Action for the violation of a patent right, granted to the
patentee for "a new and useful improvement in turning short curves
on railroads."
On 26 September, 1835, a second patent was granted, the original
patent, granted in 1831, having been surrendered and cancelled on
account of a defective specification, the second patent being for
fourteen years from the date of the original patent. The second
patent was in the precise form of the original, except the recital
of the fact that the former patent was cancelled "on account of a
defective specification" and the statement of the time the second
patent was to begin to run. It was objected that the second patent
should not be admitted in evidence on the trial of the case because
it did not contain any recitals that the prerequisites of the act
of Congress of 1836, authorizing the renewal of patents had been
complied with.
Held that this objection cannot in point of
law be maintained. The patent was issued under the great seal of
the United States and is signed by the President and countersigned
by the
Secretary of State. It is a presumption of law that all public
officers, and especially such high functionaries, perform their
proper official duties until the contrary is proved. Where an act
is to be done or patent granted upon evidence and proofs to be laid
before a public officer upon which he is to decide, the fact that
he has done the act in granting the patent is
prima facie
evidence that the proofs have been regularly made, and were
satisfactory. No other tribunal is at liberty to reexamine or
controvert the sufficiency of such proofs, when the law has made
the officer the proper judge of their sufficiency and
competency.
Patents for lands, equally with patents for inventions, have in
courts of justice been deemed
prima facie evidence that
they have been regularly granted, whenever they have been produced
under the great seal of the government, without any recitals or
proofs that the prerequisites of the acts under which they have
been issued have been duly observed. In cases of patents, the
United States have gone one step further, and as the patentee is
required to make oath that he is the true inventor before he can
obtain a patent, the patent has been deemed
prima facie
evidence that he has made the invention.
It is incumbent on those who seek to show that the examination
of a witness has been improperly rejected to establish their right
to have the evidence admitted, for the court will be presumed to
have acted correctly until the contrary is established.
To entitle a party to examine a witness in a patent cause the
purpose of whose testimony is to disprove the right of the patentee
to the invention by showing its use prior to the patent by others,
the provisions of the patent act of 1836 relative to notice must be
strictly complied with.
It is incumbent on those who insist upon the right to put
particular questions to a witness to establish that right beyond
any reasonable doubt for the very purpose stated by them, and they
are not afterwards at liberty to desert that purpose and to show
the pertinency or relevancy of the evidence for any other purpose
not then suggested to the court.
A party has no right to cross-examine any witness except as to
facts and circumstances connected with the matters stated in his
direct examination. If he wishes to examine him on other matters,
he must do so by making the witness his own and calling him as such
in the subsequent progress of the cause. A party cannot, by his own
omission to take an objection to the admission of improper
evidence, brought out on a cross-examination, found a right to
introduce testimony in chief to rebut it or explain it.
Parol evidence bearing upon written contracts and papers ought
not to be admitted in evidence without the production of such
written contracts or papers so as to enable both the court and the
jury to see whether or not the admission of the parol evidence in
any manner will trench upon the rule that parol evidence is not
admissible to vary or contradict written contracts or papers.
As a general rule, and upon general principles, the declarations
and conversations of the plaintiff are not admissible evidence in
favor of his own rights. This is, however, but a general rule, and
admits and requires various exceptions. There are many cases in
which a party may show his declarations comport with acts in his
own favor, as a part
Page 39 U. S. 449
of the
res gestae. There are other cases in which his
material declarations have been admitted.
In an action for an assault and battery and wounding, the
declarations of the plaintiff to his internal pains, aches,
injuries, and symptoms, to the physician attending him are
admissible for the purpose of showing the nature and extent of the
injuries done to him. In many cases of inventions, it is hardly
possible in any other manner to ascertain the precise time and
exact origin of the invention.
The conversations and declarations of a patentee merely
affirming that at some former period he had invented a particular
machine may well be objected to. But his conversations and
declarations, stating that he had made an invention and describing
its details and explaining its operations are properly deemed an
assertion of his right, at that time, as an inventor, to the extent
of the facts and details which he then makes known, although not of
their existence at an anterior time. Such declarations, coupled
with a description of the nature and objects of the invention, are
to be deemed a part of the
res gestae, and legitimate
evidence that the invention was then known and claimed by him, and
thus its origin may be fixed at least as early as that period.
If the rejection of evidence is a matter resting in the sound
discretion of the court, this cannot be assigned as error.
The mode of conducting trials, the order of introducing
evidence, and the times when it is to be introduced are properly
matters belonging to the practice of the circuit courts, with which
the Supreme Court ought not to interfere unless it shall chose to
prescribe some fixed general rules on the subject, under the
authority of the act of Congress. The circuit courts possess this
discretion in as ample a manner as other judicial tribunals.
Testimony was not offered by a defendant or stated by him as
matter of defense in the stage of the cause when it is usually
introduced according to the practice of the court. It was offered
after the defendant's counsel had stated in open court that they
had closed their evidence, and after the plaintiff, in consequence
of that declaration, had discharged his own witness. The circuit
court refused to admit the testimony.
Held that this
decision was proper.
At the April session of the circuit court, James Stimpson
instituted an action against the plaintiffs in error for the
recovery of damages, for the violation of a patent granted to him
by the United States on 26 September, 1835, for "a new and useful
improvement in the mode of turning short curves on railroads."
The case was tried on 16 February, 1839, and a verdict was
rendered for the plaintiff for the sum of four thousand two hundred
and fifty dollars. On 6 May, 1839, a remittitur was entered on the
docket of the court for the sum of one thousand dollars and a
judgment was entered for the plaintiff for three thousand two
hundred and fifty dollars.
On the trial of the cause, the defendants tendered a bill of
exceptions to the decision of the court on its admitting the patent
to the plaintiff in evidence and to other rulings of the court in
the course of the trial. The defendants prosecuted this writ of
error.
The patent granted by the United States to James Stimpson was as
follows:
"The United States of America; to all to whom these letters
patent shall come."
"Whereas, James Stimpson, a citizen of the United States, hath
alleged that he has invented a new and useful improvement in
the
Page 39 U. S. 450
mode of turning short curves on railroads, for which letters
patent were granted the twenty-third day of August, 1831, which
letters being hereby cancelled on account of a defective
specification, which improvement, he states, has not been known or
used before his application, hath made oath that he does verily
believe that he is the true inventor or discoverer of the said
improvement, hath paid into the Treasury of the United States the
sum of thirty dollars, delivered a receipt for the same, and
presented a petition to the Secretary of State, signifying a desire
of obtaining an exclusive property in the said improvement, and
praying that a patent may be granted for that purpose. These are
therefore to grant according to law to the said James Stimpson, his
heirs, administrators, or assigns, for the term of fourteen years
from the twenty-third day of August, 1831, the full and exclusive
right and liberty of making, constructing, using, and vending to
others to be used, the said improvement, a description whereof is
given in the words of the said James Stimpson himself in the
schedule hereto annexed."
"Tested at Washington under the seal of the United States on 26
September, 1836, by the President of the United States and
certified in the usual form by the Attorney General of the United
States."
"The schedule referred to in these letters patent, and making a
part of the same," contained
"a description in the words of the said James Stimpson himself
of his improvement in the mode of turning short curves on
railroads, for which letters patent were granted, dated 23 August,
1831, which letters patent being hereby cancelled on account of a
defective specification."
The specification describes the invention with minute
particularity, and concludes:
"What I claim as my invention or improvement is the application
of the flanges of the wheels on one side of railroad carriages, and
of the treads of the wheels on the other side, to turn curves upon
railways, particularly such as turning the corners of the streets,
wharves, &c., in cities and elsewhere, operating upon the
principle herein set forth."
The bill of exceptions stated that the counsel for the plaintiff
offered in evidence the patent and specification, to the admission
of which in evidence the counsel for the defendant objected, but
the objection was overruled by the court, and the evidence was
admitted.
2. The defendants offered to give in evidence, by Josiah White,
the description of a flange upon one side of the railroad cars, and
the running upon the tread of the wheel upon the other side, with
the flange in a groove, for the turning of curves, which he had
seen in use before the date of plaintiff's patent, which was
objected to by the counsel for the plaintiff, and the objection
sustained by the court. The objection of the counsel for the
plaintiff to the introduction of the testimony of Josiah White, was
founded on the absence
Page 39 U. S. 451
of the notice required by the Act of Congress of the use of the
machine at Mauch Chunk, at which place, it was said, his testimony
would show it had been used.
3. The third exception was to the refusal of the court to allow
the defendants to introduce proof of the conversations between the
patentee and the counsel of the Baltimore & Ohio Railroad
Company, while an arrangement of a suit against the Company was
made, as to the character and effects of the arrangements.
4. The counsel for the plaintiff, by rebutting evidence, to
extend his claim to the invention prior to the time at which the
defendants had proved the reduction of the same into use and
practice by others, offered to give evidence by witnesses of the
conversations of the patentee on the subject of his invention at an
anterior period; which conversations were intended to show the
making of the invention by the patentee, before and at the period
when the same took place. The counsel for the defendants objected
to the admission of this testimony, but the court overruled the
objection.
5. The fifth exception was to the refusal of the court to admit
the examination of Dr. Thomas P. Jones. The plaintiff had
discharged his witnesses on the declaration of the defendants'
counsel that they had closed their evidence. The testimony asked
from Dr. Jones was to new facts. The court refused to admit the
testimony, on the ground that the testimony was improper, and that
it was offered too late.
Page 39 U. S. 457
MR. JUSTICE STORY delivered the opinion of the Court.
This is a writ of error to the judgment of the Circuit Court for
the Eastern District of Pennsylvania, rendered in an action brought
by Stimpson, the defendant in error, against the plaintiffs in
error for a violation of a patent right granted to him for a new
and useful improvement in the mode of turning short curves on
railroads.
A patent was originally granted to Stimpson for the same
invention on 23 August, 1831, and the renewed patent, upon
which
Page 39 U. S. 458
the present suit is brought, was granted on 26 September, 1835,
upon the former letters patent "being cancelled on account of a
defective specification," and the renewed patent was for the term
of fourteen years from the date of the original patent. With the
exception of the recital of the fact that the former letters patent
were cancelled "on account of a defective specification," and the
statement of the prior date from which the renewed patent was be
begin to run, the renewed patent is in the precise form in which
original patents are granted.
At the trial upon the general issue, a bill of exceptions was
taken to certain rulings of the court upon points of evidence, to
the consideration of which we shall at once proceed without any
further preface.
The first exception taken is to the admission of the renewed
patent as evidence in the cause to the jury. The Patent Act of
1832, ch. 162, sec. 3, under which this patent was obtained,
provides that whenever any patent shall be inoperative or invalid
by reason that any of the terms or conditions prescribed by the
prior acts of Congress, have not, by inadvertence, accident, or
mistake, and without any fraudulent or deceptive intention, been
complied with on the part of the inventor, it shall be lawful for
the Secretary of State, upon the surrender to him of such patent,
to cause a new patent to be granted to the inventor for the same
invention for the residue of the period then unexpired for which
the original patent was granted, upon his compliance with the terms
and conditions prescribed by the third section of the Act of 21
February, 1793, ch. 55.
Now the objection is that the present patent does not contain
any recitals that the prerequisites thus stated in the act have
been complied with,
viz., that the error in the former
patent has arisen by inadvertency, accident, or mistake and without
any fraudulent or deceptive intention, and that without such
recitals, as it is the case of a special authority, the patent is a
mere nullity and inoperative. We are of opinion that the objection
cannot in point of law be maintained. The patent was issued under
the great seal of the United States, and is signed by the President
and countersigned by the Secretary of State. It is a presumption of
law that all public officers, and especially such high
functionaries, perform their proper official duties until the
contrary is proved. And where, as in the present case, an act is to
be done or patent granted upon evidence and proofs to be laid
before a public officer, upon which he is to decide, the fact that
he has done the act or granted the patent is
prima facie
evidence that the proofs have been regularly made and were
satisfactory. No other tribunal is at liberty to reexamine or
controvert the sufficiency of such proofs if laid before him when
the law has made such officer the proper judge of their sufficiency
and competency. It is not, then, necessary for the patent to
contain any recitals that the prerequisites to the grant of it have
been duly complied with, for the law makes the presumption, and if,
indeed, it were otherwise, the recitals would not help the case
without the
Page 39 U. S. 459
auxiliary proof that these prerequisites had been
de
facto complied with. This has been the uniform construction,
as far as we know, in all our courts of justice upon matters of
this sort. Patents for lands, equally with patents for inventions,
have been deemed
prima facie evidence that they were
regularly granted whenever they have been produced under the great
seal of the government, without any recitals or proofs that the
prerequisites of the acts under which they have been issued have
been duly observed. In cases of patents, the courts of the United
States have gone one step further, and as the patentee is required
to make oath that he is the true inventor before he can obtain a
patent, the patent has been deemed
prima facie evidence
that he has made the invention. This objection, then, is overruled,
and there was no error in the circuit court in the admission of the
patent.
The next exception is to the refusal of the court to allow a
witness, Josiah White, to give a description of an invention which
he had seen on the Mauch Chunk railroad in 1827 which had a groove
on one side, and run on the other on a flange for crossing, for the
purpose of showing that the supposed invention of the plaintiff was
known and in use by others, before the date of his patent. By the
patent act of 1836 (which was applicable to the present point), it
is provided in the fifteenth section that whenever the defendant
relies in his defense on the fact of a previous invention,
knowledge, or use of the thing patented, he shall state in his
notice of special matter to be used in his defense the names and
places of residence of those, whom he intends to prove to have
possessed a prior knowledge of the thing, and where the same had
been used. The object of this most salutary provision is to prevent
patentees' being surprised at the trial of the cause by evidence of
a nature which they could not be presumed to know or be prepared to
meet, and thereby to subject them either to most expensive delays
or to a loss of their cause. It is incumbent on those who seek to
show that the examination of a witness has been improperly
rejected, to establish their right to have the evidence admitted,
for the court will be presumed to have acted correctly until the
contrary is established.
In the present case, there is no proof on the record that notice
had been given according to the requirements of the statute that
White was to be a witness for the purpose above stated. Unless such
notice was given, it is plain that the examination could not be
rightfully had. The
onus probandi is on the defendants to
show it, and unless they produce the notice, the objection must
fail. In point of fact it was admitted by counsel at the argument
that no such notice was given. In either view, then, from the
admission or from the defect of the preliminary proof of notice in
the record, the exception is not maintainable.
The next exception is to the refusal of the court to allow
certain questions to be put by the defendants to John H. B.
Latrobe, a witness introduced by the defendants to maintain the
issue on their part. Latrobe, on his examination, stated
"I know Mr. Stimpson
Page 39 U. S. 460
by sight and character. He granted to the Baltimore & Ohio
Railroad Company the privilege of using the curved ways on their
railroad, and all lateral roads connected therewith. I fix the date
of the contract in the early part of October, 1834, because I have
then a receipt of Mr. Stimpson's counsel for two thousand five
hundred dollars. Mr. Stimpson laid his claim against the Baltimore
Company for an infringement of his patent in 1832. It was referred
to me by the Company, and I advised them."
The counsel for the defendants then offered to prove by the same
witness the declarations of the plaintiff and his agent to the
witness that the settlement made with the Baltimore & Ohio
Railroad Company with the plaintiff was not an admission by the
said company of the plaintiff's right in the alleged invention, but
a mere compromise of a pending suit, disconnected with a grant, in
writing, made by the plaintiff to the said company, and to that end
proposed to put the following questions, respectively, and in
order, to the witness:
"1. Do you know who was the agent or attorney of James Stimpson,
in negotiating the arrangement and settlement between him and the
company referred to? Who was he?"
"2. State if any conversations occurred between James Stimpson
or his agent or counsel at any time during the negotiations
regarding the rights claimed by him in the patent for curved ways,
without reference to the existence of a written contract, or its
contents."
"3. What were they?"
The court refused to allow these questions to be put, for the
purpose aforesaid.
Now (as has been already intimated) it is incumbent upon those
who insist upon the right to put particular questions to a witness
to establish that right beyond any reasonable doubt for the very
purpose stated by them, and they are not afterwards at liberty to
desert that purpose and to show the pertinency or relevancy of the
evidence for any other purpose not then suggested to the court. It
was not pretended at the argument that the evidence so offered was
good evidence in chief in behalf of the defendants upon the issue
in the cause. It was
res inter alios acta, and had no
tendency to disprove the defendant's title to the invention or to
support any title set up by the defendants, for no privity was
shown between the defendants and the Baltimore Company. As evidence
in chief, therefore, it was irrelevant and inadmissible. The sole
purpose for which it was offered, so far as it was then declared to
the court, was to show that the compromise with the Baltimore
Company was not founded on any admission of the plaintiff's right
in the invention. Be it so; it was then inconsequential, for it
certainly had no just tendency to disprove his right. If the
compromise had been offered on the part of the plaintiff for the
purpose of establishing his right to the invention, there is no
pretense to say that it would have been admissible against the
defendants. In the converse case, it is equally inadmissible for
the defendants.
But it is now said that the evidence was in fact offered for the
purpose of rebutting or explaining certain statements made by
one
Page 39 U. S. 461
Ross Winans, a witness called by the defendants, in his answers
upon his cross-examination by the plaintiff's counsel. Now this
purpose is not necessarily, or even naturally, suggested by the
purpose avowed in the record. Upon his cross-examination, Winans
stated: "I understood there were arrangements made with the
Baltimore Company. I heard the Company paid five thousand dollars."
Now certainly these statements, if objected to by the defendants,
would have been inadmissible upon two distinct grounds. 1. First,
as mere hearsay; 2. and secondly upon the broader principle, now
well established, although sometimes lost sight of in our loose
practice at trials, that a party has no right to cross-examine any
witness except as to facts and circumstances connected with the
matters stated in his direct examination. If he wishes to examine
him to other matters, he must do so by making the witness his own,
and calling him, as such, in the subsequent progress of the cause.
The question then is presented whether a party can, by his own
omission to take an objection to the admission of improper evidence
brought out on a cross-examination, found a right to introduce
testimony in chief to rebut it or explain it. If upon the
cross-examination, Winans' answer had been such as was unfavorable
to the plaintiff, upon the collateral matters thus asked, which
were not founded in the issue, he would have been bound by it, and
not permitted to introduce evidence to contradict it.
There is great difficulty in saying that the defendants ought to
be in a more favored predicament, and to acquire rights founded
upon the like evidence to which they did not choose to make any
objection, although otherwise it could not have been in the cause.
But waiving this consideration, the grounds on which we think the
refusal of the court was right are first, that it was not
distinctly propounded to the court that the evidence was offered to
rebut or explain Winans' testimony, and secondly that in the form
in which it was put, it proposed to separate the written contract
of compromise from the conversations and negotiations which led to
it, and to introduce the latter without the former, although it
might turn out that the written paper might most materially affect
or control the presumptions deducible from those conversations, and
negotiations. We think that upon the settled principles of law,
parol evidence bearing upon written contracts and papers ought not
to be admitted without the production of such written contracts or
papers so as to enable both the court and the jury to see whether
or not the admission of the parol evidence in any manner will
trench upon the rule that parol evidence is not admissible to vary
or contradict written contracts or papers.
The next exception is to the admission of the evidence of
William A. Stimpson, Richard Caton, and George Neilson, as to
certain declarations and statements and conversations of the
plaintiff as to his invention prior to the date of his original
patent in order to rebut the evidence of the defendants as to the
invention or use by other persons of the same contrivance before
that date. The objection
Page 39 U. S. 462
is that, upon general principles, the declarations and
conversations of a plaintiff are not admissible evidence in favor
of his own rights. As a general rule, this is undoubtedly true. It
is, however, but a general rule, and admits and requires various
exceptions. There are many cases in which a party may show his
declarations conflict with acts in his own favor as a part of the
res gestae. There are other cases, again, in which his
material declarations have been admitted. Thus, for example, in the
case of an action for an assault and battery and wounding, it has
been held that the declarations of the plaintiff as to his internal
pains, aches, injuries, and symptoms to the physician called to
prescribe for him are admissible for the purpose of showing the
nature and extent of the injuries done to him.
See 1
Phillips on Evidence ch. 12, sec. 1, 200-202, eighth ed., 1838. In
many cases of inventions it is hardly possible in any other manner
to ascertain the precise time and exact origin of the particular
invention. The invention itself is an intellectual process or
operation, and, like all other expressions of thought, can in many
cases scarcely be made known except by speech. The invention may be
consummated and perfect, and may be susceptible of complete
description in words a month or even a year before it can be
embodied in any visible form, machine, or composition of matter. It
might take a year to construct a steamboat after the inventor had
completely mastered all the details of his invention and had fully
explained them to all the various artisans whom he might employ to
construct the different parts of the machinery. And yet from those
very details and explanations another ingenious mechanic might be
able to construct the whole apparatus and assume to himself the
priority of the invention. The conversations and declarations of a
patentee merely affirming that at some former period he invented
that particular machine might well be objected to. But his
conversations and declarations stating that he had made an
invention and describing its details and explaining its operations
are properly to be deemed an assertion of his right, at that time,
as an inventor to the extent of the facts and details which he then
makes known, although not of their existence at an antecedent time.
In short, such conversations and declarations, coupled with a
description of the nature and objects of the invention, are to be
deemed a part of the
res gestae, and legitimate evidence
that the invention was then known to and claimed by him, and thus
its origin may be fixed at least as early as that period. This view
of the subject covers all the parts of the testimony of the
witnesses objected to in the circuit court, and we are of opinion
that the court were right in admitting the evidence.
The next and last exception is to the rejection of the evidence
of Dr. Jones, who was offered to prove that there were material
differences between the patent of 1831 and the renewed patent of
1835, and to explain these differences. No doubt can be entertained
that the testimony thus offered was or might be most material
to
Page 39 U. S. 463
the merits of the defense. And the question is not as to the
competency or relevancy of the evidence, but as to the propriety of
its being admitted at the time when it was offered. It appears that
the testimony was not offered by the defendants, or stated by them
as a matter of defense, in the stage of the cause when it is
usually introduced according to the practice of the court. It was
offered after the defendants' counsel had stated in open court that
they had closed their evidence, and after the plaintiff, in
consequence of that declaration, had discharged his own witnesses.
The question, then, is whether it was at that time admissible on
the part of the defendants as a matter of right, or whether its
admission was a matter resting in the sound discretion of the
court. If the latter, then it is manifest that the rejection of it
cannot be assigned as error.
The mode of conducting trials, the order of introducing
evidence, and the times when it is to be introduced are, properly
matters belonging to the practice of the circuit courts, with which
this Court ought not to interfere unless it shall choose to
prescribe some fixed, general rules on the subject, under the
authority of the act of Congress. Probably the practice in no two
states of the Union is exactly the same, and therefore, in each
state, the circuit courts must necessarily be vested with a large
discretion in the regulation of their practice. If every party had
a right to introduce evidence at any time, at his own election,
without reference to the stage of the trial in which it is offered,
it is obvious that the proceedings of the court would often be
greatly embarrassed, the purposes of justice be obstructed, and the
parties themselves be surprised by evidence destructive of their
rights, which they could not have foreseen or in any manner have
guarded against. It seems to us, therefore, that all courts ought
to be, as indeed they generally are, invested with a large
discretion on this subject to prevent the most mischievous
consequences in the administration of justice to suitors, and we
think that the circuit courts possess this discretion in as ample a
manner as other judicial tribunals. We do not feel at liberty,
therefore, to interfere with the exercise of this discretion, and
indeed if we were called upon to say upon the present record
whether this discretion was in fact misapplied or not, we should be
prepared to say that we see no reason to doubt that it was, under
all the circumstances, wisely and properly exercised. It is
sufficient for us, however, that it was a matter of discretion and
practice in respect to which we possess no authority to revise the
decision of the circuit court.
Upon the whole, we are of opinion that the judgment of the
circuit court ought to be
Affirmed with costs.
