A party cannot entitle himself to a patent for more than his
own, invention, and if the patent be for the whole of a machine, he
can maintain a title to it only by establishing that it is
substantially new in its structure and mode of operation.
If the same combination existed before in machines of the same
nature up to a certain point, and the party's invention consists in
adding some new machinery or some improved mode of operation to the
old, the patent should be limited to such improvement, for if it
includes the whole machine, it includes more than his invention,
and therefore cannot be supported.
When the patent is for an improvement, the nature and extent of
the improvement must be stated in the specification, and it is not
sufficient that it be made out and shown at the trial or
established by comparing the machine specified in the patent with
former machines in use.
The former judgment of this Court in the same case,
16 U. S. 3 Wheat.
454, commented on, explained, and confirmed.
A person having an interest only in the question, and not in the
event of the suit, is a competent witness.
In general, the liability of a witness to a like action, or his
standing in the same predicament with the party sued, if the
verdict cannot be given in evidence for or against him, is an
interest in the question, and does not exclude him.
This is the same case which was formerly before this Court and
is reported at
16 U. S. 3 Wheat.
454, and by a reference to that report, the form of the patent, the
nature of the action, and the subsequent proceedings will fully
appear. The cause was now again brought before the Court upon a
writ of error to the judgment of the circuit court, rendered upon
the new trial had in pursuance of the mandate of this Court.
Upon the new trial, several exceptions were taken
Page 20 U. S. 357
by the counsel for the plaintiff Evans. The first was to the
admission of one Frederick as a witness for the defendant, upon the
ground of his interest in the suit. The witness, on his examination
on the
voir dire, denied that he had any interest in the
cause or that he was bound to contribute to the expenses of it. He
said that he had not a Hopperboy in his mill at present, it being
then in court, that it was in his mill about three weeks ago, when
he gave it to a person to bring down to Philadelphia, and that his
Hopperboy spreads and turns the meal, cools it some, dries it, and
gathers it to the bolting chest. Upon this evidence, the
plaintiff's counsel contended that Frederick was not a competent
witness, but the objection was overruled by the court.
Another exception was to the refusal of the court to allow the
deposition of one Shetter to be read in evidence by the plaintiff,
which had been taken according to a prevalent practice of the state
courts instead of being taken pursuant to the provisions of the act
of Congress.
But the principal exceptions were to the charge by the circuit
court in summing up the cause to the jury, which it is deemed
necessary here to insert at large.
"MR. JUSTICE WASHINGTON. This is an action for an infringement
of the plaintiff's patent, which the plaintiff alleges to be,"
"1. For the whole of the machine employed in the manufacture of
flour, called the Hopperboy."
"2. For an improvement on the Hopperboy."
"The question is, is the plaintiff entitled to recover upon
either of these claims? The question is stated
Page 20 U. S. 358
thus singly because the defendant admits that he uses the very
Hopperboy for which the patent is, in part, granted, and justifies
himself by insisting"
"1st. That the plaintiff was not the original inventor of, but
that the same was in use prior to the plaintiff's patent, the
Hopperboy, as patented."
"2d. That his patent for an improvement is bad because the
nature and extent of the improvement is not stated in his
specification, and if it had been, still the patent comprehends the
whole machine, and is therefore too broad."
"1st. The first is a mixed question of fact and law. In order to
enable you to decide the first, it will be well to attend to the
description which the plaintiff has given of this machine in his
specification, a model of which is now before you. Its parts are
(1) an upright round shaft to revolve on a pivot in the floor; (2)
a leader or upper arm; (3) an arm set with small inclining boards,
called flights and sweepers; (4) cords from the leader to the arm
to turn it; (5) a weight passing over a pulley, to keep the arm
tight on the meal; (8) a log at the top of the shaft to turn it,
which is operated upon by the water power of the mill."
"The flights are so arranged as to track the one below the other
and to operate like ploughs, and at every revolution of the machine
to give the meal two turns towards the center. The sweepers are to
receive the meal from the elevator and to trail it round the circle
for the flights to gather it to the center, and also to sweep the
meal into the bolt. "
Page 20 U. S. 359
"The use of this machine is stated to be to spread any
granulated substance over a floor, to stir and expose it to the
air, to dry and cool it, and to gather it to the bolt."
"The next inquiry under this head is when was this discovery
made? Joseph Evans has sworn that in 1783, the plaintiff informed
him that he was engaged in contriving an improvement in the
manufactory of flour, and had completed it in his mind sometime in
July of that year. In 1784 he constructed a rough model of the
Hopperboy, but having no cords from the extremities of the leader
to those of the arm, it was necessary, in making his experiments,
to turn around the arm by hand. In 1785 he set up a Hopperboy in
his mill resembling the model in court and the machine described in
his specification. The evidence of Mr. Anderson strongly supports
this witness, and indeed the discovery as early as 1784 or 1785 is
scarcely controverted by the defendant."
"The defendant insists that a Hopperboy similar to the
plaintiff's was discovered and in use many years anterior even to
the year 1783, and relies upon the testimony of the following
witnesses: "
"Daniel Stouffer, who deposes that he first saw the Stouffer
Hopperboy in his father's, Christian Stouffer's mill, in the year
1764. In the year 1775 or 1776 he erected a similar one in the mill
of his brother Henry and another in Jacob Stouffer's mill in 1777,
1778, or 1779. "
Page 20 U. S. 360
"Philip Frederick swears that in 1778 he saw a Stouffer
Hopperboy in operation in Christian Stoutfer's mill, and in the
year 1783 he saw one in Jacob Stouffer's mill and another in U.
Charles' mill, and that it was always called Stouffer's
machine."
"George Roup stated that in 1784 he erected one of these
Hopperboys in the mill of one Braniwar, and that in 1782 Abraham
Stouffer described to him a similar machine, which his father used
in his mill."
"Christopher Stouffer, the son of Christian, has sworn, that his
father, having enlarged his mill in the year 1780, erected a new
Hopperboy of the description above mentioned, which is still in use
in the same mill, now owned by Peter Stouffer."
"If these witnesses are believed by the jury, they establish the
fact asserted by the defendant that the Stouffer Hopperboy was in
use prior to the plaintiff's discovery."
"The next inquiry is into the parts, operation, and use of the
Stouffer Hopperboy. This consists of an upright square shaft which
passes lightly through a square mortice in an arm, underneath which
are fixed slips of wood, called flights, and the arm is turned by a
log on the upper end of it, which is moved by the power which moves
the mills."
"The arm, with the flights, operates as it turns upon the meal
placed below it, and its use is in a degree to cool the meal and to
conduct it to the bolt. It will now be proper to compare this
machine with the plaintiff's. They agree in the following
particulars. They each consist of a shaft or log to turn it by the
power of the mill, and an arm
Page 20 U. S. 361
with flights on the under side of it. They each operate on the
mill below the arm to cool, dry, and conduct it to the bolt."
"In what do they differ? The plaintiff's shaft is round, and
consequently could not turn the arm, into which it is loosely
inserted, if it were not for the cords which connect the
extremities of the arm to those of the leader. The shaft of the
Stouffer Hopperboy is square, and therefore turns the arm without
the aid of a leader or of cords. It has neither a weight nor
pulley, nor are the flights arranged in the manner the plaintiff's
are, and consequently it does not, in the opinion of most of the
witnesses, cool or prepare the flour for packing as well as the
plaintiff's."
"The question of law now arises, which is are the two machines,
up to the point where the difference commences, the same in
principle, so as to invalidate the plaintiff's claim to the
Hopperboy as the original inventor of it? I take the rule to be,
and so it has been settled in this and in other courts, that if the
two machines be substantially the same and operate in the same
manner to produce the same result, though they may differ in form,
proportions, and utility, they are the same in principle, and the
one last discovered has no other merit than that of being an
improved imitation of the one before discovered and in use, for
which no valid patent can be granted because he cannot be
considered as the original inventor of the machine. If the alleged
inventor of a machine which differs from another previously
patented merely in form and proportion,
Page 20 U. S. 362
but not in principle, is not entitled to a patent for an
improvement, which he cannot be by the 2d section of the law, he
certainly cannot in a like case claim a patent for the machine
itself."
"The question for the jury, then, is are the two Hopperboys
substantially the same in principle?, not whether the plaintiff's
Hopperboy is preferable to the other. Because if that superiority
amounts to an improvement, he is entitled to a patent only for an
improvement, and not for the whole machine. In the latter case, the
patent would be too broad, and therefore void when the patent is
single."
"If you are of opinion that the plaintiff is not the original
inventor of the Hopperboy, he cannot obtain a verdict on that claim
unless his is an excepted case. The 1st, 2d, 3d, and 6th sections
of the general patent law conclusively support this opinion. But
the judgment of the Supreme Court in this case is relied upon by
the plaintiff's counsel to prove that this is an excepted case
insomuch that the plaintiff is entitled to a verdict although you
should be satisfied that he is not the original inventor of the
Hopperboy. But we are perfectly satisfied that the interpretation
put upon the last clause of the judgment by the plaintiff's counsel
is incorrect, and that for the following reasons."
"1. The question of priority of invention was not before the
Supreme Court, and it is therefore incredible that any opinion,
much less a judgment, would have been given upon that point. The
error in the charge which
Page 20 U. S. 363
this part of the judgment was obviously intended to correct is
stated by THE CHIEF JUSTICE in the following words: "
"The second error alleged in the charge is in directing the jury
to find for the defendant if it should be of opinion that the
Hopperboy was in use prior to the improvement alleged to be made
thereon by Oliver Evans."
"This part of the charge seems to be founded on the opinion that
if the patent is to be considered as a grant of the exclusive use
of distinct improvements, it is a grant for the Hopperboy itself,
and not for an improvement on the Hopperboy."
"It contradicts what is [elsewhere] stated, where it is said
that the plaintiff's claim is to the machine 'which he has
invented,' &c. Now if he did not invent the Hopperboy, he has
no claim to it, and if so, could the court mean to say that he was
nevertheless entitled to recover under that claim? Such a decision
was certainly not called for by the terms of the 'act for the
relief of Oliver Evans,' but would seem to be in direct violation
of it. The act directs a patent to issue to Oliver Evans not for
his Hopperboy, elevator, &c., but 'for his invention,
discovery, and improvement in the art, &c., and on the several
machines which he has discovered, invented, and improved.' Now if
the Hopperboy was not invented, &c., by O.E., this act, without
which O.E. could not have obtained a patent, did not authorize the
Secretary of State to grant him one for that machine, or if granted
it is clear that it was
Page 20 U. S. 364
improvidently done. If indeed the Supreme Court had been of
opinion, that the fact of Oliver Evans' prior invention was
decided, and could constitutionally have been decided by Congress,
there might have been more difficulty in the case; but the argument
of counsel, which pressed that point upon the Court, was distinctly
repudiated. We conceive that the meaning of that part of the
opinion is that this Court erred in stating to the jury that O.
Evans was not entitled to recover, if the Hopperboy (that is the
original Hopperboy) had been in use prior to the plaintiff's
alleged discovery of it, because if the plaintiff was entitled to
claim an improvement on the Hopperboy, which this Court had denied
and which the Supreme Court affirmed, this Court was clearly wrong
in saying to the jury that the plaintiff could not recover for his
improvement, which in effect was said. Upon the whole, then, the
court is of opinion that O. Evans is not entitled to a verdict in
his favor as the inventor of the Hopperboy; if you should be of
opinion that another Hopperboy, substantially the same as his in
principle, as before explained, up to the point where any
alteration or improvement exists in his Hopperboy, was invented and
in use prior to the plaintiff's invention or discovery, however
they may differ in mere form, proportions, and utility."
"2d. The plaintiff's next claim is to an improvement on a
Hopperboy, which claim, we were of opinion in another case, has
received the sanction of the Supreme Court. His counsel contend
that his improvement is (1) on the original method of supplying
the
Page 20 U. S. 365
bolt by manual labor, (2) on his own Hopperboy, and (3) on some
Hopperboy invented by some other person. Let this position be
analyzed."
"1. It is said to be an improvement on the original method by
manual labor. But it is obvious that if this be the invention, it
is of an original machine, because wherever the patent law speaks
of an improvement, it is on some art, machine or manufacture,
&c., and not on manual labor which was applied to the various
arts long before the invention of machinery to supply its
place."
"2. An improvement on his own discovery."
"But where is the evidence of such invention? It is true that
Joseph Evans has stated that the plaintiff constructed, in 1784, a
rude model of a Hopperboy; but it was no substitute for manual
labor, because without the cords or leading lines, the arm could
not move, and it was therefore turned by hand. It was, in fact, in
an incomplete state, in progress to its completion, but not given
out or prepared to be given out to the world as a machine before
1785, when the cords to turn the arm were added."
"3. An improvement on a former machine."
"This is a fair subject for a patent, and the plaintiff has laid
before you strong evidence to prove that his Hopperboy is a more
useful machine than the one which is alleged to have been
previously discovered and in use. If, then, you are satisfied of
this fact, the point of law which has been raised by the
defendant's counsel remains to be considered, which is that the
plaintiff's patent for an improvement is void because
Page 20 U. S. 366
the nature and extent of his improvements are not stated in his
specification."
"The patent is for an improved Hopperboy, as described in the
specification, which is referred to, and made part of the patent.
Now does the specification express in what his improvement
consists? It states all and each of the parts of the entire
machine, its use and mode of operating, and claims as his
invention, the machine, the peculiar properties or principles of
it,
viz., the spreading, turning, and gathering the meal,
and the rising and lowering of its arm, by its motion to
accommodate itself to the meal under it. But does this description
designate the improvement or in what it consists? Where shall we
find the original Hopperboy described either as to its
construction, operation, or use or by reference to anything by
which a knowledge of it may be obtained? Where are the improvements
on such original stated? The undoubted truth is that the
specification communicates no information whatever upon any of
these parts. This being so, the law as to ordinary cases is clear
that the plaintiff cannot recover for an improvement. The 1st
section of the general patent law speaks of an improvement as an
invention, and directs the patent to issue for this said invention.
The 3d section requires the applicant to swear or affirm that he
believes himself to be the true inventor of the art, machine, or
improvement for which he asks a patent, and further that he shall
deliver a written description of his invention in such full, clear,
and exact terms that any person acquainted with the art may know
how to construct and use
Page 20 U. S. 367
the same, &c. That it is necessary to the validity of a
patent that the specification should describe in what the
improvement consists is decided by MR. JUSTICE STORY in the cases
referred to in the appendix to 3 Wheat. and in the cases of
Bombon v. Bule, Boville v. Poor, McFarlane v. Price, Harmer v.
Playne, and perhaps some others. What are the reasons upon
which this doctrine is founded? They are to guard the public
against an unintentional infringement of the patent during its
continuance and to enable an artist to make the improvement by a
reference to some known and certain authority to be found among the
records of the office of the Secretary of State after the patent
has run out. But it is contended by the plaintiff's counsel that
the law would be unreasonable to require, and that it does not
require this to be done, unless the improvement is upon a patented
machine, a description of which can be obtained by a reference to
the records of the Secretary of State's office; that it might often
be impossible for the patentee to discover and consequently to
describe the parts of a machine in use perhaps only in some obscure
part of the world. The answer to this is that an improvement
necessarily implies an original, and unless the patentee is
acquainted with the original which he supposes he has improved, he
must talk idly when he calls his invention an improvement."
"If he knows nothing of an original, then his invention is an
original, or nothing, and the subsequent appearance of an original
to defeat his patent is one of the risks which every patentee is
exposed to under
Page 20 U. S. 368
our law. As to the supposed distinction between an improvement
on a machine patented and one not so, there is nothing in it. In
both cases, the improvement must be described, but with this
difference -- that in the former case it may be sufficient to refer
to the patent and specification for a description of the original
machine and then to state in what the improvements or such original
consists, whereas in the latter case it would be necessary to
describe the original machine and also the improvement. The reason
for this distinction is too obvious to need explanation."
"If the general law upon this subject has been correctly stated,
the next question is is this an excepted case? It is contended by
the plaintiff that it is so, 1st, in virtue of the act for the
relief of O.E., and 2d, by the decision of the Supreme Court."
"1. Under the private act. That declares that the patent is to
be granted in the manner and form prescribed by the general patent
law. What constitutes the manner and form in which a patent is
granted by the law? The obvious answer is the petition -- the
patent, with the signature of the President and the seal of the
United States affixed to it -- the oath or affirmation -- the
specification, or description of the invention, as required by the
3d section -- the drawings and models, if required. Will it be
contended that a patent would be granted in the manner and form
prescribed by this law if there were no description whatever of the
invention? And if it would not, which is taken for granted, where
is the difference between the total absence of a specification and
one which has no reference
Page 20 U. S. 369
at all to the invention for which the patent is granted?"
"This is not the case of an imperfect or obscure description,
but of one which relates exclusively to the whole machine, whereas
the invention for which the patent is granted is for an
improvement."
"2. The opinion of the Supreme Court, which states"
"that it will be incumbent on the plaintiff, where he claims for
an improvement, to show the extent of his improvement, so that a
person understanding the subject may comprehend distinctly in what
it consists."
"But how is it to be shown? The court has not pointed out the
manner, and we therefore think the only fair implication is that it
must be shown as the statute of the United States and the general
principles of law require --
i.e. by the patent and
specification. If it may be shown by parol evidence to the jury, as
the plaintiff's counsel contend it may, then it may be fairly asked
cui bono? which sort of a showing would then be, so far as
it would be productive of any useful purpose? As to the defendant,
the evidence comes too late to save him from the consequences of an
error innocently committed. As to the public at large with a view
to caution, during the continuance of the patent, and to
information of the nature of the improvement after its termination,
the evidence given in this cause must be evanescent and totally
useless."
"We feel perfectly convinced that the meaning of the Supreme
Court as to this point is again misunderstood by the plaintiff's
counsel, not only for the reasons above mentioned, but because the
extent and
Page 20 U. S. 370
construction of the plaintiff's patent, and not the validity of
it, in relation to any one of the machines, were the questions
before that Court, and none others (in reference to the charge)
were argued at the bar or reasoned upon by THE CHIEF JUSTICE, in
delivering the opinion."
"Upon the whole, we are of opinion, that the plaintiff is not
entitled to a verdict for the alleged infringement of his patent,
for an improvement of the Hopperboy."
Whereupon a verdict and judgment thereon were rendered for the
defendant in the circuit court, and the cause was again brought by
writ of error to this Court.
Page 20 U. S. 423
MR. JUSTICE STORY delivered the opinion of the Court.
This is the same case which was formerly before
Page 20 U. S. 424
this Court and is reported in
16 U. S. 3 Wheat.
454, and by a reference to that report, the form of the patent, the
nature of the action, and the subsequent proceedings will fully
appear. The cause now comes before us upon a writ of error to the
judgment of the circuit court rendered upon the new trial had in
pursuance of the mandate of this Court.
Upon the new trial several exceptions were taken by the counsel
for the plaintiff. The first was to the admission of a Mr.
Frederick as a witness for the defendant. It is to be observed that
the sole controversy between the parties at the new trial was
whether the plaintiff was entitled to recover for an alleged breach
of his patent by the defendant in using the improved Hopperboy.
Frederick, in his examination on the
voir dire, denied
that he had any interest in the cause or that he was bound to
contribute to the expenses of it. He said he had not a Hopperboy in
his mill at present, it being then in court, that it was in his
mill about three weeks ago, when he gave it to a person to bring
down to Philadelphia, and that his Hopperboy spreads and turns the
meal, cools it some, dries it, and gathers it to the bolting chest.
Upon this evidence the plaintiff's counsel contended that Frederick
was not a competent witness, but the objection was overruled by the
court. It does not appear from this examination whether the
Hopperboy used by Frederick was that improved by the plaintiff or
not, but assuming it was, we are of opinion that the witness
was
Page 20 U. S. 425
rightly admitted. It is perfectly clear, that a person having an
interest only in the question, and not in the event of the suit, is
a competent witness; and in general the liability of a witness to a
like action, or his standing in the same predicament with the party
sued, if the verdict cannot be given in evidence for or against
him, is an interest in the question, and does not exclude him. If
nothing had been in controversy in this case as to the validity of
the patent itself, and the general issue only had been pleaded, the
present objection would have fallen within the general rule. But
the special notice in this case asserts matter which, if true and
found specially by the jury, might authorize the court to adjudge
the patent void, and it is supposed that this constitutes such an
interest in Frederick in the event of the cause that he is thereby
rendered incompetent. But in this respect Frederick stands in the
same situation as every other person in the community. If the
patent is declared void, the invention may be used by the whole
community, and all persons may be said to have an interest in
making it public property. But this results from a general
principle of law that a party can take nothing by a void patent,
and so far as such an interest goes, we think it is to the credit,
and not to the competency, of the witness. It is clear that the
verdict in this case, if given for Evans, would not be evidence in
a suit against Frederick, but Frederick would be entitled to
contest every step in the cause in the same manner as if no such
suit had existed.
Non constat that Frederick himself will
ever be sued by the plaintiff, or that if
Page 20 U. S. 426
sued, any recovery can be had against him, even if the
plaintiff's patent should not be avoided in this suit. It therefore
rests in remote contingencies whether Frederick will under any
circumstances have an interest in the event of this suit, and the
law adjudges the party incompetent only when he has a certain, and
not a contingent interest. It has been the inclination of courts of
law in modern times generally to lean against exceptions to
testimony. This is a case which may be considered somewhat
anomalous, and we think it safest to admit the testimony, leaving
its credibility to the jury.
Another exception was to the refusal of the court to allow a
deposition to be read by the plaintiff which had been taken
according to a prevalent practice of the state courts. It is not
pretended that the deposition was admissible according to the
positive rules of law or the rules of the circuit court, and it is
not now produced so that we can see what were the circumstances
under which it was taken. No practice, however convenient, can give
validity to depositions which are not taken according to law or the
rules of the circuit court unless the parties expressly waive the
objection or by previous consent agree to have them taken and made
evidence. This objection therefore may at once be dismissed.
The principal arguments, however, at the bar have been urged
against the charge given by the circuit court in summing up the
cause to the jury. The charge is spread
in extenso upon
the record, a practice which is unnecessary and inconvenient and
may give rise to minute criticisms and observations
Page 20 U. S. 427
upon points incidentally introduced for purposes of argument or
illustration, and by no means essential to the merits of the cause.
In causes of this nature, we think the substance only of the charge
is to be examined, and if it appears upon the whole that the law
was justly expounded to the jury, general expressions which may
need and would receive qualification if they were the direct point
in judgment are to be understood in such restricted sense.
It has been already stated that the whole controversy at the
trial turned upon the use of the plaintiff's Hopperboy, and no
other of the inventions included in his patent was asserted or
supposed to be pirated by the defendant.
The plaintiff, with a view to the maintenance of his suit,
contended that his patent, so far as respected the Hopperboy, had a
double aspect. 1. That it was to be as a patent for the whole of
the improved Hopperboy -- that is of the whole machine as his own
invention. 2. That if not susceptible of this construction, it was
for an improvement upon the Hopperboy, and he was entitled to
recover against the defendant for using his improvement. The
defendant admitted that he used the improved Hopperboy, and put his
defense upon two grounds: 1. that if the patent was for the whole
machine,
i.e. the improved Hopperboy, the plaintiff was
not the inventor of the improved Hopperboy so patented; 2. that if
the patent was for an improvement only upon the Hopperboy, the
specification did not describe the nature and extent of the
improvement,
Page 20 U. S. 428
and if it did, still the patent comprehended the whole machine,
and was broader than the invention. To the examination of these
points and summing up the evidence the attention of the circuit
court was exclusively directed, and the question is whether the
charge in respect to the matters of law involved in these points
was erroneous to the injury of the plaintiff.
We will consider the points in the same order in which they were
reviewed by the circuit court. Was the patent of the plaintiff, so
far as respects his improved Hopperboy, a patent for the whole
machine as his own invention? It is not disputed that the
specification does contain a good and sufficient description of the
improved Hopperboy and of the manner of constructing it, and if
there had been any dispute on this subject, it would have been
matter of fact for the jury, and not of law for the decision of the
court. The plaintiff, in his specification, after describing his
Hopperboy, its structure, and use, sums up his invention as
follows:
"I claim as my invention the peculiar properties or principles
which this machine possesses in the spreading, turning, and
gathering the meal at one operation and the rising and lowering of
its arms by its motion to accommodate itself to any quantity of
meal it has to operate upon."
From this manner of stating his invention, without any other
qualification, it is apparent that it is just such a claim as would
be made use of by the plaintiff if the whole machine was
substantially in its structure and combinations new. The plaintiff
does not state
Page 20 U. S. 429
it to be a specific improvement upon an existing machine,
confining his claim to that improvement, but as an invention
substantially original. In short, he claims the machine as
substantially new in its properties and principles, that is to say
in the
modus operandi. If this be true, and this has been
the construction strongly and earnestly pressed upon this Court by
the plaintiff's counsel in the argument at the present term, what
are the legal principles that flow from this doctrine?
The Patent act of 21 February, 1793, ch. 11, upon which the
validity of our patents generally depends, authorizes a patent to
the inventor for his invention or improvement in any new and useful
art, machine, manufacture, or composition of matter not known or
used before the application. It also gives to any inventor of an
improvement in the principle of any machine, or in the process of
any composition of matter which has been patented, an exclusive
right to a patent for his improvement, but he is not to be at
liberty to use the original discovery, nor is the first inventor at
liberty to use the improvement. It also declares that simply
changing the form or the proportion of any machine or composition
of matter in any degree shall not be deemed a discovery. It further
provides that on any trial for a violation of the patent, the party
may give in evidence, having given due notice thereof, any special
matter tending to prove that the plaintiff's specification does not
contain the whole truth relative to his discovery, or contains more
than is necessary to produce the effect (where the addition or
concealment shall appear to have been to
Page 20 U. S. 430
deceive the public), or that the thing secured by the patent was
not originally discovered by the patentee, but had been in use, or
had been described in some public work anterior to the supposed
discovery of the patentee, or that he had surreptitiously obtained
a person's invention, and provides that in either of these cases,
judgment shall be rendered for the plaintiff with costs, and the
patent shall be declared void. It further requires that every
inventor, before he can receive a patent, shall swear or affirm to
the truth of his invention,
"and shall deliver a written description of his invention, and
of the manner of using, or process of compounding the same, in such
full, clear, and exact terms as to distinguish the same from all
things before known and to enable any person skilled in the art or
science of which it is a branch or with which it is most nearly
connected to make, compound, and use the same, and in the case of
any machine, he shall fully explain the several modes in which he
has contemplated the application of the principle or character by
which it may be distinguished from other inventions."
From this enumeration of the provisions of the act it is clear
that the party cannot entitled himself to a patent for more than
his own invention, and if his patent includes things before known
or before in use as his invention, he is not entitled to recover,
for his patent is broader than his invention. If, therefore, the
patent be for the whole of a machine, the party can maintain a
title to it only by establishing that it is substantially new in
its structure and mode of operation. If the same combinations
existed before
Page 20 U. S. 431
in machines of the same nature up to a certain point, and the
party's invention consists in adding some new machinery or some
improved mode of operation to the old, the patent should be limited
to such improvement, for if it includes the whole machinery, it
includes more than his invention, and therefore cannot be
supported. This is the view of the law on this point which was
taken by the circuit court. That court went into a full examination
of the testimony, and also of the structure of Evans' Hopperboy,
and Stouffer's Hopperboy, and left it to the jury to decide
whether, up to a certain point, the two machines were or were not
the same in principle. If they were the same in principle and
merely differed in form and proportion, then it was declared that
the plaintiff was not entitled to recover, or, to use the language
of the court, if the jury was of opinion that the plaintiff was not
the inventor of the Hopperboy, he was not entitled to recover
unless his was a case excepted from the general operation of the
act. We perceive no reason to be dissatisfied with this part of the
charge; it left the fact open for the jury and instructed it
correctly as to the law. And the verdict of the jury negatived the
right of the plaintiff as the inventor of the whole machine.
The next inquiry before the circuit court was whether the
plaintiff's case was excepted from the general operation of the
act. Upon that it is unnecessary to say more than that the point
was expressly decided by this Court in the negative upon the former
writ of error. And we think the opinion of this Court delivered on
that occasion is correctly understood
Page 20 U. S. 432
and expounded by the circuit court. It could never have been
intended by this Court to declare, in direct opposition to the very
terms of the patent act, that a party was entitled to recover
although he should be proved not to have been the inventor of the
machine patented, or that he should be entitled to recover
notwithstanding the machine patented was in use prior to his
alleged discovery. There is undoubtedly a slight error in drawing
up the judgment of the court upon the former writ of error, but it
is immediately corrected by an attentive perusal of the opinion
itself. And we do not think that it can be better stated or
explained than in the manner in which the circuit court has
expounded it.
We are then led to the examination of the other point of view in
which the plaintiff's counsel have attempted to maintain this
patent. That is, by considering it not as a patent for the whole of
the machine or improved Hopperboy, but as an improvement of the
Hopperboy. Considered under this aspect, the point presents itself
which was urged by the defendant's counsel,
viz., that if
it be a patent for an improvement, it is void because the nature
and extent of the improvement is not stated in the specification.
The circuit court went into an elaborate examination of the law
applicable to this point and into a construction of the terms of
the patent itself, and came to the conclusion that no distinct
improvement was specified in the patent, that such specification
was necessary in a patent for an improvement, and that for this
defect the plaintiff was not entitled to recover, supposing his
patent to be for an improvement
Page 20 U. S. 433
only of an existing machine. It may be justly doubted whether
this point at all arises in the cause, for the very terms of the
patent, as they have been already considered and as they have been
construed at the bar by the plaintiff's counsel at the present
argument, seem almost conclusively to establish that the patent is
for the whole machine -- that is, for the whole of the improved
Hopperboy, and not for a mere improvement upon the old Hopperboy.
But waiving this point, can the doctrine asserted at the bar be
maintained, that no specification of an improvement is necessary in
the patent, and that it is sufficient if it be made out and shown
at the trial, or may be established by comparing the machine
specified in the patent with former machines in use? That there is
no specification of any distinct improvement in the present patent
is not denied; that the patent is good without it is the subject of
inquiry. Let this be decided by reference to the patent act.
The third section of the patent act requires, as has been
already stated, that the party
"shall deliver a written description of his invention in such
full, clear, and exact terms as to distinguish the same from all
other things before known and to enable any person skilled in the
art or science, &c., to make, compound, and use the same."
The specification, then, has two objects -- one is to make known
the manner of constructing the machine (if the invention is of a
machine) so as to enable artisans to make and use it, and thus to
give the public the full benefit of the discovery after the
expiration
Page 20 U. S. 434
of the patent. It is not pretended that the plaintiff's patent
is not in this respect sufficiently exact and minute in the
description. But whether it be so or not is not material to the
present inquiry. The other object of the specification is to put
the public in possession of what the party claims as his own
invention, so as to ascertain if he claim anything that is in
common use or is already known, and to guard against prejudice or
injury from the use of an invention which the party may otherwise
innocently suppose not to be patented. It is therefore for the
purpose of warning an innocent purchaser or other person using a
machine of his infringement of the patent, and at the same time of
taking from the inventor the means of practicing upon the credulity
or the fears of other persons by pretending that his invention is
more than what it really is or different from its ostensible
objects, that the patentee is required to distinguish his invention
in his specification. Nothing can be more direct than the very
words of the act. The specification must describe the invention "in
such full, clear, and distinct terms as to distinguish the same
from all other things before known." How can that be a sufficient
specification of an improvement in a machine which does not
distinguish what the improvement is nor state in what it consists
nor how far the invention extends? Which describes the machine
fully and accurately, as a whole, mixing up the new and old, but
does not in the slightest degree explain what is the nature or
limit of the improvement which the party claims as his own? It
seems to us perfectly clear that such a specification
Page 20 U. S. 435
is indispensable. We do not say that the party is bound to
describe the old machine, but we are of opinion that he ought to
describe what his own improvement is, and to limit his patent to
such improvement. For another purpose, indeed, with the view of
enabling artisans to construct the machine, it may become necessary
for him to state so much of the old machine as will make his
specification of the structure intelligible. But the law is
sufficiently complied with in relation to the other point by
distinguishing in full, clear, and exact terms the nature and
extent of his improvement only.
We do not consider that the opinion of the circuit court differs
in any material respect from this exposition of the patent act on
this point, and if the plaintiff's patent is to be considered as a
patent for an improvement upon an existing Hopperboy, it is
defective in not specifying that improvement, and therefore the
plaintiff ought not to recover.
Upon the whole, it is the opinion of the majority of the Court
that the judgment of the circuit court ought to be
Affirmed with costs.
MR. JUSTICE LIVINGSTON dissented.
At this late period, when the patentee is in his grave and his
patent has expired a natural death, we are called on to say whether
his patent ever had a legal existence, and it may seem not very
important to the representatives of the patentee what may be the
decision of this Court. But understanding that many other actions
are pending for a violation of this part of the patent right, and
that infractions have taken place for which actions may yet be
commenced, and believing
Page 20 U. S. 436
that the decision we are about to make will have a very
extensive, if not a disastrous bearing on many other patents for
improvements and will in fact amount to a repeal of many of them, I
have though proper to assign my reasons for dissenting from the
opinion just delivered.
In doing this, my remarks will be confined principally to the
charge of the court so far as it applies to the claim of Evans for
an improvement on a Hopperboy.
I was much struck with the argument of the plaintiff's counsel
in favor of the patent's being for an original invention, and not
for an improvement; nor would it in my opinion be a forced
construction to regard it as a patent for a combination of machines
to produce certain results and not for any of the machines nor the
different parts of which the whole is composed.
But considering it as a patent for an improvement on a
Hopperboy, in which light it had been regarded as well by the
circuit as by this Court when this cause was here before, I proceed
to examine the charge so far as it relates to this part of the
subject.
The court, after stating in what particulars the plaintiff's
counsel contended that his improvement consists, which is
unnecessary to repeat here, proceeds:
"The plaintiff has laid before you strong evidence to prove that
his Hopperboy is a more useful machine than the one which is
alleged to have been previously discovered and in use. If, then,
you are satisfied of this fact, the point of law which has been
Page 20 U. S. 437
raised by the defendant's counsel remains to be considered,
which is that the plaintiff's patent for an improvement is void
because the nature and extent of his improvement is not stated in
the specification."
"The patent is for an improved Hopperboy, as described in the
specification, which is referred to and made part of the patent.
How does the specification express in what his improvement
consists? It states all and each of the parts of the entire
machine, its use and mode of operating, and claims as his invention
the peculiar properties or principles of the machine,
viz., the spreading, turning, and gathering the meal and
the raising and lowering of its arms by its motion to accommodate
itself to the meal under it. But does this description designate
the improvement or in what it consists? Where shall we find the
original Hopperboy described, either as to its construction,
operation, or use or by reference to anything by which a knowledge
of it may be obtained? Where are the improvements on such originals
stated? The undoubted truth is that the specification communicates
no information whatever upon any of these points."
After some further reasoning on the subject and showing that the
plaintiff's case is not excepted from the general rule of law by
the act which was passed for his relief, the court declares that
for this imperfection or omission in the specification, the
"plaintiff is not entitled to recover for an alleged infringement
of his patent for the improvement on the Hopperboy." This was
equivalent to saying that for this defect in the specification, the
patent for the improved Hopperboy was void, and
Page 20 U. S. 438
of course that no action at all, whatever might be the state of
the evidence, could be maintained for the use of it. It left
nothing as it regarded the improved Hopperboy for the jury to
decide. Such is the charge, and it is delivered in terms too plain
to be misunderstood.
The objections to it are now to be considered. In doing this, it
will be shown
1st. That the specification is not defective, and that although
it does not discriminate in what particulars the machine in
question does differ from other Hopperboys in use, yet if from the
whole of the description, taken together, the machine is specified
so minutely and so accurately as to be directly and easily
distinguished from all other Hopperboys antecedently known,
everything has been done which the law requires, and the patent is
good.
2d. That if the specification be vicious in the points
mentioned, the patent ought not to be considered as absolutely
void, but it is enough, and the public interest is sufficiently
guarded, if care be taken that it shall not be extended to create a
monopoly in any other machine, which may or may not be mentioned in
the patent, which was previously known or in use. And
3d. That if a patent must be set aside for such defect in the
specification, it should be left to the jury, on the evidence
before it, to decide whether the improvement patented be not set
forth with all necessary precision.
1. I have said the specification is not defective.
In determining this question, it would seem but
Page 20 U. S. 439
natural and just that the validity of a patent granted under a
particular act of Congress should be tested by the terms there used
and by the decisions of our own courts so far as they are of
authority, and that we should be extremely cautious in adopting the
rules which have been introduced into other countries and under
laws not in every respect like our own, however respectable the
tribunals may be which may have prescribed those rules, and this
the more especially as most of the decisions in England which are
generally cited and seem to have been implicitly followed in this
country are of a date long subsequent to the Revolution, and many
of them posterior to the passage of the patent laws in this
country, and which could not therefore have been in the
contemplation of Congress at the time. Besides, there is somewhat
of hardship in constantly applying to a patentee in this country
adjudications made on a British act of Parliament very unlike our
own, and with which decisions he has no means of becoming
acquainted until long after a knowledge of them can be of any
service. Already have we extended to patents for improvements on
old machines several recent decisions in England, although it was
long doubted in that country and as late as the year 1776, whether
by the act of the 21 James I, c. 3, there could be a patent for an
addition only. When the English courts decided in favor of such
patents, they also made rules for their construction as cases
arose, there being no direct provisions in the statute on the
subject. As we have provided by law not only for the security of
inventions entirely new, but also for the
Page 20 U. S. 440
protection of those who may discover any new and useful
improvement on any art, machine, &c., not known or used before,
and have prescribed the terms on which patents under it may be
obtained, it would seem, if all those terms are complied with and
the invention be really new and useful, that no court can have a
right to add any other terms or to require of a patentee anything
more than what the law has enjoined on him. Let us now try the
patent before us by this rule: the Act of the 21 February, 1793, c.
11, after stating in what cases letters patent for inventions may
issue, and how they are to be obtained, requires,
inter
alia, that the inventor, before he receives his patent, shall
take a certain oath and shall deliver a written description of his
invention and of the manner of using the same, in such full, clear,
and exact terms as to distinguish the same from all other things
before known and to enable any person skilled in the art or science
of which it is a branch or with which it is most nearly connected
to make and use the same. And in the case of a machine, he shall
fully explain the principle and the several modes in which he has
contemplated the application of that principle, or character by
which it may be distinguished from other inventions, and he is to
accompany the whole with drawings and written references, where the
nature of the case admits of it, and a model of his machine, if
required by the Secretary of State, is also to be delivered.
In the present case, the patent is for an improved Hopperboy, a
particular description of which and its uses will be found in 3
Wheat.
16 U. S. 466.
It is
Page 20 U. S. 441
not pretended that this machine, if made in conformity with the
description given by Mr. Evans, could not in fact be distinguished
from everything else before known, when brought into comparison
with it, nor that a skillful person, from its description, would
not be able to make one like it, which would seem to satisfy every
requisition of the law. But the defendant's counsel say this is not
enough. It should not only in its organization and aggregate be
different from everything else, but every respect in which it
differs in its construction or operation from other machines should
be minutely stated in the specification -- or in other words that
other machines heretofore used for similar purposes should be
either described or referred to therein and the differences between
the patented machines and those in former use be carefully
designated.
The answer to this is that the law does not require it -- that
it is impracticable and would be of no use.
We have seen already that the law prescribes no precise form of
specification, which would have been impracticable, and imposes no
obligation to describe in any particular mode the machine in
question. Not a word is said as to showing in what particulars the
improvement patented differs from all other machines for the same
purpose then in use. If on the whole description taken together the
machine of the plaintiff can be distinguished from other machines
when compared with his, the words and the objects of the law are
satisfied. The law appears to have nothing else in view in
requiring a specification than the instruction
Page 20 U. S. 442
of the public -- that is, to guard them against a violation of
the patented improvement and to enable them, when the letters
patent expire, from the specification filed to make a machine
similar to the one which had been patented. The only inquiry
therefore ought to be whether this obvious intention of the
legislature has been answered by the particular specification which
may be the subject of litigation, and if enough appears either to
prevent a person from encroaching on the right of the patentee or
to enable a skillful person to make a machine which shall not only
resemble the one patented, but produce the like effect; more ought
not to be required. Whether these ends be attained by a particular
description of every part of the improved machine or by describing
in what respect it differs from other machines can make no
difference. The information to the public is as valuable and
intelligible, if not more so, in the former case than in the
latter. If it be, taken altogether, an improved machine for the
purpose of producing certain results, and so described that it may
be distinguished from other machines, and that others may be made
on the same model, it is a literal compliance with all that the law
requires.
If the different parts of the machine and their combination or
connection be accurately described or intelligibly set forth, why
should it not be supported although no reference be made to other
machines dissimilar in construction and which, although applied for
the same purpose, are inferior in the beneficial results produced
by them. To the objection that it does not precisely appear in
Page 20 U. S. 443
what the patent Hopperboy differs from those antecedently in
use, the answer is, and it ought to be conclusive, that the
patentee does not mean to abridge or restrain the public from using
those or any other machines, so that they differ from the one
described by him and that any mechanic, on having his specification
before him, can avoid an interference with his invention. To
confine our examination to the only Hopperboy which was produced on
this trial, and which was called Stouffer's Hopperboy, and of which
a model has been exhibited to the court, together with a model of
Evans' improved Hopperboy, can a doubt be entertained for an
instant that they are very dissimilar and that any mechanic would
not in a moment point out the distinctions between them -- either
from the specification or the model -- or that he would not be able
to make a Stouffer Hopperboy, or the improved Hopperboy of Evans,
as he might be directed; and in like manner he would be able, when
brought together, to discriminate between any other Hopperboy and
that of Evans, provided they were different, so that those who were
desirous of having a Hopperboy, on an old construction, and of not
interfering with the rights of Mr. Evans, would labor under no
difficulty whatever. But inasmuch as Evans himself has not
discriminated or exhibited in his specification all the points of
difference between his and other Hopperboys, it is supposed that
his patent is for some Hopperboy already in use, as well as for his
improvement thereon. The very terms of his specification precluded
every supposition of that kind. If there
Page 20 U. S. 444
were a thousand of those machines on different constructions in
use before the date of his patent, he leaves to the public the
undisturbed enjoyment of them. He meddles not nor does he pretend
to interfere with any of them until they make or use one
constructed, in all its parts, upon his model. That form and that
form alone he claims as his invention or improvement. It would not
have been difficult even from British authorities to show that this
specification was sufficient, but I prefer recurring to our own law
as the only proper criterion of the validity or invalidity of the
specification in question. My opinion is that it has all the
certainty which is required by law.
Such a specification as is required by the circuit court is not
only not prescribed by law, but to me it appears to be one
extremely difficult, if not impracticable.
If the inventor of an improved Hopperboy is to discriminate in
his specification between his improvements and any particular
Hopperboy which may be produced on that trial, and is to be
nonsuited for not having done so; however correct and
distinguishing it may be in every other respect, he must do the
like as to all other Hopperboys, and if he must describe any, he
must describe all others with which he may be acquainted, and after
all someone may be introduced at the trial of which he had never
heard or which he had never seen, and inasmuch as he had not stated
in what respects it was improved by his machine, although this
would immediately be seen on inspection, he must not
Page 20 U. S. 445
only fail of recovering damages for a manifest violation of his
right, but must have his patent declared void by the court without
a trial by jury and be deprived of the fruits of a most valuable
improvement, not because he was not the
bona fide inventor
-- not because he had not described his improvement with sufficient
certainty, according to the act of Congress -- but because
something more was required of him of which he had no means of
information. The only Hopperboy which made its appearance on this
trial except the plaintiff's was that known by the name of the
Stouffer Hopperboy, but
non constat that there may not
have been a hundred different kinds in use, and some entirely
unknown to the plaintiff. If he could have described them all,
which would not have been an easy task, and stated in what
particulars his Hopperboy differed from them all, his specification
would have extended to an immoderate length, and after all have
been less intelligible and satisfactory than a full description,
such as is given here, of all the parts of which his consisted and
of the manner in which they are put together. There may be cases in
which an improvement may be so simple as to describe it at once by
reference to the thing or machine improved, as in the case of an
improvement of this kind on a common watch. But even in the case of
a watch, if the improvement pervades the whole machine, it would be
a compliance with the terms of the law if the patentee described
every part of his improved watch, with its principle, without
discriminating particularly in what respect his different wheels,
&c., varied from all other watches
Page 20 U. S. 446
then in use. Many patents have been obtained for improvements on
stoves, locks, &c., but has it ever been required of the
patentee in such cases not only to describe in what manner his
stove or lock is constructed and the benefits resulting from such
construction, but to point out every particular in which they
differ from those already in use? This, to say the least, would be
a work of great labor and of little or no use to the public, who
would be at liberty to use a stove or lock of any construction not
interfering with the one described in the specification of the
patentee.
A few observations will show that such a description as the
defendant's counsel contend for would be of no greater use than the
one which Mr. Evans has adopted. After all the pains to
discriminate had been taken, the question would still recur how is
the improved Hopperboy to be constructed? and if, from the
specification, that could not be ascertained, then and then only
ought it to be pronounced defective. But if from the description
the improved Hopperboy could be made by a skillful mechanic, then
the public is informed, not only of what has been patented, but of
what still remains common as before, and if an action be brought
for a violation of the patented right, and it should appear that
the Hopperboy used is not of such construction, the plaintiff must
fail in his suit. It cannot be said, with any justice that if the
discrimination be not made, the patent includes not only the
improvement, but the old machine on which the improvement is
engrafted.
Page 20 U. S. 447
The old machine still remains public property; may be used by
everyone; nor can any person be considered as infringing on the
patent right until he adds to the machine already in use the
improvements of the patentee, or in other words until he makes a
machine resembling in all its parts the one which is described in
the specification.
2d. But if the specification be defective in the points which
have been mentioned, is the patent therefore necessarily void? This
is a question of vital importance to every patentee.
I am aware that it has been said in England that the patent must
not be more extensive than the invention; therefore, if the
invention consists in an improvement only and the patent is for the
whole machine, it is void. But I am not aware that it has ever been
decided there that when a patent is for an "improved machine" and
is taken out only for the machine thus improved, and not for the
machine as before used, that such patent is void.
But whatever may have been some of the late decisions in that
country, I prefer and think it the better course to consider this
question also under our own act, which in this respect is different
from the English statute and will therefore afford us more light
and be a safer guide than either that statute or the judgment on
it. In what part, then, of our act, may it be asked, is an
authority given to the federal courts to declare a patent void for
a defective specification, however innocently made, and which in
its consequences can injure no one? I state the question in this
way not because I think it necessary to show that if injurious
consequences
Page 20 U. S. 448
might flow from an imperfect specification, a patent must
necessarily be declared void, but because I think it must be
admitted that there is no evidence whatever in this cause to induce
anyone to believe that Mr. Evans either intended to take or that he
did receive a patent for anything beyond his invention, which was
the Hopperboy in the improved condition in which he describes
it.
To declare a patent for a highly useful improvement absolutely
void merely for a defective specification, if this be one, is a
very high penalty and should not be lightly inflicted unless
rendered absolutely necessary by law, the more especially as
without recurring to so harsh a measure, a court and jury will
always be able to confine a remedy on the patent to violations of
the improvement actually secured, and if the patentee should be so
foolish or ill advised as to attempt to bring within its reach the
machine in its unimproved state, or any other machine before
common, he would do it not only with no prospect of success, but
with the certainty of a defeat, attended with a very heavy expense.
As long, therefore, as he could maintain no action but for his
improvement, it is not perceived why he should be visited with so
heavy a denunciation as the forfeiture of his improvement merely
because, by some construction of his specification, which might
after all be a mistaken one, he had included in his invention
something of ever so trifling a nature which was already known. But
if such be the law and such the frail tenure on which these rights
are held, however hard it may apply in particular cases, it must
have its course.
But
Page 20 U. S. 449
I cannot think it our duty or that we have any right to
pronounce a patent void on this account, but that this important
office is exclusively confided to a jury. Whether we have this
right or not will now be examined.
If such summary authority were intended to have been conferred
on the federal courts, the patent law ought to have been and would
have been explicit. This is so far from being the case that in the
patent law, a provision, but of a different kind, is inserted on
this very subject which is not the case in the statute of James. It
was foreseen that it must sometimes happen, either from the
imperfection of language or the ignorance of a patentee, that
defective specifications would be made; it was also foreseen that
an imperfect specification might be made from design, and with a
view of deceiving the public. We accordingly find it provided by
law that among other matters which the defendant may rely on in an
action for infringing a patent right is
"that the specification filed does not contain the whole truth
relative to his discovery, or that it contains more than is
necessary to produce the described effect, which concealment or
addition must fully appear to have been made for the purpose of
deceiving the public."
If judgment is rendered for the defendant on this ground, the
patent is to be declared void. This section applies as well to
patents for an improvement on an existing machine as for an
invention entirely new, and was intended to protect the patent in
either case against an avoidance for an imperfect and innocent
specification of the invention patented. If, therefore, the defect
which is alleged
Page 20 U. S. 450
really exist in the specification of the patented improvement,
the court is not authorized, on its mere inspection, to declare it
imperfect and the patent on that account void. Both questions are
clearly questions of fact, and are so treated by the legislature.
The party has a right to insist with the jury not only that his
specification is perfect, but that if it be otherwise, no deception
was intended on the public, and on either ground it may find a
verdict in his favor. So if, on the allegation that the thing
secured by patent was not originally discovered by the patentee, a
verdict passes against the plaintiff, he loses his patent. In like
manner, in this case, if it had appeared that the "improved
Hopperboy," which was the thing secured by patent, had not been
originally discovered by Mr. Evans, and a verdict had passed
against him on that ground, there would have been an end of his
patent. From the tenth section, also, an argument may be drawn
against the right of a court to declare a patent void on mere
inspection for redundancy or deficiency in a specification. This
section provides a mode of proceeding before the district court
where there may be reason to believe a patent was obtained
surreptitiously or upon false suggestions, and if on such
proceeding it shall appear that the patentee was not the true
inventor, judgment shall be rendered by such court for a repeal of
the patent. This is the only case in which a power is conferred on
a court to vacate a patent without the intervention of a jury. If a
proceeding of this kind had been instituted before the proper
tribunal against Mr. Evans, the court would
Page 20 U. S. 451
have examined witnesses and have formed its opinion on their
testimony, and it is not clear that even in this case a jury might
not have been called in.
This section has been taken notice of to show that it could
never have been the intention of the legislature that a patent
should be avoided on any account whatever on the opinion of the
court alone, without some examination other than that of the
specification, whatever might be its excess or poverty of
description. If it had been intended to vest so important a power
in the court, it would not have been left to mere implication, but
would have been conferred in terms admitting of no doubt. My
opinion, therefore, on this part of the charge is that the court
erred in taking upon itself to pronounce the patent void, even if
the specification had been defective or imperfect in not
particularly describing what the improvements of the patentee were,
this being a power expressly delegated to a jury, which, under all
the circumstances of the case, is to decide both questions of fact
-- that is, whether the specification be deficient or superfluous
and the intention with which it was made so. I repeat once more
that whatever may have been the decisions in England, which are not
admitted to be contrary to the view which has here been taken of
the subject, they are not of authority, and are upon an act so very
different in its structure from our own as to afford little or no
useful information on the subject. One great and important
difference in the two laws is that the statute of James I has not
prescribed a mode in which a patent for a vicious specification is
to be set aside.
Page 20 U. S. 452
The patent is granted on condition that a specification be
enrolled.
I give no opinion on the questions which arise from the
admission of certain witnesses who were supposed to be disqualified
on the score of being interested, for if the patent for the
Hopperboy be void for a defect in its specification, and that
question is not to be referred to the jury, and such I understand
to be the opinion of four of the judges, it is very unimportant
whether any error was committed in this respect by the court before
which the cause was tried, as a verdict must ever be rendered
against the representatives of the patentee on this ground,
whatever may be the state of the evidence.
MR. JUSTICE JOHNSON and MR. JUSTICE DUVALL also dissented.
Judgment affirmed with costs.
