1.
Semble that an improvement in the plan of
constructing a jail is not a subject of patent within the Patent
Acts of 1836 or 1842.
2. Jacobs was not the first inventor of the improvements
patented to him in 1859 and 1860 for improvements in the
construction of jails.
Jacobs filed a bill in the Circuit Court for Southern Ohio
against Baker, seeking relief for the infringement of four separate
patents which had been granted to him, Jacobs,
for improvements
in the construction of prisons. The bill set forth the
different patents.
The first, dated January 7, 1859, was for an improvement in the
construction of prisons, which the complainant set forth in his
specification with very numerous plates and designs. The claim
concluded thus:
"What I claim as my invention and desire to secure by letters
patent is a secret passage, or guard-chamber, around the outside of
an iron-plate jail and between said jail and a surrounding
enclosure, constructed and arranged substantially as described, for
the purpose set forth."
[The purpose was to allow the keeper to oversee and overhear the
prisoners without their being conscious of his presence.]
The next patent was dated 20 December, 1859, and purported to be
for an "improvement in iron-plate jails." The claim was for
"the improved iron walls for the same, consisting
Page 74 U. S. 296
of the following parts arranged and united as set forth, to-wit:
the entire wall plates (A) having their edges closely abutting, the
joint plates (e) united to and uniting the plate A, by rivets (i),
which have their riveted ends inwards, and countersunk to the depth
of the thickness of the plate A, in the manner and for the purposes
herein set forth."
This specification was also accompanied by numerous plates.
The third patent, dated 21 February, 1860, was for an
"improvement in joining plates of metal," and was stated to be
specially applicable to prisons. The claim was for
"the construction of the joint, made by means of the closely
abutting plates (A A), and the flat and semicylindrical plates B B,
and rivets (c), substantially in the manner and for the purpose set
forth."
This too had numerous drawings.
The fourth patent, dated 24 July, 1860, was for an "improvement
in iron prisons." The claim was for
"constructing and arranging plate iron cells in jails separately
from each other, with vertical spaces (e) between the cells upon
the same level, and horizontal spaces between cells arranged one
above another, substantially as and for the purpose described."
This was also profusely illustrated by drawings.
The bill, which averred that the complainant was the original
and first inventor of all these improvements and that the defendant
was an infringer of his patents, asked that the defendant might
answer the bill under oath and be compelled to state how
extensively, and where he had sold the improvements patented, and
to describe his modes of construction &c.
The defendant did answer on oath, denying that the improvements
were original with the complainant or new but averring that they
had been long in use, and setting out various jails in different
parts of the country where they had been used in 1855, 1857, 1858
&c., all before the date of the patents relied on.
A large amount of testimony was taken on both sides, upon which
the court below, considering that the defendant had established his
case, dismissed the bill with costs. The case was now here on an
appeal by the patentee.
Page 74 U. S. 297
MR. JUSTICE GRIER delivered the opinion of the Court.
The patent act of 1836 [
Footnote
1] enumerated the discoveries or inventions for which patents
shall be issued, and describes them as "any new and useful art,
machine, manufacture, or composition of matter."
We have been at some loss to discover under which category to
class the four patents which are the subjects of this bill. The
complainant alleges that he has invented a new and useful
improvement in the construction of jails. Now a jail can hardly
come under the denomination of "a machine," nor, though made by
hands, can it well be classed with "manufactures;" nor, although
compounded of matter, can it be termed a "composition of matter,"
in the meaning of the patent act. "But if the subject matter be
neither a machine nor a manufacture, nor a composition of matter,
then," says an author on the subject of patents, [
Footnote 2] "it
must be an art, for
there can be no valid patent except it be for
a thing
made, or for the art or
process of making a thing."
Now, without attempting to define the term "art" with logical
accuracy, we take as examples of it, some things which, in their
concrete form, exhibit what we all concede to come within a correct
definition, such as the art of printing, that of telegraphy, or
that of photography. The art of tanning leather might also come
within the category, because it requires various processes and
manipulations. The difficulty still exists, however, under which
category of the patent act an improvement in the construction of
jails is to be classed, or whether under any.
The patent act of 1842 [
Footnote
3] gives a copyright for
"new and
Page 74 U. S. 298
original designs for manufacture, whether of metal or other
material, for bust, statue &c., or any new and original shape
or configuration of any article of manufacture, to any inventor who
shall desire to obtain an exclusive property, to make, use, and
vend the same, or
copies of the same."
Now, although the complainant might contend (as one would
suppose from the immense number of plans, designs, and drawings
with which the record in the case has been encumbered) that his
patent could be supported under this act, yet still the difficulty
remains whether the erection of a jail can be treated as the
infringement of a
copyright.
But waiving all these difficulties as hypercritical, and
assuming the correctness of the positions taken, that whatever is
neither a machine, nor a manufacture, nor a composition of matter,
must (
ex necessitate) be "an art;" that a jail is a thing
"made;" and that the patent is for the "
process of making
it," let us examine the case as presented by the bill and
answer.
The bill relies upon four several patents which it sets forth.
They are dated January 7 and 20 December, 1859; 21 February and 24
July, 1860. It would seem from the quick succession of these
patents and before the plans for building jails which they
severally suggested could well be put practically into operation,
and before any inquiry was made as to how other persons constructed
jails, that as a new idea came into the complainant's mind, he
immediately proceeded to the Patent Office to get it patented.
It is not necessary to the decision of this case to examine
whether all or any of the suggestions made by the complainant were
proper subjects of patent. The bill presents a number of
interrogatories to the defendant and requires him to answer them
under oath. The answer of the defendant denies that the complainant
was the original and first inventor of the several inventions
claimed or of any of them, and avers that the devices described in
the complainant's patents were well known and in use prior to the
pretended invention of them by the complainant. And it enumerates
many persons who had used the devices before the complainant.
Page 74 U. S. 299
The record presents no question of law as to the construction of
these patents. The only issues were of fact. It would be a tedious
as well as an unprofitable task to attempt to vindicate the
correctness of our decision of this case by quoting the testimony
and examining the volume of plates annexed to it. The decision
could never be a precedent in any other case. It is enough to say
that we see no reason to doubt the correctness of the decision of
the circuit court on the issues made or the pleadings.
Decree affirmed.
[
Footnote 1]
§ 6, 5 Stat. at Large 119.
[
Footnote 2]
Curtis on Patents 91.
[
Footnote 3]
§ 3, 5 Stat. at Large 544.
