When a case is sent to this Court under the discretion conferred
upon the court below by the seventeenth section of the Act of July
4, 1836 (Patent Law), 5 Stat. 124, the whole case comes up, and not
a few points only.
The specification constitutes a part of a patent, and they must
be construed together.
Emerson's patent for "certain improvements in the steam engine,
and in the mode of propelling therewith either vessels on the water
or carriages on the land," decided not to cover more ground than
one patent ought to cover, and to be sufficiently clear and
A patentee, whose patent right has been violated, may recover
damages for such infringement for the time which intervened between
the destruction of the patent office by fire, in 1836, and the
restoration of the records under the act of March 3, 1837.
This was a suit for the violation of a patent right, and the
writ of error was allowed under the seventeenth section of the act
On 8 March, 1834, John B. Emerson, the defendant in error,
obtained the following letters patent, which were recorded anew on
5 March, 1841, viz.:
"The United States of America, to all to whom these letters
patent shall come: "
"Whereas John B. Emerson, a citizen of the United States, hath
alleged that he has invented a new and useful improvement in the
steam engine, which improvement he states has not been known or
used before his application; hath made
Page 47 U. S. 438
oath that he doth verily believe that he is the true inventor or
discoverer of the said improvement; hath paid into the Treasury of
the United States the sum of thirty dollars, delivered a receipt
for the same, and presented a petition to the Secretary of State,
signifying a desire of 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 John B. Emerson, his heirs, administrators, or assigns, for
the term of fourteen years from the eighth day of March, one
thousand eight hundred and thirty-four, 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 John B. Emerson himself, in the
schedule hereto 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
"Given under my hand, at the City of Washington, this eighth day
of March in the year of our Lord one thousand eight hundred and
thirty-four and of the independence of the United States of America
"By the President:"
"LOUIS McLANE, Secretary of State
"CITY OF WASHINGTON, to-wit:
"I do hereby certify, that the following letters patent were
delivered to me on the eighth day of March in the year of our Lord
one thousand eight hundred and thirty-four, to be examined; that I
have examined the same, and find them conformable to law; and I do
hereby return the same to the Secretary of State, within fifteen
days from the date aforesaid, to-wit, on this eighth day of March,
in the year aforesaid."
"B. F. BUTLER"
"Attorney General of the United States
The schedule referred to in these letters patent, and making
part of the same, containing a description in the words of the said
John Brown Emerson himself, of his improvement in the steam
"To all whom it may concern: "
"Be it known, that I, John Brown Emerson, of the City of New
York, have invented certain improvements in the steam engine, and
in the mode of propelling therewith either vessels on the water or
carriages on the land, and that the following is a full and exact
description thereof. "
Page 47 U. S. 439
"One object of my improvement is to substitute for the crank
motion a mode of converting the reciprocating motion of a piston
into a continued rotary motion, by a new combination of machinery
for that purpose."
"This mode is applicable to an engine either with one or with
two cylinders, and is carried into effect as follows. Alongside of
the cylinder I place a shaft, the lower end of which may revolve in
a step on the platform or foundation upon which the cylinder
stands, in which case it must be somewhat longer than twice the
length of the cylinder, as it must extend above it to a height
somewhat greater than the length of the stroke of the piston.
Sometimes, however, this shaft may have its lower gudgeon only a
small distance below the upper end of the cylinders, whence it must
extend above it as before. Its upper gudgeon must of course be
sustained by a suitable frame. This shaft is to stand parallel to
the piston rod, from which it is to receive its revolving motion.
Upon the upper end of the shaft, above the top of the cylinder,
there is to be placed a solid cylinder of wood or of any other
convenient substance of such diameter as shall cause its periphery
to come nearly into contact with the piston rod for its whole
length, when the piston is raised. The solid cylinder above
described is to be made to revolve in the following manner. I make
a groove in it, which commences near its lower end, and, passing
spirally, extends half-way round it by the time it reaches nearly
to the upper end, or to a distance vertically equal to the stroke
of the engine; from that point it passes down around the opposite
half, and returns into itself at the point of beginning. Upon the
upper end of the piston, against its side, I place a friction
roller, which is to work in the groove in the solid cylinder; the
piston rod rising between parallel guide pieces, by which it is
kept in its proper place, and its tendency to turn round by the
action of the roller in the groove is checked. When the piston is
down, this friction roller will stand in the V formed by the
junction of the grooves on the opposite sides, and as it is raised,
it will in its passage to the upper junction give half a revolution
to the solid cylinder, and in descending will complete the
revolution by the action of the friction roller on the other
portion of the groove."
"When two cylinders are used, they are to be placed parallel to
each other, and at such a distance apart that the pistons of each
may, in like manner, act upon the solid cylinder; the piston of one
being up when the other is down. The boiler, the steam pipe, the
valves for the admission and discharge of steam, and other
appendages, may be similar to some of those already in use. From
the revolving shaft, already described,
Page 47 U. S. 440
a rotary motion may be communicated to paddle wheels, steam
carriages, or other objects. As it is my intention, in general, to
place my cylinders and revolving shaft vertically, I communicate
motion to the horizontal shaft of a paddle wheel by means of bevel
geared wheels near the lower end, or at any convenient part of the
shaft, and by similar gearing, carriages may be propelled upon rail
or ordinary roads."
"When used for steamboats, I employ an improved spiral paddle
wheel, differing essentially from those which have heretofore been
essayed. This spiral I make by taking a piece of metal of such
length as I intend the spiral propeller to be, and of a suitable
width, say, for example, eighteen inches; this I bend along the
center so as to form two sides, say of nine inches in width,
standing at right angles, or nearly so, to each other, and give to
it, longitudinally, the spiral curvature which I wish. Of these
pieces I prepare two or three or more and fix them on to the outer
end of the paddle shaft by means of arms of a suitable length, say
of two feet, more or less, in such a position that the trough form
given to them longitudinally shall be effective in acting upon the
water. It must be entirely under water, and operate in the
direction of the boat's way; instead of metal, the spiral propeller
may be formed of wood, and worked into the proper form -- the
shape, and not the material thereof, being the only point of
"Where a capstan is required, as on board of a steamboat, I
allow the upper end of the vertical shaft before described to pass
through the deck of the vessel, and attach the capstan thereto so
that it may be made to revolve by the action of the shaft, using
such ray wheels and falls to connect the shaft and the capstan as
will allow of their being conveniently engaged and disengaged."
"What I claim as my invention and for which I ask a patent is
the substituting for the crank in the reciprocating engine a
grooved cylinder, operating in the manner hereinbefore described,
by means of its connection with the piston rod, together with all
the variations of which this principle is susceptible, as, for
example, a bar of metal may be bent in the form of a groove, and
attached to the revolving shaft, and friction wheels on the piston
rod may embrace this on each side, producing an effect similar to
that produced by the groove. I also claim the spiral propelling
wheel, contracted and operating in the manner in which I have set
forth, and likewise the application of the revolving vertical shaft
to the turning of a capstan on the deck of a vessel. Not intending
in either of these parts to confine myself to precise forms or
dimensions, but to vary them in such manner as experience or
Page 47 U. S. 441
dictate, whilst the principle of action remains unchanged, and
similar results are produced by similar means."
"JOHN BROWN EMERSON"
At April term, 1844, Emerson brought an action of trespass on
the case in the Circuit Court of the United States for the Southern
District of New York against Hogg and Delamater for an infringement
of his patent right. As one of the points decided by the court was
whether or not the allegations of the declaration corresponded with
the evidence of the patent, it is thought proper to insert the
declaration. It was as follows, viz.:
"John B. Emerson, a citizen of the State of New York, by Peter
Clark, his attorney, complains of Peter Hogg and Cornelius
Delamater, citizens of the same state, defendants, in custody
&c., of a plea of trespass on the case."
"For that, whereas the said plaintiff was the original inventor
of a certain new and useful improvement, in the letters patent
hereinafter mentioned and fully described, the same being a certain
improvement in the steam engine, and in the mode of propelling
therewith either vessels on the water or carriages on the land,
which was not known or used before his said invention and which was
not, at the time of his application for a patent, as hereinafter
mentioned, in public use with his consent or allowance. And the
said plaintiff being so as aforesaid the inventor thereof, and
being also a citizen of the United States, on the eighth day of
March, one thousand eight hundred and thirty four, upon due
application therefor, did obtain certain letters patent therefor,
in due form of law, under the seal of the United States, signed by
Andrew Jackson, then President, and countersigned by Louis McLane,
then Secretary of State, bearing date the day and year aforesaid,
whereby there was secured to him, the said plaintiff, his heirs,
executors, administrators, or assigns, for the term of fourteen
years from and after the date of the said patent, the exclusive
right and liberty of making, using, and vending to others to be
used, the said improvement, as by the said letters patent in court
to be produced will fully appear. And the said plaintiff further
says that the said defendants, well knowing the said several
premises but contriving, and wrongfully and injuriously intending
to injure the plaintiff and deprive him of the profits, benefits,
and advantages which he might and otherwise would have derived and
acquired from the making, using, and vending of the said invention
or improvement after the making and issuing of the said letters
patent, and within the term of fourteen years in said letters
patent mentioned, to-wit, on the
Page 47 U. S. 442
first day of January, eighteen hundred and forty, and on divers
other days and times between that time and the commencement of this
suit, at the City of New York, and within the Southern District of
New York, wrongfully and unjustly, without the leave or license,
and against the will, of the plaintiff, made and sold divers,
to-wit, ten machines for propelling boats, in imitation of the said
invention and improvement or a part of the said invention or
improvement, to the benefit, use, and enjoyment whereof the said
plaintiff was and is entitled as aforesaid, in violation and
infringement of the said letters patent, and of the exclusive right
and privilege to which the plaintiff was and is entitled as
aforesaid, and contrary to the form of the statutes of the United
States in such case made and provided."
"And the said plaintiff further says that the said defendant,
well knowing the said several premises, but further contriving and
intending as aforesaid, after the obtaining of the said letters
patent by the said plaintiff as aforesaid, and within the said term
of fourteen years, to-wit, on the said first day of January,
eighteen hundred and forty and at divers other times between that
day and the commencement of this suit, within the Southern District
of New York aforesaid, wrongfully and unjustly, without the leave
or license, and against the will of the plaintiff, did make and
sell divers, to-wit, ten improved machines for propelling boats or
vessels upon the water, constructed in a similar form and acting
upon the same principle as the said machine or improvement, to the
benefit, use, and enjoyment whereof the said plaintiff was and is
entitled by his said letters patent as aforesaid, in violation and
infringement of the exclusive right so secured to the said
plaintiff by the said letters patent as aforesaid, and contrary to
the form of the statute in such case made and provided."
"And the said plaintiff further says that the said defendant,
well knowing the said several premises but contriving and intending
as aforesaid, after the obtaining of the said letters patent by the
said plaintiff as aforesaid and within the said term of fourteen
years, to-wit, on the said first day of January, eighteen hundred
and forty and at divers other times between that day and the
commencement of this suit, in the Southern District of New York
aforesaid, wrongfully and unjustly and without the consent or
allowance and against the will of the plaintiff did imitate in part
and make a certain addition to the said invention or improvement to
the benefit, use, and enjoyment whereof the plaintiff was and is
entitled as aforesaid, in breach of the said letters patent and in
violation and infringement of the exclusive right and privilege so
secured to the
Page 47 U. S. 443
said plaintiff as aforesaid, and contrary to the form of the
statute in such case made and provided."
"By means of the committing of which said several grievances by
the said defendants as aforesaid the said plaintiff is greatly
injured and has lost and been deprived of divers great gains and
profits which he might and otherwise would have derived from the
said invention and improvement in the said letters patent described
and set forth, and in respect whereof he was and is entitled to
such privilege as aforesaid, and was and is otherwise damnified to
the damage of the said plaintiff of ten thousand dollars, and
To this declaration, the defendants pleaded the general issue
and filed a copy of the special matters of defense to the
In May, 1847, the cause came on for trial. The patent was given
in evidence, when the counsel for the defendants prayed the court
to instruct the jury that the patent thus produced in evidence by
the said plaintiff was void, for the reasons following:
1. That the claim of the plaintiff, as set forth in his
specification annexed to his letters patent, embraces the entire
spiral paddle wheel; the claim is therefore too broad upon the face
of it, and the letters patent are void upon this ground, and the
defendants are entitled to a verdict.
2. That the patent is void upon its face, for this, that
purporting to be a patent for an improvement and specifying that
the invention is of "an improved spiral paddle wheel, differing
essentially from any which have heretofore been essayed," without
pointing out in what the difference consists or in any manner
whatever indicating the improvement by distinguishing it from the
previously essayed spiral paddle wheels, it is wanting in an
essential prerequisite to the validity of letters patent for an
3. That the patent is void upon its face, for this, that it
embraces several distinct and separate inventions as improvements
in several distinct and independent machines susceptible of
independent operation not necessarily connected with each other in
producing the result arrived at in the invention, and the subject
matter of separate and independent inventions.
4. It appears in evidence that the drawing and model of the
paddle wheel of plaintiff filed and deposited originally in the
patent office had been lost by the destruction of that office in
December, 1836, and that in restoring the record of the patent,
under the act of March, 1837, the plaintiff sent from New Orleans
to the office a new drawing, to be filed on 5 May, 1841, together
with a court copy of the letters patent which were deposited in the
office. The drawing was not
Page 47 U. S. 444
sworn to by he plaintiff, but remained in the office till
January, 1844, when it was delivered to an agent of the plaintiff
and sent to New Orleans, and sworn to by him, and filed in the
department on 12 February, 1844. On an examination subsequently by
the plaintiff, it was discovered that this drawing was imperfectly
made, and thereupon a second drawing was procured by him, which he
claimed and offered to prove to be an accurate one, and was sworn
to, and filed on 27 March, 1844, an authenticated copy of which was
offered in evidence on the trial by the plaintiff, which was
objected to by the counsel for the defendants, but the objection
was overruled and the evidence admitted, to which an exception was
5. That if from the evidence the jury are satisfied that no
propelling wheels were made by the defendants between 27 March,
1844, the date of the alleged completion of the record of the
plaintiff's patent, under the Act of March 3, 1837, and the
commencement of this suit in April following, that, upon this
ground, the defendants are entitled to a verdict.
The court charged, in respect to the instructions prayed for,
"The claim of the plaintiff was for an improvement on the spiral
paddle wheel or propeller; that, by a new arrangement of the parts
of the wheel, he had been enabled to effect a new and improved
application and use of the same in the propulsion of vessels; that
the ground upon which the claim is grounded was this: it is the
getting rid of nearly all the resisting surface of the wheels of
Stevens, Smith, and others by placing the spiral paddles or
propelling surfaces on the ends of arms instead of carrying the
paddles themselves in a continued surface to the hub or shaft. It
is claimed that a great portion of the old blade not only did not
aid in the propulsion, but actually impaired its efficiency, and
also that the improved wheel is made stronger. It was made a
question on the former trial whether the plaintiff did not claim or
intend to claim the entire wheel. But we understand it to be for an
improvement upon the spiral paddle wheel, claimed to be new and
useful in the arrangement of its parts, and more effective, by
fixing the spiral paddles upon the extremity of arms, at a distance
from the shaft."
The court further instructed the jury that "the description of
the invention was sufficient, and that the objection, that the
parts embraced several distinct discoveries, was untenable."
The court further charged
"That the damages were not necessarily confined to the making of
the wheels between March, 1844, when the drawings were restored to
the patent office, and the bringing of the suit. Such a limitation
Page 47 U. S. 445
that there can be no infringement of the patent after the
destruction of the records, in 1836, until they are restored to the
patent office, and that during the intermediate time, the rights of
patentees would be violated with impunity."
We do not assent to this view.
In the first place, the act of Congress providing for the
restoration was not passed till 3 March, 1837, and in the second
place, in addition to this, a considerable time must necessarily
elapse before the act would be generally known, and then a still
further period before copies of the drawings and models could be
procured. Patentees are not responsible for the fire, nor did it
work a forfeiture of their rights.
The ground for the restriction claimed is that the community
have no means of ascertaining, but by a resort to the records of
the patent office, whether the construction of a particular machine
or instrument would be a violation of the rights of others, and the
infringement might be innocently committed.
But if the embarrassment happened without the fault of the
patentee, he is not responsible for it; nor is the reason
applicable to the case of a patent that has been published, and the
invention known to the public. The specification in this case had
been published. It is true if it did not sufficiently describe the
improvement without the aid of the drawing, this fact would not
help the plaintiff. If there had been unreasonable delay and
neglect in restoring the records, and in the meantime a defendant
had innocently made the patented article, a fair ground would be
laid for a mitigation of the rule of damages, if not for the
withholding them altogether, and the court left the question of
fact as to reasonable diligence of the patentee or not in this
respect, and also all questions of fact involved in the points of
the case for the defendants, to the jury.
The counsel for the defendants excepted to each and every part
of the charge of the court so far as said charge did not adopt the
prayer on the part of the defendants.
The verdict of the jury was that
"The said Peter Hogg and Cornelius Delamater, the defendants,
are guilty of the premises within laid to their charge in manner
and form as the said John B. Emerson hath within complained against
them, and they assess the damages of the said plaintiff, on
occasion thereof, over and above his costs and charges by him about
this suit in this behalf expended, at one thousand five hundred
dollars, and for those costs and charges at six cents."
The judgment of the court was
"That the said John B. Emerson do recover against the said Peter
Hogg and Cornelius Delamater his damages, costs, and charges in
Page 47 U. S. 446
by the jurors aforesaid assessed, and also three hundred and
twenty four dollars and fifteen cents for his said costs and
charges by the said court now here adjudged of increase to the said
John B. Emerson, and with his assent, which said damages, costs,
and charges, in the whole, amount to one thousand eight hundred and
twenty four dollars and fifteen cents. "
Page 47 U. S. 477
MR. JUSTICE WOODBURY delivered the opinion of the Court.
This is a writ of error brought under some peculiarities which
are first to be noted.
It comes here by virtue of the 17th section of the general
patent law of July 4, 1836, 5 Stat. 124.
That section grants a writ of error from decisions in actions on
patents, as in ordinary cases, and then adds the privilege of it
"in all other cases in which the court shall deem it reasonable to
allow the same." This was doubtless intended to reach suits where
the amount in dispute was less than $2,000, on account of the
importance of the points sometimes raised, and the convenience of
having the decisions on patents uniform, by being finally settled,
when doubtful, by one tribunal, such as the Supreme Court.
The judges below, in this case, deemed it reasonable, that only
a certain portion of the questions raised at the trial, concerning
the validity of the patent, should come here, and the record was
made up accordingly.
But the appellants contend for their right to bring here all the
questions which arose in the case, and this is a preliminary point
to be settled before going into the merits. The present is believed
to be the first writ of the kind, which has given occasion for
settling the construction of any part of the above provision, and
therefore, without the aid of precedent, after due consideration of
the words and design of the statute, we have come to the
conclusion, that the position of the plaintiffs in error, in this
respect, is the correct one, and that when a court below deem it
"reasonable" to allow a writ of error at all, under the discretion
vested in them by this special provision, it must be on the whole
Page 47 U. S. 478
The word "reasonable" applies to the "cases," rather than to any
discrimination between the different points in the cases.
It may be very proper for the court below to examine those
points separately and with care, and if most of them present
questions of common law only, and not of the construction of the
patent acts, and others present questions under those acts which
seem very clearly settled or trifling in their character, not to
grant the writ of error at all. It might, then, well be regarded as
not "reasonable" for such questions, in a controversy too small in
amount to make the writ a matter of right to persons, if standing
on an equal footing with other suitors. But we think, from the
particular words used rather than otherwise, that the act intended,
if the court allowed the writ as "reasonable" at all, it must be
for the whole case, or, in other words, must bring up the whole for
We shall therefore proceed to examine all the questions made at
the trial, which it is supposed are relied on, and are now before
us on the original writ and a certiorari issued since.
Looking to the declaration, the action is for a violation of a
patent for an "improvement in the steam engine, and in the mode of
propelling therewith either vessels on the water or carriages on
The evidence offered at the trial was a patent for "a new and
useful improvement in the steam engine," "a description whereof is
given in the words of the said John B. Emerson himself, in the
schedule hereto annexed, and is made a part of these presents."
In the schedule annexed is described fully what he says he
"certain improvements in the steam engine,
and in the mode of propelling therewith either vessels on the water
or carriages on the land."
The first question arising on this statement is whether the
evidence proves such a patent as is set out in the writ to have
been violated by the respondents.
If the patent is to be ascertained from the letters alone, or
rather from what is sometimes called their title or heading,
without reference to the schedule annexed, the evidence is
undoubtedly defective, as the writ speaks of a patent for an
"improvement in the steam engine and in the mode of propelling"
vessels &c., therewith, while the letters themselves, in their
title or heading, speak only of a patent for "a new and useful
improvement in the steam engine." But the schedule annexed and
referred to for further description, after "improvement in the
steam engine," adds, "and in the mode of propelling therewith"
It can hardly be doubted, therefore, that the improvement
Page 47 U. S. 479
referred to in the writ and in the letters patent, with the
schedule or specification annexed, was in truth one and the
Coupling the two last together, they constitute the very thing
described in the writ. But whether they can properly be so united
here, and the effect of it to remove the difficulty, have been
questioned and must therefore be further examined. We are apt to be
misled in this country by the laws and forms bearing on this point
in England being so different in some respects from what exist
There, the patent is first issued, and contains no reference to
the specification except a stipulation that one shall, in the
required time, be filed giving a more minute description of the
matter patented. Webster on Pat. 5, 88; Godson on Pat. 6, App. It
need not be filed under two to four months, in the discretion of
the proper officer. Godson on Pat. 176.
Under these circumstances, it will be seen that the patent,
going out alone there, must in its title or heading be fuller than
here, where it goes out with the minute specification. But even
there it may afterwards be aided, and its matter be made more clear
by what the specification contains. They are, says Godson on Pat.
108, "connected together," and "one may be looked at to understand
the other." See also
2 Hen.Bl. 478; 1 Webst.Pat. 117; 8 D.
& E. 95.
There, however, it will not answer to allow the specification,
filed separately and long after, to be resorted to for supplying
any entire omission in the patent, else something may be thus
inserted afterwards which had never been previously examined by the
proper officers, and which, if it had been submitted to them in the
patent and examined, might have prevented the allowance of it, and
which the world is not aware of, seeing only the letters patent
without the specification, and without any reference whatever to
its contents. 3 Brod. & Bingh. 5.
The whole facts and law, however, are different here. This
patent issued March 8, 1834, and is therefore to be tested by the
act of Congress then in force, which passed February 21, 1793, 1
In the third section of that act it is expressly provided "that
every inventor, before he can receive a patent," "shall deliver a
written description of his invention," &c., thus giving
priority very properly to the specification rather than the
This change from the English practice existed in the first
patent law, passed April 10, 1790, 1 Stat. 109, and is retained in
the last act of Congress on this subject, passed July 4, 1836, 5
It was wisely introduced in order that the officers of the
government might at the outset have before them full means to
Page 47 U. S. 480
examine and understand the claim to an invention better and
decide more judiciously whether to grant a patent or not, and might
be able to give to the world fuller, more accurate, and early
descriptions of it than would be possible under the laws and
practice in England.
In this country, then, the specification being required to be
prepared and filed before the patent issues, it can well be
referred to therein in extenso,
as containing the whole
subject matter of the claim or petition for a patent, and then not
only be recorded for information, as the laws both in England and
here require, but beyond what is practicable there, be united and
go out with the letters patent themselves, so as to be sure that
these last thus contain the substance of what is designed to be
regarded as a portion of the petition, and thus exhibit with
accuracy all the claim by the inventor.
But before inquiring more particularly into the effect of this
change, it may be useful to see if it is a compliance with the laws
in respect to a petition which existed when this patent issued, but
were altered in terms shortly after.
A petition always was and still is required to be presented by
an inventor when he asks for a patent, and one is recited in this
patent to have been presented here. It was also highly important in
England that the contents of the petition as to the description of
the invention should be full in order to include the material parts
of them in the patent, no specification being so soon filed there
as here, to obtain such description from, or to be treated as a
portion of the petition, and the whole of it sent out with the
patent, and thus complying with the spirit of the law and giving
fuller and more accurate information as to the invention than any
abstract of it could.
In this view, and under such laws and practice here, it will be
seen that the contents of the petition, as well as the petition
itself, became a very unimportant form, except as construed to
adopt the specification, and the contents of the latter to be
considered substantially as the contents of the former.
Accordingly it is not a little curious that though the act of
1793, which is to govern this case, required, like that of 1790, a
petition to be presented, and the patent when issued, as in the
English form, to recite the "allegations and suggestions of the
petition," 1 Stat. 321, sec. 1, and 110, sec. 3, yet, on careful
inquiry at the proper office, so far as its records are restored,
it appears that after the first act of 1790 passed, the petitions
standing alone seldom contained anything as to the patent beyond a
mere title; sometimes fuller, and again very imperfect and general,
with no other allegations or suggestions or descriptions whatever
except those in the
Page 47 U. S. 481
schedule or specification. The only exception found is the case
of Evans v. Chambers,
2 Wash.C.C. 125, in a petition filed
December 18, 1790.
Though the records of the patent office before 1836 were
consumed in that year, many have been restored, and one as far back
as August 10, 1791, where the petition standing alone speaks of
having invented only "an easy method of propelling boats and other
vessels through the water by the power of horses and cattle." All
the rest is left to the schedule. Other petitions, standing alone,
are still more meager -- one, for instance, in 1804, asks a patent
only of a "new and useful improvement, being a composition or
tablets to write or draw on"; another only "a new and useful
improvement in the foot stove"; and another only "a new and useful
improvement for shoemaking," and so through the great mass of them
for nearly half a century. But the specification being filed at the
same time and often on the same paper, it seems to have been
regarded, whether specially named in the petition or not, as a part
of it and as giving the particulars desired in it, and hence, to
avoid mistakes as to the extent of the inventor's claim and to
comply with the law by inserting in the patent at least the
substance of the petition, the officers inserted, by express
reference, the whole descriptive portion of it as contained in the
schedule. This may have grown out of the decision of Evans v.
in order to remedy one difficulty there. Cases have
been found as early as 1804, and with great uniformity since,
explicitly making the schedule annexed a part of the letters
patent. Proofs of this exist also in our reports as early as 1821,
in Grant v.
6 Pet. 222, and one 1 Oct., 1825, in
Gray v. James,
Pet.C.C. 394, and 27 Dec. 1828,
4 How. 649.
Indeed it is the only form of a patent here known at the patent
office, and the only one given in American treatises on patents.
Phillips on Pat. 523. Doubtless this use of the schedule was
adopted because it contained, according to common understanding and
practice, matter accompanying the petition as a part of its
substance and all the description of the invention ever desired
either in England or here in the petition. Hence it is apparent, if
the schedule itself was made a part of the patent and sent out to
the world with it, all, and even more, was contained in it than
could be in any abstract or digest of a petition as in the English
We regard this mode and usage on this subject, adopted so early
here and practiced so long, as not proper to be overruled now, to
the destruction of every patent, probably, from 1791 to
Page 47 U. S. 482
1836, and this too when the spirit of all our system was thus
more fully carried out than it could have been in any other
As this course, however, sometimes was misunderstood and led to
misconstructions, the revising act as to patents, in July 4, 1836,
changed the phraseology of the law in this respect, in order to
conform to this long usage and construction under the act of 1793,
and required not in terms any abstract of the petition in the
patent, but rather "a short description" or title of the invention
or discovery, "correctly indicating its nature and design," and
"referring to the specification for the particulars thereof, a copy
of which shall be annexed to the patent." And it is that -- the
specification or schedule -- which is fully to specify "what the
patentee claims as his invention or discovery." Sec. 5, 5 Stat.
It was therefore, from this long construction, in such various
ways established or ratified that, in the present patent, the
schedule, or, in other words, the specification, was incorporated
expressly and at length into the letters themselves -- not by
merely annexing them with wafer or tape, as is argued, but
describing the invention as an
"improvement, a description whereof is given in the words of the
said John B. Emerson himself in the schedule hereto annexed, and is
made a part of these presents."
Hence too, wherever this form has been adopted, either before or
since the act of 1836, it is as much to be considered with the
letters -- literae patentes
-- in construing them, as any
paper referred to in a deed or other contract. Most descriptions of
lands are to be ascertained only by the other deeds and records
expressly specified or referred to for guides, and so of schedules
of personal property, annexed to bills of sale. Foxcroft v.
4 How. 378; 21 Me. 69; 20 Pick. 122; Phil.
on Pat. 228; Earle v. Sawyer,
4 Mason C.C. 9; Ex Parte
1 Ves. & Beames 67. The schedule, therefore, is in
such case to be regarded as a component part of the patent.
Pet.C.C. 394, and Davis v. Palmer,
2 Brockenbrought 301.
The oath of Emerson, too, that he was inventor of the improvement
must thus be considered as extending to all described in the
schedule no less than the title, and this is peculiarly proper when
the specification is his own account of the improvement and the
patent is usually only the account of it by another, an officer of
the government. Taking, then, the specification and letters
together, as the patent office and the inventor have manifestly in
this instance intended that they should be, and they include what
has long been deemed a part and the substance of the petition, and
the patent described in them is quite broad enough to embrace what
is alleged in the writ to have been taken out as a
Page 47 U. S. 483
patent by the plaintiff, and to have been violated by the
defendants. They are almost ipsissimis verbis.
And when we
are called upon to decide the meaning of the patent included in
these letters, it seems our duty not only to look for aid to the
specification as a specification, which is customary, 1 Gall. 437;
2 Story 621; 1 Mason C.C. 477, but as a schedule, made here an
integral portion of the letters themselves and going out with them
to the world, at first, as a part and parcel of them, and for this
purpose united together forever as identical.
It will thus be seen that the effect of these changes in our
patent laws and the long usage and construction under them is
entirely to remove the objection that the patent in this case was
not as broad as the claim in the writ, and did not comply
substantially with the requirements connected with the
From want of full attention to the differences between the
English laws and ours on patents, the views thrown out in some of
the early cases in this country do not entirely accord with those
now offered. Paine C.C. 441; Pennock v.
2 Pet. 1. Some other diversity exists at
times in consequence of the act of 1793 and the usages under it in
the patent office not being in all respects as the act of 1836. But
it is not important, in this case, to go farther into these
The next objection is that this description in the letters thus
considered covers more than one patent, and is therefore void.
There seems to have been no good reason at first, unless it be a
fiscal one on the part of the government when issuing patents, why
more than one in favor of the same inventor should not be embraced
in one instrument, like more than one tract of land in one deed or
patent for land. Phillips on Pat. 217.
Each could be set out in separate articles or paragraphs as
different counts for different matters in libels in admiralty or
declarations at common law, and the specifications could be made
distinct for each, and equally clear.
But to obtain more revenue, the public officers have generally
declined to issue letters for more than one patent described in
them. Renouard 293; Phillips on Pat. 218. The courts have been
disposed to acquiesce in the practice as conducive to clearness and
certainty. And if letters issue otherwise inadvertently, to hold
them, as a general rule, null. But it is a well established
exception that patents may be united, if two or more, included in
one set of letters, relate to a like subject, or are in their
nature or operation connected together. Phil. on Pat. 218, 219;
Barrett v. Hall,
1 Mason C.C. 447; Moody v.
2 Mason C.C. 112; Wyeth v. Stone,
Page 47 U. S. 484
Those here are of that character, being all connected with the
use of the improvements in the steam engine as applied to propel
carriages or vessels, and may therefore be united in one
Another objection is that these letters, even when thus
connected with the specification, are not sufficiently clear and
certain in their description of the inventions.
This involves a question of law only in part, or so far as
regards the construction of the written words used. Reutgen v.
1 Wash.C.C. 168; Davis v. Palmer,
Brockenbrough C.C. 303; Wood v.
5 How. 1. The degree of clearness and
freedom from ambiguity required in such cases is, by the patent act
itself of 1793, to be sufficient
"to distinguish the same from all other things before known, and
to enable any person skilled in the are or science of which it is a
branch, or with which it is most nearly connected, to make,
compound, and use the same."
1 Stat. 321. See also,
on this, Godson on Pat. 153,
154; 2 Hen.Bl. 489; Wood v.
5 How. 1; Davoll v. Brown,
Woodb. & Min. 57; Pet.C.C. 301; Sullivan v. Redfield,
Paine C.C. 441.
There are some further and laudable objects in having exactness
to this extent, so as, when the specification is presented, to
enable the Commissioner of Patents to judge correctly whether the
matter claimed is new or too broad. 16 U. S. 3
454; 3 Brod. & Bingh. 5; 1 Starkie N.P. 192. So also to enable
courts, when it is contested afterwards before them, to form a like
judgment. 1 Starkie N.P. 192. And so that the public, while the
term continues, may be able to understand what the patent is and
refrain from its use unless licensed. Webster on Pat. 86; 11 East
105; 3 Merivale 161; Evans v. Eaton, 3 Wash.C.C. 453; 4 Wash.C.C.
9; Bovill v. Moore,
Davies' Cas. 361; Lowell v.
1 Mason C.C. 182, 189.
In the present instance, yielding to the force of such reasons
in favor of a due and rational degree of certainty in describing
any improvements claimed as new, there still seems to us, though
without the aid of experts and machinists, no difficulty in
ascertaining from the language used here the new movement intended
to be given to the steam engine by substituting a continued rotary
motion for a crank motion, and the new form of the spiral wheel,
when the engine is used in vessels, by changing the form of the
paddles and placing them near the ends of the arms, and the new
connection of the power with the capstan of such vessels by
inserting the upper end of the shaft into the capstan. It is
obvious also that the inventor
Page 47 U. S. 485
claims as his improvement not the whole of the engine nor the
whole of the wheel, but both merely in the new and superior form
which he particularly sets out. He therefore does not claim too
much, which might be bad. Hill v. Thompson,
2 J. Marsh.
435; 4 Wash.C.C. 68; Godson on Patents 189; Kay v.
1 Mylne & Cranch 373; 1 Story 273; 2 Mason C.C.
112; 4 Barn. & Ald. 541; Bovill v. Moore,
The novelty in each he describes clearly, as he should; and it
is not necessary he should go further. 1 Story 286; Webster on Pat.
86, note. MacFarlane v. Price,
1 Starkie 199; and King
v. Cutler, id.,
354; 3 Car. & Payne 611; 2 Mason C.C. 112;
Kingsby & Pirsson on Pat. 61; Godson on Pat. 154; Isaacs v.
4 Wash.C.C. 259.
He need not describe particularly, and disclaim all the old
parts. 20 U. S. 7
Wheat. 435; Phil. on Pat. 270, and cases cited.
And the more especially is that unnecessary, when such
disclaimer is manifestly, in substance, the result of his claiming
as new only the portions which he does describe specially. All
which is required on principle in order to be exact, and not
ambiguous, thus becomes so.
It is to be recollected likewise that the models and drawings
were a part of this case below, and are proper to be resorted to
for clearer information. Earle v. Sawyer,
4 Mason C.C. 9.
With them and such explanatory testimony as experts and machinists
could furnish, the court below were in a condition to understand
better all the details and to decide more correctly on the
clearness of the description; but from all we have seen on the
record alone, we do not hesitate to concur in the views on this
point as expressed in that court.
In conclusion, on the other objections to the proof, as to the
drawings and to the charge below in relation to the effect of them
and to the destruction of them by fire, we likewise approve the
directions given to the jury.
The destruction by fire was no fault of the inventor, and his
rights had all become previously perfected. This is too plain to
need further illustration. We cannot consent to be over-astute in
sustaining objections to patents. 4 East 135; Crosley v.
3 Car. & Payne 513, 514. The true rule of
construction in respect to patents and specifications and the
doings generally of inventors is to apply to them plain and
ordinary principles, as we have endeavored to on this occasion, and
not, in this most metaphysical branch of modern law, to yield to
subtleties and technicalities, unsuited to the subject and not in
keeping with the liberal spirit of the age, and likely to prove
ruinous to a class of the community so inconsiderate
Page 47 U. S. 486
and unskilled in business as men of genius and inventors usually
Indeed, the English letters patent themselves now, however
different may have been once their form or the practice under them,
declare that "they are to be construed . . . in the most favorable
and beneficial sense, for the best advantage" of the patentee.
Godson on Pat. 24, App. 7; Kingsby & Pirsson on Patents 35.
on this rule Grant v.
6 Pet. 218; Ames v. Howard,
Sumner 482, 485; Wyeth v. Stone,
1 Story 273, 287;
Blanchard v. Sprague,
2 Story 164; 2 Brockenbrough C.C.
303; 2 Barn. & Ald. 345, in The King v. Wheeler,
How. 708, in Wilson v. Rousseau,
1 Crompt., Mees. &
Ros. 864, 876, in Russell v. Cowly.
The judgment below is
Note -- After the delivery of this opinion, the counsel for the
plaintiffs in error suggested that other questions were made below
which they desired to be considered, and therefore moved for
another certiorari to bring them up. This was allowed and judgment
suspended till the next term.