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
Page 31 U. S. 219
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
Page 31 U. S. 220
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
Page 31 U. S. 221
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
Page 31 U. S. 222
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
Page 31 U. S. 223
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
Page 31 U. S. 224
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
Page 31 U. S. 225
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
Page 31 U. S. 226
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,
Page 31 U. S. 227
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.
Page 31 U. S. 238
MR. CHIEF JUSTICE MARSHALL delivered the opinion of the
Court.
Page 31 U. S. 239
This action was brought by Grant and Townsend against E. and H.
Raymond, to recover damages for an infringement of their right
under a patent granted to the plaintiff Joseph Grant in April 1825.
It recited that a former patent had been issued in August, 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 is brought is to continue fourteen years from the day on
which the original was issued.
One of the pleas filed by the defendants, contained the
following averment:
"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 proportion, 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 specifications and drawings are wholly 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."
The plaintiffs reply that they ought not to be barred
"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 are defective in any of the
particulars in that behalf alleged in the said last mentioned plea,
and this they pray may be inquired of by the country."
On this replication issue was joined.
Page 31 U. S. 240
At the trial, the counsel for the defendants objected that the
Secretary of State had no power by law to accept a surrender of and
to cancel the said letters patent, or to inquire into or to decide
upon the causes for so doing, or to grant said 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 court decided 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 old patent in manner
aforesaid. To which decision the counsel for the defendants
excepted.
After adducing the testimony on which they relied to support
their plea hereinbefore stated, the counsel for the defendants
moved the court to instruct 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.
The jury found a verdict for the plaintiffs, and assessed their
damages to $3,266.66, the judgment on which is brought before this
Court by a writ of error.
The first question in the cause respects the power of the
Secretary of State to receive a surrender of a patent, cancel the
record thereof, and issue a new patent for the unexpired part of
the fourteen years for which the original had been granted. The
court was of opinion that this might be done "when the defect in
the specification arose from inadvertence or mistake, and without
any fraud or misconduct on the part of the patentee."
The right of the patentee to surrender his patent has not been
denied, but the plaintiffs in error insist that no power exists to
grant a new patent for the unexpired term. The
Page 31 U. S. 241
words of the act, they say, do not confer this power. It cannot
be exercised with its necessary guards by the Department of State,
and inconvenience of no inconsiderable magnitude might result to
the public from its exercise. The Secretary of State is, in the act
of making out patents, a mere ministerial officer, and can exercise
no power which is not expressly given.
It is undoubtedly true that the Secretary of State may be
considered, in issuing patents, as a ministerial officer. If the
prerequisites of the law be complied with, he can exercise no
judgment on the question whether the patent shall be issued. It is
equally true that the act of Congress contains no words which
expressly authorize the secretary to issue a corrected patent if
the original, from some mistake or inadvertence in the patentee,
should be found incompetent to secure the reward which the law
intended to confer on him for his invention. The force of this
objection and of the argument founded on it is felt. If the new
patent can be sustained, it must be on the general spirit and
object of the law, not on its letter.
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. This subject was
among the first which followed the organization of our government.
It was taken up by the first Congress at its second session, and an
act was passed authorizing a patent to be issued to the inventor of
any useful art, &c., on his petition,
"granting to such petitioner, his heirs, administrators, or
assigns for any term not exceeding fourteen years the sole and
exclusive right and liberty of making, using, and vending to others
to be used the said invention or discovery."
The law further declares that the patent "shall be good and
available to the grantee or grantees by force of this act to all
and every intent and purpose herein contained." The emendatory act
of 1793 contains the same language, and it cannot be doubted that
the settled purpose of the United States has ever been and
continues to be to confer on the authors of useful inventions an
exclusive right in their inventions for the time mentioned in their
patent.
Page 31 U. S. 242
It is the reward stipulated for the advantages derived by the
public for the exertions of the individual, and is intended as a
stimulus to those exertions. The laws which are passed to give
effect to this purpose ought, we think, 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 actually received if this can be done without transcending the
intention of the statute or countenancing acts which are fraudulent
or may prove mischievous. The public yields nothing which it has
not agreed to yield; it receives all which it has contracted to
receive. The full benefit of the discovery, after its enjoyment by
the discoverer for fourteen years, is preserved, and for his
exclusive enjoyment of it during that time the public faith is
pledged. That sense of justice and of right which all feel pleads
strongly against depriving the inventor of the compensation thus
solemnly promised because he has committed an inadvertent or
innocent mistake.
If the mistake should be committed in the Department of State,
no one would say that it ought not to 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 act does not in terms authorize a new
patent even in this case. Its emanation is not founded on the words
of the law, but 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 counsel for the plaintiffs in error have shown very clearly
that the question of inadvertence or mistake is a judicial
question, which cannot be decided by the Secretary of State.
Neither can he decide those judicial questions on which the
validity of the first patent depends. Yet he issues it without
inquiring into them. Why may he not in like manner issue the second
patent also? The correct performance of all those preliminaries on
which the validity of the original depends is always examinable in
the court in which a suit for its violation shall be brought. Why
may not those points on which the validity of the amended patent
depends be examined
Page 31 U. S. 243
before the same tribunal? In the case under consideration, those
questions were not supposed by the circuit court to have been
decided in the Department of State, but were expressly submitted to
the jury. The rightfulness of issuing the new patent is declared to
depend on the fact that "the defect in the specification arose from
inadvertence or mistake, and without any fraud or misconduct on the
part of the patentee." The jury was, of course, to inquire into the
face. The condition on which the right to issue the patent depended
could be stated to it for no other purpose.
It has been said that this permission to issue a new patent on a
reformed specification when the first was defective through the
mistake of the patentee would change the whole character of the act
of Congress.
We are not convinced of this. 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
devoted to these discoveries by the exclusive right to make, use,
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, we think, be a departure from the spirit
and character of the act.
An objection much relied on is that after the invention has been
brought into general use, those skilled in the art or science with
which it is connected, perceiving the variance between the
specification and the machine and availing themselves of it, may
have constructed, sold, and used the machine without infringing the
legal rights of the patentee or incurring the penalties of the law.
The new patent would retroact on them and expose them to penalties
to which they were not liable when the act was committed.
This objection is more formidable in appearance than in reality.
It is not probable that the defect in the specification can be so
apparent as to be perceived by any but those who examine it for the
purpose of pirating the invention. They are not entitled to much
favor. But the answer to the objection is that this defense is not
made in this case, and the
Page 31 U. S. 244
opinion of the circuit court does not go so far as to say that
such a defense would not be successful. That question is not before
the Court, and is not involved in the opinion we are considering.
The defense, when true in fact, may be sufficient in law
notwithstanding the validity of the new patent.
It has been also argued that the new patent must issue on the
new specification and on the application which accompanies it.
Consequently it will not be true that the machine was "not known or
used before the application."
But the new patent, and the proceedings on which it issues, have
relation to the original transaction. The time of the privilege
still runs from the date of the original patent. The application
may be considered as appended to the original application, and if
the new patent is valid, the law must be considered as satisfied if
the machine was not known or used before that application.
It has been urged that the public was put into possession of the
machine by the open sale and use of it under the defective
specification, and cannot be deprived of it by the grant of a new
patent. The machine is no longer the subject of a patent.
This would be perfectly true if the second patent could be
considered as independent of the first. But it is in no respect so
considered. The communication of the discovery to the public has
been made in pursuance of law, with the intent to exercise a
privilege which is the consideration paid by the public for the
future use of the machine. If by an innocent mistake the instrument
introduced to secure this privilege fails in its object, the public
ought not to avail itself of this mistake and to appropriate the
discovery without paying the stipulated consideration. The attempt
would be disreputable in an individual, and a court of equity might
interpose to restrain him.
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 this
settled practice in a case where we are not satisfied it is
contrary to law and where we are satisfied that it is required by
justice and good faith.
Page 31 U. S. 245
We will now proceed to the second exception.
The plea assigns the particular defect supposed to exist in the
specification, and then proceeds to aver, in the very words of the
act, that it
"does 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, &c., to make and use the same,"
&c.
The plea alleges, in the words of the act, that the
prerequisites to the issuing a patent had not been complied
with.
If the matter alleged in this plea constituted no bar to the
action, the plaintiffs might have demanded, and have submitted the
question of law to the court. But they have chosen to deny the
facts alleged in the plea and to aver in their replication "that
neither the specification nor the drawings thereto annexed are
defective in any of the particulars in that behalf alleged." Issue
was joined upon this replication, and it is that issue which the
jury was sworn to try.
At the trial, the counsel for the defendants, after the evidence
was closed, asked the court in substance to instruct the jury that
if it should be of opinion that the defendants had maintained and
proved the facts alleged in their plea, it must find for the
defendants. The court refused this instruction. Ought it to have
been refused? If in the opinion of the jury the defendants have
proved maintained every fact alleged in the plea on which the issue
they are sworn to try is joined, ought not the jury to find that
issue for the defendants? Is not this required by their oaths? The
conclusion, "and that for the cause aforesaid, said letters patent
are void," is an inference of law from the facts previously
alleged, not the allegation of a distinct fact to be submitted to
the jury.
The court proceeded to instruct 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."
Now this "design," this "purpose of deceiving the public,"
constituted no part of the issue. The defendants had not alleged
it, and could not be supposed to come prepared to prove it. A
verdict for them would not imply it. The instruction is
Page 31 U. S. 246
understood to direct a verdict which finds in fact that the
description or specification is not defective, and this verdict
against the evidence is to be found because that defect "arose not
from design, or for the purpose of deceiving the public."
But we must inquire whether the instruction, independent of its
departure from the issue, be consistent with law. It is "that the
patent would not be void unless," &c.
The fifth section of the act gives the party aggrieved an action
for the infringement of his patent right. The sixth provides
"That the defendant in such action shall be permitted to plead
the general issue and give this act in evidence, and to give in
evidence any special matter, of which notice in writing may have
been given to the plaintiff or his attorney thirty days before
trial, 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
described effect, which concealment or addition shall fully appear
to have been made for the purpose of deceiving the public, or that
the thing thus secured,"
&c., "in either of which cases judgment shall be rendered
for the defendant with costs, and the patent shall be declared
void."
Courts did not, perhaps, at first distinguish clearly between a
defense which would authorize a verdict and judgment in favor of
the defendant in the particular action, 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. This 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 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 annual the patent, he
must proceed in precise conformity to the sixth section. If he
depends on evidence "tending to prove that the specification filed
by the plaintiff
Page 31 U. S. 247
does not contain the whole truth relative to his discovery, or
that it contains more than is necessary to produce the described
effect," it may avail him so far as 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 by the court. 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.
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 defect in the specification might not have
arisen from design and for the purpose of deceiving the public.
That such is the law we are entirely satisfied. The third section
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 the patent. The necessary consequence 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 of the first impression, we
should come to this conclusion, but it is understood to be
settled.
The act of Parliament concerning monopolies contains an
exception on which the grants of patents for inventions have issued
in that country. The construction of so much of that exception as
connects the specification with the patent, and makes the validity
of the latter dependent on the correctness of the former, is
applicable, we think, to proceedings under the third section of the
American act. The English books
Page 31 U. S. 248
are full of cases in which it has been held that a defective
specification is a good bar when pleaded to, or a sufficient
defense when given in evidence on the general issue, on an action
brought from the infringement of a patent right. They are very well
summed up in Godson's Law of Patents, title Specification, and also
in the chapter respecting the infringement of patents; also in
Holroyd on Patents, where he treats of the specification, its form
and requisites. It is deemed unnecessary to go through the cases,
because there is no contrariety in them and because the question is
supposed to be substantially settled in this country.
Pennock & Sellers v.
Dialogue, 1 Pet. 1, was not, it is true, a case of
defect in the specification or description required by the third
section, but one in which the applicant did not bring himself
within the provision of the first section, which requires that
before a patent shall issue, the petitioner shall allege that he
has invented a new and useful art, machine, &c., "not known or
used before the application."
This prerequisite of the first section, so far as a failure in
it may affect the validity of the patent, is not distinguishable
from a failure of the prerequisites of the third section.
On the trial, evidence was given to show that the patentee had
permitted his invention to be used before he took out his patent.
The court declared its opinion to the jury that if an inventor
makes his discovery public, he abandons the inchoate right to the
exclusive use of the invention. "It is possible," added the
court,
"that the inventor may not have intended to give the benefit of
his discovery to the public. . . . But it is not a question of
intention, . . . but of legal inference, resulting from the conduct
of the inventor and affecting the interests of the public. It is
for the jury to say whether the evidence brings this case within
the principle which has been stated. If it does, the court is of
opinion that the plaintiff is not entitled to a verdict."
The jury found a verdict for the defendants, an exception was
taken to the opinion, and the judgment was affirmed by this
Court.
This case affirms the principle that a failure on the part of
the patentee in those prerequisites of the act which authorize a
patent is a bar to a recovery in an action for its infringement,
and that the validity of this defense does not depend on
Page 31 U. S. 249
the invention of the inventor, but is a legal inference upon his
conduct.
Upon these authorities and this reasoning, we are of opinion
that the instruction was erroneous and that the judgment ought to
be reversed and the cause remanded. One of the judges composing the
majority thinks that the direction would have been erroneous on a
plea properly framed upon the third section of the act and averring
the facts of a defective specification and a noncompliance with
other requisitions of that section, for that such a plea would be a
good bar and defense to the action; but in his view the plea relies
upon the facts as avoiding the patent entirely, and avers it to be
void. He thinks, however, that the replication puts the facts, and
not the point whether void or not, in issue, and that the direction
of the court was erroneous since it was equivalent to a declaration
that if all the facts were proved, the issue ought not to be found
for the defendants unless the imperfection of the specification
arose from a fraudulent design.
The judgment is reversed, and the cause remanded with
directions to issue a venire facias de novo.
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the Southern
District of New York and was argued by counsel, on consideration
whereof it is the opinion of this Court that the said circuit court
erred in instructing 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."
Whereupon it is ordered and adjudged by this Court that the
judgment of the said circuit court in this cause be and the same is
hereby reversed, and that this cause be and the same is hereby
remanded the said circuit court with directions to award a
venire facias de novo.
