.

The main argument relied on to support the objection is,
that the patentee had no interest or right of property in the

35*

414 PATENT CASES.

WikoB V. BooMeau ei al. 4 How.

[ * 674 ] extended term at * the time of his death. That
all he had was a mere possibility, too remote and
contingeDt to be regarded as property, or any right of pro-
perty, in the sense of the law, and therefore not assets or
rights in the hands of the administrator which would author-
ize an application within the n^eaning of the statute.

At common law, the better opinion, probably, is, that the
right of property of the inventor to his invention or discovery .
passed from him as soon as it went into public use with his
consent ; it was then regarded as having been dedicated to
the public, as common property, and subject to the coaimon
use and enjoyment of all.

The act of Congress for the encouragement of inventors,
and to promote the progress of the useful arts, and for the
purpose of remedying the imperfect protection, or rather
want of protection, of this species of property, has secured to
him, for a limited term, the full and exclusive enjoyment of
his discovery.

The law has thus impressed upon it all the qualities and
characteristics of property, for the specj/ied period ; and has
enabled him to hold and deal with it the same as in case of
any other description of property belonging to him, and on
his death it passes, with the rest of his personal estate, to his
legal representatives, and becomes part of the assets.

Congress have not only« secured to the inventor this abso-
lute and indefeasible interest and property in the subject of
the invention for the fourteen years, but have also agreed,
that upon certain conditions occurring and to be shown, be-
fore the expiration of this period, to the satisfaction of a
board of commissioners, an indifferent tribunal designated
for the purpose, this right of property in the invention shall
be continued for the further term of seven years. Subject to
this condition, the right of property in the second term is as
perfect, to the extent of the intent, as the right pi property in
the first.

PATENT CASES. 415

Wilson V. Boosseaii et aL 4 How.

The circumstances upon which the condition rests, and the
occurrence of which gives effect and operation to the further
grant of the government, are by no means uncommon, or
difficult to be shown. They have -often happened to in-
ventors in the course of their dealings with this species of
property. The act of Cong^ss contemplates their occur-
rence again, and has therefore provided further security and
> protection, by enlarging the interest and right of property in
the subject of their invention.

The provision is founded upon the policy of the govern-
ment to encourage genius, and promote the progress of the
useful arts, by holding out an additional inducement to the
enjoyment of the right secured under the first term ; and as
an act of justice to the inventors for the time, ingenuity, and
expense bestowed in bringing out the discovery, frequently of
incalculable value, to the business interests of 'the country.
And it is apparent, therefore, unless the executor or adminis-
trator is permitted to take the place of the patentee
in case * of his death, and make application for the [ * 675 ]
grant of the second ^erm, which continues the ex-
clusive enjoyment of the right of property in the invention, the
object of the statute will be defeated, and a valuable right
of property, intended to be secured, lost to his estate.

The statute is not founded upon the idea of conferring a
mere personal reward and gratuity upon the individual, as a
mark of distinction for a great public service, which would
terminate with his death ; but of awarding to hioi an enlarged
interest and right of property in the invention itself, with a
view to secure to him, with greater certainty, a fair and rea-
sonable remuneration. And to the extent of this further
right of property, thus secured, whatever that may be, it is
of the same description and character as that held and en-
joyed under the patent for the first term. In its nature,
therefore, it continues, and is to be dealt with, after the de-

416 PATENT CASES.

Wilson V. Rousseaa et al. 4 How.

cease of the patentee, the same as an interest under the first,
and passes, with other rights of property belonging to him, to
the persona] representatives, as part of the effects of the
estate.

It would seem, therefore, from the nature of this interest in
an extended term itself, as well as from a consideration of t.he
object and purpose of the statute, plainly expressed upon its
face, in providing for the prolonged enjoyment and protection
of this species of property, that the board of commissioners
were well warranted in making the renewed graiit to the ad-
ministrator, upon his complying with the conditions.

An argument has been urged against this conclusion,
grounded upon the tenth and thirteenth sections of the Pa-
tent Law. The former provides in express terms for the
issuing of a patent to the executor or administrator, in case
of the death of the inventor before it is taken out ; and the
latter, for the surrender of a patent defective by reason of an
insufficient description, and the reissuing of a new one.
These are supposed to be analogous cases, and manifest the
sense of Congress, that, without the express provisions of
law, the patent in the one case, and the surrender in the
other, could not be issued to, or be made by, the legal repre-
sentative. The argument is no doubt a proper one, and en-
titled to consideration ; but is not necessarily conclusive.

As it respects the provision for a surrender by the executor
or administrator, which is most analogous to the question in
hand, we think there could be no great doubt that the right
would exist in the absence of any such express authority,
regard being had to the nature of the property, and the rights
and duties of the legal representative, within the spirit and
object of the Patent Law. It would be the surrender of a
patent, the legal interest and property in which had become
vested in him as part of the assets, which he was bound to
take care of, and protect against waste ; a step necessary to

PATENT CASES. 417

WiUon V. Roiuflean et «1. 4 How.

perfect the title and give' value to the property

* would seem to be not only directly within the [ * 676 ]

line of hia duty, but in furtherance of the chief

object of the law, namely, to secure remuneration to the

meritorious inventor.

It has also been argued, that the executor or administrator
could not comply with the terms and conditions of the
eighteenth section, upon which the right of property in the
extended term is made to depend. In other words, that he
would be unable to furnish to the board of commissioners a
statement under oath of the usefulness of the invention, and
of the receipts and expenditures of the patentee, exhibiting a
true and faithful account of the loss and profit in any manner
accruing from, and by reason of, the invention. This argu-
ment assumes as a matter of fact that which may well be
denied. Suppose the dealings of the patentee in the subject
of his discovery have been carried on through the instrument-
ality of agents or clerks, or, if not, that the patentee himself,
as business men usually do, has kept an accurate account of
his receipts and expenditures, all. difficulty at once disap-
pears. The account-books of a deceased party, in many
of the States of the Union, identified, and the handwriting
proved, are received as legal evidence of the demand in
the courts of justice, and afibrd full authority, upon legal
principles, for the admission of the books before the board, in
support of the application. We perceive no great difficulty
in a substantial compliance with the terms of the section, on
the part of the executor or administrator.

The second question is, Whether, by force and operation
of the eighteenth section already referred to, the extension
granted to W. W. Woodworth, as administrator, on the 16th
day of November, 1842, inured to the benefit of assignees
under the original patent granted to William Woodworth, on
the 27th day of December, 1828, or whether said extension

PATENT CASES.

Wilion B. Rontiean «t »1. 4 Hon.

inured to the. benefit of the administrator only, in his said
capacity.

The most of this section has already been recited in the
consideration of the first question, and it will be unnecessary
to repeat it. It provides for the application of the patentee
to the commission for an extension of the patent for seven
years ; constitutes a board to hear and decide upon the appli-
cation ; and if his receipts and expenditures, showing the loss
and profits accruing to him from and on account of his in-
vention, shall establish, to the satishction of the board, that
the patent should be extended by reason of the patentee,
without any fault on his part, having failed to obtain from the
use and sale of his invention a reasonable remuneration for
his time, ingenuity, and expense bestowed upon the same,
and the introduction of it into use, it shall he the duty of the
commissioners to extend the same by making a certificate
thereon of such extension for the term of seven years from
and after the first term ; " and thereupon the said patent shall
have the same effect in Uw as though it had been originaUy
granted for the term of twenty-one years." And
[ * 677 ] * then comes the clause in question : — "And the
beneJU of suck reneiDol ahall extend to assignees
and grantees of the right to use the thing patetUed, to the
extent of their respedive interests therein."

The answer to the second question certified depends upon
the true construction of the abo^e clause respecting the rights
of assignees and grantees. -

ious and conflicting interpretations have been given to
he learned counsel, on the argument, leading to difier-
id opposite results, which it will be necessary to
lie-
one side, it has been strongly argued, that the legal
ion and effect of the clause save and protect all the
and interests of assignees and grantees in the patent

PATENT CASES. 419

Wilson v. Botusean et al. 4 Hov.

existing at the time of the extension ; and thus secure and
continue the exclusive use and enjoyment of these rights and
interests for the seven years, to the same extent, and in as
ample a manner, as held and enjoyed under the first term.
That if A holds an assignment of a moiety of the patent, he
will hold the same for the new term of seven years ; if of the
whole patent, then the whole interest for that period. And
that as soon as the new grant is made to the patentee, the
interest therein passes, by operation of this clause, to the
assignees of the old term, in proportion to their respective
shares.

On the other side, it has been argued, with equal earnest-
ness, that, according to the true construction and legal effect
of the clause, protection is given, and intended to be given,

only to the rights and interests of assignees and grantees ac-

■

quired and held by assignments and grants from the patentee
in and under the second or new term ; and that it does not
refer to, or embrace, or in any way affect the rights and inte-
rests of assignees or graptees holding under the old.

In connection with this view, it is said that the rights thus
protected in the new term may be acquired by means 'of the
legal operation of (he clause, either from a direct assignment
or grant after the extension of the patent, or by an appropri-
ate provision for that purpose, looking to an extension, con-
tained in the assignment or grant under the old.

It is not to be denied, but that, upon any view that has
been taken or that may be taken of the clause, its true mean-
ing and legal effect cannot be asserted with entire confidence ;
and, after all, must depend upon such construction as the
Court can best give to doubtful phraseology and obscure
legislation, having a due regard to the great object and intent
of Congress, as collected from the context and general pro-
visions and policy of the Patent Law.

The rule is familiar and well settled, that, in case of obscure

420 PATENT CASES.

Wilson V. Ronsseao et al. 4 How.

and doubtful words of phraseology, the intention of the law-
makers is to be resorted to, if discoverable from the context,
in order to fix and control their meaning so as to reconcile it,

if possible, with the general policy of the law.
[*678] •Now, the serious difficulty in the way, and

which renders the first interpretation inadmissible,
except upon the most explicit and positive words, is, that it
subverts at once the whole object and purpose of the enact-
ment, as is plainly written in every line of the previous part
of the section. It gives to the assignees and grantees of the
patent, as far as assigned under the old term, the exclusive
right and enjoyment of the invention — the monopoly — in
the extended term for the seven years ; when, by the same
provision, it clearly appears that it was intended to be secured
to the patentee as an additional remuneration for his time,
ingenuity, and expense in bringing out the discovery, and in
introducing it into public use. It gives this remuneration to
parties that have no peculiar claims upon the government or
the public, and takes it from those who confessedly have.

The whole structure of the eighteenth section turns upon
the idea of aflfording this additional protection and compensa-
tion to the patentee, and to the patentee' alone, and hence
the reason for instituting the inquiry before the grant of the
extension, to ascertain whether or not he has failed to realize
a reasonable remuneration from the sale and use of the dis-
covery,— the production of an account of profit and loss to
enable the board to determine the question ; and as it comes
to the one or the other conclusion, to grant the extended
term or not.

It is obvious, therefore, that Congress had not. at all in
view protection to assignees. That their condition on ac-
count of dealing in the subject of the invention, whether suc-
cessful or otherwise, was not in the mind of that body, nor
can any good reason be given why it should have been.

PATENT CASES. 421

Wilson V. Bonssean et al. 4 How.

They had purchased portions of the interest in the inven-
tion, and dealt with the patent-rights as a matter of business
and speculation ; and stood in no different relation to the
government or the public, than other citizens engaged in the
common affairs of life.

Nothing short of the most fixed and positive terms of a
statute could justify an interpretation so repugnant to the
whole scope and policy of it, and to wise and judicious
legislation.

We think this construction not necessarily required by the
language of the clause, and is altogether inadmissible.

Then as to the second interpretation, namely, that the
clause refers to, and includes, assignees and grantees of inte-
rests acquired in the new term, either by an assignment or
grant from the patentee after the extension, or by virtue of
a proper clause for that purpose, in the assignment under the
old term.

The difficulty attending this construction lies in the use-
lessness of the clause upon the hypothesis, — the failure to
discover any subject-matter upon which to give reasonable
operation and effect to it, — and hence, to adopt
the construction is to make the clause * virtually a [ * 679 ]
dead letter, the grounds for which conclusion we
will proceed to state. ^

The eleventh section of the Patent Act provides, that every
patent shall be assignable, in law, either as to the whole inte-
rest, or any undivided part thereof, by an instrument in wri-
ting ; which assignment, and also every grant and conveyance
of the exclusive right under any patent, &c., shall be recorded
in the Patent Office. And the fourteenth section authorizes
suits to be brought in the name of the assignee or grantee,
for an infringement of his rights, in a court of law.

One object of these provisions found in the general patent
system is to separate the interest of the assignee and grantee

VOL. II. — p. c. 36

PATENT CASES.

WiUon s. Bonuean et ■!.

from that which may be held by the patentee, and to make
each fractioaal ioterest held tinder the patent distinct and
separate ; in other words, to change a mere equitable into a
legal title and interest, so that it may be dealt with in a court
of law.

Now, in view of these provisions, it is difficult to perceive
the materiality of the clause in question, as it respects the
rights of assignees and grantees held by an assignment or
grant in and under the new term, any more than in respect
to like rights and interests in and under the old.

The eleventh and fourteenth sections embrace every as-
signment or grant of a part or the whole of the interest in tlie
invention, and enable these parties to deal with it, in all re-
spects, the same as the patentee. They stand upon the same
footing, under the new term, as in the case of former assign-
ments under the old. Nothing can be clearer. It is impos-
sible to satisfy the clause by referring it to these assignments
and grants ; or to see how Congress could, for a moment,
have imagined that there would be any necessity for the
clause, in this aspect of it. It would have been as clear a
work of supererc^tion as can be stated.

The only color for the argument in favor of the necessity
of this clause, in the aspect in which we are viewing it, is as
respects the contingent interest in the new term, derived ffcmi
a provision in an assignment under the old one, looking to
the extension. As the right necessarily rested on contract,
at least till the contingency occurred, there may be some
doubt whether, even after its occurrence, the elerenlh and
. fourteenth sections had the effect to change it into a vested
J interest, so that it could be dealt with at law; and that
sw assignment or grant from the patentee would be re-
ed, which could be enforced only in a court of equity,
this extent there may be some color for the argument, —
e supposed matter to give operation and effect to the

PATENT CASES. 423

Wilson V. Ronsseao et al. 4 How.

But what is the amount of it ? Not that the clause creates
or secures this contingent interest in the new term, for tha
depends upon the contract between the parties, and the con-
tract alone, and which, even if the general provi-
sions of the law respecting * the rights of assignees [ * 680 ]
and grantees could not have the efiect to change
into a legal right, might be enforced in a court of equity.

The only eflfect, therefore, of the provision in respect to
assignees and grantees of this description would be, to change
the nature of the contingent interest after the event happened^
from a right resting in contract to a vested legal interest ; or,
to speak with more precision, to remove a doubt about the
nature of the interest Jn the new term, after the happening
of a certain contingency, which event in itself was quite re-
mote. This seems to be the whole amount of the eifect that
even ingenious and able counsel have succeeded in finding,
to satisfy the clause. It presupposes that Congress looked to
this scintilla of interest in the new term, which might or might
not occur, and cast about to provide for it, for fear of doubts
as to its true nature and legal character, and the effect of the
general system upon it.

We cannot but think a Court should hesitate before giving
a construction to the clause so deeply harsh and unjust in its
consequences, both as it respects the public and individual
rights and interests, upon so narrow a foundation.

But there are other difficulties in the way of this construc-
tion.

The eleventh section, regulating the rights of assignees and
grantees, provides, '* that every patent shall be assignable at
law," &c., ^^ which assignment, and also every grant and con-
veyance of the exclusive right under any patent to make and
use, and to grant to others to make and use, the thing pa-
tented within and throughout any specified part or portion of
the United States," &c., '^ shall be recorded."

424 PATENT CASES.

WilBoa V, Ronsseaa et al. 4 How.

Now it will be apparent, we think, from a very slight ex-
amination of the clause in question, that it does not embrace
assignees or grantees, in the sense of the eleventh section, at
all; nor in the sense in which they are referred to when
speaking of these interests generally under the Patent Law,
without interpolating words or giving a very forced construc-
tion to those composing it

The clause is as follows : — " And the benefit of such re-
newal shall extend to assignees and grantees of the right to
use the thing patented, to the extent of their respective in-
terests therein."

It will be seen that the word ^^ exclusive," used to qualify
the right of a grantee in the eleventh section, and, indeed,
always when referred to in the Patent Law (^ 14) and also the
words '^ to make," " and to grant to others to make and use,"
are dropped, so that there is not only no exclusive right in
the grantee, in terms, granted or secured by the clause, but
no right at all, — no right whatever, — to make or to grant to
others to make and use the thing patented ; in other words,
no exclusive right to make or vend. And it is, we think,
quite obvious, from the connection and phraseology, that as-
signees and grantees are placed, and were intended to be
placed, in this respect, upon the same footing. ^ We
[ *681 ] should scarcely be * justified in giving to this term
a more enlarged meaning as to the right to make
and sell, as it respects the one class, than is given to the
others, as they are always used as correlative in the Patent
Laws, to the extent of the interests held by them. The
clause, therefore, in terms, seems to limit studiously the bene-
fit, or reservation, or whatever it may be called, under or from
the new grant to the naked right to use the thing patented ;
not an exclusive right even for that, which might denote mo-
nopoly, nor any right at all, much less exclusive, to make and
vend. That seems to have been guardedly omitted. We

PATENT CASES. 425

Wilson V. Boasseaa et al. 4 How.

do not forget the remaining part of the sentence, ^^ to the ex-
tent of their respective interest therein/' which is relied on to
help out the difficulty. But we see nothing in the phrase, giving
full effect to it, necessarily inconsistent with the plain mean-
ing of the previous words. The exact idea intended to be
expressed may be open to observation ; but we think it far
from justifying the Court in holding, that the grant or reser-
vation of a right to use a thing patented, well known and in
general use at the time, means an exclusive right to make
and use it ; and not only this but an exclusive right to grant
to others the right to make and use it, meaning an exclusive
right to vend it.

The Court is asked to build up a complete monopoly in
the hands of the assignees and grantees in the thing patented,
by judical construction, founded upon the grant of a simple
right to use it to the extent of the interest possessed ; for
the argument comes to this complexion. A simple right to
use is given, and we are asked to read it an exclusive right,
and not only to read it an exclusive right to use, but an exclu-
sive right to make andvend, the patented article.

Recurring to the Patent Law, it will be seen that Congress,
in granting monopolies of this description, have deemed it
necessary to use very different language. The grant in the
patent must be in express terms, for ^' the full and exclusive
right and liberty of making, using, and vending,'! in order to
confer exclusive privileges. The same language is also used
in the act when speaking of portions of the monopoly in the
hands of assignees and grantees. (^^ 11, 14.)

We cannot but think, therefore, if Congress had intended
to confer a monopoly in the patented article upon the as-
signees and grantees by the clause in question, the usual for-
mula in all such grants would have been observed, and that
we should be defeating their understanding and intent, as well
as doing violence to the language, to sanction or uphold rights

36*

PATENT CASES.

WUfoa v. Boowean «t at 4 Htnr.

and privilegea of such magnilode by the mere (one of judicial
construction. •

We conclude, therefore, that the clause has no reference to
the rights or interest of aasigoeea and granteea under the new
and extended term, — ■

I. Because, in that view, giving to the words the
[ * 682 ) widest * construction, there is nothing to satisfy the
clause, or upon which any substantial effect and
operation can be given to it; it becomes virtually a dead let-
ter, and work of legislative superfluity ; and

2. Because the clause in question, upon a true and reason-
able interpretation, does not operate to vest the assignees and
grantees named therein with any exclusive privileges whatever,
in the extended term, and therefore cannot be constnted
as relating to or embracing such interests in the sense of the
law.

The extension of the patent under the eighteenth section
is a new grant of the exclusive right or monopoly in the sub-
ject of the invention for the seven years. All the rights of
assignees or grantees, whether in a share of the patent, or to
a specified portion of tbe territory held onder it, terminate at
the end of the fourteen years, and become reinvested in the
patentee by the new grant.

From that date he is again poaaessed of " tbe full and ex-
elusive right and liberty of making, using, and vending to
lers the invention," whatever it may be. Not only portions
the monthly held by assignees and granteea as subjects of
de and commerce, but the patented articles or machines
oughout the country, purchased for practical use in the
lioess afiairs of life, are embraced within the operation of
I exiension. This latter class of assignees and grantees are
iched by the new grant of the exclusive right to use the
ng patented. Purchasers of the machines, who were in
I use of them at the time, are disabled from farther use

PATENT CASES. 427

Wilson V. RoTUseaa et al. 4 How.

—^ — _^ 1 I ' .11 ■ ■ ■ ■ .

iromed lately 9 as that right became vested exclusively in the
patentee. Making and vending the invention are prohibited
by the corresponding terms of this grant.

Now, if we read the clause in question with reference to
this state of things, we think that much of the difficulty at-
tending it will disappear. By the previous part of the section,
the patentee would become reinvested with the exclusive right
to make, use, and vend the thing piltented ; and the clause in
question follows, and was so intended as a qualification. To
what extent, is the question. The language is, << And the
benefit of such renewal shall extend to assignees and grantees
of the right to use the thing patented, to the extent of their
respective interests therein ; " naturally, we think, pointing to
those who were in the use of the patended article at the time
of the renewal, and intended to restore or save to them that
right which, without the clause, would have been vested again
exclusively in the patentee. The previous part of the section
operating in terms to vest him with the exclusive right to use,
as well as to make and vend, there is nothing very remarkable
in the words, the legislature intending thereby to qualify the
right in respect to a certain class only, leaving the right as to
all others in the patentee, in speaking of the benefit of the
renewal extending to this class. The renewal vested him
with the whole right to use, and therefore there is no great
impropriety of language, if intended, to protect this
* class, by giving them in terms. the benefit of the [ *683l]
renewal. Against <this view it may 'be said that
^< the thing patented " means the invention or discovery, as
held in McClurg v. Kingsland, 1 How. 203, and that the
right to use the ^' thing patented'^ is what, in terms, is pro-
vided for in the clause. That is admitted, but the words, as
used in the connection here found, with the right simply to
use the thing patented, not the exclusive right, which would
be a monopoly, necessarily refer to the patented machine and

428 'PATENT CASES.

Wilson V. Bonssean et al. 4 How.

not to the invention ; and, indeed, it is in that sense that the
expression is to be understood generally throughout the Pa-
tent Law, when taken in connection with the right to use, in
contradistinction to the right to make and sell.

The 'Mhing patented" is the invention; so the machine
is the thing patented, and to use the machine is to use the
invention, because it is the thing invented and in respect to
which the exclusive right is secured, as is also held in McClurg
V. Kingsland. The patented machine is frequently used as
equivalent for the '^ thing patented," as well as for the inven-
tion or discovery, and no doubt, when found in connection
with the exclusive right to make and vend, always means the
right of property in the invention, the monopoly. But when
in connection with the simple right to use, the exclusive right
to make and vend being in ano^ther, the right to use the thing
patended necessarily results in a right to use the machine,
and nothing more. Then, as to the phrase " to the extent of
their respective interests therein," that obviously enough refers
to their interests in the thing patented, and in connection with
the right simply to use, means their interests in the patented
machines, be that interest in one or more at the time of the
extension.

This view of the clause, which brings it down in practical
effect and operation to the persons in the use of the patented
machine or machines at the time of the new grant, is strength-
ened by the clause immediately following, which is, ^^ that
no extension of the patent shall be granted after the expire*
tion of the term for which it was originally issued." What
is the object of this provision ? Obviously, to guard against the
injustice which might otherwise occur to a person who had
gone to the expense of procuring the patented article, or
changed his business upon the faith of using or dealing with
it, after the monopoly had expired, which would be arrested
by the operation of the new grant. To avoid this consequence.

PATENT CASES. 429

Wilson o. BoQBseaa et al. 4 How.

it is provided that the extension must take place before the
expiration of the patent, if at alL Now, it ivould be somewhat
remarkable if Congress should have been thus careful of a
class of persons who had merely gone to the expense of provide
ing themselves with the patented article for use or as a matter
of trade, after the monopoly had ceased, and would be disap^
pointed and exposed to loss if it was again renewed, and at
the same time had overlooked the class who in addi-
tion to this expense and change of business * had [ * 684 ]
bought the right from the patentee, and were in the
use and enjoyment of the machine, or whatever it might be,
at the time of the renewal. These provisions are in juxta-
position, and we think are but parts of the same policy, look-
ing to the protection of individual citizens from any special
wrong and injustice on account of the operation of the new
grant.

The consequences of any different construction than the
one proposed to be given are always to be regarded by Courts,
when dealing with a statute of doubtful meaning. For be-
tween two different interpretations, resting upon judicial ex-
positions of ambiguous and involved phraseology, that which
will result in what may be regarded as coming nearest to the
intention of the legislature should be preferred.

We must remember, too, that we are not dealing with the
decision of the particular case before us, though that is in-
volved in the inquiry ; but with a general system of great
practical interest to the country ; and it is the effect of our
decision upon the operation of the system that gives to it its
chief importance.

The eighteenth section authorizes the renewal of patents in
all cases where the board of commissioners is satisfied of the
usefulness of the invention, and of the inadequacy of remune-
ration to the patentee. Inventions of merit only are the sub-
ject of the new grant ; such as have had the public confi-

430 PATENT CASES.

Wilson V. Ronsseaa et al. 4 How.

dence^ and which it may be presumed to have entered largely,
in one way and another, into the business affairs of life.

By the report of the Commissioner of Patents it appears,
that five hundred and two patents were issued in the year
1844, — for the last fourteen years, the average issue yearly
exceeded this number, — and embrace articles to be found in
common use in every department of labor or art, on the farm,
in the workshop, and factory. These articles have been pur*
chased from the patentee, and have gone into common use.
But, if the construction against which we have been contend-
ing should prevail, the moment the patent of either article is
renewed, the common use is arrested, by the exclusive grant
to the patentee. It is true the owner may repurchase the right
to use, and doubtless would be compelled from necessity ; but
he is left to the discretion or caprice of the patentee. A con-
struction leading to such consequences, and fraught with such
unmixed evil, we must be satisfied, was never contemplated
by Congress, and should not be adopted unless compelled by
the most express and positive language of the statute.

The third question certified is, whether the extension of
the patent granted to W. W. Woodworth, as administrator,
on the 16th of November, 1842^ inured to the benefit of the
administrator exclusively, or whether, as to certain territory
specified in the contract of a98ignment made by W. Wood-
worth and James Strong to Toogood, Halstead, and
[ * 685 ] Tyack, on the 28th of November, 1829, and * by
legal operation of the covenants contained in said
contract, the said extension inured to the benefit of said Too-
good, Halstead, and Tyack, or their assigns?

William Woodworth was the original patentee, and took
out letters-patent on the 27th of December, 1828; and soon
after conveyed a moiety of the same to James Strong. One
Uri Emmons also obtained a patent for a similar machine on
the 25th of April, 1829, and soon after conveyed all his inte-

PATENT CASES. 431

Wilson V. BoQSsean et al. 4 How.

rest in the same to Toogood, Halstead, and Tyack. * With a
view to avoid litigation, both parties mutually assigned to
each other their interests in the respective patents to difierent
and separate portions of the United States ; and in the assign-
ment from Woodworth and Strong to Toogood, Halstead,
and Tyack, the following covenant was entered into by the
parties. <^And the two parties further agree, that any im-
provement in the machinery, or alteration, or renewal of either
patent, such improvement, alteration, or renewal shall inure to
the benefit of the respective parties interested, and may be
applied and used within their respective districts, as herein
before designated.''

At the time this covenant was entered into, there was no
provision in the Patent Laws authorizing an extension or re-
newal of the same beyond the original term of fourteen years.
The first act providing for it was passed in July, 1832.
Before this time, the only mode of prolonging the term be-
yond the original grant was by means of private Acts of Con-
gress upon individual applications.

A construction had been given by the Circuit Court of the
United States, in New York, as early as 1824, by which the
patentee, on surrendering his patent on account of a defec-
tive specification, would be entitled to take out a new patent
correcting the defect, which construction was afterwards up-
held by this Court in Grant v. Raymond, 6 Peters, 218, and
the principle since ingrafted into the Patent Law by the Act
of 1832.

The Court is of the opinion, that the covenant in question
should be construed as having been entered into by the par-
ties, with a reference to the known and existing rights and
privileges secured to patentees under the general system of
the government established for that purpose ; that the parties
would naturally look to the established system of law on the
subject of arranging their several rights and obligations, in

432 PATENT CASES.

Wlbon r. Bowmau et aL 4 Hbv.

with property of this detcriptioD, rather than to any
possible change that might be effected by private Acts of
Congress upon indiridaal applicatioo. Contracts are asoally
made with referen<5e to the established law of the land, and
should be so understood and construed, unless otherwise
clearly indicated by the terms of the agreement. If the par-
ties in this case contemplated any alteration or modificatiiHi of
their rights, more advantageous, by the further legislation of
Congress, we think some more spedfic provision
[ * 686 ] having reference to it should have been * inserted
in their covenant The term renewal may be satis-
fied by a reference to the law as it then stood. The paten*
tee might surfender his patent, and take out a new one,
within the fourteen years ; and the term was used, probably,
to guard against any question that might be raised as to the
right under the assignment in the new patent, if a surrender
and new issue should become necessary. The specification
accompanying the patent was a complicated one, and has
been the subject of much controversy, and the necessity of a
surrender for correction and amendment might very well have
been anticipated.

We think this view satisfies the use of the term, and that
no right is acquired in the new grant by virtue of the assign-
ment or covenant.

The fourth and fifth questions certified are answered by
the opinion of tlie Court upon the first and second questions.

The sixth question certified is as follows : — Whether the
plaintifll*, if he be an assignee of an exclusive right to use two
of the patented machines within the town of Watervliet, has
such an exclusive right as will enable him to Qiaintain an
action for an infringement of the patent within the said town ;
or whether, to maintain such action, the plaintiflT must be pos-
sessed, as to that territory, of all the rights of the original
patentee.

PATENT CASES. 433

Wilson V, Konaiean et aL 4 How.

The plaintiff is the grantee of the exclusive right to con-
struct and use, and to vend to others to be used, two of the
patented machines within the town of Watervliet, in the
county of Albany.

The fourteenth section of the Patent Law authorizes any
person, who is a grantee of the exclusive right in a patent
within and throughout a specified portion of the United
States, to maintain an action in his own name for an infringe-
ment of the right.

The plaintiff comes within the very terms of the section.
Although limited to the use of two machines within the town,
tlie right to use them is exclusive. No other party, not even
the patentee, can use t right under the patent within the
territory without infringing the grant.

The seventh question certified is as follows: — Whether
the letters-patent of renewal issued to W. W. Woodworth,
as administrator, on the 8th of July, 1845, upon the amended
specification and explanatory drawings then filed, be good and
valid in law, or whether the same be void for uncertainty,
ambiguity, or* multiplicity of claim, or any other cause.

The Court is satisfied, upon an examination of the specifi-
cation and drawings referred to in the question certified, that
it is sufiiciently full and explicit, and is not subject to any of
the objections taken to it.

The temaining questions will be sufficiently answered by
the certificate sent to the Court below.

If Order. [*687]

This cause came on to be heard on the transcript of the
record from the Circuit Court of the United States for the
Northern District of New York, and on the points and ques-
tions on which the judges of the said Circuit Court were
opposed in opinion, and which were certified to this Court for

VOL. II. — p. c. 37

434 PATENT CASES.

Wilson o. BoBsseaa et^al. 4 How.

its opinion, agreeably to the Act of Congress in such case
made and provided, and was argued by counsel. On consi-
deration whereof, it is the opinion of this Court, —

1. That the eighteenth section of the Patent Act of 1836
did authorize the extension of a patent on the application of
the executor or administrator of a deceased patentee,

2. That, by force and operation of the eighteenth section
of the Act of July 4th, 1836, entitled <<An act to promote the
progress of the useful arts," &c., the extension granted to
William W. Woodworth, as administrator, on the 16th day
of November, 1842, did not inure to the benefit of assignees
under the original patent granted to William Woodworth on
the 27th day of December, 1828, but that the said extension
inured to the benefit of the administrator only, in his said
capacity.

3. That the extension specified in the foregoing second
point did inure to the benefit of the administrator, to whom
the same was granted, and to him in that capacity exclusively ;
and that, as to the territory specified in the contract of assign-
ment made by William Woodworth and James Strong to Too-
good, Halstead, and Tyack, on the 28th day of November,
1829, (and set forth in the second plea of the defendants
to the first count of the declaration,) and by legal operation
of the covenants contained in said contract, the said extension
did not inure to the benefit of the said Toogood, Halstead,
and Tyack, or their assigns.

4. That the plaintiiT, claiming title under the extension
from the administrator, can maintain an action for an infringe-
ment of the patent-right within the territory specified in the
contract of assignment to To<^ood, Halstead, and Tyack,
against any person not claiming under said assignment. And
that the said assignment is not, of itself, a perfect bar to the
plaintiff's suit.

5. That the extension specified in the second point could

PATENT CASES. 435

Wilson V. Boiusean et aL 4 How.

be applied for and obtained by William W. Woodworth, as
administrator of William Woodworth, deceased, although the
said William Wood worth, the original patentee, had in his
lifetime disposed of all his interest in the then existing patent,
having at the time of bis death no right or title to or interest
in the said original patent ; and that such sale did not carry
any thing beyond the term of said original patent ; and that
no contingent rights remained in the patentee or his repre-
sentatives*

6. That the plaintiff, if he be an assignee of an
exclusive right * to use two of the patented ma- [ * 688 ]
chines within the town of Watervliet, has such an •
exclusive right as will enable him to maintain an action for an
infringement of the patent within said town.

7. That the letters-patent of renewal issued to * William
W. Wood worth, as administrator as aforesaid, on the 8th day
of July, 1845, upon the amended specification and explana-
tory drawings then filed, are good and valid in law ; and are
not void for uncertainty, ambiguity, or multiplic|[ty of claim,
or any other cause.

8. That the question involved in the eighth point pro-
pounded does not present any question of law which this
Court can answer.

9. That the decision of the Board of Commissioners, who
are to determine upon the application for the extension of a
patent under the eighteenth section of the Act of 1836, is not
conclusive upon the question of their jurisdiction to act in a *
given case.

10. That the Commissioner of Patents can lawfully receive
a surrender of letters-patent for a defective specification, and
issue new letters-patent upon an amended specification, after
the expiration of the term for which the original patent was
granted, and pending the existence of an extended term of
seven years ; and that such surrender and renewal may be
made at any time during such extended term.

436 PATENT CASES.

Wikon o. BontseMi et «!. 4 Hoir.

It 18 thereupon now here ordered and adjudged by this
Court, that it be so certified to the said Circuit Court.

McLean, J. As I dissent from the opinion of the Court, in
their answer to the second question certified, I will state, in
few words, the reasons of my dissent.

The question is, whether the extension of the patent, under
the Act of 1836, to William W. Wood worth, the admi-
nistrator, inured to the benefit of the assignees of the first
patent.

I had occasion to consider this question in the case of
Brooks and Morris v. Bicknell and Jenkins,' on my circuit, and
on a deliberate examination of the eighteenth section of the
above act, I came to the conclusion, that unless the assign-
ment gave to the assignee the right in the extended or renew-
ed patent, his interest expired with the limitation of the ori-
ginal patent.

The lamented Justice Story, without any interchange of
opinion between us, about the same time, gave the same con- *
struction to the section. The late Mr. Justice Thompson,
and several of the district judges of the United States, have
construed the act in the same way.

The eleventh section of the act makes the patent assign-^
able in law,* either as to the whole interest or any undivided
part thereof, by any instrument of writing, which is required
to .be recorded in the Patent Office within three months from
' the date.

By the eighteenth section, the patentee may make

[ * 689 ] application * for the extension of his patent to the

commissioner, who is required to publish a notice of

such application <^ in one or more of the principal newspapers

in the city of Washington, and in such other paper or papers

as he may deem proper, published in the section of country

1 Antef page 118.

PATENT CASES. 437

Wilson r. RotiBseaii et al. 4 How.

most interested and adversely to the extension of the patent."
<< And the Secretary of St&te, the Commissioner of the Patent
Office, and the Solicitor of the Treasury shall constitute a
board to hear and decide upon the jevidence produced before
them both for and against the extension, and shall sit for that
purpose at the time and place designated in the published no-
tice thereof. The patentee shall furnish to said board a state-
ment in writing, under oath, of the ascertained value of the
invention, and of his receipts and expenditures, sufficiently in
detail to exhibit a true and faithful account of loss and profit
in any manner accruing to him from and by reason of said
invention. And if, upon a hearing of the matter, it shall ap-
pear to the full and entire satisfaction of the said board, having
due regard to the public interest therein, that it is just and
proper that the term of the patent should be extended by rea-
son of the patentee, without neglect or fault on his part; hav-
ing failed to obtain, from the use and sale of his invention,
a reasonable remuneration for the time, ingenuity, and expense
bestowed upon the same, and the introduction thereof into use,
it 6hall be the duty of the commissioner to renew and extend
the patent," Sec. ; ^' and thereupon the said patent shall have
the same effect in law as though it had been originally granted
for the term of twenty-one years. And the benefit of such
renewal shall extend to assignees and grantees of the right to
use the thing patented, to the extent of their respective inte-
rest therein."

This section embraces patents previously issued, and the
construction' now to be given to it operates on all cases of
extensions under it, whether the assignments were made be-
fore or after the passage^ of the act.

The object of this section is so clearly expressed as not to
admit of doubt. It was for the exclusive benefit of the pa-
tentee ; for the extension can only be granted when it shall
be made to appear that the patentee, <' without neglect or

37*

438 PATENT CASES.

WiUon V. BoDMCMi et •]. 4 Hov.

fault on his part, having failed to obtain, from the use and
sale of his invention, « reasonable ftomuneralion for his time,
ingenuity, and eipense," &,c. This, then, being the dear
intent of Congress, expressed in this section, it must have a
controlling influence in the construction of other parts of the
section. A statute ia construed by the same rule as a written
contract. The intent of law-makers, and of the persons ctm-
tracting, where that intent clearly appears, must be carried
into effect. Where the statute or the contract is so rept^-
nant in its language as not to show the intent, then no effect
can be given to it. If the words used be siiBcepti-
, [*690 } ble of such a construction as *not only to show the
intent, but to enable the Court to give effect to it,
it is the duly of the Court so to construe it.

Bacon, on the construction of statutes, says, — r " The most
natural and genuine way of construing a statute is to construe
one part by another part of the same statute ; for this best
expresseth the meaning of the makers." And, — "If any
part of a statute be obscure, it is proper to consider the other
parts ; for the words and meaning of one part of a statute fre-
quently lead to the sense of another." "A statute ought,
upon the whole, to be so construed, that, if it can be pre-
vented, no dause, sentence, or word shall be superfluous,
void, or insignificant."

That the patentee may have his patent extended, though
(he assignee held the entire interest in it, is undoubted. He
has only to show that he has not been reimbursed, &c., within
! meaning of the section, to establish his claim for an et'
ision. And, in such a case, if the benefit of the extension
to the assignee, he having the entire interest in the patent,
w is the patentee benefited ? And yet the law was enacted
clusivety for his benefit. Does not such a construction
feat the object of the law ? And if it does, can it be main-
ned 1 Where the assignment of the patent has been lor

PATENT CASES. 439

Wikon V. Boossean et al. 4 How.

less than the whole, the same objection lies, though the object
of the law is subverted only to the extent of the assignment.

The interest of the assignee, it is supposed, is protected by
the provision, that " the benefit of such renewal shall extend
to assignees and grantees of the right to use the thing pa-
tented, to the extent of their respective interest therein."
There can be no doubt that the words, <Uo the extent of
their respective interest therein," refer to their right to use
the thing patented ; and this, it is contended, is the benefit
which results to the assignee from the renewal. That this
would seem to be the import of these words, disconnected
from other parts of the section, is admitted ; but such a con-
struction is wholly inadmissible, when the object of the sec-
tion is considered.

The patent is extended for the benefit of the patentee.
This is so obvious that no one will deny it. And the above
construction gives the benefit to the assignee. Here is a
direct repugnancy, and there is no escape from it ; for the
same repugnancy exists, though in a less degree, where a
part of the patent only has been assigned. Under such cir-
cumstances, we must inquire whether this repugnancy may
not be avoided b^ giving another and a different application
to the provision, of which the words may be susceptible.

The benefit of the renewal is given to the assignees ; but
to what extent? — to the extent of their interest in the re-
newal. But it is said, that this cannot be the true construc-
tion, as it renders the provision inoperative. If, by
the assignment, there was an * express contract that [ * 691 ]
the assignee should enjoy the same interest in the
renewal or extension of a patent, this would secure such
interest, without the provision.

To this it may be answered, that such an assignment of a
thing not in esse would, at most, only be a contract to convey
the legal right. But, under the eighteenth section, the a»-

440 PATENT CASES.

" ■ » • • III.

Wilson V. Boiuseaa et al. 4 How.

signment after the extension becomes a legal transfer. In
addition to this, the right under the extension being legal, all
purchasers would be affected with notice, where the assign-
ment had been recorded in the Patent Office. This view
gives effect to the section, and harmonizes its provisions.
The other construction makes the parts of the section repug-
nant, and nullifies the whole of it. Now, which is the more
reasonable view ? But, in addition to this, what conceivable
motive could Congress have had to give a boon to the as-
signee ? How is he injured by the extension ?

Without the extension, the assignee would only have a
right, in common with all others, to use the invention. This
could be of no more value to him than the worth of his ma-
chinery ; for competition equally open to all cannot be esti-
mated of any value. Under the assignment, the assignee^
claims a monopoly. Now, did Congress intend to give him
this boon ? Why should he be an object of public munifi-
cence ? He laid out his money in the purchase of the patent-
right, because he believed it would be profitable. And, in
most cases, the assignee speculates upon the poverty of the
inventor. Inventors are proverbially poor and dependent
The history of this patent illustrates strongly this fact. Half
of the right was originally assigned to pay the expense and
trouble of taking out the patent. Another part of the patent
was assigned to compromise a pretended claim to a similar
invention.

The hardship complained of by the assignee is more ima-
ginary than real. If the patentee takes all the benefit of the
extension, the assignee loses, it is said, the value of his
machinery. This does not necessarily follow. For if the
machinery has been judicially selected, and put in operation
at a proper place, it will sell for its value generally, if not
always. If the invention be of great value, as is undoubtedly
the case in this instance, the machinery will be wanted by

PATENT CASES. 441

/ Wilson V, Bonsseaa ei al. 4 How.

any one who may wish to continue the business, under the
ej(tended patent. So that the loss in the sale of the machi^
nery would not be greater than would have been suffered by
a sale if the patent had not been extended.

This construction, then, inflicts little or no injury on the
assignee, whilst the other construction, as has been shown,
defeats the object of the statute. But this inconvenience or
loss to the assignee is duly considered and weighed, under
the statute, as the board, in granting the extension, must have
a due regard to the public interest. Notice is to be given, as
far as practicable, to all persons interested against
the extension of the patent, who may * appear be- [ * 692 ]
fore the board and oppose it And it was stated in
the argument, that the assignees of this patent did oppose the
extension of it. Little did they suppose at the time that they
were resisting a boon secured to them by the above section.
Whatever loss, real or imaginary, the assignee may suffer
from the extension of the patent, is a loss or inconvenience
which results from the general advancement of the public
good, and for which society does not, and indeed cannot,
make compensation. The price of property is affected by
general legislation. An embargo is laid, and ships, during its
continuance, are valueless. The increase or diminution of
the tariff affects beneficially or injuriously the value of machi-
nery used in manufactures. The reduction of the price of
the public lands affects the price of lands generally in the
new States. An act authorizing a company or individual to
construct a railroad renders useless turnpike roads in its
neighborhood, and the public houses established thereon ; but
for these injuries no compensation is made. Indeed, it is
difficult to find any great public enterprise which does not, in
a greater or less degree, affect injuriously private rights. But
these must yield to the general welfare of society.

All enlightened governments reward the inventor. He is

PATENT CASES.

Wilton V. RonnwD et al. 4 How.

justly considered a pabtic benefactor. Many of the most
splendid productions of genius, in literature and in tbe arts,
have been conceived and elaborated in a garret or hovel.
Such results not only enrich a nation, but render it illustrious.
And shonld not their authors be cherished and rewarded 7

If the assignee under the eighteenth section take any thii^,
in my judgment he takes the whole extent of his interest, —
(he whole or nothing. And it appears to me the construction
given by the Court is, if possible, less warranted by the sec-
tion, than to hold that the aasignfte takes under the extension
the entire interest assigned.

The words, "and the benefit of such renewal shall extend
to assignees and grantees of the right to use the thing pa-
tented, to the extent of their respective interest therein,"
cannot, it seems to me, by any known rule of construction,
be held to give to the assignee or grantee tbe right to use the
machine he may have had in operation at the time the ex-
tension took effect. Tbe words, " to use the thing patented,"
are descriptive of the right assigned or granted, and refer to
such right, not to the mere use of the machine. " The ex-
tent of iheir respective interest therein " undoubtedly covers
the whole interest, and cannot refer merely to the number of
madiines the individual may have in operation.

Mr. Justice Watne expressed his dissent from that part of

the opinion of the Court which, in answer to (he second

question, gave a right to an assignee to continue tbe

[ * 693 ] use of the patented * machine, and said be woold

probably file his reasons with the clerk.

WooDBURT, J. There is one of the leading questions cer-
ied to us in this cause, in the decision of which I have
e misfortune to differ from a majority of the Court
As that decision bears on several of tbe other questions,

PATENT CASES. 443

Wilson V, Boosseaa et al. 4 How.

and also disposes entirely of some of the four causes con-
nected with this matter, which have been so long and so ably
under argument before us, I consider it due to the importance
of this subject to the parties and the public, as well as just to
myself, to state the reasons for my dissent.

The difference in our views arises in the construction of
the eighteenth section of th6 Patent Law of July 4th, 1836,
and relates to the benefits which may be enjoyed under it by
assignees and grantees.

Before the passage of that law, a patent could not, under
any circumstances, be extended in its operation for the benefit
of any body beyond its original term, except by a special act
of Congress. But this section allowed a patentee to apply to
a board of oflicers and obtain from them a renewal of his
patent for seven years longer, provided he ofiered to them
satisfactory proofs that his expenses and labor in relation to
the patent had not been indemnified. It provided further,
that the renewal be indorsed on the back of the original pa-
tent; ''and thereupon the said patent shall have the same
efiect in law as though it had been originally granted for the
term of twenty-one years." It then added, ''And the benefit
of such renewal shall extend to assignees and grantees of the
right to use the thing patented, to the extent of their respec-
tive interests therein." This last clause creates the chief
embarrassment. In this case, the patentee having died, and
we having just decided that a renewal was legally granted to
his administrator, the controverted question about which we
difier is, whether that renewal inures exclusively to the use of
the patentee through his administrator, or goes either in full
or in part to his assignees and grantees under the old patent.
In the present case it is conceded, that by the contract of
assignment or grant, nothing is expressly conveyed but the
old patent, and in words, only for the original term of <' four-
teen years."

The question is not, then, whether, when assigning an in-

4J4 PATENT CASES.

Wilson V. BonuMa et al. 4 How.

terest ia the old term, before or after the passage of the Act
of 1836, it might not be competent and easy to use language
broad and explicit enough to transfer ao interest in any sab-
sequent extension by means of the contract of assignment,
and this be confirmed by the words of the eighteenth sectimi ;
but whether tlioee words alone transfer it, or were
[ * 694 ] intended to transfer it, when the contract of * as-
signment, as in this case, was made before the Act
of 1836 passed, and referred, eo nomine, only to the old pa-
tent, and expressly limited the time for which the patent was
assigned to the old term.

In such case, it seems to me that both the language and
spirit of this section restrain its operation to the patentee or
his legal representatives, and convey no rights in the exteo-
uon to assignees or grantees, whether prior or subsequent,
except where the patentee had clearly contracted that they
should have an interest beyond the original term.

But the majority of the Court hold here, that this clause,
independent of any expression in the assignment, transfers an
St in the extension to all assignees and grantees, so that
nay continue to use any machine already in operation
; the new term, without any new contract, or any new
ensation for such farther use.

e argument on the part of the assignees, in all Uie cases
! us, on this subject, has been, that by force of this sec-
ili assignees before authorized to make, vend, or use
machines, for fourteen years, could continue to make
'end, as well as use them, for seven more, without any
lontract or new consideration ; and that " grantees of
;ht to use " should have a like prolongation of all their
Bts. And such seems to have been the opinion of the
it Conrt in Maryland, in Wilson v. Turner,' October
1844, Chief Justice Taney presiding, thongh other

PATENT CASES. 445

Wilson V, Ronssean et al. 4 How.

points besides arose there, and were disposed of in that
opinion.

But now, for the first time, it is believed, sincQ the passage
of the Patent Law, this court, by force of the last clause in
the eighteenth section, not only give to assignees and grantees
a greater or longer interest in the thing patented than was
given in the contract of assignment to them, but undertake
to iatroduce a novel discrimination, not seeming to me to be
made in the clause itself, and give to assignees of the patent-
right itself an extension of only a part of their former interest,

but to '' grantees of the right to use " the patent, an exten-
sion of all' their former interests.

We propose to examine the objections to this decision of
the Court, first, on the principle of giving to old assignees
and grantees an extension of their interests to the new patent
at all, unless the contract of assignment to them was mani-
festly meant to embrace any new term ; and, after that, to
examine the propriety of the discrimination in allowing a
right in the renewed patent to grantees of the use, to the ex-
tent of all their old interests, and withholding a like privilege
from assignees of the patept itself.

First, it has been repeatedly decided, that <^ a thing which
is in the letter of a statute is not within the statute, unless it
be within the intention of the makers." Dwarris on Statutes,
692 ; Bac. Abr. Statute, T ; 2 Instit. 107, 386.

* Here the great design of the whole section was [ * 695 ]
to extend assistance to an unfortunate and needy
class of men of genius, who had failed to realize any profits
from their valuable inventions during the first term of their
patents. The intention of the makers of this law is usually
conceded to have been relief to such patentees, and not to
assignees or grantees.

It was the former, and not the latter, who were sufierers,
and whom Congress had before, by special acts of extension,

VOL. II.— p. 0. 38 '

PATENT CASES.

WilfOB o. BoonMn et al. 4 Bow.

occasionatlf tried to indemnify for iheir loneB ; and to whom
now, in a more summary way, on application and proof by
them alone, an extenrion was authorized to be giren by a
board of officera, in order that they and not others might reap
the profits of such extension.

But, by allowing the benefit of it to go to the former as-
signees of only the old patent, the intention of the makers
appears to be defeated, and those profited who have not
proved any loss or waSeting, but, on the contrary, may have
already derived great advantages from the assignment.

It might thus happen, likewise, where, in a case like this,
the patentee has assigned all his tid patent before the exten-
sion, and the use of it under the extennon would constitute
all or its chief value, that neither he nor his representatives —
he whose genius had produced the whole invention, at the
sacrifice of time and toil, and whose sufferings, losses, and
disappointments the law is expressly made to indemnify —
would receive the smallest pittance from it ; but those reap all
its advantages who may already have grown rich by the as-
sigsment to them of the old patent, and who nobody can
pretend were the particular or principal objects of relief.
Under such a construction, how absurd would it be fbr nich
a patentee ever to apply for an extension, when he must do
it at new cost and expense, and then have the whole frails of
it stripped from him by persons who had neither paid for the
extension, nor had it conveyed to them. It is an equal vio-
lation of the leading intention of this section, and of most of
these principles and of much of this reasoning, to allow, as
(he opinion of the Court does, such persons to take, unpaid
'or and unbought, a part of the benefits of the renewal, as to
ake the wAoIe of them.

Secondly, by the construction of the Court, contracts and
rested rights seem to be radically encroached upon. Under
t, an assignee of an old patent, limited in the contract con-

PATENT CASES. 447

<■■'■■■ ■ ■ ■ ' ■

WUflon V. Bousseau et aL 4 Hov.

veying it to fourteen years, will, for some purposes, get it for
twenty-one years, directly in conflict with the express stipula-
tion of the fHuties* Congress will, in this way, be made un-
worthily to tamper with the private obligations of individuals,
and will impair them by taking from the rights of one, and
enlaiging*or adding to the rights of the other ; and this with-
out any new consideration or new engagement passing be-
tween them, but, on the contrary, against the wishes, assent,
and interests of one* That vi^w, also, involves us
in the unreasonable inference, * that Congress in- [ * 696 ]
tended to violate a solemn compact, to disturb the
vested rights and written agreements of parties, when the
language used is susceptible of a different construction, and
one that is -consistent with what is just, and with the spirit of
the whole section.

By that view, an assignee or grantee will obtain " a right
to use the thing patented " for a term of seven years longer
than he contracted or paid for, while the patentee, without
any such agreement in his contract assigning or granting the
right to use, and without any new consideration, will be
deprived of all his new and vested rights in the extension, so
far as regards that use, and will have his former contract im-
paired virtually in its whole vitality, by making him part with
the use for a term of twenty-one years, when the contract
says but fourteen, and making him do it, also without any
application by others for the extension, any proof by others of
not being indemnified, any payment by others of the cost and
expenses for procuring the additional seven years, and when
the avowed and cardinal object of the renewal was to indem-
nify him alone for losses which he and not others had sus-
tained. Well may he say, as to these new and extended
interests attempted to be conferred on assignees and grantees
beyond the contract of assignment, in hacfedera nan veni.

Thirdly, the construction I contend for seems to me the

448 PATENT CASES.

■ . ... . . iJ ■ I ■

Wilson V. Bonsseaii et al. 4 How.

only one consistent with the language used in the latter
portion of the eighteenth section. By this, no part of those
troublesome four lines is senseless, or expunged, or ungraRima-
tical, or contradictory to the object of the previous portion of
the section. While the construction opposed to this must, in
my view, require interpolations or extirpations of Wbrds, and
a violation of the object of the rest of the section, in order to
give to the clause the meaning the advocates of that con-
struction impute to it. Lobk at the phraseology of the
clause. '' The ben^ of such renewal shall extend to as-
eigneee. and grantees of the right to use the thing patented^
to the extent of their respective interests therein,*^ but surely
to no more than that extent. It would violate both the words
and design to have them enjoy more than the extent of their
interests therein, quite as much as not to let them enjoy all of
the extent of them. In the construction of statutes it is a
well-settled axiom, that, ^' to bring a case within the statute,
it should be not only within the mischief contemplated by the
legislature, but also within the plain, intelligible import of the
words of the act of parliament.'' Brandling t;. Barrington,
6 Barn. & Cressw. 475. In this case the assignees and
grantees were not within either the mischief intended to be
remedied, that is, a want of indemnity for losses by the pa-
tentee ; or within the <^ plain intelligible import of the words,"
as their contract of assignment or grant did not extend to the
renewed term at all, for any purpose whatever, but was ex-
pressly limited to the fourteen years of the original patent.

There must be some measure of their respective
[ * 697 ] interests, when * the act passed. What was it ?
Clearly, the contracts under which they had been
acquired. Nothing had been done, either in other acts or
previous portions of this, to increase those interests beyond
the contracts, but merely to enable assignees and grantees of
exclusive rights to protect them by suits in their own names.

PATENT CASES. 449

WQson V. Boiuseau et al. 4 How.

The present clause, also, does not profess to increase those
interests, but simply to let assignees and grantees enjoy them
under the renewal, if by their extent by the contract which
limits and defines them they run into the extended term.
Various hypotheses and metaphysical refinements have been
resorted to for the purpose of putting a meaning on the words
of this clause differing from this, which is so plain and so
consistent with the spirit of the section ; and virtually making
it provide, that assignees and grantees shall have more bene-
fits under the renewal in the thing patented than the " extent
of their respective interests therein.''

But before testing more critically the extent of those inte-
rests by the only standard applicable to them, it will be neces-
sary to consider separately the true meaning of two of the
words employed in this clause, namely, *^ renewal^' and
*' therein:'

Much research has been exhibited, in attempting to draw
distinctions in this case between the words renewal and ex-
tension. But I am not satisfied that any exist, when these
words are employed as in this act of Congress, or in contracts
relating to this subject. It is true|^that some ^^ renewals '^ are
not '^ extensions," in the sense of prolonging the term of the
patent, — that is, when an old patent is surrendered and a new
one taken out, or a renewal made for the rest of the term, —
while all exteneione prolong the term. But still << renewals "«
are as often used for a prolongation of the term, or for a new
term, as extenaione are, and in this very section, *^ to renew and
extend " is used as if synonymous, and this in sound analogy
to the use of the word renewal on several other subjects.
Thus, to renew a lease is to extend it another term. To
renew an office is to extend ii another term. To renew
griefs, revocare dolores^ is to extend them. Again; the
second << therein^'' at the close of the clause, has been con-
sidered by some as meaning ^* in the renewal,'* and by others,

38*

PATENT CASES.

WilMii r. BonncMt et •!.

" in the right to ute" and by others still, " in the thing pa-
tented." But, grammatically, it refers to the " thing patent-
ed," and hence " the interests therein " are " the interests in
the thing patented."

Phillips treats it as a matter of course to mean in the "pO'
tent" and uses that as synonymous to " therein ; " and though,
in r^ard to my construction of the whole clause, the result
is much the sanje, whether " therein " is considered to mean
in " the thing patented," or " the patent," or " the renewal,"
yet I incline to the first view of it as that most strictly gram-
matical and the most natatal, as well as comir^
[ * 698 ] nearest to the views of this court id * M'Clarg v.
Kingsland, I How. 210. Further objections to its
meaning " in the right to use " will be stated hereafter, under
another head. Passing, then to a more careful scrutiny of
the whole clause, it would seem, that there could be but one
rational test of " the extent " of the interests of assignees and
grantees in the thing patented, and that such test must be
the previous contract of assignment or grant, under which
alone they hold any interests.

If that contract grants to them one fourth or one half of
the old patent, or the use of it in one State or county, and
for a term of five yeare, or ten, or fourteen, from the issue of
the patent, then such and such alone is the extent of their
■ interests, and they will not run into the iiew term. But if
the contract goes further, and grants one half w alt of the old
patent to assignees, and for a term not only of fourteen years,
but twenty-one years, or any number to which the patentee
may afterwards become entitled by any extension or new
grant, then such is the extent of their interests, and they will
in such case run into the new term. This view gives mean-
■ — and spirit to every word, and excludes or alters none.

is, too, conforms to the design of the section in tailing

ly no part of the benefit intended to be conferred by~it on

PATENT CASES. 451

Wilson V, RoQflseMi et a1. 4. How.

the patentee, unless he has chosen to dispose of it clearly and
deliberately, and receive therefor, either in advance or after
actually granted, such additional consideration as he deemed
adequate and contracted to be sufficient

If after the word *^ extent ^^ in this clause, there had been
added, wjiat is the legal inference, both in time and quantity^
this meaning might have been still more clear to some. But
without those words, the extent of interest seems to me to
depend as much on the length of time the patent is granted
to the assignee, as on the dimensions of territory over which
he may use it, or the proportion of the whole patent he is
authorized to use. It is like a lease-hold interest in land, or
a grant of it. The extent of interest by such a grant of land
is more or less, as the term is shorter or longer, quite as much
as if the land conveyed is more or less in quantity.

The word '' extent," in common parlance, varies somewhat
in meaning, according to the subject to which it is applied,
and as that changes, it may as well refer to time as to space
or proportion ; and more especially so, when applied to inte-
rests, as in patents, for a particular term of years.

There is another analogy in support of this view, that has
not been urged in the ingenious arguments offered, but has
^ struck me with some force.^ A patent was the description
once applied to commissions for office ; and the records of
this court at first speak of the commissions of the judges as
patents.

Now what is the extent of interest the incumbent
has in any * office under his commission or patent ? [ * 699 ]
dearly, in part, the length of time it is to run,
whether four years, during good behavior, or for life, and in
part only its yearly proGts ; often quite as much depending on
that length of time, as the amount of the salary or fees annu-
ally attached to the office.

What is the chief objection in reply to all this ? Nothing,

PATENT CASES.

W^ilMm V. BoDifean et aL 4 Hot.

except that the assignee could get protected to the exteat of
his interest, in this view, by the contnct alone, without the
aid of the provision at the close of the eighteenth aectitHi^
and hence that the provision is in this view unnecessary ot
nugatory, and must have been inserted for some other pur-
pose. But were it in reality unnecessary, that wpuld not
require us to consider it as intending something difierent from
its words, or different from the previous contracts of the
parties. Legislatures often add clauses to acts, which do not
prove to be in reality necessary, but are inserted from abuo*
dant caution and to remove future doubts or litigation. So>
in this very act, in the eleventh section, it is declared, that a
patent may be assigned. Yet this is probably unnecesssry,
as an interest like that of a patentee can of course be as-
signed, on common-law principles, without the aid of a
statute.

When we look, however, to another circumstance, — that,
though a contract. of assignment would, without any clause in
the statute, pass the interest to the assignee, yet it would not
enable him to sue in his own name, — we can discover
another reason for this provision still more effective. A
clause had been inserted in a previous part of the act to ena-
ble the asHgnee to sue in his own name on the old patent, if
violated ; and, probably in doubt whether such provision
would be extended to assignees under the renewal, when
having any interest therein, it was provided further, that "the
benefit of the renewal " should reach them to the extent of
their interests therein, — a part of which benefit would be to
sue in their own name for any infringement on their rights to
it, as.fully as they could do for a violation of their rights in
the original patent, and as if that had been for twenty-one
years. The provision thus would be far from nugatory, by
' arly conferring on them every power and privile^ to sue
der the extension which they possessed under the original

PATENT CASES. 453

Wilson V, Ronssesa et aL 4 How.

By means of this provision, also, in another view, the con-*
dition of the parties might be changed, from a reliance on a
contract alone that they should have a certain interest in the
new patent, to a vested interest in it ; or, in another view
still, from an executory to an executed right

There is, in the construction given by some of the majority
of the Court to the clause immediately preceding this, another
ample reason for inserting such a provision.

The previous clause, stating, that *^ thereupon the said pa-
tent shall have the same effect in law as though it
had been originally granted for * the term of twenty- [ * 700 ]
ofie years," would, it is argued, if the section had
there ended, have conferred on any assignee or grantee of the
old patent, or any part of it, the extended term, so as to ena-
ble them to use the patent as if it originally had been granted
for twenty-one years instead of fourteen.

Suppose, then, for a moment, that this construction was
considered by Congress proper, or t>nly possible, it is manifest
that the additional clause which follows had a second and
most pregnant object, — no less than to prevent that conse-
quence, so hostile to the design of inserting the whole
section, — to grant an extended term for the benefit and
indemnity of the patentee, and not of the assignee. In this
view, the last clause might well be added, as a limitation on
what would otherwise be the inference from that just preced-
ing it ; and might well declare, instead of this inference, that
assignees of the old patent should not hold it, in all cases, as
if originally granted for twenty-one years, though patentees
might ; but that assignees should hold only in comformity to
^* the extent of their respective interests " in the thing pa-
tented. In other words, if by contract they had acquired
clearly an interest for twenty-one years, they should hold for
that time ; but if by contract they had acquired an interest
for only five or fourteen years, they should hold it only to

454 PATENT CASES.

Wibbn V. Romieaa et al. 4 How.

that extent. This is rational, consistent with the great ob-
ject of the section, and gives new and increased force and
necessity to the clause. The assignees would then, after the
renewal, hold the patent for all the time they had stipulated,
and for all they had paid, but for no more.

It will be perceived, that very few assignees or grantees,
prior to the passage of the Act of 1836, would in this view
be likely to come under this provision, and be benefited by
.it ; because, not knowing that any future law would pass
allowing an extension, very few would be likely to anticipate
one, and provide in their contract and pay for a contingent
interest in its benefits.

This would make the provision, in practice, apply chiefly
to future assignees, who, knowing that such a proviaon ex-
isted, might be willing to give something for a right to any
extension which might ever take place under it; and there-
fore might expressly stipulate in the assignment for that right.
Indeed, the arguments on the part of the patentee in this
case have mostly proceeded on the ground that this provision
was intended to apply solely and exclusively to future as-
signees. Considering that any other construction is in some
degree retrospective, and that this would give force to the pro-
vision, as well as preserve the spirit of the section, I should
be inclined to adopt it, if mine did not produce a like efiect,
and was not alike free from objection, as limited by me ; be-
cause I do not make the provbion retrospective except in
cases where the parties had expressly contracted that the
prior assignee should receive the benefit of any extension, and

in that case it has the preference in its operation
[ * 701 ] * over the other view, as it carries into effect that

express compact, and does not cramp the force of
it to the future alone, where the language and the consider-
ation are equally applicable to past engagements of this
character.

PATENT OASES. 455

Wilson V. RousMau et aL 4 How.

This conclusion id also strengthened by being in harmony
with all the leading rules of construction applicable to sta»
tutes, while that adopted by the Court seems to my mind, to
violate some of the most important of them.

Beside those already referred to, it is well settled, that '< if
a particular thing be given or limited in th^ preceding parts
of a statute, this shall not be taken away or altered by any
subsequent general words of the same statute." Dwarris,
658 ; Standen v» The University of Oxford, 1 Jones, 26 ;
8 Coke, lis, ft. Here a particular benefit is, by the former
part of the eighteenth section, conferred on a patentee, for
reasons applicable to him alone ; and yet, in this case, by the
c^posite construction, a few general words towards the close
are construed so as in some respects to destroy entirely all
those benefits of the patentee ; and that too, when the lan-
guage is susceptible of a different construction, more natural
and perfectly consistent with the previous particular grant to
the patentee.

Some collateral considerations have been urged in support
of the conclusions of the Court oq this branch of the con-
struction, which deserve notice. On a close scrutiny they
appear to me to amount to less in any respect than is sup-
posed, and in some particulars strengthen the grounds of dis-
sent. Thus, it has been said that the English Act of the 5th
and 6th of William the Fourth, passed September 18th, 1835,
was before Congress in 1836, and was intended to be copied
or adopted ; and as, under that, assignees have been allowed
to participate in the extended time, it has been argued that
such was the intention here. But it is doubtful whether that
act was before the committee when they reported the bill
in 1836, as the intervening time had been short, and the
eighteenth section, on examining the journals and files, ap-
pears not to have been in the bill at all as originally intro-
duced, or as originally reported; but was afterwards inserted

456 PATENT CASES.

Wilson 9. Rousseau et aL 4 How.

as an amendment in the Senate. The consideration of this
section, therefore, does not seem to have been so full as of
the rest of the bill ; and it is very far, in language, from being
a copy of the English act. Assignees are not named at aU in
that act ; and though, in extensions under it, assignees have
in two or three citses been allowed to participate, it has only
been where an enlarged equity justified it, — as where the
patentee consented, or was to receive a due share in the
r benefits, or had clearly conferred a right in the extension by

the assignment ; and where, also, the assignees are expressly
named in the new grant or patent as entitled to a share of it
See Webster's Patent Cases, 477.

There, also, an assignee, under like circum-

[ * 702 ] stances, ^ould doubtless * benefit by the renewal,

under its ordinary operations ; and the practice in

England, thus limited, will fortify rather than weaken the

construction I adopt of the true design of the last clause in ^

our own law.

There is much, also, in another collateral consideration
here, which does not apply in Great Britain, and which re-
stricts conferring the benefit of an extension, or an extension
itself, on an assignee by or under any staitute, if it goes be*
yond what a patentee had himself contracted to do.

Here the Constitution limits the powers of Congress to give
patents to inventors alone.

" The Congress shall have power to promote the progress
of science and the useful arts, by securing, for limited times, to
authors and inventors, the exclusive right to their respective
writings and discoveries." — Article L, ^ 8.

No authority is conferred to bestow exclusive rights on
others than '' authorsi and inventors " themselves.

' Hence a patent could not probably be granted to an as-
signee, nor an extension bestowed on one, independent of the
assent or agreement of the patentee, or of its inuring to bis

PATENT CASES. 457

Wilson V, Bonsseaa et al. 4 How.

benefit, without raising grave doubts as to its being a violation
of the Constitution. But so far as inventors have expressly,
agreed that assignees shall be interested in their patents, or
in the extensions of them, the latter may well be protected ;
and so, as far as administrators represent the inventor c^ pa-
tentee, when deceased, the grant to them is substantially a
grant to the inventor, as the benefit then inures to his estate
and heirs. But to grant an exclusive right to an assignee
would confer no benefit on the patentee, or his estate ; and it
would violate the spirit as well as letter of the Constitution,
unless the inventor had himself agreed to it, and had substi-
tuted the assignee for himself by plun contract, whether for
the original term or any extension of it.

Cases have been cited in this country, likewise, where Con-
gress, in ten or twelve instances, have renewed patents to the
inventors ; but they have never done it to assignees. And
though in two out of the whole, which were renewed after
the term had expired and the assignees and the public were
in the free use of the patent, some limitations have been im-
posed on requiring further payments from the assignees for
the longer use of the old patent ; yet in these only, and under
such peculiar circumstances, has it been done, and in these
no term was granted by Congress directly to the assignee*
rather than the patentee ; and this limitation or condition in
favor of the assignee, in the grant to the patentee, is of very
questionable validity, unless it was assented to by the pa-
tentee. In this case it is most significant of the views of
Congress to relieve the patentee rather than assignees, that
by a special law, passed February 26th, 1845, they
have conferred on the representative of the * origi- [ * 703 ]
nal patentee still another term of seven years, with-
out mentioning the assignees in any way, and without any
pretence that the benefits of this extension were designed for
them.

VOL. II. — p. 0. 39

458 PATENT CASES.

Wilson V. Bonflfleaa et al. 4 How.

The argument, that the assignee is sometimes a partner
and makes liberal advances, furnishes a good reason, in a pe-
cuniary view, why an assignment should be made to him of
such an interest in the old patent as will indemnify him, but
fuiHlshes none for giving him, even if he regards money above
public spirit or benevolence, more than an indenwity ; or for
giving him a benefit in any renewal, which it has never been
agreed he should have, and for which he never has paid.

So the reasoning, that the assignee stands in the shoes or
in the place of the patentee, and represents him, and there-
fore should have an interest in the extension, applies very
well, so far as he is assignee, or so far as the contract ex-
tends. But he no more stands in the shoes of the patentee
beyond the extent of his contract, than an entire stranger
does. Such are the cases of Herbert v. Adams, 4 Mason, 15,
and that cited in 1 Hawk. P. C. 477, note.

In one, the assignee of the old patent represented the pa-
tentee as to that, and that only ; and in the other, where by
law a further copyright was authorized in all cases, and the
patentee assigned his whole interest, the second term passed
also ; because the law had previously given it absolutely, with-
out contingency or evidence of losses, but in connection with,
'or appurtenant to, the first copyright.

Again, it has been urged that the assignee should have the
benefit of the extension ; otherwise he may have made large
expenditures, in preparing for a free use of the patent after
the original term expires, and will lose them in a great degree,
or be obliged to pay largely for the continued use of the pa*
tent. But this same reasoning applies equally well to the
whole world as to the assignee ; because any individual, not
an assignee, may have incurred like expenditures in anticipa-
tion of the expiration and free use of the old patent. In fact?
the argument is rather a legislative than judicial one, and
operates against the policy of the whole section, rather than
the construction put on the last clause.

PATENT CASES. 459

Wilson 9. BoasscAa et $1. 4 How.

But the hardship to any person, in such case, is more ap-
parent than real The price to be paid for the new patent is
not so much as the gain by it, and hence those who have pro-
posed to use it and do use it after the extension, and pay
anew for a new or further term, gain rather than loose, or^ey
would have employed the old machinery in operation before
this invention.

Nor is it any relief to the community at lai^e, as seems by
some to have been argued, to hold that the renewal, or a
large part of it, vests in the assignee and grantee rather than
in the patentee. For the great mass of the people
must still purchase the patent, or the * right to use [ * 704 ]
it, of some one, and must pay as much for it to the
assignee as to the patentee.

Finally, the construction of the Court, by conferring any
privilege whatever on assignees and grantees beyond the extent
of their interests in the thing patented, when tliose interests,
as in this case, were expressly limited in the contract to the
term of the old patent, goes, in my view, beyond the language
of the act, beyond the contract of assignment, beyond the
consideration paid for only the old term, and beyond any
intention of the legislature for relief or indemnity to others
than unfortunate patentees.

^I feel not a little fortified in these views on the case, by
several decisions and opinions that have heretofore been made,
in substantial conformity to them. Indeed, independent of
opinions in some of the actions now before us (from which
an appeal has been taken, or the cause has come up on a cer-
tificate of division) every reported case on this subject has
been settled substantially in accordance with these \iews.
See Wood worth v. Sherman, and Wood worth v. Cheever
et al., Cir. Ct. for Mass., May Term, 1844, decided by Jus-
tice Story; Van Hook v. Wood, Cir. Ct. for New York,
October Term, 1844, by Justice Betts ; Wilson v. Curties 8c

PATENT CASES.

WiboD V. BooMean et il. 4 How.

Grabon, Cir. Cl. for Louisiana, by Justice McCaleb ; Brooks
& Morris t>. Bicline)! et al., Cir. Ct. for Ohio, July Term,
1844, by Justice McL<ean (Western Law Journal, October,
1843) ; Butler's opinion, as Attorney-General, in Blanchard's
case (Opinions of Attorneys-General, pp. 1 134 and 1209.)

All that remains for me is to advert a moment to that brencli
of the construction adopted by the majority of the Court,
which, after giving to both assignees and grantees a benelii
in the new patent or term beyond " the extent of their inte-
rests " under the contract of assignment, undertakes to go still
farther, and make a discrimination between assignees and
grantees, as to the enjoyment, under the renewal, of their dif-
ferent original interests. It gives to the latter, the grantees,
by the mere force of this last clause in the eighteenth sectiop,
the enjoyment of all their old interests during the whole of
the new term ; but it gives to the former, the assignees, the
enjoyment of only about a third portion of their old interests
during that term. In other words, it gives to *' grantees of
the right to use the thing patented " a continuance of all their
interests ; but to assignees, whose interests extended to the
ri^t 10 make and to vend, as well as use, the thing patented,
a continuance of only a part of theirs. In such a discriminB-
tion, uncountenanced and unwarranted, as it seems lo me, by
either the words or the spirit of the act of Congress, I Ain
sorry to find another strong ground of dissent to the opinion
of the Court. The act does not say, as is their construction,
that " the benefit " of only " the right to use the thing pa-
tented " shall extend to any one, whether an assignee
[ ''705 ] or grantee ; but that the benefit of the • renewal
shall extend to both, " to the extent of their respect-
ive interests," though diflering clearly in extent as they Ao,
as will soon be more fully shown.
Judges are bound to take the act of Parliament as the

PATENT CASES. 461

Wibon V, Bouiaean et al. 4 How.

legislature have made it." 1 D. & E. 5S and Dwarris ofl
Statutes, 711.

But the words in this act, <^ the right to use the thing pa-
tented/' must be transposed, and other words altered in their
ordinary meaning, to make these a description of the interests
conferred.

They are now a description of one kind of purchasers, that
is *^ grantees of the right to use the thing patented," to whom
the renewal should extend, if they had stipulated for any in-
terest thereih by their contracts. The clause refers to two
classes, who may in such case be benefited by the renewal.
^^Assignees" are one class, and " grantees of the right to use
the thing patented," are the other class. This accords with
the language itself, and also with the punctuation of this
clause, as examined by me in manuscript on file in the Senate,
and as printed by the State department, having no comma or
other pointing in it except after the word ^'patented." It ac^
cords, too, with what is well understood to be the fact, that
assignees and grantees usually constitute two distinct classes
of purchasers, the former being those who buy a part or all of
the patent-right itself, and can protect their interests by suits
in their own name ; and the latter being those who buy only
'UheNTight to use the thing patented," and generally, except
where the use is exclusive (fourteenth section) cannot insti-
tute suits in their own name for encroachments upon it. In
the face of this, to hold that assignees and grantees mean the
same thing here, and that the words " of the right to use the
thing patented " apply equally to both, is a departure from
the above established usage in empk>ying those terms, and
gives a different meaning to them from what is previously
twice given in this very act. Thus in the eleventh section
an " assignment " is mentioned as one thing, and ^^ a grant
add conveyance of the exclusive right," Sec, as another, and
in the fourteenth section, ^^ assigns " are spoken of as if one

39*

PATENT CASES.

Wilion B. Boauean ct d

das8,and "gnntees of- the exclusive right," &c., bs if another.
And vihy doee the conclusion to this clause say "to theex-
tent of their respective interests therein," if such ass^ees
and grantees as to patents were not in this verj clause conn*
dered by Congress as having di^rent interests, and that these
were to be protected according to their reapedive extents?
It would have said, and must be made to say, if sustaiaing
the construction of the Court, " to the extent of that right,"
or " to the extent of that interest" and there slop. Mani-
festly, then, there is not conferred on these two classes, by
this clause, cither in its spirit or in totidem verbis, merely
" the right to use the thing patented," but on the contrary,
" the benefit of the renewal," " to the extent of
{ • 706 ] their respeclire interests in the * thing patented."
The interests of the grantees may be limited to the
use, and those of the assignees may not be, but include the
;ht to make and vend as well as use ; yet large or long bs
ay be the interests of either, the benefit of the renewal is to
iver them, if the extent of them, under the original assign-
ent or grant, reached to the new term. One is not to have
le whole of his interests protected and the other a part oolj,
hen their equities are the same. But the assignee is to have
I the extent of his, which is to make, vend, and use ; and
le grantee only " of the right to use " is to have to the ei-
int of his.

This, to my apprehension, is unquestionably the substance
f what Congress has said on this topic ; and yel it is only
f supposing new language not in the act, or by transposiog
ime of the old, so as not to be in harmony with the origiD*
ructore of the sentence, or by giving a meaning to words
ifferent from what has been established and, in my vi^"'
ily by doing this, that any foundation can be laid in BUp"
art of this part of the construction approved by the Court
ut " it is safer," said Mr. J. Ashhurst, " to adopt what tbe

PATENT CASES. 463

WUson v. Rousseau et a1. 4 How.

legislature have actually said, than to suppose what they
meant to say.'' 1 D. & E. 52 ; 6 Adolph. b Ellis, 7.

It may be well, also, not to foi^t, that it is always more
judicial, and less like legislation, to adhere to what Congress
have actually said, and that it is more imperative to do this
when by adhering to it you carry out, as in this (»se, the ma-
fest intention of the previous part of the section. Nor can
the inconsistency produced by the construction of the Court
be without influence in creating doubts as to its correctness ;
as by it *^ the benefit of the renewal " will be extended to as-
signees and grantees not in ratio with << their respective inte-
rest,"— the words of the law — nor in conformity with their
respective contracts, nor according to the respective consider-
ations they have paid, nor in proportion to the respective
losses they have sustained, but, under the same general per-
mission as to the extent of the '^ respective interests " of both,
one class will be allowed to the full extent of his previous in-
tereirt, and the other to only a part of that extent.

By what authority, let me respectfully ask, is this general
permission thus divided, and in one class or case limited and
in the other not ? By what legal authority are assignees cut
off from a valuable portion of their interests in a patent, while
grantees to use the thing patented are allowed to exercise the
whole of theirs, and both under one and the same general
permission, covering all ** their respective interests " ? To
make this discrimination, and allow to one class the full ex-
tent of their interests and to the other not the full extent of
theirs, when the law says it' shall be *^ to the extent of their
respective interests/' and when their respective contracts and
equities show that this should include both the duration and
quantity of their interests, looks like a distinction in
a great degree arbitrary, * and not a Uttle in conflict [ * 707 ]
with the plain words and design of the act of Con-
gress.

464 PATENT CASES.

Wilcon V. BoQsteaa et al. 4 How.

But, beside this further departure from what seems to me
the obvious meaning of the eighteenth section ^ caused by this
branch of the construction of the Court, it will fail, I fear, as
any compromise of the diflSculties arising under the sectioo)
if any compromise be expected from it. It is not likely to
avert ruin from moet of those indigent inventors, who have
in their distresses resorted for aid to the delusive provisions
of that section. Their very necessities and embarrassments,
which are the justification for granting the renewal to them,
have usually forced them to sell and assign all the original
patent, as was the case with Woodworth in this instance ; and
if in such circumstances the law is to strip them of all bene-
fits under the renewal, and, without any contract to that
effect, confer those benefits on the assignees and grantees of
the old patent, the law is perfectly suicidal as to the only dO'
sign to be effected by its bounty. But if, seeing this, the
construction is modified, as here, by the Court, so as to de-
prive the patentee in such cases of only the benefits of the
use of his old patent or old machines during the new term,
this qualification in the operation of the law will, it is appre-
hended, usually prove a mere mockery, working, in most cases,
as fully as the Court's construction without the qualification
would, the entire defeat of the laudable object of the renewal
towards patentees. In one or two of the cases now before us,
the patentee, under this construction, will still be subjected
to defeat and burdensome costs. In relation to its effect on
the present patent as a whole, all the conseqences cannot
now. be ascertained. But it is admitted, that the inventor bad
assigned the whole of the old patent, so that no right whatever
to use will remain in his representatives to dispose of; or if a
right remains where machines are not now in actual use, pro-
bably enough are now in use to supply, for some time, the
public wants in most parts of the United States.

The right to continue to use them will probably last during

PATENT CASES. 465

Wilson V. Botuseau et al. 4 How.

the whole seven years the renewal runs, as the machine will
usually, with proper repairs, do service beyond that time.
It will not, then, be very difficult to calculate what value, dur-
ing the seven years, will be derived from the right to make
and vend machines, when the use of others already in existence
is scattered over every section of the country, and they may
be employed all the time of the extended patent, without the
assignees or grantees ever having paid or being obliged to pay
a dollar for that extended use.

Looking, then, to the beneficent design of the eighteenth
section, to enforce the Constitution, by advancing science and
the arts, and protecting useful inventions, through the security
for a longer term to men of genius of a property in their own
labors, in cases where they had not been already remunerated
for their time and expenses, I cannot but fear that
the construction given by the * majority of the [ • 708 ]
Court will prove most unfortunate. It will tend to
plunge into still deeper embarrassment and destitution, by
tosses in litigation and by deprivation of a further extended
sale of their inventions, those whose worth and poverty in-
duced Congres to attempt to aid them.

Nor would a different construction tie up, as some suppose,
the future use of numerous patents. Of the fourteen thou-
sand five hundred and twenty-six heretofore isued, since the
Constitution was adopted, I am enabled, by the kindness of
the Commissioner of Patents, to state, that only ten have been
renewed under the eighteenth section during nearly ten years
it has been in operation.

And if the individuals who use the improved machines, the
fruit of the toil and expense and science of others, were
obliged in but one case in a year, over the whole country, to
pay something for that further use, is it a great grievance ?
They are not obliged to employ the patent at all, and will not,
unless it is better by the amount they pay than what was in

466 PATENT CASES.

Wilson V. Boasseaa et ftl. 4 How.

use before. And is it a great hardship or inequitable, where
they are benefited by another's talents, money, and labor, to
compensate him in some degree therefor ?

While other countries, and Congress, and our State Courts
are adopting a more liberal course yearly towards such pub*
lie benefactors as inventors, I should regret to see this high
tribunal pursue a kind of construction open to the imputation
of an opposite character, or be supposed by any one to evince
a feeling towards patentees which belongs to other ages rather
than this (and which I am satisfied is not cherished) as if pa-
tentees were odious monopolists of the property and labors
of others, when in truth they are only asking to be protected
in the enjoyment and sale of their own, — as truly their own
as the wheat grown by the farmer, or the wagon built by the
mechanic.

Nor should we allow any prejudices against the utility of pa-
tents generally, and much less against the utility of the inven-
tion now under consideration, to make our constructions more
rigid in this case. The settled doctrine of the Courts now^
under the lights of longer experience, though once other-
wise, is in doubtful cases to incline to constructions most
favorable to patentees. Grant et al. v. Raymond, 6 Peters,
218 ; I Sumner, 485 ; Wyeth v. Stone, 1 Story's Rep. 287;
Blanchard v. Sprague, 2 Story's Rep. 169. Nor is it strange
that this should be the case in the nineteenth century, how-
ever different it was some generations ago, when we daily
witness how the world has been benefited since by the pa*
tented inventions and discoveries in steam, in all its wonder-
ful varieties and utilities, and in cleaning, spinning, and weav-
ing cotton by machinery for almost half the human raoe, and
in myriads of other improvements in other things, shedding so

benign a light over the age in which we live, and
[ * 709 ] most of them excited and matured only * under the

protection secured 4o their inventors by ah enlight'
ened government.

PATENT CASES. 467

" ' ' ' ' «

Wilson V. Turner. 4 How.

Some estimate can be formed of the usefulness of the pre-
sent patent, and its title to favor, when one machine is com-
puted to perform the labor of planing and grooving in one
day that would require fifty days by a man, and which is sup-
posed to reduce near seven tenths of the expense of such work
in every building where the improved method is used, — as it
ere long will be by the many millions of our own population,
and in time over the civilized world. Every honest social
system must shield such inventions, and every wise one seeks
undoubtedly to encourage them.

To be liberal, then, in the protection of patentees, is only
to be just towards the rights of property. To stimulate them
in this and other ways to greater exertions of ingenuity ^d
talent is to increase the public wealth, and hasten the progress
of practical improvements, as well as of science. And to dis-
countenance encroachments on their rights, and defeat pira-
cies of their useful labors, is calculated in the end to better
the condition of every rank in society, and introduce wider
and faster all the benefits of a superior state of civilization
and the arts.

James G. Wilson, Complainant and Appellant v. Joseph
Turner, Junior, and John C. Turner, Defendants.

[4 Howard, 712. January T. 1S46.]

The dedsion of the Court in the two preceding cases, namely, that where a
patent is renewed under the Act of 1836, an assignee under the old patent has
a right to continue the use of the machine which he is using at the time of
the renewal, again affirmed.

This case came up, by apped, from the Circuit Court of

468 PATENT CASES.

Wilson V. Tarner. 4 How.

the United States for the District of Maryland, sitting as a
Court of Equity.

The bill was filed by Wilson, as the assignee of William
W. Woodworth, the administrator of Woodworth, the pa-
tentee, as stated in the report of the preceding case. It set out
the patent and assignment, and then prayed for an injunctioD
and account.

The answer referred to the mutual assignment made be-
tween Woodworth and Strong on the one part, and Toogood,
Halstead, Tyack, and Emmons of the other part, which was
recited in the preceding case, and traced title regularly down
from these latter parties to the defendants.

A statement of these facts was agreed upon by counsel, and
all the documents set forth at length ; and upon this statement,
together with the bill and answer, the cause was aigued.

At April term, 1845, the Court dismissed the bill, and
from this decree the case was brought up, by appeal to this
Court.

It was argued by Phdpa and Webster^ for Wilson, the
appellant, and Schley, for the appellees, who were the defend-
ants below.

Mr. Justice Nelson delivered the opinion of the Court.

The judgment of the Court in the previous case of Wilson
V, Rousseau et al., disposes of the question in this case,
affirms the decree of the Circuit Court.

PATENT CASES. 469

Simpson et al. v, Wilson. 4 How.

Andrew P. Simpson, Joseph Forsyth, and Bagdad Mills,

Appellants t;. James G. Wilson.

[4 Howard, 709. January T. 1846.]

The decision of tjie Court in the preceding case of Wilson v. Boussean et al.,
nameljr, that when a patent is renewed under the Act of 1836, an assignee
under the old patent has a right to continue the use of the patented machine,
but not to vend others, again affirmed.

An assignment of an ezclnsire right to use a machine, smd to vend the same to
others for use, within a specified territory, authorizes the assignee to Tend
elsewhere out of the said territory, the product of said machine.

The restriction upon the assignee is only that he shall use the machine within
the specified territory. There is none as to the sale of the product.

This case came up on a certificate of division in opinion
between the judges of the Circuit Court of the United States
for the District of Louisiana, sitting as a Court of Equity*

Wilson was the complainant below, who filed a bill, and
obtained an injunction against Simpson, Forsyth, and Mills.
After sundry proceedings in the case, Forsyth put in a plea,
and a rule was obtained, that the plaintiff should show cause
why the injunction should not be dissolved. Upon argument
the Court dismissed the rule, and the case was set down for
hearing by consent of parties ; the complainants not admit-
ting the facts alleged in the plea, but for the purpose of rais-
ing the questions of law which they involved, and obtaining
a speedy decision of the same.

^ Upon the argument, the division of opinion aross [ * 710 ]
which will be presently stated.

The* facts in the case were these:

The patent for planing, &c., having been obtained by
Wood worth in 1828, as has been particularly mentioned in the
report of the preceding case of Wilson t;. Rousseau et al.,

VOL. II. — p. c. 40

470 PATENT CASES.

Sinpton et al. v. Wilson. 4 How.

Forsyth, one of the defendants below, became an assignee
under that patent for all its rights within the county of Es-
cambia, in West Florida. This took place in 1836.

Woodwortb, the patentee, havhig died, his administrator,
in 1842, obtained a renewal of the patent under the Act of
1836 ; and in 1843 assigned to Wilson, the compiainaDt be-
low, all the rights under the extended patent for the States
of Louisiana, Alabama, and the Territory of Florida.

On the I3th of April, 1844, the said Wilson instituted
proceedings in equity, in the Circuit Court of Louisiana, against
the defendants, on the ground that they infringed on his jost
rights by setting up and patting in operation the said patented
machines in the territory of Florida ; and by vending in New
Orleans lai^e quantities of dressed lumber, plank, &c, the
products of the machines there established.

In May, 1 845, the cause came up for hearing, as above
stated, when the following points were ordered to be certified
to this Court, namely : —

« J. G. Wilson r. Simpson et al. No. 1225.

*^ This case coming on to be heard on demurrer filed to the
plea of Joseph Forsyth, one of the defendants set down for
hearing by consent, and the matters of law arising on said
plea, the following points became material to the decision, and
being considered, the Court were divided in opinion on the
following points : —

" 1. Whether, by law, the extension and the renewal of
the said patent, granted to William Woodworth, and obtained
by Williafh W. Woodworth, his executor, inured to the be-
nefit of said defendant, to the extent that said defendant
was interested in said patent before such renewal and eiten-
sion.

" 2. Whether, by law, the assignment of an exclusive right
to the defendant, by the original patentee, or those claiming

PATENT CASES. 471

Simpson et al. v. WOboh. 4 How.

under him, to use said machine, and to vend the same to
others Tor use, within the county of Escambia, in the Terri-
tory of West Florida, did authorize said defendant to vend
elsewhere than in said county of Escambia, to wit, in the
city of New Orleans, State of Louisiana, plank, boards, and
other materials, product of a machine established and used
within the said county of Escambia, in the Territory of West
Florida.

" Wherefore, upon the request of defendants' counsel, it is
ordered and directed, that the foregoing points of law be cer-
tified for the opinion of the Supreme Court of the United
States.

*The case was argued by Gilpin and Westcott, [ •Til ]
for the defendants below, who were the appellants
in this Court, and by Henderson and i{. Joknaony for Wil-
son.

Mr. Justice Nelson delivered the opinion of the Court.

The questions in this case come up on the certificate of a
division of opinion in the Court below. The judgment of this
Court in the previous case of Wilson t;. Rousseau et al.,
upon the second question certified in that case, disposes
of the first question certified here, and is answered accord*
ingly.

The second question certified involves the point, whether or
not the assignment of an exclusive right to make and use, and
to vend to others, planing-machines, within a given territory
only, authorizes the assignee to vend elsewhere, out of the
said territory, the plank, boards, and other materials, the pro-
duct of said machines.

The Court have no doubt but that it does ; and that the
restriction in the assignment is to be construed as applying
solely to the using of the machine. There is no restriction,

PATENT CASES.

Sinpion M tl. B. WlboD. 4 How.

as to place, of the sale of the product. Certificate accordingly
to the Court below.

Order.

This cause came on lo be heard, on the transcript of the
record from the Circuit Court of the United States for the
District of Louisiana, and on the pmnts and questions oa
which the judges of the said Circuit Court were opposed in
opinion, and which were certified to this Court for its opinion
agreeably to the act of Congress in such case made and pro-
vided, and was argued by counsel. On consideration where-
of, it is the opinion of this Court, —

1. That, by law, the extension and renewal of the raid
patent granted to William Woodworth, and obtained by Wil-
liam W. Woodworth, bis executor, did not inure to the bene*
fit of said defendant to the extent that said defendant whs
interested in said patent before such renewal and extea-
sion; but the law saved to persons in the use of machines at
the time the exienaon takes effect the right lo continue the
use.

S. That an assignment of an exclusive right to use a mi-
chine, and to vend the same to others for use, within a spe-
cified territory, does authorize an assignee to vend elsewhere,
out of the said territory, plank, boards, and other matenals,
the product of such machine.

It is therefore now here ordered and decreed by ibis Court,
that it be so certified to the said Circuit Court.

PATENT CASES. 473

Woodworth et aL v. Wilson et al. 4 How.

William W. Woodworth, Administbatob, &c., and E.
V. BuNN, Assignee, Complainants and Appellants, v.
James, Benjamin, and Alpheus Wilson.

[4 Howard, 712. January T. 1846.]

An objection to the validity of Woodworth's patent for a planing machine,
namely, that he was not the first and original inventor thereof, is not sus-
tained by the evidence oiTered in this case.

Nor is the objection well founded, that the specifications accompanying the ap-
plication for a patent are not sufficiently fall and explicit, so as to enable a
mechanic of ordinary skill to build a machine.^

AfL assignee of the ezdnsive right to uae ten machines within the city of
Louisville, or ten miles round, may join his assignor with him in a suit for a
violation of the patent-right, under the circumstances of this case.

"* The bill was ifiled in this case, in the Circuit [ * 713 ]
Court for the District of Kentucky, by the com-
plainants, setting forth that William Woodwofth was the in-
ventor and patentee of a certain planing machine, describing
it ; also, the extension of the said patent to W. W. Wood-
worth, as administrator, and that E. V. Bunn, one of the
complainants, took an assignment from the said W. W.
Wood worth for the exclusive right of making, using, and
vending machines for planing, &c., under the extension of
the patent, within the limits of the city of Louisville, and in
the district of country ten miles around said city.

The bill further charges, that the defendants have, in vio-
lation of the rights of the complainants, erected and put in
operation in the city of Louisville a planing machine, &c.,
which machine is, in all its material parts, substantially like
and wpn the plan of the machine of the complainants, and
persists in using the same.

The defendant James Wilson answered the bill, substan-
tially denying most of the material allegations contained in it.

40*

474 PATENT CASES.

Woodworth et al. v. Wibon et al. 4 How.

The other defendants answered by denying that they had any
interest in the machine.

The Court granted ap injunction, enjoining the defendaDt,
James Wilson, from using the machine.

Afterwards an application was made to the Court, on be-
half of the complainants, for a rule upon the defendant, James
Wilson, to show cause why an attachment should not be
issued •against him for a violation of the injunction, which
was accordingly granted.

The defendant showed cause by affidavit, in which be
affirms, that immediately on the service of the injunction he
had ceased to use the machine mentioned in the bill, and

■

conformed himself to the order of the Court, and that he had
purchased and set up Bicknell's planing machine, which he
was using, and which was substantially different from the
machine of the complainants.

Much testimony was taken in the Court below, on the
question whether the machine which the defendant had sub-
stituted and was using was, in all its material and substantial
parts, like Woodworth's, which it is not material to refer to
more particularly. A great deal of testimony was also taken,
for the purpose of showing that Woodworth was not the
original inventor of the complainant's machine, which it is
also not necessary to recite.

The' cause afterwards came to a hearing on the merits,
upon the pleadings and proofs, and also upon the rule pre-
viously granted against the defendant, to show cause why an
attachment should not issue for a violation of the injunction,
and, after consideration, the Court dissolved the injunction
and dismissed the bill, and discharged the^rule to show cause,
with costs. Jk

As the opinion of the Court refers in general terms xo the

interest of Woodworth under the assignment, as a

[ ** 7 14 ] justification for his * being joined as a party in the

PATENT CASES. 475

Woodworth et al v. Wilson et al. 4 How.

suit, it is proper to set forth the assignment, which was as
follows.

'tVanafer from Woodworth, Administrator^ Spc., to E. V,

Bunn.

" Whereas William Woodworth, now deceased, did, in his
lifetime, obtain letters-patent, issued under the great seal of
the United States, bearing date the 27th day of December,
1828, giving and granting to him, the said Woodworth, his
heirs, administrators, and assigns, for and during the term of
fourteen years from the date of the said letters-patent, the
full and exclusive right and liberty of making, constructing,
using, and vending to others to be used, a certain improved
method for planing, tonguing, grooving, and cutting into
mouldings, or either, plank, boards, or any materials, and for
reducing the same to an equal width and thickness ; and also
for facing and dressing brick, and cutting mouldings in, or
facing, metallic, mineral, or other substances.

"And whereas William W. Woodworth, administrator of
said William Woodworth, hath applied and obtained an ex-
tension of isaid letters-patent for the term of seven years from
and after the expiration, of said patent, to wit, the 27th day
of December, 1842, pursuant to an act of Congress in such
case made and provided, and hath a certificate of said exten-
sion annexed to said patent, signed by the Commissioner of
Patents, under the great seal of the Patent Office of the
United States, and dated November 16th, A. D. 1842. And
whereas £. V. Bunn, of the city of Louisville, in the State of
Kentucky, hath fully viewed, examined, and considered for
himself the said ynprovement, and of his own motion hath
requested and desired the said William W. Woodworth, ad-
ministrator of said WilKam Woodworth, deceased, to give a
license and permission, in writing, for constructing and using
machines on the said improved plan in the city of Louisville
aforesaid, including the district of country within ten miles of

476 PATENT CASES.

Woodworth et al. v. Wilson et ftl. 4 How.

said city, and in no other city, town, or place in the United
States, or the territories thereof, on the conditions hereinafter
mentioned ; and have offered to pay him the sum of fifteen
hundred dollars for such license and consent in writing; with
which request and desire the said William W. Woodworth,
administrator of William Woodworth, deceased, has agreed
to comply.

. *< Now, know all men by these presents, that the said W.
W. Woodworth, administrator of William Woodworth, de-
ceased, in consideration of the said sum of fifteen hundred
dollars, secured to be paid to him, the said William W.
Woodworth, administrator of William Woodworth, deceased,
doth hereby give his full consent and permission in writing,
and license to the said E. V. Bunn, and to his executors, ad*
ministrators, and assigns, to construct and use, during the
said extension of the aforesaid patent, ten planing machines

on the improved plan aforesaid, within the city of
["^TIS] Louisville, *and including the district of country

within ten miles of said city, and in no other city,
town, or place within the United States or the territories
thereof; and also, within said limits, to dispose of the plank
or other things dressed and prepared in the said machines ;
and he doth also hereby authorize and empower the said E.
V. Bunn, and his executors, administrators, and assigns, in
the name of said Woodworth, administrator aforesaid, or in
his own name, to commence and prosecute to final judgment
any suit or suits against any person or persons who shall con-
struct or use the said improvements within the said limits,
contrary to the true meaning and intent of the aforesaid let>
ters-patent, and the extension thereof, and^ the law in such
case made and provided ; and to reeeive for his own benefit,
and at his own proper costs and charges, any penalty or
penalties which he may recover. And in consideration of the
premises, it is hereby covenanted and agreed, by and between
the said William W. Woodworth, administrator of William

PATENT CASES. 477

Woodworth et al. v. Wilson et al. 4 How.

Woodworth, deceased^ his executors, administrators, and
assigns of the one part, and the said E. V. Bunn, his execu-
tors, administrators, and assigns of the other part, as follows,
namely : —

" 1st. That the said William W. Woodworth, administra-
tor of William Woodworth, deceased, his executors or ad-
ministrators, during the terms aforesaid, shall not, nor with
themselves, construct, or use, nor give their license, consent,
and permission to any other person than the said E. V. Bunn
to construct or use, the improved planing machine, aforesaid,
within the said city of Louisville, or within the district of
country within ten miles of said city.

<< 2d. That the said E. V. Bunn, his executors, administra-
tors, and assigns, shall not nor will, during the times afore-
said, construct or use more than ten machines as aforesaid
within the limits above mentioned, nor construct or use any
such machines, nor sell and dispose of any plank or other
thing dressed anii prepared in such machine, anywhere else
within the United States and the territories thereof; it being
declared to be the true intent and meaning of these presents
that not more than ten planing machines in the whole shall
be constructed and used by virtue of the license, consent, and
permission herein given. .

'^ 3d. It is understood and agreed that the said William
W. Woodworth has entered and filed at the Patent Office, at
Washington, a disclaimer of that part of said patent for the
planing machine which claims the reduction of materials,
boards, and plank to an equal width and thickness by circular
saws ; and a lien is retained and renewed oh this assignment
for the security of the payment of the fifteen hundred dollars,
— the consideration and purchase-money to be paid to said
Woodworth.

Signed, sealed, and delivered, this 21st day of June, 1843.

W. W. Woodworth, [l. s.]
Administraiar of W. Woodwarthy deceased.

478 PATENT CASES.

Woodworth et mL v, Wilson et al. 4 How.

[*116] '< The words < to him in hand paid by the said'

were erased, and tho word ' ten,' and the words ' in

the*name of said Wood worth, administrator aforesaid, or in

his own name,' were interlined before the execution of the

foregoing instnufient in presence of D. EL Sickles.^'

The cause was aigued by Latrcbe and Staples^ for the
complainants, Woodworth and Bunn, and by JSifrfr, for the
defendants.

Mr. Justice Nelson delivered the opinion of the Court.

The objection taken, that the administrator could not apply
for an extenuon of the patent granted to Woodworth, his in-
testate, under the eighteenth section of the Patent Law, has
been disposed of in the previous case of Wilson v. Rousseau
et al., and need not be further noticed.

Another objection taken to the right of the complainants
to maintain the suit is, that Woodworth was not the first and
original inventor of the planing machine, against the using of
which the defendant was enjoined.

Without going into the proofs in the case, which are very
voluminous, it will be sufficient to state, that after fully con-
sideling all the evidence produced bearing upon the question,
the Court is satisfied that the weight of it is decidedly against
the objection, and in favor of the allegation in the bill, that
Woodworth was the original inventor of the machine.

It is objected, also, that the specifications accompanying
the patent were not sufficiently full and explicit, so as to ena-
ble a mechanic of ordinary skill to build a machine. The
Court is not satisfied, according to the proof in the case, that
the objection is well founded, and it cannot be relied on as
afibrding sufficient ground for the dismissal of the bill.

A further objection was taken, that W, W. Woodworth,
one of the complainants, was improperly joined with E. 7.

PATENT CASES. 479

HoTej V. Stereos. 1 Wood. & Minot

Bunn, the assigiiee of the exclusive right in Louisville and
ten miles around it. The Court is of opinion, that the inte-
rest of Woodworth in the assignment, as appears from the
record, is sufficient to justify his being made a party jointly
with the assignee.

Some otiier objections were taken to the maintenance of
the suit on the argument, which it is not material to notice
particularly ; they have all been considered, and in the judg-
ment of the Court afford no sufficient ground for the dismissal
of the bill and the dissolving of the injunction.

We think the Court erred, and that the decree dismissing
the bill, as to the defendant James Wilson, and dissolving
the injunction, should be reversed, and that a perpetual in-
junction should issue.

William Hovet, in Equity, t;. Silas Stevens.

[1 Woodba^ & Minot, 290. May T. 1846.]

Where a bill is filed for an injanction against the nse of a patent, and the an-
swer denies the nse of it, and also the originality of the inyention, if the de-
nial is supported by affidavits bringing the originality of the invention into
dottbt, an injanction will not issue till the parties settle the right in an action,
which is pending between them at law, for a violation of the patent, unless
the complainant shows, that he has for some time been in the undisturbed
use and sale of his patent, or has recovered damages against others for the
use of it.

* Nor can a patent be aided in respect to such an use or such recover- [* 291 ]
ies, if it be one useful in respect to anodier patent for another in-
vention, where such an use and such recoveries have been had, unless it is
connected in law to that patent and is a part of it

It is doubtful, whether a mere change in the mode of fastening knives on a
cylinder to be ground, or to fasten one instead of several, is a change in
'structure from an old machine sufficient to justify a patent for it.

480 PATENT CASES.

Hovej V. SteTens. 1 Wood. & Minot.

If the respondent constnicted and vBed his machine before the complainant Uxk
oat a patent for his, it is not a justification, if he had seen and copied an im-
provement from the complainants.

If the patentee claims,^ as a part of his invention, some things which are old
and some new, he cannot succeed, withont disclaiming what is old.

It should appear also with reasonable certainty, whether the complainant in his
patent claims a new combination of old parts and things, or a new invention
of new parts, and if not intelligible as to which is claimed, the patent may
be void for uncertainty.

Declarations of a party, made before the dispute arose, in connection with acts,
may be competent evidence for him, as tending to show what intentions then
existed.

This was a bill in equity, filed April 14th, 1846, for an in-
junction against the defendant not to make or use a machine
^^ for grinding tools," for which a patent had been taken out
by the plaintiff, September 23d, 1 845.

Among other things, the bill alleged that the plaintiff, be-
fore February 12th, 1844, had invented and obtained a patent
for a machine called '^Hovey's. Spiral Revolving Straw Cut-
ter," which, on the Ist of April, 1845, was violated by the
defendant and one E. Hovey, who were sued therefor, and
the action against the defendant settled or compromised, and
that against Hovey prosecuted to a verdict and judgment in
favor of the plaintiff. It was further averred, that the ma-
chine for grinding tools was necessary to make the oth^
useful, being adapted to grind the knives in the straw-cutter
and being a highly beneGcial machine for that purpose, and
that it was copied and infringed upon by the defendant, Oc-
tober 1st, 1845, to an extent very injurious to the plaintiff.
That for this an action at law has been instituted against him,
but before a trial can be had, the damage is likely to be great,
and the defendant is irresponsible, and, therefore, an imme-
diate injunction is prayed for.
[ * 292 ] * Various other matters were detailed in the bill,
but it is not necessary to repeat them, except as
some of them may be mentioned in the opinion of the Court.

PATENT CASES. 481

Horej V, Stereos. 1 Wood. & Minot.

The answer denied the originality of the invention, and
all the principal allegations affecting the defendant and was
sworn to, accompanied by several affidavits. Others were
put in by the plaintiff, which will b^ referred to in the opi-
nion.

The case was argued at this term by Halleti and Charles
Sumnefy for the complainant, and Sianton and Charles L,
Woodbury y for the defendant.

WooDBu&T, J. t shall pass by all the formal objections to
the bill in this case, as being multifarious, and as seeking dis-
tinct objects, some of which are supposed by the defendant to
be improper and untenable. Because a decision on the me-
rits may be more satisfactory to both parties, if there be enough
in the case to enable me to form one.

Nor is it necessary to settle in detail the objections to some
portions of the depositions, which are excepted to as incom-
petent ; because my opinion will not rest on those portions
where the declarations of third persons, not agents nor wit-
nesses, are introduced by either side ; or those of the parties
are introduced by themselves, unless made before this dis-
pute and proving the existence of certain inventions in con-
nection with certain acts before a particular date. In such
case, as developing a link in a transaction, they may be com-
petent See Burnham t;. Bangeley, ante^ p. 7, and cases
there cited.

Looking then, to the merits, before deciding whether thi
patent of the plaintiff for grinding tools has been violated or
not, it is necessary to ascertain first, what is the extent and
character of it ; how are they, if this patent is considered as
standing alone ? and how are they, if it is considered as con-
nected with the prior patent by the plaintiff for cutting
straw?

VOL. II. — p. c. 41

482 PATENT CASES.

Hovey v, Steyens. 1 Wood. & Minot

[ * 293 ] * Standing alone, the patent itself purports to be
iperely for << a new and useful improvement in ma-
chinery for grinding tools."

When we refer to the schedule annexed for a specific and
more minute description of it, the patent is described to be
^^ a new and useful machine for grinding the twisted or spiral
cutters or knives used in the machine for cutting straw, and
generally known as Hovey's straw-cutter."

There is then added, " The nature of my invention coo-
sists in attaching the twisted (sometimes called spiral) blades
or cutters to a flange, projecting from a stock, hung on jour-
nals in traversing carriage, so as to present the back of the
cutter to be ground to the action of a grindstone or other
reducing or polishing wheel, so that as the cutter on the car-
riage traverses lengthwise, it shall vibrate freely on the axis
of the stock to which it is attached, to follow the twist of the
blade, and grind it to a sharp edge, such as is required in
cutting by impinging the cutting edges against the surface of
a cylinder by the rotation of the two cylinders or the catting
cylinder on a plane, the cutting being effected by a pressure
towards the centre of the axis of the cylinder of knives. The
reciprocating motion of the cutters during the traverse motion
being governed by the spiral or twisted surface of the knife
itself, or any thing analogous thereto." Had the specification
closed here, or only made references afterwards to the draw-
ings, and some particulars as to gearing and details in the
construction, there could not be much doubt that the patentee
intended to claim, as a part of his invention, the ** attaching
the twisted (sometimes called spiral) blade or cutters, to a
flange projecting from a stock."

But he proceeds to add another description of his inven-
tion, in which this part is omitted, and details it as being ^' to
give to the stock to which the knives or cutters are attached,
a reciprocating motion on its axis whilst it traverses longitu-

PATENT CASES. 483

Hotej V. Stdrens. 1 Wood. & Miaot.

dinally before the grinder. And therefore/' says
he again, * in the summary which follows immedi- [ ** 294 ]
ately in -the close of his specification, <^ what I claim
as my invention, and desire to secure by letters-patent, is giv-
ing to the spiral or twisted knife or cutter, attached to a flange
in a line radiating (or nearly so) from the axis of the stock a
traversing motion in the direction of its axis, in combination
with a reciprocating rotary motion on its axis, when this lat-
ter motion is governed by the twisted plane of the cutter,
or any thing essentially the same to enable the grinder to
give the required bevel to the ground face and the proper
line to the edge, substantially in the manner herein describ-
ed."

From these two last descriptions of his invention, some
doubt is cast over the fact, whether the mode of attaching
the cutter to a flange in the stock, was intended as a part of
it or not. He says nothing about it in one of them, and in
the other, it seems more natural to regard what is said about
the attachment of the cutter, as a mere description of the
machine, than as a part of the claim of what had been newly
invented by him. This would confine the claim for inventive
novelty as he had just before done, to the ^^ traversing motion
of the stock, in combination with a reciprocating rotary nio-
tion on its axis."

From these last clauses, independent of the description in
the commencement of the specification, I should come to the
conclusion, that the attaching of the cutter to the stock was
not claimed as his invention, but merely used as a part of his
machine. But we can resort to the introduction of the spe-
cification as well as the summing up at the close, to ascertain
the true extent of the claim. See the cases collected in
DavoU V. Brown, ante, p. 53, 59. Adverting to that, I am
inclined to hold, for the purpose of this inquiry, that notwith-
standing the second description of his invention, omitting

PATENT CASES.

HoT«7 v. Staroni. I Wood, t Hinot
entirely the attachment of the cutlers and the final descrip-
tion of it, speaking of the attachment rather as a part of the
macbine, than a part of what he claimed as his ia-
[ * 395 ] vention, it * imy be i^arded as a portion of that
claim. Though in describing alt machines, mao;
parts mentioned are not new, nor claimed as what has been
nvented by the patentee, such as in this case the grindstone
and the bands, and several other portions, yet at first he seems
distinctly to claim this mode of attaching the knife as a part of
his invention ; and though not repeating that claim in another
description afterwards, and leaving it somewhat ambiguous in
the summing up, yet he does not expressly renounce it, aad
is therefore probably entitled to it. In the next place, coosi*
dering the attachment of the knife as a part of the claim, can
tbe whole invention be treated as a part and parcel of the
former patent for the straw-cutter? Tbe answer to this be-
comes material in the discusnon of future points, on accoant
of the longer possessioD enjoyed of the patent fw the straw-
cutter, and the verdicts which have been recovered for it, and
the settlement made formerly for the use of it by the preseol
defendant. But neither the patent nor specification for the
siraw-cutter, refers to the grinder, nor does the patent for the
latter say any thing of the grinder being autiliary to tbe
straw-cutting machine. It is described there as an " instru-
roent or machinery for grinding tools " generally ; and from
the evidence, it may be used to grind any tools, that need
a bevel or chisel edge, and can be securely attached or iiu-
tened into the stock. But in tbe specification, as before de-
it is described "as a new and useful machine forgrind-
; twisted or spiral cutter or knives used in the macbine
.ting straw, and generally known as Hovey's straw-cat'
It is not, however, claimed as having been invented
ie other. Its originality has never been tried with die
It is not taken out as a part of the .other, nor is tbe

PATENT CASES. 485

HoT^ V. Stevens. 1 Wood. & Ifiiiot

oath to its originality extended so as to embrace the other.
4 Wash. C. C. 259.

And though from the evidence, as well as the description,
it is, as averred in the bill, very useful and econo-
mical in the * manufacture or use of the other, yet [ * 296 ]
the patent for it being a separate independent pa-
tent, as is. the machine, it must be tried on its own merits,
and be protected according to the facts connected with its
own operations and use. The next inquiry on the merits,
then, arises and is whether the evidence shows an infringe-
ment on the patent for the grinder by the respondent, stand-
ing as it does alone and independent. There is some contra-
diction on this point. The respondent undoubtedly has used
a. grinding machine, where the transverse and rotary motions
are probably combined as here, and probably the cutters or
knives are attached to the stock in a like manner.

I say probably, because the witnesses, who describe his
machine as now used, do it in general terms as being like
Hovey's in appearance, ^without going into details on this
point, or producing the machine itself or a model of it. Per-
haps E. Hovey's affidavit is an exception, and in some re-
spects is particular enough, but not in others. The import-
ance of greater distinctness on this point hereafter will be
seen from the circumstance, that, by evidence on the part of
the respondent, and, indeed, by admissions by the counsel
for the plaintiff, the combination of these two motions is not
new. Most of Blanchard's machines for turning unequal
surfaces, contain them. If, then, the patent for the grinder
claimed, as newly invented, the combination of those two
motions and only that, the patent is not new, and the defend-
ant has not violated it by using a combination, which was so '
long and so commonly employed before.

iBut if he be considered as claiming also a new mode of

attaching the knives or cutters in a stock in order to be ground,

41 •

486 PATENT CASES.

HoTey V. Stevena. 1 Wood. & Miaot

as we have been inclined to construe it for the purpose of this

hearing ; and if it be proved, that the defendant uses the

same mode of attaching his knives to the stock, which seems

probable, though not shown with much certainty, then the

only consideration remaining under this head is,

[ * 297 ] whether that * kind of attachment or fastening is

new, so as to be entitled to protection by a patent

This must be proved by the testimony of more than one
witness, as urged by the counsel for the respondent, because
the answer is responsive to the bill concerning an infringe-
ment, and denies any novelty whatever in the patent, and is
sworn to. See Carpenter r. Prov. Wash. Ins. Co., 4 How.
185.

But Leonard Worcester, C. Wheelock, and Albert Cartis
testify, that the machines in use several years ago for grind-
ing clothiers' shears and other spiral knives, similar to one
produced in Court by the respondent, and proved to be prior
in use, by Lyman Wilder's affidavit and letter, did not fasten
the knives to a stock separately, but piit in the cylinder to which
the knives were attached, and fastened that, and ground all
the knives together in that cylinder. •

It further appears, that Hovey's cylinder, with all the knives
attached as in his hay-cutter, can be so inserted and fastened
to the stock, but are so close together as not to be then capa-
ble of being ground in that way to a chisel edge, which is de-
sirable ; and hence each knife must be placed in separately,
or a portion of the knives be removed from the cylinder, the
others standing further apart, and then in that position they
are capable of being ground together. I do not see any evi-
dence on the part of the defendant, which specially rebuts
this, or proves either that the defendant's machine does not
attach the knives separately to the stock, or if it does, that
such a mode of attaching the knives was in use many years
previous to Hovey's invention for the grinder. Showing

PATENT CASES. 487

Horey v. SteTens. 1 Wood. & Minot

either of these would have ended this inquiry. But this not
having been done, we must proceed to the next question
which is, whether such a change from the old form is a mate-
rial one, and though new in form is also new in principle ?
A novelty in principle may consist in a new and valuable
mode of applying an old power ; affecting it, not
* merely by a new instrument or form of the ma- [ * 298 ]
chine or any mere equivalent, but by something
giving a new or greater advantage. Now it is certain that
one knife in Hovey's hay-cutter, and in others like his, may
need to be ground alone, and though there it could be ground,
held in the hand or on the old plan, while fastened in the
cylinder, if as far apart from the other knives as the share?
are in the old shear cutters for cloth ; yet it could not be so
ground if set in the cylinder so near others as in Hovey's ma-
chine. And for aught which appears, it - could not be so
ground, if set as near together as in the defendant's ma-
chines, they being, 1 understand, like Hovey's in this respect,
and differing only in the manner of securing the knives on the
cylinder by rings at the ends rather than by screws. It may
seem a small change to attach single knives in a stock to grind
them, rather than several of them on a cylinder ; but is, per-
haps, a material one in all cases, like Hovey's and Stevens'a,
machines, where the knives are fastened so close together on
the cylinder as not to be able to be ground to the proper edge
together while on the cylinder. It is also in appearance a
small change, and, as one witness expresses it, a very obvious
change to any mechanic, when the occasion or exigency arises
for such a convenience, to alter the means of attaching a cy-
linder with several knives in it to the stock, so as to attach it
with a single knife or cutter in it, or with a flange and one
knife screwed to the flange. And I should like to hear
more evidence from mechanics and experts, whether such a
change merely in the fastening is a change of principle, or is

488 PATENT CASES.

Horey v, Sterent. 1 Wood. & Minot

any thing which is new in principle ; or whether one mode is
not a mere equivalent for the other, so as to fix one knife in-
stead of several in one cylinder or flange on a cylinder^ when-
ever it becomes convenient or necessary to grind one knife
alone. The testimony of Nourse and Eddy throws conside-
rable doubt over the novelty of this in point of principle, and

so do the cases cited in Phil, on Flit. 100, 125. But
[ * 299 ] * at present, I feel disposed to regard it as new,

though with some hesitancy. The rotary motion
possibly may be shown to be imparted diflbrently to the sin-
gle knife attached to the stock in Hovey's grinder, from what
it is when the cylinder is attached as in Stevens's. My own
opinion at first was, that the rotary motion in the old ma-
chines was obtained by the ends of the axle of the cylinder
resting loose enough to revolve easily in holes or boxes or ar-
bours, and the ends in Hovey's being fixed and not revolving,
but the piece to which the flange was attached being hollow,
and revolving on a solid bar. But I find, on further examina-
tion, that both the cylinder to which the old knives were
attached and the stock to which the single knife is attached,
have their ends resting on screws which enter each end, and
revolve probably in the same manner.

And so may Stevens's new machine revolve ; though his
old one, which is present, is believed not to. If this be so on
seeing Stevens's machine now in use, and having it critically
examined, the consequence must be, that the only difierence
between his and the old machine for grinding, or between
Hovey's and the old ones, will be, that in the old ones all
the knives revolved as attached to a cylinder, and in the others
only one may revolve so attached. For the 9tock to which
the flange for the single knife is attached, may be and is a
cylinder, or a cylinder with a flange. If there be any other
difierence between the grinders, it will consist in the fasten-
ing this single knife to the flange with screws in Hovey's

PATENT CASES. 489

Hovey v. Sterens. 1 Wood. & Minot

machine, while in Stevens's it may be so fastened or may be
secured at the ends, as in the old machines, by rings or other-
wise, and not by screws. More light and certainty on these
particulars are desirable, and may^ in the end, be very im-
portant. For without some difference in producing the rotary
motion, a change merely in 'attaching several knives on a cy-
linder to attaching but one, or in attaching that one to a flange
on thecylind er by screws, instead of attaching it to
* ther cylinder by rings at the end, hardly seems a [ * 300 ]
sufficient change in form, or principle, or results, as
to grinding, to justify a patent. In that event, this patent
might be invalid without the further objection urged by the
defendant, that the grinder has neither new parts, nor a new
combination. It would then be, as Nourse and Eddy testify,
composed of changes from the old grinding machine, which
are probably either formal or mere equivalents, and exhibit no
new power or principle. In the case of Hpvey's straw-cutting
machine, which has been adverted to in argument, the new
fastening by screws was such as enabled a party to adjust the
knives, if becoming uneven or unequal in width, and when
they* otherwise would not be adjusted. It was likewise so
constructed as to take one out, and grind or repair.it alotie
with ease, when before it could not be. But here no such
gain as to adjustment in grinding is obtained by this fasten-
ing of one to a flange by a screw, because one left alone in a
stock, or at a greater distance from others, could be ground
on the old cylinder as well as in the new way. Leaving this
point, then, to be settled definitely hereafter on fuller testi-
mony and examination by experts, (and I leave it for this in-
quiry and for this only, as if favorable to the plaintifT, in order
to reach other matters,) I shall proceed to the next question
that is controverted. Nothing is said here as to the perma-
nent stock itself being claimed in the patent as a new inven-

490 PATENT CASES.

HoYey V. Sterens. 1 Wood. & IGnot.

tion by the plaintiff^ and hence I shall make no comments on
that point.

The next question is, whether the respondent did not him-
self, before Hovey obtained his patent, discover or construct
this new mode of fastening ; and if he did, whether it would
be reasonable or legal to restrict him in the use of it, because
Hovey afterwards procured a patent for it

As to this, on the whole evidence, it is very clear that Ste-
vens erected his machine for grinding before Hovey obtaioed
his patent. It is also proved that he had projected
[ * 301 ] such a * machine or contemplated it, before he saw
Hovey's or had Fisher in his employment. It is
further manifest, that all the parts of it insisted on, except the
mode of attaching the single knives, had been in use and
well known to mechanics for many years previously. At the
same time, it is very evident that he did not perfect his ma-
chine as now used in all its parts till he had seen Hovey's, which
was made as early as 1843. That a workman with him, by
the name of Fisher, had befcnre lived with Hovey, and used
the grinder, and had afterwards reexamined Hovey's. And
that the defendant's resembles Hovey's not only in general
form and principle, but in some accidental defects. Under
these circumstances, it becomes a very important question,
whether he did not copy his invention in some respects from
Hovey's, and especially as to the mode of attaching single
knives, and giving to them a rotary motion. If he did this,
without Hovey's consent, and before he made his machine
public or sold it, I should think that his use of such a grinder,
though begun before Hovey obtained his patent, ought not to
be protected. It would be a use by fraud, and could not be
contemplated and saved under the Act of 1839, ch. 88, ^ '7,
5 Stat, at Large, 354. To be sure, that act in broad terms
allows any one to use and vend a machine, which he has pur-

PATENT CASES. 491

Hovey v, Stevens. 1 Wood. & Minot.

chased or constructed before the inventor applied for a pa-
tent. This, however, I think must be construed to mean a
purchase of the inventor or his grantee, or a construction by
their consent, or by his own ingenuity. Hence, if he himself
invented it before, or if he copied it before from other invent-
ors than Hovey ; or if Hovey consented to the construction
or use of one machine of this kind by Stevens for grinding,
of which there is some testimony, then the respondent should
not be restrained in the continued use of that one machine,
whether we look to the act of Congress itself, or to what is
reasonable and equitable, independent of the act. 1 Paine,
348.

But, as before remarked, if he constructed it by a
fraud *and piracy on the inventor, I shall hold, for [ *302 ]
,the purpose of this examination, that he is not pro-
tected. So grave a question as this of fraud, and where the
testimony as now, is conflicting, it would hardly be decorous
for me to settle in this preliminary inquiry, when the same
question is soon to be tried by a jury in the action now pend-
ing at law between these same parties, for a violation of this
patent.

And the more especially is it inexpedient for me to setde
it under such circumstances, when it does not appear that in
the mean time any very great additional damage can occur to
the plaintiff; or that the defendant may not have sufficient
property, though not wealthy, to respond for such further
small injury as is likely to occur during the present term, till
a trial will probably be had.

In addition to these considerations against deciding the
question of fraud now, and, if adjudged for the plaintiff,
against now issuing an injunction, there are several others of
some moment. One is this :

Does the plaintiff claim this mode of fastening as only a
part of a new combination, though old in and of itself, sepa-

PATENT CASES.

HoTOj ti. Sleroii. 1 Wood, t Ifinot.

lately aa a piece of machinery ? Or does be claim to have
invented originally that mode of fastening ?

The specification it somewhat uncertain on this point, and
as it baa not been much adverted to in argument, and the
conBtniction adopted may have a decisire influence on the
result in the trial at law, I do not propose to decide it now.
If the specification be so uncertain, in this respect as to be
unintelligible, it would be v<Hd, and it will have to be surren-
dered and amended. Lowell v. Lewis, 1 Mason, 182. Bat
if it be clear and distinct, as beti% only a new combination,
then there is no daim to invention except in regard to the
combination, and no parts of the machine need be proved to
be novel. While on the contrary, if it be clear that the mode
of fastening is claimed as newly invented by him, then he
must prove that as new, and also satisfy the Court
[ * 303 ] that he * can unite, in the same patent, chiims for a
new invention of one port, and for a new combina-
tion of that and a rotary with a transverse motion, which is
old.

Or that he can claim them as a new combination through-
out, when it is new only in part. Whitteraore v. Cutter,
1 Gall. 429. If he does not so satisfy the Court, be will, in
that event, likewise have to take out a new specification for
only one of those cUums, and a new patent for the other, or
-disclaim such part as is not new. See Whittemore v. Cutter,
1 Gall. 429 ; Lowell v. Lewis, 1 Mason, 132 ; 3 Wash. C. C.
443 ; 1 Paine, 441.

Again, in respect to the present application. An injunc-
tion, when asked before the trial and resisted, is never to
- — 3 as a matter of course ^11 the trial. There must, in such
:, in order to obtain it in advance, be proof not only of a
mt, but also of some length of use under it, or some con-
rable sales of it, or some recovery, establishing the validity
m patent, so as to impart to it weight or strength as valid

Latent cases. 493

» ■ ■ ■ ' ■ " '

Hovej V. Stevens. 1 Wood. & Minot

beyond the lAere issue of it. Here ^re neither. The patent
issued only in September, 1845, «nd the oflfence is averred
to have happened in the next month, and the proof is, that
the patent was not taken out at all till the plaintiff saw the
defendant use the machine, and then took out the patent in
order to prosecute him. There have been no sales of it
proved.

There has, likewise, been no recovery or settlement shown
by anybody, tending to establish the validity of the patent
fpr the grinder, but only of the hay-cutter, a separate and in-
dependent machine, as before explained ; and the invention
and validity of which are questions distinct from those in the
grinder, and in discussing which in trials heretofore, it is not
pretended that the invention or validity of the grinder have
been canvassed at all, or in any way passed upon, either by
Courts or juries. These last circumstances are of course no
bar to the recovery in the action at law, for an in-
fringement * of a patent, but they disable a party [ * 304 ]
from obtaining an injunction in advance.

If an injunction should issue in advance of the trial in a
case like this, without any of the above circumstances to jus-
tify the right claimed by the patent, it should issue in all cases
00 the patent alone, though resisted and impugned by the
opposite party. But such never has been the law, and if the
practice was adopted, it would produce often heavy losses
and irreparable mischief among conflicting claimants. While
the present course gives ample redress in damages, if the
plaintiff succeed for an infringement, and moreover, in case
of long use, numerous sales, or previous recoveries, adding
strength and greater probability of validity to his patent be-
yond merely getting it out, will assist him by a preliminary
injunction. In Orr v. Littlefield, Nov. Term. N. Hamp. Dist.
' Cir. Ct. ante, p. 13, where most of the precedents are col-
lected, not a case is given where an injunction, when resisted,
VOL. II. — p. c. 42

494 PATENT CASES.

Hoyej V. SteTens. 1 Wood. & Minot.

was granted, unless a ppssession and use of the patent had
existed for some time. The shortest was three years, and,
in most of the cases there collected, the time had been seve-
ral years longer. Here the time had not been one month
before the alleged infringement, and only about half a year
before this suit was instituted, being, in the words of the
decision in 3 Merivale, 624, a patent of but " yesterday/'
when the alleged violation occurred. In most of these cases,
also, there had been numerous sales of the patent, and reco-
veries for violations. Here there have been none of either.

Again, in many cases there referred to, it is shown that
when possession for some years has existed, or numerous
sales, or recoveries, the Court will not refuse an injunction,
or dissolve it on a denial of the validity of the patent by a
respondent, either through affidavits, or an answer, or other
pleadings. Yet, on the other hand, as there shown, if none of
those fortifying circumstances exist. Courts will not only re-
fuse an injunction, if one has not before been grant-
[ * 305 ] ed, but ^ also dissolve it if it has been previously
allowed, provided the validity of the patent is denied
or brought into doubt. Here there is an entire absence of
all those fortifying circumstances, and there are also pleadings
in this denying the validity of the patent, as well as in the
case at law in relation to this same subject. Besides these
considerations, some doubts are cast on the originality and
validity of the patent for the grinder by the evidence of Nourse,
Eddy, and others ; and an issue on that is framed, and is to
be tried in the action at law, and, without deciding on that
question now, except pro/omwi, as before remarked, in order
to reach the other points, it is doubtful enough to prevent the
allowance of an injunction, where none of the counterbalanc-
ing and fortifying circumstances exist that have just been re-
ferred to. 4 Wash. C. C. 614.
The injunction, then, cannot be granted, as the case now

PATENT CASES. 495

Woodworth et aL v, HaU efc aL 1 Wood. & Minot.

Stands ; but 1 shall not dismiss the bill, till it can be seen dur-
ing the term, whether any new facts shall be developed by
the trial or otherwise, that may require a different disposition
to be made of it, in order to enforce substantial justice be-
tween these parties.

Injunction refused.

WiLLiAir W. Woodworth and others in equity t;. Isaac

Hall and another.

[1 Woodbury & Minot, 248. Maj T. 1846.]

An injunction will not be issued against a respondent's using a machine, unless
it is proved, that he has used it himself, or employed others to use it for him,
or at least has profited by the use of i(.

Where long possession of a patent has existed, and frequent recoyeries under
it, an iig unction will be issued, the originality of the invention by the paten

* tee not being denied, unless the letters appear for some cause illegal or Toid.

Where Congress granted an extensioi^ of the term to an administrator, it was
held to be legal, and that the letters of administration need not be produced
after such a grant.

A signature to the patent, and the certificate of copies, by a person calling him-
self *' acting commissioner," is sufficient on its face in controversies between
the patentee and the third persons, as the law recognizes an acting commis-
sioner to be lawful.

A patent surrendered and renewed operates as from the commencement of the
original patent, except as to causes of action arising before the renewal.

If a mistake occurs in a copy of a patent, it can be corrected without
causing any * injury, but if it exist in the original patent, it cannot [ * 249 ]
be corrected, so as to avail without the assent or resignature of the
Secretary of State.^

Bftt the commissioner, if correcting it, need not re-sign or re-seal the letters, he
being the same officer here who did it before. •

1 See this case again reported, posu

496 PATENT CASES.

Woodworth et «1. tr. Hftll et aL 1 Wood, ft Minot

If the mistake correeted be a material oim, the letters cannot operate except on
cases arising after it is made. Bat if a mere clerical one — ^ucere.

Where a renewal of patents surrendered is roid, perhaps the surrender itself
becomes also void, and the original patents remain in force.

Mere technical objections to letters-patent are not to be enconragedor eonatned
liberally^ for him making them.

This was a bill in chancery, filed July 528th, 1845, praying
for an injunction against the defendants, not to use longer the
planing machine invented and patented by William Wood-
worth ; nnd for an account of profits from the use hereto-
fore.

The letlers^patent were alleged to have^been issued to him
as the inventor of that machine, December 27th, 1828, for
the term of fourteen years. It was further alleged, that he
died on the 9th of February, 1839, and that on the 14th of
the same month, administration on his estate was granted to
William W. Woodworth aforesaid. That the administrator
applied to the commissioner of patents for an extension of the
term of the original patent for the machine, and that it was
duly granted to him, after proper proceedings, on the 16th of
November, 1842, for seven years after the end of the first term
of fourteen years. That about the 2d of January, 1843, he
disclaimed the circular saws described in the schedule to said
patent ; and, on or about the 10th of the same month, he
conveyed to Washburn and Brown, two of the complainants,
the exclusive use of said machine in the county of Suffolk
and some other enumerated places, with certain reservations
to himself; and on the Uth of January, 1844, assigned to
Wilson, the other plaintiflT, all his remaining interest in the

patent, except in th eState of Vermont.

[ * 250 ] * It is then stated, that the respondents are now

using a machine like his substantially, and are thus

infringing on the patent owned by the complainants ; and the

bill prayed a discovery how long it had been done, and an

answer to several interrc^tories.

PATENT CASES. 497

Wood worth et al. t;. Hall ct al. 1 Wood. & Minot.

In aid of the prayer for an injunction, and for the account
before named, the bill further averred, that said Washburn
and Brown prosecuted, and in May, 1844, recovered judg-
ment in the county of Suffolk for a violation of this patent,
and soon after they instituted a similar suit against the re-
spondent Isaac Hall, who settled the same without trial, and
paid damages, and received from them a license to use one
of their machines for a specified term and for a certain rent,
which he had neglected to pay.

It was further averred, in a subsequent amendment to the
bill, that William W. Woodworth, as administrator, finding
the specification in the patent open to certain objections and
doubts as to its sufficiency, did, on the 8th of July, 1845, sur-
render the patent, and procure new letters with an amended
specification ; und that the said Washburn and Brown ap-
proved the surrender, and agreed to accept the same rights
under the new patent as had been conveyed to them under
the extension of the original one.

An answer was filed by Clement Hall on the 1 8th of Sep-
tember, 1845, which disclaimed any knowledge of most of
the averments in the bill, and of the matters about which he
was interrogated specifically ; though a belief in the truth of
most of them is expressed,^except that he denied Woodworth
to have been the original inventor of this planing machine, or
that it is in other respects valid ; and the answer further as-
serted that the new patent was for a different machine from
the old one ; and that the old one was not surrendered within
the fourteen years of its term ; and that Woodworth, before
he died, had assigned to others all his interest in it ; and that
Washburn and Brown possessed no interest in the
new * patent, and wished an issue framed by the [ * 251 ]
Court to try these matters before a jury. In the
course of the answer he admitted the use by himself alone,

42*

498 PATENT CASES.

Woodm^lh ct til. v. Hdl et nl. 1 Wood. & Hinst.

and not jointly with others, of a machine for )>Ianing, similar
in some respects to Woodworth'a but unlike in others.

The answer of Isaac Hall was in most respects similar, ei-
cept that he denied any violation of his former agreement
with Washburn and Brown, or any use of the planing ma-
chine, cither severally or jointly with others, since the expin-
tion of a certain license to him to use it.

Some papers and affidavits were tliea submitted to the
Court by the counsel, and an agreement made to have a bear-
ing on the prayer for an injunction before an issue was com-
pleted and tried on the originality of the patent, and in this
hearing to waive any objections to the originality of the patent
in Wood worth.

The substance of the papers and testimony, with the pwats
raised against the injunction, will appear at sufficieDt length
in the opinion of the Court.

B. R. Curtia, counsel for the ^complainants ; GUet and
Dehon, for the respondents.

WooDBCBT, J. There has been no evidence whate*^
offered in this case of any using of tite planing machine by
Isaac Hall since his license expired, except what is contained
in the affidavit of Aaron Pratt. This witness did not see him
use it ; but made a ba^in with him about the 15th of July,
1845, to plane for the witness certain boards at the ordinary
__-,. '-'"tiding to set off the amount against rent due from

. Hail, however, was present, and said, " we can
a for you," and (he work was done, but the wit-
not say by whom, nor whether in fact the compen-
t was made to Isaac

Against this is the answer of Isaac, responsive to
he bill, *and sworn to, denying that he had ever

PATENT CASES. . 499

Woodworih et al. v. Hall et al. 1 Wood. & Minot

used the machine since his license expired ; and this agrees
with Clement's assertion in his answer, that the machine
was used by him alone. The facts testified to by Pratt
might, standing alone, be sufficient to justify an inference
that Isaac had planed the boards and used the machine.

In such cases, it may be, that any workman on the ma-
chine, though not interested in it, is liable to be^ restrained in
order to ^prevent evasions, by treating all as principals who
are aiding.

It is a common case, also, that if one does not in person per-
form the work, but pro^res another to do it for his advantage
on a machine owned by himself, he can still be restrained,
and is estopped from denying, qui facU per oJitim, fount per
fie. Possibly, too, if one hires another to do work on such a
machine, he may be restrained. 4 Mann. & Grang. 179.
But it is not necessary to give a decisive opinion on this,
after comparing the evidence with the denial in Isaac's sworn
answer.

After that answer thus testified to as true, the probability
is, and it is a construction not incmisistent with the veracity
of both Pratt and Isaac, that the boards were planed by
Clement, alone, and on his own contrctct, or his own assent
to the arrangement, and for his own profit. It would seem,
also, very easy to produce further evidence of the fact of
Isaac's using the machine, or receiving the profits from it, if
such was the truth, Until it is produced, the fairest con-
struction of the aflSdavits and answer are, that Isaac did not
work the machine or profit by it. If this construction were
not the most reasonable, and did not reconcile what is sworn
to in the aflSdavit and answers, the Court would still be com-
pelled to refuse to issue an injunction against Isaac, on the
affidavit of Pratt alone, for the want of evidence in it to over-
come Isaac's answer. Because something more must be pro-

500 PATENT CASES.

Woodworth et al. v. Hall et al. 1 Wood. & Bfinot.

duced than the evidence of a single witness to o?er-

[ * 253 ] come * an answer under oath, and responsive to

the bill. Carpenter v. Prov. Wash. Ins. Co. 4 How.

185. Certainly something more than the evidence of one

witness, and he not testifying explicitly that Isaac either

owned or worked the machine, or received any of its profits.

But in respect to the liability of Clement to an injunctioDi
the testimony is very different ; and notwithstanding the
several ingenious objections that have been urged, I have
come to the conclusion that one ought to be issued against
him.

He admits that he uses a machine for planing, which is, in
some important respects, similar to that described in Wood-
worth's patent.

He waives, also, any opposition in this hearing to its having
being originally invented by Woodworth.

It is shown, moreover, that this patent has been possessed
by Woodworth and others under him for something like eigh-
teen years.

It is well known, too, that, during this period, numerous
recoveries have been had against persons for infringements
upon it in several States in the Union ; and that the sales
of it by Woodworth and his assignees have been very exten-
sive.

Furtliermore, two of the plaintiffs, Washburn and Browo,
are admitted to have obtained verdicts in its favor against
persons in this city ; and a settlement and recognition of their
title by the other defendant, Isaac Hall, brother of Clement,
is a conceded Tact in this case.

The various questions of law which have been started in
this litigation, whether technical or on the merits, have mostly
been carried up to the Supreme Court of the United States ;
and after full argument and patient scrutiny have, in almost

PATENT CASES. 501

Wood worth et al. v. Hall et al. 1 Wood. & Minot

every instance, been decided in favor of the patentee and
those claiming under him.

But still, if objections are now tak^n in favor of
Clement * Hall, new or otherwise, which ought on [ • 254 ]
sound principles to prevail, the injunction should
not issue against him.

Hence it becomes necessary to examine all the objections
which have been urged on the present occasion ; but I shall
not decide in any occurring to me but not urged, presuming
that they are waived till the future trial on the merits.

The first objection taken is to the new letters-patent, be-
cause they are issued to the administrator of the original
patentee.

But that objection was overruled in the case on this patent
from New York, in Wilson r. Rousseau, 4 How. 646. The
renewal in the name of the administrator by the board of
commissioners, for seven years, was considered good, on the
ground that an invention was personal property. An inven-
tion possesses value beyond the first patent on it ; being valu-
able for purposes abroad as the ground for a patent there,
and also for a renewal at home, independent of any unexpired
period of the original term, which might go as assets to an
administrator. And Congress has confirmed this view of the
right by extending the patent,, through a special law to the
administrator, even seven years longer, after the time given by
the board expires.

The next objection is, that no letters of administration are
now produced. But in the Kentucky case, (Wood worth v.
Wilson, 4 How. 712,) this objection, among others, was
urged, and the Court did not sustain it, because the patent,
being renewed to the plaintiff as administrator, was proof that
he had satisfied the board at the Patent Oflice of the fact of
his being administrator, and it was not now competent to go
behind their decision in respect to it.

502 PATENT CASES,

Woodwonh et ftl. v. Hall et al. 1 Wood. & Bfinot.

The third objection taken here is, that the patent is not
certified by Mr. Burke^ who was the commissioner at that
time, but by H. H. Sylvester, as acting commissioner. This
point was also made in the New York case, 4 How. 646.

But on my suggestion to the counsel that there
[ * 355 ] were two * early acts of Congress, which authorized
the President to appoint acting heads to the diffisr-
ent departments and bureaus, though the offices were not va*
cant dejurSy but the incumbents were absent from the seat of
government or indisposed ; and that the law conferred on those
so acting all the powers which belonged to the officers they
represented ; and that this might, on the face of it, be legal,
on the presumption it was such an appointment, unless the
contrary was shown, the point was no further argued ; and the
Court, in their opinion, held the patent to be good, which
could not have been if this objection was deemed valid, under
such a state of the facts.

The laws mentioned may be seen in the 8th section of the
Act of Congress of May 8th, 1792, ch. 37, (1 Stat, at Large,
201,) and the Act of 13th February, 1795, ch. 21, (I Ibid.
415.)

If the provision in the Patent Act of 1836, that the chief
clerk may perform certain duties when the office of commis-
sioner is vacant, alone governed the present question, as was
formerly supposed, then the ingenious argument of the re-
spondents' counsel might apply. But it is an appointment
of acting commissioner which may have been under the other
general laws in the absence or illness, and not a technical
vacancy of the head of the bureau, and whose powers, when
so acting, are as full as those of the commissioner himself, and
his appointment under that law by the President alone being
authorized expressly by Congress, it must be presumed to have
been made here, in the absence of any evidence to the con-
trary, and to have been duly made where drawn in question

PATENT CASES. 503

Woodworth et al. v. Hall et al. 1 Wood. & Minot.

incidentally or collaterally, if it be shown that the person cer-
tifying is in the public discharge of those duties.

In such cases, as acting appointments may be legal, he will
be presumed to be acting legally till the contrary is shown.
Potter V. Luther, 3 Johns. R. 431 ; Berrymant;. Wise, 4 D.
& E. 366 ; 3 Ibid. 635. Even in cases of murder.
«Dalmer v. Barnard, 7 Ibid. 248, 251 ; McNally [*256]
on Ev. 487, 488.

In such case, too, as the laws recognize acting officers at
the heads of bureaus, whose appointment is not in the hands
of the secretaries alone, like the Patent Office since 1836, the
signatures of persons as acting commissioners carry as much
verity and legality on the face of certificates themselves, as
those by the commissioner himself.

They meet, then, the requisitions of the past as well as the
following cases, (3 Wash C. C. 531, 1 Burr's Trial, 98,) until
it be shown if it can be properly, in contests between third
persons, that the acting appointment was not in truth made
in the manner authorized by law.

There are some other objections, however, taken here,
which were not decided in the 4th Howard, 647 to 716, and
which it is proper to examine.

One of them is this. The original patent for fourteen
years, given in December, 1828, expired in 1842, and though
it was extended by the board for seven years more, which
would last till 1849, and by Congress for seven more, which
would not expire till 1856, yet all of these patents were sur-
rendered July 8th 1845, and a new one taken out for the
whole twenty-eight years from December, 1828. This was
done, also, with some small amendments or corrections, in
the old specification of 1828. After these new letters-patent
for the whole .term, no^assignment having been made to
Washburn and Brown, but only one previously on the 2d of
January, 1843, the plaintiffi contend that all the previous

504 PATENT CASES.

Woodworth et al. o. Hall et al. 1 Wood. & Minot

letters being surrendered, and a new specification filed, and
new letters issued, any conveyance of any interest under the
old letters is inoperative and void under the new ones ; and
hence that Washburn and Brown possess no interest in these
last, and are improperly joined in the bill.

But my impression, as at present advised, is, that when a
patent has been surrendered, and new letters are
[ * 357 ] taken out * with an amended specification, the pa-
tent has been always considered to operate, except
as to suits for violations committed before the amendment,
from the commencement of the original term. The amend-
ment is not because the former patent or specification was
utterly void, as seems to be the argument, but were defective
or doubtful in some particular, which it was expedient to make
more clear.

But it is still a patent for the same invention. It can by
law include no new one, and it covers only the same term of
time which the former patent and its extensions did.

In the present case, these are conceded to have been the
facts ; and it is an error to suppose that on such facts the new
letters ought to operate only from their date. By the very
words of those letters, no less than by the reasons of the case,
as just explained, they relate back to the commencement of
the original term, and for many purposes should operate
from that time. I do not say for all, as an exception will
hereafter be noticed.

This is in strict analogy to amended writs and amended
jadgments, which, for most purposes, have the same eflfect as
if the amended matter was in them originally.

Again, if such were not the result, generally, the new let-
ters would be treated as taking out a new patent, or an old
one in a form then first valid ; and, in such a view, would,
of course run fourteen years from the d^te of the new letters,
instead of only fourteen from the issue of the original letters;

PATENT CASES. 505

Woodworth et al. v. Hall et al. 1 Wood. & Minot

or if they have been extended as here, fourteen longer, they
would not run only twenty-eight years from the beginning of
the original term, i. e. December, 1828, as here, but twenty-
eight years from July, 1845, the date of the new letters.

Besides these considerations, it has been held, that recove-
ries under the original patent are evidence after the new let-
ters and new specification, to strengthen the title of the plain-
tiflfso as to obtain an injunction; thus treating the patent as
one and the same, and a conveyance of it once
therefore for a * specified term, as good for the term, [ * 258 ]
whether an amended specification be filed or not
before the term closes. See Orr vi Littlefield, ante, p. 13.
Also, Orr v. Badger, before Justice Sprague, February, 1845.

It would be a little strange, that a recovery under the new
and amended and corrected specification should be, as is
another argument for the defendant, a'ny stronger evidence
of right than a recovery, even when the specification was
more objectionable. .

Independent of these circumstances, it is averred in the
bill as amended, that Washburn and Brown have adopted
and approved of the new specification ; and that they claim
under their contract, and to the extent of it, all the rights con-
ferred by it on the patentee.

There is, moreover, a clause in the Act of July 4th, 1836,
ch. 357, ^13, which seems to have been designed to dispose
of such objections ; and though it does not mention contracts
or assignments, it is quite broad and comprehensive enough
to cover them. It is : <^ The patent, so reissued together with
the corrected descriptions and specifications, shall have the
same effed and operation in law on the trial of all actions
hereafter commenced for causes subsequently occurring, as
though the same had been originally filed in such corrected
form before the issuing of the original patent.

It would be very doubtful, also, whether a misjoinder of

VOL. 11. — p. c. 43 •

PATENT CASES.

Woodworth et «1. v. Bftll «t al. 1 Wood. & MinoL
parties aa plaintifTs in an application of this kind, could defeat
a prayer for an injunction uot to use a machine in which anj
of them were interested. At law, such a misjoinder could be
objected to only in abatement, ai the act sounds ex ddicto,
(1 Chit. PI. 75) ; and probably it could not be objected to at
all in equity, though in the final judgment, of course it would
be entered up in favor of those alone who appeared to hare
some right and interest to be protected.

As the claims of the two plaintifis, however, have
[•359] been 'already proved and established in several
recoveries before the new letters; and the con-
tract DOW offered, under which they claim, confers on them
a right to use fifty planing machines within certain territory,
including this city ; and there is a covenant by the grantees
of that right qot to sell to diflerent persons liberty to use others
within those limits, during the time of Washburn and Brown's
contract, their interest within ihem would seem to be suffi-
ciently exclusive to make them properly plaintiffs, and entitled
to judgmeift.

The strongest doubt with me is in relation to the interesb
of the others in this city, so as to justify joining them ; but
as that objection has not been taken, and all the facts are not
known to me concerning them, I pass it by for the present.

But there is one more exception in this case; and it is of
a character causing some difficulty, if the evidence in respect
to it was more clear, and accorded with what is supposed by
the counsel for the respondent to have been the truth of the
transaction.

The original patent is not put in evidence here, but s
certified copy from the Patent Office. That copy now reads,
that the term is one of twenty-eight years from December,
1828, but when produced et a former opening of the caase,

is admitted that it read fourteen years from December,

PATENT CASES. 507

Woodworth et aL v. Hall et al. 1 Wood. & Minot.

A letter from the commissioner is offered by the respond-
ents stating, as I understand it, that the change has since
been made in order to correspond with the troth, the new
letters-patent being for twenty-eight years from 1828, and
the record being so, but the forms for copies having been
printed fourteen, some were filled up without altering the
printed term from fourteen to twenty-eight.

The respondents infer from this explanation, that the let-
ters-patent themselves, as issued in July, 1845, and
not * merely the copy of them, contained the same [ * 260 ]
DQistake, and that the record of them did also ; and
supposing that both had been altered since, as well as the
copy, the respondents object to the legality of such amend-
ments, and likewise contend, that if legal at all, it is so only
in respect to suits and other matters arising subsequently to
the alteration. But I do not understand the letter of the com-
missioner to go beyond the copies ; and if only the copies
were erroneous, and they have been corrected, he undoubtedly
had the power, and ought to make them conform te the patent
itself and the record.

On the contrary, if the new letters-patent themselves were
by mistake for only fourteen years from December, 1828, when
they were intended to be twenty-eight, and thus to cover not
only the original term, but both the renewed terms ; and the
commissioner has amended them since this bill was filed ;
I doubt whether, on the testimony now before us, they could
by received in evidence to sustain this bill, considering its
allegations to go on a patent for twenty-eight years, and one
so issued on the 8th of July, 1845.

It would probably be his duty to correct the letters-patent
in such a case, when applied to, and to minute the correction
on or in them ; • as these matters are between him represent-
ing the government and the patentee.
^ Nor would it be necessary for him in such case to re-sign

PATENT CASES.

Woodworth M kL v. Hftll et al. I Wood, ft Hinol.

or re-seal the letters, as is u^;ed on English precedents. See

Sharp's case, end Nichotls', in Webster's Intent Cases, 645

and 658. For those do not apply here when the signing and

sealing are hj the same officer, and by the same also as he

that makes the correction. For he adopts them as his own

acts by redelivering the patent after it is amended, as mudi

as he adopts the writing of it on the paper or parchment.

But it would seem necessary to have the Secretary of

State sign anew, or assent to the amendment, aa he

[ * 361 ] is a * distinct officer, and without signing anew, or

assenting, has never examined and authenticated

the tetters as amended.

The record or enrolment must also be made to correspoDd
with the letters as amended, if it does not already. As to
the effect of such alteration, I entertain ah impression, rest-
ing on general [H-inciples and the grounds of some of the pre-
cedents abroad, and in the absence of any statute here, to
allow amendments of this kind, or to prescribe their effect in
such cases; that a patent after thus amended in a material
mistake, could not operate as to third persons against whom
proseciltionB were pending, but only for causes accruing after
the correction. See Webster on Pat. 664. It may be differ-
ent if the mistake was entirely clerical. If the misuke was
not clerical, or one made by the patentee himself, it is quite
clear that the law abroad makes it operate only from that cor-
rection, and it is so here in respect to defective specifications,
when they are allowed by statute to be amended in certain
cases. See 13th section of Act of July 4th, 1836, ch. 357.
They are not good as to suits pending, but only as to actions
for causes subsequently accruing.

But in cases tike this : if it should turn out, on clear eri-
ince, that the new letters themselves had been altered so as
be wholly void, a different and equally difficult question
ay arise. It is this : it might be ttiat the surrender of the

PATENT CASES. 509

Woodworth et al. v. Hall et al. 1 Wood. & Minot.

original letters, and of the extensions of them, so that all might
be renewed in one, would become also void ; and the party
might then, perhaps, be allowed to amend his bill, and enjoin
and recover on the former letters-patent, if the old specifica-
tion was not too defective for that purpose.

On this I give no opinion at this time ; but if evidence be
obtained, that the hew letters-patent themselves have been
altered as to the term in them since this action was com-
menced, as the respondents' counsel apprehend, it may then
become necessary to decide it.

The mode adopted in this case, of issuing one set
of new * letters-patent for the three difierent terms [ * 262 ]
before existing, when the old specification was
sought to be corrected, is likewise open to some question con-*
cerning its legality. The most obvious mode would be to
renew each separately, or renew only the old letters and their
specification ; and let the others be cured or aided by rela-
tion back to the original one.

But as no such objection is pressed now, I forbear comment
upon that also.

It may not be improper to add before closing, in relation
to technical objections, as most of them are when urged against
injunctions generally, that though they are to be weighed and
examined, and allowed to prevail, as they must in other cases
in equity, if legal, yet they ought to be treated with no par-
ticular indulgence. In all inquiries in equity, the leaning in
doubtful points must certainly be rather against than in favor
of them ; and more especially must it be so in preliminary
injunctions, where the decision is only temporary, and may
be dissolved on motion at any time, on showing fuller proof
as to any thing afiecting the merits of the controversy.

The injunction as to Clement Hall is allowed till the further
order of the Court, but not against Isaac Hall.

43*

610 PATENT CASES.

Back et al. v. QiU et ftl. 4 M«Leaa.

Buck et al. v. Gill et al.

[4 McLean, 174. Jnlj T. 1646.]

Tho claim of Buck, ia his cooking store, as his own invention is, " the fines

described in combination with the extended oyen."
And as the defendants appeared to haye infringed the right of Back, thus

stated, a preliminary injonction was granted.

Fox, for complainants.

Ewing and Swayne, for defendants.
•

Opinion op the Court.
This bill is filed by the complainants, representing that
they are interested in the making and selling of Buck's cook-
ing stove, for which Darius Buck bbtained a patent from the
United States, on the 20th of May, 1889. That he was the
original inventor of the improvement specified in his patent;
and that the defendants have long been in the practice of
making and vending cooking stoves, substantially on the
same plan and principle as Buck's stove, which operates to
their injury, in preventing the sale of their stove, and the
complainants pray that an injunction may be allowed to
prevent the further infringement of their right, by the de-
fendants, and that other and further relief may be given, etc.
The defendants in their answer deny the infringement, and
call upon the plaintiffs to prove their right under the patent,

the validity of which is questioned, etc.
[ * 175 ] * In his schedule, which constitutes a part of his
patent, Buck says, <^ whereas difficulties occur in the
cook stoves now in use in carrying on at the same time baking
and boiling, and also in having ah oven of such uniform tem-
perature that every part will cook or bake uniform, and also

PATENT CASES. > 511

- --^ — - 1-1 -I . - ■ ■ - — 1_

Buck et al. v. Gill et al. 4 McLean.

in having an oven of sufficient size as to do away with the
occasional use of the brick oven, in large families, without
any increase of fuel, and also in having an oven around which
there is a certain free and uniform draft. And whereas, my
invention has respect to the aforesaid difficulties, now, there-
fore, be it known, that I, etc., have invented certain improve-
ments in the construction of stoves used for cooking, and I
do hereby declare that the following is a full and exact de-
scription thereof, reference being had to the drawings which
accompany this specification, and are a part of the same,"
etc. In describing the structure of the stove, among other
things he says, " No. 2, the oven, is thus made to extend from
the back part of the stove to the front part of the stove, under
the open hearth, so that the back plate of the stove is a flue
plate under the open hearth of the stove. The plates that
form the outside of the flue around the oven under the hearth,
are so constructed that any horizontal division of the flues
and oven under the hearth is "similar to the hearth ; or the
last mentioned outside flue plate may be made straight or
flaring, but they are better to curve according to the shape of
the hearth-plate, for, by preserving this form, the flue will be
enlarged, and the heat of the hearth, the top of the oven, the
temperature of the oven and the draft, all will be increased."
In summing up, he says, ^' I do not claim as my invention
the placing of the oven in cooking stoves, under the fireplace
of the stove, as that has been long known and in use, nor do
I claim the invention of reverberating flues for conducting the
heat, etc., under the oven, as they also have been for a long
time known. What I do claim as my invention, and for
which I desire to secure letters-patent, is, the ex-
tension of * the oven under the apron or open [ * 176 ]
hearth of the stove, and the combination thereof
with the flues, constructed as above specified, by which
means I am enabled to obtain greater room for baking and

512 PATENT CASES.

Back et al. v. Gill et al. 4 MeLeaa.

Other cooking purpoaes, and effect a greater saving of ex-
pense and fuel than in cooking stoves of the ordinary con-
struction.''

Now, what does Buck claim as his invention ? He says he
''does not claim as his invention the placing of tlie oven in
cooking stoves under the fireplace of the stove, as that has
been long known and in use.'' But he says, ''what I do
claim as my invention, is, the extension of the oven under
the open hearth of the stove, and the combination thereof
with the flues, constructed as above specified." In fewer
words, " he claims the flues described, in combination with
the extended oven."

Was this improvement known before ? Hathaway*s stove
was in use before Buck claims to have invented his improve-
ment. But there is this difference between them : The Bock
stove has the oven extended, and the front flue or air cham-
ber connected therewith, which gives a uniform heat in the
front of the stove, as well as in the rear of it. Hathaway's
stove has not this connection. And in this consists the im-
provement claimed by Buck.

Arthur Piatt, Adam Powers, and Leonard Duval say there
is nothing new in an air chamber, to equalize the heat of the
oven. This is no doubt correct ; but they do not say there
is nothing new in connecting the flues with the extended
oven, as claimed by Buck.

The Harris stove, sold in 1836, had the oven extended
under the hearth, and only differed from the Buck stove in
the connection claimed by Buck. The Lawrence stove,
which was constructed and extensively sold in Tennessee,
in 1837, with flues similar to Buck's, but there seems to have
been no air chamber in front.

Upon the whole, from the evidence before us, the

[ ^ 177 ] stoves *made by the defendant, or at least some of

them, appear to infringe the right of the complain-

PATENT CASES. 513

Root 9. Ball & Dftvis. 4 McLean.

ant, and a preliminary injunction is granted, enjoining the
defendants from making or vending any cooking stoves made
with a combination of flues down the back and under the
oven, an4 connecting at the bottom thereof with a flue or air
chamber in front of the stove ; and the said defendants are
enjoined from making or vending stoves in which said flues
and air chambers are so connected at the bottom of said air
chamber or flue in front.

David Root v. Ball & Davis.

[4 McLean, 177. July T. 1846.]

To an action for an infringement of a patent^right, a plea that the thing claim-
ed to haye been invented was in nse and for sale before the application for
the patent, is demnrrable, unless the plea aver an abandonment, or that sach
sale or use was more than two years before the application.

Where the use or sale has not exceeded two years before the application, the
Act of the 3d of March, 1839, declares it shall not invalidate the patent

The same patent cannot include inventions for two distinct machines.

Bat a claim for a combination of mechanical powers, and the invention or im-
provement of one or more parts of which the combination consists, may be
in one patent.

There must be special pleas or the general issue, and notice of special matters.

Fox for the plaintiff.
Hart for defendants.

Opinion or the Court.

This is an action for an infringement of a patent. The
plaintiff declares against the defendants for violating a patent-
right granted for a design of ornamental parts of a stove,
dated 9th of September, 1845, with the ordinary breaches.-

The defendants pleaded :

1. The general issue.

514 PATENT CASES.

Boot p. Ball & DaviB. 4 McLean.

2. Because before the date of the patent oq the

[ ^ 178 J 6th of * January^ 1844, '' stoves constructed upon

the plan of the stove patented by plaintiff, with the

same general design and combination of the ornamental parU,

were publicly made and sold by the defendants at the district,

etc.

3. Because before the dateK>f the application for the said
letters-patept on the 1st November, 1844, and thence oo till
the date of said application, stoves constructed on the plan
of the stoves patented by the plaintiff, with the same general
design and combination of the ornamental parts, were pub-
licly for sale by the plaintiff himself, at the district, etc

4. Because before the date of issuing the patent on the Ist
of January, 1845, and thence on to the date of the same,
stoves constructed upon the plan of the stove patented by the
plaintiff, with the same general plan and combination of the
ornamental parts, were publicly for sale by the plaintiff him-
self, at Cincinnati, etc.

5. Because at the date of application for said letters on
Nov. 1st, 1844, and thence till the date of said applicatioo,
stoves constructed upon the plan of the stove patented by the
plaintiff, with the same general design and combination of the
ornamental parts, were in public use, and for sale in the city >
etc., by the consent and allowance of the plaintiff himself.

6. Because before the date of issuing said letters-patent of
the plaintiff, on the 1st January, 1845, and thence continually
till the date of the patent, stoves constructed upon the same
plan with the stove patented by the plaintiff, with the same
general design and combination of the ornamental parts, were
in public use and for sale at the city, etc., by consent and
allowance of the plaintiff himself.

To the 2d, 4th, and 6th pleas, the plaintiff demurred, and
joined issue on the 3d and 5th.

The pleas demurred to allege, that before the issuing of the

PATENT CASES. 515

Root V. Ball & Paris. 4 McLean.

patent, stoves of a similar design and combination were in
use and for sale. And this, it is contended, is no answer to
the plaintiff's action. By the 7th section of the
Act of 3d of * March, 1839, it is declared that " no [ * 179 ]
patent shall be held invalid by reason of any such
purchase, sale, or use prior to the application for a patent,
except on proof of abandonment of such invention to the
public, or that such purchase, sale, or prior use has been for
more than two years prior to such ieipplication for a patent."

None of the pleas state that the use spoken of was more
than two years prior to the application for the patent, and
this is indispensable to render the patent invalid. Indepen-
dently of this statute, the plea would have been bad, as tlie
application for a patent must protect the right of the inventor,
and the delay which may occur, in the Patent Office, in
making out the patent, cannot operate to the injury of the
applicant. On both grounds, therefore, it is clear that the
pleas demurred to constitute no bar to the plaintiff's action,
as they do not show that the patent is invalid, by abandon-
ment or otherwise. When an abandonment is relied on, it
should be stated in the plea, and the facts on which the
pleader relies, as showing an abandonment. The present is
different from the former law. Shaw v. Cooper, 7 Pet. R. 292.

The jury were sworn to try the issues joined, and witnesses
were examined.

George H. Knight, in September, 1844, was employed by
plaintiff to make out the specifications, which are stated in
the patent.

Elias J. Peck is a pattern maker, and he says that Root's
stove was sold in the fall of 1844. And from other witnesses
it appeared that Root's stove was put up early in the year
1845. Several designs were shown to ornament cooking
stoves similar to the plaintiff's, but the figures differ.

It is admitted that the application and specifications on

516 PATENT CASES.

Root V. Ball & Davis. 4 McLean.

which the plaintiff's patent issued^ were filed the 15th of
December, 1844.

It is objected to the plaintiff's patent that two distinct
things cannot be united in the same patent. This
[ * 180 ] is true, * when the inventions relate to two distinct
machines. And the reason assigned is, that it
would deprive the officers of the government of their fees,
and in other respects would be inconvenient. But the same
patent may inplude a patent for a combination, and an inven-
tion of some of the parts of which the combination consists.
A patent for a combination is not infringed by the use of
any part less than the whole, of the combination. Moodj v.
Fiske, 2 Mason, 1 12.

It was objected by the defendant, that as a penalty is im-
posed on a patentee for selling an article unstamped, and as
stoves were sold by the plaintiff made before the patent, and
which were not stamped, the plaintiff could not recover. But
the Court overruled the motion, saying that the matter stated
could have no influence in this case.

The Court instructed the jury that, as there was no notice
or plea, which authorized the defendant to show a want of
novelty in the invention claimed by the plaintiff, they would
disregard the evidence which had been given on that head.
There is no notice appended to the plea of the general issue
to that effect, nor do the special pleas make a want of noveltj
a ground of defence. They would seem to rely on the effect
of an abandonment. Or at least, that the right of the plain*
tiff did not originate with the discovery, or the application for
a patent, but with the emanation of his patent.

And the jury were instructed, if they should find that the
defendants had infringed the plaintiff's patent by using, sub-
stantially the same device, as ornamental on the same parts
of the stove, they would of course find the defendant guilty^
and assess such damages, as, in their judgment, the plaintiff

PATENT CASES. 517

Woodworth et al. v. Hall et al. 1 Wood. & Minot.

was entitled to. To infringe a patent-right, it is not neces*
sary that the thing patented should be adopted in every par-
ticular ; but if, as in the present case, the design and figures
were substantially adopted by the defendants, they have in-
fringed the plaintiff's right. If they adopt the same principle,
the defendants are guilty. The principle of a ma-
chine is * that combination of mechanical powers [ "^ 181 ]
which produce a certain result. And in a case like
he present, where ornaments are used for a stove, it is an
infringement to adopt the design so as to produce, substan-
tially, the same appearance.

The jury found for the plaintiffs, and assessed their dam-
ages at twenty-lSve dollars — judgment.

Wm. W. Woodworth, in Kauiir v. Isaac Hall and ano-
4 theb; and Woodworth v. Stone.

[1 Woodbozy and Minot, 389. October T. 1846. J

•

Where evidence is offered to prove, that the " acting commissioner," who signs
a patent, was not appointed by the President, it is questionable whether it be
competent to admit it in controversies where he is not a party.

Under the Patent Law of 1836, the chief clerk is held to be the " acting commis-
sioner," as well in the necessary absence of the head of the office, as in case of
a vacancy de jure.

The sanction of the Secretary of State, to a correction of a clerical mistake in
letters-patent, may be given in writing afterwards ; and he need not re-sign
the letters themselves.

If the correction be of only a clerical mistake, it operates back to the original
date of them, unless perhaps as to third persons, who have acquired interven-
ing rights to be affected by the alteration.

If a new patent, issued on a surrender of old ones, be void for any cause con-
nected with the acts of public officers, it is questionable whether the original
patents must not be considered in force till their terms expire.

VOL. II. — P. c. 44

518 PATENT CASES.

Woodworth et ■!. v. Hall et ■!. 1 Wood. & Minot

An injanction once granted will not be dissolyed on account of anj donbta, aa
to the ralidity of a new patent in such cases, cansed by the enon of saeh
officers, if measures are pending in Congress to remove them by legislaUon.

[ * 390 ] * In these cases, injunctions were granted at Maj
term, 1845, and at May term, 1846 ; a motion was
made, in the first-named case, to dissolve the injunction. An
opinion was given at the same term, stating the facts, and re-
taining the injunction as to one of the defendants, but dissolv-
ing it as to the other, for reasons applicable to the merits. Ante^
p. 248.

Among the objections which were then urged against the
validity of the patent, on which the claim of the plaintiff was
founded, were these : Because it was signed by H. Sylvester,
as acting commissioner, rather than by Edmund Burke, Esq.,
the commissioner ; and because the patent had been altered
at the Patent Office since it originally issued. ,

For further particulars in relation to these objections, and
the detailed facts on which they rested, reference can be had
to the opinion and case, as drawn up.

At an adjourned session of the same term, held at Boston,
in September, 1846, the motion to dissolve the injunction was
renewed as to the first case, and the like motion made as to
the second case, both of which are now to be disposed of.
They were founded' on the same grounds, accompanied by new
evidence, offered under the first objection, to show that Mf,
Sylvester, at the time of signing this patent, was not acting
under any appointment made by the President, by virtue of
the 8th section of the act of Congress, passed May dth, 1792,
ch. 37 ; but, being then chief clerk in the Patent Office,
claimed to be authorized to sign it in the necessary absence
of the commissioner, under the power conferred by the Sd
section of the Act of 8th of July, 1836, ch. 357, (5 Stat, at
Large, 117,) reorganizing the Patent Office.

PATENT CASES. 519

Woodworth et al. v. Hall et al. 1 Wood. & Minot.

In respect to the second objection — the alteration of the
patent — it was further proved that a mistake, as to the time
it was intended to run when renewed^ occurred in the patent
itself, as well as the record and copy of it ; the
proof, at the * first hearing, extending only to the [ * 391 ]
copy. Thus, it was issued for fourteen years, but
was meant to be for twenty-eight, and was afterwards altered
to twenty-eight. In answer to this, it was now shown that
the Secretary of State subsequently expressed in writing his
assent and sanction to the correction of the mistake, though
he was not'consulted at the time it took place.

The present motion was argued by CHlea, in support of it ;
and by B. R, CurtiSj against it.

WooDBURT, J. It is not necessary to go into many of the
facts and principles considered in the former motion in this
subject, and then disposed of] but the new and material
fects since obtained are to be examined, so far as they may
weigh upon the objections, and affect the principles before
settled.

The first inquiry now is, whether the chief clerk in the
Patent Office, not having been in fact specially appointed to
be acting commissioner by the President, in the absence of
the commissioner himself, could legally sign this patent, under
the general provision in the 2d section of the Patent Law of
1836, ch. 357. The words of that section, bearing on this
question, are : '' The chief clerk, in all cases, during the neces-
sary absence of the commissioner, or when the said principal
office shall become vacant, shall have the charge and custody
of the seal, and of the records, books, papers, machines,
models, and all other things belonging to the said office, and
shall perform the duties of commissioner during such va-
cancy."

590 PATENT CASES.

Woodwonh ct ■!. D. Hall et il. I Wooa. t tCnot

It ia contended by the defendant that this clause empowers
the chief clerk to act aa comtnissioner only when his office is
entirely, or de jure, vacant ; and not when he is merely ab-
sent from sickness, or other necessary cause, constituling a
de/acto vacancy, only, or a want of the commissioner present
to diachai^ the duties arising from some such cause. It is
certain that the words here used, looking no farther,
[ * 393 ] * appear to countenance the more narrow and limit-
ed view of the word " vacancy ; " but if we look to
the object of the clause, to other sections of this and the suc-
ceeding Patent Act, to the contemporaneous construcitoD
placed upon it, to the long acquiescence under that construc-
tion, and the great public as well as private interests which
have grown up in conformity to it within the last ten years, a
broader meaning to the term seems fortified by the whole
spirit of the act, and by the analogies of the case.

It is proved as a foct, that the chief clerk, since July, 1836,
has been accustomed to perform, under this section, all the
duties of commissioner during his necessary absence, and
without any new special authority being obtained from the
President, under the law of 1792. ' It has been uniform m
the office to consider the word " vacancy " here as meant to
cover an actual, or de fado vacancy, by a necessary absence
from the city ; and the act has been construed so as to include
as a vacancy, for this purpose and object, the inability of the
commissioner at the seat of government to discharge his offi-
cial duties, arising from any necessary cause, as well as a va-
cancy arising from his death or resignation.

It is conceded, also, that many patents during that period
have been signed, and many records certified, by the chief
clerk, as acting commissioner, under the 2d section of the Ps'

t Law, and which must become invalid if this one be so

tnounced, for that cause.

It is further apparent, from the fourth section of the same

PATENT CASES. 621

Woodworth et al. v. Hall et al. 1 Wood. & Minot

law, that, unless this broad construction be correct, the chief
clerk is not empowered to certify copies of the original records
and |)apers, in the necessary absence of the commissioner,
however urgent may be the necessity for them, in the protec*
tion of public or private rights. But, by a subsequent act,
passed March 3d, 1837, ch. 45, section 2, (5 Stat, at Large,
191,) the chief clerk is expressly empowered, in the absence
of the commissioner, to give copies of former records
supplied *" where formerly burned. And hence it[*'393]
would follow, if necessary absence in the first law
is not covered by the term '' vacancy," he is not authorized
to give copies of original records in the absence of the com-
missioner, though he may of records burnt, and supplied again
afterwards. This would be a distinction most groundless, and
hardly presumable to have been intended. It would likewise
follow, that, in the absence of the commissioner, the chief
clerk was to have charge of the seal and records, but could not
use them for some of the most common and necessary and
urgent business connected with them. /

Furthermore, he is placed under oath, and also under bonds,
so as to secure the community when he does act ; and is, in-
deed, more safe for the public than a temporary commissioner
selected by the President, as such a one may be under no
bonds, whatever ; yet, though under this security, a construc-
tion is urged that he has not been trusted by Congress to act,
in the very cases where a person iv trusted by them to act,
without security, if selected by the President. And this is
the reasoning, too, though he is selected to be chief clerk,
rendering him eligible to perform these duties, virtually by
the President, in all cases, and often by his express wish.
Nor is it any stretch of confidence, extraordinary or unneces-
sary, for Congress to confer on a clerk such a power as the
signing of a patent. It is done clearly, and is conceded to be

properly done, when the commissioner dies or resigns, and a

44 •

59S PATENT CASES.

Woodwonli et b1. v. Hdl et >1. 1 Wood. & HJnot

technical vacancy exists ; and in case of his absence it ia done,
not for peraonal favor, but for public convenience ; so thai
citizens are not to be delayed in gelling patents till a succet-
sor is appointed, and arrives, perhaps from some remote place.
So it is conceded to have been done for more than half a cen-
tury, by a grant to the President from Congress, by the 8lh
section of the Act of 8th May, 1792, ch. 37. The danger
from the broad conalniction here, is then no greater
[*394 ] than from other powers, admitted already to *extsl
in other ways, in relation to this same subject. Bui
to guard against long absences, without a regular and more
responsible head to a department or bureau, it is wisely pro-
vided, by the Act of 13th February, 1795, cb. 21, ihat the
temporary appointment by the President shall not continue
over six months at one time, because a regular successor
could in that time be procured, and the sanction of the Senate
should be asked for filling the office during a longer time;
and by the section now under consideration it is contempkled
that the temporary head of the bureau shall act only during
the "absence" of ihe commissioner which is "necessary,"
or a vacancy happening in any way ; both of which are, of
course, not likely in any case to last longer than six months,
in an age when such offices are so much sought after as in
this.

Again, in respect to Ihe meaning of the word "vacancy"
as used in like cases, it is obvious that the Act of 1 3th Fe-
bruary, 1793, looked to it as covering absence and sickness,
as well as death or resignation of the regular incumbent, be-
cause it speaks of a " vacancy " when referring to the former
act, and a temporary appointment for only six months under
<' and when that previous act authorized such appointment
much in case of absence and sickness as of death. All of
im, then, seem to be covered by the reference, as each con-
:uting a " vacancy," de facto, to be sure, in case of absence

PATENT CASES, 528

Woodworth et al. v. Hall et al. 1 Wood. & MiDot

and sickness, but still referred to under the generic term of a
" vacancy."

There is another circumstance of some importance, not yet
noticed, bearing on this question. It is well known to all
who have been familiar with the departments and bureaus at
Washington, that the delay and inconvenience to the public
in obtaining temporary appointments from the President, if
absent far from the seat of government, as he sometimes is,
when the head of a department or bureau, by sickness or ac-
cident, is obliged to be away from his office, has led
* sometimes to complaints of a suspension or post- [ * 395 ]
ponement of business of an important character ;
and it has been contemplated, either by a general law, or as
the department and bureaus become from time to time reor-
ganized, to provide that the chief clerks in each should tem-
porarily exercise the duties of the heads thereof, while they
were necessarily absent. It is obvious that the public would
often be much benefited by such a provision, in cases like the
President's being away, so that he could not at once make a
temporary appointment ; and it is equally obvious that the
public can never suffer by such an appointment, and by ope-
ration of law, more than it does now, when made by the Pre-
sident, if not away ; nor would such a general provision be
either novel or dangerous, considering that in the case of most
ministerial offices under the government, such as collectors of
the customs and marshals, their deputies, appointed by them-
selves, can now act for them in their absence, and do con-
stantly perform most important duties at such times.

Hence, when the Land Office was reorganized, 4th July,
1836, the same day the bill passed reorganizing the Patent
Office, containing the provisions now under consideration,
clauses were inserted in both bills, with a view to confer such
a power or appointment on the chief clerks in both bureaus.
The clause in respect to the Patent Office I have already

524 PATENT CASES.

Woodworth et al. v. Hall et al. 1 Wood. & Minot

quoted, and have been ezaipining its spirit, and other analo-
gies, in order to see if the broad one covering the present
case is not the proper construction of its language and intent.
The other clause, in respect to the Land Office, is on the same
subject ; but, by a different arrangement of the sentence, is
too clear to admit of any different construction from that I
have applied to the Patent Office. In the last, the language
is : <* And in case of a vacancy in the office of the commis-
sioner of the general Land Office, or of the absence or sick-
ness of the commissioner, the duties of said office shall de-
volve upon, and be performed, ad interim, by the clerk of the

public lands."
[ ^ 396 ] * This clerk of the public lands was the chief clerk
in the office.

Undoubtedly the object to be attained was alike in both ;
the inconvenience to be remedied was the same ; the risks
similar; and it was probably only by inadvertence that less
precise language was employed in the Patent Act than in the
act as to the Land Office.

It is a sound rule, in the construction of statutes generally,
that '' every thing which is within the intent of the makers
of the act, although it be not within the letter, is as much
within the act as if it were within the letter and intent also."
4 Paige, 252, in Walker v. Devereauz, cites 1 Plowd. 366,
Dwarris on Stat. 691. It is conceded, however, that the in*
tent must be ascertained by the words that are used, coupled
with the mischief to be remedied. But it is a mistake to ar-
gue that because ministerial officers can do only what they
are specially empowered (7 Mass. 281 -283) they cannot do
what, on a fair and liberal and useful construction of the
words used by Congress, they are specially empowered to do.
The intent of an act of Congress, as to such offices, is to be
gathered from the whole spirit, no less than the letter of the
act, as much as it is in other cases.

PATENT CASES, 525

Woodworth et ftl. v. Hall et ftl. 1 Wood. & Minot.

In both of the provisions we have just been considering)
the intention of Congress, seeming to have been the same, the
action of the chief clerks, or heads of their respective bureaus,
in their absence, is not an action without pretence of justifi*
cation by any express act of Congress, without countenance
of any law, and a mere usurpation, as it would be, if done
onder an idea that they can so act, and transcend limited
powers by mere construction, as being clerks, and their supe-
riors absent ; or as being more convenient, at times, to the
public

But they equally rely here, and for ten years have relied,
on explicit and special provisions by Congress to authorize
their action in both cases; both provisions being
made at the ^same time, with a like view, thoQgh [*397]
one uses language not susceptible of a different con-
struction, while the other does not; but language which, at
the same time, will fairly bear a construction in conformity
with the spirit of the law, and similar to that which must con-
fessedly be put on the other act.

Besides this reasoning and these analogies on the present
question, the conclusions which I have formed in favor of the
validity of these letters-patent, under this objection, are
strengthened by some other considerations.

Here a patent is offered in evidence, valid on its face, and
objected to only on account of matter dehors, that the acting
commissioner who signs it was not in fact one so acting by
appointment of the President. If he had been, it is conceded,
the patent is valid ; and this was virtually decided by the
Supreme Court in Wilson v. Rousseau, 4 How. 646, 663,
where this very patent, signed by Mr. Sylvester as acting com-
missioner, was objected to, and upheld. No proof was offered
there, that he had, or had not, received any such appointment;
but, in such cases, it being legal to have an acting commis-
sioner, it was presumed he was duly appointed so, and his
acts therefore valid. So, in this case, such a presumption

526 PATENT CASES.

Woodworth et al. v. Hall et al. 1 Wood. & liinot

would be enough, provided it be not competent to go further,
with evidence on the subject, in a proceeding between third
persons ; the power of the officer himself not being here put
directly in issue in a proceeding wheie he is a partj^ That
a person is an acting officer is enough in most cases, even in
that of murder, see the cases collected at the last session of
this Court, in the case of the United States v, Peterson, ante,
p. 305.

For like reasons, probably. Justice Story, in this case, when

the injunction was granted, intimated that the patent must be

bad on its face, in order to sustain an objection about the

officer, and Judge Kane countenances, to some ex-

[ * 398 J tent, * the same idea in his opinion in Smith t^*

Mercer, connected with this same patent, August,

1846, Penn. D. Ct,

These reasons and opinions make it very questionable
whether the evidence is competent, or admissible at all in
this action, that the acting appointment of the chief clerk
was not n^ade by the President himself; and if it is not, the
patent on its face, as in the 4th of Howard, must be deemed
valid.

I should however, do injustice to the intrinsic difficulties
of this question, and the different reasonings and analogies
which have been and may be fairly brought, to bear on it,
were I not to add that some doubt remains in respect to the
results I have reached, though the inclination of my mind is
decidedly to. sustain the validity of the letters.

The jsecond objection to the patent, on account of its alte-
ration, has been fully considered before, on some different
facts, when the motion to dissolve one of the injunctions was
made last spring. The correction of a mistake, though com-
mitted clerically, yet as here in a > matter material, was then
supposed not to be valid, though made by the commissioner,
unless approved by the Secretary of State. It was not

PATENT CASES. 527

Woodworth et al. v. Hall et al. 1 Wood, ft Minot.

thought necessary by me that the patent^ after such a correc*
Mon, should be re-sealed or re-signed by the commissioner,
he being the officer who did both acts originally. But, as
the Secretary of State^nust by law sign it, as well as the
commissioner, should the patent be altered after he signs it,
he must, by analogy, be made aware of any such subsequent
alteration, and sanction it, before his signature can be re-
garded as verifying the amended patent.

No evidence was produced before of his knowledge, and
his sanction of this change ; but such evidence is now offered,
and is probably sufficient, without any entry of the same on
the letters-patent themselves. That would certainly be a con-
venient mode of perpetuating the evidence of his sanction ;
but, no law requiring it, the principles seem to de-
mand nothing * beyond his assent or ratification of [ * 399 ]
it ; both of which exist here in writing.

Independent of form, it is in substance very seldom that
he interferes at all with the issue or correction of patents ;
but the commissioner practically discharges all such duties.

There is still another question connected with this point
which might arise, but has not been now pressed. It is,
whether a patent so amended could operate, except as from
the time of the amendment; and, if not so, then those letters,
being altered since the bill was filed, cannot avail the plaintiff
in support of it.

If new matter was inserted not originaly contemplated, or
corrections made not clerically, it is questionable whether
they could relate back to the date of the letters- patent; but
here it seems they ought to, as much as any like clerical
amendments of declarations, or pleas, or judgments, under
the statutes of jeofails.

A different conclusion might be formed, on a fuller exami-
nation of the subject, as to third persons who had acquired
rights as the patent stood before it was corrected, unless by

530 PATENT CASES.

Allen 9, Blunt et al. S Wood. & Miaot.

Ethan Allen v. Orisson Blunt et oZ.

[2 Woodbnrj mnd Minot, 121. October T. 1846.]

In ft motion for a new trial \ becaoae an official letter from the commissioner of
the Patent Office on an official matter was admitted as eridenoe, tending to
proTe the time of making the inrention, there is some analogy to justify its
admission after proving its signature as official ootrespondence, and also u
a declaration made at the time containing a particular act, as part of the res
ffesta; and though its compeCencj may be questionable, if subsequent eri-
dence in the progress of the case rendered it nnnecessaiy to proTe the fact
for which it was offered, a new trial will not be granted on account of its
admission.

So it will not be granted, where parol eyidence was offered of the contents of
a former letter, and rejected, because no satisfactoiy proof was first furnished
to the Court of the loss of that letter; or its having come to the possessioii
of the opposite party. Courts will receive the affidavits of either party, to
establish or rebut such preliminary facts, to be proved to them.

Letters put in the post-office are not of course in all cases, and under all dr-
cnmstances, presumed to have been received, though patting them in, may
be using due diligence as to notice by the holders of negotiable paper. Bat
in questions of fact addressed to the Court, to lay the foundation of second-
ary evidence of a written paper, such a letter will not be presumed to have
been received, merely from patting it in a post-office, if no answer wis
returned, and the party, to which it was addressed, makes affidavit it never
came to hand.

A former verdict between these parties on an issue out of chancery in a bill in
which an injunction was prayed for against the further use of a

[ * 122 ] patent, and a * trial of an action for damages for its violation, and
on an amended specification, seems not to have been a trial of the
same matter, and if it was, the former is not a bar when no judgment was
ever rendered on that verdict, or on the merits of the bill, praying an injunc-
tion, the bill having been dismissed on the plaintiff's own motion.
A deposition shall not be taken during the session of the Court, at which the
case is to be tried, except by its order or consent of parties, or taken merely
debene eue in case of death or absence abroad.
When connscl have acted pnblicly in former trials of a like cause, between
these parties, and are still employed, though not one of the counsel, whose
name appear on the record, if living within a hundred miles of the place
where the deposition was taken, he ought to be notified.
It is doubtful whether a caption is not insufficient by describing the action as
against one, when it was against two, and so entered and defended, though
with service since only on one. If the ruling had been erroneous, no new
trial is proper when no injory resulted, as the minntes of counsel containing

PATENT CASES. 531

Allen V. Blant et al. 2 Wood. & Minot

the testimony of the witness on a former trial went to the jury, and, for
aoght which appeared, contained all that was material in his deposition.

A renewal of a patent by the commissioner with an amended specification, is
presumed to have been made legally, that is, to correct a mistake or inad-
vertence, and for the same inyention.

But this presumption may be rebatted by evidence, and if so, it should be sub-
mitted to the jury when requested to decide as a fact, whether the last letters
issued for the same invention.

Under the Acts of 1836 and 1839, the earliest invention is to prevail over any
subsequent one, unless it was allowed to go into public use, or be on sale
for two years before taking out a patent, in all trials where no point is made
of a subsequent inventor having perfected and patented his invention, while
the other neglected to use due diligence to complete his.

An invention, to be valid as the first, must be seasonably reduced to practice,
and put in use.

A patentee, who uses certain words in his specification, and then takes out an
amended one, omitting them, is not estopped by those words, after being thus
withdrawn.

Where the plaintiff makes out ^ primd facie case for the violation of his patent,
and ihen the defendant goes forward to prove his special defence under a
notice, that the invention had been known and used at divers places by
divers persons, it is right to instruct the jury, that on this defence it is the
duty of the defendant to turn the scales of evidence in his favor.

To indemnify a patentee in damages, the jury may allow actual cost in suits
relating to it, and also counsel fees, if reasonable in amount ; and this court,
under the act of Congress, will award treble what is found by the jury as
damages, if deemed proper to protect useful inventors from combinations
and ruin.

If one of the jury, before retiring, publicly inquire as to a particular fact on the
records of the Court, and no objection being then interposed by counsel on
either side, it is publicly answered by the clerk, it cannot be taken advantage
of by a motion for a new trial after a verdict is returned.

* Damages in cases of this kind and of torts, where the jury passed on [ * 123 ]
them fairly and legally, will not b9 considered excessive, unless they
clearly exceed what is necessary to indemnify the patentee ; and a court will
not set aside a verdict for such excess, unless large and palpably unreasona-
ble. When a motion for a new trial is not drawn up for some weeks, and
the counsel disagree as to some of the rulings made, the Court must settle
the differences, and will not award a new trial on account of them if no
injustice seems on the whole case to have been done by the verdict.

Nor when such is the result will the Court allow a new trial, if the counsel be-
lieve that in his ai^ument he expressed a wish for the Court to instruct the
jury on some> points, and it was not done, but furnished no written list of the
instructions desired, nor stated verbally, after the chaise was through, and
before the jury retired, that any point had been omitted, or any further direc-
tions were desired.

532 PATENT CASES.

AUm V, Blunt et al. S Wood. & Minoi.

It is not the daty of the Court to instruct the jury on abstract or ineleTant
questions, but only such as arise on the CTidenoe in the case ; and though, ss
general rules, new trials are granted for the admission of evidence not oora-
potent, or the rejection of what is legal, or for a misdirection in point of law,
yet by well-established exqsptions, in the exercise of a sound discretion, this
• is not to be done, if in the course of the trial the evidence became immate-
rial, or on the whole case, notwithstanding some erroneous ruling or iDstra^
tton, the yerdict does not seem to hare been influenced by tfaem, or to be
against the justice of the cause.

A motion for an allowance of a bill of exceptions, under the authority given hj
the Patent Act to this court in all cases under it, where it seems "* reasosa-
ble,** in order to enable the parties to carry questions contained in it to ibe
Supreme Court, when the damages are less than $2,000, ought to be gnmted
in the exercise of a sound discretion, as to cases iuToMng points whidi srise
in the construction of the Patent Law itself, where those are important in
their character and really doubtful, but as to no cases involTing points of s
different character.

This was an action on the case for a violation of a patent-
right for a self-cocking pistol.

The suit was instituted September 2, 1844, and counted
on a patent issued for the last time on the 3d of August,
1844, but which had originally issued, November 11, 1837,
and been surrendered and cancelled for a defective specifica-
tion, January 15, 1844, as well as again August 3, 1844.

The plea was, not guilty, accompanied by notices of a prior
knowledge and use of the same modes of constructing locks
to iire*arms, in various places and by various persons, that
need not be recapitulated.

The writ was servqd on Blunt only, and the

[* 124 ] cause came * on for trial here in June, 1845, when

the jury disagreed. It was tried again in June,

1846, and after ten days spent in putting in the testimony,

and in arguments of counsel, was submitted to the jury, and

a verdict returned for the plaintiff for $1,200 damages.

In the progress of the trial, several rulings were made of
disputed questions on the admission of evidence, and the jury
were instructed on certain points of law connected with the
case.

PATENT CASES. 533

Allen p. Blunt et al. 2 Wood. & Minot

But a bill of exceptions was not then filed by the counsel
for the defendant, from an impression that as the damages
were less than $2,000, the case could not be carried up to
the Supreme Court by a writ of error.

A motion for a new trial, however, was made, and the
reasons assigned for it were filed, July 14, 1846, a copy of
which follows : —

''And now, after verdict, defendants move the Court here
for a new trial, and assign the following causes.

1. Because the Court, notwithstanding the objection of
defendants, allowed the plaintiff to read in evidence a certain
letter, purporting to have been written and addressed by one
Ellsworth, assuming to be Commissioner of Patents, bearing
date the 15th July, 1837.

2. Because the Court refused to allow defendants to read
in evidence and exhibit a portion of the deposition of one
William H. Elliot, in relation to his, said Elliot's, having trans-
mitted to plaintiff a certain letter and certain drawings of
pistol locks, copies of which were annexed to said deposition,
on the ground that the plaintiff, by his affidavit, denied the
receipt of any such letter and drawfngs.

3. Because the Court refused to permit defendants to give
in evidence the record of the proceedings, verdict, and final .
disposition of a suit in equity between the plaintiff and
defendants in the State of New York, touching the same
subject-matter, which is at issue in this suit.

* 4. Because the Court refused to permit defend- [ * 125 ]
ants to read in evidence the deposition of Samuel
Colt, taken by said defendant in and for said suit.

5. Because defendants' counsel having insisted that the
first letters-patent were for another and different invention
from those claimed in the second and third letters-patent, the
Court ruled as a matter of law, that the reissue by the Com-
missioner of Patents to plaintiff of the two letters by him

45 •

534 PATENT CASES.

Allen v. Slant et iL 2 Wood. & Minot.

obtained upon surrender of his first and of his second letlers-
patenty was conclusive that all said letters were for* one and
the same invention.

6. Because the Court, having. permitted the plaintiff to
introduce evidence as tending to show that plaintiff, several
years prior to his first application for letters-patent therefor,
did invent and put in use th6 invention claimed by him and
set forth in said letters-patent, did thereupon rule that
although the same invention had, subsequent to plaintiff's
making his said invention, and before bis making his said
application, been made and put in use by Elliot or any other
persons, yet the plaintiff's patent would still be valid.

7. Because the Court, although requested by defendants'
counsel, omitted to instruct the jury as matter of law, that
unless they should find that the plaintiff had not merely first
discovered, but first reduced to practice, and put to use, his
said invention prior to the discovery, and putting in use by
others of the same invention, the plaintiff's patent would be
void.

8. Because the Court did not instruct the jury as matter of
law, though requested by defendants' counsel, that plaintiff
was estopped as against defendant and the public by his first

^letters-patent from asserting that the mode of disengagement
of the slide trigger does not constitute a substantial difference
between the lock of plaintiff and a lock disengaged in the

mode of detaching such slide trigger.
[ * 1 26 ] * 9. Because the Court omitted to mstruct the jury,

though requested by defendants so to do, that if
plaintiff made his said invention in 1833, and reduced the
same to practice, yet if he concealed the same, and did not
apply for letters-patent until July, 1837, the letters-patent
thus obtained would be void in case of a subsequent similar
invention reduced to practice, and put in use prior to said ap-
plication for letters-patent; but instructed the jury that if they

PATENT CASES. 635

Allea V, Blant et al. 2 Wood. & Minot.

should be satisfied that plaintiff made his said supposed in-
vention in the year 1833, and reduced it to practice, but did
not apply for letters-patent therefor until July, 1837, yet that
plaintiff's patent was valid.

10. Because the Court instructed the jury, that if plaintiff
had made out a primd facie case of originality of invention,
and of a violation of his patent by defendants, the evidence
on the part of defendants to entitle them to a verdict, must
be sufficient to turn the scale; that if defendants impugn
the originality of the invention, or the similarity of the
instruments, they must offer such evidence as shall render it
probable that plaintiff was not the first inventor, or that the
machines are not similar. *

11. Because the Court instructed the jury in relation to
damages, that they were at liberty to include therein the costs
and expenditures of plaintiff in conducting this suit, other
than and besides the costs by law taxable therein.

12. Because the jury were permitted, upon the question of
damages, to inquire of the clerk and ascertain what damages
had been given in two other patent cases that had been tried
in said court.

13. Because the damages assessed by the verdict were
without evidence, against the evidence and the weight of the
evidence, and are also excessive."

At the adjourned session of the Court, held in September,
1846, the new motion was made for leave of the Court, then
to file a bill of exceptions, embracing some of the
* causes assigned for a new trial, in order to carry [ * 127 ]
the case up by a writ of error under the special
provision as to the subject of allowing writs of error in all
patent cases when deemed reasonable by the Court under the
17th section of the Patent Act of July 4, 1836.

This moUon was made without abandoning that for a new
trial, in case it should not succeed ; and both were argued at

533 PATENT CASES.

Allen V. Blunt et al. S Wood. & Minot.

the September session by BartUtt and C. Cr. Ltoring, for the
motions, and B, iZ. Curtis and Choate^ against them.

Woodbury, J. The counsel for the defendants have as-
signed reasons for these two motions, which undoubtedly
seemed to them well founded in fact, as well as sufficient in
law.

But the trial having ended June 24, 1846, and these rea-
sons not having been filed till July 15, 1846, twenty-one days
after, and when the Court was not in session, they are open
to greater chances of mistake, and cannot so easily and satis-
factorily be corrected, if erroneous, as when filed near the
time of the trial.

The reasons for the delay, however, are satisfactory ; bat
do not lesson or remove at all the difficulties produced by it.
These have still got to be met, and having listened to the
respective views of the counsel on both sides as to the facts
and the law involved in these motions, I shall now proceed
to perform my further unpleasant portion of duty in respect
to them, by deciding first, what it appears to me actually took
place at the trial in connection with each point, and next,
whether it furnishes a reasonable ground for a new trial, or
the allowance of a bill of exceptions under the special pro-
vision of the 17th section of the Patent Act. There are thir-
teen reasons assigned for the new trial, and it will be more
convenient, intelligible, and useful in examining so
[ * 128 ] * many, to consider them in relation to a new trial,
separately from the motion for a bill of exceptions.

1 . The first one is the admission of a letter from the Com-
missioner of Patents, which was objected to by the defend-
ants. There is no difference of views between the counsel
as to the ruling of the Court on this point having been as
stated. But the letter was admitted merely as evidence to
prove that as early as the 1 5th of July, 1837, the day of its

PATENT CASES. 537

Allen t;. Blant et al. 2 Wood. & Minot

date, the plaintiff had made this discovery id fire-arms, and
applied to the Patent Office for a patent for it. This letter
was an acknowledgment of such an application. I entertain-
ed doubts at the trial whether the letter must not be regarded
like .that of any third person not a party, and hence was not
so good evidence as his statements under oath as a witness.

But it may be, that coming from a public officer under an
official oath and on official business, it is competent as an
official act and document of a public officer in relation to
such a subject ; and being duly proved as to its signature,
there is some analogy for making it competent evidence for
the jury to weigh in deciding whether the invention of the
plaintiff had not at that time been completed. If copies are
admissible in such cases on general principles, d fortiori are
the originals.

The rules as to admitting official correspondence to prove
official facts in this manner in certain cases, may be seen in
1 Greenl. Evid. pp. 359, 554 ; 1 Johns. R.38-51 ; 1 Cranch,
1, 37, 38.

Another principle, urged at the hearing, though not at the
trial, in support of the admission of this letter is, that it was
a part of the transaction, when the plaintiff applied for a
patent And being made at the time, and in relation to that
subject, is a competent declaration, as a part of the res gesta
and explanatory of what took place. 14 Peters, .
448 ; • 2 Bing. 102 ; 1 Stark. 46 ; 1 Greenl. on [ • 129 ]
Evid. 120, 122. This is certainly plausible as to
any letters then written by the phuntiff, or declarations then
made by him.

But whether these should not be proved by witnesses, may
be questionable, and if the person with whom he was thus
dealing is a competent witness, as Mr. Ellsworth is, for aught
which appears, it would seem that his testimony is more
proper evidence of what the plaintiff said or did than his

588 PATENT CASES.

Allen V. Blant et al. S Wood. & Ifinot

letter, unless as before remarked, that letter coming from a
public officer, and under oath' in respect to an official matter,
be legal evidence as to that matter, in the light of a public
document or record to prove it, and not as a mere private
letter admitted for being a part of the res gesUa.

But there is another circumstance connected with this
testimony, which seems decisive against the objection to its

admission.

It is to be remembered in considering both of these mo-
tions, that they are not matters of right as to being granted,
but the discretion of the Court is to be execcised ; and if, in
the hurry of a trial, a direction was erroneous, but afterwards
became immaterial or unnecessary in consequence of other
evidence, a new trial ought not to be granted. See on this,
Greenleaf's Lessee v. Birth, 5 Peters, 132 ; 1 Mete. 242.

Now it is certain, that the letter of the commissioner was
admitted to show an invention of this lock by the plaintiff, he
having applied for a patent for it as early as July, 1836. But
in the chain of proof on this subject, evidence was subse-
quently offered, proving an invention of it by the plaintiff by
having made arms, or caused them to be made with this lock
on them, several months earlier. By that, therefore, the date
of the application, as shown in this letter, became of no im-
portance for this purpose, and there is no pretence or sugges-
tion that the date was in truth erroneous, and would not be
sustained by the commissioner as a witness, if placed
[ * 130 ] * on the stand. This ground for a new trial, there-
fore, cannot be sustained.

2. The next objection relates to the ruling of the Court,
that a portion of a deposition by Wm. H. Elliot, as to the
contents of a certain letter, could not be read. It is alleged
to have been excluded on the ground of the plaintiff's denial
that he received any such letter. But there is a mistake m
part as to this. It is true, that the Court decided against the

PATENT CASES. 589

Alien V. BInnt et aL 2 Wood. & Minot

competency of a portion of Elliot's deposition, bat it was
because it went to prove the contents of a written paper and
drawings of pistols, which paper and drawings were not first
shown to be lost, nor in the possession of the plaintiff with
notice to produce them.

The fact, that he wrote letters to him at a particular time,
and on the subject of pistols, was not ruled out, as may be
seen by looking at the deposition filed in the case, and the
marks now existing on what was deemed inadmissible. They
were only as to the particular contents of the letter and draw-
ings. These were ruled out till the usual previous proof was
given of the loss of the originals, or of their being actually in
the possession of the plaintiff, and notice given to produce
them. The correctness of such a ruling is sustained by all
the books on evidence, and rests on the familiar principle,
that a resort will not, as a general rule, be allowed to parol
or secondary evidence of a fact, when written or higher
evidence exists and may be obtained.

The defendant then gave notice to the plaintiff in Court
to produce the letter and drawings, and the plaintiff there-
upon filed his aflldavit, that no such letter had ever been
received by him.

Another question thus arose and was decided by the Courts
whether the defendants had offered to the Court, not the jury,
satisfactory proof to justify it in point of law in the admission
of parol evidence to the jury of the contents of that letter and
drawings. Nothing had been offered to the jury to
* weigh on this point, and nothing could be by [* 131]
law, except the original letter itself and the draw-
ings, until proof was furnished to the Court that they had
been lost or had gone into the plaintiff's custody. 1 Pet.
597 ; 15 Pick. 37 ; 16 Johns. 193 ; Woods v. Gassett, UN.
Hamp. R. 445; Schermerhorn v. Schermerhorn, 1 Wend.
123.

PATENT CASES.

Allen t>. Bhut «t sL S Wood, fc Ifiaot.

Nobody tes(i6ed to theie laet facts. The deponent nrore
he sent the letter, rather than delirered iL If sent by a pri-
vate hand, then the person carrjdng it could testify whelbei
it was delivered or not to the plaintiS'. If sent by mail, tbeo,
where notice is to be brought home to the correspondent, llie
letter must be shown to have been received, and the more
especially, where the correspondent denies under oath to the
Court that it ever was received. Carpenter v. Providence
Washington Insurance Company, 4 How. 165.

It is a mistake to suppose that in case of letters, put in tbe
mul to give notice of demand of commerdal paper and non-
payment, the law considers it sufficient on the presumption
that the letter is always received. But it is on the fact, thit
writing and doing so are using due diligence to give notice'

If such a presumption of the receipt of letters put in the
post-office, is to be made in all cases, it is a presumption,
contradicted daily by the immense dead-letter collections
never received by correspondents, and requiring the constant
employment of several clerks to overhaul and dispose of, in
our own general post-office alone.

But however that may be, this letter was not proved to
have been put in the post-office at all, and the proof addrened
to the Court, and the contradiction by the oath of the plun-
tiff's and Elliot's own testimony, that be never got any reply,
failed entirely to convince me that the letter was ever received
by Allen.

That a party, before being allowed to give secon-
[ • 132 ] dary or * parol evidence of the contents of a writ-
ing, supposed to be in the posseauon of the oppoaite
party, must first prove to the Court the possession of it as well
ie notice, may be seen in the following books. 1 Green''
Wid. 597; 3 Camp. 499; 16 Johns. 193; 1 Peters, 597.
'his may be done by the affidavit of the party, and be
roved by like affidavits of his opponent, and inlerrogi-

PATENT CASES. 541

AUen 0. Blimt et aL 2 Wood. & Minot.

tories be put in the discretion of the Court, to each by the
other, if desiring it and pertinent. Woods v. Gassett, UN.
Hamp. 447.

For it is all addr^sed to tl^e Court and not to the jury, and
is weighed under liberal views rather than technical scruples,
and in connection with all the other evidence and circum-
stances bearing on the point. Tayloe v. Riggs, 1 Peters, 596 ;
Schermerhom v. Schermerhorn, 1 Wend. 193.

Were it necessary to go farther on this objection, it would
be seen that the evidence thus rejected became, likewise,
immaterial ; because it related to a communication of certain *
drawings by Elliot to Allen at a particular date in the sum-
mer of 1837, in order to show that Elliot was then the inven-
tor before Allen ;, whereas Allen afterwards pr6ved that on
two occasions, both some time previous to that date, he had
caused locks of this kind to be made.

3. The next ruling of the Court was, not admitting in
evidence the former verdict and proceedings between these
parties in New York.

My predecessor, on a former trial of this cause, considered
this question, and gave an elaborate written opinion against
the admission of this testimony. 3 Story, R. 742. I have
examined it with care, and feel satisfied it is correct, unless
in point of fact the judgment of the Court in New York,
dismissing the bill, was a judgment made on the merits, and
grounded on this very verdict. That Court, on its law side,
may not have saved questions, or ordered a new trial as to
that verdict.

*But something still more than that feet is ne- [ * 133 ]
cessary to give it <' vitality and finality," and that is
judgment, actually rendered upon and enforcing the verdict.
6 Wheat. 1 13.

The bill in chancery, to aid which this verdict was taken,
was dismissed. But that is an equivocal act unless explained.

VOL. II. — p. c. 46

548 PATENT CASES.

DitniiMiog bilb is sometiiiiet done for want of prosecotioD,
and is then like a nonsuit in acoartofkw, which isofGOttne
no bar, or competent evidence to affect a subsequent soil
Sometimes it is by agreement, ^without |my examiaatioD or
action on the merits by the Court itself. Jenkins v. Eld-
redge, 3 Story, R. 182.

Sometimes it is done to enforce an order or rale of the
Court, and not to bar the party from a subsequent prosecu-
tion, and sometimes it is a judgment on the whole case, and
is then meant to settle fully the rights of the parties. Sib-
bald ty. United States, 12 Peters, 492; 1 Wheat. 335 ; Hop-
kins V. Lee, 6 Wheat 113-116.

When it is of the latter character, it is usually pleaded in
bar to a subsequent proceeding, and averments are made, that
the dismissal was on the merits. But if it is not so pleaded
and averred, and is only offered in evidence, then the evir
dence dehort the record, if not in it, should accompaoy the
record, and prove all which is proper to show that the dis-
missal was the result of a judicial inquiry and disposal of the
rights of the parties involved in the proceedings and verdict
See Aspden et aL v. Nixon, 4 How. 467 ; especially castf
cited in the argumenta^ See Burnham t;. Webster, 1 Wood.
&. Min. 172.

But aside from these principles, it appears in this case, ibat
before any judgment was rendered on or against this verdict,
the plaintiff, on his own motion, had his bill dismissed with-
out any decision on the verdict, or the merits of the case.
A mere verdict in any suit does not, as a matler of
[ * 134 ] * course, settle the rights of the parties. Butler r.
Stepheiw, Walk. R. 219. It is open, as the ver-
dict in the very case now under oonsidemtion strongly ^^^
trates, to numerous exceptions growing out of roliogs on
evidence that was offered, and opinions or principles iavoWed
in the merits^ and is open to be set aside for various eirors i^

^ PATENT CASES, 543

Allen V. Blmt et al. a Wood. ft. IGaot.

them or for misbehavior of the jury, and, as the coansel for
the defendants contend in this very case, ought in law and
justice crfiteB to be set aride, rather than stand and be given
in evidence to control or mfluenoe other trials between the
same pu-ties* Bat after all the objections to such a verdict
have been weighed by the Court deliberately, and the Conrt
proceeds to pronounce judgment on it, and does pronoonce
one sustaining it, then it should put an end to farther liti-
gation between the parties of the same pinats invdved in that
case. It is for pubKc qoiet, the interests of the republic, to
do this, but not to prevent one full decision on the merits
between the parties. Again, if the same merits or points
once decided are not again agitated in the second suit, then
of course the* principle in question does not make or allow the
first decision, being on different matters, to bind or control
the second. 5 N;Hamp. R. 263; Burnham v. Webster,
1 Woodb. & Min. 172; Bank of United States t^. Beverly,
1 How. 148, 149.

Accordingly, it is further contended in this case by the
plaintiff, that if a judgment had been rendered in the first
proceeding in New York on the merits, it did not involve the
points here agitated. That was an application in equity for
an injunction. This is a suit at kw for damages for a viola*
tion of a patent-right. An injunction will not always be
granted, though the patent be a valid one.

So the q>ecification in the patent then lelied on, was not
the same as now, and hence that proceeding may have fidled
on the very objection since obviated by a correction of the

* There should have been further evidence and [ * 135 ]
explanations on both of these questions before that
verdict could safely or properly be allowed to go to the jury.

These views are sustained not only by sound reason, but
various authorities cited in Aspden et al. v. Nixon, and by

544 PATENT CASES.

Alien V. Bloat et al. 2 Wood. & Minot.

Judge Story in Ihe present cause ; and I do not regard the
remarks of 1' Greenleaf on Evidence, ^ 510, as sustaining
a contrary doctrine when applied (as they are understood by
me to be) either to the necessity not existing of any judgment
at law on verdicts found on issues out of chancery, but leav-
ing the necessity of judgments on them in chancery as impe-
rative, as principle and the precedents just cited require.

But it must appear of course, that the Court decided the
merits, relying on that verdict, in order to show that the
question involved in that verdict has been settled or adjudged
on once by a proper tribunal. That is the gist of the princi-
ple in its ever being a bar or possessing weight Bui. N. P.
234 ; 1 Story, R. 166 ; 2 N. Hamp. R. 474.

Hence in Willes, 367, note, it is said, therd must be a
decree in chancery ; and that is evidence that the verdict is
in force. Gresley, Eq. Ev. 109; Graham on N. T. 596;
i Newland, Ch. Pr. 353.

4. The fourth reason assigned for a new trial is the exclu-
sion of Colt's deposition. It will be recollected that this
deposition was taken without giving any notice to the oppo-
site party or his counsel, and during the sitting of this Court
at which the cause was to be tried. Such depositions, if ad-
missible at all under the act of Congress, are very dangerous
in their ex parte character, for the fair trial of the final merits
of a cause, and according to the views of this Court expressed
with much deliberation, are to be very closely scrutinized.
Bell V. Morrison, 1 Pet: S. C. 356.

It is there settled, that no presumptions are to be made in

aid of evidence taken contrary to common-lav

[ * 136 ] principles. * See also 2 Wheat. 287 ; 5 Peters,

604; 1 Gall. 488; 3 Wash. C. C. 4*08; 1 Brock.

C. a 367.

My own opinion is, that when taken during the session of
the Court, though over a hundred miles distant, whether with
or without notice, .they are entirely inadmissible.

^ PATENT CASES. 645

Allen V. Blunt et al. 3 Wood. & Ifinot.

The admission of depositions, taken in perpduam ret
memoriamj under authority from the United States' Courts,
and* those authorised by some States by express statutes in
cases of sickness, or going abroad, or old age, are to be used
only in case the witness dies, or has not returned ; and often,
in the States, notice in these cases must be given to the party
likely to be affected by them. See Act of Sept. 24, 1789,
<^ 30. See Statutes in New Hampshire and Massachusetts.

It is held in P. Ins. Co. t^. Southgate, 5 Peters, 616, that
when taken de bene esse under the United States' statute, as
here without notice, they cannot be used, if the disability is
removed. But when the witness lived over one hundred
miles distant at the time taken, the opposite side must show
the witness to be now nearer, and that this provision applies
to cases of over one hundred miles distant out of the district,
as well as within it. But 8 Wash. C. C. 409, 531, is
against this, and in my view on the soundest reasons, though
the other decision being by the Supreme Court must govern
till altered by that Court. Here, however, a new principle
interposes as to a deposition taken while this Court is in
session.

The party and his counsel, (getting express notice from the*
other side, or getting none in that way, but learning as they
may accidentally when and where the deposition is to be
taken, and) anxious as they may be to attend and cross-ex-
amine, have a prior and paramount legal duty to perform here
in court to attend and be ready for the trial here. This is a
duty enjoined by law, and not to be neglected. By a rule in
the English courts, counsel cannot be requbed to attend else-
where during the sittings at Westminster. 1 Tidd's
Pr. 57. * In Maine the Courts usually will not allow [ • 187 ]
depositions to be used, taken during the session of
the Court, unless in the same phce, and when the Court is
not in actual session, &c. Wyman i;. Wood, 36 Maine, 489.

46»

546 PATENT CASE& ^

Allen V. Slant et aL 8 Wood. & Minot

So, not the day before the Court shs. 8 Greenl. 326. Sed
qutBre, 25 Maine, 440, as to the last.

It is only by consent of parties, or discretion of the Court
under peculiar circumstances, that in ordinary cases of taking
depositions, this prior and paramount duty in Court should 1)e
required to be neglected or suspended, by absence in attend-
ing on the taking of depositions. They ought to be all taken,
and the case prepared before the term begins.

But beside this, the plaintiff had counsel in this case,.resi(i-
ing in the very city where this deposition was taken, and
though his name was not entered on the record here, he had
acted in the former trial, and this was known to the defendants.

Furthermore, the names of the parties in this suit are not
given correctly in the caption, being described as a suit
against Blunt, when it is against Blunt and Simmes, though
not served on the latter. It is entered against both, and both
plead and defend. Whether for such a variance the wit-
nesses would be examined or not, if indicled for perjury, it is
an objection, when the proceedings are to be strictly scrutini-
zed as here, not without some weight.

The exceptions to the admission of this deposition are the

* more readily sustained also ; because, instead of a continuance

to take it over again^ the testimony of the witness was still

allowed to go to the jury, as given in a previous trial, and

contained in the minutes of the counsel on both sides; and if

the deposition varied from that, by containing any material

and new facts, it was not stated, either at the trial or in the

argument of these motions, that in truth it did so f arf.

[ * 138 ] * My predecessor, in one district of this circuit,

made it an invariable rule, if depositions were taken

without notice, to allow a continuance to enable the other

party to cross-examine the witness, or repel his testinDony ;

and such I understand to be the practice of most of the

judges of the Supreme Court in their circuits. The 68tb

rule of this Court in equity virtually does the same.

PATENT CASES. 547

Allen V, Blont et aL 2 Wood. & Minot

5. In respect to the next objection^ a supposed ruling by
the Court, that the different letters-patent to the plaintiff for
his lock, must in point of law be regarded as conclusively for
one and the same invention, the counsel for the plaintiff con-
tend, that no such ruling was made by the Court.

My own minutes and recollections are, that the plaintiff's
counsel in the opening, stated something as to the opinion of
my predecessor about the binding force of the doings of the
commissioner, unless it was set up and proved that fraud had
been practised in procuring the last letters from the commis-
sioner; and that the counsel on the other side expressed
doubts as to the correctness of this doctrine.

But no attempt was made during the trial to offer any
evidence to show that these last letters were not for the same
invention, or to show fraud practised on the commissioner
in obtaining the last letters, and I can find no minute that
my own views on this point were expressed at all. Indeed,
in the closing argument for the defendants on this motion,
^he counsel admit that the Court made no such charge or
ruling.

No doubt, however, exists in my mind that if any direction
had been required by the evidence and given, I should have
said that in point of law the jury ought, until the contrary
was shown, to presume the commissioner, in issuing new let-
ters, had discharged hia duty faithfully and correctly. Tr.
Railroad Company t;. Stimpson, 14 Peters, 448.

This involves the idea, that he issued them on [ * 139 ]
account of mistake or inadvertence in the descrip-
tion or specification of the invention attached to the first let-
ters. And therefore that he issued the new. ones, as a matter
of course, with a different amended description or specifica-
tion, but for the " same invention," as he is expressly required
to do by the 13th section of the act. But this primd facie
inference or presumption in respect to the identity was open

548 PATENT CASES.

Alton V. Blnnt et aL a Wood. & Miaot

to be contradicted by proper evidence, though if none had
been ofiered, it should stand as a fact, that the InTentioo
meant to be described in both, was the same. I entertain the
same impressions now, and the correctness of them is fortiOed
by my view of the decision of the Supreme Court in Slimp-
son t^. Westchester Railroad Co., 4 Howard, 404. See also,
14 Peters, 458.

Probably my predecessor deemed the decisibn of the coo-
missioner binding or conclusive &rther than I should, and
not, as I am informed, to be overturned, either as to the
question of mistake in the specification, or as to the ideotitj
of the patent, unless fraud was shown, or an error by the
commissioner was apparent on the face of the paper. Alleo
V. Blunt, 3 Story, R. 744.

It is not extraordinary, that no such attempt at counter
proof was made ; because it is now stated in the argument,
that the counsel for the defendant then considered the ques-
tion of identity as a question of law merely for the Court,
and asked a ruling of the Court on that point, whether as a
question of law, after examining the descriptions in the tvro
specifications, the new letters were or were not for the same
invention.

If I omitted, then, to give such a ruling, which is all con-
tended for in the closing argument, the omission seems to
have been right.

But had I done what the defendants' counsel now say they

wished, that is, given a ruling on the identity as a

[ * 140 ] * question of law, and looking to the specification

alone, it would have been then, as it is Aow, against

the defendants.

On the face of the two specifications without other evi-
dence, neither a Court nor a jury could much hesitate to be-
lieve the renewed letters and the original ones were for the
same invention. So the commissioner must have meant, and

PATENT CASES. 549

Allen V. Blunt et aL 8 Wood. & Minot

SO only ha4 the plaintiff any motive to make them. Because
new letters could then with equal ease have been taken out
for any new invention ; and its use for fourteen years from
that date protected by them, instead of only for the residue
of the term as in the renewed letters. These last, also, could
not operate back on violations any more than new letters.

To be sure he uses in the renewed letters words somewhat
different from those in the old ones. That he might do this,
was doubtless one of the very reasons for obtaining the
renewed letters. But it was different language to describe
more correctly the same invention, and this was proper. A
part of the opinion of my predecessor on those specifications
illustrates this point also. Allen v. Blunt, 3 Stpry, R. 744 ;
Woodworth et al. t;. Stone, Ibid. 754.

The whole mistake on this matter is perhaps in the defend-
ant's supposition, that the commissioner's renewal was held
by me to be conclusive in law as to the identity ; because he
understood, my predecessor to have thought so, unless fraud
was shown, or an error on the face of the papers.

But from what has been said, it does not appear that the
defendant is likely to have suffered from his mistake as to
this, so as to justify a new trial for it.

6. The next ruling involves the question, whether under
the Act of 1836, when the inquiry is, which is the original
invention, the earliest is not to prevail over a succeeding one,
though a succeeding one may be made, and used before let-
ters-patent are taken out for the first. ' There is no
doubt * it must prevail as a matter of historical 4>r [ * 141 ]
chronological truth. It is, in truth, Ihe first in-
vention.

Is there then any provision in the Patent Laws which con-
tradicts or annuls this truth? Whatever may be the law
abroad, or whatever it may have been here under the Act of
1793, or whatever may have been the speculative opinions of

560 PATENT CASES.

AUen V, lUant et aL 9 Wood. & MiaoC.

writers as to what seems most appropriate, it is dear dow
that no act of Congress makes delay in taking oat a
fiital to the earliest or first inventor, unless be abandons
discovery to the public, or, by his " consent,'' allows it to be
put in *^ public use or on sale " for two years before taking
out a patent. Then he forfeits bis right in it. See Patent
Act, July 4th, 1836, ^ 15; 5 Stat, at Large, 1S3; Act of
March 3, 1639 ; 5 Ibid. 353.

The plaintiff's patent wonld be good under the abofe
qualification or the above statutory provisions. The great
contest in the present case was, which person in point of fact
first invented this kind of self-cocking pistol. There was no
pretence that Elliot, the rival inventor, ever actually took out
any patent for his supposed invention, or that either of them
made, except one or two experimental pistols, of pat any
others in " public use," or on sale, till the year previous to
the patent of the plaintiff, when several were made under the
direction of the plaintiff, and not of EllioL

The plaintiff's invention then and thus, if not earlier, be-
came perfected prior to Elliot's completing his. Allen's was
also first patented, being the only one patented.

Elliot sleeping twenty years after, and taking out no patent)
is strong presumptive evidence against him as inventor. 3
Story, R. 171, 754; 1 Story, 386.

Again, though I have referred to all the statutory provisions
now governing this point, there may, under former statutes,
have been established a principle like the following. That if)
notwithstanding priority in date of an invention, the party
must proceed to perfect and patent it, with due
[ * 142 ] * diligence, otherwise a succeeding inventor, who
is more diligent in perfecting his, though not get-
ting out a patent, may prevail against or defeat him.

But there was no attempt here to offer evidence, that Allen
was not employed after his invention till his patent, or the

PATENT CASES. 551

Allen o. Blnnt et al. 2 Wood. & Minot

year previous, in perfecting and improving bis invention, or
that be ever dedicated it to the public or meant to ; or allowed
it to be in ^< public use'' without any patent ^' for more than
two years prior to such application for a patent." See 7th
Sec Patent Act of March 2, 1889.

The laws were different in phraseology before these last actsj
and the construction of them may be seen in 4 Mason, 108.

By the Act of February 1, 1793, the invention must not
have been ^' known or used before the application " for a
patent.

They were not so strong as now for the patentee, being
now " not known or used " " before the discovery."

Yet, under the old law, Judge Story held, ^' that the first
inventor has a right to a patent, though there may have been
a knowledge and use of the thing invented by others before
bis application for a patent, if such knowlec^ or use was not
anterior to his discovery." Melius t?. Silsbee, 4 Mason, 111;
Washburn et al. v. Gould, 3 Story, R. 133 ; Pierson v. Eagle
Screw Company, Id. 408.

.This he conceded was different from the English decisions
on their Patent Law. But the language and design of their
law in this respect were not like oars. See Hall, R. 58 ;
Davies on Patents, 4S9.

He held, that there the use must be such as to show a
dedication to the public. I Gall. 482. That the use must
have been a public use. Shaw v. Coqper, 7 Peters, 292 ;
1 Wash. Ci C. 440. And with his knowledge. Whitney et
al. V. Emmett et al. 1 Baldwin, C. C. 311 ; 2 Peters, 12, 20.
See also, 6 Peters, 248 ; 1 Howard, 202.

* Hence, whatever may have been thought on [*143]
this in England, as in Dolland's case, in the special
language of their law, (2 Hen. Bl. 487,) qt by Phillips here,
(p. 895,) before the Act of 1 839, it is clear under that act
and the Act of 1836, the intervening use, in order to defeat
a prior invention, must be public, and with consent of the

552 PATENT CASES.

Allen V. Blont et al. 2 Wood. & Minot.

inventory and continue two yean. Reed v. Cotter et al.
1 Story, R. 590.

Again, through the whole trial, as well as in his notice, the
defendant denied that the plaintiff had made the inventioo
earlier in time than Elliot, and went on the ground, that
prior in tempore^ potior in re.

Hence he could not, without an absurdity, have insisted at
the same time, that Allen had invented it first, but abandoDed
it afterwards to the public.

The instruction then, as given, was correct upon the poiot
raised, and on which it was given, and which alone was then
under consideration. And no instruction should be given oo
any other points than such ones.

The Court, though seasonably requested, is not bound to
instruct the jury on points not arising in the case, or on ab-
stract and irrelevant propositions, points not raised by the
evidence. 3 Wend. 75 ; 4 Howard, 289 ; I Dana, 35 ; 4 J.
J. Marsh. 194; McNiel v. Holbrook, 12 Peters, 84.

7. This disposes also of part of the seventh objection.
The counsel for the plaintiff think an instruction was given,
such as was desired 4inder that head with the. above expiana-
tion, and such is my own impression ; and, on tlje second
argument the counsel for the defendant waived this exceptioo.

8. The eighth objection is overruled, because if the law
allows a party to withdraw expressions, used in his first speci-
fication by inadvertence or mistake, and he does withdrew
them, it would involve no little absurdity for the law after-
wards to estop him in consequence of the very

[ * 144 ] words * which have been withdrawn or cancelled
under its permission. The case of Kimball's Adni.
V. Bellows, 13 N. Hamp. R. 58, is very analogous to this
view.

It was a case of words, struck out of a count in a dedaia-
tion, and afterwards attempted to be proved against the
plaintiff as his admissions, and refused.

PATENT CASES. 553

Alkn V. Blast et al. S Wood. & Minot.

9. The next objection is a supposed omission by the Court
to instruct the jury, that if the plaintiff made his invention in
1833, and reduced it to practice, and concealed the same till
he applied for a patent in July, 1837, the letters would be
void in case that a similar invention was subsequently made,
reduced to practice, and put in use before he applied.

It will be seen, by what has before been remarked under
another head, that no question was made at the trial in rela-
tion to an use by the public of the plaintiff's patent for two
years before he applied for it ; and that there was no evidence,
whatever offered of such a '' public " use of any other patent
like his.

It is also equally certain, that no evidence whatever was
oflfered, or point made, that the plaintiff had invented, and
improperly concealed his invention, till another person made
and perfected a similar one.

But, on the contrary, as before remarked, the contest was,
whether he had invented it at all first, and this was inconsis-
tent with any position, that he bad invented but concealed it.

The latter clause of this objection as to the instruction
which was actually given, has before been considered, and, as
before explained and limited, was the instruction proper on
the evidence.

10. The next objection relates to that part of the charge
to the jury, where the Court stated, that if they believed in
the first instance on the paper evidence, that the plaintiff had
made out a case, he was entitled to recover, unless the
defendant had in his defence rebutted or overcome it, or, in
other words, turned the scales.

* The sentence, which follows in this objection, [ * 145 ]
shows how the remark about turning the scales of
evidence was applied and intended to be understood. It was
thus. The plaintiff having made out his case, he stopped,
and then the defendant went on and tried to make out a spe-

VOL. II. — F. c. 47

554 PATENT CASES.

Allen V. Bloot et al. S Wood. & Bfinoi.

cial defence, to overcome the right which the plaintiff had
proved primdfade to recover, that is, he tried to *' impugn
the originality of the invention, or the similarity of the instni-
ments," and of this, as a spedal defence, notice had been
given on the record.

It was observed on this by the Court, that the defendants,
to support that special defence, must, in the language of this
objection, '^ offer such evidence as shall render it probable
that the plaintiff was not the first inventor, or that the ma-
chines are not similar.'' The burden of proof was on him to
turn the scales in respect to this new matter which he had
attempted to prove under his special notice. All remarks,
like this now questioned, are right or wrong as applied or not
to a particular state of pleadings, or particular course of trial
and evidence. So far as regards these, the notice here was
like a special plea in bar, the support of which belongs to the
defendant in all cases. He must, in relation to that, after
the plaintiff has gone far enough to make out a primd/ade
case, turn the scales in his own favor, or, in other words, take
on himself the burden of proof and discharge it.

Thus, one of the defences set up in the notice was a use of

a like lock abroad in England before the plaintiff's supposed

invention, and iinother was the use of such a lock previously

in Westchester county in the State of New York. The idea

intended to be inculcated was that the defendant, in respect

to these particulars, must render them probable ; he must turn

the scales ; the burden was on him. If there could be any

doubt of the correctness of such a direction in pwnt

[ * 146 ] of law, * it will be removed by reading the case of

Powers t;. Russell, 13 Pick. 76.

There is still another view of this matter. If some points
in the declaration or claim by the plaintiff were contested,
on which the plaintiff had made out a primA fade case, or
offered enough evidence to turn the scales in his fiivor, it

PATENT CASES. 555

Allen V. Bloat et al. 2 Wood. & Minot.

may have been suggested that then the defendant must offer
enough, standing by itself, to render his position probable, or
turn the scales as to that in liis favor, else there would not
be sufficient to overcome the balance already proved for the
plaintiff.

But itnever was intended, and nothing is offered to show
that the jury understood, they were on all controverted points
in the declaration, which were common to that and the
defence, not to compare in the end all the evidence on both
sides, and find for whichever party the whole appeared to
preponderate.

1 1 . The next objection is, that the Court instructed the
jury they might allow to the plaintiff in damages his actual
costs, as well as any taxable cost be had paid in consequence
of any violation of his patent, which the defendants had
committed. I think so still.

The fees of counsel were specially authorized to be allowed
by my predecessor, (2 Mason, 119,) though at first he thought
differently. 1 Gall. 482. Of course they must be reasonable
fees.

In cases of actions for breaches of covenants of seisin,
where the object is an indemnity for the injury sustained,
costs in former suits are not only allowed, but *^ reasonable
counsel fees " beside. Staats v. Ex'rs of Ten Eyck, 8 Caines'
R. Ill ; Kingsbury t^. Smith, 13 N. Hamp. R. 122; 4 Johns.
1 ; Swett V. Patrick, 12 Maine, 9 ; Beale t^. Thompson, 3 B.
&. P. 407 ; Pitkin v. Leavitt, 13 Verm. R. 379.

The '^actual damages " sustained, indude all necessary and
proper expenses in protecting one's violated rights.
And * though they should not include <^ smart [ * 147 ]
money,'' or what is proper merely for example, they
may well embrace every thing really suffered by the wrong.
1 Baldwin, C. C. 328; Gray v. James, 1 Peters, C. C. 394;
Whittem orev. Cutter, 1 Gall. 478 ; Washburn et al. u Gould,
3 Story, R. 136.

556 PATENT CASES.

Alktt V. Blnat «t aL S Wood. & Iffiaot.

In the Admiialty Courts, ooonsel fees are allowed bj way
of damages, and in one case $500. The Apollon, 9 Wheat
379.

There is no exact measure of damages, except in cases
founded on contracts ; and unless patentees are to be follj
indemnified for injuries inflicted on them, they are destined
in all valuable patents to be broken down by litigation alone.

If they can escape that untoward fate now, from which
Arkwright and Watts suflered so tnuch at first, and by which
Oliver Evans and many others have been ruined, and which
the very importance and worth to the world of the property
their genius had created, exposes them to only the more, it
will be effected solely by givmg to them an ample indemnity,
a real and substantial, and not a mere technical one for rights,
which are sacredly recognized both by the laws and the Con-
stitution. Indeed I am prepared, in all cases of wanton and
persevering encroachments on the fruits of their honest inven-
tions and labors, to go further, and do what Congress, doubt-
less for this useful purpose, empowered this court to do, and
that is, treble the damages, if required for the full indemnity
and protection of any wronged patentee. See 14 Sec. of
Pat. Law of July 4, 1846. This, I understand, has been
done here on some former occasions.

12. The next objection on account of the damages is, that
the jury were permitted to inquire of the clerk, and ascertain
what damages had been given in two other patent cases
recently tried here.

I am surprised at this objection, when the inquiiy

[ * 148 ] was * made by one of the jury in the box, in the

presence of the Court, counsel, and parties, and no

objection raised to it at the time, nor any pretence now set

up, that the reply of the clerk did not correspond with the

record.

The proper time to object to the admission of such a qf^

PATENT CASES. 557

Allen V. Bltiiit et al. 2 Wood. & Minot.

■■ - ■ ' , . t .III ^»^M^— —

tian and reply, is that which is conformed to in all other cases
of testimony, where the parties and counsel and Court are
present, and is the time when the question is asked.

It is not permissible to acquiesce then by silence, and take
the chance of a favorable verdict on the sums stated in former
trials, they both having been in this instance comparatively
small, and make the objection for the first time after the jury
have returned a verdict for a larger sum.

It is well settled, that a new trial should not be granted
for a cause existing at the trial, but which was not sttited or
excepted to then. Davidson v. Bridgeport, 8 Conn. 473 ;
Nichols t;. Alsop, 10 Conn. 263, 499 ; 7 Conn. 500 ; State v.
Hascal, 6 N. Hamp. 352^ 1 Wash. C. C. 440 ; 5 Cowen,
173; 5 Pick. 217; 11 Pick. 469; 13 Wend. 524; 4 Halst.
225 ; 1 Bibb, 247 ; 1 A. K. Marsh. 76 ; 2 Peters, 15.

The more especially is this so, when any wrong or mis-
leading of the jury was likely to flow from the objection not
being then made. 2 Pick. 145 ; 5 Mass. 1 ; 6 Mass. 350.

New evidence may be admitted after a case is closed, and
even after a jury has gone out, if no objection is taken at the
time. 4 Cowen, 451 ; 4 Stewart & Porter, 34; Parish v.
Fite, 1 Law Rep. 238.

13. The last objection is, that the sum returned by the jury
as damages, was excessive.

The Court, from what had been noticed in respect to the
probable damages, did not anticipate so large a sum. But it
must be a very aggravated and .oppressive case, where the
Court would feel justified in setting up its own opinion, even
if decidedly different from that of the jury as to the
true * amount of damages in an injury in practical [ * 149 ]
life, and as to business not susceptible of exact
proof in its details, but peculiarly lying within the range of
the experience and observation of a jury. It must stand,
notwithstanding such difference, if the matter was submitted

47*

558 PATENT CASES.

Allen V. Bhmt et al. 8 Wood. & Uinot.

to their << fair judgment." Alden et ah v. Dewej et al.,
1 Story, R. 336, 340, 841.

So nothing was left to the jury to be weighed in estimatiog
the damages which the C!ourt, on reconaidention, deena to
have been improper. Indeed, my pfedeoeaaor was iodined
to leave a very wide range to the jury on this subject, and
hardly exclude any thing at all bearing on it from their con-
sideration. Earle v. Sawyer, 4 Mason, 14 ; Pierson v. The
Eagle Screw Co., 3 Story, R. 410.

Retiring then with what is proper, or not objected to at the
proper time, if in weighing all that is pertinent, the jury give
more damages than any one witness testified to, it has been
considered to be no ground for a new trial, as being ezceanve.
IS Pick. 547 ; 4 Bibb, 70 ; A. K. Marsh. 67.

Their being excessive, is the last branch of this exceptioo.
If damages are slightly more than the Court deem proper,
they are not to be regarded as a ground for a new trial. Lit-
tell, Sel. Ca. 178 ; 1 Dana, 355 ; Hardin, 317 ; 6 Johns. STO;
Stanley. t;. Whipple, 2 McLean, R. 40.

Some cases hold, that they must be extravagantly exces-
sive, (1 Bibb, 247 ; 2 Bibb, 591 ; 1 Yeates, 209,) unless socne
exact measure of damages exists in the case, as it does in
suits on some contracts. 5 Mason, 497; 4 Mass. 1, H; ^
Mass. 435.

Others, that they must be unreasonable. Sampson v. Smith,
15 Mass. 365. Or in torts, flagrantly excessive. 3 Dana,
464 ; Littell, Sel. Ca. 136 ; ^ A. K. Marsh. 365 ; 1 Ibid. 345;
3 Ibid. 454 ; 2 Penn. 814 ; 1 South. 338, 586 ; 2 Pick. 113,
114; 7lbid.82; 3Ibid.379; 4 Mass. 1; 9Johns.45; 10

Ibid. 448 ; 5 Cow. 106 ; 9 Coon. 309.
[ * 150 ] * It is true in this case as stated by the counsel
for the defendant, the evidence as to damages on
either side was general and somewhat loose. This arose from
the fact that the contested right was the main question.

PATENT CASES. 559

Alton V, Blant et aL S Wood. & Minot

But the objection is not well founded, that nothing was
submitted to the jury which justified any damages, or any
thing like the sam given. 1 Baldw. C. C. 828.

For it was certainly shown, that the respondents made and
sold pistols similar in principle to the plaintiff's, that the im-
provement in them was a valuable one, that there had been a
long and expensive trial between these parties on the subject
in New York, and another here before the present one ; and
every man fit for the jury box could, from all this, without
having the particulars in bills of cost, form a general opinion,
likely to be very sound and not unjust, as to the sum in
damages which would probably indemnify the plaintiffs.
Washburn et al. v. Gould, 3 Story, R. 136.

Having gone through with the specific reasons assigned for
a new trial, and come to a conclusion against their sufficiency,
it seems proper now to advert to some other considerations of
a general character, connected with several of the objections
that might in some cases operate in favor of a new trial.

They are, that the counsel on the part of the defendants,
and those on the part of the plaintiff, do not always agree in
respect to what was in fact done or omitted to be done at
this trial ; and that some requests to the Court, made in the
argument of the cause as to charging the jury, were not com-
plied with when the charge was finally given.

I can readily conceive of cases, where the differences in
recollection between the counsel were so great after the lapse
of several weeks, and the point so material, about which they
diflered, that the Court might deem a new trial necessary to a
right disposal of the case.

But here, the Court feels satisfied, where they
differ on * what is material, and it is for the Cburt [ * 151 ]
in such case to decide on these differences, (Bond
V. Cmler, 7 Mass. 205 ; 4 Greenl. R. 508,) that, looking to
its own minutes and the leading points made on each side.

560 PATE^IT CASES.

Allen V. Blant et al. 2 Wood. & Mlnot

the course pursued at the trial was such as it has just ex-
plained under the different objections ; and in respect to the
merits of the case, as tried and settled in (be end, that no
injustice is likely to happen from coming to the conclusioo,
not to disturb the verdict. Again, I can conceive of cases in
the hurry of a trial at Nisi Prius, and one like this of tea
days' length, where some omission of the Court or counsel
must have had such an influence on the verdict as to require
a new trial.

For there may be mistakes, not to say sins of omission as
well as commission, in all concerned in administering the
laws. But the omissions, supposed to have occurred here in
charging the jury on particular points, are not admitted by the
counsel on the other side to have happened in some of the
cases supposed ; and, in the others, they related t^ questions
as before shown, which did not arise on the evidence, aqd on
which instructions ought not to be given. It is well, also, in
all cases to remember, that after a judge has charged the jury,
if a written list of the points, on which instructions are re-
quested by either party, has not been handed to him in con-
formity to the practice in most of the Slates south of us, it is
their duty after the charge is closed, to call his attention to
any point which has been omitted, as some oversights are
likely to happen where the points are numerous^ and the evi-
dence to be commented on to the jury is very abundant and
complicated. Stanton v. Bannister, 2 Verm. 464.

If the counsel do observe such omissions at the time, and

do not mention them, so that they may be corrected and

supplied at once, before the jury go out, it would be a very

dangerous practice to let his client take the chance of a ver*

diet; before naming them, and then, if losing the

[* 152] verdict, * for the first time proceed to suggest the

omission as a ground for a new trial.

On the contrary, if counsel do not at the tin»e observe any

PATENT CASES. 561

Allen V. Blunt et al. 3 Wood. 6 Minot

omissioiM, it is pretty conclusive evidence, that the points
omitted were not then deemed very material, since they did
not make ik> much impression on their minds as to cause
them to noUce that instructions bad not been given concern-
ing them.

My own opinion as to the importance of any points omit-
ted, which were relevant, corresponds with this supposition,
that they were of little weight, and did not alter the verdict
in any respect.

There are some cases on this point not uninstructive. Thus
it has been settled, that it is no ground for a new trial, if the
judge omitted to charge on some points, unless the omission
probably influenced or changed the verdict. 6 Monroe, 61 ;
Graham, N. T. 273; 12 Moore, 231 ; Armstrong v. Toller,
11 Wheat. 277; Calbreath v. Gracy, 1 Wash. C. C. 198; 4
Hakt. 149.

And that it is too late to remind the Court of any omission
after the jury have retired. State t;. Catlin, 3 Verm. 534.

In fine, the general rule as to new trials throughout is not
to disturb the verdict, if it appears to be according to the jus-
tice of the case, and the ruling is only doubtful in point of
law. Brayton, 169; 3 J. J. Marsh. 710.

Though if the ruling be clearly wrong, it will be, as a
general rule, a good ground for a new trial. 1 Dana, 481 ;
2 Bibb, 89; 3 Wend. 418.

But in examining the elementary books and cases on this
subject, it is highly important to discriminate what are the
exceptions from what is the general rule on this last point.

Thus, as a general rule, though it will be a ground for a
new trial, if illegal testimony is admitted, (Graham
on •N.T.236, 237, and cases cited ; 2 Wash. 276 ; [ • 153 ]
11 Mass. 140,) yet it is equally well established as
an exception, not to grant a new trial if it be manifest titat
the illegal evidence has not prejudiced the case. 6 Cowen,
682; 3 Wilson, 18; 1 Taunt. 12; 6 Bing. 681.

562 PATENT CASES.

AU«a V. Blant et al. % Wood. & Ifinot

- - — -.-.-■■ ■ - -

Or if the legal objection is merely technical^ 6. g. as to
admitting a printed statute when an exemplification is proper;
and when on a new trial the same result will probably hap-
pen. 8 Cowen, 223; 2 D. & £. 275; 6 Cowen, 449.

Or if the evidence becapne immaterial, and the jury did not
rely on it probably. 16 Johns. 92; SCowen, 621 ; Preston v.
Harvey, 2 H^n. & Mumf. 55.

Or if there was enough to justify the verdict without it, od
examining the report of the case. Doe v. Tyler, 6 Biog.56L

Or if the rejection was right, but on a ground different from
that assigned. 4 Hammond, 5 ; 2 Bibb, 608.

So, if incompetent evidence be admitted, the Court will
not grant a new trial if it was not material. 4 N. Hamp. R>
369; 2 Conn. 31 ; 6 N. Hamp. R. 80, 9ed quare; 9 Pick.
176.

Or if no injustice appears to have been done by it. Brown
V. Wilde, 12 Johns. 455 ; 2 South. 765 ; 1 Chip. 304 ; 5 How.
509; Hamblett v. Hamblett, 6 N. Hamp. R. 333.

Or if cumulative merely. 3 Ham. 107 ; 12 Conn. 219.
Or if not controverted. 12 Conn. 410. Or if the fact was
proved also by other evidence. 6 Cowen, 449. So, 1 Taunt
12, and 2 Moore, 153 ; Prince v. Shepherd, 4 Pick. 216; 4
Wend. 453 ; 10 Ibid. 338.

Again, it is a general rule to grant a new trial if there was
any misdirection on the law to the jury. Graham, N. T. 262,
cases cited ; 5 Mass. 365.

But it is an exception, if no injustice seems to
[ * 154 ] have been ^done by it, as if it was on a trifling or
immaterial point; or did not affect the verdict; or
if justice appears to have been done. 1^ Conn. 342, 377;
3 Marsh. 506; 10 Johns. 447 ; 6 Cowen, 118 ; 5 Day, 479;
2 Johns. 46 ; 5 Mass. 368, 438, 487 ; 5 D. & E. 425 ; 1 Pet
18B ; Graham, 301, 341, 342, and cases cited ; 2 Salk. 644,
646.

PATENT CASES. 563

Allen r. Bhxnt et al. 2 Wood. & Minot.

Or the objection was only technical. 2 D. & E. 4 ; I Bet.
P. 338, note; 6 Taunt. 366; 7 Greenl. 442; 2 Pick. 177,
310; 1 Pick. 206; 5 Day, 479; 1 Bibb, 265, 605.

It is an exception, too,* if the point was frivolous or liti-
gious. 9 Conn. 1 ; 12 Mass. 22, 168 ; 3 Johns. 239; 3 Wend. ,
83 ; 1 Johns. Cas. 250; 5 Johns. 137 ; 2 Marsh. 546.

Furthermore, if I could find errors in the instructions to the
jury, not specified, which led or were likely to lead to injus-
tice, such as nay remarks, that the improvement was useful
in itself, though in fire-arms or instruments of war and death,
because increasing the powers of high civilization over barba-
rism, and thus tending to preserve and perpetuate all the
benefits of the former from the destruction which, in former
ages, often assailed it from rude force ; and my other remark,
that if this invention was not useful to the community in
making pistols, the defendants would not be likely to use it ;
or if other presumptions of error existed, because the finding
for the plaintiflT by the jury was unexpected and strange, when
in fact the plaintiff alone had taken out any patent for this
improvement, and had first brought it into general use, and
the defendants had not pretended themselves to have invented
% ; or because the giving so much damages for a violation of
so useful a patent, was matter of surprise, when the whole
amount was not likely more than to indemnify him for all his
costs and expenses in so protracted and severe a litigation,
and much less all his losses of larger sales and profits. I Say,
if injustice was thus apparently stamped on any
part of the * proceedings by observations not ob- [^155]
jected to, or by occurrences, which the Court is
now conscious were wrong, it would make me hesitate in
refusing another trial.

But when the whole aspect of the case is the other way, it
seems to be my duty, in the exercise of a sound discretion,
not to disturb what the jury have decided.

564 PATENT CASES.

AUen V. Blont et aL S Wood. & Mmot

The second motion for the allowance of a Irifl of excep-
tions to be now filed, so as to embrace these reasons assigned
for a new trial, in order to bring a writ of error on them,
involves several considerations, different from tliose in the
naked motion for a new trial.

This second motion is founded upon the special proviao to
the 17th section to the Patent Act of July 4, 1836. That
section allows a writ of error and appeals *' to the Supreme
Court of the United States in the same manner and under
the same circumstances as is now provided by law in other
judgmenii and decrees of Circuit Courts, and in all other
cases in which the Court shall deem it reasonable to allow
the same."

This presents a novel question. I am not aware of any
case, and none is referred to on either side, where this portion
of the Patent Law has received a construction in any coart
during the ten years since its passage.

In the absence of any decision, I am inclined to the opi-
nion, that, however anxious my wishes are to facilitate
attempts of parties to have a revision of the decisions of this
court whenever dissatisfied with them ; yet I am limited by
Congress in my power to allow it, and must confine the indul-
gence to cases where it appears to the Court to be ** reasona-
ble," looking to the subject-matter of this provision, and the
general law as to appeals. Opposing parties, also, have an
interest in this matter against further delay and expense ; and
the public has a policy as to limited jurisdiction in suits,
which is to be respected ; and, therefore, without yielding to
my own wishes to permit a writ of error or appeal
[ # 156 ] * in all cases, I must execute the act of Congress
as it exists in regard to the public interest and the
convenience and rights of parties.

What then is reasonable as a general rule in respect to this
request ?

PATENT CASES. 565

Allen V. Blunt et al. 2 Wood. & Minot

Adverting to the manifest policy of the law as to appeals
and writs of error, independent of this particular provision,
it will be seen, that mostt cases are to be disposed of finally,
in the States wher&one of the parties reside, as less ezpen*
sive and more convenient, unless th^ amount in controversy
be as large as $2,000, or unless the judges disagree in their
opinions.

There is nothing in the public policy as to the sum being
now too large, which limits appeals, and hence causing a
disposition to carry up cases of smaller pecuniary importance.
On the contrary, two thousand dollars was regarded as high
here in 1789, as three or four thousand would be now. /

The necessary delay of justice in the Supreme Court,
beyond what once existed before the country grew to be so
much larger and wealthier, increases the ^grievance of being
compelled to go there unless required by strict law.

I regard these objections more than any additional expense
in further hearings there, at such a distance, instead of nearer
home, as the attendance of witnesses and parties is not re*
quired there. But they all show, that in a case where the
amount, as here, is little over half of what was required in
A98 to carry a case up, it should not be deemed reasonable
to aid in doing it, unless to promote some great end or inte-
rest, not involved simply in the payment of the sum, found as
damages in this particular case.

One of those ends undoubtedly is, uniformity in the con-
struction of our great system of Patent Laws throughout the
United States, and because questions xsonnected with the

Patent Laws themselves, when decided, govern

numerous Mother cases and much larger amounts [*157]
than are disclosed in any one verdict.

These considerations show that the exceptions to be alloW'
ed, using a reasonable discretion, ought to relate to construc-
tions of the Patent Laws. If not to be confined to these,

VOL. II. — F. c. 48

666 PATENT CASES.

Allen V. Blunt et al. S Wood. & Minot

why limit the indulgence to patent cases ? There is no rea-
son why, as to the other incidental questions, not relating to
patents, the parties in these suits should enjoy privileges con-
cerning their decision, not enjoyed by other suitors as to such
questions. Why should « it be permitted, then, as to niatten
casually connected with suits upon the Patent Acts ? Wbj,
if adverting to the public interests, or the rights of oppoong
parties, prolong litigation on such points at great inconve-
nience, delay, and expense ?

So it is discreet arid reasonable to confine the appeals, ereo
on patent questions under the Patent Laws, to such as involTe
important, and not trifling matters connected with those laws,
not mere technical difficulties ; also to such as involve ques-
tions really doubtful.

If the discretion concerning what is ** reasonable," which
is to be exercised by the Court, is not to extend to a selectioo
of cases having questions, that really relate to the Fateot
Laws, Congress would have provided, that appeals sboold
exist in respect to all patent actions without distinction.

Looking to the first test, none of the causes assigned for t
new trial, are to be considered in deciding as to a bill of ex-
ceptions, but the 5th, 6th, 7th, and 9th, as none others reh^
to the construction of the Patent Laws.

Now the fifth, as it will be seen, if allowed in any form,
must be in one already substantially settled by the Supreme
Court in Stimpson t;. Westchester Railroad, 4 Howard,
before cited ; and one, probably not controverted by the
defendant, when explained as it is understood by the

Court.
[ * 158 ] * The sixth, as has been shown, either attempU
in its present form to raise a point about a <' public
use " of the plaintiff's patent, which was not made at the
trial, or, if it merely relies on the position, that a prior in-
vention is not valid when a subsequent one is made, but not

PATENT CASES. 567

Horey «• StoTent. 3 Wood, ft Minot.

■ — I I

patented, before the first one is patented, it seems too clear
against the defendant to hang a doubt on.

The seventh is now abandoned.

The eighth is for a supposed omission to instruct the jury
on particular points, and not for mis-instructions, and of
course cannot be a ground for a bill of exceptions, independ-
ent of what has before been said against the intrinsic cha-
racter of the rulings desired upon it. • The case does not,
therefore, seem to contain matter to make it a reasonable one
for granting this privilege.

Both motions are refused ; and judgment must be entered
on the verdict.

William Hovet v. Silas Stevens.

[3 Woodbury & Minot, 17. October T. 1846.]

•

Jn a patent for an improvement in the machinery to grind knives, it is necessary,
Dy the act of Congress, not only to describe the machine to be nsed under the
patent, bat to distingnish what part of it, or what combination under it, is
neWy or is the improvement claimed to be invented. It is made necessary,
also, by that act, to do this in clear, uitelligible, and certain terms. This is
not now required to be done with so great accuracy as was formerly exacted,
nor to be done in technical language ; but it must be made with reasonable
certainty and deamess. It may be done in a summary at the dose of the
specification, disdosing as new any of the machine before described, which
is old in its parts, or in combination, or it may be done in the summary,
referring in terms, or by implication, to other parts of the spedflcation for
assistance, and in such case the other parts are to be considered as ezplana.
tory of the summary, or a portion of it, for this purpose.

In this case, the summary appeared to claim a traverse motion of a part of the
grinder, in combination with a rotary one, so as to bring up the knife to the
stone steadily, though spiral in form. On referring to other parts of the spe-
cification, as to what his invention consisted of, it still seemed to be the com-
bination of those two motions, and it was hdd that such a combination, when

568 PATENT CASES.

Horey v. Stereos. 9 Wood. & Minot.

oonnected, m here, with the mode of effsctiog it, was a legal enfajeci of «
patent.

Bat it being conceded that it was not original, the plaintiff was not allowed now
to consider his invention or improrement to be the stock used in the machine,
or the goose-neck, pressing the blade against the Stone, when he had not dis-
tingnished either of them in any portion of the specification as the new and
particular improyement he had made, nor done it, if at all, with reasonable
certainty.

I * 18 ] ^ It is not enough to describe a machine containing the stock, or goose-
neck ; bat he most state Airther, that they or one of them, is what he
claims to hare invented, either as a new part or ased in a new coiphination,
if such be the fact.

So, if he claims the whole machinery as newly inTented, either in parts or in
combination, he most state that distinctly \ and it will suffice, if he really
invented the whole combination, or all the parts. But if he claims too mvdi,
or too broadly, it will be fatal, unless the excess is disclaimed.

If his particular improvement, which he really meant to claim as new, is not
distinguished from the rest of the machinery, as new, nor in sufficiently dear
terms set out, the only mode of obviating the difficulty is either hy an amend-
ed specification or a new patent

Costs in equity are primA Jacie^ to be allowed to the prevaUing party. But
where they are inequitable in whole, or in part, they may be disallowed ;
though the burden of showing them to be so rests on the party objecting to
them. If the bill is brought solely for the benefit of the complainant, they are
disallowed to htm, unless the respondent is charged with some wrong ; and
if the respondent sucoeeds on other grounds than those, in which cost was
incurred, his cost may be disallowed in the discretion of the Court.

But where he succeeds in a bill for an injanction against the use <^ a patent,
on the objection of too great uncertainty in the specification, and no deci-
sion.has been made in equity Qr at law in favor of the originality of the pa-
tent, which had been denied by him, he is to receive costs incurred in that
defence.

But where the evidence cast some shade over his fairness of conduct in respect
to the plaintiff and his machine, the Court declined to allow bim beyond actual
costs, and rejected travel and attendance in the bill in equity while taxed at
the same terms in the suit at law.'

This was an action at law for a violation of a patent, which
had been obtained by the complainant, for ^' a new «nd useful
improvement in the machinery for grinding tools/' It was
alleged to be peculiarly fitted to sharpen knives used in Ho-
vey's straw-cutter, and the letters-patent were in the form set

PATENT CASES. 569

Hovey v. Sterem . 8 Wood, it Minot

out in the case of Hovey v. Stevens, beard here May term,
1846, for an injunction. I Wood. & Min. 290. The ma-
terial partfTof the specification are there extracted, as well as
in the opinion of the Court here, and are referred to as part
in this case.

At the trial here, October term,. 1846, before Judge Sprague,
the plaintiff, after proving his patent, offered a paper, certi-
fied to be a copy of one filed by him in the Patent Office,
October 6, 1846, as a new specification for a reissue
of letters-patent. It described certain portions *of [ * 19 ]
the original patent, as in substance in the case be-
fore referred to.

It set out, also, that <^ the nature of my invention consists
in applying to said machine a stock or arbor, having a flanch
thereon, on which the spiral or twisted knives are fastened
to be ground," &c* And further, that the stock was " not
claimed as new ; '' and in the close, that he did not " claim
the grinder, the traversing carriage, or rotary motion, as they
have before been used ; but what I do claim as new, and
desire to secure by letters-patent, is the combination of the
stock, constructed " as described, and knives attached, &.C.,
&c.

The Judge ruled, that this paper offered as evidence of a
disclaimer of portions of the old specification, was not com-
petent evidence for that purpose, as it had not been filed as
a disclaimer in the Patent Office ; nor was it completed as a
new specification by a surrender of the old one. And he
further slated, therefore, that, in his opinion, the plaintiff's
claim was so uncertain and so imperfectly described without
it, or in the original specification, as to make his patent inva-
lid until he filed another and more accurate and more specific
description of what he deemed new and patentable in his in-
vention. He held, that it might be considered as clear enough
for combination of two motions described, but for nothing

48*

570 PATENT CASES.

HoTey V. St«ireni. 8 Wood, ft Minot

else ; and the mode of constructing them was conceded oot
to be original.

Thereupon the plaintiff became nonsuit, with leave to
move to set it aside and be heard on this ruling before the
whole Court.

The hearing was commenced in November, 1846, and
renewed and finished in April, 1847.

C. Sumner and B. F. HaUeit, for the plaintiff; Ckarks
Levi Woodbury and iStan^oti, for the defendant.

Sprague, J., stated his views at length, against the mo*
tion.

[ • 20 ] • WooDBURT, J. 1 concur, generally, in the con-
clusions expressed by my associate, on this motion.
Having tried the case, he has devoted particular attention to
its different aspects ; and it is not, therefore, necessary for
me to go very fully into the grounds for my opinion.

But, as the argument has been before both of the jadges '
of this Court, in order to have the minds of both exerted on
the question, I do not feel at liberty to withhold some detail
of the impressions made on mine.

The ruling at the trial, that the new specification, not be-
ing completed, could not be considered as a disclaimer, is not
objected to at the argument. The sole question, then, is, whe-
ther the original specification sufficiently distinguishes what is
the particular improvement claimed to be invented by the
plaintiff, and then describes it with proper clearness and ac-
curacy.

On a former occasion, when an injunction was moved
against this defendant, I presented some views on the mat-
ters supposed to be claimed as new in this patent. 1 Wood.
& Min. 290. But by the proposed new specification pioce

PATENT CASES. 571

HoTe/ V, Stevens. 3 Wood. & Minot

filed, and the admission of counsel in the aiigument of the
present motion, the aspect of the case has been, in some re-
spects, changed, and our inquiries much narrowed.

This patent is, in the letters themselves, described to be
for '^ a new and useful improvement in machinery for grind*
ing tools." This obviously means, looking to the patent
itself, not ''that he has invented" the whole machine for
grinding, which he afterwards describes in his specification,
either as' a new combination throughout, or as having new
parts throughout, but that he has made some '' new and use-
ful improvement in the machinery " ordinarily used for that
purpose.

The next inquiry is, what is that particular improvement,
looking to the specification and drawings ? How is
it * described, or distinguished from what is not [ * 21 ]
new 7 when there is a summary setting out the claim
to some particular novelty that is to govern. 2 Mason, 112,
119 ; 1 Story, R. 285. But, if it refers to other parts of the
specification and drawings, those parts are to be examined in
connection with it in order to ascertain what is claimed in
the summary as the new improvement. See Davoll v. Brown,
and cases cited therein. 1 Wood. & Min. 58.

I am not aware that the new paper filed as an amended,
or new specification, but not completed, can be referred to in
construing the summary and original specification. And it is
now conceded not to be properly in the case as a disclaimer.
But it can probably be considered as an explanation by the
plaintifi^, of his intended meaning, and can be referred to, in
considering whether the words as used in the original specifi-
cation carry out clearly, or not, what it is now said he then
intended. The summary is in these words : —

'' What I claim as my invention, and desire to secure by
letters-patent, is, giving to the spiral or twisted knife or cut-
ters, attached to a flanch in a line radiating (or nearly so)

572 PATENT CASES.

Horey v, Storeiifl. 3 Wood. 6 Minot

from the axis of the stock, a traversing motion in the direo-
tioQ of its axis, in combination with a reciprocating rotaiy
motion on its axis, when this latter motion is governed by the
twisted plane of the cutter, or any thing essentially the same,
to enable the grinder to give the required bevel to the grouod
face, and the proper line to the edge, substantially in the
manner herein described."

No one can read this without coming to the conclusion that
the improvement Hovey describes here, as invented by him,
is giving to the knife, as fastened, a traversing motion in com-
bination with a reciprocating rotary motion.

In the next place, if the concluding words, '' substantially
in the manner herein described," allow and claim any diffe-
rent manner of giving those motions in combination,
' [ * 22 ] it * does not alter what is claimed as the improve-
ment, but merely permits the mode of giving the
motions to be different, if remainii^ ^^ substantially " the
same.

If, also, ** herein described " means, in the whole specifica-
tion, rather than the summary, which is a little doubtful, hot
ut res magis valeaiy I will so consider it, by adopting a libe-
ral construction towards the patentee. I do this, not to pre-
judice him by including more than is in his summary, and
thus making the latter too broad, and hence void. But it is
to aid him by further illustrations and explanations. I do not
see, however, that the obvious meaning of the summary, when
standing alone, is altered by the description when they are
carefully analyzed.

There are two of these. The first one is : —

<< The nature of my invention consists in attaching the
twisted (sometimes called spiral) blades or cutters to a ilanch
projecting from a stock hung on journals in a traversing car-
riage, so as to present the back of the cutter to be ground to
the action of a grindstone, or other reducing or polishing

PATENT CASES. 573

Horey v. Stevens. 3 Wood. & Minot

wheel, so that as the catter on the carriage traverses length-
wise it shall vibrate freely on the axis of the stock to which it
is attached, to follow the twist of the blade, and grind it to a
sharp edge, such as is required in cutting, by impinging the cut-
ting edges against the surface of a cylinder by the rotation of
the two cylinders, or the cutting cylinder on a plane, the cutting
being effected by a pressure towards the centre of the axis of
the cylinder of knives. The reciprocating motion of the cut-
ters, during the traverse motion, being governed by the spiral
or twisted surface of the knife itself, or any thing analogous
thereto."

Here, again, the leading /eature is the combination of the
two motions. So is it in the only other description of his in*
vention, as follows : — Certain things are necessary <' to carry
out my invention, pamely, to give to the stock to
which the * knives or cutters are attached, a recipro- [ * 23 ]
eating motion on its axis, whilst it traverses longitu-
dinally before the grinder, so as to give the required bevel to
the ground face, and a line to the cutting edge, which, in its
rotation, will generate a cylinder,"

Now, although those motions are described as produced by
the stock and other machinery used to grind the knives, yet
it is the combination of the two motions which is the most
clearly deiscribed as his new improvement^ and not the use of
either a stock, or goose-neck, or flange, or attaching the knife
by a screw. They seem to be mere parts of the machinery
in which the combination of these two motions is represented
as the novehy. In the next place, though it is doubtful
whether a patent can be taken out for mere motions, or for
mere combination of motions, yet adopting again the most
liberal construction for the patentee that this is a patent for
a new mode, or manner of producing those motions, and the
matter might be patentable. Stone v. Sprague, 1 Story, 270 ;
3 Car. & P. 502; Jupe t;. Pratt, Webs. Pat. R, 51.

PATENT CASES.

BoTBT 0. SMtsu. s Wood. 4 Uinot.

But after reaching that coaduaion we are met b; the ad-
mission in the amendment of the specificatimi 61ed, and in
the argument for the plaintiff, Qiat the combiDetion of then
two motioiu ia not a novdtf ; and that if the patent is to be
regarded ai for that, it ia too broad, and hence, being not
original for that, miiat be invalid.' Kaj v. Marshall, 1 Mfln.
8e Cr. 373 ; Wyeth v. Stone, 1 Story R. 273 ; 7 Wheal. 356 ;
Moody V. Fiake, 2 Maaon, C. C. 1 IS ; 4 Bam. &. Aid. 541 ;
Bovill V. Moore, S Marsh, Cckh. Pt. 211. How then can die
plaintiff be entitled to recover, or be aided by a new trial?

Only, I apprehend, by showing from the specification, thtt
some other thing than thia combination is actually and
clearly claimed in the orifpnal spetufication as the new im-

proTemeot.
[ * 34 ] * At the hearing of the motion for the injaactioa,
it was conjectared, that if any other new impiore-
ment was claimed, it might be the mode of fastening or tt-
tachiog the knife lo the flange with a screw.

But it appears now, in the admission before refened to,
that the fastening of the kni?es with a screw b not meant lo
be churned as a novelty.

Neither is the grinding one knife at e time claimed aa a
novelty, standing alone and psr ae.

While, on the contrary, in the statements in the new ipe-
cification filed, it ia the stock, in combination with tht other
parts, which he deairea to have considered as hia parlicolar
improvement.

But at the a^ument of the present moUon, it seems to be
contended, there are three novelties in the improvement of the
plaintiff, and either of them well enough distinguished. One
^jv combination of alt the parts, they all being old for
poses — that, it is said, never before so united in tbii
One is in the stock as permanent, united with the

PATENT CASES. 676

Bonf «. St»r«iu. 8 Wood. 4 UiaoL

Other parU ; and one is Ibe mode of pressing Ibe blade against
the stone, combined with the rest.

Now, as to the 6rst claim, we are unable to discover . it in
the specification, as for any new combination of parts, unless
it be the traverse and rotaiy motions, united — and that is
now acknowledged not to be new.

As to the second claim for a n^w part in a permanent stock,
or a new combination with it, it is certain that the original
patent refers to the stock, and so does the proposed disclaimer.
But the latter concedes it is not a new part.

Neither of them speak of jt as a permanent stock, ipMsU
mis verbiSf and the machine, it is conceded, would work well
without its being a permanent stock — but not so well for
some purposes.

Undoubtedly a permanent stock at times is better,
so * as to attach to it separate knives and grind them, L* ^^ ]
when out pf order, or to attach newly made separate
knives and grind them, so as be ready for commercial sales at
a distance, and for immediate use.

Unless the stock, then, be claimed as a permanent one,
and, being such, as a novelty, either in the combination or as
a separate part, this second ground fails. For temporary
stocks, or movable stocks have long been used in grinders
for sharpening clothing shears — if both they and permanent
ones have not been in combination with other parts similar to
those for grinding knives to split or shave leather.

The third and last claim of novelty in a part or in the oom-^
bination, is the goose-neck pressing the knife to the stone.
Because, according to the paper filed as an amendment, unless
the combination ccmsists of a permanent stock with the other
parts, there is nothing else in the combination which is now
claimed at this hearing, that is new or useful, unless it be the
goose-neck and screw to hold against the back of the knife to
keep it close to the grindstone.

576 PATENT CASES.

■ ^■M - I ■■■llll IIMWI^illlB^B^IlB 111 ■■ lll^^ll

Horey v. Sterens. 8 Wood, h Minot

Now, in examining whether the original specification can
be fairly construed to distinguish this stock in particular, or
this goose-neck, as the new improvement of the plaiotiS^
when combined with the rest — that is, never having been
before so combined substantially, the langui|ge used must be
looked at liberally and favorably to the plaintiff. •

It is apparent, from all the specifications and drawings, that
both the stock and goose-neck, to press the knife against the
stone, are enumerated and described as parts of the whole
machine.

This, however, is not enough, to relieve the case from its
difficulties.

Here, after describing the whole machine with all its parti,
which is well enough done in most respects, he should have
distinguished the stock or the goose-neck as the new
[ * 26 ] parts he * had invented ; or if neither, he should
have stated the combination of one or both to be
new with the rest of the machinery, or if not so, that some
other combination in the machine, or the whole of it, was
what he claimed as his improvement, 2 Marshall Com. PI.
212. Thus the whole machinery and apparatus were claimed
as new in Wyeth v. Stone, 1 Story, R. 273 - 9. But, instead
of any of these being done here, he seems to distinguish and
particularize with clearness nothing as novel in the machiDC,
except, as first mentioned, the combination of the two mo-
tions.

Nor are these distinctions useless or arbitrary, or of recent
requirement in our Patent Laws.

A party may claim to have discovered some new part of a
machine which is useful, or some new combination, or in other
words, new arrangement of old parts, which is useful. Either
is patentable.

But they are not to be described in the same way ; and
whichever is his particular improvement must be plainly stated ;

PATENT CASES. 577

HoTej V. Stereos. 8 Wood, ft ICinot

because the public, when making or using similar machines,
have a right to know, first, what he claims to have patented
and invented as new — whether new parts or new combina*
tions only ; and if new parts, what new ones ? and if new
combinations, of what old parts ? See cases cited in Davoll
V. Brown, 1 Wood. & Min. 53. So the persons whom a
patentee prosecutes have a right to know clearly what they
are to defend against ; a daim of new parts or of new com-
binations ? and if of either, the specific parts which are set
up as new, or which are set up as brought into a new com-
bination. 1 Story, R. 286 ; Webster on Patents, 86, note ;
Macfarlane v. Price, 1 Starkie, 199 ; Rex v. Cutler, Ibid.
354.

So the act of Congress requires this. What is claimed as
new or an improvement is to be set out substantially, in order
that the Commissioner of Patents may judge if it
be "^ new, so as to issue a patent, and Courts may [ ''^ 27 ]
see whether it is new in the trials contesting it.
Lowell V. Lewis, 1 Mason, 189.

It is necessary to be done, also, to see if he claims any
thing before known or not; or, in other words, too much.
Oh these points see also, 1 Starkie, N. P. 199; Evans v.
Eaton, 3 Wheaton, 35 i ; Phil, on Pat. 268 and 270, — cases
cited therein ; 3 Bro. d^ B. 5 ; 2 Hen. BI. 489, 464 ; 3 Car.
and Paine, 611 ; 1 Sumner, 485 ; 2 Starkie, N. P. 249.

Hence, saying that the patentee has made an improvement
in certain machinery without distinguishing what it is, or what
part is new, has been adjudged to be bad. Barrett v. Hall,
Mason, C. C. R. 447 ; 1 Starkie, N. P. 149 ; Phil, on Pat.
396.

Or saying he has made an improvement in a machine, and
describing the machine, but not distinguishing the novelty or
new improvement from the rest, is equally bad. Davies on
Patents, 361 ; 2 Marsh. 21 1.

VOL. II. — p. c. 49

578 PATENT CASES.

HoTey V. StoTens. 3 Wood. & Minot

Also, it most not only be distinguished, but so distingnisiied
as to be intelligible, unambiguoas^ accanite. 3 CSar. & Payne,

611.

Beside the good reasons in favor of this, there are the pon-
tile requisitions by Congress. ,

By the Act of July 4th, 1838, the patentee << shall particii*
larly specify and point out " what he claims ** as hif own in-
▼ention or discovery." See also^ Bovill o. Moore, S Mardi.
Com. PI. 211 ; 1 Story, 270-3 ; 2 Mason, C. C. 112.

See sec. 5, " Specifying what the patentee claims as bis
invention or discovery."

See sec. 6. " In case of any machine he shall fully ex-
plain the principle and the several modes in which he has
contemplated the application of that principle or character by
which it may be distinguished from other inventions." 5 Sta-
tutes at Large, 119.
' [ * 28 ] * I would not, however, be so strict on this as was
once the practice. See Phil, on Pat. 398. I would
be as indulgent to patentees in describing their claims as is
consistent with the rights of the public and of other inventors,
and the imperative requirements by Congress. To obtain
clearness and exactness I would not confine them to technical
language ; but rather encourage what is in popular use, and
better understood by all. 4 East, 135.

Nor in most cases are they to be restricted to any particu-
lar part of their specification, but resort for light to all portions
of it and of the drawings. See Davoll v. Brown. Yet still
the claim to novelty must, not merely for the reasons before
stated, and the Act of Congress before cited, but by all on
this subject from the foundation of the government, be cleariy
described somewhere in the specification. Thus, by the Act
of 1790, sec. 182, it must clearly, <' truly" and ''fully" be
set out. By the Act of 1793, sec. 3, it must be described
in '' full, clear, and exact terms," so as to distinguish from

PATENT CASES. 679

HoTej V, Steveas. 3 Wood. & Minot.

what was before known. In short, the bargain by govern-
ment is to give the inventor an exclusive use for fourteen
years, if he will place on record and distinguish clearly and
truly what his novelty or improvement is, so that the public
can easily understand it and benefit by it after the fourteen
years, if not before. Webster on Patents, 86 ; 1 1 Eart, 105 ;
3 Merivale, 161.

Hence, of course, the claim must be made to something as
new, in such plain terms that it can be readily understood,
and with << reasonable certainty,'' (1 Story, R. 286,) what it
is. The fewer technical terms are used the better, if the sub-
ject is intelligible without them. But as specifications are
legal instruments no less than descriptions of mechanical and
philosophical, and sometimes chemical improvements, it is de-
sirable that they should always, before filed, be examined by
some experienced lawyer as well as by some machin-
ist or other expert, fully acquainted with "^^its sub- [ "^^ 29 ]
ject-matter. Infinite expense and trouble would be
yearly-saved by this. The advice of legal counsel is as use-
ful in the preparation of such an instrument as in preparing a
diflicult deed or will.

In the present case, for instance, how easy and clear it
would have been, to say in the specification what the inven-
tor wished, and to say it so as to be at once intelligible to
alL

If originally he claimed no part as new, to say so; and to
add, that all these old parts so combined and arranged, in order
to give a bevel edge to the knives, was the sole novelty in his
claim. And if, in that combination, the stock to be used was
meant to be a permanent one, and that was deemed important,
to say so.

Again, if he meant to claim some part as new, as well as
a new combination, and he deemed it proper to unite both in
one patent, how easy it would have been to have identified

580 PATENT CASES.

Horey v. SteTcns. 3 Wood. & Minot

the part as new, which he claimed, as well as described the
new combination. So, if he meant to claim as a new inven*
tion some part alone, independent of any new combination,
it would and should have been so described, separately, as a
new part

But now, unfortunately, all is doubtful on the face of the
patent as to what he claims to be new, unless it be the com-
bination of the two motions. It is not doubtful what the ma-
chine is in which he intends to patent *' an improYcment," as
before renmrked, except, perhaps, in one important particular,
as to the stock, of its being permanent or not.

But, putting the construction on that most fayorable to
him, tlie doubt remains from his description of the machioe,
what was the particular improvement in it which he claims to
have invented ? what does the machine perform, that he sup-
posed was novel ? or by what improved arrangement, except
the two motions combined together.
[ * 30 ] * It was not new for it to give a bevel edge to in-
struments, as that had been given before. Nor does
he claim this as the novelty in his operations. But he rather
claims a novelty in the mode of doing it. At first he seemed
to daim that novelty in the mode to be by combining the
traverse and rotary motions. Next, it seemed, from other por-
tions of the specification, to be by attaching the knives to a
flange by a screw ; then it was said to be by using a perma-
nent stock for the flange and knife ; and lastly, by the goose
neck and screw, to secure the knife when grinding, to the
grindstone. All these occurred to othersi* on reading the
patent, if they were not all suggested on his part. This un-
certainty and obscurity as to which was meant, or which is,
in fact, described as the novelty, except the two motions, are
an insuperable difliculty, as the letters now stand, and cannot
be overcome except by a new specification.

They are objections, not merely on conjectural data. The

PATENT CASES. 581

Horey v. SteTens. 3 Wood. & Minot.

latter stand oat in bold relief on the face of the specification,
and the objections cannot be removed but by the use of new
language. It is now said, that in point of fact he did not
mean to claim the two motions, or the attachment by a screw,
or movable stock, as novel ; but rather a permanent stock,
and the apparatus to crowd the knife, while grinding close to
the stone. He seems yet to hesitate between these two last.
Bui if he meant to describe these two, or either of them, as
the novelties, in his original specification, he was very unlucky
in the terms selected, since the other matters, rather than
these, were, at the first hearing of the case, supposed to con-
stitute what was new in his apprehension. They still, on the
face of the specification, seem most prominent.

Whether these parts now insisted on, the stock or the goose-
neck, are, in truth, new or not, either in themselves or in
combination, is a question not before us at this time ; but only
whether they are plainly distinguished in the speci-
fication *as the particular improvement which he [ *31 ]
dainls to have invented ? On that, it is enough to
say, that by the language he has there used, neither of them
seem to be so described at all ; much less described with rea-
sonable certainty.

The machine itself, as a whole, is described with sufficient
clearness and certainty, as the counsel justly argue, unless it
be whether the stock is permanent or movable. But that is
not the diflSculty. It is the want of a description, whether
his improvement is meant to be as consisting in the combina-
tion of the whole, or of all the parts, or only of one or two of
them ; and if the last, which ? And, also, whether it consists
in such new combination of some of the parts ; or of an inven-
tion, also, of some, and if so, which ? This is the fatal uncer-
tainty, and extends to every thing claimed as new ; except,
also, the two motions, and the combination of them is admit-
ted to be not original.

49*

388 PATENT CASES.

HoTey v» Sdeveos. 3 Wood. & Minot

Several cases have been cited and urged on us parallel to
this, where the patent or principle contended for by the pluo-
tiffy has been sustained. But, in all, the description was dif-
ferent, or the validity of the claim was overruled ; and in the
present case the description fails to meet either of the two
strongest cases cited in Story's Reports, or those in Mtsoo,
Wheaton, and Marshall, which have not been cited, but which
bear strongly on this case. I have made a thorough analysis
of all of them, but it is not necessary to repeat it, as the prio-
cq>les involved in them are embodied into the remarks already
submitted by ne.

I regret the delay and expense which an amendment of his
specification will cause to the patentee ; but am better satis-
fied in coming to the condusbns that it is necessary, (forced
on us by considerations of settled law, and safety to the public
as well as individuals,) by the reflection that the patentee, if

he has made a new and useful invention, is still
[ * 33 ] * able to reap the benefits of it. He will efiect this

by describing, in a new specification, what he claims
as new, with greater certainty, accuracy, and dearnessi so as
to comply nearer with the act of Congress, and to give to the
community the particular information, to which they are, by
law, entitled, concerning what he claims to be new. Care,
of course, will be taken, also, to disclaim all he does not con-
sider as new, in his combination, or new in the parts used.
Bovill V. Moore, 2 Marsh. Com. P. 312 ; Prouty v. Ruggles,
16 Peters, 336.
The motion to set aside the nonsuit cannot be granted.

After this decision was* announced, the bill in Chancery,
which was pending between the same parties for an injunctioD
against the use of this grinding machine, by the defendant,
was directed to be dismissed. See a report of the original
case at the last term. 1 Wood. & Min* 290.

PATENT CASES. 583

Hovey v, Slerens. 3 Wood, ft Minot

The complainant moved that no cost be allowed to the re-
spondent, except in the present action at law, on the nonsuit.
This motion was ai^ed at the May term, 1847, by the
same counsel on both sides, and the opinion was pronounced
by

WooDBXTBT, J. It is, doubtlcss, a sound principle in Chan-
cery, to exercise some wider discretion over the allowance of
cost, than is done in a Court of Law. * See Hunter i;. Marl-
borough, at the last term, and Bumham v. Rangley, 2 Wood.
& Min. 417 ; Hullack on Cost, 625, 626; 2 Ath. Ill, 400,
552.

But still the general rule is there, as at law, to give costs
to the prevailing party. See cases cited in those above, and
Barker t^. Bircb^ 1 Dowl. & h. 816; and 7 Scott, 397;
4 Beavan, R. 350. What prevails by law — what is legal is
presumed to be moral, and conscientious, and equi-
table, f till ' the contmry is shown. Vancouver t;. [ * 33 ]
Bliss, 1 1 Yes. Jr. 462. This rule is applied, like-
wise, to bills for injunctions, as well as to other proceedings.
3 Mylne & Craig, 738. But, if peculiar circpmstances of an
equitable character exist in favor of the defendant receiving
no cost in the case, or none for particular items, it is deemed
jnstifiaUe to withhold them. See ante. But the burden to
show these peculiar circumstances is on the complainant.
2 Ves. Jr. 463. See cases before cited. And Lord Elden
regretted that the rule in Chancery had ever been different
from that at law. See cases in Hunter «• Marlborough,
2 Wood. So Min. 168.

I am not disposed to depart from what has been long esta-
blbhed on this subject ; but shall not be inclined to make ex-
ceptions to the general rule which prevails both in equity and
law, beyond what is sustained by sound principles and esta-
blished precedents. None have been referred to, withholding

584 PATENT CASES.

H0T67 V. Sterens. 3 Wood. & Minot

costs from the prevailing party, ooder circumstances like these,
while several cases seem opposed to it.

Thus, it has been held, where a party had obtained an in-
junctiog, and it was dissolved, that costs of affidavits, takeo
and used for the respondent, should be allowed, though be
might have succeeded without them, on a demurrer. He
had a right to pursue either course. Bamearly Canal Corp.
V. Timbly, 13 Law Journal, N. S. 34.

On the contrary, where a long defence was resorted to
against a bill in Chancery, and failed, though the bill was
dismissed on other grounds, costs to the respondent were dis-
allowed, (Saunders v. Benson, 4 Beavan, 350,) because he
had not succeeded in what they related to. So, if the wiD
was not for any wrong of the defendant, but to settle what
the title of the plaintiff was, and a decree was for the plain-
tiff, he had no costs against the defendant In Robinson 0.
Cropsey, 2 Edw. Ch. R. 143 ; 2 Chip. £q. D.
[ • 34 ] * 933 -4. Again, where items exist in the bill of
cost, which are vexatious or unnecessaiy, they cao
be excluded if distinguishable from others which were proper.
1 Beavan, 130 ; 4 Beavan, 25.

Bringing the present case to these tests, nothing is foood
in the general character of the cause which raises any pecu-
liar claim from exemption from the usual rule of allowing costs
to the prevailing party.

The fact, that the bill for an injunction failed, on aceoont
of a defective specification, which thus made the title to the
patent bad, by an express act of Congress, was not a failure
for any fault of the defendant ; nor was it from the want of
form in the bill or pleadings, which could be cured by the
statutes of jeofail, or an amendment; and h^noe, not be visit-
ed by large costs, charged to the plaintiff. But it was a de-
fect in the patent or deed itself, of the plaintiff-— an imper-
fection in his title. It was not curable by any amendment

PATENT CASES. 585

■^^^^ ■ ■■ ■■■■— — ■!■ I III !■ ■ — - -■.■■■— ■ ■ . ■■■■■■ _.._■ . I M^M^^ ^ ■■■ I ■ I ^— ^^w^^l^— ^^M^—^^^-^^ Ml ■

HoTej p.lSteTens. 3 Wood. & Kinot.

within the power of this Court. And, by the Patent Law it-
self, when amended at the Patent Office, as it may be under
the 13th section of that law, if happening " by inadvertence,
accident, or mistake ; '' yet it is only then, and it is done at
the loss of all the previous term of the patent, and of all actions
pending, and, of course, of the cost incident to them ; being
valid only in respect to " cases subsequently accruing." See
13th section of Act of July 4th, 1846 ; 5 Statutes at Large,
122.

It has been further argued, that the merits of this case are
with the plaintiff, and hence he should not pay costs.

But how the real merits between these parties as to origi-
nality of the invention, are, the Court cannot anticipate till
they are tried. The originality is claimed on the one side, and
denied by the other ; and both the action at law and bill in
Chancery have been disposed of without a decision on that
point.

* Had that point been settled in favor of the [ ''^ 35 ]
plaintiff, and the cases failed merely on technical
grounds, in prosecuting the action, whether of form or sub-
stance, it might be proper in the bill in equity to allow no
cost to the respondent. Wray v. Barwis, 1 Peake's Cases,

69.

But that has not been settled in the bill in Chancery, and
the error in the reasoning of the plaintiff, consists, chieiBy, in
supposing it has been settled in his favor. That having ended
in a postppnement of any injunction, till the validity or origi-
nality of the patent — they being denied — should be tried at
law. On the only trial at law, before going into the question
of originality, the letters-patent of the plaintiff were adjudged
to be bad under the Act of Congress, for want of certainty in
the particular part, or combination, claimed to be original,
and the plainUff became nonsuit.

Consequently, though in the hearing for an injunction some

586 PATENT CASES.

Horej V. Stevens. 3 Wood. & Minot

evidence was offered by the plaintiff to prove priority in mak-
ing his machine before the defendant made his — and some
knowledge of it« qualities, by a workman afterwards employed
by the respondent, and some apparent resemblance between
them, even in defects or mistakes ; and thus a strong pre-
sumptive case was made out by the plaintiff, as to originality;
yet the respondent denied the originality of it, under oath,
and put in several affidavits, and some models, to prove
an earlier existence and general use of similar grinding ma-
chines.

But whether this satisfactorily overcame the plaintiff's evi-
dence, I did not decide. On the contrary, I expressly for-
bore to do it for the various reasons there stated, and con-
tinued the bill in Chancery till that issue, as to originality,
could be tried and settled by a jury.

Another argument is now urged against costs to the re-
spondent, on the ground that the letter and deposition of
Wilder were used to mislead, and did mislead, about the
old machines and knives, in the hearing as to an injanc-
tion.
[ * 36 ] . * It will be seen, however, that nothing decided
in that hearing, or in the trial at law, could be
affected by that letter and deposition, whatever was the intent
in using them. But on examining them with care, is it at all
certain that the ground blade, referred to by Wilder, was
likely or designed to mislead ; and was not a new one sent
with the old machine and old knives, in order that they might
be compared together ? And it is clear, that '^ the care-worn
and gray witness," to which Wilder poetically refers in his
letter, Was the old '' machine," and not this blade. It is called
<' machine " — tctidem verbis.

It is difficult, then, to find any peculiar reason in the case,
as yet appearing, or yet ascertained, which renders it inequi-
table to follow the general rule of allowing costs, as before

PATENT CASES. 587

Horey v. Sterens. 3 Wood. & Minot.

explained^ to the prevailing party. A different state of facts
may be settled hereafter, and results reached, which may
change the equities as well as law, between these parties ; but
until that time arrives we must be governed by the situation
of things as they now stand. I came to a like conclusion, in
Hunter v. Marlborough, and think the exceptions to the gene-
ral rule should be very few, and rest on very strong grounds.
But, although nothing is yet found, by the Court or jury, to
justify me in refusing cost to the respondent, as inequitable in
the bill for an injunction ; yet I feel compelled to say, that
several matters were proved against him in that hearing, which
made an impression on my mind less favorable to his claims
in equity, than to those of the plaintiff.

And though I formed no decisive opinion, whether other
persons than these parties might not have invented and used
like machines earlier than either of them, and thought that I
should not, for the reasons then given, form a decisive opinion
till a trial at law; yet the course of the defendant was not, in
some respects, such towards the plaintiff and his
machine, ''^as to entitle him to any more costs than [ ''^ 37 ]
are clearly proper under ail the facts and circum-
stances, belonging to both cases.

Hence, being obliged to travel and attend here, in the ac-
tion at law, I deem it just he should not tax travel and attend-
ance, also, in the bill for an injunction, at the same terms,
between the same parties. But all the depositions taken and
used in the latter case, which were pertinent, and the usual
counsel fee, seem to be proper charges, necessary to his de-
fence, and, therefore, are allowed.

688 PATENT CASES.

Wood 9. Underiiill et aL 5 How.

James Wood, PLAiNTir? in error, v. William A. Ukdeb-

HILL AND ASCHEL H. GeROW, DEFENDANTS.

[5 Howard, I. Januaiy T.'l847.]

In order to obtain a patent, the spedflcation most be in sndi fhll, dear, and
exaei terms a< to enable any one ekilled in the art to whidi it appcrtaiiu, to
compound and use the invention, without making any experiments of his
own.

If the patent be for a new composition of matter, and no lelAtxre proportkns
of the ingredients are giren, or they are stated so ambignonsly and TsgoelT
that no one conld use the inrention without first asoertaining, byexperi*
ment, the exact proportion required to produce the result, it would be the
duty of the Court to declare the patent Toid.

But the sufficiency of the description in patents for machines, or for a new
composition of matter, where any of the ingredients do not always posies
exactly the same properties in the same degree, is, generally, a question of
fact to be determined by the jury.

Where a patent was obtained for a new improTement in the mode of Hiakiog
brick, tile, and other clay ware, and the process described in the spedficft-
tion was, to mix pulrerized anthracite coal with the clay before moulding it,
in the proportion of three fourths of a bushel of coal-dust to one thonsaod
brick, some clay requiring one eighth more, and some not exceeding half •
bushel, this degree of vagueness and uncertainty was not suQcient to josti^
the Court below in declaring the patent void.

The Court should have left it to the jury to say, from the evidence of penons
skilled in the art, whether the description was clear and exact enough to
enable such persons to compound and use the invention.

This case was brought up, by writ of error, from the Cir-
cuit Court of the United States for the Southern District of
New York.

It appeared that, in the year 1836, Wood took out ameod-
ed letters-patent for <' a new and useful improvement in the
mode of making brick, tile, and other day ware," and filed
the' following specification of bis invention : —

<< Be it known that I, the said James Wood, have invented

PATENT CASES. 589

• f

Wood 9. Uaderhill et aL 5 Hoir.

a new and ttscful improvement in the art of manufacturing
bricks and tiles. The process is ds follows : Take
of common anthracite coal, "^ unburnt^ su<Sh quantity [ * 2 ]
as will best suit the kind of clay to be made into
brick or tile, and mix the same, when well puWerized, with
the clay before [it] is moulded ; that clay which requires the
most burning will require the greatest proportion of coal-dust ;
the exact proportion, therefore, cannot be specified ; but, in
general, three fourths of a bushel of coal-dust to one thousand
brick will be correct. Some clay may require one eighth
more, snd some not exceeding a half-bushel. The benefits
resulting from this composition are the saving of fuel, and the
more general diffusion of heat through the kiln, by which the
whole contents are more equally burned. If the heat is raised
too high, the' brick will swell, and be injured in their form.
If the beat is too moderate, the coal-dust will be consumed
before the desired effect is produced. Extremes are therefore
to be avoided. I claim as my invention the using of fine
anthracite coal, or coal-dust, with clay, for the purpose of
making brick and tile as aforesaid, and for that only claim
letters-patenl from the United States. -

Jamss Wood."
Dated 9th November, 1836.

In July, 1842, be brought a suit against the defendants in
error, for a violation of this patent.

And at the trial the defendant objected to the sufficiency
of the specification, " because no certain proportion for the
mixture is pointed out, but only that such quantity of coal
must be taken as will best suit the kind of clay to be made
into brick or tile; but that clay which requires most burning
will require the greatest quantity of coal-dust ; the exact pro-
portion cannot, therefore, be specified ; but, in general, three
fourths of a bushel of coal-dust' to one thousand brick will be

VOL. II. — p. c. 50

590 PATENT CASES.

Wood V. Underhill et aL 5 How.

correct. Some clay may require one eighth more, and 8ome
not exceeding half a bushel ; so that there is no fixed rule by
which (he manufactitrer can make the mixture, but that must
be ascertained by experiments upon the clay ; and the claim-
ing clause in the specification is only for the abstract geoenl
principle of mixing anthracite coal-dust with clay, for the
purpose of making brick, without any practical rule as to the
proportions, which is too vague and uncertain to sustain a
patent;" which objection was sustained by the Court The
plaintifi* excepted. And the verdict and judgment being
against him, the case was brought up here upon this exception.

The cause was argued by Silliman^ for the plaiotifi* in error,
and Mowley, for the defendants.

SUliman, for the plaintiff in error, made the following
points :

The plaintiff* insists, —

1. That he has in his specification given a general
[ ''^ 3 ] rule by which * every kind of clay may be mocb
better burned than by any previous process. And
that the general proportions specified are, with some excep-
tions, the very best that can be used.

That a patent may properly be granted for a beneficuH
general rule, although there might be some exceptions to it
not provided for.

2. That if it is necessary to entitle the plaintiff to a patent
for a most beneficial invention for burning clay of the qualities
usually found, that he should also discover the means of barn*
ing, to best advantage, clays of qualities not usually found ;
that his patent should not therefore be deemed void on its
face, but he should be permitted to 4>rove, by persons con-
versant with the business, that they could instantly determine,
on inspection of clays of uncommon qualities, whether tbef

PATENT CASES. 591

Wood V. UnderhiU et al. 5 How.

required more or less than the usual burning, and how much
more or less, so as to regulate the variation of proportions in
such manner as to burn to the best advantage.

3. The plaintiff should have been permitted to show, under
his specification by experts, that any kind of clay of which
bricks can made, however varied the qualities, can be better
burnt under his general rule than by any previous process ;
and if such is the fact, the plaintiff should be entitled to a
patent for the discovery, if he had given the general rule only,
and had taken no notice of those exceptions, in which some
uncommon kinds of clay can be best burned with a greater
or less proportion of coal than that specified in the general
rul§.

'4. The judge in his decision adopts all the errors of the
defendants' objection, which states that there is no fixed rule
by which the manufacturer can make the mixture, but that
must be ascertained by experiments upon the clay. Suppose
this to be so, and that the inventor has only furnished a guide
by which such experiments can be successfully made, and
that the subject, on account of the variable qualities of the
materials, does not admit of greater certainty, and that by the
simplest and cheapest experiments the manufacturer, in con-
sequence of the plaintiff's invention, will be able to burn his
bricks much better in less than half the time, and at less than
half the cost of burning, by any other process, is not the in-
ventor entitled to a patent for an invention practically so
useful ?.

The fact that not a single brick has for some years past
been burned, except according to the plaintiff's specification,
is pretty good evidence that the manufacturers have been able
to discover something from plaintiff's specification.

5. The ofa^ction, as adopted by the Court, declares that
the claiming clause in the specification is only for the abstract
general principle of mixing anthracite coal-dust with clay, for

592 PATENT CASES.

Wood V. Underfaill et al. 5 How.

the purpose of making bricks and tHeSi without any practical
rule as to the proportions^ which is too vague and unceruio
to sustain a patent. Suppose this objection true in
[ * 4 ] point of fact, and that no information had *been
intentionally suppressed, and that the qualities of
clay varied so much that the proportions most useful could
only be ascertained by an experinnent on each bed of clay, it
might, nevertheless, be a very useful invention, for which the
inventor should be, in some measure, compensated by a
patent. But this part of the objection is not true in fact, foi
the claiming clause is of the invention of using fine anthracite
coal, or coaUdust, with clay^for th^ purpose of making brick
and tile <^ as qforesaid.'^ These words, " as aforesaid," refer
to the general rule of three fourths of a bushel of coal for a
thouibnd bricks, with the exceptions or variations previously
expressed.

6. The judgment should be reversed, with costs, includiog
the costs in the Circuit Court*

Rowley, for the defendant in error.

The patentee's specification is uncertain and insufficient
It furnishes no rule for making bricks, without the manufac-
turer's first making a series of experiments. The most it
does is to prescribe in about what manner the trials are to be
conducted ; which is not enough to sustain his patent The
King V. Ark Wright, Dav. Pat. Cases, 106 (per Buller, J.);
Turner v. Winter, 1 Term R. 606 (per Ashurst, J.) ; Boullon
V. Bull, 2 H. Bl. 484 (Buller, J.) ; Harmer «. Playne, U East,
101 (Lord EUenborough) ; The King u. Wheeler, 2 Baru. b
Aid. 345 (Abbott, Ch. J.) ; Godson on Patents, 85 ; Lowell
V. Lewis, 1 Mason's R. 182 (Story J.); Langdon t^. De
Qroot, 1 Paine's R. 203 1 Phillips on Patents^, 267, 268,
283, 284, 289.

PATENT CASES. 593

Wood V. TJnderhill et a1. 5 How.

Mr. Chief Justice Tanet delivered the opinion of the Court.

The question presented in this case is a narrow one, and
may be disposed of in a few words.

The plaintiff claims that he has invented a new and useful
improvement in the art of manufacturing bricks and tiles ; and
states his invention to consist in using fine anthracite coal, or
coal-dust, with clay, for the purpose of making brick or tile ;
and for that only he claims a patent. And the only ques-
tion presented by the record is, whether his description of
the relative proportions of coal-dust and clay, as given in his
specification, is upon the face of it too vague and uncertain
to support a patent.

The degree of certainty which the law requires is set forth
in the Act of Congress. The specification must be in such
full, clear, and exact terms as to enable any one skilled in the
art to which it appertains to compound and use the inven-
tion ; that is to say, to compound and use it without making
any experiments of his own. In patents for machines the
sufficiency of th% description must, in general, be a question
of fact to be determined by the jury. And this must also be
the case in compositions of matter, where any of
^ the ingredients mentioned in the specification do [ ^ 5 ]
not always possess exactly the same properties in
the same degree.

But when the specification of a new composition of matter
gives only the nam^s of the substances which are to be mixed
together, without stating any relative proportion, undoubtedly
it would be the duty of the Court to declare the patent to be
void. And the same rule would prevail where it was appa-
rent that the proportions were stated ambiguously and
vaguely. For in such cases it would be evident, on the face
of the specification, that no one could use the invention with-
out first ascertaining by experiment the exact proportion of
the different ingredients required to produce the result in-

50*

594 PATENT CASES.

Wood V. Underliill et al. 5 How.

tended to be obtained. And if the specification before us
was liable to either of these objections the patent would be
void, and the instruction giveaby the Circuit Court undoubt*
ediy right.

But we do not think this degree of Tagueness and uncer-
tainty exists. The patentee gives a certain proportion as a
general rule ; that is three fourths of a bushel of coal-dust to
one thousand bricks. It is true he also states that clay whidi
requires the most burning will require the greatest proportion
of coal-dust ; and that some clay may require one eighth more
than the proportions given> and some not more than half a
bushel instead of three fourths. The two last meatioiied
proportions may, howoTer, be justly considered as exceptions
to the rule he has stated ; and as applicable to those cases
only where the clay has some peculiarity, and diflfers in qua-
lity from that ordinarily employed in making bricks. Indeed,
in most compositions of matter, some small difference in the
proportions must occasionally be required, since the ingre-
dients proposed to be compounded must sometimes be in
some degree superior or inferior to those most commonly
used. In this case, however, the general rule is given with
entire exactness in its terms ; and the notice of the variations,
mentioned in the specification, would seem to be designed to
guard the brick-maker against mistakes, into which he might
fall if his clay was more or less hard to bttrn than the kind
ordinarily employed in the manufacture.

It may be, indeed, that the qualities of clay generally differ
so widely that the specification of the proportions stated in
this case is of no value ; and that the improvement cannot be
used with advantage in any case, or with any clay, without
first ascertaining by experiment the proportion to be em-
ployed. If that be the case, then the invention is not pa-
tentable. Because, by the terms of the act of Congress, the
inventor is not entitled to a patent unless his description is bo

PATENT CASES- 595

Stimpson v. The Bailroads. 1 Wallace.

full, clear, and exact as to enable anj one skilled in the art to
compound and use it. And if, from the nature and character
of the ingredients to be used, they are not susceptible of such
exact description, the inventor is not entitled to a patent.
But this does not appear to be the case on the face of this
specification. And whether the fact is so or not is
a question to be decided *by a jury, upon the [ ^6 ]
evidence of persons skilled in the art to which the
patent appertains. The Circuit Court therefore erred in
instructing the jury that the specification was too vague i^id
uncertain to support the ^ patent, and its judgment must be
reversed.

Order.
This cause came on to be heard on the transcript of the
record from the Circuit Court of the United States for the
Southern District of New York, and was argued by counsel.
On consideration whereof, it is now here ordered and ad-
judged by this court, that the judgment of -the said Circuit
Court in this cause be, and the same is hereby reversed with
costs ; and that this cause be, and the same is hereby remanded
to the said Circuit Court, with directions to award a venire
facias de novo.

Stimpson v. The Railroads.^

[I Wallace, 164. AprUT. 1847.]

Damages — JNew TVial — Force of Verdict.

A jary cannot allow the plaintiiF in a patent case, aa part of his actual damages,
any expenditure for counsel fees or other chai]ges, eyen though necessarily
incurred to vindicate the rights given him hy his patent, and though not
taxable costs.

Where, however, a jury did make such allowance under a direction from the

^ See as to counsel fees Boston Manafactnring Co. v. Fiske et al. ante^
Vol. L S20 ; Allen v. Blunt et al. antCf 580.

596 PATENT CASES.

SdmpBon v. The Railroads. I Wallace:

Court, oonoeded afterwards to be enroneons, their verdict was snstaiaed hj
way of an exception j the misdirection of the Coart not having been assigned
as a reason for a new trial, the expenditures having been proved to be paid,
and the verdict having attained, thongfa improperly, the same resnlt nearly,'
that the Court, in its power to treble the damages, might have reached in a
regular way.

Stimpson brought sixteen suits against different railroad
companies or proprietors for infringing his patent for railroad
curves. The validity of his patent having been settled by a
previous decision^ the only question in these cases was the
amount of damages ; which it was agreed should be assessed
in all the cases by the same jury.

As part of the evidence of damages, the Court, upon the
authority of a decision of Judge Story ,^ and with considerable
reluctance, allowed the plaintiff to prove the value of the
time he had given, with the amount of the counsel fees and
other expenses, not taxable costs, which he had necessarily
paid in the prosecution of these sixteen suits : and in charging
the jury, directed them, in the language of Judge Story, that
" they were at liberty, if they saw fit, to allow the plaintiff as
part of his actual damages any expenditures for
[* 165 ] counsel fees or other charges which *^ were neces-
sarily incurred to vindicate the rights derived under
his patent, and are not taxable in the bill of costs."

The verdicts which were for the plaintiff, showed by their
amounts that all these expenses had been assessed by the jury
as damages.

After the verdicts, the defendants, on the one hand, moved
for a new trial because the damages were excessive, though
not because of the direction of the Court on the subject of
damages. The plaintiff, on the other hand, moved to treble
these damages as already found.

1 Boston Manufacturing Co. v. Eiske, 2 Maaon, 119, an/e, Vol. I 820.

PATENT CASES. 597

Stimpson v. The Bailroads. 1 Wallace.

In connection with the last motion it is requisite to state
that by an act of Congress ^ now repealed, it was enai^ted
that any person infringing a patent " shall forfeit and pay,
&c., a sum equal to the actual damages sustained by the
patentee," and by a subsequent act^ still in force, that where
the verdict is for the plaintiff, *^ ii ahaU be in the power of
the Court to render judgment for any sum above the amount
found by such verdict as the actual damagea sustained by
the plaintiff, not exceeding three times the amount thereof,
according to the circumstances of the case, with costs."

After full argument by W. L. Hirst and White for the
plaintiff, and Clarksan and Saunders Lewis on the other
side, both motions were now disposed of as follows by

Grier, J. I do not think that excessive damages, the rea-
son urged for a new trial in these cases, is sufficient to justify
the Court in granting the motion, it being conceded
*that the verdict was in accordance with the di- [^loo]
rections of the Court. As the law formerly stood,
where the Court without any exercise of their discretion were
compelled to treble the damages, cases might occur in which
a court would feel it to be their duty to set aside a verdict
because the damages were excessive. And even then, they
would require a case which appealed strongly to their sense
of justice, before they would disregard the opinion of twelve
men on matters of fact which it was their peculiar province
to decide. Since the Act of 4th July, 1836, the Court are
not compelled to treble the actual damages assessed by the
jury, but may increase them or not at their discretion within
that limit. In the exercise of that discretion the Court will

1 Act of April 17, 1800; c. 25, § 8. Appendix.
3 Act of July 4, 1836 ; c. 85f, § 14. Ibid.

598 PATENT CASES.

Stimpson v. The Railroads. I Wallace.

judge for themselves, and will not increase the damages, if in
their opinion the jury have already exceeded the proper
measure.

There was however a portion of our charge to the jury the
correctness of which we doubted when we gave it^and which
on more mature consideration we are ready to admit was erro-
neous. It was that which relates to the evidence of damages;
where upon the authorityof Mr. Justice Story, we directed the
jury, not without an expression of some doubt as to the cor-
rectness of the law as so laid down, that " if they saw fit to
allow the plaintiff as part of his actual damages, any expendi-
tures for counsel fees or other charges, which are necessarily
incurred to vindicate the rights derived under his patent and
are not taxable in his bill of costs, they might say so."

If the counsel for the defendants had insisted on this enor

as a ground for a new trial in these numerous cases,

[ ^ 167 ] * we should have felt ourselves compelled to grant

it. But as in the exercise of the discretion intrusted

to us of increasing the damages, we may neutralise the effect

of this error, we think the ends of justice may be attained,

though somewhat irregularly, without putting the parties to

the expense and trouble incident to so many new trials.

In thus disposing of both these motions, I will take occasion
to state why I venture to differ from the very learned judge
on whose authority aloite I was induced to give my instruc-
tion on this point to the jury.

I do not think that the practice of courts of admiralty,
which Judge Story would seem to have had a good deal in
his mind, affords any proper precedent for courts which are
governed by the common law. Courts of admiralty proceed
according to the principles of the civil law ; and costs are
awarded at the discretion of the judge, and are paid by such
parties and to such an extent as he may judge equitable and
right according to the circumstances of each case. The rule

PATENT CASES. 599

Stunpson v. The Railroads. 1 Wallace.

of our law is different. There were no costs given at com-
mon laWy but if the plaintiff did not prevail he was amerred
pro/also damare. If he did prevail then the defendant was
in misericardid for his unjust detention of the plaintiff's
right, and therefore was not punished with the expensa litu
under that title. But it being thought exceeding hard that
the plaintiff for the costs which he was out of pocket in ob-
taining his right, could not have any amends, the
statute of Gloucester^ was passed, ^ which gave [^168]
costs in all cases where the plaintiff recovered
damages. This was the original of costs de incremento ; for
when the damages were found by the jury, the judges held
themselves obliged to tax the moderate fees of counsel and
attorneys that attended the cause.'

Under the provisions of this statute, every court of common
law has established a system of costs which are allowed to
the party who succeeds in a cause, by way of amends for his
expense and trouble in prosecuting or defending his suit. It
may be true no doubt, and is especially so in this country,
(where the legislatures of the different States have so jea-
lously reduced attorney's fee bills, and refused to allow the
honorarium paid to counsel to be exacted from the losing
party,) that the legal taxed costs are far below the real ex-
penses inciirred by the litigant. Yet it is all the law allows
as expensa litis. If the jury may, " if they see fit," allow
counsel fees and expenses as part of the actual damages
incurred by the plaintiff, and then the Court add legal costs
de incremento, the defendant may truly be said, to be in
misericordidy being at the mercy both of court and jury.

In courts governed by the civil law, if the Court may give
costs and expenses according to their discretion to the plain-

X 6 Ed. 1 Ch. 1. s See Bacon's Abridgement. Ht Costs. (A.)

600 PATENT CASBS.

StimjMon V. The Railroads. 1 Wallace.

tiff, they can also exercise the same discreiioD in fef or of the
defendant when he has been unjustly harrassed. If the jury
can exercise this wide discretion of giving incremental costs
to a plaintiff Under the name of actud damages, why risoold
they not be allowed to give them to the defendant when be

succeeds ? He has certainly as good a right to
[ * ] 69 ] them as the plaintiff, both in law and * equHj.

On every principle of morals a plaintiff would be as
liable to punishment pro faUo damorey as the defendant, for
the unjust detention of the plaintiff's right. If this principle
be introduced from the civil law, both parties should have the
benefit of it. A defendant should not be left to contend with
such odds against him. In actions of debt, covenant, assump-
sit, &c., where the plaintiff always recovers his ^'cdad
damages/^ he can recover but legal costs as compensation
for his expenditure in the suit, and as punishment to defend*
ant for his unjust detention of the debt. His equity is no
greater, nor his injury of a higher order, where his action is
for a trespass or a tort. It is a moral offenoe of no higher
nature to infringe a patent, than to detain a just d^bt Why
then shall the law give the plaintiff such an advantage over
the defendant in the one case, and not in the other? There
is certainly nothing in the act of Congress, or in the phrase
'< actual damages," which it uses, to countenance the doc-
trine. The term *' actual damages," cannot be construed to
mean exemplary, vindictive, or punitory damages inflicted by
way of smartrmoney, or punishment of the defendant for
fraudulent^ malicious, or outrageous wrongs.

Before 1836, the law compelled the Court to treble the
^< actual damages " found by the jury. This was intended,
no doubt, to punish the defendant, and thus indirectly remu-
nerate the plaintiff for his extra expenditures in establishing
his patent. This law was found to act unequally, for defend-
ants were often found to have the prior invention and to have

PATENT CASES. 601

Stiinpson V. The Railroads. I Wallace.

been unjustly harassed by the plaintiff, and yet
they •recovered nothing but costs. Often where [ ♦ 170 ]
the plaintiff recovered, the contention was a bond
fide one, on the respective interests or titles of the parties : it
was, therefore, obviously unjust in such a #ontest that the
plaintiff should recover treble damages, if he succeeded, while
the defendant could recover nothing. It was fdr this reason
that the Act of 1836 submitted the question of trebling the
damaged to the discretion of the Cburt, and thus left the
parties to contend on a more equal field. The defendant
suffers the infliction* of vindictive damages only when the
Court are of opinion he has acted unreasonably or oppres-
sively.

' It is a well-settled doctrine of the common law, though
somewhat disputed of late,^ that a jury in actions of trespass
or tort may inflict exemplary or vindictive damages upon a
defendant, having in view the enormity of defendant's con-
duct rather than compensation to the plaintiff. Indeed in
many actions such as slander, libel, seduction, dec, there is
no measure of damages by which they can be given as com-
pensation for an injury, but are inflicted wholly with a view
to punish, and make an example of the defendants. But in
no case is the degree of the defendant^ delinquency mea-
sured by the expenses of the plaintiff in prosecuting the suit.
The plaintiff, it is true, is thus indirectly compensated for his
expenses, but it is not this measure of defendant's punish-
ment, nor a necessary element in its infliction.

The doctrine for which we here contend is supported by
the best authority. Arcamble v. Wiseman,^ which Judge
Story admits is in conflict with him, carried it so
* far as to apply it to cases of admiralty, and Judge [ • 171 ]

1 Law Beparter, vol. 10, p. 49. s s Dallas, S06.

VOL. II. — F. C. 51

602 PATENT CASES.

StimpsoD r. The Railroads. 1 Wallace.

Story's own decision was a complete reversal of a n|le which
he had himself previously established on the authority of that
case. In a Massachusetts case,^ more recent than any of
these decisions, Chief Justice Shaw, after remarking upoD the
notion that had ^ce prevailed on the subject, says : — " It is
now weU settled that even in an action of trespass or other
action sounding in damages, the counsel fees and other ex-
penses of prosecuting the suit not included in the taxed costs,
cannot be taken into consideration in assessing damages.''
And in another ^ in New York, Chief Justice Neilson says : —
<<The charge as to expenses beyond taxable costs and
counsel fees, in conducting the suit, as a particular item of
damages to be taken into the account, I am also inclined to
think was erroneous. These have been fixed by law, which
is as applicable to cases sounding in damages as debt." He
refers to the case in Massachusetts, and approves of it ^'od
principle."

A case in Connecticut,^ I am aware, is an apparent autho-
rity for a contrary doctrine. But the main question discassed
In the opinion of the Court, is whether a jury may give vio-
dictive or exemplary damages in an action for a tort, against
a defendant who has acted with gross negligence : and the
proposition that the plaintiff's counsel fees and expenses
should be assumed as the. exact measure of the defendant's
punishment, seems to have been founded on some custom or
practice peculiar to the State of Connecticut, and not on any
principle of the common law. The Court was not unani-
mous, and Mr. Justice Waite who dissented from
[*172] the majority, uses ^some arguments on this point
which I have not seen answered.

1 Barnard v. Poor, 21 Pickering, 878-S82.

2 Lincoln v. The Saratoga R. B. Co. 28 Wendell, 425 -4S5.
9 Levesly v, Bushnell, 15 Connecticnt, 226.

PATENT CASES. 603

Woodworth v. Curtis. 2 Wood. & Minot

Convinced, therefore, that the doctrine I laid down to the
jary on the trial of these cases, is not founded on the well-
established principles of the common law, and that it would
work inequality and injustice, I take this opportunity to
retract it :' and say that, hereafter, such evidence as was then
given, will not be objected to, if permitted to go to the jury,
nor will the Court instruct the jury, " that they are at liberty
if they see fity to allow the plaintiff as part of his actual
damages, any expenditures for counsel fees, &c., incurred to
vindicate his rights, and not taxable in the bill of costs." If
such expenditures are proper elements of actual damages, the
jury should have no discretion to omit them ; if not, the jury
should not be permitted to add them. It is a principle
of too much importance to T)e submitted to their arbitrary
discretion. In almost every instance where I have seen it
done, they have assessed more than treble the amount of
actual damages, while the Court have been called on to add
to the injustice, by trebling them again. Patentees should be
protected liberally by the law : but their wrongs should not
be made subject for speculation and extortion.

Botjii rules dismissed.

William Woodworth v. Hiium Curtis.

[2 Woodbury and Minot, 524. May T. 1847.]

Where A. owns the patent-right to a planing machine, and conveys to B. the
authority to ose one in a certain county, B. may erect as weU as use that
one ; so he may use and build another instead of it, but not both at one time.

When the term expires, that machine, then in use under the conyeyanoe from
A., may, without any new license or grant, be employed till it wears out or
is destroyed, either by B. or his assigns, notwithstanding A. has obtained an
extension and renewal of his patent-right.

604 PATENT CASES.

Woodwortb v. Cartifl. 9 Wood, k Minot

This was a bill in eqaity^ pniyiDg for an injaaciion agaiost
the Qse, by the respondent, of the planing machioe
[ * 525 ] « invented by William Woodwortb. The pbdntiff
claimed to be possessed of Woodworth's rights,
and also Emmons's under a like patent. The an^er of the
respondent admits the use of one of said machines in Boston,
in the county of Suffolk, but insists on his authority to'do it
under a license from the proprietors of the patents for said
machine.

Several assignments were given in evidence to sustain his
authority, and several affidavits on both sides were filed,
tending to prove that the present machine used by the de*
fendant was not the first one that had been put in operatioo
under the license, and that thi#and another had at times been
run together, and that the respondent purchased this mt-
chine of Tothill after the first patents expired. The farther
contents of these assignments and affidavits will be stated in
the opinion of the Court, where they become material.

The case was argued by B. R. Curtis, for the complain-
ant, and Charles L. Woodbury^ for the respondent

WooBBUBT, J. It is conceded that Richard Urann, May
26, 1840, had become proprietor of the paten t*right to ase
the Woodworth planing machine in the county of Suffolk.
On that day he granted to Thomas H. Holland, under bis
hand and seal, as follows : ^^ I do license and empower the
said Thomas H. Holland and his assigns, to use one machine
in Boston aforesaid, constructed according to the specification
under either of said patents," &c., ^' during the continuance
of the term for which the said letters-patent were respectively
granted," &c.

On the 13th of March, 1846, Holland^ assigned bis rights,
under that conveyance or power to " William Tothill, bis

PATENT CASES. 605

Woodworth r. Curtifl. 2 Wood. & Minot

heirs and assigns forever ; " and Totbill, on the 8th day of
August, 1846, asfflgned the same to the respondent, ''Hiram
Curtis, his heirs and assigns.''

It is not to be doubted, that the intention of the
parties to ^ these instruments was to convey a right [ ^ 526 ]
to use one of these machines in Boston, during the
continuance of the patents which were in being, May 26,
1840.

The first question is, did this involve the right to make or
procure to be made, the machine thus permitted to be used ?

I think it did. Otherwise the whole license might be de-
feated, if the grantor refused to make for him at all, or to
make at any but an exorbitant price, or demanded another
consideration for a right in the grantee to make for himself,
under a license like this, to use one machine.

From the nature of the transaction and the subject-matter,
as well as the terras in the conveyance about the machine,
being '' constructed according to the specification under either
of said patents," it is probable both parties contemplated that
the grantee should construct as well as use one.

In respect to some patents, the rights to make, vend, or use
may be distinguishable from each other, yet they all aA
united in this patentee ; and he may so convey the right to
make, as to involve or include the right either to sell or use
what the grantee makes.

And he may so convey the right to use, as to imply the
right to sell within the same limits, as well as to make ma-
chines within them. The circumstances, nature, and words
of each grant must decide the construction, which is just and
legal.

This point is not without difliculty ; but the cotemporane-
ous construction put on the grant, by the purchaser proceed-
ing at once to make, or cause to be made, a machine to use
under his grant, and he and his grantees continuing to use at

51*

606 PATENT CASES.

Woodwoitb 9. Ciutis. S Wood. 4 MuidC.

least one to made, without complaint from either the grantor
or owner of the patent, for several years and uU the term ex-
pired, inclines the scales in favor of the respondent's view.

The next question is, did the grant indude the use ot
a machine during the term, though changed or
[ * 527 ] amended, within * the time ? The first one built
might wear out, or, what was very likdyi be de-
stroyed by fire, or be constructed erroneously in some impor-
tant respects, or be disused entirely for some time from waot
of repair. Could a different one be run in such events?

My opinion is, it could, as the license to use one machine
covered the whole term, and was not limited to any particular
machine then sold, but merely to what must be considered
one machine in number at one time.

The next question is, whether this right to use could be
assigned to a third person. I think the license must be con-
sidered assignable.

But much more is a machine, and the right to use it, per-
sonal property rather than a mere patent-right ; and much
more has it all the incidents of personal property, making it
subject to pass by sale, as in this case, to Curtis.

Here, that Curtis bought the machine itself, is manifest
from the affidavits of Tothill and Loring ; and, beside this,
the right to use it was conveyed also in the written assign-
ment to him. The injunction, for these reasons, caoDot be
granted, as the sale extended the use not merely to the ori-
ginal grantee, as a {)ersonal privilege, and Kmited to him
alone, but to him and his assigns ; because the word/' sssigos"
is expressly inserted in the instrument, and as thegmntorwas
paid for the use during the whole term or continuance of the
patent, and as the grantee might die or become insolvent, or
wish to remove or change his business, it would be natarsl and
useful to the grantee to stipulate for the right to asngo the
use, and this would be no injury to the grantor.

PATENT CASES. 6O7

Woodwortb v, Cvrtis. 2 Wood. & Minot

The next inquiry ie, did the respondent use more than one
machine at any one time, so as to come within the scope of
the prayer for this injunction ?

It is certain that the conveyance would authorize the
grantee and his assigns to use only one machine at any one
time, in Boston or the county of Suffolk; and
though the * evidence here is contradictory, some [ * 528 ]
of it showing an old machine to have been used at
times after a new one was procured and put in operation, and
some contradicting this ; yet it is clear, from the proof on
both sides, that the old machine was sold by the respondent
long before the filing of this, bill, and not used in Boston for
three or four years past, and was removed to another town
and county. It went away, Loring swears, before July, 1846,
and Lord swears it was in the spring of 1844. It is not,
then, such an old use of that in Boston which must be re-
garded as now complained of, but a use of the new machine,
and the new one for the work done on it since Woodworth's
original patents expired on the 29th of Deci^mber, 1842.

The next question left is, whether a use like this, since the
expiration of the old patent, conflicts with the rights of the
plaintiff under the extension of the patent which has been
granted to Woodworth's representatives by the board of
commissioners, Nov. 16, 1842, for seven years longer; and
whether it is or is. not permissiUe, by the construction given
to that extension by the Supreme Court, under the 18th
section of the Patent Law of July 4, 1836. 5 Stat at Large,
p. 12& .

The leading and controlling decision upon this question is
that of Wilson v. Rousseau, in 4 How. 682.

The majority of the Court there held, that where a ma-
chine or right to use a machine, had been sold before the
original terms expired, the use might be continued till the
machines then in operation under the grant wore out, or were
destroyed.

608 PATENT CASES.

Woodworth v. Cartis. S Wood. & Mmot

The reason assigned for this was, the expression used in
the 18th 'sectioif, extending the benefit of the renewal to
** assignees and grantees of the right to use the thing patented
to the extent of their respective interests therein." 5 Stat.
at Large, p. 125.

Some plausibility exists in the idea, that where
[ * 529 ] the right * to use a machine till the end of the then
existing term, had been paid for, there was an im-
plied understanding on both sides, that the use of it after-
wards would be free and undisturbed ; but the assignment
being only for one term, and the plaintiff having obtained
another term from the board, my own views differed in that
case from the majority. I feel bound, however, to carry theirs
into effect, to their full extent, as they are to be understood
from the printed opinion of the Court, and the reasons appli-
cable to the subject.

The respondent then having paid for the right to use one
machine in Boston till the original term expired, and having
a machine in operation, which existed and was in use under
that right, both when the above renewal took place and the
old term expired, he must, by the decision of the Supreme
Court, be allowed to continue the use of the same machine)
till it is worn out, unless a fact, which will soon be adverted
to, alters or impairs that right.

The decision seems meant for and founded on a case
where the grantee had a ^' right to use," in the broadest
terms. No distinction is taken between the acquisition of
that right by purchasing a particular machine, or by purchas-
ing the right to use a machine while the term lasted, and
under this creating one which continued to be in use when
the original term expired.

I do not therefore feel warranted in weakening or impair-
ing the force of their decision by a discrimination not made
by the Supreme Court itself, and perhaps not required, by

PATENT CASES. 609

Woodwoith V. Curtis. 2 Wood. & MinoL

any very conclusive reasons. My opinion refers only to the
first renewal, and has no regard to what is proper under the
second renewal made by Congress.

But a fact just referred to requires me to consider one
other question before closing.

When the term expired, December 27, 18429 this machine
was owned and used by Holland and those employed under
him, having, according to the testimony of Cool-
idge, been * framed and set up the summer pre- [* 530]
vious ; and his right to continue that use, it is
argued, could not afterwards be further assigned as it was to
Tothill in 1846, and the same year by him to the respondent.

The assignees and grantees of the right to use it, who are
by the 18th section to have the benefit of the renewal, are
doubtless those holding the right, at the time of the renewal.

But what is their right, then, obtained and confirmed by
the opinion of the Supreme Court ?

Not, as before remarked, in relation to the interes t or
license under the conveyance from Urann, in May, 1841 ;
not a mere personal privilege. Jt is a right of property. The
value of it is attached to the machine used, when it is the last
one used at the time the term expires. The right might be
assigned, separately as before ; but under the decision of the
Supreme Court the right could not be exercised after the
term closes, except in the particular machine then in use.

In this respect it is unlike the right which exists before the
term of the patent expires, having become fixed and limited
to that machine alone.

It has become like a patented medicine bought by a pa-
tient. The right to use the particular quantity sold passes
with the medicine itself.

There being then this property in that machine, when the
term expires, like any other property, the machine and the
right attached to it may pass by sale, devise, or levy of exe-

610 PATENT CASES.

Woodworth et al. v. Edwards et al. 3 Wood. & Minot.

cutioD, or assignmeDt of an insolvent's effects. As to the
last, see 3 Bos. & Pull. 565; 5 Barn. & Cres. 169^Phil. on
Pat. 357 ; Hindm. on Pat. 242, 327 ; Sawin v. Guild, 1 GalL
485.

In those cases in the 4 Howard, before cited, the patent-
right had been considered property, and even deemed assets
in the hands of the administrator, and the renewal had bera
in his name.

William W. Woodworth et al., in equitt, r. James

Edwabds et al.

[8 Woodbury & Minot, 120. Maj T. 1847.]

The omission to make oath to a bill in chanoerj, praying for an injanction, is
not here a cause of demnrier, after a hearing and order to file evidenee.
Bat it should be objected to by motion when the respondents appear, and
the oath will then be directed, unless good cause is shown to the contrary.
There is no rule of the Court, requiring an oath here to be filed with the
bUl.

After a special demurrer to a bill, the allegations of fact must, on the hearing
of the demurrer, be considered as true. When a special statute extends a
patent for seven years, the original patent must be treated as in law for aeren
years longer. So must a patent be, which is extended seven years by the
Board of the Patent Office. An original patent, extended in both of diese
ways, must be considered as a patent for twenty-eight years.

The specification for boUi extensions is the original specification. Jf aU axe
surrendered and an amended one issued, the new letters should be for twenty-
eight years. If the old specification had been adjudged good, but was atOI
questioned and litigated, and appears to be in some degree inoperatiye from
certain defects, supposed to have happened by mistake, the commissioner, on
its surrender, may issue new letters for twenty-eight yean, with an amended
specification, and if he does, they will be presumed — till the. contrary is
shown — to be for the same invention, and for a defect rendering the old
letters, in some degree, inoperative, and which happened from inadvertence
or mistake.

PATENT CASES. 611

Woodworth et al. v, Edwards et aL 3 Wood. & Minot

Wlien a demtmer for these causes is OTermled, the respondents may hare leave

- to answer farther by the payment of costs, and they may further contest a
temporary injonctioni though after an order to file testimony in it none was
filed but merely ademnxier.

* Bat after sach n^lect of the order and the OTermling of the demnr* [ * 121 ]
rer as bad, the case will not be opened for farther hearing as to the
temporary injunction, but be treated as if the &cts were confessed, unless an
affidavit is filed that the course pursued was not for delay, and indemnity is
also filed against any damage caused by the delay and the use of the machine
against which an injanction is desired.

Where one respondent run a planing machine and two others owned it, the
injunction was issued as proper against the three.

After the supposed inventor of a machine, in a contest with these plaintiffs in
another circnit, had been ei^oined not to ose that machine, becanse an in-
fringement on the plaintiffs*, those purchasing it of the supposed inventor, so
enjoined, cannot be allowed to use it while that injunction remains in full
force and the grounds of that decision are in no way overturned.

But where the respondents deny the validity of the patent of the plaintiffs, the
Court will dissolve the injunction at the next term, if the suit at law is not
by that time brought against them to try that validity.

The terms Imposed on the suit are, that the trial be confined to the objections
set up by the respondents in their answer and affidavit against the validity of
the patent, and that the action may be in the name of any one claiming an
interest in this district, which is supposed to have been violated, by the
respondents.

This was a bill in chancery, praying for an injunction
against the respondents for using a planing machine, the pa-
tent for which was alleged to be vested in the plaintiffs.

The allegations were as usual in this class of cases, several
of which, in this circuit, have been before tried and reported,
stating, among other things, the original invention to have
been made and patented in December, 1828, by William
Woodworth, since deceased — his rights to have become
vested in the plaintiffs — an extension to have been granted
of the original patent for seven years by the Board of Com-
missioners, in 1842 — another, for a like term, by Congress,
in a special law in February, 1845 — and a surrender of them
all made afterwards, on account of mistake in the specifica-

612 PATENT CASES.

Woodworth et al. v. Edwards et al. 3 Wood. & Minot.

lion — and new letters-patent issued for the whole twenty-
eight years, on the 8th day of July, 1845.

The bill was filed 16th July, 1847, and a subpcena and
notice given that day.

On the 23d July, 1847, a hearing was had before Judge
Sprague, on a motion for a preliminary tempoiary
[* 122] * injunction, and, after listening to both parties, an
order was made by him that the plaintiffs, within
twenty days, file their evidence in support of it, and the re-
spondents file theirs within ten days. Before this last period
expired, namely, 2d August, 1847 — the last day to file evi-
dence by the respondents — instead of complying with the
order, they filed a special demurrer to the whole bill, setting
out the following causes :

Ist. That no oath or testimony to the truth of the bill bad
been put on file with it.

2d. That the letters-patent, now relied on, of Juty, 1845,
should have been issued for twenty-one years instead of
twenty-eight years, and consequently were void.

The case, on this motion, came on for a hearing Septem-
ber ]8tb, 1847, at an adjourned session of the May Term,
and was argued by

B. R. Curtis, for the complainants, and J. T. Taaker, for

the respondents.

WoooBUBT) J. We have requested the demurrer io diis
case to be argued first, as a demurrer may affect both a tem-
porary and permanent injunction.

In the natural order of things, such an objection, by de-
murrer, which may turn out to be one of form merely, ought
to be considered before the merits of the application.

In a prayer for an injunction and a demurrer filed^ it baa

PATENT CASES. 613

Woodworth et al. v. Edwards et al. 3 Wbod. & Minot

been adjudged that the demurrer should be first heard and
disposed of. 6 Madd. 299 ; 1 Smith, Ch. 214.

The first ground assigned for this demurrer, is the want of
an oath to the bill, or any evidence in its support But this
is a ground more properly to be taken at a hearing on the
merits against proceeding further, till such oath or such evi-
dence is put in. It is a matter w pais and affecting the trial
of the facts rather than a defect in the bill itself.

* Of course, at the trial, or hearing, whether a [ * 123 ]
case is made out, or not, if the facts which the bill
alleges are denied by the respondents, the plaintiffs must fur-
nish evidence of them before succeeding. Generally they
must do it by their oath to the truth of the bill, and always
by other testimony, primd facie satisfiictory, before the re-
spondents are obliged to rebut it by evidence on their part.

But, sometimes this need not be done by the complainant
where the respondents do not appear and are defaulted ; or,
after an appearance and order, do not comply with it, and
the allegations in the bill are taken pro confesso; or, if after
such an appearance the respondent virtually admits the truth
of the facti^, by demurring merely on account of the want of
law in the bill.

The only precedent cited of a different character is that of
Lansing v. Pine, 4 Paige, Ch. R. 639.

But that decision seems to be founded on the special rules
of the New York Court of Chancery and its peculiar prac-
tice, requiring an oath to- the truth of some bills to be filed
with them, such as in that case, for discovery and other mat-
ters as to the conteats of a writing, without any evidence ac-
companying the bill as to its loss. See the rule stated in
1 Barbour, Ch. Pr. 44.

Here no such rule, exists as to bills of injunction or any
others.

VOL. u. — p. c. 52

614 PATENT CASES.

Woodworth et al. v. Edwards et al. 3 Wood. & llinot

The practice here is usually for the complainant to make
oath to his bill when it is signed, but this is not imperative nor
uniform.

It is not then done, if he is absent or indisposed, thoogh

it should be done probably before the hearing, unless it be a

bill by a corporation, or unless an answer under oath is not

asked, or unless an oath to the bill is waiv.ed, (nt its absence

is not objected to by the respondents when first heard.

[ * 124 ] * And if the principal is not in a situation to swear

to it,' the oath may be made by an agent. 1 Barbour,

Ch. Pr. 41.

When this case was before my associate at a former hear-
ing, and when the order was made as to filing other evidence,
no exception was taken to the absence of an oath to the bill,
and we both concur in the opinion that afterwards, if at aD,a
demurrer is not good for that cause in this Court.

The only remaining ground for a demurrer assigned in it,
is, that the last letters-patent, set out in the bill as for twenty-
eight years, should have been issued for only twenty-one.

Thus, after reciting the surrender and issue of new letters
for twenty-eight years, the demurrer says : '^ virhereas the de-
fendants are advised that by law the said last mentioned
letters-patent should have been granted for the term of twen-
ty-one years from the said 27th day of December, 1828," &c.

This would seem to have been stated under an impression
that the bill contained no averment of a second extension of the
original patent for a second seven years ; and hence that from
the bill on its face, the renewal, in order to cover all the terms
alleged in the bill, should have been for only twenty-one years
instead of twenty-eight.

But, on examination, the second renewal for seven years
appears to have been alleged in the bill, saying it was made
by Congress by a special Act in February, 1845.

To be sure it is not inserted immediately following the

PATENT CASES. 615

Woodworth et al. v. Edwards et al. 3 Wood. & Minot.

averment of the other renewal^ and. hence may have been
overlooked by the respondents ; but it is there.

The bill then^ on its face, contains allegations of an old
patent of fourteen years and two renewals of seven years each ;
and hence the last letters, to cover them all, are properly for
twenty-eight years instead of twenty one.

*But in argument another position is taken, [*. 125 ]
namely, that the renewal could not by law be made
to cover the last extension of seven years by Congress, as that
extension had not been evidenced by any letters-patent which
might be surrendered.

But on turning to the eighteenth section of the Act of Con-
gress of July 4, 1 836, concerning patents, it will be found that
when the board made the first extension of seven years, and
it was certified on the original letters of fourteen years, it
came within the enactment which existed in express terms,
that " thereupon the said patent shall have the same effect in
law as though it had been originally issued for twenty-one
years.'' 5 Statutes at Large, 125.

And when the second extension was granted by Congress
for seven years more, making, in all, twenty-eight, from De-
cember, 1828, the act, propria vigcrey merely extended the
patent seven years longer than before. The original patent,
in this W19, had, in law, become one for twenty-eight years.

The act imposed, next, an obligation on the commissioner
to give a certificate as to the last extension, if desired by the
administrator of the patentee, but not without.

Next, the original patent had not only thus in law, dejure^
as well as in common parlance, become one for twenty-eight
years from December, 1828, instead of the original four-
teen, or that and the next seven, but it had become a patent
for twenty-eight years under one and the same original spe-
cification.

There was no other in existence.

616 PATENT CASES.

Woodwortfa et al. v. Edwanb et al. S Wood. & Mmet

But the administrator beatme satisfied from repeated trials,
and numerous exceptions taken to his specificatioD, tint it
was in some respects defective ; that this cast a shade over its
validity, and rendered it less operative and suocessfnl am)
profitable than it would be if the ddioct was remov-
[ * 126 ] ed ; * and, beUeving that this defect had arisen faom
inadvertence or mistake when the original specifica-
tion was filed, he applied, as the law permits in such case, ix
leave to surrender his patent, as it then stood, and to receive
instead of it one with an amended specification.

It is difficult to conceive, then, why, when this patent was
afterwards surrendered under the thirteenth section of the
Patent Law, and new letters were obtained with an ameoded
specification, it should not be for the whc^ twenty-eight
years, and should not be as valid for the whole twenty-eight
as it would be for tw^ity-one years.

The demurrer seems to admit the renewal to be valid for
the term of twenty-one years, but not for the twenty-eight
years. But it being as valid for the latter as the former, the
demurrer, with such an admission, caonot probaUy be sas-
tained on this account.

There is another difficulty in sustaining this demurreri on
the ground now taken by counsel — that the old spedfication
has been, by some Courts, pronounced valid and not defectlTe
or insufiicient, and therefore that it must be eonsideied to
have been valid. But it is questionable whether the defend-
ants can now be permitted to argue that the patent was good
in form at first, after the allegations in the bill of its defective
character, and which the demurrer virtually admits. ''^°
the hearing of a demurrer the Courts are bound by the plai^
tifis' allegations of facts," &c Cuthbert v. Creasy, 6 Madd.
189 ; 1 Smith, Cb. 211 ; BaUs v. Strutt, 1 Hare, Ua

But supposing these objections to go rather to what muat be

PATENT CASES. 617

Woodworth et al. v, Edwards et al. 3 Wood. & Minot.

considered matters of law than fact alleged, how does the case,
in this respect, stand ?

The reasoning being that the renewal is not valid for even
twenty-one years, on the ground that the first letters-patent
and first specification had been upheld as good by
''^judicial decisions, the respondents, therefore, are [* 127 ]
right in contending that those letters and specifica-
tion could not be considered " inoperative or invalid," in the
language of the thirteenth section, so as to justify the com-
missioners in issuing new letters with an amended specifica-
tion. 5 Statutes at Large, 122.

But it would be a sufllicient answer to this position, were
it proper to be taken under the form of this demurrer, and
after admitting the renewal to be good for twenty-one years,
that the Supreme Court has, in the cases under this renewed
patent for twenty-eight years, in 4 Howard, R. 646, proceeded
on the ground that these identical renewed letters were valid.
And though I have no recollection that this question in rela-
tion to these was discussed in those cases, yet the letters must
necessarily have been considered good in order to authorize
the judgments in their favor, which were then and there ren-
dered on them. Woodworth v. Stone et al. and Same v.
Hall, 1 Wood. & Min. 248, 389.

And though this would not preclude the Supreme Court
from hearing their validity debated in another case upon this
objection, yet it would be hardly decorous for a Circuit Court
to decide differently on their validity, till the Supreme Court
had reconsidered and changed what is involved in its former
decisions. Townet;. Smith, 1 Wood. & Min. 115.

Nor would these be of much use to the respondents, if this^
Court, or the Supreme Court, should make a different deci-
sion. Because, if the renewal was not valid at all, neither
could the surrender be valid, which led to it, assuming the

52*

618 PATENT CASES.

Woodworth et aL v. Edwards et aL 8 Wood. & Minot

ground of the respondents, that the old patent Burreodeced
waSy and had been pronounced by the judiciary to be good.

The old letters^ and the extension under them, would be
considered in full force, and goods also, if the surrender was
by mistake, supposing new letters could be validly
[ * 128] * given instead of them, when they could not be,
avoiding thus both the new letters and the surren-
der. All violators of the patent could be prosecuted under
the old and valid patent, in the old form and with the old
specification, as well as under the new letters and new speci-
fication.

If these were vacated, bills and writs could be amended
and would declare on the old instead of the new letters, and
this done with little or no terms, under such circumstances,
not altering the merits but afi»cting merely forms. This was
intimated in Woodworth «• Stone, and Same o. Hall, 1 Wood.
ii Min. 248, 889.

But the present respondents have not been satisfied on aog-
gestions like these to abandon this objection, or to refrain
from asking a decision by this Court on the force of it.

Hence to oblige them, I would state frankly, that my im-
pressions are strongly in favor of the validity of the new let-
ters, independent of what has been done on themi in the Su-
preme Court. I think, by law, the original patent had become
one for twenty-eight years instead of fourteen or twenty-one.
I think the old specification applied to the patent for the
whole term of twenty-eight years ; that the surrender was of
all for the twenty-eight years; the renewal for all; and
that the right to renew by the Commissioner probably exist-
ed, although some Courts had decided in fiivor of the old
patent.

Because their decision, if right, might still rest in some
doubt, might not be acquiesced in generally, and without
amendments in the specification, might be constantly open

PATENT CASES. 619

Woodworth et al. o. Edwards et al. 3 Wood. & Min<^.

to a new and prolonged litigation, so as render the patent
valuelesSy and, in many respects, '^ inoperative."

If the decision was wrong — ^as judicial opinions by State
Courts and Circuit Courts, and even by Supreme Courts,
sometimes are wrong — surely these amendments would be
prudent and proper, in order to save the patent from be-
coming, ere long, entirely both <' inoperative '' and ^^ inva-
lid."

*The Act of Congress makes the commissioner [ * 129 ]
the judge in relation to the allowance of an amend-
ment, on the ground that the patent is inoperative or invalid
so as to justify it, and that the error, to be corrected in the
specification, has happened from ^^ inadvertency, accident, or
mistake."

If he permits an amendment, after a hearing on these mat-
ters, it is at least primdfade proof that the state of things in
these respects warranted it, as well as that the amended spe-
cification relates to the same patent. For he is not by law
allowed to permit any other than the old patent to be describ-
ed in the amendment, and he must be presumed to have done
his duty in all these particulars, till the contrary is shown.
Allen V. Blunt, 2 Wood. <& Min. 121.

Nor is this a great or dangerous power to be intrusted to
that officer; but a salutary, remedial authority, necessary
oftea to insure justice to useful inventors, and protect the
sacred rights of genius and property. But whenever there is
any just ground to suppose this power has been fraudulently
or corruptly abused, the door is open to prove it, and visit its
consequences on the guilty, not only by avoiding the renewal,
but by inflicting condign punishment for the guilt.

Viewing this objection as imputing neglect or error to a
public officer, rather than the plaintiffs, it is to be considered,
also, with favorable inclinations not to let individuals suffer,
except in clear cases of wrong, by the neglect of such officers

620 PATENT CASES.

Woodworth et al. v. Edwards et al. 3 Wood. & Minot

— persons other than the inventors, or those in their private
employ — persons in official station, and to whom they are,
by the laws of the Constitution, and not always by their own
choice, compelled to confine portions of their business. Wood-
worth V. Stone, 1 Wood. & Min. 389.

Much less should they suffer by others, when their error is

one more of form than substance to third persons, and if to a

certainty not sustainable in law, this change would

[* 130 ] * work no injustice to others, and would leave the

plaintiff still entitled to redress in an amended fonn

of the bill relying on the old letters.

Deciding against this demurrer, the next inquiry is, whether
this decision must operate as final in favor of the applicatioD
for a preliminary and temporary injunction. Because the
order of the Court, in July last, to file testimony by the re-
spondents, in ten days, has not been complied with, and oo
excuse is offered for this omission except a demurrer put in
on the last day of the time granted, and which has led to
several weeks' further delay, and been overruled.

Under the twenty-fourth rule of this Court, where a de-
murrer is to a bill as here, and it is overruled, the party mak-
ing it can still — on paying costs — have a trial on the merits,
or principal matter in dispute — which is here a pennaoent
injunction.

In England, without a specific rule : — ^' If the demurrer is
overruled, the defendant pays to the plaintiff the taxed cost
occasioned thereby, unless the Court make other order to the
contrary." 1 Smith, Ch. 213.

The respondents, then, may still have a hearing as to a
permanent injunction, and I am willing to allow a hearing on
that, after the proper pleadings and proofs are put in, and the
costs paid.

But how stands the right to proceed further in the [Htlimi-
nary hearing and motion for the temporary injunction, after

PATENT CASES. 621

Wood^fortii et al. v. EdwardB et al. 8 Wood. & Minot

haviog once appeared and an order made, which has been
neglected, and a demurrer put in, which has created much
delay, and finally has been overruled ? My impression is that
the former order should not be renewed and extended after
all this, unless the party, by affidavits, will satisfy the Court
that the order was not omitted to be complied with for pur-
poses of delay, and will put security 'on file for any
damage dope by running the machine in * dispute, [ * 131 ]
during the delay to comply with the order. If this
is done iQ a reasonable time — say forty-eight hours — I
would extend the order longer ; but if not done, issue the
temporary injunction on account of the neglect to comply
with the first order, and the. virtual confession of a violation
of the plaintifis' patent by the demurrer, if the present letters
are valid — as we are inclined to hold them to be.

In either case — though the respondents by their course
seem to admit the truth of the facts alleged in the bill — the
plaintiffs if they can conscientiously, had better file their oaths
to the truth of the bill ; and file any collateral evidence which
has been taken on their part under the order.

The respondents then moved for leave to answer to the
bill, which [HByed for a permanent injunction, and were al-
lowed to do it on payment of costs. They moved next for
leave to contest the temporary injunction further, stnd be ex-
cused from the non-fulfilment of the first order, and were
allowed Xo do it qn filing an aflldavit that tbeir course had not
been adopted for the purpose of delay, and on giving indem-
nity for any damages by running the machine since the non-
compliance with the order.

This case came on at an ensuing day in the term, for a
further hearing as to a temporary injunction. The respond-
ents, in the mean time^ bad filed an afildavit that the demurrer

622 PATENT CASES.

Woodworth et al. v. Edwards et al. 3 Wood. & Minot

was not for delay, and had filed a bond that any damages
during it would be indemnified against. The plaintiffs bad
also filed an aflidavit as to ^e truth of the matter in tke
biU.

Some evidence was submitted on both sides ; and amoDg

that on the part of the respondents were some answers which

had been prepared to the bill, as for a permanent injanction,

and which had been sworn to, and were here ofler-

[ * 132 ] ed * as affidavits of the parties, in respect to their

contents.

The substance of the exceptions taken in them to the vali-
dity of the patent set up by the plaintifis, was, that it was oot
original with Woodworth, several persons being named who
had discovered and used it before, and that the renewals of it
afterwards were obtained by misrepresentations and iiaad;
and that it was improperly surrendered, and improperly re
issued, with a new or amended specification.

It was admitted that the machine used by Smith, odc of
the respondents, was owned by the Edwardses, and was the
same which Rogers was, the last spring, enjoined from roo-
ning.

There was no evidence or admission which charged Ban-
croft, one of the respondents, and the motion as against him
was dismissed.

The evidence offered did not change the case on either
side, from what has been reported in Woodworth et al. t'-
Rogers, post, p. 135.

Several propositions were made for disposing of the motion
by amicable arrangement, which were not acceded to, and
need not therefore be repeated. An application was also made
by the respondents to have the injunction, if imposed, conti-
nue no longer than the next term ; and that the pkiotiffs, in
the mean time, should institute an action at law to try the va-
lidity of the patent denied by the respondents.

PATENT CASES. 623

Woodworth et al. v. Edwards et al. 3 Wood. & Miiiot

The plaintiffs also moved to have the respondents make
certain admissions as to evidence and points in respect to the
suit at law, if ordered, and file security for the damages and
costs which might be recovered.

The Court, after hearing the same counsel,
at another * day in the term, expressed, by Justice [ * 133 ] *
Woodbury, its opinion in favor of the temporary in-
junction against the two Edwardses and Smith. The Court
observed, that one runs the machine and the other two own
it, and all hold^under Brown, the supposed patentee. But in
a bill against him, by Woodworth's assignees in Vermont, in
the Circuit Court, after a full hearing. Brown has been enjoin-
ed against the farther use of this very machine.

It would be sporting with the«faith and confidence due to
judicial proceedings in our own tribunals, to permit that ma-
chine to be used by any person claiming from Brown, while
that injunction against him remains in full force, and the
grounds of it no way overturned.

At the same time, as stated in the similar case between
those complainants and Rogers at the last session here, these
defendants are not prevented, and should not be, from trying
their legal rights in their own appropriate cases. And though
the plaintiffs, by former repeated recoveries on this parent, by
extensive sales and long possession of it, and especially by
succeeding in obtaining an injunction against Brown from us-
ing this very machine — are entitled to a temporary injunction
against these respondents, yet it should, in the first instance,
be only till the validity of the plaintiffs' title — which they
deny — can be tried with them at law.

As the counsel for the respondents, who is also the counsel
for Rogers, prefers that the trial be had in this case instead of
that — let 4hat one stand continued to abide the event of this,
if not in the mean time otherwise arranged. And let a suit at
law be brought, before the next term, against the two Ed-

624 PATENT CASES.

Woodwoith et aL v. EdwinU et aL 3 Wood. & Minot.

wardses and Smith for their infringeinent ; and if not done,
the injunction now ordered against them must be then (fo-
solved.

In respect to the terms and conditions attached to this rait,
the most natural and appropriate one, that the tiial
[ * 134 ] * shall be of the validity of the patent in the piaeDt
bill, under the objections set out against in the be-
fore-mentioned answers, used here as affidavits by the respond-
ents. Let this be one condition ; and another, that the soil
may be in the name of any assignor or assignee, claimiog as
interest in this district, which the respondents are alleged to
have infringed. ^

Various other conditions and restrictions are asked ; and it
is not unusual for Courts to impose many others required by
the nature of the case. See 2 Smith, Ch. Pr. 90; gTes.
518 ; 1 Ves. 293 ; 2 Hare, 13, 14.

But some of those asked here, as to taking a model, and
as to confessions of the use of the machine, &C., are easily
accomplished or obviated, as the case now stands ; and too
minute interference in these matters, by the Court, is to be
avoided if possible.

Nor do I think it a case for requiring coUateial security
to cover damages and cost, after the oath of one of the re-
spondents to his property b^ing worth several thousand dol-
lars.

It is to be hoped, on account of public considerations, that
some amicable adjustment may, in the mean time, without
further litigation, be effected of the controversies in respect to
the validity of this patent in this district — controversies,
which, after numerous decisions, still seem to multiply and
require great attention to them at each term of this Court, to
the delay and injury of other business.

We do not profess to know, or statCi which of the parties
are most blamable for this : -^but to enjoin both to a siscere
spirit of compromise, forbearance, and peace.

PATENT CASES. 625

Woodworth et al. v. Bogen et oil. 3 Wood. & Minot.

The rights of inTentiTe genius, and the valuable property
produced by it, all persons in the exercise of this spirit will
be willing to vindicate and uphold, without colorable
evasions or wanton piracies ; bat those rights, *on [ ^ 135 ]
the other hand, should be maintained in a manner
not harsh towards other inventors, nor unaccommodating to
the growing wants of the community.

Wm. W. Woodworth et al. v, Lawrence Rogers bt al.

[3 Woodbiuy and Biinot, 135. May T. 1847.]

A party who has been enjoined againat the nse of a patent, is gnilty of a con-
tempt if he afterwards nse another patent similar in principle, when the
anther of the last had preyionsly been enjoined by the owner of the first
patent

He can porge himself of snch contempt only by satisfying the Conrt that he
was not aware that the last patent had been enjoined.

If one makes an impioTement in a prior patent, obtained by another, it gires
him no right to nse what had before been patented, without license, iriiile the
term of the prior patent continues.

Where a special injunction against the nse of a patented machine has been im-
posed when a biU is filed, motions to dissolre it will not be heard on the same
evidence, or new eridence improperly neglected to be offered before ; but
will be on new and material testimony.

When an answer is filed to the bill denying the yalidlty of the patent, and eyi-
dence supporting the answer, primd faeief is offered, the injunction will be
dissolred, unless the other side file counter-eridence sustaining the validity
of the patent. What generally is proper evidence on that point, consi-
dered.

It is the duty of the Court to weigh the evidence, and if the balance seems in
favor of the plaintiff, to continue the ii^nction till a trial of the right can be
had at law, by an issue out of the chancery side of the Court, or by an action
at law. If the parties cannot agree on an issue, the Court will direct an ac-
tion at law to be brought speedily, to settle the conflicting title ; and if not
done, will dissolve the injunction.

VOL. II. — P. c* 53

696 PATENT CASES.

Woodworth et aL v, Bogen et al. 3 Wood. & ICmot

The ranodj by iigiiactioD, used in this waj, does not impair any light to a
trial by joiy, as secured by constitntion, but merely aids the party appeirii^
to hare the legal title, till sach a trial, if desired, can be had.

This was a bill in equity, filed September 8th, 1346.

It averred, that the plaintifis possessed the title to the pa-
tent-rights of William Woodworth, senior, to the
[ * 136 ] planing ^ machine alleged to have been invented bj
him. That the defendants were using one of said
machines, or one substantially like them. That the plaintiffs
had before recovered a verdict and judgment against one J.
Gould, for the use of a like machine ; and had requested the
defendants to desist from infringing on the rights of the plain-
tifis therein, but they refused to comply. The bill prayed for
a discovery how long the defendants had used the machine,
and after asking replies to several interrogatories, requested
that the defendants be made to account for the profits derived
from the machine, and be enjoined from any further use of it;
and for such other relief as might seem meet.

The respondents in November, 1 846, filed answers to the
bill. That of Rogers, which is the only one now under con-
sideration, answering the interrogatories, set out, that some
months before May, 1846, he used a machine similar to that
claimed by said Woodworth as his, 'but has not done it since,
nor used, since, any similar machine ; and hence, considers
himself not bound to answer further.

Rogers then proceeded to deny that Woodworth was the ori-
ginal inventor of the machine patented by him in December,
1828 ; and that he well knew that fact, and thus obtained his
letters, therefore, fraudulently. He further averred, that the
surrender of the patent, July 8th, 1845, and the taking out a
new specification for the same machine, instead of for one
before defective, was for a new and diflferent thing from what
had been before claimed ; and this being known to Wood-
worth, made the last patent void.

PATENT CASES. 627

Woodworth et al. v, Bdgen et al. 3 Wood. & Minot

Rogers then prayed that an issue be ordered by the Court,
and sent to a jury, to try the question of fraud in obtaining
the patent in 1828, and the amended specification in 1845.
. On the 19th of January, 1847 — after a hearing before
Sprague, J., a special injunction issued against Ro-
gers not * to use the planing machine, patented by [ * 137 ]
Woodworth, or any one of similar construction.

In February, 1847, a motion was filed to punish Rogers for
a contempt in violating that injunction.

At the hearing for this contempt, it was proved, that a
planing machine like the plaintiffs' was used in Rogers's shop;
but, on his affidavit that it was run by others' who leased the
shop from him for hire, and the Court considering it doubtful
whether his connection with it was such as to render him re-
sponsible for its use, he was exonerated from the supposed
contempt, on the payment of the costs of that motion.

On the 17th April, 1847, the plaintiffs filed another motion
against the respondent, Rogers, for another contempt in vio-
lating said injunction, since the previous hearing.

On the 27th May, 1847, he put in an answer, denying his
breach of that injunction, and adding, that since the 18th o{
February, 1847, he had used a machine in his shop like that
invented and patented by Benjamin Brown, of Vermont, on
the 9th of November, 1845 ; and the right to use- which Ro-
gers bought of James H. Edwards, assignee of Brown ; and
that it is not substantially like any machine said to have been
invented and patented by Woodworth, 27th December, 1828,
as heretofore described by the plain ti£b in their original bill.
The answer adds, that if the plaintiffs claim, under their pa-
tents, any such machine substantially as that used by Rogers,
William Woodworth was not the original inventor thereof;
and if any such one is described in these letters of July, 1845,
they were obtained on false representations and fraud. That
there was no defect in his specification of December, 1828,

698 PATENT CASES.

Woodwortik et al. v, Rogers et al. 3 Wood. & Minot

and if any existedy it arose from design and fraud, and not

from mistake. And that the letters-patent of July, 1845, if

purporting to cover such a machine, were obtaioed

[ * 188 ] * corruptly and falsely, and made to embrace what

he knew belonged to others.

On the Ist of June, Rogers filed amendments to the above
answers, denying again the title of ttie plaintiffs to the Wood-
worth patent within the limits of Boston, and restating, with
formal variations, his charge of fraud in the new letters-pateot,
issued July 8th, 1845, and the want of identity between the
subject of them and the letteis of December, 1828, and also
charges of fraud committed on Congress in procuring the ex-
tension made by it. The amendments not only repeated these
matters, but set up Daniel Dunbar, of South Boston, to be
the earliest and true inventor of the planing machine used bj
Woodworth. They neit averred, that the pressure rollers,
named in his patent, had been well described in a patent to
Samuel Bentham, in 1783, and other parts in a patent to
J. Bramah, in England, in 1802.

They further alleged, that Daniel N. Smith, of Warwick^
(Mass.) invented and patented a machine similar to Wood-
worth's, in 1827, and that James Hill, of Lynn, and Joseph
Hill, and several others, had knowledge of a like machine
made by said James and Joseph, prior to Woodworth's fiist
patent — and similar allegations were made as to the ioven-
tion of such a machine by John Hale, of Oakham, (Mass.)
and that the rollers were known and used by James Baldwin,
of Westford, (Mass.) as early as 1818.

At the first hearing of this case, to punish Rogers for a coo-
tempt, by violating the injunction, another motion was made
by the counsel of Rogers to dissolve the original injunction
imposed by Sprague, Justice. It was agreed, that these two
motions be argued together ; and it was further agreed that
time should be allowed to Rogers to procure and file testimoof;

PATENT CASES. 629

Woodwortfa et al. v, Bogen et aj. 8 Wood. & Minot

pertaining to both motions, and plaintiff have further opportu-
nity to procure testimony in reply.

Various affidavits and other evidence were accord-*
ingly * put into the case on both sides at the times [ "^ 139 ]
mutually agreed. Reference v?ill be made in the
opinion of the Court to such portions of them as seemed im-
portant under each motion.

The quesfions and testimony were argued, by

J3. JR. Curtis, counsel for the plaintiffs, and Tasker, for
the defendant.

WooDBUBT, J. The first question to be disposed of, is the
motion against Rogers, for punishment for a contempt in vio«
lating an injunction which was granted in this case against
him in favor of the plaintiffs.

That injunction was against the use of the planing machine
invented by Woodworth, or any machine substantially the
same.

It was in these words : " You shall not use or vend any
one or more of the machines substantially the same in con-
struction as the machine of the said Wm. Woodworth, pa-
tented as mentioned in the said bill of complaint, on the 18th
day of July, A. D. 1845."

The first inquiry is, what are the matters of fact and law
which are properly to be examined on this motion ?

They are — not the originality of Woodworth's machine,
not any fraud in the renewals of it, not the propriety of the
original injunction.

Those questions were all passed on, so far as made and as
material in this motion for a contempt, at the original hearing
before my associate. They are for the present inquiry, there-
fore, rem judicatum.

But it is important here to ascertain whether Rogers —

53*

630 PATENT CASES.

Woodwortk et al. v. Bogera et aL 3 Wood. & Minot.

■» —

and that is the next step in the inquiry — while under the
injunction not to use any machine, substantially like 'Wood-
worth's, has disregarded the rights of the plaintifis and the
authority of the United States, as existing in the Circuit Court,
so as to violate the order given to him ? Has he^ after
[ * 140 ] * a full hearing, and in contempt of that order, pro-
ceeded to use a planing machine similar in prindple
to Woodworth's ?

As to this, it is admitted by Rogers, that since the 1 5th of
February, 1 847, about the time he paid the costs on the pre-
vious motion to punish him for contempt, he has used a fdaning
machine invented by Benjamin Brown and patented io No-
vember, 1845.

But he denies that this machine is substantially like the
planing machine patented by Woodworth.

The plaintifTs contend, it is in principle the same, and its
use is therefore a breach of the injunction. This, then, is
the point controverted, which is to be settled. What ia the
evidence on this question ? and how is the balance of it?

Various witnesses on the part of the plaintifi, and among
them some highly intelligent machimsts and experts, testify
unqualifiedly, that this machine, now used by Bxigeis, is the
same in substance and principle as Woodworth's.

On the contrary, several witnesses testify in his behalf, that
they consider this machine as differing in substance or princi-
ple from the plaintiff's.

But some of these last describe this difference to consist in
certain specified improvements made by Brown on the origi-
nal machine of the plaintiffs, rather than as containing parts,
all of which vary from Woodworth's, or which are independ-
ent and different from his.

Thus, Isaac Adams, for one instance, speaks of Brown's
machine being different, but still containing " a combinaUon
claimed in the Woodworth patent." And others, like J. £.

PATENT CASES. 681

Woodwofth et al. o. Bog«n et al. 3 Wood. & Minot.

Andrews, admit that Brown's machine uses, substantially, two
parts of Woodworth's own, '' the cutting cylinder and a small
guide roller."

In the examination of this eridence, as well as of Brown's
own letters-patent, which are put into the case, and
in * which he claims to have ^' invented a new and [ * 141 ]
useful improvement in planing machines," it hardly
can be doubted that this machine contains some of the most
important parts of Woodworth's, but it is in other respects
different, and perhaps an improvement on it.

It is well known, however, as sound law, that where a ma-
chine has been invented like that of Woodworth's, ia 1828,
no one can make an improvement on it, and use important
portions of the original invention, while the original term, or
the renewals of it, exist, without the license of the original
patentee, or a purchase from him of the right so to use what
belongs to him. Hovey t;. Stevens, 1 Wood. & Min. 290 ;
Washburn v. Gould, 3 Stor. R. 150. See Act of Congress,
February 21st, 1793, (1 Stat, at Laige, 323.)

For the same reason, if the improvement by a succeeding
inventor be genuine and important, no one can use that im-
provement without a license or purchase from him, although
they have obtained the right to use the original machine on
which the last invention is an improvement

In this view of the evidence and law, therefore, Rogers is
using a machine, which in its substance and principle contains
important portions of Woodworth's patent, though it may in
other respects have some qualities or parts which are new or
imptbved, and, in thus using what is material in Woodworth's
invention, he certainly violates the injunction.

But I can conceive, if the case stopped here, that some
apology might exist in the apprehension of the party, that
because Brown's machine was considered by several as an
improvement on Woodworth's, he might use it without vio-

632 PATENT CASES.

Woodworth et al. v. Bogen et al. 3 Wood. & Miaot.

lating Woodworth's rights, or paying him for such parts of
his as are included in Brown's. To see then whether a de-
signed evasion of the order, or, in other words, a
[ * 142 ] contempt * was committed, it is proper to look fur-
ther into the testimony on the part of the plaintifi.
They proceed to show further, that the question, wheth«
Brown's machine is original and independent of Woodworth's,
so as to entitle him to make and use it, or license othen
to, without Woodworth's permission, is a question which has
already been settled. It has been settled, too, against Brown
himself, and in favor of Woodworth, after a full hearing ia
the Circuit Court of the United States, in the Vermont Dis-
trict where Brown resides.

The evidence is direct and plenary as to this, and further-
more that Brown has been put under an injunction, in behalf
of Woodworth, not to use without Woodworth's license, the
machine for which Brown took out a patent in 1845, and
which Rogers is now using.

The proceedings were commenced May 7th, 1846, bj
Hickok, an assignee of Woodworth^ against Brown and others,
alleging that Brown's machine in all material parts was sub-
stantially the same as Woodworth's, and asking an iojuQction
against it ; and, after hearing affidavits and arguments on
both sides, at the May Term of the Circuit Court for Vermont,
in 1846, an injunction was issued against the further use of
Brown's machine without a license from Woodworth, or his
assignees, on the ground that it was an infringement on their
rights.

It can hardly be tolerated after this, happening as long ago
as May, 1846, that a person, under injunction not to use a
machine substantially like Woodworth's, should proceed to
purchase and use one, which had, after a public hearing in ^
adjoining Circuit, been enjoined against as substantially

PATENT CASES. 633

Woodworth et aL v. Rogen et al. 3 Wood. & Minot.

alike — and that in a legal proceeding against the patentee
himself.

On all this evidence the Court would be blind to the facts,
and unfaithful to the rights of parties and the pub-
lic, * to allow such evasions of their orders and de- [ * 143 ]
crees ; and it feels compelled to say on this evi-
dence, unexplained, not only that their injunction has been
violated, but in a manner highly culpable. We would not,
however, bar the respondent from any exculpation which
truth may warrant. If he can show that he was entirely
ignorant of this injunction against Brown during the time he
has been using Brown's machine, it would go far in extenua-
tion.

This he can do, presumptively at least, by the affidavit of
Edwards, his vendor, showing that Edwards was ignorant of
that injunction ; or if not so, did not communicate the fact to
Rogers; and also by his own affidavit, purging himself of all
knowledge of the proceedings in Vermont, from either Ed-
wards or others, and all design to evade the orders of this
Court in the use of Brown's machine.

The other motion to dissolve the injunction, imposed on
Rogers by my associate, presents a different question, and is
to be governed by several rules and considerations entirely
dissimilar.

The main point in that is not whether an injunction should
be imposed at all, for that has already been done, and after
a full hearing — and till the contrary is shown, it is to be pre-
sumed it was done rightly. Woodworth v. Hall, 1 Wood. &
Min. 248, 389; Maxwell v. Ward, 11 Price, 17. Omnia
presumuntur rite esse acta.

The burden, then, is on the respondent to overcome that
presumption. It is open to be overcome by new matter or
evidence arising since the injunction was imposed, though
very seldom by matter then existing, which the party neglected

634 PATENT CASES.

Woodworth et tl. v, Bogen et. H. 3 Wood. & Hmot

to present to the consideretioo of the Coart. If this were
not the rule, the same matter might be ofiered anew, or mat-
ter before neglected offered on new motions to dissolve iDjQD^
tions, weekly, the year round, and the Court be entirely
occupied either in virtual rehearings of like facts
[ * 144 ] * and like arguments in one and the same cause, or
in considering what the petitioner bad before impn>'
perly neglected to introduce.

The new matter, usually relied on in cases of this category,
is a subsequent answer, denying the originality of the patent
or its validity in other respects, and supporting the objectioD,
if contested by the plaintiff, with primd facie proof not rebut-
ted. Poor V. Carleton et al., 3 Sumn. 70. Or it is by show-
ing a trial at law, since had between these parties, and at
times between others, involving like questions, and a judgnoeot
rendered against the validity of the patent.

The ground chiefly relied on here is, therefore, a subseqaent
answer, which not only denies the originality of Woodworth's
patent in 1828, but the validity of the succeeding renewals of
it, both by the Board for the Patent Office and by Congress,
through gross frauds, alleged to have been practised on ihein
by Woodworth and his assigns.

This denial of legal title in the plaintiffs, made by the re-
spondent, under oath, is not without some weight, when stand-
ing alone. Once it was deemed sufficient to dissolve an in-
junction, already specially granted on a hearing, and not a
mere common injunction, issued of course.

See the cases, collected in 3 Sumn. 75, and Orr v. IM^'
field, 1 Wood. & Min. 13.

But such is not the law or the practice now, either in Eng-
land or this country. (See cases last cited, and 16 Ves. 49;
19 Ves. 183 ; 11 Price, 17 ; 1 Wood. & Min. 280, in Parker's
case.) The presumptions arising from the answer, may nov
be disproved by evidence on the part of the plaintiffs, and

PATENT CASES. 635

Woodworth et al. v. Rogers et al. 3 Wood. & Minot.

then counter testimony is admissible by the respondent to sus*
tain his answer.

After this, it becomes the duty of the Court to ,
balance * these allegations and proofs, and decide [ ^ 145 ]
how the weight of them is ; and whether in the
exercise of a sound discretion upon them the injunction ought
to be dissolved or not. 3 Ves. 19; 2 Johns. Ch. 204;
3 Sumn. 74.

Here the plaintiffs have offered a variety of evidence to
countervail and disprove the answer, and also the testimony
introduced by Rogers.

(1.) They show not only the letters-patent themselves, to
Woodworth, which are public records and acts of public offi-
cers, that are alone primd facie evidence for the patentees of
the validity of their claim, but next (2) the oath of the paten-
tee, when they were obtained, that he was the original inven-
tor. Alden v. Dewey, 1 Story, R. 336. (3.) Next a subse-
quent confirmation of his claim as inventor, by the renewal of
those letters by the Board of the Patent Office. (4.) Next,
such a confirmation by Congress itself, in granting a further
term for the patent. (5.) Next, the possession and a use and
sales of this patent and numerous machines over the whole
country, and for large sums of money, as if rightfully entitled
to it, for nearly twenty years past. Hindmarch on Patents,
305 ; Drury on Register, 320-2 ; Orr t;. Littlefield, 1 Wood.
& Min. 20.

The doctrine in England, as to this alone, is very strong.
In Bickford v. Skews, (4 Mylne & Craig, 500,) the Lord
Chancellor says : '^ If the patentee has been long in possession,
the Court will not look into the title, but will give credit to
it, until displaced by a trial at law."

It is stated that in the adjoining circuit, one of my brethren
on the Bench of the Supreme Court (Nelson, J.) has recently

636 PATENT CASES.

Woodworth et al. v. Bogen et aL 8 Wood. & Minot

held this circumftance alone to be suflGicient to retam an in-
junction.

Next, (6) by a lecoverj of damages in a Court of Law for

an infringement on it, after a severe contest in this Ciicoit,

under my predecessor. Woodworth t;. Shennas.

[ • 146 ] 3 Story, • R. 171 ; Ibid. 189, 754. This inyolied

the originality of his invention as against Evans and

all others then set up.

(7.) Next, the recovery in Courts of Equity in several caKs
where his rights were contested, not only in the differesi
Circuits of the United States, but in several cases, fully haxi
and considered in the Supreme Court of the United States,
and some of them involving the originality of this very ioTeD-
tion. 4 Howard, 71S, 716.

(8.) Next, special injunctions, that have been obtaioed id
great numbers, many of which are still pending, and none of
which are shown ever to have been dissolved on a heanog
upon the merits, as to the validity of the patent.

(9.) And, finally, a special injunction obtained, after i^
sistance, against this very defendant*

Such facts, in these preliminary inquiries into the legal title,
as connected with the propriety of imposing or dissolving s^i
injunction, are proper and legal ones to influenoe the decision
of the Court, are paramount in their character over all iodiri-
dual opinions of witnesses, and should usually be ooDclosiv^
till parties contest these claims in some issue in a Court of U*
and disprove or rebut their force. See Orr. v. LittleSeM;
1 Wood. & Min. 20, and the cases cited there.

Their great strength, when united as here, is eotirelf
superior to any evidence offered against them by the respond-
ent.

It is true that the matters in the answer are attempted to
be sustained by Rogers by evidence and documents.

But some of them relate to mere hearsay statements;

PATENT CASES. 637

Woodworth et al. v. Bogers et al. 3 Wood. & Minot.

some are from persons under injunctions against the use of
this same machine of Wood worth's and some are open to
various other objections, soon to be explained, and decisive
against them.

*It deserves special notice, that among several [ * 147
instances named, where the planing machine is sup-
posed to have not been sustained, that not a single case is
shown for Rogers, by proper proof, of a recovery at law or in
equity against Woodworth's patent. The cases referred to
rest on hearsay, or are apocryphal. Again, where in some
instances, after special injunctions have been obtained, it is
shown by him that the plaintiffs became nonsuit, the evidence
or rebuttal is, that the respondents were irresponsible and not
able to. pay the cost of further proceedings ; or they were
cases in which some assignee, and not Woodworth and his
immediate representatives, conducted the prosecutioil, and
were not nonsuits or dismissals made by order of the Court on
a hearing. •

In the case cited from Maryland, where an injunction was
dissolved, it does not appear to have been from want of title.
The respondent was still required to keep an account, thus
recognizing for some purposes the primd facie right as to the
patent, but deeming the remedy by injunction unsuited to the
circumstances there existing, or unjust, or unnecessary, as it
is at times when the defendant is in large business and am-
ply responsible for any damages. Bramwell v. Halcomb,
3 Mylne & Craig, 739. OK' what seems most probable, it was
a case of a common, and not a special injunction. The for-
mer is usually dissolved as a matter of course, on the coming
in of an answer denying merits, or a legal title in the plain-
tiffs, and without any inquiring into the truth of the allegation.
See Orr v. Littlefield, 1 Wood & Min. 20 ; 3 Merivale, 622 ;
3 Sumn. 74 ; Eden on Inj. 88.

Notwithstanding these exceptions to this evidence, when
VOL. n. — p. c. 54

638 PATENT CASES.

Woodworth et al. v. Rogers et aL 3 Wood. & Minot

coupled with the denials and allegations in the answer—
they all standing alone, and not rebutted by the plaiatib,
would probably be a sufficient ground for dissolving the in-
junction.
[ * 148 ] * They would furnish this, because making, pro-
bably, when standing alone, a primd fade case,
that the plaintiffs had no legal title ; and an injunction is in-
tended to aid or protect what seems to be a legal title.

It is granted for this purpose, when issued before a trial,
on presumptive evidence offered of such a title ; and it stands
on that till the probabilities furnished by the plaintiffs of tlieir
having a legal title are overcome by answers and counter
oaths, and proofs of a stronger character by the respondents
than those adduced by the plaintiffs, or by a subsequent trisi
at law in which such counter proofs have been examined and
been successful. 3 Mylne b Craig, 739.

But being, as the respondent's answer is, as well as his eri-
dence, counteracted by the strong and numerous facts offered
by the plaintiffs to rebut them, the probabilities seem to
me wholly changed, and to be decidedly in favor of the vali-
dity of Wood worth's patent. His proofs are of a character
entirely to overcome what might otherwise be inferred from
the defendants. Take Dunbar's affidavit, for one instance, as
to the material point concerning the originality of the inven-
tion. He testifies as to what transpired before the patent, and
it has been slept over for a generation, and till Woodwortb
(senior) is in his grave, and till the originality has been not
only sworn to by the patentee, but when attacked frequently
since has been sustained triumphantly in the Supreme Court
of the United States, as well as in seveml Circuits, and before
Congress itself.

Leading circumstances, like these, should also overcome
the statements of the defendant from mere hearsay as to
fraud — -an imputation, which, above all others, is to be proved
clearly or not at all. Roberts v. Anderson, 2 Johns. Ch. SOS*

PATENT CASES. 639

Woodworth .et al. v. Rogers et aL 3 Wood. & Minot.

And they outweigh all loose and general impres-
sions as * to no differences in principle existing be- [ * 149 ]
tween Woodworth's and other old machines^ when
this has been so often tested in Courts where witnesses were
cross-examined, and what is meant by principle has been often
found and explained to be only such changes in form as turn
out to be immaterial, or a substitution of only what are well
known to experts to be mere mechanical equivalents.

Another consideration has been urged against the continu-
ance of this injunction which deserves some notice. It is the
alleged illegality or oppression of this remedy and its great
encroachment on the trial by jury, and consequently the pro-
priety of dissolving it in this instance. But the power exer-
cised under injunctions has existed from the early ages of
chancery jurisdiction, and is remedial and useful as a preven-
tative of injury and multiplicity of lawsuits, wh^n it is properly
exercised. It is also a power conferred on this Court in one
of the earliest acts of Congress, passed after the adoption of
the Constitution. 1 Statutes at Large, 81, ^^ 13, 14, and p.
334. It has constandy been used by it since for more than
half a century.

It is a mistake, likewise, to suppose that this power, in its
legitimate use, impairs, supersedes, or prevents the trial by
jury where it has ever existed.

In most questions pending in Courts of Chancery, or on
the equity side of Courts of Law, a trial by jury has never
been usual in this country or abroad.

The 7th amendment to the Constitution secures that trial
only in cases '^ at common law."

But still chancery may order an issue to be tried at law to
help itself as to facts, and retried, if dissatisfied with the ver-
dict. 2 Price, 314, note ; 416, note. Or it may decide
facts for itself in all cases, except, perhaps, in England,

640 PATENT CASES.

Woodworth et al. r. Bogen et al. 3 Wood. & Minot.

[*150] in *the case of an heir at law disputing a will,
and a rector suing for tithes. Bullen v. Michel,
2 Price, 423.

So a jury trial can always be had, and is cheerfully allowed
in cases like this, connected with injunctions, where the rights
and titles of parties are doubted in law and facts are supposed
to exist which are disputable and proper to be settled by a
jurj. Bramwell v. Halcomb, 3 Mylne & Craig, 737. An
injunction is never issued in hostility to what seems to be the
legal rights of the parties, but in the aid and protection of them.
At first, it is as those rights appear before trial, and only till
a trial by jury can be had, if desired. Ridgway r. Roberts,
4 Hare, 108 ; 17 Ves. 422. Ant! whenever a trial is had
before a jury or otherwise, which shows that the rights at
law are with the party enjoined, the injunction is, as a matter
of course, dissolved. Bickford v. Skews, 4 Mylne & Craig,
498. Nor does the injunction delay or retard a trial by jury,
but makes the pHmd facie title prevail till then. Harman r.
Jones, I Craig & Phil. 299; Hilton v. Granville, 1 Bailey,
Cases, 120.

In the present case it was imposed in favor of the party ap-
pearing on the evidence to possess the legal right to the patent
and machine. It was done only the last winter, and after
full hearing, and has been no obstacle since to the respondent
having a jury trial as soon as he was sued in a Court of Law,
where such trials can alone be had, or as soon as he put in an
answer here which denied the legal title of the plaintifis and
requested a trial at law, and that trial can in due course be
had. This he has not done till the last month ; and now
having had a hearing on this request, and the injunction being
still retained to aid and protect what still seems to be the
legal title till the contrary is fully shown, he can have
[* 151 ] a jury trial of the title to this * patent whenever
issues can be formed by the parties and the case pre-

PATENT CASES. 641

Wilton r. The Railroads. 1 Wallace.

pared for a hearing upon them ; or^ if preferred, as soon as
an action at law can be instituted and prepared. The bond
which he voluntarily offers, to secure the damages and costs
which may be recovered, obviates the objection which is sworn
to have existed in going on further with some other cases
and Raving a trial on them.

On the last circuit, where an answer like this was put in,
and the parties did not agree to form an issue to be tried by
a jury, out of the equity side of this Court, I directed that
unless a suit at law was brought at the next term to try the
legal title, the idjunction should then be dissolved. See Orr
V. Merrill, 1 Wood. & Min. 376 ; Perry v. Truefitt, 6 Beav.
418; 9 Jurist, 717; 3 Mylne & Craig, 739 ; 6 Jurist, 269 ;
Casswell V. Bell, 2 Bailway Cases, 782, and Clarence R. Co.
v» Junction R. Co., Ibid. 763.

I am ready to do the same here, but see no sufficient
grounds for ordering it to be dissolved at this time, when
there appears so decided a balance of testimony in favor of
the plaintifli' \eg^l rights to this patent.

Wilton v. The Railroads.

[I Wallace, 192. October T. 1847.]

Evidence under Patent Act — Practice.

The 15th section of the Act of Congress of Jnlj 4, 1836, commonly caUed the
Patent Act, does not require notice of the names and places of residence of
the witnesses, by whom it is intended to prore a prior knowledge and use of
the thing patented.

In this soit, which was one for an infringement of a patent«-

54*

642 PATENT CASES.

Wilton V. The Railroads. 1 WaUace.

♦ ^

right, the defendants pleaded the general issue ; and relying
in their defence upon a previous use and knowledge of the

thing patented, gave notice to the plaintiffs under
[ * 193 ] the act of Congress,* that • they would offer proof

upon the trial, that it had been publiclj used at
certain places which they named, and that a prior knowledge
of it was possessed by certain persons whom, together with
their places of residence, they also named : But the notice
did not specify the names nor residences of the toitnesmiy
whom it was intended to prove what was thus notiGed.

The act of Congress ^ which allows this defence and notice
says : " Whenever the defendant relies in his defence on the
fact of a previous invention, knowledge, or use of the thing
patented, he shall state in his notice of special matter the
names and places of residence of those whom he intends to
prove to have possessed a prior knowledge of the thing, and
where the same had been used.''

McdUry now calling upon a witness to prove where
and by Whom the thing had been used, Mr. Hazlehurst ob-
jected to the testimony, because the name and residence of
the witness had not been given. He cited Greenleaf on
Evidence,^ where it is said "the facility with which this
defence " (of prior use,) '^ may be made, affords a strong
temptation to the crime of subornation of perjury ; to pre-
vent which the defendant is required to state, in his notice,
the names and residence of the witnesses by whom the alleged

1 Of July 4th, 18S6, § 15, 5 Statutes at Laige, 123, that tlie defend-
ant shall be permitted to plead the general issue, and to give any special
matter in evidence of which notice in writing may have been given thiitjr
days before the trial, tending to prove that the thing patented had been in
public use, &c.
, a July 4th, 1836, § 15. 3 Vol. TL § 501.

PATENT CASES. 643

Wflton V. The Bailroads. 1 Wallace.

previous invention is to be proved." He cited also The Phil-
adelphia and Trenton Railroad v, Stiropson,^ in the Supreme
Court of the United States. The Court below bad rejected
the testimony of one White, for want, says the Reporter, ^^ of
Uie notice required by the act of CongreaSy of the
*U8e of the machine at Mauch Chunky at which [ * 194 ]
plcux it was said his testimony would show it had
been used." This report, Mr. Hazlehurst thought, did not
show precisely what notice was or was not given, but Judge
Story in giving the opinion of the Court clearly did. '' There
is DO proof on the record," says that judge, '< that notice had
been given according to thie requirements of the atatute^ that
White was to be a witnesa^^^ &c. ^' Uqless auch notice was
given, it is plain that the examination could not rightfully be
had." What notice does the Court here mean, as being
within ^'the requirements of the statute?" Clearly '< that
White was to be a witness." Dr. Greenleaf, without quoting
this case, yet seems to have the same notion of the require-
ments of the act. Indeed, if a witness knowa^ i. e., legally
knows, of another man's discovery, he himself knows of the
discovery, and the notice ought to be given.

Meredithy contrd. There has been a misconception of the
act by Judge Story and by Dr. Greenleaf who follows him.
The case cited,^ shows that the ground of the rejection of
White's testimony, was because notice was not given of a use
of the machine at Mauch Chunk. White was, himself, the
person who had used it there, and his name ought to have
been given, not as a witness, but as that of a .person who
^^ possessed a prior knowledge of the thing." The point

1 14 Peters, 448, 459, anU, 46.

9 The Philadelphia & Trenton Railroad v. Stimpapn, 14 Peters, 448,
459, ante, 46.

644 PATENT CASES.

Aiken v. Bemis. 3 Wood. & Minot

adjudged was as to the ^' place" The langoage of the Court
or rather the judge who delivers the opinion of the Coort,
is loose, and goes for what it is worth*

[ * 195 ] * Grier, J. The language of the act, I think,
requires nothing more than the names and resi-
dences of the persons who possessed the prior knowledge of
the thing patented, and the name of the place at which it
had been used. It would be unreasonable to extend it, unless
it clearly required us to do so, to the names and residencet
of all the witnesaea whom the defendant meant to sammon.
The other requisition is reasonable enough, and was intended
to guard against surprise from such evidence as was given in
Whitney's case.^ Though Mr. Whitney's cotton-gin was an
invention of perfect originality, two persons were yet brought
forward, one of whom testified that he had seen a similar
machine in England seventeen years before, and the other
that he had seen one in Ireland.

It would have been quite enough in order to disprove it,
that the other side had had notice of the place at which, and
the name of the party by whom, the alleged prior nuchine
was used.

Hebrick Aiken v. S. C. Bbmis.

[3 Woodbury and Minot, 348. October T. 1847.]

A new trial wil} not be granted on the ground that the yeidict is against the
weight of evidence, if there was some to be weighed on both sideSi vsisx
some dear mistake is shown, or some manifest abuse of power.

Where the action is for a misfeasance in violating a patent, and $2,000 dsmsges
are given, the Court will not set it aside on the ground that thej are excel*
sive, unless they are plainly and laigely beyond tiie injuiy inflicted.

1 Whitney v. Fort, A. D. 1807 ; Fessenden on Patents, ed. 1822,.p. M»

PATENT CASES. 645

Aiken v: Bemis. 9 Wood. & Minot.

* The declarations of a penon aa ka agent, in relation to the business [ *349 ]
intrusted to him, and made at the time when so intrusted, are com-
petent conceming it in an action by a third person against the principal, as
a part of the res gestcs, if they relate to the act clearly.

A new trial will be granted for newly-discoyeied eyidence, if there was not
gross neglect in not procuring it at the first trial, and if it is not merely
cumulative. Evidence is cumulative if it relates to the same subordinate or
specific fact, to which proof was before adduced of a like character, but not
when it is a new ftict respecttog the general question or point in issue.

Where depositions or affidavits aire taken with notice in conformity to a special
order, but when the opposite side was not able to confer with his counsel
and attend, they will be admitted with the condition that the opposite party
have time to take them over again and cross^xamine the witnesses.

Costs of the former trial must usually be the terms for a new trial on the
ground of newly-discovered evidence.

Where a patent for a saw-set describes it as having a hammer of iron with a
steel point, and says nothing of any other material or equivalents, and the
CTidence was, that a hammer entirely of steel had first been tried and aban-
doned by the patentee, before taking out his letters in this form, doubts
exist whether saw-sets made by the defendant with hammers entirely steel
are a Tiolation.

This was an action on the case for violating a patent of
the plaintiflf.

The letters were averred to have been obtained May 24th,
1830, for '^a new and useful improvement on the saw-set/'
and the infringement to have been made in A. D. 1837 and
1838.

At the trial here, at the last May term, before Sprague, J.,
the patent was given in evidence and described as consisting
of a hammer, a shank, a regulating screw and spiral spring.
It is not necessary to describe either of them, except that the
hammer was to be of iron with a steel point.

Much testimony was put in tending to prove that saw-sets
similar to this had been known and used a few years before
the date of these letters, and other testimony by the plaintiff
to raise a presumption that some of the saw-set machines,
which, by some of the witnesses of the defendant, were sworn
to have been used earlier, were probably made by the plain-

646 PATENT CASES.

Aiken v. Bemu. S Wo6d. &

[ * 350 ] tiff, after bis invention and the * maturing of his
saw-set, which happened about two years previous
to the taking out of his patent.

The evidence, showing an infringement by the defendant,
proved that the hammers in his saw-sets were all made of
steel, and not in part of wrought iron, and that the plaintifl^
in experiments made before completing his saw-set, found
that steel hammers broke frequently, and wrought-jroo ones
enduring longer, his specification was confined to the last
with steel points. ,

The defendant, therefore moved for a nonsuit od this
ground, which the Court refused. The plaintiff then offered
further proof that the manufiicture by the defendant extended
to six or seven hundred dozen, and that the profit on the sale
of them was $2 per dozen.

In the course of this testimony a witness swore that one
Call, who niade some of these saw-sets, was a foreman for
Bemis, and that Call said he had made a certain number of
them in all, specifying it, and gave to the witness an order on
Bemis for the wages for his work.

The admission of this testimony to that statement about
the number was objected to, but it was allowed to go to the

jury.

A verdict was returned for the plaintiff for $2,000 damages.

A motion was made for a new trial by the defendant,
assigning the following causes.

1. The refusal to nonsuit the plaintiff for the variance in
the hammer described in the specification, from that hamooer
made by Bemis.

2. The admission of Call's declarations as to . the number
of saw-sets made by Bemis.

3. The damages being excessive.

4. The verdict being against the weight of evidence.

5. Newly-discovered evidence since the trial.

PATENT CASES. 647

Aiken v, Bemis. 3 Wood. & Minot.

♦The affidavits as to the oewly-discovered evi- [ •SSI ]
dence were numerous. The oath of the defendant
^showed that this new evidence was not known before the
trial, though one of the witnesses was named in the notice of
the defence, thinking that, as a mechanic, he was likely to
know something on the subject. But he was not talked with
nor summoned. -A portion of the other witnesses resided at
distances not very remote from the defendant

The substance of the newly-discovered evidence was in
depositions taken under an order requiring notice to be given
to the opposite party. Their use was objected to by the
plaintiff, because the notice was so short that his counsel
were unable to see him or confer together before the time
arrived, and to reach the' place of taking them seasonably.
But the Court, on being satisfied no unfairness was intended
by the defendemt in the notice, stated that the depositions
would be admitted conditionally, as they came within the
order.

In this class of inquiries they might, without a special
order, always be ex farte. But the Court said, that, if
admitted, time would be allowed to the plaintiff, under the
circumstances, to take the depositions over again, and cross-
examine the witnesses, if he desired it.

The plaintiff concluded to proceed without doing this.

Among the new witnesses was Ealim Stebbins, who testi-
fied to seeing a saw-set like this, except brass for iron in the
guards, as early as 1820, at Goodnow's, and another, belong-
ing to D. B. Perkins, afterwards.

Another witness was D. B. Perkins, who swore to seeing
one like this as early as 1816, in Waterville, Me., one in
Lancaster, Nk H., in 1826, and one bought in Connecticut in
1828.

The next witness was Jethro Latham, who testified to buy-
ing another saw-set, like this in principle, between 1824 and
1826, in Rhode Island.

648 PATENT CASES.

■

Aiken v. BemU. 3 Wood. & Ifinot

[ * 352 ] * Another new witness^ O. Dickeraon, testified to
seeing, in 1828^ a different, but in some respects
similar saw-set.

Another, A. Blanchard, swore to the making, by faiimeli
and brother, in Palmer, Mass., of a like saw-set in 1826. It
was constructed from a description given hiiu by his brother.
He swore to another made in Springfield, by two machini^
in 1823 or in 1825.

Eli Parsons testified that he bought another similar one a:
Springfield in 1827.

Horace Lee swore to another still in 1830, in Hartford.
Conn., and Dyer White to another, less like the plaintiff's b
form, but with some such principles, made by him in 1819.

The motion was argued at an adjourned session in Septem-
ber, 1847, by Bates and B. R. Curtis in its favor, and B0H&
and J. P. Hale against it.

Woodbury, J. It may not be amiss for the benefit of
these parties, to notice all the grounds assigned here for s
new trial, though we decide the question only on one of tbea*

The cause relied on as to the damages being excessive, &
not so clearly made out as to justify the setting aside of a
verdict in an action for misfeasance. The case migbt be
different in a suit on a contract, as there the rule of damages
is more certain. Some of the data in favor of this large
amount of damages in the present case, were rather loose,
even for a misfeasance, but the sum given in this class 01
cases must be plainly exorbitant, or what is sometimes called
" outrageous/' to require the interference of the Court. Al-
len V. Blunt, 2 Woodb. & Min. 121, and TaylcM- v. Carpen-
ter, Ibid., 1, and cases there cited. 2 Wik 160, 244; 4
Mass. 43 ; 3 Pick. 385 ; 7 Pick. 82 ; Washburn v. GouM, 3
Story, R. 122.

PATENT CASES. 649

Aikea v. Bemit. 3 Wood, it Minoi.

* Another of the causes assigned for a new trial [ * 3&3 ]
is, that the verdict was against the weight of evi-
dence. Thoogh this is sustained by some plausible appear-
ances, it is not shown so clearly as to raise a strong presump-
tion that the jury either wantonly abused tlieir powers, or
made some inadvertent mistake.

These last are the leading tests in such cases. Fearing v.
DeWoIf, ante, 185; 12 N. Hamp. 171 ; 12 Wend. 27; 8
Pick. 122. And where evidence existed on both sides which
was material, and to be compared or weighed, as it did here,
the finding of the jury is not to be disturbed, though the
Court would have oome to a different conclusion upon it
from that of the jury. See the cases cited in Fearing t;. De-
Wolf, and May v. DeWoIf, ante, 185, 193 ; 18 Pick. 13 ; 15
Pick. 291 ; 7 Wend. 270; 1 Sumn. 451 ; 12 N. Hamp. 179.

But the other reasons assigned for a new trial are of a dif-
ferent character, are supposed to be errors in law, and rest
on exceptions entirely disconnected with the finding, or the
(pinion of the jury.

One is a qnestioo arising on the refusal of the Court, in
the progress of the trial, to nonsuit the plaintiff on account of
a variance between his specification and the form or substance
of the machine, which was considered as an encroachment on
the patent

It is well settled that if the machine used by the defendant
differed materially from that described in the j)atei7t, it is not
an infringement Davoll t;. Brown, 1 Woodb. & Min. 53 ;
Webster on Pat 11 ; 4 Barn. & Aid. 540.

Where the patent is for a new combination, and not for
newly-invented parts, a violation must extend to the whole.
16 Peters, 341..

The present was a case of the former character,
for a * combination, and the difference in the patent [ * 354 ]
from the instrument here, consists in this — that the

VOL. ii.»-p. c. 55

650 PATENT CASES.

V. Bemii. 3 Wood. &

hammer of the miw-Bet was aH made of steel by Bemis, and
that all but the point was made of wrooght-iron in the patent

This looks, at the first blush, as not a very material differ-
ence, and one rather colorable or accidental, than desigoed.
1 Sumn. 485 ; *13 Mee. & W. 592 ; Phil, on Fat. 412 ; Pe-
ters, C. C. 394.

But when we advert to the evidence in the ease, it appears
that the use of wrought-iron was found by experiments to he
much better than steel, and was hence patented, and thb,
without making the specification in terms broad enough to
cover steel also.

It is a matter of doubt, therefore, whether the use of an
inferior material for the hammer of the saw-set, when the pa-
tent covers only a superior one, is a legal violation of it
Why should the plaintiff complain of what he had tried bat
deemed too useless or valueless to be adcqited ?

Had the patent extended only to the form or parts of the
saw-set, combined as set out, and made of any kind o( mate-
riak, or saying nothing as to the materials, the right would be
violated by a machine of like form, as the form would be the
sole matter patented.

But when the patentee chooses to go farther, and cover, with
his patent, the material of which a part of his machine is com-
posed, he entirely endangers his right to prosecute when a
different and inferior material is employed, and especially one,
which he himself, after repeated experiments had rejected*
Webster on Pat. 27 ; 4 Manning & Gr. 462 ; 4 Mason, 1 ;
3 Carrington & Payne, 502.

The form of the specification, in this case, extending to the
material at all, was ill-advised, and especially so, without add-
ing, asis us ual, if made of any other material in
[ * 355 ] the * form and combination described. Webster on
Pat 20; 16 Peters, 341 ; 4 Bam. b Aid. 540.

But we do not now decide this case on this point, being

PATENT CASES. 661

Aiktti V. Bemis. 8 Wood. & Hinol.

inclined, if practicable, to let the parties settle their rights on
the merits as to the originality of die patent

Another exception in law to the ruling of .the Court, is the
admission of the declarations pf Call. The ground on which
their admission was sought to be justified, seems to be that
Call was the agent of Bemis, and the declarations of the agent
will often bind the principal.

This ground is sound whenever the person is proved to
have been agent in that particular business, and made the de-
clarations while engaged in it, and in relation to it. They
then became, a part of the res gestcdy and bind the principal
as if made by himself. 12 Wheat. 468 ; 2 Peters, 364 ; Story
on Agency, ^ 134 ; 24 Pickering, 245.

I am inclined to think here, that, in truth these declara-
tions *were made under ^uch circumstances. But their ad-
mission being an exception to the general rule, that a party is
not to be affected by the declarations of third persons, it would
have been well to have shown with more distinctness whe-
ther Call's agency extended to this particular business, and
whether the declarations were made when he was engaged in
it, and not afterwards. 2 Starkie on Ev. 60 ; Greenleaf on
i;v. 144 ; Phil. £v. 103 ; 3 Conn. 250 ; 9 N. Hamp. R. 271 ; ,
4 Pick. 378; 11 Pick. 309.

Passing by this last fact as not so clear either way, as to be
decisive of the motion, I proceed to the other cause for a new
trial, growing out of the new discovery of material evidence
since the trial. On that, it is thought prt^r the jury should
have an opportunity to deliberate, at least once, before dis-
posing finaJly of the rights of these parties. .<

The rules as to such evidence, when sufiicient or
not, ^ to require a new trial, were fully considered [ * 356 ]
and explained in May et al. i;. De Wolf et al. ante,
193.

652 PATENT CASES.

Aiken v. Bemis. 8 Wood, it IGaot

The limitfttions are, that

1. The evidence must not have been knowii before the
trial. 1 Johns. Cases, 402 ; 2 Caines' Gases^ 155.

2. It mast be material. 2 Wash. C. C. 411.

3 It must not be merely eamnlative. 10 Wend. S85.

There is no donbt* here, that most of this new evidence has
been discovered since the trial, and, indeed, a part of it ance
the motion. This is sworn to and not contradicted. It is
true, that in the notice given, one of the witnesses was refer-
red to before the trial, as lilcely to know something on tlie
subject, and others resided near the parties. Bat the testi-
mony is, that it was not then known whether any of tbem
could in truth testify to what is material.

Nor was that known as to some, even when this motion for
a new trial was made. Next, did the defendant employ doe
diligence ?

In a case like this, where the transactions or matter to be
proved about sinrilar saw-sets in use was of such long staod'
ing, being twenty years or more old, and where the defend-
ant was not a party to them, nor supposed to possess any pe-
culiar or f>revioas knowledge of them, I do not see sufficient
ground for imputing to him such negligence as should bar him
from using this evidence. See cases in Fearing et al. v. De
Wolf et al. ante.

And so far from excluding him from the use of any new
evidence not discovered when the motion for a new trial was
made, but ascertained before the hearing of the motion/and
before judgment, certainly when the motion, as here, is broad
enoi^h in form, and early, enough by our rules, the new evi-
dence ought in justice to be considered and weighed with the

rest.
[ ^ 357 ] * It may be regarded as a breach of the role con-
cerning the proof being newly discovered, that if
evidence was not, in fact, known before the other trial, but

PATENT CASES. ^ 653

Aiken v, Bemii. 8 Wood. &

ought to have been, and probably would have been by the
exercise of due diligence, a new trial should not be awarded
in consequence of it.

It is true here, also, that the new witnesses did not reside
very remote. But it is not shown that the defendant knew
previously what they could testify, or had any special reason to
suppose they were able to give useful testimony.

And so far as he might suppose, on general facts and rea-
soning, that most mechanics would be likely to know some-
thing of the subject, he certainly seems to have resorted to
enough of them, and used the testimony of enough at the
trial to show due diligence, so far as required by any general
information or duty.

Nor can there be any question here that the new evidence
is material.

It goes to the very gist of the claim of the plaintiff, the ori-
ginality of his patent. It goes, likewise, to several new saw-
sets, similar in structure, testified to have been in use some
years earlier, besides strengthening the old testimony, as to
some of the old saw-sets proved at the former trial.

The ends of justice, therefore, render it proper that a jury
should, once at least, pass upon this testimony between these
parties, as to saw-sets not sworn to, nor known before, unless
it is what the law regards as merely cumulative.

For it is, as before named, the last and an important con-
dition, as to newly-discovered evidence, that it be not merely
cumulative.

This means, that it be not heaping up farther proof as to
the same point or fact, on which evidence was before offered.
If it only serve to strengthen such old point or fa;ct, and not
to introduce any new on the jury, a new trial is not allowable
on account of it.

* The only difficulty under this rule is, what must [ * 368 ]

65*

654 PATENT CASES.

A&ett V. Bemis. 9 Wood, it Minot.

be considered, in this case, a new point or fiict, and what is
merely cumulative, as to an old one.

When, as here, the general defence is placed on the groond
that the patent of the plaintiff was not original, the roeaoiog
of the rule cannot be to exclude, as cumulative, newly-diaocH
vered evidence of subordinate points or facts bearing on that
general question.

For in such a view, no new trial for hew evidence coold
ever be obtained, all new evidence relating, as it must, if H
be pertinent, to the general ground or general fact putio inoe
before.

But it must mean that new evidence to a subordinate point
or fact is not competent when that subordinate point or par-
ticular fact was before gone into, because it is then cumuh-
tive or additional as to that fact. For example, here it would
be a new point of fact, that a similar saw-set bad been known
and used in Hartford, Conn., in 1820, by the witness, Lee,
because nothing was proved in respect to that saw-set be-
fore.

But it would not be a new point or feet, that a similar saw-
set was known and used in Springfield, in 1827, by PareoDs,
because the point or fact was before gone into by the evi-
dence, and further proof as to that would be merely cuma-
lative.

Much of this new evidence being then as to subordinate
points and particular fttcis not before agitated, cannot be re-
garded as cumulative. 10 Wendell, 285; 1 C!owen, 359;
23 Pick. 248 ; 4 Wend. 579. ^ See the precedents on this
in May et al. t;. De Wolf, ante ; 6 GreenK 479 ; 1 Sumn.
451, 482, 491 ; 10 Wend. 294; 6 Pick. 114; 24 Pick.
246-8.

The new particular facts or cases of the prior use of snch
a saw-set sworn to, are on the face of the affidavits very strik-
ing and numerous.

PATENT CASES. 655

Hogg «t aL «. Bmenon. • How.

* Thej maj all be disproyed or coDtradieted at the [ ^ 859 ]
trial, but they are proper to be brought to such a
test.

They make out, primd faciei one of the strongest cases to
be found in the history of new trials for this cause, and re-
quire us, therefore to grant the motion.

But in these cases of new trials for newly-discovered evi-
dence, the terms are usually that the costs t>f the former trial
be first paid. See the cases in Fearing et al. v. De Wolf et
al. S Wood. & Min. ante.

Another reason for such terms here is the near residence
of the new witnesses, and not obtaining them. before.

Though some other causes seem to unite in rendering a
new trial just, yet as this is the principal and decisive one,
we think those costs ought first to be paid, unless the defend-
ant can offer some satisfactory reason for difierent terms.

If no such reason be offered during the session, the new
trial will be allowed on paying such costs.

Peter Hogg and CoRNSLros H. Delamater, PLAiirrirFs

IN ERROR, V, John B. Emerson.

[6 Howard, 437. Jaonarj T. 1848.]

When a case is tent to this Court vnder the discretion conferred upon the
Conrt below, hy the serenteenth section of the Act of Jnlj 4, 1886, (Patent
Law,) 5 Stat at Laige, IS4, the whola case comes up, and not a few points
only.

The specification constitutes a part of a patent, and thej must be construed
together.

Bmerson^a patent for ^ certain iniproTements in the steam-engine, and in the
mode of propelling therewith either vessels on the water or carriages on the
land,** decided not to cover more ground than one patent ought to cover, and
to be sufficiently clear and certain.

6S6 PATENT CASES.

Hogg et aL v. Emenon. 6 How.

A patentee, wlioee patent-right has been Tiolated, maj recoTer damages for
snch infringement for the time which interrened. between the destmctioo of
the Patent Office by fire, in 1836, and the lettoration of the records nnder
the Act of BCarch 3, 1 837 .

This case was brought up, by writ of error, from the Cir-
cuit Court of the United States for the Southern District of
New York. It was a suit for the violation of a patenUrightj
and the writ of erh>r was allowed under the seventeenth sec-
tion of the Act of 1836.

On the 8th of March, 1834, John B. Emerson, the defend-
ant in error, obtained the following letters-patent, (which
were recorded anew on the 5th of March, 1841,) namely:^

The United States of America, to all to whom these letters-
patent shall come :

Whereas John B. Emerson, a citizen of the United States,
hath alleged that he has invented a new and useful improTe^
ment in the steam-engine, which improvement he states has

• not been known or used before his application;

[ ^ 488 ] hath made ^ oath that he doth verily belieie that
he is the true inventor or discoverer of the said im-
provement ; hath paid into the treasury of the United States
the sum of thirty dollars, delivered a receipt for the same, and
presented a petition to the Secretary of , State, signifying a
desire of obtaining an exclusive property in the said improre-
ment, and praying that a patent may be granted for that pur-
pose. These are therefore to grant, according to law, to the
said John B. Emerson, his heirs, administratora, or assigns,
for the term of fourteen years from the eighth day of March,
one thousand eight hundred and thirty-four, the full and ex-
clusive right and liberty of making, constructing, usii%, and
vending to Qthers to be used*, the said improvement, a de-
scription whereof is given in the words of the said John B.
Emerson himself, in the schedule hereto annexed, aad is
made a part of these presents.

PATENT CASES. 657

Hogg et al. V. Emenon. 6 How.

Id testimony whereof, I have caused these letters to be
made patent, and the seal of the United States to be hereunto
aflixed.

Given under my hand, at the. city of Washington,
this eighth day of March, in the year of our Lord
[l. s.] one thousand eight hundred and thirty-four, and of
the independence of the United States of America
the fifty-eighth.

Andrew Jackson.
By the President :

Louis McLane, Secrdary of Slate.

■
■

CiTT or Washington, to wit :

I do hereby certify, that the following letters-patent were
delivered to me on the eighth -day of March, in the year of
our Lord one thousand eight hundred and thirty-four, to be
examined ; that I have examined the same, and find them
conformable to law ; and I do hereby return the same to the
Secretary of State, within fifteen days from the date afore-
said, to wit, on this eighth day of March, in the year aforesaid.

B* F. Butler,
Attorney-General of the United States.

The schedule referred to in these letters-patent, and nak*
ing part of the same, containing a description in the words of
the said John Brown Emerson himself, of his improvement in
the steam-engine : —

To all whom it may concern:

Be it known, that I, John Brown Emerson, of the city of
New York, have invented certain improvements in the steam-
engine, and in the mode of propelling therewith either vessels
on the water or carriages on the land, and that the following
is a full and exact description thereof.

658 PATENT CASES.

Hogg et al. V. Emenon. 6 How.

[ * 439 ] * One object of my improTement is to substitute
for the crank motion a mode of converting the reci-
procating motion of a piston into a continued rotary motion,
by a new combination of machinery for that purpose.

This mode is applicable to an engine either with one or
with two cylinders, and is carried into effect as foliows.
Alongside of the cylinder I place a shaft, the lower end of
which may revolve in a step on the platCm'm. or foundatioD
upon which the cylinder stands; in which case it most be
somewhat longer than twice the length of the cylinder, as it
must extend above it to a height somewhat greater thap ibe
length of the stroke of the piston. Sometimes, however, thii
shaft may have its lower gudgeon only a small distance below
the upper end of the cylinders, whence it must extend above
it as before. Its upper gudgeon must of course be sustained
by a suitable frame. This shaft is to stand parallel to the
piston-rod, from which it is to receive its revolving motion.
Upon the upper end of the shaft, above the top of the cylin-
der, there is to be placed a solid cylinder of wood, or of aoj
other convenient substance, of such diameter as shall cadse
its periphery to come nearly into contact with the piston-rod
for its whole length, when the piston is raised. The solid
cylinder above described is to be made to revolve in the fol-
lowing manner. I make a groove in it, which commences
near its lower end, and, passing spirally, extends half way
round it by the time it reaches nearly to the upper end, or to
a distance vertically equal to the stroke of the engine; frooi
that point it passes down around the opposite half, and
returns into itself at the point of beginning. Upon the upper
end of the piston, against its side, I place a friction-roller,
which is to work in the groove in the solid cylinder; the
piston-rod rising between parallel guide-pieces, by which it is
kept in its proper place, and its tendency, to turn round bj
the action of the roller in the groove is checked. When the

PATENT CASES. 659

' Hogg et al. V. Emenoii. 6 How.

piston is down, this frictionHroIler will stand in the V formed
by the junction of the grooves on the opposite sides, and as it
is raised, it will in its passage to the upper junction give half
a revolution to the solid cylinder, and in descending will
complete the revolution by the action ^of the friction-roller on
the other portion of the groove.

When two cylinders are used, they are to be placed paral-
lel to each other, and at such a distance apart that the pistons
of each may, in like manner, act upon the solid cylinder ; the
piston of one being up when the other is down. The boiler,
the steam-pipe, the valves for the admission and discharge of
steam, and other appendages, may be similar to some of those
already in use. From the revolving shaft, already
described, * a rotary motion may be communicated [ * 440 ]
to paddle-wheels, steam-carriages, or other objects. .
As it is my intention, in general, to place my cylinders and
revolving shaft vertically, I communicate motion to the hori-
zontal shaft of a paddle-wheel by means of bevel-geared
wheels near the lower end, or at any convenient part of the
shaft ; and by similair gearing, carriages may be propelled
upon rail or ordinary roads.

When used for steamboats, I employ an improved spiral
paddle-wheel, differing essentially from those which have
heretofore been essayed. This spiral I make by taking a
piece of metal of such length as I intend the spiral propeller
to be, and of a suitable width, say, for example, eighteen
inches ; this I bend along the centre so as to form two sides,*
say of nine inches in width, standing at right angles, or nearly
so, to each other, and give to it, longitudinally, the spiral
curvature which I wish. Of these pieces I prepare two or
three, or more, and fix them on to the outer end of the pad-
dle-shaft, by means of arms of a suitable length, say of two
feet, more or less, in such a position that the. trough-form
given to them longitudinally shall be effective in acting upon

660 • PATENT CASES.

Hogg et al. V. Emenon. 6 How.

the water. It mast be entirely under water, and operate io
the direction of the boat's way ; instead of metal, the spini
propeller may be formed of wood, and worked into the proper
form, — ^^the shape, and not the material thereof, beiog the
only point of importance.

Where 9 capstan is required, as on board of a steamboat,
I allow the upper end of the vertical shaft before described
to pass through the deck of the vessel, and attach 4he capstaD
thereto, so that it may be made to revolve by the action of
the shaft, using such ray-wheeb and falls to connect the shafi
and the capstan as will allow of their bdng convenientlj
engaged and disengaged.

What I claim as my invention, and for which I ask a pa-
tent, is the substituting for the crank in the redprocaliog
engine a grooved cylinder, operating in tlie manner hereiobe-
fore described, by means of its connection with the piston-
rod, together with all the variations of which this prtncipie »
susceptible ; as, for example, a bar of metal may be bent io
the form of a groove, and attached to the revolving shaft, and
friction«wheels on the piston-rod may embrace this on each
side, producing an effect similar to that produced by the
groove. I also daim the spiral propelling-wheel, contracted
and operating in the manner in which I have set forth ; and
likewise the application of the revolving vertical shaft to the
turning of a capstan on the deck of a vessel. Not intending,
in either of these parts, to confine myself to precise forms or
dimensions, but to vary them in such manner as
[ ^ 441 ] experience or convenience may * dictate, whilst the
principle of action remains unchanged, and similar
results are produced by similar means.

JoHir Bbown Ebieiison.

At April term, 1844, Emerson .brought an action of trespass
on the case in the Circuit Court of the United States for the

PATENT CASES. 661

Hogg et al. V. Emenoo. 6 How.

Southern District of New York, against Hogg and Delamater,
for an infringement of his patent-bright. As one of the points
decided by the Court was whether or not the allegations of
the declaration corresponded with the evidence of the patent,
it is thought proper to insert the declaration. It was as
follows, namely : — •

^' John B. Emerson, a citizen of the State of New York, by
Peter Clark, his attorney, complains of Peter Hc^g and Cor-
nelias Delamater^ citizens of the same State, defendants, in
custody, &C., of a plea of trespass on the case.

^< For that, whereas the said plaintiff was the orfginal in-
ventor of a certain new and useful improvement, in the let-
ters-patent hereinafter mentioned and fully described, the
same being a certain improvement in the steam-engine, and
in the mode of propelling therewith either vessels on the
water or carriages on the landy which was not known or used
before his said invention, and which was not, at the time of
his application for a patent, as hereinafter mentioned, in pub-
lic use with his consent or allowance. And the said plaintiff
being so as aforesaid the inventor thereof, and being also a
citizen of the United States, on the eighth day of March, one
thousand eight hundred and thirty-four, upon due application
therefor, did obtain certain letters-patent therefor, in due
form of law, under the seal of the United States, signed by
Andrew Jackson, then President, and countersigned by Louis
McLane, then Secretary of State, beaming date the day and
year aforesaid, whereby there was secured to him, the said *
plaintiff, his heirs, executors, administrators, or assigns, for
the term of fourteen years from and after the date of the said
patent, the exclusive right and liberty of making, using, and
vending toothers to be used, the said improvement, as by the
said letters-patent in court to be produced will fully appear.
And the said plaintiff further says, that the said defendants,
well knowing the said several premises, but contriving, and

VOL. II. — p. c. 56

663 PATENT CASES.

Hogg et aL V. Emenon. 6 How.

wrongfully and injuriously intending to injure the phuntiflT,
and deprive him of the profits, benefits, and adYantagea which
he mighty and otherwise would, have derived and acquired
from the making, using, and vending of the said invention or
improvement, after the making and issuing of the said Ietln»-

patent, and within the term of fourteen years in said
[ * 442 ] letters-patent, mentioned, to wit, on the * first clay

of January, eighteen hundred and forty, and on
divers other days and times between that time and the com-
mencement of this suit, at the city of New York, and within
the southern district of New York, wrongfully and unjustly,
without the leave or license, and against the will, of the plain-
tiff, made and sold divers, to wit, ten machines for pr<^>elling
boats, in imitation of the said invention and improvement, or
a part of the said invention or improvement, to the benefit,
use, and enjoyment whereof the said plaintiff was and is
entitled as aforesaid, in violation and infringement of the said
letters-patent, and of the exclusive right and privil^e to
which the plaintiff was and is entitled as aforesaid, and <u>n-
trary to the form of the statutes of the United States in sudr
case made and provided.

"And the said plaintiff further says, that the said defend*
ants, well knowing the said several premises, but further con-
triving and intending as aforesaid, after the obtaining of the
letters-patent by the said plaintiff as aforesaid, and within the
said term of fourteen years, to wit, on the said first day of
January, eighteen hundred and forty, and at divers other
times between that day and the commencement of this suit,
within the southern district of New York aforesaid, wrong-
fully and unjustly, without the leave or license, and against
the will, of the plaintiff, did make and sell divers, to wit, ten
improved machines for propelling boats or vessels upon the
water, constructed in a similar form and acting upon the same
principle as the said machine or improvement, to the benefit.

PATENT CASES. 663

Hogg et al. V. Emenon. 6 How.

use, and enjoyment whereof the said pl&intiff was and is
entitled by his said letters-patent, as aforesaid, in violation
and infringement of the exclasive right so secured to the said
plaintiff by the said letters-patent as aforesaid, and contrary
to the form of the statute in such case made and provided.

"And the said plaintiff further says, that the said defend-
ant, well knowing the said several premises, but contriving
and intending as aforesaid, after the obtaining of the said let-
ters-patent by the said plaintiff as aforesaid, and within the
said term of fourteen years, to wit, on the said first day of
January, eighteen Hundred and forty, and at divers other
times between that day and the commencement of this suit,
in the southern district of New York aforesaid, wrongfully
and unjustly, and without the consent or allowance, and
against the will, of the plaintiff, did imitate in part and make
a certain addition to the said invention or improvement, to
the benefit, use, and enjoyment whereof the plaintiff was and
is entitled as aforesaid, in breach of the said letters-patent,
and in violation and infringement of the exclusive
Aght and prjivilege so secured to the said * plaintiff [ * 443' ]
as aforesaid, and contrary to the form of the statute
in such case made and provided.

" By means of the committing of which said several griev-
ances by the said defendants as aforesaid, the said plaintiff is
greatly injured, and has lost and been deprived of divers
great gains and profits which he might and otherwise would
have derived from the said invention and improvenient in the
said letters-patent described and set forth, and in respect
whereof he was and is entitled to such privilege as aforesaid,
and was and is otherwise damnified to the damage of the said
plaintiff of ten thousand dollars, and therefore,'' &c.

To this declaration, the defendants pleaded the general
issue, and filed a copy of the special matters of defence to
the action.

664 PATENT CASES, i

Hogg et al. V. Emenoii. 6 How.

In May, 1847, the cause came on for trial. The patent
was given in evidence, wlien the counsel for the defendants
prayed the Court to instruct the jury that the patent, thai
produced in evidence by the said plaintiff, was void, for the
reasons following: —

1 . That the claim of the plaintiff, as set forth in his speci-
fication annexed to his letters-patent, embraces the entire
spiral paddle-wheel ; the claim is, therefore, too broad upoa
the face of it, and the letters-patent are void upon this ground,
and the defendants are entitled to a verdict.

2. That the patent is void upon its face, for this, — that,
purporting to be a patent for an improvement, and specifyiog
that the invention is of <^ an improved spiral paddle-wheel,
differing essentially from any which have heretofore been
essayed," without pointing out in what the difference coo-
sists, or in any manner whatever indicating the improvement
by distinguishing it from the previously essayed spiral paddle-
wheels, it is wanting in an essential prerequisite to the validity
of letters-patent for an improvement.

3. That the patent is void upon its face, for this, — that it
embraces several distinct and separate inventions, as improve-
ments in several distinct and independent machines soscepo-
ble of independent operation, not necessarily connected with
each other in producing the result arrived at in the inveD-
tion, and the aubject-matter of separate and independent
inventions.

4. It appears in evidence, that the drawing and model of
the paddie-wheel of plaintiff, filed and deposited originally io
the Patent Office, had been lost by the destruction of ibB^
ofilce in December, 1836, and that in restoring the record of
the patent, under the Act of March, 1837, the plaintiff sent
from New Orleans to the office a new drawing, to be &^^
the 5th of May, 1841, together with a court copy ^^^^
letters-patent which were deposited in the office. '^^

PATENT CASES. 665

Hogg et al. V. Bmenon. 6 How.

drawing was not * sworn to by the plaiatiff, but [ ^ 444 ]
remained in the office till Januarjif 1844, when
it was delivered to an agent of the plaintiff and sent to New
Orleans, and sworn to by him, and filed in the department on
the 12th of February, 1844. On an examination subse-
quently by the plaintiff, it was discovered that this drawing
was imperfectly made, and thereupon a second drawing was
procured by him, which he claimed and offered to prove to
be an accurate one, and was sworn to, and filed on the 27th
of March, 1844, an authenticated copy of which was offered
in evidence on the trial by the plaintiff; which was objected
to by the counsel for the defendants, but the objection was
overruled and the evidence admitted, to which an exception
was taken.

5. That if from the evidence the jury are satisfied that no
propelling-wheels were made by the defendants between the
27th of March, 1844, the date of the alleged completion of
the record of the plaintiff's patent, under the Act of March
3d, 1837, and the commencement of this suit in April follow-
ing, that, upon this ground, the defendants are entitled to a
verdict.

The Court charged, in respect to the instructions prayed
for, that " the claim of the plaintiff was for an improvement
on the spiral paddle-wheel or propeller ; that, by a new ar-
rangement of the parts of the wheel, he had been enabled to
effect a new and improved application and use of the same in
the propulsion of vessels ; that the ground upon which the
claim is grounded was this : it is the getting rid of nearly all
the resisting surface of the wheels of Stevens, Smith, and
others, by placing the spiral paddles or propelling surfaces on
the ends of arms, instead of carrying the paddles themselves
in a continued surface to the hub or shaft. It is claimed that
a great portion of the old blade not only did not aid in the
propulsion, but actually impaired its efiiciency, and also that

^ 56*

666 PATENT CASES.

Hogg e( aL v, Enenon. 6 Hov.

the improved wheel b made itronger. It was made a (fies*
tion on the former trial, •hether the phintiff did Eiotclun,or
intend to ebim, the entire wheel. But we understaad it to
be for an improvement upon the spiral paddle wheel, claimed
to be new and useful in the arrangement of its parts, and
more effective, by fixing the spiial paddles upon the extfemity
of arms, at a distance from the shaft"

The Court further instructed the jury, that " the descrip-
tion of the invention was sufllcient, and that the otjectioii,
that the parts embraced several distinct discoveries, was on-
tenaUe."

The Court further charged, " that the damages were not

necessarily confined to the making of the wheels between

March, 1844, when the drawings were restored to the Patent

Office, and the bringing of the suit. Such a lisii-

[ * 445 ] latioa assumes * that there can be no inlriBgeiaeot

of the patent after the destruction of the records,

in 1836, until they are restored to the Patent Office, and that,

during the intermediate lime, the rights of patentees wouU

be violated with impunity." We do not assent to this view.

In the first place, the act of Congress providing for the
restoration was not passed tiU 3d March, 1 837 ; and ifi the
second place, in addition to this, a considerable time must
necessarily elapse before the act would be generally knowo,
and then a still further period, before copies of the drawings
and models could be i^ocured. Patentees are not responsi-
ble for the fire, nor did it work a forfeiture of their rights.

The ground for the restriction claimed is, that the commo*
nity have no means of ascertaining, but by a resort to the
records of the Patent Office, whether the construction of a
particular machine or instrument would be a violation of the
rights of others, and the infringement might be innocently
committed.

But if the embarrassment happened without the fiiult of

PATENT CASES. 667

Hogg «t al. V. Emenoo. 6 How.

the putentee, be is not responsiUe for it ; nor is the reason
applicable to the case of a patent that has been published ,
and the invention known to the pnblic. The specification in
this case had been published. It is true, if it did not suflSl-
ciently describe the improvement without the aid of the
drawing, this fact would not help the plaintiff. If there had
been unreasonable delay and neglect in restoring the records,
and in the mean time a defendant had innocently made the
patented article, a fair ground would be laid for a mitigation
of the rule of damages, if not for the withholding them alto-
gether ; and^the Court left the question of fiict as to reasona-
ble diligence of the patentee or not in this respect, and also
all questions of fact involved in the points of the case for the
defendants, to the jury.

The counsel for the defendants excepted to each and every
part of the charge of the Court, so far as said charge did not
flidopt the prayer on the part of the defendants.

The verdict of the jury was, that the said Peter Hogg and
Cornelius Delamater, the defendants, are guilty of the pre-
mises within laid to their charge, in manner and form as the
said John B. Emerson hath within complained against them,
and they assess the damages of the said plaintiff, on occasion
thereof, over and above his costs and charges by him about
this suit in this behalf expended, at one thousand five hun-
dred dollars, and for those costs and charges at six cents.

The judgment of the Court was, that the said John B. Emer-
son do recover against the said Peter Hogg and Cornelius
Delamater his damages, costs, and chaiges in form
aforesaid * by the jurors aforesaid assessed, and also [ * 446 ]
three hundred and twenty-four dollars and fifteen
cents, for his said costs and charges by the said court now
here adjudged of increase to the said John B. Emerson, and
with his assent ; . which said damages, costs, and charges, in
the whole amount to one thousand eight hundred and twenty-
four dollars and fifteen cents.

668 PATENT CASES.

Hogg et aL v. Smenon. 6 How.

The cause was argued in this court, in printed aigofnents,
by Upian and Jo&ii O. Sargeni^ for the plaintiffs in error, and
Morton and CuiKng^ for the defendant in error. The argo-
menta were too voluminous to be reported in extensoy and it
is not possible, therefore, to give more than extracts from
each.

The counsel for the plaintiffs in error assigned as errors the
following points.

1. The defendant in error has no patent for an improTed
spiral paddle wheel.

II. If the defendant's patent is for the combination of io-
struments described in the specification, there is no preteDoe
that the combination has been infringed ; if for several sepa-
rate improved machines, it cannot be supported in law.

III. Defendant's patent is void for too broad a claim, aad
for not distinguishing his alleged improvement from other
inventions, nor particularly specifying, as the statute requires,
the particular improvement which he claims as his own in*
vention or discovery. The case exhibits an improvemeotas
the invention, and the claim is for the whole machine.

IV. The drawing filed March 27th, 1844, was not legal
evidence of defendant's patented invention, because there
was a drawing filed by the patentee on the 12th of February
previous, which was by the second section of the Act of
1837, with his letters-patent, the only legal evidence of his
invention, as patented, that could be offered in any judicial
court of the United States.

y. — 1. The patentee, after an alleged correction of the
record of bis letters-patent, by filing the second drawing)
could not, in law, avail himself of that alleged correction to
cover by it alleged causes of action previously accruing; umI
in the absence of proof of any subsequent infringements, the
plaintiffs here were entitled to a verdict below.

2. Nor was he entitled to recover damages for any aliped

PATENT CASES. 669

■

Hogg et al. V. Emerson. 6 How.

iDfringement prior to the alleged compleiUm of his record by
the filing of the corrected drawing of 27th March, 1844.

VI. What was reasonable time in this case for the restora-
tion of defendant's patent to the office, if not ex-
pressly fixed * by statute (Act of 1837, sec. 2,) was [ * 447 ]
exclusively a question of law.

Upton, for plaintiffii in error.

■

I. This action was brought to recover damages from the
defendants below, for their asserted infringement of an alleged
patent of the plaintiff for " an improved spiral paddle-wheel ; "
and the first question to which the attention of the Court is
requested is one which is presented upon )he face of the let-
ters-patent, which constitute the basis of the action, and
which are incorporated into the bill of exceptions ; it is this :
Has the defendant in error any such patent?

If it be manifest to this court, upon an inspection of the
record and an. examination of the letters-patent, that he has
no grant, as patentee, of '^ an improved spiral paddle wheel,"
then it is submitted, that there is no escape from the neces-
sity of reversing the judgment which has been rendered,
awarding him damages for the invasion of such a grant.
This necessity is in no manner affected, though it appear that
the objection was not taken in the Court below, either at the
trial or upon a motion in arrest of judgment. It is sufficient
if the defect be manifest upon the record ; for it would be
monstrous to contend that this court is powerless, in any case,
to reverse the judgment when it appears upon the record
before them that the very foundation of the judgment is so
incurably and fatally defective as to have been completely
beyond the remedy of the party, though the objection were
taken at the earliest possible stage of the proceedings. Au-
thority can scarcely be necessary to sustain this position.
But this court has decided, in the case of Slacum t;. Pomeroy,

670 PATENT CASES.

Hogg et at V. Emeraoo. 6 How.

6 Cr. 221^ that it is not too late to allege as error in the Su-
preme Court a defect which ought to have prevented the
rendition of the judgment in the Court below. ^ Had iba
error/' say the Court, ^' been moved in arrest of judgment, it
is presumable the judgment would have been arrested ;" and
" there can be no doubt, that any thing appearing upon the
record whiA would have been fatal upon a motion io arrest
of judgment is equally faital upon a writ of error." So also
Garland i^. Davis, 4 Howard, 13 K

By the bill of exceptions it appears, that, upon the intro-
duction in evidence of the letters-patent by the plaintiff, " the
counsel for the defendants did insist before the sard Circoit
Court, on behalf of said defendants, that the said letters-
patent so produced and given in evidence on the part of the
said plaintiflf, as aforesaid, were wholly insufficient as the
basis of the aforesaid action and claim upon the said defend-
ants.'' Now, by reference to the letters-patent,
[*448] (page 7 of the record,) the •Court will perccife
that the grant to the patentee, upon the face of the
letters, is for ^' an improvement in the steam*engine," and for
that alone ; that it was for that alone that he solicited a patent
by petition ; that it was of that improvement only that he
made oath that he was the original and first inventor. • Soch
is the grant, and so is it recorded ; and the public would seek
in vain upon the records of the Patent Office for a patent to
the plaintiff below for '* an improved spiral paddle wheel."

It will not be contended that the letters, standing aJone,
confer any title to such an invention. But it may be said,
that, inasmuch as the patentee has described a paddle wheel,
and also an improved method of causing a capstan to revolve
upon the deck of a vessel, as well as his improvement in the
steam-engine, and claimed these, as well as his steam-engine,
in his schedule annexed to the letters-patent, the grant must
be construed to cover the paddle wheel and the capstan, as

PATENT CASES. 671

Hogg et aL V. Emeifon. 6 How.

well as the steanorengine, though it be in express terms for
the steam-engine only, though it was for that alone that he
solicited a patent, and it was that alone that he made oath
he had invented. Were this doctrine maintainable, it is ob-
vious that it wopid be wholly subversive of the policy of the
law, which looks as well to the protection of the public as it
does to the encouragement of inventors. That the schedule
annexed to letters-patent forms a part o^ the patent, and that
they are to be construed together, is undoubtedly well estab-
lished. This is the English doctrine, as well as that of our
own courts ; and, by a careful investigation of the authorities,
it will be perceived that Mr. Phillips, in his elementary work,
(pp. 224, et seq.f) is mistaken in supposing that there is any
conflict between them.

By these authorities it is decided, that the title of the in-
vention, as contained in the patent, may be explained by its
description in the specification, whenever such title is general,
ambiguous, or uncertain ; and the patent will be sustained in
all cases, unless the patent indicate one invention, and the
specification describe another and different invention. Ameri-
can authorities. — - Phillips on Patents, 224, and cases cited ;
Sullivan v. Redfield, Paine C. C. R. 442; Shaw v. Cooper,
7 Peters, 292, 315; Ii;vans v. Chambers, 2 Wash. C. C. R.
125; Barrett!;. Hall, 1 Mason, 476; Whittcmore v. Cutter,

1 Gall. 437 ; Evans v. Eaton, Peters, C. C. R. 341. English
authorities. — Godson on Patents, 108, 113, and cases;
Neilson v. Harford, Webster, 3 12, and arg. ; Rex v. Wheeler,

2 Bam. & Aid. 350 ; S. C, 3 Merivale, 629 ; Glegg's Patent,
Webster, 1 17 ; Russell i;. Cowley, Webster, 470 ; Househill
V. Neilson, Webster, 679.

When Mr. Phillips says (Phillips on Patents, 225) that any
defect in the title may be remedied by the specifi-
cation, what * he means is apparent by reference to [ * 449 ]
the cases which he cites. The desctiption comes

67S PATENT CASES.

Ho0 el al. 9. Emerton. 6 How.

in aid of a defective title, but never can oreate a new title,
by adding to the grant. There must be such a confonnitj
between the title and the specification as that the former shall
give some idea of the latter. It is the description of the thing
patented ** which is made part of these presents/' not a
description of something else, of which the title of the grant
gives no idea.

Thus reads the patent itself. After reciting that Joka
Brown Emerson had by petition solicited a patent for an im*
provement in the steam-engine, had made oath that be was
the first and original inventor of said improvement, and paid
the fee of thirty dollars into the treasury, it grants to him the
exclusive right, &c., in the said improvement, *^ a descriptioo
whereof is given in the words of the said John Brown Emer-
son himself, in the schedule hereunto annexed, and is madea
part of these presents." Then follows the caption of the
schedule, thus : — *' The schedule referred to in these letten-
patent, and making part of the same, containing a descriptioo
in the words of the said John Brown Emerson himself of his
improvement in the steam-engine."

No reported authority can be found in the remotest degree
sustaining the proposition, that a description and claim of aoj
thing contained in a specification are covered by the grant,
though the grant make no reference to it, and the title is so
entirely distinct from it as to suggest no idea of the ihiog
described. Were this proposition tenable, then were we to
strike out from this patentee's specification every word de-
scriptive of his improvement in the steam-engine, leaviog
nothing but the comparatively fow words descriptive of the
spiral paddle wheel and the improved capstan, the grant for
the improvement in the steam-engine m'ust be construed as a
grant for an improved spiral paddle wheel and an improved
capstan. Now, would it not be monstrous to contend that
an instrument of so solemn a character as a government giaot

PATENT CASES. 673

Hogg et al. V. Emenon. 6 How.

of letters-patent is to be added to and enlarged by construc-
tion ?

The doctrine as settled, upon every principle of construc-
tion, is the true doctrine ; — that the description of the thing
patented, contained in the schedule annexed to the patent,
constitutes a part of the patent, and may be and should be
resorted to, in construing the patent, to control the generality
of the title and to explain or elucidate ambiguities or uncer-
tainties ; but that a description of a thing not indicated by
the patent, not even remotely suggested by the grant or
the title, can never be construed with the patent for the pur-
pose of adding to or enlarging the terms of the grant.

* That this doctrine may be made more obvious [ * 450 J
and conclusive, — if it be possible or desirable, —
the Court is referred to the provisions of the statute under
which the letters-patent in this case issued.

The inventor is required to present his petition soliciting
the patent, and to make oath that he is the inventor. The
statute further requires that the letters-patent shall recite the
allegations and suggestions of the petition, and give a short
description of the invention. This requisition was obviously
for the twofold purpose, Ist, that it might appear that the
proper preliminary steps had been taken by the applicant, of
which the recital in the letters was proof; and 2d, that it
might, on their face, be seen what was the nature and cha-
racter of the grant. (Act of 1793, ^^ 1, 3.) Now, did this
patentee present his petition, soliciting a patent for an im-
proved spiral paddle wheel, and make oath that he was the
inventor of that improvement ? If it be answered that he did,
then the positive requisition of the statute is not complied
with, for the patent recites the allegations and suggestions of
no such petition, and gives a short description of no such in-
vention ; and for this reason the patent would be absolutely
void.

VOL. 11.-^ p. 0. 57

674 PATENT CASES.

Hogg •! at V. Emenott. 6 Hbv.

This b well established in the followii^ cases : -^ Emu t
Eaton, Peters, C. C. R. 340 ; Kneiss v. Schaylkill Bank,
4 Wash. C. a R. 9 ; Catting et al. v. Myeni, 4 Wish. C. C.
R. 330 ; Evans t;. .Chambers, 2 Wash. C. C. R. 125.

If the letters^patent do recite the allegatioos and sugges-
tions of the petition, then the patentee did not solicit a patnt
for '^an improved spiral peddle wheel" or an ''imprefed
capstan ; " he did not make oath that he had invented these
improvements, and hence the letters contain no descriplioo
whatever of these improvements, and confer no giant of an
exclusive right in them upon the patentee.

(The counsel then quoted largely from the opinion of Jods^
Washington in Evanff v. Eaton, Peters, C. C. R. 340.)

IL At the trial, the defendants' oounsel requested the C<vt
to instruct the jnry, " that the patent of the plaintiff was voi<l
upon its face, for this, — that it embraces several distinct and
separate inventions, as improvements in several distinct and
separate machines susceptible of independent opeiatioD, aod
not necessarily connected with each other in produdog tli^
result aimed at in the invention, and the subject-matter of t^
parate and distinct paten is J* The Court charged the jarj that
" the objection that the patent embraced sevend distinct diseo-
veries is untenable." In this it is respectfully sobmitted that
that the Court below erred.

(The counsel here cited and commented on Phil-

[ « 451 ] lips on « Patents. '' It is well settled, that two or

more distinct machines, capable of indepeodent

operations, cannot be united in one patent." 3 Wheat. 454;

1 Mason, 447 ; 2 Mason, 112 ; IStory, 290.)

III. At the trial of this case, the counsel for the defeodants
requested the Court to instruct the jury *^ that the claim of
the plaintiff, as set forth in his specification annexed to his
letters-patent, embraces the entire spiral paddle wheel ; the
claim is, therefore, too broad upon the face of it, and the let-

PATENT CASES. 675

A)gg M ftL V. EmenoA. 6 How.

ters-patent are void upon ibis groand.^' , Upon tbii point the
Court charged the jury as follows : — ''It was made a ques*
tion on the former trials whether the plaintiff did not ckim
the entire wheel ; but we understand it to be for an improve-*
meht upon the spiral paddle wheel, daimed to be new and
useful in the arrangement of its parts, and more effective, by
filing the spiral paddles upon the eitremity of anus, at a dis-
tance from the shaft."

IV. At the trial, the counsel for the defendants also re-
quested the Court to instruct the jury, " that the patent is
void upon its face for this,* — that, purporting to be a patent
for an improvement, and specifying that the invention is of
an improved spiral paddle wheel, * differing essentially from
any that have heretofore essayed,' without pointing out in what
the difference consists, or in any manner whatever indicat-
ing the improvement by distinguishing it from the previously
essayed spiral paddle wheels, it is wanting in an essential pre-
requisite to the validity of letters-patent for an improvement."
Upon this point the Court charged the jury as follows : — that
" the claim of the plaintiff was for an improvement on the
spiral paddle wheel, or propeller, — that, by a new arrange-
ment of the parts <^ the wheel, he has been enabled to effect
a new and improved application and use of .the same in the
propulsion of vessels. That the ground upon which the claim b
founded is this : it is getting rid of nearly all the resisting sur-
face of the wheels of Stevens, Smith, and others, by placing
the spiral paddles or propelling surfaces on the ends of arms,
instead of carrying the paddles themselves in a continued sur-
face to the hub or shaft. It is claimed that a great portion
of the old blade not only did not aid in the propulsion, but
actually impaired its efficiency, and also that the improved
wheel is much stronger." And the Court further charged
the jury, that <' the description of the invention was suffi-
cient."

i
1 1

676 PATENT CASES.

Hogg et aL v. Emerson. 6 How.

Upon these two points, it is sabmitted that the Court be-
low erred. They are so connected^ by reason of the peculiar
circamstances of the case, that they will be presented and
considered together, though they are distinct grounds of ob-
jection to the patent.
[ * 453 ] * (The counsel then contended that the specifi-
cation ought to be construed by itself, and be bo
clear as to be understood without resorting to eWdenoe or aoj
other source of information, and cited : — English AuthorilkL
McFarlane v. Price, I Starkie, 199 ; in re Nickeb, Hind-
march on Patents, 186 ; Hill v. Thompson, 3 Meriva]e,622;
S. C, 8 Taunton, 325. American Auihoriiies. Dizoo t.
Moyer, 4 Wash. C. C. R. 69 ; Evans v. Hettick, 3 Wasi.
C. C. R. 425; Lowell v. Lewis, I Mason, C. C. R. 189;
Ames V. Howard, I Sumner, 482.)

This leads to the principle in the law of patents infolded
in the fourth point. It is the positive requisition of the sta-
tute, and has been repeatedly considered and passed opoo b;
the federal judicial tribuna}s.

Before an inventor shall receive a patent, he is required,
" in case of any machine, fully to explain the principle aod
the several modes in which he has contemplated the applied'
tion of that principle or character, by which it may be distin-
guished from other inventions, and shall particularly sp^'J
and point out the particular improvement or combination
which he claims as his own invention or discovery." ^^
requisition of the English law is similar in this respect.

Now, before proceeding to consider whether the paten-
tee, in this case, has complied with this positive and solular/
requisition of the law, the attention of the Court is requested
to the reported cases in which the requisition has receive
judicial construction.

By a careful examination of these authorities, it wui
found established, that, where a patent is taken out for an iw-

PATENT CASES. 6T7

Hogg et al. o. Emenon. i How.

provement, the specification must describe what the improve-
ment is, and the patent be limited to such improvement ; -^ if
the patent includes the whole machinery, it includes more
than the patentee invented, and is therefore void; — that if
the patent be for an improvement in an eiisting machine, the
patentee must, in his specification, distinguish the new from
the old, and confine bis patent to such parts only as are new,
and if both be mixed up together, and a patent is taken for
the whole, it is void ; that, however the authorities may ap-
parently vary in pointing out the particular manner in which
the patentee must specify his improv)9ment| and distinguish
what he claims as new and his invention from what was old
and before known, yet that they are in perfect harmony in
deciding that he must do this in some manner, and upon
the face of the specification. American auihorities. Evans
V. Eaton, 3 Wheat. 454 ; Woodcock v. Parker, 1 Gall. 438;
Whittemore v. Cutter, 1 Gall. 478; Odiome «• Winkley,
2 Gall. 51; Lowell v. Lewis, 1 Mason, 182;
* Barrett v. Hall, 1 Mason, 447 ; Sullivan v. Red- [ * 453 ]
field, Paine, C. C. R. 44 1 ; Evans v. Eaton, .7 Wheat
408 ; Dixon v. Moyer, 4 Wash. C. C. R. 69 ; Isaacs t;. Coo-
per, 4 Wash. C. C. R. 261 ; Cross v. Huntley, 13 Wend.
385; Head v. Stevens, 19 Wend. 411 ; Ames v. Howard,
1 Sumner, 482 ; Kneiss v. Schuylkill Bank, 4 Wash. C. C.
R. 9 ; Morris t;. Jenkins et al. 3 McLean, 250 ; Peterson v.
WMdler, 3 McLean, 248. EngKsh Cases. McFarlane v.
Price, 1 Starkie, 199; Williams v. Brodie, Davies, Patent
Cases, 96, 97 ; Manton v. Manton, Davies, Patent Cases, 349 ;
Hill V. Thompson, 8 Taunton, 325 ; Minter v. Wells, 1 Web-
ster, 130 ; Rex v. Nickels, Hindmarch on Patents, 186.

Now apply the rule of law, as prescribed by the statute and
construed by these authorities, to the patent in this case.
Admit that rule, as most liberally stated, in any reported de-
cision, and the counsel respectfully asks, in what manner,

57*

678 PATENT CASES.

Hogg et al. V. Emerson. 6 How.

upon the face of the patentee's specification, has be dbtiih
guished that which he claims as new, and his invention, from
what was old and before known, or pointed out in what his
improvement consists ? It is most confidently answered, that
he has done this in no manner whatever, neither expresslj
nor by implication, nor by any reference, and it is not in the
wit of man to determine, upon the face of the specification,
what the improvement is which the patentee claims or in-
tended to claim. The Court below, in their construction d
the claim, in charging the jury, say, that the improvement
consists ^< in a new arngigement of the parts." Does this ap-
pear, either in terms, or even impliedly, upon the face of the
description ? So far from this, the last words of the paten-
tee, in his description, are, that the " shape " of the thing is
the ^^ oiily point of importance." The Court further siy,
that this new arrangement of the parts consists in '^ getting
rid of nearly all the resisting surface of the wheel of Stevens,
Smith, and others, by placing the spiral paddles or propel-
ling surfaces on the ends of arms, instead of carrying the
paddles themselves in a continued surface to the bub or
shaft."

Where, upon the face of the description, is there Aiy men-
tion made of Stevens's, Smith's, or of any previoudy invented
wheel, save in the general declarf^tion by the patentee, that
his improved wheel ^' diflfers essentially from any which bare
been heretofore essayed," — a declaration which the Coutt,
in the case of Barrett v. Hall, above cited, declare to be " do
specification at all ? " And* where, upon the face of the spe-
cification, is there the most remote allusion to the <' getting
rid of resisting surface ? "

y. At the trial of the case, <^it appeared in e?i-

[ * 454 ] dence that the * drawing and model of the paddle

wheel of the plaintiflf, filed and deposited original)/

in the Patent Office, had been lost by the destruction of tbat

PATENT CASES. 679

Hogg et aL v. Emenon. 6 Hov.

office in December, 1836, and that, in restoring the record of
the patent, under the Act of March, 1837, the plaintiff sent
from New Orl^ns to the office a new drawing, to be filed
on the 5th of May, 1841, together with a Court copy of the
letters-patent, which were deposited in the office. The
drawing was not sworn to by the phintiff, but remained in the
office till January, 1844, when it was delivered to an agent
of the plaintiff, and sent to New Orleans, and sworn to by
him, and filed in the department on the 12th day of Febru-
ary, 1844. On an examination, subseauently, by the plain-
tiff, it was discovered that this drawing was imperfectly made,
and thereupon a second drawing was procured by him,
which he claimed and offered to prove to be an accurate one,
and was sworn to and filed on the 27th day of March, 1844,
X an authenticated copy of which was offered in evidence on
the trial by the plaintiff, which was objected to by the
counsel for the defendants; but the objection was over-
ruled, and the evidence admitted, to which an exception was
taken."

It is contended, that the Circuit Court erred in admitting
in evidence the second drawing of March 27th, 1844, and in
support of this position, the following considerations are re-
spectfully submitted.

(The counsel then urged, —

That the patentee had exhausted his privilege, when he
swore to the first drawing.

That, if allowed to file more than one one, he might con-
tinue to file them down to the day of trial.

That the first drawing became, by the statute, primd
fade evidence, of the invention, and there could not.be two

such.

That if this patentee had procured a reissue of his patent,
under the third section of the Act of 1837, he would not have
been entitled to the privilege which he now claims, and it is

680 PATENT CASES.

Ho|^ 6t ftl. V. £iii6noiL 6 How.

anfeasonable to suppose that Congress intended to giye greater
privileges under one section than another.)

VI. At the trial of this case, the counsel for the defeodaoti
requested the Court to instruct the jury as follows : — '^ ibat
if, from the evidence, the jury are satisfied that no propeUiog
wheels were made by the defendants between the 27th of
March, 1 844, — the date of the all^^ed completion of the re>
cord of the plaintiff's patent, under tlie Act of March 3d,
1837, — and the commencement of this suit in April follow-
ing, that, upon this ground, the defendants are entitled to a
verdict."

The Court refused to grant this prayer, and left it, as a

question of fact, for the jury to say, whether there

[ * 455 ] had or had * not been unreasonable delay on the part

of the patentee in restoring the record. Now, m

this a question of fact i It is submitted, that it was not, hot

that, under the circumstances, it was purely a question of law,

to be passed upon by the Court*

The record shows, that, from the burning of the Patent
Office, in December, 1836, up to the month of May, 1841,
no step whatever was taken by the patentee to restore ibe
record of his patent, and that he then delayed to complete ik
record until the month of February, 1844* Of couise, there
could have been no dispute as to the fact in connection with
the question of reasonable or unreasonable diligence. Now,
the authorities are clear in establishing this doctrine, — that,
when there is no dispute as to the facts, the questions of rea-
sonable or unreasonable time, or delay, or diligence, are ques*
tions of law for the Court, and not of fact for the jury. The
following caseft are referred to : — Ellis t;. Paige, 1 Pick. 48 ;
S. C. 2 ib. 71, 77, note; Gilbert t;. Moody, 17 Wend. 854;
Reynolds v. Ocean Ins. Co., 2S Pick. 191 ; LivingstoD^
Gilchrist V. Maryland Ins. Co., 7 Cr. 506.

And now as to the charge of the Court, that " the damage

PATENT CASES. * 681

Hogg et al. V. Emenon. 6 How.

were Dot necessarily confined to the making of the wheels be-
tween Marchy 1844, when the drawings were restored to the
Patent Office, and the bringing of this suit" Is not this error ?
Why was the drawing of March 27th, 1844, filed in the Pa-
tent Office ? For the reason only, as avowed, that the draw-
ing of February preceding was incorrect and defective. For
the reason only, that the j>ublic had no notice, or, what is
still worse, that the public had an imperfect and deceptive
information, by the first drawing of the particulars of the pa-
tentee's invention. Would it not be monstrous to allow a
patentee to recover damages for an alleged infringement
made at a time when, by his solemn oath, he declares that
the defendant was not notified of the character of his inven-
tion ? — nay, more, when he swears, that, at the time of the
alleged infringement, the only recorded notice of his inven-
tion, sworn to by himself, was imperfect, incorrect, and insuffi-
cient?

But by an examination of the grounds upon which the
Court rest their decision upon this question, it will be seen
in what manner the error has arisen. The Court say, the
limitation contended for by the defendants "assumes that
there can be no infringement of the patent after the destruc-
tion of the records in 1836, until they are restored to the Pa-
tent Office, and that, during the intermediate time, the rights
of patentees would be violated with impunity." With the
greatest deference, it will appear, upon a consideration of
the statute provisions, that the doctrine contended for involves
no such assumption.

* The second section of the Act of 1837, provides [ * 456 ]
for the very difficulty which is urged by the Court
as the sole objection to the limitation contended for. Fore-
seeing that some time must necessarily elapse before paten-
tees could be informed of their rights and duties, and pre-
pare copies of their patents and drawings and models, Con-

683 PATENT CASES.

Hogg «t al. V. Emenom. 6 How.

gresB has provided, in this section, that, froni the 15th of
December, 1836, when the Patent Office was burned, to the
Ist day of June, 1837, and not after, patentees and othm
may give in evidence their patents in any Court, notwitln
standing that they have not been re-reeorded, and no veri-
fied drawing of the invention has been filed in the Pateot
Office. .

Is there not great danger, in the disposition to give tk
most liberal and enlarged interpretation to statute provisioDs
for the protection and encouragement of inventors, that the
rights of the public may be too much disregarded ?

By the burning of the Patent Office, something more wis
involved in the loss of the evidences of the rights of paten-
tees. The public were thereby deprived of the only notice
which the law recognizes of what they could and what they
could not do, without being subjected to prosecutions for
invasions of patent-rights. For the public, in the language of
Judge Washington, in a case before cited, " can depend upoo
no other information, to enable them to avoid the cooseqaen-
ces of litigation, than what the records may aflTord. No de-
scription of the discovery, secured by a patent, will fulfil the
demands of justice and of the law, but such as is of record in
the Patent-Office, and of which all the world may have the
benefit."

Now Congress, in legislating to repair the loss of the Patent
Office, and to provide against its natural consequences, had
in view the protection of the public, ae^ well as patentees; and
while, on the one hand, it was justly considered that paten-
tees ought not to suffer by reason of a losfli arising from no
fault of theiis, on the other, it was as justly considered that
the public ought not to suffer by reason of a too long delay
on the part of patentees to furnish to the public anew the re-
corded descriptions of their inventions. Thus the second
section of the Act of 1837, saving the rights of patentees, en-

PATENT CASES. 683

>ii ■ ■ ■ * m ■■ II II I I II I mmm^m^m^ ■ m bi^^^p^^m

Hogg et al V. Emerson. 6 How.

—. > ' —

ab]es them to recover damages for infringements after the
hurning of the Patent Office, and down to the month of June,
1837, notwithstanding the non-existence of any public record
of their inventions ; but, saving the rights of the public, the
statute gives no further time.

Is not this cl€»r? And being so, is. it not manifest that
the Court below erred in the instructions given to the jury
upon this point ?

* The drawing of the patenteey annexed to his [ * 457 ]
patent, or referred to in his specification, constitutes
a part of the patent, and oftentimes, as in this case, is the most
material portion of the description, — without which the in-
vention would be virtually undescribed. Now, when a pa-
tentee alters or amends his patent, whether in the written de*
acrtption or the delineated description, there is nothing better
established than that he cannot .recover damages for an alleged
infringement committed prior to such amendment. The au-
thorities to this point are conclusive, and in perfect uniformity ;
some of them, and those the most recent, going so far as to «
maintain that it makes no difference thoughthe . amendment
be of a mere clerical errpr. In re Nickels, Turner, & Phil-
lips, 44 ; S. C, 1 Webster, 659 ; Hindmarcb on Pat. (Eng.
ed,) 216 ^ seq,; Wyeth v. Stone, 1 Story, 390; Wood-
worth V. Hall, 1 Min. &. W. 248, 389.

It is submitted, that a denial of the doctrine here urged on
behalf of the plaintiffs in error would be equivalent to an
abrogation of the provisions of the thirteenth section of the
Patent Act of 1837, which declares that a patent can only be
amended by a surrender and reissue, and that the amended
patent can only operate upon causes of action accruing subse-
quently to the amendment. '

Construe the first section of the Act of 1837 as the Court
below has construed it, and what is the consequence ? A pa-
tentee, whose grant is dated on or before the i4th of Decem-

684 PATENT CASES.

Hogg et a1. V. Emenon. 6 How.

ber, 1836, may maintain actions for infringement of his righti
from then to the present time, without any public record of
his patent whatsoever being in existence during the entire
period, provided he produces at the trial an authenticated copj
of his patent and drawings from the Patent Office, recorded
there, perhaps, but the day before ! From this consequence,
it is submitted, there could be no escape, and small, indeed,
would be the hope of escape for the innocent invader of the
unrecorded right, with the question of reasonable dil'^nce io
the restoration of the record left to the decision of a jury.

Marian and Cutting, for the defendant in error.

L The first point raised by the plaintifls in error does oo(
properly arise. The jury rendered a verdict for $1,500 da-
mages. The amount in controversy being less 'than $2,000,
the defendants below had no right to remove the cause to this
Court. They moved the Circuit Court for a new trial upon
a case made, which motion was denied, and judgment wis
' docketed upon the verdict. The defendants below then ap-
plied to the Circuit Court for the allowance of a writ of error,
under the 17th section of the Act of Coogres,
[ * 458 ] approved July 4, 1836, • which authorizes writs of
error in patent cases to the Supreme Court of the
United States, in the same manner, and under the same cir*
cumstances, as was then provided by law in other judgments
and decrees of Circuit Courts, << and in all other cases in
which the Court should deem it reasonable to alloir the
same."

Having no right to a writ of error, therefore, unless the
judges of the Circuit Court ** should deem it reasonable to
allow the same," application for the writ was made to the
discretion of the Court ; and the application was granted so
far as to allow the defendants to raise, for the consideration
of the Supreme Court, five points specified by the Court be*

PATENT CASES. 685

Hogg et aL v, Emersoii. 6 How.

low^ and which constitute the 2d, 3d, 4th, 5th, and 6th points
now presented by the plaintiffii in error.^ The defendants
availed themselves of the permission to issue a writ of error,
restricted as above stated, and now, after the writ has been
allowed, they seek to argue a question not embraced in those
specified by the Court.

It is respectfully submitted, that this course ought not to be
encouraged, and that the grounds discussed in the first point
taken by the plaintifls in error need not be considered by the
counsel for the patentee. It may be briefly remarked, how-
ever^ that the point referred to was not raised at the trial, and
does not appear upon the face of the record, or even upon
the bill of exceptions. It was insisted below, that the patent
was void for the reasons specified in the bill of exceptions.
The Court will search in vain for the question attempted to
be discussed by the counsel for the plaintiffs in error in his
first point.

Even if it were raised by the bill of exceptions, and were
a point that could be argued here, it would be untenable.
The argument appears to be, that the patentee has no patent
for <'an improved paddle wheel," because the title of the grant

1 Writ of error allowed in respect to the question : —

1. Whether the patent is vend as embracing two or more distinct and
independent inventions or improTcments.

2. Whether the claim is for an entire paddle wheel, or only for an im-
provement

8. Whether the new is sufficiently distinguished from the old.

4. Whether the corrected drawing was properly allowed and filed.

5. Whether the rule of damages was correct, on condition that case be
submitted on written argument to Supreme Court at an ensuing term, be-
fore 1st February, and judgment to be secured hj filing the usual bond.

A copy of Judge Nelson's indorsement on petition for writ of error.

Alex'b Gabdinbb, Clerks

VOL. II. — P. c. 58

686 PATENT CASES.

Hogg et al. V. Emenon. 6 How.

is for an improTement in the ateam-engine) and the counsdfor
the plaintiffs in error argues as if the letters and the scfaedok
were not a part of the same instrument By taking the whole
patent together, that is, the letters and the specifi-
[ * 459 ] cation, there can be * no difficulty in ascertaimng
the extent of the patent. It grants to the patattee
the right '^ of making, constructing, using, and vendii^ to
others to be used, the said improvement, a description where-
of is given in the words of the said patentee himself in the
schedule hereto annexed, and is made a part of these pr^
sents."

Thus the schedule is made a part of the patent, as mochas
if it were recited in the letters themselves. The grant is for
the improvement described in the schedule, — and by lefer-
ring to the schedule, the improved paddle wheel is distiocdr
embraced as a part of the claim.

Ip the construction of patents, the schedule annexed nuist
be always kept in view, and resorted to in <M-der to ascertaio
what is the invention claimed and patented. If the claim or
specification be more extensive than the actual invention, the
patent may be void in part or in whole for that reasoo ; bat
there can be no doubt that, pHmd faciei the patentee hss s
grant for all that he claims in the schedule annexed to his
patent. The description in the letters of the thii^ inxentd
is always very brief, because it points to and incorporates the
patentee's specification and description annexed, and which
usually sets forth minutely the whole claim.

The argument on the other side, as to the efiect of a varia-
tion between the title of the patent and the thing patented
and described in the schedule, assumes that a good and per-
fect specification and description of the invention claimed bj
the patentee may be utterly defeated by a defect in the titki
so that a specification and claim free from all ambiguity will
be rendered utteriy worthless by a defect in what the cooDsel

PATENT CASES. 687

Hogg et al. V. Emerson. 6 Hov.

terms *^ the title " of the pateat. A rule of construction so
harsh and unreasonable would be most destructive in its con-
sequences. If applied to the interpretation of statutes, it
would nullify many of them that are free from doubt ; not
many of the acts of Congress would stand, if defective titles
were declared to be fatal to the laws themselves.

The Patent Act of 1793, section first, provides that the
Secretary of State may cause letters-patent to be granted,
^' giving a short description of said invention or discovery,"
When the patentee presents his specification, it is referred to
in, and made a part of, the patent, and it is from the patent,
with schedules and drawings taken together, that it is to be
determined what thing is intended to be patented* Pitt v.
Whitman, 2 Story, 621. Any defect in the title is remedied
by a proper description in the schedule. Barrett v. Hall,
1 Mason, 477 ; Whittemore v. Cutter, 1 Gall. 437 ; Phil.
Pat 224, 225.

*In England, the rule appears to be different. [*460]
There the patent is distinct from the specification,
and controls it in construction, so that the patentee cannot
cover any thing by the specification which is not embraced in
the patent. Campion v. Benyon, 3 Brod. & Bingh. 5 ; The
King V. Wheeler, 2 Barn. & Aid. 345.

II. But the plaintifis insist, that the patent '' is void, for
the reason, that it embraces several distinct and separate in-
ventions, as improvements in severfil distinct and independent
machines susceptible of independent operation, not necessa-
rily connected with each other in producing the result arrived
at in the invention, and the subject-matter of separate and
independent inventions."

It is clear from the specification, that the patentee claims
to have discovered an improvement in the steam-engine, and
with it, in the mode of propelling vessels. He substitutes for
the crank motion a mode of converting the reciprocating

688 PATENT CASES.

Hogg et ol. V. Emenon. 6 How.

motion of a piston into a continued rotary motion, by a new
combination of machinery for that purpose. From the re-
volving shaft described by him, a rotary motion may be com-
municated to paddle wheels or other objects. When used
for steamboats, the patentee employs the improved paddle
wheel described by him, which is necessarily to be worked is
connection with the other machinery. When a capstan b
required, as on board of a steamboat, he describes the mode
of connecting the shaft of the engine with the capstan, so that
it may be made to revolve by the action of the shaft; and lie
claims as his invention the substituting for the crank, in the
reciprocating engine, a grooved cylinder, operating as de-
scribed ; the paddle wheel constructed and operating as set
forth ; and the application of the revolving vertical shaft to
the turning of a capstan.

Now it is manifest that the invention is a mechanical unity.
The improved engine and paddle wheel are intended to ici
together, and if a capstan be used, the improved engine is
made to connect with and turn the capstan, as it does the
paddle wheels. Although the engine may be applied to tbe
old-fashioned wheel, and though it may or may not be at-
tached to the capstan, yet it is manifest that the improfed
engine connected with the paddle wheel, or with a capstan.
may be used in connection to produce or aid the resolt
designed by the patentee, namely, the propulsiqn or naviga-
tion of a vessel.

(The remainder of the argument upon this head is omitted.)
III. The defendants prayed the Court to instruct tbe jury,
" that the claim of the plaintiff, as set forth in his specifica-
tion annexed to his letters-patent, embraced the entire spiiai
paddle wheel ; that the claim was, therefore, too broad upoo
the face of it, and the letters-patent were void upon that

ground.
[ * 46 1 ] • The Court charged the jury, that " it was made

PATENT CASES. 689

Hogg et al. 9. Emerson. 6 Hov.

a question on the former trial, whether the plaintiff did not
claim or intend to claim the entire, wheel; but we under-
stood it to be for an improvement upon the spiral paddle
wheel."

The counsel for the plaintiffs in error supposes that the
Court below arrived at this conclusion, not from the face of
the patent, but from matters dehors the specification. This
assertion is unfounded. The view of the Court below is the
result of a just construction of the patent itself.

It is difficult to perceive by what course of argument the
patent can be shown to be too broad upon its face. By the
expression " too broad/' I presume, it is intended that the
patentee claims more than he has invented. This is usually
a question of fact, dependent upon the proofs at the trial.
The face of this patent certainly does not disclose the fact,
that the patentee has a grant for any thing of which he does
not claim to have been the inventor. The counsel for the
plaintiffs has not discussed this point, except so far as his ob-
servations under his fourth point may be applicaUe to it ; and
it is therefore not deemed necessary here to enlarge further
upon this branch of the case, except to observe that the pa-
tentee does not claim to be the inventor of paddle wheels,"
nor of ^' wheels acting on the spiral or screw principle ;" on
the contrary, he refers to wheels previously '^essayed," upon
which wheels the patentee claims to have improved. What
he does claim, then, is an improved spiral propelling-wheel,
constructed and operating under water in the manner de-
scribed, which improvement, as described in the schedule, is
new, and is the invention of the patentee.

IV. It is insisted, that the Court below ought to have
charged the jury as prayed for ; namely, " that the patent is
void upon its face for this, — that, purporting to be a patent
for an improvement, and specifying that the invention is of
an improved spiral paddle wheel, differing from any which

58*

690 PATENT CASES.

Hogg et ol. V. Emenon. 6 How.

have heretofore been essayed, without poiDtii^ out in what
the difference consists, or in any manner whatever indicating
the improvement by distinguishing it from previously essajed
spiral paddle wheels, it is wanting in an essential piereqoiate
to the validity of letters-patent for an improvement"

The Court refused so to charge, and held that the descrip-
tion of the invention was in this respect sufficient.

The point how raised is one purely technical, because u
must be assumed after verdict, and upon the bill of excep-
tions, that the patentee was the real inventor of what be
claims ; that de facto he has not clumed as new that whicli
had been known before ; that the improvement is useful, and
that the specification is so full and clear, and fo
[ * 462 ] from ambiguity, that * any mechanic skilled in the
art of making propellers could, by following it, coe-
struct the thing patented.

But however meritorious the invention may be, yet it ^
contended that the patent ought to be adjudged void, because
it does not point out the difference between the improfed
propeller and all other propelling-wheels previously essayed.

The object of pointing out the old from the new is, that
the public may be informed what the party claims as hisio-
vention, and may ascertain if he claims any thing in commoo
use.

The law does not require that he should describe the tan-
ous paddle wheels then known, or point out the differences
between them and his improvement ; such a rule, even «
practicable, would be too onerous to be endured. Take, vx
example, a patent for an improvement upon all stoves pr^
viously essayed ; it would be unreasonable to prescribe that
the specification should describe all the stoves in use, or that
had ever been essayed, and that it should |x>int out the di^'
ference between them and the particular improvement; socb
requirement would be impracticable. When Emerson ap*

PATENT CASES. 691

Hogg et al. V. Emerson. 6 How.

plied for his patent, in 1834, there were a very great number
of paddle wheels and propellers known, or which had been
essayed, many of which had been patented in this country
and in England. Now, it was not necessary for him to have
described all these various wheels and propellers. It is
enough if he has specified his own improvement; and if he
has done so in an intelligible form, his patent is good on its
face, although, when tested by evidence dehors the patent, it
might appear that he has claimed what was old, and thus his
patent might be defeated.

In Evans v. Eaton, (7 Wheat. 435,) the rule is thus ex-
pressed : — " We do not jsay that the party is bound to de-
scribe the old machine, but we are of opinion that he ought
to describe what his own improvement is, and to limit tlie
patent to such improvement. The law is sufficiently com-
plied with by distinguishing in full, clear, and exact terms
the nature and extent of his improvement only."

Most of the authorities cited by the counsel for the plain-
tiffs in error, under his fourth point, are referred to by Phil-
lips, in his work on Patents, and the rule that he deduces
from them is thus stated, at page 269 : —

" In specifying an improvement in a machine, it is often
necessary to describe the whole machine as it operates with
the improvement, in order to make the description intelligible,
and enable an artist to construct the machine, as the inventor
is bound to do in his description, and which if he fails to do,
he falls into the fault of obscurity ; on the other
hand, if the whole * machine, as well the old as the [ * 463 ]
new part, be thus described, it is requisite to dis-
tinguish what part the patentee claims, since, if this does not
satisfactorily appear, the patent will, as we have seen, be void
for ambiguity ; or if the obvious construction is, that he claims
the whole machine in its improved state, the patent will be
void by reason of the patentee's claiming too much. The

I
693 PATENT CASES.

Hogg eC ol. V. Emenon. 6 How.

mode of expression generally used in the books, in relatioo to
this subject, is, that the specification must distinguish the old
from the new. The only object of this distinction is, how-
ever, to specify what the patentee claims, and the mere dis-
crimination of the new from the old would not necessarily
show this, for perhaps he does not claim all that is oefr.
When the cases say, therefore, that the specificatioo most
distinguish the new from the old, we must understand the
meaning to be, that it must show distinctly what the patentee
claims, the only object of Ihis distinction being for this par-
pose. This doctrine is illustrated by some of the cases
already stated, and it runs through them all wherein tbis
question arises.'' •

Most of the patents describe the improved machine odIj,
as will be seen by referring to the specifications in the Patent
Oflice, and to the reports of patent cases.

It has been, of late years, the practice of the courts of this
country to give effect to patents, if possible, rather than \ii
destroy them ; and to this end, mere technical objections ait
no longer encouraged. The rigorous rules of the 'Ed^
courts, and of some of our earlier cases, by which meritorioos
patents were frequently overturned, have given place to more
liberal and enlightened principles.

(The remainder of the argument upon this head is omitted.)

V. The authenticated copy of the corrected drawing, fiW
in the Patent Office on the 27th of March, 1844, was cor-
rectly admitted.

The original drawing, filed with, the patent in 1844, »»
been destroyed by fire ; the patentee could not of course pro-
duce the original, and he therefore resorted to the next best
evidence that the nature of the case permitted ; this consisted
of a copy which the plaintiff below offered to prove to bfe a^
accurate copy of the original ; and this copy so offered was
duly authenticated in the manner provided by the first ao
second sections of the Act of March 3, 1837.

PATENT CASES. 693

Hogg dt ol. V, Emenon. 6 How.

Upon the strictest principles of the law of evidence, the
plaintiff below was entitled to prove what the original draw-
ing really was. The original being lost, the next best evi-
dence of it was an exact copy, proved to be accurate.

This proof would have been admissible and
proper, irrespective * of the Act of 1837, and [ * 464 ]
whether the copy so offered was a record of the
Patent Office or not. Suppose the Act of 1837 had never
been passed, and the plaintiff had proved the destruction of
the original drawing, he might have produced upon the trial
a copy of it ; and after proof that it was a true copy, he would
have entitled himself to read it in evidence.

But there can be no reasonable doubt that the corrected
drawing, filed on the 27th of March, 1844, was properly
received by the Patent Office, and that an authenticated copy
thereof was admissible as evidence under the provisions of
the Act of 1837.

That act was remedial in its character ; its object was to
restore the records, and to repair the loss occasioned by Ibe
fire. To that end, it was of the highest public importance
that the specifications and drawings should be correctly and
accurately restored. To have received imperfect or inaccu-
rate copies would have increased, and not have remedied, the
mischief, and to assert that the Patent Office had exhausted
its power to restore models and drawings by the reception of
what were not copies or true representations of the originals
would be to give a constj;uction to the statute that would
defeat its object.

The first section declares, <^ that it shall be the duty of the
commissioner to cause the copies offered by the patentee, or
any authenticated copy of the original record, specification,
or drawing, which hennay obtain, to be transcribed," &.c. It
is not only within the powers of the department to receive
corrected drawings or models, in place of those that prove to

694 PATENT CASES.

Hogg et al. V. Emerson. 6 How.

be inaccurate or imperfect^ but it is the duty of the commis-
sioner to obtain exact substitutes for the originals, if possible;
and if those already filed are shown to be erroneous, imper-
fect, or untrue delineations of the originals, it is the duty of
the commissioner to replace them with corrected copies. Iq
this way only can the objects of the act be accompiisbed.
To deny this power would be to perpetuate errors.

VI. The Court below properly refused to charge the ja^
that the defendants were not entitled to a verdict, if thej
were satisfied that no propelling-wheels were made between
the 27th of March, 1844, and the commencement of the suit.

The defendants excepted to the charge so far only as it
did not adopt the prayer insisted on by them.

The prayer upon this point insists that the defendants were
entitled to a verdict, if no wheels were made by them after
the 27th of March, 1844, no matter how oflen they bad in-
fringed the plaintifi*'s patent prior to that date. It assumes
that all persons may, with impunity, infringe upon all or ao;
patents intermediate between the destruction bj
[ • 465 ] fire of the records of the Patent * Oflice, and the
complete restoration of them under the Act of 1831.
If the principle contended for be sound, then the patentee
has no remedy for wilful and deliberate violations of his pa-
tent committed intermediate *the destruction of the records of
the Patent Office and the complete restoration of them, no
matter how public and notorious the patent may have b^
come, and no matter how extensively the patent may ^^^^
been published and circulated in works of art or otherwise.

This principle cannot be sound ; and the defendants' prayer
and exception raise no other question. The prayer assumes
the broad ground, that there is no liability for infringements
committed prior to the restoration, not only of the paten
itself, but of the drawings, and that the patentee is not en-
titled even to nominal damages.

PATENT CASES. 695

Hogg et al. V. Emenon. 6 How.

The patent; in the present case^ had been reatored and
recorded anew long before the 27th of March, 1844, namely,
in the year 1841 ; the recorded copy of the specification and
claim was correct, and disclosed the patentee's right ; and
yet the Court was asked in eflSsct to chaise the jury, that
infringements m^ht be perpetrated with impunity at any
time after the fire, and a^ any time after the recording anew
of the letters and schedule, until the 27th of Aarch, 1844.
The lett^-patent were published in the Franklin Journal in
1834, were filed anew in 1841, and of themselves were suffi-
cient to protect the patentee, even if the restoration of the
drawing had been imperfect.

The views of the learned judge in his charge need no illus-
tijation ; he chaiged the jury as favorably for the defendants
as they had a right to request.

The compldnt of the counsel for the plaiatifis in error,
that the Court left the question of unreasonable delay, on the
part of the patentee, in taking measures to restore his records
to the jury, is not properly urged, upon the present writ of
error, because, —

1. It is not one of the five points that the Court below
allowed to be raised.

2. That part of the charge was not excepted to at the
trial, and, on the contrary, the exception was limited to the
point taken in the defendant's prayers.

3. Even if this point were properly before the Court, it is
clear that the question whether the patentee had been guilty
of unreasonable delay and neglect in restoring the records
was a question of fact upon the evidence then before the
Court

It was a question of fact, submitted to the jury for the
benefit of the defendants below ; for if there had been such
neglect or delay, the Court instructed the jury, that,
if the defendants * had innocently made the pa- [ * 466 ]

696 PATENT CASES.

Hogg et aL o. EmertOB. 6 How.

tented artide, it would be a fair ground for a mit^tioQ
of the rule of damages, if not for the withholding them
altogether.

The chaige was as favorable to the defendants as the law
and the evidence would permit

John O. Sargent J for the plaintifis in error, in reply
conclusion.

It is objected to the first point raised by the counsel for the
plaintiffs in error, that it is not properly presented to tk
Court, though it is admitted to arise upon the record. Tie
argument is, that the Court below intended to restrict the
plaintiffs to the consideration of certain specified qaestioos.
True it is, that the Court struck out from the bill of ezceptioo
several points on which the plaintiffi relied ; but the objed d
the Court in so doing is misapprehended. It was the purpose
of the Court merely to disembarrass and relieve the record of
objections which they considered ill-taken, and the discosaoD
of which they deemed unnecessary. That, besides this limi'
tation, of which the plaintiffs have not complained, it iras the
intention of the Court to cut them off from their right of
dealing with this record according to law, is not to be pre-
sumed or implied. No doubt whatever is entertained by the
counsel for the plaintiffs^ that the objection is well raised on
the record, and that it is fatal to the defendant's claim*

I. The point made is, that the defendant in error has oo
patent for an improved spiral paddle wheel.

The learned counsel for the defendant is mistaken in sap*
posing that the argument of plaintiffs' counsel proceeds apon
the idea, that the letters-patent and the specification are not
parts of the same instrument. The specification forms a part
of the patent, and they are to be construed together, but con-
strued with reference to the fundamental principle of lo^^'
pretation, Quoties in verbis nuUa ambiguUas, ibi nvO^ ^

PATENT CASES. 697

Hogg et al. V, Emerson. # How.

posiHo contra verba fienda e^^,— >-or, as it is sometimes laid
down in the hoolm, *^ No eotistroction shall be made contrary
to the vefy express words of a grant."

In cohstraing this instS^ament, we must look to the situation
of the parties, and the mode in which it was pirepared. The
formal letters-pcitent speak the language of both parties. In
the instrument of grant, there is nothing equivocal or ambigu-
ous. It is not capable of being misunderstood* No ingenuity
can extort a double meaning from it. Mr. Emerson made
oath that he was the inventor of an improvement in the
steam-engine ; solicited a patent for said improvement ; re-
ceived a patent reciting the exclusive privileges
vested in him in said * improvement, and making [ ^ 467 ]
the description of said improvement contained in
the schedale annexed a part of his patent. All this must be
taken as absolute Irtiifa. The patentee claiming under this
instrument is bound by its recitals, and estopped from deny-
ing any thing that it alleges. The letters-patent in fact, are
the joint production of the grantor and grantee. The Secre-
tary of State adopted the description of bis improvement
which the grantee famished in his petition. The entitling of
the schedale is debatable ground. This may have been the
work of the grantee alone, or of a clerk in the department.
In either event, it indicates the intention of the parties, and,
as if to exclude the possibility of the grantee's taking an ex-
dusive privilege to any oiher thing than that contemplated
and expressed in the patent, the heading or title of the sche-
dule recites, in eflfect, that said schedule is made a part of the
patent, so far as it contains a description of the improvement
in the steam-engine, and no farther.

The language of the parties indicates plainly enough what
was intended to be granted, and what was actually granted.
Then comes the descriptive part of the schedule, or the speci-
fication, in the words of the grantee alone. This contains a

TOL. II. — p. c. 99

698 PATENT CASES.

Hogg et al. V. Emerson. 6 How.

particular description of the improvement in the steam-eogiiie
secured by the patent It then describes an applicatioD of
(his improved engine to turn the capstan on the deck of t
vessel ; and an improved spiral paddA wheel, alleged to differ
materially from those previously essayed. Now, the grooul
taken by the counsel who opened this case is simply this,-
that Mr. Emerson cannot, by the introduction of new matteis
in his specification, make his patent operate as a gnuit h
the improvement mentioned in his petition, oath, and letteR:
and also as a patent for other things not mentioned in sodi
petition, oath, and letters. It is respectfully submitted, tki
such is clearly the law.

It is presumed that there is no difficulty in the Coorfs
taking judicial notice of any thing involved in the constnctkiQ
of a patent, which a judge at nisi prius would knoir witb(»^
the aid of a jury. If this view is correct, the Court will knov
that an improved steam-engine is not an improved pBd&
wheels and was not at the time this patent was issued. Tte
being so, the improved spiral paddle wheel is not only not 0
terms included in this patent, but is by legal implication ts
absolutely excluded from the patent as if it were exdaded id
express terms. In the (air, natural, obvious interpremtioo"
this grant, collecting its meaning from the terms used in it?
understood in their plain, ordinary, and pc^ular seose) ui«
improved steam-engine is the subject, and the sole
[ • 468 ] subject, of Mr. Emerson^s • patent. Apply ^
principles, which, in the language of a learo^ ^
eminent judge, furnish a <' rule of construction which app
to all instruments," and they establish beyond a qaesm^^
Mr. Emerson has no grant for an exclusive privilege id '
spiral paddle wheel.

And, first, because the force of the schedule is tbos re-
strained in express terms by the patent, and these terns
the language of both parties. Again, because the hJiff^

PATENT CASES. 699

Hogg et al. V. Bmerson. 6 How.

of the schedule is throughout the language of the grantee
alone, and binds the grantor only so far as it has been ex-
pressly, or by necessary implication, adopted by him. Now
the duty of the Secretary of State, under the Act of 1793,
was purely ministerial. He took no such judicial cognizance
of speci6cations as is now rigidly exercised by the Commis-
sioner of Patents* The grantee might have included many
distinct machines in his schedule, and the Secretary of State
was not called upon to notice the fact, did not notice it, and
could not have prevented it The patent was within his
control, and the schedule so far as it was made a part of the
patent, but not otherwise. He could so far restrict it as to
limit its effect to the description of the thing patented, and to
that extent' he did in fact, in express terms, limit it. Beyond
this he had no jurisdiction. The same is true of the Attor*
ney-General. It was his duty merely to see that the patent
purported to embrace but one improvement, and that the
specification was signed by the patentee, and attested by two
witnesses. His duty was then discharged, and he certified
to the patent's being conformable to law. Now, is it not
against reason, and therefore against law, to say that such a
schedule, made by the grantee alone, and not examined by
the grantor, is, in any other resiiect, and to any greater extent,
operative in conferring exclusive privileges, than it is made so
by the mutual assent of the parties, expressed in their com-
mon and joint language in the patent itself? Can such
recklessness and improvidence in the issue of it9 grants as a
different construction would establish be attributed to any
government? If the schedule had contained the specification
of a spiral paddle wheel alone, would it have been -patented
under the terms of this grant? Would the patentee in that
case have complied with that provision of the statute of 1793,
which required him to ^* recite " his invention in his petition ?
Would his oath to the invention of an improved steam-engine

TOO PATENT CASES.

Hogg et aL v. Kmenoa. 6 Hov.

then have covered the inTention of a spiral peddle whdl
And if not in that case, why in this ? Does the mere bet d
describing the improved steam-engine in the schedole, iRor*
porate in this patent an improved paddle wbedy which would

not have been incorporated if the improved item-
[ *469 ] engine had been * omitted altogether ? If such u

the construction to be pat upon these instrameDli,
the secretary might as well have issued his letter»fetooc is
blank, and sufiered individuals to fill them up at their pki-
sure. The petition, the oath, the description, the grant, die
signing by the Secretary and President, the reference to tbe
Attorney-General, were all superfluous. But, say the cooosel
for the defendant in error, the schedule is a part of the pa-
tent, and if tbe schedule contains a description and daim of
a machine, that machine becomes the subject of the eicliifl^
privileges granted by the patent, just as much as if the inveouv
had petitioned for, sworn to, paid for, and received a pateot
for the same. This understanding of the matter weald hive
been a very convenient one for a patentee under tbe law o
1793, because it would have enabled him to include iobi>
letters the inventions of others,, without incurring the peoiltiei
of perjury ; and as many of them as he pleased at the eifcast
of a single fee. With ail deference, but with all eonfideoi^i
it is repeated, that the schedule is so far a part of the pftt^^
as it contains a description of the thing patented, and do
farther. It is the description of .the improvemeDtpat^nted
contained in the schedule, which is the specification ^
forms a part of the patent. It is in this view that the lao*
guage of the Court is to be applied, when they say that tks
specification is a part of the patent, and that the whole » ^
be taken together, and construed as one instrument* A' ^
general thing, under tlie law of 1793, tbe schedule costvioed
only such a specification ; in contemplation of law it o<^
can contain any ottier ; if it contains any thing more, the 9X'

PATENT CASES. 701

Hogg et al. V. Emerson. 6 How.

cess 18 surplusage. If it does not vacate the patent, it is at
least inoperative, — it cannot enhrge the grant.

On the English cases there would be no doubt on this
point. For the non-conformity between the title in the pa-
tent and the description in the specification, the patent would
be declared void on two grounds : — 1st. For the false sug*
gestion in the petition. 2d. For the claim in the specifica-
tion of an improvement not within the true meaning and
extent of the grant.

Either of these objections would render a patent in Eng*
land absdutely void: — 1st. Because the crown has been
deceived. Sd. Because the inaccurate title is calculated to
deceive the public.

These consequences flow, not from any special provision in
the English patents or statutes, but from principles of the
common law applicable to all public grants* These prin-
ciples apply with equal force to pubKc grants of the United
States, unless there is some provision in our patents
as issued, or in "* our statutes on Ihis subject, ren- [ * 470 ]
dering them inapplicable. It is submitted, with
all deference, that no such provision can be found, and that
the reasons for sustaining them in their full effect are stronger
under the system established by our Act of 1793, than under
the English system.

(The remainder of the argument upon this head is omitted.)

II. It is again objected by the counsel for the defendants
in error, that there is nothing in the exception to the ruling of
the Court in regard to the insertion of several claims for dis-
tinct and separate machines in the specification.

The case of the defendant is obviously very much distress-
ed by this point, and his counsel protest strongly that the in-
ventions described exhibit a '< mechanical unity," being all a
means of propelling vessels. To maintain this proposition
they resort to a very extraordinary mechanical discussion, to

69»

703 PATENT OASE&

Bogi^ #C a1« v. SmflnoB* 4 now*

show that, by means of the capstan, vtthom regard to the
motiTe power of the engine, they coold propel a vessel If
this be so, and die counsel should present their ai^gumeot to
the Commissioner of Patents in the shape of a specificalki,
they might readily obtain a patent for.it if a new and usefd
inrention. They think, if a yessel with Mr. EmersoD's ids-
ehinery on board should be becalmed, without fiiel, that, bj
applying ^* the motive power " by manning the capstan, ido-
tion would thereby be communicated to the propeller. The
answer to this is, that no such application is conteaiplsted bf
the patentee ; and to arrive at it the learned counsel is oom-
pelled to sever and destroy his mechanical unity, by lesTiog
the steam-engine useless for the want of fuel.

The question is now, for the first time, distinctly praeoted
to this tribunal, and the doctrine on this subject is to be set-
tled by the judgment of the Court in this case. It is a qoo-
tion of no inconsiderable public importance, and it is desiniile
that it should be adjudicated on plain and subetantial groondi
All inventions are supposed to conduce more or lesi to one
common object, to wit, the benefit of the pubhc. Tkis ood-
mon purpose is probably too remote to sustain the introdoe*
tion of all manner of inventions into the same paleot; M}
for all practical purposes, it is precisely as prozioiate in
tenable as the common purpose claimed for the patentee lo
this case.

It is most humbly submitted, that the doctrine of this Court,

as suggested in Evans v. Eaton, is the trae doctrine oo v^'^

subject : — << On the general Patent Law a doubt migbt «dl

arise whether improvements on difierent machines could f^

gularly be comprehended in the same patent, so as to gi^^ '

right to the exclusive use of the several machines separately''

well as a right to the exclusive use of those pachioes

[ * 471 ] in * combination." This language obviouily <»^

templates a case in whidi the machines patent

PATEP?T CASES. 703

Hogg et aL V. Eaaenoii. e How.

might be used in oombinaiion ; and the whde force of Mr.
Jastiee Marshall's very sound and pregnant suggestion is de^
troyed the moment the converse of the proposition is esta*
blkhed, namely, that when oiachinei^ are capable of being
used' in cotnbinatibn, then any number of them* may be uni*
ted in the same patent. The language of the Court in the
case cited applies only to the case where the machines in
question are capable of acting together ; withdraw such cases
from the operation of the principle propounded by the Court,
and there is an end of it. And yet this doctrine, as. laid down
by the Court in that case, is daily acted upon by the Patent
Office, under the Act of 1836 ; and if it is materially shaken
or qualified, the revenues of the department will be very seri-
ously diminished.

The suggestions in Evans «• Eaton, on this point, was much
considered in Barret v. Hall, and it may be said that no cases
on record present more masterly expositions of the principles
of Patent Law which they discuss. Wyeth v. Stone, stands
on the extreme verge of sound principle ; but there the two
instruments were in fact but part of one and the same ma-
chine. The instruments contemplated in that case formed a
compound machine for cutting ice. They were, in fact, but
parts of one and the same instrument. Two things cannot
be readily imagined more absolutely distinct and separate in*
struments, than a steam-engine and a paddle wheel. A steam-
engine is employed to give fnotion to every manner of ma-
chinery. A paddle wheel may be turned by horse-power, or
man power, or windmill power, as well as by a steam-engine.
Here the eng^ is the motive power ; the wheel is the thing
moved. The engine might be well employed to move any
thing else ; the wheel might well be put in action by any other
motive power. They are as distinct and separate as cause
and ^eot, and cannot be united in one patent, except upon
prineiples that would entirely nullify the rule of law laid down

704 PATENT CASES.

Hogg et aL V. Bmenon. 6 How.

in Evans e. Eaton and Barrett v. Hall, and admit of the in-
trodaction in the same patent of entirely distinct and sepante
machines.

It is suggested, that a different doctrine from that conteod-
ed for by the plaintiffs prevails in England. We have M
no English authorities on this point. It arises on our om
statutes, and is so rested by Mr. Justice MarahalL

There is no hardship in the rule contended for, looo
other way can the subject-matter of an invention be distiocdj
brought out, so as to warn the public against undes^oed io-
fringements. If several machines can be mixed up io ooe
specification, and several improvements on ead)t
[ * 473 ] and then patented in the name * of one o! those
machines, it is respectfully, but earnestly, insisted
that the Patent OflSce cannot fail to become tiie foo/ce of
more oppression and outrage than will be long tolerated bj
a people who are masters of their own institutions. Uoder
such an understanding of the law, letters-patent will be rep^
ed by the public as mere charters of iniquity, and the whok
system must be swept away. It must be as impracticable ^
sustain such an institution in the United States as it would be
to establish the Inquisition here, or vest in the goverooi^^
those odious prerc^tives the abuse of which led to the Eng-
lish statute of monopolies.

It is most humbly submitted, then, that, on the aotborities
and on the reason of the case, there was error in the chaig^
of his honor, the circuit judge, that << the objection that toe
patent embraces several distinct discoveries is untenable.

III. Counsel for the defendant in error cannot perceive ''f
what course of argument this << patent " can be shown to be
too broad upon its face. We are embarrassed somewhat ia
reasoning upon this case, because it is an anomaly. ^^ ^
the first attempt on record to sustain a grant of an exdofi
privilege by virtue^ of letters*patent which contain no wof^

PATENT CASES. 705

Hogf et aL r. Emerson. 6 Hov.

whatever to the alleged. subject-matter of the privilege which
IB set up under them. We repieat, and to this point pray the
special attention of the Court, that, among the many hundred
patent cases that have been adjudicated in this country and
in England, not one such case is reported. In discussing analo-
gies, therefore, we must waive for the time the great difference
between this and all other cases, arising from the fact that the
patent before us contains no grant of an exclusive privilege in
a spiral paddle wbeeK

PhuntiSs' counsel do not allege, therefore, that this patent
is too broad upon its face. It is as broad upon its face as the
law will allow. It is broad enough to cover an improved
steam-engine, and no more broad. It is made void by at-
tempting to include more in the specification than is included
in the grant, and more in the claim than is shown to be of
the patentee's invention. The objection of plaintiffs' counsel
is, that the -claim is broader than the invention*

The claim is for the entire spiral paddle wheel, constructed
and operating as set forth ; and more than that, it is for such
a machine <^not confined to precise forms or dimensions, but
varied as experience or convenience may dictate, whilst the
princifde of action remains unchanged, and similar results are
produced by similar means."

Here is a claim for the entire wheel, to be varied as the in-
ventor may see fit to vary it, and for every other
wheel operating *on the same principle, and pro- [*473 ]'
ducing simHar results by similar means. It is a
claim, as broad and distinct as language can make it, for the
spiral propelling wheel, and every part of it, and for liberty to
vary it in form as the inventor pleases, as long as a similar
result *-« to wit, the propuMon of vessels — is produced by
similar means, -^ to wit, by a spiral wheeh The result con-
templated is propulsion ; the meMs or instrument is a spiral
wheel, of such form as experience pr convenience may induce

706 PATENT CASES.

Hogg et aL v, Bmenon. 6 How.

the inventor to nnake, without changing the principle of a^
tion. Such is the claim ; and if the claim is a valid one, no
man can effect the propulsion of a vessel on the principle of
action contemplated by a spiral wheel, without invading Mr.
Emerson's claim.

But, while such is the claim with which Mr. Emerson arms
himself, and goes out among men, as Lord Euenyon expressed
himself in a similar case, << hanging terrors over the unlearned/'
when we come to examine the specification of his wheel, we
find an implied acknowledgment that it is only an improve-
ment, and merely an implied acknowledgment. He speabof
an ** improved spiral paddle wheel,*' leaving the unavoidable
inference, that he has improved the ordinary paddle wheel by
making it spiral, and that the spiral features — or, as he sub-
sequently describes it, his spiral trough — is the only material
part of his improvement

Here is the old defect, that has been decided over ando?er
again to be fatal, — the invention of an improvement and ik
claim of the whole machine. No ingenuity can withdraw this
case from that large class of cases in which the rule we coo-
tend for has been laid down with a distinctness that caooot
be mistaken, and applied with a wise, uniform, and unrekot*
ing firmness. The Courts say, that no man shall give that
ialse color to his claim which may enable him to '^ hang ter-
rors over the unlearned." The case before the Court is i^
sop's case, where the patent was for the whole watch, m
the invention of a particular movement. It is the case pr^
sented in Williams v. Brodie, where the invention was an loa-
provement on a stove, and the patent for the whole store.
runs on all fours with Cross v. Huntley, where the inveotioo
was of an improvement in the washing-machine, and the ctaHB
was for the whole machine ; where the Court did not hesitate,
in an action where the patent came up collateraliyi to dectore
it void. It is Boville v. Mgore, where the patent for afl ^

PATENT CASES. 707

Hogg et aL o. Emenon. 6 How.

provement on a lace-machine was held void, because the claim
was for the whole machine, though a considerable part of it
had been long in use.

There is no matter of fact to be found, in order to bring
out this defect, that the law may be applied to it.
It ires on the * face of the specification. Jessop, [ * 474 ]
Williams, Cross, and Boville, showed that they had
invented improvements, and claimed the entire machines.
Emerson suggests that he has invented an improvement,
and claims the entire machine. Where is the difference?
What subtilty can distinguish between these cases ? And
why^should we seek to establish thin, fine, and subtle dis-
tinctions, in a case where the policy of the law is so plain,
obvious, and honest, and where the great end to be attained
is to prevent patentees from " hanging terrors over the un-
learned ? "

These cases, it may be said, are not binding authorities upon
this Court. They are not so cited. No weight is claimed for
them beyond that which they derive from their intrinsic good
sense and sound reason. Their authority, as well-considered
decisions, has never been judicially disturbed or questioned.
But there is a case of contrdling authority, — that of Evans
V, Eaton, — sustaining the doctrine for which we contend, to
its full extent. To this case I shall have occasion again to
refer, in considering the fourth head of the argument of the
learned counsel for the defendant, to which I now pass.

IV. The fourth point discussed by the jeamed counsel for
the defendant touches the second prayer made to the Court
below.

Plaintiffs contend that Mr. Emerson's specification does not
define with precision the nature and extei^t of the alleged im-
provement in the spiral paddle wheel, but describes the whole
machine, and claims the whole as improved, without distin-
guishing the new from the old. A patent with such a speci-

708 PATENT CASES.

Hog|^ et al. V. Smeraon. 6 How.

iicaUon cannot be supported. This dodride rests so firmly
on the authoritatiTe decisioB of this Coart, that it may wdl be
left to authority. We shall, therefore, merely allude to the
obvious reason for it, which is, to limit the exclusive privil^e
to the actual improvenwnt, and disarm the patentee of die
power of *' hanging terrors over the unleuned," and practmng
upon the fears and credulity of the public, by ^ pretending
that his invention is more than what it really is, or diflereot
from its ostensible objects." If a patentee can mix up a sin-
gle undefined improvement in details of the construction and
operation of an old machine, and then claim the whole ma-
chine constructed and operating in the manner set forth, (hen
a patent, instead of being merely the reward of meritorious
invention, is a device to encourage litigation, extortion, and
fraud. Such a patent shifts its grounds at every trial,
changes its color according to the aspect in which it is
presented or met, and adapts itself with a fatal elasticity to
the length and breadth of the evidence which happ^is to

be applied to it.
[ * 475 1 * (The remainder of the argument upon this head
is omitted.)

y. Now with regard to the drawings. It appears from the
record, (p. 10,) that two drawings were filed by Mr. Emerson
in the Patent Office, under the Act of 1837 ; one as early as
1841, which was re-filed, with the plaintiff's oath to its cor-
rectness, on the 12th of February, 1844, and the other, with
the same oath, on the 27th of March, 1844. The second
drawing was the one produced and relied on by the plaintiff
below as constituting, with the letters-patent, that certified
copy of the renewed record in the Patent Office which the
second section of the act last cited makes the only proof of
the alleged patent admissible in any judicial Court of the
United States.

The learned counsel for the defendant in error suggest,

PATENT CASES. 709

Hogg et al. V,. Emenoa. 6 How.

that, after the original drawing was destroyed by fire, the next
best evidence of it was an accurate copy of it, offered to be
proved such* It is submitted, with great deference, that a
drawing of Mr. Emerson's paddle wheel, filed in March to lay
the foundation of a suit in April, was not the next best evi-
dence of the alleged original, for the reason that there was
another drawing, previously filed and sworn to, which was
something more than next best evidence of the lost original,
being made by statute absolutely the only evidence of it that
could be received in any judicial Court in the United States.
It might, indeed^ be well contended, that the first-fiied draw-
ing did not at all partake of the character of secondary evi-
dence. It became, by force of the statute, to all legal intent,
the original drawing. It filled the place of the original draw-
ing on the record, being verified by the same oath, vesting the
same rights, construed in the same way as part of the specifi-
cation, and conclusive proof of all that it purported to prove,
until it should l>e rebutted. The letters-patent and first draw-
ing filed by Mr. Emerson, under the first section of the Act
of 1837, became, by virtue of the second section, so far as
the patentee was concerned, primary evidence. It was open
to observation and impeachment to all the rest of the world ;
but by operation of the statute, in connection with well-esta-
blished principles of law, it was at all events conclusive upon
the patentee. The drawing, therefore, filed on the 27th of
March, 1844, was in law the '^ next best" evidence of Mr.
Emerson's original drawing, because there was a prior draw-
ing filed on the I2th of February, which the statute had
expressly dedared to be the legal original, at least for all
purposes of litigation*

(The remainder of the argument upon this head is omit-
ted.)

VI. On the question of damages, counsel for the defendant
TOL. n.—- p. o. 60

710 PATENT CASES.

Hogg ct iL V. Eoenon. 6 How.

imul that there was no error in the cbai^ of the learned

judge, that << the damages were not necessarily coo-

[ * 476 ] fined to the * making of the wheels betweeo Maich,

1844, when the drawings were restored to the Pt*

tent Office, and the bringing of the suit." Such a iimitaUOD

was prayed below, and, as it was supposed, on well-established

principles of law and equity. It is again pressed, with all

deference, but with perfect conviction, that the refosal of tiie

prayer was error, for which the judgment under coosiden-

tion ought to be reversed.

The Patent Act contemplates, that every thing to be dooe
by an inventor, with respect to his specification and draifriogS;
is to be done before the patent issues. There is no such thing
as correcting the record, of a specification or drawing by mere
substitution of some other specification or drawing. After (he
patent issues, the patentee cannot, by merely depositing a new
drawing, on any plea whatever, make it a part of his pateot,
or any evidence whatever of his invention, as onginally ^
tented, so as to cover cases of alleged infringement prior to
such change in the record. There can be only one motive of
desiring to add a new drawing, and that is, to remedy a defect
or insufficiency in the original drawing or specificatjofl, or to
correct the same. The object of such a change can never be
merely to present a more tasteful drawing, or a drawing more
agreeable to the eye, or more in conformity to pictorial rules*
Other arts than the fine arts induce such an appUcation* The
ofier to file a new drawing is an admission on the part o/ the
patentee, that his new drawing covers something in which the
original drawing is defective or insufficient. And, under these
circumstances, what does the statute say ? That the pateotee
must surrender his patent, and that a new patent nmy issoeio
conformity with his corrected specification, and thereafter
operate, for the residue of the original term, on the trial of aU
actions thereafter commenced for causes subsequently ^^^'

PATENT CASES. 711

Hogg et aL v. Emenoa. 6 How..

iDgy as though the same bad been originally filed in such cor-
rected form before the issuing out of the original patent. And
in this case, the commissioner is not bound to grant such re-
issue, nor can he grant it except in cases where the error has
arisen by inadvertency, accident, or mistake, and without any
fraudulent or deceptive intention. Similar proceedings may
be had in regard to the addition of an improvement. (Act of
1836, ^ 13.)

(The remainder of the argument upon this head is omit-
ted.)

It is respectfully submitted, then, —

1. Because the defendant in error has no grant of exclusive
privilege in the machine, which is the subject-matter of the
present controversy :

2. Because he could not in law receive a grant for it, as
one of several distinct machines in the same patent:

* 3. Because, as the author of an improvement, [ * 477 ]
he could not take out a valid patent for the whole
machine :

4. Because he has not in his specification distingaished be-
tween the old and new parts of his alleged improved machine,
but has claimed the whole machine as improved:

5. Because he did not produce in evidence the record of
his patent which the law had made such, but another record ;
and,

6. Because he has recovered damages for causes of action
accruing previously to the alleged correction of his record, and
prior to the alleged renewal of it under the Act of 1837 :

For all these reasons, and for others raise4 upon the excep-
tions and record in this cause, presented perhaps too much at
length, but not more at length, in the view of counsel, than
their public importance may justify, — that the judgment of
the Circuit Court in this case ought to be reversed.

712 PATENT CASES.

Hogg tt wL V. Emenoa. 6 How.

Mr. Justice Woodburt delivered the opinion of the Coart

This is a writ of e ror brought under some pecoliarities
which are first to be noticed.

It comes here by virtue of the 17th section of the general
Patent Law of July 4th, 1836. (5 Statutes at Large, 124.)

That section grants a writ of error from decisions of ac-
tions on patents, as in ordinary case, and then adds (he pri-
vilege of it '^ in all other cases in which the Court shall deea
it reasonable to allow the same." This was doubtless iDtend-
ed to reach suits where the amount in dispute was less thin
$2,000, on account of the importance of the points somediDes
raised, and the convenience of having the decisions on patents
uniform, by being finally settled, when doubtful, by one tribo-
nal, such as the Supreme Court.

The judges below, in this case, deemed it reasonable, (bat
only a certain portion, of the questions raised at the trials coo-
cerning the validity of the patent, should come here, and the
record was made up accordingly.

But the appellants contend for their right to bring here aS
the questions which arose in the case, and thisisaprelifflinvj
point to be settled before going into the merits. The present
is believed to be the first writ of the kind, which has gi^en
occasion for settling the construction of any part of theabore
provision ; and therefore, without the did of precedent, alter
due consideration of the words and design of the statate, ire
have come to the conclusion, that the position of the fdaiotifls
in error, in this respect, is the correct one, and that when a
Court below deem it '^reasonable" to allow a writ of error at

■

all, under the discretion vested in them by this special provi-
sion, it must be on the whole case.

[ • 478 ] • The word « reasonable " applies to the ''cases,"
rather than to any discrimination between ihe dtne-

rent points in the cases.
It may be very proper for the Court below to examine ibos^

PATENT CASES. 713

Hogg et al V. Emerson. 6 How.

poiDts separately and with cate, and if most of them present
questions of common law only, and not of the construction of
the Patent Acts, and others present questions under those acts
which seem very clearly settled or trifling in their character
not to grant the writ of error at all. It might, then, well be
regarded as not '^ reasonable" for such questions, in a contro-
versy too small in amoant to make the writ a matter of right
to persons, if standing on an equal footing with the suitors.
But we think, from the particular words used rather than other-
wise, that the act act intended, if the Court allowed the writ
as '^ reasonable " at all, it must be for the whole case, or in
other words, must bring up the whole for consideration.

We shall, therefore, proceed to examine all the questions
made at the trial, which it is supposed are relied on, and are
now before us on the original writ and a certiorari issu^ since.

Looking to the declaration, the action is for a violation of a
patent for an " improvement in the steam-engine, and in the
mode of propelling therewith either vessels on the water or
carriages on the land."

The evidence offered at the trial was a patent for " a new
and useful improvement in the steam-engine," " a description
whereof is given in the words of the said JohA B. Emerson
himself, in the schedale hereto annexed, and is made a part
of these presents."

In the schedule annexed is described fally what he says he
invented, namely, ^' certain improvements in the steam-engine,
and in the mode of propelling therewith either vessels on the
water or carriages on the land."

The first question arising on this statement is, whether the
evidence proves such a patent as is set out in the writ to have
been violated by the respondents.

If the patent is to be ascertained from the letters alone, or
rather from what is sometimes called their title or heading,
without reference to the schedule annexed, the evidence is

60*

714 PATENT CASES.

Hogg et aL v. EmenoB. < Hov.

undoubtedly defective, as the writ speaks of t patent for ao
** improvement in the 8team*engine and in the mode of pro-
pelling" vesselfly &c.f therewith, — while the letters them-
selves, in their title or heading, speak only of a patent for'^a
new and useful improvement in the steam-engine." But the
schedule annexed and referred to for further description, alter
<* improvement in the steam-engine," adds, <' and in the mode
of propelling therewith " vessels, &c.

It can hardly be doubted, therefore, that the uo-
[ * 479 ] provement * referred to in the writ and in the lei-
ters^tent, with the schedule or specification ao-
nexed, was in truth one and the same.

Coupling the two last together, they constitute the rerj
thing described in the writ But whether they can properly
be so united here, and the effect of it to remove the difficulty;
has been questioned, and must therefore be further esunio-
ed« We are apt to be misled, in this country, by the la«s
and forms bearing on this point in Engluid being so diflerent
in some respects from what exist here.

There the patent is first issued, and contams no reference
to the specification, except a stipulation that one shiH, iD tbe
required time, be filed, giving a more minute desoriptioo of
the matter patented. (Webster on Pat. 6,88; Godson <«
Pat. 6, App.) It need not be filed under two to four months,
in the discretion of the proper oflSioer. (Godsoa on Fat
176.)

Under these circumstances, it will be seen that the f^-^^^
going out alone there, must in its title or heading be vm
than here, where it goes out with the minute specificatioD'
But even there it may afterwards be aided, and its m&tter oe
made more clear, by what the specification contains. Tn^
are, says Godson on Pat. 108, "connected together," »»
" one may be looked at to understand the other." See ai»
2 Hen. Bl. 478 ; 1 Webst. Pat. R. 1 17 ; 8 D. & E. "

PATENT CASES. 715

Hogg et al. p. JSaenos. $ How.

There, however, it will ooi answer to allow the specifica-
tioD, filed separately and long after, to be resorted to for sup-
plying any entire omission in the patent ; else something may
be thus inserted afterwards which had never been previoudy
examined by the proper officers, and which if it had been sub-
mitted to them in the patent and examined, might have pre-
vented the allowance of it, and which the world is not aware
of, seeing only the letters-patent without the specification, and
without any reference whatever to its contents. 3 Brocl. b
Bingh. 5.

The whole facts and law, however, are different here. This
patent issued March 8th, 1834, and is therefore to be tested
by the Act of Congress then in force, which passed February
Slst, 1793. (I Statutes at Large, 318.)

In the third section of that act it is expressly provided,
" diat every inventor, before he can receive a patent," '^ shall
deliver a written description of his invention," &c. ; — thus
giving priority very properly to the specification rather than
the patent.

This change from the English practice existed in the first
Patent Law, passed April 10th, 1790, (1 Statutes at Large,
109,) and is retained in the last Act of Congress on this sub^
ject, passed July 4th, 1836, (5 Statutes at Large, 119.)

It was wisely introduced, in order that the officers of the
government might at the outset have before them
full means to * examine and understand the claim [ * 480 ]
to an invention better, and decide more judiciously
whether to gnnt a patent or not, and might be able to give
to the world fuller, more accurate, and early descriptions of
it than would be possible under the laws and practice in Eng-
land.

In thw country, then, the specification being required to be
prepared and filed before the patent issues, it can well be re-
ferred to therein in extmeo^ as containing the whole subject-

716 PATENT CASES.

Hogg et aL V. Bmenoii. 6 How.

matter of the claim or petition for a patent^and then not only
be recorded for information, aa the laws both in England and
here require, but beyond what is practicable there, be united
and go out with the letters-patent themselves, so as to be nte
that these last thus contain the substance of what is designed
to be regarded as a portion of the petition, and thus exhibit
with accuracy all the claim by the inventor.

But before inquiring more particularly into the effect of this
change, it may be useful to see if it is a compliance with tk
laws in respect to a petition which existed when this potent
issued, but were altered in terms shortly aftOt.

A petition always was, and still is, required to be presented
by an inventor when he asks for a patent, and one is recited
in this patent to have been presented here. It was also highly
important in England, that the contents of the petition as to
the description of the invention should be full, in order to in-
clude the material parts of them in the patent, no specificatioo
being so soon filed there, as here, to obtain such descriptioD
from, or to be treated as a portion of the petition, and the
whole of it sent out with the patent, and thus complying witb
the spirit of the law, and giving fuller and more accanite in-
formation as to the invention than any abstract of it oould.

In this view, and under such laws and practice here, it *i"
be seen that the contents of the petition, as well as tbe peti-
tion itself, became a very unimportant form, except as con*
strued to adopt the specification, and the contents of the latter
to be considered substantially as the contents of tbe former.

Accordingly, it is not a little curious, that though the Act
of 1793, which is to govern this case, required, like that of
1790, a petition to be presented, and the patent when issued^
as in the English form, to recite the ^' allegations and sugg^
tions of the petition," (1 Statutes at Large, p. 3S1, sec 1 and
p. 110, sec. 3,) yet, on careful inquiry at the proper office, w
far as its records are restored, it appears that, after tbe M

PATENT CASES. 717

Hogg et aL V. Emenon. 6 How.

Act of 1790 passed, the petitions standiDg alone seldom con-
tained any thing as to the patent beyond a mere title ; some*
times fuller, and again very imperfect and general, with no
other allegations or suggestions, or descriptions
whatever, except those in the * schedule or specifi- [ * 48 1 ]
cation. The only exception found is the case of
Evans v. Chambers, 2 Wash. C. C. 125, in a petition filed
December 18th, 1790.

Though the records of the Patent Office before 1836 were
consumed in that year, many have been restored, and one as
far back as August 10th, 1791, where the petition standing
alone speaks of having invented only ^^ an easy method of
propelling boats and other vessels through the water by the
power of horses and cattle." All the rest is left to the sehe«
dule. Other petitions, standing alone, are still more meagre;
one, for instance, in 1804, asks a patent only of a " new and
useful improvement, being a composition or tablets to write or
draw on ; " another, only <' a new and useful improvement in
the foot-stove,'' and another only ^'a new and useful improve-
ment for shoemakhig ; " and so through the great mass of them
for nearly half a century. But the specification being filed at
the same time, and often on the same paper, it seems to have
been regarded, whether specially named in the petition or
not, as a part of it, and as giving the particulars desired in it ;
and hence, to avoid mistakes as to the extent of the inventor's
claim, and to comply with the law, by inserting in the patent
at least the substance of the petition, the officers inserted, by
express reference, the whole descriptive portion of it as con-
tained in the schedule. This may have grown out of the
decision of Evans v. Chambers, in order to remedy one diffi-
culty there. Cases have been found as early as 1804, and
with great uniformity since, explicitly making the schedule
annexed a part of the letters«patent. Proofs of this exist,
also, in our reports, as early as 1821, in Grant et al. v. Ray-

718 PATENT CASES.

Hogg tt al. V. BmenoQ. 6 Eh»w.

mond, 6 Peters, S22; and one, Isi Oct. 1825, Id Gray etal.
V. James et al. Peters, C. C. 394 ; and 27 Dec 1828, WiIsod
V. Rousseau, 4 How. 649.

Indeed, it is the only form of a patent here known at the
Patent Office, and the only one given in American treataes
on patents. Phillips on Pat. 523. Doubtless this use of the
schedule was adopted, because it contained, acoordiog to
common understanding and practice, matter accoropaDjiif
the petition as a part of its substance, and all the descriptiofi
of the invention ever desired either in England or here in tlie
petition. Hence it is apparent, if the schedule itself w
made a part of the patent, and sent out to the worid witii it,
all, and even more, was contained in it than could be in uj
abstract or digest of a petition, as in the English form.

We regard this mode and usage on this subject, adopted so

early here and practised so long, as not proper to be overmled

now, to the destruction of every patent, probaUfi

[ * 482 ] from 1791 to • 1836 ; and this, too, when tbe spint

of all our system was thus more fully carried oot

than it could have been in any other way. *

As this course, however, sometimes was misunderstood aiw
led to misconstructions, the revising act as to patents, of Joif
4th, 1836, changed the phraseology of the law in this respect,
in order to conform to this long usage and construction aoder
the Act of 1793, and required not in terms any abstract of
the petition in the patent, but rather ''a short descriptioa'
or title of the invention or discovery, " correctly indicating >^
nature and design," and '' referring to the specification for
the particulars thereof, a copy of which shall be anoeied to
the patent." And it is that — the specification or scbedole
— which is fully to specify « what the patentee claims a****
invention or discovery." Sec. 5. (5 Statutes at Laige> 1»7

It was, therefore, from this long construction, in sacn w*
ous ways established or -ratified, that, in the present p^teoii

PATENT CASES. 719

Hogg et aL v. Emenoii. 6 How.

the schedule, or, in other words, the speci6cation, was incor-
porated expressly and at length into the letters themselves, —
not by merely annexing them with a wafer or tape, as is argued,
but describing the invention as an " improvement, a descrip-
tion whereof is given in the words of the said John B. Emer-
son himself, in the schedule hereto annexed, and is made a
part of these presents." Hience, too, wherever this form has
been adopted, either before or since the Act of 1886, it;is as
much to be considered with the letters, — literce patentes, -—
in construing them, as any paper referred to in a deed og
other contract. Most descriptions of lands are to be ascer-
tained only by the other deeds and records expressly speci-
fied or referred to for guides ; and so of schedules of personal
property, annexed to bills of sale. Foxcroft t^. Mallett, 4
How. 378 ; 21 Maine^ 69 ; 20 Pick. 122; Phil, on Pat. 228;
Earle v. Sawyer, 4 Mason, C. C. 9 ; Ex parte Fox, t Ves. &
Beames, 67. The schednle, therefore, is in such case to be
regarded as a component part of the patent. . Peters, C. C.
994, and Davis t^. Pahner et al. 2 Brockenbrough, 301. The
oath of Emerson, too, that he was inventor of the improve-
ment, must thus be considered as extending to all described
in the schedule, no less than the title ; and this is peculiarly
proper, when the specification is his own account of the im-
provement, and the patent is usually only the account of it
by another, an officer of the government. Taking, then, the
specification and letters together, as the Patent Oflice and the
inventor have manifestly in this instance intended that they
should be, and they include what has long been deemed a
part and the substance of the petition ; and the patent de-
scribed in them is quite broad enough to embrace what is
alleged in the writ to have been taken out as a.
* patent by the plaintiff, and to have be^n violated [ * 483 ]
by the defendants. They are almost ipaissimia
verbis. And when we are called upon to decide the mean-

780 PATENT CASES.

Hogg et aL r. Emenoa. 6 Hofr.

ing of the patent included in these letters, it seeins oar doty
not only to look for aid to the specification as a specificatioo,
which 18 customary, (1 Gall. 487 ; 2 Story, R. 621 ; 1 Masoo,
C. C. 477,) but as a schedule, made here an integial portioD
of the letters themselves, and going out with them to tbe
worid, at first, as a part and parcel of them, and for this par-
pose united together for ever as identical.

It will thus be seen, that the effect of these changes io our
Patent Laws, and the long usage and construction under then,
10 entirely to remove the objection, that the patent io Hii
case was not as broad as the claim in the writ, and did not
comply substantially with the requirements connected witii
the petition.

From want of full attention to the differences betweeo the
English laws and ours, on patents, the views thrown oal io
some of the early cases in this country do not entirely aocd
with those now offered. Paine, C. C. 441 ; Pennock etal.f'

Dialogue, 8 Pet. 1. Some other diversity exists at times, u
consequence of the Act of 1798, and the usages under it in

the Patent Office, not being io all respects as the Act of

1836. But it is not important, in this case, to go farther ioto

these considerations.
The next objection is, that this description in the letters

thus considered covers more than one patept, and is, thei^

fore, void.
There seems to htfVe been no good reason at first, Qok* ^^

be a fiscal one on the part of the government when iflOiQ?

patents, why more than one in favor of the same inTeoter

should not be embraced in one instrument, like mote ttaa

one tract of land in one deed, or patent for land. Pbutip*

on Pat. 217.
Each could be set out in separate articles or paragraphs ^

different counts for different matters in libels in admiralty or

declarations at common law, and the specifications codM

made distinct for each, and equally clear.

PATENT CASES. 721

Hogg et ftl. V. Emerson. 6 How.

Bat to obtain more revenue, the public officers have gene-
rally declined to issue letters for more than one patent de-
scribed in them. Renouard, 293 ; Phillips on Pat. 218. The
courts have been disposed to acquiesce in the practice, as
conducive to clearness and certainty. And if letters issue
otherwise inadvertently, to hold them, as a general rule, null.
But it is a well-established exception, that patents may be
united, if two or more, included in one set of letters, relate
to a like subject, or are in their nature or operation connected
together. Phil, on Pat. 218, 219 ; Barrett v. Hall, 1 Mason,
C. C. 447 ; Moody v. Fisk, 2 Mason, C. C. 112 ; .Wyeth et al.
t;. Stone et al. 1 Story, 273.

* Those here are of that character, being all con- [ * 484 ]
nected with the use of the improvements in the
steam-engine, as applied to propel carriages or vessels, and
may therefore be united in one instrument.

Another objection b, that these letters, even when thus
connected with the specification, are not sufficiently clear and
certain in their description of the inventions.

This involves a question of law only in part, or so far as
regards the construction of the written words used. Reutgen
V. Kanowrs et al. 1 Wash. C. C. 168 ; Davis v. Palmer et al.
2 Brockenbrough, C. C. 303 ; Wood t?. Underhill, 5 How. 1.
The degree of clearness and freedom from ambiguity required
in such cases is, by the Patent Act itself of 1793, to be suffi-
cient '^ to distinguish the same from all other things before
known, and to enable any person skilled in the art or science
of which it is a branch, or with which it is most nearly con-
nected, to make, compound, and use the same." 1 Statutes
*at Large, 321. See also on this, Godson on Pat. 153, 154 ;
2 Hen. Bl. 489 ; Wood v. Underhill, 5 How. 1 ; Davoll et al.
V. Brown, 1 Woodb. h. Min. 57 ; Pet. C. C. 301 ; Sullivan
V. Redfield, Paine C. C. 441.

There are some further and laudable objects in having ex-

TOL. II. — p. c. 61

722 PATENT CASES.

Hogg et al. V. Ernenon. 6 How.

actness to this extent, so as, when the specification is pre-
sented, to enable the Commiasioner of Patents to jadge cor-
rectly whether the matter daimed is new or too broad. 3
Wheat. 454 ; 3 Brod. & Bingh. 5 ; 1 Starkie, N. P. 192. So,
also, to enable courts, when it is contested afterwards bdoie
them, to form a like judgment. 1 Starkie, N. P. 192. And
so that the public, while the term continues, may be aUe to
understand what the patent is, and refrain from its use, unleai
licensed. Webster on Pat. 86 ; 1 1 East, 106 ; 3 Merivak,
161 ; Evans v. Eaton, 3 Wash. C. C. 453 ; 4 Wash. C. C. 9;
Bo?ill V. Moore, Davies's Cas. 361 ; Lowell v. Lewis, 1 Ht-
son, C.C. 182-189. .

In the present instance, yielding to the force of such rea-
sons in favor of a due and rational degree of certainty in de-
scribing any improvements claimed as new, there still seems
to us, though without the aid of experts and machinists, no
difficulty in ascertaining, from the language used here, the
new movement intended to be given to the steam-engine, bj
substituting a continued rotary motion for a crank motion,
and the new form of the spiral wheel, when the engine is
used in vessels, by changing the form of the paddles and
placing them near the ends of the arms ; and the new con-
nection of Che power with the capstan of such vessels, by in-
serting the upper end of the shaft into the capstan.
[ * 485 ] It is obvious, also, that the inventor * claims as his
improvement, not the whole of the engine, nor the
whole of the wheel, but both merely in the new and superior
form which he particularly sets out He, therefore, does not
claim too much, which might be bad. Hill t^. Thompson et
al. 2 J. Marsh. 435 ; 4 Wash. C. C. 68 ; Godson on Patents,
189 ; Kay v. Marshall, 1 Mylne & Cr. 373 ; 1 Story, R. 273 ;
2 Mason, C. C. 112 ; 4 Barn. & Aid. l41 ; Bovill t;. Moore,
2 Marsh. Com. P. Rep. 211.
The novelty in each he describes clearly, as he shoald ;

PATENT CASES. 723

Hogg et al. V. Emereon. 6 Hov.

and it is not necessary he should go further. 1 Story, R.
286 ; Webster on Pat 86, note ; MacFarlane v. Price, 1
Starkie, 199; and King v. Cutler, ib. 354; 3 Car. & Payne,
611 ; 2 Mason, C. C. 112; Kingsby & Pirsson on Pat. 61 ;
Godson on Pat. 154 ; Isaacs v. Cooper et al. 4 Wash. C. C.
259.

He need not describe particularly, and disclaim all the old
parts. 7 Wheat. 435 ; Phil, on Pat. 270, and cases cited.

And the more especially is that unnecessary, when such
disclaimer is manifestly, in substance, the result of his claim-
ing as new only the portions which he does describe specially.
All which is required on principle in order to be exact, and
not ambiguous, thus becomes so.

It is to be recollected, likewise, that the models and draw-
ings were a part of this case below, and are proper to be
resorted to for clearer information. Earle v. Sawyer, 4 Ma-
son, C. C. 9. With them and such explanatory testimony as
experts and machinists could furnish, the Court below were
in a condition to understand better all the details, and to
decide more correctly on the clearness of the description ; but
from all we have seen on the record alone, we do not hesitate
to concur in the views on this point as expressed in that
court.

In conduston, on the other objections to the proof, as to
the drawings and to the charge below in relation to the effect
of them, and to the destruction of them by fire, we likewise
approve the directions given to the jury.

The destruction by fire was no fault of the inventor ; and
his rights had all become previously perfected. This is too
plain to need further illustration. We cannot consent to be
over astute in sustaining objections to patents. 4 East, 135;
Crosley v. Beverly, 3 Car. & Payne, 513, 514. The true rule
of construction in respect to patents and specifications, and
the doings generally of inventors, is to apply to them plain

724 PATENT CASES.

Phillips 9. Combfltock. 4 McLean.

and ordinary principles, as we have endeavored to on this

occasion, and not, in this most metaphysical branch of moderQ

law, to yield to subtilties and technicalities, unsuited to the

subject and not in keeping with the liberal spirit of the age,

and likely to prove rainous to a class of the com-

[ * 486 ] monity so inconsiderate * and unskilled in business

as men of genius and inventors usually are.

Indeed, the English letters-patent themselves, now, howcTer
different may have been once their form or the practice iioder
them, declare that '' they are to be construed " " in the most
fiivorable and beneficial sense, for the best advantage" of the
patentee. Godson on Pat 24, App. 7 ; Kingsby & Pirsson
on Patents, 35. See also, on this rule, Grant v. Raymond,
6 Peters, 218 ; Ames v. Howard, 1 Sumn. 482-485; Wyeth
V. Stone, I Story, R. 273, 287 ; Blanchard v. Spragoe, 2
Story, R. 164; 2 Brockenbrough, C. C. 303 ; 2 Barn. &rh\i
345, in The King v. Wheeler ; 5 Howard, 708, in Wilson f.
Rousseau et al. ; 1 Crompt. Mees. & Rob. 864, 876, in Rossel
t?. Cowly.

The judgment below is affirmed.

Note. — After the delivery of this opinion, the coonsel for
the plaintiffs in error suggested that other questions were
made below, which they desired to be considered, and there-
fore moved for another certiorari to bring them up. 1"'*
was allowed, and judgment suspended till the next term.

Phillips v. Combstock.

[4 McLean, 525. May T. 1849.]

A special plea or notice mast be filed thirty days before the term, » tr-
case, or the plaintiff will be entitled to a continaaBce.

PATENT CASES. 725

Paricer v, Haworth. 4 McLean.

The option to file the general isiae and give notice, does not take away the
right to set np the special matter in a plea.

Baird for the plaintiff.
Judah for defendant

Opinion of the Court.

This is an action for the violation of a patent-right. The
defendant filed a special plea, setting up that the right was
not in the plaintiff; a previous discovery; and that the right
was of no value. And a question was raised whether a
special plea could be filed, or whether the plaintiff was not
bound to plead the general issue and give notice as authorized
by the statute.

The Court held that a special plea may be filed. That a
right to plead the general issue, and give notice by the statute,
was an enlargement of the defendant's mode of defence, but
that it did not take away his right to plead specially. But
the Court held also, that as the plea was not put in thirty
days before the term, the plaintiff was entitled to a continu-
ance. The statute provides that the notice under the general
issue shall be filed thirty days before the term. This entitles
the plaintiff to the thirty days whether the matter be set up
by a plea or notice.

Z. Parker v. James F. Haworth.

[4 McLean, 87d. Jane T. 1848.]

A patent may be assigned in part, or the whole of It.
An ayennent in the declaration that the defendant has made the thing *'in imi-
cation of the patent,** is sofflcient to sustain the action.

61*

726 . PATENT CASES.

Parker t;. Haworth. 4 McLean.

The machtneiy complained of, if the same in jirinciple as the pkintiff 's, is sa

infringement.
Parker's patent is for improTements on known machinery and a combinstiofi

of mechanical powers.
There can be no infringement of the eombixiation, which does not embnct ili

the parts.
But it is an infringement to adopt any improTement of the pUdntiff^i of anj ot

the parts of the combination.
An inTentor, under his patent, claims no monopoly.

Logan for the plaintiff.

Weed for the defendant.

Opinion of ths Court.
This action is brought, charging the defendant with a w-

laUon of the plaintiff's patent for a percassion and reacUoo
water-wheel. The defendant pleaded not guilty. The jorj
being sworn, the plaintiff offered an exemplification of his
paten ty containing certain assignments, in evidence, wjiicii
was objected to by defendant^ on two grounds: 1. That
there is no proof of the original assignment to McEIvey:aD<i
2. That there is no proof that McElvey was administrator, as

he assumed to be.
[ * 37 1 ] * The assignment of a patent in whole or in par^

is authorized by act of Congress, and it is reqi
to be recorded in the Patent Office. The assignments in «
case have been recorded, and the paper now offered contaiw
a copy of them, duly authenticated ; and the law of CoDpc*
makes such copies evidence, as well as a copy of the p«ten
Such copies, therefore, must be received, as primd tm^^
at least, of the genuineness of the originals on 61e; ^^^^T"
lute evidence of the correctness of the copies from therecoW'

Several witnesses were examined to show the value o
improvement claimed by the plaintiff. One of the «ritn
Mr. West, says he has built forty or fifty of Parker's per«Bi-

PATENT CASES. 727

Parker v. Haworth. 4 McLean.

sion water-wheels ; and the question being asked him whether
there were not other wheels similar to those of Parker's, it
was objected to, there having been no notice given, as the
statute requires, and the Court sustained the objection. The
witness says, the product of Parker's improvement is nearly
three times as great as the other wheels in use.

A question being asked of a witness whether the defendant
throws the water upon the wheel through a spiral trunk, was
objected to because the declaration contained no such aver-
ment. But the Court permitted the question to be asked, as
in the dechration the trunk was averred to be made in imita-
tion of the plaintiff's patent

Several witnesses were examined, who thought the im-
provement of no great value, and, in some respects, they
considered it less valuable than the flutter^wheel, generally
in use : and some of them who are millwrights, do not think
the defendant's wheel is an infringement upon that of the
plaintiff's.

The case having been argued to the jury, the Court ob-
served to them : This action is brought to recover
damages * for a violation of the plaintiff's right. [ * 372 ]
The policy of the law, which protects the right of
the inventor, is wise. It stimulates genius, by endeavoring
to secure a reasonable compensation to those who have spent
their time and money in producing something of utility to the
public. It is not a monopoly the inventor receives. Instead
of taking any thing from the public, he confers on it the
greatest benefits ; and all he asks, and all he receives, is, that
for a few years he shall realize some advantage from his own
creation ; not that he withholds bis machine or discovery from
the country, but that in distributing it he may receive a small
compensation for the great t>enefit he confers.

The triumphs of the invent<Nr are intellectual triumphs.
His demonstrations are made through mechanical agencies,

728 PATENT CASES.

Fuker v. Haworth. 4 McLean*

but these, in the highest degree, are attributable to miod;
and the same may be said of our inventive mechanics gene-
rally. The range of their thought embraces the system of
natural philosophy, in all its practical bearings ; and in can;-
ing out .their views, the highest degree of mechanical inge-
nuity. Through the labors of these men our coaDt7 bu
been advanced by machinery, on the land and on the water,
in the saving of labor, and in a rapid and increased inter-
course, and especially in the communication of intelligence,iii
the last forty years, more than could have been hoped for,
without their instrumentality, in many centuries. And jet,
how few of them are considered public benefactors. Their
inventions are pirated, and they often reduced to ind^eoce
by the vindication of their rights.

The plaintiff in this case is not entitled to recover damages
unless he shows that the defendant has violated the patent b;
using the machinery invented or improved by the plaintiff.
There seems to be nothing in the evidence which can create
a doubt, in regard to the invention claimed by the patent

And your inquiry will be chiefly directed totbeut^ |
[*373] fringement * charged in the declaration. To tha
the plaintiff is limited. If the defendant has ar-
ranged his machinery on the same principle as claimed b/tne
plaintiff, he is guilty of infringement. You will understand
that it is not essential that the wheel of the defendant, in Jt>
form, should be exactly similar to that of the plaintiff; bat k
must work on the same principle. The force of the ^^^
must be thrown upon it in substantially the same manner.

If you shall find for the plaintiff, you will assess m
damages, as in your judgments shall be just There are n<>
circumstances in the case which call for exemplary ^^^^
The defendant may not have been aware of the fmio
right, at the time he procured his machinery to be co
structed.

Verdict for the plaintiff.

PATENT CASES. 729

Parker v. Haworth. 4 McLean.

A motion was made in arrest of judgment, on the ground,
that the declaration does not set forth the act complained of
as contrary to the statute. This is necessary when an action
is brought on a penal statute, but not in a case like the
present, where damages are sought for on an injury done.
Where the plaintiff sues for a penalty, as the statute is the
only foundation of the action, the declaration must aver that
the act is contra formam statuti. In Tryon v. White, (Pe-
ters, C. C. Rep. 96,) it is said, '< if the declai^tion in an action
for the invasion of a patent-right, fails to lay the act com-
plained contrh formam statuti, the defect will be purged after
the verdict."

Another ground in arrest is stated, that the declaration
should allege an infringement of the combination claimed in
the patent.

It is a well-established principle that where the invention
consists of a combination of known mechanical powers, the
use of a part less than the whole combination, would be no
infringement. Each one of the different powers combined
constitutes a part of the whole, but the invention is
not in * any of the parts, but in the combination of [ * 374 ]
them. The pi^rts of which the combination con-
sists, remain unrestrained from general use, as before the
invention.

But the plaintiff's invention consists, not only in the com-
bination, but in the improvement of several of the parts of
which that combination is composed. And the violation of
one of them is an infringement for which an action will lie
The motion in arrest is overruled and judgment.

730 PXTENT cases.

Hotchkiu*8 ExeoatrLc, etc. v. Greenwood & Wood. 4 McLean.

HOTCHKISS'S EXECUT&IX, ETC. V. GrBEMWOOO & WoOD.

[4 McLean, 456. Jaly T. 1848.]

A paten^right cannot be sastained for making an article of a new matemi,

according to a known mode.
If the material be new, as a compound inrented, a pateni*x|glit maj be diimed

for that.
[*457 ] * The invention most relate to Bomething new, in etroctareormi-

teriaL
Door knobs having been made of glass, wood, brass, and. other malmil^ de
making of the same of potter's ware, or porcelain, a material loog knoAi
will not entitie any one to a patent.
And if the mode of fastening the shank to the knob be the same as bu Beea
done in fastening the shank to knobs made of other materials, there is i» is*
yention to sustain an exclasire right
And this is the case, although the porcelain knob may be more yala&bfethaa
knobs made of any other materials.

Ewing for plaiDtifls.

Fox and Chase for defendants.

Opinion of the Court.

'This action was brought against the defendants, to recofcr
damages for the infringement of a patent-right obiainw "f
John E. Hotchkiss and others, for an improved method of
making knobs for locks, doors, cabinet furniture, and a
other purposes for which wood and metal, or other mii^»
for knobs are used, etc.

The defendants pleaded not guilty, and gave notice fM
the improvement claimed was known and practised, and
such knobs were made, used, and sold by others, before
patent, in. different parts of this country, and also w ^
Britain and Germany, etc. . .

The patent was given in evidence, and the gcbed^e v

PATENT CASES. 731

Hotchkiss's Ezecatriz, etc. v. Greenwood ft Wood. 4 McLeai^.

constitutes a part of the patent, in which the patentees
claimed that they "had invented an improved method of
making knobs for locks, doors/' etc "And that the improve-
ment consists in making said knobs of potter's clay, such as
is used in any species of pottery ; also of porcelain ; the ope-
ration is the same as in pottery, by moulding and burning,
and glazing; they may be plain in surface and color, or orna-
mented to any degree in both ; the modes of fitting them for
their application to doors, locks, furniture, and other uses, will
be as various as the uses to which they may be applied, but
chidly founded on one principle, that of having the
^ cavity in which the screw or shank is inserted, by [ * 458 ]
which they are fastened, largest at the bottom of its
depth, in form of a dove-tail, and a screw formed therein, by
pouring in metal in a fused state. In the annexed drawing,
A represents a knob with a laige screw inserted, for drawers
and similar purposes ; 6 represents a knob with a shank to
pass through and receive a nut ; C the head of the knob cal-
culated to receive a metallic neck ; D a knob with a shank,
calculated to receive a nut on the outside or front."

" What we claim as our invention, and desire to secure by
letters-patent is, the manufacturing of knobs, as stated in the
foregoing specifications, of potter's clay, or any kind of clay
used in pottery, and shaped and finished by moulding, turn-
ing, burning, and glazing ; and also of porcelain."

Evidence was given to the jury, conducing to show the
novelty and utility of the invention by the patentees, as
claimed by them, and that it was their joint invention.

Some evidence was given by the defendants tending to
show that the said alleged invention was not originally in-
vented by any one of the said patentees ; and that, if said
invention was original with any of the patentees, it was not
the joint invention of all of them ; and other evidence tending
to show that the mode of fastening the shank or collet to the

782 PATENT CASES.

Hotchkiss*8 Sxecatrix, etc v. Greenwood & Wood. 4 MeLean.

knob, adopted by the plaiotiffs and described in their specifi-
cations, had been known and used in Middletown, CooDecti-
cat, prior to the alleged inventions of the plaintifis, as a mode
of fastening shanks or collets to metallic knobs. And (he
evidence being closed,, the counsel for the plaintiffs iosisted
in the argument that, although the knob, in the form in wiiick
it is patented, may have been known and used in the United
States, prior to their invention and patent, and althougb llie
shank and spindle, by which it is attached, may have beea
used and known in the United States prior io said iareotion
and patent, yet if such shank and spindle had never before

been attached to potter's clay or porcelain, aixl if
[? 459 jit required * skill and thought and iaventidlto

attach the said knob of clay to the metal sbaokand
spindle, so that the same would unite firmly and make a
and substantial article or manufactu re ; and if the said
of clay or porcelain so attached, were an article better
cheaper than the knob theretofore manufactured of metal or
other materials, that the patent was valid, and asked tiie
Court so to instruct the jury.

This instruttion, gentlemen of the jury, the Court reto
to give, in the form requested. The plaintiA claim no in-
vention in regard to the material of whiSh the koob is com-
posed. In their specifications, they say, " the improvement
consists in making said knobs of potter's clay, such as is o^
in any species of pottery ; also of porcelain,'' etc lnfl«
materials have been known for ages, nor was tfaere any
novelty in the knob itself, as knobs of a similar forffl) "^
of other materials, had long been in use. They tad ^
constructed of brass, silver, glass, wood, iron, etc The sbw*
and spindle were not claimed as new. There was nothing
left, then, but the attaching of the spindle to the knob. ^
on this point the instruction is made to turn. "Yet n ^
shank and spindle had never before been attached to a

PATENT CASES. 733

Hotohkigtfi Ez«eatrix «t aL v. Gnenwood ft Wood. 4 McLean.

« ' "

made of pottePs clay or porcelain^ and if it required * skill
and thought and invention ' to attach the said knob of clay
to the metal shank and spindle, so that the same would unite
firmly and make a substantial article of manufacture/' etc.
It Is true this part of the instruction is founded upon the
suppositioui that to attach the spindle to the knob of clay or
porcelain, " required skill and thought and invention/' leaving
the invention, without designating it in any form, or saying
that it must be different from any known mode, open to the
jary. Now it requires skill and thought to attach a spindle
to any kind of knob. Such skill as an individual acquainted
with mechanics, only, can exercise; and no skill can be exer*
cised without more or less of thought. And where
* skill and thought are united, two of the requisites [ ^ 460 ]
to sustain the right of the plaintiffi, unless the mind
of the jury were brought distinctly to the point of invention,
which is the hinge of the case, they might infer its existence
from the two preceding requisites.

To give an exclusive right, there must be what is called a
new principle, invented. Not a new principle in an abstract
sense, for none such is likely to be discovered ; but a new
combination or mode, for instance, of attaching the spindle to
the knob. If in this there is nothing different from a known
mode, there can be no invention which gives a new right to
the plaintiffs. And yet the mind of the jury, by the instruc-
tion asked, is not drawn to this consideration. This instruct
tion, therefore, in the form asked, is rather calculated to mis-
lead the jury than to bring to their minds, distinctly, what
the invention must be.

Another part of this instruction, as asked, is objectionable.
<<And if the knob of day or porcelain so attached, were an
article better and cheaper than the knob theretofore manu-
Pictured of metal or other materials, that the patent was
valid,'' etc. Now, here, the ^< cheapness '' and " quality " of

VOL. II.— p. c. 62

734 PATENT CASES.

Hotchkiss's Ezecatriz et al. v. Greenwood & Wood. 4 MeXteaa.

the article are relied on as giving, or contributing to give^ the
plaintiffs an exclusive right But these afford no gnxind
whatever for a patent. The words <' so attached/' are used
referring to the preceding part of the sentencCi reqairing skill,
thought, and invention, but not so as to bring the mind of the
jury to what must be invented to sustdn the patent ; and the
quality and cheapness of the article are so connected as to
have an influence on the jury, to which they are not entitled.
In an action of this kind, the comparative value of the tfaii^
invented, so far as the exclusive right is concerned^ it is not
necessary to show beyond the fact that it is nsefnl, or of
some value.

An article made according to a known method, may be
better than other ardcles made in the same manner,
[ * 461 ] on * account of its superior mechanism. But this
is no foundation of an exclusive right. And if a
material not before used in the same structure be used, that
gives no claim to a patent, though the article be more valua-
ble than any other of the kind. If a compound be made, not
before known, of different ingredients, that is a ground for a
patent, not for the thing constructed, but for the compoond
of which it is made.

The ground on which a patent may be claimed is, that
something new and useful has been invented. A thing which
did not before exist A machine, for instance, differing from
all other machines in its structure, movement, or effect, by
reason of the introduction of some new mechanical combina-
tion or principle.

The Court will, therefore, instruct the jury, '^ that if knobs
of the same form and for the sQ;me purposes with that de-
scribed by the plaintiffs in their specifications, made of metal
or other material, had been known and used in the United
States prior to the alleged invention and patent of the plain-
tiffii ; and if the spindle and shank, in the form used by the

PATENT CASES. 736

Hotchkifls's Executrix et al. v. Greenwood & Wood. 4 McLean.

plaintifTsy had before that time been publicly known and used

in the United States, and had been theretofore attached to

metallic knobs by means of the dovetui and the infusions of

melted metal, as the same is directed in the specification of

the plaintiffs, to be attached to the knob of potter's clay or

porcelain, so that if the knob of clay or porcelain is the mere

substitution of one material for another, and the spindle and

shank be such as were theretofore in common use, and the

mode of connecting them to the knob by dovetail be the

same that was theretofore in use in the United States, the

material being in common use, and no other ingenuity or

skill being necessary to construct the knob than that of an

ordinary mechanic acquainted with the business, the patent

is void and the plaintiffs are not entitled to recover."

The counsel for the defendants asked the Court to instruct
the jury, that if they should be satisfied that any
one of the * patentees was the original inventor of [ ^ 462 ]
the article in question, and that the same was new
and useful, yet if they should be satisfied from the evidence
that all the patentees did not participate in the invention, the
patent is void, and the plaintifls cannot recover. And the
Court gave the instruction, modified by the remark, that the
patent was primd facie evidence that the invention was joint,
though the fact might be disproved at the trial; and the
Court said, there was no evidence, except that of a slight
presumption, against the joint invention as proved by the
patent.

The jury found for the defendants, and the case being
taken to the Supreme Court, on points excepted to, was
afiirmed. 1 1 Howard.

7ae PATENT CASES.

Ffeiier v. Cofbia. 4 KcT<w

PlftKfiB V. COBBIK.
[4 McLean, 46S. KoTBmlMrT.1848.]

WhefB ft pftteat-rigfat has been infringed, the defendant not tmowin^ of the

pbdnttfTs right at the time, no more than compenaatoij danuiges viS be

given.
Bat wliefe the infringement ia dianbderiaed bj ft diiyoaitian to wSoti tfca

interest of the patentee, covnsel fees, and what may be teimed viisJktift

damages, may be assessed by the juy.

Ernng for plaintiff.

Opimoif or THE ComiT.

This is an action for the infringement of a patent, by tbe
constraction of a water wheel for a saw-mill, umng tbe r^t
which excInsiTelj belonged to the plaintiff. The defendant
soflered a default, and the jury were sworn to inquire of tbe
damages, etc.

The counsel prayed the Court to instruct the jury that the
plaintiff was entitled to recoTer as a part of the damages the
counsel fees paid by the plaintiff. The Court declined giviiig
the instruction positively, but said to the jury, the damages
were to be assessed by them in the exercise of tfaeir
[ * 463 ] * judgment, from the evidence. That where the
act complained of had been done without a know-
ledge of the plaintiff^s right, and under such circumstances
as to authorize the jury to infer that the defendant was not
aware that he was violating the rights of any one, the damages
should be so graduated as to give nothing more than to com-
pensate the injury done to the plaintiff. But where the. cir-
cumstances were of a somewhat aggravated character, what
was sometimes called in the law vindictive damages might be
given, which would include counsel fees, and something more
by way of example to deter others from doing the same thing.

Verdict (6r plaintiff.

PATENT CASES. 737

Blaaduyrd v. Eldridge. 1 Wallace.

Blanchard v. Elbridgs.

[1 Wallace, 337. April T. 1849.]

Assignment of Patent-Right — Parties to Sue.

Where a traiufer of certain specified priyileges, part of larger priyileges secured
by the patent-right, does not confer a legal title to the whole, or to an nndi*
Tided portion of the right, nor grant the entire or exdnsire right within a
specified part of the United States, a snit for an infnngement of one of the
priyileges transferred, is properly brought at law, in the name of the original
holder.

I*or example, B having a patent for turning irregular forma generally granti
to C the full and ezduslTe license, right, and permission, to uae it for turn-
ing shoe lasts. D haying infnnged the patent by turning shoe lasts, it was
held, that snit for the infnngement was properly brought at law in B's
name.

Blanchabd had brought a suit, in his own name, at law,
and recovered damages for an infringement of a patent he had
obtained for turning every kind of irregular forms. In the
course* of the trial, however, the defendant was allowed to
show, that prior to the bringing of the suit, Blanchard had as-
signed to one Carter, ^' the full and exclusive license, right,
and permission to have, hold, use, and enjoy Blanchard's pa-
tent for turning irregular forms, &c., so far as said improve-
ment is or may be used for turning shoe lasts, boot and shoe
trees, and hat blocks, and also for^ turning spokes for wheels
of all kinds of carriage wheels, and all other articles that form
any part in the construction of carriages. To have and to
hold the said right and license exclusive of all others, except
such persons as have received grants or licenses before the
date hereof," &c.

The infringement proved on the trial was that of mak-
ing shoe lasts, that is to say, an infringement of one of

62*

738 PATENT CASES.

Blanchard v. Eldridge. I Wallaea

[ * 338 ] *^ the rights and interests granted exclasivel; to
Carter.

Eirst^ for the defendant, haTing moved for a new trial, re-
lied, among other reasons for it, upon the fact of this transfer
to Carter ; his argament being, that as Carter was the " party
injured," and had the " exclusive right," he was the onlf
person entitled to an action ; and that the plaintiff, hariog
parted with all right to use the machine for the purpose of
making lasts, &c., over the whole United States, cooU not
support an action for the infringement.

The Patent Law,i it is requisite here to state, enacts,
^ that every patent shall be assignable in law eidier as totk
whole interest or any undivided part thereof, Ac, which m-
signment, and also every grant and conveyance of the eato-
sive right under any patent to make, use, and to grant to
others to make and use, the thing patented within and throogk-
cot any specified part or portion of the United States, M
be," Ac, and makes no otfier provision dxwt assignments.
And also that the act requires the action for an infringen*"'
to be " brought hi the njime or names of the person or persotf
interested, whether sa pateatee> assignees, or as grantees, w
the exclusive right within and throughout a specified f^
the United States."

F. W. HubhM and Saunderu Lww, cited a MS. report
of a recent decision in the New York Circuit, upon this iden-
tical assignment, in which it was held by Judge Nelson, tw
suit was properly brought in Bhnefaard's name.

[ • 339 ] * GwEB, J. The point here raised by tie de^-
fendant's counsel is not without its dilBculty, an

1 Act of July 4, 18S6, § 11 ; 5th Statutes at Lwge, l^l-
^ Id. § 14. See Appendix.

PATENT CASES. 739

Blancliard v, Eldridge. 1 Wallact.

the force of his argument cannot be evaded if his assamption
be true, that this deed transfers the legal title to Carter of that
portion of the patent, which it purports to vest in him. But
if it does not so operate, it cannot be noticed in a court of
law, and cannot affect the case.

As the grants of the crown were at common law, construed
with the greatest strictness, the privileges granted by a patent
for a monopoly, would probably not have been treated as ca-
pable of assignment, unless made so by the letter of the grant
Since the statute 31 James L,^ patents for useful inventions
(notwithstanding the statute itself mentions the " inventor ^
only,) have always granted the privilege or monopcdy to the
inventor, his executor, administrator, and assigns. These
monopolies are, therefore, assignable as other personal chat*
tels, by force of the grant which creates them.

As a chattel also, it nSight be held by two or more joint
owners ; hence any undivided portion or interest in the whole
as an unity might be assigned, and if the original grantee died,
such assignees might join in action for an infringement of their
i right.2 (c Bq^ the patent-right itself was insusceptible of local
subdivision.'' ^ As a privilege or monopoly, it was an entire
thing, indivisible, and incapable of apportionment.^

But the Act of Congress of 1836, has regulated the assign-
ment of patents. The eleventh section provides,
that a patent shall be assignable, 1st. As to *the [ *340 ]
whole interest; 3d. As to any undivided part
thereof; and 3d. An* exclusive right may be granted through-
out any specified part or portion of the United States. The
fourteenth section requires the action for an infringement of

lCh.8d,§5.

'Boulton o. BtiU, 2 Henry Blackstone, 468.

9Wliittemore v. Cutter, 1 Galliflon, 429-481 ; anUy vol. 1, 28.

4 Brooks V. B/am, 2 Story, 525 ; ante, 161.

740 PATENT CASES.

BludwTd V. Eidiidg«. I Wallaoe.

the patent, to be brought '^ in the name or names of the per-
son or persons interested, whether as patentee, assignees, or
as grantees of the exclnsiTe right within and throughoati
a specified part of the United States." The word *' asagDees,^
in this section, must be construed by reference to the eleventii
section, already referred to, which defines in what way a p-
tent may be assigned — to wit : either the whole or any qo-
divided portion of the whole. This statute also renders tk
monopoly capable of subdivision in the category of its localiij,
but in no other way. The patentee is not allowed to canre oot
his monopoly, which is an unity, into a hundred or more; a!
acting in the same place, and liable to come into conflict
The grant to Carter by the deed under consideratioo, is ^
of the whole monopoly, nor of any undivided portion of tbe
whole, and though, for an " exclusive right," it is not eicia-
sive of all others within a certain diArict, or specified part of
the United States ; on the contrary it is an exclusive right to
use the machine for a specified purpose. A machine for tars-
ing irregular figures may be used for numberless purposes. If
the patentee or his assignees can assign to A an eiclosi^
right to use the machine for making shoe lasts, to B for toni'
ing spokes, to C for axe handles, and so on to the esd ol
the alphabet, then may he, out of his one monopoly, carve oot
a thousand others, each subdivision, like a poIjpoS)
[ *341 ] being itself a several * monopoly, and having a sepa-
rate existence in the same place. What endless per-
plexity and confusion must necessarily arise from the estabfci-
ment of such a doctrine. Suppose the monopoly granted by this
patent parcelled out to some twenty sub-monopoKes, witfl ^
exclusive right to each to use his machine for certain purposes,
in any given j>lace ; what remedy could A have against B
an infringement of bis special privilege ? The patentee of
grantor, might restrain his grantee of a machine for a spec
use by a covenant ; but as between the several grantees

PATENT CASES. 741

Case V. Bedfield et al. 4 McLean.

action could lie, although they alone might suffer from a breach
of the covenant.

But it if lufficienti for purposes of the present inquiry, that
the Act of Congress has not given a legal sanction to such
transfers or assignments, nor subjected even a pirate of the
machine to fifty different suits by fifty several assignees, whose
several interests might be affected, if a patent could be thus
split up into numerous exclusive rights, or sub-monopolies.
Whether the deed confers on Carter and his assigns more
than a special license, or what remedy a court of equity might
be disposed to extend to him, where his rights are infringed,
it is not necessary now to inquire. As it does not confer a
legal title to the whole, or an undivided portion of the pa-
tent, nor grant " an exclusive right within a specified part of
the United States," it cannot be received to affect this case.
It was wholly irrelevant and ought not to have been received
in evidence.

It adds to my confidence in the correctness of
this ** view, that, as I have been informed, my bro- [ * 342 ]
ther Nelson has ruled the question in the same way
in the second circuit.

New trial refused.

Case v. REoriXLD & Puett*

[4, McLean 526. Hay T. 1849.]

It is not essential to the ralidity of an assignment of a patent-right between
the parties, or as against strangers, that it should be recorded in the Patent
Office.

The record is notice to purchasers.

An ordinary assignment will not conyej to the assignee an interest in the
renewed patent.

X42 PATENT CASES.

Case r. Redfield et aL 4 McLean.

The renewal is for the benefit of the inreiitor, and an interest in it before di

renewal most be eipectally assigned.
The indiridoal who holds the original right patented, and also an improTemcst

on that ri^t, most assert his entire right in an action for an infUogemat
To show a yiolation of the patent, the declaration need only aver that t!>

defendant has constmcted, nsed, and sold to others, the things patented.

Smith and White^ for plaintifi.

Judah and McQaughey^ for defendants.

Opinion op the Coubt.

Huntington, J. The plaintiff claims to be the asngoee of
the patent-right granted to Zebulon and Austin Farker, oa
the 18th October, 1829, for the term of fourteen yeais, ix
the invention of " a percussion and reaction water wheel for
mills," etc. And he ali^[es that on the 27th of June, 1340;
the said patentees having invented a new and useful improT^
ment on the above right, a patent for the improvemeot ms
issued to Zebulon Parker and Robert McKelvey, admioistn-
tor of Austin Parker, deceased, in trust for his hein at law,
for fourteen years.

On the 3l8t of July, 1841, McKelvey, for the consideratioB
of twenty-five hundred dollars, assigned to Zebulon Parkef)
^^ all the right, title, and interest which said heirs bad in said
invention and improvement, as secured to them by aaia iei-
tenhpatent, for the whole of the United States, with certain
excepions, and for the use and behoof of bis legal represent-
atives, for which letters-patent were or may be granted ior
said improvements, as fully and entirely as the sanie woui
have been held and enjoyed by said heirs Im ^
[ * 527 ] * assignment and sale not been made." ^
assignments were made down to the right asser
by the plaintiff. , .

And the plaintiff avers that the defendants have intoP^
his right, as stated under the patent. The. defendant A&B0

PATENT CASES. 748

Case V. Bedfield et al. 4 McLeao.

to the dechratioiii and assigns, as causes of demurrer, the
following;

1 . '^ That the declaration does not show that any assign-
ment was ever made by the administrator of Austin Parker,
deceased, of the extension of the original patent granted to
Zebulon and Austin Parker, nor does it show any right in the
present plaintiff in but one half of the present patent."

2. ^^The declaration is double and multifarious in this, that
the plaintiff sues for the invasion in each count, of two sepa-
rate and distinct rights growing out of separate and distinct
patents, that is to say, for the invasion of the original patent
granted October 19th, 1829, and also for an invasion of the
patent for an improvement granted 27th June, 1840."

3. ^' The declaration does not set forth in what or by what
means, the defendants violated the patents set forth."

There is also a demunrer to the last count in the declara-
tion, which sets out the assignments, but does not aver that
they are recorded in the Patent Office.

The assignments are set out in the declaration originally
. filed, and they are stated to have been recorded in the office ;
but this cannot obviate the objection made by the demurrer
to the last count.

By the law of Congress, the assignments are required to be
recorded ; but the effect of an omission to have them recorded
is not declared. It has been held by Mr. Justice Story, that
a failure to record an assignment was not essential to its va-
lidity jas between the parties and against strangers, and was
only necessary by way of notice to purchasers. The same
construction has been given to the statute by several circuit
courts of the United States, and we think it is the true one.
The demurrer to the last count in the declaration is therefore
ovenuled.

* In regard to the objection first made on the [ * 528 ]
special demurrer, that there has been no asngnment

744 PATENT CASES.

Cmb v. Bedfield et at 4 McLeu.

of the ioteret t in the heirs of Austin Parker, io the extended
patent, it must be admitted that there has been no aangmnat
of it since the patent was extended ; and if there was do
assignment of th'is interest before the extension, the troth of
the fact is established, whatever may be its iegal effisct

In the case of Wilson v. Rousseau, 4 Howard, 646, it wv
held, that the extrasbn of the patent was given for the beoett
of the original inventor or his representatives io compeDnte
him for his expenditures, labor, and ingenuity in the ioTn*
tion, and in perfecting it ; and that an ordinary asngnmeBt
of the right in the patentee would not convey any right iD
the extended patent But that such an interest, when in*
tended to be assigned, must be expressed.

The original patent of the Paricers was extended for seieo
years, on the 4th of October, 1843. And, since the exten-
sion, there has been no assignment -by the heirs of Austin
Parker. But the plaintiff relies upon the assignment of He^
Kelvey to Zebulon Parker, on the 31st July, 1841, bs tim
ferring the interest of the above heirs in the renewed patent
And it would seem, from the language of that assjgonieflt,
this construction of it is sustainable.

It appears, at the time of this transfer, the ordinal i«<«it
had but little more than two yean to run. And, altho#
one half of the improvement on the original patent vis ^
eluded in the assignment, yet the improvement without the
original invention could not be used, and would be of m^
value. The sum of twenty-five hundred dollars wa« ^ ^
sideration named in the assignment. From this it would
reasonable to infer that the entire interest in the beiraj pr^
and future, in the invention, was intended to be copveyea,
so large a sum would not have been paid for one half o
improvement on the original right, and a moiety of the
ginal patent which would expire in two years.

The operative words of the assignment show tbeiat&i^^

PATENT CASES. 145

Case V. Bedfield el al. 4 McLefto.

^ of the parties. They are^ '< all the right, title, and [ * 629 ]
ioterest which said heirs had in said invention and
improTement as secured to them by said letters^patent, for
the whole of the United States, with certain exceptions, and
for the use and behoof of his (Zebulon Parker's) representa-
tivea, for which letters-patent were or may be granted for said
improvementB, as fully and entirely as the same would have
been held and enjoyed by said heirs had that assignment not
been made."

Here is not only a present but a future interest assigned.
An interest secured by the present letters-patent, or by patents
which may (hereafter) be granted for said improvements.
This was intended to transfer the right under a renewal of
the patent. No other construction can be given. to the words
used. They can not be made to apply to any correction of
a supposed error in the specifications or claims of the patent
Under the law when this assignment was made, the patent
was not void for claiming more than was invented. And it
is not pretended that there is any want of precision in the
specifications.

Under the Act of 4th of July, 1836, Sec. 18, for the e](«
tension of a patent, it may have been supposed that a new
grant would be issued. But a much shorter mode has been
adopted by an indorsement on the original patent.

The second ground of objection in the special demurrer
that ''the declaration is double and multifarious/' is not
sustainable.

The wrong complained of is for an infringement on the
improved patent, not for a violation of the original patent or
of the improvement upon the original grant, but of the entire
right, united in the plaintiff, by the different patents and
assignments. The right set up is an entirety, and being
united in the same individual is not susceptible of a division.
Had he divided his cause of action, claiming damages in one

VOL. II. — p. c. 63

746 PATENT CASES.

Roberto et al. v. Ward et al. 4 McLean.

case for the infringement of the original patent, and Id m-

other for an infringement of the improvemeDt^the

[ * 530 ] actions * could not have been sustained. As fi

might different actions be brought for trespass opoa

a close, on the ground that the land was held under £s6b&

titles. The injury done was to the entire close, and ik

constitutes the ground of the action.

'it may be admitted that two defendants cannot be nmtei
in the same action, where each has infringed distinct patents:
for in that case there could 1>6 no joint defence. There vooU
be no right common to the defendants, and conseqaentljbotii
would be subjected to additional costs and delays bf th
joinder of the two. But where the original patent and die
improvement on it are united in the same person, they cod-
stitute a whole, an entire right, and must be assessed as
in an action for an infringement.

The other ground of demurrer, as to the violation o!
plaintiff's right is answered by the dedaration. The wrw?
done is alleged in the usual form, that the defendant "^
constructed, used, and vended to sundry persons," etc, w®
said invention. The special demurrer is overruled.

Roberts & RoBsaTs v. Ward & Wabd.

[4 McLean, 565. Jane T* 1849.]

To entitle a person to a patent, his invention or improvement mast be ne^*

It must also be nsefdl.

These points being submitted to a jury, they found against the plaintiff.

G. C. Bates and J. M. Howard, for complainants.
Joy and Porter, for defendants.

PATENT CASES. 747

Boberts et al. v. Ward et al. 4 HcLean.

Opinion • OF THE Court.

This bill charges the defendants with the violation of a pa-
tent-right The, complainants claim under Isaac Babbitt, the
inventor, in virtue of legal assignments made and recorded in
the Patent Office, the right within the State of Michigan.

The patentee claimed to have invented a new and improved
mode of making or constructing the boxes, within whi^ the
gudgeons or journals of machinery in general and the axles of
railroad cars, etc., are to run, by which mode of constructing
or making such boxes or bearings, the heating and abrasions,
which are apt to occur in the ordinary mode of constructing
them, and their durability is consequently increased, and the
following is the full description thereof:

^^I prepare boxes which are to be received into housings
or plumber's blocks, in the ordinary mode of forming such
boxes, making them of any kind of metal, or metallic com-
pound, which haa sufficient strength and which is capable of
being tinned. The inner side of these boxes are to be
lined, etc.

<< To prepare the boxes for the reception of the composition,
I cast them with projecting rims, etc In finishing one of
these boxes I cast the inside, including the rim, with tin, in
the well-known manner of performing the operation. The
composition being melted is poured in through a hole left for
the purpose. When the ledges are not used ihe coating of
the composition metal should be thin."

And in the summing up he says : '^ What I claim
as my * invention i^, the making of the boxes for [ * 566 ]
axles and gudgeons, in the manner set forth, by the
casting of hard pewter or composition metal, of which tin is
the basis, into the said boxes, they being first prepared and
provided with rims or ledges and coated with tin, as herein-
before described."

The above includes an improvement upon the original
invention, for which a patent has also been obtained.

748 PATENT CASES.

Boberts et al. v. Wvd et al. 4 HeLean.

An issue was made up and sent to the jury to try, whetb
the invention was new and usefuL

To entitle an individual to a patent, his inveotioo mint k
new and useful.

In ascertaining its usefulness, it is not important (hst t
should be more valuable than other modes of accomplisiti^
the same result ; but it must be a practicable method of doii^
the thing designed, in which its utility will more or les
consist.

The invention must be new. In the present case tb
improvement of the present box used for wheels bo as to
retain the composition metal, and the metal thus composd
and applied as stated, constitute the invention. . Novi/anj
other individual used a similar box and compound, before the
invention claimed by Babbitt, be can have no exclosive r^^
If a box was constructed upon the same principle, tboi^
not exacdy in the same manner, it will defeat that part of tk
plaintiff's claim. The word principle, as applied to idccIb-
nics, is where two machines or things are made to operate?
substantially in the same way, so as to produce a siinilsr
result, they are considered the same in principle. As where
any of the mechanical powers, the lever, the screw^j toe
wheel, etc., are used to accomplish certain purposes, tbe
same powers being used in a somewhat different fonn, io
the same thing, will not be a difference in principle. Wbctw'
the mechanical instruments be larger or smaller, wne
their action be horizontal or vertical, the principle i* ^
same.
[ * 567] * The patentee claims a corabinatiofl of the toj
as stated, and the composition as applied. '^
his own statement he has improved the box, and pot in »'
metal. He does not, it seems, claim that the ^^P^
parts of the metal are new or that the combioatioo of
is sa The thing claimed is, the. use of a Bolter mter»^^^'

PATENT CASES. 749

WHson V. Baniiim. 1 Wallace.

serted in the box so as to prevent its heating or abrasion, by
the action of the wheel. In this view, the introdaction of
this material is the principle of this improvement, and not the
particular elements of which it is composed ; and if it shall
appear to the jury from the evidence, that a material similar
in its effect had been publicly used in the box before the in-
vention claimed by the patentee, his patent, in this particular,
is void for want of novelty.

Evidence was given to the jury conducing to prove a want
of novelty to the jury. And the case was submitted to them
on principles as above stated. The jury found for the defend-
ants. A motion for a new trial was made, which the Court
overruled.

Wilson v. Barnum.

[1 Wallace, 347. October T. 1849.J

Value qf Grant of Patent — Injunction — Second Trial ^^

Divided Court.

The grant of a patent at the Patent Office, is not of itself, or in Tirtae of f 7
of the Act of Joly 4th, 1836, a bar to an interlocutory injunction in fieiTor of
a person claiming to be a prior patentee of the same thing j such person not
haviog received notice at tiie Patent Office to appear and be heard, and the^
Court on a hearing before it, being well satisfied that the last patent is an
interference irith the one granted before.

The District Judge sitting for the Circuit Court, and being himself well satis-
fied of an infringement — although^ of numerous experts examined, a m^jo-
i&ty thought differently from him on that point, — may grant an interlocutory
injunction to restrain the use of a patented machine as an infringement of a
prior one ; the machine last patented not baring been granted after notice
from the Patent Office to the complainant, to appear and be heard.

Where a jniy has had a case before it and disagreed, a second trial omiaot be

63*

750 PATENT CASES.

Wilson r. Bamiun. 1 WaBaoe.

had hj anodier jury from the residve of the paad. The ctae most go m
in order thai it may be tried on a new renire.
Where the District Jndge, sitting for the Circuit Ck>art) and being satisfitdi/
an infringement, had granted an interloeatorf injnnction till trial, to resna
the nae of a maehme, and the President Judge,, after hearing the eridoB
before the jozy on the trial, diifered from his brother, who after bearing^
same evidence, atill retained hia former opinion, and Uie joxy could fisd ^
Terdict ; the fall Court, in its sabaeqnent action on the injunction, need ax
consider itself either aa bonnd or aa unable to disaolve it; bsttheacsa
upon it may bo modified ; the modification being laigely rq;;a]ated hj^
probably wonld hare been the original action of a fall Court

This was a bill for an interlocutory injunction, to restrain
the defendant from using a patented machine which it v^
said interfered with another machine previously patented to
the complainant. The defendant did not deny the originalitj
of the complainant's invention, but asserted his own to be oo
infringement of it. The complainant's patent was an aDcieot
one. The defendant's had been granted under an act^ wbidi

directs, that whenever a person applies for a patent.
[ • 348 ] an examination shall be made ♦by the CmmssioBSi

of Patents into the originality of the alleged inden-
tion ; and allows the issuing of a patent, only in case toe
commissioner is satisfied that the invention is original. V^
examination the commissioner thinks that there is interferencei
he then gives ^ notice to the patentee, with whose meonm
he supposes that the interference takes place, and lets m
be heard. In this case the commissioner did not consider
that there was an interference, and of course the compWB*"^
had no notice of the intended issue to the defendant.

Hirst and Stwghtan, of New York, relying, among oth«'
grounds, including those of fact, upon this first prorao^
of the act, opposed the grant of an injunction. The defeo •

i Act oiJxlj 4tli, 1886, § 7. «IcL iS. See Appei^

PATENT CASES. 751

Wilton V. Banram. 1 Wallace.

ant, they contended, has a patent which gives him a primd
fouie case everywhere* He has a right to trial by jury. It
was impossible to regard his machine as so palpably or so pro-
bably an infringement, as to warrant the summary process of
injunction, when the Commissioner of Patents, who has every
means at commatid for ascertaining the originality, and em-
ploys them all, has regarded it as too manifestly original to
cause a question. The act of the commissioner may not have
been a judicial decree in form ; nor have the technical con-
clusiveness of a precedent, and a rea adjudicata. But it de-
serves every respect short of that, and will receive the highest
respect as the investigation and a decision on the matter by an
officer of state, to whom the investigation and decision are pri-
marily and particularly intrusted. It is quaai judicial at least.

• rV. H. Sewardy of New York, S. G. T. Camp- [ • 349 ]
heU and S. V. Smith, mentioned several cases where
the commissioner had issued patents, after notice to prior
patentees who came in and defended their rights, which pa-
tents had been afterwards pronounced, judicially, to be in-
fringements. In this case there had been no notice to the com-
plainant or to anybody. The commissioner issued the patent
upon first impressions. He had not perceived any infringe-
ment, only because none had been shown to him. His act
was eztra-judidal ; and if it were not, would, be at best but a
judgment without either writ, plea, issue, or argument Even
if there had been a hearing, the grant could not be a legal
objection. It could not be pleaded nor put in evidence. It
would at best be an extra-judicial opinion of more or less
weight. If this Court — aft^r a judicial examination — is tho-
roughly satisfied of the interference, it will not regard such an
act as conclusive on its conscience.

Kanb, L, sitting for the Circuit Court. There are cases

752 PATENT CASES.

Wilson V. Bamam. 1 Wallace.

under the present laws, in which the Court would enter re-
luctantly upon the discussion of the validity of patent Sooie
of the provisions of the Act of 1836, gave a quasi-judicial
character to the action of the Commissioner of Patents ; aod
it has accordingly been held, I believe generally, as well as
justly, that the patent itself is to be taken as primd/ade eTh
dence of the novelty and usefulness of the invention specified
in it.

There are otder cases, in which the official action of the

Patent Office claims, properly, a still higher degree

[ • 350 ] • of consideration. Whenever antagonist patentees,

or third persons generally, have been first called in,

it is reasonable to consider the action as a preliminary adjudh

cation upon their rights. And this for the obvious reason, tht

they have been parties, or, but for their own fault, migiit bn

been parties, to the proceeding on which the adjudication mi

based.

But this is the limit, beyond which comity cannot be le-
quired to go. It cannot be asked, that a third person shall
have his legal rights impaired, or his legal remedies impeded,
by any proceeding to which he was not, and could not have
made himself a party. To hold ourselves concluded b; die
action of the Patent Office, where that action has been with-
out notice, would be as perilous to the interest of in venlois as
to that of the public. We had a case in our own Court not
long since, where an injunction was sought against the rcai
inventor, on the faith of a patent granted to a suneptitif^
claimant. The grant of a patent to the defendant can tbcre-
fore have no other effect on the present discussion, than 9B i
indicates the opinion, which highly respectable andsku
officers have formed, on an ex parte examination of tbeca**

Order according^

This preliminary question being disposed of, an elflw

PATENT CASES. 758

Wilflon V. Barnnm. 1 Wallace.

investigation was made as to the infringement in fact. The
opinion of Mr. Justice Kane, sitting for the Circuit Court was,
that there was an infringement. The testimony of many ex-
perts had been taken, and there was a direct conflict of opinion
between them ; the majority, however, being of opinion that
the new machine was no infringement. In these
* circumstances the defendant's counsel argued that [ * 351 ]
there was the greatest reason for leaving the case
to a jury. There was no conflict of evidence as to the (acts
in the case. The conflict was in the conclusions arrived at
by the difierent gentlemen upon the facts*

Kane, J. My only embarrassment in awarding an injunc^
tion, has been owing to the fact, that of the highly educated
mechanicians whose afiidavits have been taken in the cause,
the greater number have expressed an opinion difierent from
that expressed by me* The consideration which was pressed
in the argument, that the responsibility of deciding this ques-
tion, might with propriety be devolved on a jury, has had no
influence with me. That judicial morality might be impeached
for infirmity, which could shrink from awarding to a party his
remedy after ascertaining his rights. ^^ The right of a party
to the most speedy and effectual protection against a medi-
tated wrong, is as complete as his right to redress for wrongs
already inflicted ; and the accident of position confers no
right on one party, whether he be plaintiff or defendant, at the
expense of the other. The special injunction in equity, like
the arrest on mesne process at law, may be abused to the in-
jury of an opponent ; but it is no less on that account the
duty of the judge to further them both, when, in the exercise
of his best discretion, he believes that they are called for by
the merits and the exigency.'^ This was the language of the
Court when on a former occasion this patent was before us, and
my experience since has not taught me that it ought to be
modified.

754 PATENT CASES.

Wilson V, Barauni. 1 Wallftoe.

[*352] The preventive ioterpositioa * of eqoity, is ?efj

often the only effective resort of a meritorious patoK

tee, and where the facts of the case are not controverted, Iin

by no means satisfied that it is not the safest for both partie&

There is no conflict of evidence here ; the question is oae
of deduction of opinion. Were the case at this time luder
trial at bar, it would be the office of the judge to interpret tbe
specification, and define the principle of the invention. This
is the only point of difficulty, and it must be encountered b;
the judge, when he sits on one side or other of the Court

To send the cause to a jury, would be to delay its adjudi-
cation for many months, leaving the complainant in the mean
time with his l^;al rights suspended, and swelling the met'
sure of the defendant's liabilities. I should do injostice to
both parties, were I, with my present views of the tnents d

this controversy, to refuse the injunction.

hyundion atoardid.

At the following sessions, the validity of the patent came
on to be tried upon an issue directed to a jury ; but afler a
thorough examination and argument, the jury couW not agiec
and were discharged.

Hirst and W. W. HubbeU, having now shown that a great
number of licenses, about to expire within a fortnight, w
waiting for renewal upon the decision of the right, and tna
was otherwise very important to their client and the pu ^
that the right should be decided at once ; moved for a secon^
trial at this same term, by a new juiy selected out o
[ * 353 ] the existing panel, instead of waiting * as they wou
otherwise have to do, until the next session, a term
of six months. iSlf. G. T. CampbeU opposed the apphc*^^"'

^ Jg to
Gbieb, J. An application of this same sort was w

PATENT CASES. 756

Wilson V, Bfliniim. 1 Wallaee.

me in a case T^bile I presidedin the District Coilrt at Pittsburgb,
where the case went off by withdrawing a jaror. A decision
from one of the Ohio or Indiana Courts was then cited in sap-
port of the motion. In consequence of that decision, I looked
thoroughly into the matter at the time, and was satisfied that
the decision was not founded in the principles of the common
law and was wrong* I have no doubt that a settlement of this
patent-right, at once, is important, but it cannot be tried now
except by consent. There must be a second venire*

Motion reused.

On a subsequent day, it having appeared by a communica-
tion from the bench that the Court, after full argument on the
evidence, were divided on the question of infringeif(ent, and
the jury having been unable to find a verdict, Mr. Hirst and
Mr. W. W. Hubbell, moved to dissolve the injunction absolute-
ly. It had been granted by the District Judge, they aigued, in
the absence of his brother, who now after full examination,
came to the conclusion that there was no infringement. Had
the latter judge been present when the injunction was applied
for, the Court being divided, would not have granted it ; and
if it could, would not. ' A jury had moreover refused to pro-
nounce that there was any. infringement. This, supported by
the action of the Patent Ofiice, which regarded the
invention as original, and by the ** patent which [ * 354 ]
gave a primd facie right, made a clear case for
a jury alone.

W. H. Seward, St. G. T. CampbeUy and S. V. Smith, in
favor of continuing the injunction, argued that the act of
either judge, sitting for the Circuit Court, was the act of the
Court. As a Circuit Court, each judge is of absolute equality.
It 18 impossible to say, what the circuit judge's opinion would
have been, had he heard the argument for the injunction.

756 PATENT CASES.

Wilfon V. BarniUB. 1 Wallace.

That 18 a matter past and gone, and of which no judicial of-
nizance could now be taken. Each judge was satisfied of tb
correctness of his own opinion ; and whether each chose to
rely on his own, or each to defer to his brother's, the Cooit
would still be equally divided. In that state of things, whu
could be done? Simply nothing. The injundioQ wook
stand of its own force.

The inability of the jury to find a Terdict, Mr. Sevd
argued, was of no ngnificance. They had been sammood
to settle the 'matter, and they had not; settled it, batleftit
where it was. Had they even found a verdict, it would haw
been of little value unless approved by the Court, who, \(&-
approving of it, would have set it aside. No verdict ms of
no value.

Gbier, J., expressing the high respect he entertained for
the opinion of his brother Kane, particularly upon qnestiou
relating to patents, and Kane, J., stating that from the time
he found that a difference of opinion existed between him and
the presidipg judge upon the question of infriogemeot, l>tf
inclination was to have the matter disposed of, as
[ • 355 ] the ♦ Court had been full when the iojunction was
applied for; and both members of the Court -^
the difference of opinion which existed between them, aw
which it seemed could not be removed — being dettfo"*
protecting both parties to the suit from any errors wd
nfight exist by either dissolving absolutely, or absolute//
tinning the injunction, made an order to this effect: aha
injunction should be dissolved if the defendant in ten dap

should give security in $ 10,000 to keep an account, AM
pay, &c.y in case of a final decree being entered again
On his failure to give such security, then in case the ^^P[\
ant should in ten days afterwards give security in $20, »
the injunction to stand ; and in default of his ffWflg
security, to be dissolved without condition.

APPENDIX.

PATENT LAWS.

CONSTITUTION OF THE UNITED STATES.

ARTICLE 18T, SECTION 8tH.

^' The Congress shall have power, 6»3., to promote the
progress of science and useful arts, by securing for limited
times to Authors and Inventors the exclusive right to their
respective writings and discoveries.'' Also, " to make
all laws which shall be necessary and proper for carrying
into execution the foregoing powers."

CHAP. yiL— >Ax Act to promote the progress of nsefal arts

1790.

Section 1. Be it enacted by the Senate and House of
Representatives of the United States of America in Con- Patents
gress assembled. That upon the petition of any person or for lueful
persons to the Secretary of State, the Secretary for the hoTaS?^'
department of war, and the Attorney-General of the United plied i&,
States, setting forth, that he, she, or they, hath or have in- ^^ «™^*-
vented or discovered any useful art, manufacture, engine, Repealed
machine, or device, or any improvement therein not before ^7 the Act
known or used, and praying that a patent may be granted 1793* ohap!
therefor, it shall and may be lawful to and for the said 11.
Secretary of State, the Secretary for the department of^^'^ ^^
war, and the Attorney-General, or any two of them, if state, the
they shall deem the invention or discovery sufficiently ^JPSJ?'"^' .
useful and important, to cause letters-patent to be made ^^ auot?
out in the name of the United States, to bear teste by ney-Gen'l,
the President of the United States, reciting the allega- °J ^^^y^^^f
tions and suggestions of the said petition, and describing they shall
VOL. II. — P. c. 64

768 PATENT LAWS.

f ^™«^* the said iovention or discovery, clearly, truly, and fully,
&c!! uMful ^"^ thereupon granting to such petitioner or petitknes,
andimpor his, her, or their heirs, administrators, or aasigns^foraiij
Jj^*y^j_ term not exceeding fourteen years, the »le andeick-
ten-patent sive right and liberty of making, constructing, osisf.
to be iasu- Qod vending to others to be used, the said in?entioB «
^ Contfnu- discovery ; which letters-patent shall be delivered toik
ance of a Attorney-General of the united States to be ezamiKd
P^^ who shall, within fifteen days next after the delivery t
Oeneralto him, if he shall find the same conformable to thisae;
^ n^t* *^®'^'^y it to be so at the foot thereof, and present the letter
of thrpU patent so certified to the President, who shall cause tk
tent with seal of the United States to be thereto affixed, and the m
^Patents ^^^^^ ^ S<^ and available to the grantee or gruitees b;
to be re- force of this act, to all and every intent and purpose kre
corded. i^ contained, and shall be recorded in a book to be ke^
for that purpose in the office of the Secretaiy of Stefe
and delivered to the patentee or his agent, and the deu-
very thereof shall be entered on the record and endoised
on the patent by the said Secretary at the time of gnst-
ing the same.
Spedfl- ^^^- ^' -^"^ *^ it further enacted. That the grantee «
cation li' grantees of each patent shall, at the timeof graotiDgt^
irriting. same, deliver to the Secretary of State a specificatka e
Sm^e?^ writing, containing a description, accompanied with dnfe
thereof, to or models, and explanations and models (if the ^^^
Sd^dSJd ^^^ invention or discovery will admit of a model) of ««
in the office thing or things, by him or them invented or discoYeiCj
oftheSe- and described as aforesaid, in the said patents; wwfi
Sta^ specification shall be so particular, and said models so
exact, as not only to distinguish the invention ordiscowiy
from other thing? before known and used, but also to en-
able a workman or other person skilled in the art or d»>*
ufacture, whereof it is a branch, or wherewith it d»7 »
nearest connected, to make, construct, or use ^^^^
to the end that the public may have the full benefit thef^^^
after the expiration of the patent term ; which specuwa*
Certified tion shall be filed in the office of the said Secretary, an°
w&^e. ^f^rtified copies thereof, shall be competent ev^t^^
to be evi- all Courts and before all jurisdictions, where any nwi
*«oo« or thing, touching or concerning such psitenU «ghN^r
vilege, shall come in question, ...-o.

Conies of Sec. 3. And be it further enacted. That upon toe -i
^n anT Plication of any person to the Secretary o( Stale, »

a
to

models
may be

copy of any such specification, and ^<^^ ,/^,""lf ' %'
r-j-j •- have similar model or models made, it sha/1 he w ^^ .
'^^^ of the Secretary to give such copy,aQd ^^ pe'jo^^^

person so applying for a similar model or modm w

PATENT LAWS. 769

or make, or cause the same to be taken or made, at the
expense of such applicant.

Skc. 4. And be U further enacted^ That if any person Penalty
or |>erBons shall devise, make, construct, use, employ, or for making,
vend within these United States, any art, manufacture, f^S'j^?^

!_• 1- .^. . ' »", dec.,

engine, machme,or device, or any mvention or improve- for which a
ment upon, or in any art, manufacture, engine, machine, patent has
orde vice, the sole and exclusive right of which shall be edf' *^""*
so as aforesaid granted by patent to any person or per-
sons, by virtue and in pursuance of this act, without the
consent of the patentee or patentees, their executors, ad-
ministrators, or assigns, first had and obtained in writing,
every person so offending, shall forfeit and pay to the .
said patentee or patentees, his, her, or their executors,
administrators, or assigns, such damages as shall be as- Damages
sessed by a jury, and moreover shall forfeit to the per^ l^gsJa^by a
son aggrieved the thing or things so devised, made, con- jury.
structed, used, employed, or vended, contrary to the true
intent of this act, which may be recovered in an action on
the case founded on this act.i

Sec 5. And he it further enacted^ That upon oath or
affirmation made before the judge of the District Court,
where the defendant resides, that any patent which shall
be issued in pursuance of this act, was obtained surrepti- Patents
tiously by, or upon false suggestion, and motion made to J^JJ^^ob-
the said Court, within one year after issuing the said pa- tainecL
tent, but not afterwards, it shall and may be lawful to
and for the judge of the said District Court, if the matter
alleged shall appear to him to be sufficient, to grant a rule
that the patentee or patentees, his, her, or their executors,
administrators, or assigns, show cause why process should
not issue against him, her, or them, to repeal 0uch patents ;
and if sufficient cause shall not be shown to the contrary. How to be
the rule shall be made absolute, and thereupon the said'^P^^
judge shall order process to be issued as aforesaid, against
such patentee or patentees, his, her, or their executors,
administrators, or assigns. And in case no sufficient
cause shall be shown to the contrary, or if it shall appear
that the patentee was not the first and true inventor or
discoverer, judgment shall be rendered by such Court for
the repeal of such patent or patents ; and if the party at
whose complaint the process issued, shall have judgment
given against him, he shall pay all such costs as the de-
fendant shall be put to. in defending the suit, to be taxed

1 Easting's Patent ^forfeitare of the thing made. See Webster's Patent
Cs8es» page 6.

7«0 PATENT LAWS.

by the Court, and recovered in such manner a» coasts ex-
pended by defendants, shall be recovered in due oonxae
of law.
Inftcti<m» Sbc. 6. And ht it Jurtker enacted^ That in all actioos
fnr penalty, to be brought by such patentee or patentees, his, her, or
K^^^^d ^^^^ executors, administrators, or assigns, for any penahj
primd facie incurred by virtue of this act, the said patents or speeifir
£^fl^t^ °^ cations shall be primd facte evidence, that the said pa-
disooYeir; tentee or patentees was or were the first and true iaTenH?
batapecial or inventors, discoverer or discoverers of the thing so
^gTvwm specified, and that the same is truly specified ; but that
eTidence; nevertheless the defendant or defendants may plead the
^^towhat general issue, and give this act, and any special maifer
whereof notice in writing shall have been g^ven to tis
plaintiff, or his attorney, thirty days before the trial, m
evidence, tending to prove that the specification filed bj
the plaintiff does not contain the whole of the truth oon-
ceming his invention or discovery; or that it contain
more than is necessary to produce the effect described ;
and if the concealment of part, or the addition of more
than is necessary, shall appear to have been intended to
mislead, or shall actuall]^ mislead the public, so as the
effect described cannot be produced by the means speci-
fied, then, and in such cases, the veidict and judgment
shall be for the defendant.
Patent ^^^' '^' -^^ ^ it further enacted j That such patentee
fees. as aforesaid, shall, before he receives his patent, pay the

following fees to the several officers employed in making
out and perfecting the same, to wit : For receiving and
filing the petition, fiAy cents ; for filing specifications,
per copy-sheet containing one hundred words, ten cents ;
for making eut patent, two dollars ; for affixing great
seal, one dollar ; for indorsing the day of delivering the
same to the patentee, including all intermediate services,
twenty cents.

Approved April 10, 1790.

Repealed CHAP. XL— An Act to promote the progess of asefbl arts, and
by Act July to repeal the act heretofore made for that pnipose.

4, 1886.

Same as SECTION 1. Be it enacted by the Senate and House of
d^^Vwc- J^resentatives of the United Stales of America in Con-
cept si^^' gress aesembled. That when any person or persons, be-
cretary of iDg a citizen or citizens of the United States, shall allege
SSSofSe-^^*^* he or they have invented any new and useful art,
eretarj of machine, manufacture, or composition of matter, or any
^^' new and useful improvement on any art, machine, manu-

PATENT LAWS. 7«l

facture, or composition (^ matter, not known or used be» Letten- .
Ibrejthe application^ and shall present a petition to the V^^^. *^
SeQretary^oTBtate, sTgnifying a desire of obtaining an whpm^
esKclusTvc ($Vdper^ in the same, and praying that a. pa- made out.
tent may b^'^ranted therefor, it shall and may be law- j^^iq
fill for the said Secretary of State, to cause letters-patent 1790, ch.*7,
to be made out in the name of the United States, bearing '^^^J^
teste by the President of the United States, reciting the teste bj tfa«
allegations and suggestions of the said petition, and giv- PreeidoDt,
ing a short description of the said invention or discovery, "^
and thereupon granting to such petitioner, or petitioners,
his, her, or their heirs, administrators, or assigns, for a term
not exceeding fourteen years, the full and exclusive right
and liberty of making, constructing, using, and vending to
others to be used, the said invention or discovery, which
letters-patent shall be delivered to the Attorney«General be ezamin-
of the United States, to be examined ; who, within fifteen ^J^^®
days aAer such delivery, if he finds the same conformable GenenST'
to this act, shall certify accordingly, at the foot thereof,
[ and return the same to the Secretary of State, who shall

present the letters-patent thus certified, to be signed, and
shall cause the seal of the United States to be thereto
^ affixed ; and the same shall be good and available to the

grantee or gmntees, by force of this act, and shall be re* I800, oh.
corded in a book, to be kept for that purpose, in the office ^*
of the Secretary of State, and delivered to the patentee or
his order.

Sec. 2. Provided atwayt^ and he it further enacted^ Th^libeiv
Tbat any person, who shall have discovered an improve- ^^^*"*^
ment in the principle of any machine, or in the process provement
of any composition of matter, which have been patented, ®^5itioii.
and shall have obtained a patent for such hnprovement, ai to Aot of
' he shall not be at liberty to make, use, or vend the origi- 1790.

' nal discovery, nor shall the first inventor be at liberty to Changing

use the improvement And it is hereby enacted and de* j^^p^X^
dared, that simply changing the form or the proportions of anjma^
of any machine, or composition of matter, in any degree, n^^^llSa*
shall not be deemed a discovery. discovery.

Sbc. 3. And he it further enacted^ That every inventor, How. to
before he can receive a patent, shall swear or affirm, that PJJ2J^J^
be does verily believe, that he is the true inventor or dis- ten-patent
coverer of the art, machine, or improvement, for which
he solicits a patent, which oath or affirmation may be isoo, cb.
made before any person authorized to administer oaths, 26, sec. 3.
and shall deliver a written description of his invention,
and of the manner of using, or process of compounding Specifica-
the same, in such full, clear, and exact terms, as to distin- ^^°*
guish the same from all other things before known, and

64*

762 PATENT LAWS.

Additkm- to enable any person skilled in the art or science, of wluek
«l to Act of it is a branch, or with which it is most nearly connecledy
^^^* to make, compound, and use the same. And in the case

of any machine, he shall fully explain the principle, and
the several modes in which he has contemplated the ap-
plication of that principle or character, by which it any
Sp«cifica- b^ distinguished from other inventions ; and he ah&ll m>
tioa. company the whole with drawings and written references.

where the nature of the case admits of drawings, or wi&
specimens of the ingredients, and of the composition of
matter, sufficient in quantity for the purpose of ezperinieBt,
where the invention is of a composition of matter ; irlnch
description, signed by himself and attested by two wit-
nesses, shall be filed in the office of the Secretary of
State, and certified copies thereof shall be competent evi^
dence in all Courts, where any matter or thing, touching
such patent-right, shall come in question. And such inven-
tor shall, moreover, deliver a model of his machine, pro-
vided the secretary shall deem such model to be necesarr.
bJ°^^ Sec. 4. And he U Jurther enacted, That it shall be
ti^^ Sti<M? lawful for any inventor, his executor or administrator, to
Addition- assign the title and interest in the said invention, at any
^^ ^^^^time, and the assignee having recorded the said assign-
Bocordof ment in the office of the Secretary of State, shall tbeie-
STiirmade ^^^^ Stand in the place of the original inventor, both as
in the office to right and responsibility, and so the assignee of assigns,
of tiie Sec. to any degree.

Forf^tuie ^^^* ^' -^^^ ^^ it further enacted^ That if any person
on using shall make, devise, and use, or sell the thing so invented,
ffJentois ^^® exclusive right of which shall, as aforesaid, have been
without secured to any person by patent, without the consent of
lA^e. the patentee, his executors, administrators, or assigns,
l80o!^ ^^^ obtained in writing, every person so offending, shall

Tliree forfeit and pay to the patentee a sum, that shall be at least
^M to be ®*1"*^' *° i\iree times the price for which the patentee has
Sbe pe- usually sold or licensed to other persons, the use of the
n«Jj7- said invention ; which may be recovered in an action on
al to Act^of ^^® case founded on this act, in the Circuit Ck>urt of the
1790. United States, or any other Court having competent jaris»

OOTered!^ diction.

Sec. 6. Provided always^ and he it further enaeied^

How de- That the defendant in such action shall be permitted to
xnay^ve P^^^^ the general issue, and give this act and any special
this act in matter, of which notice in writing may have been given
evidence, to the plaintiff, or his attorney, thirty days before trial.

Act 1790. in evidence, tending to prove that the specification, filed
by the plaintiff, does not contain the whole truth relative
to his discovery, or that it contains more than is neces-

PATENT LAWS. 768

saiy to produce the described effect, which concealment
or addition shall fully appear to have been made, for the
purpose of deceiving the public, or that the thing, thus Addition
secured by patent, was not originally discovered by the J^ *J ^^ ^

patentee, but had been in use, or had been described in ^

some public _W(ifR ari'Tferiorto^the supposed discovery of ^

'ttoe paTehtee, or that he had surt^pifiously obtained a
^atenrfor the cFIscovery of another person ; in either of Andjuds.
which cases, judgment shall be rendered for the defend-?®"**^
ant, with costs, and the patent shall be declared void. ^ ^*

Sec 7. And he it farther enacted^ That where any State
State, before its adoption of the present form of govern- rig^^totoin-
ment, shall have granted an exclusive right to any inven- ^hen tohe
tion, the party, claiming that right, shall not be capable of deemed
obtaining an exclusive right under this act, but on i^* ^^ddition.
linquishing his right under such particular State, and ofaltoActof
Buch relinquishment, his obtaining an exclusive right under ^^^*
this act shall be sufficient evidence.

Sec. 8. And be it farther enacted^ That the persons. How ap-
whose applications for patents, were at the time of pass- J^ndSlr
ing this act, depending before the Secretary of State, Se- under for-
cretary at War, and Attorney-General, according to the "?2|^
act, passed the second session of the first Congress, inti- prosecuted
tuled *^ An act to promote the progress of useful arts,'* on under tiiis
complying with the conditions of this act, and paying the ^j[djifjoQ
fees herein required, may pursue their respective claims ai to Act of
to a patent under the same. i^^» <*• ^

Sec. 9. And he it farther enacted. That in case of in- 1^^^^'
terfering applications, the same shall be subniitted to the luSon in-
arbitration of three persons, one of whom shall be chosen teifering
by each of the applicants, and the third person shall be Sons.^
appointed by the Secretary of State ; and the decision or Addition-
award of such arbitrators, delivered to the Secretary of J^^J-^^*®^
State in writing, and subscribed by them, or any two of
them, shall be final, as far as respects the granting of the
patent. And if either of the applicants shall refuse or
&il to choose an arbitrator, the patent shall issue to the op-
posite party. And where there shall be more than two
interfering applications, and the parties applying shall
not all unite in appointing three arbitrators, it shall be
in the power of the Secretary of State to appoint three
arbitrators for the purpose.

Sec 10. And he it further enacted. That upon oath or . ^^
affirmation being made before the judge of the district !!^^^i^'
Court, where the patentee, his executors, administrators, reptitiooBly
or assigns reside, that any patent, which shall be issued p^^^^
in pursuance of this act, was obtained surreptitiously, or
upon false suggestion, and motion made to the said Court, . ^?tJ^^
within three years after issuing the said patent, but not im.

764 PATENT LiLW&

afterwards, it fehali and may be lawAil for the judge of ik
aaid District Court, if the matter alleged shall appear to
him to be sufficient, to grant a rule, that the patenteey or fan
executor, administrator, or assign show cause why pf»
cess should not issue against him to repeal such patest
And if sufficient cause shall not be shown to the coBtiarr,
the rule shall be made absolute, and thereupon the ssif
judge shall order process to be issued against such palea-
tee, or his executors, administrators, or assigns, with cosi
of suit And in case no sufficient cause shall be riiovi
Bopeal of to the contrary, or if it shall appear that the patentee wis
I nU^oJl' ^^^ ^^® ^^® inventor or discoverer, judgment shall be
♦tSil/ rendered by such Court for the repeal of such palest:
and if the party at whose complaint the process issued,
shall have judgment given agamst him, he shall pay si}
such costs as the defendant shall be put to in defending tbe
suit to be taxed by the Court, and recovered in due ooam
of law.
Inyeator, Sec. 11. And he ii fwrikir enaeUd^ That every ia-
MDting^pe^ ventor, before he presents his petition to the Secretary oi
tition, to State, signifying his desire of obtaining a patent, shall pay
to^?te«il^ *°*^ ^^^ treasury thirty dollars, for which he shall take
wry. duplicate receipts ; one of which receipts he shall deliver
Addition- to the Secretary of State, when he presents his petition;
1780.^^^ *^^ ^^ money, thus paid, shall be in full for the sondiy
Altetatioii services to be performed in the office of the Secretary of
of f«Mi State, consequent on such petition, and shall pass to the
account of clerk-hire in that office. Provided neotrtke-
Copying less, That for every copy, which may be required at the
^^ said office, of any paper respecting any patent that has

Addition- been granted, the person obtaining such copy, shall paj,
1790 ^**^^*^ the rate of twenty cents, for every copy-sheet of one
hundred words, and for every copy of a drawing, tbs
party obtaining the same, shall pay two dollars ; of which
payments, an account shall be rendered annually, to the
treasury of the United States, and they shall also pass to
the account of clerk^hire in the office of the Secretary of
State.
Act of Sbc. 13. And be itjyrthir enaeled^ That the act
vwlh\ 7 ^^ ^^® ^^^^^ ^^y ^^ April, in the year one thousand
repealed. ' hundred ^and ninety, intituled *^ An act to promote the
Proviso P^B*^^ ^^ useful arts," be, and the same is hereby re*
pealed. Provided oZtoayt, That nothing contained in
this act, shall be construed to invalidate any pateot that
may have been granted under the authority ^f the said
act ; and all patentees under the said act, their executon,
administrators, and assigns, shall be considered within the
purview of this act, in respect to the violation of their

PATENT LAWS. 7«5

rights ; provided, such violations shall be committed aAer
the passing of this act.

Approved February 21, 1798.

CHAP. LYIII.— Air Act gnpplementarr to the act intitaled " An

act to promote the progress of useful arts." (Obsolete.)

Se it enacted by the Senate and House of Representa' suits, &c.,
lives of the United States of America^ in Congress cw- had under
sembled^ That all suits, actioDs, process, and proceedings, ^^J^*^*
heretofore had in any District Court of the United States,
under an act passed the tenth day of April, in the year
one thousand seven hundred and ninety, intituled '^ An Act of
act to promote the progress of useful arts," which may February
have been set aside, suspended, or abated, by reason of jj»^'^®*»^
the repeal of the said act, may be restored, at the instance Act of
of the plaintiff or defendant, within one year from and ^?!J^^P' »
aAer the passing of this act, in the said Courts, to the '
same situation, in which they may have been, when they
were so set aside, suspended, or abated ; and that the par-
ties to the said suits, actions, process, or proceedings, be,
and are hereby intitled to proceed in such cases, as if no
such repeal of ^the act aforesaid had taken place. Pro- iq ^v^bat
vided alwaySy That before any order or proceeding, other manner,
than that for continuing the same suits, after the reinstat-
ing thereof, shall be entered or had, the defendant or
plaintiff, as the case may be, against whom the same may
have been reinstated, shall be brought into Court by sum-
mons, attachment, or such other proceeding, as is used
in other cases for compelling the appearance of a party.
Approved June 7, 1794.

CHAP. XXV. — An Act to extend the privilege of obtaining
patents for useful discoveries and inventions, to certain persons
therein mentioned, and to enlarge and define the penalties for
violating the rights of patentees. (Repealed.)

Section 1. Beit enactedby the Senate and House of Ellens
Representatives of the United States of America in Con- having re-
gress assembled^ That all and singular the rights and"^^^^^
privileges given, intended, or provided to citizens of the ^^e Uni-
United States, respecting patents for new inventions, dis- ted states,
coveries, and improvements, by the act, intituled "An t^ct^*^^^!^^^
to promote the progress of useful arts, and to repeal the of the for-
act heretofore made for that purpose,^^ shall be, and here- ™«|[ *°*-
by are extended and given to all aliens, who at the time peb.^ai
of petitioning in the manner prescribed by the said act, 1798, ch.ii.

7W PATENT LAWS.

Addition, shall have resided for two jean witbin the United States,

J^yjj-^*^ which privileges shall be obtained, used, and enjoyed, by

such persons, in as full and ample manner, and under the

same conditions, limitations, and restrictions, as by the

said act is provided, and directed in the case of cittzens

of the United States. Provided dlwaps^ That eveij

Oath to he person petitioning for a patent for any invention, art, or

InchraM- discovery, pursuant to this act, shall make oath or affirm-

dent, that atton before some person duly authorized to administer

the ^▼cn- oaths before such patent shall be granted, that such io-

ol^e^ha^ vention, art, or discovery hath not, to the best of his or

not boon her knowledge or belief, been known or used either in

^"*B* Actof ^^'^ or any foreign country, and that every patent which

179^ he shall be obtained pursuant to this act, for any inventi^m,

most be art, or discovery which it shall afterwards appear had been

andor^nal known or used previous to such application for a patent,

inventor.*' shall be utterly void.

The legal Sbc. 2. And he it further enacted^ That where any
representa- person hath made, or shall have made, any new inven-
deceMed ^^^^^ discovery, or improvement on account of which a
inventor patent might, by virtue of this or the above-mentioned
"^*^tent^ act, be granted to such person, and shall die before any
^ Addition- p&tent shall be granted therefor, the right of applying for
alto Act of and obtaining such patent, shall devolve on the legal
^^^^* representatives of such person in trust for the heiis at
law of the deceased, in case he shall have died intestate;
but if otherwise, then in trust for his devisees, in as fuU
and ample manner, and under the same conditions, limit-
ations, and restrictions, as the same was held or might
have been claimed or enjoyed by such person, in his or
her lifetime ; and when application for a patent shall be
made by such legal representatives, the oath or affirma-
tion, provided in the third section of the before-mentioned
act, shall be so varied as to be applicable to them.
Damages ^^c« 3- ^^^ ^^ *^ further enacted^ That where any
for breach patent shall be or shall have been granted pursuant to
riJEt*^*" *^'® ®' ^^® above-mentioned act, and any person without
the consent of the patentee, his or her executors, admi-
nistrators, or assigns first obtained in writing, shall make,
devise, use, or sell the thing whereof the exclusive right
is secured to the said patentee by such patent, such per^
Addition- 8on SO offending, shall forfeit and pay to the said paten-
17»3 ^^^ ^^tee, his executors, administmtors, or assigns, a sum equal
to three times the actual damage sustained by such paten-
To be re- tee, his executors, administrators, or assigns, from or by
covered by reason of such offence, which sum shall and may be re-
the oasTin covered, by action on the case, founded on this and the
the Circuit above-mentioned act, in the Circuit Court of the United
Court. States, having jurisdiction thereof.

PATENT LAWS. 767

Sbc. 4. And te it further maeied^ That the fiAh sec- Bepeelof

tion of the above-mentioned act, intitutled *'Aii act to f"* ^^ ^?

promote the progress of useful arts, and to repeal the act ^ Act of

heretofore made for that purpose,^* shall be and hereby is ^^^' ^h
repealed. y v^ :f I798,ch.ii.

Approved April 17, 1800.

CHAP. XIX.— An Act to extend the jurisdiction of the Cix^nit
Coarts of the United States to cases arising under the law rela- Bepealed
tiBff to patents. by Act of

* *^ Jul74,1886.

Be it enacted hf the Senate and House of Representa^ The Cir-
«tt?M of the United States of America in Congress cuit CJomts
assembled. That the Circuit Courts of the United States ^^t^^I
shall have original cognizance, as well in equity as at sance in
law, of all actions, suits, controversies, and cases, arising ^^7 *^
under any law of the United States, granting or confirm- controver-
ing to authors or inventors, the exclusive right to their sies re-
respective writings, inventions, and discoveries : and upon Jj^e^^^t to
any bill in equity, filed by any party aggrieved in any invennons
such cases, shall have authority to grant injunctions, ac- ?^^ ^"^'^
cording to the course and principles of courts of equity, "^^ct of
to prevent the violation of the rights of any authors or Feb. 21,
inventors, secured to them by any laws of the United ^'^^xtt^ot^'
States, on such terms and conditions as the said courts May 8i,
may deem fit and reasonable : Provided, however. That I7|j>,ch. 16.
from all judgments and decrees of any Circuit Courts,
rendered in the premises, a writ of error or appeal, as ^^^^^„.
the case may require, shall lie to the Supreme Court of alto prey!
the United States, in the same manner, and under the ows acts.
same circumstances, as is now provided by law in other
judgments and decrees of such Circuit Courts.

Approved February 15, 1819.

CHAP. CLXII.-^An Act concerning patents for useful in-

ventioiifl.

Be it enacted by the Senate and House of Representa- ^^X^f^
tives of the United States of America in Congress assem^ Juiy4,i886,
Ued, That it shall be the duty of the Secretary of State, ®^^g"^^J;.
annually, in the month of January, to report to Congress, ^ to prevl-
and to publish in two of the newspapers printed in the ous acts.
city of Washington, a list of all the patents for discove- expired pa-
ries, inventions, and improvements, which shall have ex- tents to i)e
pired within the year immediately preceding, with the^^^^J.
names of the patentees, alphabetically arranged. o^gress.

T68 PATENT LAWS.

Fonn of Sbc. 2. And he Ujvriker enacted^ That appiicatioD to
gplk^tion Congress to prolong or renew the term of a patent, sfaail
or ronew^ ^ made before its ezpirationy and shall be notified ai
patent. least ooc6 a month, for three months before its presenta-
tion, in two newspapers printed in the city of Wasfaingtm,
and in one of the newspapers In which the laws of the
United States shall be published in the State or territcay
Addition^ in which the patentee shall reside. The petition shall set
^ ^Acto!^'^ ^^^^ particularly the grounds of the application. It slai
be verified by oath ; the evidence in its support may be
taken before any judge or justice of the peace; it shall be
accompanied by a statement of the ascertained value ef
the discovery, invention, or improvement, and of the
receipts and expenditures of the patentee, so as to ezlufait
the profit or loss arising therefrom.
Patent to Sec. 3. And he it further enacted^ That whereTor any
be invalid patent which has been heretofore, or shall be heiealter,
in^nuv granted to any inventor in pursuance of the act of Coo-
not having gress, intitled ''An act to promote the progress of osefiil
vd^^^^ arts, and to repeal the act heretofore made for that puf-
terms, &c. pose," passed on the twenty-first day of February, in the
1798, ch. year of our Lord, one thousand seven hundred and ninety-
Addition- three, or of any of the acts supplementary thereto, shall
al to previ- be invalid or inoperative, by reason that any of the terms
ons acts. ^^ conditions prescribed in the third section of the said
first-mentioned act, have not, by inadvertence, accident,
or mistake, and without any fraudulent or deceptive inten-
tion, been complied with on the part of the said inventor,
Seeretaiy it shall be lawful for the Secretary of State, upon the
of State, surrender to him of such patent, to cause a new patent to
render,"^., ^ granted to the said inventor for the same invention for
to grant a the residue of the period then unexpired, for which the
new patent. Qfjg-^ij^l patent was granted, upon his compliance with the
terms and conditions prescribed in the said third section
In case of of the said act. And, in case of his death, or any assign-
rulfto vest ™®°^ ^^ ^^"^ Tfi'sAe of the same patent, the like right shall
iifexecn-^ vest in his executors and administrators, or assignee or
ton, &c. assignees : Provided^ however^ That such new patent, so
Proviso, granted, shall, in all respects, be liable to the same mat-
ters of objection and defence, as any original patent
granted under the said first- mentioned act. But no poblic
use or privilege of the invention so patented, derived from
or after the grant of the original patent, either under any
special license of the inventor, or without the consent of
the patentee that there shall be a free public use thereof,
shall, in any manner, prejudice his right of recovery for
any use or violation of his invention after the grant of
such new patent as aforesaid.
Approved July 3, 1832.

PATENT LAWS. 769

CHAP. CCm. — An Act concerning the isBoinf^ of patents to
aliens, for useful discoveries and inventions.

Be it enacted by the Senate and Home of Representa- . I^P^^
tives of the United States of America in Congress assem- j^^\^^^,
hied. That the privileges granted to the aliens described .The pri^
in the first section of the act, to extend the privilege of I|^^|^ ^
obtaining patents for useful discoveries and inventions to aliens ex-
certain persons therein mentioned, and to enlarge and ^^^^^
define the penalties for violating the rights of patentees, j^^^ ^f
approved April seventeenth, eighteen hundred, be ex- April 17,
tended, in like manner, to every alien, who, at the time J^^» **'
of petitioning for a patent, shall be resident in the United
States, and shall have declared his intention, according to
law, to become a citizen thereof: Provided, That every Proviso,
patent granted by virtue of this act, and the privileges
thereto appertaining, shall cease and determine and be-
come absolutely void without resort to any legal process Additional
to annul or cancel the same in case of a failure on the to previous
part of any patentee, for the space of one year from the ^^^ .
issuing thereof, to introduce into public use in the Unitedof joiy 4
States the invention or improvement for which the patent i^<}*
shall be issued ; or in case the same for any period of six
months af\er such introduction shall not continue to be
publicly used and applied in the United States, or in case B7 Ast
of failure to become a citizen of the United States, ^^<^^ J. ^»
agreeably to notice given at the earliest period within extended to
which he shall be entitled to become a citizen of the eighteen
United States. moaths.

Approved July 13, 1832,

CHAP. CCCLYn. — An Act to promote the progress of the nse-
fal arts, and to repeal all acts and parts of acts heretofore made
for that purpose.

Be it enacted by the Senate and House of Representa* Mar. 8,
tives of the United States of America in Congress assem- ^^^7, ch.
bled. That theire shall be established and attached to the Addition-
Department of State an office to be denominated the al to pre-
Palent Office, the chief officer of which shall be called ^**SJi^|J:
the Commissioner of Patents, to be appointed by thesionerof
President, by and with the advice and consent of the Patents to
Senate, whose duty it shall be, under the direction of the ed, aSSTlSs
Secretary of State, to superintend, execute, and perform duties,
all such acts and things touching and respecting (^^29'^^^^
granting and issuing of patents for new and useful disco- ohl 268.'
veries, inventions, and improvements, as are herein pro-

voL, II. -*- P. c. 65

T70 PATENT LAWS.

Tided for, or shall hereafter be, by kw, ditoeted to be
done and performed, and shall have the charge and cas-
tody of all the books, records, papers, models, machines,
and all other things belonging to said office. And said
commissioner shall receive the same compensation as is
allowed by law to the Commissioner of the Indian Depart-
ment, and shall be entitled to send and receive letters and
packages by mail, relating to the business of the office,
tree of postage.

Sbc. 9. And he Ujvrther enaeUd, That there shall be
in said office an inferior officer, to be appointed by the
Chief said principal officer, with the approval of the Secietarr
^Addf ^^ State, to receive an annual salary of seventeen hois-
«l to preW- dred dollars, and to be called the chief clerk of the Pbtesl
oos Aote. Office, who, in all cases during the necessary abeence of
the commissioner, or when the said principal office sbaU
become vacant, shall have the charge and custody of the
seal, and of the records, books, papers, machines, models,
and all other things, belonging to the said office, and sbafl
perform the duties of commissioner during such vacancy.
And the said commissioner may also, with like approvai,
lSx^™|a- appoint an examining clerk, at an annual salary of fifteen
l^o^er hundred dollars; two other clerks, at twelve hundred
officers, dollars each, one of whom shall be a competent dranghts-
man ; one other clerk, at one thousand dollars ; a machi-
nist, at twelve hundred and fifty dollars ; and a messenger,
at seven hundred dollars. And said commissioner, clerks,
and every other person appointed and employed in said
office, shall be disqualified and interdicted from acquiriog
or taking, except by inheritance, during the period for
which they shall hold their appointments, respectively,
any right or interest, directly or indirectly, io any patent
for an invention or discovery which has been, or may
hereafter be, granted.

Sec 3. And be it further enacted^ That the said prin-

Officere cipal officer, and every other peison to be appointed in

^£^. ^^ ^^ office, shall, before he enters upon the duties of

A(fditioii- his office or appointment, make oath or a^rmation truly

*^^.P™^"and faithfully to execute the trust committed to him.

And the said commissioner and the chief clerk shall abo,

before entering upon their duties, severally give bonds,

with sureties, to the Treasurer of the United States, the

former in the sum of ten thousand dollars, and the latter

in the sum of five thousand dollars, with condition to

render a true and faithful account to him or his sue*

cesser in office, quarterly, of all moneys which shaft be

by them respectively received for duties on patents, and

for copies of records and drawings, and all other moneys

received by virtue of said office.

PATENT LAWa 77J

Sec. 4. And he it further enacted^ That the said com- A seal to
miasioner shall cause a seal to be made and -provided for ed.^"'
the said office, with such device as the President of the Addition-
United States shall approve ; and copies of any records, ^ *V*2^"
books, papers, or drawings, belongiqg to the said office,
under the signature of said commissioner, or, when the
office shall be vacant, under the signature of the chief
clerk, with the said seal affixed, shall be competent evi-
dence in all cases in which the original records, books,
papers, or drawings, could be evidence. And any person
making application therefor may have certified copies of
the records, drawings, and other papers deposited in said
office, on paying, for the written copies, the sum of ten
cents for every page of one hundred words; and for
copies of drawings, the reasonable expense of making the
same.

Sbc. 5. And he it further enacted^ That all patents Pat«nto
issued from said office shall be issued in the name of the ^ ^ "jp^
United States, and under the seal of said office, and be secretary
signed by the Secretary of State, and countersigned by of State
the commissioner of the said office, and shall be recorded, q2|^]^^^^
together with the descriptions, specifications, and draw- sioner.
ings, in the said office, in books to be kept for that pur- ^ fi^^^"^'
pose. . Every suc^^ patent shall contain a short description J^ „*
or title of the invention or discovery, cerrectly indicating preyious
its nature and design, and in its terms grant to the appli- |y^c^of
cant or applicants, his or their heirs, administrators, exe- 1^7, may
cutors, or assigns, for a term not exceeding fourteen ^"^® *^ '
years, the full and exclusive right and liberty of making, ^*^^^'
using, and vending to others to be used, the said inven- Addition-
tion or discovery, referring to the specifications for the jjjj^^cl^'
particulars thereof, a copy of which shall be annexed to
the patent, specifying what the patentee claims as his
invention or discovery.

Sec. 6. And he it further enacted^ That any person or Appiiea-
perisons having discovered or invented any new and use- ^^'^^^
ful art, machine, manufacture, or composition of matter, irso,
or any new and useful improvement on any art, machine, y®^» ^^
manufacture, or composition of matter not known or used JiemSon
by others before his or their discovery or invention there- of dSco-
or, an^ noY, at the time of his application for a patent, in J^q^^"/
public use or on sale, with his consent or allowance, as [

the inventor or discoverer, and shall desire to obtain an
exclusive property therein, may make application in wri-
ting, to the Commissioner of Patents, expressing such
desire, and the commissioner, on due proceedings had,
may grant a patent therefor. But before any inventor shall specifi-
receive a patent for any such ftew invention or discovery, cation,
he shall deliver a written description of his invention or

772 PATENT LAWS,

difieoveryyand of the manner and procesB of
structing, using, and compoanding the same. In such (ulU \
clear, and exact terms, avoiding unnecessary prolixity, as \
to enable any person skilled in the art or science to whid! .
it appertains, or with* which it is most nearly connectEd, I
to make, construct, compound, and use the same ; and ia i
case of any machine, he shall fully explain the principle, '

and the several modes in which he has contemplated the |l
application of that principle or character by which it roar V
be distinguished from other inventions ; and shall partica- il
larly specify and point out the part, improvement, or
combination, which he claims as his own invention or
X>i«^. discovery. He shall, furthermore, accompany the whole
inn, &o. with a drawing or drawings, and written references,
A^i88^' where the nature of the case admits of drawings ; or widi
nqoires ' Specimens of ingredients, and of the composition of man
dnplicate j^r, sufficient in quantity for the purpose of e^periroent,
^^'^' where the invention or discovery is of a composition of
matter ; which descriptions and drawings, signed by the
inventor, and attested by two witnesses, shall be filed ia
the Patent Office; and he shall, moreover, furnish a
model of his invention, in all cases which admit of a
Models, representation by model, <9f a convenient size to exhibit
advantageously its several parts. The applicant shall also
Oath or make oath, or affirmation, that he does verily believe that
affirmfttion. he is the original and first inventor or discoverer of the
l8i Actof ^^^ machine, composition, or improvement, for which be
1887. solicits a patent ; and that he does not know or believe

that the same was ever before known or used ; and also
of what country he is a citizen ; which oath or affirmatioa
may be made before any person authorized by law to
administer oaths.
Ezami- Sbg. 7. And he it further enacted, That, on the filing
nation of of any such application, description, and specification,
to?°m^e ^"^ '^® payment of the duty hereinafter provided, the
and pro- commissioner shall make, or cause to be made, an exami-
SSereon* nation, of the alleged new invention or discovery ; and
should It if, on any such examination, it shall not appear to tb^

not be commissioner that the same had been invented or dlJcoT
deemed — — ■ ~ —

new

vions'Ac __
See Sec.

&C;J>U

'fin

or tiad been

•» Act of^in piihTiA uftg nr on sale, with the applicant's cpn8ent_or
llgj^'li ft allowance^ prior to the application, if the commissioner

shall deem it ^o be sufliciently useful and important, it
shall be his duty to issue a patent therefor. But when-
ever, on such examination, it shall appear to the com-
missioner that the applnant was not the original and first

PATENT LAWS. WS

ifirentor or discoverer thereof, or that any part of that .^L^^
which is claimed as new had before been invented or Mai^'8.
discovered^ or patented, or described in any printed pub- mc 7,
lication in this or any foreign country as tfibresaid, or ^PP^^^^
that the description is defective and • insufficient, he shall ciami if
notify the applicant thereof, giving him briefly such infer- speeifica-
mation and referencee as may be useful in judging of the b^idf ^^
propriety of renewing his application, or of altering bis
epecifioatioQ to embrace only that part of the invention gee Sec
or discovery which is new. In every such case, if the 8, tl»o of
applicant shall elect to withdraw his application, relin- ^^t'^°'^
qaishing his claim to the model, he shall be entitled to
receive back twenty dollars, part of the duty required by
this act, on filing a notice in writing of such electioa in
the Patent Office ; a copy of which, certified by the com«
missioner, shall be a sufficient warrant to the treasurer
for paying back to the said applicant, the said sum of
twenty dollars. But if the applicant, in such case shall
persist in his claims for a patent, with or without any By the
alteration of his specification, he shall be required to^^^^^^^^)
make oath or affirmation anew, in manner as aforesaid ; gee. ii, ap-
and if the specification and claim shall not have been so P^^s are
modified as, in the opinion of the commissioner, shall J^j^^e^fef^
entitle the applicant to a patent, he may, on appeal, and Justice of
upon request in writing, have the decision of a board of ^®^^.^'*^^
examiners, to be composed of three disinterested per- bia iostead
sons who shall be appointed for that purpose by the Se- of theBoard
cretary of State, one of whom, at least, to be selected, if^ere" And
practicable and convenient, for his knowledge and skill bv the Act
in the particular art, manufacture, or branch of science to ^^^|^
which the alleged invention appertains ; who shall be p^aiiow^
under oath or affirmation for the faithful and impartial ^ ^ ^^^
performance of the duty imposed upon them by said ap- gjgtant*''
pointment. Said board shall be furnished with a certifi- jadgee of
cate in writing of the opinion and decision of the com- ^ S for**
missioner, stating the particular grounds of his objection, the District
and the part or parts of the invention which he considers ^ Colnm-
as not entitled to be patented. And the said board shall ^^ g^ ^^^
give reasonable notice to the applicant, as well as to the of this sec-
commissioner, of the time and place of their meeting, f ^^'Jt^
that they may have an opportunity of famishing them Board of
with such facts and evidence as they may deem neces- Examinen
sary to a just decision ; and it shall be the duty of the by'secfn,
commissioner to furnish to the board of examiners such act of 1889.
information as he may possess relative to the matter under
their consMeration. And on an examination and conside-
ration of the matter by such board, it shall be in their
power, oc of a majority of them, to reverse the decision

65*

774 PATENT LAWS.

By the of the cotntnissioner, either in whole or in part ; and their
Se'xct^of opinion being certified to the commissioner, be shall be
1862. Aag. governed thereby in the further proceedbgs to be had oa
*f twenr" *"^** application: Provided^ however^ That, before a
fi^e^onun board shall be instituted in any such case, the applicaot
to be paid shall pay to the credit of the treasury, as provided in the
j^'^^J.®^ ninth section of this act, the sum of twenty-five dollan ;
Mtistant and each of said persons so appointed shall be entitled to
judges. receive, for his services, in each case, a sum not exceed*
ing ten dollars, to be determined and paid by the coonmis*
sioner out of any mone3r8 in his hands, which shall be in
full compensation to the persons who may be so appointed,
for their examination and certificate as aforesaid.
Interfer- Ssc. 8. And be it Jwrther enacted^ That whenever an
ing appii- application shall be made for a patent, which, in the opi-
**Addition- °*on of the commissioner, would interfere with any other
ftl to pre- patent for which an application may be pending, or with
Tious acts, uny unexpired patent which shall have been granted, it
See sec. shall be the duty of the commissioner to give notice there*
la, Act of of to such applicants, or patentees, as the case may be;
r^IaUo!» ^^^ ^^ either shall be dissatisfied with the decision of the
for taking commissioner on the question of priority of right or inven-
lestimony. ^Jq^, on a hearing thereof, he may appeal from such de-
cision, on the like terms and conditions as are provided
in the preceding section of this act, and the like proceed-
ings shall be had to determine which, or whether either,
of the applicants is entitled to receive a patent as prayed
for. But nothing in this act contained shall be construed
A^of^iMQ *^ deprive an original and true inventor of the right to a
sec. 6, oDti- patent for his invention, by reason of his having previously
tied to the taken out letters-patent therefor in a foreign country, and
^oa^ the ^^^ same having been published, at any time within six
application months next preceding the filing of his specification and
made'with- ^"^^'"IP- ^^^ whenever the applicant shall request it,
in Biz the patent shall take date from the time of filing of the
months a^ specifications and drawings, not, however, exceeding six
foreigD^p^ months prior to the actual issuing of the patent; and on
teat like request, and the payment of the duty herein required,

by any applicant, his specification and drawings shall be
filed in the secret, archives of the office, until he shall fur-
nish the model, and the patent be issued, not exceeding the
Thirty term of one year, the applicant being entitled to notice of
be^lJSd*^ interfering applications.

to the credit Sec. 9. And be it Jurtfur enacted^ That before any
tod*sbiJ^"*' *PP'*oation for a patent shall be considered by the cpra-
troasurer" niissioner as aforesaid, the applicant shall [my into the
by a citizen Treasury of the United States, or into the Patent Ofiice,

»cc.*w is ^^ ^"^? ""y ^^ ^^^ deposit banks, to the credit of the trea-
of 1887. Bury) if he be a citizen in the United States, or an alien,

PATENT LAWS. 776

and shall have been resident in the United States for one Aot of
year next preceding, and shall have made oath of fiis in- ^^- J J?
tention to become a citizen thereof, the sum of thirty quired;
dollars ; if a subject of the king of Great Britain, the sum 1^2, miut
of five hundred dollars ; and all other persons the sum of ^^q^^*
three hundred dollars ; for which * pay ment duplicate re- declare
ceipts shall be taken, one of which to be filed in the office ^^q"J^^
of the treasurer. And the moneys received into the trea- come aciti-
sury under this act shall constitute a fund for the pay- zeo;
ment of the salaries of the officers and clerks herein pro- dred dol^*
vided for, and all other expenses of the Patent OfficCflarsbya
and to be called the patent fund. Gi^TBri-

Sec. 10. And be it further enacted. That where any tain, and"
person hath made, or shall have made, any new inven- three hun-
tion, discovery, or improvement, on account of which a ^^^^^ ^^
patent might by virtue of this act ^ granted, and such sons.
person shall die before any patent shall be granted there- ^ ^^*^J{2J!
for, the right of applying for and obtaining such patent out taking'
shall devolve on the executor or administrator of such & patent,
person, in trust for the heirs at law of the deceased, in Jq^^'
case he shall have died intestate ; but if otherwise, then &c., may
in trust for his devisees, in as full and ample manner, and ^^v^.
under the same conditions, limitations, and restrictions as Aot of
the same was held, or might have been claimed or en- 1800.
joyed by such person in his or her lifetime ; and when ^^^ ^
applicat^ion for a patent shall be made by such legal re-
presentatives, the oath or affirmation provided in the sixth
section of this act shall be so varied as to be applicable
to them.

Sec. 11. And he it further enacted^ That every patent Assign-
jshall be assignable in law, either as to the whole Interest, ™J!^^°^j^^
or any undivided part thereof, by any instrument in writ- record
ing ; which assignment, and also every grant and con- ^^I^^'
veyance of the exclusive right under any patent, to make gy ^^ ^^h
and use, and to grant to others to make and use, the thing sec. of the
patented within and throughout any specified part or por- ^^^^^^
tion of the United States, shall be recorded in the Patent Issue in the
Office within three months from the execution thereof, n«?e of the
for which the assignee or grantee shall pay to the com- ll^lf^!^ ^
missioner the sum of three dollars. ment be

Sec. 12. And he it further enacUd, That any citizen J^fore^^Je
of the United States, or alien, who shall have been a resi- patent is
dent of the United States one year next preceding, and issued,
shall have made oath of his intention to become a citizen jq^t^I
thereof, who shall have invented any new art, machine, assign-
or improvement thereof, and shall desire further timeto™®**^***®®
mature the same, may, on paying to the credit of the ofjiay 27
treasury, in manner as provided in the ninth section of 1848.
this act, the sum of twenty dollars, file in the Patent

776 PATENT LAWS.

CftTMa Office a caveat setting forth the deaiga and pmpoee
mav be ei^ thereof, and its principal and distinguishing characteristics.
Additional <^nd praying protection of his right, till he shall hafe
matured his invention ; which sum of twenty dollars, ia
case the person filing such caveat shall aAerwarda take
out a patent for the invention therein mentioned, shall be
considered a part of the sum herein required for the
same. And such caveat shall be filed in the coafidentxal
archives of the office, and preserved in secresy. And
if application shall be made by any other person, withio
one year from the time of filing such caveat, for a pateat
of any invention with which it may in any respect inter-
fere, it fhall be the duty of the commissioner to deposit
the description, specifications, drawings, and model, in
the confidential archives of the office, and to give Botieo
(by mail) to the person filing the caveat of such applica-
tion, who shall, within three months after receiving the
notice, if he would avail himself of the benefit of hii
caveat, file his description, specification, drawings, and
model ; and if, in the opinion of the commissioner, the
specifications of claim interfere with each other, like
proceedings may be had in all respects as are ia this act
provided in the case of interfering applications. Pro- ]

ProvlM. vided^ hotoever^ That no opinion or decision of any board
of examiners, under the provisions of this act, shall pie*
elude any person interested in favor of or against the
validity of any patent which has been or may hereafter
be granted, from the right to contest the same in any
judicial court, in any action in which its validity may
come in question.
Patents Sbc. 13. And be U further enacted^ That whenever
fro*^*def ^^^ patent, which has heretofore been granted, or which
tive specifi- shall hereafter be granted, shall be inoperative or invalid,
cations by reason of a defective or insufficient description or
sumudei^ specification, or by reason of the patentee claiming in his
•d, and Specification, as his own invention, more than he had or

tSits^mar *^*'^ ^*^® * '*^^' ^° claim as new, if the error has or

be issued in shall have arisen by inadvertency, accident, or mistake,

certain and without any fraudulent or deceptive intention, it shall

^ A^ I88i, ^® lewful for the commissioner, upon the surrender to

sec. 8. him of such patent, and the payment of the further duty

6 ^t^ ^^ fifteen dollars, to cause a new patent to be issued to

1887.- the said inventor for the same invention, for the residue

of the period then unexpired, for which the original

patent was granted, in accordance with the patentee's

corrected description and specification. And in case of

his death, or any assignment by him made of the original

patent, a similar right shall vest in his executors, admin-

istmtors, or assignees. And the patent so reissued,

PATENT LAWS. 777

together w.ith the corrected description and specifications,
shall have the same effect and operation in law, on the
trial of all actions hereafter commenced for causes subse-
quently accruing, as though the same had been originally
filed in such corrected form, before the issuing of the
original patent. And whenever the oriirinal patentee Patentee
shall be desirous of adding the description and specinca- ^^j/^tJoQa ^
tion of any new improvement of the original invention or his patent.
discovery, which shall have been invented or discovered gj^^^l
by him subsequent to the date of his patent, he may, like oiu Acts,
proceedings being had in all respects as in the case of
original applications, and on the payment of fifteen dol-
lars, as hereinbefore provided, have the same annexed to
the original description and specification ; and the com-
missioner shall certify, on the margin of such annexed
description- and specification, the time of its being an-
nexed and recorded ; and the same shall thereafter have
the same effect in law, to all intents and purposes, as
though it had been embraced in the original description
and specification.

Sec 14. And be it further enacted^ That whenever, in C<"u^
any action for damages [forj making, using, or sellingjSdg^Jlit*'
the thing whereof the exclusive right is secured by anyforasnm
patent heretofore granted, or by any patent which "'ay?®*^^^'
hereafter be granted, a verdict shall be rendered for the times the
plaintiff in such action, it shall be in the power of the ^^^^ ^^
Ck>urt to render judgment of any sum above the amount damages,
found by such verdict as the actual damages sustained by See Act,
the plaintiff, not exceeding three times the amount there- ^^jj^
of, according to the circumstances of the case, with times ac-
costs : and such damages may be recovered by action on ^^'^ <**"
^i_ • z. c * A • • J* *• ». u^ ™*M?e8 sna-

the case, m any court of competent jurisdiction, to be tainecL

brought in the name or names of the person or persons 1790, dar
interested, whether as patentee, assignees, or as grantees ™?j^2 •^
of the exclusive right within and throughout a specified profert the
part of the United States. ton^^ d

Sec 15. At^ be it further enacted^ That the defend- ij^^Me ^
ant in any such action shall be permitted to plead the defendant,
general issue, and to give this act and any special matter ^^f ^®y^
in evidence, of which notice in writing may have been plead the
given to the plaintifiT or his attorney, thirty days before ^[eneral
trial, tending to prove that the description and specifica- ^1790. '•
tion filed by the plaintiff, does not contain the whole truth 1798.
relative to his invention or discovery, or that it contains ^

more than is necessary to produce the described effect,
which concealment or addition shall fully appear to have
been made for the purpose of deceiving the public ; or ^
that the patentee was not the original and first inventor "^

W8 PATENT LAWS.

or diflcorerer of the thing patented* or of « substantial
1793. and material part thereof claimed as new ; or that itjtad
been described in some public work, anterior to ttesuiw^
posed discovery thereof fey the patentee, or haflj)eeDin
al^^pre^I public Use, or on sale, with the consent and ailowaDMJr
oi|B acts. ' the patentee, before hifflippncanon fer a pategtior that £
Uniesa jj^d surreptitiously or unjustiy obtained the paient for thai
or rule wm which was, in fact, invented or discovered by another
more than who was using reasonable diliia;ence in adapnag and per
{Jte/to Uie 'ccfing the same ; or that the patentee, if ad alien at
applicatroa thrtime the patent was granted, had failed sod Deglected,
ten* ^^ ^^^ ^^^ space of eighteen months from the date of the pa-
Act of ^^ to put and continue on sale to the public, on reasoc*
March 8, able terms, the invention or discovery for which the pa-
l^\ tent issued ; and whenever the defendant relies in his de^
1V90. fence on the fact of a previous invention, knowledge, or
Ktfti "*® ^^ ^^^ ^^^"^ patented, he shall state, in his notice of
addiUonal. special matter the names and places of residence of tboae
See Act, whom he intends to prove to have possessed a prior kooff-

^Addition- ^®^8« ^^ ^^^ ^^^^S *°^ ^^^e'® t*^e »««"« ^ been used ;ifl
al to pre- either of which cases judgment shall be rendered for the
vlwis act».^ defendant, with costs : Provided, however , Thatwheneier
S^^'. " 8*ia** satisfactorily appear that the patentee, at the tin»
9, Act of of making his application for the patent believed himself
im^' to be the first inventor or discoverer of the thing patented,
teat ahfoi the same shall not be void on account of the invention or
bedeemed discovery, or any part thereof, havinc been before known

irood for so , r ' / ' • ' -. - ® . ^^Jinn \hid the

much as OT used m any foreign country ; it^not appeanngin«i«'..
/ the paten- same, or any substantial part tTiereor,TiadWoi?5!??£i!^

I S, tiitl!f. ^®°^^^ ^^ described In any >rinted7iIEIicat^ ^1^
"ventorof, Wdcd, oZso, That whenever the pTafnTilTslmirfail to 8U^

*' rt^o^thlJt **'^ **** ^^^^^^ ^° **^ ground that in his specificauon^
Saimed ^^^^^ » embraced more than that of which ^^f^
may not be first inventor, if it shall appear that the defendant had usca
vfdSifS, ^^ violated any part of the invenUon justly and truly s^

Proviso, cified and claimed as new, it shall be in the power 0
^ Addition- Court to adjudge and award, as to costs, m poay »PI**'
vions^i!^. ^ just and equitable. ,

Interfer- Sbc, 16. And be U further enacUd, That, whenewr
mg patents, ^1^^^ ^^M be two interfering patents, or whenever »P^'

Addition- tent or application shall have been refused on an adv
al except, decision of a board of examiners, on the grouna
ma the patent applied for would interfere with ao «n«5P'J

patent previously granted, any person i"^®.'**. Lpne
such patent, either by assignment or otherwise, m ^ ^^
case, and any such applicant, in the other case, "^^^^
remedy by bill in equity ; and the Court having ^^
thereof, on notice to adverse parties, and other ow^ r

PATENT LAWS. 779

ceedings had, may adjudge and declare either tlie patents .T^^ P'^
▼oid in the whole or in part, or inoperative and invalid in uie 8ect?on
any particular part or portion of the United States, ac- are extend-
cording to the interest which the parties to such suit n™*ycas^^f re-
possess in the patent or the inventions patented, and may fosai of pa-
also adjudge that such applicant is entitled, according to ^°^ ^'^^
the principles and provisions of this act, .to have and re- c^mU- ^
ceive a patent for his invention, as specified in his claim, sioper or
or for any part thereof, as the fact of priority of right or ^^^^/^
invention shall, in any such case, be made to appear. District of
And such adjudication, if it be in favor of the right of (Columbia;
such applicant, shall authorize the Commissioner to issue oFthrAct
such patent, on his filing a copy of the adjudication, and of 1889,
otherwise complying with the requisitions of this act*:^^^^?'
Provided, however^ that no such judgment or adjudication
shall afiect the rights of any person, except the parties to
the action, and those deriving title from or under them
subsequent to the rendition of such judgment.

Sec 17. And be it further enacted^ That all actions, Actions
suits, controversies, and cases, arising under any law of ^^^^^j®
the United States, granting or confirming to inventors the Courts of
exclusive right to their inventions or discoveries, shall be aj!!J^°*iL?
originally cognizable, as well in equity as at law, by the Act of '
Circuit Courts of the United. States, or any District Court 1798.
having the powers and jurisdiction of a Circuit Court ; ^^^ ^^
which Courts shall have power, upon a bill in equity Not ex-
filed by any party aggrieved, in any such case, to grant elusive.
injunctions, according to the course and principles of
courts of equity, to prevent the violation of the rights of
any inventor, as secured to him by any law of the United
States, on such terms and conditions as safd courts may
deem reasonable : Provided^ however^ That from all ProTiso.
judgments and decrees from any such court rendered in Addition-
the premises, a writ of error or appeal, as the case may ^^^^^
require, shall lie to the Supreme Court of the United exclusive.
States, in the same manner and under the same cir-
cumstances as is now provided by law in other judg*
ments and decrees of Circuit Courts, and in all other
cases in which the Court shall deem it reasonable to
allow the same.

Sec. 18. And he it Jurtlier enacted^ That whenever Patents
any patentee of an invention or discovery shall desire an J^Jed'se^'
extension of his patent beyond the term of its limitation, ven years
he may make application therefor, in writing, to the Com- "* certain
missioner of the Patent OfRce, setting forth the grounds Act of
thereof ; and the commissioner shall, on the applicant's i^s^i ch.
paying the sum of forty dollars to the credit of the trea- ^^^
Bury, as in the case of an original application for a pa*
tent, cause to be published in one or more of the prin-

780

PATENT LAWS.

By the
l8t section
of the Act
of May 27,
1841, thia
power is
vested in
the Com-
missioner
solely.

Proviso.

Library of
Patent Of-
fice.
Additional.

cipal newspapers in the city of Washingtoo, and Id sueb
other paper or papers as he may deem proper, published
in the section of country most interested adversely to ibe
extension of the patent, a notice of such applicatioD, id
of the time and place when and where the same will be
considered, that any person may appear and show cause
why the extension should not be granted. And the Se-
cretary of State, the Commissioner of the Patent Office,
and the Solicitor of the Treasury, shall constitute a board
to hear and decide upon the evidence produced before
them, both for and against the extension, and shall sit, for
that purpose, at the time and place designated in the pub-
lished notice thereof. The patentee shall furoisb to said
Ifoard a statement, in writing, under oath, of the ascer-
tained value of the invention, and of his receipts and ei-
penditures, sufficiently in detail to exhibit a true and faitb-
ful account of loss and profit in any manner accruing to
him from and by reason of said invention. And if,upoa
a hearing of the matter, it shall appear to the full and ea-
tire satisfaction of said board, having due regard io the
public interest therein, that it is just and proper that tte
term of the patent should be extended, by reason of ibe
patentee, without neglect or fault on his part, having fail-
ed to obtain from the use and sale of his invention, a rea-
sonable remuneration for the time, ingenuity, and expense
bestowed upon the saifte,and the introduction thereof into
use, it shall be the duty of the commissioner to renew aud
extend the patent, by making a certificate thereon of such
extension, for the term of seven years from and after tbe
expiration of the first term ; which certificate, with a cer-
tificate of said board of their judgment and opinmai
aforesaid, shall be entered on record in the Patent Oftce,
and thereupon the said patent shall have tbe sao^^^^f^
in law as though it had been originally grant^ ^^^ ^^
term of twenty -one years ; and the benefit of such renew
shall extend to assignees and grantees of the right o
the thing patented to the extent of their respective im •
rests therein : Provided, however, That no ^^^f^J^
a patent shall be granted after the expiration of the
for which it was originally issued. , .l-ii

Sec 19. And be it further enacted, That there sw'^
bp provided, for the use of the said office, f_^^?^i^
scientific works and periodical publications, botn o ^
and American, calculated to facilitate the discharge ^
duties hereby required of the chief officers therein, J^
purchased under the direction of the comn""ee
library of Congress. And the sum of fifteen hundre
lars is hereby appropriated for that purpose, w
out of the Patent Fund.

PATENT LAWS. 781

S£c. 20. And be it Juriher enaaed^ That it shall be Models to
the duty of the commisaioner to cause to be classified and ^|^^2^^.
arranged, in such rooms oi galleries as may be provided raneed.
for that purpose, in suitable cases, when necessary for Adrntional.
their preservation, and in such manner as shall be condu-
cive to a beneficial and favorable display thereof, the
models and specimens of compositions and of fiibrics, and
other manufactures and works of art, patented or unpa-
tented, which have been, or shall hereafter be deposited
in said office. And said rooms or galleries shall be kept
open during suitable hours, for pubUc inspection.

Sbc. 21. And he it jvriker enacted^ That all acts and Former
parts of acts heretofore passed on this subject be, and the ^ repeal-
same are hereby repealed : Provided^ however ^ That all Pxoviio.
actions and processes in law or equity, sued out prior to
the passage of this act, may be prosecuted to final judg-
ment and ezecutbn, in the same manner as though thu
act had not been passed, excepting and saving the appli-
cation to any such action of the provisions of the fourteenth
and fifteenth sections of this act, ao far as they may be
applicable thereto : And provided^ aUoyThat all applica- Pvovito,
tions for petitions for patents, pending at the time of the
passage of this act, in cases where the duty has been paid,
shall be proceeded with and acted on in the same manner
as though filed after the passage thereof.

JAMES E. POLE,
Speaker of Ike House of RepreaentaOves.
W. R. HNG,
President of the Senate^ pro tempore.

Approved July 4, 1886.

ANDREW JACESON.

CHAP. XLY. — Ak Act in addition to the act to promote the pro- xii^ ^^

gress of science and nsefnl arts. of 1886

forms the

Be it enacted hy the Senate and House of JR^py'wcnta-^^^^
tives of the United States of America in Congress as^ qaent aet»
semhUdj That any person who may be in possession of, ^ ^^
or in any way interested in, any patent for an invention, ^a^nts
discovery, or improvement, issued prior to the fifteenth issued, and
day of December, in the year of our Lord one thousand ^^ex-
eight hundred and thirty-six, or in an assignment of any ecuted and
patent, or interest therein, executed and recorded prior f^^*^
to the said fifteenth day of December, may, without fg^*^ Re-
charge, on presentation or transmission thereof to thecember,
Commissioner of Patents, have the same recorded anew Je^j^c^ed
in the Patent Office, together with the descriptions, spe* anew, &c.
voL« II. — P. c. 66

782 PATENT LAWS.

cifications of clainiy and drawings annexed or beloDgii^
to the same ; and it shall be the duty of the commisMiief
to cause the same, or any authenticated copy of the ori-
ginal record, specification, or drawing, which he may
obtain, to be transcribed and copied into books of leoord,
to be kept for that purpose ; and, wherever a drawing was
not originally annexed to the patent, and referred to is
the specification, any drawing produced as a delineatkn
of the invention, being verified by oath in such naanner as
the commissioner shall require, may be transmitted and
placed on file, or copied as aforesaid, together with certi-
ficate of the oath ; or such drawings may be made in the
office, under the direction of the commissioner, in cos-
Heasnres formity with the specification. And it shall be the duty
to ^taS^ °^ ^^ commissioner to take such measures as may be
patents advised and determined by the Board of CommissioDeri,
&c., to be provided for in the fourth section of this act, to obtain the
neorded, patents, specifications, and copies aforesaid, for the pnr-
ClerkB of pose of being so transcribed and recorded. And it shall be

Siiteof U ^^® ^"*y ®^ ^^^ ^^ ^^^ several clerks of the judicial
States to courts of the United States to transmit, as soon as may be,
tnnsmit to the Commissioner of the Patent Office, a statement of
ofaathenti- ^^^ ^^ authenticated copies of patents, descriptions, spe-
oated CO- cifications, and drawings of inventions and discoveiies,
to^^!^ made and executed prior to the aforesaid fifteenth day of
prior toi6t\i December, which may be found on the files of his office ;
December, and also to make out and transmit to said commissioner,
1886, &c. |»^y record as aforesaid, a certified copy of every such pa-
tent, description, specification, or drawing, which shall be
specially required by said commissioner.
Certified Sec. 2. And he it further enacted^ That copies of such
^^^^ ^ record and drawings, certified by the commissioner, or,
oord, &c., ^Q ^^9 absence, by the chief clerk, shall be prima Jade
to be evi- evidence of the particulars of the invention, and of the
any%^- P^^^D* granted therefor, in any judicial court of the United
ciid court States, in all cases where copies of the original record or
^^^* ^*J^ specification and drawings would be evidence, without
&c?,fs^a^ proof of the loss of such originals ; and no patent issued
&CU. prior prior to the aforesaid fifteenth day of December shall,

WM*to he ^^^^ *® ^"^ ^^y ^^ '^^^^ "®*^ ^ received in evidence,
receded in in any of the said courts, in behalf of the patentee, or
^^d comtT ^^®' person who shall be in possession of the same, un-
after 1st ' l^^s it shall have been so recorded anew, and a drawing
Jtme next, of the invention, if separate from the patent, verified
oSJSd"^ as aforesaid, deposited in the Patent Office ; nor shall
anew. any written assignment of any such patent, executed
and recorded prior to the said fiAeenth day of Decem-
ber, be received in evidence in any of the said courts.

PATENT LAWS. 788

in behalf of the assignee, or other person in possession
thereof, until it shall have been so recorded anew.

Sbc. 3. And be it further enacted^ That, whenever it New pa-
shall appear to the commissioner that any patent was de-f^'^^J^^®
stroyed by the burning of the Patent Office building, ont^Meloet
the aforesaid fifteenth day of December, or was otherwise or destn^-
lost prior thereto, it shall be his duty, on application the^- fo^ ^^
for by the patentee, or other person interested therein, 16, 1886.
to issue a new patent for the same invention or disco- ^J^^^^^
very, bearing the date of the original patent, with hisiog^g^b^^
certificate thereon, that it was made and issued pursuant otiently to
to the provisions of the third section of this act, ^iDdjg^"^^^^
shall enter the same of record : Provided^ however^ 29 Angnst,
That, before such patent shall be issued, the applicant ^^fBo.<^- 3*.
therefor shall deposit in the Patent Office a duplicate, as ^'^^^'
near as may be, of the original model, drawings, and
descriptions, with specifications of the invention or dis-
covery, verified by oath, as shall be required by the
commissioner ; and such patent and copies of such draw-
ings and descriptions, duly certified, shall be admissible
as evidence in any judicial court of the United States,
and shall protect the rights of the patentee, his adminis-
trators, heirs, and assigns, to the extent only in which
they would have been protected by the original patent and
specification.

Sec 4. And he it further enacted^ That it shall be Duplicates
the duty of the commissioner to procure a duplicate of ^^^^^
such of the models destroyed by fire on the aforesaid fif- to be pro-
teenth day of December, as were most valuable and^™^-
interesting, and whose preservation would be important
to the public ; and such as would be necessary to facili-
tate the just discharge of the duties imposed by law on
the commissioner in issuing patents, and to protect the
rights of the public and of patentees in patented inven-
tions and improvements : Provided^ That a duplicate of PtotIso.
such models may be obtained at a reasonable expense :
And provided^ dUoj That the whole amount of expendi- Further ,
ture for thb purpose shall not exceed the sum of one ^^ ^' *
hundred thousand dollars. And there shall be a tempo-
rary Board of Commissioners, to be composed of the Com- A tempo-
missioner of the Patent Office and two other persons to Jlf^Jo^^.
be appointed by the President, whose duty it shall be togionen to
consider and determine upon the best and most judicious ^«aK>9"'*-
mode of obtaining models of suitable construction ; and, da^es.
also, to consider and determine what models may be pro- ^

cured in pursuance of, and in accordance with, the provi-
sions and limitations in this section contained. And said
commissioners may make and establish all such regula-

784 PATENT LAWS.

tions, terms, and oonditioiis, not inconaiitent with law, as
in their opinion may be proper and neceaaaiy to caziy
the provisions of this section into effect, aocoitUng to iis
true intent
PAtenti Sec. 5. And he U Jvrther maeUd, That, wbenefcr a
rrtaraed patent shall be returned for correction and reiamev imAer
^^^^°^^ the diirteenth section of the act to which this is ad^
under the tional, and the patentee shall desire seyeral patents to be
?^ori£e '"^^ ^^' distinct and sepaiate partB c^ the thing patentr
^to " od, he shall first pay, m manner and in addition to the
which ttdi sum provided by that act, the sum of thirty dollars fcr
U ad^tian. ^^^ additional patent so to be issued : Provided, howeter,
Aot of That no patent made prior to the aforesaid fifteenth day
^y ^ of December, shall be corrected and reissued, until a da-
Proviso, plicate of the model and drawing of the thing, as origi-
nally invented, verified by oath as shall be required bj
the commissioner, shall be deposited in the Patent Ofiioe.
No addi- f^QT shall any addition of an improvement be made to
^^jj^o'^ any patent heretofore granted, nor any new patent be
any patent issued for an improvement made in any machine, roaao-
^^ted'^ facture, or process, to the original inventor, aas^nee,

S^imtilaor possessor of a patent therefor, nor any
verified da- be admitted to record, until a duplicate model and diav-
^j^°j^ ing of the thing originally invented, verified as afove-
depoeited, said, shall have been deposited in the Patent Office, if
^ the commissioner shall require the same ; nor shall any

patent be granted for an invention, improvement, or dis-
covery, the model or drawing of which shall have been
lost, until another model and drawing, if required by the
Compen-. commissioner, shall, in like manner, be deposited in the

m^dJ!&c. ^^^^"^ ^^<^* ^"^ ^° ^' ^^^ ^^^B' ^ ^^U as in those
' which may arise under the third section of this act, the
question of compensation for such models and drawing,
shall be subject to the judgment and decision of the com-
missioners provided for in the fourth section, under the
same limitations and restrictions as are therein pre-
scribed.
Patents S£G. 6. And he it further enacted^ That any pat^it

^^^^^^^ hereafter to be issued, may be made and issued to the
assignee or assignees of the inventor or discoverer, the
assignment thereof being first entered of record, and
the application therefor being duly made, and the speci-
fication duly sworn to by the inventor. And in all cases
hereafter, the applicant for a patent shall be held to fur-
nish duplicate drawings, whenever the case admits of
drawing, one of which to be deposited in the office, and
the other to be annexed to the patent, and considered a
part of the specification.

PATENT LAWS. 785

Sec. 7. And he it further enacted^ That, whenever any Whenever
patentee shall have, through inadvertence, accident, orj^ypjj^"
mistake, made his specification of claim too broad, claim* through m-
ing more than that of which he was the original or first ^vertence,
inventor, some material and substantial part of the thing ^'g^^^.
patented being truly and justly his own, any such paten- cation too
tee, his administrators, executors, and assigns, whether of 5^°^ ^'^
the whole or of a sectional interest therein, may make may make
disclaimer of such parts of the thing patented as the dis- ^claimer,
claimant shall not claim to hold by virtue of the patent or
assignment, stating therein the extent of his interest in
such patent ; which disclaimer shall be in writing, attest-
ed by one or more witnesses, and recorded in the Pa-
tent OlQSce, on payment by the person disclaiming, in
manner as other patent duties are required by law to be
paid, of the sum of ten dollars. And such disclaimer
shall thereafter be taken and considered as part of the
original specification, to the extent of the interest which
shall be possessed in the patent or right secured there-
by, by the disclaimant, and by those claiming by or under
him, subsequent to the record thereof. But no such dis-
claimer shall affect any action pending at the time of its
being filed, except so far as may relate to the question
of unreasonable neglect or delay in filing the same.

Sec 8. And he it further enacted, That, whenever ap- tionf^?^.
plication shall be made to the commissioner for any ad- ditions to "
dition of a newly-discovered improvement to be made to newly dU-
an existing patent, or whenever a patent shall be return- provements
ed for correction and reissue, the specification of claim to be made
annexed to every such patent shall be subject to revi- ^^^^
sion and restriction, in the same manner as are origi-&c. '
nal applications for patents ; the commissioner shall not
add any such improvement to the patent in the one case,
nor grant the reissue in the other case, until the appli-
cant shall have entered a disclaimer, or altered his speci-
fication of claim, in accordance with the decision of the
commissioner; and in all such cases, the applicant, if
dissatisfied with such decision, shall have the same reme-
dy, and be entitled to the benefit of the same privileges
and proceedings, as are provided by law in the case of
original applications for patents.

Sec. 9. And he.it further c««c<e4, (any thing in the ^j^^» ^y
fifteenth section of the act, to which this is additional, &c., any
to the contrary notwithstanding,) That whenever, by mis- i»tentee
take, accident, or inadvertence, and without any wilful ^ ^he ^-
default or intent to defraud or mislead the public, any ginal in-
patentee shall have, in his specification, claimed to be the p^*^^ Jj^
original and first inventor or discoverer of any material Ling pa-

66*

786 PATENT LAWa

tented, of or substantial part of the thing patented, of which he was
which ha qq( xhe first and original inventor, and shall hare no l^al
^ ^^ or just right to claim the same, in every such case the
patent shall be deemed good and valid for so mueh of
the invention or discovery as shall be truly and bondjde
Proviso. ^^^ ^^° * Provided^ It shall be a material and sub^an-
tial part of the thing patented, and be definitivelj distiD-
guishable from the other parts so claimed vrithoat ri^
as aforesaid. And every such patentee, his executois,
administrators, and assigns, whether of a wliole or of a
sectional interest therein, shall be entitled to maintiiin a
suit at law or in equity, on such patent, for any infringe-
ment of such part of the invention or discovery as s^l
be b<md fidt his own, as aforesaid, notwithstanding the
specification may embrace more than he shall have a
legal right to claim. But in every such case, in which
a judgment or verdict shall be rendered for the plain-
tiff, he shall not be entitled to recover costs against the
defendant, unless he shall have entered at the Patent
Office, prior to the commencement of the suit, a disehumer
to all that part of the thing patented which was so daimed
Further without right: Provfied, however^ That no person hfing-
proviso, jgg ^^j g^^i^ ^^ gi^i^ii \^ entitled to the benefits of the

provisions contained in this section, who shall hare an-
reasonably neglected or delayed to enter at the Patent
Office a dislaimer, as aforesaid.
Agents to Sbc. 10. And he ii Jwrtker enacted^ That the coimni»>
be appoint- sioner is hereby authorized and empowered to appoint
ceive imd c^g^ntB in not exceeding twenty of the principal cities or
forwerd towns in the United States, as may best accommodate the
models, &c. different sections of the country, for the purpose oi re-
ceiving and forwarding to the Patent Office all such mo-
dels, specimens of ingredients and manuiactiires, as shall
be intended to be patented or deposited therein, the tians-
I portation of the same to be chargeable to the patent fund.

Twoez- Sbc 11. And he it further enaetedj That, instead of
amining one examining clerk, as fm>vided by the second section
^p^g ^^ ^^ ^^ ^o which this is additional, there riiall he ap-
clerk tx> be pointed, in manner therein provided, two examining clerks,
appointed. ^^^^ ^^ receive an annual salary of fifteen hundred dol-
lars, and, also, an additional copying clerk, at an annual
Tempore salary of eight hundred dollars. And the commissioDer
^ ^''^ ^ ^^^ authorized to employ, from time to fime, aa many
^ployed, temporary clerks as may be necessary to execute tfaie
copying and draughting required by the first notion of
this act, and to examine and compare the records with
the originals, who shall receive not exceeding seven cenfts
for every page of one hundred words, and for drawings

PATENT LAWS. 787

and comparison of records with originals, such reason-
able compensation as shall be agreed upon or prescribed
by the commissioner.

Sec. 12. And be it further enacted,, That, whenever Certificate
the application of any foreigner for a patent shall be re- ^^fonOT^'
jected and withdrawn, for want of novelty in the mven- to be suc-
tion, pursuant to the seventh section of the act to which ^^^'J^xy?"
this is additional, the certificate thereof of the commis- Sourer ^
sioner shall be a sufficient warrant to the treasurer to
pay back to such applicant two thirds of the duty he shall
nave paid into the Treasury on account of such appli-
cation.

S£c. 13. And he it further enacted^ That, in all cases . Affinna-
in which an oath is required by this act, or by the act to ^e sul^S-
which this is additional, if the person of whom it is re- tntedforan
quired shall be conscientiously scrupulous of taking an ^^
oath, affirmation may be substituted therefor.

Sec 14. And he it further enacted^ That all moneys MoDeys
paid into the Treasury of the United States fbr patents, [jj*^^^^
and for fees for copies furnished by the Superintendent ly for pa-
of the Patent Office, prior to the passage of the act oi^^^^^'t
which this is additional, shall be carried to the credit of p^*^ ^f
the patent fund created by said act; and the moneys the act to
constituting said fund shall be, and the same are hereby, J^^^i^-
appropriated for the payment of the salaries of the officers al, to be
and clerks provided by said act, and all other expenses ^^^ !9
of the Patent Office, including all the expenditures pro- ^nt ftind
vided for by this act ; and, also, for such other purposes created by
as are or may be hereafter specially provided for byJJJ^^^»
law. And the commissioner is hereby authorized to fund appro-
draw upon said fund, from time to time, for such sums ^51^1^''''^
as shall be necessary to carry into effect the provisions \^, ^
of this act, governed, however, by the several limita- Gommia-
tions herein contained. And it shall be his duty to lay JhorflJ^'^io
before Congress, in the month of January, annually, a draw upon ^
detailed statement of the expenditures and payments by ^f^™^>
him made from said fund. And it shall also hQ his duty i^y {^^^^
to lay before Congress, in the month of January, annu- Congress
ally, a list of all patents which shall have been granted ^^^^^^^
during the preceding year, designating, under proper of expen-
heads, the subjects of such patents, and furnishing an al- ^^°f^' ,
phabetical list of the patentees, with their places of ^^-t^^^^^
sidence ; and he shall also furnish a list of all patents of patents,
which shall have become public property during the^'
same period; together with such other information of
the state and condition of the Patent Office as may be
useful to Congress or the public.

Approved^ mareh 3d, 1837.

788 PATENT LAWS.

CHAP. LXXX Vin. — Ax Act in addition to •& "Act to pnnoe

the progress of the nsefid arts."

Act of ^^ ^^ enacted hy the Senate and House of Repres&di-
Jnlj 4, lives of the United Slates of America in Congress oxia-
1836, ch. 5/^^ 'f^Y^^ ^i^Q^ g|^^i[ \^ appoiDted, ia manner proTidfi^

Act of >n the second sectioa of the act to which this is add!-
Aog. 29, tioaal, two assistant examiners, each to receive an anflioi
268/ ^ salary of twelve hundred and fifty dollars.

firoM . Sec. 2. And he it further enactedy That the commis-
■oO^rito ■^®°®' ^ authorized to employ temporary cicrb to do
be appoint- &ny necessary transcribing, whenever the current bus-
^|how; ness of the office requires it: Providedy howeoer^'M
»a!iuries. >Qstead of a salary a compensation shall be allowed, at i

Tempo- rate not greater than is charged for copies now fumisW

ra^ clerks. |[^y ^]|q q^qq,

LUtT' Sec 3. And be it further enacted, That the coranfr
patents to sioner is hereby authorized to publish a classified and
HalSd: alphabetical list of all patents granted by the Patent Offie
previous to said publication, and retain one hundrw
copies for the Patent Office, and nine hundred copiff »
be deposited in the library of Congress, for such distnb
tion as may he hereafter directed ; and that one tbousaia
dollars, if necessary, he appropriated, out of the patent
fund, to defray the expense of th^ same. ,

Pay for Sec. 4. And be it further enactedy That tfaesuo^
^i^^in ^^^® thousand six hundred and fifty-nine dollws and
City HaiL twenty-two cents be, and b hereby, appropriated m
the patent fund, to pay for the use and occupation «
rooms in the City Hall by the Patent Ofiice. .

Pnrchase Sec. 5. And be it further enacted^ That the sam «
of books, one thousand dollars be appropriated from the pa»
fund, to be expended under the direction of *®/^*J!ri
sioner, for the purchase of necessary books for the um
of the Patent Office. ^

No per- Sec. 6. And be it further enactedy That no pe^

wn to ly shall be debarred from receiving a patent for anj JQ^
debaired .. _ j. ., , • *u/««* onni«vedon tflc

from re- tion or discovery, as provided in the act *PP"'^v» ^

celvinga fourth day of July, one thousand eight h"°°'^.,u

patent, &c. thirty-six, to which" this is additional, by ^^^^^J^

same having been patented in a foreign co".°rJ mj^

ProTiso. than six months prior to his application ; P^^i\si

the same shall not have been introduced into P"^|. ^

common use in the United States prior to the app ^^

Proviso, for such patent : And providedy alsoy That "* ** ^^

every such patent shall be limited to the term oi ^^^

years from the date or publication of such foreign

patent

PATENT LAWS- 789

Sbc. 7. And he it further enacted^ That every person ??*?^
or corporation who has, or shall have, purchased or con- pa^^^hMed^
structed any newly-invented machine, manufacture, or or con-
composition of matter, prior to the application by ^ej^^^.
inventor or discoverer for a patent, shall be held to pos- invented
aeas the right to use, and vend to others to-be used, the machine,
specific machine, manufacture, or composition of matter
so made or purchased, without liability therefor to the
inventor, or any other person interested in such inven- /

tion ; and no patent shall be held to be invalid by reason /

of such purchase, sale, or use, prior to the application for ''

a patent as aforesaid, except on proof of abandonment of
such invention to the public, or that such purchase, sale,
or prior use, has been for more than two years prior to
such application for a patent.

Sec- 8. And he it fttrther enacted. That so much of ^^^o^J^ch
the eleventh section of the above-recited act as requires ^^^ j^jy ^j
the payment of three dollars to the Ck>mmissioner of 1682, ch.
Patents for recording any assignment, grant, or convey- qJijJJ^™.
ances of the whole or any part of the interest or right ment fori
under any patent, be, and the same is hereby, repealed ; recording
and all such assignments, grants, and conveyance shall, ^q,^',!^
in future, be recorded without any charge whatever. peale<f.

Sec 9. And he it further enacted. That a sum of Agricnl-
money, not exceeding one thousand dollars, be, and the ^^^ ^^
same is hereby, appropriated out of the patent fund, to
be expended by the Commissioner of Patents in the col-
lection of agricultural statistics, and for other agricultural
purposes ; for which the said commissioner shall account
in his next annual report

Sbc. 10. And he it further enacted^ That the provisions , Proyi-
of the sixteenth section of the before-recited act shall ^^^j^^^
extend to all cases where patents are refused for any jufy 4,
reason whatever, either by the Commissioner of Patents J^^e, ch.
or by the Chief Justice of the District of Columbia, upon tenie!!*
appeals from the decision of said commissioner, as well
as where the same shall have been refused on account
of, or by reason of, interference with a previously-exist-
ing patent ; and in all cases where there is no opposing
party, a copy of the bill shall be served upon the Com-
missioner of Patents, when the whole of the expenses of
the proceeding shall be paid by the applicant, whether
the final decision shall be in his favor or otherwise.

Sec 11. And he it further enacted. That in cases Appeals,
where an appeal is now allowed by law from the deci*
sion of the Commissioner of Patents to a board of exam-
iners provided for in the seventh section of the act to
which this is additional, the party, instead thereof, shall

790 PATENT LAWS.

By ^^ ^^^ ^ ^^^ ^^ appeal to the Chief Justice of the Distric:
^e*£t of ^u^ of ^6 United States for the District of Colambia,
1853. Aoff. by giving notice thereof to the commisaoDer, and fiiiog
£tut ^° ^® Patent Office, within such time as the commissiooer
Jadffw of shall appoint, his reasons of appeal, specifically setfonb
tike Ciicait in writing, and also paying into the Patent Office, to the
SlS^^ credit of the patent fund, the sum of twenty-fiye dolkn.
appeals. And it shall be the duty of said chief justice, oq pedtin,
The fee ^^ ^^' ^°^ determine all- such appeab, and to rem
to be paid such decisions in a summary way, on the erideoce
^h**V"^ produced before the commissioner, at such eariy wni
£e\pp«a. convenient time as he may appoint, first DOtifyiag tbe
commissioner of the time and place of heariDg,wiKBe
duty it shall be to give notice thereof to all parties w^
appear to be interested therein, in such maooer as said
judge shall prescribe. The commissioner shall also lay
before the said judge all the original papers and evidena
in the case, together with the grounds of his decisiw,
fully set forth in writing, touching all the points involTed
by the reasons of the appeal, to which the revisioa m
be confined. And at the request of any party intei^.
or at the desire of the judge, the commissioner m w
examiners in the Patent Office may be examined unte
oath, in explanation of the principles of the machineof
other thing for which a patent, in such case, is pnp
for. And it shall be the duty of the said judge, after i
hearing of any such case, to return all the i»peff to w
commissioner, with a certificate of his P^^'^^^^^^
decision, which shall be entered of record in tbe iw
Office ; and such decision, so certified, shall govBrnw
further proceedings of the commissioner in sucli c»-
Proyiso. Provided, hawcoer. That no opinion or decision oi »
judge in any such case shall preclude any P^'^jr^jj
" rested in favor or against the validity of any P*{*°^T^
has been, or may hereafter be, granted, from "*® ^ j^,
contest the same in any judicial court, in any *^
Commis- v*»ch its validity may conje in question. ^

•ioner may Sec. 12. And he ttjurther enacted, That be wp
makeregu- gjoner of Patents shall have power to make all sucnj^s
i^cttar Nations in respect to the taking of evidence to Je^
contested contested cases before him, as may be just ^^" ... . ^j
«"~- ble. And so much of the act to which this is adcWowj'
sati^Sr" as prevides for a lK,ard of examiner, is hejjJy^Pj^,
chief jut- Sec 13. And he it further enacted, ^r*^!Jj chief
^^' y^A paid annually, out of the patent fund, to the « ^
bv^,^f justice, in consideration of the duties herem impo^ea.
& Act of sum* of one hundred dollars.
im. '^' Approved March 8, 1839.

PATENT LAWS. 791

CHAP. CCLXni. — An Act in addition to an act to promote Act of

the progress of the useful arts, and to repeal all acts and parts of Jnly 4,

acts heretofore made for that purpose. If2^» ch.

857.

Be it enacted by the Senate and House of Representa- Mar. s,
fives of the United States of America in " Congress 1*87, ch.46.
assembled^ That the Treasurer of the United States be, Mar%°
and he hereby is, authorized to pay back, out of the pa- 1839, cksr.
tent fund, any sum or sums of money, to any persoi^ who a^h^^^
shall have paid the same into the treasury, or to any to pay
receiver or depository to the credit of the treasurer, as ^^j <>"*
for fees accruing at the Patent Office through mistake, t^nt ^d'
and which are not provided to be paid by existing laws, certain
certificate thereof being made to the said treasurer by ™°?®yp*^^
the Commissioner of Patents.

Sec. 2. And be it further enacted^ That the third sec- ^^- 8,
tion of the Act of March, eighteen hundred and thirty- ^^iVsr^i
seven, which authorizes the renewing of patents lost prior 48, extend-
to the fifteenth of December, eighteen hundred and thirty- ?? ^ P*" .
six, is extended to patents granted prior to said fifteenth ed'pn^to
day of December, though they may have been lost sub- i^th Dec.
sequently : Provided^ however^ The same shall not have JJouih lost
been recorded anew under the provisions of said act subse-

Sec. 3, And be it further enacted^ That any citizen or q^entijr.
citizens, or alien or aliens, having resided one year in citileas
the United States, and taken the oath of his or their in- &c., maj '
tention to become a citizen or citizens, who by his, her, ^^^^
or their own industry, genius, efiforts, and expense, may *
have invented or produced any new and original design
for a manufacture, whether of metal or other material or
materials, or any new and original design for the printing
of woollen, silk, cotton, or other fabrics, or any new and
original design for a bust, statute, or has relief or compo-
sition in alto or basso relievo, or any new and original
impression or ornament, or to be placed on any article of
manufacture, the. same being formed in marble or other
material, or any new and useful pattern, or print, or pic-
ture, to be either worked into or worked on, or printed, or
painted, or cast, or otherwise fixed on, any article of
manufacture or any new and original shape, or configu-
ration of any article of manufacture not known or used
by others before his, her, or their invention or production
thereof, and prior to the time of his, her, or their appli-
cation for a patent therefor, and who shall desire to ob-
tain an exclusive property or right therein to make, use,
and sell, and vend the same, or copies of the same, to
others, by them to be made, used, and sold, may make
application, in writing, to the Commissioner of Patents,

792 PATENT LAWa

expressing such desire, and the commissiooer, od due
proceeding had, may grant a patent therefor, as in the
PiQ^liQ, case now of application for a patent : Provided^ That
the fee in such cases, which by the now existing lavs
would be required of the particular applicant, shall be one
half the sum, and that the duration of said patent dsll
be seven years, and that all the regulations and provi-
sions which now apply to the obtaining or protection of
patents not inconsbtent with the provisions of this act,
shalP apply to applications under this section.
Oath Sec. 4. And he it further enacted. That the oalh re-

may be quired for applicants for patents may be taken, wfaes
foreu!s] ^^ applicant is not, for the time being, residing in the
ministeti,* United States, before any minister plenipotentiary, cbsxge
^- d'affaires, consul, or commercial agent holding conmu*-

sion under the government of the United States, or before
any notary public of the foreign country in which such
applicanr may be.
Peiuatj Ssc* ^> -^^^ ^^ it further enacted^ That if any peiaon
for infring- or persons shall paint or print or mould, cast, carve, or
i^te of ft engrave, or stamp, upon any thing made, used, or sold
natentee, by him, for the sole making or selling which he hath not,
^\^7 or shall not have obtained letters-patent, the name or any
°^"^ "^' imitation of the name of any other person who hath or
shall have obtained letters- patent for the sole making and
vending of such thing, without consent of such patentee,
or his assigns or legal representatives ; or if any peraon,
upon any such thing not having been purchased from the
patentee, or some person who purchased it from or under
such patentee, or not having the license or consent of
such patentee, or his assigns or legal representativea,
shall write, paint, print, mould, cast, carve, engrave,
stamp, or otherwise make or affix the word " patent,^ or
the words " letters-patent," or the word " patentee/* or
any word or words of like kind, meaning, or import, with
the view or intent of imitating or counterfeiting the
stamp, mark, or other device of the patentee, or shall
affix the same, or any word, stamp, or device of like icn*
port, on any unpatented article for the purpose of deceiv-
ing the public, he, she, or they, so cdlending, shall be
How re- liable for such offence to a penalty of not less than one
coverable, hundred dollars, with costs, to be recovered by acUon in
any of the Circuit Courts of the United States, or in any
of the District Courts of the United States having the
powers and jurisdiction of a Circuit Court ; one half of
which penalty, as recovered, shall be paid to the patent
fund, and the other half to any person or persons who
shall sue for the same.

PATENT LAWS. 793

Sec. 6. And he ii fiartker enacted^ That all patentees Patentees,
and assignees of patents hereafter granted, are hereby fd^tomu^*
required to stamp, engrare, or cause to be stamped or articles of-
engraved, on each article vended or offered for sale, the [^ ^^
date of the patent ; and if any person or persons, paten- Penalty
tees or assignees^ shall neglept to do so, he, she, or they ^or negleot
shall be liable to the same penalty, to be recovered and
disposed of in the manner specified in the foregoing fifth
sectiop of this act

Approved August 29, 1842.

CHAP. XLVIL — An Act to proTide addHioiisl eKaminerf in the

Patent Office, and for other purposes.

Be it enacted hy the Senate and House of Representa- May 28,
fives of the United States of America in Congress assem* 18^8.
hled^ That there shall be appointed, in the manner pro-
vided in the second section of the act entitled *^An act to
promote the progress of useful arts, and to repeal all acts
and parts of acts heretofore made for that purpose,^*
approved July fourth, eighteen hundred and thirty-six,
two principal examiners, and two assistant examiners, in
addition to the number of examiners now employed in 357. j^d,^l
the Patent Office ; and that hereafter each of the princi- tional ex;
pal examiners employed in the Patent Office shall receive !?"p!^^
an annual salary of twenty-five hundred dollars, and office,
each of the assistant examiners an annual salary of Salaries,
fifteen hundred dollars: Provided^ That the power to Extension
extend patents, now vested in the board composed of the of patents.
Secretary of State, Commissioner of Patents, and So-
licitor of the Treasury, by the eighteenth section of the
Act approved July fourth, eighteen hundred and thirty-
six, respecting the Patent Office, shall hereafter be vested
solely in the Commissioner of Patents ; and when an ap-
plication is made to him for the extension of a patent
according to said eighteentli section, and sixty days' no-
tice given thereof, he shall refer the case to the principal
examiner having charge of the class of inventions to
which said case belongs, who shall make a full report to
said commission of the said case, and particularly whether
the invention or improvement secured in the patent was
new and patentable when patented ; and thereupon the
said commissioner shall grant or refuse the extension of
said patent", upon the same principles and rules that have
governed said board ; but no patent shall be extended for
a longer term than seven years.

Sbc. 2. And be it further enacted^ That hereafter the

TOL. II. P. c* 67

T94 PATENT LAWS.

^^(^ Commissioner of Patents shall require a fee of one dollar
^^|^y°^ for recording any assignment, grant, or conveyaDce, of
aocesof the whole or any part of the Interest in letten^pateotfOr
patents, power of attorney, or license to make or uae the tbiogs
patented, when such instrument shall not exceed three
hundred words; the sum of^two dollara when it shall ex*
ceed three hundred and shall not exceed one thousand
words ; and the sum of three dollars when it shall exceed
one thousand words ; which fees shall in all cases be paid
in advance.
Two Sec. 3. And he U further enacted^ That there sball

copying be appointed in manner aforesaid two clerks to be en-
"^^]^2*" ployed in copying and recording, and in other seirices in
authorited. the Patent Office, who shall be paid a salary of cme tboo-
sand two hundred dollars per annum.
FnmklDff Sfic. 4. And he it further enacted^ That the Cofflnis'
gj^^/«sioner of Patents is hereby authorized to send bjmaii,
•ioner of ^fee of postage, the annual reports of the Patent Office,
Patents. Iq the same manner in which he is empowered to send
letters and packages relating to the business of the Fateot
Office.
Approved May 27, 1848.

INDEX.

ABANDONMENT.

I. If, before the patent is taken ont, the inventor looks on and sees his inren-
tion going into general nse without objection, the Conrt will treat his con-
duct as an abandonment or dedication of his right to the exclasive nse, to
the pnblic. Treadwell et ai. r. Bladen^ L 531 ; Melius v. Siltbee, I. 506.

9. And this holds, although such use was by a particular person authorized by
the patentee. Pennock et oi. y. Dialogue, I. 466.

3. And it will be presumed by a public use of the inyention before application,
if acquiesced in by the inventor. Shaw r. Cooper^ I. 643 ; Pennock et al. y.
Dialogue^ I. 466.

4. A knowledge without immediate assertion of the right, will amount to an
acquiescence, lb.

5. Such knowledge may be presumed from circumstances, lb.

6. The question of abandonment does not depend upon the intention of the
inventor, for whatever may be the intention, if he suffers his invention to go
into public use, through any means whatever, without an immediate asser-
tion of his right, he is not entitled to a patent lb.

7. Voluntarily permitting the invention to be on public sale or use, or acqui-
escing in such sale or use, creates a disability to comply with the terms of
the statute on which alone the Secretary of State is authorized to grant a
patent Pennock etcdr. Dialogue, L 542.

8. The question whether certain acts or acquiescence furnish satisfactory proof
of abandonment, is one of fact rather than law. lb.

9. Whether the delay to take out a patent, and allowing it to go into nse by
others, should be considered as an abandonment, is a question that should
always be submitted to the jury. Morris v. Huntington^ L 448.

10. But a public use, or a sale thereof by the inventor, is not conclusive here,
as it is in England. Mdlus v. SHabee, I. 506.

II. Public sale, or use with consent of patentee, is not evidence of abandon-
ment, since the Act of Marcii 3d, 1839, unless more than two years before
application. Root v. Ball et al. IL 513.

12. This inchoate right thus lost, cannot afterwards be resumed at the plea-
sure of the inventor. Pennock et al. v. Dialogue, I. 466.

18. Of a patent-right will not arise from disuse, however long continued. Gray
etalr. James et al. 1. 120.

796 INDBX.

ABATEMENT OF SUIT.
See Absioxxk.

ACTING COMMISSIONER.

1. Where erideiice is offered to prove that the person who signi a patent ii
sach, was not appointed by the President, it is qnestionaUe vfaetber it ii
competent in cases where he is not a party. Woodworik t. Ea&d d E
517.

a. Under the Patent Law of 1836, the chief derk is held to be the adiog con-
missioner, is well in the necessary absence of the head of the oiBce is la
case of a vacancy dtjwre. lb,

8. And the certificate of copies verified by a person so styling himself, ii sol-
cient on its face. Woodworik e< a/, v. Haa et ai, II. 495.

ACTION.

If the patentee has sold a moiety of his patent-right, a joint action lies bj bia-
self and his assignee for a violation of it. Whittemore v. Cutter^ I S8.

See Absiokjbe.

ACTS OP CONGBESS.
See Statutes.

ADMINISTRATOR.

1. Of a deceased patentee may apply for and obtain a renewal la W* «*■
name. Brooh et al, v. BichneU et al. II. 118.

2. And extensions of patents by the act of the Board of CommiMkmenB^
be granted to the administrator of a deceased patentee— for the benefit tf
the estate, although the patentee, in his lifetime, had disposed of lUlui
interest in the then existing patent, as snch sale did not cany sDjtbiog be-
yond the original patent. WiUon v. Rousseau et al. II. 372. ^

AFFIDAVIT.

Of a single witness, not sufficient to ontweigh the oath of the patentee on w
qnestion of originality. Woodworik v. Sherman^ TL 257.

AGREEMENT.

1. An agreement to assign his interest in the patent, will not bar the liF ^
the patentee to recover in his own name. Park v. UttU et a/. 1 17.

2. Bat after an agreement between an original inventor of a machin«) w
inventor of an improvement, that they would mutually use the msJ^j
patent should have issued in the names of both inventors. And the ^a^
taking out patent in his own name to be considered as trustee. Rw^
Kmowrs et aL 1. 1 .

ALIENAGE.
May be given in evidence under the general issnsi without flotiet sua
pleadmg it Kneass v. The SehuyUdU Batik, I. SOS.

INDBX. 797

ALIENS.

By the proTisions of the Act of 1800, aliens, as to patent-rights, are placed snb-
Btantiallj on the same ground with dtixens. Shaw r. Cooper, I. 643.

ALTEBATION&
See iKPBOYXKSirT.

AMBIGUITY.

1. The patentee must describe in his pdtent in what his inrention consists, with
reasonable certainty, otherwise it will be Toid. Lowell r. Lewis, 1. 131.

2. Bnt the patent and specification may be explained bj the affidayit an-
nexed to die specification. PetHbone y. Derringer, I. 152.

ANSWER.

To a bill for injunction, though filed before the time for answering, will be
treated as an answer on the interlocutory motion. Brooke et al, y. Bicknell
etaLJJL 118.

SeeNoTiCB; SeePRACTiCB.

APPEAL.
See JuKiSDiCTiOH.

APPLICATION.
See Patbht.

ABT.

1. May be subject of a patent, but it must be practical and referrible to some-
thing which may proye it to be useful. Evam y. Eaton, L 68.

S. Copperplate printing on the back of bank-notes is an ort for which a patent
may issue. KneaB$ y. The SchujfUdll Bank, L 303.

ASSIGNEE.

1. Of a part of a patent-right cannot maintain an action [under the Act of
1793,] on the case, for a yiolation of the patent I^ler et al, y. 2W, L U.
See note.

2. But of part of a patent circumscribed as to the interest, by local limits, he
can maintain a suit in equity for an injunction. But whether he can sue at
law, in his own name or jointly with the patentee. — Qucere* Ogle etaL r»
Ege, I. 616.

3. Of a moiety of a patent-right, may maintain an action jointly with the pa-
tentee for a yiolation of it, under the Act of Pebmaxy 21, 1793. Whittemore
T. CWttsr, L 28.

4. Of the exdusiye right to use ten machines within the ci^ of LouisyiUei or
tea miles aicuid, may join his aseignor in a suit with him for infringement,

67*

798 DTDBX.

under tbe curcumstttioes of this caM. Weitlw^rth HoLt. Wtbrn^aLTL

473.
5. Of an exclnsire right to qm two machinefl in a particular diitriet mtj ofli-

tain an aetkm for an infringement of* the paient witldn that diitiiet, era

against the patentee. Wiimm y. Bouneau tt al, II. 372.
ft. The patentee eannot maintain a suit after assignment, bat it mut k

brought by the assignee. EMert r. Adam$, I. 505.

7. But he cannot maintain a suit at law or in equity eg^unst thiid penooi,
until the assignment is recorded in the Patent Office. R^ ddr.Stoit,
€t <d. II. S3. «

8. Of the right to use a patented machine, within a specified territoiy, niyidl
the product of such machine elsewhere; as the restiictioa is onljtlttik
shall use Uie machine within that territoiy, there is none as to thenkrf
the product Simpson H. al. r. WUmn, U. 469.

9. Under the original patent haTO not a coextensive interest under i&a-
tended patent, but if they are in the use of a patented machine at the tiai
of the extension, they may continue to use it Wiimm r. Rtmuen ttdR
372 ; Simpson et al, t. WUson, U. 469 ; WiUon t. I^trner d ai. H. 467; [See
also WiUon t. Simpson €iaL9 Howard, 109.]

10. Of part or the whole of a patent will not be affected by the soneoderbT
the patentee, unless consented to by them. Wbodwortk etoLr. £bM^ E Sff.

11. But he takes the right subject to the legal consequences of thepicTioa
acts of the patentee. Medur^h H al. r. Kingtland et a/. H 105.

ASSIGNMENT.

1. Of a patent-right made before the patent is obtained is good, sad binds the
right Herbat t. Adams, L 505.

2. May be made of a license to use the thing patented. WoodworA r. OaHi,
n. 603.

3. Of the right to use a machine and to rend the same to others to w viAk
a specified territory, authorises the assignee to vend ebewhentkpr^hdd
the machine. Simpson et al. v. Wilson, 11. 469.

4. Where a patent is for a machine that can \» applied to Tarions pttiposa,i
grant of the exclusiTe right to use it for one of said purposes, within t ipea-
fied district, does not give such a right in the patent as will estbktto
grantee to mainuin a suit for infringement against any person «kg it>
even for the same purpose, within said district Skmdard f. Sdnds^^
737.

5. B having a patent for tnniing irregular forms generally> grMH to C the
exdnsive right to Use it for turning shoe lasts, D haring infiingedbrtiBi^
ing shoe lasts \ it was held that the suit was properly brought st Jsirk Fi
name. 2b.

6. Under the original patent does not give an interest in the extended pttts^
unless it expressly conreys it. Woodworth r. Sherman, 1I.K7] Oat t. iW-
>!eU €t a^ XL 741.

7. And the intention to give such interest deariy appean. PA«0v»r-^
stock, n. 724.

iNiHix. 799

8. 8ttch an Intanst, before renewal, will pass under the words *'fbr whieh lefr*
ters-patent were or moof he granted for said improTements." Can y. Becffidd
H al. 11. 741.

9. But a grant of an interest in the patent prior to the law anthorudng exten-
sions, with a GOTenant that the grantee dionld hare " the benefit of an j im-
provement in the machinery, or alteration or nti€wal of the patent, did not
include the extension by an administrator under the Act of 1836. WiUon
T. Bmuweau et al, II. 372.

10. A plaintiff therefore who claims under an assignment from the administrator
can maintain a suit against a person who claims under the covenant. 76.

11. As between the parties, need not be recorded in the Patent OiBoe, and is
only necessary as notice to purchasers. Ccue r. Bedjidd et at, II. 741.

12. Under the 1 1th s^tion of the Act of 1836, an assignment of any part of
the patent rests in the assignee the legal right And a failure to record such
assignment within three months does not defeat the title under it unless the
tame interegt has been after the expiration of the three months conveyed to
some other person. And the latter will hold notwithstanding he had notice
of the previous assignment. Bojfd v. McAlpm^ II. 277.

13. The requirements of the statute being merely directory. Brooks r. Byam
eta/. II. 161.

14. But it must be recorded before the assignee can muntain a suit at law or
in equity as against third persons. Wyeth eioLr, Slone el al, II. 23.

15. It is immaterial whether the assignment offered in eyidence was recorded
before or after the suit was brought. Pitts r. Whitman, IL 189.

16. A mere agreement to assign will not vest the right in another. And the
patentee will be entitled to recover at law, unless he has made a legal assign-
ment and transfer of his invention. Parks v. Uttle et a/. L 17.

See Contbact; See Infungemint.

BILL OF EXCEPTIONS.

1. In cases where the damages are less than f2,000, will be granted in the ex-
ercise of a sound discretion, and only where questions arising upon the Patent
Laws axe important in their character and really doubtful Allen v. BkaU^
et a/, n. 288.

2. The practice of excepting generally to a diaxge of the Court to the jury, with-
out setting out specifically the points excepted to, censured by the Supreme
Court. Stinqwm v. W. C. Bailroad, L 335.

3. The record of, should not contain the testimony and evidence offered at the
trial, if the opinion of the Court, delivered to the jury, presented a general
principle of law merely, and the application of the evidence to it was left to
the jury. Pennock etaLr. Dialogue, I. 542.

4. The Court condemns the practice of thus burdening the record as irregular,
unnecessary, and expensive* lb,

BOABB OF COMMISSIONERS.

|. It is a presumption of law that all public officers, and espedally such high
ftinctionaries, perform their proper official duties until the contrary is proved.
neP.i'T. BaHnad Co. r. Stimpstm, U. 46.

800

t. Giftlft«Mlyi«OiiTeAfaiTeikderofa|Mt«itloradefeel{Te
iiSM new tetten wftm n aaended ipedilcfetiOB, alter the exyaadoa ef the
term for which the original patent was granted, and doling the period of die
ezteotion. WUam t. Boimeam €t al, II. 872.

8. The dedshw of the boaid is wot condneiTe vpon the quart inn of Aeir jsni-
4icCion to net In a giTea ease In iMahig a patent ift.

CHIEF CLERK.
See AcTiKO Coxmesionn.

CLAIM.
See Specification; Claim.

COMBINATION.

1. However simple and obvioasy yet if entii^ aao, is patentable- EaHe ▼.

JSawjfer, L 490.
t. If weU-known effects are prodnoed by madiinery in 4eU iu combinaiiem en-

entirely new, a patent may be claimed for the whtde maclitne. Whitttmnr

H al. T. CWlfer, I. 40.

3. And if old materials and old principles be nsed in a state of combtnatioa te
prodnce a new resolt, the inrentor may obtain « patent. Penaodb cC oL t.
Dialogue, L 466 ; Evan$ y. EaUm, I. 68.

4. If the combination existed to a certain point, and the patentee adds an aa-
proTement, he most not indnde the whole, bat only the impxoTement Bat-
r€Ueial,r. Bail €tal.L 207.

5. Bat the nse of one of snch machines only separately, wiU not be an infringe-
ment Evam T. Eaion, I. 68 ; Parker T. Bawarth, II. 725 \ BarreU H air.
Ball, I. 207.

6. Bat if the patentee be the inyentor of one of the machines composing saeh
combination, which is oaed by the defendant, can hh rooorer for sndi bk.
QMort, Evam t. Eaton, I. 68.

7. The ose of any number less than the whole will not be an Infiringement
Prouty d al, Y. Dme^wr H d. 11. 75.

8. The ase of any two parts only, or of the two combined with a third, difc^
ing in form and anrangement from the plaintiff's third, is not an iaftiqge-
ment. PrmOy «f al. ▼. BuggUt H al. II. 92.

9. The patent will protect any of the parts invented or improved hy the paten-
tee. Parker v. Baworth, 11. 725 ; See Ames v. Boward, et oL I. 689.

See Composition ; Idbntitt ; Specification ; Ci.auc.

COMMISSIONER OF PATENTS

1. Where a particular authority is confided in a pnbUe officer, to he eieiuaed
in his discretion upon the examination of facts, of which he is the apprfr*
piiate judge, his decision thereon, in the absence of any controlling provision.
Is abiolutely eondusive. Alien v. BlwA et o2. II. 288.

INDEX. 801

9. The decision of the Commisaioner of Patents, on the law and &ct8 ari^g
upon the application, is to be ooncloalTe, unless impeached for fraud, or col-
lusion, or nnlesa the excess of authority be manifest upon the £sce of the pa-
pers. Ibm

3. Decision of, in respect to surrendering an old patent and granting a new one^
is not reezaminable elsewhere, unless it appear on the face of the patent
that he has exceeded his authority. Woodaortk etalr. Stoma, IL S96.

4. The presumption that a renewed patent is for the same inTeation as the
former, and that it was to correct a mistake and inadvertence, maj be rebut-
ted by evidence. Allen r. BlwU €tal.lL 530.

See BoABD of Govmissionebs.

COMPOSITION.

1. It 19 not necessary that any of the ingredients should be new or unused be-
fore, for the purpose. The true question is, whether the combination is new.
I^etaLr. OoodwmetoLL 785.

3. Nor will the patentee be limited to the particular iagredienla named in
making a compound, if the same purpose can be accomplished by substitut-
ing in part other ingredients, possessing similar properties, which had n^er
been used before in like comMnation, and the patealee may daim them aUo.
Example. 2k

CONCfiAliMENT.

1. Of material parts of the invention in the description ; what will invalidate a
patent?- Oray et cU, v. James et aL 1. 120.

2. The matters not disclosed in the specification must appear to have been
concealed for the purpose of deceiving the public. Pcark v. IMe et al.
1. 17.

3. And the onus of proving such intent is on the defendant. WhUtemart v.
Cutter, I. 28.

4. And it must not only be with a view to deceive, but must be material. Reut-
^e» V. Kanown e< a2. L 1.

CONSTRUCTION.

It is the province of the Court to construe the patent and determine what
improvements are intended to be patented, and of the jury to decide whether
they are described with sufficient clearness to enable a skilful mechanic to
construct them ; and the jury should give a liberal, common sense construc-
tion to the directions. Davis v. Palmer, L 518.

See Statutes ; Specutzcation \ Teems.

CONTEMPT OP COURT.
See Li^iTHOTZox. Woodworth et a/, in equity, v. Boffen et al, 11. 625.

CONTRACT.

1. May be made to earry a fbtiire inTe&tioii, as well as a past one, rndfcam
improremeBt, or mataring of a past one. NetnM, d at. r. Caherid oLE 111.

2. For sale of right uodflr an expected patent, is binding, sldio^gh the pact
ftrst gimnted be declared roid for defective specification, prorided a nevp-
tent be granted upon oomcted specification. SlamUy r. WhqipU^ H I

8. Obligation of, shall not be impaired by laws of States, but Coagien nij
pass laws having that effect £oems r. Eattm^ I. 68.

COSTS.

1 . In equity, are, prinUi/aae^ to be allowed to the preTailing V^^* But if tlKf
aie inequitable they may be disallowed, and the harden ii upon the jwtrfe
alleging them to be. Hevejf t. SUvene^ TL 479.

9. If defendant preraUs, the plaintiff will not be allowed oosU milefls Ati^
spondent is chaiged with some wrong; and if defendant socoeeds oo ^
grounds than those in which costs were incorred, his costs mqrbedinlloni

in the discretion of the Conrt. 26.

8. BatifhepreTailsonthegronndofadelbetinthespecificatioD,hsiiatiikd

to costs, allhongh the qnestion of originality has not been decided, h

4. Bat where the eridence cast some shade over his ikimesi of conduct in R-
spect to the plaintiff's, and his machine, the Conrt decUned to allow bio i»
yond actual costs, and disallowed travel and attendance in the equfr«it
for the terms in which they were taxed in the suit at law. A.

5. Plaintiff in equity not required to give security for costs. Wtfodtorikr.
Sherman, II. 957.

* COUNSEL FEES.

See Damagbs. See AUen t. Bhmt et d, II. Ml.

CUMULATIVE EVIDBNCE.

1 Eridence is cnmnlative if it relates to the same subordinate o'^P^^
to which proof was before adduced, but not when it is a new fact rwpedinj
genera] question or point in issue. Aiken t. Bemis, IL 644. ^^

9. Cumulative evidence, although newly discovered, is not a saificient ff^^
fat a new trial, lb.

See New TniAL.

COVENANT.
See AssioiTMEXT ; Assioim.

DAMAGES.
1. The plaintiff is entitled to actual damages only, and not a vindicb^
pense. Whitianareet al, v. Cutter, L 40.

INBBZ. 808

flMLCtaal damages meaiu Bach damages as the plaintiff has in fact sostained,
93 contradistingnished to mere imaginaiy or exemplary damages which in
personal torts are sometimes given. 76.

3. Where the law gives a remedy for a particular act, the doing of that act im-
ports a damage. The mere making of a patented machine is such a TioUr
tion of the patent as to entitle the plaintiff to a verdict for damages. But if
no user be proved, nominal damages are to be given. 26. 28.

4. If a user of a machine be proved, the measure of damages is the valne of
the use, daring the time of oser. lb. 40.

5. If making only be proved, the plaintiff is entitled only to nominal dama-
ges. 76.

6. Neither the price nor the expense of making a machine is a proper measure,
&c. 76.

7. Only nominal will be given if the defendant made the thing patented for
another person, without knowledge of the patent. J^yoe y. Dorr et aLJl.
302.

8. Where the defendant infringed the patent without knowledge of the plaintiff's
right, no more than compensatory damages will be given. Parker v. Ckfrpitif
II. 736.

9. But where the acts complained of were of an aggravated character, vin-
dictive damages, which would indude counsel fees, wenld be allowed. 76.

10. Counsel fees for prosecuting the suit are not a proper item of damages in
an action for violation of a patent WhiOemare v. Cu^er, L 28 ; SUmpton v.
The Railroads, U. 595.

11. But expense of counsel fees may be allowed as part of the actual damage
if the jury see fit. BoeUmMm^eturmg Co, r.FUheei all. 330; Alien y.BlwU
et cd, II. 530.

12. The jury are at liberty to give such reasonable sum as shall indemnify the
patentee for all expenditures necessarily incurred in the suit beyond what the
taxable costs will repay. Piermm v. The Eagle Screw Co. II. 268.

13. And the Court will treble the amount found by the jury if deemed proper to
protect useful inventors from combinatioa and ruin. AUen v. Bhtnt elaLlL
530.

U. Will not be considered excessive unless they deariy exceed what is neces-
sary to indemnify the patentee. 76.

15. May be recovered for an infringement of a patent during the time which in*
tervened between the destruction of the Patent Office by fire, in 1836, and
the restoration of the records under the Act of March 3, 1837. Hogg etaLr.
Emeroon, IL 655.

16. If a patent be granted by special Act of Congress for an invention in public
use at the time of the act Qtuarej whether the act would be constitutional if
it gave damages for such use prior to the grant ? Blanchard v. i^»rague, I.
734.

1 7. As to the rule for estimating damages, see Earle v. Sawger. L 490.

18. As to joint and several liability. See Ihfbivobmbht.

See Tbbblb Damages.

804 IKDBX.

DECLARATION.
See pLXAonros.

DECLARATIONS OF PATENTEE.

When admusible, at ahowing date of inTentioii, and pwticiilais iImroC.
fooMY. £EBaidk,I.417.

See Stidbhcb.

DECLARATION OF OTHERS.
Svidenee, wImb. See ETunarcs.

DEDICATION.

If the patentee has acqnieeeed for a long period m die paUie me of aa ia-
rention, without objection, it may amonnt to complete pioof of dedicasioa or
tnirender to t)M public. Wj^ et al. t. Stone etal, IL 23.

See ABJJfDOlTMBMT.

DEFECTIVE SPECIFICATION AND DEFECTIVE DESCRIPTION.

. See Spboivicatioh.

DEMURRER.
See PxjEADivoa.

DEPOSITION.

1. Of a witoaaa residing vithin the district, above one hnndxed miles Iroa the
place of holding the conrt, taken under a rule entered bj the pbiatiff ia the
deriL's oiBoa, bat not in oonfonnity with the requisitions of the 30th section
of the judidal act, cannot be read In OTidence. £v(tm r. SeUkk^ 1. 417.

%, But if taken widiout a oommission or rale of Court, in another State, and
more than one hundred miles from the place of trial, and in oonformitf with
the 30 sec« of the Act of 1789, it may be read in eridence. PsCfAoM t. Ar-
ringer^ L 152.

3. But although so taken under the 30th sec. of the Jndiciaiy Act of 1732, it
cannot be read in evidence, unless the judge ceitifies that it was reduced to
writing by himadf or by the witness in his presence. /&.

4. Where counsel hare acted publicly in former trials of like canse, tiioo^ not
named in the docket as such, if he be living within one hundred mUes ef the
place when a depositioa is taken, he ought to be notified. Atieu t. Bbmi sf
a2.IL530.

5. Quaere, if a deposition taken without notice to the adverse party, is admisD-
ble, if the caption incorrectly describes the action as against ome defendant
when it is entered agamst and defended by two, although service was made
only on the one? lb,

6. Or affidavits taken with notice in conformity to a special order, bat when

£ndex» 805

the other party was nnable to confer with his counsel and attend, will
be admitted, upon condition that the other party shall have leave to take
them oyer so far as to cross-examine the witnesses. Aiken y. Bemis, II. 644.

7. And they should not be taken daring the session of the Court, at which the
case is to be tried unless by its order or consent of parties, or taken merely de
bene esse in case of death or absence abroad. Alien v. Blunt ef aL II. 530.

8. When taken de bene esse, is offered in evidence, the party offering it must
show that he has used due diligence to procure the attendance of the witness.
PeUlhone v. Derringer^ I. 152.

9. Bat it is no objection to the reading the deposition of a witness taken under
a rule of Court, who lives in another State, more than one hundred miles
from the place of trial, that he had been in the city during the session of the
Court, the fact not being known to the party. 76.

10. Whether if known it would make any difference. Queers lb.

11. Having been read without objection, cannot be afterwards rejected, and
withdrawn, because the Court subsequently refnsed to allow a deposition to
be read, on account of an exception which would also have excluded the de-
position which had been read, had it been objected to. Evans v. Hettick^ L
166; Same Cb^, L 417.

DESCRIPTION.
See Sfecitioatioh.

DISCLAIMER.

1. Where more is claimed by a patentee than he has invented, he must within
a reasonable time disclaim the part so improperly claimed or his patent will
be void. Brooke etalr. BickneU et a/. II. 1 1 8 ; Hovey r. Stevens, II. 479.

2. Whether it has been made within a reasonable time is a question for the
jury. lb.

3. And the assigqee (if any) must unite with the patentee in a disclaimer to
entitle the parties to the benefit of the Acf of 1837. Wyeth et al. v. Stone et
al. II. 23.

4. If filed during the pendency of the suit, it will/iot entitle the plaintiff to any
benefit thereof; but if filed before the suit is brought, he will be entitled to
costs if he shall establish that part of the invention not disclaimed, has been
infringed. Reed v. Cutter et al. II. 81 .

5. If he has unreasonably neglected or delayed to enter the same at the Patent
0£Bce, he will not be entitled to any benefit under it whether filed, before or
after the suit was brought lb.

6. If not filed until after the suit in equity is brought, he will not be entitled
to an injunction whatever may be the effect of such at law. Wyeth et al. v.
Stone et al. II. 23.

7. &ee Treadwdl et al. v. Bladen L 531.

VOL. II. — P. c. 68

806 INDBZ.

DISCOVERY.
See Fatbht.

DIVERSITY.

What oonstitatefl. Wattemore H al, t. Cutter, L 40.

See Idbntitt.

DRAWINGS.

1 . Connected with and referred to in the specification, are part of tiie sou.
EarU y. &noyer, I. 490.

2. The whole •pecification, fnmmary, and drawings mnst be refened to oi
taken together in deciding what new part or combination is dazmed to Ik
invented. DavoU eialr. Brown, II. 303.

8. And although not referred to in the specification, maj be treited « i
part thereof, and nsed to explain and enlarge it. Wcuhburn HaLr.M

n.ao6.

EFFECT.

Patent cannot be granted for an effect only, bat for an effect pxtxioeed isi
given numner. WhiUemon et al, r. Cutter, L 40.

See CoMBiHJLTiON ; Idbntitt ; Pbutciplb-

ENGLISH STATUTES.
Although the language of the exception in the statute of monopolies un^^
idenacal with the Patent Law of the United States, yet the constractiooof
it adopted by the English courts, and the principles and practice which hiTt
regulated the grant of their patents, afford materials to illostiste oar Uv
Pemock et cU, t. Dialogue, I. 542.

EQUITY.
Will not aid to protect a patent when the patentee has dedicsted or san^'
dered the invention to public use ; or has acquiesced in such public use w »
long period without objection. Wyeth el al. v. Stone dalU.^

EQUITY. — EVIDENCE.
1. Affidavits may be read on both sides as to facts unconnected with tfae^ '

5n»b«£a/.v.Bidbirf/eta/. IL 118. ^^^

S. In proceedings in equity on motions for injunction, if witnenes

the fact of infringement, the matter should be submitted to a jaiy-

EQUITY. —PRACTICE.
1. Where a feigned issue for trial of fact is directed by the Conrt, no ^
tion is requisite. The jury will be sworn to tiy the issne in thfl
the order itself. Wileon r. Bamum, U. 749.

INDBX. 807

2. To entitle the defendant to the benefit of dedication, or Borrender, the facts
must be explictly relied on and put in issue by the answer, or the Court wUl
not notice it. Wyeih est al, r. Slone daLU. 23.

EQUITY DErENCK
See " UsB ; " Injukctiok.

EBROR.

1 . Lies to Circuit Court on a judgment in tcire facias to repeal a patent.
iSfeanu in Error t. Barrett; L 97.

2. The refusal of a Court to amend a rerdict cannot be assigned for error. 26.

3. If the rejection of eridence is a matter resting in the sound discretion of the
Court, this cannot be assigned as error. Tks Phil. 4r Trenton Railroad Co,
y. SHmpaony IL 46.

4. The mode of conducting trials, the order of introducing eridence, and the
time when it is to be introduced, are sulject to the discretion of the Circuit
Courts. lb.

5. Testimony was not offered by defendant, or stated by him as matter of
defence in the stage of the cause, when it is usually introduced according to
the practice of the Court ; but was offered after defendant's counsel had
stated that evidence was closed, and plaintiff's witnesses had been thereby
dismissed. The Court rejected it; held that the rejection was proper. lb.

6. As to admission or rejection of testimony.

See Etidbnce ; Witkssb.

EVIDENCE.

1. A patent is primAJade evidence of right to tiie thing patented. Brodlc» ef
a/. T. Bickndl et al. II. 118.

2. Beissued patent iBprimd facie evidence that the original patent was can-
celled on account of a defective specification, and that all things have been
done which the law requires to authorize the reissue. The PhU. ff Trenton
Baikoad Co. v. Stimpson, U. 46.

3. Patent is evidence primd facie of invention by the patentee, lb.

4. A copy of a patent afterwards surrendered and cancelled, may be given in
evidence to show that a subsequent invention is not original. Delano y.
ScoU, I. 700.

5. An assignment, though recorded after the suit brought, is admissible in evi-
dence. Pitts V. Whitman, II. 189.

6. After an act of Congress extending a patent to an administrator, it is not
necessaiy to produce the letters of administration in evidence. Wbodworth
et al. V. Hall et al. II. 495.

7. The signature of a person styling himself " Acting Commissioner," is suffi-
cient on its face in controversies between the patentee and other persons.
lb.

8. Letters to the Secretary of State containing application for patent and speci-
fications, duly certified as papers on file in that department, are admissible.
Pettffmte y. Derringer, 1. 152.

808 INDEX.

9. A letter from the Commissioner of Patents on an offldal mttter, tendia;
to proTe the date of the inrention, maj be admissible, as offidal coir«-
pondence, or as part of the res gesta] being a dedaration accompaojis^:!
act. AOen r. Blunt et al. II. 530.

10. Parol evidence of the contents of a letter was rejected becaose do satisbc-
tory proof was offered of the loss of the letter ; or of its hiTing been rerand
bj the party to whom it was addressed. 76.

11. Affidavits of cither party will be received to establish or rebot such pR-
liminary facts.

IS. The mere putting of a letter in the pott-office inll not raise spresonptk
that it was received, as a fonndation for parol evidence of its conteots, if »
answer was returned, and the party to whom it was addressed mtka tS^
vit that it never came to hand. lb.

13. A verdict on an issue out of Chancery between the parties, is not ate,
when no judgment was ever rendered thereon ; or on the merits of the bu:
it having been dismissed on plaintiff's motion. R.

14. A verdict upon an issue ordered by a Court of Equity is not final opoot^^
facts it finds, nor binding upon the Court, unless adopted bj the CoaitipoQ
a subsequent hearing on the merits. Jb.

15. Qftaare, whether the verdict in a suit at law is evidence of inr^^
the fact that it was rendered, unless there be a judgment thereon. R-

16. Deposition taken under the 30th section of the Judiciary Act of 1789, m-
not be read in evidence, unless the judge certifies that it was rediced tofi>
ting by himtelf or by the witness in his presence. POiibm v. Detri»gfr,l
152.

17. Declarations of a patentee at a time previous to his application for letter
patent, admissible to prove that he then asserted a right ss infcntor of the
thing then described. Evans v. HtUiekj 1. 166. ..

18. Declarations of a party made before the dispute arose, in coooectioD viu
acts, may be competent evidence for him as tending to show then eitfWS
intentions. Hovey v. Stevens^ II. 479.

19. The declarations of a person as an agent in relation to the bssine» in-
trusted to him, and made at the time when so intrusted, are ^|"P^^^^
cemlng it, in an action by a third person against the principw, u P
of the res gestce^ if they relate to the act clearly. Aiken v. Bemis, ^'^

fO. Parol evidence bearing upon written contracts and papers ought no
admitted without the production of such written contracts sod pep^
Phil, i- Trenton Railroad Co. v. Stimpson, U. 46. . ^

SI. Although generally the declarations and conversations of P^""*^.*"jjj,
admissible in favor of his own rights, yet in many cases of ^f^*"^
hardly possible in any other manner to ascertain the precise time an
origin of the invention. 76. . ^

22. The declaration of a patentee merely that at some former time hem
a particular machine, may well be objected to. But a ^^^"'^^^^^.^
ticular time, describing an invention in detaO, and explainiog w ^v"
is legitimate evidence of it as early as that period. 1^'

INDBZ. 809

23. The mode of eonductiog a trial, the order of introducing eyidence, and
the times when it is to be introduced, are matters resting in the discretion of
the Court lb,

24. The original patent being destroyed by the burning of the Patent Office,
the only record of the specification beiqjg in the Franklin Journal, the claim
is not limited by that publication, because the irhole of the specification is
not set forth in it. Stimpaon y. Wat Cheater BaUrvad Co, U, 335.

25. Minutes of a hose company of which the plainti£fs were members, and at
whose instigation and expense the hose, the subject of the patent, was as-
serted to have been invented, may be read on the part of the defendant, to
prove that the plaintiffs were not the inventors. Pennock et al, y. Dialogue^
1. 466.

26. But other entries made at other times in the same books cannot be read to
prove that the company acknowledge the plaintiffs to be the inventors, (the
defendants not being members,) or to show that the company were not the
inventors, it not being alleged by the defendant that the invention was by
the company, lb,

27. A report to the hose company is not a public work within the meaning of
the sixth section of the Patent Law. lb,

2^. Hinutea of other hose companies of which the plaintiffs were not members
cannot be read in evidence by the defendant for any purpose, lb,

29. The defendant's refusal to submit to arbitration under the 9th section of
the Act of 1793, is not conclusive proof that patent was obtained surrepti-
tiously. Steams in Emr v. Barrett^ 1, 97.

30. Proof that the plaintiffs at a particular time made a'specimen of the thing
patented, which had not been before seen or heard of by the witness is primd
facie evidence that it was invented by the patentee. Pennock et al, v. Diti-

hgue, I. 466.

31. That persons, whose prior use of the machine had been proved by the
defendant, had paid the patentee for license to use the machine since the
patent — ought not to be absolutely rejected, though entitled to very little
weight. Evans v. Eaton, II. 243.

33. That the invention of the defendant, is better than that of the plaintiff is
improper except to show a substantial difference between them. Alden et aL
V. Dewey et al, I. 17. ^

33. To show that the invention was not original, but was suggested to the
plaintiff by another, although the precise mode of carrying it into effect was
not pointed out — is not sufficient unless the jury are satisfied that it was so
far communicated that the phuntiff could have applied it without more in-
ventive power. 26.

34. The oath of the inventor made prior to the patent may be opposed to the
oath of a witness in the case whose testimony is offered to show that the
invention was not originaL lb,

35. The decision of the board constituted to act on applications for extensions
of patents — is conclusive of certain facts —but not as to the right of an
administrator to an extension. Brooks et aL v. BickneUet o^ U. 118.

68*

810 un>EX.

36. When prtctical mechanicB are enabled to rapply anj omiaaioDS in the ^
cification, an intention to defraud will not be presumed. Grog etaLj.JoB
et al. I. 130.

37. An offer to the patentee to take from him a license, does not estop t)jf
person in offering to deny that thej[>atentee was the original inrentor. Em
T. EaUm^ I. 68.

38. May be given of the use by otber persons than those named in the satis
of special matter. Evans t. Sjremer, I. 66 ; Evatu t. Eaton, 1. 68.

EVIDENCE— PRACTICE.

1. The defendants cannot pnt in new rebntting eridence to afBdants of tk
plaintiff offered in reply to that first offered by defendanU. Ama t. Bnvi
H al. I. 689.

2. It is incnmbcnt on them who seek to show that the examination of a ^k
ness has been improperly rejected, to establish then: right to bsTeitidms-
ted; for the Coart will be presumed to harei acted conectly antil the ete-
trary is established. The Phil. ^ Trenton Railroad Co, v. Stinq)timy E46.

3. And it is the daty of the party who insbts upon the right to pat pankaiar
questions to a witness to establish that right beyond any reasonable dcdt
for the Tery purpose stated by them. And they are not at libeitj to desof
that purpose, and show the pertinancy or relevancy of the eridence forKj
other pnipose not then suggested by the Court Jb,

4. A party cannot by his own omission to object to the admission of iinpro|itf
evidence, brought out on cross-examination, found a right to introdooe tat-
mony in chief to rebut or explain it. 76.

EVIDENCE — GENERAL ISSUE.

1. Burden of proof on a trial of the general issue under the lOib lectioo (h
Act of 1 793, lies on the plaintiff. Steams in Error t. Barretty 1. 97-

2. Plaintiff must prove that die thing made by defendant, siibstastitll;i«-
sembles the plaintiffs invention. If they differ in form and proportioo oalj
they are the same. Dixon v. Moytr, I. 324.

5. Under the general issue wiihout notice, the defendant cannot gireiiien-
dence any matters mentioned in the sixth section of the act of CoQS^-
Kneass v. The Schuylkill Bank, L 303. *

4. But under the general issue he may give in evidence the act of Congr^'
without notice and without pleading it Also alienage —and i ^<*°*' .

5. On the general issue, without notice, the defendant may object to the p»«"
tiff's recovery, because there is no specification*, or that it is nniBteDigw"*^'
that the patent is broader than the discovery ; that it is for sn imp»«aB«"
not distinguished from the original invention. And that the sugg^
the petition are not recited in the specification. A i • eij

6. There is no limitation of the period in which, when the general bh^
pleaded, the defendant may give in evidence that the patentee '» not
original inventor. Evans Y.EaUmfl, 68, «* d^tto

7. If the general issue has been pleaded, is it competent for the m^om

INBBX. 811

gire in OTidence that the machine u oseleas, and has been abandoned?
Qucere. Gray etoLr, James et al. 1. 120.

See Alienage; Cumulative Eyidence; Dbolabations.

8. See Equity — Evidence, — where witnesses differ as to the fact of infringe-
ment.

See Injunction ; Onus Feobandi; License; Notice.

9. For the effect of the decision of the board on applications for renewals, see
Brooks et al, t. Bichi^ et al. II. 118.

EXPERIMENT.

With a machine to test its value is such a use, within the 6th section of tho
Patent Act, as will avoid a patent for a subsequent invention. Wdison v.
Baden, I. 510.

See Specification; Use.

EXPERTS.

See Witnesses.

EXTENSION.

1 . May bo granted to an administrator. Washburn et al. v. Gould^ II. 206 ;
Woodifforth V. Sherman^ 11. 257 ; Woodworth et al. v. UaU et al. II. 495.

2. And the letters of administration need not be produced. Woodworth et al,
V. Hall et al. U. 495.

3. Does not enure to the benefit of the assignee or grantee, under the original
patent, unless such right has been expressly conveyed by the patentee.
Woodworth V. Sherman, II. 257.

4. A patent extended by the board, and also extended by special act of Con-
gress must be considered as a patent for twenty-eight years. Woodworth et
aL in Equity v. Edwards etal.lL 610.

5. The specification for both extensions is the original one ; and if surrendered
for defect therein, the new and reissued letters should bo for twenty-eight
years — and although the old specification may have been adjudged good,
in several suits — yet if stiU questioned and litigated — and appears to be in
some degree inoperative from certain defects supposed to have happened by
mistake, the Court, on its surrender, may issue new letters for the twenty-
eight years in an amended specification. 1&.

6. An act of Congress extending the patent, passed after the original patent
had expired — providing that ** no person who shall have used the said im-
provements or have erected the same for use before the issuing of the said
patent shall be liable to damages therefor," did not authorize the use of such
improvements after the issuing of the second patent. Evans v. Jordan et al.
1.20.

See ASBIONMBNT.

813 INDBX.

EXTENDED PATENT.

Does not enure to the benefit of the assignees under the original patent. Bs
those assignees who were in nse of the patented machine at the time of g-
tension still hare a right to continue the use of it. WHton r. Rmsea^i
ILd72.

FALSE SUGGESTION.

1. In any of sereral material facts set forth in the specification innfidalesdt
patent. Delano t. Scott, L 700.

2. Though a patentee believes himself bond Jide to be the original iDTcntors
the improrement patented, yet the fact of his not being so, if it doesBOtaa-
stitttte a false suggestion in obtaining it, appears to be a snffideot grosudfo
repealing it, under the act of 1793. lb,

9, Befusal to refer under 9th Sec. of Act of 1 793, not condusiTe proof o£ S*"

til Error v. Barrett, I. 97.
4. Proceedings to repeal patent for — burden of proof, lb*

See CoNSTKUOTioir of Statutbs.

PORM.

1. A mere difference in the manner and form of applying an inyentio&wW
is the same in principle with one prerionsly used, will not jastifj or susas
a new patent Ddano t. Scott, I. 700.

2. But change of form or proportion, idiich produces a new effect ^ ^
come within the inhibition of the statute. Davis t. Palmer, 1. 518-

3. Suggestions of form made by the mechanic employed to constnet die sn-
chine, will not invalidate the patent Pennoek et al. v. Diahgu, 1. 4^

See E viDBNGE ; General Issue ; Imfbotemset \ PEincmi-

FRAUD.

1. The mere existence of a previous patent is not saffident to estsbltsb M
in a subsequent patentee of the same invention, without actoal knovKogc-
Ddomo V. ScoU, I. 700.

2. A patent cannot be said to be obtained by fraud of the rfgbiof anotiier,*'^
expressly or tacitly permitted him to obtain a patent Di^^ ^* ^'
324.

See Reissited Patents ; Eyidbncb.

GENERAL ISSUE.
See Pleadings.

GIFT.
See Abandonment.

GRANT.
1. Every instrument is to be inteipreted by a consideration of aBotltt?

IKBEX. 813

6 ions, and its obrionfl deagn is not to be controlled by the precise foree of
single words. Waskbum et ai v. Goidd, IL 206.

2. A grant of a right to construct and oso fifty machines within certain locali-
ties, reserving to the grantor the right to oonstmct and to license others to
construct, but not to use them therein, was held to be a grant of an excln-
siye right under the act of 1836, and that suits were to be brought in the
name of the assignee, lb.

3. A grant of a right under the original patent, does not giro a right in the
extended patent, unless it be included in express terms. Woodwarth v. Sher'
man, 11. 257.

4. A grant bj the Legislature ot a State of an exclusive privilege in an inven-
tion, does not imply an irrevocable contract %ith the people that at the ex-
piration of the period the invention shall become their property. The State
may revive it or refuse it Evam r. Eaton, L 68.

IDENTITY,

1. Or diversity of two machines, depends not on the employment of the same
elements or powers of mechanics, but upon producing the given effect by
the same mode of operation, or the same combination of powers. Odiome t.
WinkUy, I. 52.

2. Where two machines are tubatantiaUy the same, and operate in the same man-
ner to produce the same kind of result, they must be in principle the same.
Gray et al, r. James et al, 1. 120.

3. What constitutes. Whittemore et a/, v. Cutter. 1. 40.

IMPROVEMENT.

1. To sustain a patent, must be in the principle of a machine, art, or manu-
&ctnre before known, and not in form or proportions only. Reutgen v. Ka-
nowrsj 1. 1 ; Park T. Little etal, 1. 17 ; Evans v. Eatony 1. 68 ; Smith v. Pearce,
II. 13.

2. Qucare — If a new result if produced by a change of form and proportion, is
not this evidence of the introduction of a new principle ? (See Many t.
Sizer et al.^ October Term, 1848, tried before Spragne, J., — carried to the
Supreme Court on writ of Error, December Term, 1849.) Davis v. Palmer ;
Same v. McCormack, I. 518.

3. An improvement on an existing machine may be the subject of a patent.
Evans v. Eaton, 1. 193.

4. If a person be the inventor of an improvement only, and not of the whole
machine, he is entitled to a patent for no more than his impiovement.
Whittemore et al. v. CuUer, I. 40 j Odiome v. Winkley, I. 52.

5. Alterations merely formal, or a slight improvement, will give no right.'
Smith V. Pearce et al, II. 13.

6. Whether the iuvention be of the whole machine or of an improvement only,
is a question of fact for the jury. Whittemore et al. r. Cutter, I. 40.

7. And also whether it be new in principle, or form and proportion only. Reut-
gen V. Kanowrs, I. 1.

814 INBBZ.

8« Patent for, miut distiogiiish the new from the old, or will be roid. Im
Y. Lewitj I. 131.

9. And the specification of an improyement should describe tbe tbiog is Dse
that it may be known in what the improrement consists. Stillivm r. Bd-
fidd, I. 477 i Dixm ▼. Mo^, L 324.

10. And it is not sufficient to show it by exhibiting the inrentioD on tbetnl
Dixon Y. lf«9yer, L 324 ; Ewmt y. Eaton^ I. 336.

11. Bot if the improvement be so described as to be definitely distiiigmiiBlile
from the rest, although the patentee may haye claimed more tinnhe las
iuYented, the patent will be sustained. Petenon et aL v. Wcoda, II. 116.

12. If a machme, in the state in which it was first made, was lo far inferior ts
other machines used for the Skme purpose as that it was of no intrinsK n-
lue,7et if another person superadd to the invention and remonits defeffi.
the iuYcntor of the improYaments deriYes no right to the original ondae
from having made it of value by the addition to it Grey d aL v. Jaaa d d.
1. 140.

13. Improvement on a patented invention, will not entitle the inventor of tbe
improvement to use the original machine without the license of the pataiB.
while the term lasts. Gray et al, v. Jamet era/. 1. 120; Woodwofddi
in £q. v. Rogers et al,, II. 625.

14. When several improvements on a machine are claimed in the pitait b
any one of them is not new the patent is void. Moodif y.fme^^^
312.

15. Whether on different machmes used in combination, capable ofbeiurB^
separately also, can be embraced in one patent,

SeeEvioBXCB; Qenbsal Issub ; Ikyentobs; PATEKTjPanrcipajSrt-

ciFiCATiON ; Descbiftiok.

IMPROVEMENT. — ILLUSTRATION.
If a machine produces several different effects by a particular cool>in«w
of machiricry, and those effects are produced in the same way in t>
machine, and a new effect added, the inventor of the latter caanw
title himself to a patent for the whole machme. Whittemore et at t. O^i
L40.

INFRINGEMENT.

1. When a patent embraces several improvements on a °^^"^ ,^^
of them be used by the defendant it is an infringement MooAf t-

al L 312. jg^

2. The use of a substantial part of the invention, although with ^^^^ ^
tions of form and apparatus, is a violation of the right ^° ^ ?" j t.
of two machines, each new, if the defendant uses only one. ryy»«
Stone et al. II. 28. -^

8. The making of a patented machine, fit for use and with a design to

for profit, is an infringement Whittemore v. Cutter^ I. 28-
4. But if no user be proved, nominal damages only to be allowea.

nmEX. 815

5. The makiog the thing patented, though employed by another to do so, is an
infringement. Bryce y. Dorr et ai, II. S02.

6. But a mere workman employed by a person who is not the patentee, to
make parts of the patented machine, is not liable. Ddano r, Scott, 1, 700.

7. If a person has a license to nee on conditions to pay a certain sxmi weekly
and do certain things, if the payment be not made weekly, the continued nse
is an infringement Brooks et al, y. StoUey, IL 281.

6. Whether printing on the back of bank-notes with steel plates is an infringe-
ment of a patent for eopper-plate printing on the bank-notes, quare. JKheass
y. The SckuyUdU Bank, L 803.

9. The nse of one of the old machines composing a IcombinaUon that is pa-
tented, will not be an infringement. Evans y. Eaton, 1. 68.

10. It is not an infringement to nse any number of the parts of a combination
less than the whole. Prouhf et al, y. Bug^ et al, n. 92 ; Prouty etaLr
Draper et al., 11. 75 ; Parker y. Bdworth, IL 725 ; Eowej. Ahbatt, U. 99.

11. Unless the parts so used were iuYcnted or improYed by the patentee. Par-
her Y. Baworth, II. 725.

12. Nor will the use of the machines, comprising a combination, separately be
an infringement. Barrett et al. y. SaU et al. 1. 207.

IS. And if the patent be for an entire process, it is not infringed by the use of
a part Bowe y. AlboU, U. 99.

14. Where the iuYCntion is of a mould-board of a plough of a certain form,
worked upon transYcrse circular lines, the proportion of the radii of which
is exactly giYen, the patent is not violated unless the same circular lines
are adopted, unless the imitation be so nearly exact as to satisfy the jury
that the defendant intended to copy the model, and to make some almost im-
perceptible Yariation for the purpose of cYading the patent. This will be
considered a fhuid upon the law, and the Yariation be disregarded. Davis y.
Palmer, I. 518.

15. The continued use after letters-patent are issued, of an iuYcntion con-
structed and used preYiously to the application, will not be an iDfringement
if such prior use was with the knowledge and consent of the patentee. Pier-
son Y. The Eagle Screw Co. IL 268.

16. But a person constructing the thing iuYcnted, without the consent of the
iuYentor, before the application for letters-patent, does not thereby acquire
a right to use it, if a patent is afterwards granted. Evans y. Weiss, 1. 10.

17. The sale of the product of a patented machine, is not an infringement of
the patent. Boyd y. McAlpin, U. 277.

18. A person purchasing of another an article, under a contract for a supply of
all manufieu^ured by him with a patented machine, is not liable for an in-
fringement, if th^ contract was bondjtde, and not colorable, although he
knew that the machine by which such article was produced was patented by
another, as the iuYcntor. Kejplinger y. DeYoung, 1. 458.

19. But if the contract was made for the purpose of CYading the plaintiff's
right, and of this the jury must judge, it would be an infringement. 26.

20. A sale by a sheriff under an execution, of the materials of a patented ma-

816 INDEX.

chine, will not subject htm to an actioa for inliingement. Savin ^^r

GuUdy 1 47.
SI. Hast be prored to have taken place after the applicatioa or date of ^

patent. Bat if the defendant seeks to avoid the patent by diowiog a par

existence of the thing patented, the patent will relate back totbetrnt^

discOTeiy. Dixom v. J/oyer, I. 884.
22. Action for, cannot be maintained without proof of an iniringeiDeDi p

Tions to the commencement of the suit Woodwotih HaLr. Sume, R 2H
93. But an injonction will be granted npon weli-gronnded i4>prolieDsiosofe

intention to infringe, if the patent has been admitted or estsblishei Ih-

24. In proceedings in equity for an injunction, if witnesses differ oatbe^.
of infringement, the matter should be submitted to the juiy. Bmhde.
r. Bicknell et al, n. 11^

25. Plaintiff may recover against one of two defendants, though the t^Uac
does not apply to both, for all torts are joint and seTcral : a pisiatiff otfj'^
corer against one although the other be acquitted. BaOge^ t. Kaver* t
al. I. 1.

See SPECincATiov ; Akin y. Bewutj 11. 644.

INJUNCTION.

1. Rule for granting injunction, stated. Ogle et al. t. Ege^ 1. 516.

2. The principles on which injunctions are granted are not altered by the As*
15 February, 1819. SuJUvan v. Bedfidd, I. 477.

3. The practice of the Court is to grant an injunction upon tijefi%of ^
bill, and before a trial at law, if it shows \ clear right yerified by iffidi"^
Isaacs y. Cooper et al, I. 332.

4. But it will not bo granted merely upon proof that the plaintiff has obai^
a patent ; there must be either undisturbed possession and use under
patent for a reasonable length of time, or judgment rendered in fcTor or ;*
tent in suits for violation. And it makes no difference ihst such jailgiDO'
was rendered by consent, if not collusive. Orr v. Littlejield d al R^-

5. It should be stated in the bill or by affidavit, that the oompUin»nt » ^"^
ventor, and the bill must be sworn to. Sullivan v. RedJUldf I. ♦7''

6. To warrant an injunction there must be but little, ifany,dottbtonlheaiD <
of the Court, of tlie validity of the patent lb. . .

7. But if the bill stotes an exclusive possession of the invcntioD, so ^flf^^
will be granted, although the Court may have doubts ss to ^*^J|1^
the patent. But if the defects in the patent and specificadon are w ^ _^'-^'
that the Court can entertain no doubt, an injunction will be refssw
trial at law can be had. Isaacs v. Cooper et al. I. 332. . _ »«^j

8. And where there has been an exclusive possession of some dnratio ^
patent, without requiring the patentee to establish his patent by «"^ ^
law. It is otherwise if the patent be recent Wcahbnm et al. ▼•

206 ; Sullivan v. Redfidd, I. 477. ^

9. But where long possession of a patent has existed, and irtqo ^
under it, if the originality is not denied, and the patent does

be void, it will be granted. WoodvDffrth et al. v. Ball HaLll 495-

INDBX. 817

10. And wh«re an action at law b pending between the parties, and a bill is
filed for an injunction, if the answer denies thense of the thing patented, also
the originalitj of the invention, supported by affidayits raising a donbt of such
originality, an injunction will not be granted until the Vight has been settled
in the action ; unless the complainant shows undisturbed use and sale of the
patent for some time, or zecoyeries against others. Hovey v. Stecens, IL
479.

11. BecoTeries under a former patent for an inyention, to which the inrention
in the second patent is auxiliaiy, will not avail unless the second patent is
connected with the former, and is a part of it lb,

12. An injunction does not impahr any right to a trial by jury, as secured by
the Constitution, but aids the party appearing to have the legal title, till such
a trial, if desired, can be had. Woodworth et ah in Eq. v. Rogers et td. II.
625.

13. An interlocutory injunction will be granted if the Court be satisfied Ihat
the defendant has infringed, notwithstanding defendant may hare a patent
subsequently obtained for the same invention — the first patentee having
had no notice of the application therefor. WiUon v. Bomum, IL 749.

14. Injunction will not be issued against the defendant, unless it appear that
he has used the invention himself, or employed others to use it, or partici-
pates in the profits of the use. Woodworth et al. v. Hall etaLIL 495.

15. When one of the respondents run a planing machine, and two others
owned it, the injunction was allowed as against the three. Woodworth et al.
in £q. v. Edwards et al, II. 610.

16. The use of a machine, against which an injunction has issued by a subse-
quent purchaser thereof, will not be permitted while the injunction continues
in force, lb.

17. The answer to a bill for an injunction, though filed before the time for
answering, will be treated as an answer on the interlocutory motion. Brooke
et al. V. Bickndl et a/. 11. 118.

18. When the patent has been admitted or established, an injunction will be
granted upon well-grounded proof of an apprehended violation of it. Wood-
worth et al. V. Stone, IL 296.

19. A person who is within the jurisdiction of the Court may be enjoined from
using a patented machine beyond the jurisdiction of the Court. Boyd v.
McAlpin, IL 277.

20. Assignee of part of the patent, for a particular district or territory, may
maintain a suit in Equity for an injunction in his own name. OgU et al, v.
Effe, L 516.

21. An injunction granted on an original bill, before the surrender of the pa-
tent, cannot be maintained upon the new patent, unless a supplemental bill
be filed founded thereon. Woodworth et al. v. Stone, II. 296.

22. An injunction will not be dissolved merely on an answer denying the va-
lidity of the patent ] but the court will direct an issue at law to be tried, if
requested. If not so requested, the injunction will be continued until the
next term, and then dissolved, unless a suit is brought in the mean time to

VOL. II. — P. c. 69

818 IHBIZ*

testthetitle. Oity. M€ma,ll.9Sli WoodwortkHaLr.Edwvdt HdJl

610.
S3. An injvBetkm will not be d&MolTed as a matter of eoene, on tkecoad^

in of tiio anfwer denying tho eqni^, if complafaiant bai adduced nxitivT

eridenceofhifliigfat. Orrr.LHilifUidetaLILaaS.
Si. Motions to diaaolre an ii^anetion will no4 be heard on the nmeeridas

on which it waa granted, nor on new OTidence that might have been offeni

at the time ; but will on new and material testimoojr. WMenitkd d.i

A^ers c< W. IL 6S5.

55. An injanction will be diMolved on the fiUngof an answer deojhv the Tiiil^
itjT of tiie patent, tnpported bj eTidenoa primAfode, vakta then be ooott:
eridence inetaining the patent 16.

56. And if the balance of evidence appeara to be in favor of tbe piti&tiff, tk
injanction will be continued antU a trial can be had at law, and if the Mtn

is not brooght the injanction will be dissolved. Jb.

57. An injonctioa will not be dissolved on acoonnt of anjdoobtiii to tktt

liditjT of a re-issved patent, caused bj the errors of public oiBeen, if as-
sares are pending in Congress to remove them bj kgiflatioo. IMro
Y. HdU HaLJL 517.

58. A person who has been ei^ined is gailtj of a contempt if beifterwirii
use another patent similar in principle, when the antbor of tbe litter^
been previonsl j enjoined on motion of the owner of the fonaer. fM>^
fli of. V. Bogu9 et al, II. 6S5.

59. He can pnige himself onlj by satisfying the Coort that he w» xX'**^
of the injanction i^ainst the latter patent. lb,

INSTRUCTIONS.
1. It is not the dnty of the Coart to instnict the jnry on abstrart cr'tti^^

questions, bat only such as arise on the evidence of the case. AB^^-^

et al. n. 530.
S. The Coart is never boand to give an mstrnction to a jnry on *^

law, in the precise form and manner in which it is pat by counsel, hot oi.

in each manner as comports with the real merits aadjostioeoftBe

PitU V. Whitman, II. 189. ^^

3. It is no ground of reversal that the Court below omitted to gire ^^^
to the jury upon any points of law which might arise in the <*^^ j
was not requested^ by either party at the trial. Pennoek eiaLr- /w*

5H»*. . , Xf

4. Jf either party considers any point presented by the evidence oaittf^ ^
chaige of the Court, it is competent for him to reqnire an opinioo ■!»«
point. The Court cannot be presumed to do more than to expretf
nion upon questions that have been raised at the trial. I^

INTEREST OF WITNESS-
1 . The liabflity of a witness to a like action, on his standing in tbe sa^e^^
dicament with the party sued, if the verdict cannot be gi^^

JSDJSL, 819

against him is an interest in the qnestion onlj, and does not exdade him.
Svcau T. EaUm^ L 336.

2. Short of that which would exdade him on the ground of iaoompetency,
how far it shoold weigh. Evans y. HtUiek^ L 166.

See WiiHMSXS*

INVENTION.

1. Defined. EarU t. Sawyer^ I. 490.

S. Most be described with reasonable oertaintj, or the patent will be Toid.
Lowdl T. Zeiow, 1. 131.

3. If for an improvement, the new must be distiagnished from the old ; bnt if
Buffidentlj distinguished the patent is good, although not described hi snch
exact terms that a person skilled in the art or sdence of which it is a branch
coald make or construct the thing InTented, unless such defectiTe descrip-
tion was with intent to deceive. LowtU t. Zeaoit, 1. 131.

4. And this holds, although the patentee has claimed more thaa his invention.
Peterson et al. v. Wooden, 11. 116.

5. An imperfect and incomplete invention, resting in mere theory or in intel-
lectual noUon, or in uncertain experiments not actually reduced to practice
and embodied in some distinct madunety, apparatus, manufacture, or com-
position of matter, is not the subject of a patent Reed v. Ctotar, elaLU,
81.

6. It is doubtful whether a mere change in the mode of fSsstening knives in a
cylinder to be ground, or to fasten one instead of several, is such a change
in the structure of an old machine, as to justify ft patent Mov^ v. Steoens,
n. 479.

7. The substitution of potters' clay, or any kind of day used in pottery, in the
manufacture of door knobs, for metal or wood, although it produces a cheap-
er or better artide, is not the subject of a patent, if no more ingenuity and
skill was necessary to construct the new knob than was possessed by an or-
dinary mechanic, acquainted with the business. Botchkiss dt al, v. Green'
wood et ai, II. 730.

8. To be valid as the first, must be seasonably reduced to praetioe and put into
use. Alien v. Blunt et al, II. 530.

9. The earliest invention will prevail over a subsequent one, if not allowed to
be in public use, or to be on sale more than two years before application for
a patent, it not appearing that the subsequent inventor had perfected his
invention and taken out a patent, while the other delayed and neglected to
use diligence in perfecting his. lb.

See Sfxcxvxoatiov ; Claim.

INVENTOR.

1. The original inventor is entitled to a patent for his invention. Odiome v.

Winldey, I. 52.
S. He who is first in time, has the exclusive right to the patent Lowell v.

Lewie, L 131.

820 IHDKZ.

S. The right to ■ patent belonge t<^ him who ie the fint iaTentor^ eren beCn
6ie patent b gtanted, and whoerer cmuttuctB the maefaiiie loveDted. tm s
his peril, and will have no right to uie it, if a patent he •abwqiieotlrolitU'
ed. Evatu t. Weiu, L 10.

4. The plaindir mnit proTe that he was the firtt inrentor, as well as la «g^
nal inTentor. Dawam t. FoUot, I. 9.

5. Who is the fint inTentor, qnesdoa of fact for the jnry ; he mast be so lii^
reference to all the worid — otherwise in Bngland. Beulffm v. Kntmndi
I. 1 ; EvoMB V. Bmkk, L 166.

6. The patentee cannot he considered the flist inTentor, if a mschineflmihrio
his own had been in use before, although ai the time of his ioTeatioa it W
gone into disuse, or was not notorioosly in ose. Ih.

7. Whoever finally perfects a machine, and renders it o^Mble of nselil opo-
tlon, is entitled to a patent, although othera may have had the idea, oi
made eaqMriments towards patting it into practice, and althoagh aE ^
component parts may have been known under a differeat conluatioB \t
fore. WoMhlmm t. GoM, n. S06.

8. But he must be the first as well as original inventor ; and a 8nbaeq«et,il-
though original inventor, will not be entitled to a patent, if Oi» iDTesiioi s
perfected and put into actual use bj the first. Rati t. Cutter dalJi' SI

9. And the former will be so enaUed, though the latter may bare fint obdis-
ed a patent for such subsequent invention. Woodcock t. Parktr dd-l-^-

10. And although a subsequent inventor may hare first adapted sod perf^
his invention, and reduced it to practice, provided the fintinTOitortfil
leasonable diligenoe in perfecting and adapting the same. Btd t. 0^^
a/, n. 81.

11. The decision in Dolland's case held not to be applicable to die patent im
of the U. States. 25.

IS. And he must make appUcatiott for a patent within a ressoaaUe tiiM iftff
perfecting it, and will not be permitted to gather the profits of \t ""^J^*
petition should force him to procure the exclusive right This wooli r^
rather than promote the progress of the useful arts and sciences. Ft"'^
ef al. T. Dialogutj I. 542.

13. The inventor of a combination of old principles and oldmateriil*.!*^
dncing a new result, is entitied to a patent lb. 466.

14. Of an improvemmUy cannot entitie himself to a patent to comprehend aoc
tiian his invention. Woodcock t. Parkor eioLLSli OdiMM r. Wm.

15. He will be limited to tiie improvement WIdUemoire d al r. ^^'^'\,

16. Of a machme for whidi he obtains a patent, which is invalid, on the f^
that it covers that which is not new, may afkerwards take ont a pateo
much of said inrention as was new. TrtadwtU et ai r, Btaden, I »'• ^

17. And he is the only person who can take out a patent; if h« ***'«^ y.
use of the invention and does not apply, no other penon ess.
Eatanj 1. 68. •oHW

18. And he may lose his right to a patent by suffering theiavwtioB to^^
general use, or by giving it to the public. Whittemoredid.r. CWter, •

OTDBX. 821

19. He who |»ermit8 his faivention to go into general nie without objection, be*
fore he tekee out his patent, will be held to hare abandoned his right to the
public. Tr^adwdl €t W. t. Bhden, L 581.

50. And if, before be obtains a patent, he makes his discovery pnblic, and per-
mits the free nse of it bj others, without objection or assertion of daim,
abandons his right to the discovery, althongh the malung and nsing was bj
a paiticnlar person anthoriied by him. Pttmoek etoLr* Dialogue, L 466.

51. Of a machine patented before the plaintiff^s inirention, alleged to be the
same in principle with the latter, is a competent witness to prove the priori^
of his invention. TnadwdL et al. v. Biaden, I. 531.

Bee CoMBiHATiov ; Pbxhoipjlb.

INDEPENDBNT INVENTOBa

The right to a patent in a race of diligence would seem to belong to him
who first reduces his invention to practice ; but this right is qualified by the
15th section of the Act of 1636, by protecting the first inventor, if he is using
reasonable diligence in perfecting his invention. Beed v. Cutter ei cU, U. 81.

JUDGMENT.

1. On a acire Jbcias repealing a patent vacates it, but a judgment in fiiv<ff of
the patentee will not prevent his right being contested in a suit afterwards
brought by him for infringement. Delano v. Scott^ I. 700.

2. In scire fibOM to repeal, a patent may be reviewed in Circuit Court on writ of
error. SUcBrm in Error, v. Barrdt, L 97.

JURISDICTION.

1. The Circuit Court hss no jurisdiction to enforce the specific performance of
a contract for the use of a patent-right, where all the parties reside in the
same State where the suit is brought. Bat the Court having jurisdiction on
the question of infringement, may settle other matters, not ground of original
jurisdiction. Brooks et al. v. Slodejf, II. 281.

2. Of Circuit Courts extended by Act of 15 Feb. 1819, to bills in equity, for
injunction. Sullivan v. Bedjuld, I. 477.

3. Over the person, gives the Court the power to enjoin the psrty from using
the patented machine even in places without the jurisdiction of the Court.
Boyd V. McAlpin, II. 277.

4. Of the Board of Commissioners to act in a given case not conclusive by their
decision upon the application. WUson v. Bousmau et al. 11. 372.

JURY.

1. To find whether the plaintiff was first inventor. ReutgmT.Kltamor8etal,lA.

2. — — *— whether an improvement made by deftBudant is in principle or in
form, and proportion. lb,

8. If in form snd proportion to determine whether a new effisct is thereby
produced. Davii v. Palmer, L 618.

69*

822 ifiDBZ.

4. That ft pftlentod iOTeiition is old ; that the tpadilcatioii doei not (ktAj it-
scriba the mode of making the maehise, oi^that the original and nUmelpi-
tent are not for the teme inyention, or that either were obtained with fiai-
dnient intent, all involve matters of fact, and are for the juylodakk.
Carver y. Brainirm Manufacbaing Co. II. 141.

5. To determine whether there is a difference in principle betvea tvo ni-
chines, from tlie model exhibited and the other eWdeooe. SmAj^hm
a al. U. 13. •

6. Whether the specification has declared the whole troth. BeKigm r.Kmm
Hal, 1. 1,

7. Whether there has been a concealment with a view to deoeiTe. A.

8. Whether the concealment is material lb.

9. To determine whether the inrention is described with soffictent demw »
enable a skilful mechanic to construct the thing inTented,sad theriiets
give the directions a liberal and common-seoae^constrnction. Broth A d.^
BiehteUHal, II. 116 j Dauis r. Pa/msr, L 51 8; BaOgm J. KsmatnU
1.1.

10. To determine the snfficiencj of the description in patents for osckiBeiff
for a new composition of matter where any of the ingredients do not <ini
possess exactly the same properties in the same degree. Wvid t. CWvii

H al. II. 588.

11. Also to find from the eTidence of persons skilled in the art, wlietber the (k-

scription is clear and exact enough to enable such persons to compooDdiiN
use the inrention. lb.

12. The meaning of technical words of art, used in a patent, ss well as the ff'
rounding circumstances which may materially affect their mesmsg mto^
interpreted by the jnry. WtMntm etoLr. Chuidf IL 206.

13. To find whether the renewed patent, after the suirendcr of s defcrfw «*
U snbsuntially for a different invention. AUen v. BlmU dal.JlW\^
son y. TT. C. BaUrwid, U. 335.

14. To find whether there was fraud in the surrender of an originsl \^
and obtaining a new one. StimpMon y. W. C* Railroad, 11. 335.

15. To decide upon infringement in cases where witnesses diflfer in P"*^***
on motion for injunction. Brookt et al. y. BitkntR el a/. II- H^- ,

16. To find whether the patentee be the inyentor of the whole msdiiw*
an improvementonly. Whittemort et al. r. CuUer^ L 40.

17. To decide upon the question of noyelty and utility. Parit r. U^^
1. 17.

18. To decide whether the tiling patented resembling any otber tiuo^ betbe
same in principle with 4t Pennock et al. y. Diahgw^ I- 466. , f^ ^

19. It u not sufficient to proye that an article similar to thsfi V^^^^
plaintiff's machine, was seen ' •-^ir'- - ••bl
jury must be satisfied that
TreadweU et al. y. Biaden, L 531. . j^^

.20. Should determine whether the delay to take otttapateDti»°dsUowuig>^

be put into use by others before application for a patent it »^ ^^
Morris r. Huniinfftanf L 448.

en by a witness prior to plaintiff's clsi*;^
it was made by a machine like it »« 1**°'*

IKDIQC. 823

SI. To determiiM the faet of acqniesoeiice by inyentor in the pablic use. This
may be presumed from circamstances, sach as a knowledge of such use with-
out an immediate assertion of right. Shaw r. Cooper^ L 643.

28« Will find single damages, the Court will treble them in proper cases. Gray
et al. T. James etal, 1.120', Wkittemore et al, t. OuUer, I. 40.

53. In estimating damages, may allow e'xpense of counsel fees if they see fit.
jBoston Manufacturing Co. t. FMe «r al* I. 330.

54. In estimating damages, will not be authorized to include counsel fees.
SUmpaon r. TAe RailtwuU, II. 595.

See Dxfbhce; Equity; Noybltt; Utilitt.

LEGISLATIVE GRANT.
Of an oxdusiye priyilege in an invention.

See GsAKT.

LETTERS.

1. Of plaintiff to the Secretary of State, containing applications for a patent,
and specifications, certified under the seal of the department, as papers re-
maining in that office, are admissible in evidence. Pettibone y. Derringer,
I. 15S.

2. Of commissioner. See Etidbkge.

LETTERS. — CORRESPONDENCE.
See EviDEKGE.

LICENSE.

1. What will be considered a license to use the patented invention. Reuigen t.
Kanowrsetal, 1. 1.

2. If the right to use be conditional, the conditions must be performed, or such
user will be an infringement. Brooks et al, v. Stotley, II. 281.

3. If the license bo granted on condition that the licensee shall pay a certain
sum, weekly, and do certain acts at stated times, the payment must be made,
and the acts performed, or he wUl have no right to continue the use. lb,

4. If the defendant justifies under the licenses, he must show the performance
of the conditions. /(.

5. If a person employed in the manufactory of another, receiving wages, makes
experiments there at the expense of the employer, and receives additional
wages in consequence of the results of the experiments, makes the article
produced, and permits the employer to use it without demanding pay for
such use, and afterwards obtains a patent, the employer will not be liable for
the continued use, as these facts justify the presumption of a license. McChrg
d al, V. Kingtiand et al, 11. 105.

6. A grant of the right and privilege of manufacturing friction matches, and to
employ in and about the same six persons and no more, and to vend the

824 ISBBX.

miM in any pan of tiiA United States, was held to be a lieeaM^sndiaedis
be leooided, unless leqaired bj some positive pioTisioa.of ikslNintM
to give it ralidttj. Brookt t. Bfoi €tal,U. 161.

7. It was also held that the right eonvejed was an entirety and inapildetf
being apportioned or divided among diffemit persons. A.

8. No apportionnient or division of a license can be made if it be eaatnr*
the intention of the parties thereto, lb, ^

9. Quare, whether it can be assigned, notwithstanding the woids to Bind b
" assigns " in the grant i(.

10. To ase one machine, gives anthoritj to constmct another, iastesdofit^itf
onlj one can be used at a time. Woodworik v. CWf», II. 603.

11. When the term expires, [t^<lbe|Mlail w exia^dedj] the msdiiiie thes iacs
may be employed nntil it wears out or is destroyed. Jb.

IS. Such license is assignable. lb,

13. Equity will cancel a contract or license under a paten^right, fcftfadv
mistake, but will not reform or alter it. Brooki HaLr. Sitotfgf, ILS81.

14. May be given in evidence under the general issne, without iiotioe,t&d«ii^
out pleading it faaoss V. The SdM^lkiU Baidk, L 303.

15. A mere license is an entirety and inc^wUe of division or of being \t^
np into fragments in the possession of different persons. Bnoka t. Bjm *
al, IL 161.

See CoimuLOT.

MATEBIALITT.

Of thing concealed, a question for the jury. Test, could an artist tfier|ili»
tiff's right has expired, constmct such a machine by looking at tbe^edD-
cation. RnUgem v. KamowrM «t of. L 1.

MISTAKE.

1. If a mistake occur in the copy of a patent, it can be corrected widMWtciasiiS
any injury, but if it exist in the original patent it cannot be corrected vitwnt
the consent of the Secretary of State. Wooduforth dalr. Ball eid.Jl 4)5.

a. The sanction of the Secretary of State to the correction of a clerical Durtak*
in the lettcrs-patent, may be given in writing afterwards, and be need b»
resign the patent lb.

3. But the commissioner, if correcting it, need not re-sign or re-seal the fettoS'
being the same officer who did it before. lb,

4.. If the mistake corrected be a material one, the patent cannot operate, exc^
on causes arising after it is nuide; bnt if a mere clerical one. (^i"^ ^

5. If it be of a claieal mistake only it operates^back to the original date of tM
patent, unless, perhaps, as to third persons who have acquired interwni'*
rights affected thereby. 26.517.

6. An injunction will not be dissolved, because of each a mistake in tn0 r
tent, if measures are pending to remove it by legislation. lb.

DTDEZ. 825

7. In an expression, proved to be so bj other parts of the specification, will not
Titiate the patent Kheass v. The Sckwflkill Bank, I. 308.

See New Trial.

NEWLY-DISCOVERED EVIDENCE.
See New Tbial; Cumulatite Etidengb.

NEW TRIAL.

1. Will not be granted, on account of surprise at the trial, where the partj
chooses to go on, relying npon other matters. Ames y. Howard ei al. I. 689.

2. Will not be granted, because a deposition taken without notice, was rejected,
the caption being held insufficient, in describing the action as against one
defendant, when it was entered against, and defended by two; the minutes
of counsel containing the testimony of the witness on a former trial, having
been submitted to the jury. Allen v. Blunt etoLU, 580.

3. Will not be granted because an official letter of the Commissioner of Pa^
tents was admitted tending to prove the time of making the invention, though
its competency may be questionable, if subsequent evidence in the case ren-
dered it unnecessary to proved the fact for which it was offered. lb,

4. Nor will it be granted where parol evidence of the contents of a former let-
ter was rejected because the loss of that letter was not satisfactorily proved,
or no proof that it had been received by the opposite party. Ib»

5. Will not be granted, because one of the jury publicly inquired of the clerk,
what damages had been allowed in a former suit. lb.

6. Where a motion for a new trial is not drawn up for some weeks, and counsel
disagree as to some of the rulings made, the Court must settle the differences,
and will not grant a new trial, on account of them, if justice seems on the
whole to have been done. lb.

7. Nor will a new trial be granted because an instruction was not given, which
counsel did not request either orally or in writing to be given, although ho may
have intended and believed that by his aigument a desire for such instruction
was manifest. lb.

8. Will not be granted for erroneous ruling, if the verdict has not been in-
fluenced thereby, or be against the justice of the cause. lb.

9. Will not be granted on the ground that the verdict is against the weight of
evidence, if there be some to be weighed, on both sides, unless a clear mis-
take be shown or manifest abuse of power. Aiken v. Beam, IL 644.

10. The Court will not set aside a verdict for $2,000 damages, on the grotfnd
that they are excessive, unless they are plainly and largely beyond the injuiy
infficted. Aiken v. JB«mis, II. 644 ; Allen v. Blunt et al. II. 530.

11. Will be granted for newly-discovered evidence, if there was not gross ne-
glect in not procuring it at the first trial ; but it must not be merely cumula-
tive. Ames V. Howard et al. I. 689 ; Aiken v. Bemis, II. 644.

12. Costs of the former trial must usually be the terms for a new trial on the
ground of newly-discovered evidence. Aiken v. Bemis, n. 644.

826 INDEX.

13. Will not be granted at the same tenn at which the J1117 diugno, IFSn
T. Bannam, II. 749.

NONSUIT.

1. The omission of the words " against the form of the atatnte,'* in the ddclui-
tioo, is not the foundation of a nonsoit TVyon y. Whiie^ L 64.

S. But where the declaration professes to set out the specification, tbe si^gtot
Tarianoe is ftUal, and the defendant majr daim a nonsuit. lb,

NOTICE.

1. Of special matter, need not indnde all mattera of detooe^ under the goenl

issne, bat the defendant maj gire in endenoe all snatten of defence ^

he may legally make. Evamr. HeUickyl.tl7,
8. And where wimess was asked whether the machine used by tbe defesdis

was like the model of the plaintiff, exhibited in Coort» no notice wu bm»

sary to anthoiisGe the inqniry. i&.
8. Where defendant pleads the genenl issue it ia sufficient in the nodce of 9^

dal matter to state that the plaintiir is not the original xnreneor, sod h 'a tU

necessary to state in the notice who was the inyeator, or who had naed ibs

machine. Evans t. Krtmer, I. 66.

4. If the notice specifies some persons, the use thereof by others xnar be ^
in evidenoe. lb,

5. Under the 6th see. of the Act of 1793, notice haying been given of oertua
places in which the alleged invention had been preriously osed, \iwa)iM
that eridence might be given of such use in other places than those uad
Evans v. Eaton, L 243.

6. In the notice of special matter to be given in evidence by the deksM
certain mills were mentioned where a machine of yrbkh. the plaintiff daisMd
to be the inventor, was in use prior to the date of the alleged inrestioB. K

' was held that the defendant might give evidence of the use of thesudiU'
chines at other mills than those mentioned in the notice. Evassr.S^

I. 68 J I. 243.

7. Bequired by the 15th sec. of the Act of 1836, need not contwn ihe m»«
the witnesses, by whom it is intended to prove a prior knowledge end «is
the thing patented. WUUm v. ITu RaUtwds, U. 641. ^

8. And B witness may be asked generaUy if he knew that the impiormeBi'^^
been in use by any person prior to the application of the patentee for t?*^^
and the plwntiff is not confined to the knowledge of a use bypeww* ««»"
in the notice of special matter. Treadwdl et aL v. Biadtn, I. Wl.

9. An answer denying the validity of the patent, is sufficient to jostif/ tw
in ordering a trial at law, although it does not set out the names of the ^
sons who used or knew the thing patented prior to the alleged '^^^^^^^^
the names of the places where it was used or known. Bat in the "^^^
or of tiie issue out of chancery, the answer should set them ont Orr t.

II. 331.

IKDSX. 837

1<T. The Conrtfl will not pennit evidenoe of ft prior use in' England under a
notice of snch a use in the United States. Dixon v. Moyer^ I. 324.

1 1. No previoos ndtice of right is neoessarj to enable the patentee to maintain
a suit. Amet t. Houxtrd et a/. I. 689.

See Alixkaob ; Eyidsscb ; Gehkbal Imub ; Lxoxmsb.

NOVELTY.

1. To entitle an individual to an ezclasiTe right nnder the Patent Law, his in-
Tention must be lubetAtially different from any machine or thing in use.
Stadof T. Whipfk, IL I.

2. The noreltj of an iuTention is either the manufacture produced, or the man«
ner of producing an old one. See Whitneg d ci. t. Emmett dt al, I. 567.

8. The iUTention must not ha^e been known and used before in any part of the
world. If it had been jkhe patent will be inralid although the patentee was
ignorant of such previous knowledge and user. Evana r. Eaion, I. 68.

4. Whether the inrention is new, is to be decided by the jury. Park t. LiitU
etoLL 17.

OATH.

1. If the oath required by the Patent Act, prerious to the issuing of a patent,
be not taken, still the patent is valid. WhUtemore v. Cutter, I. 28.

2. Of patentee on application for a patent, effect of as against the testimony of
a witness to prove want of originality. Alden et al, v. Dewey etai,lL 17.

3. There is no rule of the Court requiring an oath to be filed with the bill for
an injunction. Woodworth etal.m Equity, v. Edwards et al. II. 610.

OBLIGATION OF CONTRACTS.
Hay be impaired by Acts of Congress, though not by laws of States.

See CONTRACTB.

ONUS PROBANDL

Where the plaintiff makes out Skprimdfade case for the violation, and the de-
fendant introduces evidence to prove his special defence under notice, that
the invention had been known and used, &c., and that the thing used by the
defendant was not similar to the thing patented ; it was held proper to in-
struct the jury, that as to this defence, it was the dn^ of the defendant to
torn the scales of evidence in his favor. Alien v. Blunt et al. II. 530.

ORIGINAL nnnENTOR.

I. Who has introduced his invention to practice is entitled to apriority of patents
right, although subsequently the same machine may have been invented by
another person, and patented before the date of the first inventor's patent*
Woodcock V. Parker etal.L 37.

828 iNbix.

S. Parol eridence bearing upon written oontracta and papen.

See EriDEHCB.

PABTICULAB PATENTS-— Bulkchaxd's.

Blancliard*s patent held to be for a machine and not a principle or fimc^
Bkmehaard t. Sprague^ I. 734.

Outer Etans's.

1. The Act of 1808, ch. 117, anthorises a patent to Olirer Etsu for hisiBi«fr
tion, discoTery, and improTements in the art of mannfactariog floor, and of
the teveral machinei applicable to that purpose. Evom v. iEotoii, L SIS.

S. The act of Congress for the relief of Olirer Brans does not piednde jidn
cial inquiry into the originality of his iuTention. lb.

3. Although the Act of Congress authorised the issue of a patent to Etiis&i
the seyeral machines as well as for the entire improTemeat— yet tbe pstot
issued is confined to the improTements in the art of mana£utoiiiigikMitl7
those machines, lb,

4. As to right of Oliver Evans to a patent for all of his improTemeDls-fld
degree of particularity required in the description of his impncmeit. iii
of his right to sue in the Circuit Courts. 26.

Exbbson's Patent.
Sustained. See Hogg et cU, v. Emenon, IL 655.

Woodwoeth's Patbnt.
The specification of this patent for a planing machine, held ssffieient od
proper, and the reissued patent declared to be valid. WUkm v. i&sww rf
al. XL 372 • Woodworth et al, v. James Wilson et al.JL 473.

PARTIES IN ACTIONS.
For violating patent-rights, the parties only are concerned, although the pouie
may have an eventual interest in it, yet the United States are in nofi«»
party to the proceedings, and cannot be substituted as plamtiiF in plice«
the petitioner. Wood v. Williams, I. 717.

PATENT.

1. Is not to protect a monopoly of what existed before, but something »"*
did not exist and which belongs to the patentee. Davdl et al. v. ^nw*. ^
303.

2. They are not monopolies, in the odious sense — they are not S''"^ "
restrictions upon the rights of the community, but to promote sciea«
the useful arts. EUmchard v. Spraguey I. 734. ,

3. The exclusive right under a patent does not rest alone on the discorerj
the inventor — but also upon the legal sanctions which hare been gi^e"
and the forms of law with which it has been clothed. There ""^ ***
substantial compliance with every legal requisite. Shaw t. Coepert !• '

4. But it is valid although the oath required by the act, preyioM to theitfWV
of the patent, be not taken. Whittemore v. Cutter, L 28.

nfDBZ. 829

5. Must snbetandaUj fedto the allegationB rad laggestions of the petition,
JSvansv, Chambers,!, 7.

6. And it c«n only be for the inrention recited in the patent and described in
the specification. Evana v. Eaton, I. 68.

7. May be for a joint inrention. If each of the patentees obtain a separate
patent for the same invention they are estopped by the joint patent — to
assert any title in the separate patents. Barrett et al. t. HaU et al, I. 207.

8. The right to a patent belongs to him who is the first inventor, even before
the patent is granted, and any one oonstrncting the invention will acquire
no right to nse it if a patent is subsequently granted. Evana v. Weiss, 1. 10.

9. And if the inventor abandons the use of it, and does not make applica-
tion, no other person can. Evans v. Eaton, 1. 68.

10. No extent of disuse wiU be an abandonment. Gray et ai, v. James et al.
I. ISO.

11. When the invention is of an improvement only and not of the whole
machine, the patent is to be limited to the improvement. Whittemore et
al. V. Cutter, I. 40.

18. For several improvements in a machine, each of which is claimed, if any
one of them be not new the patent is void. Moody v. Fishe et al. I. 312.

13. Void if claim is for more than the invention. Stanley v. Whipple, II. 1 ;
Evans v. Eaton, I. 336.

14. For an improvement, is void if it is broader than the particular improvement
invented. Woodcock v. Parker et al. I. 37.

15. For a machine embracing a prior invention, without which the plaintiff's
invention could not operate to produce the desired result, is too broad and
consequently void. Watson v. Bladen, I. 510.

16. Although too broad in its general terms, will be limited by the summary y^
in the specification, if the thing intended to be patented be clearly shown.
Whitney etaLr. Emmett et al. I. 567.

17. Is a contract with the public, and must be complied with in the same good
faith as other contracts, and the right secured by it will be protected by a
liberal construction of the law, and the acts of the patentee, lb.

18. Can only be declared void by the Court in the cases provided for in the
sixth section of the Act of 1793. lb.

19. If it be for the whole machine it must be shown to be substantially new in
its structure and mode of operation. Evans v. Eaton, I. 836.

20. If the same combination existed up to a certain point, and the invention
consisted in adding something new to the old, the patent should be limited
to such improvement lb.

21. And it must clearly appear by the description in the specification in what
the improvement consists. It is not sufficient that it be made out and shown
at the trial, or by comparison of the machine described with others in prior
use. lb.

22. Shall not include inyentions for two distinct machines. Boot v. Ball et al
II. 513.

VOL. II. — P. c. 70

830 IKBBX.

23. But in eates of combi&atioii, it may ertend to elements t>f ndi oonbia^

tion that are new or improvements thereon. lb.
S4. And for a combination of parts, is not a patient for eatk of the puii tept

rately. Timdwdl H al. t. Bladen, L 531 .

25. Hay be granted for a combination of old principles and old mttenls-
prodncing a neir result. Pennock H ai, t. Dialogm, 1. 466 ; Evau r. iiSK

I. 3o6»

26. If for the whole machine when the inrention is of an improremeDtoalT.
will be void. Evans r. EiUon, I. 68.

27. Bat if for a machine or an improvement it will be good, sltfaosgh piriift'
it were known before, lb.

28. For a combination of machines to produce a given result, is notapitt
also for the particular machines comprising the combination— but to mn
them the inventor should take out a patent for each of saidmacfaiBes^
which he is the original inventor. Ih,

29. QMore, whether improvements on different machines, can be coap
hended in the same patent so as to give a right to the exdosin ise i
several machines separately, as well as the right to the use of theniaeoo-
bination. /6. 69.

See PjuaTicuLAR Patektb. Oliver Evans.

30. Hay include several improvements on one and the same macfaine oi (*?
machines which conduce to the same common purpose; ilthougbtbeTiR
each separately ci^>able of a distinct application. Bat cannot indode tbcs
if designed for different and independent objects. Wyelh dd,y.Stmi<^

II. 23.

31. But one patent cannot iodude the separate machines as weU as the oonua-
naUon. BarreU etaLr, Hall et al. I. 207.

32. There must be several patents for several improvements of disdoa bu-
chines. lb.

33. For an improvement on an existing machine, will be limited to sn<a J"'
provement, which must be clearly described. If not it is void for amhipi.
If broader than the improvement it is void on other grounds. R-

34. For a machine, or an improvement on one, should not be for a aev<^
but for the machine or improvement lb.

35. They are to be construed liberally. Blanchardr. Spraffue, I 'W-

36. And will not be vitiated by a mistake in an expression, appeanng to

- . ._ . — ,,, ni...jun Rati

by another part of the specification. Ksiem v. J^e Schuj/B^

303.

37. Nor wiU it be invalid because the description contains matters ^^^^
proportion suggested by the mechanic employed to oonstmct the
Pennock et al v. Dialogue, I. 466. ^^

38. A patent for ** a new and useful improvement in the machine for '^
and cleaning grain j but described in the speclficatioa as conaistong ^
bination of several distinct improvements, was held to embrace no ^
combination, but each distinct improvement, so far as it was tne

INBBX* 831

of the patentee ; and that the descriptiye words were to be constraed ia con-
Bection with the specification. Pitts y. Whitman^ IL 189.

39. For an improvement on an existing machine, in which the new is dis-
tinguished from the old, will be g^od, although the description should not
be so clear as to enable a person skilled to constract the thing invented;
unless the defective description was intended to deceive. Lowell v. Lewis,
1. 131. '

40. Not void as nnder the former law, because the patentee claims more than
he has invented, bat so far as the invention goes he is protected, provided it
be clearly distinguishable from that claimed without right. Peterson et al, v.
Wooden, IL 116.

41. Maybe granted for an improvement in the jsruta/^^e of an existing ma-
chine. Evans v. Eaton, I. 68.

42. But for an improvement on a previously patented machine is invalid un-
less the improvement be substantially different in principle from the original
invention. Smith v. Pearce, II. l3.

43. Cannot be granted for an effect only ; but for an effect produced in a given
manner, or by a peculiar operation. Whittemore et aL v. Cutler , I. 40.

44. May be for a new and useful art ] but it must be practical and be explica-
ble and referable to something which may prove it to be useful. Evans v.
£aton, I. 68.

45. May be granted for the art of printing on the back of bank-notes. Kheass
V. 7%3 Schuylkill Bank, I. 303.

46. May be for a new mode or process to produce an old result ; but not for
an old process to produce a new result. Hower, Abbotty IL 99; Bean y.
SnuiUwoody II. 133.

47. May be for a mode or method of doing a thing; mode, when referred to
something permanent, means an engine or machine ; when to something
fugitive, a method, which may mean process, instrument, manner of effect-
ing the purpose. Whitney et al. v. EmmeU etal.l. 567.

48. For particular means or implements by which an article is produced, does
not give a monopoly in the sale of the product Bi^d v. Brown, n. 203 ;
Boyd v. McAlpin, IL. 277.

49. Will not be granted for an invention resting in mere theory or intellectual
motion, or uncertain experiments. Reed v. Cutter et al. II. 81.

50. For a principle or function simply, detached from machinery, will not be
valid. Blanchard v. Sprague, L 734.

51. For an abstract principle is void. Stone v. Sprague et aLlL 10; Wyeth et
al. V. Stone et al, II. 23.

52. " For cutting ice by any other process than human, is a claim for an ab-
stract principle. Wyeth et al* v. Stone et al, II. 23.

53. For all modes of communicating motion from one part of a machine to
another part would be void, as an attempt to patent an abstract principle.
Slone V. Sprague et dl. II. 10.

54. But for an improvement in the art of making nails by means of a machine
which cuts and heads the nails at one operation, is not the grant of an ab-

889 INBEX*

•traet principle, nor is it the gnmt of the diflferent parts ot usr m^ASat
but of an improrement applied to a pntctical use, effected by a comKntik
of rariona mechanical powen to produce a new resnlt. Gray Hair. Jam
ti aL I. 120.

55. The inrention mnst be naa in stmctore or material. Huddda r. Gra-
wooddaLU. 730.

56. Cannot be rastained for making an article, after a known method; bea«
the material oat of which it is made waa nerer applied to that pupose b^
fbre. Bat if the material be a new compound, a patent may be natuaei
for that. lb,

57. Door knobs having been made of glass, wood, brass, and otlier materia
the making them of potter's ware or porcelain will not sustain a pstnt I

58. Will not be aroided bj showing the prior existence of a thih^ simikr is
prindple to the thing inrented, unless it be proved that it was in ue. Pa-
nock ei al, V. Diciogtie, 1. 466 - 54S.

59. Under the law of 1793, is valid, though the inrention may have ben ioK
ibr years prior to the patent, if the patentee was the iSnt inrentor. (M^
Gootfyear v. Matthews, L 50.

60. To invalidate the plaintiff's patent it is not sufficient to show ^^^
patented was used prior to the plunttff 's applicatitm for a patent It shooU
be shown that it was prior to his discovery. TrtadwdL v. Blades^ I UI.

61. Date of will relate back to the time of discovery, it tbe defendsot ceebs
avoid it by showing the existence of the thing patented before the date o(
the patent. Dixon v. Moyer, I. 824.

62. For an invention will be defeated by the use of a machine, similiriBpria-
ciple, prior to the invention, although such use was by way of cxperiiDBrf
only to test its value. Watson v. Bladen, I. 510.

6S. Will not be invalidated by the use of his invention by others befcre ^
plication, and while he was practising upon It with a view to imp»« '^'
but the motive for delay is a question for the jury. Morritr.Bfobit^
1.448.

64. Will not be defeated by showing that modifications of form aad prop*^
tion were suggested by the mechanic employed to constnirt tbe bmcwb^
although such suggestions are set forth in the specification. Pessoc^^
Dialogue, I. 466 ; Watson v. Biaden, I. 610.

65. But if any of the essential parts and principles of the machine were t^
ed by another, the patent would be invalidated. Watson v. ^'^^.j'!L

66. Is not avoided on account of defect or concealment in the gpeaficww'
unless omitted or made with the intent to deceive the public. Wiv*''^
CSater, I. 28. ^

67. Defective may be surrendered, and a new one obtained. Sha» ▼• ^^'
64S. ^j

68. Reissued to have relation back to the emanation of the first, snd m
continuation of the first, the rights of the patentee most be »scert»^^
the law under which the original application was made, i*- ^^ajj

69. Fatentreissued with a corrected specification, need not contain a leo

INDEX. 833

the former patent was cancelled on account of a defectiTe specification. The

granting of the new patent is prima facie evidence that all the proofs were

regularly made, and were satisfactory. Hie P. ^ T, Railroad Co, y. Stimpmniy

II. 46.

70. A second patent cannot be taken out for the same inrention, until the first

is surrendered, repealed, or declared void, which may be after verdict against

it, or a vacation entered on sarrender ; bat a patentee cannot declare his

own patent void. Morris v. Huntington, I. 448.

71. Whether a new patent can be taken out when the patent has been declared
void under the 6th sec. of the Act of 1793 ? Qucere, lb,

72. On surrendering a patent, and taking out a new one, the latter should be
only for the unexpired time. 76.

73. An inventor cannot have two subsisfing valid patents at the same time for
the same invention.. The first, while unrepealed, is an estoppel to any sub-
sequent patent for the same inventions. Odiome v. Amesbtny NaU Factory,
I. 300.

74. But if he has obtained a patent, which is invalid, because too broad, he may
afterwards take out a patent for such parts of the machine as were actually
invented by him. Treadwell et al, v. Bladen, L 531.

76. A patent which is extended seven years by the board, must be treated as in
law for seven years longer ; so one which is further extended by Act of Ck>n-
gress ; and a patent extended in both of these ways must be considered as a
patent for twenty-eight years. Woodworik et al, in Equity, v. Edward* et
al. II. 610.

76. Granted on correct specifications has relation back, and for all legal pur-
poses covers the whole time from the emanation of the first patent which was
declared void for defective specification. SUnhf v. Whipple, II. 1 ; Smith
V. Petzroe, II. 13.

77. Signed by a person calling himself Acting Commissioner, is sufficient on
its face, in controversies between the patentee and third persons, as the law
recognizes such an appointment as lawful. Woodworik et al, v. Hall HaLJl,
495, 517.

78. Surrendered and renewed, operates as from the commencement of the ori-
ginal patent, except as to causes of action arising before the renewal. 26.

79. More technical objections to, are not to be encouraged, lb,

80. If a mistake occurs in an original patent, it cannot be corrected, so as to
avail without the assent or re-signature of the Secretary of State ; otherwise
if it occurs in a copy. Zb.

81. For an improvement on an invention already patented does not give the
inventor of the improvement a right to use, without license, the invention
previously patented. Woodworth «f a/, in Equity, v. Rogers et al, II. 625.

88. Hay be granted by special Act of Congress, and may operate retrospec-
tively, and give a patent for an invention in public use at the time of the
grant. Blanchard r, Sprague, L 734.

83. Bat whether the act would be constitutional if it gave a right to damages
for the previous use. Qumre, lb.

70*

834 iHBix.

t4. Tha act woald not 1m oonrtraed to act celroqpMliTelj, nkeH dnta

•trnctioii wm miaToadable. 76.
85. The grant of a pateot is not a bar to aa intarlociitofy iijiaictiwmfp?

of a prior patentee of the same thing, no notice hanog been giFentoi;

&tt patentee of the application on which the aecond patent was i^aued. U

9om T. Bomam, II 749.
86w For an invention redoeed to practice, and afberwarda patented, will pittL

over a patent granted to a bmtA Jidt snbaeqneat inTeotor, aldio^ dMiiisr

patent be istoed Ufon the former. FFoprfoodb r. Pather ettiLLZl,

PATENT ACTS. — CONSTBUCTION.
See Uax. Beed r. CnOer d ol* H 81.

PETITION.
Baggestion of, See EnDsircx ; Gbksxal Issitx.

PLEABINO.

1. There must be special pleas, or the general issne with notice of special lei-
ter. Root Y. Bail HaLn,&\S,

2. The defendant is permitted to proceed according to the 6tfa sec. (Act, M
but is not prohibited from proceeding in the usual manner so ^ ss itn^
his defence, except that special matter may not be given in etidenoeinfa
the general issue. Grcmt ei al, t. Roofmond elaLh 604.

3. Evidence of fraudulent intent in the addition or concealment is requu^^
for the puipose of vacating the patent lb.

4. Where a contract binds the defendant to pay ^re dollars for eschrtorewj
the special contract need not be declared on. The amonnt peccitrf wxj
recovered on the count for money had and reoeired. SianUy v. W^pp'i

PLEADING. — DECLARATION.

1. Ought always to show a title in the plaintiff, and that wfthfflW**'
tainty. Gray «f a/, v, James etal.l. 120. « ,

2. That is, that Ae grant Sn the form prescribed by lawifBsiww'.'*'
sufficient to declare that it was made out, bnt it must be avemd thsti
tested by the Prarident, sealed whh the seal of dw United 8tii>^ «"
rered. CuUing et at, ▼. Mjfen^ 1. 159.

3. Bnt he need not state that the stages prelimtinry to the iswisgrf*!**
were observed, lb. .

4. If an action be brought by tbe assignee of a paient-rfghti *"* ^lill
omission to state that the assignment has been duly leoofded, ad oO^
be cured by a verdict. DdbBon ▼. GampbeB, I. 661. ^

5. And if the declaration contain general terms snffieient to ^*"/'*^^|*
necessaiy to be proved, the omission to state it particulariy *i" •*

the verdict, lb. jBiettfce

6. And if the plaintiff's title depends upon the perf<jn»«we <^ *"*'^
must affirm their performance. Graif et al, r. JEnaes dd-1^^

INDBX. 835

7. If plaintiff his a patent for an inTentioo, and also one for an improrement
thereon, he mnst assert his entire right in an action for infiingement Ocue
V. 120c(^€(a/.II. 741.

8. And the improvement mnst he stated as an essential part of the plaintiff *s
right, if not the declaration is demanraUe. Petenm et al. ▼. Wooden, II.

lie.

9. Bat it is not necessary that the declaration shonld contain a deocripHon of
the thing patented, the profert of the letters-patent Tvlien produced makes
them a part of the declaration. Pitts v. Whitnanj 11. 189 ; Que t. Red{fidd,
Utai.TL 741.

10. Where the declaration describes the plaintiff's improrement in the words
of the patent, it is not necessary that the description as stated in the specifi-
cation should be set forth. If the defendant requires the specification in his
defence, he may hare it placed on the record by aslong oyer of it Gratf et
td, Y. JameM sC al, 1. 140.

11. But where it professes to set out the spedficatioii, the slightest Taxiaace is
fktal. Dfjon j, WhUe, I. 64«

12. The breach assigned roust be as broad as the right set forth in the declara-
tion, and granted by the patent. Cvtiing et al. t. Myen, I. 159.

13. An averment that the defendant has made the thing " in imitation of the
patent** is sufficient to sustain the action. Parker t. Haworth, II. 725.

14. The plaintiff need not set forth the act complained of as contrary to the
statute. lb.

15. In the case of an extended or renewed patent, the plaintiff will be restricted
to proof of infringement subsequent to the date of the extension, unless there
is an independent count for acts of infringement of the original patent East-
man r. Bodlfish, n. 72.

16. Where time is material, the plaintiff is strictly bound by the time specified
in the declaration. lb.

17. The general arerment of an extension in due form of law is sufficient, with-
out alleging a compliance with the prerequisites of the statutes. PhdlipB r.
Combetock, H. 724.

PLEADING.— OSNEBAL ISSUE.

1. Qauere, Whether under this plea the defendant can show that the machine
is useless and has been abandoned. Oray et al. y. Jamee etaL 1.120.

2. The defendant may giro in eyidence that the patentee is not the original
' inrentor at any time ; the time elapsed since the date of the patent is no bar

to this right, however long. Evane r. Ealon, I. 68.

3. Burden of proof on the plaintiff in a trial under the lOtii sec. of Act of 1793.
iSceorm, in Error, r. Barrett, I. 97.

PLEADING. — DEMUBBER.

1. The want of an aTerment that the patent was attested by the President, seal-
ed, and deliTcred, is ground of demurrer. CvUing etaLr. Myers, 1. 159.

896

INDEX.

5. It ifl no caiue of demnirer that neither die patent nor the dedantun sda
in what the improTement eonsisti. 2b.

3. It is not a canae for demurrer that the bill praying for an iDJiuctionia!
not been sworn to, no objection being mado for die want of the oaik ^
the time of entering die i4>pearanoe, and not taken until after an orda k
filing the evidence had been entered. Woodworth et al. in Eqiiitj, r, Eiasi
eiaLQ, 610.

4. On the hearing of a demnrrer the allegations of fieict in the bill most be tibs
aa true. 2b.

6. When a demnrrer for objections to the patent ia OTermled, the ropoide^
maj have leave to answer further npon the payment of costs ; andtbejatj
also contest the motion for a temporary injunction althon^ the timensseii
in the order for filing evidence has passed without being complied vidi, to
the hearing will proceed npon the facts stated in the bill, taken for eoifeiei
nnless it be shown by affidavit that the demurrer was not for deb/,iaii
bond of indemnity be filed. 2b,

6. A plea that the thing claimed to have been inveuted was in use and for ok
before the application for the patent is demurrable, unless the pleaaveic
abandonment, or that such sale or use was more than two years befoit tt
application. Root v. Ball aal.lL 513.

See Etibbhcx; Notice; Spboial Ma.ttss.

PRACTICE.

1. The U and 15 sects-of the Act of 1836, prescribes the rules which most gfr
vera on the trial of actions, and they are operative so far as they aie ippG^
ble, notwithstanding the patent may have been granted before the ptfsige<^
the Act of 1836. Medurg et cd. v. Kangdaatd H al, II. 105.

5. The defendants cannot put in new rebutting evidence to affidsritioiM ^J
the plaintiff in reply to those first offered by the defendants. Axa r. Bs*-
arddcd,!. 689.

8. The bill for an injunction need not be sworn to. Wbodworik e< ol in Equitf.
V. Edwcards Hoil»lL 610.

See Pleabiko.

PRIOBITY.

1. He who is first in time has a prior rig^t to the patent Lowe^f-^ '

2. The first inventor who has put the invention into practice, tod. bw»
entitled to a patent. A subsequent patentee, though sn original ffl^
may be defeated of his right upon proof of such prior invention prtiBJ"^

may be defeated of his right upon proof of
tice. Bedford y. Hunt etd,l.U%,
3. Of Invention.

See OaioiiTAL Iztteittob ; Pbiob Ikvxxtiok*

INDEX. 837

PRIOR KNOWLEDGE.
See Ubb.

PRIOR USB,

Or description in a pnblic work anterior to the sapposcd discovery, will defeat
a patent, althoogh each nse and description were unknown to the inventor.
Evan» T. EctUm^ L 343.

See NoTiOB.

PROOF.

Burden of, on a trial under the general issue under the lOCh sec, Act of 1793,
is on the plaintiff. Steaarm^ in Error, r. BarrtU^ I. 97.

PRINCIPLE.

1. Defined, see BamU r. Hcill^ 1. 207, 231. •

2. As applied to a machine, is the peculiar structure, or constituent parts. See
more on this subject Ih.

3. Bj the principles of a machine, (as these words are used in the statute,) is
not meant the original elementary principles of motion which philosophy and
science have discovered, but the modm operandi^ the peculiar device, or man-
ner of producing any given effect. WhUtemort d al. r. Cuttert I. 40.

4. The word principle, as applied to mechanics, is where two machines are made
to operate substantially in the same way. As ^here the lever, the screw,
the wheel, &c., are used to accomplbh certain purposes, the same powers
used in a difibrent form to do the same thing will not be a difference in prin-
ciple. Roberts etoLy. Ward tt al, IL 746.

5. Distinction between principle and form. Test — ascertain the result to be ob-
tained by the discovery, and whatever is essential to that object, independent
of the form and proportions of the thing used for that purpose, may generally,
if not universally, be considered as the principles of the invention. Tread'
wtUtial,Y, Bladen^ I. 531.

6. Where two machines are tuhstantiaUy the same, and operate in the same
manner to produce the same kind of result, they must be in principle the
same. Gray et <d, v. JaiMB ei at. I. 120.

7. That is called principle in a machine, which applies, modifies, or combines
mechanical powers, to produce a certain result. Smith v. Peareis, II. 13.

8. Differences in form or proportion only, makes no difference in the principle
of machioes. Brooks ei al. v. Bicknell et al. II. 118.

9. If the principle on which the machinery works is the same, and the effect it
Bhntlar in both, in contemplation of law the machines are identical, a change
of position of the operating power, or of the thing, is of no importance, lb,

10. If two machines be substantially the same, and operate in the same man-
ner, to produce the same result, though they differ in form, proportions
BOd atili^, they are the same in principle. Evans v. Eaton, 1. 193.

838 INDEX.

1 1. A patent ma/ be obtained for an improrement in the principle of moa^
ing machine. 2b.

12. A patent can in no case be for an effect onlj, but for an effect pfodoeediB
a giren manner, or by a peculiar operation. WhiUemore et at. r. CMff.l^tl

See IxPEOYBMBKT. Whitn^ el al. t. Emmett et al. 1. 567.

PROPORTION.

Suggestions of, made bj the mechanic employed to constmct the nucbisi,
will not defeat the patent Pennoch et al, r. Dialogue^ L 466.

SeeETiDBHcs; Plbadikqj Qbkeilajl Issue j Sfecifigitios.

PUBLIC SALE.

See Public Ubb.

PUBLIC USE,

Or sale, to deprive the inrentor of his right to a patent, most bewii^i^
knowledge and consent before application therefor. If after the applkttiss,
and before the grant, it will haye no effect Ryan etalr, Goodviaddl
725.

PUBLIC WORK.
A report of a committee of a Hose Company, althongh printed, is not suk i
public work within die meaning of the statute, as will defeat a patent P»
nock et cU. r. Dialogue^ I. i66.

See Eyidencb.

RE-CONSTRUCTION.
See AssiONEB.

RECORD.

1. ThjB Patent Act of 1836 requires the recording of three kind* of «««*
ments : 1st, an assignment of the whole patent ; 2d, of any nndifided F
thereof; 3d, a grant or conreyance of any exclusive right under twp*"^
within any specified part of the U. States. Brooks ▼. Bi/am rf a/. 11. 16 .
PittM T. Whitman, 11. 189. ^

2. The recording within three months is merely directory; sny ^^'^
recording will pass the title, except as to intermediate ftofwjWcpuicw^
without notice. 26.

3. License need not be recorded, lb. ^^

4. Of proceedings under a rule to show cause. See Scire Facias and&f^
Wood ^ Brundage^ L 438.

REISSUE.
1, The second patent is to be considered as having relation to the

-H

umisx. 839

of the original patent, and not as having been issued on new application.
Shaio T. Cooper^ L 643.
2. If a patent has been extended by 'the Board, and further extended bj Act
of Congress for seren years, the patent is to bo regarded as one for twentj-
eight years; and if snnendeied for defect in the specification, and a new
patent issaes, it mast be for twenty-eight years. Woodworih et al, in Equity,
T. JSdwarda etal.lL 610.

3. When the reissue of a patent surrendered is void, perhaps the surrender
itself becomes Toid, and the original patent remains in force. Woodworth et
al. T. EaU etain. 495.

4. Operates as from the commencement of the original patent, except as to
causes of action arising before renewaL lb*

5. If a reissued patent be void for any cause connected with the acts of public
officers, it is questionable whether the original patent must not be considered
m force, until its term expires, lb. 495 - 517.

6. In a reissued patent, the patentee need not claim in the corrected specifica-
tion all things claimed in the original patent, but may retain whatever he
deems proper. Ccarverr, Braintree Manuf, Cb. U. 141.

7. Whether a reissued patent, after surrender of a defective one, is substantial-
ly for a different invention, is a question for the jury and not for the Court.
Stimpaon v. Westchester R. R, Co. U. 335.

8. And it will be presumed to be for the same invention. Woodworth et al. v.
Edwards et oZ. IL 61 0 ; Alien v. Blunt et ad. 11. 288.

9. And it will be presumed to be for a defect happening from inadvertence or
mistake, until the contrary be shown. Ih.

10. The fact of granting the renewed patent closes all inquiry into the exist*
ence of inadvertence, accident, and mistake, and leaves only open the ques-
tion of fraud for the jury. Stimpaon v. Westdiester K R. Co. II. 335.

11. The use of an invention, between the date of application originally, and
the date of a reissued patent, is not such a use as will entitle the person
using to the protection of the 7th section of the Act of 1839. 76.

12. May be granted by the Board of Commissioners at any time during an ex-
tended term, as well as before the expiration of the term for which the ori-
ginal patent was granted. Wilson v. Rousseau^ II. 872.

13. The presumption that a reissued patent is for the same invention as the
former, and that it was to correct a mistake and inadvertence, may be re-
butted by evidence. Alien v. Blunt et al. JL 530.

RENEWAL.

1. The patentee being dead, the patent may be renewed on application of the
admmistrator. Brooks et al. v. BickneU et al. IE. 118.

2. An assignee of a part of a patent has no interest in the jenewal unless
the assignment is special, and clearly showing an intention to that effect.
PMipsr. Cbmstock, II. 724.

3. An interest in a renewed patent, will not pass by an ordinary assignment,
before renewal. Case v. Redfidd et oZ. IL 741.

840 IHDEX.

4. But matt bo specially aisigned. Ih.

6. It will pass under the words, **for which letten-patent woe wwtjk

gimntad for said improTenMBt." Jb,
6. The Boaid on whose jadg^tent the renewal U granted, majbend toifi

judicially. Soch Jndgment is net coadosire of the right, hot oondoaTe i

certain facts, withoat which the renewal conld not have been gatid

Bnoksetal, r. BichuU el al. U. 118.

See Biissus.

REPAIRS.
See Abbiokbks.

REPAIRS ON A MACHINE.

See AssiaNKBS.

REPEAL OF PATENT.
See FAX.8S Sugosstiox.

RULE TO SHOW CAUSE.
See ScisB Faoias.

SALE,

1 . To inralidate a patent, must have been more than two "jun before tb 9-
plication. Boot y, BaU et aL II. 513.

2. Of the materials of a patented machine, by a sheriff, on an execationagii^
the owner, is not such a sale as subjects the sheriff to an actioaforaB lo*
fringement Sawin et a/, r. Guild, L 47.

3. The sale of the prwiuct of a patented machine, is not an infriflgeo^
Boyd T. McMpin, II. 277.

SCHEDULE.
See Specification.

SCIRE FACIAS,

1. And proceedings thereon, effect of rule to show cause, &c. Exf^
T. Brundage, I. 438.

2. Under the 10th section of the Act of 1793, the proceedings to iep»l«P*
tent, are in the nature of a eein facias at common law. Stearns, in Jsm : *
Barren, I. 97. .

3. On a judgment rendered in such suit, error lies to the Circoit Coot ^

4. An order on a rule to show cause why a tcire Jbcias should not i»b8
peal a patent. Is merely a prellminaiy proceeding, and aoes not «»"
the question oftheralidity of a patent. DdanoY.Seott, 1-700,

6. The United States are not a party to the suit in any sense, to "'flJ;!^
tent; and the Court will not permit them to be substitated as ?*•"*■
the petidoner. Woodr. WUUamt, L 717.

INBSX. 841

SPECIAL ACTS.

1 . Congress may, in their discretion, grant a patent for any length of time, and
under whateyer circumstances they nay determine, and even to act r etr
spectiYely, and for an invention already in pnUic nse. Blanchard r. Spraguej
I. 734.

2. For the relief of Oliver Evans, construed. 1. 193, 243, 336, 417.

SPECIAL MATTEB.
See NoTiCB.

SPECIFICATION,

1. Oonstitntes a part of the patent and they must be construed together. Hogg
et cU. V. Emerson, II. 655.

2. And it is part of the patent so far as it is a description of the machine bnt
no further. Evans v. Eato^, I. 68.

3. It need not be set out in the declaration, but if the defendant requires it in
his defence he may crave oyer of it and have it placed on the record. Gray
et al. V. James et al. 1. 140 -, Cutting et a/, v. Myers, 1. 159.

4. The specification for patents extended either by the Board or by act of Con-
gress is the original specification. Wbodv?orth et al. in Equity v. Edwards et

al. n. 610.

See EviDBNCB ; Gbnbbal Isbub.

See Stdlivan v. Redfidd, I. 477.

SPECIFICATION— DESCRIPTION.

1. The invention must be truly and fhlly described in the specification. Park
T.Litdeetal.l. 17.

2. And with reasonable certainty or the patent will be void. LoumU v. Lewisy
1. 131 J Hooey v. Stevens, II. 479 ; Langdon et al.Y.De Groot et al. 1. 433.

3. Whether the claim is for a new combination of old parts and things, or a
new invention of new parts, if not intelligible as to which, the patent may be
void for uncertainty. Hovty v. Stevens, II. 479.

4. But a mistake in an expression, proved to be so by other parts of the speci-
fication, will not vititate the patent. Kneass v. The SdmyUdU Bank, 1. 303.

5. And the description may be explained and enlarged by drawings annexed
thereto, although they are not referred to. Washburn et al. v. Gould, XL, 206.

6. And an ambiguity in the description may be explained by affidavit annexed
thereto. Pettibone v. Derringer, 1. 152.

7. Need not describe what is in common nse and well known. Kneass r. The
SckuyUaUBank,l.SOS.

8. It is not sufficient to invalidate a patent that the specification is materially
defective, unless the patentee intended by concealment of parts of the ma-
chine to deceive ; where practical mechanics are enabled to supply any omis-
sions in the specification such an intention will not be presumed. Gray et
d.Y. James et al. 1. 120 ; WhUtemore v. Cutter, L 28.

TOL. II. F. C. 71

842 INDEX.

9. Whether the specification has disclosed the whole truth relatiTe to t!ie£-
Tention or discovery is for the jar/. Beui^en t. Kcmown eial.Ll.

10. A patentee who uses certain words in the specification of a RiTna^
patent, which are omitted in the corrected one, are not estopped l^iss
words. Alien r. BUud et a/, n. 530.

11. Where the patent has heen granted for an improrement on aa exki:r
machine the specification mnst state in full, clear, and exact terms, in^^
the improvement consists, or the plaintiff cannot recover. Su!litmT.&^
JieU, 1. 477 i Evan$ v. ffettkk, L 166 -417.

12. And it will not be sufficient to show it on the trial by exhibiting tbeiimt
tion. Dixon v. AToyer, I. 824.

13. And it must show what tLc nature of the invention was, upon vhkk ^
improvement is made. Isaacs v. Co(^f)er et ai. I. 332.

14. And if of an improvement of a machine it must be so clear a^ Xota^'-
person dolled in the construction of machine^ to build one. Brah^^^
Bidcndl et al. U. 118 ; Lowell v. Lewis, I. 131.,

15. In describing the improvement of a machine in use and well kiova. i
is not necessary to state in detail the structure of the entire and impn?^
machine. It is only necessary to describe the improvement bj showii^^
parts of which it consists, and the effects which it produces. Brwh^at, r.
BidbieadaZ.n.116.

16. It is not necessary to say whether certain parts should be msde of wooden
metal. i(.

17. Although an inventor is bound to describe in what his inventioa coi^
and what his particular claim is, yet he is not held to any predse fora i
words, if their import can be clearly ascertained by fair inteijwttiikffl
though the expression may be inaccurate. Wyelh et al. v. Stone d ai D ^s.

18. But it must be capable of application by the means pointed out, is t^
specification, drawing, model, and the old machine. If tbis be done » «
to be intelligible to persons skilled in the subject, it is sufficient. And it ^
not necessary that tiie disclosure should be such as to enable the pom ^
use the invention after the patent has expired, as in England, rrusjf
a/. V. jETfiimett et al, I. 567.

19. And if for a compound it must be in such full, clear, and exact tem^«
to enable any one skilled in the art to which it pertains, to ^^^^.^
use the invention, without making any experiments of bis own.
UnderhUl et al. II. 5^.

20. If the patent be for a new composition of matter, and no lelatife^^f"'
tion of the ingredients be given, or they are stated so vaguely ih»^ °^
oottld use the invention without first ascertaining, by experiment, tie e '
proportion required to produce the result, it would be the duty of tw

to declare the patent void. lb. . ^

21. But the sufficiency of description in cases where any of tbe ^"S'^
not always possess exactly the same properties in the same degree w^
rally a question of fact for tbe jury. tb. .^ ^

22. The specification of a patent for a mode of making brick deecn

INDEX. 843

process to be to mix pnlTerized anthracite coal with the day before moulds
ing^ it, in certain proportions, varying, however, within defined limits with
the qaality of the clay nsed, this was held not to be such vagueness and un-
certainty as to justify the Court in declaring the patent void. 2b,

23. The Court should have left it to the jury to find upon the evidence of per-
sons skilled in the art, whether the description was clear and exact enough
to enable such persons to compound and use the invention, lb,

24. It is not only necessary to describe the thing patented, but to distinguish
what part of it, or what combination or what improvement, is new ; and this
must be done in clear, certain, and intelligible terms, although not required
to be in technical language, or with so great accuracy as was formerly ex-
acted, yet it must be with reasonable certainty and clearness. This may be
done in the summary, or with that in connection with other parts of the
specification, referred to either in terms or by implication, and in such case
they are to be taken as a part of the summary for this purpose. Havey t.
Stevens, II. 479 ; Smith v. Peorce, II. 13.

25. In this case the summary appeared to claim a traverse motion of a part of
the grinder, in combination with a rotary one, so as to bring up the knife to
the stone steadily, though spiral in form ; on referring to other parts of the
specification, it still seemed to be the combination of those two motions, and
it was held that such a combination, with the mode of effecting it, was a
legal subject of a patent. lb.

26. But it being conceded that this was not original, the plaintiff was not
allowed to claim certain parts of the machine which he had not distinguished
in any portion of the specification, as the new improvement, or not with rea-
sonable certainty. lb.

27. It is not enough to describe such part, but he most state it to be claimed
as new. 2b,

28. So if he claims the whole, either in parts or in combination, he must state
that distinctly, lb,

29. And if the improvement meant to be claimed as neT^is not distinguished
from the rest, the only mode of obviating the difficulty is by a new patent on
an amended specification. 2b.

30. Although the defect may have arisen from inadvertence and not with the
design of deceiving the public. Grant et al, v. Baymond et al. I. 604.

31. If the patent be for an improvement, the specification should describe tiie
thing in use, that it may be known in what the improvement consists. Sul-
livan V. Heel/Uidf L 477 ; Dixon v. Moyer, 1. 324.

82. It is not sufficient to show it by exhibiting tiie invention on the trial.
Dixon V. Moyer, I. 324 ; Evans v. Eaton, I. 336.

33. The merely describing in the specification of the parts of the rolling pro-
cess and the modus operandi, does not make them part of the thing granted.
Kmoss v. The SchuyUdU Bank, I. 303.

34. Bat describing a mode of " communicating motion from the reed to the
yard beam," will limit the claim to the particular mode, although the claim
in terms embraced more. Stone v. Sprague et al. II. 10.

844 DTDSX.

35. When defective descriptton win not riiuite ft patent for an impiOTemeBi
See LouftH t. LewUy I. 131.

See COVCXJLLKKITT.

SPECIFICATION — CLAM.

1. Most not eontftin claim of more tliaa the inTentlon; Toid. Bakj^.

WhippU, XL 1.
S. Most not be of more than the patmtee has invented. R,
S. When the spedfieation deecribei one mode of accompUahing spstialir

result, bat the claim embraoae all modes, tke patent is void. Sttmr.Spofn

€Ca/. 11.10.

4. For a method of cntting ioe bj means of an apparatnt woiied bj ujolk
power than baman, is void, being a datm for an abstract piindph. Bot t
daim for the application of the principle hy means of two mschiBes d^
scribed is good ; provided a disdaimer be dnly entered as to the ^xm-

5. If the patentee ckuras more than he has invented, the pstentii not Tvi
bat, nnder the 9th section of Sut. 3d March, 1837, is good for whst be Im
6oNd JSde invented, provided it be definitelj described, and distisfiiM
from the rest of the thing patented. Pefcnoa M a/, v. Weoden, H W^

6. The inventor of a new compound is not limited to the preeife n^ieob
set ont ; bat if the object may be acoompliahed by Oie snbtdtotioii «f •>!»
tiiat have never been so used, he mi^ extend his daim to tfaem tiho, fy»
ct al. V. Goodwin sf al. I. 725.

7. Annexed to a reissued patent need not contain a daim for sll ^iaop ^
were claimed in the original patent, bat the patentee majr retsin wbitererk
thinks proper. Carver v. Braintree Manufacturing Cb. II. 141.

SPECIFICATION. — CONSTBUCTION.

1 . Patents are entitled to a liberal construction. Blanchard v. Sfragut^ I ^H

2. The Courts will give a libeml construction to the language of specifidtioB
and will in all cases by taking the whole together, adopt that io^^^^
which will give the fullest eflfect to the nature and extent of the cWm. *»
e( oL V. Goodwin et al. I. 725.

3. Should be construed fairly and liberally and not subjected to any ortrw«
and critical refinements. Ames v. Howard et al. I. 689.

4. If the Court can clearly see the nature and extent of the claim ^^'^^^
perfectly and inartificially expressed, the patent is good ; bat if it ^""^
seen without resorting to conjectnre, the patent is void. R.

6. It is the duty of the Court rather than the jury to constme 4e Itfg^
used in a specification if no parol evidence is offered in explanation, or bo
which is contradictory. Davoll et al. v. Brown^ II- 303. . ^

6. The construction should be liberal for the patentees, bnt Ao ^**^
must be so certain as to be understood by those acquainted with tw '"r*
matter, lb.

INDEX. 845

7. Bat the whole of the specification as well as the summary and drawings are
to he looked to in determining the invention. 26.

8. In coming to a resnlt practical views rather than snbtle distinctions must
govern. 76.

9. The word " about " in the specification of Davis's patent for improvement
in the monld-board of a plough, rejected for oncertainty. Davis t. PaltMr,
L518.

10. The meaning of technical words of art nsed in a patent as well as the
surrounding circumstances which may materially affect their meaning are
to be interpreted by the jury. Washburn et at, v. ChM^ II. 206.

11. Of a patent for a saw set, describing it as having a hammer of iron, with
a sted point, and says nothing of any other material or equivalent, and the
evidence was that a hammer, mtirdy of steel, was first tried and abandoned by
the patentee, before application for a' patent ; it was held to be doubtful
whether saw sets made by the defendant with hammers entirely of steel, was
a violation. Aiken v. Bemis, II. 644.

12. Where the plaintiff claimed the " construction and use of an endless apron
divided into troughs and cells in a machine for cleaning grain, operating
substantially in the way described," It was held that the claim was for a
combination of the endless apron with the machine for cleaning grain. Pitts
V. Whitman, II. 189.

13. Where the plaintiff, in a patent for ** a new and useful improvement in the
ribs of the cotton gin," claimed the increasing the space between the upper
and lower surface of the rib either " by making the ribs thicker at that part,
or by a fork or by any other variation of the particular form," it was held
that the claim was sufficiently accurate as matter of law, and it was not
necessary to describe all possible modes by which the rib might be varied.
Carver v. Braintree Manufacturing Co. II. 141.

14. Where the original patent was for a "new and useful improvement in the
ribs of saw gins for ginning cotton," and the reissued patent was for a '^ new
and useful invention in the manner of forming the ribs of saw gins for gin-
ning cotton," and in the reissued patent was claimed, in addition to the
thickness of the rib, the sloping up so as to leave no shoulder ; it was held
that the claim in the reissued patent was not for two distinct improvements,
but that the same thing was patented in both patents. 76.

15. A claim generally for "communicating motion from the reed to the yard
beam " will be limited to the particular mode described. Stone v. Sprague
et al. II. 10.

16. Wood worth's patent held to bo for an improved machine. Washburn etal.
V. Gould, U. 206.

For CoNSTBUOTioN OF Claim, see Winans v. Boston and Providence Rail-
road Co, II. 136 ; Prouty et al, v. Buggies, II. 92.

See Sfecifioation ; Claim.

STATEMENT OF FACTS.
See Wbit ov Ebbob.
71*

846

STATUTES — CONSTRUCTION OF.

1. To pronole tho piogiew of the useful arte b the interett and policj cf
ereiy enlightened gOTcrnment The Patent Laws of the United Suies ir
founded thereon ; the granl of a patent is the reward Btipalated for tbe id-
vantages derired hj the pahlic for the exertions of indindasls, aaiiiiottid-
ed as a stimnlns to those exertions. These laws ongfat to be coDstnied k
the spirit in which they weienade. Greadetal. r.UaymtndtiaL 1. 90i

5. The tnie meaning of the words of die patent law, '' not known oriMdlx-
fore the application,*' is not known or nsed bj the pnblic bcfors tk tppUa-
lion. Pmntek ec aZ. r. Dhhgwe, I. 54S.

8. The progress of sdenoe and the nsef nl arts wonld he matsrisU j retiried if
an inventor were permitted to hold hack the seeret of his ioTSstion ratilik
danger of eompetitiott should force him to obtain the ezdnars right, ind
would be a prsroinm to those who ihould be least prompt to connoiiaie
their discoTeries. lb.

4. Whether Congress can constitntionally decide the fact, that a paiticslir a-
dividoal is an inventor, so as to preclude judicial inqntij into the fxiffa^
nf the inventioii -- (JMcns. Evasu v. Eaton, I. 243.

9. The Act for the relief of Oliver Evans does not preclude such mqvrj. &

6. The provisions of the 6th section of the Act of 2l8t Fehrosry, l«tS, tic ii-
tended lo declare the defence that shall be available to apartychsigcdl?*
patentee with a violation of his right Ddano r. Scott, 1. 700.

7. The provisions of the lOdi section of the same act mpplj oal/ to caKf n
which a patent has been obtained by fraud, surreptitionsly, or by ftiie wr
gestions, and are intended to protect the public from fanpoiitioB. A-

5. Constittttionalitjr.

See Damaobb ; Ekglisb STATims.

surrend]6;r.

1. A patent, invalid bj reason of a defective specification, msj U tantoM
and a new patent will be granted upon a corrected specification. Sm t.
Pearce et al, II. 13.

2. Although the law does not in terms authorize a new patent hi the »« <» *
mistake innocentlj made by the patentee, yet to employ the meani oecessiiT
to the correction of inadvertent error, by issuing a new patent, snd thMgJt"
complete effect to its object and intention, cannot be a departure fi«a
spirit and character of the act. Grant et al. v. Saymond dait^^

3. The Circuit Court of the Southern District of New Tork hsriDg*a'*f ^
that under the Act of 1793, a patent might be surrendered for « defetw*-
ing from inadvertence and mistake, and a new patent isstied, with *'

ed specification, upon which decision the Department of State bad acw
other cases, the Supreme Court declined to distnib the practice arisingtw**'
upon, although the question was not free from difficulty. ^' ^

4. In such case the new patent has relation back to the emanation of ^
and the application may be considered as appended to the original app
tion. Grant etoLy. Baymond e< a/. L 604 j Shaw v. Coop^^ ^' ^'

•

IKDBX. 847

5. The second patent being ft continuation of the first, the rights of the pft-
tentee mast be ascertained bj the law nnder which the original application
"waa made. Shaw r. Cooper ^ I. 643.

6. Although a patent reissued, operates as from the commencement of the ori-
g:inal patent, it cannot affect causes of action arising before reissne. Wood'
worth a at, T. Hall et al, II. 495 -517.

7. Where the renewal of a patent surrendered is void, perhaps the surrender
itself becomes also Toid, and the original patent remains in force. lb.

8. By patentee will not affect the rights of assignees, unless they consent to
the surrender. Woodworth et al. r. Stone, II. 296.

See Morris t. Huntitiffton, 1. 448.

SUICPRISE.

1. It is the practice to postpone or continue the cause in all cases of surprise
at the trial, when dearly made out, if moved for. Ames t. Howard etal.L
689.

See Practice.

2. But if the party elects to go on without motion for postponement or con-
tinuance, relying upon other matters, he is understood to waive the surprise,
and if unsuccessful with the jury, cannot have a new trial on this ground.
lb.

TERMS — CONSTRUCTION OF.

1. The words, '* not known or used before the application," mean " not known
or used btf the public before the application." Permock et al. t. Dialogue, I.
542.

2. The words, '* any newly invente'^ machine, manufacture, or composition of
matter,** in the 7th section of the Act of 1839, have the same meaning $b
<*lnTentton,'* or "thing patented." McClurg et al, r. Kingsland et aLH.
105.

TECHNICAL OBJECTIONS.

To letters-patent are not to be encouraged, or construed liberally for him mak-
ing them. Woodworth et al. t. Hall et al, 11. 495.

TECHNICAL TERMS.
To be interpreted by the jury. Washburn etoLy. Goulds IL 206.

TREBLE DAMAGES.

The jury will find the actual damages, which the Court will treble. Gray et
d, T. James et al, I. 120.

UNCERTAINTY.

In the description of the thing invented, will avoid a patent. Hovey y. Strnfens^
n. 479.

848 IHBSZ.

USE.

I. The use, bj the public, of an inTention, before application for a pateat, iri
aroid the patent Shaw r. Cooper, I. 643.

S. The trae constmction of the law is, that the first inrentor cannot acqmn i
good title to a patent if he snffen the inTention to go into nse, or to be poli-
licallj sold for nse, before he makes application for a patent Pemod d d
T. Dudoffue, I. 54S.

3. What nse by the public is considered sufficient for this purpose. Skm r.
Gm^mt, L643.

4. Such use, to defeat the patent, must be by the permission of tfae inTestor,
before he obtidns a patent, without claim or notice of an intention. Paati
€t al. T. Dialogue, I. 466 - 542. *

5. But if the knowledge on the part of the pablic be acquired throagh s peisa
who surreptitiously obtained it, the right of the inrentor will not be tSM
thereby ; and no presumption of abandonment can arise under SQch areuB*
stances, although an acquiescence in such nae will lay the foondstioBfiv
such presumption; and his right will only be secured by giving puUkootice
that he was the iuTcntor, and of his intention to apply for a patent; odier-
wise his acquiescence will be an abandonment Shaw t. Cooper, 1. 643,

6. There can be no presumption of acquiescence where the inTeotor bis m
knowledge of the use. But this knowledge maj be presumed firom ditsn-
stances. This will be a fact for the jury. If the inrentor do not iffloedi-
ately after this notice assert his right it is lost forerer. R.

7. Ko presumption of abandonment arises by a nse after the gnat flf the P^
tent, however long continued. 26.

8. A strict construction of the Act of Congress, as it regards the poUie of^ "
not only required by its letter and spirit, but also by sound policy. B.

9. It is not sufficient to prore, in order to defeat the plaintiff's patent, tb( ^
principle of his inrention was known before, but it is necessaiy to prow ilw
that it was in use. Pennoek et al. t. Dialogue, I. 466 - 54S.

10. The terms, " not known or used by others before his or (heir (fiW'WT
thereof," merely indicates that die use should be by some other penoa or
persons than the patentee. Reed r. Cutter el al. II. 81.

II. The first section of the Act of 1793, construed in connection withtheodjff
secttoDs, means that the inyention should not be known orxaedu^^
rention of any other person than the patentee, before the appUcstioD. ivr

• rit T. Huntington, 1. 448.
12. If a person knowing of an inrention, proceeds to put it in use, the isvealtr
not having secured his right by patent, the latter ought not to be posutf^
to take away that which was previously lawfully made. i&
i/i}ii^^p 13- But if he was practising his invention wiA a view of improring It, be cflg»

not to be prejudiced thereby, lb. .

14. But the intent of dehiy to take out a patent should always be labmitt^^
a jury, and whether allowing it to be used shall not be considered so ibtf*
donment lb. .

15. The use of a machine as an experiment to test its value, is ^vvag^f^^

INDEX. 849

the meaning of the 6th section of the Patent Act, and will defeat a patent
for a fiubeeqaent invention. WaiMn t. Bladen, L 510.

16. It is unimportant whether the experiment or use of the thing mrented and
patented, was first made by the inventor or by any other person. Pennodb
et al. y. Dialogue^ I. 466 - 542.

17. It is a good defence to a bill for injunction, that prior to the granting of
the patent, the inventor allowed the invention to go into pablic use, without
objection. Wyeih et al. v. Stone et al. II. S3.

18. But should be clearly proved that such use was with his knowledge and
consent lb. 0

19. A mere use, either by himself for experiment, or by his neighbors as an in-
dulgence for temporary purposes, will not defeat his right. 76.

SO. The prior knowledge and use of an invention which will avoid a patent,
relates to the time of the application, and not the discovery. But such use
must be with the privity of the patentee, and not private, in fraud of the pa^
tent. WKiineji et al, v. Emmet et al. I. 567.

21. If the application is made within a reasonable time after discovery, no in-
termediate use will affect the patent 25.

22. An unmolested and notorious use of the invention prior to the appUcation,
gives the user the right to continue it after the granting of the patent, with-
out liability, under the 7th section of the Act of 1839. McClwrg etoLr.
Kingdand etal.lL 105.

23. The use of an invention before the application for a patent, to entitle it to
the protection of the 7th section of the Act of 1839, must be with the know-
ledge and consent of the patentee. Peanon v. The Ea^ Screw Co. IL 268.

24. The use of a machine constructed by another, before the application for a
patent, will not be protected by the 7th section of the Act of 1839, if copied
from the patentee's invention, without his consent Eov^ v. Stevens, U.
479.

25. The 7th section of the Act of 1839, refers to use before the original appli-
cation. Stimpson v. Wettchefter R. Road, II. 335.

26. The use of an invention between the date of the original application for a
patent and the date of a reissued patent, will not defeat the action. lb.

27. The use of an invention between the date of the original application, and
the date of the application for a surrender and reissue, is not snch a use as
will entitle the person using to the protection of the 7th section of the Act
of 1839. lb.

28. To defeat a subsequent patent, it is not necessary to prove that the same
thing had been previously in general use. Any actaal use, however limited,
is sufficient Bedfbrd v. Eimt et al. 1. 148.

29. If the defendant makee the patented article, but no uter shown, the plaintiff
will be entitled to nominal damages. Whittemore r. Cutter^ I. 28.

30. Of the patented article for years anterior to the patent, does not invalidate
it, if the patentee was the original inventor. [Quarc] Goodyear v. Mat-
thewSf I. 50.

31. The intention of an inventor to use an improvement, in the machine pa-

850 IKDEX.

tentad by him, not ezpreised in or pointed out by bis spedfiettioB, nor ued
with his invention, will not inralidate the patent of a sabseqntntinTcstorof
the lame improTement TnadweU el al. r. Biodoi, L 5Sl.

See Iktbittos; Koticx.
General Use. 8ee AnAHDomfxirT.
Pohlic ITm. See ABAKDomiBRT.

USEFUL.
See Utility. ^

UTILITY.

1. An invention mnst be nsefol or the patent will be void. LengdMr-DtG^

el aL I. 433.
% It most be of lome ntflity. Stanly r. Whipple, 11. 1.

3. The meaning of the word useful, nnder the Act of Congitsi, expUind*
KneassY. The Scku^BciU Bank, 1.30S] Whitney el alT.EmmdidaLl ^'

4. By useful is meant not an invention in all cases superior to the model tiffl
in use, bnt useful in contradistinction to frivolous and nuschisTOiii. X^
T. Zeirts, 1. 131.

5. An invention is useful that may be applied to some beneficisl parpoft,a
contradistinction to that which is injurious to the moral health or good oniff
of society. Bedford v. Hwni el all. 148.

6. It need not be of such general utility as to supersede other inreotions is

practice to accomplish the same purpose. 2b.

7. Whether the invention is useful, is to be decided by the jozy. Piai^'^
tUelal, 1,17.

B. Whether it be a question of fact for the jury or of law for the Court, [qn^l
But if on the plaintiff, on showing it to be useless, the Court will so dired
the jury. Langdon y. DeGroot el al. I €SS.

9. An invention of an ornamental mode of putting up thread, which g»^«^
additional value, is not useful within the mining of the statute. R-

10. The want of utility may be good cause for not granting a patent, bat
ibr setting it aside. Whitnejf etaLr, Emmdt etoLl' 567.

VERDICT.

1. Bepugnant or uncertain in a material pouit is void. SleeeUy m >

Barrett, I. 97. ^

a. The refusal of a Court to amend a verdict, cannot be assigned for «n|^

3. Will cure the omission to state, in case of an assignment, thst the i«P*
ment has been duly recorded. DobmmY. CampbeU,!.^^* , ^

4. Where a fact must necessarily have been proved at the trial to ^"^^^^
verdict, and the declaration omits to state it, the defect is ^^'^J^^j*^ j^^.
if the general terms of the declaration are sufficient to comprehead tliep
lb.

See Btidbvcb.

DTDBX. 851

VOIR DIRE.
Bee W1THS8S.

WITNESSES.

1 . The Patent Act contemplates two classes of persons as pecnliariy appropriate
witnesses in Patent Cases : 1st. Practical mechanics, to determine the suf-
ficiency of the specification as to the mode of constnicting anfl using the
patent 2d. Scientific mechanics, to determine whether the patented thing
is new in its structare and mode of operation, or a mere change of equir-
aients. Alien v. Blunt et al. U. 530.

2. Interest in a witness short of that which wonld exclude him, on the ground
of incompetency, how far it should weigh. Evans y. Hettick^ 1. 166, 417.

8. A witness who uses a machine resembling that of the plaintiff, is not an in*
competent witness for the defendant Evans y. Eaton, I. 68.

4. A prior patentee of an invention alleged to be the same in principle with the
plaintiff, is a competent witness to prove the priority of his invention. Treadr
weU et al. v. Bladen, L 531 .

5. A person having an interest only in the question, and not in the event of
the suit, is a competent witness. Evans v. EaUmy I. 336.

6. Is not incompetent because he is sued in another action for an infringement
of the same patent Evans v. Heitick, I. 166.

7. Who had in use a machine like the defendant's, and who, with other per-
sons, had been sued in similar actions, and who had agreed to contribute
to a common fund, to defray the expenses of witnesses, but not any part of
the damages and costs, had not such an interest in the cause as to render
him incompetent to testify for defendant 76. 166 - 417.

8. If sworn on the voir dire, no other evidence to prove him incompetent can be
given. Evans v. Eaton, I. 68.

9. But if it should afterwards appear in any part of his examination that he was
incompetent, his testimony will be set aside. lb,

10. The Court will not permit the plaintiff to put a question to a witness^
called by him to rebut the defendant's testimony, which is not intended to
contradict or discredit the defendant's witnesses, and which is not rendered
necessary by defendant's testimony. lb,

11. Nor though counsel profess that it is for that object, if the Court think it
cannot have that effect lb.

12. Namei of the witnesses to prove a prior knowledge and use of the thing
patented, need not be given in the notice required by the 15th section of
the Act of 1836. Wiiton v. The Railroads, II. 641.

10, May be asked generally if he knew of a use of the improvement by any
person, prior to the application of the patentee, although there be persons
named in the notice of special matter as having knowledge of a use. TVecuf-
imU et al. V. Biaden, I. 531.

14. Allowed to testify as to declarations of the patentee, at. a particular time,
that he had made an invention then described. Evans v, Hettick^ L 166.

UTDIX.

I if J. 8. {not the defendant) hmd ^>plied to the pluDliff for
improved hopper-bo;, uid had offered to pi; Tar it, ii M
J. S. had ■ hopperboj of an j kiad. Jb.
la collateral qiieslian,barely to teithii credibilitj. Odimt

right lo ctow-examine an; iritnesi except lo fadi old m-
Kted with the matter* stated in the direct exuaiuiiao.
■Olid Co, T. Sfinipon, IL 16.

izamioe him on other nutters, he miut do so b; mitis;
ro, and calling him at Bach in ■sabseqnentptogrcutfile

dngls witneu not lufficient to outweigh the oub of itia
ion of originaht; of inieatioa, or a lull fi>r an iajiucaoii.
man, LL 397.

n to the compelenc; or credibilit; of aviuec(tliiil>ea
[enugement if he ij lane at the tiiae of giiing hii iNtimiii;.
1. 417.

See DiFOBiTioM.

W0BD8.
>ee TiKMs.

WOHKMES.
X!iDplo;ed b; partiea iDfringing the pateal, to make parta of Si9 piteotMiiD'
cle, not liable. Ddano t. Scott, I. TOO.

WHIT OF ERROR.
1. Willliafrom Circuit Court to review jtidgmont in (am /naoi. S»»,i»

error, t. Bamtt, L S7.
S. When a case is sent to the Supreme Court, under the diicretion am**"*

upoi>lhe Coort below b; the 17th ecc-of the Act of 1836, the whole <«•

mtut go up, and not such points as the Court maf single ont OdIj. o9'

at. T. EmtrtaTi, IJ. 655.

See Bill oi Exosfiiomi; Inntvciiom.

3 bios Oka bOI AA2

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