Evans v. Eaton
16 U.S. 454 (1818)

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U.S. Supreme Court

Evans v. Eaton, 16 U.S. 3 Wheat. 454 454 (1818)

Evans v. Eaton

16 U.S. (3 Wheat.) 454

Syllabus

Under the sixth section of the patent law of 1793, ch. 156, the defendant pleaded the general issue and gave notice that he would prove at the trial that the machine for the use of which, without license, the suit was brought had been used previous to the alleged invention of the plaintiff in several places which were specified in the notice, or in some of them, "and also at sundry other places in Pennsylvania, Maryland, and elsewhere in the United States." The defendant having given evidence as to some of the places specified, offered evidence as to others not specified. Held, that this evidence was admissible. But the powers of the court in such a case are sufficient to prevent and will be exercised to prevent the patentee from being injured by surprise.

Testimony on the part of the plaintiff that the persons of whose prior use of the machine the defendant had given evidence had paid the plaintiff for licenses to use the machine since his patent ought not to be absolutely rejected, though entitled to very little weight.

Quaere whether, under the general patent law, improvements on different machines can be comprehended in the same patent so as to give a right to the exclusive use of several machines separately as well as a right to the exclusive use of those machines in combination.

However this may be, the Act of 21 January, 1808, ch. 117, "for the relief of Oliver Evans," authorizes the issuing to him of a patent for his invention, discovery, and improvements in the art of manufacturing flour and in the several machines applicable to that purpose.

Quaere whether Congress can constitutionally decide the fact that a particular individual is an author or inventor of a certain writing or invention so as to preclude judicial inquiry into the originality of the authorship or invention.

Be this as it may, the act for the relief of Oliver Evans does not decide that fact, but leaves the question of invention and improvement open to investigation under the general patent law.

Under the sixth section of the patent law, ch. 156, 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 this previous use or description or not.

Oliver Evans may claim under his patent the exclusive use of his inventions and improvements in the art of manufacturing flour and meals and in the several machines which be has invented, and in his improvement on machines previously discovered. But where his claim is for an improvement on a machine, he must show the extent of his improvement so that a person understanding the subject may comprehend distinctly in what it consists.

The act for the relief of O.E. is engrafted on the general patent law, so as to give him a right to sue in the circuit court for an infringement of his patent rights, although the defendant may be a citizen of the same state with himself.

Page 16 U. S. 455

This was an action brought by the plaintiff in error against the defendant in error for an alleged infringement of the plaintiff's patent right to the use of his improved hopper boy, one of the several machines discovered, invented, improved, and applied by him to the art of manufacturing flour and meal, which patent was granted on 22 January, 1808. The defendant pleaded the general issue, and gave the notice hereafter stated. The verdict was rendered, and judgment given thereupon for the defendant in the court below, on which the cause was brought, by writ of error, to this Court.

At the trial in the court below, the plaintiff gave in evidence the several acts of Congress entitled respectively "An act to promote the progress of useful arts," and

"to repeal the acts heretofore made for that purpose and to extend the privilege of obtaining patents for useful discoveries and inventions

Page 16 U. S. 456

to certain persons therein mentioned and to enlarge and define penalties for violating the rights of patentees,"

and "An act for the relief of Oliver Evans," the said Oliver's petition to the Secretary of State, for a patent, and the patent thereupon granted

Page 16 U. S. 457

to the said Oliver, dated 22 January, 1808, and further gave in evidence

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that an agent for the plaintiff wrote a note to the defendant, in answer to which he called on the

Page 16 U. S. 459

agent at Chambersburg at the house of Jacob Snyder on 9 August, 1813; there were a number

Page 16 U. S. 460

of millers present; the defendant then told the agent that he had got Mr. Evans' Book, a plate in

Page 16 U. S. 461

the Millwright's Guide, and if the agent would take $40, the defendant would give it him; the

Page 16 U. S. 462

defendant said that his hopper boy was taken from a plate in Mr. Evan's book; he said he would give no more, alleging that the $100 the agent asked was too much; that the stream on which his mill was was a small head of Conogocheage. The agent then declared that if the defendant would not pay him by Monday morning, he would commence a suit in the circuit court.

The plaintiff further gave in evidence that another agent for the plaintiff was in the defendant's mill on 2 November, 1814, and saw a hopper boy there on the principles and construction of the plaintiff's hopper boy. This witness had heard that a

Page 16 U. S. 463

right was obtained under Pennsylvania, but did not known of any rights under Pennsylvania sold by the plaintiff, and did not know that it was erected in any mill after the patent under Pennsylvania. The defendant's

Page 16 U. S. 464

hopper boy had an upright shaft, with a leading arm, in the first place, and a large arm inserted

Page 16 U. S. 465

with flights, and leading lines, and sweepers; a little board, for the purpose of sweeping the meal in the

Page 16 U. S. 466

bolting hoppers and spreading it over the floor; a balance weight, to cause the arms to play up and down lightly over the meal. The leading arms were about 5

Page 16 U. S. 467

feet long, and seemed to be in proportion, the arm about 14 and the length of the sweep about 9 inches.

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And the defendant, having previously given the plaintiff written notice that upon the trial of the

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cause, the defendant would give in evidence under the general issue the following special matter, to-wit:

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"1st. That the improved hopper boy, for which, inter alia, the plaintiff in his declaration alleges he

Page 16 U. S. 471

has obtained a patent, was not originally discovered by the patentee, but had been in use anterior to the supposed discovery of the patentee, in sundry places, to-wit, at the mill of George Fry and Jehu Hollingsworth in Dauphin County, Pennsylvania, at Christian Stauffer's mill in Warwick Township, Lancaster County, State of Pennsylvania, at Jacob Stauffer's mill in the same county, at Richard Downing's mill in Chester County, Pennsylvania; at Buffington's mill on the Brandywine; at Daniel Huston's mill in Lancaster County, Pennsylvania; at Henry Stauffer's mill in York County, Pennsylvania, and at Dihl's mill in the same county, or at some of the said places, and also at sundry other places in the said State of Pennsylvania, the State of Maryland, and elsewhere

Page 16 U. S. 472

in the United States."

"2d. That the patent given to the plaintiff, as he alleges in his declaration, is more extensive than his discovery or invention, for that certain parts of the machine in said patent, called an improved hopper boy, and which the plaintiff claims as his invention and discovery, to-wit, the upright shaft, arms, and flights, and sweeps, or some of them, and those parts by which the meal is spread, turned and gathered at one operation, and also several other parts, were not originally invented and discovered by him, but were in use prior to his said supposed invention or discovery, to-wit, at the places above mentioned, or some of them."

"3d. That the said patent is also more extensive than the plaintiff's invention or discovery, for that the application of the power that moves the mill or other principal machine to the hopper boy is not an original invention or discovery of the plaintiff, but was in use anterior to his said supposed invention or discovery, to-wit, at the places above mentioned, or some of them."

"4th. That the said patent is void, because it purports to give him an exclusive property in an improvement in the art of manufacturing meal, by means of a certain machine, termed an improved hopper boy, of which the said plaintiff is not the original inventor or discoverer; parts of the machine in the description thereof referred to by the patent, having been in use anterior to the plaintiff's said supposed discovery, to-wit, at the places above mentioned, or some of them, and the said patent and description therein referred to contains no statement, specification, or description

Page 16 U. S. 473

by which those parts, so used as aforesaid, may be distinguished from those of which the said plaintiff may have been the inventor, or discoverer, protesting at the same time that he has not been the inventor or discoverer of any of the parts of the said machine."

"5th. That the improved elevator, described in the declaration or referred to therein, was not originally discovered by the plaintiff, but was anterior to his said supposed discovery or invention, described in certain public works, or books, to-wit, in Shaw's Travels; in the first volume of the Universal History; in the first volume of Mormer's Husbandry; in Ferguson's Mechanics; in Bossuet's Histoire des Mathematiques; in Wolf's Cours des Mathematiques; in Desagulier's Experimental Philosophy, and in Proney's Architecture Hydraulique, or some of them."

"6th. That the said patent is more extensive than the invention or discovery of the plaintiff because certain parts of the machine called an improved elevator were, anterior to the plaintiff's said supposed invention or discovery, described in certain public works, or books, to-wit, the works or books above mentioned, or some of them, and that the said patent is void because it neither contains or refers to any specification or description by which the parts so before described in the said public works, may be distinguished from those parts of which the plaintiff may be the inventor, or discoverer, protesting, at the same time, that he has not been the inventor or discoverer of any of the parts of the said machine"

gave in evidence the existence of hopper boys prior to the plaintiff's alleged discovery at sundry mills in the State of Pennsylvania,

Page 16 U. S. 474

mentioned in the said notice, and further offered to give in evidence the existence of hopper boys prior to the plaintiff's alleged discovery, at sundry other mills in the State of Pennsylvania not mentioned in the said notice, and the counsel for the plaintiff objected to the admission of any evidence of the existence of hopper boys in the said mills not mentioned in the said notice. But the court decided that such evidence was competent and legal. To which decision the counsel for the plaintiff excepted. The plaintiff, after the above evidence had been laid before the jury, offered further to give in evidence, that certain of the persons mentioned in the defendant's notice, as having hopper boys in their mills, and also certain of the persons not mentioned in the said notice, but of whom it had been shown by the defendant that they had hopper boys in their mills had, since the plaintiff's patent, paid the plaintiff for license to use his improved hopper boy in the said mills respectively. But the counsel for the defendant objected to such evidence as incompetent and illegal, and the court refused to permit the same to be laid before the jury. To which decision the plaintiff's counsel excepted.

The court below charged the jury that the patent contained no grant of a right to the several machines, but was confined to the improvement in the art of manufacturing flour by means of those machines, and that the plaintiff's claim must therefore be confined to the right granted, such as it was. That it had been contended that the schedule was part of the patent, and contained a claim to the invention of the peculiar properties and principles of the hopper boy, as

Page 16 U. S. 475

well as other machines. But the court was of opinion that the schedule is to be considered as part of the patent so far as it is descriptive of the machines, but not further, and even if this claim had been contained in the body of the patent, it would have conferred no right which was not granted by that instrument.

The court further proceeded to instruct the jury that the law authorized the president to grant a patent for the exclusive right to make, construct, use, and vend to be used any new and useful art, machine, manufacture, or composition of matter or any new and useful improvement in any art, machine &c., not known or used before the application. As to what constitutes an improvement, it is declared that it must be in the principle of the machine, and that a mere change in the form or proportions of any machine shall not be deemed a discovery. Previously to obtaining the patent, the applicant is required to swear or affirm that he verily believes that he is the true inventor or discoverer of the art, machine, or improvement for which he solicits a patent, and he must also deliver a written description of his invention, and of the manner of using it, so clearly and exactly, as to distinguish the same from all other things before known, and to enable others skilled in the art to construct and use the same. That from this short analysis of the law, the following rules might be deduced.

1st. That a patent may be for a new and useful art, but it must be practical, it must be applicable and referable to something by which it may be proved to be useful; a mere abstract principle cannot be appropriated by patent.

2d. The discovery must not only be useful, but new; it must not have been

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known or used before in any part of the world. It was contended by the plaintiff's counsel that the title of the patentee cannot be impeached unless it be shown that he knew of a prior discovery of the same art, machine, &c., and that true and original are synonymous terms in the intention of the legislature. But as it was not pretended that those terms meant the same thing in common parlance, neither was it the intention of the legislature to use them as such. The first section of the law, referring to the allegations of the application for a patent, speaks of the discovery as something "not known or used before the application," and in the 6th section it is declared that the defendant may give in evidence that the thing secured by patent, was not originally discovered by the patentee, but has been in use, had been described in some public work anterior to the supposed discovery.

3d. If the discovery be of an improvement only, it must be an improvement in the principles of a machine, art, or manufacture, before known or used; if only in the form or proportion, it has not the merit of a discovery which can entitle the party to a patent.

4th. The grant can only be for the discovery as recited and described in the patent and specification. If the grantee is not the original discoverer of the art, machine, &c., for which the grant is made, the whole is void. Consequently, if the patent be for the whole of the machine, and the discovery were of an improvement, the patent is void.

5th. A machine or an improvement may be new and the proper subject of a patent though the parts of it were before known and in use. The combination, therefore, of old machines to produce a new

Page 16 U. S. 477

and useful result is a discovery for which a patent may be granted.

The above principles would apply to most of the questions that had been discussed. It was strongly insisted upon by the defendant's counsel that this patent is broader than the discovery, the evidence proving that in relation to the hopper boy for the using of which this suit is brought, the plaintiff can pretend to no discovery beyond that of an improvement in a machine known and used before the alleged discovery of the plaintiff. This argument proceeded upon the supposition that the plaintiff had obtained a patent for the hopper boy, which was entirely a mistake. The patent was "for an improvement in the art of manufacturing flour," by means of a hopper boy and four other machines described in the specification, and not for either of the machines so combined and used. That the plaintiff is the original discoverer of this improvement, was contested by no person, and therefore it could not with truth be alleged that the patent is broader than the discovery, or that the plaintiff could not support an action on this patent against any person who should use the whole discovery.

But could he recover against a person who had made or used one of the machines, which in part constitute the discovery? The plaintiff insisted that he could, because, having a right to the whole, he is necessarily entitled to the parts of which that whole is composed. Would it be seriously contended that a person might acquire a right to the exclusive use of a machine, because when used in combination with others, a new and useful result is produced which he could not have acquired independent of that combination?

Page 16 U. S. 478

If he could, then if A. were proved to be the original inventor of the hopper boy; B. of the elevator, and so on, as to the other machines, and either had obtained patents for their respective discoveries, or chose to abandon them to the public, the plaintiff, although it was obvious he could not have obtained separate patents for those machines, might nevertheless deprive the original inventors, in the first instance, and the public, in the latter, of their acknowledged right to use those discoveries, by obtaining a patent for an improvement consisting in a combination of those machines to produce a new result.

The court further charged the jury that it was not quite clear that this action could be maintained, although it was proved beyond all controversy that the plaintiff was the original inventor of this machine. The patent was the foundation of the action, and the gist of the action was the violation of a right which that instrument had conferred. But the exclusive right of the hopper boy was not granted by this patent, although this particular machine constitutes a part of the improvement of which the plaintiff is the original inventor, and it is for this improvement and this only that the grant is made. If the grant then was not of this particular machine, could it be sufficient for the plaintiff to prove in this action that he was the original inventor of it?

Again, could the plaintiff have obtained a separate patent for the hopper boy, in case he were the original inventor of it, without first swearing or affirming, that he was the true inventor of that machine? Certainly not. Has the plaintiff then taken or could he have taken such an oath in this case? Most assuredly he could not, because the prescribed form of the oath

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is that he is the inventor of the art, machine, or manufacture for which he solicits a patent. But since the patent which he solicited was not for the hopper boy, but for an improvement in the manufacture of flour, he might with safety have taken the oath prescribed by law, although he knew at the time that he was not the true inventor of the hopper boy, and thus it would happen that he could indirectly obtain the benefit of a patent right to the particular machine, which he could not directly have obtained, without doing what it must be admitted in this case he had not done.

But this was not all. If the law had provided for fair and original discoverers a remedy when their rights are invaded by others, it had likewise provided corresponding protection to others, where he has not the merit. What judgment could the district court have rendered on a scire facias to repeal this patent if it had appeared that the plaintiff was not the true and original inventor of the hopper boy? Certainly not that which the law has prescribed, viz., the repeal of the patent, because it would be monstrous to vacate the whole patent, for an invention of which the patentee was the acknowledged inventor, because he was not the inventor of one of the constituent parts of the invention for which no grant is made. But the court would have no alternative but to give such a judgment, or, in effect, to dismiss the scire facias, and if the latter, then the plaintiff would have beneficially the exclusive right to a machine, which could not be impeached in the way prescribed by law, although it should be demonstrated that he was not either the true or the original inventor of it. And

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supposing the jury should be of opinion, and so find, that the plaintiff was not the original inventor of this machine, would not the court be prevented from declaring the patent void, under the provisions of the 6th section of the law, for the reason assigned why the district court could not render judgment upon a scire facias? Indeed it might well be doubted whether the defense now made by the defendant could be supported at all in this action (if this action could be maintained), inasmuch as the defendant cannot allege, in the words of the 6th section, that the thing secured by patent was not originally discovered by the patentee, since, in point of fact, the thing patented was originally discovered by the patentee, although the hopper boy may not have been so discovered. But if this defense could not be made, did not that circumstance afford a strong argument against this action? If the plaintiff was not the inventor of the parts, he had no right to complain that they were used by others, if not in a way to infringe his right to their combined effect. If he was the original inventor of the parts which constitute the whole discovery, or any of them, he might have obtained a separate patent for each machine of which he was the original inventor.

Upon the whole, although the court gave no positive opinion upon this question, it stated that it was not to be concluded that this action could be supported even if it were proved that the plaintiff was the original inventor of the hopper boy. But if an action would lie upon this patent for the violation of the plaintiff's right to the hopper boy, still the plaintiff could not recover if it had been shown to the satisfaction of the

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jury that he was not the original discoverer of that machine.

It appeared by the testimony of the defendant's witnesses that Stauffer's hopper boy was in use many years before the alleged discovery of the plaintiff; that the two machines differed from each other very little in form, in principle, or in effect. They were both worked by the same power which works the mill, and they both stir, mix, cool, dry, and conduct the flour to the bolting chest. Whether the flights and sweepers in the plaintiff's hopper boy were preferable to the slips attached to the under part of the arm in Stauffer's, or whether, upon the whole, the former is a more perfect agent in the manufacture of flour than the latter were questions which the court would not undertake to decide, because, unless the plaintiff was the original inventor of the hopper boy, although he had obtained a separate patent for it, he could not recover in this action, however useful the improvement might be which he had made in that machine. If the plaintiff had obtained a patent for his hopper boy, it would have been void, provided the jury should be of opinion, upon the evidence, that his discovery did not extend to the whole machine, but merely to an improvement on the principle of an old one, and if this should be their opinion in the present case, the plaintiff could not recover.

It had been contended by the plaintiff's counsel that the defendant, having offered to take a license from the plaintiff if he would consent to reduce the price of it to $40, he was not at liberty to deny that the plaintiff is the original inventor of this machine.

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This argument had no weight in it, not merely because the offer was rejected by the plaintiff's agent, and was therefore as if it had not been made, but because the law prevents the plaintiff from recovering if it appear on the trial that he was not the original inventor. If the offer amounted to an acknowledgment that the plaintiff was the original inventor (and further it could not go), this might be used as evidence of that fact, but it would not entitle the plaintiff to a verdict if the fact proved to be otherwise.

The plaintiff's counsel had also strongly insisted that under the equity of the tenth section of the law, the defense set up in this case ought not to be allowed after three years from the date of the patent. This argument might, perhaps, with some propriety be addressed to the legislature, but was improperly urged to the court. The law had declared that in an action of this kind, the defendant may plead the general issue, and give in evidence that the plaintiff was not the original inventor of the machine for which the patent was granted. The legislature has not thought proper to limit this defense in any manner, and the court could not do it.

But what seemed to be conclusive of this point was that the argument would tend to defeat altogether the provision of the sixth section, which authorizes this defense to be made, for if it could not be set up after three years from the date of the patent, it would be in the power of the patentee to avoid it altogether by forbearing to bring suits until after the expiration of that period. And thus, although the law has carefully

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provided two modes of vacating a patent improvidently granted, the patentee, though not the original inventor, and however surreptitiously he may have obtained his patent, may secure his title to the exclusive use of another's invention, if he can for three years avoid an inquiry into the validity of his title.

The last point was that Stauffer's invention was abandoned, and consequently might be appropriated by the plaintiff. But if Stauffer was the original inventor of the hopper boy, and chose not to take a patent for it, it became public property by his abandonment; nor could any other person obtain a patent for it, because no other person would be the original inventor.

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