1. A judgment recovered in the Common Pleas, at Westminster,
England, against a person in the United States, without any service
of process on him or any notice of the suit other than a personal
one served on him in this country, has no validity here, even of a
prima facie character.
2. On a suit at law involving a question of priority of
invention where a patent under consideration is attempted to be
invalidated by a prior patent, counsel cannot require the court to
compare the two specifications and to instruct the jury, as matter
of law, whether the inventions therein described are or are not
identical. The rule on the subject stated.
Bischoff and others brought an action in the court below against
Wethered to recover damages for breach of covenant in the
assignment of one-fortieth part of an English patent granted to one
Newton. The covenant was that the patent was in all respects valid
and unimpeachable. The breach complained of was that it was null
and void. The declaration contained certain other counts -- namely
the ordinary money counts and a count on a judgment recovered in
the Common Pleas, at Westminster Hall, in England. To the latter
count the defendant pleaded
nul tiel record. The only
evidence adduced in its support was an exemplified copy of a
judgment recovered against the defendant in the said Common Pleas
without any service of process on him or any notice of the suit
other than a personal notice served in the City of Baltimore, and
as no evidence was adduced to sustain the common counts, the chief
question in the case arose under the count on the alleged covenant,
that the patent in question was valid and unimpeachable.
This patent was granted to Newton on the 25th of May, 1853, and
was for certain improvements in the generation of steam, consisting
of an accessory steam pipe carried from the boiler through the fire
or chimney so as to cause the steam conveyed therein to become
superheated, and from thence carried to the steam chest or to an
intermediate pipe, there to connect with the ordinary steam pipe
which conveys the steam from the boiler to the engine, so as to mix
the superheated
Page 76 U. S. 813
steam with the ordinary steam as it comes from the boiler. The
effect of this mixture is described to be that the superheated
steam converts into steam all the remaining watery particles, froth
and foam, contained in the ordinary steam, and thus dries and
rarefies the whole mass and makes it more effective.
The plaintiff, having put in evidence the assignment containing
the covenant declared on and the letters patent granted to Newton
in order to show the breach of covenant, put in evidence a prior
English patent, granted to one Poole in 1844, for an invention
which the plaintiff claimed was identical with that patented to
Newton. The plaintiff then called upon the court to compare the two
specifications and to instruct the jury that the patent to Newton
was not a valid and unimpeachable patent, inasmuch as the invention
therein described was not novel, but was already substantially
described in the specification of Poole, and that under the
covenants contained in the assignment, the plaintiffs were entitled
to recover �500, the amount of purchase money paid, with interest.
This the court refused to do, and the plaintiffs excepted.
The defendant then prayed the court to instruct the jury,
amongst other things, that there is not on the face of the
respective patents of Newton and Poole such an identity as
authorizes the court to pronounce that they are for one and the
same invention, and that for that reason the patent granted to
Newton is invalid; and such invalidity being necessary to support
the plaintiffs' claim and being wanting, the verdict must be for
the defendant. The court granted this prayer and instructed the
jury accordingly, and a verdict was found for the defendant. The
plaintiffs excepted to this instruction. The case being brought
here, the questions were:
1st (one not pressed). What effect had the proceeding in the
Common Pleas in England?
2d. The principal one(whether the court below was bound to
compare the two specifications, and to instruct the jury as matter
of law whether the inventions therein described were, or were not,
identical.
Page 76 U. S. 814
MR. JUSTICE BRADLEY delivered the opinion of the Court.
As to the first point raised -- to-wit the effect of the
proceeding in the Common Pleas at Westminster Hall -- it is enough
to say that it was wholly without jurisdiction of the person, and
whatever validity it may have in England, by virtue of statute law,
against property of the defendant there situate, it can have no
validity here, even of a
prima facie character. It is
simply null.
The second and principal question in the case raises an
important question of practice under the patent law, and deserves
to be seriously considered by this Court.
It is undoubtedly the common practice of the United States
circuit courts, in actions at law, on questions of priority of
invention, where a patent under consideration is attempted to be
invalidated by a prior patent, to take the evidence of experts as
to the nature of the various mechanisms or manufactures described
in the different patents produced, and as to the identity or
diversity between them, and to submit all the evidence to the jury
under general instructions as to the rules by which they are to
consider the evidence. A case may sometimes be so clear that the
court may feel no need of an expert to explain the terms of art or
the descriptions contained in the respective patents, and may,
therefore, feel authorized to leave the question of identity to the
jury, under such general instructions as the nature of the
documents seems to require. And in such plain cases the court would
probably feel authorized to set aside a verdict unsatisfactory to
itself, as against the weight of evidence. But in all such cases,
the question would still be treated as a question of fact for the
jury, and not as a question of law for the court. And under this
rule of practice, counsel would not have the right to require the
court, as matter of law, to pronounce upon the identity or
diversity of the several inventions described in the patents
produced. Such, we think, has been the prevailing rule in this
country, and we see no sufficient reason
Page 76 U. S. 815
for changing it. The control which the courts can always
exercise over unsatisfactory verdicts will enable them to prevent
any wrong or injustice arising from the action of juries, whereas
if the courts themselves were compellable to decide on these often
recondite and difficult questions, without the aid of scientific
persons familiar with the subjects of the inventions in question,
they might be led into irremediable errors, which would produce
great injustice to suitors. We are disposed to think that the
practice adopted by our courts is, on the whole, the safest and
most conducive to justice.
It may be objected to this view that it is the province of the
court, and not the jury, to construe the meaning of documentary
evidence. This is true. But the specifications of patents for
inventions are documents of a peculiar kind. They profess to
describe mechanisms and complicated machinery, chemical
compositions and other manufactured products, which have their
existence
in pais, outside of the documents themselves,
and which are commonly described by terms of the art or mystery to
which they respectively belong, and these descriptions and terms of
art often require peculiar knowledge and education to understand
them aright, and slight verbal variations, scarcely noticeable to a
common reader, would be detected by an expert in the art as
indicating an important variation in the invention. Indeed, the
whole subject matter of a patent is an embodied conception outside
of the patent itself, which, to the mind of those expert in the
art, stands out in clear and distinct relief, whilst it is often
unperceived, or but dimly perceived, by the uninitiated. This
outward embodiment of the terms contained in the patent is the
thing invented, and is to be properly sought, like the explanation
of all latent ambiguities arising from the description of external
things, by evidence
in pais.
We are, therefore, of opinion that the circuit court was
justified in refusing to give the instructions demanded by the
plaintiffs, and in giving that which was asked by the
defendant.
The precise question has recently undergone considerable
Page 76 U. S. 816
discussion in England, and has finally resulted in the same
conclusion to which we have arrived. The cases will be found
collected in the last edition of Curtis on Patents. [
Footnote 1] It was at first decided in the
cases of
Bovill v. Pimm, [
Footnote 2]
Betts v. Menzies, [
Footnote 3] and
Bush v. Fox,
[
Footnote 4] that it was the
province and duty of the court to compare the documents and decide
on the identity or diversity of the inventions. But in 1862, Lord
Westbury, in two very elaborate judgments, one of which was
delivered in the House of Lords on occasion of overruling the
decision in
Betts v. Menzies, held that it belonged to the
province of evidence, and not that of construction, to determine
this question. "In all cases, therefore," he concludes,
"where the two documents profess to describe an external thing,
the identity of signification between the two documents containing
the same description, must belong to the province of evidence, and
not that of construction."
Lord Westbury very justly remarks, that two documents using the
same words, if of different dates, may intend very diverse things,
as indeed was actually decided by this Court in the case of
Bridge Proprietors v. Hoboken Company. [
Footnote 5] The Court in that case said:
"It does not follow that when a newly invented or discovered
thing is called by some familiar word, which comes nearest to
expressing the new idea, that the thing so styled is really the
thing formerly meant by the familiar word."
And the decision was that the word "bridge," in an old bridge
law, passed in 1790, did not mean the same thing as the same word
meant when applied to the modern structure of a railroad
bridge.
This view of the case is not intended to, and does not, trench
upon the doctrine that the construction of written instruments is
the province of the court alone. It is not the construction of the
instrument, but the character of the thing invented, which is
sought in questions of identity and diversity of inventions.
Judgment affirmed.
[
Footnote 1]
§ 446.
[
Footnote 2]
36 English Law and Equity 441.
[
Footnote 3]
1 Ellis & Ellis, Q.B. 999.
[
Footnote 4]
38 English Law and Equity 1.
[
Footnote 5]
68 U. S. 1 Wall.
116.
