Upon a trial in New York, a juror became ill and was discharged
before any evidence was given and before the plaintiffs' counsel
had concluded his opening address. The court ordered another juror
to be sworn and proceeded with the trial. The defendant cannot
object to this. It is the practice in New York, and the circuit
court had a right to follow it.
Page 55 U. S. 219
The court, having erroneously refused to allow the plaintiff to
offer a paper in evidence as a disclaimer of part of a patent,
afterwards refused to allow the defendants to offer the same paper
in evidence for the purpose of prejudicing the plaintiffs' rights.
This last refusal was correct. The reason given was erroneous, but
this is not a sufficient cause for reversing the judgment.
The courts of the United States have not the power to order a
nonsuit against the wishes of the plaintiff.
Under a notice given by the defendant that the invention claimed
by the plaintiff was described in Ure's Dictionary of Arts,
Manufactures and Mines, and had been used by Andrew Ure, of London,
it was not competent to give in evidence a very large book. The
place in the book should have been specified.
Nor, under the notice, was the book competent evidence that
Andrew Ure, of London, had a prior knowledge of the thing patented.
The notice does not state the place where the same was used.
One of the specifications of the patent being for a combination
of certain parts of mechanism necessary to produce the desired
result, it was proper for the court to instruct the jury that the
defendants had not infringed the patent unless they had used all
the parts embraced in the plaintiffs' combination, and the jury
were to find what those parts were, and whether the defendants had
used them.
When a claim does not point out and designate the particular
elements which compose a combination, but only declares, as it
properly may, that the combination is made up of so much of the
described machinery as effects a particular result, it is a
question of fact which of the described parts are essential to
produce that result, and to this extent not the construction of the
claim, strictly speaking, but the application of the claim should
be left to the jury.
The facts are stated in the opinion of the court.
MR. JUSTICE CURTIS delivered the opinion of the Court.
This is an action on the case for the violation of a patent
right granted to the defendant in error on the 26th day of May,
1842, for "a new and useful improvement in regulating the draft of
stoves." On the trial in the Circuit Court for the Northern
District of New York, the defendants took exceptions to the rulings
of the district judge, who presided at the trial, and have brought
the case here by a writ of error.
The first exception shows the following facts:
After the counsel for the plaintiff had begun his opening
address to the jury, a juror became ill, applied to the court to be
discharged, and was discharged from the panel on account of
physical inability to sit on the residue of the trial. Thereupon
the court ordered another juror to be drawn and sworn, and the
panel being thus full, the trial proceeded, and the plaintiffs'
counsel concluded his address. The plaintiff assented to this
proceeding; the defendant objected and excepted to the order of the
court.
We think it was not erroneous for the presiding judge to treat
the physical inability of the juror as simply creating a vacancy on
the panel, and proceeding to fill it in the usual way by
Page 55 U. S. 220
having a twelfth juror drawn and sworn. We understand it to have
been the practice of the courts of the State of New York so to
treat such a withdrawal of a juror, when the presiding judge in his
discretion has thought proper to do so, and under the Act of July
20, 1840, 5 Stat. 394, the circuit court might properly conform to
that practice. Of course it must be confined to cases like the
present, in which it is apparent the party objecting received no
injury. The defendant cannot be supposed to have been prejudiced by
the failure of the twelfth juror to hear a part of the opening
argument for the plaintiff, no evidence having been given, and he
did not make known to the court that he desired to attempt to
exercise any right of challenge of the other eleven jurors, to
which he might have been restored if any cause existed, and the
panel had been treated as broken up.
Rex v. Edwards, 4
Taunt. 309;
Green v. Norville, 3 Hill S.C. 262. In such a
case we think it rested in the discretion of the court whether the
withdrawal of a juror should be treated simply as occasioning a
vacancy on a still existing panel, or as breaking up the panel
altogether, and it being a matter of discretion, no error could be
assigned upon it, even if there were reason to believe, what in
this case there is not, that the discretion was not wisely
exercised.
The next exception was to the refusal of the judge to allow the
defendant to put in evidence to the jury an endorsement on the
original letters patent. The plaintiff had previously offered in
evidence a duly certified copy of the following disclaimer:
To the Commissioner of Patents, the petition of Elisha Foote, of
Seneca Falls, in the County of Seneca, and State of New York,
respectfully represents:
That your petitioner obtained letters patent of the United
States for an improvement in regulating the draft of stoves, which
letters patent are dated on the 26th day of May, 1842. That he has
reason to believe that, through inadvertence and mistake, the claim
made in the specification of said letters patent, in the following
words, to-wit:
"What I claim as my invention and desire to secure by letters
patent is the application of the expansive and contracting power of
a metallic rod, by different degrees of heat, to open and close a
damper which governs the admission of air into a stove, or other
structure in which it may be used, by which a more perfect control
over the heat is obtained than can be by a damper in the flue"
is too broad, including that of which your petitioner was not
the first inventor.
"Your petitioner therefore hereby enters his disclaimer to so
much of said claim as extends the application of the expansive and
contracting power of a metallic rod, by different degrees of
Page 55 U. S. 221
heat, to any other use or purpose than that of regulating the
heat of a stove, in which such rod shall be acted upon directly by
the heat of the stove or the fire which it contains; such
disclaimer is to operate to the extent of the interest in said
letters patent vested in your petitioner, who has paid ten dollars
into the Treasury of the United States, agreeably to the act of
Congress in that case made and provided."
"ELISHA FOOTE"
"Witnesses: Morris Newton, Edwin L. Baltink"
The defendants objected upon the ground that the instrument did
not state "the extent of his interest in such patent." 5 Stat. 193,
sec. 7. The court sustained the objection, and refused to permit
the instrument to be read by the plaintiff as a disclaimer. At a
subsequent stage of the trial the defendant offered to read to the
jury a copy of this instrument endorsed on the original letters
patent, not as a disclaimer under the act of Congress above
referred to, but as a confession by the plaintiff that he was not
the original and first inventor of a part of the thing patented.
The plaintiff objected, because the endorsement on the letters
patent was not in his handwriting, nor signed by him, and the
defendants had already caused a duly certified copy of the same
instrument to be rejected. The court sustained the objection.
We are of opinion the court erred in not allowing the plaintiff
to put this instrument in evidence as a disclaimer, under the 7th
section of the Act of March 3, 1837. 5 Stat. 193. This section
authorizes not only the patentee, but his executors,
administrators, and assigns, whether of the whole or of a sectional
interest in the patent, to make disclaimer, "stating therein the
extent of his interest in such patent." This instrument states that
the plaintiff was himself the patentee, and having thus shown a
grant to himself of the whole interest, it is silent respecting a
transfer of any part of it. The fair implication is that he still
owns the whole, and this implication is sufficient without an
express declaration that he had parted with no interest. It has
been argued that the words "such disclaimer is to operate to the
extent of the interest vested in your petitioner" imply that he had
not the whole title. But the interest previously described as
vested in him was the entire title as patentee, and this reference
to that interest, accompanied by a declaration that the disclaimer
was intended to operate upon it to its whole extent, strengthens,
rather than weakens, the implication that he owned the whole
patent. This being so, it follows that when the defendants offered
to put a copy of the instrument in evidence, not as a disclaimer,
but as a confession of the defendant, to prejudice his rights, it
was properly rejected. It is true the rejection of the evidence was
placed on a different
Page 55 U. S. 222
ground by the judge below. But if the defendants were not
deprived of any right by the rejection of the evidence, it is not
cause for reversing the judgment that an erroneous reason was given
for rejecting it, and they were not deprived of any right if the
paper was not legal evidence upon the particular point for which
alone it was offered, or if its reception, accompanied by proper
instructions to the jury concerning its legal effect, must
necessarily have assisted the opposite party.
The next exception is to refusal of the judge to order a
nonsuit. But as it has been repeatedly decided that the courts of
the United States have no power to order a peremptory nonsuit,
against the will of the plaintiff, it is not necessary to examine
the grounds of the motion.
Doe v. Grymes,
1 Pet. 469;
D'Wolf v.
Rabaud, 1 Pet. 476;
Crane v.
Morris, 6 Pet. 598.
In the course of the trial, the defendants offered to put in
evidence two articles contained in Ure's. Dictionary of Arts,
Manufactures, and Mines, to prove that the patent declared on was
not valid. The plaintiff objected, and the evidence was excluded.
It is incumbent on the defendants to show their right to introduce
this evidence. To do so, they rely on the fifteenth section of the
Act of July 4, 1836. 5 Stat. 123. This section enables the
defendant, in any action on the case founded on letters patent, to
give in evidence, under the general issue, any special matter of
which notice in writing may have been given to the plaintiff, or
his attorney, thirty days before the trial, tending to prove, among
other things, that the patentee was not the original and first
inventor of the thing patented, or of some substantial and material
part thereof claimed as new, or that it had been described in some
public work anterior to the supposed discovery thereof by the
patentee; and whenever the defendant relies, in his defense, on the
fact of a previous invention, knowledge, or use of the thing
patented, he is required to state, in his notice of special matter,
the names and places of residence of those whom he intends to prove
possessed a prior knowledge of the thing, and where the same had
been used. The notice given in this case was as follows:
"The patentee was not the original and first inventor or
discoverer of a substantial and material part thereof, claimed as
new. That it had been described in a public work, called 'Ure's
Dictionary of Arts, Manufactures, and Mines,' anterior to the
supposed invention thereof by the patentee, and also had been in
public use and known before that time and used by Andrew Ure, of
London, the late M. Bonnemair, of Paris, and George H. McClary, of
Seneca Falls, New York."
Ure's Dictionary contains upwards of thirteen hundred pages,
Page 55 U. S. 223
and the articles which the defendants offered to read were
entitled "Thermostad" and "Heat Regulator." The first question is
whether this was a sufficient notice of the special matter, tending
to prove that the thing patented, or some substantial part thereof,
claimed as new, had been described in a printed publication. We are
of opinion it was not. The act does not attempt to prescribe the
particulars which such a notice shall contain. It simply requires
notice. But the least effect which can be allowed to this
requirement, is that the notice should be so full and particular as
reasonably to answer the end in view. This end was not merely to
put the patentee on inquiry, but to relieve him from the necessity
of making useless inquiries and researches, and enable him to fix
with precision upon what is relied on by the defendants, and to
prepare himself to meet it at the trial. This highly salutary
object should be kept in view, and a corresponding disclosure
exacted from the defendant of all those particulars which he must
be presumed to know, and which he may safely be required to state,
without exposing him to any risk of losing his rights. Less than
this would not be reasonable notice, and therefore would not be
such a notice as the act must be presumed to have intended.
Now we do not perceive that the defendants would be exposed to
the risk of losing any right, by requiring them to indicate, in
their notice, what particular things, described in the printed
publication, they intended to aver were substantially the same as
the thing patented. This they might have done, either by reference
to pages, or titles, and perhaps in other ways, for the particular
manner in which the things referred to are to be identified, must
depend much upon the contents of the volume, and their arrangement.
It has been urged that a defendant may not have access to the book
in season for the notice. But it must be remembered that, some
considerable time before it is necessary to give such a notice, the
defendant has begun to use the thing patented, which,
prima
facie, he has no right to use, and it would seem to be no
injustice or hardship to expect him, before he begins to infringe,
to ascertain that the patentees' title is not valid, and if its
invalidity depends on what is in a public work, that he should
inform himself what that work contains, and consequently how to
refer to it. We do not think it necessary so to construe this act,
designed for the benefit of patentees, as to enable the defendant
to do, what we fear is too often done, to infringe first and look
for defenses afterwards.
Nor does a notice that somewhere in a volume of thirteen hundred
pages there is something which tends to prove that the thing
patented, or some substantial and material part thereof
Page 55 U. S. 224
claimed as new, had been described therein, relieve the patentee
from the necessity of making fruitless researches, or enable him to
fix with reasonable certainty on what he must encounter at the
trial. Upon this ground, therefore, the exception cannot be
supported.
But it is further urged that the book ought to have been
admitted as evidence; that Andrew Ure, of London, had a prior
knowledge of the thing patented. This view cannot be sustained.
For, although the name of Andrew Ure, of London, is contained in
the notice of persons who are alleged to have had this prior
knowledge, yet the defendants have not brought themselves within
the act of Congress, because the notice does not state "where the
same was used," by Andrew Ure. Besides, inasmuch as the same
section of the statute provides that a prior invention in a foreign
country shall not avoid a patent, otherwise valid, unless the
foreign invention had been described in a printed publication, the
defendants are thrown back upon that clause of the act which
provides for that defense, arising from a printed publication,
which has already been considered.
The next exception was to the charge of the presiding judge to
the jury. The defendants requested the judge to charge the jury,
3d, that it was erroneous to consider as constituent parts of the
combination claimed by the plaintiff only those points which were
requisite to the operation of opening and closing the damper; but
that, on the contrary, the jury must consider as constituent parts
of the combination all the parts of the machine, as described in
the specification, by which the regulation of the heat of a stove,
or the other structures, is effected.
4. That the index is a constituent part of the combination
patented by the plaintiff.
5. That the detaching process of the lever is a constituent part
of the combination patented by the plaintiff.
6. That the pendulum is a constituent part of the
combination.
And, in this connection,
7. That if the defendants do not use all the constituent parts
of the combination patented by the plaintiff, a verdict must be
rendered for the defendants.
As to the 2d, 3d, 4th, 5th, 6th, and 7th of the instructions
prayed for by the defendants, the judge charged the jury, that it
was true as insisted by the defendants' counsel, that the third
article of the summary of the plaintiff's specification, on which
alone, if at all, he was entitled to recover, was for a
combination, and unless it appeared by the evidence that the
defendants had used all the parts of the plaintiff's stove embraced
in such combination, he was not entitled to recover. That the
Page 55 U. S. 225
combination claimed in the article in question was of such parts
of the mechanism described in the specification as are necessary to
regulate the heat of the stove. And unless it appeared by the
evidence that some parts of the mechanism, not shown to have been
used by the defendants, were necessary to perform that office, or
that, according to the just construction of the specification, such
parts were intended to be claimed by the plaintiff as a part of
such combination, they are not to be considered as embraced within
it. That inasmuch as by the fourth article of the plaintiff's
summary, he made a distinct and separate claim to what had been
called the detaching apparatus, there seemed to be good reason to
infer that it was not his intention to claim this in the third
article as a part of the combination therein mentioned. But the
judge observed, that the question relative to the extent of the
combination, had been treated by the defendants' counsel as a
question of fact, and he had no disposition to withdraw it from the
consideration of the jury, and he therefore submitted it to the
jury to decide, from the evidence, whether the parts of the
mechanism described in the specification, which were not shown to
have been used by the defendants, were necessary to regulate the
heat of the stove, and instructed the jury that if they should so
find, the defendants would be entitled to a verdict. And the judge
refused to charge otherwise in relation to such instructions, or
any of them.
To this charge and refusal of the judge, as the 2d, 3d, 4th,
5th, 6th, and 7th of the instructions prayed by the defendants, the
defendants' counsel then and there excepted.
The substance of the charge is that the jury were instructed by
the judge, that the third claim in the specification was for a
combination of such parts of the described mechanism as were
necessary to regulate the heat of the stove; that the defendants
had not infringed the patent, unless they had used all the parts
embraced in the plaintiff's combination, and he left it to the jury
to find what those parts were, and whether the defendants had used
them.
We think this instruction was correct. The objection made to it
is that the court left to the jury what was matter of law. But an
examination of this third claim, and of the defendants' prayers for
instruction, will show that the judge left nothing but matter of
fact to the jury. The construction of the claim was undoubtedly for
the court. The court rightly construed it to be a claim for a
combination of such of the described parts as were combined and
arranged for the purpose of producing a particular effect,
viz., to regulate the heat of a stove. This was in
accordance with the defendants' third prayer. But the defendants
also desired the judge to instruct the jury that the
Page 55 U. S. 226
index, the detaching process, and the pendulum, were constituent
parts of this combination. How could the judge know this as matter
of law? The claim is in these words: "I also claim the combination,
above described, by which the regulation of the heat of the stove,
or other structure in which it may be used, is effected." The
writing which the judge was to construe, calls for all such
elements of the combination as are actually employed to effect the
regulation of the heat, according to the plan of the patentee,
described in the specification, and it therefore became a question
for the jury, upon the evidence of experts, or an inspection by
them of the machines, or upon both, what parts described did in
point of fact enter into, and constitute an essential part of this
combination. When a claim does not point out and designate the
particular elements which compose a combination, but only declares,
as it properly may, that the combination is made up of so much of
the described machinery as effects a particular result, it is a
question of fact which of the described parts are essential to
produce that result; and to this extent, not the construction of
the claim, strictly speaking, but the application of the claim,
should be left to the jury. The defendants themselves so treat this
matter in their third prayer, and we are satisfied the judge did
not err in so treating it.
The defendants' counsel exhibited to the court the models of the
machines of the defendants and the plaintiff, for the purpose of
satisfying the court, the jury must have understood they were at
liberty to construe the claim, and that they did in truth so
construe it, as to exclude from the combination claimed by the
plaintiff, what is called the detaching process. But we can draw no
such inference from an examination of those models. And while we do
not think it proper to express any opinion on what is really a
matter of fact, yet we think it pertinent to say, that an
examination of the models has satisfied us that a jury might fairly
come to the conclusion that the defendants did use a detaching
process, not substantially different from the plaintiff's, and
occupying in their combination the same place, and answering
substantially the same purpose, as the plaintiff's detaching
process does in his combination, and therefore we can draw no
inference such as is contended for.
We have examined all the exceptions, and no one being found
tenable, the judgment is
Affirmed.
MR. JUSTICE McLEAN dissented.
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the Northern
Page 55 U. S. 227
District of New York, and was argued by counsel. On
consideration whereof, it is now here ordered and adjudged by this
Court that the judgment of the said circuit court in this cause be
and the same is hereby affirmed with costs and interest until the
same is paid at the same rate per annum that similar judgments bear
in the courts of the State of New York.