Grant v. Raymond
31 U.S. 218 (1832)

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U.S. Supreme Court

Grant v. Raymond, 31 U.S. 6 Pet. 218 218 (1832)

Grant v. Raymond

31 U.S. (6 Pet.) 218

Syllabus

Action for damages for an infringement of a patent right granted to the plaintiff in 1825. The patent recited that a former patent had been issued in 1821, to the same person for the same improvement "which had been cancelled owing to the defective specification on which the same was granted." The exclusive privilege given by the patent on which the suit was brought is to continue fourteen years from the day on which the original was issued. On the trial, the defendants objected that the Secretary of State had no power, by law, to accept a surrender of and to cancel the first letters patent, or to inquire into and decide upon the causes for so doing, or to grant the second patent for the same invention with an amended specification for the unexpired, portion of the term of fourteen years which had been granted by the first patent. The Circuit Court of the Southern District of New York decided, in conformity with its former decisions, that such surrender might be made when the defect arose from inadvertence or mistake and without any fraud or misconduct on the part of the patentee, and that the Secretary of State had authority to accept such surrender and cancel the record of the patent and to issue a new patent for the unexpired part of the fourteen years granted under the first patent.

By the court:

"It will not be pretended that this question is free from difficulty. But the executive departments, it is understood, have acted on the construction adopted by the circuit court, and have considered it as settled. We would not willingly disregard the settled practice in a case where we are not satisfied it is contrary to law, and where we are satisfied it is required by justice and good faith."

To promote the progress of useful arts is the interest and policy of every enlightened government. It entered into the views of the framers of our Constitution, and the power

"To promote the progress of science and useful arts by securing, for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries"

is among those expressly given to Congress. It is the reward stipulated for advantages derived by the public for the exertions of individuals, and is intended as a stimulus to those exertions. The laws which are passed to give effect to this purpose ought to be construed in the spirit in which they have been made and to execute the contract fairly on the part of the United States, where the full benefit has been received if this can be done without transcending the intentions of the statutes or countenancing acts which are fraudulent or may prove mischievous.

If a mistake should be committed in the Department of State, no one would say it ought not be corrected. All would admit that a new patent, correcting the error and which would secure to the patentee the benefits which the law intended to secure, ought to be issued, and yet the law does not, in terms, authorize a new patent even in such a case. Its emanation is not founded on the words of the law, but it is indispensably necessary to the faithful execution of the solemn promise made by the United States. Why should not the same step be taken for the same purpose if the mistake has been innocently committed by the inventor himself?

The great object and intention of the act is to secure to the public the advantages to be derived from the discoveries of individuals, and the means it employs are the compensation made to those individuals for the time and labor

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devoted to those discoveries by the exclusive right to make up and sell the things discovered for a limited time. That which gives complete effect to this object and intention by employing the same means for the correction of inadvertent error which are directed in the first instance cannot be a departure from the spirit and character of the act.

Quaere what would be the effect of a second patent, issued after an innocent mistake in the specification, on those who, skilled in the act for which it was granted, perceiving the variance between the specifications and the machine, had constructed, sold, and used the machine. This question is not before the Court, and is not involved in the opinion given in the case. The defense, when true in fact, may be sufficient in law notwithstanding the validity of the new patent.

The Defendant in the circuit court, in his plea, assigned the particular defect supposed to exist in the specification and then proceeded to answer in the very words of the act

"that it does not contain a written description of the plaintiff's invention and improvement, and manner of using it, in such full, clear, and exact terms, as to distinguish the same from all other things before known, so as to enable any person skilled in the art to make and use the same."

The plea alleged in the words of the act that the prerequisites to issuing a patent had not been complied with. The plaintiffs denied the facts

alleged in the plea, and on this issue was joined. At the trial, the counsel for the defendants, after the evidence was closed, asked the court to instruct the jury that if they should be of opinion that the defendants had maintained and proved the facts alleged in their plea, they must find for the defendants. The court refused this instruction, and instructed the jury that the patent would not be void on this ground unless such defective or imperfect specification or description arose from design or for the purpose of deceiving the public. By the Court: "The instruction was erroneous, and the judgment of the circuit court ought to be reversed."

This instruction was material if the verdict ought to have been for the defendants, provided the allegations of the plea were sustained and if such verdict would have supported a judgment in their favor, although the defect in the specification might not have arisen from design and for the purpose of deceiving the public. That such is the law the Court is entirely satisfied. The third section of the act requires, as preliminary, to a patent, a correct specification and description of the thing discovered. This is necessary in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed and is the foundation of the power to issue a patent. The necessary consequences of the ministerial character in which the Secretary acts is that the performance of the prerequisites to a patent must be examinable in any suit brought upon it. If the case was of the first impression, the Court would come to this conclusion, but it is understood to be settled.

Courts did not perhaps at first distinguish clearly between a defense which would authorize a verdict and judgment in favor of a defendant in an action for the violation of a patent, leaving the plaintiff free to use his patent and to bring other suits for its infringement, and one which, if successful, would require the court to enter a judgment not only for the defendant in the particular case, but one which declares the patent to be void. The distinction is now well settled.

If the party is content with defending himself, he may either plead specially or plead the general issue and give the notice required by the sixth section of any

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special matter he means to use at the trial. If he shows that the patentee has failed in any of those prerequisites on which the authority to issue the patent is made to depend, his defense is complete. He is entitled to the verdict of the jury, and the judgment of the court. But if, not content with defending himself, he seeks to annul the patent, he must proceed in precise conformity with the sixth section. If he depends on evidence

"tending to prove that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the desired effect,"

it may avail him so far as it respects himself, but will not justify a judgment declaring the patent void unless "such concealment or addition shall fully appear to have been made for the purpose of deceiving the public," which purpose must be found by the jury to justify a judgment of vacatur.

The defendant is permitted to proceed according to the sixth section, but is not prohibited from proceeding in the usual manner so far as respects his defense, except that special matter may not be given in evidence on the general issue unaccompanied by the notice which the sixth section requires. The sixth section is not understood to control the third. The evidence of fraudulent intent is required only in the particular case and for the particular purpose stated in the sixth section.

On inspecting the record, it appeared that on the trial of the cause in the circuit court, the counsel for the defendants had excepted to the decisions of the court on various matters which had been presented for the consideration of the court, and that a bill of exceptions had been sealed by the court on their motion.

The record proceeded to state that the cause afterwards came on for argument on a motion for a new trial, when the opinions of the two judges of the circuit court were opposed upon questions, presented for the decision of the court excepted to on the trial, as stated in the bill of exceptions:

"That upon the questions thus occurring before the court, the opinions of the said two judges were opposed, and upon request of the counsel for the plaintiffs, the points upon which the disagreement happened were stated under the direction of the judges and certified under the seal of the court to the Supreme Court."

Mr. Webster stated that a question preliminary to the argument of the case was presented for the decision of the Court. It was whether the Court would entertain the case as it came up from the circuit court on a division in that court on a motion

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for a new trial. This Court had exercised its right to decide in cases where the opinions of the judges of the circuit court on questions of law had been opposed, when a motion for a new trial was before the court.

MR. JUSTICE STORY. In the cases referred to, the division of the court took place on the trial of the cause before the jury, as well as on the motion for a new trial.

MR. CHIEF JUSTICE MARSHALL suggested that the case might be brought on if the parties would agree that it should stand as if a judgment had been given by the circuit court on the exceptions. The case, he said, could not be heard on a difference in opinion of the judges of the court on a motion for a new trial.

The counsel for the plaintiffs and defendants having agreed that the case should stand as suggested by THE CHIEF JUSTICE, and an agreement in writing to that effect having been filed, the Court made the following order.

"It is now here by the Court considered and ordered that this cause shall now be heard and decided as on a writ of error brought after verdict and judgment in the circuit court on the exceptions which were taken in that court; that the cause shall now proceed as if judgment had been actually entered in the circuit court for the plaintiffs there, and that the certificate in the case shall be taken, regarded, and treated as a writ of error sued out by the defendants below on the judgment of the circuit court, and that the question shall be, as in other cases, whether the said judgment ought to be reversed or affirmed, but that this Court will reserve its opinion and judgment in this cause till the defendants in the court below shall have sued out a writ of error in this cause to the said circuit court and filed a return thereto, with a bill of exceptions in this cause in the usual form, signed by the court below, in this Court."

The case came on for argument, after the defendants had sued out a writ of error on a judgment entered in the circuit

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court for the plaintiffs in conformity with the suggestion and order of this Court. The case was as follows:

The action was brought to recover damages for an alleged infringement of a patent right, and came on for trial in the circuit court in November, 1828, when a verdict was rendered for the plaintiffs for $3,266.66.

The plaintiffs gave in evidence a patent from the United States in the following terms, the same being the patent declared upon:

"Whereas Joseph Grant, a citizen of the United States, hath alleged that he hath invented a new and useful improvement in the mode of manufacturing hat bodies by the combination of motions, viz., the rotatory and revolving motion, with the vibrating or transverse motion, which forms the two hat bodies by machinery, and crosses the wool from one extremity of the hat bodies to the other at one operation, called Grant's improved winding machine for setting up hat bodies -- his former patent for the same invention, dated 11 August, 1821, having been cancelled owing to the defective specification on which the same was granted -- which improvement he states had not been known or used before his application -- hath made oath that he does verily believe that he is the true inventor or discoverer of the said improvement; hath paid into the Treasury of the United States the sum of $30, 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 improvement, and praying that a patent may be granted for that purpose."

"These are, therefore, to grant, according to law, to the said Joseph Grant, his heirs, administrators or assigns, for the term of fourteen years, from 11 August, 1821, 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 Joseph Grant himself in the schedule hereunto annexed, and is made a part of these presents."

"In testimony whereof I have caused these letters to be made patent and the seal of the United States to be hereunto affixed. Given under my hand, at the City of Washington, this 28

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April, in the year of our Lord 1825, and of the independence of the United States of America the forty-ninth."

"[L.S.] J. Q. ADAMS"

"By the President. H. CLAY, Secretary of State"

"City of Washington, to-wit: I do hereby certify that the foregoing letters patent were delivered to me on 23 April in the year of our Lord 1825, to be examined; that I have examined the same and find them conformable to law, and I do hereby return the same to the Secretary of State within fifteen days from the date aforesaid, to-wit, on this 28f April in the year aforesaid."

"WILLIAM WIRT, Attorney General of the U.S."

The schedule referred to in these letters patent and making part of the same contained a description in the words of the said Joseph Grant himself, of his improvement in the mode of manufacturing hat bodies by the combination of motions, viz., the rotary or revolving motion, with the vibrating or transverse motion, which forms the two hat bodies by machinery and crosses the wool from one extremity of the hat bodies to the other at one operation, called Grant's improved winding machine for setting up hat bodies, his former patent for the same invention dated on 11 August, A.D. 1821, having been cancelled owing to the defective specification on which the same was granted.

The schedule, which contained a full description of the invention and of the mode of using it, was also given in evidence.

The counsel for the plaintiffs also produced and read in evidence a certificate of the Secretary of State, duly authenticated under his hand and official seal, and certain papers thereto annexed, in the words and figures following:

"To all to whom these presents shall come, greeting: "

"I certify that the annexed is a true copy of the record of cancellation of a patent granted to Joseph Grant on 11 August, 1821, and cancelled on 28 April, A.D. 1825; also that the annexed is a true copy of the petition praying for the cancellation and the issuing of another patent for the same invention."

"In testimony whereof, I, Henry Clay, Secretary of State of the United States, have hereunto subscribed my name and

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caused the seal of the Department of State to be affixed. Done at the City of Washington this 19 May, A.D. 1828, and of the independence of the United States of America the fifty-second."

"[L.S.] H. CLAY"

This patent was returned to the Patent Office, the seal broken, and now stands cancelled owing to the defective specification on which it was issued, and another patent granted with a corrected specification, and for 28 April, 1825, bearing date with the first, and for the same invention.

"The petition of Joseph Grant, of Providence, in the County of Providence, and State of Rhode Island, hatter, a citizen of the United States of America, respectfully represents that your petitioner has invented a new and useful improvement in the mode of manufacturing hat bodies by the combination of motions, viz., the rotatory or revolving motion with the vibrating or traverse motion, which forms the two hat bodies by machinery and crosses the wool from one extremity of the hat bodies to the other at one operation, called 'Grant's improved winding machine for setting up hat bodies,' according to the specification, explanations, and drawings, herewith presented, which the subscriber prays may be taken as a part of his petition -- an improvement not used or known before his application, the advantages of which your petitioner is desirous of securing to himself and his legal representatives."

"Your petitioner would further state that he has heretofore, viz., on 11 August, A.D. 1821, obtained letters patent from the President of the United States for his said improvement, but, owing to a defective specification on which the same were granted, he prays that the said patent may be cancelled and a new and correct one granted embracing the same improvements, so far as the same are set forth in the accompanying specification, drawing, and explanations. Your petitioner therefore prays that letters patent of the United States may be issued granting to your petitioner, his heirs, administrators, or assigns, the full and exclusive right of making, constructing, using, and vending to others to be used his said improvement according to the specification and drawings hereto annexed, agreeably to the act of Congress in such case made and provided, your petitioner having paid $30

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into the Treasury of the United States and complied with other provisions of the said act. As in duty bound, will ever pray."

"JOSEPH GRANT"

"To the Hon. Henry Clay, Secretary of State of the United States of America."

"Providence, April 20, 1825."

"As the assignee of David Curtis who was the assignee of Joseph Grant of one moiety of the original patent, I unite in the prayer of the above petitioner that the original patent may be cancelled and a new one granted to the said Joseph Grant as above set forth."

"SOLOMON TOWNSEND"

"To the Hon. Henry Clay, Secretary of State of the United States of America."

"Providence, April 20, 1825."

"The counsel for the defendant objected that the Secretary of State had no power by law to accept a surrender of and to cancel said letters patent or to inquire into or decide upon the causes for so doing, or to grant said second patent for the same invention, with an amended specification, for the unexpended portion of the term of fourteen years, which had been granted by the first patent."

The court decided that such surrender might be made when the defect in the specification arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee, and that the Secretary of State had authority to accept such surrender, and cancel the record of the patent, and to issue a new patent for the unexpired part of the fourteen years granted under the old patent in manner aforesaid. To which decision the counsel for the defendant excepted.

The fourth plea, filed on the part of the defendant, after reciting the specification annexed to the patent of the plaintiffs, averred as follows:

"And the defendants aver that said specification does not correctly or accurately describe the improvement claimed by the said Joseph Grant as his invention, but said specification, and the drawings thereto annexed, are altogether defective in this, among other things, namely in said specification no proportions, sizes, or distances are given, and the bigness or size of none of the principal parts of said machine is given in said specifications or drawings, but the same is wholly omitted, and in other particulars said specification

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and drawings are altogether defective. And the defendants aver that said specification, annexed to and making part of said letters patent, with the drawings thereto annexed, do not contain a written description of his, the said Joseph Grant's, invention and improvement aforesaid and manner of using it in such full, clear, and exact terms as to distinguish the same from all other things before known, and so as to enable any person skilled in the art of which said machine or improvement is a branch, or with which it is most nearly connected, to make and use the same, and that for the cause aforesaid, said letters patent are void. All which the defendants are ready to verify; wherefore they pray judgment if the said Joseph Grant and Solomon Townsend ought to have or maintain their aforesaid action against them, and for their costs."

To which plea the following replication was filed:

"And as to the said plea of the said Eliakim Raymond and Henry Raymond, by them fourthly above pleaded, the said Joseph Grant and Solomon Townsend say that, by reason of anything in the said last mentioned plea alleged, they ought not to be barred from having and maintaining their aforesaid action thereof against them, the said Eliakim Raymond and Henry Raymond, because they say that the specification mentioned in the said last mentioned plea does correctly and accurately describe the improvement claimed by the said Joseph Grant, as his invention, and because they say further that neither the said specification nor the drawings thereto annexed is defective in any of the particulars in that behalf alleged in the said last mentioned plea, and this they, the said Joseph Grant and Solomon Townsend, pray may be inquired of by the country, and the said Eliakim Raymond and Henry Raymond do the like, &c."

The counsel for the defendants on the said trial introduced sundry witnesses to prove the allegations traversed in the said fourth plea, and insisted that they had proved the same and that the said specification of the said Joseph Grant did not describe the improvement which he claimed to have invented in such full, clear, and exact terms as to distinguish the same from all other things before known, nor so as to enable a person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make and use the same,

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and they requested the court to charge the jury that if they found that the defendants had maintained and proved their averments in that respect, that they must find the same for the defendants, which instructions the court refused to give, but instructed the jury that the patent would not be void on this ground unless such defective or imperfect specification or description arose from design and for the purpose of deceiving the public, to which opinion the counsel for the defendants also excepted.

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