Under the sixth section of the patent law of 1793, ch. 156, the
defendant pleaded the general issue and gave notice that he would
prove at the trial that the machine for the use of which, without
license, the suit was brought had been used previous to the alleged
invention of the plaintiff in several places which were specified
in the notice, or in some of them, "and also at sundry other places
in Pennsylvania, Maryland, and elsewhere in the United States." The
defendant having given evidence as to some of the places specified,
offered evidence as to others not specified.
Held, that
this evidence was admissible. But the powers of the court in such a
case are sufficient to prevent and will be exercised to prevent the
patentee from being injured by surprise.
Testimony on the part of the plaintiff that the persons of whose
prior use of the machine the defendant had given evidence had paid
the plaintiff for licenses to use the machine since his patent
ought not to be absolutely rejected, though entitled to very little
weight.
Quaere whether, under the general patent law,
improvements on different machines can be comprehended in the same
patent so as to give a right to the exclusive use of several
machines separately as well as a right to the exclusive use of
those machines in combination.
However this may be, the Act of 21 January, 1808, ch. 117, "for
the relief of Oliver Evans," authorizes the issuing to him of a
patent for his invention, discovery, and improvements in the art of
manufacturing flour and in the several machines applicable to that
purpose.
Quaere whether Congress can constitutionally decide the
fact that a particular individual is an author or inventor of a
certain writing or invention so as to preclude judicial inquiry
into the originality of the authorship or invention.
Be this as it may, the act for the relief of Oliver Evans does
not decide that fact, but leaves the question of invention and
improvement open to investigation under the general patent law.
Under the sixth section of the patent law, ch. 156, if the thing
secured by patent had been in use, or had been described in a
public work anterior to the supposed discovery, the patent is void,
whether the patentee had a knowledge of this previous use or
description or not.
Oliver Evans may claim under his patent the exclusive use of his
inventions and improvements in the art of manufacturing flour and
meals and in the several machines which be has invented, and in his
improvement on machines previously discovered. But where his claim
is for an improvement on a machine, he must show the extent of his
improvement so that a person understanding the subject may
comprehend distinctly in what it consists.
The act for the relief of O.E. is engrafted on the general
patent law, so as to give him a right to sue in the circuit court
for an infringement of his patent rights, although the defendant
may be a citizen of the same state with himself.
Page 16 U. S. 455
This was an action brought by the plaintiff in error against the
defendant in error for an alleged infringement of the plaintiff's
patent right to the use of his improved hopper boy, one of the
several machines discovered, invented, improved, and applied by him
to the art of manufacturing flour and meal, which patent was
granted on 22 January, 1808. The defendant pleaded the general
issue, and gave the notice hereafter stated. The verdict was
rendered, and judgment given thereupon for the defendant in the
court below, on which the cause was brought, by writ of error, to
this Court.
At the trial in the court below, the plaintiff gave in evidence
the several acts of Congress entitled respectively "An act to
promote the progress of useful arts," and
"to repeal the acts heretofore made for that purpose and to
extend the privilege of obtaining patents for useful discoveries
and inventions
Page 16 U. S. 456
to certain persons therein mentioned and to enlarge and define
penalties for violating the rights of patentees,"
and "An act for the relief of Oliver Evans," the said Oliver's
petition to the Secretary of State, for a patent, and the patent
thereupon granted
Page 16 U. S. 457
to the said Oliver, dated 22 January, 1808, and further gave in
evidence
Page 16 U. S. 458
that an agent for the plaintiff wrote a note to the defendant,
in answer to which he called on the
Page 16 U. S. 459
agent at Chambersburg at the house of Jacob Snyder on 9 August,
1813; there were a number
Page 16 U. S. 460
of millers present; the defendant then told the agent that he
had got Mr. Evans' Book, a plate in
Page 16 U. S. 461
the Millwright's Guide, and if the agent would take $40, the
defendant would give it him; the
Page 16 U. S. 462
defendant said that his hopper boy was taken from a plate in Mr.
Evan's book; he said he would give no more, alleging that the $100
the agent asked was too much; that the stream on which his mill was
was a small head of Conogocheage. The agent then declared that if
the defendant would not pay him by Monday morning, he would
commence a suit in the circuit court.
The plaintiff further gave in evidence that another agent for
the plaintiff was in the defendant's mill on 2 November, 1814, and
saw a hopper boy there on the principles and construction of the
plaintiff's hopper boy. This witness had heard that a
Page 16 U. S. 463
right was obtained under Pennsylvania, but did not known of any
rights under Pennsylvania sold by the plaintiff, and did not know
that it was erected in any mill after the patent under
Pennsylvania. The defendant's
Page 16 U. S. 464
hopper boy had an upright shaft, with a leading arm, in the
first place, and a large arm inserted
Page 16 U. S. 465
with flights, and leading lines, and sweepers; a little board,
for the purpose of sweeping the meal in the
Page 16 U. S. 466
bolting hoppers and spreading it over the floor; a balance
weight, to cause the arms to play up and down lightly over the
meal. The leading arms were about 5
Page 16 U. S. 467
feet long, and seemed to be in proportion, the arm about 14 and
the length of the sweep about 9 inches.
Page 16 U. S. 468
And the defendant, having previously given the plaintiff written
notice that upon the trial of the
Page 16 U. S. 469
cause, the defendant would give in evidence under the general
issue the following special matter, to-wit:
Page 16 U. S. 470
"1st. That the improved hopper boy, for which,
inter
alia, the plaintiff in his declaration alleges he
Page 16 U. S. 471
has obtained a patent, was not originally discovered by the
patentee, but had been in use anterior to the supposed discovery of
the patentee, in sundry places, to-wit, at the mill of George Fry
and Jehu Hollingsworth in Dauphin County, Pennsylvania, at
Christian Stauffer's mill in Warwick Township, Lancaster County,
State of Pennsylvania, at Jacob Stauffer's mill in the same county,
at Richard Downing's mill in Chester County, Pennsylvania; at
Buffington's mill on the Brandywine; at Daniel Huston's mill in
Lancaster County, Pennsylvania; at Henry Stauffer's mill in York
County, Pennsylvania, and at Dihl's mill in the same county, or at
some of the said places, and also at sundry other places in the
said State of Pennsylvania, the State of Maryland, and
elsewhere
Page 16 U. S. 472
in the United States."
"2d. That the patent given to the plaintiff, as he alleges in
his declaration, is more extensive than his discovery or invention,
for that certain parts of the machine in said patent, called an
improved hopper boy, and which the plaintiff claims as his
invention and discovery, to-wit, the upright shaft, arms, and
flights, and sweeps, or some of them, and those parts by which the
meal is spread, turned and gathered at one operation, and also
several other parts, were not originally invented and discovered by
him, but were in use prior to his said supposed invention or
discovery, to-wit, at the places above mentioned, or some of
them."
"3d. That the said patent is also more extensive than the
plaintiff's invention or discovery, for that the application of the
power that moves the mill or other principal machine to the hopper
boy is not an original invention or discovery of the plaintiff, but
was in use anterior to his said supposed invention or discovery,
to-wit, at the places above mentioned, or some of them."
"4th. That the said patent is void, because it purports to give
him an exclusive property in an improvement in the art of
manufacturing meal, by means of a certain machine, termed an
improved hopper boy, of which the said plaintiff is not the
original inventor or discoverer; parts of the machine in the
description thereof referred to by the patent, having been in use
anterior to the plaintiff's said supposed discovery, to-wit, at the
places above mentioned, or some of them, and the said patent and
description therein referred to contains no statement,
specification, or description
Page 16 U. S. 473
by which those parts, so used as aforesaid, may be distinguished
from those of which the said plaintiff may have been the inventor,
or discoverer, protesting at the same time that he has not been the
inventor or discoverer of any of the parts of the said
machine."
"5th. That the improved elevator, described in the declaration
or referred to therein, was not originally discovered by the
plaintiff, but was anterior to his said supposed discovery or
invention, described in certain public works, or books, to-wit, in
Shaw's Travels; in the first volume of the Universal History; in
the first volume of Mormer's Husbandry; in Ferguson's Mechanics; in
Bossuet's Histoire des Mathematiques; in Wolf's Cours des
Mathematiques; in Desagulier's Experimental Philosophy, and in
Proney's Architecture Hydraulique, or some of them."
"6th. That the said patent is more extensive than the invention
or discovery of the plaintiff because certain parts of the machine
called an improved elevator were, anterior to the plaintiff's said
supposed invention or discovery, described in certain public works,
or books, to-wit, the works or books above mentioned, or some of
them, and that the said patent is void because it neither contains
or refers to any specification or description by which the parts so
before described in the said public works, may be distinguished
from those parts of which the plaintiff may be the inventor, or
discoverer, protesting, at the same time, that he has not been the
inventor or discoverer of any of the parts of the said machine"
gave in evidence the existence of hopper boys prior to the
plaintiff's alleged discovery at sundry mills in the State of
Pennsylvania,
Page 16 U. S. 474
mentioned in the said notice, and further offered to give in
evidence the existence of hopper boys prior to the plaintiff's
alleged discovery, at sundry other mills in the State of
Pennsylvania not mentioned in the said notice, and the counsel for
the plaintiff objected to the admission of any evidence of the
existence of hopper boys in the said mills not mentioned in the
said notice. But the court decided that such evidence was competent
and legal. To which decision the counsel for the plaintiff
excepted. The plaintiff, after the above evidence had been laid
before the jury, offered further to give in evidence, that certain
of the persons mentioned in the defendant's notice, as having
hopper boys in their mills, and also certain of the persons not
mentioned in the said notice, but of whom it had been shown by the
defendant that they had hopper boys in their mills had, since the
plaintiff's patent, paid the plaintiff for license to use his
improved hopper boy in the said mills respectively. But the counsel
for the defendant objected to such evidence as incompetent and
illegal, and the court refused to permit the same to be laid before
the jury. To which decision the plaintiff's counsel excepted.
The court below charged the jury that the patent contained no
grant of a right to the several machines, but was confined to the
improvement in the art of manufacturing flour by means of those
machines, and that the plaintiff's claim must therefore be confined
to the right granted, such as it was. That it had been contended
that the schedule was part of the patent, and contained a claim to
the invention of the peculiar properties and principles of the
hopper boy, as
Page 16 U. S. 475
well as other machines. But the court was of opinion that the
schedule is to be considered as part of the patent so far as it is
descriptive of the machines, but not further, and even if this
claim had been contained in the body of the patent, it would have
conferred no right which was not granted by that instrument.
The court further proceeded to instruct the jury that the law
authorized the president to grant a patent for the exclusive right
to make, construct, use, and vend to be used any new and useful
art, machine, manufacture, or composition of matter or any new and
useful improvement in any art, machine &c., not known or used
before the application. As to what constitutes an improvement, it
is declared that it must be in the principle of the machine, and
that a mere change in the form or proportions of any machine shall
not be deemed a discovery. Previously to obtaining the patent, the
applicant is required to swear or affirm that he verily believes
that he is the true inventor or discoverer of the art, machine, or
improvement for which he solicits a patent, and he must also
deliver a written description of his invention, and of the manner
of using it, so clearly and exactly, as to distinguish the same
from all other things before known, and to enable others skilled in
the art to construct and use the same. That from this short
analysis of the law, the following rules might be deduced.
1st. That a patent may be for a new and useful art, but it must
be practical, it must be applicable and referable to something by
which it may be proved to be useful; a mere abstract principle
cannot be appropriated by patent.
2d. The discovery must not only be useful, but new; it must not
have been
Page 16 U. S. 476
known or used before in any part of the world. It was contended
by the plaintiff's counsel that the title of the patentee cannot be
impeached unless it be shown that he knew of a prior discovery of
the same art, machine, &c., and that true and original are
synonymous terms in the intention of the legislature. But as it was
not pretended that those terms meant the same thing in common
parlance, neither was it the intention of the legislature to use
them as such. The first section of the law, referring to the
allegations of the application for a patent, speaks of the
discovery as something "not known or used before the application,"
and in the 6th section it is declared that the defendant may give
in evidence that the thing secured by patent, was not originally
discovered by the patentee, but has been in use, had been described
in some public work anterior to the supposed discovery.
3d. If the discovery be of an improvement only, it must be an
improvement in the principles of a machine, art, or manufacture,
before known or used; if only in the form or proportion, it has not
the merit of a discovery which can entitle the party to a
patent.
4th. The grant can only be for the discovery as recited and
described in the patent and specification. If the grantee is not
the original discoverer of the art, machine, &c., for which the
grant is made, the whole is void. Consequently, if the patent be
for the whole of the machine, and the discovery were of an
improvement, the patent is void.
5th. A machine or an improvement may be new and the proper
subject of a patent though the parts of it were before known and in
use. The combination, therefore, of old machines to produce a
new
Page 16 U. S. 477
and useful result is a discovery for which a patent may be
granted.
The above principles would apply to most of the questions that
had been discussed. It was strongly insisted upon by the
defendant's counsel that this patent is broader than the discovery,
the evidence proving that in relation to the hopper boy for the
using of which this suit is brought, the plaintiff can pretend to
no discovery beyond that of an improvement in a machine known and
used before the alleged discovery of the plaintiff. This argument
proceeded upon the supposition that the plaintiff had obtained a
patent for the hopper boy, which was entirely a mistake. The patent
was "for an improvement in the art of manufacturing flour," by
means of a hopper boy and four other machines described in the
specification, and not for either of the machines so combined and
used. That the plaintiff is the original discoverer of this
improvement, was contested by no person, and therefore it could not
with truth be alleged that the patent is broader than the
discovery, or that the plaintiff could not support an action on
this patent against any person who should use the whole
discovery.
But could he recover against a person who had made or used one
of the machines, which in part constitute the discovery? The
plaintiff insisted that he could, because, having a right to the
whole, he is necessarily entitled to the parts of which that whole
is composed. Would it be seriously contended that a person might
acquire a right to the exclusive use of a machine, because when
used in combination with others, a new and useful result is
produced which he could not have acquired independent of that
combination?
Page 16 U. S. 478
If he could, then if A. were proved to be the original inventor
of the hopper boy; B. of the elevator, and so on, as to the other
machines, and either had obtained patents for their respective
discoveries, or chose to abandon them to the public, the plaintiff,
although it was obvious he could not have obtained separate patents
for those machines, might nevertheless deprive the original
inventors, in the first instance, and the public, in the latter, of
their acknowledged right to use those discoveries, by obtaining a
patent for an improvement consisting in a combination of those
machines to produce a new result.
The court further charged the jury that it was not quite clear
that this action could be maintained, although it was proved beyond
all controversy that the plaintiff was the original inventor of
this machine. The patent was the foundation of the action, and the
gist of the action was the violation of a right which that
instrument had conferred. But the exclusive right of the hopper boy
was not granted by this patent, although this particular machine
constitutes a part of the improvement of which the plaintiff is the
original inventor, and it is for this improvement and this only
that the grant is made. If the grant then was not of this
particular machine, could it be sufficient for the plaintiff to
prove in this action that he was the original inventor of it?
Again, could the plaintiff have obtained a separate patent for
the hopper boy, in case he were the original inventor of it,
without first swearing or affirming, that he was the true inventor
of that machine? Certainly not. Has the plaintiff then taken or
could he have taken such an oath in this case? Most assuredly he
could not, because the prescribed form of the oath
Page 16 U. S. 479
is that he is the inventor of the art, machine, or manufacture
for which he solicits a patent. But since the patent which he
solicited was not for the hopper boy, but for an improvement in the
manufacture of flour, he might with safety have taken the oath
prescribed by law, although he knew at the time that he was not the
true inventor of the hopper boy, and thus it would happen that he
could indirectly obtain the benefit of a patent right to the
particular machine, which he could not directly have obtained,
without doing what it must be admitted in this case he had not
done.
But this was not all. If the law had provided for fair and
original discoverers a remedy when their rights are invaded by
others, it had likewise provided corresponding protection to
others, where he has not the merit. What judgment could the
district court have rendered on a
scire facias to repeal
this patent if it had appeared that the plaintiff was not the true
and original inventor of the hopper boy? Certainly not that which
the law has prescribed,
viz., the repeal of the patent,
because it would be monstrous to vacate the whole patent, for an
invention of which the patentee was the acknowledged inventor,
because he was not the inventor of one of the constituent parts of
the invention for which no grant is made. But the court would have
no alternative but to give such a judgment, or, in effect, to
dismiss the
scire facias, and if the latter, then the
plaintiff would have beneficially the exclusive right to a machine,
which could not be impeached in the way prescribed by law, although
it should be demonstrated that he was not either the true or the
original inventor of it. And
Page 16 U. S. 480
supposing the jury should be of opinion, and so find, that the
plaintiff was not the original inventor of this machine, would not
the court be prevented from declaring the patent void, under the
provisions of the 6th section of the law, for the reason assigned
why the district court could not render judgment upon a
scire
facias? Indeed it might well be doubted whether the defense
now made by the defendant could be supported at all in this action
(if this action could be maintained), inasmuch as the defendant
cannot allege, in the words of the 6th section, that the thing
secured by patent was not originally discovered by the patentee,
since, in point of fact, the thing patented was originally
discovered by the patentee, although the hopper boy may not have
been so discovered. But if this defense could not be made, did not
that circumstance afford a strong argument against this action? If
the plaintiff was not the inventor of the parts, he had no right to
complain that they were used by others, if not in a way to infringe
his right to their combined effect. If he was the original inventor
of the parts which constitute the whole discovery, or any of them,
he might have obtained a separate patent for each machine of which
he was the original inventor.
Upon the whole, although the court gave no positive opinion upon
this question, it stated that it was not to be concluded that this
action could be supported even if it were proved that the plaintiff
was the original inventor of the hopper boy. But if an action would
lie upon this patent for the violation of the plaintiff's right to
the hopper boy, still the plaintiff could not recover if it had
been shown to the satisfaction of the
Page 16 U. S. 481
jury that he was not the original discoverer of that
machine.
It appeared by the testimony of the defendant's witnesses that
Stauffer's hopper boy was in use many years before the alleged
discovery of the plaintiff; that the two machines differed from
each other very little in form, in principle, or in effect. They
were both worked by the same power which works the mill, and they
both stir, mix, cool, dry, and conduct the flour to the bolting
chest. Whether the flights and sweepers in the plaintiff's hopper
boy were preferable to the slips attached to the under part of the
arm in Stauffer's, or whether, upon the whole, the former is a more
perfect agent in the manufacture of flour than the latter were
questions which the court would not undertake to decide, because,
unless the plaintiff was the original inventor of the hopper boy,
although he had obtained a separate patent for it, he could not
recover in this action, however useful the improvement might be
which he had made in that machine. If the plaintiff had obtained a
patent for his hopper boy, it would have been void, provided the
jury should be of opinion, upon the evidence, that his discovery
did not extend to the whole machine, but merely to an improvement
on the principle of an old one, and if this should be their opinion
in the present case, the plaintiff could not recover.
It had been contended by the plaintiff's counsel that the
defendant, having offered to take a license from the plaintiff if
he would consent to reduce the price of it to $40, he was not at
liberty to deny that the plaintiff is the original inventor of this
machine.
Page 16 U. S. 482
This argument had no weight in it, not merely because the offer
was rejected by the plaintiff's agent, and was therefore as if it
had not been made, but because the law prevents the plaintiff from
recovering if it appear on the trial that he was not the original
inventor. If the offer amounted to an acknowledgment that the
plaintiff was the original inventor (and further it could not go),
this might be used as evidence of that fact, but it would not
entitle the plaintiff to a verdict if the fact proved to be
otherwise.
The plaintiff's counsel had also strongly insisted that under
the equity of the tenth section of the law, the defense set up in
this case ought not to be allowed after three years from the date
of the patent. This argument might, perhaps, with some propriety be
addressed to the legislature, but was improperly urged to the
court. The law had declared that in an action of this kind, the
defendant may plead the general issue, and give in evidence that
the plaintiff was not the original inventor of the machine for
which the patent was granted. The legislature has not thought
proper to limit this defense in any manner, and the court could not
do it.
But what seemed to be conclusive of this point was that the
argument would tend to defeat altogether the provision of the sixth
section, which authorizes this defense to be made, for if it could
not be set up after three years from the date of the patent, it
would be in the power of the patentee to avoid it altogether by
forbearing to bring suits until after the expiration of that
period. And thus, although the law has carefully
Page 16 U. S. 483
provided two modes of vacating a patent improvidently granted,
the patentee, though not the original inventor, and however
surreptitiously he may have obtained his patent, may secure his
title to the exclusive use of another's invention, if he can for
three years avoid an inquiry into the validity of his title.
The last point was that Stauffer's invention was abandoned, and
consequently might be appropriated by the plaintiff. But if
Stauffer was the original inventor of the hopper boy, and chose not
to take a patent for it, it became public property by his
abandonment; nor could any other person obtain a patent for it,
because no other person would be the original inventor.
Page 16 U. S. 503
MR. CHIEF JUSTICE MARSHALL delivered the opinion of the
Court.
In this case, exceptions were taken in the circuit court by the
counsel for the plaintiff in error,
1st. To the opinion of the court in admitting testimony offered
by the defendant in that court.
2d. To its opinion in rejecting testimony offered by the
plaintiff in that court.
3d. To the charge delivered by the judge to the jury.
Under the 6th section of the act for the promotion of useful
arts and to repeal the act heretofore made for that purpose, the
defendant pleaded the general issue, and gave notice that he would
prove at the trial that the improved hopper boy, for the use of
which, without license, this suit was instituted, had been used
previous to the alleged invention of the said Evans, in several
places (which were specified in the notice), or in some of them,
"and also at sundry other places in Pennsylvania, Maryland, and
elsewhere in the United States." Having given evidence as to some
of the places specified in the notice, the defendant offered
evidence as to some other places not specified. This evidence was
objected to by the plaintiff, but admitted by the court, to which
admission the plaintiff's counsel excepted.
The 6th section of the act appears to be drawn on the idea that
the defendant would not be at liberty to contest the validity of
the patent on the general issue. It therefore intends to relieve
the defendant from the difficulties of pleading when it allows him
to give in
Page 16 U. S. 504
evidence matter which does affect the patent. But the notice is
directed for the security of the plaintiff, and to protect him
against that surprise to which he might be exposed, from an unfair
use of this privilege. Reasoning merely on the words directing this
notice, it might be difficult to define, with absolute precision,
what it ought to include, and what it might omit. There are,
however, circumstances in the act which may have some influence on
this point. It has been already observed, that the notice is
substituted for a special plea; it is further to be observed, that
it is a substitute to which the defendant is not obliged to resort.
The notice is to be given only when it is intended to offer the
special matter in evidence on the general issue. The defendant is
not obliged to pursue this course. He may still plead specially,
and then the plea is the only notice which the plaintiff can claim.
If, then, the defendant may give in evidence on a special plea the
prior use of the machine at places not specified in his plea, it
would seem to follow that he may give in evidence its use at places
not specified in his notice. It is not believed that a plea would
be defective, which did not state the mills in which the machinery
alleged to be previously used was placed.
But there is still another view of this subject, which deserves
to be considered. The section which directs this notice, also
directs that if the special matter stated in the section be proved,
"judgment shall be rendered for the defendant, with costs, and the
patent shall be declared void." The notice might be intended not
only for the information of the plaintiff,
Page 16 U. S. 505
but for the purpose of spreading on the record the cause for
which the patent was avoided. This object is accomplished by a
notice which specifies the particular matter to be proved. The
ordinary powers of the court are sufficient to prevent, and will
undoubtedly be so exercised as to prevent the patentee from being
injured by the surprise.
This testimony having been admitted, the plaintiff offered to
prove that the persons of whose prior use of the improved hopper
boy the defendant had given testimony had paid the plaintiff for
licenses to use his improved hopper boy in their mills since his
patent. This testimony was rejected by the court on the motion of
the defendant, and to this opinion of the court also the plaintiff
excepted.
The testimony offered by the plaintiff was entitled to very
little weight, but ought not to have been absolutely rejected.
Connected with other testimony, and under some circumstances, even
the opinion of a party may be worth something. It is therefore in
such a case as this deemed more safe to permit it to go to the
jury, subject, as all testimony is, to the animadversion of the
court, than entirely to exclude it.
We come next to consider the charge delivered to the jury.
The errors alleged in this charge may be considered under two
heads:
1st. In construing the patent to be solely for the general
result produced by the combination of all the machinery, and not
for the several improved machines, as well as for the general
result.
2d. That the jury must find for the defendant, if they
Page 16 U. S. 506
should be of opinion, that the hopper boy was in use prior to
the invention of the improvement thereon by Oliver Evans.
The construction of the patent must certainly depend on the
words of the instrument. But where, as in this case, the words are
ambiguous, these may be circumstances which ought to have great
influence in expounding them. The intention of the parties, if that
intention can be collected from sources which the principles of law
permit us to explore, are entitled to great consideration. But
before we proceed to this investigation, it may not be improper to
notice the extent of the authority under which this grant was
issued.
The authority of the executive to make this grant is derived
from the general patent law and from the act for the relief of
Oliver Evans. On the general patent law alone, a doubt might well
arise whether improvements on different machines could regularly be
comprehended in the same patent so as to give a right to the
exclusive use of the several machines separately, as well as a
right to the exclusive use of those machines in combination. And if
such a patent would be irregular, it would certainly furnish an
argument of no inconsiderable weight against the construction. But
the "act for the relief of Oliver Evans" entirely removes this
doubt. That act authorizes the Secretary of State to issue a patent
granting to the said Oliver Evans the full and exclusive right in
his invention, discovery, and improvements in the art of
manufacturing flour and in the several machines
Page 16 U. S. 507
which he has invented, discovered, improved, and applied to that
purpose.
Of the authority, then, to make this patent coextensive with the
construction for which the plaintiff's counsel contends there can
be no doubt.
The next object of inquiry is the intention of the parties so
far as it may be collected from sources to which it is allowable to
resort.
The parties are the government, acting by its agents, and Oliver
Evans.
The intention of the government may be collected from the "act
for the relief of Oliver Evans." That act not only confers the
authority to issue the grant, but expresses the intention of the
legislature respecting its extent. It may fairly be inferred from
it that the legislature intended the patent to include both the
general result, and the particular improved machines, if such
should be the wish of the applicant. That the executive officer
intended to make the patent coextensive with the application of
Oliver Evans, and with the special act, is to be inferred from the
reference to both in the patent itself. If, therefore, it shall be
satisfactorily shown from his application to have been the
intention of Oliver Evans to obtain a patent including both
objects, that must be presumed to have been also the intention of
the grantor.
The first evidence of the intention of Oliver Evans is furnished
by the act for his relief. The fair presumption is that it conforms
to his wishes -- at least that it does not transcend them.
The second is his petition to the Secretary of State,
Page 16 U. S. 508
which speaks of his having discovered certain useful
improvements, and prays a patent for them, "agreeably to the act of
Congress, entitled, an act for the relief of Oliver Evans." This
application is for a patent coextensive with the act.
This intention is further manifested by his specification. It is
not to be denied that a part of this specification would indicate
an intention to consider the combined operation of all his
machinery as a single improvement, for which he solicited a patent.
But the whole taken together, will not admit of this exposition.
The several machines are described with that distinctness which
would be used by a person intending to obtain a patent for each. In
his number 4 which contains the specification of the drill, he
asserts his claim, in terms, to the principles, and to all the
machines he had specified, and adds
"they may all be united and combined in one flour mill, to
produce my improvement in the art of manufacturing flour complete,
or they may be used separately for any of the purposes specified
and allotted to them, or to produce my improvement in part,
according to the circumstances of the case."
Being entitled by law to a patent for all and each of his
discoveries; considering himself, as he avers in his specification
and affirmation, as the inventor of each of these improvements;
understanding, as he declares he did, that they might be used
together so as to produce his improvement complete, or separately,
so as to produce it in part; nothing can be more improbable than
that Oliver Evans intended to obtain a patent solely for their
combined operation. His affirmation,
Page 16 U. S. 509
which is annexed to his specification, confirms this reasoning.
To the declaration that he is the inventor of these improvements,
he adds, "for which he solicits a patent."
With this conviction of the intention with which it was framed,
the instrument is to be examined.
The patent begins with a recital that Oliver Evans had alleged
himself to be the inventor of a new and useful improvement in the
art of manufacturing flour, &c., by the means of several
machines, for a description of which reference is made to his
specification.
It will not be denied that if the allegation of Oliver Evans was
necessarily to be understood as conforming to this recital, if our
knowledge of it was to be derived entirely from this source, the
fair construction would be that his application was singly for the
exclusive right to that improvement which was produced by the
combined operation of his machinery. But in construing these terms,
the court is not confined to their most obvious import. The
allegation made by Oliver Evans, and here intended to be recited,
is in his petition to the Secretary of State. That petition is
embodied in and becomes a part of the patent. It explains itself
and controls the words of reference to it. His allegation is not
"that he has invented a new and useful improvement," but that he
has discovered certain useful improvements. The words used by the
Department of State in reciting this allegation must then be
expounded by the allegation itself, which is made a part of the
patent.
The recital proceeds "which improvement has not been known,"
&c. These words refer clearly to
Page 16 U. S. 510
the improvement first mentioned and alleged in the petition of
Oliver Evans, and are of course to be controlled in like manner
with the antecedent words, by that petition. This part of the
recital is concluded by adding that Oliver Evans has affirmed that
he does verily believe himself to be the true inventor or
discoverer of the said improvement.
But the affirmation of Oliver Evans, like his petition, is
embodied in the grant, and must of course expound the recital of
it. That affirmation is that he does verily believe himself to be
the true and original inventor of the improvements contained in his
specification.
In every instance, then, in which the word improvement is used
in the singular number throughout the part of recital of this
patent, it is used in reference to a paper contained in the body of
the patent, which corrects the term and shows it to be
inaccurate.
The patent, still by way of recital, proceeds to add
"and agreeably to the act of Congress, entitled 'An act for the
relief of Oliver Evans,' which authorizes the Secretary of State to
secure to him by patent the exclusive right to the use of such
improvement in the art of manufacturing flour and meal, and in the
several machines which he has discovered, improved, and applied to
that purpose; he has paid into the Treasury, &c., 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. "
Page 16 U. S. 511
To what do the words "said improvement" relate? The answer which
has been given at the bar is entirely correct. To the improvement
mentioned in the statute and in the petition, to both of which
direct reference is made. But in the statute and in the petition,
the word used is "improvements," in the plural. The patent
therefore obviously affixed to the word "improvement," in the
singular, the same sense in which the plural is employed, both in
the statute and in the petition. We are compelled from the whole
context so to construe the word in every place in which it is used
in the recital, because it is constantly employed with express
reference to the act of Congress, or to some document embodied in
the patent, in each of which the plural is used.
When, then, the words "said improvement" are used as a term of
grant, they refer to the words of the recital, which have been
already noticed, and must be construed in the same sense. This
construction is rendered the more necessary by the subsequent
words, which refer for a description of the improvement to the
schedule. It also derives some weight from the words "according to
law," which are annexed to the words of grant. These words can
refer only to the general patent law and to the "act for the relief
of Oliver Evans." These acts, taken together, seem to require that
the patent should conform to the specification, affirmation, and
petition of the applicant.
It would seem as if the claim of Oliver Evans was rested at the
circuit court on the principle that a grant for an improvement, by
the combined operation
Page 16 U. S. 512
of all the machinery, necessarily included a right to the
distinct operation of each part, inasmuch as the whole comprehends
all its parts. After very properly rejecting this idea, the judge
appears to have considered the Department of State, and the
patentee, as having proceeded upon it in making out this patent. He
supposed the intention to be, to convey the exclusive right in the
parts as well as in the whole, by a grant of the whole; but as the
means used are in law incompetent to produce the effect, he
construed the grant according to his opinion of its legal
operation.
There is great reason in this view of the case, and this Court
has not discarded it without hesitation. But as to the grant, with
the various documents which form a part of it, would be
contradictory to itself, as these apparent contradictions are all
reconciled by considering the word "improvement" to be in the
plural instead of the singular number, as it is apparent that this
construction gives to the grant its full effect, and that the
opposite construction would essentially defeat it, this Court has,
after much consideration and doubt, determined to adopt it, as the
sound exposition of the instrument.
The second error alleged in the charge is in directing the jury
to find for the defendant if they should be of opinion that the
hopper boy was in use prior to the improvement alleged to be made
thereon by Oliver Evans.
This part of the charge seems to be founded on the opinion that
if the patent is to be considered as a grant of the exclusive use
of distinct improvements
Page 16 U. S. 513
it is a grant for the hopper boy itself, and not for an
improvement on the hopper boy.
The counsel for the plaintiff contends that this part of the
charge is erroneous because, by the "act for the relief of Oliver
Evans," Congress has itself decided that he is the inventor of the
machines for which he solicited a patent, and has left that point
open to judicial inquiry.
This Court is not of that opinion. Without inquiring whether
Congress, in the exercise of its power "to secure for limited
times, to authors and inventors, the exclusive right to their
respective writings and discoveries" may decide the fact that an
individual is an author or inventor, the court can never presume
Congress to have decided that question in a general act, the words
of which do not render such construction unavoidable. The words of
this act do not require this construction. They do not grant to
Oliver Evans the exclusive right to use certain specified machines,
but the exclusive right to use his invention, discovery, and
improvements, leaving the question of invention and improvement
open to investigation, under the general patent law.
The plaintiff has also contended that it is not necessary for
the patentee to show himself to be the first inventor or
discoverer. That the law is satisfied by his having invented a
machine, although it may have been previously discovered by some
other person.
Without a critical inquiry into the accuracy with which the term
invention or discovery may be applied to any other than the first
inventor, the Court
Page 16 U. S. 514
considers this question as completely decided by the 6th section
of the general patent act. That declares that if the thing was not
originally discovered by the patentee, but had been in use or had
been described in some public work, anterior to the supposed
discovery of the patentee, judgment shall be rendered for the
defendant and the patent declared void.
Admitting the words "originally discovered" to be explained or
limited by the subsequent words, still if the thing had been in
use, or had been described in a public work, anterior to the
supposed discovery, the patent is void. It may be that the patentee
had no knowledge of this previous use or previous description;
still his patent is void; the law supposes he may have known it,
and the charge of the judge, which must be taken as applicable to
the testimony, goes no further than the law.
The real inquiry is does the patent of Oliver Evans comprehend
more than he has discovered? If it is for the whole hopper boy, the
jury has found that this machine was in previous use. If it
embraces only his improvement, then the verdict must be set
aside.
The difficulties which embarrass this inquiry are not less than
those which were involved in the first point. Ambiguities are still
to be explained, and contradictions to be reconciled.
The patent itself, construed without reference to the schedule
and other documents to which it refers, and which are incorporated
in it, would be a grant of a single improvement; but construed with
those
Page 16 U. S. 515
documents, it has been determined to be a grant of the several
improvements which he has made in the machines enumerated in his
specification. But the grant is confined to improvements. There is
no expression in it which extends to the whole of any one of the
machines which are enumerated in his specification or petition. The
difficulty grows out of the complexity and ambiguity of the
specification and petition. His schedule states his first principle
to be the operation of his machinery on the meal from its being
ground until it is bolted. He adds "this principle I apply by
various machines, which I have invented, constructed, and adapted
to the purposes hereafter specified,"
His second principle is the application of the power that moves
the mill to his machinery.
The application of these principles, he says, to manufacturing
flour, is what he claims as his invention or improvement in the
art.
He asserts himself to be the inventor of the machines and claims
the application of these principles, to the improvement of the
process of manufacturing flour, and other purposes, as his
invention and improvement in the art.
The schedule next proceeds to describe the different machines as
improved, so as to include in the description the whole machine,
without distinguishing his improvement from the machine as it
existed previous thereto, and in his fourth number he says,
"I claim the exclusive right to the principles, and to all the
machines above specified, and for all the uses and purposes
specified, as not having been heretofore known or used before I
discovered them. "
Page 16 U. S. 516
If the opinion of the court were to be formed on the schedule
alone, it would be difficult to deny that the application of Oliver
Evans extended to all the machines it describes. But the schedule
is to be considered in connection with the other documents
incorporated in the patent.
The affirmation which is annexed to it avers that he is the
inventor not of the machines, but of the improvements herein above
specified.
In his petition, he states himself to have discovered certain
useful improvements, applicable to the art of manufacturing flour,
and prays a patent for same -- that is, for his improvements,
agreeably to the act of Congress, entitled, "an act for the relief
of Oliver Evans." After stating the principles as in his schedule,
he adds, "the machinery consists of an improved elevator, an
improved conveyor, an improved hopper boy, an improved drill, and
an improved kiln dryer."
Although in his specification he claims a right to the whole
machine, in his petition he only asks a patent for the improvements
in the machine. The distinction between a machine and an
improvement one a machine or an improved machine is too clear for
them to be confounded with each other.
The act of Congress agreeably to which Evans petitions for a
patent authorizes the Secretary of State to issue one for his
improvements in the art of manufacturing flour, "and in the several
machines which he has invented, discovered, improved, and applied
to that purpose."
Page 16 U. S. 517
In conformity with this act, this schedule, and this petition,
the Secretary of State issues his patent, which, in its terms,
embraces only improvements. Taking the whole together, the Court is
of opinion that the patent is to be constructed as a grant of the
general result of the whole machinery and of the improvement in
each machine. Great doubt existed whether the words of the grant,
which are expressed to be for an improvement to improvements only,
should be understood as purporting to be a patent only for
improvements, or should be so far controlled by the specification
and petition as to be considered as a grant for the machine as
improved, or in the words of the schedule and petition, for "an
improved elevator, an improved conveyor, an improved hopper boy, an
improved drill, and an improved kiln dryer." The majority of the
Court came at length to the opinion that there is no substantial
difference, as they are used in this grant, whether the words grant
a patent for an improvement on a machine or a patent for an
improved machine, since the machine itself, without the
improvement, would not be an improved machine. Although I did not
concur in this opinion, I can perceive no inconvenience from the
construction.
It is, then, the opinion of this Court that Oliver Evans may
claim, under his patent the exclusive use of his inventions and
improvements in the art of manufacturing flour and meal, and in the
several machines which he has invented, and in his improvements on
machines previously discovered.
Page 16 U. S. 518
In all cases where his claim is for an improvement on a machine,
it will be incumbent on him to show the extent of his improvement,
so that a person understanding the subject may comprehend
distinctly in what it consists.
Some doubts have been entertained respecting the jurisdiction of
the courts of the United States, as both the plaintiff and
defendant are citizens of the same state. The 5th section of the
act to promote the progress of useful arts, which gives to every
patentee a right to sue in a circuit court of the United States in
case his rights be violated, is repealed by the 3d section of the
Act of 1800, ch. 179, which gives the action in the circuit court
of the United States where a patent is granted "pursuant" to that
act or to the act for the promotion of useful arts. This patent, it
has been said, is granted not in pursuance of either of those acts,
but in pursuance of the act "for the relief of Oliver Evans." But
this Court is of opinion that the act for the relief of Oliver
Evans is engrafted on the general act for the promotion of useful
arts, and that the patent is issued in pursuance of both. The
jurisdiction of the Court is therefore sustained.
As the charge delivered in the circuit court to the jury differs
in some respects from this opinion, the judgment rendered in the
court is reversed and annulled and the cause remanded to the
circuit court with directions to award a
venire facias de
novo and to proceed therein according to law.
Judgment reversed.
Page 16 U. S. 519
JUDGMENT. This cause came on to be heard on the transcript of
the record of the Circuit Court for the District of Pennsylvania,
and was urged by counsel. On consideration whereof this Court is of
opinion that there is error in the proceedings of the said circuit
court in this, that the said court rejected testimony which ought
to have been admitted, and also in this, that in the charge
delivered to the jury, the opinion is expressed that the patent on
which this suit was instituted conveyed to Oliver Evans only an
exclusive right to his improvement in manufacturing flour and meal
produced by the general combination of all his machinery, and not
to his improvement in the several machines applied to that purpose,
and also that the said Oliver Evans was not entitled to recover if
the hopper boy in his declaration mentioned had been in use
previous to his alleged discovery. Therefore it is considered by
this Court that the judgment of the circuit court be reversed and
annulled and that the cause be remanded to the said circuit court
with directions to award a
venire facias de novo.
