:'>(l'}liM.'\ lit III 11 iI4i4ililH)Wliltl<10ti< LNiM Iv^llV OF CALIFORNIA LOS ANGELHS SCHOOL OF UWV UBR-\RY A TRKATIHK Till. LAW roceed to do those acts, which alone, by law, could make his seizure effectual. This Court has already had occasion to consider the clause in question, and, upon mature deliberation, it has held, that the making of a patented machine, to be an offence within the purview of it, must be the making with an intent to use for profit, and not for the mere purpose of philosophical experiment, or to ascertain the verity and exactness of the specification. (Whittemore v. Cutter, 1 Gallis. p. 429.) In other words, that the making INFKIXGEMENT. 315 machine, or by a process which is patented, is not an infringe- ment.i must be -witli an intent to infringe the patent-right, and deprive the owner of the lawful rewards of his discovery. In the present case, we think that the sale of a patented machine, within the prohibitions of the same clause, must be a sale, not of the materials of a machine, either separate or combined, but of a complete machine, with the right, express or implied, of using the same, in the manner secured by the patent. It must be a tortious sale, not for the purpose merely of deprivintr the owner of the materials, but of the use and benefit of his patent. There is no pretence, in the case before us, that the officer had either sold or gua- ranteed a right to use the machine, in the manner pointed out in the patent- right. He sold the materials, as such, to be applied by the purchaser as he should, by law, have a right to apply them. The purchaser must, therefore, act at his own peril, but in no respect can the officer be responsible for his conduct." ^ Boyd V. Brown, 3 McLean's K. 295. " The complainant filed his bill, representing that he is the legal owner of a certain patent-right, within the county of Hamilton, in Ohio, for making bedsteads of a particular construc- tion, which is of great value to him ; that the defendant, professing to have a right, under the same patent, to make and vend bedsteads in Dearborn county, Indiana, which the complainant does not admit, but denies ; that the defendant sends the bedsteads he manufactures to Hamilton county, to sell, in \'iolation of the complainant's patent ; and he prays that the defendant may be enjoined from manufacturing the article, and vending it within Ha- milton county, &c. The defendant sets up, in his answer, a right, duly assigned to him, to make and vend the article in Indiana, and that he is also possessed of an improve- ment on the same ; and he denies that the sales in Hamilton count)-, com- plained of by the complainant, are made at his instance, or for his benefit. A motion is now made for an injunction, before the case is prepared for a final hearing. On the part of the complainant, it is contended that, by his purchase of the right to make and vend the article within Hamilton county, he has an exclusive right to vend, as well as to make, and that his right is infringed by the sales complained of; that his right is notorious, and is not only known to the defendant, but to all those who are engaged in the sales stated. If the defendant, who manufactures the bedsteads in Indiana, be actually engaged in the sale of them in Hamilton county, it might be necessary to inquire whether this is a violation of the complainant's right. But, as this fact is denied in the defendant's answer, for the purposes of this motion, 316 LAW OF PATENTS. § 209. But if the person who sells is connected with the use of the machine, he is responsible as for an infringement; and, if a court of equity have jurisdiction of the person, such a vendor may be enjoined, although the machine may be used beyond the jurisdiction of the Court.^ the answer must be taken as true, and tliat question is not necessarily involved. The point for consideration is, whether the right of the complainant is infringed by a sale of the article, within the limits of the territory claimed by the complainant. It is not difficult to answer this question. We think that the article may be sold at any and every place, by any one who has pur- chased it, for speculation or otherwise. There can be no doubt that the original patentee, in selling rights for counties or states, might, by a special covenant, prohibit the assignee from vending the article beyond the limits of his own exclusive right. But, in such a case, the remedy would be on contract, and not under the Patent Law. For that law protects the thing patented, and not the product. The exclusive right to make and use the instruments, for the construction of this bedstead, in Hamilton county, is what the law secures, under his assignment, to the complainant. Any one violates this right, who either makes, uses, or sells these instruments within the above limits. But the bedstead, which is the product, as soon as it is sold, mingles with the common mass of property, and is only subject to the general laws of property. An individual has a patent-right for constructing and using a certain fiouring-mill. Now, his exclusive right consists in the construction and use of the mill ; the same as the right of the complainant to construct and use the instruments in Hamilton county, by which the bedstead is made. But can the patentee of the mill prohibit others from selling flour in his district ? Certainly he could not. The advantage derived from his right is, or may be, the superior quality of the flour, and the facility with which it is manufac- tured. And this sufiiciently illustrates the principle involved in this motion." See, further, Simpson v. Wilson, 4 Howard, 709. 1 Boyd V. McAlpin, 3 McLean, 427, 429. In this case, the same learned judge said : " It is insisted that the sale of the thing manufactured by the patented machine is a violation of the patent. But this position is wholly unsustainable. The patent gives ' the exclusive right and liberty of making, constructing, using, and vending to others to be used, the said imDrovement.' A sale of the product of the machine is no violation of the exclusive right to use, construct, or sell the machine itself. If, therefore, the defendant has done nothing more than purchase the bedsteads from Brown, who may INFKINGEMENT. 317 § 210. The Supreme Court of the United States have decided that an assignment of an exclusive right to use a manufacture them by an unjustifiable use of the patented machine, still the person -who may make the purchase from him has a right to sell. The pro- duct cannot be reached, except in the hands of one -who is in some manner connected -with the use of the patented machine. There are several patents of mills for the manufacture of flour. Now, to construct a mill patented, or to use one, would be an infringement of the patent. But to sell a barrel of flour manufactured at such mill, by one who had purchased it at the mill, could be no infringement of the patent. And the same may be said of a patented stove, used for baking bread. The pur- chaser of the bread is guilty of no infringement : but the person who con- structed the stove, or who uses it, may be enjoined, and is Hable to damages. These cases show that it is not the product, but the thing patented, which may not be constructed, sold, or used. This doctrine is laid down in Kep- linger v. De Young, 10 Wheat. 3.58. In that case, watch-chains were manu- factured by the use of a patented machine, in violation of the right of the patentee ; the defendant, by contract, purchased all the chains so manufac- tured, and the Court held, that, as the defendant was only the purchaser of the manufactured article, and had no connection in the use of the machine, that he had not infringed the right of the patentee. But in the case under consideration, the bill charges that the defendant, in connection with Brown, constructed the machine patented ; and that they use the same in making the bedsteads which the defendant is now selling in the city of Cincinnati. If this allegation of the bill be true, the defend- ant is so connected with the machine, in its construction and use, as to make him responsible to the plaintiff. The structure-and use of the machine are charged as being done beyond the jurisdiction of the Court ; but, having juris- diction of the person of the defendant, the Court may restrain him from using the machine and selling the product. When the sale of the product is thus connected with the illegal use of the machine patented, the individual is responsible in damages, and the amount of his sales will, in a considerable degree, regulate the extent of his liability. Whether, if the defendant acts as a mere agent of Brown, who constructed the patented machine, and uses it in Indiana, in making bedsteads, he is re- sponsible in damages for an infringement of the patent, and may be enjoined, is a question which need not now be determined. Such a rule would, un- doubtedly, be for the benefit of Brown, who, according to the bill, had openly and continually violated the patent in the construction and use of the machine. There are sti'ong reasons why the interest of the principal should, by an action at law, and also by a bill in chancery, be reached through his agent. Injunction allowed." 318 LAW OF PATENTS. machine, and to vend the same to others for use, within a specified territory, authorizes the assignee to vend elsewhere, out of that territory, articles manufactured by such machine.^ § 211. 2. As to a manufacture or composition of matter. — Assuming that the word is used in our statute to describe the vendible and tangible product of any branch of indus- try ,2 a patent for a " manufacture " will be infringed by the same acts as a patent for a composition of matter, that is, by making, using, or selling the thing itself. § 212. In cases of this kind, however, some difficulty may arise, as to what constitutes a using. When the subject-mat- ter is the thing produced, th? patent will generally also cover the process of making it ; as in the case of a paint, a medi- cine, a stove, or a fabric of cloth. In these cases, a using of the invention would, in one sense, consist in putting it in practice. But the statute vests the exclusive right to use the thing itself in the patentee, because it is the thing produced which is the subject of the patent. Strictly speaking, there- fore, the use of the thing at all, in any form of consumption or application, would be an infringement. But, as the pur- pose of the law is to prevent acts injurious to the patentee, with as little restraint on the public as possible,^ it may be necessary to consider whether the word " using" is employed in a limited or an unlimited sense. § 213. Whether the dictum of Mr. Justice Story that " the using or vending of a patented composition is a violation of the right of the proprietor," ^ can be considered to extend to every form of use, so as to give the proprietor a right to maintain an action, is worthy of consideration. If a patented 1 Simpson v. Wilson, 4 Howard, 709. 2 See Ante, Part 1, ch. 2, § 100. 3 Per Coleridge, J., in Minter v. Williams, Webs. Pat. Cas. 135, 138. ■* Whittemore v. Cutter, cited Ante, § 23, note 1. INFRINGEMENT. 319 medicine is made by one not authorized to make it, and is sold to a person who consumes it, it would be a somewhat inconvenient restraint upon the public to hold, that the latter is to be considered as using the invention in the sense of the statute. He cannot know that the article is not made by the true proprietor ; the probability is that he intends to purchase the genuine composition, and that he is deceived into sup- posing that he does purchase it. Still, in strictness, he may be held liable to an action for using the thing itself by con- suming it. § 214. It would seem, therefore, in regard to all those classes of things which perish in the using, that the use by which they are consumed may be regarded as a violation of the patent-right ; and that the party may be held responsible for using, who sells or gives to others to be consumed, the article that is the subject of the patent; because both make use of the invention to the injury of the patentee. In such cases, it matters not whether the party makes the article himself, in violation of a patented process, or procures it to be made by others.^ § 215. Where the subject of the patent is a machine, the using it is altogether prohibited by the statute, because it in- tends to vest in the patentee the full enjoyment of the fruits of his invention, both in the practice of making the machine. 1 Gibson v. Brand, 4 Man. & Gr. 1 79, 19G. Tindal, C. J. : " The breach alleged in the declaration is, that the defendant had ' directly and indirectly made, used, and put in practice the said invention, and every part thereof, and counterfeited, imitated, and resembled the same.' The proof in support of the breach was, that an order had been given by the defendant, in England, for the making of silk by the same process as the plaintiffs ; which order had been executed in England ; and that is enough to satisfy the allegation in the declaration — that the defendant made, used, and put in practice the plaintiff's invention — though the silk was, in fact, made by the agency of others." For the converse of this case, where the defendant infringes by executing an order for another person, see § 216. 320 LAW OF PATENTS. and of producing the effect or result intended to be produced by it. § 216. Where an order was given to the defendants, by a third person, to manufacture a patented article, on a model furnished by him, and the order was executed, it was held that the defendants were guilty of an infringement, although, when they began to execute the order, they had no knowledge of the plaintiff's patent.^ § 217. 3. An Art. — Where an art is the subject-matter of a patent, the patent will be infringed by exercising or prac- tising the same art, which will constitute a " using " of the invention or discovery. § 218. But the great question that arises when an infringe- ment is charged to have taken place is, whether the two things, one of which is said to be an infringement upon the other, are the same, or different. If they are the same, there is an infringement. If they are different, there is not. But what kind and what degree of resemblance constitute the identity which the Patent Law designates as an infringement, and what kind and what degree of difference will relieve from this charge, are the difficult and metaphysical questions to be determined in each particular case.^ 1 Bryce v. Dorr, 3 McLean, 582. Two of the articles were made after notice of the patent. 2 There is a very great dearth of reported cases, in our own books, giving with any detail the facts brought out at the trial, on which the infringement depended. The reporters of the Circuit Courts of the United States seem to have acted on the idea that there is nothing to be reported in a Patent cause, unless some question of law is raised on motion for a new trial, or for arrest of judgment, &c. ; and then we get the facts, only so far as it is convenient for the Court to state them, in deciding the questions raised. This is a great mistake. A careful summary of the evidence given on every important trial for infringement of a patent, including the professional characters and qualifications of the witnesses, togethei- with an accurate description of the INFRINGEMENT. 321 § 219. Learned judges have often laid it down that, where two things are the same in principle, the one is an infringe- ment upon the other. This mode of stating the general doc- trine on which the fact of infringement depends, is not quite satisfactory, because that which constitutes the principle of an invention is very likely to be regarded differently by dif- ferent minds. Still, there is a sense in which the principle of an invention is undoubtedly to be considered, in deter- mining whether an infringement has taken place ; because we cannot determine whether there is a substantial identity between two things, without first observing the distinguish- ing characteristics of the one which is taken as the subject of comparison. But I propose, without rejecting the light of any of the cases in which this language is employed, to inquire whether the fact of an infringement may not be tried by a test more definite, precise, and practical.^ plaintiff's aad defendant's Inventions, the rulings of the Court in the pro- gress of the trial, and the cliargc to the jury, would be of great value. 1 The meaning to be ascribed to the term principle of an invention or dis- covery, has been thus commented on by different judges. Mr. Justice Wash- ington, in Treadwell v. Bladen, 4 Wash. 706, said, " What constitutes form, and what principle, is often a nice question to decide ; and upon none are the Avitnesses who are examined in patent causes, even those who are skilled in the particular art, more apt to disagree. It seems to me that the safest guide to accuracy in making the distinction is, fii'st to ascertain what is the result to be obtained by the discovery ; and whatever is essential to that object, independent of the mere form and proportions of the thing used for the purpose, may, generally, if not universally, be considered as the princi- ples of the invention." In Whittemore v. Cutter, 1 Gallis. 478, 480, Mr. Justice Story said, " By the principles of a machine, (as these words are used in the statute,) is not meant the original elementary principles of motion, which philosophy and science have discovered, but the modus operandi, the peculiar device or man- ner of producing any given effect. The expansive powers of steam, and the mechanical powers of wheels, have been understood for many ages ; yet a machine may well employ either the one or the other, and yet be so entirely new in its mode of applying these elements, as to entitle the party to a patent for his whole combination. The intrinsic difficulty is, to ascertain, in compli- cated cases hke the present, the exact boundaries between what was known 41 322 LAW OF PATENTS. § 220. An infringement involves substantial identity, whe- ther that identity is described by the terms, " same principle," same modus operandi, or any other. It is a copy of the thing described in the specification of the patentee, either without variation, or with only such variations as are consistent with its being, in substance, the same thing.^ What will amount and used before, and what is new, in tlie mode of operation." In Barrett v. Hall, 1 Mas. 447, 470, the same learned judge said: " As to the opinion of skilful witnesses, whether the principles of two machines are the same, no per- son doubts that it is competent evidence'to be introduced into a patent cause. But care should be taken to distinguish what is meant by a principle. In the minds of some men, a principle means an elementary truth, or power, so that, in the view of such men, all machines, which perform their appro- priate functions by motion, in whatever way produced, are aUke in principle, since motion is the element employed. No one, however, in the least acquainted with law, would for a moment contend, that a principle in this sense is the subject of a patent ; and, if it were otherwise, it would put an end to all patents for all machines, which emjjloyed motion, for this has been known as a principle or elementary power, from the beginning of time. The true legal meaning of the principle of a machine, with reference to the Patent Act, is, the peculiar structure or constituent parts of such machine. And, in this view, the question may be very properly asked, in cases of doubt and complexity, of skilful persons, whether the principles of two machines be the same or different. Now, the principles of two machines may be the same, although the form or proportions may be different. They may substantially employ the same power in the same way, though the external mechanism be apparently different. On the other hand, the princi- ples of two machines may be very different, although their external struc- ture may have great similarity in many respects. It would be exceedingly difficult to contend, that a machine, which raised water by a lever, was the same in principle with a machine which raised it by a screw, a pulley, or a wedge, whatever, in other respects, might be the similarity of the apparatus." See note on the " Principle of an Invention," at the end of this chapter. 1 In Walton v. Potter, Webster's Pat. Cas. 586, Sir N. C. Tindall, C. J. said : "Where a party has obtained a patent for a new invention, or a dis- covery he has made by his own ingenuity, it is not in the power of any other person, simply by varying in form, or in immaterial circumstances, the nature or subject-matter of that discovery, to obtain either a patent for it himself, or to use it without the leave of the patentee, because that would be, in effect and in substance, an invasion of the right ; and, therefore, what you have to look at upon the present occasion, is, not simply whether, in form, or in cir- INFRINGEMENT. 323 to such a substantial identity cannot be stated in general terms ; we can only look to individual cases for illustrations and applications of the general doctrine. § 221. If the invention of the patentee be a machine, it will be infringed by a machine which incorporates in its structure and operation the substance of the invention ; that is, by an arrangement of mechanism, which performs the same service or produces the same effect, in the same way, or substantially in the same way.i cumstances that may be more or less immatei'Ial, that which has been done by the defendants varies from the specification of the plaintiiF's patent, but to see whether, in reality, in substance, and in effect, the defendants have availed themselves of the plaintiff's invention, in order to make that fabric, or to make that article which they have sold in the way of their trade ; whether, in order to make that, they have availed themselves of the inven- tion of the plaintiff." 1 Wyeth V. Stone, 1 Story's R. 273, 280. In this case, Mr. Justice Story said : " The next point is, whether the ice-machine used by tEe defendants is an infringement of the patent, or, in other words, does it incorporate in its structure and operation the substance of Wyeth's invention ? I am of opinion that it does include the substance of Wyeth's invention of the ice- cutter. It is, substantially, in its mode of operation, the same as Wyeth's machine ; and it copies his entire cutter. The only important difference seems to be, that Wyeth's machine has a double series of cutters, on parallel planes ; and the machine of the defendants has a single series of chisels, in one plane. Both machines have a succession of chisels, each of which is progressively below the other, with a proper guide placed at such a distance as the party may choose, to regulate the movement ; and in this succession of chisels, one below the other, on one plate or frame, consists the substance of Wyeth's invention. The guide, in Wyeth's machine, is the dupUcate of his chisel plate or frame ; the guide, in the defendant's machine, is simply a smooth iron, on a level with the cutting single chisel frame or plate. Each performs the same service, substantially, in the same way. In Odiorne v. Winkley, 2 Gallis. 51, 53, the same learned judge said: " The first question for consideration is, whether the machines used by the defendant are substantially, in their principles and mode of operation, like the plaintiff's machines. If so, it was an infringement of the plaintiff's patent to use them, unless some of the other matters offered in the defence are proved. Mere colorable alterations of a machine ai'e not sufiicient to protect the defendant 324 LAW OF PATENTS. § 222. But if the difference between the two machines is not a mere difference of form ; if there is a material altera- Thc original inventor of a macliine is exclusively entitled to a patent for it. If another person invent an improvement on such machine, he can entitle himself to a patent for such improvement only, and does not thereby acquire a right to patent and use the original machine ; and, if he does pro- cure a patent for the whole of such a machine with the improvement, and not for the improvement only, his patent is too broad, and therefore void. It is often a point of intrinsic difficulty to decide, whether one machine operates upon the same principle as another. In the present improved state of mechanics, the same elements of motion and the same powers must be employed in almost all machines. The lever, the wheel, and the screw, are powers well known ; and if no person could be entitled to a patent who used them in his machine, it would be in vain to seek for a patent. The material question, therefore, is, not whether the same elements of motion, or the same component parts are used, but whether the given eiFect is produced, substantially, by the same mode of operation, and the same combination of powers, in both macliines. Mere colorable diiFerences, or slight improve- ments, cannot shake the right of the original inventor. To illustrate these positions : suppose a watch was first invented by a person, so as to mark the hours only, and another person added the work to mark the minutes, and a third the seconds ; each of them using the same combinations and mode of operations, to mark the hours, as the first. In such a case, the inventor of the second hand could not have entitled himself to a patent embracing the inventions of the other parties. Each inventor would undoubtedly be enti- tled to his own invention and no more. In the machines before the pourt, there are three great stages in the operations, each producing a given and distinct effect: — 1. The cutting of the iron for the nail; 2. The griping of the nail ; 3. The heading of the nail. If one person had Invented the cut- ting, a second the griping, and a third the heading, it is clear, that neither could entitle himself to a patent for the whole of a machine which embraced the inventions of the other two, and, by the same mode of operation, pro- duced the same effect ; and, if he did, his patent would be void. Some machines are too simple to be thus separately considered ; others, again, are so complex, as to be Invented by a succession of Improvements, each added to the other. And, on the whole, in the present case, the question for the jury is, whether, taking Reed's machine and Perkins's machine together, and considering them in their various combinations, they are machines con- structed substantially upon the same principles, and upon the same mode of operation." One machine is the same in substance as another, if the principle be the same In effect, though the form of the machine be different. In Bovllle v. INFRINGEMENT. 325 tioii of structure ; if they are substantially different combina- tions of mechanism, to effect the same purpose by means which are really not the same in substance, then the one will not be an infringement of the other.^ Moore, Dav. Pat. C/is. 361, 405, Gibbs, Lord C. J., said : "I remember that was the expedient used by a man in Cornwall, who endeavored to pirate the steam-engine. He produced an engine, which, on the first view of it, had not the least resemblance to Boulton and Watt's ; — where you looked for the head you found the feet, and where you looked for the feet you found the head ; but it turned out that he had taken the principle of Boulton and Watt's — it acted as well one way as the other ; but, if you set it upright, it was exactly Boulton and Watt's engine. So, here, I make the observation, because I observe it is stated that one acts upwards, and the other down- wards ; one commences from the bottom and produces the lace by an upward operation, the other acts from above, and produces it b}- an operation down- wards, but that, if the principle be the same, must be considered as the same in point of invention." ^ Lowell V. Lewis, 1 Mas. 182, 191. Li this case, the same learned judge said : " The manner in which Mr. Perkins's invention is, in his specification, proposed to be used, is in a square pump, with triangular valves, connected in the centre, and resting, without any box, on the sides of the pump, at such an angle as exactly to fit the four sides. The pump of Mr. Baker, on the other hand, is fitted only for a circular tube, with butterfly valves of an oval shape, connected in the centre, and resting, not on the sides of the pump, but on a metal rim, at a given angle, so that the rim may not be exactly in contact with the sides, but the valves may be. If, from the whole evidence, the jury is satisfied that these differences are mere changes of form,' without any material alteration in real structure, then the plaintiff is entitled to recover ; if they are substantially different combinations of mechanical parts to effect the same purposes, then the defendant is entitled to a verdict. This is a question of fact, which I leave entirely to the sound judgment of the juiy-" In Gray v. James, Peters's Cir. C. R. 394, 397, Mr. Justice Washington said : " What constitutes a difierence in principle between two machines, is frequently a question of difficulty, more especially if the difference in form is considerable, and the machinery complicated. But we think it may safely be laid down, as a general rule, that, where the machines are substantially the same, and operate in the same manner, to produce the same result, they must be in principle the same. I say substantially, in order to exclude all formal differences ; and, when I speak of the same result, I must be under- stood as meaning the same kind of result, though it may dijf'er in extent. So 326 LAW OF PATENTS. § 223. But, in cases where the patent is not for a combina- tion, if the principle is applied in the same, way as the pa- tentee has applied it, then the absence of two or three things in the defendant's machine, which are mentioned in the specifi- cation, will not prevent the patentee from recovering for an infringement.! n ig j^ relation to this question of substan- tial identity, that the doctrine of mechanical. equivalents be- comes practically applicable. This doctrine depends upon the truth that the identity of purpose, and not of form or name, is the true criterion in judging of the similarity or dis- similarity of two pieces of mechanism. The question whether one thing is a mechanical equivalent for another, is a question of fact for the jury, on the testimony of experts, or an inspec- tion of the machines ; and it is an inference to be drawn from all the circumstances of the case, by attending to the consideration, whether the contrivance used by the defendant is used for the same purpose, performs the same duties, or is applicable to the same object, as the contrivance used by the patentee.2 Hence, two things may be mechanical equiva- thal the result is the same, according to this definition, whether the one produce more nails, for instance, in a given space of time, than the other, if the operation is to make nails" 1 Jones V. Pearce, Webs. Pat. Cas. 122, 124. And if the imitation be so nearly exact as to satisfy the jury that the imitator attempted to copy the model, and to make some ahnost imperceptible variation, for the purpose of evading the right of the patentee, it may be considered a fraud upon the law, and such slight variation will be disregarded. Davis v. Palmer, 2 Brock. 298, 309. 2 In Morgan v. Seaward, Webs. Pat. Cas. 170, Alderson, B., instructed the jury as follows : " The first defence is, that they did not infringe the patent. That is a question of fact, with regard to which, I do not think it is at all material to recapitulate the evidence, for I understand, from an intima- tion you have thrown out, that you entertain no doubt about it, that is, that the one is an infringement of the other. Upon that subject, the question would be, simply, whether the defendants' machine was only colorably dif- ferent, that is, whether it differed merely in the substitution of what are called mechanical equivalents for the contrivances which are resorted to by the patentee. I think, when you are told what the invention of the plaintiff's INFRINGEMENT. 327 lents for each other under some circumstances, which would not be so under different circumstances. Hence, also, the names, as well as the forms, of things are of comparatively little importance. The question to be determined is, whether, under a variation of form, or by the use of a thing which bears a different name, the defendant accomplishes, in his machine, the same purpose, object, or effect, as that accom- plished by the patentee ; or, whether there is a real change of structure and purpose.^ really is, you will see that those differences which Mr. Donkin and others point out as existing between the one machine and the other, are, in truth, differences which do not affect the principle of the invention. Therefore the two machines are alike in principle ; one man was the first inventor of the principle, and the other has adopted it ; and, though he may have carried it into effect, by substituting one mechanical equivalent for another, still you are to look to the substance, and not to the mere form, and, if it is in sub- stance an infringement, you ought to find that it is so. If, in principle, it is not the same, but really different, then the defendants cannot be said to have infringed the patent. You will, however, when you are considering that subject, remember, that, when the model of Mr. Stevens's paddles was put into the hands of Mr. Donkin, he said, at first sight, that it was exactly like the plaintiffs' ; and so like was it as to induce him to say that it was precisely the same in principle, till I pointed out to him a material difference in it, and then it appeared, that, though there was a similarity of execution, there was a real difference in principle, therefore it was not similar to the plaintiffs' wheel, though at first sight it had the appearance of being similar. So you see you ought to look always to the substance, and not to the form." In "Webster v. Lowther, before Lord Tenterden, the jury,.upon the evidence of sportsmen, that the lock with a sliding bolt was more readily used in the field, particularly in wet weather, than the screw and washer, found that the alteration was a material and useful improvement ; and, upon evidence hy mechanics, that a spring in a bolt was the same thing as a bolt sliding in a groove, they found that the defendant had infringed the patent of the plain- tiff. Godson on Patents, 232, 233. Here an important advantage was gained, but it was gained by the use of a mechanical equivalent, and, conse- quently, the new advantage did not prevent the defendant's lock beino- an infringement on the plaintiffs'. 1 Thus, in the old mode of making chains, the different parts of the chain were held together by one branch of the chain being linked within another, or else the different branches were connected together by holes perforated 328 LAW OF PATENTS. § 224. If the change or addition, introduced by the defend- ant, constitutes an equivalent, in reference to the means used tliroii"-li each, and connected by a pin or screw. Subsequently, a party united these two modes, by inserting one link within the other, and perforat- ino- both by a pin. A second inventor then made a chain which united both these principles of support, but in a different manner, by using a piece of metal called a pin, for a totally different purpose, not performing the same duties, or applicable to the same object ; and it was held that he was well entitled to a patent for his invention. In the matter of Cutler's patent, Caveat at the Great Seal, Webs. Pat. Cas. 418, 430. In Morgan v. Seaward, Webs. Pat. Cas. 167, Sir L. Shackwell, V. C, said, "The question in the case is, simply, whether the eccentric motion is produced by the adoption of the same combination of machinery by the defendants as the plaintiffs are entitled exclusively to use. Upon reading the specification, it appears that a particular combination, insisted on, is described under the item rods, bent rods, disc, and crank. If Mr. Galloway had been asked, at the time he gave this description, whether he meant the disc should revolve on a crank only, or that it should be made to revolve by any other suitable means, his reply might have been general ; but, as he has thought proper to specify a crank, the question to determine is, whether the eccentric axis, with a collar in the defendants' contrivance, is the same as a crank in that of the plaintiffs'. The term crank is a relative term, and might have reference to some par- ticular piece of machinery. The arrangement adopted by the defendants, is a most important variation from the invention, for, instead of weakening the action of the paddle wheel, that is pi-eserved entire, unbi'oken, and unen- cumbered. That perpetual vibration or destroying power, as it might be termed, on the outer part of the frame work that supports the wheel, is en- tirely avoided, and the vibration at the centre of the disc within the wheel is transferred from a part of the machinery, least able to bear it, to the side of the vessel, that is made strong for the j)urpose ; and, although it might be said, the action of the rods on one side of the float boards might distort them a little, that inconvenience might be more than counterbalanced by other advantages. The alteration is, therefore, not merely colorable, but prima facie a decided improvement, by the introduction, into a combination of three things, of that which is not noticed at all in the specification." In Gray v. Osgood, Peters's Circ. C. R. 394, p98, may be found a clear illustration of the doctrine of mechanical equivalents. Washington, J., said : " In the former, [the plaintiff's machine,] we find the two jaws of a vice, the one fixed, and the one movable on a pivot at the top, which connects them together. In each of these jaws is fixed a cutter, the use of which is to cut off from the bar of iron as much as will be necessary to form the nail, which, INFRINGEMENT. 329 by the patentee, and, besides being such an equivalent, it accomplishes some other advantage beyond the effect or pur- being separated, falls by its own gravity into a die, -whicli holds it by a firm gripe until the head is formed, by what is called the set, or heading die. The power which produces this double operation, is a lever of the first order, acting upon a toggle-joint, which compresses the two jaws, and, consequently, the cutters togethei', and also the set in such a manner as to head the nail. But the whole is performed by the same movement of the lever. It is impossible to describe the parts of the defendant's machine, and its operation, without using the same expressions, except that his is inverted, the pivot of the vice being below, and a lever of the second order embracing the jaws with a friction roller, acting on an inclined plane made on the mov- ing jaw of the vice, instead of the lever of the first order, and the toggle- joint. But it is in full proof, that these differences as to the lever and the friction roller, are the necessary consequences of the machine being inverted. After having made this comparison, and ascertained the mode of operation by each machine, connected with the result of each, the jury can find little difliculty in deciding whether they are the same in principle or not. The witnesses have differed in opinion as to the comparative merit of the toggle-joint in Perkins's machine, and the friction roller in Read's. If their operation is precisely the same, the difierence in form does not amount to an invention of any kind. If the friction roller is better than the toggle-joint, which seems to be the opinion of some of the defendant's witnesses, then Read has the merit of having discovered an improvement on Perkins's machine, and no more. If the jury should be of opinion, that the parts of the two machines which I have noticed are the same in principle, and that each will, by the same operation, cut and head nails ; then it will follow, that the forcing slide, the proximity of the cutters and dies to each other, the balance wheel, and some other additional parts in Read's machine, which give it a great and acknow- ledged preference over Perkins's, are merely improvements, but do not change the principle of the machine. If improvements only, what is the legal con- sequence ? Most clearly this, and no more : that Perkins, and those claim- in"- under his patent, have no right to use these improvements without a license from the inventor. But, on the other hand, neither Read nor any other person, can lawfully use the discovery of Perkins of the principal machine, without a license from him. The law, wisely and with justice, dis- criminates between, and rewards the merit of each, by granting an exclusive property to each in his discovery, but prevents either from invading the rights of the other. If, then, the jury should be of opinion, that the two machines are the same in principle, it is no defence for the defendants' for using Perkins's discovery, that they have improved it, no matter to what 42 330 LAW OF PATENTS. pose accomplished by the patentee, it will still be an infringe- ment, as respects what is covered by the patent, although the further advantage may be a patentable subject as an improve- ment upon the former invention.^ § 224 a. Very nice questions may arise respecting the doc- trine of equivalents, with regard to the existing knowledge at the time the patent is issued. Every patent, for example, for a chemical manufacture, embraces the use of the ingre- dients described, and all equivalents, if it is properly drawn. But does it embrace only the known equivalents, or does the discovery, after the patent, of an equivalent not then known, constitute a distinct invention ? And, on the other hand, does the use of the materials which will produce a substance employed in a patented process, constitute the use of an equi- valent, or is it the use of the substance itself ? If it is the use of the substance itself, then it is immaterial whether it was or was not known that the materials employed will produce that substance ; but, if it is the use of an equivalent, the question may become extremely important, whether the thing used was known to be an equivalent at the time of the patent. In a recent English case, the plaintiff had a patent for the employment of carburet of manganese in preparing an improved cast steel, by putting iron and the carburet with carbonaceous matters and iron into a crucible, and fusing them. The defendant put oxide of manganese and carbon- aceous matter with iron into a crucible ; and it appeared that, at a certain temperature, the oxide of manganese and the carbonaceous matter united and formed carbonate of man- ganese, and then, in the same process, but at a higher tem- perature, the carburet acted upon the iron and produced the extent." So, too, it Is wholly immaterial that the defendants' invention is better than that of the plalntiflT, unless there is a substantial diflference in principle. Alden v. Dewy, 1 Story's E. 336, 337. 1 See the case of Electric Telegraph Co. v. Brett, 4 Eng. Law & Eq. Re- ports, 344. INFRINGEMENT. 331 same result as in the plaintiff's process. Before the plaintiff discovered his process, neither the carburet of manganese, nor its component elements, had been used in the manufacture of cast steel ; and, before the defendant discovered the fact, it was not known that oxide of manganese and carbonaceous matter would form carburet of manganese. In error to the Exchequer, a majority of the judges of the Common Pleas held, that the use of the elements of a composite substance is a use of the composite substance itself, and not of an equivalent; but two of the judges held it to be the use of an equivalent, and that, as the defendant had discovered an equivalent not known at the time of the plaintiff's patent, they thought it was not an infringement. Some of the judges, however, who were in the majority, seem to have considered that, if it was an equivalent, the fact that the dis- covery of the equivalent by the defendant — that equivalent being the component elements of the substance embraced in the plaintiff's process — would make no difference, provided they were used for the purpose of being an equivalent to the substance itself.^ § 225. Where the subject-matter of the patent is a manu- facture, the same test of substantial identity is to be applied. In many cases of this land, it will not be by varying in form, or in immaterial circumstances, the nature of the article, or the process by which it is produced, that a party can escape the penalties of infringement. The question will be, whether, in reality and in substance, the defendant has availed himself of the invention of the patentee, in order to make the fabric or article which he has made. If he has taken the same plan, and applied it to the same purpose, notwithstanding he may have varied the process of the application, his manufacture will be substantially identical with that of the patentee.^ 1 Heath v. Unwin, 14 Eng. Law and Eq. Keports, 202. 2 Walton V. Potter, Webs. Pat. Cas. 585, 607. In this case, Erskine, J,, 332 LAW OF PATENTS. § 226. But, in regard to another class of cases, it not unfre- quently happens, that the sole evidence of infringement con- sists in the similarity of the articles, without any direct evi- dence of their having been made by the same process. Simi- larity in appearance and structure will not, of itself, always said : " Then there remains the first plea, by which it is denied that the defendants had infringed the patent of the plaintiff, andthat depends upon ■whether the plan which the defendants have eniploj^ed, is, in substance, the same as the plaintiff 's, and whether all the differences which have been in- troduced by them in the manner of making their cards, are not merely dif- ferences in circumstances not material, and whether it is not, in substance and effect, a mere colorable evasion of the plaintiff's patent. The jury, it appears to me, have come to the right conclusion, that this was, in effect and substance, the same as the plan of the plaintiff. The plaintiff's plan is, the insertion of the teeth through India rubber, giving to the teeth the additional elasticity of the India rubber, beyond what the Avire had of itself The de- fendant's plan is for the same purpose. The only difference is, that the plaintiff, in employing the India rubber, takes a slice either from the original block, as it is imported into this country, or from the Imjiroved block as it is used after it has been compressed, and places it upon a piece of holland, for the purpose of keeping the teeth more firmly in their places, and then after- wards placing it on the engine, by nailing that holland on the engine, or taking away the holland, and cementing the India rubber to the cylinder, giving an elasticity to the teeth of the card by the India rubber, which is next to them. The defendant's plan is, to saturate a piece of cloth with India rubber dissolved, and then to lay upon the surface a further layer of India rubber on both sides, and then to insert the teeth through the substance of the cloth and the India rubber. But what is the principle upon which this becomes useful to the card, and the person who employs those cards in the carding o!" wool ? Why it is, that there is, upon the surface and the sub- stance of the cloth, the elasticity of the India rubber ; that the India rubber is there in its natural state, having been brought back to its natural state by the evaporation of the material in which it had been first dissolved, for the purpose of first laying it on. The only difference, therefore, is in the mode of laying on the India rubber, for the pui-pose of having it pierced by the teeth. That appears to me not to be a difference in principle, or a matter which so varies the plan of the defendants from the plan of the plaintiff, as to entitle them to call it a new invention, or different from the plaintiff's. It seems to me a mere difference in circumstances not material, and, therefore, it is an infringement of the plaintiff 's right, and the verdict of the jury ought to stand." INFRINGEMENT. 333 establish an infringement ; because the patent, though it covers the manufactured article itself, may be for the process of the manufacture. In such cases, the inference that the same process was used, must be drawn from the evidence ; and the rule was laid down by Lord Ellenborough, that the similarity of structure of two things is presumptive evidence of their being made in the same way.i § 227. In such cases, where the object to be accomplished is open to the public, notwithstanding the patent, provided it can be accomplished in several modes, which, as processes, are substantially different, an infringement must be in respect of the process used by the patentee. But, unless it appears that the article itself could be produced by another process, constituting an independent discovery, then an infringement may be proved, by the making of the article. The burden of proof is always on the plaintiff, to show that his process has been infringed ; and, in the absence of direct evidence, the similarity of the effect produced will generally be suffi- cient to establish an infringement, and, if this is aided by evidence of the use of similar apparatus, the presumption of ' Huddart t". Grimsliaw, Webs. Pat. Cas. 85, 91. This is a very instruc- tive case. The plaintiff's patent was for " a new mode of making great cables, and other cordage, so as to attain a greater degree of strength therein, by a more equal distribution of the strain upon the yarns." Pieces of cord- age, made by the defendant, were put into the hands of the plaintiff's wit- nesses, and, from the fact that the same effect was produced in them, and from the similarity of structure, they gave the opinion, that they were made by the same process as the plaintiff's. This was the question at issue, on the point of infringement. The object to be accomplished, the making a stronger rope, was clearly open to the pubhc. Lord Ellenborough said, that it had happened to him, in the same morning, to give, as far as he was concerned, his consent to the granting of three different patents for the same thing ; but the modes of attaining it were all different. But it did not follow that the plaintiff's method of attaining the object was open to the public ; and, there- fore, the question for the jury was, whether the defendant had used the plain- tiff's method, or some other. 334 LAW OF PATENTS. a use of the same process will be still stronger.^ Or, to state this in other words, where the invention, or subject-matter of the patent, is a manufacture, it is immaterial by what pro- cess it is produced ; since the infringement must consist in making the same thing, whether by one process or another. But where the invention or subject-matter is the process of making a particular thing, which may or may not be made by more than one process, the inquiry will be, whether it has been made by the use of the process covered by the patent. In such cases, the identity of the manufactured article is, with all the other circumstances, competent evidence, from which the jury are to infer that it was made by the process of the patentee ; although there may be cases, where, from the nature of the article, this proof would be less strong, according as it appeared to be possible or probable that the article could be made by more than one process. The burden of proof of the infringement is upon the plaintiff throughout ; and, although it does not appear that the article could be made by another process, the jury must still draw the inference, from the identity of the manufacture, if that is all the evidence, or from that and the other evidence, that it was made by the patentee's process. § 228. But a much more difficult class of cases arises under those patents, where the subject-matter is the application of a principle, by means of a process or method, in order to produce a particular effect. We have already had occasion 1 See the preceding note, and the case there cited. See, also, the more recent case of Hall v. Boot, Webs. Pat. Cas. 100, 102. Hall's patent was for a new method of singing off the superfluous fibres upon lace, by means of the flame of gas. The evidence, to show the infringement, consisted of proof that the defendant had secretly prepared a gas apparatus, similar to that used by the plaintiff, and that lace left with the defendant, to he dressed, had been returned in the state to which it loould have been brought by the plaintiff's process, and that a similar lace had been offered for sale by the defendant. The plaintiff had a verdict. INFRINGEMENT. 335 to consider when such an invention or discovery is the proper subject-matter of a patent. We have seen that, under some circumstances, the discovery of a principle may, by applica- tion in the arts, be protected by a patent ; and we have now to consider, how far the proprietor of such a patent may pro- tect himself, against the use of the same principle by others ; or, in other words, what will constitute an infringement of his right. § 229. In this inquiry, the first thing to be attended to is, the subject-matter of the patent. A clear idea is to be formed of the object of the patent ; and, provided the speci- fication properly points out what the claim of the patentee is, it is not material in what form his claim is presented, or whether, in form, the patent purports to be for a process or a manufacture. Wherever the real subject, covered by the patent, is the application of a principle, in arts or manufac- tures, the question, on an infringement, will be as to the sub- stantial identity of the principle, and of the application of the principle ; and, consequently, the means, machinery, forms, or modifications of matter made use of, will be mate- rial, only so far as they affect the identity of the application. § 230. Thus, in Forsyth's patent, the subject-matter was, the use and application of detonating powder, as priming, for the explosion of gunpowder ; and it was held that, what- ever the construction of the lock by which *the powder was to be discharged, the use of detonating mixture, as priming, was an infringement.^ So, too, where the claim of the pa- tentee was for " the application of a self-adjusting leverage to the back and seat of a chair, whereby the weight and the seat act as a counter balance to the pressure against the back of such chair ; " it was held that a chair, made in any way 1 Forsyth's Patent, Webs. Pat. Cas. 95 ; Forsyth v. Eiviere, lb. 97, note. 336 LAW OF PATENTS. upon this principle, was an infringement.^ In like manner, where the principle of the invention was the welding of iron tubes by pressure of the edges of the iron, when heated, with- out the use of a maundril, or other internal support, it was held, that a variation from the plaintiff's mode of applying the pressure, the application of the principle being the same, was still an infringement.^ § 231. Clegg's patent was for the application of a law of natural science, respecting the motion of fluids and solids, and the alternate filling and discharging of a vessel of gas, by means of that application ; the object being to obtain an instrument for measuring the quantity of gas supplied to the consumer. The scientific witnesses said, that the moment a practical scientific man had got that principle, he could multiply, without end, the forms in which it could be made to operate. The instrument used by the defendant, was different, in form and construction, from that used by the patentee ; but the application of the principle, by means of a varied apparatus, was the same in both ; and it was held an infrinsrement.^ 1 Minter v. WeUs, Webs. Pat. Cas. 127, 134. 2 Pvussell V. Cowley, Webs. Pat. Cas. 459, 462. See the extracts in the note, ante, § 79, p. 69. 3 Cited in Jupe t;. Pratt, Webs. Pat. Cas. 146. Alderson, B., said : — " It was for measuring the quantity of gas that was supplied to every individual, in order that they might not take it without being known. There never was a more instructive case than that ; I remember very well the argument put by the Lord Chief Baron, who led that case for the plaintiff, and suc- ceeded. There never were two things to the eye more different than the plaintiff's invention, and what the defendant had done in contravention of his patent-right. The plaintiff's invention was difierent in form — different in construction ; it agreed with it only in one thing, and that was, by mov- ing in the water a certain point was made to open, either before or after, so as to shut up another, and the gas was made to pass through this opening ; passing through it, it was made to revolve it ; the scientific men, aU of them, said, the moment a practical scientific man has got that principle in his head, INFRINGEMENT. 337 § 232. Ill Neilson's patent, the invention consisted in the application of hot air to the blowing of furnaces, by heating the air between its leaving the blowing apparatus and its in- troduction into the furnace, in any way, in a close vessel, exposed to the action of heat. The defendant's apparatus for this purpose was confessedly superior to what would be constructed according to the directions in the plaintiff's spe- cification ; but it was held to be an infringement.^ § 233. These cases show that, when a party has invented some mode of carrying into effect a law of natural science, or a rule of practice, it is the application of that law or rule he can multiply, without end, the forms in which that principle can be made to operate. The difficulty which will press on you, and to which your atten- tion will be called in the present case, is this, you cannot take out a patent for a principle ; you may take out a patent for a principle, coupled with the mode of carrying the principle into eifect, provided you have not only disco- vered the principle, but invented some mode of carrying it into eifect. But then you must start with having invented some mode of carrying the prin- ciple into effect ; if you have done that, then you ai'C entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as piracy of your original invention. But then the difficulty that will press on you here is, that, on the evidence, there does not appear to have been any mode of carrying the principle into effect at all invented by you." 1 Neilson v. Harford, Webs. Pat. Cas. 310. Parke, B., said to the jury, " If the specification is to be understood in the sense claimed by the plain- tiffs, the invention of heating the air between its leaving the blowing appa- ratus and its introduction into the furnace, in any way, in any close vessel, which is exposed to the action of heat, there is no doubt that the defendant's machinery is an infringement of that patent, because it is the use of air which is heated much more beneficially, and a great improvement upon what would probably be the machine constructed by looking at the specification alone ; but still it is the application of heated air, heated in one or more ves- sels between the blowing apparatus and the furnace, and, therefore, if it should turn out that the patent is good, and the specification is good, though unquestionably what the defendants have done is a great improvement upon what would be the machinery or apparatus constructed under this patent, it appears to me that it would be an infringement of it." See, also, the ob- servations of the Lord Justice Clerk Hope, cited ante. 43 338 I-AW OF PATENTS. which constitutes the peculiar feature of his invention ; that he is entitled to protect himself from all other modes of making the same application ; and, consequently, that every question of infringement will present the question, whether the different mode, be it better or worse, is, in substance, an application of the same principle. The substantial identity, therefore, that is to be looked to, in cases of this kind, re- spects that which constitutes the essence of the invention, namely, the application of the principle. If the mode of carrying the same principle into effect, adopted by the defend- ant, still shows only that the principle admits of the same application in a variety of forms, or by a variety of apparatus, the jury will be authorized to treat such mode as a piracy of the original invention. But, of course, where the variations adopted by the defendant show that the application of the principle is varied, that some other law or rule of science, or of practice, is made to take the place of that which the patentee claims as the essence of his invention, then there will be no infringement, but a substantial invention.^ § 234. And this brings us to the consideration of another test of the fact of infringement, namely, that which shows, on the part of the defendant, a substantive invention sufficient to support a patent, as for a new thing. § 235. There may be many different modes of obtaining the same object, and, consequently, if, after a patent has been obtained for a particular thing, another party, without bor- rowing from that patent, has invented a new mode of accom- plishing the same object, he will be entitled to a patent for his discovery .2 The fact that a party is entitled to a patent 1 See the cases cited Ante, Part I., Ch. II. 2 Sir N. C. Tlndall, C. J., in Walton i'. Potter, Webs. Pat. Cas. 590, thus states the general principle, " Now there can be no doubt ■whatever that, although one man has obtained a patent for a given object, there are many modes still open for other men of ingenuity to obtain a patent for the INFRINGEMENT. oo\) for a substantive invention, becomes a test of his infringe- ment of a prior patent, in this way. He cannot have become entitled to a patent without the invention of something ma- terial and new, that goes to the essence and substance of the subject-matter. If what he has done is only to make a variation in certain particulars, which do not affect the prin- ciple of the invention, the subject-matter remains the same, notwithstanding such variation. But, if he has produced a new subject-matter, whether it be in the mode of accomplish- ing a common object, or in the object itself, he has not in- fringed upon the subject-matter of another which was ma- terially and essentially different. § 236. The application of this test is seen in a striking manner, in the facts of a recent English case. The plaintiff had obtained a patent for " an invention of improvements in cards, for carding wool, cotton, silk, and other fibrous sub- stances, and for raising the pile of woollen cloths." In his specification, he stated his invention to consist in " the appli- cation and adaptation of caoutchouc or India rubber, as a sub- stitute for the fillets or sheets of leather that were commonly used in the construction of ordinary cards, and thus giving a superior elasticity and durability to cards ; " and, in describing same object ; there may be many roads leading to one place, and, if a man has, by dint of his own genius and discovery, after a patent has been ob- tained, been able to give the public, without reference to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose. But he has no right, whatever, to take, if I may so say, a leaf out of his neighbor's book, for he must be contented to rest upon his own skill and labor for the discovery, and he must not avail himself of that which had before been granted exclusively to another ; and, therefore, the question again comes round to this — whether you are of opinion that the subject- matter of this second patent is perfectly distinct from the former, or whether it is virtually bottomed upon the former, varying only in certain circum- stances, which are not matei'ial to the principle and substance of the inven- tion."' 340 LAW OF PATENTS. the mode of preparing the article, stated, that " the regularity of distance and the uniformity of the dents or teeth of the cards were found to be better preserved by a piece of linen commonly called brown holland, or other like cloth, well elazed and cemented on to the back of the caoutchouc or India rubber ; " that the cloth so placed rendered the action of the dents or teeth less uncertain in their elastic move- ments ; that the cloth, so cemented to the India rubber or caoutchouc, was to be affixed to the cylinder or board of the ordinary carding engine by nails, but, if it was to be affixed by cementing,' (which he recommended as the best mode of applying the cards,) then it was desirable to remove the cloth ; " and he then proceeded to show the ordinary mode of pricking or piercing holes for the reception of the dents or teeth, the mode of cutting the India rubber, &c. The de- fendants subsequently obtained a patent, also, for " an im- provement or improvements in cards for carding various fibrous substances, part of which improvements may be used as a substitute for leather ; " and, in their specification, they stated their invention to consist in the manufacture of a new material or substance for receiving the wire teeth, which they described to be a woven fabric of a peculiar construction, soft and porous, saturated with a solution of India rubber by being repeatedly passed through it, and then dried and sub- mitted to pressure ; the object being to render the fabric so dealt with " extremely elastic in the direction of the thickness of the fabric, so as to impart, as it were, elasticity to the wire teeth when set." § 237. The question as to the infringement was, whether the defendants had added any thing material, not covered by the plaintiff's patent, which could be considered as consti- tuting a subject-matter distinct from that of the plaintiff's. It appeared that the difference between the article manufactured under the plaintiff's patent, and that under the defendants' patent, which was complained of as an infringement, was, that, in the former, the caoutchouc or India rubber was INFRINGEMENT. 341 cemented in slices cut from the solid block, to linen cloth, or cloth made of linen and cotton, in the manner described in the plaintiff's specification, and that the latter consisted of cloth of a peculiar fabric, saturated or impregnated by passing it through a liquid composed of caoutchouc or India rubber dissolved in naptha or oil of turpentine and highly rectified coal tar oil, and afterwards drying and submitting it to pres- sure. The plaintiff's evidence tended to show, that the article made by the defendants was a colorable imitation of that made under the plaintiff's patent ; the cloth being merely placed in the centre, between two strata of India rubber or caoutchouc, instead of at the back, and the India rubber, though applied in solution or in the form of a cement, being capable of being reproduced by evaporation of the solvent, and the principle and the result of both methods being the same, namely, the acquisition of an increased elasticity, though the modes of attaining that result were somewhat different. It was also sworn, that, for the purpose of the plaintiff's patent, caoutchouc or India rubber might be used either in the state in which it is imported, or in a manufac- tured state, that is, dissolved by certain known solvents, and, afterwards, by evaporation of the solvents, restored to solid blocks ; but that, if free from air-holes, (in which state it was possible to obtain it,) it was more desirable to have it in its natural state, its elasticity being somewhat diminished by the artificial process. § 238. On the part of the defendants, several witnesses, as well practical as scientific, were called, who stated that, the principle of the manufactures, respectively described in the specifications of the plaintiff and defendants, was essentially different, as well in the materials used, and the mode in which they were put together, as in the operation or result of their combination ; the one process being wholly mechanical, the other strictly chemical, and the effect of the former being, to give elasticity/, and of the latter, to give strength and flexibi- lity, or pliancy, but imparting only a very slight additional 342 LAW OF PATENTS. elasticity to the card ; that the proportion which the India rubber bore to the cloth, as used by the plaintiff, was gene- rally about three to one, whereas the proportion of India rubber solution, used by the defendants, was from twenty to forty per cent, only; and that India rubber, as imported, was Avholly unfit for the purpose described in the plaintijff's spe- cification, never being sufficiently free from imperfection. § 239. Upon the issue of not guilty, the jury found a ver- dict for the plaintiff, thereby establishing, that the defendant's card was an infringement of the plaintifi"'s, both employing the elasticity of caoutchouc next to the teeth, and the de- fendant's practising, by a circuitous mode, that which falls within the claim of the plaintiff's patent.^ 1 Walton V. Potter, Webs. Pat. Cas. 585, 597^ 4 Scott's N. K. 91. On tte application for a new trial, Maule, J., said : — " With respect to the issue of not guilty, in order to determine whether or not the verdict has been correctly found for the plaintiff, on that issue, it is necessary to consider what is the subject of the defendant's patent ; for it is quite clear, that what the defendants have done they claim to do under their patent. By their speci- fication, the defendants claim to be the inventors of a new material for forming the backs of cards ; and they describe the mode of preparing It, thus, namely, ' by repeatedly passing a woven fabric, of a pecuhar consti'uc- tion, through, and saturating it with a solution of caoutchouc, or India rub- ber, and then drying it, in order to evaporate the solvents, and leave the fabric impregnated and coated with caoutchouc, or India rubber, and after- wards submitting it to pressure ; ' and the object they describe, as being to render the fabric so dealt with ' extremely elastic, in the direction of the thickness of the fabric, so as to impart, as it were, elasticity to the wire teeth, when set.' That Is, in efiiect, producing, by a circuitous process, a cloth with a layer of caoutchouc, or India rubber, on each 'side of it, so as to give a great degree of elasticity to the basis of the dents or teeth of the card. The plaintiff, by his sjjecification, claims the exclusive right of making cards with caoutchouc, or India rubber, as the fillet, or sheet, or medium, in which the dents, or teeth, are to be set ; the object being, like that of the defend- ants, the attainment of a superior degree of elasticity and durability ; and, in describing his mode of attaining that object, he states that he inserts the wire dents or teeth in a foundation or fillet of caoutchouc, or India rubber, — a slice of India rubber in its natural state — and that, with a view to pre- INFRINGEMENT. 343 § 240. But if the defendants, in this case, could have suc- ceeded in showing that the materials, of which they made their cards, and the mode in which they were put together, were different from the materials and method of construction used by the plaintiff; if they could have satisfied the jury that the difference, expressed by saying that the one process was mechanical and the other chemical, was a real and sub- stantial, and not a colorable difference ; then they would, notwithstanding the former patent of the plaintiff, and not- withstanding that the objects of both were the same, have appeared to be the authors of a substantive invention, because they would have produced a distinct subject-matter, new in all material respects, of a useful character, and, there- fore, capable of supporting an independent patent. But it appeared that the plaintiff's patent covered the use of India rubber, combined with cloth, as a fillet or sheet for the backs of cards, in which to insert the teeth, in order to accomplish certain purposes ; and, that the mode in which the defend- ants brought these same materials into combination, for the same purposes, was only a circuitous mode of doing what the plaintiff had done, and, therefore, that they had produced nothing new, material to the principle and substance of the invention. serve the regularity of distance, and uniformity of the dents or teeth, and to render their action less uncertain, he cements to the back of the caoutchouc, or India rubber, a piece of brown hoUand, or other like cloth. The plain- tiff does not confine his claim to using India rubber, by means of slicin"' it ; he claims the exclusive right of making cards, by fixing the dents or teeth in India rubber, using, for that purpose, cloth, some texture of linen or cot- ton. In some instances, he says, the cloth may be removed. That does not, in point of fact, make it less a part of the process, by which he applies cloth, for the putting the dents into the layer of India rubber. If that be so, I think it is evident the defendants claim to do a thing falling within the generaUty of the plaintiff's claim. Taking that to be so, the evidence is abundant to justify the jury in finding ; and it seems to me to recjuire them to find for the plaintiff." See, also, the observations of Erskine, J., cited ante. 344 LAW OF PATENTS. § 241. On the other hand, where the plaintiff had a patent for producing an effect in the manufacture of iron, said to be altogether new, by a mode or process, or series of processes, unknown before, it being for a combination of processes altogether new, leading to one end ; and the defendants had used the same ingredients, but in different proportions, which constituted a mode of working essentially different from that pointed out in the specification, it was held that there was no infringement. The plaintiff's invention, in this case, con- sisted in rendering available the slags or cinders produced in the manufacture of iron ; and, also, in the use and application of lime, subsequent to the blast-furnace, in order to prevent the quality called " cold short ; " and his specification pointed out the proportion of slags, mine rubbish, coke, and lime- stone, to be used for the production of the effect. To prove the infringement, a witness in the employ of the defendants was called, who stated that he had seen the plaintiff's speci- fication ; that, since the date of the patent, the defendants preserved cinders, which they had not done before, and pro- duced pig-iron, by mixing them with mine rubbish, and that, in the subsequent processes, they applied quick lime, to pre- vent the iron from being " cold short." But he stated that the defendants did not work by the plaintiff's specification, but used very different proportions, namely, lime, in the refin- ery-furnace, in about the proportion of one hundred and twen- tieth part to the whole charge of pig-iron, and that they used none in the puddling-furnace, and that the defendants had used slags in the puddling-furnace, for years before the date of the patent. He also proved, that the proportions of mine rubbish, as laid down in the specification, were not essential to the success of the process ; that the defendants had been in the habit of varying those proportions ; and that they once entirely omitted mine rubbish, when the result was most suc- cessful.i 1 HiU V. Thompson, Webs. Pat. Cas. 225, 232, 233. INFRINGEMENT. 345 § 242. Now, this patent was one of that class, in which proportions or degrees, when specified, as the mode in which a particular effect is to be produced, make a part of the essence of the invention. A discovery may consist in the effect produced by the union of certain ingredients or agents; but, if a particular proportion is supposed to be necessary to the effect, and is claimed, as entering into the production of that effect, the subject-matter of the patent will be, the use of the particular ingredients in that particular proportion ; and, if the same ingredients, in different proportions, or a part of the same ingredients, in other proportions, are used by another person, to produce a similar beneficial effect, more or less advantageous, that person will have discovered a new subject-matter, and, consequently, will not have infringed the right of a patentee, whose invention depends on the pro- portions which he has specified. Accordingly, it was held, in this case, that, the defendant's mode of working being essentially different from the specification of the plaintiff, they had not infringed his patent ; and, if we apply to the reasoning of the Court, the test of a sufficiency of invention, on the part of the defendants, to support a patent, as for a new discovery, it will be seen that the same facts will lead to that result, which show that the plaintiff's patent had not been infringed.^ 1 Dallas, J. , delivering the judgment of the Court, said: — "To prove the infringement, one witness only was called ; and this part of the case depends, therefore, entirely upon his testimony. And, before adverting to the evidence in question, it will be necessary to look to the patent, as far as it relates to this part of the subject. It has not been contended, that it is a patent introducing into use any one of the articles mentioned, singly and separately taken ; nor could it be so contended, for the patent itself shows the controversy ; and, if it had been a patent of such a description, it would have been impossible to support it ; for slags had undoubtedly been made use of previously to the patent, so had mine rubbish, and so had lime. But, it is said, it is a patent for combinations and proportions, producing an effect altogether new, by a mode and process, or series of processes, unknown before ; or, to adopt the language made use of at the bar, it is a patent for 44 346 LAW OF PATENTS. § 243. The superior utility of one thing over another, will sometimes furnish an important test upon this question of a combination of processes altogether new, leading to one end ; and, this being the nature of the alleged discovery, any use made of any of the ingredients singly, or any use made of such ingredients in partial combination, some ofthem being omitted, or any use of all or some of such ingredients, in pro- portions essentially different from those specified, and yet producing a result equally beneficial, (if not more so,) with the result obtained by the proportions specified, will not constitute an infringement of the patent. " It is scarcely necessary here to observe, that a slight departure from the specification, for the purpose of evasion only, would, of course, be a fraud upon the patent, and, therefore, the question will be, whether the mode of working by the defendant has, or has not, been essentially or substantially different. For this, we must look to the evidence of E. Forman ; and, he being the single witness to the point, by his testimony this part of the case must stand or fall. It may be difficult entirely to reconcile different parts of his evidence with each other, if his answers to the several questions be taken separately and detached ; but, looking to the result, it seems to be clear. On the part of the plaintiff, he proves that, before the patent was taken out, the defendants were not in the habit of making use of slags, and, that, his attention being called to the subject by the patentee, in the first instance, and then by the patent itself, he has made use of them uniformly since ; he has since, also, at times, uSed mine rubbish, and also lime, which last, he also admits, was used to prevent the ' cold short,' which defect, he alloi^s, was and is thereby prevented. So far, therefore, he proves separate use and occasional combination. He is next asked, as to the proportions mentioned in the patent, ' Did you apply the lime in these proportions ? ' — his answer is — 'I say no, to that.' ' Have j-ou worked by the specification ? ' ' No, we did not.' He then explains in what respects they departed from the specification. This is his evidence on the examina- nation-in-chief. On the cross-examination, he says, that the proportions used were very materially different, and that the proportions in the patent are not essential ; that it would make no difference to him, if he were to be restrained from using these proportions, and that the result would be better obtained by materially departing from them ; indeed, by almost losing sight of them altogether. With respect to slags, on reconsideration, he states, that the defendant had used slags, previously to the patent, in the puddling- furnace, for months together. As to mine rubbish, he says, we varied the proportions, and we found, in experience, that the use of it was best without reference to the preparations and restrictions pointed out in the specifica- tion, and, when omitted, the result was best of all. It is true, he afterwards INFRINGEMENT. 347 identity. It is not always true that one machine, for instance, is not an infringement upon another, because it is better than the other ; for it may contain the whole substance of that other machine, and something in addition which makes it better ; or, the patent may have been taken for an entire ma- chine, substantially new in its structure, and the machine complained of may contain some substantial operating part of the machine patented, and so infringe. But where the states, that this omission took place when he was absent from home, and that, on his return, he ordered the mine rubbish to be restored ; and, in this respect, and going to this single point, there appears to be an inconsistency But still, as the case stands on his single evidence, if, in substance and result, it proves a mode of working essentially different from the specification, the foundation of the plaintiff's case is altogether gone, And the rule is, in this respect, strict, as stated by Mr. Justice Buller, in the case of Turner v. Winter, (Webs. Pat. Cas. 77.) In that case, the learned judge expressed himself in these words : — ' Whenever the patentee brings an action on his patent, if the novelty or effect of the invention be disputed, he must show in what his invention consists, and that he procured the effect proposed, in the manner specified,' (Webs. Pat. Cas. 81) ; and, in another part of the same case, he adds : — ' Slight defects in the specification will be sulEcient to vacate the patent,' (Webs. Pat. Cas. 82) ; and, speaking of degree and proportion, he says : — ' The specification should have shown by what degree of heat the effect was to be produced.' In that case, as ip a great variety of others, instances may be found to show the strictness of the law, as bear- ing upon this point, either in regard of omission, or of superfluous addition, or of uncertainty or insufficiency in quantities proposed. But, further, the evidence, so applied, does not confine itself to this point only ; for it dis- proves, also, utility, as far as it depends on combination and proportion, lead- ing and conducing to a specific result. 'Neither can it be justly said, that the use of the separate ingredients, or some of them, partially combined, is a use made of the invention in part, so as to support the counts adapted to suoh partial use ; because, as It has been already observed, and will more particularly be adverted to hereafter, each of the ingredients had before been separately used, and had been used, more or less, in partial combi- nation. " On the whole, our opinion is, as to this part of the case, that, consider- ing the evidence of Forman, in its substance and result, and with reference to the peculiar nature of the patent, an infringement of the patent is not thereby proved." Hill v. Thompson, Webs. Pat. Cas. 244, 245, 246. 348 LAW OF PATENTS. patent is for some one operating part of a machine, designed to effect a particular end, and the machine complained of effects that end materially better, by the use of means which are in point of fact different, then the two modes of opera- tion are not the same under the Patent Law. In other words, when the means employed are, in point of fact, not the same, or a known mechanical equivalent, and the question to be determined is, whether they are, under the Patent Law-, the same in substance, or, as it is usually called, the same in prin- ciple, superior utility settles that question. Two things are not the same under the Patent Law, when one is, practically, substantially better than the other, and this improvement is not gained by the use of known mechanical equivalents. § 244. This view of the Patent Law relieves it in a great degree from the uncertainties which have arisen, from the loose -and indeterminate sense in which the word " principle " has been employed ; and, at the same time, it is in exact ac- cordance with the great purposes, as well as with the partic- ular provisions of that system of law. Its leading purpose was to encourage useful inventions. Practical utility was its object ; and it would be strange, if, with such object in view, it should consider two things as substantially the same, which, practically and in reference to their respective utility, are substantially different. And, although this test has not seldom been lost sight of, in the trial of patent causes, yet there is nowhere any authority opposed to it, and there is certainly much in its favor.^ 1 Thus, in Davis v. Palmer, 2 Brock. 310; Mr. Chief Justice Marshall states the principle clearly. He was commenting on the clause in the old Patent Law, that " simply changing the form or the proportion of any ma- chine, shall not be deemed a discovery ; " and he says, in construing this provision, the word ' simply ' has, we think, great influence ; it is not every change of form and proportion, Avhich is declared to be no discovery, but that which is simply a change of form and proportion, and nothing more. If, by changing the form and proportion, a new effect is produced, there is not simply a change of form and proportion, but a change of principle also." To the same effect are the following cases : Earle v. Sawyer, 4 Mas. 1, where INFRINGEMENT. 349 § 245. Every patent stands upon its subject matter, and, accordingly, the question of infringement depends upon tiie use of that which is covered by the patent. A patent may be for a new combination, whether the particular parts or things constituting that combination be new or old. But where the patent is for a combination, and not for several and distinct improvements, it is no infringement to use any of the parts or things which go to make up the combination, if the combination itself be not used.^ But, in order to determine whether the combination is used, or whether there is an infringement, it may be necessary to inquire whether the defendant has employed a mechanical equivalent as a substi- tute for some material element of the plaintiff's combination. the substitution of a circular saw, in place of a reciprocating saw, in a shin- gle machine, was held to be a patentable improvement. — Davol v. Brown, 1 Woodb. & M. 53, where the arrangement of bowed flyers, in a Hy-frame, in two rows, was held to be patentable, although open-bottomed ilj-ers had previously been arranged in two rows, and geered in the same way, and bowed-flyers had been arranged in the one row with like geering. — Eussell V. Cowley, Webs. Pat. Cas. 4G4, where it was held, that tubes having been welded by grooved rollers on a mandrill, it was a patentable improvement to weld them by grooved rollers without a mandrill ; and Lord Lyndhurst puts the case of welding them by fixed dies instead of rellers. See also Kneass v. Schuylkill Bank, 4 Wash. 9 ; Crane v. Price, Webs. Pat. Cas. 409 ; Webster on the Subject-matter, &c. 26, n. t. 30 ; 1 Webs. Pat. Cas. 95. In these cases, the principle is necessarily involved, and in some of them distinctly announced, that any change in the instruments employed, by which a new result is produced, or an old result produced in a more economical and beneficial manner, is the subject of a patent. It is an invention of a new thing, under the Patent Law. The same test is proposed by Mr. Webster, in his very able dissertation on the Subject-matter of Patents, page 27. He says, in substance, that the question is, whether the change be colorable and formal, or substantial and essential ; that is, whether it be such as would of itself supi)ort a patent. The jury must find whether what is new is essential, or useless, and a colorable evasion ; whether, by reason of the change, the thing has acquired a new and distinct character. 1 Barrett r. Hall, 1 Mas. 447. See the observations of Mr. Justice Story, cited from this case, ante^ p. 82 ; Evans v. Eaton, 1 Peters, C. C. R. 343. 350 LAW OF PATENTS. If SO, it will be an infringement. " In the specification of a patent for ' improvements in looms for weaving,' the plaintiff declared that his improvements applied to that class of ma- chinery called power looms, and consisted 'in a novel arrange- ment of mechanism, designed for the purpose of instantly- stopping the whole of the working parts of the loom when- ever the shuttle stops in the shed.' After describing the man- ner in which that was done in ordinary looms, the specifica- tion proceeded thus: ' The principal defect in this arrange- ment, and which my improvement is intended to obviate, is the frequent breakage of the different parts of the loom, occa- sioned by the shock of the lathe or sley striking against the "frog," (which is fixed to the framing.) In my improved arrangement, the loom is stopped in the following manner : I make use of the " swell " and the » stop-rod finger," as usual, the construction of the latter, however, is somewhat modified, being of one piece with the small lever which bears against the " swell," but, instead of its striking a stop or " frog," fixed to the framing of the loom, it strikes against a stop or notch upon the upper end of a vertical lever, vibrat- ing upon a pin or stud. The lever is furnished with a small roller, or bowl, which acts against a projection on a horizon- tal lever, causing it to vibrate upon its centre, and throw a clutch box (which connects the main driving pulley to the driving shaft,) out of gear, and allows the main driving pulley to revolve loosely upon the driving shaft, at the same time that a projection on the lever strikes against the " spring handle " and shifts the strap ; simultaneously with these two movements, the lower end of the vertical beam causes a break to be brought in contact with the fly-wheel of the loom, thus instantaneously stopping every motion of the loom without the shghtest shock.' After the date of the plaintiff's patent, the defendant obtained a patent for ' improvements in and appli- cable to looms for weaving, and amongst them he claimed a novel arrangement of apparatus for throwing the loom out of gear when the shuttle failed to complete its course. In the defendant's apparatus, the ' clutch-box ' was not used, INFRINGEMENT. 351 but, instead of it, the ' stop-rod finger ' acted on a loose piece or sliding frog ; but, instead of a rigid vertical lever, as in the plaintiff's machine, the defendant used an elastic, horizontal lever, and, by reason of the pin travelling on an inclined plane, the break was applied to the wheel gradually, and not simultaneously. The jury found that the plaintiff's arrange- ment of machinery for stopping looms, by means of the action of the ' clutch box ' in combination with the action of the break, was new and useful ; also, that the plaintiff's arrange- ment of machinery, for bringing the break into connection with the fly-wheel, was new and useful; and that the defend- ant's arrangement of machinery for the latter purpose, was substantially the same as the plaintiff's : — Held, upon these findings, first, that the specification was good ; secondly, that the defendant had infringed the patent." ^ 1 Sellers v. Dickinson, 6 Eng. Law & Eq. K. 544 ; 20 Law J. Rep. (N. S.) Exch. 417. PoUock, C. B. : "I am of opinion that the rule ought to be discharged. There are two points : first, whether there is any objection to the specifica- tion ; next, whether there has been any Infringement. These questions must be decided with reference to the findings of the jury, that the plaintiff's arrangement of machinery for stopping looms by means of the clutch box, in combination with the break, is both new and useful, and also that so much of the plaintiff's arrangement of machinery as the defendant has used, namely, that for bringing a break into connection with the fly-wheel, is of itself new and useful; and that what the defendant has used is substantially the same as the plaintiff's. Upon the facts so found, (for the question Is not whether the evidence supported the findings,) I think the specification is good. The first finding is, that the arrangement of machinery for stopping looms, by means of the combined action of the clutch box and break, is new and useful. And I think that Is sufficiently specified. The invention of the plaintiff Is, In one point of view, simple. He calls it ' my invention of cer- tain Improvements in looms for weaving,' but he says, ' the improvements apply to that class of machinery known as power-looms, and consist In a novel arrangement of mechanism, designed for the purpose of Instantly stop- ping the whole of the working parts of the loom whenever the shuttle stops in the shed.' He then describes the way in which he does it. He says, the common mode Is performed in a certain manner ; and he then goes on to describe his mode of separating the machine from the moving power, by 352 LAW or PATENTS. § 245 a. Mr. Justice Curtis has held, that the doctrine of mechanical equivalents, in connection with such a use of a means of a clutch box ; and lie associates with that a break, the effect of which he thus expresses : ' Simultaneously with these two movements, the lower end of the vertical lever causes a break to be brought In contact with the fiy-Avheel of the loom, thus instantaneously stopping every motion of the loom without the slightest shock, at whatever speed the loom may be work- ing.' Then comes his claim ; and, I must say, that though, at first, I doubted whether the claim consisted of two parts, or of one only, yet, on reading the specification with that candor and indulgence with which a specification should be read, it appears to me to consist of one only. He says : ' I claim as my invention the above described novel arrangement of mechanism,' and we must understand the expression ' novel arrangement ' to mean the same thing in the latter part of the specification as in the former ; and it is clear that, in the former, it means one thing only. He says, ' my invention consists in a novel arrangement of mechanism for instantly stopping the loom.' Then he mentions the occasion when that would be required, viz., ' whenever the shuttle does not complete its course from one shuttle-box to the other,' by disconnecting the main driving pulley from the driving shaft ; ' and also, (which ought to be read ' and by ') the method of bringing a break Into con- nection with the fly-wheel, for the purpose of preventing the lathe or sley from beating up any farther and Injuring the cloth by the shuttle stopping In the shed, or between the warp threads.' That being the case, the specifica- tion is free from objection. The second question is, whether the patent has been infringed. It was argued that there can be no infringement of a patent for a combination, unless the defendant has used the whole combination. But that Is not so, for there may be an infringement by using so much of a combination as is material, and it would be a question for the jury, whether that used was not substantially the same thing. I recollect a patent for an invention, a part of which, at first supposed to be useful, turned out to be prejudicial, and was afterwards left out, but the patent was, nevertheless, sustained. If that had been a combination of matter, each of them old, but entirely new as a combination, and the jury had found that the substantial parts of the combination were used, that, I think, would have been an In- fringement of the patent. Looking at this patent fairly, what Is It for ? It Is for a mode to separate the machine from the source of power, and, at the same time, to stop the momentum which has already accumulated, and to do this by one and the same operation ; In fact, to make the machine Itself do it. Whenever the shuttle remains among the sheds, and does not arrive at the shuttle-box, the machine Is so constructed, that, by one operation It Is thrown out of gear, and, at the same time, a break is applied to the fly-wheel INFRINGEMENT. 353 material part of a combination, is not confined by the Patent Law to those elements which are strictly known as such in so as to stop the momentum. The defendant has substituted for the clutch box the old plan of the ' frog,' and, instead of separating the power and the machine by a clutch box, and so throwing the machine out of gear, he has used the old method of throwing off the strap, but he has adopted the break, which the jury have found is, in itself, an arrangement of machinery new and useful. "We are not now to decide what would have been the plaintiff's rights if the clutch box had been entirely new, and the plaintiff had com- plained of its use ; but I think it may be laid down as a general proposition, (if a general proposition can be laid down on a subject applicable to such a variety of matters, indeed incommensurable with each other, for the same docti-ine would scarcely apply to a medicine and a new material or new metal,) that, if a, portion of a patent for a new arrangement of machinery is in itself new and useful, and another person, for the purpose of producing the same effect, uses that portion of the arrangement, and substitutes for the other matters combined with it another mechanical equivalent, that would be an infringement of the patent. It appears to me, therefore, with reference to the facts found by the jury, that the specification is good, and that the defendant has infringed the patent." Rolfe, B. ; "I am also of opinion that the rule ought to be discharged. The chief question is, the construction of the specification. The patentee claims, in my opinion, a matter entirely new, subject to a qualification I shall presently mention. I form this opinion from reading the specification as a person of ordinary understanding Avould do,' not loosely conjecturing any thing, but, at the same time, not scanning it as if it were a special plea; and I must say, it is one of the fairest specifications I have seen, and is calculated fully to express the invention. The jilaintiff begins by saying that his im- provements ' consist in a novel arrangement of mechanism, designed for the purpose of instantly stopping the whole of the working pai'ts of the loom, whenever the shuttle stops in the shed.' It is well known that, in working the power loom, it occasionally happens that the shuttle gets entangled in the warp, and, if the machine be not instantly stopped, the whole fabric is liable to be damaged. The plaintiff then proceeds to tell in what mode that has hitherto been effected ; and, for this purpose, it is not necessary to consider whether he has, in point of fact, correctly stated the mode, but, in construing what his improvements are, we . must consider them with reference to that which he describes as the present mode, and which he says is this. [His Lordship read that part of the specification.] In plain language, formerly there was such a contrivance of machinery, that, whenever the shuttle got entangled, in an instant a certain part of the machine, which he calls the 45 354 LAW OF PATENTS. the science of mechanics, but that it embraces those substi- tutions, which, as a matter of judgment in construction, may ' finger,' struck against tlae thing called the ' frog,' which was fixed to the framework of the machine, the effect of which was to throw the work out of gear, by throwing the strap of the fast pulley on to the loose pulley. He then states what he conceives to be the defects of the old mode. [His lord- ship read that portion of the specification.] That is to say, whereas, hereto- fore, the strap has been thrown off by the finger striking against the frame- work, and by a certain apparatus which shifted it from the fast pulley on to the loose pulley, now I contrive to avoid that shock, by making the finger strike on a vertical lever, vibrating on a pin or stud, and not on a part of the framework ; the result of which is, that, by a certain arrangement, after- wards described, the strap is thrown off. I do not see that the clutch box is claimed as an invention. He conceives that the best mode of fixing on the machinery is with a clutch box, and, in substance, he says, my Improvement, which mamly consists in striking the vertical lever, whether in connection with a clutch box or not, has the effect of throwing the machine out of gear, as was done before, but without the violence of the shock. And he then adds, ' simultaneously with those two movements, the break is brought in contact with the fly wheel.' [His lordship read that part of the specifica- tion.] It is wrong to suppose that, in this specification, the words ' stopping every motion of the loom,' necessarily mean the moving power. They are used very generally for ' stopping the momentum which the machine has acquired.' Then, what is it the plaintiff has claimed ? Why, whereas, for- merly, the mode of stopping the machine was by throwing off the strap by means which caused a violent jar, I have introduced an arrangement of machinery which shall have the same effect of throwing off the strap, as be- fore, but without that jar, and I mention a clutch box, because I consider that the best mode of fixing on the wheels ; and, simultaneously, I introduced that, which the jury has found to be a complete novelty ; I check the momen- tum already acquired, by making the same machinery apply the break to the fly wheel. Can any thing be more clear ? It seems to me wholly a new invention ; except, indeed, if the plaintiff had proceeded against any person for using the clutch box, or for throwing the strap off the pulleys, he could only have succeeded by showing that they had done so by means of the vertical lever. The whole of the application of the break is a novelty ; as to the other part, he does not profess it to be a novelty ; on the contrary, he states exactly how it was done before, and points out what his distinctions are ; and then, after having described, in detail, the mode of making the machinery operate, he says, ' I claim as my invention,' &c. [His lordship read that part of the specification.] It seems to me, therefore, that, looking INFRINGEMENT. 355 be employed to accomplish the same end.^ This seems to be the doctrine of the case last cited. at the construction of this specification, what the plaintiff claims is a new invention altogether, by making the stoppage consist in the striking of a finger, (nearly, but not quite, in the same position as in the old machine,) not against the framework, but against a lever, arranged in the mode which he has detailed in that part of the specification which I have referred to, and which has the same eflect that the former mahine had, of throwing the strap off, whether there be a clutch box or not ; and then there is introduced a new element altogether, namely, a break, which, at the same time that the machi- nery is put out of gear, has the effect of stopping the fly wheel. That is the construction of the specification. Then, I think, that, when the com- plaint is, that the infringement has been of that which is found to be entirely new, the learned judge was perfectly right in his direction to the jury. The question was not whether there had been any infringement of the combina- tion of the clutch box and the break, but whether the defendant imitated that one thing, namely, the application of the break to the fly Avheel, through the momentum of the sley. For that reason, there having been no misdi- rection, and the specification being good, the rule must be discharged." Piatt, B. : "I am of the same opinion. Until the year 1845, there was no means of stopping the power loom, when the shuttle failed to perform its course, without causing a violent shock. The plaintiff applied his ingenuity to the subject, and elaborated a mechanical contrivance for stopping the loom instantaneously, and without any shock. That is effected by a combination of machinery which the jury has found to be new and useful, and by which, at the same moment, the loom is put out of gear, and the fly wheel is instan- taneously stopped, by a pressure equivalent to the velocity of the machine at the time ; because we all know that the momentum of the machine depends on the quantity of matter multiplied into the velocity, and, the quantity of matter being always the same, of course the pressure would be in proportion to the velocity of the machine. The countex'acting force whioh would be used for destroying its momentum would always be in proportion, and, there- fore, it would create an absolute stability, or rather it would produce actual quiet, because two forces of the same amount opposed to each other in oppo- site directions destroy each other. Certainly a most ingenious invention. Then, the next question is, whether the plaintitf, having made this invention, has properly described it in his specification. He first points out the object of his Improvement, namely, 'instantly stopping' the whole of the working parts of the loom, whenever the shuttle stops in the shed. Then, after 1 Foster v. Moore, 1 Curtis's Reports. See also the case of Newton v. The Grand Junction Eailway Company, 6 Eng. Law & Eq. K. 557. 356 LAW OF PATENTS. § 246. But, on the other hand, where the patent is for several distinct improvements or things, and does not stand upon the combination of such things, then the use of any- one of them will be an infringement.^ But, in order to suc- ceed in an action for the infringement of any one of such improvements, it was formerly necessary with us, as in England, that the whole of the improvements claimed as such should be new ; and, if the novelty of any one of them failed, though it might not be the one used by the defendant, the action could not be sustained. The reason for this was, not that the right of the patentee would not have been in- fringed, if he had had a valid patent, but that his patent was void, on account of a partial failure of the whole considera- tion on which it was granted ; the consideration on which a patent was granted being the novelty of all the things repre- sented to be new, regarded as an entirety ; and, the consider- ation being entire, if it failed in part, it failed as to the whole. The government was, in such a case, deceived in its grant : the whole patent was therefore inoperative, and no action could be maintained upon it.^ giving an account of the mode in whicli looms were stopped up to that time, he states the manner in which he proposes to do it ; and then he concludes by stating, that, simultaneously with these two movements, the break is brought in contact with the fly wheel. Surely, any one who reads that speci- fication must understand what the object of the invention was, and the mode by which it is to be effected is most universally described. Then, what does the plaintiff claim ? He says, ' I claim, as my invention, the above described novel arrangement of mechanism.' What for ? ' For stopping the loom, whenever the shuttle does not complete its course from one box to the other.' Then he shows how that is done : ' By disconnecting the main driving pulley from the driving shaft, and also the method (which the context requires to be read ' and by the method ') of bringing a break in connection with the fly wheel, for the purpose of preventing the lathe or sley from beating up any farther,' &c. Therefore, it seems to me that the specification most distinctly describes the invention ; and, the jury having found that it is new and useful, and that the act of the defendant was substantially an infringement of it, the rule ought to be discharged." i Moody V. Fisk, 2 Mas. 115. 2 In Moody u. Fisk, 2 Mas. 112, 115, ]\Ir. Justice Story hinted at this INFRINGEMENT. 357 § 247. The statute of July 4, 1836, § 15, recognizes this doctrine, by establishing as a defence that the patentee was doctrine, -when lie said that, "In such a case, the patent goes for the whole of the improvements, and if each be neio and he claimed distinctly in the patent, there does not seem to be any good reason why the party who pirates any part of the invention should not be liable in damages." The subsequent cases In England, of Hill v. Thompson, 8 Taunt. 382 ; 2 B. Moore, 433 ; "Webs. Pat. Cas. 239 ; Brunton v. Hawkes, 4 B. & Aid. 5^1 ; and Morgan V. Seaward, 2 M. & W. 544 ; Webs. 187 ; have fully established this doc- trine. In the last of these cases, Mr. Baron Parke, delivering the judgment of the Court, said, " This brings me to the question whether this patent, which suggests that certain inventions are improvements, is avoided if there be one which is not so ; and, upon the authorities, we feel obliged to hold that the patent Is void, upon the ground of fraud on the crown, without enterino- into the question whether the utility of each and every part of the Invention is essential to a patent, where such utility is not suggested in the patent itself as the ground of the grant. That a false suggestion of the grantee avoids an ordinary grant of lands and tenements from the crown, is a maxim of the common law, and such a grant is void, not against the crown merely, but in a suit against a third person. It is on the same principle that a pa- lent for two or more inventions, when one is not new, Is void altogether, as was held In Hill v. Thompson, 2 Moore, 424, 8 Taunt. 375, and Brunton v. Hawkes, 4 B. & Aid. 542 ; for, although the statute invalidates a patent for want of novelty, and consequently, by force of the statute, the patent would be void so far as related to that which was old, yet the principle on which the patent has been held to be void altogether is, that the consideration for the grant is the novelty of all, and, the consideration failing, or, in other words, the crown being deceived in its grant, the patent is void, and no action main- tainable upon it. We cannot help seeing, on the face of this patent, as set out In the record, that an Improvement In steam-engines is suggested by the patentee, and Is part of the consideration for the grant ; and we must reluct- antly hold that the patent is void, for the falsity of that suggestion. In the case of Lewis v. JMarling, (10 B, & C. 22; 5 M. & Ry. 66,) this view of the case, that the patent was void for a false suggestion, does not appear by the report to have been pressed on the attention of the Court, or been considered by It. The decision went upon the ground that the brush was not an es- sential part of the machine, and that want of utility did not vitiate the pa- tent ; and, besides, the improvement by the introduction of the brush is not recited in the patent itself as one of the subjects of It, which may make a difference. We are, therefore, of opinion, that the defendants are entitled to our judgment on the third Issue." See, also, the elaborate judgment In Brunton v. Hawkes. 358 LAW OF PATENTS. not the first inventor of the thing patented, " or of a sub- stantial and material part thereof claimed as new." But a more recent statute has provided that the patent shall be deemed good and valid for so much of the invention or dis- covery as shall be truly and bond fide the invention or dis- covery of the patentee, if it is a material and substantial part of the thing patented, and is definitely distinguishable from the other parts which the patentee had no right to claim, notwithstanding the specification may be too broad, if it was so made by mistake, accident, or inadvertence, and without any wilful default or intent to defraud or mislead the public."^ This leaves the former doctrine, by which a failure of novelty in any part vitiated the whole patent, still applicable to cases where the claim was made too broad, wilfully and knowingly, or with intent to defraud or deceive the public. § 248. The effect of a failure, in point of utility of one or more of several parts or things claimed as distinct inventions, is held, in England, to be the same as a failure in point of novelty. If any thing claimed as essential turn out to be useless, the patent is voidable, provided it was known to the patentee, at the time of enrolling his specification, to be use- less, because he misleads the public by representing it to be useful; but if it was subsequently discovered not to be use- ful, material, or necessary, it forms no ground of objection to the patent,^ A patent for an entire machine or other subject which is, taken altogether, useful, though a part or parts may be useless, will be valid, provided there is no false suggestion.^ So, too, a finding of the jury, that the invention is useful on the whole, but fails or is not useful in some cases, is not a ground of nonsuit.'^ But these cases are entirely distinguished ^ Act of 1837, § 9. 2 Lewis V. Marling, 10 B. & C. 22 ; 4 Car. &. P. 57 ; Webs. Pat. Cas. 493. 3 Morgan v. Seaward, Webs. Pat. Cas. 197. 4 Harworth v. Hardcastle, Webs. Pat. Cas. 480, 483. In this case, Sir N. C. Tindal, C. J., said, " The motion for entering a nonsuit was grounded INFRINGEMENT. 359 from those where the purpose wholly fails, and the invention described does not accomplish the effect that is claimed for it. On a patent of this description, of course no action what- ever can be maintained.^ on two points ; first, that the jury had, by their special finding, negatived the usefulness of the invention to the full extent of what the patent and speci- fication had held out to the public ; secondly, that the patentee had claimed, in his specification, the invention of the rails or staves over which the cloths were hung, or, at all events, the placing them in a tier at the upper part of the drying room. As to the finding of the jury, it was in these words : " The jury find the invention is new and useful upon the whole ; and that the specification is sufiicient for a mechanic, properly instructed, to make a machine, and that there has been an infringement of the jiatent ; but they also find that the machine is not useful in some cases for taking off' goods. The specification must be admitted, as it appears to us, to describe the inven- tion to be adapted to perform the operation of removing the calicoes and other cloths from off the rails or staves, after they have been sufficiently dried. But we think we are not warranted in drawing so strict a conclusion from this finding of the jury as to hold, that they have intended to negative, or that they have thereby negatived, that the machine was useful in the gene- rality of the cases which occur for that purpose. After stating that the machine was useful on the whole, the expression that ' in some cases it is not useful to take up the cloths,' appears to us to lead rather to the inference that in the generality of cases it is found useful. And if the jury think it useful in the general, because some cases occur in which it does not answer, we think it would be much too strong a conclusion to hold the patent void. How many cases occur, Avhat proportion they bear to those in which the machine is useful, whether the instances in which it is found not to answer are to be referred to the species of cloth hung out, to the mode of dressing the cloths, to the thickness of them, or to any other cause distinct and dif- ferent from the defective structure or want of power in the machine, this finding of the jury gives us no information whatever. Upon such a finding, therefore, in a case where the jury have given their general verdict for the plaintiff, we think that we should act with great hazard and precipitation, if we were to hold that the plaintiff" ought to be nonsuited, upon the ground that his machine was altogether useless for one of the purposes described in his specification." 1 Manton v. Parker, Dav. Pat. Cas. 327. This was a patent for " a ham- mer on an improved construction, for the locks of all kinds of fowling-pieces and small arms ; " and a material part of the invention consisted in a means of lettincf out the air from the barrel and causin2[ a communication between 360 LAW OF PATENTS. § 249. The principles of our law would apparently lead to the same conclusions upon this subject ; for, although it is not material, whether the subject-matter of a patent is more or less useful, it must possess some utility ; and, if the subject- matter consists of several things, all included in one patent, but claimed as the distinct inventions of the patentee, a fail- ure of any one of them, in point of utility, must vitiate the patent, if it was represented to be useful, when it was known not to be so, for the same reasons which are applicable in England. Our statute, moreover, has expressly provided, as one of the defences to an action on a patent, " that it con- tains more than is necessary to produce the described effect," when such addition " shall fully appear to have been made for the purpose of deceiving the public ;" that is to say, when it appears that the patentee v/as aware that he was introdu- cing something not useful, material, or necessary, at the time of preparing his specification.^ § 250. The rule of damages for the infringement of a pa- tent is provided by statute in the following terms : " that, whenever in any action for damages for using or selling the thing whereof the exclusive right is secured by any patent heretofore granted, or which shall hereafter be granted, a ver- dict shall be rendered for the plaintiff in such action, it shall be in the power of the court to render judgment for any sum above the amount found by such verdict as the actual da- mages sustained by the plaintiff, not exceeding three times the amount thereof, according to the circumstances of the case." ^ the powder in the pan and in the barrel, -without, at the same time, letting out the powder. The witnesses for the defendant having proved that the powder passed through the same hole as the air, the plaintiff was nonsuited. ^ Act of July 4, 1836, § 15. 2 Act of July 4, 1836, § 14. In Guyon v. Smith, 1 Blatchford's K. 244, Mr. Justice Nelson said : " The fourteenth section of the Act of July 4th, 1836, empowers the Court to render judgment for any sum above the amount found by the jury as the actual damages sustained by the plaintiff, not ex- INFRINGEMENT. 361 By the terms " actual damages, sustained by the plaintiff," are meant such damages as he can actually prove, and has ceeding three times such amount, according to the circumstances of the case, with costs. The Act of April 17, 1800, (2 U. S. Stat, at Large, 38, § 3,) fixed the amount of the recovery at three times the actual damages sus- tained. It now rests in the discretion of the Court. The Act of March 3d, 1837, (5 U. S. Stat, at Large, 193, § 7,) authorizes a disclaimer by the patentee, in cases where, through inadvertence, accident, or mistake, the specification of his claim is too broad. It is not, however, to afiect any action pending at the time of the filing of the disclaimer, except in respect to the question of unreasonable neglect or delay in filing the same. The ninth section of the same act allows an action to be maintained for an infringement of such part of the invention as may properly belong to the patentee, notwithstanding the claim may be too broad, if it be made to appear that the error occurred through mistake, and without wilful default, but provides that the plaintiff shall not be entitled to costs against the de- fendant, unless the disclaimer shall have been filed before the commence- ment of the suit. In this case, the disclaimer was filed after the suit was brought, and, of course, the plaintifi' is not entitled to costs ; and it is urged, from the phra- seology of the fourteenth section of the Act of 1836, that the case is one in which the Court has no power to increase the verdict. That section author- izes an increase to not exceeding three times the amount, ' with costs.' Here no costs can be awarded. But costs follow, as a general rule, against the defendant, upon judgment being rendered on a verdict against him for single or actual damages ; and, when the verdict is increased, the costs still remain a part of the judgment, as no power is given by the section to with- hold them. They do not depend upon the power of the Court to increase the verdict, but upon statute authority, wholly independent of such power. The power given to the Court by the fourteenth section is a power only to increase the damages, and not a power over the costs. The words ' with costs ' add nothing, as the defendant was already liable for the costs, if liable for them at all. The increase of the verdict cannot operate either to award or to withhold them. The words were probably added, from abundant cau- tion, to exclude any inference of an intention to limit the amount of the judgment to the precise sum as increased, which would have excluded the costs. The ninth section of the Act of 1837 simply withholds costs in cases where the disclaimer is not filed till after the commencement of the suit, leaving the damages unaffected. The rights of the plaintiff and the power of the Court in respect to the damages, remain the same as if costs were allowed. We are unable, therefore, to perceive any ground for 46 362 LAW OF PATENTS. in fact sustained, as contradistinguished from mere imagin- ary or vindictive damages, which are sometimes given in personal torts.i These damages will be trebled by the court, according to the statute.^ § 251. In estimating the " actual damage," the rule is, in cases of infringement by an actual use of the plaintiffs inven- tion — as by making and using a patented machine — to give the value of such use during the time of the illegal user, that is to say, the amount of profits actually received by the de- fendant.3 To this, it seems there should also be added all the losses to which the plaintiff has been subjected by the piracy.* denying the power of the Court to increase the damages in this case, under the fourteenth section of the Act of 1836. We think, however, that the provisions of the section afford ground for the consideration of the Court, in the exercise of their discretion upon this appli- cation. The party infringing the patent may have been misled by the speci- fication, and have honestly supposed that it was void, and afforded no pro- tection to the patentee. The actual damages for the infringement would, therefore, seem, as a general rule, to be all that could be reasonably claimed. There may be exceptions. Cases may arise, where the circumstances are aggravated, and such as to repel altogether the bona fides of the infringement, in which the power to increase the verdict should be exercised. Each case must depend upon its own circumstances. There is some evidence, here, tending to impeach the good faith of the defendants. But, as they abandoned their machine some time before the commencement of the suit, and have not since put it in operation, and as the damages recovered are, probably, fully equal to the actual injury sustained after the machine was altered so as to infringe upon the plaintiff, we are of opinion, under all the circiunstances, that the case is not one in which the Court should interfere. The motion would not, probably, have been made if the plaintiff could have recovered costs, as there is nothing in the case, beyond this, to distinguish it particularly from others of this description oc- curring daily in the Court. 1 Whittemore v. Cutter, 1 Gallis. 429. It seems, however, that, if the defendant is sued a second time for an infringement, exemplary damages may be given. Alden v. Dewey, 1 Story's K. 336, 339. 2 Lowell V. Lewis, 1 Mas. 184, 185 ; Gray v. James, Peters's C. C. R. 394. 3 Lowell V. Lewis, 1 Mas. 184, 185; "VVhittemore v. Cutter, 1 Gallis. 429. 4 In Earle v. Sawyer, 4 Mas. 1, 12, Mr. Justice Story said: " But I wish INFRINGEMENT. 363 § 252. But where merely the making of a patented ma- chine is proved, as no actual damages have been sustained, to say a few words in relation to the point of law, which the objection sug- gests, and which is founded upon the decision of this Court, in the case of Wh{tte7nore v. Cutter, (1 Gallis. R. 479.) To that decision, as founded in just principle, I stiU adhere, although, I confess, with subdued confidence, since I have reason to believe, that it has not met the entire concurrence of other and abler judicial minds. It has been maintained, by some learned persons, that the price of the invented machine is a proper measure of da- mages, in cases where there has been a piracy by making and using the ma- chine, because, in such cases, the verdict for the plaintiff entitles the defend- ant to use the machine subsequently, and, in short, transfers the right to him in the fullest manner, and in the same way that a recovery in trover or trespass, for a machine, by operation of law, transfers the right to such machine to the trespasser, for he has paid for it. If I thought such was the legal operation of a verdict for the plaintiff, in an action for making and using a machine, no objection could very forcibly occur to my mind against the rule. But my difficulty lies here. The patent act gives to the inventor the exclusive right of making and using his invention, during the period of fourteen years. But this construction of the law enables any person to ac- quire that right, by a forced sale, against the patentee, and compels him to sell, as to persons or places, when it may interfere essentially with his per- manent interest, and involve him in the breach of prior contracts. Thus, the right would not remain exclusive ; but the very attempt to enforce it would involve the patentee in the necessity of parting with it. The rule itself, too, has no merit from its universality of application. How could it apply, when the patentee had never sold the right to any one ? Plow, when the value of the right depended upon the circumstance of the right being confined to a few persons ? Where would be the justice of its application, if the invention were of enormous value and profit, if confined to one or two persons, and of very small value if used by the public at large, for the result of the principle would be, that all the pubUc might purchase and use it by a forced judicial sale. On the other hand, cases may occur, where the wrong done to the patentee may very far exceed the price which he would be wil- ling to take for a limited use by a limited number of persons. These, among others, are difficulties which press on my mind against the adoption of the rule ; and, where the declaration goes for a user during a limited period, and afterward the party sues for a user during another and subsequent period, I am unable to perceive, how a verdict and judgment in the former case is a legal bar to a recovery in the second action. The piracy is not the same, nor is the gravamen the same. If, indeed, the plaintiff, at the trial, consents that the defendant shall have the full benefit of the machine forever, upon 364 LAW OP PATENTS. nominal damages only should be given.^ But if there is a making for, and selling to be used, full damages may be the ground of receiving the full price in damages, and the defendant is con- tent with this arrangement, there may be no solid objection to it in such a case. But I do not yet perceive how the Court can force the defendant to purchase, any more than the plaintiff to sell, the patent-right, for the whole period it has to run. The defendant may be an innocent violator of the plaintiff's right ; or he may have ceased to use, or to have employment for, such a machine. There are other objections alluded to in the case in 1 Gal- lis. R. 434. Struck with similar difficulties, in establishing any general rule to govern cases upon patents, some learned judges have refused to lay down any par- ticular rule of damages, and have lett the jury at large to estimate the actual damages, according to the circumstances of each particular case. I rather incline to believe this to be the true course. There is a great difference between laying down a special and limited rule, as a true measure of da- mages, and leaving the subject entirely open, upon the proofs in the cause, for the consideration of the jury. The price of the machine, the nature, actual state and extent of the use of the plaintiff's invention, and the particular losses, to which he may have been subjected by the piracy, are all proper ingredients to be weighed by the jury in estimating the damages, valere quantum valeant." See also the observations of Lord Justice Clerk Hope, in the Househill Company v. Neilson, cited Webs. Pat. Cas. 697, note. In Pierson v. The Eagle Screw Company, 3 Story's R. 410, IVIr. Justice Story again said: " But, upon the question of damages, I would, upon this occasion, state, (what I have often ruled before,) that, if the plaintiff has estabUshed the validity of his patent, and that the defendants have violated it, he is entitled to such reasonable damages as shall vindicate his right, and reimburse him for all such expenditures as have been necessarily incurred by him, beyond what the taxable costs will repay, in order to establish that right. It might otherwise happen, that he would go out of Court with a verdict in his favor, and yet have received no compensation for the loss and wrong sustained by him. Indeed, he might be ruined by a succession of suits, in each of which he might, notwithstanding, be the successful party, so far as the verdict and judgment should go. My understanding of the law is, that the jury are at liberty, in the exercise of a sound discretion, if they see fit, (I do not say that they are positively and absolutely bound under all circumstances) to give the plaintiff such damages, not in their nature vindictive, as shall compensate the plaintiff fully for all his actual losses and injuries, occasioned by the vio- lation of the patent by the defendants." 1 Whittemore v. Cutter, ul supra. INFRINGEMENT. 365 given ; and they may be estimated, by ascertaining the pro- per price for a license to make and sell the same number of articles, under the plaintiff's patent.^ 1 Hogg V. Emerson, 11 Howard, 587, 607. In this case, the Court said: " It is true, that the verdict appears large in amount. But, if too large, and the jury were properly instructed on the subject, the fault is their's, i-ather than the Court's, and cannot be corrected here. It is not, however, clear that it is too large, as it does not appear to have exceeded, and, indeed, it rather falls short of, the price paid for a license to make an improvement like this, to be used in so many vessels. It is the making and selling to be used, and not the selling or buying or making alone, for which full damages are usually given. (10 Wheaton, 350 ; Curtis on Pat. 256, note 3 ; 3 McLean, 427.) The Court, therefore, being called on to lay down some general rule, very properly informed the jury, that such price might be a suitable guide, and it is the customary one followed for making patent stoves, lasts, spokes, &c., and seems once to have been treated by law as the chief guide in all patent cases; as the Act of 1791, § 5, (1 Stat, at Large, 322,) gave three times its amount, when one either made for sale or used a patented machine. But that law being repealed, and the damages now left open for each case, the judge correctly added, that a fair ground existed for a mitigation below that amount, if the maker of the machine appeared, in truth, to be ignorant of the existence of the patent-right, and did not intend any infringe- ment. That would not, however, furnish a reason, as was insisted by the plaintiff in error, for allowing no damages, when making the machine to he used, and not, as in some cases, merely for a model, or for fancy, or phi- losophical illustration. (Whittemore v. Cutter, 1 Gallis. 429 ; Jones v. Pearce, Webster's P. C. 125; 3 McLean, 583.) The intent not to injure, also, never exonerates, as is contended In these cases, from all damages for the actual Injury or encroachment, though it may mitigate them. (Bryce v. Dorr, 3 McLean, 583.) The further general suggestion, by the judge, to give only the actual damages, was well calculated to prevent any thing vin- dictive or in excess, and justified the jury to go still lower than they did. It appearing just to them, and as has sometimes been done in this class of cases. (See Lowell v. Lewis, 1 Mason, C. C. 182 ; 1 Gall. C. C. 420.) That, however, was a matter of discretion for the jury, under all the cir- cumstances, and not a question of law for the Court. Nor will the consequences of damages, so large as the present, seem harsh, if, thereby, any further recovery should be prevented for using or selling, as well as making the machine, but which point Is not decided by us 366 LAW OF PATENTS. § 253. Where patented articles (cast-iron water-wheels,) were manufactured by the defendants, on an order given by a third person, and the order was partially executed before the defendants had notice of the patent, and two wheels only were cast after notice, it was held, that nominal damages only were proper.^ § 254. It was formerly doubted, whether the jury were at liberty to allow, as part of the actual damage, the counsel fees and expenses of witnesses, beyond the taxable costs incurred by the plaintiff, in vindicating his right. But it is now the established rule and practice to allow them.^ § 255. As to the time of the acts complained of, as amounting to an infringement, it is obvious that the patent cannot be infringed by any thing done when the patent did not exist; and, therefore, it is no infringement to make or use a machine subsequently patented, or otherwise to prac- now, because not raised on the record. It may be added, however, in this connection, that the defendants are certainly relieved now from one conse- quence, by way of damages or penalty, which once existed, and which was to forfeit the materials of the machine to the patentee. (See section 4th in Act of April 10th, 1790, 1 Stat, at Large, 111.) It must be a very extreme case, too, where a judgment below should be reversed, on account of da- mages like these, in actions ex delicto ; and, when the instructions suggested to the jury the true general rule, and the leading ground for mitigation as well as against excess, and when, if appearing to be clearly excessive, under all circumstances, a new trial could have been moved and had, on that account, in the Circuit Court." 1 Bryce v. Dorr, 3 McLean, 582. 2 Boston Manuf. Co. v. Fiske, 2 Mason, 119, 120. In England, damages at law are generally only nominal. Lewis v. Marling, Webs. Pat. Cas. 493, n. The plaintiff is not entitled to damages in a second action, as of right. Minter v. Mower, Ibid. 138. Damages should consist of profits and compensation, for the infraction of the right. The Househill Co. v. Neilson, Ihid. 697. Semble, that acts done in reliance on a former verdict against a patent, are evidence in reduction of damages. Arkwright v. Nightingale, Ibid. 61. INFRINGEMENT. 367 tise the invention which is afterwards made the subject of a patent, before the patent is obtained. But, when a patent is granted, the right in the subject-matter relates back to the time of the invention, so that the party who has practised the invention, between the time of the discovery and the issuing of the patent, must cease to do so. Any acts of infringement, done after the issuing of the patent, will be ground for the recovery of damages, although the previous acts were done at a time, when it was uncertain whether there would be any patent issued.^ The same is true of acts done in violation of a patent, which is surrendered and renewed on account of defects in the specification. If a party erect and put in use a patented machine, during the existence of a defective patent, which is afterwards surren- dered, it will be an infringement of the new and renewed patent, if he continues the use of such machine after the renewal ; and it seems that no notice of the renewal is necessary ; and, if it is, that knowledge of the original patent will be notice of the renewed patent, granted in con- tinuation of it, according to the provisions and principles of law.2 1 Evans v. Weiss, 2 Wash. 342 ; Dixon v. Moyer, 4 Wash. G8. 2 Ames V. Howard, 1 Sumner, 482, 488. In this case, Mr. Justice Story- said : — " The next objection is, that, in point of law, the plaintifF is not entitled, without some previous notice or claim, to maintain this action, under his patent, against the defendants, for continuing the use of the machines erected and put in use by them, before the patent issued. This objection cannot prevail. I am by no means prepared to say, that any notice is, in cases of this sort, ever necessary, to any party' who is actually using a machine in violation of the patent-right. But it is very clear, that, in this case, enough was established in evidence to show, that the defendants had the most ample knowledge of the original patent taken out by the plain- tiff, in 1822, and of which the present is only a continuation, being grounded upon a surrender of the first, for mere defects in the original specification. Whoever erects or uses a patented machine, does it at his peril. He takes upon himself all the chances of its being originally valid ; or of its being afterwards made so, by a surrender of it, and the grant of a new patent, which may cure any defects, and is grantable according to the principles of 368 LAW OF PATENTS. § 256. A patentee may recover damages for an infringe- ment, during the time which intervened between the destruc- tion of the Patent Office by fire, in 1836, and the restoration of the records, under the Act of March 3, 1837.1 law. That this new patent was so grantable is clear, as well from tlie deci- sion of the Supreme Court, in Grant v. Eaj-mond, (6 Peters, R. 218,) as from the Act of Congress of the 3d of July, 1833, ch. 162. There is no pre- tence to say, that the defendants were lonujide purchasers, without any know- ledge or notice of any adverse claim of the plaintiff, under this original patent ; and the damages were, by the Court, expressly limited to damages which accrued to the plaintiff, by the use of the machine, after the new patent was granted to the plaintiff." 1 Hogg V. Emerson, 6 How. 437. CHAPTER II. OP THE REMEDY FOR AN INFRINGEMENT BY ACTION AT LAW. § 257. The Act of Congress of July 4, 1836, c. 357, § 14, provides, that damages may be recovered for an infringe- ment, by " an action on the case ; " a remedy which exists equally at common law, for the violation of the right secured by letters-patent.^ § 258. I. Parties. The statute also provides, that the action shall be brought in the name or names of the person or per- sons interested, whether as patentee, assignees, or as grantees of the exclusive right, within and throughout a specified part of the United States." 2 § 259. Formerly, the grantee for a particular district could not bring an action on the patent in his own name.^ But the statute has made him a party interested in the patent, and, consequently, in his own district, he may sue in his own name.* 1 Bull. N. P. 76. 2 Act of July 4, 1836, c. 357, § 14. It seems that no previous notice, or claim of a right to the exclusive use of an invention, is necessary, to enable a patentee to maintain an action, for an alleged violation of his patent-right. Ames V. Howard, 1 Sumner, 482. 3 Tyler v. Tuel, 6 Cranch, 324. 4 Such a suit may be maintained, although the plaintiff is the grantee of a right to use only a limited number of the patented machines in the parti- cular distiicts, provided it is an exclusive right, and it may be maintained against the patentee himself, Wilson v. Kousseau, 4 Howard, 646. 47 370 LAW OF PATENTS. § 260. Where the patentee has assigned his whole interest, either before or after the patent was taken out, the action can only be brought in the name of the assignee ; ^ but where the assignment is of an undivided part of the interest, the action should be brought in the joint names of the patentee and the assignee, as representing the whole interest.^ If the assign- ment has not been made, but has been merely agreed to be made, the action should be in the name of the patentee, the assignee not having the interest until the assignment has been made and recorded.^ But it may be recorded at any time after the suit is brought and before trial.* An action for an infringement may be maintained against a corpora- tion.^ § 261. The Supreme Court of the United States have held that a covenant by a patentee, made prior to the law autho- rizing extensions, that the covenantee should have the benefit of any improvement in the machinery, or alteration or re- newal of the patent, did not include the extension by an ad- ministrator, under the Act of 1836 ; that it must be construed to include only renewals obtained upon the surrender of a patent on account of a defective specification, and, therefore, that a plaintiff who claimed under an assignment from the administrator, could maintain a suit against a person who claimed under the covenant.^ § 262. II. The Declaration. The declaration in an action for the infringement of a patent, should show a title in the 1 Herbert v. Adams, 4 Mas. 15. 2 ^Vhittemore v. Cutter, 1 Gallis. 429, 430. An assignee of the exclu- sive right to use a certain number of machines in a certain district, may join his assignor with him in a bill for an injunction. Woodworth v. Wilson, 4 How. 712. 3 Park V. Little, 3 Wash. 196. 4 Pitts V. Whitman, 2 Story's R. 609, 614. 5 Kneass v. The SchuylkiU Bank, 4 Wash. 106. 6 Wilson V. Rousseau, 4 Howard, 646. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 371 plaintiff, with convenient certainty ; and should set forth all the matters which are of the essence. Without these alle- gations, the plaintiff fails to show a right, in point of law, to ask the Court for judgment in his favor. The several parts of the declaration may here be considered, in the order in which they occur in pleading. § 263. The declaration should commence with a recital that the plaintiff was "the original and first inventor" of the subject-matter, the making, using, or vending of which is complained of This averment is necessary, notwithstanding the letters-patent, afterwards referred to, recite that the plain- tiff has alleged that he was the original and first inventor, because it must appear aflirmatively, in point of fact, at the trial, that he was so, and the letters-patent can only be re- sorted to as primd facie evidence of the fact. There must, therefore, be a distinct allegation of the fact, as one of the things essential to the plaintiff's title.i § 264. For the same reason, the declaration goes on to aver that the subject-matter was " new and useful," " not known or used before the plaintifl"'s invention or discovery," and " not, at the time of his application for a patent, in public use, or on sale with his consent or allowance." § 265. Whether it is necessary to aver the citizenship of the patentee, has never been determined. In practice it is gene- rally done, and it is safer to do so than to omit an averment which might, on demurrer, be held to be essential.- But it is absolutely necessary to aver that the plaintiff, being the ori- 1 The plaintiflF must affirm the performance of all acts on which his title depends. Gray v. James, Peters's C. C. R. 476. 2 ]^lr. Phillips suggests that the necessity for this averment will depend on the construction to be given to the 15th section of the Act of 1836, by which, if the patentee be an. alien, the defendant is permitted to show that the patentee has " failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reason- I 372 LAW OF PATENTS. ginal and first inventor, obtained letters-patent for his inven- tion, in due form of law, under the seal of the Patent Office, signed by the Secretary of State, and countersigned by the Commissioner of Patents.^ § 266. The substance of the grant should then be set forth ; that is to say, that the letters-patent secured to the plaintiif, his heirs, administrators, &c., for the term of fourteen years, the full and exclusive right of practising the invention ; which should be described briefly, as it is set forth in the letters- patent, of which profert should be made.2 Where the decla- ration describes the plaintiff's invention in the w^ords of the patent, it is not necessary that the description, as stated in the specification, should be set forth. If the defendant require able terms, the invention or discovery." Phillips on Patents, p. 520, note. This clause in the statute can scarcely be considered as imposing a burden of proof of citizenship on the plaintiff. It authorizes the defendant to avail himself of the fact that the plaintiff is an alien, by showing that the plaintiff has omitted to do certain acts ; but is any thing more to be inferred from the clause than this, that, if the defendant means to show the omission, he must first show that the plaintiff is an alien ? I agree, however, with the learned author that to aver the citizenship is the safest course. 1 Formerly, patents bore the attestation of the President of the United States ; and it was held to be necessary to aver that the letters had been so tested, and that the patent had actually issued, or been delivered ; other- wise, the declaration would be bad on demurrer. Cutting and others, Ex'ors V. Myers, 4 "Wash. 220. For the same reason, the averment is now necessary that the letters were duly tested by the public officers whose duty it is to sign and countersign them ; and the mode of averring the delivery, now usually practised, is to declare that the plaintiff, on such a day, " did obtain " them. But it is not necessary to aver that the preliminary steps to obtain a patent were taken, because, if the declaration aver that the patent was granted in the form prescribed by law, the Court, upon demurrer, will presume that every thing was rightly done to obtain it. Fulton's Ex'ors v. Myers. 2 Chit. PI. vol. 2. Profert of the letters-patent, in the declaration, makes them and the specification, when produced, a part of the declaration, and so gives all the certainty, as to the invention and improvement patented, re- quired by law. Pitts v. Whitman, 2 Story's K. 609, 614. REMEDY FOR INFRINGEMENT BY ACTION AT LAAY. 373 the specification in his defence, he may have it placed in the record by praying oyer of it.^ § 267. The declaration is concluded by an averment of the value of the patent-right and of the breach by the defendant, and the damages sustained by the plaintiff.^ § 268. If the plaintiff sues in the character of assignee of the patent, he must set forth both the patentee's title and his own, and should aver that the assignments were duly re- corded in the Patent Office. If the declaration omit to state that the assignments were recorded, the omission will be cured by verdict, if the general terms of the declaration are otherwise sufficient to have authorized the admission of proof of the recording at the trial ; upon the general prin- ciple, that, after verdict, all the facts necessary to have been proved to enable the jury to find a verdict for the plaintiff, will be presumed to have been proved, if the general terms of the declaration would have let them in.^ § 269. At the trial, proof may be given of the recording ^ Gray v. James, Peters's C. C. R. 476. 2 See the Precedents in the Appendix. '•^ Dobson V. Campbell, 1 Sumner, 319, 326. Story, J. : " We are of ojiin- ion that the motion in arrest of judgment ought to be overruled. We accede to the doctrine stated at the bar, that a defective title cannot, after verdict, support a judgment ; and, therefoi'e, it constitutes a good ground for arrest- ing the judgment. But the present is not such a case ; but is merely the case of a good title defectively set forth. The defect complained of, is the omission to state, that the assignments, on which the plaintiff's title is founded, were duly recorded in the office of the Department of State, which is made essential to pass the title of the original patentee, by the fourth section of the Patent Act of the 21st February, 1793, ch. 55. The general prin- ciple of law is, that, where a matter is so essentially necessary to be proved, to establish the plaintiff's right to recovery, that the jury could not be pre- sumed to have found a verdict for him, unless it had been proved at the trial, that the omission to state that matter in express terms, in the declara- tion, is cured by the verdict, if the general terms of the declaration are 374 LAW OP PATENTS. of an assignment, either before or after the action was brought.^ §270. III. Pleadings and Defences. — The fifteenth sec- tion of the Act of 1836 provides that the defendant, in any action for the infringement of a patent, shall be permitted to plead the general issue, and to give the statute and any spe- cial matter in evidence, of which notice In writing may have been given to the plaintiff or his attorney, thirty days before trial, tending to prove that the description and specification of the patent does not contain the whole truth relative to the invention or discovery, or that it contains more than is neces- sary to produce the described effect; which concealment or addition shall fully appear to have been made for the purpose of deceiving the public; or that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, or that it has been described in some public work anterior to the supposed discovery by the patentee, or had been in public use, or on sale, with his consent or allowance, before his application for a patent, or that he had surreptitiously or unjustly obtained a patent for that which was in fact invented otherwise sufficient to comprehend it. This was the doctrine of Lord Ellen- borough, in Jackson v. Pesked, (1 M. & Selw. R. 234) ; and it is very ela- borately expounded, by Mr. Sergeant Williams, in bis learned note to 1 Saunders R. 228, a. The other authorities, cited on behalf of the plain- tiff, are to the same effect. Now, it seems to us, that, taking the whole de- claration together, (however inartificially drawn,) the plaintiff sets up a title to the patent-right by assignment, and an enjoyment and use of the right under that title, and that he has been injured in that right, under that title, by the piracy of the defendant. This cannot be true, nor could a verdict for the plaintiff have been found by the jury, if the deeds of assignment had not been duly recorded ; for, unless that was done, nothing could pass by the deeds. The cases of Hitcliins v. Stevens, 2 Shower R. 233, and McMurdo V. Smith, 7 T. R, 518, cited at the bar, seem to us very strongly in point. So is France v. Fringer, Cro. Jac. 44." 1 Pitts V. Whitman, 2 Story, 609. Of course, therefore, it is not neces- sary to aver that the assignment was recorded within three months. Ibid. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 375 or discovered by another, who was using reasonable diligence in adapting and perfecting the same ; or that the patentee, if an alien at the time the patent was granted, had failed and neglected, for the space of eighteen months, from the date of the patent, to put and continue on sale to the public, on rea- sonable terms, the invention or discovery for which the patent issued ; in either of which cases, judgment is to be rendered for the defendant, with costs. § 271. The object of this provision was, to enable the de- fendant to give certain special matters in evidence under the plea of the general issue. It seems to have been generally supposed, at a very early period in the history of our legisla- tion, that, under a plea of the general issue, the defendant could not be allowed to attack the validity of the patent, and that that plea only put in issue the question of infringement.^ Accordingly, the Act of 1793, § 6, enumerated certain special defences, which it declared the defendant " shall be permitted " to give in evidence under the general issue, by first giving notice thereof to the plaintiff. The Supreme Court of the United States construed the provision as intended to relieve the defendant from what were supposed to be the difficulties of pleading, by allowing him to give in evidence, under the plea of not guilty, certain matters affecting the patent, pro- viding, at the same time, for the security of the plaintiff against surprise, by requiring notice to be given of the spe- cial matter to be relied on. This notice was substituted for a special plea.^ The Court also declared that the defendant 1 But it was not so in England. Until the Act 5 and 6, Wm. IV. c. 83, § 5, the usual plea was not guilty, which, putting in issue the whole of the declaration, forced the plaintiff to support the grant in all its parts, and gave to the defendant the greatest latitude for evidence ; but now, the defendant must plead all the defences, and must also deliver in a list of the objections on which he intends to rely at the trial. Godson on Patents, 238, 2d ed. 2 Evans v. Eaton, 3 Wheat. 454 ; Evans v. Kremer, Peters's C. C. R. 215. See also the elaborate note on the Patent Law in the Appendix to 3 Wheat, note II. (written by Mr. Justice Story.) 376 I-AW OF PATENTS. was not obliged to pursue this course. He might plead specially, in which case the plea would be the only notice the defendant could claim ; or he might plead the general issue, in which case he must give notice of the special matter on which he relied.^ § 272. The fifteenth section of the Act of 1836 is taken, with some additional defences," from the sixth section of the i 1 Evans v. Eaton, 3 Wheat. 454, 503. In this case, Mr. Chief Justice Marshall said : " The sixth 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 evidence mat- ter 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 pre- cision, what it ought to include, and what it might omit. There are, how- ever, 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 farther 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 defend- ant 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 machi- nery alleged to be previously used was placed. But there is still another view of this subject, which deserves to be con- sidered. The section which directs this notice, also directs that, if the spe- cial 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, 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 parti- cular 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." REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 377 Act of 1793, and has the same object in view. It differs from the former act, by omitting the provision that the patent "shall be declared void," if judgment is rendered for the defendant, and by providing that, "when the defendant relies, in his defence, on the fact of a previous invention, knowledge, or use of the thing patented, he shall state, in his notice of special matter, the names and places of residence of those whom he intends to prove to have possessed a prior know- ledge of the thing, and where the same thing had been used." This provision was added in consequence of the construction given to the former act, to the effect that notice of the places was not necessary to be given.^ In other respects, the con- struction given to the Act of 1793, § 6, is applicable to the present law. The defendant is at liberty to plead specially, in which form of pleading he need give no other notice of his defence than the plea itself gives, or he may plead the general issue, and give notice of the special matter on which he relies. The statute does not undertake to enumerate all the defences which may be made to an action on a patent. It provides that, when certain facts, which it enumerates, are to be relied on, and the general issue is pleaded, the defend- ant shall give notice of the facts which he means to put in evidence.^ The notice must be strictly construed ; if the defendant gives notice that he will prove the prior use of the invention in the United States, he cannot be allowed to offer evidence of its prior use in England.^ § 273. But it will be useful to make a particular enumera- tion of the defences that may be made under the general issue, without notice, before we turn our attention to those mentioned in the statute, of which notice must be given, when the general issue is pleaded. 1 Evans v. Eaton, ante, note ; Evans v. Kremer, Peters's C. C. E. 215. 2 Wliittemorc v. Cutter, 1 Gallis. 429, 435 ; Grant v. Kaymond, 6 Peters, 218. ^ Dixon V. Meyer, 4 Wash. G8. 48 378 LAW OP PATENTS. § 274. The defendant may show, under the general issue, without notice, that he never did the act complained of; that is, that he has not infringed the patent, or that he was acting under a license or purchase from the plaintifF.^ He may show that the plaintiff is an alien, not entitled to a patent, or that the plaintiff has not a good title as assignee ; or that his patent was not duly issued according to law, in respect of the signatures of the public officers, or of the public seal, &cc.^ § 275. He may also show that the invention is not a patentable subject ; that is to say, admitting its novelty, he may show that it is not an " art, machine, manufacture, or composition of matter," in the sense of the statute.^ But the defence that the subject is not patentable on the ground of want of novelty, falls under the statute, and must be specified. § 276. In like manner, the defendant may show, under the general issue, without notice, that the invention, though new, fails in point of utility, and is worthless and frivolous.'* § 277. So, too, he may show that there is no specification, or that the specification is so ambiguous and unintelligible, that the Court cannot determine from it, what the invention is that is intended to be patented. This is a different issue from that pointed out in the statute. If the specification do not describe the invention in clear and exact terms, so as to 1 Whittemore v. Cutter, 1 Gallis. 429, 435 ; 3 Wheaton's R. Appendix, Note 11. p. 27. 2 Ibid. Kneass v. The Schuylkill Bank, 4 Wash. 9, 11. 3 That the invention is not a patentable subject, admitting its novelty, is a different issue from any that is named in the 15th section of the statute, and it is one that is necessarily raised by the plea of " not guilty" since the declaration necessarily imports that the patentee had invented a patentable subject. ■* Want of novelty is one of the defences enumerated in the 15th section, but want of utility is not ; but it is a clear bar to the action, upon the tenns of the act, as well as upon the general principles of law. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 379 distinguish it from other inventions, but be so ambiguous and obscure that it cannot be ascertained with reasonable cer- tainty for what the patent is taken, or what it includes, the patent is void for ambiguity ; and this is put in issue by the plea of not guilty, because a clear and distinct specification of the invention is essential to the validity of the patent.^ But if the invention is definitely described in the patent and specification, so as to distinguish it from other inventions before known, there may still exist the defect described in the fifteenth section of the statute, of some concealment or addi- tion made for the purpose of deceiving the public ; and when it is intended to show this, under the general issue, notice must be given. § 278. We now come to the special defences enumerated in the fifteenth section of the statute. The statute provides that the defendant may, under the general issue, give the statute itself in evidence,^ and certain special matters, of which he shall have given notice, in writing, to the plaintiff or his attorney, thirty days before trial.^ 1 3 Wheat. R. Appendix, note 11. p. 27 ; Phillips on Patents, p. 398 ; Kneass v. The Schuylkill Bank, 4 Wash. 9, 13. In this last case, Mr. Justice Washington intimates that the defendant may show, under the general issue, and without notice, that the patent is broader than the discovery. But this must now be otherwise; since the 15th section of the Act of 1836 describes one of the issues which require notice, to be, that the patentee was not the original and first inventor of the thing patented, oi- of a substantial and material part thereof. This is the issue that the patent is broader than the invention. 2 The meaning of the permission to give the statute in evidence is, that the defendant shall be allowed to rely on any matter of law enacted in the statute, without pleading it specially, which must be done when the statute is a private one. The Patent Act is undoubtedly a public act ; but, from abundant caution, to prevent the question of the nature of the act from being raised, this provision was inserted. Kneass v. The Schuylkill Bank, 4 Wash. 9, 11. 3 No witness can be examined, to prove a prior use of the invention, unless notice of his name and residence has been given. The Philadelphia and Trenton llailroad Company v. Thompson, 14 Peters, 448, 459. 380 LAW OF PATENTS. § 279. The first of these special defences is, " that the description and specification filed by the plaintiff, does not contain the whole truth relative to his invention or discovery, or that it contains more than is necessary to produce the described effect ; which concealment or addition shall fully appear to have been made for the purpose of deceiving the public." We have already seen what was the general pur- pose of Congress in providing that notice should be given, when certain facts were to be offered in evidence ; but it is not very easy to define the scope of the issue intended by the above provision, or to distinguish the exact meaning of the statute in this particular. It is clear, however, that this issue, as we have already suggested, is distinguishable from the issue which presents the naked question, whether there is an intelligible description of the invention, which will ena- ble the public to know what it is. It may help us to under- stand the present provision, if we review the corresponding provision in the former act, and the decisions made upon it. § 280. The corresponding provision in the Act of 1793, § 6, was in the same terms, but that act also provided that, when judgment on this issiie had been rendered for the de- fendant, "the patent shall be declared void;" which is omit- ted in the Act of 1836, § 15. In one of the earliest reported cases in which this clause of the statute of 1793 came under consideration, Mr. Justice Story held that, if the invention is definitely described in the patent and specification, so as to distinguish it from other inventions before known, the patent is good, although it does not describe the invention in such full, clear, and exact terms, that a person skilled in the art or science of which it is a branch, would construct or make the thing, unless such defective description or concealment was with intent to deceive the public. The reasoning of the learned judge, in this case, tends to show that he considered the de- fect or concealment, with intent to deceive the public, to refer to the practicability of practising the invention from the spe- cification ; and, in a subsequent case, he seems to consider REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 381 that the statute intended to alter the common law, and to declare the patent void, only when the concealment or defect was with such an intent. But it is not quite clear, whether he considered that the issue raised by an allegation that the specification would not enable a workman to make the thing described, is, as a defence to the action, not one of the special defences of the statute, and, consequently, that it is raised by the plea of not guilty, without notice.^ 1 Whittemore v. Cutter, 1 Gallis. 429, 433 ; Lowell v. Lewis, 1 Mas. 182, 187. The reasoning of the learned judge, iif both these cases, was as follows : " Another objection is to the direction, that the oath taken by the inventor, not being conformable to the statute, formed no objection to the recovery in this action. The statute requires that the patentee should swear, ' that he is the true inventor or discoverer of the art, machine, or improve- ment.' The oath taken by Whittemore was, that he was the true inventor or improver of the machine." The taking of the oath was but a prerequi- site to the granting of the patent, and in no degree essential to its validity. It might as well have been contended, that the patent was void, unless the thirty dollars, required by the 11th section of the Act, had been previously paid. We approve of the direction of the Court on this point, and overrule this objection. Another objection is to the direction respecting the specification. It was as follows : " That, if the jury should be satisfied, that the specification and drawings, filed by the patentee in the office of the Secretary of State, were not made in such full, clear, and exact terms and manner as to distinguish the same from all other things before known, and to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly connected, to make and use the same, this would not be suflicient to defeat the rights of the plaintiffs to recover in this action, unless the jury were also satisfied, that the specification and drawings were thus materially defective and obscure hi/ design, and the concealment made for the purpose of deceiving the public. In this respect our law differed from the law of England, that, if the specification and drawings were thus materially defective, it afforded a presumption of a designed concealment, which the jury were to judge of. That, in deciding as to the materiality of the defi- ciencies in the specification and drawings, it was not suflicient evidence to disprove the materiality, that, by studiously examining such specification and drawings, a man of extraordinary genius might be able to construct the machine, by inventing parts, and by trying experiments. The object of the law was, to prevent the expenditure of time and money in trying experi- 382 LAW OP PATENTS. § 281. In a subsequent case, the Supreme Court of the United States decided, that, in order to justify a judgment, ments, and to obtain such exact directions, that, if properly followed, a man of reasonable skill in the particular branch of the art or science might con- struct the machine, and if, from the deficiencies, it was impracticable for such a man to construct it, the deficiencies were material." In order fully to understand the objection to this direction, it is necessary to advert to the third section of the Act of 1793, which specifies the requisites to be com- plied with in procuring a patent, and the sixth section of the same Act, •which states certain defences, of which the defendant may avail himself to defeat the action, and to- avoid the patent. The third section, among other thino-s, requires the party applying for a patent, to deliver a written descrip- tion of his invention, and of the manner of using, or process of compound- ing the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and to enable any person, skilled in the art or science of which it is a branch, or with which it is most intimately connected, to make, compound, and use the same ; and, in the case of any machine, he shall fully explain the principle, and the several modes, in which he has contemplated the application of that principle, or character, by which it may be distinguished from other inventions. The sixth section provides, amon"' other things, that the defendant may give in his defence, that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect, lohicli concealment or addition shall fully appear to have been made for the purpose of deceiving the public. It is very clear, that the sixth section does not enumerate all the defences, of which the defendant may legally avail himself; for he may clearly give in evidence, that he never did the act attributed to him, that the patentee is an alien, not entitled under the act, or that he has a license or authority from the patentee. It is, therefore, argued, that, if the specification be mate- rially defective, or obscurely, or so loosely worded, that a skilful workman, in that particular art, could not construct the machine, it is a good defence against the action, although no intentional deception has been practised. And this is, beyond all question, the doctrine of the common law ; and it is founded in good reason ; for the monopoly is granted upon the express con- dition, that the party shall make a full and expUcit disclosure, so as to enable the public, at the expiration of his patent, to make and use the invention or improvement, in as ample and beneficial a manner as the patentee himself. If, therefore, it be so obscure, loose, and imperfect, that this cannot be done, it is defrauding the pubUc of all the consideration upon which the monopoly is granted. (BuUer, N. P. 77 ; Turner v. Winter, 1 T. R. G02.) And the REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 383 declaring a patent void, the defect or concealment must appear to have been made for the purpose of deceiving the motion of the party, whetlaer innocent or otherwise, becomes immateiial, because the pubhc mischief i-emains the same. It is said, that the law is the same in the United States, notwithstanding the wording of the sixth section, for there is a great distinction between a conceahnent of material parts, and a defective and ambiguous description of all the parts ; and that, in the latter case, although there may be no inten- tional concealment, yet the patent may be avoided for uncertainty, as to the subject-matter of it. There is considerable force in the distinction, at first view ; and yet, upon more close examination, it will be difficult to support it. What is a defective description, but a concealment of some parts, neces- sary to be known, in order to present a complete view of the mechanism ? In the present case, the material defects were stated, among other things, to consist in a want of a specific description of the dimensions of the compo- nent parts, and of the shapes and positions of the various knobs. Were these a concealment of material parts, or a defective and ambiguous disclo- sure of them ? Could the legislature have intended to pronounce, that the concealment of a material spring should not, unless made with design to deceive the public, avoid the patent, and yet, that an obscure description of the same spring should, at all events, avoid it ? It would be somewhat hazardous to attempt to sustain such a proposition. It was, probably, with a view to guard the public against the injury aris- ing from defective specifications, that the statute requires the letters-patent to be examined by the attorney-general, and certified to be in conformity to the law, before the great seal is affixed to them. In point of practice, this must, unavoidably, be a very insufficient security, and the policy of the provision, that has changed the common law, may be very doubtful. This, however, is a consideration proper before another tribunal. We must admi- nister the law, as we find it. And, without going at large into this point, we think that the manifest intention of the legislature was, not to allow any defect or concealment, in a specification, to avoid the patent, unless it arose from an intention to deceive the public. There is no ground, therefore, on •which we can support this objection." 1 Gallis. 433. An objection, of a more general cast, (and which might, more properly, have been considered at the outset of the cause, as it is levelled at the suffi- ciency of the patent itself,) is, that the specification is expressed in such obscure and inaccurate terms, that it does not either definitely state in what the invention consists, or describe the mode of constructing the machine, so as to enable skilful persons to make one. I accede, at once, to the doctrine of the authority, which has been cited, (M'Farlane v. Price, 1 Starkie's R. 384 LAW OF PATENTS. ^ public ; but if the defendant merely seeks to defend himself, he may do so, by showing that the patentee has failed in 192,) that tlie patentee is bound to describe, in full and exact terms, in what his invention consists ; and, if it be an improvement only upon an existing machine, he should distinguish what is new, and what is old, in his specifi- cation, so that it may clearly appear for what the patent is granted. The reason of this principle of law will be manifest, on the slightest examina- tion. A patent is grantable only for a new and useful invention ; and, unless it be distinctly stated, in what that invention specifically consists, it is impos- sible to say, whether it ought to be patented or not ; and it is equally diffi- cult to know, whether the public infringe upon or violate the exclusive right secured by the patent. The patentee is clearly not entitled to include in his patent the exclusive use of any machinery already known ; and, if he does, his patent will be broader than his invention, and, consequently, void. If, therefore, the description in the patent mixes up the old and the new, and does not distinctly ascertain for which, in particular, the patent is claimed, it must be void ; since, if it covers the whole, it covers too much, and. If not intended to cover the whole, it is impossible for the Court to say what, in particular, is covered, as the new invention. The language of the Patent Act itself is decisive, on this point. It requires, (§ 3,) that the inventor shall deliver a written description of his Invention, " In such full, clear, and exact terms, as to distinguish the same from all other things before known ; and, in the case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle, or character, by which it may be distinguished from other inven- tions." It is, however, sufficient, if what is claimed as new appear, with reason- able certainty, on the face of the patent, either expressly or by necessary impUcation. But it ought to appear, with reasonable certainty, for It is not to be left to minute references and conjectures, from what was previously known or unknown ; since the question is not, what was before known, but what the patentee claims as new ; and he may, in fact, claim, as new and patentable, what has been long used by the pubUc. T^^aether the invention itself be thus specifically described, with reasonable certainty, is a question of law upon the construction of the terms of the patent, of which the speci- fication is a part ; and, on examining this patent, I, at present, incline to the opinion, that It is sufficiently described. In what the patented invention consists. A question, nearly allied to the foregoing, Is, whether (supposing the invention itself be truly and definitely described In the patent,) the specifi- cation is In such full, clear, and exact terms, as not only to distinguish the REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 385 any of the prerequisites, on which the authority to issue a patent depends. This decision made the evidence of fraud- ulent intent requisite, only in the particular case and for the particular purpose of having the patent declared void.^ same from all things before known, but "to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly con- nected, to make, compound, and use the same." This is another requisite of the statute, (§ 3,) and it is founded upon the best reasons. The law con- fers an exclusive patent-right, on the inventor of any thing new and useful, as an encouragement and reward for his ingenuity, and for the expense and labor attending the invention. But this monopoly is granted for a limited term only, at the expiration of which the invention becomes the property of the public. Unless, therefore, such a specification was made, as would, at all events, enable other persons, of competent skill, to construct similar machines, the advantage to the public, which the act contemplates, would be entirely lost, and its principal object would be defeated. It is not necessary, however, that the specification should contain an explanation, level with the capacities of every person (which would, perhaps, be impossible) ; but, in the language of the act, it should be expressed in such full, clear, and exact terms, that a person skilled in the art or science, of which it is a branch, would be enabled to construct the patented invention. By the common law, if any thing, material to the construction of the thing invented, be omitted or concealed in the specification, or more be inserted or added than is neces- sary to produce the required efi'ect, the patent is void. This doctrine of the common law, our Patent Act has (whether wisely, admits of very serious doubts,) materially altered : for it does not avoid the patent in such case, unless the " concealment or addition shall fully appear to have been made for the purpose of deceiving the public." (§ 6.) Yet, certainly, the public may be as seriously injured, by a materially defective specification, resulting from mere accident, as if it resulted from a fraudulent design. Our law, however, is as I have stated ; and the question here is, and it is a question of fact, whether the specification be so clear and full, that a pump-maker, of ordinary skill, could, from the terms of the specification, be able to construct one upon the plan of IMr. Perkins." 1 Mas. 187. 1 Grant v. Raj-mond, 6 Peters, 218, 246. Mr. C. J. Marshall, delivering the judgment of the Court, in this case, said : — " Courts did not, at first, perhaps, distinguish clearly between a defence, which would authorize a verdict and judgment in favor of the defendant, in the particular action, leaving the plaintifi" free to use his patent, and to bring other suits for its infringement ; and one which, if successful, would require the Court to enter 49 386 LAW OF PATENTS. § 282. Now, the Statute of 1836 omits the provision, that the patent shall be declared void, when judgment is rendered a judgment, not only for the defendant, in the particular case, but one -which declares the patent to be void. This distinction is now well settled. If the party is content with defending himself, he may either plead spe- cially, or plead the general issue, and give the notice, required by the sixth section, of any special matter he means to use at the trial. If he shows that the patentee has failed in any of those prerequisites, on which the authority to issue the patent is made to depend, his defence is complete. He is enti- tled to the verdict of the jury and the judgment of [the Court. But if, not content with defending himself, he seeks to annul the patent, he must pro- ceed in precise conformity to the six^h section. If he depends on evidence, " tending to prove that the specification, filed by the plaintiff, does not con- tain the whole truth, relative to his discovery, or that it contains more than is necessary to produce the described effect," it may avail him, so far as respects himself, but will not justify a judgment, declaring the patent void, unless such " concealment or addition shall fully appear to have been made for the purpose of deceiving the public ; " which purpose must be found, by the jury, to justify a judgment of vacatur by the Court. The defendant is permitted to proceed, according to the sixth section, but is not prohibited from proceeding, in the usual manner, so far as respects his defence ; except that special matter may not be given in evidence, on the general issue, unac- companied by the notice which the sixth section requires. The sixth section is not understood to control the third. The evidence of fraudulent intent is required only in the particular case, and for the particular purpose stated in the sixth section. This instruction was material, if the verdict ought to have been for the defendants, provided the allegations of the plea were sustained, and if such verdict would have supported a judgment in their favor, although the defect in the specification might not have arisen from design, and for the purpose of deceiving the public. That such is the law, we are entirely satisfied. The third section requires, as preliminary to a patent, a correct specification and description of the thing discovered. This is necessary, in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of the power to issue the patent. The necessary consequence of the ministerial character, in which the secre- tary acts, is, that the performance of the prerequisites to a patent must be examinable in any suit brought upon it. If the case was of the first impres- sion, we should come to this conclusion ; but it is understood to be settled. The act of parhament, concerning monopohes, contains an exception, on which the grants of patents, for inventions, have issued in that country. The REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 387 for the defendant ; and it leaves the ground of concealment or addition in the specification, with intent to deceive the construction of so much of that exception, as connects the specification with the patent, and makes the vaUditj' of the latter dependent on the correct- ness of the former, is apphcable, we think, to proceedings under the third section of the American Act. The English books are full of cases, in which it has been held, that a defective specification is a good bar, when pleaded to, or a sufiicient defence, when given in evidence, on the general issue on an action brought for the infringement of a patent-right. They are very well summed up, in Godson's Law of Patents, title Specification ; and, also, in the chapter respecting the infringement of patents ; also in Holroyd on Patents, where he treats of the specification, its form, and requisites. It is deemed unnecessary to go through the cases, because there is no contrariety in them, and because the question is supposed to be substantially settled in this country. Pennock & Sellers v. Dialogue, 1 Peters, 1, was not, it is true, a case of defect, in the specification or description, required by the third section, but one in which the applicant did not bring himself within the pro- vision of the first section, which requires that, before a patent shall issue, the petitioner shall allege, that he has invented a new and useful art, machine, &c., " not known or used before the application." This prerequisite of the first section, so far as a failure in it may affect the vaHdity of the patent, is not distinguishable from a failure of the prerequisites of the third sec- tion. On the trial, evidence was given, to show that the patentee had permitted his invention to be used, before he took out his patent. The Court declared its opinion to the jury, that, if an inventor makes his discovery public, he abandons the inchoate right to the exclusive use of the invention. "It is possible," added the Court, " that the inventor may not have intended to give the benefit of his discovery to the pubhc." But it is not a question of intention, " but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the pubUc. It is for the jury to say, whether the evidence brings this case within the principle which has been stated. If it does, the Court is of opinion, that the plaintiff is not entitled to a verdict" The jury found a verdict for the defendants, an exception was taken to the opinion, and the judgment was afiirmed by this Court. This case affirms the principle, that a failure, on the part of the patentee, in those prerequisites of the act, which authorize a patent, is a bar to a recover^', in an action for its infringement ; and that the validity of this defence does not depend on the intention of the inventor, but is a legal inference upon his conduct." 388 LAW OF PATENTS. public, simply a defence to the action, of a special nature. There can be no doubt, therefore, that, when the defendant proposes to show, that the specification contains more or less than a true description of the invention, and that the con- cealment or addition was made for the purpose of deceiving the public, his plea must either be special, setting forth the defects and charging the intent, or it must be the general issue, accompanied by notice of the defects, in the specifica- tion, intended to be relied on. But, I do not conceive that the statute means to say, that no concealment or defect, in a specification, shall be available, as a defence to the action, under the general issue, unless it was made with intent to deceive the public. The statute may be construed, as if it read thus : — " Whenever the defendant seeks to show, that the specifica- tion does not contain the whole truth, relative to the inven- tion or discovery, or, that it contains more than is necessary, to produce the described effect, and that such concealment or addition was made, for the purpose of deceiving the pub- lic, he may plead the general issue, and give such special matter in evidence, provided he shall have given notice," &c. On the other hand, if the defendant relies on a failure in the specification, in respect of any of the prerequisites for issuing a patent, he may show such failure, under a plea of the gene- ral issue, without any notice. § 283. The next special defence mentioned in the statute is, in substance, that the subject-matter is not new; that is, " that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof, claimed as new ; or that it had been described in some public work, anterior to the supposed dis- covery thereof by the patentee." ^ 1 When this defence is relied upon, it will be incumbent on the defendant to show that the invention had been known, used, or described in a public •work, anterior io the supposed discovery of the patentee. The plaintiff's right in his invention, therefore, relates back to the original discovery, which may REMEDY FOR INFRINGEMENT BY ACTION AT LAAV. 389 § 284. We have seen, in a former chapter of this work, when a party is or is not the original and first inventor of a patented subject ; and also, that a failure, in point of novelty, of any substantial and material part of the alleged invention, renders the patent void pro tanto. In order to ensure the plaintift' against surprise, whenever this defence is to be resorted to, the same section of the statute requires that the defendant " shall state, in his notice of special matter, 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." This provision must be strictly complied with.^ § 285. It is also fairly to be inferred, from the requisition, that notice shall be given of " any special matter " intended to be offered in evidence, " tending to prove " the particular defence relied upon, that the notice must describe whether the whole, or a part, and what part of the invention is to be charged with want of novelty, and in what public work or works, the whole, or a part, or what part had been described before the supposed discovery by the patentee. There is no limitation of time within which this defence must be set up.^ be proved by parol, and is not necessarily presumed to have been made on the day when the patent issued ; although the infringement must have taken place after the date of the patent. Dixon v. Moyer, 4 "Wash. 68, 72. The conversations and declarations of a patentee, merely affirming that, at some former period, he had invented a 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 part of the res gestce, and they are legitimate evidence that the invention was then known and claimed by him ; and thus its origin may be fixed, at least, as eaily as that period. The Philadelphia and Trenton Railroad Co. v. Thompson, 14 Peters, 448. 1 Ibid. 2 Evans v. Eaton, Peters's C. C. R. 322, 348. 390 LAW OF PATENTS. § 286. The stringent effect of this defence has been mate- rially modified, however, by two other provisions. The first is contained in the two provisions which are found at the end of the same fifteenth section of the Act of 1836 ; " provided that, whenever it shall satisfactorily appear that the patentee, at the time of making his application for the patent, believed himself to be the first inventor or discoverer of the thing patented, the same shall not be held to be void, on account of the invention or discovery, or any part thereof having been before known or used in any foreign country, it not appearing that the same, or any substantial part thereof, had before been patented or described in any printed publication ; and pro- vided also, that, whenever the plaintiff shall fail to sustain his action, on the ground that in his specification of claim is embraced more than that of which he was the first inventor, if it shall appear that the defendant had used or violated any part of the invention justly and truly specified, and claimed as new, it shall be in the power of the Court to adjudge and award, as to costs, as may appear to be just and equitable." § 287. The other provision is contained in the Act of March 3, 1837, § 7, 9, in relation to a disclaimer. The seventh sec- tion enacts as follows : " That, whenever any patentee shall have, through inadvertence, accident, or mistake, made his specification of claim too broad, claiming more than that of which he was the original or first inventor, some material and substantial part of the thing patented, being truly and justly his own, any such patentee, his administrators, execu- tors, and assigns, whether of the whole or of a sectional interest therein, may make disclaimer of such parts of the thing patented, as the disclaimant shall not claim to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent ; which disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office, on payment by the person disclaiming, in manner as other patent duties are required by law to be paid, of the sum of ten dollars. And such disclaimer shall there- I REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 391' after be taken and considered as part of the original specifi- cation, to the extent of the interest which shall be possessed in the patent or right secured thereby, by the disclaimant, and by those claiming by or under him, subsequent to the record thereof. But no such disclaimer shall affect any action pend- ing at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing the same." § 288. The ninth section is as follows : " Be it further enacted, any thing in the fifteenth section of the act to which this is additional to the contrary, notwithstanding, that, whenever by mistake, accident, or inadvertence, and without any wilful default, or intent to defraud or mislead the public, any patentee shall have, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor, and shall have no legal or just right to claim the same, in every such case the patent shall be deemed good and valid for so much of the invention or discovery as shall be truly and bond fide his own : Pro- vided^ it shall be a material and substantial part of the thing patented, and be definitely distinguishable from the other parts so claimed without right as aforesaid. And every such patentee, his executors, administrators, and assigns, whether of the whole or a sectional interest therein, shall be enti- tled to maintain a suit at law or in equity, on such patent, for any infringement of such part of the invention or disco- very as shall be bond fide his own, as aforesaid, notwith- standing the specification may embrace more than he shall have any legal right to claim. But, in every such case in which a judgment or verdict shall be rendered for the plaintiff, he shall not be entitled to recover costs against the defendant, unless he shall have entered at the Patent Office, prior to the commencement of the suit, a disclaimer of all that part of the thing patented which was so claimed without right ; Provided, however, that no person bringing any such suit 392 LAW OF PATENTS. shall be entitled to the benefit of the provisions contained in this section, who shall have unreasonably neglected or delayed to enter at the Patent Office a disclaimer as aforesaid." i § 289. The result of these various enactments is, that, for so much of the invention as has been described in some pub- lic work anterior to the supposed discovery by the patentee, whether the description was known to him in point of fact, or not, — if it be a substantial and material part of the thing invented, and be claimed as new, — and for so much as had been previously patented, the patent is inoperative. But the mere previous knowledge or use of the thing in a foreign country will not defeat a patent here, issued to an original inventor, provided it had not been previously patented or described in a printed publication. § 290. It will be observed, that the same statute uses dif- ferent phraseology, in describing the kind of publication which is to have this effect. In the body of the 15th section of the Act of 1836, it is declared to be a description in " some pub- lic work ; " and, in the proviso of the same section, it is de- clared to be " any printed publication." This renders it somewhat doubtful, as to what kind of publication is intend- ed. The phrase, " some public work," would seem to point 1 In Reed v. Cutter, 1 Story, 590, 600, Mr. Justice Story said : " In respect to another point, stated at the argument, I am of opinion, that a dis- claimer, to be effectual for all intents and purposes, under the Act of 1837, ch. 45, (§ 7 and 9,) must be filed in the Patent Office before the suit is brought. If filed during the pendency of the suit, the plaintiff will not be entitled to the benefit thereof in that suit. But if filed before the suit is brought, the plaintiff will be entitled to recover costs in such suit, if he should establish, at the trial, that a part of the invention, not disclaimed, has been infringed by the defendant. Where a disclaimer has been filed, either before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof, if he has unreasonably neglected or delayed to enter the same at the Patent Office. But such an unreasonable neglect or delay will constitute a good defence and objection to the suit. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 393 to a class of regular established publications, or to some book publicly printed and circulated, so as to be open to the pub- lic ; while the phrase " any printed publication " is broad enough to include any description, printed in any form, and published or circulated to any extent and in any manner. Taking the whole section together, however, and looking to the apparent policy of the statute, it is probable that the in- tention of Congress was, to make it a conclusive presumption that the patentee had seen any printed description of the thing, which had been so printed and published as to be ac- cessible to the public ; but not to adopt that presumption in cases of printed descriptions, published and circulated in such a manner as not to be accessible either to the public or to him. K the presumption were adopted in cases of the latter class of publications, an original and meritorious inventor might be defeated of his patent, by showing that the thing had, in a foreign country, been privately described in a printed paper published to a single individual ; which certainly would not be a description in a " public work," although it would be a description in a " printed publication." When it is con- sidered that the statute excepts cases even where the thing had been known or used abroad, provided it had not been patented, or described in any printed publication, it seems reasonable to suppose that the publication intended is one to which the public could have access ; and this construction is fortified by the consideration that the defence enacted in this section, to which the proviso establishes the exception, is, that the thing had been described in " some public work." ^ 1 The statute of 1799, § 6, used only the phrase " described in some pub- lic work," and did not contain the proviso introduced into the Act of 1836. Marshall, C. J., in Evans v. Eaton, 3 Wheat, 454, 514, commenting on the former statute, said, " It may be that the patentee had no knovrledge of this previous use or previous description ; still his patent is void ; the law sup- poses lie may have known it." It is, therefore, by adopting a presumption of knowledge, that the law declares the patent void. But there could be no 50 394 LAW OF PATENTS. § 291. If this be so, it would seem to be a question for the jury, under all the circumstances under which the publication has taken place, to determine whether the description was so printed and published, as to be accessible to the public, where the publication took place. If it was so accessible, the pre- sumption is against the patentee, and his patent will be de- feated, notwithstanding he may not have seen it ; because the description was already in the possession of the public. §292. What, then, constitutes a "description?" No ju- dicial construction has yet been given to this term. It can scarcely be supposed, however, that a mere suggestion of the possibility of constructing the machine, or other thing, which may have been subsequently patented, is what the statute intends. The reason why the statute adopts the presump- tion of knowledge, on the part of the subsequent patentee, is, that a knowledge of the thing was already in the possession of the public. It makes knowledge and the means of know- ledge on the part of the public the same thing ; and, acting upon this principle, it holds that the public have acquired nothing from the specification of the patentee, which they did not possess before, and that the patentee has invented nothing, which he, as one of the public, could not have de- rived from the means of knowledge which the public before possessed.! Hence it is, that the production of a prior description, which was in the possession of the public, nega- tives the title of the patentee as the first inventor. But it follows necessarily, from this view of the principle on which reason or justice in adopting such a presumption, in cases where the printed description had not come into the possession of the public ; and it is manifest that the former statute did not mean to adopt it in such cases, since it uses only the phrase "pubhc -work." 1 A man cannot be said to be the inventor of that which has been exposed to public view, and which he might have had access to if he had thought fit." Lord Abinger, C. B., in Carpenter v. Smith, Webs. Pat. Cas. 535. KEMEDY FOR INFRINGEMENT BY ACTION AT LAW. 395 the law proceeds, that the description must be such as to give the public the means of knowledge, or, in other words, must of itself enable the public to practise the invention. It is not necessary that the invention should have been reduced to practice ; but, unless the description would enable the pub- lic, without further invention, to put the thing in practice, it cannot be said that a knowledge of that thing is in the posses- sion of the public. Accordingly, it has been laid down by two eminent writers on the Patent Law, that the description which is to have the effect of defeating a subsequent patent, ought to approach the character, and in some degree to an- swer the purpose of a specification, by serving as a direction for making, doing, or practising the thing which is the subject of the patent.^ But mere speculations or suggestions of an experimental kind, not stated in such a way as to serve for a practical direction, are entirely analogous in their charac- ter to abortive and unsuccessful experiments in practice. The Marquis of Worcester's Century of Inventions contained many hints and speculations, on which subsequent inventors have acted ; but as they were the mere speculations of an ingenious man, not reduced by him to practice, and not so stated, that the statement would answer for a rule of working, without the exercise of invention on the part of the public, ' 1 Phillips on Patents, p. 175. IMr. Webster (Pat. Cas. 719, note,) says : " But ■whatever may be the peculiar circumstances under which the publica- tion takes place, the account so published, to be of any effect in law as a publication, must, on the authority of the principal case, be an account of a complete and perfect invention, and published as such. If the invention be not described and published as a complete, perfected, and successful inven- tion, but be published as an account of some experiment, or by way of sug- gestion and speculation, as something which, peradventure, might succeed, it is not such an account as will vitiate subsequent letters-patent. It would appear to be a test not wholly inapplicable to cases of this nature, to inquire whether what is so published would be the subject of letters-patent, because, inasmuch as that which rests only in experiment, suggestion, and speculation, cannot be the subject of letters-patent, it would be unreasonable that what could not be the subject of letters-patent, supposing letters-patent granted in respect thereof, should vitiate letters-patent properly granted." 396 LAW OF PATENTS. they have not been held to have defeated the patents to which they give rise.i §293. The defendant, therefore, — to return to the consi- deration of this defence, — who gives notice of the statute defence of want of novelty, will not be defeated in it, if he proves a material part of the invention to have been known or used before the discovery by the patentee, provided he shows that the specification was made broader than the real discovery of the plaintiff, with " wilful default or intent to defraud or mislead the public." But if it was made broader than the real discovery, through accident or inadvertence, the patent will still be good, and an action may be maintained for so much of the invention or discovery as is bond fide the invention or discovery of the patentee, provided it is a mate- rial and substantial part of the thing patented, and is defi- nitely distinguishable from the other part which the patentee had no right to claim ; unless there has been an unreasonable neglect or delay to file the disclaimer.^ No costs, however, can be recovered in such an action, unless the plaintiff, before bringing his action, has filed in the Patent Office a disclaimer of all that part of the thing patented which his original specification should not have claimed. If the disclaimer is filed before the action is brought, but the entry of it at the Patent Office has been unreasonably neglected or delayed, the defence of a want of novelty in any material respect, from whatever cause the defect in the original specification arose, will be admitted as a bar to the action ; and the question of unreasonable neglect or delay will be a question of law for the Court. 1 See the observations of Lord Abinger, C. B., in Carpenter ?;. Smith, Webs. Pat. Cas. 534. 2 It seems that the 9th section was intended to cover inadvertences and mistakes of law, as well as of fact ; and, therefore, a claim of an abstract principle would be within its provisions. Wyeth v. Stone, 1 Story's E. 273, 295. See further as to Disclaimer, ante. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 397 § 294. Of course a defence which goes to the originality of a material and substantial part of the thing patented, the essence of the plaintiff's invention, as is most frequently the case, will not be affected by these provisions. § 295. Care is to be taken, therefore, in framing this de- fence, to ascertain, in the first place, whether the whole or only a part of the substance of the thing patented is open to the objection of prior use or knowledge ; and, in the second place, whether a disclaimer has been filed. If a disclaimer has been filed in reasonable time, the defence of a want of novelty that goes only to a part of the thing patented, and still leaves a material and substantial part unaffected by the objection, will not be an answer to the action, but will simply prevent the recovery of costs. But a defence which goes to the originality of the whole patent, and leaves nothing new that is material and substantial, and capable of distinction as the subject-matter of the plaintiff's invention, will be an answer to the action, notwithstanding any disclaimer. It is obviously necessary, therefore, to specify, in the notice of de- fence, the particular parts of the thing patented which it is intended to attack.^ § 295 a. The book must not only be specified, but the place in the book in which the alleged description is to be found. Thus, where the defendant specified in his notice that the invention claimed by the plaintiff was described in Ure's Dictionary of Arts, &c., and had been used by Andrew Ure, of London, it was held not to be competent to the defendant to give the dictionary in evidence, no specification having been given of the place in the book where the descrip- tion might be found ; and, also, that, as the notice did not state the place where Andrew Ure had used the invention. • See further an elaborate construction of the 7th and 9th sections, as to a disclaimer, in the opinion of JNIi'. Justice Story, in the case of Wyeth V. Stone, 1 Story's R. 273. 398 LAW OP PATENTS. the book was not competent evidence that Andrew Ure, of London, had a prior knowledge of the thing patented.^ 1 Silsby V. Foote, 14 Howard, 218, 222. In this case, Mr. Justice Curtis, who delivered the opinion of the Court, said : " In the course of jthe trial, the defendants offered to put in evidence two articles contained in Ure's Dictionary of Arts, Manufactures, and Mines, to prove that the patent declared on was not valid. The plaintiff objected, and the evidence was excluded. It is incumbent on the defendants to show their right to intro- duce this evidence. To do so, they rely on the fifteenth section of the Act of July 4th, 1836, 5 Stat.at Large, 123. This section enables the defendant, in any action on the casefoundedonletters-patent, to give in evidence, under the general issue, any special matter of which notice in writing may have been given to the plaintiff, or his attorney, thirty days before the trial, tend- ing to prove, among other things, that the patentee was not the original and first inventor of the thing patented, or of some substantial and material part thereof claimed as new, or that it had been described in some public work, anterior to the supposed discovery thereof by the patentee ; and, whenever the defendant relies, in his defence, on the fact of a previous invention, knowledge or use of the thing patented, he is required to state, in his notice of special matter, the names and places of residence of those whom he intends to prove possessed a prior knowledge of the thing, and where the same has been used. The notice given in this case was as follows : ' The patentee was not the original and first inventor or discoverer of a substantial and material part thereof, claimed as new. That it had been described in a public work, called " Ure's Dictionarj' of Arts, Manufactures, and Mines," anterior to the supposed invention thereof by the patentee ; and also had been in pubUc use and known before that time, and used by Andrew Ure, of London, the late M. Bonnemair, of Paris, and George H. McClary, of Seneca Falls, New York.' Ure's Dictionary contains upwards of thirteen hundred pages, and the articles which the defendants offered to read were entitled ' Thermostad ' and * Heat Regulator.' The first question is, whether this was a sufficient notice of the special matter, tending to prove that the thing patented,'or some sub- stantial part thereof, claimed as new, had been described in a printed publi- cation. We are of opinion it was not. The act does not attempt to pre- scribe the particulars which such a notice shall contain. It simply requires notice. But the least effect which can be allowed to this requirement, is, that the notice should be so full and particular as reasonably to answer the end in view. This end was not merely to put the patentee on inquiry, but to relieve him from the necessity of making useless inquiries and researches, and enable him to fix with precision upon what is relied on by the defendants, and to prepare himself to meet it at the trial. This highly salutary object REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 899 § 296. Another of the statute defences is, that the patentee had allowed his invention to become public before his appli- should be kept in view, and a corresponding disclosure exacted from the defendant of all those particulars which he must be presumed to know, and Tvhich he may safely be required to state, without exposing him to any risk of losing his rights. Less than this would not be reasonable notice, and, therefore, would not be such a notice as the Act must be presumed to have intended. Now, we do not perceive that the defendants would be exposed to the risk of losing any right, by requiring them to indicate in their notice, what par- ticular things, described in the printed publication, they intended to aver were substantially the same as the thing patented. This they might have done, either by reference to pages, or titles, and perhaps in other ways, for the particular manner in which the things referred to are to be Identified, must depend much upon the contents of the volume, and their arrangement. It has been urged that a defendant may not have access to the book in season for the notice. But it must be remembered that, some considerable time before it is necessary to give such a notice, the defendant has begun to use the thing patented, which, prima facie, he has no right to use, and it would seem to be no injustice, or hardship, to expect him, before he begins to in- fringe, to ascertain that the patentee's title is not valid, and, if Its invaUdlty depends on what Is in a public work, that he should inform himself what that work contains, and, consequently, how to refer to It. We do not think It necessary so to construe this act, designed for the benefit of patentees, as to enable the defendant to do, what, we fear, is too often done, to Infringe first, and look for defence afterwards. Nor does a notice, that somewhere. In a volume of thirteen hundred pages, there Is something which tends to prove that the thing patented, or some substantial and material part thereof, claimed as new, had been described therein, relieve the patentee from the necessity of making fruitless researches, or enable him to fix, with reasonable cei-tainty, on what he must encounter at the trial. Upon this ground, therefore, the exception cannot be supported. But it Is further urged that the book ought to have been admitted as evi- dence ; that Andrew Ure, of London, had a prior knowledge of the thing patented. This view cannot be sustained. For, although the name of Andrew Ure, of London, is contained in the notice of persons who are alleged to have had this prior knowledge, yet the defendants have not brought themselves within the Act of Congress, because the notice does not state, ' where the same was used,' by Andrew Ure. Besides, Inasmuch as the same section of the statute provides that a prior invention in a foreign country shall not avoid a patent, otherwise valid, unless the foreign invention had been described in a printed publication, the defendants are thrown back upon that 400 LAW OF PATENTS. cation for a patent, or, as it is expressed in the statute, that it " had been in public use, or on sale, with the consent or allowance of the patentee, before his application for a patent." This provision is intended to embody the defence of an aban- donment or dedication to the public of his invention by the patentee, prior to his application for a patent. The question whether a patentee, by any and what degree of use of his invention, before his application for a patent, could lose his inchoate right in the thing invented, and not be able after- wards to resume it at his pleasure, arose before the statute of 1836 was passed, and the Supreme Court of the United States declared that an inventor might undoubtedly abandon his invention, and surrender or dedicate it to the public ; and that the question which generally arises is, whether the acts or acquiescence of the party, furnish, in the given case, satis- factory proof of such an abandonment or dedication to the public. The Court held, that the true construction of the then existing law was, that the first inventor cannot acquire a good title to a patent, if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent ; that such a voluntary act, or acquiescence in the public sale or use, is an abandonment of his right ; or rather creates a disability to comply with the terms and conditions of the law, on which alone the public officer is authorized to grant a patent.^ In a more recent case, the same court re-affirmed this construction of the Pa- tent Laws, and held that the right of an alien patentee was vacated, in the same manner, by a foreign use or knowledge of his invention, under the then existing statutes.^ § 297. It was the object of the clause now under consider- ation, to make this defence of a prior abandonment or dedi- clause of the act wlaicli provides for that defence, arising from a printed pub- lication , ■which has already been considered." 1 Pennock v. Dialogue, 2 Peters, 1. 2 Shaw V. Cooper, 7 Peters, 292. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 401 cation to the public available under the general issue, upon notice of the facts intended to be proved.^ By "public use" is meant use in public ; that is to say, if the inventor himself makes and sells the thing to be used by others, or it is made by one other person only, with his knowledge and without objection, before his application for a patent, d fortiori, if he suffers it to get into general use, it will have been in " public use." 2 But where the patentee alone makes the thing for the purposes of experiment and completion, without selling it to be used by others, the term " public use " is not applicable.^ § 298. An important question next arises, as to what will constitute proof of the " consent and allowance " of the pa- tentee to the public use or sale " of his invention, before his application. In the first place, a knowledge of such public use or sale by others, without objection on his part, will go far towards raising the presumption of an acquiescence, and, in some cases, will be a sufficient proof of it. The question in such cases is as to his consent ; and, if knowledge of the use of his invention by others is brought home to him, and no exclusive right has been asserted by him against that use, '> his silence will furnish very strong evidence that he has waiv- ed his right."* If the evidence shows along acquiescence, or a very general use, it will be conclusive.^ § 299. In the second place, although acquiescence cannot be presumed without knowledge, such knowledge may be prc- ' A plea that the thing claimed to have been invented, was in use and for sale before the application, &c., is demurrable, unless it aver an abandonmant, or that the sale, &c., was more than two years before the application. Root V. Ball, 4 M'Lean, 177. 2 Pennock v. Dialogue ; Shaw v. Cooper ; Melius v. Silsbee, 4 Mas. 108. 3 Shaw V. Cooper. 4 Melius V. Silsbee, 4 Mas. 5 Ibid. ; Shaw V. Cooper. 51 402 LAW OF PATENTS. sumed from the circumstances, and is not always required to be proved by direct evidence.^ § 300. In the third place, no particular lapse of time is necessary to be shown, after knowledge and acquiescence are established, in order to prove an abandonment or dedication to the public. In one of the cases, the invention was made in the year 1804, and suffered to go into general use without any claim of an exclusive right, or any objection, and without receiving any compensation, until the year 1822.2 jj^ ano- ther case, the invention was completed in 1811, and the letters-patent were obtained in 1818 ; in the interval, a single individual had made and publicly sold large quantities of the thing patented, under an agreement with the inventor as to price.3 In a third case, the inventor, who was a foreigner, came to this country in 1817, and might lawfully have ap- plied for a patent in 1819, but did not do so until three years afterwards. It appeared that he invented the instrument in 1813 or 1814, and made it known to certain persons in Eng- land, by or through whom, contrary to his intention, it was publicly used and sold there.* In a fourth case, in England, the patentee had sold the article, in the public market, four months before the date of the patent.^ In all these cases, the patentee was held to have abandoned or dedicated to the public his right in the invention. § 301. But, on the other hand, it is a still further question, what constitutes a public use, with the consent or allowance of the patentee ? What acts, in other terms, within a longer or shorter period of time, or what permission to use, granted 1 Shaw V. Cooper, 7 Peters, 292, 321. 2 Melius V. Silsbee, 4 ]\las. 3 Pennock v. Dialogue. 4 Shaw V. Cooper, 7 Peters, 292. 5 Wood V. Zimmer, 1 Holt, N. P. C. CO. REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 403 or allowed to several persons, or restricted to a single instance, or what use by the patentee himself, will amount to an aban- donment or dedication to the public ? Is the intention with which the acts are done, or the use permitted, an element in the question, or is the intention wholly immaterial, provided certain acts are done, or a certain use is permitted ? In de- termining these questions, it is necessary to discriminate between the cases of a use permitted to others, or of a know- ledge imparted to others, and the exercise or practice of the invention by the patentee himself. § 302. In the case of Shaw v. Cooper, already referred to, the Supreme Court of the United States said, that the inten- tion of the inventor is not the true ground in these cases ; that, " whatever may be his intention, if he suffers the in- vention to get into public use, through any means what- soever, without an immediate assertion of his right, he is not entitled to a patent ; nor will a patent, obtained under such circumstances, protect his right." ^ The meaning of this obviously is, that, no matter what the intention of the patentee was, in imparting to another a knowledge of his invention, if the person or persons to whom he had so imparted it, after- wards, though fraudulently, use the invention in public, and the patentee looks on without objection or assertion of his right, the public will have become possessed of the invention, and the patentee cannot resume his right in it by obtaining a patent. This meaning is apparent from other parts of the opinion in the same case ; for the court say, that, if the in- vention has become known to the public through fraudulent means, the patentee should assert his right immediately, and take the necessary steps to legalize it.^ So, too, it is appa- 1 7 Peters, 292, 323. ' 2 " Vigilance is necessary to entitle an individual to the privileges secured under the patent law. It is not enough that he should show his right by- invention, but he must secure it in the mode required by law. And if the invention, through fraudulent means, shall be made known to the public, 404 LAW OF PATENTS. rent, from the opinion of the same court in Pen nock v. Dia- logue, that it is the voluntary acquiescence of the inventor in he should assert his right immediately, and take the necessary steps to legal- ize it. The patent law was designed for the public benefit, as well as for the benefit of inventors. For a valuable invention, the public, on the inventor's complying with certain conditions, give him, for a limited time, the profits arising from the sale of the thing invented. This holds out an inducement for the exercise of genius and skill, in making discoveries which may be use- ful to society and profitable to the discoverer. But it was not the intention of this law to take from the public that of which they were fairly in pos- session. In the progress of society, the range of discoveries in the mechanic arts, in science, and in all things which promote the public convenience, as a matter of course, will be enlarged. This results from the aggregation of mind, and the diversities of talents and pursuits, which exist in every intelligent com- munity. And it would be extremely impolitic to retard or embarrass this advance, by withdrawing from the public any useful invention or art, and making it a subject of private monopoly. Against this consequence, the legislature have carefully guarded in the laws they have passed on the sub- ject. It is undoubtedly just that every discoverer should realize the bene- fits resulting from his discovery, for the period contemplated by law. But these can only be secured by a substantial compliance with every legal requi- site. His exclusive right does not rest alone upon his discovery, but also upon the legal sanctions which have been given to it, and the forms of law with which it has been clothed. No matter by what means an invention may be conmaunicated to the pub- lic, before the patent is obtained ; any acquiescence in the public use, by the inventor, will be an abandonment of his right. If the right were asserted by him who fraundulently obtained it, perhaps no lapse of time could give it validity. But the public stand in an entirely dliferent relation to the in- ventor. The invention passes into the possession of innocent persons, who have no knowledge of the fraud, and, at a considerable expense, perhaps, they appropriate it to their own use. The inventor or his agent has full knowledge of these facts, but fails to assert his right ; shall he afterwards be permitted to assert it with efi"ect ? Is not this such evidence of acquiescence in the public use, on his part, as justly forfeits his right ? If an individual witness a sale and transfer of real estate, under certain circumstances, in which he has an equitable lien or interest, and does not make known this interest, he shall not afterwards be permitted to assert it. On this principle it is, that a discoverer abandons his right, if, before the REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 405 the public use, and not his voluntarily imparting the know- ledge to the person who fraudulently or otherwise uses it in public, that fastens upon him the presumption of a dedica- tion.i It is also clear, that, when the act or acts of user were by way of experiment, in order to perfect the invention, the inventor does not lose his right. obtainment of his patent, his discovery goes into public use. His right would be secured by giving public notice that he was the inventor of the thing used, and that he should apply for a patent. Does this impose any thing more than reasonable diligence on the inventor ? And would any thing short of this be just to the public ? The acquiescence of an inventor in the public use of an invention, can in no case be presumed, when he has no knowledge of such use. But this knowledge may be presumed from the circumstances of the case. This will, in general, be a fact for the jury. And if the in- ventor do not, immediately after this notice, assert his right, it is such evidence of acquiescence in the public use, as forever afterwards to prevent him from asserting it. After his right shall be perfected by a patent, no presumption arises against it from a subsequent use by the pubUc. When an inventor applies to the department of state for a patent, he should state the facts truly ; and, indeed, he is required to do so, under the solemn obligations of an oath. If his invention has been carried into public use by fraud, but, for a series of months or years, he has taken no steps to assert his right ; would not this afford such evidence of acquiescence as to defeat his application, as effectually as if he failed to state that he was the original inventor ? And the same evidence which should defeat his applica- tion for a patent, would, at any subsequent period, be fatal to his right. The evidence he exhibits to the department of state is not only ex parte, but interested ; and the questions of fact are left open, to be controverted by any one who shall think proper to contest the right under the patent. A strict construction of the act, as it regards the public use of an inven- tion, before it is patented, is not only required by its letter and spirit, but also by sound poUcy. A term of fourteen years was deemed sufficient for the enjoyment of an exclusive right of an invention by the inventor. But if he may delay an application for his patent, at pleasure, although his inven- tion be carried into public use, he may extend the period beyond what the law intended to give him. A pretence of fraud would afford no adequate security to the public in this respect, as artifice might be used to cover the transaction. The doctrine of presumed acquiescence, where the public use is known, or might be known to the inventor, is the only safe rule which can be adopted on this subject." 7 Peters, 319, 320, 321, 322. 1 2 Peters, 1, 23. 406 LAW OF PATENTS. § 303. Hence, it appears, that the intention with which the inventor did the acts, which are relied on as proof of "public use," is material, unless the evidence goes to the extent of showing, that the invention had got beyond the control of the inventor, and he had not taken any steps to prevent its being thus situated. In other words, it may be a material element, in determining whether the presumption of acquiescence in public use arises, to ascertain whether the inventor used the invention himself, or imparted a knowledge of it to others, with or without an intention to limit such use or knowledge, in respect to time, extent, or object. § 304. Where a party practises his invention himself, for the purposes of experiment or completion, before he takes out a patent, the inference that he intends to surrender his invention to the public, does not arise ; and, consequently, a dedication cannot be proved by evidence that shows only experimental practice by the inventor, whether in public or in private.! Indeed, it may be stated, as a general test, in i Wyeth V. Stone, 1 Story's R. 271, 280. In this case, Mr. Justice Story said : — "In tlie next place, as to the supposed public use of Wyeth's machine, before his application for a patent. To defeat his right to a patent, under such circumstances, it is essential that there should have been a public use of his machine, substantially as it was patented, with his consent. If it was merely used occasionally, by himself, in trying experiments, or, if he allowed only a temporary use thereof, by a few persons, as an act of personal accom- modation, or neighborly kindness, for a short and limited period, that would not take away his right to a patent. To produce such an eflfect, the public use must be either generally allowed or acquiesced in, or, at least, be unli- mited in time, or extent, or object. On the other hand, if the user were without "Wyeth's consent, and adverse to his patent, it was a clear violation of his rights, and could not deprive him of his patent." See, also, Ryan v. Goodwin, 3 Sumner, 518 ; Bentley v. Fleming, 1 Car. & Kirw. 587. This last case shows a strong tendency to limit the effect of use in public, by the intention of the patentee. The patent, in question, had been obtained for making a card machine ; and there was evidence, that, about five or sLx weeks before the letters-patent were obtained, the inventor, one Thornton, had lent the machine to one N., in order that he might try REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 407 cases of a supposed dedication, through the using, exercis- ing, or practising the invention by the patentee himself, pre- vious to his application for a patent, that, whenever the evidence stops short of proving such a use, exercise, or prac- tice, for the purpose of gain, a "public use" will not be proved.^ § 305. It has been held, in England, where the " public use " must be a public use in England, that the making, in England, of a single pair of wheels, the subject of the patent, under the direction of the patentee, but under an injunction of secrecy, to be sent abroad, for a person who intended to take a share in the patent, was not a public use within the realm.2 But, as our law stood before the year 1839, if the whether it would set the teeth of the cards. There was, also, evidence that N.'s room was in a mill, and that men were constantly going backwai'ds and forwards, to and from the said room. It appeared, moreover, that, for some weeks before the time at which the machine was lent to N., it had been in complete working condition. On this evidence, it was submitted, on the part of the defendant, that the plaintiff was out of Court — first, on the ground that the machine had been publicly used in N.'s room, which was a public room, before the granting of the letters-patent ; and, on this point, the case of Wood r. Zimmer was referred to. Cresswell, J., said : — " Have you any case that goes that length ? The case referred to, was the case of an absolute sale ; but, here, there is no evidence that the machine was given to N., for the purpose of giving it publicity. The evidence merely is, that Thornton lent the machine to N., in order that he might discover whether it really was worth while to take out a patent for it, or not. I cannot stop the case on that point." 1 Post, § 305, note. 2 Morgan v. Seaward, Webs. Pat. Cas. 189, 193. In this case, Parke, B., said : — " The evidence was, that, before the date of the patent, (which was the 22d of July, 1829,) Curtis, an engineer, made for Morgan two pairs of wheels, upon the principle mentioned in the patent, at his own factory. Galloway, the patentee, gave the instructions to Curtis, under an injunction of secrecy, because he was about to take out a patent. The wheels were completed and put together, at Curtis's factory, but not shown, or exposed to the view, of those who might happen to come there. After remaining a short time, the wheels were taken to pieces, packed up in cases, and shipped, 408 LAW OF PATENTS. inventor sold to any one, who might choose to buy, although it was only a single specimen of his invention, and sold for in the month of April, on board a vessel in the Thames, and sent, for the use of the Venice and Trieste Company, of which Morgan was managing director, and which carried on its transactions abroad, but had shareholders in England. Curtis deposed, that ' they were sold to the Company,' without saying by whom; which may mean, that they were sold by Curtis to Mor- gan for the Company, and Morgan paid Curtis for them. Morgan and Gal- loway employed an attorney, who entered a caveat against any patent, on the second of Iklarch, and afterwards solicited the patent in question, which was granted to Galloway, and assigned to Morgan. Upon these facts, the question for us to decide is, whether the jury must have necessarily found for the defendants, or, whether they might have found that this invention, at the date of the letters-patent, was new, in the legal sense of that word. The words of the statute are, that grants are to be good, ' of the sole work- in"' or making of any manner of new manufactures within this realm, to the first and true inventor or inventors of such manufactures, which others, at the time of the making of such letters-patent and grants, did not use ; ' and the proviso, in the patent in question, founded on the statute, is, that, if the invention be not a new invention, as to the public use and exercise thereof in England, the patent should be void. The word ' manufacture,' in the statute, must be construed in one of two ways ; it may mean, the machine when completed, or the mode of constructing the machine. If it mean the former, undoubtedly there has been no use of the machine, as a machine, in England, either by the patentee himself, or any other person ; nor, indeed, any use of the machine in a foreign coimtry, before the date of the patent. If the term ' manufacture,' be construed to be, ' the mode of constructing the machine,' there has been no use or exercise of it in England, in any sense which can be called ' public' The wheels were constructed under the direction of the inventor, by an engineer and his servants, with an injunction of secrecy, on the express ground, that the inventor was about to take out a patent, and that injunction was observed; and this makes the case, so far, the same as if they had been constructed by the inventor's own hands, in his own private workshop, and no third person had seen them, whilst in progress. The operation was disclosed, indeed, to the plaintiff, Morgan, but there is sufficient evidence that Morgan, at that time, was con- nected with the inventor, and designing to take a share in the patent. A disclosure of the nature of the invention to such a person, under such cir- cumstances, must, surely, be deemed private and confidential. The only remaining circumstance is, that Morgan paid for the machines, with the privity of Galloway, on behalf of the Venice and Trieste Steam Company, REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 409 profit on it, as an invention, such a sale would be a " public use ; " and the unlimited nature of the object, with which a of which he was the managing director ; but there was no proof that he had paid more than the price of the machines, as for ordinary work of that description ; and the jury would also be well warranted in finding, that he did so with the intention that the machine should be used abroad only, by this company, which, as it carried on its transactions in a foreign country, may be considered as a foreign company ; and the question is, whether this solitary transaction, without any gain being proved to be derived thereby, to the patentee or to the plaintiff, be a use or exercise, in England, of the mode of construction, in any sense which can be deemed a use by others, or a public use, within the meaning of the statute and the patent. We think not. It must be admitted, that. If the patentee himself had, before his patent, constructed machines for sale, as an article of commerce, for gain to himself, and been in the practice of selling them publicly, that is, to any one of the public who would buy, the invention would not be new at the date of the patent. This was laid down in the case of Wood v. Zimmer, (Holt. N. P. C. 58, and Webs. Pat. Cas. 44, n.) and appears to be founded on reason ; for, if the inventor could sell his invention, keeping the secret to himself, and, when it was likely to be discovered by another, take out a patent, he might have, practically, a monopoly, for a much longer period than fourteen years. Nor arc we prepared to say, that, if such a sale was of articles that were only fit for a foreign market, or to be used abroad, it would make any difference ; nor, that a single instance of such a sale, as an article of commerce, to any one Avho chose to buy, might not be deemed the commencement of such a practice, and the public use of the Invention, so as to defeat the patent. But, we do not think that the patent is vacated, on the ground of the want of novelty, and the previous public use, or exercise of it, by a single instance of a transaction such as this, between the parties, connected as Galloway and the plaintiff are, which is not like the case of a sale to any individual of the public, who might wish to buy ; in which it does not appear, that the patentee has sold the article, or is to derive any profit from the construction of his machine, nor that Morgan himself is ; and in which the pecuniary payment may be referred merely to an ordinary compensation, for the labor and skill of the engineer, actually employed in constructing the machine ; and the transaction might, upon the evidence, be no more, in effect, than that Galloway's own servants had made the wheels ; that Morgan had paid them for the labor, and afterwards sent the wheels, to be used by his own copartners, abroad. To hold this to be what is usually called a publication of the invention in England, would be to defeat a patent, by much shghter circumstances than have yet been permitted to have that effect." 52 410 LAW OF PATENTS. knowledge of the invention was imparted, would prevent him from resuming his exclusive right, by a subsequent patent.^ It will presently be stated, how far the law has been modified in this respect. § 306. Another limitation to the doctrine of presumptive dedication, or public use, with the consent, &c., is found in the case of a piratical user of the invention, by a party to whom the inventor has imparted a knowledge of it in confi- dence, before he has applied for a patent. Many inventions can be perfected and carried into practice only through the aid of workmen, servants and other employees. We have seen that an inventor may intrust another person, confiden- tially, with a knowledge of his invention, for certain limited purposes; and, if such a person afterwards fraudulently makes public the knowledge so acquired, the authorities seem to be agreed, that the inventor may, if he takes immediate steps to give notice of his exclusive right, obtain a valid patent.^ The words of the statute, describing the defence, now under consideration, make it clear that, if the invention has come into public use through a breach of confidence, it cannot be said to be in public use " with the consent or allowance " of the patentee ; it is only when he has been silent, after it has so become public, that the presumption of consent and allow- ance arises.3 The Act of 1839, as will appear hereafter, has made this point still more clear. Another instance of a use which will not expose the patentee to the consequences of this defence, is that suggested, on more than one occasion, by Mr. Justice Story, where the use has been permitted to others, for other limited purposes than those of experiment or 1 Ihid. Wood V. Zimmer, 1 Holt, N. P. C. 60. 2 Pennock v. Dialogue, 2 Peters, 1 ; Shaw v. Cooper, 7 Peters, 292 ; Mel- ius V. Sllsbee, Grant v. Pvaymond, 6 Peters, 248, 249 ; McCIurg v. Kings- land, 1 Ho-ward, 202, 207. 3 Ryan v. Goodwin, 3 Summer, 518 ; Pierson v. The Eagle Screw Com- pany, 3 Story's E. 406, 407, 408. REMEDY FOR INFRINGEMENT BY ACTION AT LAAV. 411 completion, as from motives of neighborly kindness, and the like.i The test that is afforded by the case of Morgan v. Seaward, above cited, is applicable here also ; namely, that the evidence excludes the supposition that the patentee had put the thing into public use, for the purpose of profit on it, as an invention.^ If a patentee could show clearly, that he had allowed to others a limited use of his invention, not for his own profit, but for their accommodation, in a manner consistent with a clear intention to hold the exclusive privi- lege, and the invention had not got beyond his control, with his apparent acquiescence, he would not be within the mis- chief of this part of the statute. Of course, mere delay to take out a patent, unaccompanied by public use or sale of the thing, with the consent or allowance of the patentee, before his application, however long may be the interval between the completion of the thing and the application, will have no effect upon the patent.^ Mere delay has no other importance, than as it tends to show acquiescence in such public use as may have occurred in the mean time ; or to show that the acts of the inventor went beyond a use, or permission to use, for the purpose of experiment, or other limited object. § 307. It now remains to be stated, how far this defence of a " prior public use or sale with the consent or allowance" 1 Melius V. Silsbee, 4 Mas. Ill ; Wyeth v. Stone, 1 Story's R. 280, 281 ; Ryan v. Goodwin, 3 Sumner, 518. 2 Cited a7ite. 3 Ryan r. Goodwin, 3 Sumner, 519. In the case of Bentley v. Fleming, 1 Car. & Kirw. 587, 588, it was contended that, inasmuch as the machine in question was a complete workable machine for a long period before the letters-patent were taken out, it did not form the subject of a patent at all. Cresswell, J. — "A man cannot enjoy his monopoly by procuring a patent, after having had the benefit of the sale of his invention. But you cannot contend, that, if a man were to keep his invention shut up in his room for twenty years, that circumstance, merely, would deprive him of his right to obtain a patent for it." 412 LAW OF PATENTS. of the patentee has been restricted or modified by subsequent legislation. Under this clause of the Act of 1836, a use of the invention by a single person, or a sale of the thing in- vented to a single person, might, as we have seen, amount to a public use or sale, with the consent or allowance of the patentee. To remedy the inconvenience arising from this operation of the law, the Act of 1839, § 7, provided " that every person or corporation, who has, or shall have purchased or constructed any newly-invented machine, manufacture, or composition of matter, prior to the application, by the in- ventor or discoverer, for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter, so made or purchased, without liability therefor to the inventor, or any other person interested in such invention ; and no patent shall be held to be invalid, by reason of such purchase, sale, or use, prior to the application for a patent, as aforesaid, except on proof of abandonment of such invention to the public ; or, that such purchase, sale, or prior use, has been for more than tw^ years prior to such application for a patent." § 308. This enactment enables a patentee to permit the use of his invention, by individuals, before his application, with more safety than he formerly could. Such use is not to invalidate the patent, except on proof of abandonment of the invention to the public, or that it had been continued for more than two years prior to the application for a patent. The question arises upon this provision, then, whether the particular purchase, sale, or prior use, may, of itself, under some circumstances, furnish proof of abandonment to the public, or whether such an abandonment must be proved by other cases, and by other evidence dehors the particular pur- chase, sale, or prior use, that happens to be in question. The obvious construction of the act is, that a purchase, sale, or prior use, before the application for a patent, shall not invali- date it, unless it amounts to an abandonment to the public ; REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 413 a purchase, sale, or prior use, shall not have this effect, per se, but, if connected with facts which show an abandonment to the public, or if it has been for more than two years prior to the application, it will have this effect.^ Thus, in the case of McClurg V. Kingsland, where the defendants used the invention for four months before the application of the in- ventor for a patent, such use being in public, with the con- sent and allowance of the patentee, he being in their employ, and making a part of the apparatus by which the invention was to be applied, but receiving no compensation for the use of his invention, and not giving any notice to the defendants not to use his invention, until, on a misunderstanding upon ano- ther subject, he left their employment ; the Supreme Court of the United States said that it would be no strained construc- tion, under such circumstances, to hold that the patent, sub- sequently obtained, was void ; although the decision merely went to the point, that the acts of the patentee justified the presumption of a license to the defendants.^ § 309. The words of the statute which thus authorizes a public use or sale by, or to individuals, prior to the applica- tion for a patent, make the subject ef such use or sale, " any newly invented machine, manufacture, or composition of matter;" and the purchaser is authorized to use, and vend to others to be used, " the specific machine, manufacture, or composition of matter," without liability to the inventor, &c. ; and then the statute declares, that the patent shall still be valid, notwithstanding such prior use or sale, except on proof of the abandonment of " such invention" to the public, &c. It might admit of some doubt, upon this language, whether the invention of a method of manufacture, a pro- cess, or an art, or any thing but a machine, a manufacture, or a composition of matter, is within the scope of the provision. 1 See the comment of INIr. Justice Story, on this statute, in Pierson v. The Eagle Screw Company, 3 Story's R. 402, 405, 507, cited ante. 2 1 Howard, 202, 208, 414 LAW OF PATENTS. and whether the purchaser could do any thing more than use, or vend to others to be used, the specific thing which he had purchased. But the Supreme Court of the United States have construed the terms, " newly invented machine, manu- facture, or composition of matter," to mean, " the invention patented," whatever it may be ; and the words, " the specific machine," to refer to the thing as originally invented, of which the right is afterwards secured by a patent ; so that, according to the precedent afforded by the case in which this construction was adopted, this statute embraces what- ever may be the subject-matter of a vaHd patent, although it may be a process, or method of manufacture, and not a machine, &c.i ^ McClurg V. Klngsland, 1 Howard, 202, 209. The Court said : " At the trial below and here, the plaintiff's counsel have contended, that this act can- not apply to the present case, inasmuch as the protection it affords to the per- son who had the prior use, is confined to the specific machine, &c., and does not extend to such use of the invention, or thing patented, if it does not con- sist of a machine, &c., as contradistinguished from the new mode or manner in which an old machine or its parts operates, so as to produce the desired effect : but, we think that the law does not admit of such construction, whether we look at its words or its manifest objects, when taken in connec- tion with former laws, and the decisions of this Court in analogous cases. " The words ' such invention ' must be referred back to the preceding part of the sentence, in order to ascertain the subject-matter to which it relates, which is none other than the newly invented machine, manufacture, or com- position of matter constituting the thing patented, otherwise these woi'ds become senseless when the invention is not strictly of a machine, &c. Now, in the present case, we find the invention consists solely in the angular direction given to the tube through which the metal is conducted into the cylinder in which the roUer is cast. Every part of the machinerj- is old, the roller itself is no part of the invention, and cannot be the machine, manufac- ture, or composition of matter contemplated by Congress, nor can the word * specific ' have any practical effect, unless it is apphed to the thing patented, whatever it may be, without making a distinction between a machine, &c., and the mode of producing a useful result, by the mere direction given to one of the parts of an old machine. Such a construction is not justified by the language of the law, and would defeat both of its objects. If it does not embrace the case before us, the consequence would be that the use of the invention, under the circumstances in evidence, would, according to the deci- REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 415 § 310. The result, therefore, of the different statute provi- sions and the authorities is, that this defence of a prior public use. or sale, with the consent or allowance of the patentee, can now be made good so as to invalidate a patent, only by showing an abandonment to the public, or that the use or sale dates from a period more than two years before the application for a patent ; that such an abandonment will not sion in 2 Peters, 14, 15, invalidate the patent ; for, if the act operates to save the avoidance of the patent, it must, of consequence, protect the person who uses the invention before the application for a patent. Both objects must be effected, or both must fail, as both parts of the act refer to the same thing, and the same state of things, as affecting the person using the newly-invented machine, or the thing patented, as well as the inventor. Had the words ' invention,' or ' thing patented,' been used instead of machine, &c., there could have been no room for doubt of the appUcation of the act to the pre- sent case ; and, by referring to the phraseology of the different acts of Con- gress, denoting the invention, it is apparent that, though there is a difference in the words used, there is none as to their meaning or reference to the same thing. Thus, we find in the fourteenth section of the Act of 1836, relating to suits for using ' the thing whereof the exclusive right is secured by any patent ; ' in the fifteenth, ' his invention, his discovery, the thing patented,' ' that which was in fact invented or discovered,' ' the invention or discovery for which the patent issued,' ' that of which he Avas the first inventor.' In the first section of the Act of 1839, ' any patent for any invention, discovery, or improvement,' ' inventions and discoveries ; ' in the second section, ' the invention ; ' in the third, * invention or discovery ;' in the fourth, ' patented inventions and improvements ; ' in the fifth, ' the thing as originally in- vented.' 2 Story, 2510, 2511, 254G. " We therefore feel bound to take the words ' newly-invented machine, manufacture, or composition of matter,' and ' such invention,' in the Act of 1839, to mean ' the invention patented,' and the words ' specific machine,' to refer to ' the thing as originally invented,' whereof the right is secured by patent ; but not to any newly-invented improvement on a thing once patented. The use of the invention, before anappHcation for a patent, must be the spe- cific improvement then invented and used by the person who had purchased, constructed or used the machine to which the invention is applied ; so con- strued, the objects of the Act of 1839 are accomplished ; a different construc- tion would make it necessary to carry into all former laws the same literal exposition of the various terms used to express the same thing, and, thereby, changing the law according to every change of mere phraseology, make it a labyrinth of inextricable confusion." 416 LAW OF PATENTS. be proved by the particular act of use or sale alone, but that the act of use or sale may be attended with such circum- stances as to amount to an abandonment ; and that the aban- donment may also be proved by other acts or omissions disconnected with the particular use or sale, which the pa- tentee may have allowed to individuals, and which he can show did not alone amount to an abandonment.^ § 311. The next special defence stated in the Act of 1836, is, " that the patentee had surreptitiously or unjustly obtained the patent for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting and perfecting the same." This provision was intended to embrace the case of a patent being obtained fraudulently, when the party obtaining it was not the inventor, and also the case of two independent inventors, where the one makes his application before the other, who was the first inventor, and so obtains a patent for that which was previously in- vented by another. 4 312. With regard to the first case, of a patent obtained by a person not the inventor, by a fraud on the rights of the real inventor, it is sufficient to observe that such a defence, if made out, would be a complete bar to the action, upon gene- ral principles, as well as upon other provisions of the statute. One of the modes in which a patent may be thus surrepti- tiously obtained, is, by obtaining a knowledge of the inven- tion from the public records where the inventor has deposited a description of it. When the real inventor has filed such a description at the Patent Office, or has obtained a patent, he has given notice to every subsequent applicant for a patent for the same thing, of the fact that he invented it ; and, although others may not afterwards be able to offer direct 1 As to an abandonment or dedication after the patent has been obtained, see the case Wyeth v. Stone, 1 Story's R. 73. KEMEDT FOR INFRINGEMENT BY ACTION AT LAW. 417 evidence, that a subsequent patentee had seen and pirated the machine or other thing invented by the former applicant or patentee, yet the jury may infer a piracy from the exist- ence of the former record, of which every subsequent patentee is presumed to have knowledge.^ As to the case of two independent inventors, one of whom makes an earlier appli- cation than another for a patent, and succeeds in obtaining it, it will be a good defence to an action upon such a patent, if it can be shown that the same thing was first invented by another, although not actually perfected, provided the first inventor was, at the time, using reasonable diligence in adapting and perfecting the thing invented.^ 1 Odiome v. Winkley, 2 Gallis. 51, 55. In this case, Mr. Justice Story said : " As to the question, whether the patent was surreptitiously obtained, there is no direct or positive proof, that Reed had ever seen Perkins's ma- chine before he obtained a patent, but there is evidence, from which the jury may legally infer the fact, if they believe that evidence. It is a presump- tion of law, that, when a patent has been obtained, and the specifications and drawings recorded in the Patent Office, every man who subsequently takes out a patent for a similar machine, has a knowledge of the preceding patent. As, in chancery, it is a maxim, that every man is presumed to have notice of any fact, upon which he is put upon inquiry by documents within his posses- sion, if such fact could, by ordinary diligence, be discovered upon such inquiry. It is also a presumption of fact, that every man, having within his power the exact means of information, and desirous of securing to himself the benefit of a patent, will ascertain, for his own interest, whether any one on the public records has acquired a prior right." 2 Reed v. Cutter, 1 Story's R. 590, 599. In this case, ]\Ir. Justice Story said: " The passage cited from Mr. Phillips's work on Patents, (p. 395,) in the sense in which I understand it, is perfectly accurate. He there ex- pressly states, that the party claiming a patent, must be the original and first inventor ; and that his right to a patent will not be defeated by proof, that another person had anticipated him in making the invention, unless such per- son ' was using reasonable diligence in adapting and perfecting the same.' These latter words are copied from the fifteenth section of the Act of 1836, chapter 357, and constitute a quaUfication of the preceding language of that section ; so that an inventor, who has first actually perfected his invention, •will not be deemed to have surreptitiously or unjustly obtained a patent for that, which was in fact first invented by another, unless the latter was at the time using reasonable diligence in adapting and perfecting the same. And 53 418 LAW OP PATENTS. § 313. The last defence mentioned in the statute, is, that the patentee, being an alien at the time the patent was granted, " had failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, the invention or dis- covery, for which the patent issued." The object of this provision was, to prevent foreign inventors from obtaining patents in this country, and afterwards withholding the use of their inventions from the public for an unreasonable length of time. this I take to be clearly law ; for he is the first inventor in the sense of the act, and entitled to a patent for his invention, -who has first perfected and adapted the same to use ; and, until the invention is so perfected and adapted to use, it is not patentable. An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to practice, and embodied in some distinct machinery, appa- ratus, manufacture, or composition of matter, is not, and indeed cannot be, patentable under our Patent Acts ; since it is utterly impossible, under such circtunstances, to comply with the fundamental requisites of those acts. In a race of diligence, between two independent inventors, he who first reduces his invention to a fixed, positive, and practical form, would seem to be enti- tled to a priority of right to a patent therefor. (Woodcock v. Parker, 1 Gallis. K. 438.) The clause of the fifteenth section, now under considera- tion, seems to qualify that right, by providing that, in such cases, he who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has, in fact, first perfected the same, and reduced the same to practice in a positive form. It thus gives full eifect to the well-known maxim, that he has the better right, who is prior in point of time, namely, in making the discovery or invention. But if, as the argiunent of the learned counsel insists, the text of ^Ir. Phillips means to affirm, (what, I think, it does not,) that he, who is the original and first inventor of an invention, so perfected and reduced to practice, wUl be deprived of his right to a patent, in favor of a second and subsequent inventor, simply because the first invention was not then known, or used by other persons than the inventor, or not known or used to such an extent, as to give the public full knowledge of its existence, I cannot agree to the doctrine ; for, in my judgment, our Patent Acts justify no such construction." CHAPTER III. OF THE REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. § 314. We have seen that the common law and the sta- tute both afford a remedy, by an action for damages, for the infringement of patent-rights. But this remedy would be wholly inadequate to the protection of such rights, if it were not accompanied and fortified by another remedy, which flows from that great principle of equity jurisprudence, that, where there is a legal right, and the nature of the injury to which it is exposed is such that a preventive remedy is indis- pensable, equity ^vill afford that remedy, by an injunction. The grounds of the equity jurisdiction in cases of patents are, the prevention of irreparable mischiefs, the suppression of a multiplicity of suits and vexatious litigation, and the more complete discovery, from the party guilty of infringe- ment, of the extent of the injury done to the patentee, than can be obtained in an action at law.^ It does not belong to the purposes of this work, to trace the origin of this branch of equity jurisdiction, nor is it necessary to do so, since the Patent Laws have expressly adopted in the broadest terms the remedy which it affords, for the protection of patent-rights, and have directed the proper courts " to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor, as secured to him by any law of the United States, on such terms and conditions as the said courts may deem reasonable." 2 All 1 2 Story's Eq. Jurisp. § 930, 931, 932, 933. 2 Act of July 4, 1836, c. 357, § 17. 420 LAW OF PATENTS. that is requisite, therefore, in the present work, is to de- velop the application of the doctrines and practice of courts of equity to the rights of inventors, in the remedy by injunc- tion. § 315. As a preliminary remark, however, we may notice, that the discretion vested in the Court by the terms of the statute above cited, to grant injunctions on such terms and conditions as the Court may deem reasonable, is in perfect accordance with the principles of equity .1 This discretion is 1 In Bacon v. Jones, 4 Mylne & Cr. 433, 436, Lord Cottenliam made the following remarks on the granting of injunctions in cases of patents : " When a party applies for the aid of the Court, the application for an injunction is made either during the progress of the suit, or at the hearing ; and in both cases, I apprehend, great latitude and discretion are allowed to the Court in deaUng with the application. When the application is for an interlocutory injunction, several courses are open ; the Court may at once grant the in- junction, simpliciter, without more — a course which, though perfectly competent to the Court, is not very likely to be taken where the defendant raises a question as to the validity of the plaintiflPs title ; or it may follow the more usual, and, as I apprehend, more wholesome practice in such a case, of either granting an injunction, and, at the same time, directing the plaintiff to proceed to establish his title at law, and suspending the grant of the injunction until the result of the legal investigation has been ascertained, the defendant in the mean time keeping an account. Which of these seve- ral courses ought to be taken, must depend entirely upon the discretion of the Court, according to the case made. When the cause comes to a hearing, the Court has also a large latitude left to it ; and I am far from saying that a case may not arise in which, even at that stage, the Court will be of opinion that the injunction may properly be granted without having recourse to a trial at law. The conduct and dealings of the parties, the frame of the pleadings, the nature of the patent- right, and of the evidence by which it is established — these and other cir- cumstances may combine to produce such a result ; although this is certainly not very likely to happen, and I am not aware of any case in which it has happened. Nevertheless, it is a course unquestionably competent to the Court, provided a case be presented which satisfies the mind of the judge, that such a course, if adopted, will do justice between the parties. Again, the Court may, at the hearing, do that which is the more ordinary REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 421 not a wholly unregulated discretion, but the clause in which it is expressed is to be considered as affected by the previous direction, that the injunction is to be granted according to the course and principles of courts of equity, which are guided by certain well-settled rules ; so that the terms and conditions to be imposed in each case will be ascertained, by applying to the circumstances of the case those principles and that course of practice which have been usually followed, and which will admit of a " reasonable " application to the par- ticular facts of the case. § 316. I. The Parties. The parties entitled to relief in equity against the infringement of a patent are, first, the party or parties interested in the patent. As the remedy in equity is given in order to protect a legal right, and as the statute gives a right of action to the person or persons in- terested, whether as patentee assignees, or grantees of the exclusive right for a particular district, it follows that any person holding the legal title, or the right to bring an action, may bring a bill for an injunction. § 317. We have seen when the assignee of a patent may sue at law in his own name, and when he should join his assignor. The same rules will govern in equity, in deter- mining who are necessary parties to the bill. If the assignee has the whole interest, he may sue alone ; but if he has less than the whole interest, he must join the patentee. If the assignment has not been recorded, the assignee is not sub- stituted to the right and responsibility of the patentee, so as to maintain any suit at law or in equity, founded upon the patent ; ^ and where there is a joint suit by the patentee and course ; it may retain the bill, giving the plaintiff the opportunity of first establishing his right at law. There still remains a third course, the propri- ety of which must also depend upon the circumstances of the case, that of at once dismissing the bill." 1 Wyeth V. Stone, 1 Story's R. 273, 295. Story, J.: « The objection 422 LAW OP PATENTS. the assignee, and a disclaimer has been filed by the patentee, in which the assignee did not join, the disclaimer cannot operate in favor of the complainants in such a bill, or in an action at law.^ § 818. There is, however, one distinction, between an action at law and a suit in equity, in respect to the parties ; and that is, the case of an assignment of the exclusive right, for a particular district. The grantee of such a right may bring an action at law, within his own district, for an in- fringement, even against the patentee himself, and, conse- quently, he may bring such an action always in his own name.2 wWcli I deem fatal, is, that the bill states and admits, that the assignment to the plaintiff, Tudor, (made in February, 1832,) has never yet been recorded in the state department, according to the provisions of the Patent Act of 1 793, ch. 55, § 4. That act provides, " That it shall be lawful for any inven- tor, his executor or administrator, to assign the title and interest in the said invention at any time ; and the assignee, having recorded the said assign- ment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility." It seems a necessary, or, at least, a just inference, from this language, that, until the assignee has so recorded the assignment, he is not substituted to the right and responsibility of the patentee, so as to maintain any suit at law or in equity, founded thereon. It is ti'ue, that no objection is taken in the plead- ings on account of this defect ; but it is spread on the face of the biU, and, therefore, the Court is bound to take notice of it. It is not the case of a title defectively set forth, but of a title defective in itself, and brought before the Court with a fatal infirmity, acknowledged to be attached to it. As between the plaintiffs and the defendants, standing upon adverse titles and rights, (whatever might be the case between privies in title and right,) Tudor has shown no joint interest sufficient to maintain the present bill ; and, therefore, it must be dismissed with costs." 1 Hid. 294. 2 The sixth question certified is as follows : Whether the plaintiff, if he be an assignee of an exclusive right to use two of the patented machines, within the town of Watervliet, has such an exclusive right, as will enable him to maintain an action for an infringement of the patent within the said town ; or whether, to maintain such action, the plaintiff must be possessed. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 423 § 319. But, in equity, the patentee may be joined with the assignee of such an exclusive right, if it be a right, to use a limited number of the patented machines, in a particular district ; because the interest of the patentee is not all vested in the grantee, who, although he may prevent the patentee from licensing other persons within the district, cannot obtain for himself the right to use more machines than the original grant authorized, without paying the patentee for such fur- ther license. This interest renders the patentee a proper party, in such a bill.i Different persons, who have infringed a patent independently of each other, cannot be made defend- ants in the same bill.^ § 320. II. The Bill. A bill, for an injunction to restrain the infringement of a patent, after the address to the Court, and the statement of the parties, should recite the applica- tion for the letters-patent, by the inventor, and the com- pliance, by him, with all the prerequisites for obtaining them, and the issue of the letters, giving the title, as it is contained in them, verbatim, their attestation by the proper officers, and their delivery to the patentee. Profert of the as to that territory, of all the rights of the original patentee. The plaintiff is the grantee of the exclusive right to construct and use, and to vend to others, to be used, two of the patented machines, within the town of Water- vUet, in the county of Albany. The fourteenth section of the Patent Law authorizes any person, who is a grantee of the exclusive right in a patent, within and throughout a specified portion of the United States, to maintain an action, in his own name, for an infringement of the right. The plaintiff comes within the very terms of the section. Although limited to the use of two machines, within the town, the right to use them is exclusive. No other party, not even the patentee, can use a right, under the patent, within the territory, without infringing the grant." Wilson v. Rousseau, 4 Howard, 646, 686. 1 Woodworth v. Wilson, 4 Howard, 712. It had been previously held, that the grantee for a particular district can maintain a bill, for an injunction and account. Ogle v. Ege, 4 Wash. 584. 2 Dilly V. Poig, 2 Ves. Jr. 487. 424 LAW OF PATENTS. letters should be made, but it is not necessary to set forth the description of the invention, given in the specification.^ It is necessary, however, to state, that the plaintiff, after the issuing of the patent, put his invention into use, and is, at the time of filing the bill, in the exclusive possession of it.^ If the bill is brought upon the title of an assignee, either of the whole or a part of the interest, or of an administrator, or if the patent has been renewed, or extended, or amended by a disclaimer, the facts should be properly set forth, to show the present state of the title, and the right for which protection is asked. The bUl should further state the in- fringement complained of, whether it has been actually committed, or is threatened ; and, if the right has been previously established, by an action at law, against the same or any other party, or an injunction has been previously obtained, against the same or any other party, the fact should be set forth.^ These averments are usually followed by a statement, that the defendant has been requested to desist from the use of the invention, and to account for the damages, which the plaintiff has sustained. Then follows the charge of actual combination, by the defendant, with others, if the facts require it, and of a conspiracy, if one is intended to be proved, to destroy the plaintiff's exclusive privilege. The prayer of the bill is, for a discovery, upon oath, and particular answers to the interrogatories, which should be pointed at all the previous material averments in the bill ; for a general answer to the bill ; for a decree, that the defendant account for and pay over the gains and profits, which have accrued to him from using the invention ; for an injunction, to restrain the defendant from the further use of the invention ; and to compel the delivery or destruction of 1 Kay V. Marshall, 1 M. & Cr. 373 ; Westhead v. Keane, 1 Beav. 287. 2 Isaacs V. Cooper, 4 Wash. 359. 3 See the observations of Mr. Justice Story, cited from Woodworth v. SU)ne, post. See, also, Orr v. Littlefield, 1 Woodbury & M. 13. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 425 the machines, or other things which he has made ; and for further relief. The prayer should close with asking for a writ of injunction, and a subpoena. The bill should be sworn to, by the usual affidavit. § 321. It may often be a serious question, whether an original bill, filed for an injunction and other relief, is affected by a subsequent surrender and renewal of the patent, pend- ing the proceedings. In a case where this had happened, and a temporary injunction had been granted, on the original bill, in which the patentee and certain assignees were plain- tiffs, and, upon the new patent, a supplemental bill was filed against the defendant, for the continuance of the injunction and other relief, the injunction was ordered to stand conti- nued, as to the new patent, stated in the supplemental bill, until the hearing, or farther order. Hence it appears, that, when a patent is surrendered and renewed, pending a tem- porary injunction, a supplemental bill is necessary, in order to continue the injunction, as to the new patent.^ 1 Woodworth v. Stone, 3 Story's R. 749, 750. Story, J. : — « If the pre- sent case had stood merely upon the original bill, it appears to me clear, that the motion to dissolve the injunction, granted upon that bill, ought to prevail ; because, by the surrender of the patent upon which that bill is founded, the right to maintain the same would be entirely gone. I agree, that it is not in the power of the patentee, by a surrender of his patent, to affect the rights of third persons, to whom he has previously, by assignment, passed his interest in the whole or a part of the patent, without the consent of such assignees. But, here, the supplemental bill admits, that the assicTiees, who are parties to the original and supplemental bill, have con- sented to such surrender. They have, therefore, adopted it, and it became theirs, in the same manner as if it had been their personal act, and done by their authority. The question, then, is precisely the same as if the suit were now solely in behalf of the patentee. In order to understand, with clearness and accuracy, some of the objections to the continuance of the injunction, it may be neces- sary to state, that the original patent to AVilliam Woodworth, (the inventor,) who is since deceased, was granted on the 27th of December, 1828. Sub- sequently, under the 18th section of the Act of 1836, ch. 357, the Commis- 54 426 LAAV OF PATENTS. § 322. III. The Injunction. We have now to state, in the first place, the general principles on which Courts of Equity sioner of Patents, on the 16tli of November, 1842, recorded tlie patent, in favor of William W. Woodworth, tlie administrator of "William AVoodworth, (the inventor,) for seven years from tlie 27tli of December, 1849, (to wliicb time the renewed patent extended) ; and the Commissioner of Patents was directed to make a certificate of such extension, in the name of the admi- nistrator of William Woodworth, (the inventor,) and to append an authen- ticated copy thereof to the original letters-patent, whenever the same shall be requested, by the said administrator or his assigns. The Commissioner of Patents, accordingly, on the 3d of March, 1845, at the request of the administrator, made such certificat-^'. on the original patent. On the 8th of July, 1845, the administrator surrendered the renewed patent granted to him, ' on account of a defect in the specification.' The surrender was accepted, and a new patent was granted, on the same day, to the administra- tor, reciting the preceding facts, and that the surrender was ' on account of a defective specification,' and declaring, that the new patent was extended for fourteen years from the 27th of December, 1828, ' in trust for the heirs at law of the said William Woodworth, (the inventor,) their heirs, adminis- trators, or assigns.' Now, one of the objections taken to the patent, is, that it is for the term of fourteen years, and not for the term of seven years, or for two successive terms of seven years. But, it appears to me, that this objection is not well founded, and stands inter Apices juris ; for the new patent should be granted for the whole term of fourteen years from the 27th of December, and the legal efiect is the same as it would be if the patent was specifically renewed for two successive terms of .seven years. The new patent is granted for the unexpired term only, from the date of the grant, namely, for the imexpired period existing on the 8th of July, 1845, by reference to the original grant, in December, 1828. It is also suggested, that the patent ought not to have been in trust for the heirs at law of the said William Woodworth, their heirs, administrators, or assigns. But this is, at most, a mere verbal error, if, indeed, it has any validity whatsoever ; for the new patent will, by operation of law, enure to the sole benefit of the parties in whose favor the law designed it should operate, and not otherwise. It seems to me, that the case is directly within the purview of the 10th and 13th sec- tions of the Act of 1836, ch. 357, takino- into consideration their true intent and objects. Another objection, urged against the continuation of the injunction, is, that the breach of the patent, assigned in the original bUl, can have no application to the new patent, and there is no ground to suggest, that, since REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 427 proceed, in granting, continuing, or dissolving injunctions, in cases of patents. To obtain an injunction, the plaintiff the injunction was granted, there has been any new breach of the old patent, or any breach of the new patent. But, it is by no means necessary that any such new breach should exist. The case is not like that of an action at law for the breach of a patent, to support which, it is indispensable to esta- blish a breach, before the suit was brought. But, in a suit in equity, the doctrine is far otherwise. A bill will Uc for an injunction, if the patent-right is admitted, or has been established, upon well-grounded proof of an appre- hended intention of the defendant, to violate the patent-right. A bill, quia timet, is an ordinary remedial process in equity. Now, the injunction akeady granted (supposing both patents to be for the same invention,) is, prima facie, evidence of an intended violation, if not of an actual violation. And the affidavit of James N. BufTum is very strong, and direct evidence to this same effect. But, the most material objection taken is, that the new patent is not for the same invention as that which has been surrendered. And, certainly, if this be correct, there is a fatal objection to the prolongation of the injunction. But, is the objection well founded, in point of fact ? It is said, that the present patent is for a combination only, and that the old patent was for a combination and something more, or different. But, I apprehend that, upon the face of the present patent, the question is scarcely open for the consider- ation of the Court ; and, at all events, certainly not open in this stage of the cause. I have already, in another cause, had occasion to decide, that, where a Commissioner of Patents accepts a surrender of an old patent, and grants a new one, under the Act of 1836, ch. 357, his decision, being an act expressly confided to him by law, and dependent upon his judgment, is not reexaminable elsewhere ; and that the Court must take it to be a lawful exercise of his authority, unless it is apparent, upon the very face of the patent, that he has exceeded his authority, and there is a clear repugnancy between the old and the new patent, or, the new one has been obtained by collusion between the Commissioner and the patentee. Now, upon the face of it, the new patent, in the present case, purports to be for the same inven- tion, and none other, that is contained in the old patent. The avowed differ- ence, between the new and the old, is, that the specification, in the old, is defective, and that the defect is intended to be remedied in the new patent. It is upon this very ground, that the old patent was surrendered, and the new patent was granted. The claim, in the new patent, is not of any new invention ; but of the old invention, more perfectly described and ascer- tained. It is manifest, that, in the first instance, the Commissioner was the proper judge, whether the invention was the same or not, and, whether there 428 LAW OF PATENTS. must accompany his application with an affidavit, that he then believes himself to be the original and first inventor of the thing patented ; for, it is said, although, when he obtained his patent he might have, very honestly, sworn as to his belief of such being the fact, yet circumstances may have subse- quently intervened, or information may have been communi- cated, sufficient to convince him that it was not his own original invention, and that he was under a mistake when he applied for his patent.^ Such a special affidavit was required. was any deficit in the specification or not, by inadvertence, accident, or mis- take ; and, consequently, he must have decided that the combination of machinery, claimed in the old patent, was, in substance, the same combination and invention, claimed and described in the new. My impression is, that, at the former trial of the old patent, before me, I held the claim substantially, (although obscurely worded,) to be a claim for the invention of a particular combination of machinery, for planing, tonguing, and grooving, and dress- ing boards, &c. ; or, in other words, that it was the claim of an invention of a planing machine, or planing apparatus, such as he had described in his specification. It appears to me, therefore, that, prima facie, and, at all events, in this stage of the cause, it must be taken to be true, that the new patent is for the same invention as the old patent ; and that the only difference is, not in the invention itself, but in the specification of it. In the old, it was defectively described and claimed. In the new, the defects are intended to be reme- died. Whether they are effectually remedied, is a point not now properly before the Court. But, as the Commissioner of Patents has granted the new patent, as for the same invention as the old, it does not appear to me, that this Court is now at liberty to revise his judgment, or to say that he has been guilty of an excess of authority, at least (as has been already sug- gested) not in this stage of the cause ; for that would be, for the Court, of itself, to assume to decide many matters of fact, as to the specification, and the combination of machinery in both patents, without any adequate means of knowledge, or of guarding itself from gross error. For the purpose of the injunction, if for nothing else, I must take the invention to be the same in both patents, after the Commissioner of Patents has so decided, by grant- ing the new patent. Upon the whole, therefore, I do order and direct, that the injunction do stand continued, as to the new patent, stated in the supplemental bill, until the hearing, or farther oider of the Court." 1 Hill V. Thompson, 3 Meriv. 622, 624 ; Sturz v. De La Rue, 5 Russ. Ch. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 429 by Mr. Justice Washington, to be subjoined to a bill.i And it is the usual practice, on moving for an injunction, before the answer has been filed, to read such an affidavit, as well as others, to the same purport.^ § 323. In the courts of the United States, notice that an injunction is to be applied for, must be served on the defend- ant, as no injunction, whether temporary or final, can be granted without reasonable previous notice to the adverse party, or his attorneys, of the time and place of moving for the same.^ Injunctions, therefore, are not granted in our courts on ex parte applications, in cases of patents, although they may be granted on filing the bill and before answer, on notice to the party to be affected, as well as after answer and upon the hearing. § 324. The bill and the application being, then, in proper form, the first thing to be considered is, whether the Court will require the patentee to establish his legal right by an action at law, before it grants the injunction, or whether it will grant the injunction, in the first instance, upon the proof of a legal right, furnished by the bill itself, and the accom- panying affidavits. Upon this point, the rule, as it was laid down by Lord Eldon, is, that, where a patent has been granted, and there has been an exclusive possession of some duration under it, the Court will interpose its injunction, without put- ting the party previously to establish the validity of his patent by an action. But where the patent is but of yesterday, and, upon an application being made for an injunction, it is endeavored to be shown, in opposition to it, that there is no R. 322. The same reason exists, at the time of the application, although the bill itself was sworn to when filed. 1 Rogers v. Abbott, 4 Wash. 514 ; Ogle v. Ege, Ibid. 584. 2 See, further, as to affidavits, post, at the end of this chapter. 3 Act 2d March, 1793, ch. 22, § 5 ; Perry v. Parker, 1 Woodbury & M. 280, 281. 430 LAW OP PATENTS. good specification, or, otherwise, that the patent ought not to have been granted, the Court will not, from its own notions upon the matter in dispute, act upon the presumed validity or invalidity of the patent, without the right having been ascertained by a previous trial, but will send the patentee to law, to establish the validity of his patent in a court of law, before it will grant him the benefit of an injunction.^ § 325. The rule, thus stated, has been followed by our own courts, with further explanations, which extend its application to the particular facts of the cases that have arisen. Thus, Mr. Justice Washington laid down the rule as follows : that the practice is, to grant an injunction upon the filing of the bill, and before a trial at law, if the bill state a clear right, and verify the same by affidavit. If the bill states an exclu- sive possession of the invention, or discovery, an injunction is granted, although the Court may feel doubts as to the validity of the patent. But if the defects in the patent or specification are so glaring that the Court can entertain no doubt as to that point, it would be most unjust to restrain the defendant from using a machine, or other thing, which he may have constructed, probably, at great expense, until a de- cision at law can be had.^ Upon another occasion, the same learned judge laid down the general rule in these terms, that, where the bill states a clear right to the thing patented, which, together with the alleged infringement, is verified by affidavit, if he has been in possession of it, by having used or sold it in part, or in the whole, the Court will grant an injunction, and continue it till the hearing, or further order, without sending the plaintiff to law to try the right. But, if there appeared to be a reasonable doubt, as to the plaintiff's right, or as to the validity of the patent, the Court will re- quire the plaintiff to try his title at law, sometimes accompa- nied with an order to expedite the trial, and will permit him 1 HUl V. Thompson, 3 Meriv. 622, 624. 2 Isaacs V. Cooper, 4 Wash. 259, 260. REMEDY m EQUITY TO RESTRAIN INFRINGEMENTS. 431 to return for an account, in case the trial at law should be in his favor. Mr. Justice Story, in Washburn v. Gould, referred to and adopted the general rule laid down by Lord Eldon, in Hill V. Thompson. In this case, there had been a trial at law, which resulted in favor of the patentee.^ Mr. Justice Woodbury has, in several cases, also acted upon it, with modifications, which will presently be stated.^ § 326. It appears, therefore, that, upon the question of first sending the plaintiif to law, to try the validity of his patent, the general rule must be subdivided according to the aspect and position of the case before the Court. The cases may be ranged under three different classes. First, where there is nothing before the Court, as evidence, but the bill and the affidavits in support of it ; second, where the injunction is asked before the final hearing, and the respondent offers evidence, either in the answer, or by affidavits, affecting the validity of the patent ; third, where the question comes on upon the hearing, and the full proofs taken in the cause. § 327. These different aspects of the cause may now be considered separately, with reference to this question. First, where the plaintiff asks for an injunction upon the bill and affidavits, and no opposing evidence is adduced, but the re- spondent appears and objects. In such cases, the bill and the affidavits must show the issuing of the patent, and an exclusive possession of the right, of some duration ; and, when these are shown, although the Court may feel some doubts, as to the validity of the patent, the injunction will be granted, without a previous trial at law ; but if the patent contains glaring defects, so that no doubt can be entertained, or the bill is defective in material allegations, the injunction will not be granted, but the plaintiff will be required to try 1 3 Story's R. 156, 169. 2 Orr V. Littlefield, 1 W. & M. 13 ; Woodworth v. Hall, Ibid. 248 ; Hovey V. Stevens, Ibid. 290. 432 LAW OF PATENTS. his title at law.^ Some additional evidence, besides the mere issue of the patent, must be offered ; and this evidence 1 Hill V. Thompson, 3 Meriv. 622 ; Harmer v. Plane, 14 Yes. 130, 133 ; Isaacs V. Cooper, 4 Wash. 259 ; Ogle v. Ege, Ibid. 584 ; Woodworth V. Hall, 1 Woodbury & M. 248. Length of enjoyment is to be looked to, in answer to a theoretical objection to the specification. Rickford v. Skewes, Webs. Pat. Cas. 211, 213. In a recent case, in the first Circuit, Mr. Justice Curtis stated the doctrine applicable to this class of cases, as follows : " The first question is, whether the complainant has shown such a prima facie title to the things patented, as will enable him to call on the Court to protect his right until it can be tried. The affidavit of Pillsbury states, that the patentee, and those claiming under him, have been engaged in luilding these machines since the letters- patent were granted, — a period of about eightyears. That, during this time, they have made and sold upwards of one hundred and fifty, and they have been put in use in Massachusetts, Maine, Ohio, Pennsylvania, and other parts of the country. That about fifty of these machines are now in daily use at Lynn, in JNIassachusetts, the place where they were originally introduced, and that, except in this case, the witness has not known the no- velty or validity of Richards's patent disputed, nor has he known any attempt made to infringe it. No conflicting evidence has been introduced by the defendant, tending to show that the possession of the patentee has been questioned or interrupted, or that it has not been as extensively enjoyed as this witness declares, nor is the vahdity of the patent denied by the affidavit of the defendant. This is such a prima facie title as a court of equity is bound to protect. The familiar rule, stated by Lord Eldon, in Hill v. Thompson, 3 Meriv. G22, is, that, where a patent has been granted, and there has been an exclusive possession, of some duration, under it, the Court will enjoin, without putting the party previously to establish his right at law ; and this rule has been fol- lowed in this and other Circuits, and is well established in England. Isaacs V. Cooper, 4 Wash. 259 ; Washburn r. Gould, 3 Story's R. 156, 169 ; Orr V. Littlefield, 1 W. and M. 13 ; Bickford v. Skewes, Webs. Pat. Cas. 211 ; NeU- son V. Thompson, Webs. Pat. Cas. 277. It is not possible to fix any precise term of years, during which the exclusive possession must have continued. The reason for the presumption in favor of the validity of the grant, is the acquiescence of the pubhc iif the exclusive right of the patentee, which, it may reasonably be assumed, would not exist unless the right was well founded. And it is obvious, that this public acquiescence is entitled to more or less weight, according to the degree of utility of the machine, and the number of persons whose trade or business is affected by it. I am satisfied that this is a useful machine, not only because it is so stated by Pillsbury, but REMEDY m EQUITY TO RESTRAIN INFRINGEMENTS. 433 will be the fact, that, after he had procured his patent, the plaintiff proceeded to put that right into exercise or use, for some time, without being disturbed ; a circumstance that strengthens the probability that the patent is good, and ren- ders it so likely, as alone often to justify the issue of an injunction in aid of it.i It will, also, be further additional evidence, in support of ihe prwid facie right to an injunction, that the patentee has successfully prosecuted other persons for violating it.^ § 328. Secondly. Where the injunction is asked for before the hearing, but opposing evidence is adduced by the re- spondent against the validity of the patent. In these cases, several elements enter into the rule that is to guide the dis- cretion of the Court. How far, and for what length of time there has been an exclusive possession or assertion of the right ; how far the respondent has succeeded in raising doubts as to the novelty of the invention, or as to its being a patentable subject, or as to the infringement ; and how far a long possession will go to counteract evidence impeaching the validity of the patent — are some of the circumstances to be weighed, in determining whether the plaintiff's primd facie right to an injunction has been answered by the respondent, to that extent, that the Court will suspend the injunction, until the plaintiff has established his right by an action. It seems to be the result of all the authorities, that there is a primd facie right to an injunction, without a trial at law. from the number which are now in use ; and there can be no doubt that it affects the trade and business of a numerous and intelligent body of persons, in this and other States. In a case where, though the validity of the patent has been questioned, no specific and satisfactory ground of doubt has been laid by the defendant, this acquiescence, for a period of about eight years, dispenses with the necessity of bringing an action at law, before moving for a preliminary injunction." Foster v. Moore, 1 Curtis's R. 1 Orr V. Littlefield, 1 Woodb. & M. 13, 16. As to length of possession, see the observations of Mr. Justice Woodbury, cited from this case, post. 2 Ibid. 55 434 LAW OF PATENTS. upon certain things being shown, namely, a patent, long pos- session, and infringement.! The question will, therefore, be, in cases of opposing evidence, where that right has been shown, whether it has been displaced by the respondent. § 329. When the presumption in favor of the validity of the patent has been strengthened by evidence of enjoyment and possession undisturbed for several years, and recoveries against other persons for violating it, it will not be sufficient to deprive the plaintiff of the injunction before a trial at law, for the defendant to read affidavits tending to cast doubts on the originality of the invention, especially if that evidence is answered by what is stronger- on the part of the patentee.^ 1 In Neilson v. Thompson, Webs. Pat. Cas. 277, Sir L. Shadwell, V. C, said : " It seems to me, on these affidavits, that it is sufficiently made out that there has been a use of the patent in this sense, that the right of the patentee to the benefit of the patent has been submitted to -where there has been a contest, and it does not at all appear to me that the general way in which the defendants, on their affidavit, state the mode by means of which the plaintiffs succeeded in establishing the patent, is at all an answer to the two cases which are stated in Mr. Blunt's affidavit. Then I have the case of a patent, having been obtained in the year 1828, and actually enjoyed by the patentee for upwards of twelve years. Prima facie, I apprehend, that gives a right to the patentee to come into Court in a case in which he can show an infringement ; and the question is, has there been an infringement ? " 2 Orr V. Littlefield, 1 Woodb. & M. 13. In this case, Mr. Justice Wood- bury said : " It is not enough that a party has taken out a patent, and thus obtained a public grant, and the sanction or opinion of the Patent Office, in favor of his right, though that opinion, since the laws were passed, requiring some examination into the originality and utility of inventions, possesses more weight. But the complainant must furnish some further evidence of a probable right ; and, though it need not be conclusive evidence, — else addi- tional hearing on the bill would thus be anticipated and superseded, — yet it must be something stronger than the mere issue, however careful and pub- lic, of the patent, conferring an exclusive right ; as, in doing that, there is no opposing party, no notice, no long public use, no trial with any one of his rights. The kind of additional evidence is this : If the patentee, after the procurement of his patent, conferring an exclusive right, proceeds to put that right into exercise or use for some years, without its being disturbed. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 435 § 330. But when an injunction is asked before the trial and resisted, and doubts are cast on the originality and validity that circumstance strengthens much the probability that the patent is good, and renders it so likely, as alone often to justify the issue of an injunction in aid of it. Ogle v. Ege, 4 Wash. C. C. 584 ; 2 Story's Eq. Jur. 210 ; Drew on Injunc. 222 ; Phil, on Pat. 462. After that, it becomes a question of public policy, no less than private justice, whether such a grant of a right, exercised, and in possession so long, ought not to be protected, until avoided by a full hearing and trial. Harmer r. Plane, 14 Ves. 130. In this case, the evidence is plenary and uncontradicted, as to the use and sale of this patent, by the inventor and his representative, for several years, publicly and without dispute. Computing from the original grant, the time is over nine years, and, since the reissue of the letters-patent, it is nearly three. I concur in the opinion delivered by Judge Sprague, in Orr v. Badger, that the time to be regarded under this view, is what has elapsed since the original issue or grant. Law Reporter for February, 1845. In Thompson v. Hill, 3 Mcriv. 622, the time was only three years from the first grant. In Ogle v. Ege, 4 Wash. C. C. 584, it was but six years. And though, in some cases reported, it had been thirteen, and in others twenty years, (14 Ves. 120,) yet it is believed, that seldom has a Court refused an injunction, in applications like this, on account of the shortness of time after the grant, however brief, if long enough to permit articles or machines to be constructed, by the patentee, in conformity to his claim, and to be sold pub- licly and repeatedly, and they have been so used and sold, under the patent, without dispute. Here the sales were extensive and profitable, from 1836, downwards, and the right, as well as the possession, does not appear to haye been contested until 1842. In Hill v. Thomson, 3 Meriv. 622, 624, it is true that the Court dissolved an injunction, when only about one year had elapsed since any work had been completed under the patent, aud only two years since the specification was filed, the chancellor calling it a patent ' but of yes- terday,' but he added that he would not dissolve it, if ' an exclusive posses- sion of some duration* had followed; though an answer had been put in, denying all equity, and doubts existed as to the validity of the patent ; and no sales under it were proved in that case. So, though the patent had been issued thirteen years, and the evidence is doubtful, as to acquiescence in the possession or use, an injunction may be refused. CoUard v. Allison, 4 Mylue & Craig. 487, But, in the present case, the acquiescence appears to have been, for several years, universal. Another species of evidence, beside the issue of the patent itself, and long use and possession under it, so as to render it probable the patent is good, and to justify an injunction, is the fact that, if the patent becomes dis- 436 LAW OF PATENTS. of the patent, if the counterbalancing and fortifying circum- stances of long possession, use, or sale to a considerable ex- puted, the patentee prosecutes for a violation of his rights, and recovers. Same authorities; Kay v. Marshall, 1 Mylne & Craig, 373. This goes upon the ground, that he does not sleep over his claims or interests, so as to mis- lead others, and that, whenever the validity of his claims has been tried, he has sustained it as if good. But such a recovery is not regarded as binding the final rights of the parties in the bill, because the action was not between them ; though, when the judgment is rendered without collusion or fraud, it furnishes to the world some strong, as well as public assurance, that the pa- tent is a good one. In this view of the evidence of this character, in the present action, it is not contradicted, nor impaired at all, by the judgments having been given on verdicts and d<^,faults, under agreements. Such judg- ments, when, as is admitted here, not collusive, are as strong, if not stronger evidence of the patentee's rights, than they would have been, if the claim was so doubtful as to be sent to a jury for decision, rather than to be so little doubtful as to be admitted or agreed to, after being legally examined. Both of these circumstances, therefore, possession and judgments, unite in sup- port of an injunction in the present case. The only answer to the motion, as made out on these grounds, is, the evidence offered, by affidavits, on the part of the respondents, tending to cast doubt on the originality of the invention of the patentee. I say, tending to this, because some of the affidavits, at least, do not distinctly show that the person making them intended to assert that the whole of any one of the combination of particulars contained in Dr. Orr's claim, in his specification, had been used before his patent issued ; because they are counteracted by other testimony, from the witnesses of the complainants, more explicit and in larger numbers ; and because, in this preliminary inquiry, where the evi- dence is taken, without the presence or cross-examination of the opposite party, it would be unsafe to settle and decide against the validity of the pa- tent, when a full and formal trial of it is not contemplated till further pro- gress is made in the case. All that is required in this stage, is, the presump- tion before named, that the title is good. This presumption is stronger here than usual, as it arises from the issue of the patent, and an enjoyment and possession of it undisturbed for several years, beside the two recoveries against those charged with violating it. After these, other persons can, to be sure, contest the validity of the patent, when prosecuted either in equity, or at law ; but it is hardly compe- tent for them to deprive the complainant of her right, thus acquired, to an injunction, or, in other words, to be protected in so long a use and posses- sion, till her rights are disproved, after a full hearing ; surely it is not rea- REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 437 tent, and former recoveries under it, do not exist, the injunc- tion will not be allowed before trial.^ sonable to permit it, -when the affidavits of the respondents to invalidate or cast a shade over her right are met by that -which is stronger, independent of the long possession, judgments, and presumptions, before mentioned. But another objection has been urged in argument. When an answer to the bill denies all equity in it, the respondents contend that an injunction would be dissolved, and hence it ought not to be imposed, if the respondent denies equity by affidavit. This may be correct, in respect to injunctions termed common, as these affidavits and counter-affidavits are inadmissible. Eden, 117, 326 ; yet, in these, the denial must be very positive and clear. Ward V. Van Bockelen, 1 Page, 100; Noble v. Wilson, lb. 164. But the posi- tion cannot be correct in the case of injunctions called special, like the pre- sent one, and where facts and counter-evidence show the case to be different from what is disclosed in the affidavits, or an answer of the respondents alone. No usage or cases are found where the injunctions are dissolved, as a matter of course, on such answers, if the complainant has adduced auxi- liary presumptions in favor of his right, like those in the present instance. On the contrary, the cases are numerous, where the whole is regarded as stUl within the sound discretion of the Court, whether to issue the injunction or refuse it; or, if issued, to dissolve or retain it. 3 Meriv. 622, 624; 2 Johns. Ch. R. 202 ; 3 Sumn. 74 ; Livingston v. Van Ingen, 9 Johns. R. 507, 570 ; Rogers v. Rogers, 1 Paige, 426. And where the complainant has made out not merely a grant of the patent, but possession and use, and sale under it, for some time, undisturbed, and, beside this, a recovery ao-ainst other persons using it, the Courts have invariably held, that such a strong color of title shall not be deprived of the benefit of an injunction, tiU a full trial on the merits counteracts or annuls it. In several cases, where the equities of the bill were even denied, and in others, where strong doubts were raised, whether the patent could, in the end, be sustained as valid, the Courts decided, that injunctions should issue, under such circumstances as have before been stated in favor of the plaintiff, till an answer or final hear- ing ; or, if before issued, should not be dissolved till the final trial, and then cease, or be made perpetual, as the result might render just. The Chan- cellor, in Roberts v. Anderson, 2 Johns. Ch. R. 202, cites 2 Vesey, 19, and Wyatt's P. R. 236; Boulton v. Bull, 3 Ves. 140; Universities of Oxford and Cambridge v. Richardson, 6 Ves. 689, 705 ; Harmer v. Plane, 14 Ves. 130 ; and Hill v. Thompson, 3 Mer. 622, 624." There was a case before Sir L. Shadwell, V. C., where a good deal of 1 Hovey v. Stevens, 1 Woodb. & M. 290, 303. The patent, in this case, had been issued less than a month before the infringement complained of 438 LAW OP PATENTS. § 331. If the respondent succeeds in raising doubts, both as to the exclusive possession, and as to the novelty of what is claimed, and the evidence, on these points, is conflicting, the injunction will be refused, until a trial.i § 332. If the question of infringement is doubtful, it must be tried by a jury ; and, in a case of this kind, Sir L. Shad- well, V. C, dissolved an injunction, and ordered an action to be brought, to try the infringement, the respondents being ordered to keep an account, and to admit the plaintiff''s title to the patent.^ The same rule would be applicable to the granting an injunction in the first instance. § 333. It seems, also, that another element to be consi- dered is, the effect of the injunction on the defendant's busi- ness. As the granting of an injunction rests in the discre- tion of the Court, exercised upon all the circumstances of the case, and as the object of the injunction is to prevent mis- chief, it is said that, where irreparable mischief would ensue from it to the defendant, it ought not to be granted.^ But this must be understood as applying to a case, where the plaintiff would not be injured by the delay, but would be left in statu quo, after a trial establishing the validity of his patent ; or, at least, where the rights of the plaintiff are capable of being fully protected, by an account to be kept in doubt, as to the originality of the invention, was raised, by the introduction of a former patent and specification, but the plaintiff had enjoyed uninter- rupted possession for seven years ; and, the infringement being clearly shown, the injunction was granted before trial, and a trial ordered. Losh v. Hague, Webs. Pat. Cas. 200. In like manner, Mr. Justice Storj' held, that the affi- davit of a single witness, after long possession, and other recoveries on the patent, would not outweigh the oath of the patentee, and the general pre- sumption arising from the grant of the patent. Woodworth v. Sherman, 3 Story's R. 171, 172. See also Orr v. Badger, 10 Law Reporter, 465. 1 CoUard v. Allison, 4 M. & Cr. 487, 488. 2 Morgan v. Seaward, Webs. Pat. Cas. 167. 3 Neilson v. Thompson, Webs. Pat. Cas. 278, 286. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 439 the interim ; because the object of the Court is, to preserve to each party the benefit to which he is entitled.^ § 334. Nor will an injunction be granted, where the plain- tiff has permitted the defendant to go on and incur expense, under the expectation of receiving a certain sum, if the rela- tions between them are such, as to allow of the defendant's disputing the plaintiff's right, as patentee.^ But it seems that, where the defendant is estopped, at law, from denying the validity of the patent, an injunction will be granted ; but if there is a real question to be tried, and a year's rent, for the use of the invention, is due, the Court will order the money to be paid into Court, to wait the event of the trial.^ § 335. If the plaintiff shows the necessary possession, and an infringement has actually been committed by the defend- ant, the injunction will be granted, notwithstanding the defendant admits the infringement, and promises not to repeat it.^ 1 Hid. 2 Ihid. 3 Nellson v. Fothergill, Webs. Pat. Cas. 287, 289, 290. See, further, as to injunctions against licensees, post. 4 Losh V. Hague, AVebs. Pat. Cas. 200. Sir L. Shadwell, Y. C.: — "It really seems to me, that this is a case in which I must grant the injunction, because, as I understand it, the -wheels that the defendant has made, are certainly wheels made according to that thing for which, as I understand it, the plaintiff has taken out his patent, — the substance of part of the patent being, for making wheels that shall have the spoke and the felloe in parts of the same piece ; that is, in other words, the spoke is to be made with an elbow bend, which elbow bend will constitute a part of the felloes. Now, it seems to me, that there can be no question but that the wheels coniplained of, as having been made by the defendant, do answer the description of the plaintiff's wheels, and I do not think it enough, on a question of injunction, for the defendant to say why he has done the thing complained of, but will not do it attain. That is not the point ; because, if a threat had been used, and the defendant revokes the threat, that I can understand, as making the plaintiff satisfied ; but, if once the thing- complained of has been done, I apprehend this Court interferes, notwithstanding any promise the defendant may make, not to do the same thing again." 440 LAW OP PATENTS. § 336. Third. The third class of cases is, where the ques- tion of granting the injunction comes on upon the final hearing ; and, here, the situation of the parties is entirely different from the state of things on an interlocutory motion. The object of a bill in equity, to protect a patent, is a perpe- tual injunction ; and this, in general, can only be granted at the hearing ; and, if granted at the hearing, it will, necessa- rily, be perpetual. Objections raised by the defendant, there- fore, to the validity of the patent, at the hearing, require a very different consideration from the Court ; because the question is, whether the Court will give any assistance to a party, who might have applied for an interlocutory hearing, and so have given the defendant an opportunity to have had the legal title investigated, but has not done so. In such cases, where there are no circumstances shown, which would have prevented the plaintiff from asking for an injunction, in the progress of the cause, it will not only not be granted at the hearing, but the bill will be dismissed, with costs, if it has been pending for a long time, and the answer had denied the validity of the patent, and the fact of infringement.^ 1 Bacon v. Jones, 4 M. & Cr. 433. In tliis case, Lord Cottenhara said : — " Generally speaking, a plaintiff, -who brings his cause to a hearing, is expected to bring it on in such a state, as ^vill enable the Court to adjudi- cate upon it, and not in a state, in which the only course open is, to suspend any adjudication, until the party has had an opportunity of establishing his title, by proceedings before another tribunal. And, I think the court would take a very improper course, if it were to listen to a plaintiff who comes forward at the hearing, and asks to have his title put in a train for investiga- tion, without stating any satisfactory reason, why he did not make the appli- cation at an earlier stage. When he comes forward, upon an interlocutory motion, the Court puts the parties in the way of having their legal title investigated and ascertained ; but, when a plaintiff has neglected to avail himself of the opportunity thus afforded, it becomes a mere question of dis- cretion, how far the Court will assist him at the hearing, or, whether it will then assist him at all. If, indeed, any circumstances had occurred, to deprive him of that oppor- tunity, in the progress of the cause, the question might have been different. But, in this case, I have not heard any reason suggested, why the plain REMEDY IX EQUITY TO RESTRAIN INFRINGEMENTS. 441 § 337. The next question is, supposing that an injunction is not to be granted simpUciter, what course is to be taken ? This part of the subject embraces the cases, where the plain- tiff will be sent to try his title at law, without an injunction ; and the cases where an injunction will be granted, but the and ordinary course was not taken, by the plaintiffs, of previously esta- blishing their right at law. They might have brought their action, before filing the bill, or they might, afler the bill was on the file, have had their right put in train for a trial. Instead of that, they have allowed the suit to remain perfectly useless to them, for the last four years. They knew of the alleged infringement, in the month of August, 1835 ; and, from that time till the hearing, there was no moment at which they might not, by applying to the Court, have had libert}- to bring an action, to establish their title at law. It is obvious, that such a line of proceeding exposes a defendant to Incon- veniences, which are, by no means, necessary for the protection of the plain- tiff. It is no trifling grievance, to have a chancery suit hanging over him for four years, in which. If the Court shall so determine at the hearing, he will have to account for all the profits he has been making, during the interme- diate period. Is a defendant to be subject to this annoyance, without any absolute necessity, or even any proportionate advantage to his adversary', and without that adversary being able to show any reason, why he did not apply at an earlier time ? It appears to me, that it would be very injurious to sanction such a practice, more especially, when I can find no case in which the Court has thought it right to retain a bill, simply for the purpose of ena- bling a plaintiff to do that, which these plaintiffs might have done, at any time within the last four years. It was much more regular and proper, that the plaintiffs should have taken steps for putting the legal right In a course of trial. Those steps they have not chosen to take, and It Is now impossible to put the defendants in the same position In which they would have stood, If such a course had been originally adopted. For these reasons, I am of opinion, that the Master of the Rolls, finding that the evidence In the cause was not such as he could act upon with safety, came, in the exercise of his discretion, to a sound conclusion, when he refused to grant the Injunction, or retain this bill. I have purposely abstained from saying any thing as to the legal rights of the parties, because I do not think the case in such a state as to enable me to adjudicate upon It. The appeal must be dismissed, with costs." 56 442 liAW OF PATENTS. plaintiff will be required to establish his patent at law. The plaintiff will be sent to a court of law, to establish the valid- ity of his patent, without a previous injunction, if he does not show long possession and exercise of his exclusive right, where the injunction is resisted by evidence, which casts doubt on the originality of his invention, or on the question of infringement, or where the patent contains gross and obvious defects.^ § 338. With regard to the length of time, during which possession and exercise of the exclusive right must be shown, it does not appear that any specific lapse of time has been adopted as a standard ; and, indeed, it is manifest, that no positive rule can be assumed, applicable to all cases. The general principle is, as we have seen, that the time elapsed between the granting of the patent and the application for an injunction, must have been sufficient to have permitted articles or machines to be constructed by the patentee, in conformity with his claim, and to be sold publicly and repeat- edly.2 It must also appear, that the thing has, in fact, been sold publicly, if that is the kind of possession relied on ; ^ and, where the proof of possession consists of former reco- veries, or licenses granted to parties who have been sued and have submitted, if it appears doubtful whether such recoveries and submissions were not collusively obtained, the necessary kind of possession will not be made out, and the right will 1 Hovey v. Stevens, 1 Woodb. & M. 290 ; Ogle v. Ege, 4 Wash. 584 ; CoUard v. Allison, 4 M. & C. 488 ; Morgan v. Seward, Webs. Pat. Cas. 167. By defects, is to be understood such as raise doubts, as to the merits — that is, the originahty or usefulness of the patent, or the patentee's own error, in the specification. Woodworth r. Hall, 1 Woodb. & M. 400. As to defects, arising from the acts of public officers, see post. 2 See the observations of the Court, cited ante, from Orr v. Littlefield, 1 Woodb. &M. 13,17. 3 Ibid. Hovey v. Stevens, 1 W. & M. 290, 303. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 443 first have to be tried at lavv.^ But it does not impair the effect of such recoveries or submissions, that they were ob- tained by agreement, and without trial, if there was at first a real contest.^ § 339. Where, however, former use or former recoveries are relied upon, as proof of the possession of the exclusive right, they must have been under the same patent, or under a pa- tent connected in law with that under which the application is made ; otherwise, it will not appear that they related to the same right.^ But, under our system of amending specifi- cations, or of surrendering an old patent and taking out a new one, on account of informalities, the right, in contempla- tion of law, remains the same, after the issue of the new patent, if it is in fact for the same invention ; and, conse- quently, a former possession, under the old patent, will be ground for granting an injunction, without a previous trial, under the amended patent.'* Usually, where an injunction is not granted, but the plaintiff is required to establish his title 1 CoUard v. Allison, 1 M. & Cr. 487, 488; Kay v. Marshall, 1 M. & Cr. 373 ; Orr v. Badger, 10 Law Reporter, 465 ; Orr v. Littlefield, 1 W. & M. 13, 17, 18. 2 Orr V. LittleEeld, 1 W. & M. 13, 17, 18; Orr v. Badger, 10 Law Eep. 465. In Neilson v. Thompson, Webs. Pat. Cas. 275, 276, the plaintiff's solicitor proved the preparation and granting of fifty or sixty licenses, and also various infringements, by parties who submitted and took a license, on proceedings being commenced against them. Sir L. Shadwell, Y. C, said, " It seems to me, on these affidavits, that it is sufficiently made out that there has been a use of the patent in this sense, that the right of the patentee to the benefit of the patent has been submitted to, where there has been a contest, and it does not at all appear to me, that the general way in which the defendants, on their affidavit, state the mode by means of which the plaintiffs succeeded in establishing the patent, is at all an answer to the two cases which are stated in Mr. Blunt's affidavit. Then I have the case of a patent having been obtained in the year 1828, and actually enjoyed by the patentee for upwards of twelve years." 3 Hovey v. Stevens, 1 W. & M. 290. 4 Orr V. Badger, 10 Law R. 465. 444 LAW OF PATENTS. at law, the defendant will be ordered to keep an account until the question is determined.^ It seems, that where both parties claim under patents, the Court cannot grant an injunction until the rights have been tried at law.^ § 339 a. The cases where an injunction will be granted, but the plaintiff will be required to establish his patent at law, do not admit of any very precise classification under a distinct rule. The Court must exercise its discretion upon the circumstances.^ If the plaintiff has, by proof of posses- 1 See Post, as to the account. 2 This was held in Baskett v. Cunningham, 2 Eden's Ch. R. 137, in rela- tion to two conflicting patents for the printing of Bibles ; and it has not been overruled by any subsequent case. Nor can it well be overruled, for, where there are two conflicting patents, apparently for the same thing, the grounds of undisturbed possession, on which injunctions are granted, cannot exist. 3 In Harmer v. Plane, 14 Ves. 130, 131, Lord Eldon thus explained the grounds on which an injunction should be granted, in cases where there is so much doubt as to require further investigation : " The ground upon which, where doubt is excited in the mind of the Court, an injunction is granted, iintll the legal question can be tried, a ground that was acted upon in the case of Boulton v. Watt, (Boulton v. Bull, 2 Hen. Black, 453 ; 3 Ves. 140 ; Hornblower v. Boulton, 8 Term. Rep. 95 ; Hill v. Thompson, 3 Mer. 622,) in some cases preceding that, and some that have occurred since, is this : where the crown, on behalf of the public, grants letters-patent, the grantee entering into a contract with the crown, the benefit of which con- tract the public are to have, and the public have permitted a reasonably long and undisputed possession, under color of the patent, the Court has thought, upon the fact of that possession, proved against the pubUc, that there is less inconvenience in granting the injunction, until the legal question can be tried, than in dissolving it at the hazard, that the grant of the crown may, in the result, prove to have been valid. The question is not really between the parties on the record ; for, unless the injunction is granted, any person might violate the patent ; and the consequence would be, that the patentee must be ruined by Htigation. In the case of Boulton and Watt, therefore, though a case of great doubt, upon which some of the ablest judges in Westminster Hall disagreed, yet, upon the ground of the possession by the patentees against all mankind, the injunction was granted, until the question could be tried ; and the result of the trial, being in favor of the patent, proved that the conduct of the Court yi that instance was, at least, fortunate. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 445 sion and enjoyment, made out a pmnd facie case for an injunction, it will then be for the Court to consider, whether the nature of the case entitles the defendant to a farther investigation into the validity of the patent, or into the fact of infringement. The defendant will have a right to farther investigation, if he shows that there are any questions of fact or of law, which a court of equity does not ordinarily under- take to settle ; and this investigation will generally be ordered to take place in an action at law, although it is competent for the Court to direct an issue out of chancery .^ The first of these patents, granted in the 27th year of his present majesty, is expired ; and the patent for the improvements was granted in the 34th Geo. III. The agreement, entered into by this defendant, for a license to work under the patentee, would not bind the defendant. If the plaintiflF could not legally grant that license, there was no consideration ; and the question between them, therefore, is entirely open. Still, however, the patentee has had possession against all the world ; and, if he can maintain its validity by a due performance of the condition as to enrolment of the speci- fication, by dissolving the injunction in the mean time, I should act both against principle and practice ; not only enabling this defendant against law to exercise a right in opposition to the patent, but also encouraging all man- kind to take the same liberty." 1 Harmer v. Plane, 14 Ves. 130, 131 ; Hill v. Thompson, 3 Meriv. G22, 630 ; Wilson v. Tindal, Webs. Pat. Cas. 730, note. In this case. Lord Langdale, M. 11., said: " Having regard to the arguments on the validity of the patent, to the enjoyment of it by the plaintiflTs, and to the evidence which appears upon the affidavits which ^ave been made in this case, I am of opinion that the injunction which is applied for ought to be granted. The question for consideration is, whether any terms ought to be imposed upon the plaintiffs, or whether any other mode of investigatin"' the facts than that which is adopted in the usual course of proceeding in this court ought to be adopted.' It is to be observed, that all orders made on applica- tions of this kind, are merely interlocutory orders ; they do not bind the right between the parties. The injunction, which I have stated it to be ray intention to grant, will be an injunction only until further order. It will not be a perpetual injunction ; not an injunction to continue during the continu- ance of the patent. Notwithstanding this order, the defendant may put in his answer, he may displace all the affidavits which have been filed on both sides. The plaintiff" and the defendant may respectively proceed to evidence they may bring their cause on for a hearing, and, upon the hearing of the 446 LAW OP PATENTS. § 340. A denial in the answer, as to the validity of the patent, or the fact of infringement, will be sufficient to entitle the defendant to further investigation in an action at law ; but it has been held that, under our system, if the defendant cause, the whole case, the law regarding the patent, and the facts which will appear upon the depositions, will have to be reconsidered, and that recon- sideration may, for any thing that can be known to the contrary, justly end in a result different from that which I have come to upon the present occasion. The defendant, having his option to adopt this course of proceeding, has, at the bar, expressed his desire to have this matter tried at law. If he was left merely to prosecute a scire facias for the repeal of the patent, that would be one part of the question which he might in that way try. But there arc other questions subsisting betweeit the parties, regarding matters of fact, which could not be tried in that way. Now, it has been stated, by Lord Cottenham,that he recollected no instance in which the Court has not adopted the course of directing the trial of an action ; he has stated that to be the result of his experience. I certainly am very reluctant to try my own memory against that, but I should have supposed that there were instances in which that had been done. It is not the right of parties, in every case, to have an action tried in a court of law ; it is a question of convenience, and the Court is to exercise a fair discretion. I have no doubt, whatever, of the competency of this Court to grant an injunc- tion simpliciler. Neither had Lord Cottenham any doubt of it. But the question is, whether, when there is an opportunity for carrying the matter further, it is not, on the whole, a convenient course of proceeding, to have it tried before the tribunal which is most proper for the consideration of the legal question, and by which the facts can be better investigated than they can here. It is not, therefore, upon the ground of any doubt, as to the validity of the patent, that I make the order which I am about to make, but it is because the nature of the case entitles the defendant to a further inves- tigation, in one form or other, and the most convenient and most effective mode appears to me to be that which has been mentioned, namely, by bring- ing an action in a court of law. Notwithstanding, therefore, the very forcible arguments I have heard upon this subject, I think I must, in this case, as has been done in so many other cases, direct the plaintiff to bring an action to try this right, the injunction being granted in the terms of the notice of motion." In Russell v. Barnsley, Webs. Pat. Cas. 472, Sir L. Shadwell, V. C, said, that he did not recollect a case where a defendant had stated his wish to try the question at law, that the Court had refused to give him the opportunity. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 447 wishes to try the question of originality in an issue out of chancery, he must set out in his answer the names of places and persons, where, and by whom the invention had pre- viously been used, because the Act of Congress peremptorily requires notice of these facts, in a trial of this question at law.i § 341. The fact of the pendency of an action against another party, has been held not to be a sufficient ground for continuing an injunction, where the novelty of the invention was denied in the answer, without putting the plaintiff to bring an action against the new defendant.^ § 342. The practice of the Court in dissolving, reviving, continuing, or making final injunctions, previously granted, is regulated, in general, by the same rules as the practice of granting them in the first instance. A motion to dissolve an injunction may be made at any time. If made after a trial has been ordered at law, or while an action at law is pending, or while the plaintiff is preparing to bring an action, the decision of the Court will be made upon the same principles which governed the granting of the injunction in the first instance ; that is to say, the defendant will not suc- ceed in displacing the plaintiff's primd facie right to an injunction, merely by filing an answer, or reading affidavits casting doubts on the validity of the patent, provided the plaintiff is guilty of no unreasonable delay in bringing on the trial ; especially, if the plaintiff adduces auxiliary evi- dence in favor of his right.^ 1 Orr V. Merrill, 1 Woodb. & M. 376, 378. Qucere, -whether it would not be a sufficient compliance Tvith the statute, if the Court, in directing an issue, were to order the defendant to file a notice of the persons and places, before the issue is tried, without its being contained in the bill. 2 Eussell V. Barnsley, Webs. Pat. Cas. 472. 3 Orr r. Merrill, 1 W. & M. 376 ; Orr v. Littlefield, lb. 13 ; Orr v. Badger, 10 Law Kep. 465. In such cases, the injunction should be continued to the next term after that at which the suit at law might be tried, to test the title. Orr V. Merrill. 448 LATV OF PATENTS. § 343. Where the motion to dissolve is made, after a trial at law has been had, the Court will have to look at the result of that trial, and will be governed by the position in which the plaintiff's right has been left. If the proceedings at law are not in a state to be regarded as final, the Court will choose to be informed as to the further questions which re- main to be investigated. If a verdict has been rendered for the plaintiff, but a new trial has been, or is to be moved for, and if the Court can see that there is a question on which an argument might be addressed to the court of law, which might induce it to grant a new trial, the injunction will not be continued, as a matter of course, but the Court will endea- vor to leave the parties in a situation that will produce, on the whole, the least inconvenience, having regard to all the circumstances of their respective situation s.^ 1 Hill V. Thompson, 3 Meriv. 622, 628. In this case, the injunction had been dissolved, a trial at law had resulted in a verdict for the plaintiff, who came before the Court with a motion to revive the injunction. On the part of the defendants, it was stated to be their intention to move for a new trial at law, at the next term, which was as soon as the motion could be made. Lord Eldon said : " In this case, the injunction was first granted upon the strength of the affidavits, which were contradicted, as to their general effect, in the most material points, when it afterwards came before the Court upon a motion to dissolve the injunction so obtained. Many topics were then urged on both sides, and fully discussed in argument. It was insisted, on the part of the plaintiff, and the Court agreed to that position, that, where a person has obtained a patent, and had an exclusive enjoyment under it, the Court will give so much credit to his apparent right, as to interpose imme- diately, by injunction, to restrain the invasion of it, and continue that inter- position until the apparent right has been displaced. On the other hand, it was, with equal truth, stated, that, if a person takes out a patent, as for an invention, and is unable to support it, except upon the ground of some alleged improvement in the mode of applying that which was previously in use, and it so becomes a serious question, both in point of law and of fact, whether the patent is not altogether invalid, then, upon an application to this Court, for what may be called the extra relief which it aflbrds, on a clear prima, facie case, the Court will use its discretion ; and, if it sees sufficient ground of doubt, will either dissolve the injunction absolutely, or direct an issue, or direct the party applying to bring his action, after the trial of which. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 449 § 344. Sometimes, the Court will direct a motion for an injunction to stand over, when none has been granted, until either he may apply to revive, if successful, or else the other party may come before the Court, and say, I have displaced all his pretensions, and am entitled to have my costs and the expenses I have sustained, by he'wtr brought here upon an allegation of right which cannot be supported. And as, in this instance, the Court will sometimes add to its more general direc- tions, that the party against whom the application is made, shall keep an account, pending the discontinuance of the injunction, in order that, if it shall finally turn out that the plaintiff has a right to the protection he seeks, amends may be made for the injury occasioned by the resistance to his just demands. In his directions to the jury, the judge has stated it, as the law on the subject of patents — first, that the invention must be novel ; secondly, that it must be useful ; and thirdly, tbat the specification must be intelligible. I will go further, and say, that, not only must the invention be novel and useful, and the specification intcUigible, but also that the specification must not attempt to cover more than that, which, being both matter of actual dis- covery, and of useful discovery, is the only proper subject for the protection of a patent. And I am compelled to add, that, if a patentee seeks, by specifi- cation, any more than he is strictly entitled to, his patent is thereby rendered ineffectual, even to the extent to which he would be otherwise fairly entitled. On the other hand, there may be a valid patent, for a new combination of materials, previously in use, for the same purpose, or for a new method of applying such materials. But, in order to its being effectual, the specifica- tion must clearly express, that it is in respect of such new combination or application, and of that only, and not lay claim to the merit of original inven- tion in the use of materials. If there be a patent both for a machine and for an improvement in the use of it, and it cannot be supported for the machine, although it might for the improvement merely, it is good for nothinf^ alto- gether, on account of its attempting to cover too much. Now, it is contended that what is claimed by the present patent is not a novel invention ; that the extraction of iron from slags or cinders, was previously known and practised : that the use of hme in obstructing ' cold short ' was likewise known. But, to all this it is answered, that the patent is not for the invention of these things, but for such an application of them as is described in the specifica- tion. Now, the utility of the discovery, the inteUigibility of the description, &c., are all of them matters of fact proper for a jury. But, whether or not the patent is defective, in attempting to cover too much, is a question of law, and, as such, to be considered in all ways that it is convenient for the pur- poses of justice that it should be considered. The specification,"generallv, describes the patent to be ' for improvements in the smelting and workino- of 57 450 LAW OF PATENTS. it can be ascertained what the result of an application for a new trial is to be ; and where a rule, to show cause why a new trial should not be had, had been granted, an injunction was refused, it not having been allowed before.i iron ; ' and it then goes on to describe the particulars in which the alleged improvements consist, describing various proportions in the combination of materials, and various processes in the adhibition of them. The question of law, upon the whole matter, is, whether this is a specification by which the patentee claims the benefit of the actual discovery of lime as a preventive of ' cold short,' or, whether he clauns no more than the invention of that pre- cise combination and those peculiar processes which are described in the spe- cification. And, when I see that *his question clearly arises, the only other question which remains is, whether I can be so well satisfied with respect to it as to take it for granted, that no argument can prevail upon a court of law, to let that first question be reconsidered by granting the motion for a new trial. If this be a question of law, I can have no right whatever to take its decision out of the jurisdiction of a court of law, unless I am convinced that a court of law must, and will, consider the verdict of the jury as final and con- clusive. But this only brings it back to the original question ; and I see enough of difficulty and uncertainty in the specification, and enough of apparent repugnance between the specification and the patent itself, to say that it is impossible I can ai'rive at such a conclusion respecting it, as to be satisfied that there is no ground for granting a new trial. In the order I formerly pronounced was contained a direction, that the defendant should keep an account of iron produced by their working, in the manner described in the injunction. If the injunction is to be now revived, the whole of their establishment must be discharged between this and the fourth day of next term, when it is intended to move for a new trial, the result of which may be, that the defendants have a right to continue the works ; to do which, they will then be under the necessity of recommencing all their operations, and making all their preparations and arrangements de novo. It appears to me that this would be a much greater inconvenience than any that can result from my refusal, in the present instance, to revive the injunction. My opinion, therefore, is, that this matter must stand over till the fifth day of next term, when I may be informed of the result of the intended application for a new trial ; the account to be taken, in the meantime, as before." 1 There is a recent case, where an injunction was applied for and refused, and the plaintifi" was directed to bring an action, which was tried and a ver- dict found for the plaintiff. The motion for the injunction was then renewed ; but it appeared on affidavit, that a bill of exceptions had been tendered, and that the defendants also intended to move for a new trial. The Lord Chan- REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 451 § 345. This course of proceeding shows that, when a new trial has been, or is intended to be, applied for, a court of equity will generally leave the parties in the situation in which they stood before the trial. If no injunction had been previously granted, the Court will not increase the defendant's burdens by imposing one, as long as the plaintiff's right re- mains doubtful at law. But if an injunction has been grant- ed, and the plaintiff has succeeded at law, it would seem that the injunction ought not to be dissolved, on the mere sug- gestion that there is ground for a new trial, unless the Court sees what Lord Eldon called " sufficient ground of doubt " of the plaintiff's right ; but that the Court will exercise its discretion, and, if it sees reason for dissolving the injunction, it will direct the defendant to keep an account pending the discontinuance of the injunction, in order that, if it finally turns out that the plaintiff' has a valid patent, he may receive amends for the injury occasioned by the resistance to his just demands.! After a trial and judgment at law, in favor of the plaintiff, the injunction will be revived or granted as matter of course.2 How far the Court will undertake to look into the regularity of such a judgment, and to determine, on the suggestion of the defendant, whether there is probable ground for a writ of error, and therefore to suspend the injunction, is a question which has not arisen in this country ; but it seems that, in England, the Lord Chancellor has so far entertained cellor directed the application to stand over until the result of these pro- ceedinors should be known. Shortly afterwards, a rule nisi, for a new trial, ■was obtained, and then the motion for the injunction was brought on again. The Lord Chancellor said, that, under the circumstances in Avhich the case stood at law, a rule to show cause why a new trial should not be had, having been granted — he must consider the legal title of the parties as still unde- cided ; and he therefore refused the application. CoUard v. Allison, 4 M. & Cr. 487, 490. 1 See the observations cited ante, from Hill v. Thompson. See further, as to ordering an account, post. 2 Neilson v. Harford, (Cor. Lord Lyndhurst in 1841,) Webs. Pat. Cas. 373. 452 • LAW OF PATENTS. an application of this kind, as to look into the proceedings at law and the grounds of the judgment, and to satisfy him- self that no good reason existed for departing from the usual course of reviving the injunction after a judgment in favor of the plaintiff.^ § 346. An important part of the remedial process in equity is the account of profits made by the defendant. Sometimes an account is ordered to be kept, in lieu of granting or con- tinuing an injunction, and it is always ordered when the in- junction is made perpetual, unless the amount would be very small. The cases in which an account is ordered to be kept, either with or without an injunction, during the pendency of an action in which the right is to be tried, proceeded upon the principle that the plaintiff may turn out to be entitled to the right, and he is more secure of ample justice if the ac- count of the defendant's profits be kept while he is using the invention, than if it were deferred to be taken at a future time, especially if the defendant is left at liberty to make new contracts.^ Such an account will be ordered, if the injunc- tion is dissolved by reason of the •irreparable injury it would do to the defendant's business.^ 1 Ibid. 2 Hill V. Thompson, 3 Meriv. 626, 631 ; Crosslcy v. Derby Gas Light Company, Webs. Pat. Cas. 119; Neilson r. Fothergill, Ibid. 290; Morgan V. Seaward, Ibid. 168 ; Bacon v. Jones, 4 M. & Cr. 436. 3 Neilson v. Thompson, Webs. Pat. Cas. 278, 285. In this case Lord Cottenham said : " Nothing that took place could preclude the defendants from the right of disputing the plaintiff's right as a patentee, but they have, at very considerable expense, erected this machiner}-, and from that time to the present have been using it, the plaintiff being aware of it, at least from some time in 1839, (the precise day is not stated) and stood by and permitted them to do this. If he is entitled as patentee, it would be extremely hard for the Court to do any thing to prevent his receiving that which he is enti- tled to receive, and in expectation of which he permitted the defendants to go on with their work. But, on the other hand, it would be extremely hard indeed, to tell the defendants that they shall not use the works, which, with the plaintifi" 's knowledge , they have prepared at a very considerable expense ; REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 453 § 347. Sometimes, as a further means of doing justice be- tween the parties, upon the question of infringement, when an action at law is to be tried, the Court will order a mutual inspection of the plaintilfs and defendant's works. The object in so doing is to enable the parties, on the trial, to give such evidence as will tend to prove or disprove the fact of infringe- and as to telling them they may go on with the cold blast instead of the hot blast, I am told that the difference between the use of the one and the other is an expense of nearly double, even if it were possible ; at all events, they may sustain that loss, in the interval, until the right is tried. It seems to mc that stopping the works, by injunction, under these circumstances, is just inverting the purpose for which an injunction is used. An injunction is used for the purpose of preventing mischief; this would be using the injunc- tion for the purpose of creating mischief, because the plaintiff cannot possi- bly be injured. All that he asks, all that he demands, all that he ever ex- pects from these defendants, is one shilling per ton. He has not a right to say to them, you shall not use this apparatus ; he cannot do so after the course of conduct he has adopted ; he may, no doubt, say, with success, if he is right, you shall pay me that rent which the others pay, and in the expecta- tion of which I permitted you to erect this machinery. Therefore, in no possible way can the plaintiff be prejudiced ; but the prejudice to the defend- ants must be very groat indeed, if they are, for a short period, prevented from using, at their furnaces, that apparatus which, witli the consent of the plaintiff, they have erected. The object, therefore, is, pending the question, which I do not mean to prejudice one way or the other by any thing I now say, to preserve to the parties the opportunity of trying the question, with the least possible injury to the one party or the other; and I think the in- junction would be extremely prejudicial to the defendants, and do no possi- ble good to the plaintiff, for the purpose for which it may be used. It may, by operating as a pressure upon the defendants, produce a benefit, but that is not the object of the Court ; the object of the Court is to preserve to each party the benefit he is entitled to, until the question of right is tried ; and that may be entirely secured by the defendants undertaking to keep an account, not only for the time to come, but from the time when the connection first commenced, and undertaking to deal with that account in such a way as the Court may direct; and if the plaintiff is entitled, the Court will have an opportunity of putting the plaintiff precisely in the situation in which he ■would have stood if the question had not arisen. If it shall turn out that the patent is not valid, the Court will deal with it accordingly, and that will, I think, most effectually prevent all prejudice." 454 ' LAW OF PATENTS. ment. For this purpose, inspectors or viewers are appointed, under the direction of the Court, who are to be admitted as witnesses on the trial at law. If the parties do not agree ©n the persons to be appointed, the Court will appoint them.^ § 348. When the validity of the patent is fully established, an account will be ordered of all the profits made by the de- fendant, to be taken by a master ; and, if the patent has expired, the account and the injunction will extend to all the articles piratically made during the existence of the patent, though some of them may remain unsold.^ § 349. An injunction should not be dissolved merely on account of doubts as to the validity of the patent, which arise from objections to the technical form or signature of the let- ters, or other acts or omissions of the public officers, and not from any neglect or wrong of the patentee.-^ 1 Morgan v. Seaward, Webs. Pat. Cas. 1G8 ; Kussell v. Cowley, Ibid. 457. See those cases, for the decrees appointing such inspectors. 2 Crossley v. Beverley, Webs. Pat. Cas. 119 ; Crossley v. Derby Gas Light Company, Ibid. 119, 120. In this case a very curious difficulty occurred in estimating the " profits." The plaintiff was the owner of a pa- tent for making gas-meters, which the defendants had made, and sold and employed in their works. The profits to be ascertained were the benefits derived from the use of the meters, in enabling the defendants to furnish gas to their customers at a lower rate than they could have done without them, and so to obtain additional profits from an increased consumption. It was a case, therefore, presenting the uncertain elements of profits made by the appUcation of particular means, and a just distribution of those profits to a particular agent employed. The case does not furnish any principles, as it is reported. See 3 Mylne & Cr. 428, 430. 3 Woodworth v. Hall, 1 Woodb. & M. 389, 400. In this case, Mr. Justice Woodbury said : " Finally, it is contended that, if any doubt exists as to the validity of a patent, as some assuredly does here, as before stated, the in- junction should be dissolved. This may, with some quahfication as to the matters connected with the subject, be true in granting an injunction, as laid down in 4 Wash. C. C. 584, if the doubt relate to the merits — that is, the originality or usefulness of a patent, or a patentee's own error in his speci- REMEDY IN EQUITY TO RESTRAIN INtHINGEMENTS. 455 350. Upon the question of granting an injunction against a party who has had the use of the invention by permission or grant of the patentee, the doctrine seems to be this. A party who has had such use of an invention, under a contract for an annual rent, or other estimated rate of payment, may discontinue the payment, and, if he still use the invention, the patentee may sue him for the rent due, or for an infringe- ment. If an action is brought for the rent, and the defend- ant is not estopped by the terms of his contract from denying the validity of his patent, the plaintiff cannot recover without giving him an opportunity to do so.^ The same is true under an action for the infringement, if the defendant is not estopped.2 Where, therefore, a court of equity does not see that the defendant is estopped from denying the validity of the patent, but that he has a right to resist the patent, it will deal with a defendant who has used under a license or fication. But, when the objection relates to the technical form ov signature of papers connected with the letters, and the doubts arise from acts of pub- lic officers, and not any neglect or wrong of the patentee, the position seems to me not sound. More especially should an injunction, once granted, not be disturbed for such doubts, when, as in this case, the term for trial of the merits is near ; and the allowing such doubts to prevail, even to the extent of dissolving an injunction, might not merely aflect the present patent and present parties, but operate injuriously on all other patents and parties where, for the last ten years, by a contemporaneous and continued construction of the Patent Law, chief clerks have, under its authority, signed patents or other important papers as acting commissioner, in the necessary absence of the commissioner, or made mistakes of a clerical character in the form of the letters. In my opinion, so far from its being proper, under such circum- stances, to dissolve an injunction for doubts on such technical objections, it is rather the duty of the Court, if, as here, mischievous consequences are likely to ensue to others from interfering, and if, as here, legislative measures have been recommended by the public officers, which are pending, to remedy or obviate the possible evil from any public mistakes, not to dissolve an injunc- tion already granted, unless required to do it by imperative principles of law, showing the letters-patent to be clearly void." 1 Hayne v. Maltby, 3 T. R. 438. 2 As to estoppel and failure of consideration, see Bowman v. Taylor, 2 Ad. & E. 278, and other cases collected in Webs. Pat. Cas. 290, note. 456 LAW OF PATENTS. other contract, or under permission, upon the question of injunction, as it deals with other defendants ; and, as we have seen, if the bill which prays for an injunction, also shows that rent is due by contract, the Court will order the money to be paid into court, to await the result of an action at law.^ 1 Xeilson r. FothergUl, Webs. Pat. Cas. 28 7, 288. The bill showed that the plaintiffs had called on the defendants for an account of the iron smelted by the use of the invention, in order to ascertain the sum due, and that the defendants had rendered an account, in writing, of all the iron smelted by them up to the 2d of August, 1839, and duly paid one shilling per ton on the same ; that the plaintiff had ap}.lied to the defendants for an account of the iron smelted since the 2d day of August, 1839, and for like payments, but the defendants had refiised. It appeared that the draft of a license was sent to the defendants, containing, amongst others, a clause for revoking the license upon the non-payment of the rent, a/if/ that this license teas kept; that the payments were made in conformity to it, and that the plaintiffs, after August, 1839, revoked the license. An injunction had been granted, which the defendants now moved to discharge. Lord Cottenham, L. C. — "This case is deprived of those circumstances upon which I acted in the other, namely, the party who claims to be patentee, permitting them to incur ex- pense, in the expectation of being permitted to use the furnaces upon the payment of the rent, which is all the plaintiff requires. But here, all that is accounted for, because that was done under a contract, and for two years at least the party has had the benefit of the works which he has so erected, and the patentee has kept his contracts with the defendant ; he has not inter- posed and endeavored to deprive them of the benefit of their expenditure. It is the act of the manufacturer which has put an end to this connection ; he has, therefore, exposed himself to any degree of injury that may arise from the expenditure upon these works, and it appears that there is no answer to the claim to this rent from August, 1839, to August, 1840. I shall have to consider, if your client declines to escape from the injunction upon the terms I propose to him, whether the injunction should not go in a case which is deprived of those equitable circumstances which induced me to dissolve it in the others. (Wigram : Your lordship will give me the benefit of the suppo- sition, that, at law, I have a defence if the patent is good for nothing.) If you can show me that there is a real question to try, the money must be paid into court instead of being paid to the parties ; but, at all events, I do not see how far that year, from August, 1839, to August, 1840, when you went on under the contract without giving notice to determine, you can REMEDY IX EQUITY TO RESTRAIN INFRINGEMENTS. 457 § 351. It has been held, that, in a bill in equity, for a per- petual injunction, it is a good defence, that, prior to the escape paying it, either into Court, to abide the event of the trial of the question at law, or paying it to the party, if there is no question to try. Wigram, in reply. Your lordship said yeu should consider, whether, since August, 1840, we were to be considered as holding adversely, and, therefore, whether liable or not to pay for what was gone by, we were at all events wrongdoers. And then you put me to show, whether I could not in law defend myself for what was said to be due in August, 1840. The principle which I have always understood to govern cases of this sort is this, that, ex- cluding the law of estoppel, if you go into a Court of law, and can show a total failure of consideration for the contract, there you may always defend yourself; if, on the other hand, you cannot make out a case of total failure of consideration, you are liable upon your contract, and you may or may not have your cross action. This is the general principle in these cases, sub- ject to the question, whether that which has been done may or may not amount to an estoppel. The whole question in the case of Bowman v. Tay- lor, relied upon for the plaintiff, was, whether or not there could be an estop- pel by recital, and it was held that there could. In Hayne v. Maltby, the question was, whether there was any estoppel, there being no recital of the plaintiff's title, but only an agreement and a covenant to pay, and the Coui't held that there was not. In that case, Mr. Justice Ashhurst said, the plain- tiffs use this patent as a fi*aud on all mankind, and they state it to be an in- vention of the patentee, Avhen in truth it was no invention of his. The only right conferred on the defendant by the agreement, was that of using this machine, which was no more than that which he in common with every other subject has, without any grant from the plaintiff. That is exactly our case. "We say that* all mankind have a right to use it, but that some people have taken licenses, supposing it to be the plaintiff's invention. On the money then being paid into Court, the injunction should be dissolved. Lord Cottenham, L. C. : — The case of Hayne v. Maltby appears to me to come to this — that, although a party has dealt with the patentee and has carried on business, yet that he may stop, and then the party who claims to be patentee cannot recover without giving the other party the opportunity of disp«ting his right, and that, if the defendant successfully dispute his right, that, notwithstanding he has been dealing under a contract, it is competent to the defendant so to do. That is exactly coming co the point which I put, whether, at law, the party was estopped from disputing the patentee's right, after having once dealt T\'ith him as the proprietor of that right; and it ap- pears from the authority of that case, and from the other cases, that, from the time of the last payment, if the manufacturer can successfully resist the pa- 58 458 LAW OF PATENTS. granting of the patent, the inventor had allowed the inven- tion to go into public use, without objection ; but that it should be clearly established by proof, that such public use was with the knowledge and consent of the inventor.^ This is the same as one of the statute defences against an action at law, which may all be made, pursuant to the statute, in equity, if the defendant chooses, although the statute has expressly made them defences only in an action at law. § 352. If the patentee, after obtaining his patent, dedi- cates or surrenders it to public use, or acquiesces, for a long period, in the public use of his invention, without objection, he is not entitled to the aid of a Court of Equity to protect it ; and such acquiescence may amount to complete proof of a dedication or surrender to the public. The ground upon which a Court of Equity refuses to interfere, in such cases, is, that, by his own conduct, the plaintiff may have led or encouraged the defendant to make use of his inven- tion.2 tent-right of the party claiming the rent, that he may do so in answer to an action for the rent for the use of the patent during that year. That being so, I think that, upon the money being paid into Court, that is to say, upon the amount of the rent for that year being paid into Court, (if required,) and the same undertaking being given to account for the subsequent period, the same order ought to be made in this case as in the others. There must be an undertaking to deal -with the amount of that in the same way as be- fore. The great difficulty in this case, which, however, is surmounted in the undertaking, is, that the said suit does not go to that year's rent." 1 Wyeth V. Stone, 1 Story's K. 273. 2 Ibid. In this case, Mr. Justice Story said : — " In the next place, as to Wyeth's supposed abandonment of his invention to the public, since he obtamed his patent, I agree, that it is quite competent for a patentee, at any time, by overt acts or by express dedication, to abandon or surrender to the public, for their use, aU the rights secured by his patent, if such is his pleasure, clearly and deliberately expressed. So, if, for a series of years, the patentee acquiesces, without objection, in the known public use, by others, of his invention, or stands by and encourages such use, such conduct will afford a very strong presumption of such an actual abandonment or REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 459 § 353. But, although it is a principle of equity, that a patentee must not lie by, and, by his silence or acquiescence, surrender. A fortiori, the doctrine will apply to a case "where the patentee has openly encouraged, or silently acquiesced in such use, by the very defendants, •nhom he afterwards seeks to prohibit, by injunction, from any further use ; for, in this way, he may not only mislead them into expenses, or acts, or contracts, against which they might otherwise have guarded themselves ; but his conduct operates as a surprise, if not as a fraud, upon them. At all events, if such a defence were not a complete defence at law, in a suit for any infringement of the patent, it would certainly furnish a clear and satisfactory ground why a Court of Equity should not interfere, either to grant an injunction, or to protect the patentee, or to give any other relief. This doctrine is fully recognized in Rundell v. Murray, (Jacobs's R. 311, 316.) and Saunders v. Smith, (3 Mylne & Craig, 711, 728, 730, 735.) But, if there were no authority on the point, I should not have the slightest difficulty in asserting the doctrine, as founded in the very nature and cha- racter of the jurisdiction exercised by Courts of Equity, on this and other analogous subjects. There is, certainly, very strong evidence in the present case, affirmative of such an abandonment or surrender, or, at least, of a dehberate acqui- escence, by the patentee, in the public use of his invention, by some or all of the defendants, without objection, for several years. The patent was obtained in 1829; and no objection was made, and no suit was brought against the defendants for any Infringement, until 1839, although their use of the invention was, during a very considerable portion of the intermediate period, notorious and constant, and brought home directly to the knowledge of the patentee. Upon this point, I need hardly do more than refer to the testimony of Stedman and Barker, who assert such knowledge and acqui- escence for a long period, on the part of the patentee, in the use of these ice-cutters by different persons, (and, among others, by the defendants,) on Fresh Pond, where the patentee hunself cut his own ice. It is no just answer to the facts, so stated, that, until 1839, the business of Wyeth, or, rather, of his assignee, the plaintiff, Tudor, was altogether limited to ship- ments in the foreign ice trade, and that the defendant's business, being con- fined to the domestic ice trade, did not interfere, practically, with his interest under the patent. The violation of the patent was the same, and the acqui- escence the same, when the ice was cut by Wyeth's invention, whether the ice was afterwards sold abroad or sold at home. Nor does it appear that the defendants have as yet engaged at all in the foreign ice trade. It is the acquiescence in the known user by the public, without objection or qualifi- cation, and not the extent of the actual user, which constitutes the ground. 460 LAW OF PATENTS. induce another to go on expending his money and incur- ring risk, and afterwards, if profit is made, come and claim a share in the profit, without having been exposed to share in the losses ; yet delay to institute his proceedings may be explained, by the difficulty of getting evidence of the in- fringement.^ § 354. It has already been stated, that, in all cases of pro- ceedings in equity, to restrain the infringement of patents, in the courts of the United States, the injunction can, at no time, be applied for, without notice to the adverse party, giving him an opportunity to oppose it ; and, therefore, the upon which Courts of Equity refuse an injunction, in cases of this sort. The acquiescence in the public use, for the domestic trade, of the plaintiflf 's invention for cutting ice, admits, that the plaintiff no longer claims or insists upon an exclusive right in the domestic trade, under the patent ; and then he has no right to ask a Court of Equity to restrain the public from extend- ing the use to foreign trade, or for foreign purposes. If he means to sur- render his exclusive right in a qualified manner, or for a qualified trade, he should, at the very time, give public notice of the nature and extent of his allowance to the public use, so that all persons may be put upon their guard, and not expose themselves to losses or perils, which they have no means of knowing or averting, during his general silence and acqui- escence. The cases which have been already cited, fully establish the doctrine, that Courts of Equity constantly refuse injunctions, even where the legal right and title of the party are acknowledged, when his own conduct has led to the very act or application of the defendants, of which he complains, and for which he seeks redress. And this doctrine is applied, not only to the case of the particular conduct of the party towards the persons with whom the controversy now exists, but also to cases where his conduct with others may influence the Court, in the exercise of its equitable jurisdiction. (Rundell v. Murray, Jacobs's E. 311, 316 ; Saunders r. Smith, 3 Mylne & Craig, 711, 728, 730, 735.) Under such circumstances, the Court will leave the party to assert his rights, and to get what redress he may at law, without giving him any extraordinary aid or assistance of its own." 1 Crossley v. Derby Gas Light Co. Webs. Pat. Cas. 119, 120. As to what . would be reasonable time, in certain circumstances, see Losh v. Hague, Webs. Pat. Cas. 200, 201. REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 461 injunction is always sjjecial.^ Where the injunction is ap- plied for before an answer has been j51ed, the plaintiff', in addition to the allegations in his bill, must read affidavits, to show his title and the fact of infringement, especially if the defendant appears, and offers evidence against the one or the other ; and these affidavits should, in strictness, cover the issuing of the patent, the novelty of the invention, and all other facts necessary to the title.^ It is believed, however, that, in our practice, where the whole title is set out in the bill, which is sworn to, if the defendant does not read affida- vits denying thejitle, it is not usual to read them in support of the title, which is considered as verified by the bill itself. But, if the defendant attacks the title by affidavit, it must be supported by auxiliary proof, in addition to the bill, in order to make out the primd facie right to an injunction. § 355. In one of the Circuit Courts of the United States, some doubt has been thrown over the question, whether the plaintiff' is at liberty to read affidavits, in support of his title, after an answer denying it. Mr. Justice McLean has held, that, on an application for an injunction, after an answer, the plaintiff' is not entitled to read affidavits, to contradict the answer, upon the point of title.^ Mr. Justice Woodbury, on the contrary, has held, that the plaintiff" may show, from counter-evidence, that the case is different from that dis- closed in the affidavits, or answer of the defendant, and thus proceed to fortify his right to an injunction.'* I am inclined, after some examination of the point, to think that the latter is the more correct opinion.^ It is settled in this circuit, by ^ For the distinction between common and special injunctions, see 2 Story's Eq. Jurisp. § 892. 2 Daniel's Ch. Pr. 1890, 1891, Amer. edit. 1846 ; Hindmarch on Patents, 332, and cases cited. 3 Brooks V. Bicknell, 3 McLean, 250, 255. 4 Orr V. Littlefield, 1 W. & M. 13, 19. See the observations cited from tbis case, ante. 5 K Mr. Justice McLean is to be understood to mean, that the plaintiff is 462 LAW OF PATENTS. a decision referred to in the note below, by Mr. Justice Story, that the whole question, of granting or dissolving injunctions, not at liberty to read affidavits, in support of tlie novelty oT his invention, after an answer denying it, it would seem, that the practice and other author- ities are opposed to his position. In the case above cited, (Brooks v. Bick- nell,) the principal ground of objection to the plaintiff's title was, that the patent had been illegally extended ; and the opinion does not expressly affirm that the plaintiff may not adduce evidence against the answer, to sup- port the novelty of his invention, although this is implied in the observations of the Court. It is, however, clear that there is a distinction between com- mon and special injunctions on this point. In Hill v. Thompson, 3 Meriv. 622, 624, the leading case on the subject of injunctions in patent causes, ■where Lord Eldon laid down the ruies that have since been followed by all judges, an injunction had been obtained until answer, or further order ; on the coming in of the answer, the defendants moved to dissolve. The report does not expressly state that the answer denied the validity of the patent ; but, as this was the only question discussed, it is obvious that the answer must have contained such a denial ; and it appears that a variety of affida- vits were produced on both sides, tending, respectively, to impeach, and to assert the validity of the patent, and of the injunction to restrain the breach of it ; and amongst them was an affidavit, by the plaintiff, on the point of novelty. The same reasons, for allowing affidavits of title to be read, on a motion for dissolving an injunction, apply to motions for granting it, in the first instance, where the answer has been filed. Now, upon the practice of reading such affidavits, on a motion to dissolve, there has been a considerable conffict of decisions. But a distinction was adopted, at a very early period, with regard to injunctions for restraining certain wrongful acts, of a special nature, as distinguished from the common injunction, for staying proceed- ings at law. It is the settled practice of the Court, in England, to allow affidavits to be read, at certain stages, against the answer, in cases of waste, and of injuries in the nature of waste ; but, in cases of waste, they must be confined to the acts of waste, and the title, it is said, must be taken from the answer. Drewry on Injunc. 429 ; Gibbs v. Cole, 3 P. Will. 255 ; Norway V. Eowe, 19 Ves. 146, 153; Smythe v. Smythe, 1 Swanst. 254, and cases collected in the note. The question is, whether the same rule appHes to cases of patents, or, whether they do not stand, in respect to the admission of affidavits on the point of title, upon the reason of the rule which per- mits affidavits in cases of waste, upon the facts of waste. The ground of permitting affidavits to be read on the part of the plaintiff, in cases of waste, is, that the mischief is irreparable ; the timber, if cut, cannot be set up again, so that the mischief, if permitted, cannot be retrieved. The same REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 463 in cases of irreparable mischief, rests in the sound discretion of the Court, after answer, as well as before. reason exists in cases of partnership, by analogy to waste. Peacock v. Pea- cock, 19 Vcs. 49. Does not this reason apply to a denial of the novelty of the plaintiff's invention ? Such a denial, in the answer, the defendant has a right to make, and to have it tried at law ; but, if the denial is to be taken as true, on a motion to grant or to dissolve an injunction, it may work an irrepai-able mischief, before the plaintiff can estabhsh his right at law ; and yet, this is the consequence of adopting the rule, that, in cases of patents, the title is to be taken from the answer, on motions for an injunction. The Court must either assume, that the denial in the answer, upon the point of novelt}', is true, and, therefore, the plaintiff cannot have an injunction in any case, of however long possession, where the defendant chooses to make this denial ; or, it must say, that, however strong the denial In the answer, the plaintiff shall always have his injunction ; or, it must look into the evi- dence on both sides, sufficiently to determine, whether it is probable that the plaintiff will be able to establish his patent, and grant or withhold the injunction accordingly. The latter was the course taken by Mr. Justice Woodbury, in Orr v. Littlefield, where, however, an answer had not been filed, the defendant relying on affidavits ; but the reasoning of the learned judge makes the same course applicable to cases where the equity of the bill is denied by the answer. See the observations of the Court, cited ante, p. 372. There is a dictum of Lord Langdalc, M. R., in Wilson v. Tindal, Webs. Pat. Cas. 730, (cited ante, p. 382), that, " notwithstanding this order, (the injunction,) the defendant may put in his answer, he may displace all the affidavits which have been filed on both sides." This I conceive to mean, merely, that the defendant may show such a case, in his answer, as to control the prima facie case made by the plaintiff; and not that the answer necessarily displaces the affidavits before filed. In Poor v. Carleton, 3 Sum- ner, 70, 83, Mr. Justice Story reviewed this whole subject, and laid down the broad doctrine, that the granting and dissolving injunctions. In cases of irreparable mischief, rests in the sound discretion of the Court, whether apphed for before or after answer ; and that affidavits may, after answer, be read by the plaintiff, to support the injunction, as well as by the defend- ant, to repel it ; although the answer contradicts the substantial facts of the bill, and the affidavits of the plaintiff are in contradiction of the answer. CHAPTER IV. EVIDENCE. § 356. The evidence, appropriate to the different stages of a patent cause, may be divided into (1) the evidence of title, and (2) the evidence upon the point of infringement. Evi- dence of title relates to the letters-patent, and the plaintiff's interest therein, the novelty and utility of the invention, and the sufficiency of the specification. Evidence of the infringe- ment relates to the identity of the thing made, used, or prac- tised by the defendant, with the invention of the patentee. § 357. I. As to the plaintiff'' s title. With regard to the letters-patent, the Statute of 1836, \ 4, 5, makes a copy, under the seal of the Patent Office and the signature of the com- missioner, competent evidence that a patent has been granted by the government, for the invention described in the specifi- cation annexed. If the patent, produced in evidence, refers to the description in a former patent, it is necessary to pro- duce and read that former patent, in order to show what the invention is, if it is not made entirely clear and intelligible, by the patent on which the action is brought.^ § 358. The letters-patent being thus proved to have issued, they are primd facie evidence that the patentee was the first inventor of the thing patented.^ The reason, upon which 1 Lewis V. Davis, 3 C. & P. 502. 2 Alden v. Dewey, 1 Story's K. 336; "Woodworth v. Sherman, 3 Story's R. 172 ; Stearns v. Barrett, 1 Mason, 153. It is also held, in England, that the patent is primd facie evidence, on the part of the person claiming the right that he is so entitled. Minter v. Wells, Webs. Pat. Cas. 129. EVIDENCE. 465 this is held, is, that our statute requires the patentee to make oath, that he is the first and true inventor of the thing ; and, when the patent has issued, supported by this oath, the burden of proof is cast upon the party who would object, to show that the grant has been improperly obtained by the patentee ; because the law presumes, in the first instance, that the patent has been granted upon the proofs which the statute requires to be laid before the officers of the govern- ment, and that those proofs were satisfactory.^ 1 In the Philadelphia and Trenton Railroad Co. v. Stimpson, 14 Peters, 485, Mr. Justice Story, delivering the opinion of the Supreme Court of the United States, said : — " Xow, the objection is, that the present patent does not contain any recitals that the prerequisites, thus stated in the act, have been comphed with, namely, that the error, in the former patent, has arisen by inadvertency, accident, or mistake, and without any fraudulent or decep- tive 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 Presi- dent, 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, a 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 tri- bunal 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 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 jus- tice, upon matters of this sort. Patents for lands, equally with patents for inventions, have been deemed prima facie evidence that they were regu- larly granted, whenever they have been produced under the great seal of the government, without any recitals or proofs that the prerequisites, 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 59 466 LAW OF PATENTS. § 359. When the patentee wishes to strengthen this evi- dence, either in the opening of his case, or to rebut any evi- dence offered by the defendant, which may have tended to show that he was not the first inventor, he can only call per- sons who were in the way of hearing of the invention, if it had existed before, to testify that they have not heard of it. The proposition which the plaintiff has to establish, is, strictly, a negative ; he is to prove that the invention did not exist before ; and, therefore, as has been said, he must proceed by exhausting the affirmative instances of it, by calling those persons who might have known of it, if it had existed before, but who never have heard of it ; and the more those persons, from their acquaintance with the particular trade or manufacture, were i.i the way of hearing of or meet- ing with it, the stronger the evidence will be.^ § 360. Although this evidence is only general and nega- tive, it is not, on that account, without weight. To illustrate its force, as well as its proper office, we may suppose a case, where the defendant had succeeded in showing, that some prior inventor had made experiments in the same line as the patentee, and that this evidence goes so far as to show, that that person had probably accomplished the same result as the patentee ; but the point is still left in doubt, whether he had actually reached and perfected the invention for which the plaintiff has obtained a patent. The rule of law, in such cases, is, that, if the prior efforts of some preceding inventor rested in experiment alone, his experiments, however near they may have been carried to the complete production of the thing, will not prevent a subsequent more successful inventor, who has produced the perfect result at which both 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." 1 Cornish v. Keene, Webs. Pat. Cas. 503 ; Galloway v. Bleaden, Ibid. 526. EVIDENCE. 467 *' may have aimed, from obtaining a valid patent. The ques- tion for the jury will therefore be, in such cases, whether the efforts of the prior inventor rested in experiment alone, with- out coming to the point of completion, both in the theory and the actual application of the invention. Upon this question, the fact, that the invention was never heard of until it was known to have proceeded from the present patentee, is of great weight. If it had been heard of among those persons who make it the business of their lives to know what is going on in the particular trade or art which it concerns, or to know what inventions, in all arts or trades, are, from time to time, produced, prior to the time when it was made by the patentee, the presumption would be very strong that the person, who is proved to have made near experiments towards it, had actually accomplished the per- fect result.^ Still, the evidence would not be conclusive, because the report, that such an invention had been made, might have arisen from what had been done in the way of experiment alone. But it would be very strong presumptive evidence that the experiments had terminated successfully, if persons, who were in the way of hearing of such inven- tions, should testify that they had heard of such an inven- tion having been announced, although they had not seen it. On the other hand, if such persons had not heard of such an invention, the evidence would not show conclusively that the prior experiments rested in experiment alone, but it would have a very strong tendency to establish this conclusion, because there is an irresistible tendency in inventions to 1 If such persons had seen the thing, no further inquiry -would be neces- sary, for the proof would be positive, that the thing existed before. But the evidence we are here considering, relates merely to the fact of such persons having or not heard of the invention, which fact, if shown in the affirmative, of course must be aided by proof of its having been made by somebody, and would not, alone, be conclusive proof of its actual previous existence. 468 LAW OF PATENTS. become known, as to their results, if not as to their processes, whenever the results are accomplished.^ § 361. There is one other species of evidence, applicable to the issue of novelty, when the question is as to the time when the patentee had completed his invention. It may be necessary for the plaintiff to rebut evidence, offered by the defendant, as to the invention and use of the same thing by other persons, before the date of his patent, and hence it may be important to show the precise time when the invention was completed by the patentee. For this purpose, the pa- tentee may give in evidence his own declarations, as part of the res g-estce, describing the nature and objects of the inven- tion, to an extent which has been defined by the Supreme Court of the United States.^ 1 The case of Galloway v. Bleaden, Webs. Pat. Cas. 521, 525, presents a state of facts similar to that which we have supposed in the text. Two witnesses, conversant with subjects of the description of the patented inven- tion, and who devoted themselves to the knowledge of the inventions made from week to week, testified that they had not before heard of such a disco- very, previous to the issuing of the plaintiff's patent. The Court said, this was enough to call on the other side, to show affirmatively that the inven- tion was not new, and that it was for the jury to say whether the evidence, as to what had been done by the antecedent experiments or efforts of others, in the way in which it ought to be understood, had brought their minds to that conclusion. 2 " 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, Uke 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 com- pletely 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 EVIDENCE. 469 § 362. Sometimes, the issue of novelty involves the iden- tity or diversity of the thing patented, compared with some- thing before known or used, on which the defendant relies to defeat the patent. The nature of the evidence, and the sources from which it is to be drawn, are the same upon this issue, as when the question of identity or diversity arises under the issue respecting an infringement ; and the consider- ation of the principles of evidence, on both of these issues, may here be postponed, until we come to the general discus- sion of the question of identity. § 363. The plaintiff must also offer some evidence of the utility of his invention. The degree of utility, as we have seen, is not material; but the invention must be capable of some use, beneficial to society. This is ordinarily proved by the evidence of persons conversant with the subject, who may be called to say, whether the thing invented is, or is not, capa- ble of the use for which it is designed, or, whether it is an improvement upon what had been in use before. But it may also be proved, by other testimony, which will show that large orders have been given for the article, by the public, or that licenses have been taken for the exercise of thfe riijht. •&' § 364. The plaintiff, in addition to the prima facie evidence of the novelty of his subject-matter, must also offer some proof of the sufficiency of his specification. In other words, declarations of a patentee, merely afTirmlng that, at some former period, he invented that particular machine, might well be objected to. But his con- versations 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 exist- ence 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 gestce, and legitimate evidence that the inven- tion was then known to, and claimed by, him ; and thus its origin may be fixed, at least, as early as that period." The Philadelphia and Trenton Eailroad Company r. Stimpson, 14 Peters, 462. 470 LAW OF PATENTS. he must show, to use the language of the statute, that his specification is " in such full, clear, and exact terms, as to enable any person, skilled in the art or science to which it appertains, to make, construct, compound, or use" the thing patented. This may be apparent to the jury, on the face of the specification itself, from its simplicity, and the absence of technical terms and descriptions ; but where the invention is at all complicated, or terms of art or science are made use of, requiring the exercise of technical knowledge, to determine whether the specification is sufficient, it is, at least, advisable, if not necessary, for the plaintiff, in opening his case, to give some evidence that his specification can be applied by those to whom the law supposes it to be addressed. If the suffi- ciency of the specification is disputed, the plaintiff" must go into evidence to sustain it. How much of this evidence may properly be reserved for answer to the defendant's case, and how much should be introduced in the plaintiff's open- ing, must depend on the circumstances of the trial, although it may be stated, as a general rule, that slight evidence of sufficiency is all that is necessary to be offered at first, in order to make it incumbent on the defendant to falsify the specification.^ § 365. The nature and source of the evidence, to show the sufficiency of a specification, present a topic of much interest, under that somewhat difficult branch of the law of evidence 1 It seems to be the rule, in England, that the plaiutifTmust open with some evidence of the sufficiency of his specification, unless the defendant admits that it was tried, and succeeded. Turner v. Winter, Webs. Pat. Cas. 81 ; 1 T. E. 602 ; Cornish v. Keene, Webs. Pat. Cas. 503. And, if a whole class of substances be stated as suitable, the plaintiff must show that each of them will succeed. Bickford v. Hewes, Ibid. 218. Under our system of pleading, the same rule should be followed. Although the defendant is obliged to give notice, if he intends to rely on the insufficiency of the speci- fication, the plea of not guilty puts the sufficiency of the specification in issue, and the plaintiff must, therefore, prove it as one of the things neces- sary to found his action. EVIDENCE. 471 which relates to experts. What is the meaning of the sta- tute, when it refers to the ability of persons " skilled in the art or science " to which the invention appertains, " or with which it is most nearly connected," to make, construct, com- pound, and use the same ? Does it mean to adopt, as wit- nesses, those only who have the practical skill of artisans in the art or science, and to make their ability to understand and apply the specification the test of its sufficiency ; or does it include that higher class of persons, who, from general sci- entific knowledge, or from a theoretical acquaintance with the principles of the art or science involved, might be able to teach an artisan or practical workman how to practise the invention ? It is apparent, that both of these classes of per- sons may be, within the literal meaning of the phrase, " skilled in the art or science ; " but the question is, whether the law contemplates one only, or both of them, as the proper wit- nesses to determine the sufficiency of a specification. It seems to me very clear, that the law means to adopt, as a general standard of the sufficiency of a specification, the ability of skilful practical workmen to practise the invention, from the directions given in the specifications. The standard of acquirement and knowledge may vary with the nature of the subject-matter; but where the invention falls within the province of an art or science, which is practised by a parti- cular class of mechanics, operators, manufacturers, or other workmen, who possess, and whose vocation it is to apply, technical knowledge, in that particular branch of industry, the Patent Law refers to their capacity to take the specifica- tion, and carry out, in practice, the direction which it con- tains, without invention or addition of their own. § 366. Thus, if the invention be a pump, or of some im- provement in pumps, the question will be, whether a pump- maker, of ordinary skill, could construct one upon the plan given in the specification from the directions given.i If it be 1 Lamb v. Lewis, 1 Mason. 472 LAW OF PATENTS. a composition of matter, falling within the art of practical chemistry, the question on the specification will be, whether its directions are so clear and intelligible that a practical chemist, of ordinary skill, could make the compound, by fol- lowing out the directions.! if it be a process, involving the application of a principle in physics to a particular branch of manufacture, to be carried into effect in a particular man- ner, the question wiU be, whether the directions, if fairly followed out, by a competent workman, of the class ordina- rily employed to construct an apparatus of that kind, would produce the effect intended.^ This seems to be the general rule, applicable to a very large proportion of the inventions which become the subjects of patents ; and, accordingly, it may be stated, as a general rule, that the proper witnesses to determine on the sufficiency of a specification, are practical workmen of ordinary skill, in the particular branch of indus- try to which the patent relates, because it is to them that the specification is supposed to be addressed.^ ' 1 Eyan v. Goodwin, 3 Sumner, 514. 2 Neilson v. Harford, Webs. Pat. Cas. 371. 3 Gibson I?. Brand, Webs. Pat. Cas. 629 ; Bickford v. Skewes, Ibid. 219 ; Arkwrlgbt v. Nightingale, Ibid. Gl ; Elliott v. Aston, Ibid. 224; Huddart V. Grlmshaw, Ibid. 87 ; Morgan t'. Seaward, Ibid. 174 ; Neilson v. Harford, Ibid. 371. The following instructive charge, given by Alderson, B., to the jury, in Morgan v. Seaward, contains an elaborate illustration of the law on this point of intelligibility. " I will now begin with the specification. It is the duty of a party, who takes out a patent, to specify what his invention really is, and, although it is the bounden duty of a jury to protect him in the fair exercise of his patent-right, it is of great importance to the public, and by law it is absolutely necessary, that the patentee should state, in his specifi- cation, not only the nature of his invention, but how that invention may be carried into effect. Unless he be required to do that, monopolies would be given, for fourteen years, to persons who would not, on their part, do what in justice and in law they ought to do: — state fairly to the public what their invention is, in order that other persons may know what is the prohibited ground, and in order that the public may be made acquainted with the means by which the invention is to be carried into effect. That is the fair premium which the patentee pays for the monopoly he receives. The question is, EVIDENCE. 473 § 367. At the same time, there may be another class of witnesses, of much higher character, competent to be exa- whether Mr. Galloway has, in the specification, and which is accompanied by a drawing, which you ought to take as a part of the specification, described, with sufficient clearness and distinctness, the nature of his invention, and the mode by which it is to be carried into effect. He has described two inven- tions, and, if either of those inventions is sufficiently specified, the patent fails ; for if a person runs the hazard of putting two inventions into one patent, he cannot hold his patent, unless each can be supported as a separate patent. In order to support each, the invention must be useful, and must be described in the specification, in such a manner, as to lead people clearly to know what the invention is, and how it is to be carried into effect. That doctrine must be applied to each of the two inventions, contained in this patent, that is, to the invention of the steam-engine, and the invention of the machinery for propelling vessels. " To begin, therefore, with the steam-engine. — Has IMr. Galloway suffi- ciently described it, so as to enable any one to know what he has invented, and so as to enable a workman of competent skill to carry the invention into effect ? Mr. Justice BuUer, in the case of the King v. Arkwright, lays down, as the criterion, that a man, to entitle himself to the benefit of a patent of monopoly, must disclose his secret and specify his invention in such a way, that others of the same trade, who are artists, may be taught to do the thing for which the patent is granted, by following the directions of the specifica- tion, without any new invention or addition of their own. That is reasona- ble and proper ; for people in trade ought to be told the manner in which the thing may be done, in respect of which the patent is granted. How ? Not by themselves becoming inventors of a method of carrying it into effect, but by following the specification, without making a new invention, or making any addition to the specification. Kthe invention can only be carried into effect by persons setting themselves a problem to solve, then they who solve the problem become the inventors of the method of solving it, and he who leaves persons to carry out his invention,by means of that application of their understanding, does not teach them, in his specification, that which, in order to entitle him to maintain his patent, he should teach them, the way of doing the thing; but sets them a problem, which, being suggested to persons of skill, they may be able to solve. That is not the way in which a specification ought to be framed. It ought to be framed so as not to call on a person to have recourse to more than those ordinary means of knowledge, (not m- vention) which a workman of competent skill in his art and trade may be presumed to have. You may call upon him to exercise all the actual existing knowledge common to the trade, but you cannot call upon him to exercise 60 474 LAW OF PATENTS. mined on this point. These are persons who possess a tho- rough scientific knowledge, of a theoretical nature, of the prin- any thing more. You have no riglit to call upon him to tax his ingenuity or invention. Those are the criteria by -which you ought to be governed, and you ought to decide this question according to those criteria. You are to apply those criteria to the case now under consideration, and you should apply them without prejudice, either one way or the other, for it is a fair observation to make, that both parties here stand, so far as this objection is concerned, on a footing of perfect equality. The public, on the one hand, have a right to expect and require that the specification shall be fair, honest, open, and sufficient ; and, on the other hand, the patentee should not be tripped up by captious objections, which do not go to the merits of the speci- fication. Now, applying those criteria to the evidence in the cause, if you shall think that this invention has oeen so specified that any competent engi- neer, having the ordinary knowledge which competent engineers possess, could carrj' it into effect by the application of his skill, and the use of his p^e^^ous knowledge, without any inventions on his part, and that he could do it in the manner described by the specification, and from the information disclosed in the specification, then the specification would be sufficient. If, on the other hand, you think that engineers of ordinary and competent skill would have to set themselves a problem to solve, and would have to solve that problem before they could do it, then the specification would be bad. " Further, if a patentee is acquainted with any particular mode by which his invention may be most conveniently carried into eflfect, he ought to state it in his specification. That was laid down in a case before Lord Mansfield. There the question arose on a patent for steel trusses. It appeared that the patentee, in some parts of his process, used tallow to facilitate the invention for which he had obtained a patent, and, in his specification, he made no men- tion of the use of the tallow. The Court held the specification to be bad, because, they said, you ought not to put people to find out that tallow is useful in carrying into effect the invention of steel trusses. You ought to tell the public so, if that is the best mode of doing it, for you are bound to make a bond fide full and candid disclosure. So, again, in the case of the malt. That was a patent for drying malt, and one of the objections taken was, that the patentee did not state in his specification the degree of heat to which the malt should be exposed. The argument there was this. They said, it appeared that the specification was not sufficient, inasmuch as it did not describe the extent of heat to which the malt should be exposed, for it only said, ' the proper degree of heat and time of exposure will be easily learned by experience, the color of the internal part of the prepared grain affording the best criterion.' Surely, there it would have been competent to EVIDENCE. 475 ciples of the art or science to which the patent relates ; but who do not, as an habitual occupation, devote themselves to the patentee to say, any person of ordinary skill, in such a business, would be able to judge what color the malt ought to be, and that, by experiment, he would learn what degree of temperature was exhibited at the time when that proper degree of color was obtained ; therefore, the plaintiff contended that there was enough stated in the specification to enable the public to carry the invention into effect, and that the patent ought to be supported, because skilful maltsters and skilful dryers of malt would easily know where to stop, and what degree of heat was requisite for the purpose. There is no doubt that, when a man was told that a certain effect might be produced upon the malt by shaking it and subjecting it to a certain degree of heat, his mind would be set on lloat ; he would be at work upon it, to ascertain what that degree of heat should be, and he would probably find it out. But that is not enough. The specification of a patent must not merely suggest something that will set the mind of an ingenious man at work, but it must actually and plainly set forth what the invention is, and how it is to be carried into effect, so as to save a party the trouble of making experiments and trials. The Court, in that case, said, that a specification that casts upon the public the expense and labor of experiments and trials, is undoubtedly bad. Here, in this case, the defendants take that line of argument ; they say that experi- ments and trials are necessary. If it be said that all these matters will be well or easily known to a person of competent skill, (and to such only the patentee may be allowed to address himself,) then the invention will not in reality have given any useful or valuable information to the public. " Now, let us apply the principle of this case to the present, and see whether or not the patentee here has given that full information, by the spe- cification and drawing, which, being addressed to persons of competent skill and knowledge, would enable them, from that specification and drawing, to carry the invention into effect. On that subject, there is, undoubtedly, con- tradictory evidence; but you see a specification is addressed to all the world, and, therefore, all the world, at least those possessed of a competent skill, ought to be able to construct the machine by following that specification. It is not fair to you or to me, if we happen to be less inventive than our neigh- bors, that we should be prevented from constructing these machines, by rea- son of the specification not giving a clear exposition of the way in which it is to be done. In the case of the steam-engine, there was put in, on the part of the defendants, a model, made, as it was said, according to the specifica- tion, which model would not work. The model was a copy of the drawing, and would not work, because one part happened to be a little too small, whereas, if it had been a little larger, it would have worked. Now a work- 476 LAW OF PATENTS. the application of those principles, in the practical exercise of that art, science, or manufacture. Such persons may. man, of ordinary skill, when told to put two things together, so that they should move, would, of course, by the ordinary knowledge and skill he pos- sesses, make them of sufficient size to move. There, he would have to bring to his assistance his knowledge that the size of the parts is material to the working of the machine. That is within the ordinary knowledge of every workman. He says, ' I see this will not work, because it is too small,' and then he makes it a little larger, and finds it will work ; what is required, is, that the specification should be such, as to enable a workman of ordinary skill to make the machine ; with respect to that, therefore, I do not appre- hend you will feel much difficulty, but with respect to the other, there is a good deal more difficulty. I will not sum up the evidence upon the subject of the steam-engine, but I will conilne myself to the second invention, and see whether that can be carried into effect by means of the specification and the drawings, for it is to that question that the whole is directed. That invention is in two parts : first, he says, it is an improvement on paddle- wheels for propelling vessels, whereby the float-boards or paddles are made to enter and come out of the water at positions the best adapted, as far as experiments have determined the angle, for giving full effect to the power applied. He says, as far as experiments have determined the angle. That clearly speaks of an invention for enabling a party to use paddle-wheels for propelling vessels, which may be adjusted in such a way as that they may enter and come out of the water in angles the best adapted to give effect to the power of the engine ; that is to say, at the angle a, if that shall be the best position for giving full effect to the power of the engine, or at the angle h, if that shall hei-eafter, by experiment, be determined to be the proper angle. It appears, from his statement here, that the proper angle was a matter of considerable doubt at that time ; and, therefore, he does not pro- fess to set down an individual angle as the best, which appears to have been one of the ideas of the defendant, as to the effect of the plaintiff's specifi- cation. But he says, ' I will give you a method of enabling the paddle-wheels to enter and come out of the water, with the position the best adapted for giving full effect to the power of the engine.' Then, at the end of the spe- cification, after having described the manner in which it is to be done, he says, that his claim is ' for the mode herein before described, of giving the required angle to the paddles,' (that is, any angle which may be required by the person ordering the machinery,) ' by means of the rods, fj, h, i, J, and k; the bent stems marked/, the disc, a, and the crank, h.' Now, I do not think that means he is to give you a machine, the angle of which may now be a, and now b, but that, if you wish to have a machine, the paddles of which shall EVIDENCE. 477 without doubt, be examined as to the sufficiency of a speci- fication ; but the question which should be propounded to enter at angle a, which you tell him, and go out at angle b, -which you tell him, he ought to be able to construct a machine which shall answer to your order. That I take to be what the inventor says he has enabled the public to do, by means of his specification and plan. He then describes the inven- tion. In fig. 4, you have the shape of the stem, and a particular angle is mentioned, but it is obvious that it is not an angle to which the parties arc necessarily to be confined. Then he says, '^, h, i,j, and k, are connecting rods, attached at one of their ends by pins or bolts, r, to the bent stems,/, of the float-boards, and the other ends of all these rods, excepting g, are attached to the disc, a, by pins or bolts, s, as shown in fig. 5. The only observation is, that he gives no dimensions ; he fixes no points, either for the centre of the eccentric, or for the crank to which the eccentric centre is attached ; therefore, if those can only be ascertained by experiments subse- quently to be made, then the specification is bad. The whole, in some degree, turns upon the length of the rods, and the position of the centre of the eccentric. The principle upon which these parties proceed, and upon which all the inventions in that respect proceed, is, that the wheel, with its spokes, to which the floats are attached, turns round on an axis, and the floats are made to turn by means of an eccentric, and, therefore, the floats bend as the wheel revolves, and they bend, in a particular manner, according as the floats are disposed, and according to the position of the centre of the eccentric, by which they are regulated. They are regulated by means of a fixed bar, which Is attached to the centre of the eccentric disc. The others are movable boards, which are attached, apparently, to the circumference of that same disc, and the whole is made to revolve by the fixed bar being attached to a fixed point of the wheel itself, and, therefore, the revolution of the wheel forcing that fixed point round, turns round the eccentric disc, and with it changes continually the position of all those rods which are afiixed to the circumference of that disc, and, according to their being on one or the other side of that disc, they operate on the respective float-boards to which thev are attached. All that turns upon the position of the eccentric axis, and the length of the respective rods operating through the medium of this centre upon the respective float-boards ; now, the question is, whether, in the absence of any statement, as to the dimensions of these diflerent parts, and of any directions for finding the centre of the eccentric, you think the specification is sufficient or not, and that must be determined by the evidence which has been given, by the witnesses on the one side and on the other. " Now, gentlemen, you cannot treat the actual picture which is given in the drawing as any guide to the particular angle, or to the particular position 478 LAW OF PATENTS. them, in cases where there is a recognized class of practical workmen, who would be called upon to apply the directions of the eccentric ; and for this simple reason. If that were the criterion, then the substance of the invention would be the particular angle contained in the particular drawing, and, in order to show an infringement, they ought to have shown that Mr. Seaward's wheel entered the water at the same angle as the angle described by the drawing, and, therefore, in that case, you would be bound to find the first issue for the defendant, namely, that there was no infringement. If, however, you treat the picture or the drawing as only an illustration of the invention, and not as confining the invention to the particular angle there described, then you ought to find in the specification some directions, which should enable you to construct the machine in a new form, or you ought to be satisfied that, without any instructions, a workman of ordinary and competent skill, and knowledge, would be able to do it. Now, I do not think that Mr. Carpmael gives any evidence to that point ; but Mr. Brunei says, ' I have read the specification, and I think I could con- struct by it a machine, at any required angle, without difficulty.' You see he says, ' I think I could construct by it a machine, at any required angle, without difficulty ; ' but whether Mr. Brunei could do it or not, is not the point. I dare say, Mr. Brunei, the inventor of the block machinery, could invent any thing of this sort, the moment it was suggested to him, but that is not the criterion. The question is, whether a man of ordinary knowledge and skill, bringing that ordinary knowledge and skill to bear upon the sub- ject, would be able to do it. , " Then the evidence of Mr. Park is much more material. He says, 'I could, without any dilficulty, make the machine so that the paddles could enter the water at any angle.' He prepared the models which have been used. Now, the criterion is, whether, at the time when the specification was introduced to the world, Mr. Park would have been able to construct the machine, with his ordinary knowledge and skill, without the peculiar knowledge he has since obtained upon the subject, from being employed to make the models for ]\Ir. Morgan, because it would not be at all fair to allow your verdict to be influenced by knowledge so acquired ; but he says, with his ordinary knowledge and skill, he could, Avithout difficulty, construct a wheel, so that the paddles should enter the water at any angle. He says, if the diameter of the wheel is given, which it is fair should be given, and the immersion of the float, and that is also fair to be given, he could do it. Those are reasonable data for him to require, and if, with his ordinary skill and knowledge, and Avithout that peculiar knowledge which he has obtained, in consequence of his connection with the plaintifis, and with this cause, he could do it, that would be evidence on which you would be entitled to place EVIDENCE. ' 479 of the specification, is, whether a person of that class, of ordinary skill, could practise the invention from these direc- reliance. Then lie tells you how he could do it ; now, I do think it would have been a vast deal better if the specification had given us the same information, for that is what a specification ought to do. " The specification ought to contain a full description of the way in which it is to be done. The question really is, whether, upon the whole evidence, you tire of opinion that the specification does fairly and fully and properly give to the public that information which the public are entitled to receive ; that is to say, whether it tells them, Avithout having recourse to experiments, how to do it, or whether it even tells them what is the course their experi- ments ought to take — to what point their examinations and experiments should be directed. He says, he could do it with the skill he possesses; and he has described the manner in which he proposes to do it. He says, * I have seen this drawing ; ' then he produces a drawing, and he says, * this represents my plan of drawing it. An engineer of competent skill would have no difficulty in doing it.' His doing it himself, I do not consider so material, but he says an engineer of competent skill would have no diffi- culty in doing it. That is material. " Then, when that drawing was shown, some of the gentlemen appearing on behalf of the defendants, drew an angle upon it as the angle of entering, and asked him how that could be done. No doubt his principle would ena- ble him to work out any angle, but there are a set of angles which would cause the centre of the eccentric to go beyond the wheel itself, which, there- fore, it is impossible to carry into efiect, but those angles are such as would not be required in ordinary practice by any persons. You should discard, on both sides, all exaggerated cases, and look to the substance of the thing. If you think, in substance, that the information, really communicated, would be enough, in all ordinary cases, or in such cases as are likely to occur, then that would do; but if it is not a clear statement, and if it does not give such information as will render it unneceesary for parties to make experiments, then the specification would, in that respect, be insufficient. It is most important that patentees should be taught that they are bound to set out fully and fairly what their invention is ; for, suppose a person were to make an invention, and get a right of making it for fourteen years, to the exclusion of all other persons, it would be a very great hardship upon the public, if he were to be allowed to state his specification in such a way, that, at the expi- ration of the term of his patent, he might laugh at the public, and say, I have had the benefit of ray patent for fourteen years, but you, the public, shall not now carry my invention into effect, for I have not shown you how it is to be done. I have got my secret, and I will keep it. 480 LAW OF PATENTS. tions. There does not seem to be any authority, which goes the lenos^ * See Galloway v. Bleadcn, 15 Rep. Arts, N. S. ; and Pat. Kep. THE SUBJECT-MATTER. 539 Many instances in illustration of this class may be de- Chemical rived from the numerous patents in which the mode of pro- ^^ *" '' duction will have reference to the laws of cliemical combi- nation, as well as of mere mechanical admixture, as in the manufacture of iron, the composition of paints, stuccos, medicines, and similar substances. In Zinck's patent for Zinck's. making verdigris, the invention consisted in certain propor- tions of granulated copper, oil of vitriol, and aqua fortis, boiled for a certain time in a copper of a particular con- struction, and afterwards strained off and mixed with a solu- tion of potash and soda. The particular composition of matter so produced, was the essence and substance of this invention.^ Many instances, in illustration of the above class, may be ^'ew fn- . . bric!". derived from the patents granted for new fabrics, though it may be convenient to arrange some of these under the third class. In Sievier's patent for improvements in the manufacture of elastic goods, by combining in the warp covered threads of caoutchogc with non-elastic threads, and thereby forming a cloth, in which the non-elastic threads are the limit to which the elastic threads can be stretched — the essence of the invention was the particular arrangement and combina- tion of matter. The subject-matter of this invention may also be considered as the application of a known substance, in a known manner, to a purpose known before.'' The cases already mentioned will sufficiently illustrate that class of inventions in which the result attained, or manu- facture produced, consists simply in some specified arrange- 1 Sec Wood & others v. Zimmcr, 1 Holt, N. P. C. 58 ; Pat. Rep. 82. The following well-known cases possess many points in common with the preceding : Tcnnant's, for a bleaching liquid. Pat. Rep. 125. Turner's, for a yellow color. Turner r. Winter, 1 T. R. 602 ; Pat. Rep. 77. Liardct's, for a composition or stucco. Pat. Rep. 52. Wheeler's patent, in which the invention was of a new coloring mat- ter produced from malt. R. v. Wheeler, 2 B. & Aid. .349. Savory's, for a scidlitz powder. Savory v. Price, Pat. Rep. 83. "^ Sec per Tindal, C J., in Cornish v. Keenc, Pat. Rep. ; 3 Bing. N. C, 570. 540 LETTERS-PATENT FOR INVENTIONS. Second class. Gamble's patent. Dolloud'i ment, combination, or composition of matter, frequently without regard to any very precise proportions of the con- stituent parts or elements, though, in such cases, the inven- tions will generally, with more propriety, be referred to the third class. When the invention is to be classified and distinguished, according to the mode of production, the par- ticular means pursued will point out the appropriate class. II. An arrangement, combination, or composition of mat- ter, with a view of carrying out into practice certain truths, laws, or principles, the particular arrangement, combination, or composition not being of the substance and essence of the invention, except as in connection with, or subsidiary to, the truths, laws, and principles, which are to be so carried out into practice. The paper machine, which was the subject of letters- patent to Gamble, in 1801 and 1803, will furnish an instruc- tive illustration of this class of cases. The subject-matter of the invention was the making paper into sheets of great length, by means of machinerj'. This was eflected by re- ceiving the pulp on an endless web of wove wire, or other suitable material, passing round two cylinders, made to re- volve with uniform velocity. The carrying out into prac- tice this general idea or principle of the invention, would require arrangements and combinations of a very complex nature, and arrangements or combinations in themselves extremely different, would, when adopted in connection with, and as subsidiary or incidental to, this main idea, still be, substantially, the same invention. The invention did not consist in some particular means of applying an endless web to make sheets of paper of an indefinite length, but in the application of such endless web. The substance and essence, then, of this invention was an arrangement, combi- nation, or composition of parts, that is, manufactured matter, whereby paper might be made by means of an endless web, in sheets of an indefinite length. In Dollond's patent (A. D. 1758,) for a new method of making the object glass of telescopes, the invention con- sisted in combining a convex lens of crown glass and a concave lens of flint glass, so that certain known laws of light in respect of refraction and achromatization, and the THE SUBJECT-MATTER. 541 production of an image, might be carried out into practice. The invention did not consist in any mode of making the glass, or of grinding the lenses, or in assigning any parti- cular degrees of sphericity to their surfaces — these being known from the ordinary propositions of optics — but simply in combining two lenses of the kind described, so as to obtain a correction of color, and leave some amount of refraction.^ In Bainbridge's patent, (A. D. 1807,) for improvements on n.^i„. the flageolet, or English flute, the invention consisted in '^"^se's- constructing a flute so that the physical law of the vibration of a column o^ air, upon which the production of a particu- lar note depends, might be carried out in practice, in the improved instrument. In Cochrane and Galloway's patent, for removing the Coclimno inconvenience of smoke and gas generated m stoves, the way's. invention consisted in the retention of a volume of atmos- pheric air, in a condensed slate, within a close furnace, in order to effect perfect combustion. The particular means by which the inventors proposed to carry out into practice the principles or laws of combustion, were described in the specification, which contained the following passage : — "These objects may also be efliected and produced by other abstract parts and combinations of machinery, not explained or described ; but yet such alterations may be made, em- bracing the principle of our invention, that may be a diflbr- ent modification of them, and yet be, substantially, in their eflTect and principles, our invention." ^ 1 See specification of Dollond's patent ; I'at. Rep. 4'2. It may be said that DoUond's object glass was simply a combination of matter under the first class, but the lenses were to be combined according to kno\>ii theoretical laws. Ibid. 45, n. * In an action for an infringement of this patent, (Cochrane & Gal- loway V. Braithwaite & Ericsson, 3 Lond. J. 42,) by an invention in which the same principles of combustion were carried out in a different manner, and, among other things, by producing the condensed state of the air by means of a contracted orifice, instead of a weighted valve — Sir Thomas Denraan, C. J., said : — " All that seemed indispensable was, that the required resistance, the necessary degree of compression, should be produced ; and, if that could be obtained by narrowing the 542 LETTERS-PATENT FOR INVENTIONS. Minter's. In Minter's patent for an improved chair, the invention was described as consisting in the application of a self- adjusting leverage to the back and seat of a chair, whereby the weight on the seat acts as a counterbalance to the pres- sure against the back of the chair. The application of self- adjusting leverage to this purpose might be effected by many different arrangements and combinations, so that the sub- stance of this invention was not any one particular arrange- ment or combination of matter, but such an arrangement as was subsidiary to the carrying out into practice the principles described in the specification, that is, the well-known laws of a particular kind of compound lever.^ Jupe's. In Jupe's patent, for an improved expanding table, the invention consisted -n making a table in sections, which might diverge from a common centre, so that the table would be enlarged or expanded, on inserting leaves or pieces in the openings or spaces caused by such diver- gence. The validity of this patent was contested, on the ground that a table, divided as described, did not constitute a manufacture, without reference to the mechanical means by which the divergence was effected.^ If it be a manu- facture, the subject-matter of these letters-patent is a parti- cular arrangement of parts, for the purpose of effecting a certain object ; but the particular arrangement described is not of the essence and substance of the invention, except as outlet, as well as by a weighted valve, such a mode of cflFccting the object must be held as being covered by the words ' any other known means of producing required resistance.' " See Law & Practice, 79. 1 See the specification, and Minter v. "Wells, Pat. Rep. 126. 2 See Jupe v. Pratt, Pat. Rep. 151, and the specification. Ibid. Alderson, Baron : — " You cannot take out a patent for a principle, but you may take out a patent for a principle coupled with the mode of carrying the principle into effect, provided you have not only disco- vered the principle, but invented some mode of carrying it into effect ; but then you must start with having invented some mode of carrj-ing the principle into effect ; if you have done that, then you are entitled to protect yourself from all other modes of carrj-ing the same principle into effect, that being treated by a jury as piracy." Ibid. 146. This same important doctrine was laid down by Lord Tenterden, C. J., in Lewis and another v. Davis, 3 Car. & P. 502. TUE SUBJECT-MATTER. 543 ill connection with, and subsidiary to the expansion of the table, and the divergence of the parts from a centre. Watt's patent, though this may be more conveniently Watt's, referred to the third class, will also furnish an important illustration of the preceding. The letters-patent were for 1 improved method of lessening the consumption of steam and fuel in fire-engines, and the specification stated the improved method to consist in the following, among other principles, namely, in keeping the cylinder hot, in condens- ing the steam in a separate vessel, in withdrawing from that vessel the elastic vapor which was not condensed, so as to have as perfect a vacuum as possible ; the specifica- tion also pointed out the means by which these principles were to be carried out ; ' and the directions and description given therein were, according to the finding of the jury, ifiicicnt to enable a mechanic, acquainted with fire- urines previously in use, to construct fire-engines so as to lessen the consumption of steam, and, consequently, of fuel ; that is, to realize and put jn practice the invention of \Vatt. The subject-matter of this patent, if referred to this ass, must be considered as a particular arrangement and composition of manufactured matter, in connection with and furtherance of the principles or rules of management pointed out in the specification.^ The preceding are some of the principal cases, in which Inventions . ° , .... . may have a the most unportant part or the merit of the mvention con- character sists in the conception of the original idea, rather than in ",\'^^Pf^"jfe the manner in which it is to be carried out or applied in means. practice. Many other cases might be mentioned, but the preceding, it is conceived, will be sufiicient to illustrate this class, and to show that inventions may have a character which is totally independent of the particular means by which they are applied, so that the imitating that character may be a piracy of that invention, although the means may 1 Sec Law & Practice, 4G, and ante, 528, note. - The distinction here contended for is recognized in several of the judgments delivered in this case. Thus — Eyre, C J. : — " Some macliinery, it is ti-ue, must be employed, but the machinery is not of the essence of the invention, but incidental to it." Boulton & Watt v. Bull, 2 II. BI. 496. See, also, ante, 528, note. 544 LETTERS-PATENT FOR INVENTIONS. be very different, and such as, in themselves, might consti- tute a distinct substantive invention.i It will frequently be a question of some difficulty, whe- ther the particular arrangement or composition of matter is of the essence and substance of the invention ; on the deter- mination of this will frequently depend the question, whe- ther an invention has or has not been infringed by another invention, having the same or similar objects, and producing the same or similar results. The determination of the particular character of the invention will depend simply on the specification, that is, on the obvious and reasonable construction which can be put on the words by which the patentee describes and ascertains the nature of his invention.2 Third class. III. An application and adaptation of natural or known agents, and of known substances or things. Lord Dud- Letters-patent were granted (19 Jac, A. D. 1620,) to '®^'^" Lord Dudley, for his " mystery, arts, way, and means of melting iron ewre, (ore,) and of making the same into cast-works or bars of iron, with sea-coals or pit-coals, in furnaces with bellows ; " they recite, that the invention consisted in the use of sea or pit-coal, instead of charcoal. From the brief description contained in the letters-patent, it appears that the invention was simply the substitution of pit or sea-coal for charcoal ; that is, the application of the kind of coal to the manufacture of iron.^ Neilson's. In Neilson's patent, for the improved application of air to produce heat in fires, forges, and furnaces, where bellows 1 In the recent case of Ncilson v. Harford, it was admitted that the apparatus employed was incomparably superior in its effects to that described in the plaintiff's specification, and such an improvement aa would have supported a patent ; but, as it involved the principle of the plaintiff^ s invention, it was held an infringement. Pat. Rep. 295, and post. 2 See important instances of this in the case of Forsyth's patent, for the application of detonating powder to the discharge of fire-arms, {post) ; and of Hall's patent, for the application of the flame of gas to improve lace, by singing off the superfluous fibres, (post. ) 2 See this patent, and as to its exception, in the Statute of Monopo- lies. Pat. Eep. U-16. THE SUBJECT-MATTER. 545 or other blowing apparatus are required, the invention con- sisted in the application of hot-air instead of cold, the air being heated in a closed vessel, and in its passage from the blast to the furnace.^ In Crane's patent, for an improvement in the manufac- Crane's. ture of iron, the invention consisted in substituting anthra- cite in the blast-furnace, in the ordinary manufacture of iron by the hot-blast, for coke or bituminous coal.2 In Derosne's patent, for improvements in extracting and Derosnc's. refining sugar and syrups, the most valuable part of the invention consisted simply in the application of animal and other charcoal, as the medium of filter. The specification described the invention in the following manner: — "What- ever sort of charcoal it may be, it must be disposed on beds very thick, on a filter of any suitable form ; the filter, of itself, has nothing particular, and docs not form the object of the patent, because it is already known and used for other purposes, but until now it has not been used for dis- coloring** syrups." In this, as in many cases, the patents for improvements in the manufacture of iron, the invention is simply the application of a known substance ; if the sub- stance produced, rather than the mode of production, be regarded, these cases would belong to the first class, since the particular composition of matter so produced would be diflurent from that previously obtained ; but such a classifi- cation is not of a practical or useful character. In Hartley's patent, (A. D. 1773,) extended by act ofHartlcy's. parliament, (17 G. 111. c. 6,) for the method of securing buildings from fire, the invention consisted in the applica- tion of plates of metal and wire to the parts of buildings 1 Sec specification and report of proceedings on the patent. Pat. Rep. 273. 2 The sutiject-mattcr of this invention may be referred to the first class, for the anthracite iron is a new article, or a new composition of matter ; if it be considered as an old article, then the mode of produc- tion, by the combination of hot-blast and anthracite, or by the use of anthracite, is new. Sec ante, 12, and specification and report of pro- ceedings on the patent. Crane v. Price, Pat. Rep. 375. ' This term is used in the sense of the French word decolorer, or of discharging the color. See Pat. Rep. 152 - 1C5. 69 546 LETTERS-PATENT FOR INVENTIONS. and ships, so as to prevent the access of fire, the plates being laid over each other at the joints, and fastened in any known manner.^ The essence and substance of the inven- tion, in this case, was, the application of a known thing in a known manner, by simple contact, to obtain a known effect — protection fi'om fire.^ This case might have been ar- ranged under the second class, as a particular arrangement or composition of matter, for the purpose of obtaining a cer- tain result, namely, security from fire, but it seems to belono- more properly to this class. Watt's. In Watt's patent, for his improved method of lessening the consumption of steam and fuel in fire-engines, the invention consisted, among other things, in the application of a system of external casing and clothing to the cylinder, in the adaptation to the cylinder of a separate vessel, in which the steam was to be condensed, and of the air-pump, to draw off the elastic fluid from that separate vessel. The invention included other things, and might be considered, as has been already mentioned, under the second class, as a particular composition of matter, for the purpose of carry- ing out certain principles, but each of these separate appli- cations contributed essentially to the practical result, namely, the diminution of the consumption of steam, and, conse- quently, of fuel, and, as such, might have been the subject- matter of letters-patent.^ 1 The specification of this patent was as follows : — " My invention of a particular method of securing buildings and ships against the calamity of fire, is described in the manner following, that is to say, by the application of plates of metal and wire, varnished or unvar nished, to the several parts of buildings and ships, so as to prevent the access of fire and the current of air, securing the several joints by doubling, overlapping, soldering, rivetting, or in any other manner closing them up, nailing, screwing, sewing, or in any other manner fastening the said plates of metal into and about the several parts of the buildings and ships, as the case mav requke." See 17 G III c 6 • Pat. Rep. 54. ' • • • j 2 The validity of this patent, in respect of the subject-matter, was fully discussed by Eyre, C J., in delivering judgment iu Watt's case, and placed on the same grounds as the patents for methods of operat- ing and manufacturing, producing no new substance, and employing no new machinery. Boulton & Watt v. Bull, 2 H. Bl. 493 - 4. 3 As to the subject-matter of Watt's patent, see Law & Practice 46 n. e. See ante, p. 528, n. ' ' THE SUBJECT-MATTER. 547 In Forsyth's patent, for a " method of discharging or Forsyth's, giving fire to artillery, and all other fire-arms, mines, cham- bers, cavities, and places in which gunpowder, or other combustible matter, is or may be put for the purpose of explosion," the essence of the invention was the application of detonating powder, a known substance, to produce a known effect. The specification described a mode of dis- charging the powder, or producing the explosion, but this was not the substance of the invention, as claimed, and the patentee succeeded in an action against a party who had adopted a different mode of effecting the discharge, from any described in the specification.* In Hall's case, for a method of improving every kind of Hall's. lace or net, or any description of manufactured goods where fabric is composed of holes or interstices made from thread A substantial part of the invention, in Iluddart's patent, was the substitution of a tube, through which all the yarns were brought for a new circle, which had been used before. On this we have the follow- ing important judgment : — Lord Ellenborough, C. J. : — " Now the tube does seem to me an important difference from the mere circle, because it keeps the yarns in a degree of confinement for a greater time, and more certainly obtains the end pointed out in Mr. Balfour's specification ; the same end is to be attained, and, had the patent been taken onf. for tliut to be done by a tube, which was before done by a ring or circle, I should have thought the patent good, for that is a distinct substantive inven- tion." Iluddart t'. Grimsbaw, Pat. Rep. 95. 1 See Forsyth v. Riviere, Tat. Rep. 97. The specification of Forsyth's patent states : — First, the chemical plan and principles of the invention, describing generally the manner in which the known chemical compound was to be applied and dis- charged, but disclaiming the invention of the compound itself, in the following words : — " But it is to be observed, that I do not lay claim to the invention of any of the said compounds or matters to be used for priming ; my invention, in regard thereto, being confined to the use and application thereof to the purposes of artillery and fire-arms, as aforesaid." It then proceeds, as follows : — "And, secondly, I do hereby further declare, for the better illustration of my said invention, and as auxiliary to the use thereof, in relation to the mechanical parts thereof, that I have hereunto annexed drawings or sketches, exhibiting several constructions which may be made and adopted, in conformity to the foregoing plan and principles, out of an endless variety which the subject admits of." 11 Rep. Arts, 2d Ser. 401, and Pat. Rep. 96. 548 LETTERS-PATENT FOR INVENTIONS. or yarn, as usually manufactured, of every description, whether fabricated from flax, cotton, wool, silk, or any other vegetable, animal, or other substances whatsoever," the sub- stance of the invention was the application of the flame of gas, to singe off the superfluous fibres about the meshes of goods of the above description. This case furnishes a good illustration of those in which the question may be raised, whether the substance of the invention as described in and claimed by the specification, was, generally, the application of the flame of gas, or some particular mode of applying it ; in the latter case, it would belong to the second class. The patentee succeeded in an action for infringement, on the evidence that the defei.dants, having recently started in the same line of business as the plaintiff", (clear-starching lace,) had the gas laid on to the premises in a peculiar manner, of which no explanation was furnished, and used a much larger quantity of gas than could have been required for the ordinary purposes of lighting.^ Lewis's Letters-patent were granted (A. D. 1818,) to Lewis and another, for improvements on a machine for shearing cloth, 1 See Hall v. Jarvis & Francis Boot. Printed case ; and Pat. Rep. 100. The specification of this patent was as follows : — " My method of improving lace or net, or such other goods as aforesaid, is by passing them through, or at a very small distance over, a body of flame or fire, produced by the combustion of inflammable gas, while the said flame, or the intense heat thereof, is urged upwards, so as to pass through the holes or meshes of the lace or net, &c., by means of a cun-cnt of air, which is produced by a chimney fixed over a flame, immediately above the lace or net, &c. The action of the flame is to bum, singe, and destroy as much of the said superfluous fibres, or fur, as may be re- moved without injury to the lace or net, or such other goods as afore- said." The specification then gave certain directions for the trade, proceeding as follows : — The drawing hereunto annexed, represents a system of rollers, to operate upon lace or net, or such other goods as aforesaid, by the flame of inflammable gas (describing the drawing, &c.) The above apparatus or combination of machinery is conveniently adapted for the purpose of the said invention, but I do not claim the exclusive use of any apparatus or combination of machinery, except in connection with and in aid of the application of the flame of inflam- mable gas to the purposes above described in this specification." Pat. Kep. 98. THE SUBJECT-MATTER. 549 for which machine Lewis had a previous patent (A. D. 1815.) Tlie specification described various things, but the most important part of the invention was the application of a rotary cutter, to shear the cloth from list to list. In an action for the infringement of this patent, it was objected, on the part of the defendant, that, the rotary cutter being old, and having been used to shear cloth from end to end, and cloth having been sheared from list to list by shears, the application of a rotary cutter to shear from list to list, was not a subject-matter for letters-pate»t. But this ob- jection was overruled by Lord Tenterden, C. J., who said : " The case stands thus ; it appears that a rotary cutter to shear from end to end was known, and that cutting from list to list by means of shears was also known ; however, if, before the plaintiffs' patent, the cutting from list to list, and the doing that by means of rotary cutters, were not combined, I am of opinion that this is such an invention by the plaintiffs as will entitle them to maintain the present action." ^ In this case, then, the substance of the invention was the application of a known instrument, a rotary cutter, in a known manner — viz., to shear cloth from list to list. In most of the cases which have hitherto been given, the Cases of means or machinery employed, if not of the substance orp™atto^" essence of the invention, has been of some importance ; but there are a great number of cases in which the substance and essence of the invention consist in an application, re- quiring no composition of matter to put it into practice. Thus, in Daniell's patent, (A. D. 1819,) for improvements Darnell's. 1 See Lewis & another i'. Davis. 3 Car. & P. 502. The patentees had a verdict, which was not disturbed ; they also had a verdict in a subsequent action. (Lewis & another v. Marling.) The decision in these cases fully established the important doctrine, that an invention may be infringed by adopting the same general idea, but carrying it out by totally different means. In this case, it was ad- mitted that the machinery of the defendant was totally different from that of the plaintiffs, and the infringement consisted in the f:\ct of the shearing from list to list, by a rotary cutter, without any reference to the machinery by which such shearing was produced. See 2 Lond. Jour. 2d Ser. 256. 550 LETTERS-PATENT FOR INVENTIONS. in dressing woollen cloth, the invention consisted in immers- Fussell's. ing a roll of cloth, manufactured in the usual manner, in hot water; and, in Fussell's patent, the cloth was subjected to a steam bath, with the same object.^ Hadden-s. In Hadden's patent, (A. D. 1818) for an improvement in preparing wool, the invention consisted in the application of heat to wool, by means of iron heaters within the rollers Lister's. through which the slivers of wool passed ; and, in Lister's patent (A. D. 1823,) the rollers were heated by stcam.- Crompton's In Crompton's patent, for an improved method of drying and finishing paper, the substance of the invention was the use of a heated cylinder, against which the paper was con- ducted. Christ's. In Christ's patent, for " improvements in copper and other plate printing," the substance of the invention was in the preparation of the paper, and the particular means by which this was efected, as the damping the paper, is an application which would have been an invention sufficient to support the patent.^ In these, and many other cases, the substance and essence of the invention were the application and adaptation of a known agent, as heat, water, &c., for eflfecting great im- provements in manufactures. Omission of The omission of any ingredient previously used in and a substance (jQjjsi(jg].g(j essential to any particular manufacture, would 1 The latter patent was held an infringement on the former, and both were repealed by scire facias for want of novelty. 2 The invention was held substantially the same in both these cases, and both patents were repealed for want of novelty. 3 Sturtz V. Dc la Rue, 5 Russ. 322. LordLyndhurst, L. C. : '-The title in this case is for certain im- provements in copper and other plate printing. Copperplate printing consists of processes involving a great variety of circumstances. The paper must be of a particular description ; before it is used it must be damped ; it must remain damp a certain time, and must be placed in a certain temperature ; the plate must be duly prepared and duly ap- plied ; and various processes must be gone through, before the im- pression is drawn off and brought to a finished state. An improve- ment in any one of these circumstances, in the preparation of the pa- per, for instance, as in the damping it, &c., may be truly called an im- provement in copperplate printing." Ibid. THE SUBJECT-MATTER. 551 constitute a change in the series of processes pursued, and, ■onsequently, a new manufacture ; and the subject-matter if letters-patent for such an invention would properly be- long to this class, as Campion's patent for " a new and improved method of making and manufocturing double can- vas and sail cloth with hemp and flax, or either of them, without any starch whatever ; " ^ or a use of the same thing, for the same object, but according to a dificrent order of processes, as in dying patents.- The class of cases which has just been illustrated, will be Twoemof , , r. \ , inventions. the most numerous class m an advanced state ot the arts and manufactures of a country. When the manufactures are in their infancy, products which never before existed, results never before obtained, and cflects never before pro- duced, will be the subject-matter of letters-patent : this will constitute, as it were, the first era of invention ; but inge- nuity will then be directed to improvements in the mode of producing ; to the obtaining the same products or results, and to the producing the same cflects, in a more economical and beneficial manner: this will constitute the next or more advanced era of invention ; and it is obvious that new ap- plications of known agents and things must lead to such a change in the series of processes as will constitute a new manufacture.^ But although, in a large and continually increasing pro- Kvery ap- portion of the patents, the substance of the invention will be |j[|^^^^'g''J|,. an application of known agents or things, it is not every ap- ject-matter. 1 In this (as in several other of the preceding cases) the patentee failed, but it was, as in this case, in respect of want of novelty, or some defect in the specification, and not in respect of the alleged invention not being a proper subject-matter, if new and properly described in the specification. See remarks of the judges on this patent. Campion v. Benyon, 4 B. Moore, 71. ■■^ In IlelliweU's patent for water-proofing, the same substances were used, but in a ditterent order. Helliwell v. Dearman, Pat. Rep. 401 . * See ante, 531. The application, within the last few years, of electricity, for the transmission of signals, and copying seals and impressions, and gild- ing, and of light, for the purposes of photography, illustrate and con- firm these remarks. 552 LETTERS-PATENT FOR IXVEXTIONS. plication or every novelty which can constitute a new manu- facture, and, as such, be a subject-matter of letters-patent. Many cases to which the term new applications may be ap- plied, but which are not the subject-matter of letters-patent, have been designated by the terms double or new use ; and, in general, wherever the term adaptation cannot be cm- ployed in connection with the term application, that is, wherever the only change is of so simple a nature, or so obvious, as to exclude all idea of skill, thought, or design ; always supposing no new manufacture, as above described, to be the result — the application is not such as can be the subject-matter of letters-patent. It will, however, be neces- sary to consider this, or the more general question, what amount of invention is sufficient to support a patent, some- what more in detail. Amount of Invention. Every The subject-matter of letters-patent must possess the inci- an'inven- ^lent of novelty, or the principles of the common law and lion. ^jjg ^vords of the statute will not be complied with ; and, further, the result to which it leads must be a new manu- facture. But every novelty is not an invention which may be the subject-matter of letters-patent ; the change must be such as may have resulted from the exercise of or given scope for thought, design, or skilful ingenuity. It is not necessary that either thought, design, skill, or ingenuity should have been exercised : the invention or discovery may have resulted from guess or accident ; * and, in a great 1 This has been fully recognized. Thus, Lord Mansfield, C. J. : '• Inventions arc of various kinds ; some depend on the result of figuring, others on mechanism, others depend on no reason, no theory, but a lucky discovery. Water tabbies were discovered by a man spitting on a floor-cloth, which changed its colors, whence he reasoned on the effect of mixing water with oil and colors." Bull. N. P. 76 ; Pat. Eep. 54. Buller, J. : " The true foundation of all patents must be the manu- facture itself, and so says the statute, (21 Jac. 1, c. 3,) and whether the manufiicture be with or without principle, produced by accident or art, it is immaterial." 2 H. Bl. 486. THE SUBJECT-MATTER. number of cases the whole invention is but the conception of the idea ; anil, whatever may have been the thought or labor before the idea was conceived, or the result attained in practice, yet, inasmuch as the result itself gives no evi- dence of thought or labor, neither may have been exercised. This is peculiarly the case with many of the inventions which are applications of known agents and things, and described above, under the third class. In most of these cases, the practical application of the idea is easy and sim- ple, and will suggest itself as soon as the idea ; in fact, the whole invention is realized as soon as the idea is conceived. In these cases, then, it is only necessary that the possibility of thought, design, and skilful ingenuity having been exer- cised, should not be excluded. The simple substitution of one material for another, as brass for copper, in any con- struction, may or may not be an invention or discovery which could be the subject-matter of letters-patent.^ The peculiar J. Bell, K. C.: " It was not necessary to show that an invention was the result of long application or deep skill. lie remembered that, many years ago, ladies wore flowered tabbies. The method of work- ing the flower was discovered by mere accident ; a man having spit upon the floor, placed his hot iron on it, and observed that it spread out into a kind of flower. lie afterwards tried the experiment upon linen, and found it produced the same etl'ect. Uc then obtained a patent, and lived to make a considerable fortune." 29 Rep. Arts, 2d Scr. 311. Sir N. Tindal, C. J. : " In point of law, the labor of thought or ex- periments, and the expenditure of money, are not the essential grouuds of consideration, on which the question, wliether the invention is or is not the subject-matter of a patent, ought to depend. For, if the inven- tion be new, and useful to the public, it is not material whether it be the result of long experiments and profound research, or whether by some sudden and lucky thought, or mere accidental discovery." Crane V. Price, Pat. Rep. 411. 1 The following argument and illustration were used by an eminent counsel, (Mr. Leach, afterwards Sir John Leach, V. C.) in a case of an alleged improvement in the construction of barrels for containing gun- powder. " The making of an old machine with new materials could not be a discoverj-, and the plaintiff could claim no protection for an invention, the only merit of which consisted in being made of brass, instead of wood. AVlien tea was first introduced into this country, earthen tea-pots were used, but could a person who made the first one of silver be entitled to a patent ? " Walker v. Congreve, 29 Rep. Arts. 2d ser. 311. 70 553 554 LETTERS-PATENT FOR INVENTIONS. Utility of circumstances of each case must be carefully examined, for a fest. *°^^ the purpose of determining this question. The utility of the the change, and the consequences resulting therefrom, will afford the requisite tests.^ Colorable Many of the supposed cases of insufficiency of invention l^^yer^se have been cases of colorable variation from, and consequent insufficient, infringement on, existing patents ; this is a very different ground, and such changes might, under other circumstances, have been sufficient to support a patent. Thus, the immer- sion of cloth in a steam bath, with a view of damping it, was held an infringement on a previous patent for an im- provement in the manufacture of cloth, by immersing it in hot water ; that is, the substitution of steam for hot water was not, under the circumstances, a sufficient change or invention to support a patent. Also, the substitution of steam, as the means of heating hollow rollers through which the slivers of wool passed, was held an infringement on the practice of heating the hollow rollers by iron heaters.^ If If the composition of matter now called a silver tea-pot had existed before the introduction of tea, and been used for making similar infu- sions from other ingredients, its appropriation or application to making tea could not have been the subject-matter of a patent, this being the double use of a known thing, as of a meilicinc celebrated for one dis- ease to another ; but, if such a composition of matter were not known, there might have been patents for a silver pot, as well as for the first earthen tea-pot. No one can say that a silver and an earthen pot arc the same manufacture. See per Lord Abinger, C. B., Pat. Rep. 208. 1 It was objected to Crane's patent, that the substitution of anthra- cite for coke or other coal, or the combination of anthracite and hot blast, was not a sufficient invention. But the Court of Common Pleas said : " "We are of opinioa, tliat, if the result produced by such a com- bination be either a new article, or a better article, or a cheaper article to the public than that produced before ])y the old method, that such combination is an invention or manufacture intended by the statute, and may well become the subject of a patent.'' Crane v. Price, Pat. Rep. 409. 2 In R. V. Fussell, and R. v. Lister. Sec Law & Practice, 47. The immersion of cloth in hot water, according to Daniell's patent, is said to have improved its value one guinea per yard ,• had the immer- sion in steam, according to Russell's patent, been attended with a still further improvement, it may be presumed that such a change, by virtue of the great utility thereof, would have been held a sufficient invention. See post, p. 559. THE SUBJECT-MATTER. 555 a particular arrangement, combination, or composition of matter, some independent instrument or machine, as de- scribed under the first class, or in connection with the car- rying out into practice certain laws or principles, as under the second class, is the substance and essence of the inven- tion, the mere substitution of one material for another will seldom be a change in the character of the invention. It is still a particular composition of matter, and any change in the kind or species of manufactured matter produces no change in the character of the invention. Also, if the change be immaterial or useless, that is, if the What machine will do as well without it, or if some process, or sunklent. series of processes, be not substantially affected thereby, so that neither a difierent result is obtained, nor the same result in a more economical or beneficial manner, that change will not be sufiicient to support a patent. In Arkwright's patent, one article, the filleted cylinder, was proved to have been used, both in the manner the defendant used it, and likewise when covered with card, and Duller, J., said : " If it were in use both ways, that alone is an answer to it. If not, there is another question, whether the stripe in it makes any material alteration ? For, if it appears, as some of the witnesses say, to do as well without stripes, and to answer the same purpose, if you suppose the stripes never to have been used before, that is not such an invention as will support the patent." And, again, with respect to another article, the can, " if it be so, it brings the case to a short point indeed, for, if nothing else is new, the question is, whether it is material or useful. The witnesses on the part of the prosecution say it is of no use at all. In the first place, they had that before which answered the same purpose, though not made exactly in the same form — it was open at the top, it twisted round and laid the thread precisely in the same form, and had the same effect this had — so, if it was new, it was of no use ; but they say it is not new, for, though it was not precisely the same shape, in substance it was the same thing ; that is not contradicted." ^ The preceding remarks of the learned 1 R. V. Arkwright. Printed case, 185 j Day. Pat. Cas. 137; and Pat. Rep. 73. 556 LETTERS-PATENT FOR INVENTIONS. judge point out very distinctly what changes will not be suffi- cient to constitute such an invention as will support a patent ; and furnish tests readily applicable to cases of that class. A change The following words of the same learned judge contain a an im-'^ ' ' better, because more general test : " If there be any thing F^^trade^"^*^ material and new, which is an improvement in the trade, that will support a patent." ^ The words, " improvement of the trade," constitute a definition of the preceding, and it may be said that will be material and new which is an improvement in the trade, so that the preceding leads obvi- ously to the conclusion, that any change which is conducive to a more beneficial result will support a patent ; that result which is obtained more beneficially, using that term in the very wide and extended sense which it admits of, must be, in some respect or other, new. The improvement of trade is the great end and object of patents, and whatever con- duces to this, is within the spirit of the common and statute law. Thisques- The question of the sufficiency or insufficiency of an pmst'icaUy ii^vention to support a patent does not often present itself m actions under this distinct form, but indirectly, in actions for infringe- fringement. ment.^ The alleged piracy will, in general, contain, at the least, some colorable or formal variation, and the question will be, whether the change be colorable and formal, or sub- stantial and essential ; that is, whether it be such as would of itself support a patent ; this question will be determined according as the jury are of opinion that the invention has or has not been infringed, or by a special finding, as that what is new is essential, or useless, and a colorable evasion. This is often a question of extreme difficulty and nicety, especially in the cases of minute additions to complicated machinery, or of the substitution of mechanical equivalents, or of one substance for another, in one of several processes, and in chemical cases ; but an analysis of the case, with a view to classifying it under one of the preceding classes, will show whether, by reason of the change, the invention has acquired a distinct character. The analysis already given of the words of the statute. 1 Ibid. ; Printed case, 182 ; Pat. Eep. 71. " See Brunton's case, post. THE SUBJECT-MATTER. 557 and the definition of the term ' manufacture,' as a particular series of processes pursued, renders any extended remarks on the applicability of the preceding to the various classes of cases unnecessary. To a large proportion of the cases, especially of those included under the first and second classes, the words of the learned judge, in Arkwright's case, would be obviously ap- plicable, and a little consideration will show that, in all cases, the sufficiency of the invention may be examined and ascer- tained by the principles there laid down, although the pecu- liar circumstances of some of the cases might be conceived to render the preceding observations less literally applicable, there being no combination of mechanical parts. But, what- ever the peculiar form of the objection to the sufficiency of the change in Arkwright's case, it must be observed that A new ma- «=> 1 nutacture the gist and substance of the objection is, that no new manu- the test. facture was thereby produced ; the change, as specified, was not such as could be said to be sufficient to constitute a new manufacture ; the cotton spun after this change would be essentially the same manufacture as that spun before ; the change produced no manufacture which could be said to be material and new, or an improvement of the trade. It is the efl'ect on the result which must be looked at, and not the change in the particular means or intermediate processes which contribute to that result. The change is insufficient, not because of its own minuteness, but because it fails to constitute a new manufacture. In Lord Dudley's patent, the change was simply the sub- Dudley's, stitution of pit-coal for charcoal ; but that change constituted a new manufacture — new, both in respect of the constitu- tion of the iron and its mode of production. The result also, in this case, was highly beneficial, for the wood of the country was nearly exhausted, and this disco- very led to a totally new source of trade. ^ In Neilson's, the change was, blowing the furnace with Neilson's. hot instead of cold air ; and, in Crane's, the substitution of Crane's. anthracite as the fuel where hot blast was used. Both these 1 Ante, and Pat. Rep. 14. See also Mansell's patent for substitut- ing coal for wood in the manufacture of glass. Pat. Eep. 17. 558 LETTERS-PATENT FOR INVENTIONS. Derosne's. HaU's. Daniell's. Fussell's. Change small, but result im- portant. Sufficiency depends on the result. inventions introduced into use minerals previously intracta- ble, and were thus of great benefit to the country.^ In Derosne's patent, the invention was the application of charcoal to filter sugar. Here an entire change took place in one process, and this would constitute a new manufacture. Sugar had never been produced in this way before.2 In Hall's case, the application of the flame of gas to singing off the superfluous fibre of lace, constituted a new manufacture ; this final process had, till then, been done in an imperfect and inefficient manner ; but the result obtained was highly beneficial, and a great improvement in the trade.*^ In Daniell's case, cloth, manufactured in the usual man- ner, was rolled up and saturated in hot water. This addi- tional process constituted a new manufacture, and very much increased the value of the cloth. But the subsequent patent of Fussell, for an improved manufacture of cloth, by^im- mersing it in steam till it became saturated, was held an infringement. This change might be said to constitute a new manufacture, but the change of means was very obvi- ous, and the result not superior to that obtained under the previous patent of Daniell.4 In these, and many other cases which might be mentioned, the changes, though apparently trifling, were extremely im- portant in their consequences, and the results to which they led were new manufactures and great improvements in the trade. It is obvious, in all these cases, that no estimate can be formed of the amount of invention, except from the im- portance of the result, and that, though the exercise of thought, design, and ingenuity is not excluded, and proba- bly took place, the merit of the invention is in having con- ceived and realized the idea, and derived means for carrying it out into practice, so as to constitute a useful invention. The sufficiency of the invention, then, does not depend on the thought, labor, or skill, which has been bestowed upon it, but upon its having a distinct and independent character. 1 See ante, and Pat. Ecp. 273 and 375. 2 ^n o ' sequences, is the real practical test of the sufficiency of an invention ; and, since the one cannot exist without the other, the existence of one may be presumed, on proof of the ex- Sufficiency istence of the other. Whenever, then, utility is proved to ma"T°*rT ^^'^"^ ^" ^ ^'^''^ g^'^at degree, a sufficiency of invention to sumed from support a patent must be presumed. And the fact of one great utlli- .. \ . . , , • r- ,, ty. mvention havmg come mto use to the exclusion ot another of prior date, and apparently extremely similar, will lead to the presumption that there was some difference, and a suf- ficient difference to support a patent — the one invention having failed, and the other having come into use.-^ presumed^ The following important practical conclusion may be de- from appa- rived from the preceding, namely, that the sufficiency of an 3resumed !rom appa- rent change . . , ■ ^ ^ f • J i_ L mvention cannot be judged oi or ascertamed by the appa- rent amount of thought, design, or skill, which may or may not have been exercised in producing it. In many cases, as those in which the invention consists in the application of some known substance or thing, the result can exhibit no trace of the thought, design, or labor expended, however great it may have been ; and, in those cases in which the result itself may exhibit traces of that thought and design, as in some complicated piece of machinery, or elaborate composition of matter, that result may turn out to be useless, and so the invention, which is to all appearances most sufficient, may, in fact, be most insufficient." Brunton's '^^^ difficulties in which this question is involved, and the case. necessity of recourse to other tests and considerations than the apparent design or amount of invention, cannot be better illustrated than by the celebrated case of Brunton's patent.' In this case, the question of the sufficiency of an invention to support a patent, was much considered, and the learned 1 Tills was the principle of the decision in Ilallett v. Hague. (2 B. & Ad. 370.) There Avcrc two patents, extremely similar, for improvements in eva- porating sugar; the one had failed, but the other had come into use. - If an invention be useless, the letters-patent will be void, what- ever the skill or ingenuity which has been exercised. See Law & Practice, 117 and 118. 3 Brunton v. Hawkes, 4 B. & Aid. 341. THE SUBJECT-MATTER. 561 judges drew some very minute and subtle distinctions, of great practical importance in similar cases. The letters-patent were " for improvements in the con- structing of ships' anchors and windlasses, and chain cables or moorings." The windlass was admitted to be new, and the jury found the chain cable and the anchor to be new and useful. A rule nisi was granted for a new trial, on the grounds of insufficient invention to support a patent, both in the cable and anchor ; and the new trial was granted on the latter ground only. The first chain cables (Captain Brown's) were made with twisted links, a wrought-iron stay being fixed across the middle of the opening of each link, to keep it from collaps- ing. The invention in Brunton's cables consisted in making The chain the links with straight sides and circular ends, and in sub- ^" stituting a cast-iron stay with broad ends, adapted to the side of the link, and embracing them. The particular form of link and the broad-ended stay were adopted from con- siderations respecting the action of forces, and the nature of the strains to which cables were subjected, which were fully set forth in the specification. On this part of the in- vention, Abbott, C. J. : "As at present advised, I am in- clined to think that the combination of a link of this par- ticular form with the stay of the form which he uses, al- though the form of the link might have been known before, is so far new and beneficial as to sustain a patent for that part of the invention, if the patent had been taken out for that alone." Bayley, J. : " The improvement in that respect, as it seems to me, is shortly this : so to apply the link to the force to operate on it, that that force shall operate in one place, namely, at the end ; and this is produced by having a bar across, which has not the defect of the bar formerly used for similar purposes. The former bars weakened the link, and they were weak themselves and liable to break, and then, if they broke, there might be a pressure in some other part. Now, from having a broad-ended bar, instead of a conical one, and having it to lap round the link, instead of perforating it, that inconvenience would be avoided ; and, 71 562 LETTERS-PATENT FOR INVENTIOXS. therefore, the present impression on my mind, as to this part of the case, is, that the patent might be supported." Best, J., doubted whether the patent could be supported in respect of the chain cable, on the ground that the speci- fication claimed the form of the link as new, and had not confined the claim to the use and introduction of the stay- between the links, embracing the sides instead of entering them. Thesub- The above learned judges were agreed, that the substitu- a broad- tion of the stay or bar was, under the circumstances, a suflfi- headedfor cient invention to support the patent; and the utility of stay in the this substitution, in respect of the result, and in connection link of the • , , • • i i • , , • j i i cable a suf- With the prmciples which were to be earned out by that veiTt?on"^' substitution, is very prominently adverted to'by all of them. The change was but small, but the principles upon which it was adopted, as set forth in the specification, exhibited traces of thought and design having been exercised about it, and the evidence at the trial proved the superiority of that chain cable above those of Captain Brown, who had himself adopt- ed the improvement. So that the general observations of BuUer, J., and the practical tests to which they lead, are applicable to, and were fully recognized in, this case. Theanchor. The invention in respect of the anchor consisted in mak- ing the two flukes or arms in one piece, with such a thick- ness of metal in the middle, that a hole might be pierced through it for the insertion of the shank, instead of joining the two flukes in two distinct pieces, by welding to the shank ; the hole being made conical or bell-mounted, so that no strain could separate the arms from the shank, by which means the mischief to the materials, from repeated heating, was avoided, only one heating being necessary to unite the end of the shank perfectly with the sides of the conical hole. With respect to this, Abbott, C. J. : " The mode of joining the shank to the flukes of the anchor is, to put the end of the shank, which is in the form of a solid cylinder, through the hollow and conical aperture, and it is then made to fill up the hollow, and to unite itself with it. Now, that is pre- cisely the mode by which the shank mushroom anchor is united to the mushroom top, by which the shank of the adze anchor is united to its other parts. It is, indeed, the THE SUBJECT-MATTER. 563 mode by which the different parts of the common hammer, and the pick-axe, also, are united together. Now, a patent for a machine, each part of which was in use before, but in which the combination of the different parts is new, and a new result produced, is good ; because there is a novelty in the combination. But here the case is perfectly different ; formerly, three pieces were united together ; the plaintiff only unites two ; and, if the union of those two had been effected in a mode unknown before, as applied in any de- gree to similar purposes,' I should have thought it a good ground for a patent ; but, unfortunately, the mode was well The simple » ,...,, » 1 application known, and long practised. I think that a man cannot be ^(^^^^^^^ entitled to a patent for uniting two things instead of three, j;;^^^';^'^"'' where that union is effected in a mode well known and long for a simi- , /. lar purpose, practised for a similar purpose. It seems to me, theretore, ^ot a sub- that there is no novelty in that part of the patent, as affects Ject-matter. the anchor ; and, if the patent had been taken out for that alone, I should have had no hesitation in declaring that it was bad." Bayley, J. : — "As to the ship's anchor, in substance, the patent is, for making in one entire piece that which for- merly was made in two. The two flukes of the anchor used to consist of distinct pieces of iron, fastened to the shank by welding. In the present form, the flukes are in one piece, and, instead of welding them to the shank, a hole is made in the centre, and the shank introduced The mak- ^ , , , , ~ , • ine in one through the hole. Could there be a patent for making, pi^cc Uiat in one entire piece, what before had been made in two 1)^'",^ Jj^'^jg pieces.' I think not;^ but if it could, I think that still in two, not Til 1 J '^ subject- this would not be new. In the mushroom and adze matter. anchors, the shank is introduced into the anchor by a hole in the centre of the solid piece ; and, in reality, the adze 1 The words of the chief justice, as applied in any degree to similar purposes, and the subsequent illustration, are very important ; the law requiring originality of idea and conception — as in the application of explosive mixture in Forsyth's case, of gas in Ilall's, and of charcoal in Derosnc's. See ante, 546 - 550. - This dictum of the learned judge must evidently be received and applied with great caution : for many cases may occur, in which the doing this verj' thing would be a most important new manufac- ture — the avoiding a joining may be most essential and material. 564 LETTERS-PATENT FOR INVENTIONS. anchor is an anchor with one fluke, and the double-fluke anchor is an anchor with two flukes. After having had a one-fluked anchor, could you have a patent for a double- fluked anchor > I doubt it very much. After the analogies alluded to in the argument of the hammer and pick-axe, I do not think that the mere introducing the shank of the anchor, which I may call the handle, in so similar a mode, is an invention for which a patent can be sustained. It is said, in this case, that the mushroom anchor and adze anchors are not ship's anchors, but mooring anchors. I think they are ship's anchors ; they are not, indeed, such anchors as ships carry with them, for the purpose of bring- ing the ship up ; but if the ship is required to be stationary at a particular place, then the common mode of making it stationary is by the mushroom anchor. So the mode adopted to bring a ship, containing a floating light, to an anchor, is by mooring her to one of these mushroom anchors. That is the description of an anchor for a hold- fast to the ship. The analogy between the case of the mushroom anchor and of the adze anchor is so close to that of the present anchor, that it does not appear to me that this discovery can be considered so far new, as to be the proper ground of a patent. In reality, it is nothing more than making in one piece what before was made in two, and introducing into this kind of anchor the shank, in the way a handle is introduced into a hammer or pick-axe." Best, J. : — " Then, as to the anchor, the invention claimed is, that he avoids the welding ; but that certainly is not new, because that has been done before, in the case of the mushroom and adze anchor, the pick-axe, and the Applica- common hammer. It is said, however, that his invention known ^ consists in the application of that which was known before mode to a to a new subject-matter, namely, that he had, for the first new sub- . ,-i, n • r i^ j- ject-matter. time, applied to the manufacturing of anchors a mode in which welding was avoided, which, however, had been long practised in other instances, to which I have before alluded ; but he does not state that as the ground upon wliich he had applied for his patent, nor state in the specification, that, it being known that the process of welding weakens the anchor, he had first applied to an anchor a mode long prac- tised in the manufacture of other instruments, namely, of THE SUBJECT-MATTER. 565 making the two flakes of one piece, instead of two. If he had so described his process, the question would then arise, whether that would be a good ground for a patent. 1 incline AppHcu- to think, however, that, it having been long known that weld- known ing maybe avoided in instruments of a similar form, the ^j'jj^jlj'^j. application of that practice, for the first time, to a ship's purpose. anchor, cannot be considered a new invention, and, there- fore, that it is not the ground of a patent." The judges were unanimous in their opinion, that the patent, in respect of the improvements in the anchor, could not be supported ; that the application of a mode, well known and generally used in several of a class of cases, to one particular case of that class, did not constitute some manner of new manufacture, within the meaning of the statute. If the sufficiency be judged of only from the invention, which the results themselves, the cable and the anchor, exhibit, the substitution of a conical end to the shaft, and of a conical hole in the piece constituting the two arms, whereby the pieces were supposed to be more securely united, is as great a change as the substitution of a broad-headed for a pointed stay across a link. And yet there can be no doubt that the invention in the cable was of a much higher order than in the anchor. The improve- ment in the cable was the carrying out into practice certain important principles respecting the action of forces, by the substitution of the broad-headed for the pointed stay, in a link of a particular form. The improvement in the anchor was the avoiding the welding, by means well known and practised in cases extremely similar. There was originality of idea in the application of the broad-headed stay, as sub- sidiary to the principles for the improvement of the chain- cable, as laid down in the specification, but there was no originality of idea or of method in avoiding the welding, this being borrowed from cases which would obviously and immediately present themselves. It should also be remarked, with the view of pointing out whatever may have contributed to the subtle distinctions which were drawn in this case, that evidence of the great superiority of the cable was given at the trial, but nothing appears to have been said respecting the anchor. And this has been confirmed by the result, for the cable is 566 LETTERS-PATENT FOR INVENTIONS. in constant and general use, but anchors are made as before the patent. This case is much relied on, whenever the sufficiency or insufficiency of an invention is in question, either directly or indirectly ; but, in applying this, as all other decisions on patents, great care is requisite ; and, unless the peculiar circumstances of each case are fully examined and compre- hended, the greatest uncertainty will prevail. i Saunders's. In Saunders's patent, for improvements in buttons, the specification stated that the improvements consisted in the substitution of a flexible material, in the place of metal shanks, on buttons, and described a mode of substituting the one for the other, by means of a collet ; but the use of the collet was not claimed as part of the improvements, and a flexible shank was old. So that, in this case, the only invention claimed was the substitution of one known thing for another, a flexible for a metal shank, both having been in use before. A button was old ; and any invention must, therefore, have reference to the mode of manufiicture, and the mode described in the specification was not claimed as new.2 Kay's. In Kay's patent, for new and improved machinery for preparing flax, hemp, and other fibrous substances, by power, the specification declared the invention to consist in new machinery for macerating the flax, (kc, and also in improved machinery for spinning the same. The inven- 1 It would be very easy to point out instances, in which decisions in one case have been applied to other cases, without any regard to the peculiar circumstance of each case ; and tliis has mainly contri- buted to the opinion, so often expressed, of the obscurity and uncer- tainty of tlie Law of Patents. Sec Pari. Rep. A. D. 1829. - Saunders v. Aston, 3 B. & Ad. 881. The real invention, in this case, was the sulistitution of a flexible shank by the special aid of the collet, and, had this been properly claimed in the specification, the patent would have been good. Littledale, J. : — " Neither the button nor the flexible shank was new, and they did not, by merely being put together, constitute such an invention as could support the patent. It is contended, that the operation of the collet, under the present patent, is new, but that is not stated in the specification as the object of his invention, and it is, in fact, only one mode of carrying it into efl'cct." Ibid. THE SUBJECT-MATTER. 567 tion, in respect of the latter object, consisted in placing the retaining and drawing rollers nearer to each other than was usual, and at assigned distance ; but, inasmuch as the rollers were usually made capable of movement, and adjustable at variable distances, the Court of Common Pleas were of opinion, that the fixing them at an assigned distance was not a good subject-matter ; or, in other words, that spinning at a particular distance did not constitute a new manu- facture, it having been the practice to spin at variable dis- tances.i Many other cases have been already mentioned, in which the sufficiency of the invention was really in question, and the general conclusion from them is, that any change, how- ever minute, if leading to a beneficial result in the arts and manufactures, is sufficient to support a patent." Novelty and Non-user. The question of novelty has already been, in a great measure, considered, but the words of the statute not only render novelty an essential incident of the subject-matter, but also explain and qualify it, in a manner which is of great practical importance. By the statute, letters-patent are to be granted for the " sole working or making of any manner of new manufactures, which others, at the time of making such letters-patent and grant, shall not use ; "*' and there is a condition in the letters-patent themselves, for ren- dering them void if the invention be not a new invention, as to the public use and exercise thereof, within that part of the United Kingdom for which the letters-patent are granted. 4 Novelty Thus the incident of novelty is qualified, explained, and non-user. 1 Kay V. Marshall, Pat. Rep. The substance of the invention, in this case, was spinning at a much less distance than had before been done, namely, at about two and a half inches, in conjunction with maceration ; but the specification did not thus describe and claim the invention. Ibid. 2 See ante. ' 21 Jac. 1, c. 3, 8. 6 ; Law & Practice, 45. * See Law &, Practice, 80, n. k. 568 LETTERS-PATENT FOR INVENTIONS. interpreted by the incident of non-user ; and that will be new, within the meaning of the words of the statute, and of the letters-patent, which is discovered then for the first time, or which is communicated to others then for tlie first time, whether discovered by a person's own wit and ingenuity, or learned from abroad. i The time The invention must, according to the words of the statute, the^m?n- ^^ new at the time of the grant of the letters-patent ; and tion must these generally bear date the day of affixing the great seal ; be new C" •' but, by an early statute, ( 18 H. 6, c. J ,) they may bear date the day of the delivery of the warrant from the crown, the Privy Seal Bill, into Chancery, but not before that day ; and the Chancellor will, on petition, order them to bear the date of this delivery, but he cannot order an earlier date.2 This, considering the delay which may occur in the progress of the letters-patent through the different offices,^ and the law that user or publication of the invention, before the date of the letters-patent, would vitiate them, has been much com- mented upon by practical men as a hardship, and endanger- ins of their invention.'* 1 This exception, in favor of a communication from abroad, is an essential part of the common law, and within the policy of the statute, which was intended to encourage new devices within the realm, and, whether learned by travel or by study, the country is equally benefited, provided a new manufacture be introduced. Sec Edgbury v. Stephens, Pat. Kep. 35 ; also, per Eyre, C. J., 2 H. Bl. 491. 2 See Statute Law & Eracticc, 33 ; and In re Cutler's Patent, Pat. Rep. 418. This statute was passed to prevent certain practices prevalent, in respect of grants of lands and offices, whereby letters-patent were ante- dated, and parties in possession unjustly deprived. But, in the case of letters-patent for inventions, it is occasionally productive of hardship? as where a party has been delayed, by circumstances over which he had no control, in passing his patent through the offices. 3 From a montli to six weeks. Sec Law & Practice, 15. ■• See Pari. Rep. on Patents. This evil is practically much less than at first sight may appear, from tlie caution which inventors exercise. But still, in cases where workmen must be employed, the disclosure to a rival in trade, or pub- lication to the world, may subject the real inventor to much annoy- ance, though the law would ultimately render him safe and secure in his rights. TUE SUBJECT-MATTER. 569 It has not vet been decided how far the publication of an Publication •' ... independ- invention, independent of any user, would vitiate a subse- cut of user. quent patent. A project or scheme may have been pub- lished as likely to succeed, but, notwithstanding such publi- cation, may never have been tried ; would this publication vitiate the patent of a person, who, without seeing this book, or receiving any suggestion, hits upon this same project, and finds it a useful invention, and introduces it into actual use and exercise ? ^ By the words of the statute, user by others at the time of the grant, is the criterion of novelty, so that the words of the statute include all cases of re-inven- tion. In the great fluctuations to which manufactures are subject, a process or mode of manufacture, once in constant use and exercise, may be totally lost sight of; he who brings this again into use, renders the same service to the manu- factures of the country as he who invents that which was never before known. The words of the statute also include those cases in which projects have been abandoned after many experiments, and an independent inventor or success- ful competitor, availing himself of what has been before (lone, perfects the project, and brings the invention into use.2 The letters-patent contain a proviso by which the grant is voidable, " if the said invention is not a new invention as to the public use and exercise thereof," without any reference to time.* The very difficult and important question of novelty in connection with user, was presented in the following lumi- nous manner, by Sir N. Tindall, C. J., in a recent case : * " It will be for the jury to say whether the invention was or 1 It is generally assumed that publication in any printed book would vitiate a subsequent patent, but this seems to rest on the presumption that the subsequent inventor learnt it from such book. « See per Tindall, C. J., in Galloway v. Blcaden, 15 Rep. Arts, N. S. ; Law &, Practice, 81, and Pat. Rep. 3 The Courts would probably hold the proviso to have reference to the time of the grant, so as to render it consistent with the statute. It may be doubted whether the condition contained in this proviso, as usually inserted in the letters-patent, be legal; but it appears to be wholly unnecessary. Brown v. Annaudalc, Pat. Rep. 4-13. * Cornish v. Keene, Pat. Rep. 72 570 LETTERS-PATENT FOR INYENTIOXS. Public use defined. Secret in- vention. was not in public use and operation at the time tlie patent was granted. There are certain limits to this question. A man may make experiments in his own closet — if he never communicates these experiments to the world, and lays them by, and another person has made the same experiments, and, being satisfied, takes a patent, it would be no answer to say that another person has made the same ^experiments ; there may be several rivals starting at the same time ; the first who comes and takes a patent, it not being generally known to the public, that man has a right to clothe himself with the authority of the patent, and enjoys the benefit of it. If the evidence, when properly considered, classes itself under the description of experiment only, that would be no answer. On the other hand, the use of an article might be so general as to be almost universal ; then you can hardly suppose any body would take a patent. Between these two limits most cases will range themselves, and it must be for the jury to say, whether the evidence convinces their under- standing that the subject of the patent was in public use and operation at the time the patent was granted." These words were explained by Lord Abinger, C. B., as follows, in a recent case : ^ " "What is meant by public use and exercise is this — A man is entitled to a patent for a new invention ; if his invention is new and useful, he shall not be prejudiced by any other man having invented that before and not made any use of it. So that the meaning of public use is this — a man shall not, by his own private in- vention, which he keeps locked up in his own breast, or in his own desk, and never communicates it, take away the right that another man has to a patent for the same inven- tion. Public use means this — that the use of it shall not be secret, but public." - An invention practised in secret, is not such a user as will vitiate the patent of a subsequent and independent in- ventor ; and there arc many other cases of the same class — as, where an invention has been long known and practised, within the premises of the inventor, by his own workmen 1 Carpenter v. Smith, Tat. Kep. 2 See, on this subject, Pat. Rep. 44, and Jones r. Pearse, ibid. 124. THE SUBJECT-MATTER. 571 and servants. Such knowledge and practice, so far as the pubhc arc concerned, are a perfect secret. This important doctrine was fully recognized in a recent case, in which a set of paddle-wheels were made in the inventor's premises, under injunctions of secresy ; and, when finished, were taken to pieces, packed up, and sent abroad, and there used. The Court of Exchequer held, that this was not a user which would vitiate a subsequent patent ; and Mr. Baron Parke, in delivering judgment, said : " The words of the statute are, that grants are to be good for the sole working or making of any manner of new manufacture within the realm, which others, at the time of making such grants, did not use ; and the proviso in the patent in question, founded on the statute, is, that, if the invention be not a new invention as to the pub- lic use and exercise thereof in England, the patent should be void. The word ' manufacture,' in the statute, must be construed in one of two ways ; it may mean the machine when completed, or mode of constructing the machine. If it mean the former, undoubtedly there has been no use of the machine, as the machine, in England, either by the pa- tentee himself or any other person, nor indeed any use of the machine in a foreign country, before the date of the patent. If the term ' manufacture ' be construed to mean the mode of constructing the machine, there has been no use or exercise of it in England, in any sense which can be called public. The wheels were constructed, under the direction of the inventor, by an engineer and his servants, with an injunction of secresy, on the express ground that the inven- tor was about to take out a patent, and that injunction was observed ; and this makes the case so far the same as if they had been constructed by the inventor's own hand, in his own private workshops." ^ In this case, the workmen were under the injunction of secresy, it being the intention of the inventor to take out a patent ; so that all which was done previously was in the nature of an experiment, the patent being taken out as soon as the success of the invention was ascertained. But the principles of the preceding cases are also applicable to those 1 Morgan v. Seaward, Pat. Kcp. 194. 572 LETTERS-PATENT FOR INVENTIONS. User in pre- cases of inventions long known and practised by the invent- inTCntor*^^ ors, within their own premises, and by their own servants without j^j^(j workmen, but without any injunctions as to secresy, or tion. the intention of taking out a patent ; and which inventions become the subject of subsequent patents to other and inde- pendent inventors. It would seem that such patents may be valid, there having been no user which can be said to be public, the grantee being an independent inventor. A user by the inventor, without letters-patent, would effectually vitiate any subsequent patent obtained by him, but the case of a subsequent inventor who had had no means of knowing of this prior invention and user, is very different ; the law not recognizing any exclusive right or property in an inven- tion not protected by letters-patent.^ Utility. The question of utility as an incident of an invention, and its importance as a practical test of the sufficiency of that invention, has already been fully considered. It remains only to point out in what manner some degree of utility is, both by statute and common law, rendered an essential inci- dent of every invention which is the subject-matter of letters- patent. The statute, having defined the nature or class of inventions to which letters-patent may be granted, adds the words, " so as also they be not contrary to law or mischiev- 1 This curious and difficult question has never vet been before the Courts ; but tlie conchision to ■n-hicli the cases lead us is of great im- portance. The policy of the law, if this conclusion be correct, must be sought in the consideration that the grant of letters-patent is intended rather as a benefit to the public than a reward to the inventor ; and that, if he omit to inform the public of a useful invention which may become lost by reason of such neglect, he must forfeit the privileges incident to such a disclosure, to a subsequent inventor, who instnicts the public, by enrolling a record of his invention, in the manner pre- scribed by law. But qucsre, whether the original inventor could be restrained from continuing to use it in the same manner ? The statute (21 Jac. 1, c. 3) did not alter the common law. See suggestion of Dallas, J., in Hill V. Thompson, Pat. Rep. 240. THE SUBJECT-MATTER. 573 ous to the State, by raising prices of commodities at home, or Uselessness hurt of trade, or generally mconvenient ; and these words ate. seem to express the old common law of the realm. Till very recently, no precise construction has been put upon these words, but many cases have been mentioned as with- in their' scope and meaning, as, for instance, an invention requiring or supposing a practice in contravention of some statute, or contrary to religion and public morals." But cases, not open to objections on such grounds, may be conceived, in which the monopoly granted by letters-patent of an in- vention totally useless would be to the hurt of trade, and generally inconvenient, as fettering improvement in some particular brancli of the arts and manufactures. Thus Parke, B., in delivering the judgment of the Court, says : " A grant of a monopoly for an invention which is altogether useless, may well be considered as mischievous to the state, to the hurt of trade, and generally inconvenient, within the mean- ing of the statute, which requires, as a condition of the *grant, that it should not be so ; for no addition or improve- ment to such an invention could be made by any one, during the continuance of the monopoly, without obliging the person making use of it to purchase the useless invention ; and, on a review of the cases, it may be doubted whether the ques- tion of utility is any thing more than a compendious mode, introduced in comparatively modern times, of deciding the question whether the patent be void under the statute of monopolies ; and the Court does not mean to intimate any doubt as to the validity of a patent for an entire machine or subject, which is, taken altogether, useful, though a part or parts may be useless, always supposing that such patent contains no false suggestion." ^ The uselessness of parts of an invention will not vitiate Uselessness letters-patent, if a result, on the whole beneficial, be ob-° ^^ tained ; * nor will the uselessness of an original invention vitiate letters-patent for an improvement thereon, since the 1 See 11 Co. Eep. 86 b; and Pat. Eep. 197. 2 Sec Law and rractice, 50, note i. 8 Morgan v. Seaward, Pat. Rep. 197. ♦ Haworth v. Hardcastle, 1 Bing. N. C 189. 574 LETTERS-PATENT FOR INVENTIONS. defect may be cured by this subsequent patent.^ In all the decisions connected with this subject, the Courts have been guided by their opinion as to what would or would not tend to an improvement of the trade. Revieio of Practical Proceedings. Review of practice. Sugges- tions to the crown. Tlie speci- fication. The various matters treated of in the preceding pages may be illustrated and confirmed, by a review of the prac- tice of obtaining letters-patent. The party soliciting the letters-patent represents to the crown that he is in posses- sion of an invention, which, as he believes, is new, and will be of great public utility.^ Thus the conditions of novelty and of utility are at once introduced, as material and essen- tial ; the failure of either of them would be a ground for avoiding the letters-patent, as having been obtained on false suggestion.3 Upon this representation, and on the consi- deration that it is entirely at the party's own hazard, whe- ther the invention is new, or will have the desired success, and that it is reasonable for the crosvn to encourage all arts and inventions which may be for the public good, the law officer of the crown recommends the grant, with a proviso, requiring the inventor, within a certain time, to cause a par- ticular description of the nature of his invention, and in what manner it is to be performed, to be enrolled in the Court of Chancery.* This proviso gives rise to the specification, upon which instrument so much depends ; for, if it does not satisfy the terms of this proviso, and, further, is not a full and fair disclosure of all the inventor knows, the letters- patent will be void.5 1 Por Lord Tenterden, C J., Lewis v. Davis, 3 Car. & P. 502. 2 Sec Pr. Forms, 1 ; Law & Practice, 65. ^ The ordinary grounds of false suggestion arc, the representation that he has invented more, or something dift'crcnt from, that which he really has invented. Sec Law & Practice, 77, n. d. * Sec Pr. Forms, VI.; Law & Practice, 71. ^ As to the form and requisites of the specification, sec notes to Pr. Forms, XIV. ; Law & Practice, 86. See Pat. Cases, 8, n., and 36, n. c, as to the origin of the specification. THE SUBJECT-MATTER. 575 It is of some importance to distinguish the various rcqui- Various *"■ ' ^ , 1 • -conditions. sites and conditions, in respect of the subject-matter of letters-patent. The nature of the subject-matter is defined by the statute ; novelty is an essential requisite, introduced by the statute, and, if the invention be altogether useless, the letters-patent will be voidable, under the statute, as prejudi- cial and generally inconvenient ; so that the invention must possess some degree of usefulness. This incident of utility, introduced by the statute somewhat indirectly and by impli- cation, is rendered essential, by reason of the suggestion of that incident in applying for the grant, and the adoption of that suggestion by the crown. The condition for the enrol- ment of the specification, introduced at the suggestion of the law officer of the crown, in comparatively recent times,^ ini«Tht be dispensed with under extraordinary circumstances, on the suggestion of the same authority ; but the specifica- tion being intended for the benefit and protection of the public, it is highly improbable that letters-patent, without this condition, will ever again be granted.^ Such being the manner in which this clause is intro- duced, the form and efiect of it are important to be ob- served. Until the specification is enrolled, the crown and the public are equally ignorant of the nature of the inven- tion, except so far as it may be disclosed by the title of the invention contained in the letters-patent, and this, in gene- ral, conveys no information, beyond pointing out to what department of the arts and manufactures the invention relates. The proviso recognizes a distinction between the inven- The nature tion and the means by which the invention is carried into invention practice — the inventor is to describe and ascertain the from"tile nature of his invention, and in what manner the same is to means. be performed. Now, it has been already pointed out,^ that an invention may have a character independent of the means by which it is carried out or reduced into practice ; 1 About 11 Anne; Law & Practice, 6. Sec Pat. Cases, 36, n. e. 2 Sec per Lord Eldon, L. C; Law & Practice, 71 ; Ex parte Heath- cote In re Lacy, Pat. Cases, 431. « Ante, p. 543. 576 LETTERS-PATENT FOR INVENTIONS. the description of that invention must also follow the distinc- tions there adverted to, and, by an attentive regard to these distinctions, the specification will be such as strictly to Subsequent satisfy the condition or proviso of the letters-patent. It has Slansno^^been raised, as a ground of objection to a patent, that parts objection, ^f ^[^Q apparatus described in the specification were in- vented subsequently to the date of the letters-patent ; but this objection has been overruled, on the grounds that time is given to an inventor to prepare his specification, for the express purpose of allowing him opportunity of maturing the practical details of his invention,^ This doctrine is consistent with the justice of the case ; for it must be remembered that the necessity of secrecy, prior to the seal- ing of the letters-patent, renders proper experiments ex- tremely difficult. Further, this doctrine is not only con- sistent with, but a necessary consequence of, the views advanced in the preceding pages, respecting invention. And here the question presents itself, when, consistently with the language of the petition, a person may be said to be in possession of an invention. This may be truly said to be the case, so soon as the party has satisfied himself of the applicability in practice to the peculiar requirenfients of the case, or the truth, or law, or property of matter proposed to be applied. A correct acquaintance with these truths, laws, and properties, combined with some experience in practical inventions, will enable a party to say, with con- fidence, that he is in possession of an invention, although it may never have been put into actual practice.^ This view of the case is consistent with the history of invention gene- rally, from which, so far as we can judge, it would appear that many of the greatest improvements have been the result of accident, rather than of design.^ 1 See in Crossley v. Beverley, Pat. Cas. 112, and per Tindal, C. J.. in Jones r. Heaton, 11 Lon. J. C. S. - Many inventions do not admit of such a practical test in the first instance. Take the case of an improvement in the manufacture of iron, requiring a new furnace to be erected, and the expenditure of much time and money, to try a single experiment of a really practical nature. See Pat. Cases, 402. ^ The perception of what is wanted, or of the defects of an existing manufacture, is generally the real difficulty to be overcome. THE SUBJECT-MATTER. 577 It is also important to remark, that Letters-patent may be The patent considered in the light of a reward, for having found out'^'^*'"^ ' and introduced into public use and exercise something not before known, whereby either a new trade is brought into the realm, or fresh channels for the employment of capital and industry are opened ; and there is this advantage in a reward of this nature, that it is exactly proportioned to the value of the invention to the public. If the invention be useless, it is soon lost sight of, and the patentee derives no benefit from it ; but if it be of great utility, and come into general use and exercise, the patentee receives a corres- ponding reward. The Principle of an Invention. The use of the term " principle," in reference to the A principle subject-matter of letters-patent, has given rise to so niuch(]^g^ljject. discussion, that some remarks upon it may not form an "^a^er of . r J letters- improper conclusion to this part of the subject. It is said, patent. most truly, that there cannot be a patent for a principle ; that a principle must be embodied and applied, so as to afford some result of practical utility in the arts and manu- factures of the country, and that, under such circum- stances, a principle may be the subject of a patent. ^ In a 1 The fair mode of looking at a patent and the specification is, to inquire what is the spirit of the iuvcution, or the principle, and this must be embodied in some mode or method, because it is admitted, on all hands, you cannot take out a patent for a principle. But, although the law says, undoubtedly and correctly enough, that you cannot take out a patent for a principle, that is, for a barren principle, when you have clothed it with a form, and given it body and substance, in which the principle may live, and protfuce the benefit which you claim to result from it, why then, in many cases, (and it is a consolation to every just and honest feeling one has on the subject of invention,) although you cannot have a patent for a principle in substance, you can have a patent for the spirit of your invention ; for, if any other person comes and clothes the spirit of your invention with a differerent body, and puts that principle in use in any other shape or fashion, it is always a question for a jury, whether, however different in appearance, in shape, in form, in method — whether the article or the practice, if it 73 578 LETTERS-PATENT FOR INVENTIOXS. The jiiiiici- ple of an invention and the principle embodied distingnish able. Truths of exact and laws of physical science. certain sense, indeed, a principle, so embodied and applied, may be considered as the subject of a patent, but it is that embodiment and application which is, in reality, the subject- matter of the patent. The principle, so embodied and applied, and the principle of such embodiment and applica- tion, that is to say, the principle of the invention, are essen- tially distinct ; the former being a truth of e.xact science, or a law of natural science, or a rule of practice ; the latter, the practice founded upon such truth, law, or rule. The want of a due appreciation of this distinction was the foundation of much of the discussion which occurred in the proceedings on Watt's patent, but the distinction was fully recognized and adopted by Mr. Justice Duller, in the follow- ing passage:' — "There is one short observation, arising on this part of the case, which seems to me to be unanswer- able, and that is, that, if the principle alone be the founda- tion of the patent, it cannot possibly stand, with that know- ledge and discovery which the world were in possession of before. The eflcct, the power, and the operation of steam, were known long before the date of this patent ; all ma- chines, which are worked by steam, are worked by the same principle. The principle was known before ; and, therefore, if the principle alone be the foundation of the patent, though the addition may be a great improvement, (as it certainly is,) yet the patent must be void ab initio. But then it was said, that, though an idea or principle alone would not support the patent, yet that an idea reduced into practice, or a practical application of a principle, was a good foundation for a patent, and was the present case. The mere application, or mode of using a thing, was admitted, in the reply, not to be a sufllcient ground ; for, on the court putting the question, whether, if a man, by sci- ence, were to devise a means of making a double use of a be matter connected with the arts and manufactures, be or be not, substantially, an adaptation of the principle, applied with the same view, to answer the same end, and merely imitated in substance, what- ever differences tlierc may be in point of form. See per Sir F. Pollock, Pat. Cases, 145. See, also, in procceilings on Neilson's patent, ibid. 342. 1 2 II. Bl. 485, 486. See, also, ante, p. 522, n. 2. THE SUBJECT-MATTER. 579 thing known before, he could have a patent for that, it was rightly and candidly admitted that he could not.i The method and the mode of doing a thing are the same, and I think it impossible to support a patent for a method only, without having carried it into eflect, and produced some new substance. But here it is necessary to inquire, what is meant by a new principle reduced into practice ? It can only mean a practice founded on principle, and that prac- tice is the thing done or made, or, in other words, the manu- facture which is invented." The assertion, then, that there cannot be a patent for a principle, amounts, in eflect, to nothing more than an assertion, that a truth of exact, or a law of natural science, or a rule of practice, is not any manner of manufacture ; the discovery and enunciation of such truth, law, or rule, may be a valuable addition to our knowledge, but it cannot be described as the working or making of some manner of new manufacture, which alone can be the subject-matter of letters-patent. The term " principle " admitting of the above-mentioned Principles . . . . ... , distinpiish- vaneties of construction and mterpretation, accordmg to the able into circumstances under which it is used, it becomes important to advert to certain other distinctions, existing in the nature of the principles which are to be embodied and applied, so as to constitute invention, which may be the subject of let- ters-patent. Those principles which may be defined and classified as truths of exact science, or laws of natural sci- ence, are, in their nature, especially distinct from those which may be defined as rules of practice ; the former having, so to speak, an independent and original existence,* the latter being derived from and originating altogether with man, and, as such, of necessity, partaking in some degree of the character of invention. Further, the truths of exact or mathematical science differ from the laws of natural science in this — that the former are founded on definition, the lat- ter on observation and experiment — and both differ from 1 As to the case of a new application, which may be properly described as a double use, and which cannot be the subject-matter of letters-patent, see Pat. Cases, 208, n./ '^ Sec the observations of Mr. Baron Alderson on the subject, Pat. Cases, 342, and /»»<. 580 LETTERS-PATENT FOR INVENTIONS. Jnstances. Hadley's sextant. UoUond's object glasses. Clegg's gas meter. the class of principles which have been described as rules of practice. The instrument known by the name of Hadley's quadrant, or sextant, furnishes a good illustration of the embodying and application of the truth of exact science and of a law of natural science, namely, of certain propositions of geometry for the measurement of angles, and of the laws of light when incident on and reflected by piano surfaces inclined to each other. The principle of this invention was the arranging and combining inclined reflecting surfaces, and certain radii and arcs of a circle, so as to give eflicct to such truths and laws for the measurement of the angular distance of objects ; the principle, then, of this invention is a rule whereby these truths of exact science and laws of natural science become embodied.^ In the same manner, Dollond's invention - of the achromatic object glass was founded on certain truths of exact science respecting curved surfaces, and the laws of light when refracted by those surfaces ; the combining a convex lens of crown glass and a concave lens of flint glass, of proper curvatures, was the rule of practice by which these object glasses were made. The principle of Clegg's invention of a gas meter par- takes, to a certain extent, both of a law of natural science and of a rule of practice. The laws of natural science, re- specting the motion of a solid immersed in a fluid, are ap- plied in conjunction with certain rules of practice for the admission and emission of gas, and the opening and closing of certain orifices for that purpose, and the result was an apparatus for measuring the quantity of gas supplied.' The oscillation of the pendulum takes place according to the laws of falling bodies, and the vibration of the balance according to the laws of elasticity of bodies; these principles 1 The beautiful toy called the Kaleidoscope (Icpcnds, in like manner, on the laws of the reflection of light, incident on and reflected by two plane mirrors, inclined at a small angle to each other ; the objects and the eye being situated between the mirrors, in such a position that each object gave a number of images on the circumference of a circle. - See specification of this invention, Tat. Cases, 43. ^ See specification and description of the invention, Tat. Cases, 103, and post. TUE SUBJECT-MATTER. 581 arc embodied in our ordinary clocks and watches. The laws of latent heat, of the rapid evaporation of liquids in vacuo, of the union of certain substances chemically, in definite proportions, and of electricity, liavc given rise to a great variety of useful inventions, in which these laws re- spectively are embodied. Such truths, laws, or principles, having an existence anterior to, and independent of, the operations of man, cannot, of themselves, be the subject of letters-patent ; but, when they have been embodied or ap- plied in practice to a particular purpose, then the invention to which they give rise is properly described as founded on those laws, and the principle of the invention is the practice whereby those laws are enabled to produce useful eflects. Thus, the inventions of \Vatt were ai)plications of the laws of the elasticity and of the latent heat of steam ; and a great variety of other instances might be adduced, in which well known principles ^ are, so to speak, embodied and clothed, or connected with a material form, for some par- ticular and specified purpose in the arts and manufactures, and so as to be in a condition to act and to produce eflects. 1 It is of considerable importance that the meaning of the term prin- ciple, when ajiplifil in the strictest sense as ahovc descrihcJ, should be distinctly understood. For this purpose, it may bo well to add a few illustrations of the truths of exact science, and of the laws of physical or natural science. All propositions founded on definitions, and to which, by reason of their being so founded, the term " demonstration " is applicable, are truths of exact science ; as the well-known proposi- tions of geomctr}', that, in a right-angled triangle, the square of the hypothenuse is equal to the sum of the squares of the opposite sides ; that the angle at the centre of a circle is double the angle at the cir- cumference ; or that similar triangles arc to each other in the dupli- cate ratio of their homologous sides. The truths or laws of natural science difler from the preceding in this, that they arc not founded on definition, or capable of demonstration in the strict sense of the term ; they are rules derived from obsenation, and describing what will take place under particular circumstances. Thus, we speak of the laws of falling bodies, that is, the rules respecting their motions ; of the laws of the atmosphere, of light, of electricity, all which are merely rules derived from observation ; we learn by experience that such pheno- mena, under certain circumstances, will present themselves, and, one state of things being supposed, we arc able to anticipate and predict the foUowinjr. 582 LETTERS-PATENT FOR INVENTIONS. Such being the import of the term principle, as applied to inventions founded on the truths of exact science and laws of natural science, it remains to consider the use of that term, with reference to those cases where no truth of exact science or law of natural science is embodied, but where the arrangements and rules of practice are not refera- ble immediately, if at all, to such truths or laws, but to cer- tain rules of practice. The cases placed in the first and third classes will illustrate inventions founded simply on a rule of practice, in contradistinction to inventions founded on a truth of exact, or a law of natural science. Thus, the Ark- principle of Arkwright's invention was the use and arrange- Wright's fnent of certain known things, in a particular manner, for H dd rt'5 spinning cotton.-' The principle of Huddart's invention was the compressing the yarns and drawing them through a Jupe's. tube.- The principle of Jupe's/ for an expanding table, was the cutting the table across, and making the parts to diverge from the centre, and withdrawing the sections, and filling up the openings by leaves or suitable pieces. The principle of Galloway's Galloway's improvements in machinery for propelling ves- wopa en ^^j^ 4 ^^^ ^j^^ arrangement of parts for giving different posi- tions to the float boards, during the revolution of the paddle- wheel ; and the principle of the invention under his second patent ^ was the arrangement of float boards in a fixed posi- tion, according to an assigned law or rule. In all such cases, the principle of the invention is the particular arrange- ment, combination, composition, or application, according to the rule of operation and construction, by which the working or making of the manufacture, the subject of the letters-patent, is to be carried out in practice. The cases placed under the third class serve to illustrate those in- ventions, the principle of which may be said to be founded simply on a rule of practice, and not on any truth of exact. 1 See Pat. Cases, 56. 2 Ibid. 85. 3 Ibid. 143. * See in Morgan v. Seaward, Pat. Cases, 166 ; and Lord Brougham'i judgment in the Privy Council on extending the patent. Ibid. 727. ^ See in Galloway v. Bleaden, 15 Rep. Arts. N. S., and Pat. Cases, 521. THE SUBJECT-MATTER. 583 or law of natural, science. In many of the cases under the third class, the principle of the invention is the application or adaptation of some known property or quality of a sub- stance; as in Forsyth's patent,^ where the principle of the invention was the application of detonating powder in dis- charging artillery ; and in Hall's, the application of the flame of gas to singing lace.- Thus, in every class of cases, the dictum of Duller, J.,^ that a principle reduced to practice, and a practice founded on principle, arc really the same thing, is fully supported.* An imi>ortant practical ([uestion arises with reference to Tho appro- many of the cases which have been placed under the second » priuc°pie. and third class,* as to the extent to wliich the inventor can appropriate to liimself the application of the truth of exact science, or the law of natural science, or the rule of prac- tice constituting the peculiar feature of his invention. In respect of the truths of exact science, or laws of natural -cience, independent of their application, no invention which s the subject of letters-patent, or special property, so to peak, can exist. The qucstiou then arises, to what extent may such truth or law, by reason of its application, be ap- propriated, and the answer is, to the extent of all other ap- plications which a jury shall consider as a piracy of the former. It is impossible to lay down any general rules on this point ; the subject docs not admit of being so dealt with, and it should always be borne in mind, with reference to the law of patents, that each case must be judged of by its peculiar circumstances. The following observations, by Mr. Baron Alderson, in the recent proceedings on Ncilson's pa- tent," are deserving of peculiar attention, and exhibit, in a 1 Pat. Cases, 97. 2 Ibid. 97. 8 Ante, 45. ♦ If any further observations were necessary in support of the pre- ceding, it might be remarked tliat the phrases, " the principle of my in- vention consists in," or " my invention consists in," naturally suggest themselves in many cases indiflercntly, as synonymous expressions in describing an invention, thus showing that, substantially and practi- cally, there is no dift'erence in these phrases. 6 Ante, pp. 535, 544. ° Sec report of this case, Pat. Cases, 342. 584 LETTERS-PATENT FOR INVENTIONS. clear manner, the difficulties of the case : " I take the dis- tinction between a patent for a principle, and a patent which can be supported, is, that you must have an embodiment of the principle, in some practical mode, described in the spe- cification, of carrying the principle into actual effect, and then you take out your patent, not for the principle, but for the mode of carrying the principle into effect. In Watt's patent, which comes the nearest to the present of any you can suggest, the real invention of Watt was, that he disco- vered that, by condensing steam in a separate vessel, a great saving of fuel would be effected, by keeping the steam cylin- der as hot as possible, and applying the cooling process to the separate vessel, and keeping it as cool as possible, whereas, before, the steam was condensed in the same ves- sel ; but then Mr. Watt carried that practically into effect, by describing a mode which would effect the object. The difficulty which presses on my mind here is, that this party has taken out a patent, in substance like Watt's, for a princi- ple — that is, the application of hot air to furnaces — but he has not described any mode of carrying it into effect. If he had, perhaps he might have covered all other modes as being a variation. It is very difficult to see what is a patent for a principle, and for a principle embodied in a machine, because a patent can only be for a principle embodied in a machine. You cannot take out a patent for a principle. I have always thought that the real test was this : that, in order to discover whether it is a good or a bad patent, you should consider that what you cannot take out a patent for must be considered to have been invented /?ro lono j^ublico — that is to say, the principle must be considered as having had an anterior existence before the patent.^ Now, supposing, in Watt's case, it had been known that to condense in a sepa- rate vessel was a mode of saving fuel, then Watt certainly would have taken out a patent for carrying into effect that 1 The following observation of the same learned judge is important with reference to this question: — " You sec you do not interfere with any benefit which the inventor has, if he knows of no particular mode of carrying his principle into effect. You do not interfere with any benefit which he ever had, if he never had a practical mode of carrying it into effect." Printed case, 4to. p. 198. THE SUBJECT-MATTER. 585 principle by a particular machine ; but then his patent would have been for a machine, and, if I invented a belter machine for carrying out the principle, I do not infringe his patent, unless my machine is a colorable imitation. But you must embody the principle in the machine, and you slop all possible improvements, because you infringe the principle, which you have no right to do — it is the princi- ple of the machine. It is very difficult for a jury to distin- guish that, but it is the most essential thing possible. Now, here, supposing that it had been known that hot air applied to a furnace was a great improvement on cold air, and that this person had taken out his patent, and this patent was a patent for the application of a well-known thing — the hot air to furnaces — then he takes out a patent for applying it, by means of an intermediate reservoir between the blast furnace and the bellows ; then, surely, any body else may apply the same principle, provided he does not do it by a reservoir intermediately between the blast furnace and the bellows — and the question for a jury is, wliethcr or not a long spiral pipe is a reservoir — if it be not a reservoir, or a colorable imitation of a reservoir, it is no infringement." The same learned judge, in another case, the proceedings Tho appro- on Jupe's patent,! remarked, with reference to Clegg's gas a principle. meter,- as follows : — " There never was a more instructive case than that. I remember very well the argument put by the Lord Chief Baron, who led that case for the plainti/T, and succeeded. There never were two things to the eye more dilTerent tlian the plaintifT's invention, and what the defendant had done in contravention of his patent-right. The plaintiff's invention was different in form — different in construction ; it agreed with it only in one thing — and that was, by moving in the water, a certain point was made to open, either before or after, so as to shut up another, and the gas was made to pass through this opening — passing through it, it was made to revolve it. The scientific men, all of them, said, the moment a practical scientific man has got that principle in his head, he can multiply, without end, i Jupc I'. Pratt, Pat. Cases, 146. 2 Pat. Cases, 103. 74 586 LETTERS-PATENT FOR INVENTIONS. the forms in which that principle can be made to operate. The difficulty which will pre?s on you, and to which your attention will be called in the present case, is this : you cannot take out a patent for a principle — you may take out a patent for a principle, coupled with the mode of carrying the principle into effect, provided you have not only disco- vered the principle, but invented some mode of carrying it into effect. But then you must start with having invented some mode of carrying the principle into effect ; if you have done that, then you are entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as piracy of your original inven- tion. But then the difficulty which will press on you here is, that, on the evidence, there does not appear to have been any mode of carrying the principle into effect at all invented by you." The attention of this learned judge having been called, in the recent proceedings on Neilson's patent, to his former remark, his lordship observed, that he should more correctly have said, " that you take out a patent for a mode of carry- ing a principle into effect." But the peculiar circumstances of Jupe's patent do not seem to require any such qualifica- tion, nor was any such made, in speaking of the analogous case of Clegg's invention. The occasion appears fully to explain the introduction of that qualification. In the pro- ceedings on Neilson's patent, the learned judge was speak- ing of those philosophical principles which are the common property of all ; in the proceedings on Jupe's patent, he was speaking of the principle of the particular invention, which was the cutting a table into four segments or sections, and causing them to diverge, and filling up the intermediate spaces, so as to constitute an expanding table, and which, in its very terms, implies that which is the subject of a patent.^ Questions of this nature are difficult to deal with in the 1 ScQaiite, p. 542. It was a question, in this case, whether the specifi- cation claimed any thing in respect of the means by wliich the divergence was to be effected — tliat is, anytliing beyond the mere cutting the table into four sections, which should be made to diverge, and filled up as above described in tiie text. See Pat. Cases, 56. THE SUBJECT-MATTER. 587 abstract, but tbc same difficulty does not present itself in Practical the practical form in which the question generally arises — appropria^ namely, in a contest between two inventors, in an action for ^'""• an infringement. In such cases, the question is, whether a mode subsequently invented and adopted is a substantial and independent invention, or only a colorable variation, and borrowed from the previous invention. In the determi- nation of this question, the character of the original inven- tion, the merit to be attributed to its author, the means by which the principle is carried out, the object of its applica- tion and the end attained, the success and utility of the prior invention, and the comparative merits of the two inventions, are all elements for the consideration of the jury. The well-known truths of exact science, and the laws of natural science, and the properties and qualities of matter, are the common property of all ; the applications or adaptations of such to the various wants of man, constitute inventions which are the subject of letters-patent. But there are gene- ral truths, laws, properties and qualities, not yet discovered ; the person who discovers any such, and also applies and adapts them, is an author of a much higher order and more distinguished merit than he who applies and adapts what is already known. The property, however, which such an one can in law acquire, by reason of such discovery and application, does not differ in extent from that of the pre- ceding class. But, in deciding the practical question of infringement by a subsequent invention, a very different estimation is necessarily made of the two ; he who applies and adapts knowledge before in the common stock, is, pri- ma facie., entitled to less consideration than he who brings into the common stock the knowledge which he applies.' In such cases, however, it is essential that the principle should be given to the world, and also, further, that the means should be fully described, and that the means, as de- scribed, should be sufficient for the purpose. It not unfre- quently happens, that the principle is kept back, and that 1 This consideration, however, is again controlled by the benefit which may have been conferred on the public — that is, by the utility of the invention. 588 LETTERS-PATENT FOR INVENTIONS. certain arrangements only, without any general rule, are given to the world. If this be from ignorance, the invention is merely a fortunate accident, and the merit is compara- tively small, and little advantage is conferred on the public ; if from design, then, though the merit may be great, the inventor does not comply with what the law requires, and, moreover, fails to secure his invention, to the extent which he otherwise might. The discovery of truths of exact science, or of laws of natural science, is an event of rare occurrence, and within _ the opportunities and powers of few ; but fresh applications | of such truths and laws are of constant occurrence, and exercise the powers of a large class of individuals.^ But the principal source of inventions consists in the application of the known qualities of known substances. With respect to many of these, the question arises, to what extent is the use or application of those substances appropriated by the inventor ? This question was raised in the recent proceed- ings on Walton's patent 2 for improvements in cards. It had occurred to Mr. Walton, that the bed in which the teeth are set, requires a certain degree of elasticity and flexibility, so as to allow of the teeth yielding to any obstacle with which they meet in the operation of carding. This idea having suggested itself, the giving that elasticity and flexi- bility to the backs of cards, by means of caoutchouc or Indian rubber, would naturally occur to a person acquainted with the properties of that substance, and a patent was taken 1 The following illustration of the discovery of two laws of physics in recent times, and of the practical application of those laws, is men- tioned by Mr. Carpmacl, in his work on the Law of Patents. Dr. Faraday discovered that carbonic acid gas, under a pressure of several atmospheres, assumed a liquid form ; Sir II. Davy discovered that, on the application of heat to this liquid, vapor of great expansive force was produced, which was readily condensed by contact with cold sur- faces, and he was led to observe, that these properties might, probably at no very distant period, be rendered available for working machinery. Sir M. I. Brunei subsequently invented an engine, worked by the elas- tic force of the vapor of condensed carbonic acid gas, by alteniately bringing heat and cold to act by a peculiar airangcment for this purpose. 2 Walton r. Potter, 1 Scott's N. R. 90; and Pat. Cases, 604, 606 and 610. THE SUBJECT-MATTER. * 589 out for improvements in the manufacture of curds, the in- vention consisting in giving to the backs elasticity, derived from caoutchouc or Indian rubber. The discovery of the want of the quality of elasticity in the backs of cards, must be regarded as the important feature in this case, and it was remarked by one of the learned judges, in the course of the argument, that the claim in Walton's specification was more limited than necessary ; it might have been for giving the property of elasticity to the backs of cards, that not having been done before, from whatever source that elasticity is is derived, and in whatever manner contributed. Such a claim, however, would, in the opinion of Mr. Baron Alder- son, have amounted to a claim for a principle. In the pro- ceedings on Neilson's case, that learned judge said — " If What is a you claim every shape, you claim a principle. There is no J^';||J^jp,g * difference betAveen a principle to be carried into effect in any way you will, and claiming the principle itself. You must claim some specific mode of doing it. Then the rest is a question for the jury." i The above remark is strictly applicable to the case now under consideration ; in Neilson's case, the suggested claim was of hot air to furnaces, however applied ; in Walton's case, the suggested claim was of elasticity to the backs of cards, from whatever source derived. The decision of the Court of Exchequer, in Neilson's case, is an express author- ity that a claim of the kind last mentioned would be a claim for a principle. The court said — "It is very difficult to distinguish it from the specification of a patent for a princi- ple, and that, at first, created, in the minds of some of the court, much difBculty ; but, after full consideration, we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one too. We think the case must be considered as if, the prin- ciple being well known, the plaintiff had first invented a mode of applying it, by a mechanical apparatus, to furnaces ; and his invention then consists in this — by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle, he directs the air to be 1 Sec ia Neilson v. Harford, Pat. Cases, 355. 590 • LETTERS-PATENT FOR INVENTIONS. heated, by the application of heat externally to the recepta- cle, and thus he accomplishes the object of applying the blast, which was before of cold air, in a heated state, to the furnace."^ It may, however, be asked, to what does this amount, but to an illustration of the manner in which the proviso in the letters-patent is to be complied with ? — namely, that the inventor shall particularly describe and ascertain the nature of his invention, and in what manner the same is to be performed. The mere announcement of the idea that a furnace should be blown with hot instead of cold air, would not, in itself, be the subject of letters-patent, nor would it be a compliance with the proviso as to the specification. And, in the course of the argument in Neilson's case, the Lord Chief Baron observed — Suppose it was a patent in these words : ' A patent for an invention by which air shall be heated, before it enters the furnace. I do not claim a patent either for the material or the shape ; but the air must pass through a process of heating, before it enters the fur- nace.' " ^ And, again, " I suppose, in msiking the specifica- tion, he considered that it was proper to propose some me- chanical illustration of his principle. But suppose he had What said this — My invention consists in the application of heat- adatotoaed air to the furnace, by means of any of the methods by principle, ^vhich air is now heated, or any other method, allowing air so heated to pass through a tube or aperture to the furnace. Probably he apprehended that, if he stated specifically any form of heating air, he might then have infringed on some other patent ; therefore, supposing he had said simply — My invention consists in the application of heated air, by mak- ing the air pass through a heating process, before it arrives at the furnace, but I do not intend to describe the form of the receptacle ; I leave that to the local circumstances and judgment of the parties to deal with such matter, stating only that the hotter you get the air the better.' " ^ It is im- possible to read these observations of the learned Chief Baron, except as a judgment that a claim to the application of hot air, in whatever manner applied, might be a good 1 Neilson v. Harford, Pat. Cases, 371. 2 Printed case, 4to. 181. 8 Ibid. 185, 186. THE SUBJECT-MATTER. 591 claim. And, in connection with this, it is material to ob- serve, that Neilson was the first to discover the advantage resulting from the use of hot air ; since, so far as blast fur- naces were concerned, it was generally believed that cold air was more advantageous than hot, and expensive con- trivances were resorted to for keeping the blast cold, the generally observed fact of the furnaces doing better in winter than in summer, being referred to the circumstance of the air being colder ; the real cause being that the air contains much less vapor in winter than in summer. In the preceding cases of Clegg's, Jupe's, and Neilson's inventions, it must be observed that the inventor was also the discoverer of the principle, or leading feature of the in- vention, and this creates a material distinction between this and the other class of cases of common occurrence, in which the party is not the discoverer of the principle, but, the prin- ciple being well known, he is the inventor of its application. To a certain extent, the invention in Clegg's case comes within this class ; the law of natural science on which it partly rests, namely, that of the motion of a solid, of less specific gravity than the fluid in which it rests, being well known. The principle of the invention, however, is more extensive than this, since it includes the alternate filling and discharging of the vessel of gas, as the remark of Mr. Baron Alderson, above cited, clearly shows; on the whole, there- fore, in that case, the party was the discoverer of a princi- ple, as well as the inventor of the means. But several cases have occurred, in which, the principle being well known, and the quality and use of the substance notorious, inven- tion has existed in respect thereof. In these cases, inas- much as no exclusive privileges can exist, in respect of the law, property, or quality, it becomes necessary to consider tions of a the object with which, the means by which, and the end for o^qualit'y. which, the application takes place. The proceedings on Kneller's patent ^ furnish an illustra- tion of cases of this kind. The invention was an applica- tion of the well-known law of physics, that the evaporation of a liquid is promoted by a current of air ; for instance, 1 HuUett r. Hague, 2 B. & Ad. 370. 592 LETTERS-PATENT FOR INVENTIONS. that, if the air be calm, the evaporation from the surface of water goes on slowly, compared to the evaporation which takes place when the surface is acted on by a brisk breeze, the fact being, that the evaporation is obstructed according to Dalton's views, partly by the mechanical obstruction of the particles of air, but principally by the superincumbent atmosphere of vapor ; in proportion, then, as the latter is re- moved by the motion of the air, evaporation goes on more rapidly. The extension or modification of this general prin- ciple, by forcing air into the lower part of a liquid, for the purpose of thereby occasioning an increased evaporation, was made the subject of experiments, which were commu- nicated to the Royal Society in 1755, and published in their Transactions.-'- In 1822, a patent was granted to Knight and Kirk, for " a process for the more rapid crystallization and for the evaporation of fluids, at comparatively low temperatures, by a peculiar mechanical application of air." The specifica- tion, having stated the general inconveniences of applying heat to fluids, described theinvention to consist in propelling a quantity of heated air into the lower part of the vessel containing the liquor, and causing s,uch heated air to pass through the whole body of the liquor in finely divided streams, by the means of perforated pipes, coiled, or other- wise shaped and accommodated to the nature or form of the vessel through which the air from the blowing apparatus should be forced into the liquid. This invention was not brought into use, and appears to have failed altogether. In 1828, Kneller had a patent for " certain improvements in evaporating sugar, which improvements are also applica- ble to other purposes ; " the specification declared the in- vention to consist in forcing, by means of bellows, or other blowing apparatus, atmospheric, or any other air, either hot or cold, through the liquid or solution subjected to evaporation, by means of pipes, whose extremities reach neai'ly to the upper or interior area of the bottom of the pan, or boiler, con- taining such liquid or solution. 1 See an account of the great benefit of blowing showers of fresh air up through distilling liquors, in the Phil. Trans, vol. xlv. p. 312. THE PRIXCIPLES OF AX IXVENTIOX. 593 In an action for the infringement of Kneller's patent,^ it was urged, on the part of the defendant, that Kneller cUaimed, as an original invention, that which was but an improvement on a prior patent ; but Lord Tenterden, C. J., and the court, sustained the patent, being of opinion that the methods de- scribed in the two specifications were essentially distinct. In applying the above decision, it must be observed that the prior invention had failed and been abandoned ; at all events, it was not in use. Had the former invention suc- ceeded, but little doubt can be entertained that, in a contest between the two patents, the latter would have been held to be an infringement on the former ; for it must be ob- served, that the object with which, and the end for which, the air was introduced, were the same in the two cases, and the variations in the means were such as would obviously suggest themselves to any mechanic, who set himself about devising different means of introducing the air. And, in further confirmation of this remark, it may be observed that, in Neilson's case, though the object was the same, the de- tail of the means by which the result was obtained was very difilcuh, and the result attained immeasurably superior. The uncertainty in which the preceding decisions would Result of • • , the cases, appear to leave the question, to what extent a principle may be secured, is more apparent than real, and no case has occurred in which letters-patent have been held to be viti- ated, by reason of the generality of the claim. Questions of this kind can only be decided on the special facts of each case. It has been suggested,- that, from the result of the cases, it would appear that the courts are guilty of the ap- parent absurdity of saying, "You cannot have a patent for a principle, eo nomine^ but, if you come before us in modest guise, disclaiming any right to a principle, then, if you have really invented one, we will take care individually to protect you in the exclusive enjoyment of it." But this ap- parent discrepancy vanishes, if the distinction above sug- gested, respecting the use of the terms, be adopted. A prin- 1 HuUett V. Hague, 2 B. & Ad. 370. - See 6 Jur. 3.30. See also in the same work, p. 433, a notice of a case. (Aniott v. Perry,) which seems to iUustratc and confirm some of the preceding remarks. 75 594 LETTERS-PATENT FOR INVENTIONS. ciple, eo nomine, is but the enunciation of a proposition or fact ; the principle of the invention is the embodiment of that proposition or fact in a practical form, and, as such, may, in some cases, be ensured to the inventor in its fullest extent. ON THE TITLE OF THE INVENTION. An invention, which is the subject of letters-patent, hav- ing been made, the next question is, as to the terms in which it should be described by a party, on applying for letters- patent. The party, soliciting the royal grant, represents or suggests to the crown that he has invented something, or is in possession of an invention, for some specific purpose or object.^ The terms in which he describes that thing, pur- pose, or object, is called the title of the invention, and of the letters-patent subsequently granted. The requisites of the title are thus described by Lord Chancellor Lyndhurst : "^ Requisites u Tj,g description in the patent, (that is, the title,) must, unquestionably, give some idea, and, so far as it goes, a true idea, of the alleged invention, though the specification may be brought in aid to explain it." This doctrine has been recognized and explained in a recent case.^ The title was " improvements in carriages ;" the invention was improve- ments in fixing and adapting German shutters, in those de- scriptions of carriages to which such shutters were applica- ble. The Court of Queen's Bench held, that the title was too large, the invention not applying to all carriages ; but the Court of E.xchequer Chamber reversed that decision, and held, that mere vagueness and generality in a title, with- out any evidence leading to an inference of fraud, was not a ground for avoiding the patent. In the recent proceedings on Neilson's patent, it was aJd^gS-'^- objected that the title, " an improved application of air to raUty. produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required," was not a proper 1 Ante, p. 574. 2 In Sturtz V. De la Rue, 5 Ivus. 327 ; Law & Pr. 66. 3 Iq Cook V. Pearce, 8 Jur. 499; 13 Law J. (X. S.) Q. B. 189; M. S. S. THE TITLE OF TUB INVENTION. 595 description of an invention which had reference simply to the temperature of the air when applied, such an invention being the application of improved air, and not an improved application of air ; that the invention so described might have extended to the use of a refrigerating, as well as a heating apparatus. But the Court of Exchequer held, that this title was sufficient ; that, though ambiguous, it was explained and reduced to a certainty by the specification, and not at variance with it.^ The above cases will show the general requisites of the title, and to what extent it may be explained and reduced to certainty by the specification. But in order to point out to inventors, certain considerations by which they must be guided in choosing and in determining on the title of their invention, it will be necessary to advert to the principles of law applicable to this subject, and to call attention to the cases which have occurred, and to the grounds upon which they were decided. If a party has not invented that which he represents or False sug- su""ests to the crown that he has invented, and upon which ' representation and suggestion the letters-patent are granted, the crown has been deceived, and the consideration for the grant ftiils ; he may have invented something else which is very useful, but it must be that for which the letters-patent are granted. And this rule is founded on public policy and justice, otherwise there would be no certainty in the grants of the crown, and great practical injustice and inconvenience would result.- In the case of Wheeler's patent,^ " for a new and im- Wheeler's proved method of drying and preparing malt," the invention P" ®" ' was of a coloring matter to be derived from malt, and not of any improved method of drying or preparing that well- known substance. The specification described an invention which consisted in submitting malt, prepared by the ordinary process, to a high degree of temperature, and then produc- ing a coloring substance for beer. Thus there was a false 1 Sec Pat. Cases, 333 and 373. " Seeposf. 3 The King r. Wheeler, 2 B. & Aid. 349. 596 LETTERS-PATENT FOR INVENTIONS. suggestion to the crown, and a clear inconsistency between the letters-patent and specification ; the invention was of something different from what was represented. Felton's. In the case of Felton's patent,' for a " machine for sharp- ening knives, scissors, and razors," the invention, as de- scribed in the specification, was inapplicable to scissors. Here there was false suggestion in law ; the invention made and described in the specification was not co-extensive with that for which the letters-patent were granted. The real defect, in this case, was in the specification omitting to de- scribe the modification of the machine requisite for sharp- ening scissors ; there was no false suggestion in fact, the party having made the invention represented, but omitted to describe it. .lessop's. On the same principle, letters-patent for a w^atch, the invention being only of a particular movement, was held void.2 Galloway's In Galloway's patent, assigned to Morgan,^ " for improve- ments in steam-engines, and in machinery for propelling vessels, which improvements are applicable to other pur- poses," it appeared that one of the inventions was not an improvement in steam-engines generally. i\Ir. Baron Parke, in delivering the judgment of the Court of Exchequer, said : " We cannot help seeing, on the face of this patent, as set out in the record, that an improvement in steam-engines is suggested by the patentee, and is part of the consideration of the grant; and we must reluctantly hold, that the patent is void, for the falsity of that suggestion." ■* The above title is also open to the objection of ambiguity. The title may apply to improvements in all steam-engines, or only to improvements in steam-engines in connection with machin- ery for propelling vessels. On the specification being looked to, for the purpose of explaining the title and reduc- ing it to certainty, the former appeared to be the invention intended. 1 Felton V. Greaves, 2 Car. & T. 611. - Jcssop's case, cited 2 H. Bl. 493. 3 Morgan v. Seaward, Tat. Cases, 166. * Ibid., 196. TUE TITLE OF TUE INVENTION. 597 The judgment in the preceding case recognized the deci- Rruntou's. sion on Brunton's patent,^ for " certain improvements in the construction, making, and manufacturing of ships' anchors and windlasses, and chain cables and moorings," which was held bad, part of the invention, namely, the anchor, not being new. The decision, in that case, rested on the ground of false suggestion and failure of consideration, the novelty of the whole being the consideration of the grant, and the fail- ure thereof in any part or degree vitiating tlie grant. In tlie case of Campion's patent, for " a new and improved Campion's, method of making and manufacli>ring double canvas and sail-cloth, with hemp and flax, or either of tlicm, without any starch whatever," it appeared that the invention was in re- spect of the texture of the fabric, and not in the exclusion of starch ; this patent also was held bad for false sugges- tion.- This title is ambiguous, but that defect would have been cured, had the specification declared nothing to be intended to be claimed, in respect of the exclusion of starch. The above mentioned, are cases of distinct and unequivo- cal false suggestion, but there are other cases, in which the * false suggestion, though consisting rather in an ambiguity of terms, or in a misuse of words, nevertheless has been held sufficient to vitiate the patent. In Cochrane's patent, the title was "an improved method Cochrane's. of lighting cities, towns*, and villages;" the invention, as described in the specification, was an improvement on the old street lamp, by a new combination and arrangement of parts. In an action for the infringement of the patent, the plaintiff was nonsuited, on the ground of insufficiency of title.^ It is not easy to suggest what were the grounds of insufficiency in this case. Letters-patent for a method in the abstract, without any means described, would be void ; for it is obvious, that the only method which could be de- scribed, must be some arrangement and combination of 1 Bninton v. Ilawkcs, 4 B. & Aid. 541. ^ Campion v. Bcnyon, 6 B. M. 71. ' Cochrane v. Smethust, 1 Stark, 205. The authority of this case is doubtful, since the decision in Cook v. Pcarce, ante, p. 594. Sec also Kickels I'. Haslam, 8 Scott N. B. 97, and post. 598 LETTERS-PATEXT FOR INVENTIONS. apparatus. But the real objection in this case would appear to have been, that the method described was not an im- proved method, lamps possessing the same advantages, and of a kind extremely similar, having been used before. Metcalf's. In the case of Metcalf 's patent, for " a tapering head or hair brush," the invention was of a brush, with the bristles left of an unequal length ; the bristles, instead of being cut down to a level, were left of an unequal length, so that some bristles of each cluster, were longer than the others ; and Lord Ellenborough, C. J., held that, as "tapering" meant gradually converging to a point, the word was im- properly used, and, unless the term had a different meaning annexed to it by the usage of the trade, the objection must prevail. The patent was accordingly repealed.^ But, on the authority of the recent cases, it may be doubted whether an objection of this nature would now prevail ; the title was ambiguous, but rendered sufficiently certain by the specifi- Theincor- cation." In the proceedings on Mintcr's patent,^ Lord Den- rectuseof ^ , . ' ^ . °. . ,.^ ' , , , a word, if man, C. J., said : " It is quite indittercnt whether the word nofiect!' 'self-adjusting' is the correct description of the thing. It seems to describe it so that no man can doubt what it is, namely, that one part of the body is to counterbalance the effect of the other part on the two different parts of the chair. And, in the case of Derosne's patent, Lord Abinger, C. B., said : " The gentleman who composed it (the specifi- cation) is not an Englishman, and he uses the word ' baked,' evidently, for boiling, and the word ' discoloration ' for dis- charging from color ; but all that is conceded ; one would not be disposed, from any obscure word in the specification, which might be interpreted in favor of the plaintiff, taking it altogether, to deprive him of his patent."'* And, in the recent proceedings on Neilson's patent, the same learned judge said : " A mere inaccurate use of words, explained by the context, will not necessarily avoid the patent."^ Thus, 1 K. V. Metcalf, 2 Stark, 249; Pat. Cases, 141. 2 The hardship of this case was referred to by the Lord Chief Baron, in the recent proceedings on Neilson's patent, Pat. Cases, 333. 3 See Mintcr v. ^Mower, Pat. Cases, 141. * Pat. Cases, 157. & Pat. Cases, 369. THE TITLE OP THE INVENTION. 599 in the case of Bloxam v. Else,^ the improper use of the word " vice " for a screw, the drawing showing what was meant, was held not to vitiate the specification. The inaccurate use of words in the last-mentioned cases, occurred in the specification, and not in the title of the in- vention, that is, in tlie letters-patent, so that the objections, founded upon such inaccurate use, would be on the ground of insufficient description, rather than of false suggestion, between which cases a most material distinction exists, and, consequently, the cases last above cited do not strictly apply to the case of Metcalf 's patent. But, inasmuch as the let- ters-patent and specification are to be taken as one instru- ment, the latter must be called in to explain the former, and it must depend on the peculiar circumstances of each case, whether the objection, if of a substantial character, is so by reason of the false suggestion or insufilcient description. The same observations apply to those cases in which a part of the invention, as described in the specification, is useless ; thus, in a recent case, the Court of Exchequer said : " And we do not mean to intimate any doubt as to the validity of a patent for an entire machine or subject, which is, taken altogether, useful, though a part or parts may be useless, always supposing that such patent contains no false sugges- tion." - In the cases above referred to, the invention has been Invention less extensive than, or so dificrent from, the title, that there the^title!^" has been distinct false suggestion. But there is another class of cases remaining to be considered, namely, where the invention is more extensive than the title, but without any false suggestion. Suppose, for instance, letters-patent to be granted for an improvement in roads, and the invention disclosed in the specification is an improvement in roads and carriages ; in such a case, the invention specified is more ex- tensive and difierent from the invention for which the letters- patent were granted ; but there has been no false suggestion. In a case of this nature, any objection to the validity of the patent would appear to be founded on the proviso in the letters-patent, as to the specification not being properly com- 1 1 C. & P., 3G7. 2 In Morg.in v. Seaward, Pat. Cases, 197. 600 LETTERS-PATENT FOR INVENTIONS. plied with. la such a case, the party has invented that for which the letters-patent were granted, and something more ; but he can have no protection, under the letters-patent, in respect of such additional invention. The question, in such cases, would be, how far it may vitiate, as tending to encum- ber and confuse the specification. It would appear that such matter may be rejected as a surplusage, and, in the proceedings on Watt's patent. Eyre, C. J., said : " If there be a specification to be found in that paper which goes to the subject of the invention, the rest may be rejected as sur- plusage." ^ Several im- Another class of cases remains to be mentioned, where, provements ^\^q letters-patent beh^g for an improvement, several distinct as one im- _ ' " _ '_ ' _ provement. improvements are specified, which several improvements may either together constitute one improvement, or be taken separately, as so many distinct and independent improve- ments, or all depending on one general principle. The ob- jections above suggested do not apply to such a patent ; for there is no false suggestion, and the specification supports the title, the whole and each of the several improvements being accurately described in the letters-patent. Thus, in Clegg's pa- CI egg's case, the title was "for an improved gas appara- tus ; " the invention, as described in the specification,'^ con- sisted of a retort, a purifier, a gas meter, and a self-acting governor, which might be used altogether or separately. No objection was made to the above patent, on this ground, in the litigation which the patent underwent.^ Sturtz's. It is important to remark, with reference to cases of this kind, that a change in any one of a series of processes, or in any part of a process, whereby an improved final result is attained, and whereby a new, cheaper, or better article to the public is produced, is an improvement in the final re- sult. Thus the Lord Chancellor Lyndhurst said : '' The title in this case, is for certain improvements in copper and other plate printing. Copperplate printing consists of pro- cesses involving a great variety of circumstances. The 1 2 H. Bl. 498. ■•^ See Pat. Cases, 103. ^ In Crossley v. Beverley, Pat. Cases, 106. THE TITLE OF THE INVENTION. 601 paper must be of a particular description ; before it is used ^Jf^^^^^ it must be damped ; it must remain damp a certain time, in any one , 1 ■ • i iU t * of a series and must be placed m a certam temperature ; the plate of j^rocesses must be duly prepared and duly applied ; and various pro- ^g™?^^^; cesses must be gone through, before the impression is drawn result. off, and brought to a finished state. An improvement in any one of these circumstances, in the preparation of the paper, for instance, or in the damping of it, &c., may be truly called an improvement in copperplate printing." ^ On the same principle, the title " improvements in ex- Derosne's. trading sugar and syrup from cane juice, and other sub- stances containing sugar, and in refining sugar and syrup," was held good, notwithstanding but one distinct improve- ment was pointed out, on the ground that every part of the process may be treated as an improvement. On that oc- casion. Lord Abinger, C. B., said : " I think also the word ' improvements,' was relied on as being in the plural num- ber ; but that is of no consequence, because he may mean that every part oi" his process is to be treated as an im- provement. It is a phrase that may be reconciled to the fact, because syrup, in the proper meaning of the word, is not extracted from the cane juice, any more than sugar is ; but, in the process of what is called extracting sugar from the cane juice, it is made into syrup, and, therefore, if it is an improvement in extracting sugar, a fortiori it may be said to be an improvement in extracting syrup." ^ On the same principle, if a result has hitherto been at- Omission of tained by four processes, the obtaining the same result by eraipro- the omission of one process is an improvement in that re- cesses, suit. It is much better, in such cases, for an inventor to adopt a general title of this description, than a title pointing to the nature of the invention, and the manner in which it is to be performed. But care must be taken that such gene- ral title is fully supported by the invention, otherwise the letters-patent will be void, unless amended by disclaimer.^ 1 In Sturtz V. De la Eue, 5 Russ. 322 ; Pat. Cases, 83. 2 In Derosne v. Fairie, Pat. Cases, 162. 2 It is to be feared that many inventors have been induced, in reli- ance on the provisions of Lord Brougham's act, to be less careful about the title and specification, than they would have been under the old 76 602 LETTERS-PATENT FOR INVENTIONS. The inventor must also take care that the title gives some, and, so far as it goes, a true, idea of the invention, or the letters-patent will be in danger, on the ground of discre- pancy between the title and the qualification. Practical The principle laid down by Lord Lyndhurst, and already toageneral referred to,^ that the title must give some idea of the in- title. vention, is founded on public policy and justice. Great frauds have been practised on the crown, on the public, and on individuals, by means of the vague and general, or blind titles, which have been permitted to be adopted in letters- patent. The consequence is, that letters-patent are granted, without notice to parties most interested in opposing such grants, and who have done all in their power to obtain such notice.^ But, besides this, a general title affords opportuni- ties and facilities for an improper use of the interval allowed for making and enrolling the specification, as by inserting in the specification matters of subsequent discovery, or methods of carrying out the invention which may have been acquired from other sources, and which were not con- templated at the time when the petition for the letters-patent was presented.^ In a recent case, the title was, " improvements in the manufacture of gas for the purposes of illumination, and in state of the law. This is most unwise, since the inconveniences con- nected with the entry of a disclaimer, in the case of subsequent legal proceedings, are so great, that the course ought not to be resorted to, except in cases of absolute necessity. 1 Ante. 2 As by entering a caveat with the Attorney and Solicitor- General. See Law and Pr., 69, r. 3 The evils here alluded to arc of considerable magnitude, and vari- ous means have been suggested for their remedy. A practice has been adopted, of late years, by the law officers of the crown, of requiring (in the words of Lord Campbell) that there should be de bene esse a speci- fication deposited at the time the report of the Attorney or Solicitor- General is made. See Pat. Cases, 333. This practice is, however, of but partial application, and the question naturally arises, in what way would such preliminary specification be made available in any subse- quent proceedings. Must the party prejudiced bring a scire facias, and call the law officer of the crown as a witness ? See some observations on this point, 5 Jurist, 1097. THE TITLE OF THE INVENTION". 603 apparatus used when transmitting and measuring gas or other fluids:" the specification recited the letters-patent as granted for " improvements in the manufacture of gas for the purposes of illumination, and in apparatus used therein, and when transmitting and measuring gas or other fluids," and described several improvements, and, amongst others, a mode of manufacturing clay retorts by hydraulic pressure. In an action for an infringement of this patent, two objec- tions were taken on the part of the defendant : 1. That no specification of the patent which had been granted had been enrolled. 2. That the invention described in the specifica- tion was different from that for which the patent was grant- ed : and the learned judge decided that the defendant was entitled to a verdict, on one of the pleas founded on those objections.^ In this case, there was a discrepancy between the letters-patent and the specification, and it is doubtful whether the rule, as laid down by Lord Lyndhurst, that the title must give some idea, and, so far as it goes, a true idea, of the invention, was complied with. In another case,^ the title was, " improvements in the manufacture of plaited fab- rics," and the specification stated the object of the invention to be " to manufacture plaited fabrics, by the act of weaving in the loom ; " and, having described the means employed, concluded with the following claim : — " But what 1 claim is, the mode of weaving plaited fabrics by dividing the warp into different sets or parts, to be delivered at diff^erent speeds, as the weaving with the weft proceeds." It was objected, on the part of the defendant, that the patent could not be supported, inasmuch as one improvement only was described and claimed, and not several, as suggested by the title ; but the Court of Common Pleas overruled the objection. It should be observed, that many objections of this kind are formal rather than substantial, and that, in the case last re- ferred to, although the specification put a particular limita- tion on the title, it might well be that several improvements were involved in, or resulted from, the invention or mode of manufacture pointed out. > CroU V. Eilj^e, in the C. P., cor. Sir T. Wilde, C J., July, 1847. - Nickels v. Haslam, 8 Scott, N. R. 57. 604 LETTERS-PATENT FOR INVENTIONS. Objections Objections to the title of the invention, or to the validity Ind'tVthe of the letters-patent, by reason of some defect in the title turn rest'on ^"^ objections to the specification, rest on different and dis- different tinct principles ; the former being founded on the old com- prmcip es. ^^^^j^^ doctrine of false suggestion and misrepresentation to the crown, the latter on the non-compliance with the ex- press terms of a proviso or condition contained in the grant itself. The letters-patent are to be read and construed in connection with the specification, which may be brought in aid to explain and reduce to certainty the title, and the one must not be separated from the other, in considering the va- lidity of the letters-patent, so far as that validity may depend on the sufficiency of the title and specification. Objections so founded will not unfrequently appear to be of a mixed cha- racter, and such as might have been obviated by a modifica- tion either of the title or of the specification, but the real defect will generally be found to exist in the specification, and to result from want of care in the preparation of that instrument. Oil the Specification. Proviso as The letters-patent, having been granted for the invention cification. described and designated by the title, are subject to a pro- viso or condition, that they are to be absolutely void if the patentee shall not particularly describe and ascertain the nature of the said invention, and in what manner the same is to be performed, by an instrument in writing, under his hand and seal, and cause the same to be enrolled in the High Court of Chancery, within a certain time after the date of the letters-patent.^ This, which is one of the conditions of the grant, must be strictly and fully complied with, other- wise, the letters-patent are absolutely void, and all the exclu- sive liberties and privileges granted by them are at an end. The instrument, to which this proviso gives rise, is called the specification, upon the particular form of which, the place of its enrolment, or the time within which the enrol- 1 See the form of proviso, Law & Practice, Pr. F. xiii. THE SPECIFICATION. 605 ment must take place, it will be unnecessary here to make any observations.^ The strict compliance with the proviso involves several conditions expressed in the conjunctive, but that part which requires that the patentee " shall particularly describe and ascertain the nature of the said invention, and in what manner the same is to be performed," gives rise to the most frequent questions, and requires especial consider- ation. The requirements of this portion of the proviso may be conveniently considered under the following heads : — 1. The patentee must particularly describe and ascertain the nature of the invention. 2. He must particularly de- scribe and ascertain in what manner the invention is to be performed. 3. The invention so described and ascertained must be the invention for which the letters-patent were granted. Under one of these three heads, the various ques- tions generally arising upon the sufficiency of the specifica- tion may be considered. Before, however, entering upon the requisites of the specification, as expressed by the terms of the proviso and explained by the various decisions on the subject, it will be advisable to advert to the history and origin of the proviso in question, and the general policy upon which its introduc- tion rests. Previous to the latter end of the reign of Queen Anne,- the letters-patent were granted in the form which Origin of had been adopted from a very early period, and without (,j^^o^ any proviso of the kind now under consideration. The brief description contained in the letters-patent, that is, the title of the invention, was the only information which the public received. The inventor was under no obligation to announce the nature or extent of his invention, or to ex- plain to the public in what manner it was to be performed, and, as a necessary consequence of this, in the low state of the arts and manufactures of the country at that period, the grantee of letters-patent acquired exclusive privileges of a much more extensive character than can at present be ob- 1 See Law &, Practice, Pr. F. xiv., for information on these points. 2 The earliest letters-patent which I have met with, requiring the enrolment of a specification, are dated 1 April, 1612. No account of the peculiar circumstances which led to the introduction of the clause is extant. See Pat. Cases, 8 n. & 36 n. e. 606 LETTERS-PATENT FOR INVENTIONS. tained.^ So far indeed from its being incumbent on the inventor to give any information as to the nature of the in- vention, or as to the manner in which it was to be per- formed, it seems to have been taken for granted that the invention was to have been practised in secret ; for an act Invention of the Commonwealth, A. D. 1651, c. 2, after granting to originally q^q Jeremy Buck to use, exercise, and enjoy the art, skill, kept secret. •' ... j • j • and mystery of meltmg down iron ore and cmders mto raw iron, and of other ore and metal, with stone-coal, pit-coal, or sea-coal, without charking thereof, contains the two follow- ing remarkable provisos : — " Provided always, that all and every person or persons may use such ways and works for melting down any irou ore, cinder, or other metals, as they now use, or heretofore have lawfully used to do, or any other way or works hereafter by them newly to be in- vented, so as they make not use of the said new invention Instruction of him the said J. Buck : Provided also, that the said J. of the pub- guck and his assigns, after seven years of the term hereby granted, do and shall take apprentices, and teach them the knowledge and mystery of the said new invention." 2 These two provisos are remarkable as first steps towards obtaining that which is now ensured by the specification. The former of these provisos points out the kind of griev- ance to which parties might be subjected, by reason of the want of an express declaration by the patentee, as to the precise extent and nature of his invention ; the latter shows that, at common law, there was no compulsion on the party obtaining the exclusive privileges, to instruct the public as to the means of performing, or to furnish any information respecting, his invention. The instruction of the public in 1 The forms of the early letters-patent, and the nature of the rights granted by and enjoyed under them, deserve more attention than they have usually received. See the patents of Baker, Dudley, and Mansell, Pat. Cases, 9-27. Baker, 3 Jac. 1, had the exclusive right of making smalt in England, ante; Dudley, 19 Jac. 1, of making iron with sea- coal, ante; Mansell, 98 Jac. 1, of making glass with wood, ante; and Buck, A. D. 1651, had exclusive privilege, under an act of the Com- monwealth, for melting iron and other metals with stone coal without charking. Pat. Cases, 35. 2 Pat. Cases, 35. THE SPECIFICATION. 607 the new art or mystery is recognized in the early case of Darcy v. Allin/ where it was said, " the king may grant a monopoly patent for some reasonable time, until the sub- ject may learn the same, in consideration of the good he doth to the commonwealth, otherwise not;" and Sir E. Coke alludes to the same subject,^ of teaching by ap- prentices ; but the means of ensuring the object were want- ing ; for it is obvious that, unless the party be compelled to teach others, either by taking apprentices or by enrolling such a specification as will convey to others all the infor- mation requisite for practising the invention, the inventor will have every inducement to keep the secret to himself, and the public will not be benefited, to the extent or in the manner contemplated by the policy upon which the grant- ing of exclusive privileges of this nature is founded. A proviso similar to the one in the act of the Common- wealth for Buck's invention, insuring to persons the free enjoyment and use of any methods previously used by them, or which they should thereafter invent, so as they used not the invention, the subject of the grant, is contained in many of the earlier patents, as well as in those of recent date ; but, until the introduction of the proviso for the speci- fication, the public were left in uncertainty as to what the patentee claimed, or from what they were debarred, and the defining these important particulars was left to parole evidence. The inconveniences of this state of things would not be seriously felt in the infancy of the arts and manu- factures of the country ; but, as invention progressed, and grants of letters-patent became more numerous, other means of instruction and protection were requisite. No account has been preserved of the first introduction into the letters-patent of the proviso for the specification : proyjgo in- it was not in consequence of any statutory enactment, but ^J'^'^^^^^jl "'^ was, in all probability, introduced at the suggestion of the ity of the law officer of the crown, by virtue of the authority and ^'^°^°" direction which he receives, under the terms of the royal 1 An. 44 El. Pat. Cases, 6. 2 3 Inst. 151. Pat. Cases, 31. 608 LETTERS-PATENT FOR INVENTIONS. Letters-pa- tent a bar- gain be- tween the patentee and the public. Benefit to the public. warrant, to insert in the letters-patent all such clauses and provisos as he may judge requisite. The granting of letters-patent has been likened to a bar- gain between the patentee and the public ; it has been said that the patentee enjoys his limited monopoly as a reward, and in consideration of the information and benefit which the public are to derive from a full disclosure of the inven- tion to them, and the specification has been consequently designated as the price which the patentee pays the public for his exclusive privileges. The notion of a bargain or contract between the patentee and the public having been thus introduced, the good faith of the patentee, in the dis- closures made respecting his invention, becomes a principle at once applicable to the question — how far the proviso has been fully and honestly complied with } " The law," says Lord Mansfield, " relative to patents, requires, as the price the individual should pay the people for his monopoly, that he should enrol, to the very best of his knowledge and judgment, the fullest and most sufficient description of all the particulars on which the effect depended that he was able to do." ^ " The specification," says Lord Eldon, " may be considered to be the consideration for the bargain between the public and the patentee, and must be judged on the principle of good faith." Lord Lyndhurst says, " It is a principle of patent law, that there must be the utmost good faith in the specification." ^ The public are benefited by the required disclosure in two ways ; first, the general progress of the arts and manu- factures is promoted by the addition of fresh discoveries in which all may freely participate after a limited time ; secondly, the knowledge is preserved and communicated to the public, and protection is given to the ingenious inven- tor, while the mischiefs attendant on manufactures con- ducted in private, under injunctions of secrecy, are in great measure avoided. The penalty attached to a non-compli- ance with the requirements of the law as regards the speci- 1 See the form of the warrant, Law & Practice, Pr F. viii. ^ See per Lord Mansfield, C. J. Pat. Cases, 54, n. e. 3 Pat. Cases, 83. THE SPECIFICATION. 609 fication has not been sufficient, in all cases, to ensure a full and fair disclosure of the secret, and the exclusive privi- leges granted by the letters-patent have, consequently, been lost.i Keeping in view, then, this consideration, upon which it may be presumed that the crown was advised to introduce the proviso in question, and the principles by which the sufficiency of the specification has been tested, we will proceed to the examination of the points to which the at- tention of patentees must be especially directed. In the first place, then, the patentee must particularly Limits of describe and ascertain the nature of the invention. That tiou must is, he must make it distinctly appear, either by express »Ppear. statement or by obvious intendment, in what the invention consists; what is its peculiar character; and in what re- spect it differs from previous inventions ; or, in other words, where the invention begins and where it ends. If these limits, so to speak, of the invention, be not thus defined, the public will not be apprised of what they are excluded from, during the subsistence of the letters-patent, and per- sons pursuing in the same line of invention, or engaged in a similar branch of manufacture, may be improperly excluded from practising what is perfectly open to them, or may unintentionally commit an infringement of the patent. This requisite is sometimes expressed by stating that the specification must distinguish between what is old and what is new, and the omission to do this has not unfre- quently been the sole cause of a patentee failing, in an action at law, to maintain the exclusive privileges granted by the letters-patent. - An objection, founded on a non-compliance with the rule New and just referred to, was taken in a recent case, and its nature distin-^ ^ was explained in the following terms by Lord Abinger^ C. guished. 1 The temptation which exists, in the case of chemical and other patents, to keep back part of the secret, has, it is to be feared, been somewhat encouraged by a mistaken notion that such omission may be supplied, by way of memorandum of alteration, under Lord Brougham's Act. 2 As in Macfarland v. Price. Tat. Cases, 74; 1 Stark., 199. 77 610 LETTERS-PATENT FOR INVENTIONS. Origin of formal claiming and dis- claiming clauses. B. : " The objection to this specification is plain on the face of it, and it is this — it is required, as a condition of every patent, that the patentee shall set forth, in his specifi- cation, a true account and description of his patent or inven- tion, and it is necessary, in that specification, that he should state what his invention is, what he claims to be new, and what he admits to be old; for, if the specification states simply the whole machine which he uses, and which he wishes to introduce into use, and claims the whole of that as new, and does not state that he claims either any par- ticular part or the combination of the whole as new, why then his patent must be taken to be a patent for the whole, and for each particular part, and his patent will be void if any particular part turns out to be old, or the combination itself not new." i The difficulty of avoiding the objections just adverted to, is greater than at first sight appears, especially in an ad- vanced state of the arts and manufactures, when the changes which mark and constitute the progress of inven- tion are necessarily small, and from the necessity which frequently exists, in order to comply with another requisite of the proviso in question, of describing, either partially or fully, many things or processes, in respect whereof no claim to invention is intended to be made. In order to avoid this objection, it is not unusual to introduce, at the close or other part of the specification, certain formal disclaiming and claiming clauses, but such clauses are in many cases wholly unnecessary, and not unfrequently give rise to formal ob- jections as to their validity, and to wrong impressions as to the real spirit of the invention, in proceedings in which the patent is impeached, or when the infringement complained of does not accord, in every particular, with the precise terms of the claim.- It should be borne in mind that 1 In Carpenter v. Smith. Pat. Cases, 532. ^ In the recent case of The Queen v. Cutler, an objection was taken that the invention, as expressed in two of the claims, was not the subject-matter of letters-patent, and Lord Denman, C. J., acceded, at the trial, to that view of the case. Had the claims been omitted, or differently worded, so as to embrace the real spirit of the iaveation, the objection would, in all probability, never have arisen. THE SPECIFICATION. 611 formal disclaiming and claiming clauses, are, in point of law, wholly unnecessary, and that though, in some cases, as where the step or point of invention is small, and capable of being well defined, such clauses may be advisable and expedient, yet many cases exist in which they are inex- pedient and injurious. It is impossible to lay down any general rule ; each case must be regulated by its own special circumstances; but, so long as what is intended to be claimed and represented as the invention, can be gathered and ascertained from the whole instrument, the courts will overrule mere technical objections, and support the validity of the grant of the crown.^ The preparation of the specification, so as to limit and Failure of . , . , patentee ascertain the nature of the invention, in accordance with niuiniy due the principles above expressed, whether eflected by formal |j^gf°^*' claiming and disclaiming clauses, or by the introductory statement, or by general description, though matter of form, is all important to a patentee, for, unless this be properly dbne, he will fail to secure protection for his invention, how- ever valuable it may be. The importance of this cannot be too strongly insisted on, because, on a review of the cases in wjjich patentees have failed to maintain the ex- clusive privileges granted by the letters-patent, it has rarely happened that some invention, sufficient to support a valid patent, has not existed ; the cause of failure has generally been some formal detect in the specification. The olijcctions of vagueness, ambiguity, and uncertainty, Vapicnesi • • 1 111 1- 1 . • \ . 'i"'i uncer are intimately connected with the preceding, but, in wliat- ti^i„tyiji ever form presented, their force is derived from the non- jP^^,.'^^"" compliance with the express terms of that part of the pro- viso which requires that the patentee shall particularly describe and ascertain the nature of his invention. The second part of the condition, as above expressed. Manner of ■1111 1 practising requires ihat the patentee shall particularly describe and the inven ascertain in what manner the invention is to be performed. f^j"y g^y^^ 1 See the recent case of M' Alpine v. Mangnall (3 C. B. 517) in the Exchequer Chamber. The inventor is referred to the specifications of the patents of Forsyth (Pat. Cases, 96); of Hall {Ibid, 98); of ClepK' (Ihld. 103); of Hill (Ibid, 225) ; of NeiUon {Ibid, 373.); and of Crane {Ibid, 375) ; in illustration of the preceding observations. gl2 LETTERS-PATENT FOR INVENTIONS. The compliance or non-compliance with this requisite, is a question of fact for the jury, on the sufficiency of the spe- cification, to enable a competent workman, by following the directions given, to practise the invention. The com- pliance or non-compliance with the requisite first adverted to, is apparent on the face of the specification, and must, in general, be disposed of entirely by the Court ; whereas any objection, in respect of the requisite now under consi- deration, generally arises as matter of evidence. Under this requisite, the question of bond fde, or of good faith, in making a full, fair, and complete disclosure, in respect of the invention, generally arises. The objections arising under this head may be conveniently classified, as in con- Rules as to travention of one of the three following rules: — 1. The cationf'^'^ specification must be sufficiently full, clear, and e.vact to enable a person, conversant with the particular department of the arts and manufactures, to practise the invention, by pursuing the directions contained in the specification, with- out calling upon his own inventive powers, or requiring him to possess and apply more than ordinary skill and know- ledge. 2. The specification must direct how to practise the invention in the most beneficial manner known to the patentee, and it must contain the most ample disclosure of the secret which it is in his power to make. 3. The speci- fication must be true, and not mislead. Various cases might be cited, in illustration of each of these rules, but the following will be sufficient on the pre- sent occasion.^ In the celebrated case of the paddle- wheels,^ in which a question arose on the sufficiency of the specification to enable a competent workman to make Ever thine ^'^^ wheels, the jury were directed, by Alderson, B., in the contribut- following terms : — " Further, if a patentee is acquainted ing to the . ,.,,.. . , beneficial With any particular mode by which his invention may be the^hivfn°^ most conveniently carried into efiect, he ought to state it in tion must his specification ; that was laid down in a case before Lord closed. Mansfield. There the question arose on a patent for steel ' See Index to Patent Cases, tit. Specification. Law &, Practice, 86. ^ Morgan v. Seaward, Pat. Cases, 175. THE SPECIFICATION. 613 trusses ; it appeared that the patentee, in some parts of his process, used tallow, to facilitate the invention for which he had obtained a patent, and, in his specification, he made no mention of the use of the tallow. The Court held the spe- cification to be bad, because, they said, you ought not to put people to find out that tallow is useful in carrying into eflect the invention of steel trusses. You ought to tell the public so, if that is the best mode of doing it, for you are bound to make a bond fide full and candid disclosure." In the case of the patent verdigris,^ Gibbs, C. J., said : — " It is said that the method described makes verdigris, and that the specification is therefore sufficient. The law is not so ; a man who applies for a patent, and possesses a mode of carrying on that invention in the most beneficial manner, must disclose the means of producing it in equal perfection, and with as little expense and labor as it costs the inventor himself. The price that he pays for his patent is, that he will enable the public, at the expiration of his privilege, to make it in the same way, and with the same advantages. If any thing that gives an advantageous operation to the thing invented, be concealed, the specifica- tion is void. Now, though the specification would enable a person to make verdigris substantially as good without aqua fortis as with it, still, inasmuch as it would be made with more labor by the omission oi aqua fortis^ it is a prejudicial concealment, and a breach of the terms which the patentee makes with the public." Also, by Abbott, C. J., in the case of the Seidlitz pow- ders : 2 — " It is the duty of a patentee to specify the plain- est and most easy way of producing that for which the patent is granted, and to make the public acquainted with the mode which he himself adopts. By reading this speci- fication, we are led to suppose a Irborious process neces- sary to the production of the ingredients, when, in fact, we might go to any chemist's shop, and buy the same things ready made. The public are misled by this specifica- tion, which tends to make people believe that an elaborate 1 Wood t'. Zimmcr, Pat. Cases, 83 ; 1 Holt, N. P. 60. ' Savory i-. Price ; Pat. Cases, 83. 614 LETTERS-PATENT FOR INVENTIONS. process is essential to the invention. It cannot be sup- ported."" And, lastly, by Lord Lyndhurst, L. C. : — " It is a prin- ciple of Patent Law, that there must be the utmost good faith in the specification. It must describe the invention in such a way, that a person of ordinary skill in the trade shall be able to carry on the process. Here the specifica- tion says, that there is to be added to the size certain pro- portions of ' the finest and purest white lead ; ' a workman would naturally go to a chemist's shop, and ask for ' the finest and purest chemical white lead ;' the answer which he would receive would be, that there was no substance known in the trade by that name. He would be compelled to ask for the purest and finest white lead ; and, according to the evidence, the purest and finest white lead that can be procured in London will not answer the purpose. It is said that there is a substance prepared on the Continent, which is white lead, or some preparation of white lead ; and that, by using it in the manner described in the specification, the desired c-fTect is produced. If that be so, the patentee ought to have directed the attention of the public to that circum- stance. He ought to have said, ' the purest white lead which can be obtained in the shops of London will not do; but there is a purer white lead, prepared on the Continent, and imported into this country, which alone must be used.' 'The purest and finest chemical white lead,' must mean the finest and purest white lead usually gotten in the gene- ral market for that commodity, unless the public be put on their guard by a statement, that what would be called very fine and pure white lead, in the ordinary sepse of the trade, will not answer, but that the white lead used must be of a superlatively pure and fine quality, prepared in a particular way, and to be gotten only in a particular place. If the article is not made in this country, but may be imported, it would be necessary to mention that circumstance. It is said that the description in the specification will be suffi- cient, if the substance is known in the trade by the name of ' the purest and finest white lead,' or, ' the purest and finest chemical white lead.' But it does not appear that there is any substance generally known in the trade by that deno- mination. It is alleged that the substance can be pur- THE SPECIFICATION. 615 chased at the shops in London, and two are specified. In point of fact, it has been purchased only at one of those shops, and they are not chemists', but color shops. It appears to me that this specification does not give that degree of full and precise information which the public have a right to require." The preceding cases will sufficiently point out the kind Amount of of information required in a specification ; the extent of description such information, or amount of detail, will be regulated by J'^^^^Jj"^^' the consideration, that the specification is addressed to artists and persons acquainted with the manufacture to which the invention relates. Upon this point, the following direction was given by Parke, B. : • — "You are not to ask yourselves whether persons of great skill would do it ; the specification is supposed to be addressed to a practical workman, who brings the ordinary degree of knowledge and the ordinary degree of capacity to the subject ; and, if such a person would construct an apparatus that would answer some beneficial purpose, whatever its shape was, according to the terms of this specification, then I think that this specification is good, and that the patent may be sup- ported, so far as relates to that." In the case of the paddle-wheel, already referred to, Alderson, B., says:^ — "If you think that engineers of ordinary and competent skill would have to set themselves a problem to solve, and would have to solve that problem before they could do it, then the specification would be bad." And again : — " Now a workman of ordinary skill, when told to put two things together so that they should move, would, of course, by the ordinary skill and know- ledge he possesses, make them of sufficient size to move. There he would have to bring to his assistance his know- ledge, that the size of the parts is material to the working of the machine. That is within the ordinary knowledge of every* workman. He says, ' I see this will not work, because it is too small ; ' and then he makes it a little larger, ^ See Ncilson v. Harford. Pat. Cases, 314, where this question is fully considered by that learned judge. - Pat. Cases, 174. 616 LETTERS-PATENT FOR INVENTIONS. and finds it will work. What is required is, that the speci- fication should be such as to enable a workman of ordinary skill to make the machine." ' Thespeci- To the same effect, in Watt's case, is the following Esed fo*^" observation of Eyre, C. J. : — " Suppose a newly-invented artists. chemical process, and the specification should direct that some particular substance should be poured upon gold in a state of fusion, it would be necessary, in order to this ope- ration, that the gold should be put into a crucible, and should be melted in that crucible ; but it would be hardly necessary to state, in the specification, the manner in which, or the utensils with which, the operation of putting gold into a state of fusion was to be performed. They are mere incidents, with which every man acquainted with the subject is familiar.^ Inaccurate Lastly, the use of terms of art, or of words in an inaccu- words, or rate or incorrect sense, provided that persons of ordinary axt^wilf not skill and knowledge would not be misled, is no valid objec- vitiate a tion to a specification. Thus, Lord Abinger, C. B., says ;3 SDCCifiCtl- tion. " The gentleman who composed the specification is not an Englishman, and he uses the word ' baked ' evidently for boiling, and the word ' discoloration ' for discharge from color ; but one would not be disposed, from an obscure word in the specification, and which might be interpreted in favor of the plaintiff, taking it altogether, to deprive him of his patent.4 Known In concluding this part of the case, it may be laid down neeTnot\e ^s a general rule, that known machinery and processes need described. ^^^ {^g described, and that technical terms of art will receive their ordinary construction, but care must be taken to make it appear that nothing is claimed in respect of such known elements. The remaining point, to which the attention of the pa- 1 See this question fully considered by that learned judge, in his direction to the jury in Morgan v. Seaward, Pat. Cases, 172 - 185. 2 2 H. Bl. 497. 3 See Derosne v. Fairie, Pat. Cases, 157. * See, on this point, observations of Lord Tenterden, C. J., in Bloxam v. Elsee, (1 C. & P. 558; 6 B. & C. 169) ; and in Crossley v. Beverley, Pat. Cas. 110. THE SPECIFICATION. 617 tentee must be directed, is, tliut the invention so described The iuven- , . , . , . . » 1-111 tion in the and ascertained is the invention lor which the letters-patent speciiica- were granted. Tliis is sometimes expressed by saying that ^gtij^^ame the letters-patent and specification must support each other, as in the •.^ 1 , • • ■ 1 ,• patent, for, if there be any inconsistency or material discrepancy between the invention, as described in the letters-patent, and in the specification, the terms of the condition will not have been complied with. In the case of The King v. Wheeler,' the title was, " a new or improved method of drying and preparing malt," and the invention, as described in the spe- cification, consisted in healing malt to a high degree, so that it should be changed to a deep brown color. Lord Tenter- den, C. J., in delivering the judgment of the Court, said — " We think the invention mentioned in this specification so entirely difierent from that mentioned in the patent, as that the latter, if such there be, remains wholly unsupported, and, consequently, that the issue respecting the sufficiency of the specification could not be found for the defendant." The title, in the case just referred to, was defective, and did not properly express the invention which had, in fact, been made, but the decision illustrates the rule of law now under consideration. Other cases, in which a similar question has arisen, have already been referred to,- and it should be observed, that this objection is, in most of the cases, entirely of a formal nature, and such as would never have arisen, had the specification been compared with the letters-patent, and care taken that the invention, as fully described and ascertained in the specification, should agree, substantially, with the short description in the letters-patent. It is extremely doubtful whether the provisions of Lord Amend- Brougham's Act, giving the power of entering a disclaimer "jg^^jjjj^gj. and memorandum of alteration, apply to cases of non-com- and mcmo- . . randum ol pliance with the express terms of the proviso as to the speci- alteration. fication. If this be so, a patentee who fails to comply with that proviso, in any one of the three respects above reverted to, is without remedy, and his grant of letters-patent is alto- gether and absolutely void. 1 2 B. & Aid. 345. See the case of CroU v. Edge, ante, p. 602. ^ See ante, p. 602, 78 618 LETTERS-PATENT FOR INVENTIONS. As the law stood, previous to the passing of that Act, if any one of several inventions or improvements, for which the letters-patent were granted, should prove to be old, or not an improvement, the grant was invalid, and the power of entering a disclaimer or memorandum of alteration was given, for the purpose of enabling a patentee to get rid of one of several inventions or improvements, and to make such alterations in the title and specification as the disclaim- ing or abandoning a part of the invention might render necessary. The power of entering a disclaimer or memo- randum of alteration may be employed to render the letters- patent and specification consistent with each other, subject, however, always, to tiie proviso, that the exclusive right originally granted by the letters-patent is not extended ; and the words of the statute are, on one construction, sufficient to authorize alterations in the patent and specification, bther than such as are of the nature of a disclaimer, as, for in- stance, the curing some defect in the original specification, as insufficient description, or non-compliance with some of the conditions already adverted to ; but, until such an alter- ation shall have been sanctioned on the highest authority, it ought not to be ventured on, except in cases of absolute necessity; and, indeed, the entry of any disclaimer and me- morandum may be so prejudicial to a patent, that it ought never to be resorted to except upon very clear grounds, and after mature consideration. LAWS OF THE UNITED STATES RELATING TO PATENTS AND THE PATENT OFFICE. CONSTITUTION OF THE UNITED STATES. ARTICLE 1st, SECTION 8th. " The Congress shall have power, &:c., to promote the " progress of science and useful arts, by securing, for limited " limes, to Authors and Inventors, the exclusive right to their " respective writings and discoveries." Also, " to make all " laws which shall be necessary and proper for carrying " into execution the foregoing powers." CHAP. VII. — An Act to promote the progress of useful arts. 7 rr Patents for Section 1. Be it enacted oy the Senate and House 07 useful dis- Representalives of the United States of America, in Congress ^^^"^^'n_ assembled, That, upon the petition of any person or persons c'^ ^o/"' '^'^'^ to ihe Secretary of Stale, the Secretary for the Department liepcaled of War, and the Attorney-General of the United States, of 21st Feb. setting forth, that he, she, or they, hath or have invented 01 }^^^'^^-^^- discovered any useful art, manufacture, engine, machine, ortary of , . 1 /> 1 State, the device, or any improvement Iherem not beiore known or Secretary used, and praying that a patent may be granted therefor, >t "j^g^^^'J^"'^ shall and may be lawful lo and for the said Secretary of ney Gen'!, /. TTT 1 1 o*" ^"y two State, the Secretary for the Department of War, and the of them, if Attorney-General, or any two of them, if they shall deem jeeniVhe the invention or discovery sufficiently useful and import- invention, . &c., useful ant, lo cause letters-patent to be made out in the name of andimport- the United States, to bear teste by ihe President of the ^^use^let- Uniled Slates, reciting the allegations and suggestions offers-patent . . ... . to be the said petition, and describing the said invention or dis- issued. 620 LAWS OF THE UNITED STATES covery, clearly, truly, and fully, and thereupon granting to Continu- such petitioner or petitioners, his, her, or their heirs, ad- ''atenf "" ministrators, or assigns, for any term not exceeding four- teen years, the sole and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery ; which letters-patent shall be delivered to the Attorney-General of the United States, to be examined, who shall, within fifteen days next after the delivery to him, if he shall find the same conform- Attoiney- able to this Act, certify it tc be so at the foot thereof, and certuy the present the letters-patent, so certified, to the President, who conformity j || ^j^ j ^f ^^^ United States to be thereto affixed, of the pa- tent with and the same shall be good and available to the grantee or grantees, by force of this Act, to all and every intent and purpose herein contained, and shall be recorded in a book to be kept for that purpose in the office of the Secretary of Patents to gtajg^ and delivered to the patentee or his agent, and the ed. delivery thereof shall be entered on the record and indorsed on the patent, by the said Secretary, at the time of granting the same. Specifica- gg^^ 2. A7id he it further enacted. That the grantee or tioninwnt- •' _ ° _ ing, with a grantees of each patent shall, at the time of granting the model same, deliver to the Secretary of State a specification in im^del vered ^vi''t'"&> containing a description, accompanied with drafts and filed in or models, and explanations and models (if the nature of the oflSce of . . -n 1 • /• the Secre- the mvention or discovery will admit of a model) of the S^tote? thing or things, by him or them invented or discovered, and described as aforesaid, in the said patents ; which specifica- tion shall be so particular, and said models so exact, as not only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art or manufacture, whereof it is a branch, or wherewith it may be nearest connected, to make, construct, or use the same, to the end that the public may have the full benefit thereof, after the expiration of the patent term ; which specification shall be filed in the office Certified of the said Secretary, and certified copies thereof shall be wharcases competent evidence in all courts, and before all jurisdictions, tobeevi- where any matter or thing, touching or concerning such patent, right, or privilege, shall come in question. RELATING TO PATENTS, ETC. 621 Sec. 3. And be it further enacted, That, upon the appli- Copies of cation of any person to the Secretary of Stale, for a copy tuHraud of anv such specification, and for permission to have simi-"^°^^'^ ^ ' ' may be lar model or ir.odels made, it shall be the duty of the Secre- taken. tary to give such copy, and to permit the person so apply- ing for a similar model or models, to take, or make, or cause the same to be taken or made, at the expense of such appli- cant. Sec. 4. And be it further enacted, That, if any person or Pennltyfor I 11 J • 1 i' 1 making;, persons shall devise, make, construct, use, employ, or vend, &c., any within these United States, any art, manufacture, engine, "I'j^^j*'^' '^' machine, or device, or any invention or improvement upon, Vf^^^"* '^"•* ^ . l^een grant- or m any art, manufacture, engine, machine, or device, the cd. sole and exclusive right of which shall be so as aforesaid granted by patent to any person or persons, by virtue and in pursuance of this Act, without the consent of the pa- tentee or patentees, their executors, administrators, or assigns, first had and obtained in writing, every person so offending, shall forfeit and pay to the said patentee or patentees, his, her, or their executors, administrators, or assigns, such damages as shall be assessed by a jury. Damages to and, moreover, shall forfeit to the person aggrieved the |^^ ^^^•^®** thing or things so devised, made, constructed, used, em- ployed, or vended, contrary to the true intent of this act, which may be recovered in an action on the case, founded CD this act. Sec. 5. And be it further enacted, That, upon oath or Patents affirmation made before the judge of the District Court tk)uslvoi.- where the defendant resides, that any patent which shall be *"'"^'^- issued in pursuance of this act, was obtained surreptitiously by, or upon false suggestion, and motion made to the said court, within one year after issuing the said patent, but not afterwards, it shall and may be lawful to and for the judge of the said District Court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee or patentees, his, her, or their executors, administrators, or assigns, show cause why process should not issue against u- I . . , . -. ^ . How to be nim, her, or them, to repeal such patents; and if sufficient repealed. cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order 622 LAWS OF THE UNITED STATES process to be issued, as aforesaid, against sucli patentee or patentees, his, her, or their executors, administrators, or assigns. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the first and true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent or patents ; and if the party, at whose complaint the process issued, shall have judgment given against him, he shall pay all such costs as the defendant shall be put to, in defending the suit, to be taxed by the court, and recovered in such manner as costs expended by defendants shall be recovered in due course of law. Inactions Sec. 6. And he it jurlher enacted, That, in all actions to 'yit^Ti'" ' ^^ brought by such patentee or patentees, his, her, or their be deemed executors, administrators, or assigns, for any penalty incur- primd facie , , ■ ^ i ■ i • i n ^■ evidence of red by Virtue of this act, the said patents or specincations covfrv^but^^^^^ be prima facie evidence, that the said patentee or special patentees was or were the first and true inventor or invent- mattermay'^ „ , .. •/• j j be given in ors, discoverer or discoverers, oi tlie thing so specined, and aid to wlLit that the same is truly specified ; but that, nevertheless, the effect. defendant or defendants may plead the general issue, and give this act, and any special matter whereof notice in writ- ing shall iiave been given to the plaintiff, or his attorney, thirty days before the trial, in evidence, tending to prove that the specification filed by the plaintiff does not contain the whole of the truth concerning his invention or disco- very ; or that it contains more than is necessary to produce the effect described ; and, if the concealment of part, or the addition of more than is necessary, shall appear to have been intended to mislead, or shall actually mislead the pub- lic, so as the effect described cannot be produced by the means specified, then, and in such cases, the verdict and judgment shall be for the defendant. Patent fees. Sec. 7. And he it further enacted^ That such patentee as aforesaid shall, before he receives his patent, pay the fol- lowing fees, to the several officers employed in making out and perfecting the same, to wit : For receiving and filing the petition, fifty cents ; for filing specifications, per copy- sheet, containing one hundred words, ten cents ; for making out patent, two dollars ; for affixing great seal, one dollar ; RELATING TO PATENTS, ETC. 623 for indorsing the day of delivering the same to the patentee, including all intermediate services, twenty cents. Approved April 10, 1790. CHAP. IX. — As Act to promote the progres.s of useful arts, and to repeal the act heretofore made for that purpose. Section 1. Be it enacted hy the Senate and House o/'Actofi790, Representatives of the United States of America^ in Con- *^ ^^' gress assembled, That, when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, I-ctters- •' / patent, how manufacture, or composition of matter, or any new and ami by useful improvement on any art, machine, manufacture, or made out. composition of matter, not known or used before the appli- :f^,*^^°J„i^P'"'' cation, and shall present a petition to the Secretary of ch. 33, State, signifying a desire of obtaining an exclusive property in the same, and praying that a patent may be granted therefor, it shall and may be lawful for the said Secretary of State to cause letters-patent to be made out, in the name of the United States, bearing teste by the President of the To bear United States, reciting the allegations and suggestions o^ president * the said petition, and giving a short description of the said a°'l invention or discovery, and thereupon granting to such peti- tioner or petitioners, his, her, or their heirs, administrators, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery, which letters-patent shall be delivered to the be examin- Attorney-General of the United States, to be examined ; Attorney- who, within fifteen days after such delivery, if he finds the General. same conformable to this act, shall certify accordingly, at the foot thereof, and return the same to the Secretary of State, who shall present the letters-patent, thus certified, to be signed, and shall cause the seal of the United States to be thereto affixed ; and the same shall be good and avail- leoo, oh. able to the grantee or grantees, by force of this act, and ^^" shall be recorded in a book, to be kept for that purpose, in 624 LAWS OF THE UNITED STATES the office of the Secretary of State, and delivered to the patentee or his order. The liberty Sec. 2. Provided alu-ays, and he it further enacted, That of using an ^^y pgj.gQj^ ^y}^Q sh^ll have discovered an improvement in ment de- the principle of any machine, or in the process of any com- position of matter, which have been patented, and shall have obtained a patent for such improvement, shall not be at liberty to make, use, or vend the original discovery, Changing nor shall the first inventor be at liberty to use the improve- propOT-™ °^ "^^"^ • ^""^ ^^ '^ hereby enacted and declared, that simply tions of any changing the form or the proportions of any machine, or &c., notto composition of matter, in any degree, shall not be deemed be a disco- j • yery, a discovery. Howtopro- Sec 3. And he it further enacted^ That every inventor, tahi letters'- ^6^0 ''^ he can receive a patent, shall swear or affirm, that patent. \^q (jQgg verily believe that he is the true inventor or disco- verer of the art, machine, or improvement, for which he 1800, ch. 25, solicits a patent, which oath or affirmation may be made sec. -. before any person authorized to administer oaths, and shall deliver a written description of his invention, and of the Specifica- manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and to enable any per- son, skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, com- pound, and use the same. And, in the case of any ma- chine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished Specifica- froi'n Other inventions ; and he shall accompany the whole with drawings and written references, where the nature of the case admits of drawings, or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention is of a composition of matter ; which description, signed by himself, and attested by two witnesses, shall be filed in the office of the Secretary of State, and certified copies thereof shall be competent evidence in all courts, where any matter or thing, touching such patent-right, shall come in question. And such inventor shall, moreover, deliver a model of his tion tion RELATING TO TATEXTS. ETC. 625 machine, provided the Secretary shall deem such model to be necessary. Sec 4. And he it further enacted. That it shall be inventors lawful for any inventor, his executor, or administrator, to [y,'^5|.,^^^g|° assign the title and interest in the said invention, at any Uecord of time, and the assignee, having recorded the said assignment |'n^,'ft"o |,o in the ollicc of the Secretary of State, shall thereafter "'j}''^'". the . . . oiiice ot the Stand m the place of the original inventor, both as to right Secretiiry and responsibility, and so the assignee of assigns, to "any degree. Sec. 5. And he it further enacted. That, if anv person Forfeiture , . * . " on using shall make, devise, and use, or sell the thmg so invented, patented the exclusive right of which shall, as aforesaid, have been "Vthout*"^ secured to any person by patent, without the consent of the l*-"^^»-'- patentee, his executors, administrators, or assigns, first ob- tained in writing, every person so ofTending, shall forfeit and pay to the patentee a sum, that shall be at least equal to three times the price for which the patentee has usually J'^'"''" sold or licensed to other persons, the use of the said in- price "to be vention ; which may be recovered in an action on the case ^^" ^' I low rccoV" founded on this act, in the Circuit Court of the United States, ered. or any other court having competent jurisdiction. Sec. G. Provided always, and he it further enacted, That j?^^j^j|^ the defendant in such action shall be permitted to plead '"•'ly S'^'o the general issue, and give this act and any special matter, evidence, of which notice in writing may have been given to the plaintiff", or his attorney, thirty days before trial, in evidence, tending to prove that the specification, filed by the plaintiir, docs not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect, which concealment or addition shall fully appear to have been made for the purpose of deceiving the public, or that the thing, thus secured by patent, 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, or that he had surrep- titiously obtained a patent for the discovery of another per- son : in either of which cases, judgment shall be rendered ^j • j„_ for the defendant, with costs, and the patent shall be de- ™°°t shall clared void. 79 626 LAAVS OF THE UNITED STATES State Sec. 7. And he it further enacted. That, where any State, vlndons,^"' before its adoption of the present form of government, shall deemed* '^^ have granted an exclusive right to any invention, the party^ void. claiming that right, shall not be capable of obtaining an exclusive right under this act, but on relinquishing his right under such particular State, and of such relinquishment, his obtaining an exclusive right under this act shall be sufficient evidence. How appii- Sec. 8. And be it further enacted. That the persons, cations de- . . „ ^ ■ c ■ pending whose applications for patents were, at the time ot passing merTaw^' this act, depending before the Secretary of State, Secretary shall be ^t War, and Attorney-general, according to the act, pas- prosecuted ^ , n i-. --IJA under this sed the second session of the first Congress, intituled " An "^! " Act to promote the progress of useful arts," on complying with the conditions of this act, and paying the fees herein required, may pursue their respective claims to a patent under the same. Proceed- Sec. 9. And he it further enacted, That, in case of in- Imfonia- terfering applications, the same shall be submitted to the terfering arbitration of three persons, one of whom shall be chosen applica- tions, by each of the applicants, and the third person shall be ap- pointed by the Secretary of State ; and the decision or award of such arbitrators, delivered to the Secretary of State in writing, and subscribed by them or any two of them, shall be final, as far as i-espects the granting of the patent : And if either of the applicants shall refuse or fail to choose an arbitrator, the patent shall issue to the opposite party. And where there shall be more than two interfering applications, and the parties applying shall not all unite in appointing three arbitrators, it shall be in the power of the Secretary of State to appoint three arbitrators for the pur- pose. And Sec 10. And he it further enacted. That, upon oath or against per- j^^j.^jjiIqpj being made before the judge of the district sons siu"- S3 JO reptitiously court, wherc the patentee, his executors, administrators, or obtaining . • i i i ■ i i n i • i ■ patents. assigns reside, that any patent, which shall be issued in pur- suance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said court, within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the judge of the said district RELATING TO PATENTS, ETC. 627 court, if the matter alleged shall appear to him to be sufR- cient, to grant a rule, that the patentee, or his executor, ad- ministrator, or assign, show cause why process should not issue against him, to repeal such patent. And if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order process to be issued against such patentee, or his executors, administrators, or assigns, with costs of suit. And in case no sufficient cause shall be shown to the contrary, oc if itKcpealofa , . i)ateiit ille- shall appear that the patentee was not the true inventor or gaily ob- discoverer, judgment shall be rendered by such court for^^'"<^^^- the repeal of such patent ; and if the party, at whose com- plaint the process issued, shall have judgment given against him, he shall pay all such costs as the defendant shall be put to in defending the suit, to be taxed by the court, and recovered in due course of law. Sec 11. Ajid be it further enacted, That every inventor, inventor, before he presents his invention to the Secretary of State, ^p,^°|',^„'^pg". signifying his desire of obtaining a patent, shall pay '"^o tiHoiMo_^^ the treasury thirty dollars, for which he shall take duplicate to the trea- receipts ; one of which receipts he shall deliver to the Sec- "'^" retary of State, when he presents his peVition ; and the money thus paid shall be in full for the sundry services to be performed in the office of the Secretary of State, conse- quent on such petition, and shall pass to the account of clerk-hire in that office. Prodded, nevertheless, That, for Copying every copy, which may be required at the said office, of any paper respecting any patent that has been granted, the person obtaining such copy shall pay, at the rate of twenty cents for every copy-sheet of one hundred words, and for every copy of a drawing, the party obtaining the same shall pay two dollars; of which payments an account shall be rendered, annually, to the treasury of the United States, and they shall also pass to the account of clerk-hire in the office of the Secretary of State. Sec. 12. And he it further enacted. That the act, passed ^p^no the tenth day of April, in the year one thousand seven hun- 1790, ch. 7, rGPCJilccl. dred and ninety, entitled " An Act to promote the progress . of useful arts," be, and the same is hereby repealed. Pro- vided always, That nothing contained in this act shall be (328 LAWS OF THE UXITED STATES construed to invalidate any patent that may have been granted under the authority of the said act ; and all pa- tentees under the said act, their executors, administrators, and assigns, shall be considered within the purview of this act, in respect to the violation of their rights ; provided, such violations shall be committed after the passing of this Axiproved Fehruary 21, 1793. CHAP. L VIII. — Ax Act supplementary to the act, intituled "An (Obsolete.) -A.ct to promote the progress of useful arts."' Suits &c., Be it enacted hj the Senate and House of Representatives had iindev ^f ^/^g United States of America, in Congress assembled, certahi act -^ _ •' . j- i ^ r revived. That all suits, actions, process and proceedmgs, heretofore had in any district court of the United States, under an act passed the tenth day of April, in the year one thousand . ^^ , seven hundred and ninety, intitled " An Act to promote the Act of Feb. ,, , • , I 1 . • 1 21, 1793, progress of useful arts," which may have been set aside, Act^of suspended, or abated, by reason of the repeal of the said act, April 10, ^ may be restored, at the instance of the plaintifTor defendant, 1790, ci. I. ^^^j^j^j^^ ^^^g yg^j, ^j.Qj^ jjj^^ j^^-jgj. ^i^g passing of this act, in the said courts, to the same situation, in which they may have been when they were so set aside, suspended, or aba- ted ; and that the parties to the said suits, actions, process, or proceedings, be, and are hereby intitled to proceed in such cases, as if no such repeal of the act aforesaid had In ^vhat taken place. Provided always, That before any order or manner. proceeding, other than that for continuing the same suits, after the reinstating thereof, shall be entered or had, the defendant or plaintiff, as the case may be, against whom the same may have been reinstated, shall be brought into court by summons, attachment, or such other proceeding as is used in other cases for compelling the appearance of a party. Approved June 7, 1794. RELATING TO PATENTS, ETC. 629 CHAP. XXY. — Ax Act to extend the privilege of obtaining pa- tents for useful discoveries and inventions, to certain persons there- (Repealed) in mentioned, and to enlarge and define the penalties for violating the rights of patentees. Section 1. Be it enacted hy the Senate and House o/" Aliens hav Ttepresentatires of the United Slates of America, in Congress^^lfjy^^y^ assembled. That all and slnG;uIar the richts and privileges ^\;itl;'n the ... . ° I . states, given, intended, or provided to citizens of the United States, entitled to „ ■ ... . , . the benefit respecting patents lor new inventions, discoveries, and im- oftiio form provements, by the act intituled " An Act to promote the ^''' "'^^• _ ' „ , , , , , p Act of Feb. progress of useful arts, and to repeal tlie act heretofore 21, 1793, made for that purpose," shall be, and hereby are extended ^^'' ^^" and given to all aliens, who, at the time of petitioning in the manner prescribed by the said act, shall have resided for two years within the United States, which privileges shall be obtained, used and enjoyed, by such persons, in as full and ample manner, and under the same conditions, limita- tions and restrictions as by the said act is provided and directed in the case of citizens of the United States. Fro- Oath to be . , , , rr.1 . . . „ taken bv vtded always, 1 hat every person petitioning for a patent such ros'i- for anv invention, art, or discoverv, pursuant to this act, '1^"^ "^^ - ' ' . ' I ' tlie inven- shall make oath or afllrmation, before some person duly t'on or dis- , 1 • • 1 , /• 1 1 ■• , covcryhath authorized to administer oaths, belore such patent shall be not i)een granted, that such invention, art, or discovery hath not, to '^^'^ * the best of his or her knowledge or belief, been known or used, either in this or any foreign country, and that every patent which shall be obtained pursuant to this act, for any invention, art, or discovery which it shall afterwards appear had been known or used previous to such application for a patent, shall be utterly void. Sec. 2. And he it further enacted, That, where any per- The le^al son hath made, or shall have made, any new invention, [f^^gg^Q^c"^^' discoverv, or improvement, on account of which a patent ^lecea.sed . inventor might, by virtue of this or the above-mentioned Act, be may obtain granted to such person, and shall die before any patent shall ^ P'^ *^" • be granted therefor, the right of applying for and obtaining such patent shall devolve on the legal representatives of such person, in trust for the heirs at law of the deceased, in case he shall have died intestate ; but if otherwise, then in 630 LAWS OF THE UNITED STATES trust for his devisees, in as full and ample manner, and under the same conditions, limitations and restrictions as the same was held, or might have been claimed or enjoyed, by such person, in his or her lifetime ; and when applica- tion for a patent shall be made by such legal representa- tives, the oath or affirmation, provided in the third section of the before-mentioned act, shall be so varied as to be applicable to them. Damages Sec. 3. And he it further enacted. That, where any ofVatent- patent shall be, or shall have been granted, pursuant to riglit. thjg or the above-mentioned act, and any person, without the consent of the patentee, his or her executors, admi- nistrators or assigns, first obtained in writing, shall make, devise, use, or sell the thing whereof the exclusive right is secured to the said patentee by such patent, such person, so offending, shall forfeit and pay to the said patentee, his executors, administrators, or assigns, a sum equal to three times the actual damage sustained by such patentee, his executors, administrators, or assigns, from, or by reason of To be reco- such offence, which sum shall and may be recovered, by vered by . . . action on action on the case, founded on this and the above-mentioned the Circuit" ^^^' ^" ^^^ Circuit Court of the United States having juris- Court. diction thereof Repeal of Sec. 4. And he it further enacted, That the fifth section part of the , former act. of the above-mentioned act, intituled, " An Act to promote ^\^vin'^^' ^'^^ progress of useful arts, and to repeal the act heretofore eh'. 11. ' made for that purpose," shall be and hereby is repealed. Approved April 17, 1800. CHAP. XIX. — An Act to extend the jurisdiction of the Circuit The Circuit Courts of the United States to cases arising under the law rclatins Courts to ,^ r.nt«^fo have origin- ^0 patents, al cogni- sance in Be it enacted hy the Senate and Hoiise of Representatives at law, in of the United States of America, in Congress assemhhd, controver- That the Circuit Courts of the United States shall have ori- specting ginal cognizance, as well in equity as at law, of all actions, the right to . . ^ "^ ' inventions suits, controversies and cases, arising under any law of the k?gs.^^^ " United States, granting or confirming to authors or inven- RELATING TO PATENTS, ETC. 631 tors the exclusive rijiht to their respective \vritin2;s, inven- Act of Feb. . . . . 21 1793 tions, and discoveries ; and, upon any bill in equity, filed by ch! ii. ' any party accrieved in any such cases, shall have authority Act of May •^ '^ •. . "^"^ . ,. , , . . , 31,1790, to grant injunctions, according to the course and principles ch. 15. of courts of equity, to prevent the violation of the rights of any authors or inventors, secured to them by any laws of the United States, on such terms and conditions as the said Courts may deem fit and reasonable : Provided, however, Pro^-iso. That from all judgments and decrees of any Circuit Courts, rendered in the premises, a writ of error or appeal, as the case may require, shall lie to the Supreme Court of the United States, in the same manner, and under the same circumstances, as is now provided by law in other judg- ments and decrees of such Circuit Courts. Approved February 15, 1819. CHAP. CLXII. — An Act concerning patents for useful inventions. Be it enacted by the Senate and Hoiise of Representatives Act of July of the United States of America, in Congress assembled, ^.\^ 3--' That it shall be the duty of the Secretary of State, annually, in the month of January, to report to Congress, and to pub- lish in two of the newspapers printed in the city of Wash- ington, a list of all the patents for discoveries, inventions, List of ex- and improvements, which shall have expired within the year {p[,^!, (f|"|JQ immediately preceding, with the names of the patentees, ^"""""y alphabetically arranged. Congress. Sec. 2. And be it further enacted. That application to Form of Congress to prolong or renew the term of a patent, shall be "^ pro"o,',g'^ made before its expiration, and shall be notified at least once or renew 1 /. 1 1 1 r • • • patent. a month, for three months before Us presentation, in two newspapers printed in the city of Washington, and in one of the newspapers in which the laws of the United Stales shall be published, in the State or territory in which the pa- tentee shall reside. The petition shall set forth particularly the grounds of the application. It shall be verified by oath; the evidence in its support may be taken before any judge or justice of the peace ; it shall be accompanied by a state- ment of the ascertained value of the discovery, invention, or improvement, and of the receipts and expenditures of the patentee, so as to exhibit the profit or loss arising therefrom. 632 LAWS OF THE UNITED STATES Sec. 3. And be it further enacted. That, wherever any Patent to patent which has been heretofore, or shall be liereafter, be invalid granted to any inventor, in pursuance of the Act of Con- in case of b'"'"'- J ' ' inventor oress intituled "An Act to promote the progress of usclul coinplild" arts, and to repeal the act heretofore made for that pur- Sm='&c. pose," passed on the twenty- first day of February, in the 1793, ch. 11. year of our Lord one thousand seven hundred and ninety- three, or any of the acts supplementary thereto, shall be invalid or inoperative, by reason that any of the terms or conditions prescribed in the third section of the said first mentioned act, have not, by inadvertence, accident, or mis- take, and without any fraudulent or deceptive intention, been complied with on the part of the said inventor, it shall be Secretary lawful for the Secretary of State, upon the surrender to him of State, of such patent, to cause a new patent to be granted to the upon sur- i ' ' ■ i r i render, &c., said inventor, for the same invention, for tlie residue of the to £rrant a .,, ■ ■, r- i-ii --i ^ ^ new patent, period then unexpired, for which the original patent was granted, upon his compliance with the terms and conditions prescribed in the said third section of the said act. And, in In case of case of his death, or any assignment by him made of the ^i^4^t''to^'^ ' ^^'^^ patent, the like right shall vest in liis executors and vest, in ex- ^(ji^ifiistrators, or assicnee or assignees : Provided, hoicerer^ eCUtOrS, &C. "" i i n • n 1 Proviso. That such new patent, so granted, shall, in all respects, be liable to the same matters of objection and defence as any original patent, granted under the said first mentioned act. But no public use or privilege of the invention so patented, derived from or after the grant of the original patent, either under any special license of the inventor, or without the consent of the patentee that there shall be a free public use thereof, shall, in any manner, prejudice his right of recovery for any use or violation of his invention, after the grant of such new patent as aforesaid. Approved July 3, 1832. CHAP. CCm. — Ax Act concerning the issuing of patents to aliens, for useful discoveries and inventions. Be it enacted hy the Senate and House of Representatives of the United States of America, in Congress assembled. That the privileges granted to the aliens described in the RELATING TO PATENTS, ETC. 633 first section of the act, to extend the privilege of obtaining The privi- patents for useful discoveries and inventions to certain per- ed" to ^ens sons therein mentioned, and to enlarge and define the penal- extended. ties for violating the rights of patentees, approved April Act of seventeenth, eighteen hundred, be extended, in like manner, j^qq^^^^'os to every alien, who, at the time of petitioning for a patent, shall be resident in the United States, and shall have de- clared his intention, according to law, to become a citizen thereof: Provided, That every patent granted by virtue of Proviso, this act, and the privileges thereto appertaining, shall cease and determine, and become absolutely void, without resort to any legal process to annul and cancel the same, in case of a failure on the part of any patentee, for the space of one year from the issuing thereof, to introduce into public use, in the United States, the invention or improvement for which the patent shall be issued ; or in case the same, for any period of six months after such introduction, shall not con- tinue to be publicly used and applied in the United States, or in case of failure to become a citizen of the United States, agreeably to notice given at the earliest period within which he shall be entitled to become a citizen of the United States. Approved July 13, 183"2. CILVr. CCCLVII. — As Act to promote the progress of the useful arts, and to repeal all acts and parts of acts heretofore made for that purpose. Be it enacted hj the Senate and House of Representa- tives of the United States of America, in Congress assem- \i^z7 ch.' hied. That there shall be established and attached to the *^' Department of State an office to be denominated the Patent Office, the chief officer of which shall be called the Commissioner of Patents, to be appointed by the Commis- President, by and with the advice and consent of the Patents to Senate, whose duty it shall be, under the direction of the **! *PPP,'"^" ■' . ed. and his Secretary of State, to superintend, execute, and perform duties. all such acts and things, touching and respecting the 'iS42!^chr ' granting and issuing of patents for new and useful dis-"*"^" coveries, inventions, and improvements, as are herein provided for, or shall hereafter be, by law, directed to SO 634 LAWS OF THE UNITED STATES be done and performed, and shall have the charge and custody of all the books, records, papers, models, machines, and all other things belonging to said office. And said Commissioner shall receive the same compensation as is allowed by law to the Commissioner of the Indian Depart- ment, and shall be entitled to send and receive letters and packages by mail, relating to the business of the office, free of postage. Chief clerk. Sec. 2. And he it further enacted, That there shall be in said office an inferior officer, to be appointed by the said principal officer, with the approval of the Secretary of State, to receive an annual salary of seventeen hun- dred dollars, and to bo called the chief clerk of the Patent Office, who, in all cases during the necessary absence of the Commissioner, or when the said principal office shall become vacant, shall have the charge and custody of the seal, and of the records, books, papers, machines, models, and all other things, belonging to the said office, and shall perform the duties of Commissioner during such Examining vacancy. And the said Commissioner may also, with like other' approval, appoint an examining clerk, at an annual salary officers. Qf fifteen hundred dollars ; two other clerks, at twelve hundred dollars each, one of whom shall be a competent draughtsman ; one other clerk, at one thousand dollars ; a machinist, at twelve hundred and fifty dollars ; and a messenger, at seven hundred dollars. And said Commis- sioner, clerks, and every other person appointed and em- ployed in said office, shall be disqualified and interdicted from acquiring or taking, except by inheritance, during the period for which they shall hold their appointments, respectively, any right or interest, directly or indirectly, in any patent for an invention or discovery which has been, or may hereafter be, granted. Officers to Sec. 3. And he it further enacted. That the said prin- cipal officer, and every other person to be appointed in the said office, shall, before he enters upon the duties of his office or appointment, make oath or affirmation truly and faithfully to execute the trust committed to him. And the said Commissioner and the chief clerk shall also, before entering upon their duties, severally give bonds. make oath &c. RELATING TO PATENTS, ETC. 635 with sureties, to the Treasurer of the United States, the former in the sum of ten thousand dollars, and the latter in the sum of five thousand dollars, with condition to render a true and faithful account to h[m or his successor in ofiice, quarterly, of all moneys which shall be by them respectively received for duties on patents, and for copies of records and drawings, and all other moneys received by virtue of said oHice. Sec 4. And he it further enacted, That the said Com- A seal to missioner sliall cause a seal to be made and provided for<;j^' the said office, with such device as the President of the United States shall approve ; and copies of any records, books, papers, or drawings, belonging to tlie said office, under the signature of the said Commissioner, or, when the office shall be vacant, under the signature of tlie cliief clerk, with the said seal affixed, shall be compe- tent evidence, in all cases in which the original records, books, papers, or drawings, could be evidence. And any person making application therefor, may have certified copies of the records, drawings, and other papers depo- sited in said office, on paying, for the written copies, the sum of ten cents for every page of one hundred words ; and for copies of drawings, the reasonable expense of making the same. Sec 5. And he it further enacted, That all patents Tatonts to issued from said office shall be issued in the name of the iJy ti7(. yp. United States, and under the seal of said office, and l^e 'j^'^^^'^'^/'^^J^^ f-igned by the Secretary of State, and countersigned by i>y the the Commissioner of the said office, and shall be recorded, sioucr, together with the descriptions, specifications, and drawings, in the said office, in books to be kept for that purpose. Every such patent shall contain a short description or title of the invention or discovery, correctly indicating its nature and design, and, in its terms, grant to the applicant or appli- cants, his or their heirs, administrators, executors, or as- signs, for a term not e.fceeding fourteen years, the full and exclusive right and liberty of making, using, and vending to others to be used, the said invention or discovery, re- ferring to the specifications for the particulars thereof, a copy of which shall be annexed to the patent, speci- (536 LAWS OF THE UNITED STATES fying what the patentee clauTis as his invention or dis- covery. Applica- Sec. 6. And be it further enacted, That any person or mTde.^^"^ persons, having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer, and shall desire to obtain an exclusive property therein, may make application in writ- ing, to the Commissioner of Patents, expressing such desire, and the Commissioner, on due proceedings had, may grant Specifica- a patent therefor. But before any inventor shall receive a ^°^' patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it apper- tains, or with which it is most nearly connected, to make, construct, compound, and use the same ; and, in case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character by which it may be distin- guished from other inventions ; and shall particularly specify and point out the part, improvement, or combina- tion which he claims as his own invention or discovery. DraAvings, He shall, furthermore, accompany the whole with a draw- ing or drawings, and written references, where the nature of the case admits of drawings; or with specimens of in- gredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discoveiy is of a composition of matter ; which descrip- tions and drawings, signed by the inventor, and attested by two witnesses, shall be filed in the Patent Office; and he shall, moreover, furnish a model of his invention, in all Models. cases which admit of a representation by model, of a con- Oath or venient size to exhibit advantageously its several parts. The applicant shall also make oath, or affirmation, that he KELATING TO PATENTS, ETC. 637 does verily believe that he is the original and first inventor or discoverer of the art, machine, composition, or improve- ment, for which he solicits a patent ; and that he does not know or believe that the same was ever before known or used ; and also of what country he is a citizen ; which oath or affirmation may be made before any person author- ized by law to administer oaths. Sec. 7. And be it further enacted, That, on the filing of Examina- any such application, description, and specification, and the vention," o payment of the duty hereinafter provided, the Commissioner ''^ '"''^''^' • -^ •' ' ' and pro- shall make, or cause to be made, an e.xamination of the ceediiiRs alleged new invention or discovery ; and if, on any such should it examination, it shall not appear to the Commissioner that Jiee,„ej the same had been invented or discovered by any other per- "'-*^^'- son in this country, prior to the alleged invention or disco- very thereof by the applicant, or that it had been patented or described in any printed publication, in this or any foreign country, or had been in public use or on sale, with the ap- plicant's consent or allowance, prior to the application, if the Commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor. But whenever, on such examination, it shall appear to the Commissioner that the applicant was not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new had before been invented or dis- covered, or patented, or described in any printed publication, in this or any foreign country, as aforesaid, or that the description is defective and insufficient, he shall notify the applicant thereof, giving him briefly such information and reference as may be useful in judging of the propriety of renewing his application, or of altering his specification to embrace only that part of the invention or discovery which is new. In every such case, if the applicant shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to receive back twenty dollars, part of the duty required by this act, on filing a notice in writing of such election in the Patent Office • a copy of which, certified by the Commissioner, shall be a sufficient warrant to the treasurer for paying back to the said appli- cant the said sum of twenty dollars. But if the applicant, 638 LAV/S OF THE UNITED STATES in such case, shall persist in his claims for a patent, with or without any alteration of his specification, he shall be re- quired to make oath or affirmation anew, in manner as aforesaid ; and if the specification and claim shall not have been so modified as, in the opinion of the Commissioner, shall entitle the applicant to a patent, he may, on appeal, and upon request in writing, have the decision of a board of examiners, to be composed of three disinterested persons, who shall be appointed for that purpose by the Secretary of State, one of whom, at least, to be selected, if practicable and convenient, for his knowledge and skill in the particular art, manufacture, or branch of science to which the alleged | invention appertains ; who shall be under oath or affirma- tion for the faithful and impartial performance of the duty imposed upon tliem by said appointment. Said board shall be furnished with a certificate in writing of the opinion and decision of the Commissioner, stating tlic particular grounds of his objection, and the part or parts of the invention which he considers as not entitled to be patented. And the said board shall give reasonable notice to the applicant, as well as to the Commissioner, of the time and place of their meet- ing, that they may have an opportunity of furnishing them with such facts and evidence as they may deem neces- sary to a just decision ; and it shall be the duty of the Com- missioner to furnish to the board of examiners such in- formation as he may possess, relative to the matter under their consideration. And on an examination and consider- ation of the matter by such board, it shall be in their power, or of a majority of tliem, to reverse the decision of the Com- missioner, either in whole or in part ; and, their opinion being certified to the Commissioner, he shall be governed thereby in the further proceedings to be had on such appli- Pioviso. cation: Provided however, That, before a board shall be instituted in any such case, the applicant shall pay to the credit of the treasury, as provided in the ninth section of this act, the sum of twenty-five dollars; and each of said persons, so appointed, shall be entitled to receive, for his ser- vices, in each case, a sum not exceeding ten dollars, to be determined and paid by the Commissioner, out of any mo- neys in his hands, which shall be in full compensation to the RELATING TO PATENTS, ETC. C39 persons who may be so appointed, for their examination and certificate as aforesaid. Sec. 8. And be it further enacted., Tliat, whenever an Interfering application shall be made for a patent, which, in the opinion tioL?^' of the Commissioner, would interfere with any other patent for which an application may be pending, or with any un- expired patent which shall have been granted, it shall be the duty of the Commissioner to give notice thereof to such ap- plicants, or patentees, as the case may be ; and if either shall be dissatisfied with the decision of the Commissioner on the question of priority of right or invention, on a hearing thereof, he may appeal from such decision, on the like terms and conditions as are provided in the preceding section of this act, and the like proceedings shall be had to determine which, or whether either, of the applicants is entitled to re- ceive a patent as prayed for. But nothing in this act con- tained shall be construed to deprive an original and true in- ventor of the right to a patent for his invention, by reason of his having previously taken out letters-patent therefor in a foreign country, and the same having been published, at any time within six months next preceding the filing of his specification and drawings. And, whenever the applicant shall request it, the patent shall take date from the time of filing of the specifications and drawings, not, however, ex- ceeding six months prior to the actual issuing of the patent ; and, on like request, and the payment of the duty herein re- quired, by any applicant, his specification and drawings shall be filed in the secret archives of the office, until he shall furnish the model and the patent be issued, not exceedint^ the term of one year, the applicant being entitled to notice of interfering applications. Sec. 9. And be it further enacted, That, before any ap- Thirty dol- plication for a patent shall be considered by the Commis- paiVtVthe sioner as aforesaid, the applicant shall pay into the Treasury ^}'^^^}^ "' , ' ' -^ -^ the Lnitod of the United States, or into the Patent Oflfice, or into any States trea- of the deposit banks, to the credit of the treasury, if he be citizeu,"or, a citizen of the United States, or an alien, and shall have '^°' been resident in the United States for one year next pre- ceding, and shall have made oath of his intention to become a citizen thereof, the sum of thirty dollars ; if a subject of 640 LAWS OP THE UXITED STATES Five hand- the King of Great Britain, the sum of five hundred dollars; by a sub-'' and all other persons the sum of three hundred dollars; for "Mtain^nd w'l'c^ payment duplicate receipts shall be taken, one of three hund- ^hich to be filed in the office of the treasurer. And the red by oth- . , . , j i • in er persons, moneys received mto the treasury under this act shall con- stitute a fund for the payment of the salaries of the officers and clerks herein provided for, and all other expenses of the Patent Office, and to be called the patent fund. Inventors Sec. 10. And be it further enacted, That, where any per- without ^°" ^^^^^ made, or shall have made, any new invention, dis- takinga covery, or improvement, on account of which a patent their exe- might by virtue of this act be granted, and such person mav i'c ' shall die before any patent shall be granted therefor, the right of applying for and obtaining such patent shall de- volve on the executor or administrator of such person, in trust for the heirs at law of the deceased, in case he shall have died intestate ; but if otherwise, then in trust for his devisees, in as full and ample manner, and under the same conditions, limitations, and restrictions as the same was held, or might have been claimed or enjoyed by such person in his or her lifetime ; and when application for a patent shall be made by such legal representatives, the oath or affirma- tion provided in the sixth section of this act shall be so va- ried as to be applicable to them. Assign- Sec. 11. And he it farther enacted. That every patent patent, and ^hall be assignable in law, either as to the whole interest, thereof ^^ ^"^ undivided part thereof, by any instrument in writing ; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout any specified part or portion of the United States, shall be recorded in the Patent Office within three months from the execution thereof, for which the assignee or grantee shall pay to the Commissioner the sum of three dollars. Caveat Sec. 12. And he it further enacted. That any citizen of tere^. ° ^"' the United States, or alien, who shall have been a resident of the United States one year next preceding, and shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improve- RELATING TO PATENTS, ETC. 641 ment thereof, and shall desire further time to mature the same, may, on paying to the credit of the treasury, in man- ner as provided in the ninth section of this act, the sum of twenty dollars, file in the Patent Office a caveat, setting forth the design and purpose thereof, and its principal and dis- tinguishing characteristics, and praying protection of his right, till he shall have matured his invention ; which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein men- tioned, shall he considered a part of tlie sum herein re- quired for the same. And such caveat shall be filed in tlie confidential archives of the ofi'ice, and preserved in secresy. And if application shall be made by any other person, with- in one year from the time of filing such caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the Commissioner to deposit the de- scription, specifications, drawings and model, in the con- fidential archives of the oflicc, and to give notice (by mail) to the person filing the caveat of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specification, drawings and model ; and if, in the opinion of the Commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are in this act provided in the case of interfering applica- tions. Provided, howercr. That no opinion or decision of Proviso, any board of examiners, under the provisions of this act, shall preclude any person interested in favor of or against the validity of any patent which has been or may hereafter be granted, from the right to contest the same in any judi- cial court, in any action in which its validity may come in question. Sec 13. And be it further enacted. That, whenever any Patent? in- patent, which has heretofore been granted, or which shall jjjfj.pj;^'^"™ hereafter be granted, shall be inoperative or invalid, by rea- spedfica- ,^. .„. , .. -c ■ t'ons may- son of a defective or msuiFicient description or specification, lie sunen- or by reason of the patentee claiming in his specification, as|,g^^ '^^ his own invention, more than he had or shall have a right to J^".'^ '""-Y . . be issued in claim as new, if the error has or shall have arisen by inad- certain vertency, accident, or mistake, and without any fraudulent 81 642 LAWS OF THE UNITED STATES or deceptive intention, it shall be lawful for the Commis- sioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention, for the residue of the period then unexpired, for which the original patent was granted, in accordance with the patentee's corrected description and specification. And in case of his death, or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assignees. And the patent so reissued, together with the corrected description and specifications, shall have the same cfTect and operation in law, on the trial of all actions hereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the issuing of the original pa- Patontee tent. And whenever the original patentee shall be desirous mav make „,,. ,, •• i • n • r • additions to of addmg the description and specification ot any new im- his patent, pj-pygrngnt of the original invention or discover}', which shall have been invented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars, as hereinbefore provided, have the same annexed to the original description and specifica- tion ; and the Commissioner shall certify, on the margin of such annexed description and specification, the time of its being annexed and recorded ; and the same shall thereafter have the same effect in law, to all intents and purposes, as though it had been embraced in the original description and specification. Courts may Sec. 14. And he it further enacted, That whenever, in judgment ^"Y action for damages [for] making, using, or selling the for a sum thing whereof the exclusive right is secured by any patent not exceed- ° ° ■ / p ing three heretofore granted, or by any patent which may hereafter amount of be granted, a verdict shall be rendered for the plaintiff in damai-es ^"^^^ action, it shall be in the power of the Court to render judgment of any sum above the amount found by such ver- dict as the actual damages sustained by the plaintiff, not exceeding three times the amount thereof, according to the circumstances of the case, with costs ; and such damages may be recovered by action on the case, in any court of RELATINli TO PATENTS, ETC. 643 competent jurisdiction, to be brought in the name or names of the person or pereons interested, whether as patentee, assignees, or as grantees of the exclusive right uithin and throughout a specified part of the United States. Sec. 15. And be it further enacted^ That the defendant Dcfeudrtnt 1111 -1 1 J I I '"'^^' pi'^'Kl in any such action shall be permitted to plead the general the scnerul issue, and to give this act and any special matter in evi- '**"*^''^'^- dence, of which ;ioticc in writing may have been given to the plaintilfor his attorney, thirty days before trial, tending to prove that tlie description and specification filed by the plaintiff, does not contain the whole truth relative to his in- vention or discovery, or that it contains more than is ncces- / sary to produce the described eflcct, which concealment or addition shall fully appear to have been made for the pur- pose of deceiving the public ; or that the patentee was not y the original and first inventor or discoverer of the thing pa- / tented, or of a substantial and material part thereof claimed as new ; or that it had been described in some public work, anterior to the supposed discovery thereof by the patentee, or had been in public use, or on sale, with the consent and , - ^ allowance of the patentee, before his application for a patent ; or that he had surreptitiously or unjustly obtained the patent for that which was, in fact, invented or discovered by ano- ther, wiio was using reasonable diligence in adapting and perfecting the same; or that the patentee, if an alien at the time the patent was granted, had failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, the invention or discovery for which the patent issued ; and whenever the defendant relies in his defence on the fact/of a previous invention, knowledge, or use of the thing patented, he shall state, in his notice of special matter, tho' 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 ; in either of which cases, A- judgment shall be rendered for the defendant, with costs : Provided, hoicerer. That, whenever it shall satisfactorily Proviso. appear that the patentee, at the time of making his applica- tion for the patent, believed himself to be the first inventor or discoverer of the thing patented, the same shall not be 644 LAWS OF THE UNITED STATES void on account of the invention or discovery, or any part thereof, having been before known or used in any foreign country ; it not appearing that the same, or any substantial part thereof, had before been patented or described in any Proviso. printed publication ; And provided, also, That, whenever the plaintiff shall fail to sustain his action, on the ground that in his specification or claim is embraced more than that of which he was the first inventor, if it shall appear that the defendant had used or violated any part of the invention justly and truly specified and claimed as new, it shall be in the power of the Court to adjudge and award, as to costs, as may appear to be just and equitable. Interfering Sec. 16. And he it further enacted, That, whenever there patents, ... &c. shall be two interfering patents, or whenever a patent or application shall have been refused on an adverse decision of a board of examiners, on the ground that the patent applied for would interfere with an unexpired patent pre- viously granted, any person interested in any such patent, either by assignment or otherwise, in the one case, and any such applicant, in the other case, may have remedy by bill in equity; and the Court having cognizance thereof, on notice to adverse parties, and other due proceedings had, may adjudge and declare either the patents void in the whole or in part, or inoperative and invalid in any particular part or portion of the United States, according to the interest which the parties to such suit may possess in the patent or the in. ventions patented, and may also adjudge that such applicant is entitled, according to the principles and provisions of tins act, to have and receive a patent for his invention, as speci- fied in his claim, or for any part thereof, as the fact of pri- ority of right or invention shall, in any such case, be made to appear. And such adjudication, if it be in favor of the right of such applicant, shall authorize the Commissioner to issue such patent, on his filing a copy of the adjudication, and otherwise complying with the requisitions of this act : Proviso. Provided, however, that no such judgment or adjudication shall affect the rights of any person, except the parties to the action, and those deriving title from or under them sub- sequent to the rendition of such judgment. Sec 17. And be it further enacted, That all actions, RELATING TO PATENTS, ETC. 645 suits, controversies and cases, arising under any law of the Actions United States, granting or confirming to inventors tiie exclu- ji^'^Oj^^cuit sive right to their inventions or discoveries, shall be orijiin- fi^^",'',^® "^ ° . ' o the U. b., ally cognizable, as well in equity as at law, by the Circuit &c. Courts of the United Slates, or any District Court having the powers and jurisdiction of a Circuit Court; which Courts shall have power, upon a bill in equity filed by any party aggrieved, in any such case, to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor, as secured to him by any law of the United States, on such terms and condi- tions as said courts may deem reasonable : Provided, how- Proviso. ever. That from all judgments and decrees from any such court rendered in the premises, a writ of error or appeal, as the case may require, shall lie to the Supreme Court of the United States, in the same manner and under the same circumstances as is now provided by law in other judg- ments and decrees of Circuit Courts, and in all other cases in which the Court shall deem it reasonable to allow the same. Sec 18. And he it further enacted. That, whenever any Patents patentee of an invention or discovery shall desire an e.\ten- |^||;^Ip/i^ ''^" sion of his patent beyond the term of its limitation, he may •''^•^■^" jc"" . 1 ' p • • • , '" fcrtiiin make application therefor, in writing, to tlic Commissioner cases. of the Patent Office, setting forth the grounds thereof ; and the Commissioner shall, on the applicant's paying the sum of forty dollars to the credit of the treasury, as in the case of an original application fur a patent, cause to be published in one or more of the principal newspapers in the city of Washington, and in such other paper or papers as he may deem proper, published in the section of country most in- terested adversely to the extension of the patent, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the extension should not be granted. And the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury, shall constitute a board to hear and decide upon the evidence produced before them, both for and against the extension, and shall sit, for that purpose, at the time and place designated in the pub- 646 LAWS OF THE UNITED STATES lished notice thereof. The patentee shall furnish to said board a statement in writing, under oath, of the ascertained value of the invention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of loss and profit in any manner accruing to him from and by reason of said invention. And if, upon a hearing of the matter, it shall appear to the full and entire satisfaction of said board, having due regard to the public interest therein, that it is just and proper that the term of the patent should be extended, by reason of the patentee, without neglect or fault on his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and e .pcnse bestowed upon the same, and the introduction thereof into use, it shall be the duty of the Commissioner to renew and extend the patent, by making a certificate thereon of such extension, for the term of seven years from and after tlie expiration of the first term ; which certificate, with a certificate of said board of their judgment and opinion as aforesaid, shall be entered on record in the Patent Office ; and thereupon the said patent shall have the same efiect in law as though it had been originally granted for the term of twenty-one years ; and the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented, to the extent of their respective Proviso. interests therein : Provided^ however, That no extension of a patent shall be granted after the expiration of the term for which it was originally issued. Library of Sec. 19. And be it fui't/ier e7iacted , That there shall be Office. provided, for the use of the said office, a library of scientific works and periodical publications, both foreign and Ameri- can, calculated to facilitate the discharge of the duties hereby required of the chief officers therein, to be pur- chased under the direction of the Committee of the Library of Congress. And the sum of fifteen hundred dollars is hereby appropriated for that purpose, to be paid out of the Patent Fund. Models to Sec. 20. And be it further enacted, That it shall be the fied aM^" ^"^y °^ ^^^^ Commissioner to cause to be classified and arranged, arranged, in such rooms or galleries as may be provided for that purpose, in suitable cases, when necessary for their RELATING TO PATENTS, ETC. 647 preservation, and in such manner as shall be conducive to a beneficial and favorable display thereof, the models and specimens of compositions and of fabrics, and other manu- factures and works of art, patented or unpatented, which have been, or shall hereafter be deposited in said office. And said rooms or galleries shall be kept open during suit- able hours, for public inspection. Sec 21. And be it further enacted,That all acts and Foi-mer parts of acts heretofore passed on this subject be, and the pealed. same are hereby repealed : Provided, however, That all Proviso. actions and processes in law or equity, sued out prior to the passage of this act, may be prosecuted to final judgment and execution, in the same manner as though this act had not been passed, excepting and saving the application to any such action of the provisions of the fourteenth and fifteenth sections of this act, so far as they may be applica- ble thereto : And provided, also. That all applications for Proviso. petitions for patents, pending at the time of the passage of this act, in cases where the duty has been paid, shall be proceeded with and acted on in the same manner as though filed after the passage thereof JAMES K. POLK, Speaker of the House of Representatives. W. R. KING, President of the Senate, pro tempore. Approved July 4, 1836. ANDREW JACKSON. CHAP. XLV. — An Act in addition to the act to promote the pro- gress of science and useful art.s. Be it enacted by the Senate and House of Representatives issued and of the United States of America, in Consress assembled, "^s'?"- •^ Jib 5 inetits exe- That any person who may be in possession of, or in any cuted and . . recorded way mierested in, any patent for an invention, discovery, prior to or improvement, issued prior to the fifteenth day of Decern- cemYer " ber, in the year of our Lord one thousand eight hundred i*'-'^^' "^^Y he recorded and thirty-six, or m an assignment of any patent, or interest anew, &c. 648 LAWS OF THE UNITED STATES therein, executed and recorded prior to the said fifteenth day of December, may, without charge, on presentation or transmission thereof to the Commissioner of Patents, have the same recorded anew in the Patent Office, together with the descriptions, specifications of claim, and drawings annexed or belonging to the same ; and it shall be the duty of the Commissioner to cause the same, or any authenticated copy of the original record, specification, or drawing, which he may obtain, to be transcribed and copied into books of record, to be kept for that purpose ; and, wherever a drawing was not originally annexed to the patent, and referred to in the speciilcation, any drawing produced as a delineation of the inxention, being verified by oath in such manner as the Commissioner shall require, may be trans- mitted and placed on file, or copied as aforesaid, together with certificate of the oath ; or such drawings may be made in the office, under the direction of the Commis- Measures sioner, in conformity with the specification. And it shall to obtain be the duty of the Commissioner to take such measures as patents, j^j^y jjg advised and determined bv the Board of Commis- &c., to be •' - _ recorded, sioners, provided for in the fourth section of this act, to obtain the patents, specifications, and copies aforesaid, for Clerics of the purpose of being so transcribed and recorded. And it the judicial g[-,jjH ]^^ ^j^^ ^^^^ ^f ^^^^^ ^^ j]^p several clerks of the iudi- conrts 01 •' •• U. States to cial courts of the United States to transmit, as soon as may transmit , /-, • • /> i t-» ^m statements be, to the Commissioner of the Patent Oince, a statement of cafe^'co-^^"^^' the authenticated copies of patents, descriptions, specifi- piesofpa- cations and drawings of inventions and discoveries, made tents, &c., ° prior to and executed prior to the aforesaid fifteenth day of Decem- cember" ^^^f which may be found on tlie files of his office ; and also 1836, &c. ^Q make out and transmit to said Commissioner, for record as aforesaid, a certified copy of every such patent, descrip- tion, specification, or drawing, which shall be specially required by said Commissioner. Certified ^^c 2. Aiid he it further enacted^ That copies of such copies of record and drawings, certified by the Commissioner, or, in such re- . . . cord, &c., his absence, by the chief clerk, shall be prima facie evi- dence in dence of the particulars of the invention, and of the patent ciiiT court gi'^'''tcd therefor, in any Judicial Court of the United States, ofU. S. &c. in all cases where copies of the original record or specifica- RELATING TO PATENTS, ETC. 649 tion and drawings would be evidence, without proof of the loss of such originals ; and no patent issued prior to the No pntcnt, aforesaid fifteenth day of December shall, after the first ^^^c]' prior day of June next, be received in evidence, in any of the said {^^p/^^g"'"" courts, in behalf of the patentee, or other person who shall 1836, to Jie • • ' • /.I I • 1 11 1 L received in be in possession of the same, unless it shall have been so evidence in recorded anew, and a drawing of the invention, if separate ^f('gj.*^jgj '' from the patent, verified as aforesaid, deposited in the -'"n*^ "^^^ ' • /• n!ik'?i« re- Patent Office ; nor shall any written assignment of any corded such patent, executed and recorded prior to the said fif- teenth day of December, b6 received in evidence in any of the said courts, in behalf of the assignee, or other person in possession thereof, until it shall have been so recorded anew. Sec 3. And be it further enacted, That, whenever it \ew pa- shall appear to the Commissioner that any patent was Isglicd'for*' destroyed by the burning of the Patent Office building, on '•'f"'° ^o"* or ° ° . destroyed the aforesaid fifteenth day of December, or was otherwise onoriieiore lost prior thereto, it shall be his duty, on application there- i5*^'i836?'^ for by the patentee, or other person interested therein, to issue a new patent for the same invention or discovery, bearing the date of the original patent, with his certificate thereon, that it was made and issued pursuant to the provi- sions of the third section of this act, and shall enter the same of record : Provided, hoicever. That, before such proviso. patent shall be issued, the applicant therefor shall deposit in the Patent Office a duplicate, as near as may be, of the original model, drawings, and descriptions, with specifica- tions of the invention or discovery, verified by oath, as shall be required by the Commissioner ; and such patent and copies of such drawings and descriptions, duly certified, shall be admissible as evidence in any Judicial Court of the United States, and shall protect the rights of the patentee, his administrators, heirs, and assigns, to the extent only in which they would have been protected by the original patent and specification. Sec 4. And he it further enacted. That it shall be the nnplicate* duty of the Commissioner to procure a duplicate of such oi^^ certain •' '^ ' . models to the models destroyed by fire on the aforesaid fifteenth day be pro- of December, as were most valuable and interesting, and 82 650 LAWS OF THE UNITED STATES whose preservation would be important to the public ; and such as would be necessary to facilitate the just discharge of the duties imposed by law on the Commissioner in issu- ing patents, and to protect the rights of the public and of Proviso. patentees in patented inventions and improvements : Pro- vided, That a duplicate of such models may be obtained at Further a reasonable expense : And provided, also, That the whole proviso. j^j^Q^jjj^ Qf expenditure for this purpose shall not exceed the A tempo- sum of one hundred thousand dollars. And there shall be ofwmmil ^ temporary board of Commissioners, to be composed of the sioners to Commissioner of the Patent Office and two other persons be appoint- . , t-. • i > i • i n i_ ed; their to be appointed by the President, whose duty it shall be to duties. consider and determii.e upon the best and most judicious mode of obtaining models of suitable construction ; and, also, to consider and determine what models may be pro- cured in pursuance of, and in accordance with, the provi- sions and limitations in this section contained. And said Commissioners may make and establish all such regulations, terms, and conditions, not inconsistent with law, as in their opinion may be proper and necessary to carry the provi- sions of this section into effect, according to its true intent. Patents re- Sec. 5. And be it further enacted. That, whenever a correction, patent shall be returned for correction and reissue, under Se'i^th^'^ the thirteenth section of the act to which this is additional, section of and the patentee shall desire several patents to be issued for the act to . ' ■which this distmct and separate parts of the thing patented, he shall tlonal'&c. fi^^^ P^y» i"^ manner and in addition to the sum provided by Act of 1836, that act, the sum of thirty dollars for each additional patent Proviso. so to be issued : Provided, however. That no patent made prior to the aforesaid fifteenth day of December, shall be corrected and reissued, until a duplicate of the model and drawing of the thing, as originally invented, verified by oath as shall be required by the Commissioner, shall be depo- &c.! to be" sited in the Patent Office. Nor shall any addition of an made to improvement be made to any patent heretofore granted, nor any patent . ' . ° . heretofore any new patent be issued for an improvement made in any &.C., until a machine, manufacture, or process, to the original inventor, ^h^^t^*^ ^^ assignee, or possessor of a patent therefor, nor any dis- del, &c.,is claimer be admitted to record, until a duplicate model and deposited, , . „, ,. ..... , n ^ r Sic. drawing ot the thing originally invented, verified as afore- RELATING TO PATENTS, ETC. 651 said, shall have been deposited in the Patent Office, if the Commissioner shall require the same ; nor shall any patent be granted for an invention, improvement, or discovery, the model or drawing of which shall have been lost, until ano- ther model and drawing, if required by the Commissioner, shall, in like manner, be deposited in the Patent Office. And in all such cases, as well as in those which may arise Compcnsa- under the third section of this act, the question of compen- models, &c sation for such models and drawing, shall be subject to the judgment and decision of the Commissioners provided for in the fourth section, under the same limitations and restric- tions as are therein prescribed. Sec 6. And he it further enacted, That any patent here- Patents ■' 11- hereafter to after to be issued, may be made and issued to the assignee be issued. or assignees of the inventor or discoverer, the assignment thereof being first entered of record, and the application therefor being duly made, and the specification duly sworn to by the inventor. And in all cases hereafter, the appli- cant for a patent shall be held to furnish duplicate drawings, whenever the case admits of drawings, one of which to be deposited in the office, and the other to be annexed to the patent, and considered a part of the specification. Sec 7. And he it further enacted, That, whenever any Whenever patentee shall have, through inadvertence, accident, or mis- ^eYs^ail, take, made his specification of claim too broad, claiming ^^'^^^^fj^cc' more than that of which he was the original or first inven- &c., make . , , , . , /• 1 1 • 1 1"* specifi- tor, some material and substantial part of the thing patented cation too being truly and justly his own, any such patentee, his admi- j^^™^^^*'"' nistrators, executors, and assigns, whether of the whole or of may make ,.1 disclaimer. a sectional interest therein, may make disclaimer of such &c. parts of the thing patented as the disclaimant shall not claim to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent ; which disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office, on payment by the person disclaiming, in manner as other patent duties are required by law to be paid, of the sum of ten dollars. And such disclaimer shall thereafter be taken and considered as part of the original specification, to the extent of the interest which shall be possessed in the patent or right secured 652 LAWS OF THE UNITED STATES Applica- tions for additions to newly discovered improve- ments to be made to ex- isting pa- tents, (fcc. When, by mistake, &c., any patentee claims to be the ori- ginal inven- tor of part of the thing patented, of which he ■was not, &;c. Proviso. thereby, by the disclaimant, and by those claiming by or under him, subsequent to the record thereof. But no sucli disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing the same. Sec. 8. And be it further enacted, That, whenever appli- cation shall be made to the Commissioner for any addition of a newly discovered improvement to be made to an exist- ing patent, or whenever a patent shall be returned for cor- rection and reissue, the specification of claim annexed to every such patent shall be subject to revision and restric- tion, m the same manner as are original applications for patents ; the Commissioner shall not add any such improve- ment to the patent in the one case, nor grant the reissue in the other case, until the applicant shall have entered a disclaimer, or altered his specification of claim, in accord- ance with the decision of the Commissioner ; and in all such cases, the applicant, if dissatisfied with such decision, shall have the same remedy, and be entitled to the benefit of the same privileges and proceedings, as are provided by law in the' case of original applications for patents. Sec 9. And be it further enacted, (any thing in the fifteenth section of the act, to which this is additional, to the contrary notwithstanding,) That whenever, by mistake, accident, or inadvertence, and without any wilful default or intent to defraud or mislfead the public, any patentee shall have, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor, and shall have no legal or just right to claim the same, in every such case the patent shall be deemed good and valid for so much of the invention or discovery as shall be truly and bond fide his own :> Provided, It shall be a material and substantial part of the thing patented, and be definitively distinguishable from the other parts so claimed without right as aforesaid. And every such patentee, his executors, administrators, and assigns, whether of a whole or of a sectional interest therein, shall be entitled to main- tain a suit at law or in equity, on such patent, for any in- fringement of such part of the invention or discovery as RELATING TO PATENTS, ETC. 653 shall be bond fide his own, as aforesaid, notwithstanding the specification may embrace more tlian he shall have a legal right to claim. But in every such case, in which a judg- ment or verdict shall be rendered for the plaintiff, he shall not be entitled to recover costs against the defendant, unless he shall have entered at the Patent Office, prior to the com- mencement of the suit, a disclaimer to all that part of the thing patented which was so claimed without right : Pro- vided, however, That no person bringing any such suit shall Furtiicr be entitled to the benefits of the provisions contained in this I"""^'"'^- section, who shall have unreasonably neglected or delayed enter at the Patent Office a disclaimer, as aforesaid. Sec. 10. And he it furl her enacted. That the Commissioner Acont* to is hereby authorized and empowered to appoint agents in ''*: "Pl^'nt- not exceeding twenty of the principal cities or towns in the etivc lui.i United States, as may best accommodate the different sec- Hiodcls &c. tions of the country, for the purpose of receiving and for- warding to the Patent Office all such models, specimens of ingredients and manufactures, as shall be intended to be patented or deposited therein, the transportation of the same to be chargeable to the patent fund. Sec U. And he it further enacted. That, instead of one iwocx- e.xamining clerk, as provided by the second section of the ""yj|"R act to which this is additional, there shall be appointed, in copyinfj . . .', , , . , clerk to bo manner tnerem provided, two examining clerks, each to appointed. receive an annual salary of fifteen hundred dollars, and, also, an additional copying clerk, at an annual salary of eight hundred dollars. And the Commissioner is also authorized to employ, from time to time, as many temporary clerks as TcmiKjrnrv may be necessary to execute the copying and draughting 1^^'"''* ^1^"?' required by the first section of this act, and to examine and ed compare the records with the originals, who shall receive not exceeding seven cents for every page of one hundred words, and for drawings and comparison of records with originals, such reasonable compensation as shall be agreed upon or prescribed by the Commissioner. Sec 12. And be it further enacted, That, whenqver the Cprtificatc application of any foreigner for a patent shall be rejected missioner and withdrawn, for want of novelty in the invention, pursu- ^^i^^ ^gj!" ant to the seventh section of the act to which this is addi- 11?"^ '° ^l'" 1 reasurer. 654 LAWS OF THE UNITED STATES tional, the certificate thereof of the Commissioner shall be a sufficient warrant to the Treasurer to pay back to such applicant two thirds of the duty he shall have paid into the Treasury on account of such application. Affirmaj;ion Sec. 13. And he it further enacted^ That, in all cases in ™b'stituted which an oath is required by this act, or by the act to which for an oath, ^j^jg j^ additional, if the person of whom it is required shall be conscientiously scrupulous of taking an oath, affirmation may be substituted therefor. Moneys Sec. 14. And he it further enacted, That all moneys paid thl*^trea?u- '"^^ ^he Treasury of the United States for patents, and for ryforpa- fegg for copies furnished by the Superintendent of the Pa- tents, &c., '. r \ • \ \ • • prior to tcnt Office, prior to the passage of the act of winch this is IhTlaiQ additional, shall be carried to the credit of the patent fund which this created by said act ; and the moneys constituting said fund IS addition- •' . al, to be shall be, and the same are hereby, appropriated for the pay- credit of ment of the salaries of the officers and clerks provided by patent fund jj ^j,. r^^^ ^H other expenses of the Patent Office, in- created by ' ' _ said act; eluding all the expenditures provided for by this act ; and, fundappro- also, for such other purposes as are or may be hereafter salaries ^^"^ specially provided for by law. And the Commissioner is &c- hereby authorized to draw upon said fund, from time to Commis- "^ sionerau- time, for such sums as shall be necessary to carry into draw^upon effect the provisions of this act, governed, however, by the the same, several limitations herein contained. And it shall be his &c. ; and lay before duty to lay before Congress, in the month of January, annu- annuaiiy a ally> a detailed statement of the expenditures and payments of*ex™e"di- ^y '^'"^ made from said fund. And it shall also be his duty tures, &c., to lay before Congress, in the month of January, annually, and, also, a ,.-,, ,., in, , ,i- list of pa- a list of all patents which shall have been granted during en s, &c. ^j^^ preceding year, designating, under proper heads, the subjects of such patents, and furnishing an alphabetical list of the patentees, with their places of residence ; and he shall also furnish a list of all patents which shall have be- come public property during the same period ; together with such other information of the state and condition of the Patent Office as may be useful to Congress or the public. Approved, March 3d, 1837. RELATING TO PATENTS, ETC. 655 CHAP. LXXXVIII. — Ax Act in uJJilion to an "Act to promote the progress of the useful arts." Be it enacted by the Senate and House of Representatives A<"'of Julv, of the United Sfales of America, in Congress assembled, z^-j. That there shall be appointed, in manner provided in the .^.^ jg^o,"^' second section of the act to which this is additional, two rj]|- 2C3.^.^^_ assistant examiners, each to receive an annual salary of imt exa- miners to twelve hundred and fifty dollars. bo unpoint- Sec. 2. And be it further enacted. That the Commis-^,'Jj.^''*^'^5 sioner be authorized to employ temporary clerks to do any suiurics. ' • ' • . .1 tmporary necessary transcribing, whenever the current busmess ot dorks. the office requires it; Provided, hovcerer. That, instead of^'^^'"*^" salary, a compensation shall be ifllowcd,-at a rate not greater than is charged for copies now furnished by the oflicc. Sec 3, And be it further enacted. That the Commis- List ofpa- sioner is hereby authorized to publish a classified and alpha- ,„ii,iiKiicd. bctical list of all patents granted by the Patent Oflicc, pre- vious to said publication, and retain one hundred copies for the Patent Oflicc, and nine hundred copies to be deposited in the library of Congress, for such distribution as maybe hereafter directed ; and thai one thousand dollars, if neces- sary, be appropriated, out of the patent fund, to defray the expense of the same. Sec 4. And be it further enacted. That the sum of three I'n.v for use of nxims in thousand si.x hundred and fifty-nine dollars and twenty-two city Iliiii. cents be, and is hereby, appropriated from the patent fund, to pay for the use and occupation of rooms in the City Hall by the Patent Office. Sec 5. And be it further enacted, That the sum of one rurcha«e thousand dollars be appropriated from the patent fund, to be expended under the direction of the Commissioner, for the purchase of necessary books for the library of the Patent Ofllice. Sec G. And be it further enacted. That no person shall ^'" P^J^on . . . . to be (iebar- be debarred from receiving a patent for any invention or red from discovery, as provided in the act approved on the fourth pa'icnt",^c'! day of July, one thousand eight hundred and thirty-six, to which this is additional, by reason of the same having becfi patented in a foreign country more than six months prior to 656 LAWS OF THE UNITED STATES Proviso. his application : Provided, That the same shall not have been introduced into public and common use in the United States Proviso. prior to the application for such patent: And provided, also, That, in all cases, every such patent shall be limited to the term of fourteen years from the date or publication of such foreign letters-patent. Persons, Sec. 7. A7id be it further enacted, That every person or ^urchased^ corporation who has, or shall have, purchased or construct- or con- ed any newly invented machine, manufacture, or compo- stracted ..„ . . i--ii- any newly sition of matter, prior to the application by the inventor or machine, discoverer for a patent, shall be held to possess the right to *°- use, and vend to others to be used, the specific machine, manufacture, or composition of matter, so made or purchased, without liability therefor to the inventor, or any other per- son interested in such invention; and no patent shall be held to be invalid by reason of such purchase, sale, or use, prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public, or that such purchase, sale, or prior use, has been for more than two years prior to such application for a patent. Somucliof Sec. 8. And he it further enacted, That so much of the 11th sec. eleventh section of the above recited act as requires the 1832, chap, payment of three dollars to the Commissioner of Patents, 357, as re- .... - . quires pay- for recording any assignment, grant, or conveyances oi the ™®^jj|^"®.' whole or any part of the interest or right under any patent, signments, be, and the same is hereby repealed ; and all such assign- ments, grants, and conveyance shall, in future, be recorded without any change whatever. Agricuitu- Sec. 9. And he it further enacted, That a sum of money, tics^&c.^" ^*°^ exceeding one thousand dollars, be, and the same is hereby, appropriated out of the patent fund, to be expended by the Commissioner of Patents in the collection of agricul- tural statistics, and for other agricultural purposes ; for which the said Commissioner shall account in his next an- nual report. Provisions Sec. 10. And he it further enacted. That the provisions 16th sec. „, . , .^,,^ ., ,,, , act July 4, 01 the sixteenth section of the before recited act shall extend 357 exteiT- ^° ^^^ cases where patents are refused for any reason what- ded. ever, either by the Commissioner of Patents or by the Chief Justice of the District of Columbia, upon appeals from the RELATING TO PATENTS, ETC. 657 decision of said Commissioner, as well as where the same shall have been refused on account of, or by reason of, in- terference with a previously existing patent ; and, in all cases where there is no opposing party, a copy of the bill shall be served upon the Commissioner of Patents, when the whole of the expenses of the proceeding shall be paid by the applicant, whether the final decision shall be in his favor or otherwise. Si:c. 11. And be if further enacted, Tho.\, in cases where Appeals. an appeal is now allowed by law from the decision of the Commissioner of Patents to a board of examiners, provided for in the seventh section of the act to which this is additional, the party, instead thereof, shall have a right to appeal to thd" Chief Justice of the district court of the United States for the District of Columbia, by giving notice thereof to the Commissioner, and filing in the Patent Ofluce, within such time as the Commissioner shall appoint, his reasons of ap- peal, specifically set forth in writing, and also paying into the Patent Ofiice, to the credit of the patent fund, the sum of twenty-five dollars. And it shall be the duty of said Chief Justice, on petition, to hear and determine all such appeals, and to revise such decisions in a summary way, on the evidence produced before the Commissioner, at such early and convenient time as he may appoint, first notifying the Commissioner of the time and place of hearing, whose duty it shall be to give notice thereof to all parties who ap- pear to be interested therein, in such manner as said judge shall prescribe. The Commissioner shall also lay before the said judge all the original papers and evidence in the case, to- gether with the grounds of his decision, fully set forth in wri- ting, touching all the points involved by the reasons of appeal, to which the revision shall be confined. And, at the request of any party interested, or at the desire of the judge, the Commissioner and the examiners in the Patent Office may be examined under oath, in explanation of the principles of the machine or other thing for which a patent, in such case, is prayed for. And it shall be the duty of the said judge, ♦ after a hearing of any such case, to return all the papers to the Commissioner, with a certificate of his proceedings and decision, which shall be entered of record in the Patent Office ; and such decision, so certified, shall govern the 83 658 LAWS OF THE UNITED STATES further proceedings of the Commissioner in such case : Pro- vided, however, That no opinion or decision of the judge, in Proviso, any such case, shall preclude any person interestefl in favor or against the validity of any patent which has been, or may hereafter be, granted, from the right to contest the same in any judicial court, in any action in which its validity may come in question. Sec. 12. And he it further enacted. That the Commis- Commis- sioner of Patents shall have power to make all such regu- make regu- lations, in respect to the taking of evidence to be used in lationsre- contested cases before him, as may be iust and reasonable. spectiiig ' ■^ f contested And SO much of the act to which this is additional, as pro- ^ ' \ides for a board of examiners, is hereby repealed. Sec 13. And le it further enacted, That there be paid Compensa- annually, out of the patent fund, to the said Chief Justice, in CWef Jus- consideration of the duties herein imposed, the sum of one tice. hundred dollars. Approved March 3, 1839. CHAP. CCLXIII. — Ax Act in addition to an '• Act to promote the progress of die useful arts," and to repeal all act3 and parts of acts '^'l'' °^J^^^y heretofore made for that purpose. 4, 1836, chap. 357. rt . 7 ? r» Act of Mar. £e it enacted by the Senate and House of Representatives 3 1837 . . . •/ i chap. 45. ^f ^^^ United States of America, in Congress assembled, That ^^18*39^^'*'^ the Treasurer of the United States be, and he hereby is, chap. 87. authorized to pay back, out of the patent fund, any sums of ^'^th^^'^^'d "^o^^y' ^o ^ny person who shall have paid the same into the to payback Treasury, or to any receiver or depositary to the credit of patent fund the Treasurer, as for fees accruing at the Patent Office nwney paid through mistake, and which are not provided to be paid by as fees. existing laws, certificate thereof being made to said Trea- surer by the Commissioner of Patents. Sec. 3, Act Sec 2. And he it further enacted. That the third section of Mar. 8, » , /• n r • 1837, chap, of the act of March, eighteen hundred and thirty-seven, ed'to pa- ' which authorizes the renewing of patents lost prior to the tents grant- fifteenth of December, eighteen hundred and thirty-six, is ea prior to > o j ^ 15th Dec'r. extended to patents granted prior to said fifteenth day of though lost December, though they may have been lost subsequently : querftiv. Provided, however, The same shall not have been recorded Proviso. anew under the provisions of said act. il RELATING TO PATENTS, ETC. • 659 Sec. 3. And be it further enacted, That any citizen or Citizens, citiaens, or alien or aliens, having resided one year in lheoi,t^iija United States, and taken the oath of his or their intention P'^*^"*' . . now. to become a citizen or citizens, who, by his, her, or their own industry, genius, efforts, and expense, may have in- vented or produced any new and original design for a manufacture, whether of metal, or other material or mate- rials, or any new and original design for the printing of woollen, silk, cotton, or other fabrics, or any new and ori- ginal design for a bust, statue, or bas relief or composition in alto or basso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or otlier material, or any new and useful pattern, or print, or picture, to be cither worked into or worked on, or printed or painted, or cast, or otherwise fixed on, any article of manufacture, or any new and original shape or configuration of any article of manu- facture, not known or used by others, before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent therefor, and who shall desire to obtain an exclusive property or right therein to make, use, and sell, and vend the same, or copies of the same, to others, by them to be made, used, and sold, may make application, in writing, to the Commis- sioner of Patents, expressing such desire, and the Commis- sioner, on due proceeding had, may grant a patent therefor, as in the case now of application for a patent : Provided^ Proviso. That the fee in such cases, which, by the now existing laws, would be required of the particular applicant, shall be one half the sum, and that the duration of said patent shall be seven years, and that all the regulations and provisions which now apply to the obtaining or protection of patents, not inconsistent with the provisions of this act, shall apply to applications under, this section. Sec 4. And be it further enacted. That the oath re- Oath may quired for applicants for patents, may be taken, when the J^efore'u applicant is not, for the time beinjr residincr in the United S- minis- . . ters &c. States, before any minister, plenipotentiary, charge d'af- ' faires, consul, or commercial agent, holding commission under the government of the United States, or before any 660 LAWS OF THE UNITED STATES notary public of the foreign country in which such applicant may be. Penalty for Sec. 5. And be it further enacted, That, if any person the ri|l"tf or persons shall paint or print, or mould, cast, carve, or of a paten- engrave, or stamp, upon any thing made, used, or sold by marking, him, for the sole making or selling which he hath not, or shall not have obtained letters-patent, the name, or any imitation of the name, of any other person who hath or shall have obtained letters-patent for the sole making and vending of such thing, without consent of such patentee, or his assigns or legal representatives ; or if any person, upon any such thing not having been purchased from the pa- tentee, or some person who purchased it from or under such patentee, or not having the license or consent of such patentee, or his assigns or legal representatives, shall write, paint, print, mould, cast, carve, engrave, stamp, or other- wise make or affix the word " patent," or the words " let- ters-patent," or the word " patentee," or any word or words of like kind, meaning, or import, with the view or intent of imitating or counterfeiting the stamp, mark, or other device of the patentee, or shall affix the same, or any word, stamp, or device of like import, on any unpatented article, for the purpose of deceiving the public, he, she, or they, so offending, shall be liable, for such offence, to a penalty of not less than one hundred dollars, with costs, to How reco- be recovered, by action, in any of the Circuit Courts of the ^^c. ' United States, or in any of the District Courts of the United States, having the powers and jurisdiction of h. Circuit Court; one half of which penalty, as recovered, shall be paid to the Patent Fund, and the other half to any person or persons who shall sue for the same. Patentee?, Sec. 6. And be it further enacted, That all patentees and ecTt'o'^mark assignees of patents hereafter guanted, are hereby required ^ff^*^^d f ^° stamp, engrave, or cause to be stamped or engraved, on sale. each article vended or offered for sale, the date of the Penalty for patent ; and if any person or persons, patentees or as- neglect. signees, shall neglect to do so, he, she, or they shall be liable to the same penalty, to be recovered and disposed of in the manner specified in the foregoing fifth section of this act. Approved August 29, 1842. RELATING TO PATENTS, ETC. 661 CilAP. XLVII.— As Act to provide additional examiners iu tlie Patent Office, and for other purposes. Section 1. Be it enacted lii the Senate and House o/'May2S, Representatives of the United States of America, in Con- gress assembled, That there shall be appointed, in the man- ner provided in the second section of the act entitled "An Act to promote the progress of Useful Arts, and to repeal all acts and parts of acts heretofore made for that purpose," approved July fourth, eigliteen hundred and thirty-six, two 1836, cli. , . , . • ' • jj- 357. Addi- prmcipai exammers, and two assistant examiners, in adai- tionai exa- tion to the -number of examiners now employed in the ly/^ir^tcnt Patent Office ; and that, hereafter, each of the principal Oilicc. examiners employed in the Patent Office shall receive an annual salary of twenty-five hundred dollars, and each of Salaries, the assistant examiners an annual salary of fifteen iiundred dollars : Provided, That the power to extend patents, now Extension vested in the board composed of the Secretary of State, Commissioner of Patents, and Solicitor of the Treasury, by the eighteenth section of the act approved July fourth, eighteen hundred and thirty-six, respecting the Patent Office, shall hereafter be vested solely in the Commissioner of Patents ; and, when an application is made to him for the extension of a patent, according to said eighteenth section, and sixty days' notice given thereof, he shall refer the case to the principal examiner having charge of the class of inventions to which said case belongs, who shall make a full report to said Commissioner of the said case, and particu- larly whether the invention or improvement secured in the patent was new and patentable when patented ; and, there- upon, the said Commissioner shall grant or refuse the exten- sion of said patent, upon the same principles and rules that have governed said board ; but no patent shall be extended for a longer term than seven years. Sec 2. And be it further enacted^ That, hereafter, the t'ee for Commissioner of Patents shall require a fee of one dollar, convey- for recording any assignment, grant, or conveyance of the 'I'^'^cs of whole or any part of tlie interest in letters-patent, or power 662 PATENT LAWS OF THE UXITED STATES. of attorney, or license to make or use the things patented, when such instrument shall not exceed three hundred words ; the sum of two dollars, when it shall exceed three hundred, and shall not exceed one thousand words; and the sum of three dollars, when it shall exceed one thousand words ; which fees shall, in all cases, be paid in advance. Two copy- Sec 3. And be it further enacted^ That there shall be recording appointed, in manner aforesaid, two clerks, to be employed tSilIl' '" copying and recording, and in other services in the Patent Office, who shall be paid a salary of one thousand two hundred dollars per annum. Franking Sec. 4. And he it further enacted^ That the Commissioner Commfs°-° of Patents is hereby authorized to send by mail, free of Patent?.*^ postage, the annual reports of the Patent Office, in the same manner in which he is empowered to send letters and pack- ages relating to the business of the Patent Office. Approved May 27, 1848. INDEX. N. B. The references in Uiis index: are to the sections, unless otherwise indicated by the abbreviation p., which refers to the page. ABANDONMENT OF EXTERIMENTS. {See Experiments.) ABANDONMENT OF INVENTION, destroys right to a patent ought to be clearly proved how shown on the part of tlie ]>ateiitoL' by ao(iiiic'scencc in publie use or «ale not by making for e.xperinu'nt cont-lusive evidence of . no length of time recjuired to prove how tar the intention is material not by experimental practice by the inventor not by practical user modifications of, by statute of 1831) a good defence to an action for infringement a good defence to a bill in c7 in whose name to be brought .... 258 of grantee for particular district ., , 259 of assignee 260, 2G1 of assignee and patentee .... 2G0 of patentee 260 may be maintained against corporations . 260 declaration in, what should show .... 262 that plaintiff was first inventor . . . 263 that subject-matter was new and useful . 264 57.60 5 7 .'»7, note, 60. 296 296 297 298 300 301-303 304 306 JU7-310, p. 656 2[)6 . 351,352 6, lb. note. 346 346 348 664 INDEX. ACTION AT LAW, Continued. whether the citizenship of patentee . . 265 that patent was obtained in due form of law . 265 the substance of the grant .... 266 the value of the patent . . . . 267 the breach by defendant .... 267 damages sustained by plaintiff . . . 267 what, when plaintitf sues as assignee . . 268 omission in, when cured by venlict . . 268 at trial in, when proof of recording assignment may be given 269 pleadings and defences in 270 statute provisions concerning . 270- 272, p. 642 defendant may piead general issue . 270, p. 643 defences under general issue without notice 274-277 that defendant never did the act com- plained of 274 that plaintiff was not entitled to a patent 274 that plaintiff has not a good title as as- signee ...... 274 that the patent was not duly issued . 274 that the invention was not a patentable subject 275 want of utility in the invention . . 276 want of an intelligible specification . 277 defences under the general issue requiring notice 278-313 the statute itself 278 concealment or addition in specifications 279-282 want of novelty in subject-matter . . 283 - 295 prior dedication of the invcDtion to the public 296-310 that the patent was obtained surrepti- tiously 311-312 that the invention was unreasonably with- held from the public . . . . 313 not ai|Complete remedy in all cases . . . 314 ADDITIONS, how to be described in specifications . . pp. 258-262 to patents, how made . . , 180, pp. 642, 650, 652 ADMINISTRATORS AND EXECUTORS, when may take out patent .... 114, p. 640 may apply for extension 117 may amend specifications . . . 167,180,185 INDEX. 665 320, 322 354, 355 p. 654 p. G53 p. G5G AFFIDAVIT, in support of motion for injunction when read in support of title .... AFFIRMATION. {See Oath.) when substituted for an oath .... AGENTS, to receive and forward models, &c., to be appointed AGRICULTURAL STATISTICS, to be collected by Commissioner .... ALIENS, may take out patent in United States . 115, 116, p. 65;> may file caveat 170, p. 640 ALTERATION OF SPECIFICATIONS. {Sec Amexdmexts.) AMBIGUITY, eflect of, in specifications . . 131, 134, 137, 13li, 151 AAIENDMENTS, of specifications allowed by statute by disclaimer .... ANALOGOUS USE, what is not subject of a patent APPEALS, to the Supreme Court, when allowed from decision of Commissioner APPLICANT FOR PATENT, who may be, under the statute to make oath .... to pay money into the treasury may appeal from the decision of the Commis Bioner ..... APPLICATION FOR PATENT, to be made in writing to be by petition .... to be accompanied with specifications when withdrawn when they interfere * . . . ARTS USEFUL, when subject of a patent fine arts not patentable re-discovery of, whether or not patentable ASSIGNEES OF PATENT, rights of, in case of extension 118, lb. note, 119, 192, 193 in case of renewal . .183, lb. note. 84 166, p. 641 167, 180, pp. 265, 651 7,12,26,85-87 85 pp. 630, 645 pp. 637, 638, 640, 657 114, 115 71, 172 ,1 -3, p. 636 1 "5, p. 639 nis pp. 637, 638 1 'l,p. 636 171, p. 636 120 ,121, p. 636 P- 637 P- 639 2, 90 -92, 38 103 90 39 666 INDEX. ASSIGNEES OF PATENT, Continued. when a party to a suit, for infringement 192, 193, 260, 261, p. 652 Tvhen may amend specifications 167, 168, 180, 185, 194 may bring a bill for an injunction . . 316, p. 652 in bankruptcy ^^^ ASSIGNMENT OF PATENT, allowed at common law 1^9 does not include a right to the extension . . 118, nofe. how made according to statute . . . 188, p. 640 may be made before patent is taken out . • 189 when by operation of law 1°9 when to be recorded .... 190- 192, p. 640 how affected in case ot surrender by patentee . 192 distinguished from a license . . • 195-197 when may be recorded anew . . . • p. 647 ASSISTANT EXAMINERS, to be appointed in patent office . • • PP- C^^' ^^^ compensation allowed to p. 661 B. BANKRUPTCY, of patentee, vests patent in his assignees . . 189 BILL IN EQUITY, what it should contain 320 when brought upon title of an assignee . • 320 should be sworn to ...... 320 how affected by subsequent renewal of patent . 321 BOARD OF EXAMINERS, when to be appointed .... pp. 638, 639, 641 their power and duties . . • pp. 638, 639 CAVEAT, when allowed by statute 170, p. 640 to be filed in confidential arcTiives of patent office 1 70, p. 640 may be filed by an alien, when, . . . 170, p. 640 CHANCERY. (See Equity.) CHANGE, of former proportions of a machine, not patentable 3 when unimportant 7, 8, 22 materiality of, how determined . . 8, 9, 13, note, 21 utility of, a test of invention . . • 8, 12, 15 of form or proportions, not a discovery -17, note. INDEX. 667 CHANGE, Continued. of principle, when there is 21 by omitting a usual ingredient .... 81 CHIEF CLERK OF PATENT OFFICE, how appointed p. 63-4 his dues p. 634 his salary p. 634 CHIEF JUSTICE, to hear appeals in certain cases .... p. 657 his compensation therefor p. 658 CIRCUIT COURT, have cognizance of patent causes . . 405, p. 645 jurisdiction of, exclusive 406 appeal from, lies to Supreme Court . . 405, p. 645 CLASSIFICATION OF MODELS, to be made by Commissioner .... p. 646 CLERKS OF COURTS, when to transmit copies of patents ... p. 648 CLERKS OF PATENT OFFICE, to be appointed by the Commissioner ... p. 634 COLORABLE VARIATIONS, not subject of a patent 7 COMBINATION, a new, when subject of a patent . . 24, 73, 94, 110 CO^BUSSIONER OF PATENTS, application to be made to .... 171, p. 636 to sign patent 176, p. 635 when may correct mistakes 177 " acting commissioner," recognized by law . 178 decision of, when not re-examinablc . . 181, 181 a. to decide whether an extension shall be granted 187, p. 661 to be appointed by the President ... p. 633 general duties of p. 633 compensation allowed to p. 633 to make oath before entering on his duties . . p. 634 to give bonds, with- sureties ..... p. 634 to make examination of inventions ... p. 637 duty of, in case of interfering applications . . p. 639 to make classification of models .... p. 646 authorized to draw money from patent fund . . p. 654 to make an annual statement of expenditures, &c. p. 654 to make an annual List of pate/its .... p. 654 COMPOSITION OF MATTER, when the subject of a patent .... 2,103,104 Q68 INDEX. 103 104 . 211-214 151, 159, 270, 280 laws in favor of 403 404 COMPOSITION OF MATTER, Continued. includes what test of novelty in . patent for, how infringed CONCEALMENT, when it vitiates specifications . CONGRESS, may pass general or special inventors .... may pass retrospective laws . CONSTRUCTION, of patent, by the court . judged of by the jury . tobeUberai 120,132 rule of, in specifications 132, 387 principles of 386 - 394 COPY, constitutes an infringement 38, 202, 220 of patent, mistakes in, how corrected .... 177 of records, &e. under seal, when to be evidence . i>p. 636, 648 of patents, descriptions, &c., when to be sent to Com- 123, 130, 136, 150 . 123, 124, 136 missioner by Clerks of Courts CORPORATION, may be sued for infringement COSTS, when awarded by discretion of Court when not allowed the plaintilT COUNSEL FEES, when allowed to the plaintiff . COURT, province of, to construe patents questions of law to be determined by what constitutes novelty what constitutes sufficiency of invention whether the patent is void, as being against public policy whether the invention is frivolous . extent of the claim in specifications principles which guide, in construing specifications how far may receive evidence of invention . to decide what the specification has said to decide whether thti invention is patentable COURT OF EQUITY, (See Equity.) may restrain infringements by injunctions p. 648 260 286 168, 288, 293, p. 653 254 123, 130, 136, 150 379 380 380 386 383 384 385 394 390 395,397 401 314 INDEX. 669 COURT OF EQUITY, Continual. grouiul ol" jurisdiction of, 314 discretion vested in 315 D. J).\ALVGES, rule of, for infringement 250 actual, what is meant by 250, 251 may he trebled by the Court .... 250, p. 642 when merely nominal 252, 253 when may include counsel fees and expenses of Tritncsses 254 allowed for infringement after the destruction of patent oflice 256 how recovered p. 642 DEATH, of inventors, before taking out patent ... p. 640 DKCLAUATIOX, what it should set forth, in an action 262 that plaintilT was first inventor .... 263 that the subject-matter was new and useful 264 whether the citizenship of patentee 265 that patent was properly obtained .... 265 the substance of the grant 266 the value of the patent 267 the breach by defendant 267 damages sustained by the plaintiff . • • . 267 when the plaintiff sues as assignee .... 268 omission in, when cured by a verdict 268 DEDICATION. (Sec Auandoxment ok Invention.) DEFENCES. (See Action at Law, Kc^iity.) to actions at law 270-313 to a bill in ctjuity 351 DErAKTMENT OF STATE, patent oflice attached to p. 633 DESCKirTION, of a machine, may be part in writing, and part by drawings 163 prior, in a public work, invalidates a patent . . 62, 283 what constitutes such description . . .65, 292, 295 a. DESIGNS, when, the subject of a patent . 105, 106, p. 659 include tradesman's marks 106 670 INDEX. DISCLAIMER, when allowed by statute . by whom made .... to be recorded in the patent office . to be taken as part of the specifications how to affect an action pending effect of, as to costs DISTKICT COURT, when it has cognizance of patent causes DOUBLE USE. (See Analogous Use.) DRAWINGS, to accompany specifications form a pai*t of specifications whether to be drawn on a scale duplicates of to be furnished DUPLICATES, of models and drawings, when required 167, 167, 168, 185, 287, p. 651 185, 287, p. 65^ 167, 287, p. 651 167, 287, p. 651 167, 287, p. 652 288, 295, p. 653 405, p. 645 121,163, p. 636 122, 163 . 164 p. 650 pp. 649, 650 E. EFFECT, in the abstract, not patentable 4, 23, note, 27, 75, 96, note EQUITY, court of may restrain infringements by injunctions grounds of jurisdiction of .... general principles of, to regulate the granting of injunctions . parties entitled to rehef in .... same in general as in actions of law . distinction in case of assignment for a particular district ....... bill in, what it should contain .... should be sworn to how affected by a subsequent renewal of patent injunctions, on what principles granted application for, to be accompanied with an affidavit ...... notice to be served on the defendant not granted on ex parte applications when patentee must first establish his right by action at law rule laid down by Lord Eldon ... rule adopted by our courts ... three classes of cases under 314 314 314, 315 316 316, 317 318,319 220 220 321 322 322, 354 323, 354 323 324 324 325 326 INDEX. 671 EQUITY, Continued. when no opposing evidence is offered . . 327 when opposing evidence is offered . . • 328-335 when there is a full hearing .... 336 prima facie right to ... . 338, 339, 342, 354 when not granted simpliciter, what course must be taken 337 when patent must be established without injunc- tion ......... 337, 338 when patent must be established after injunction . 337, 339 when the answer denies the validity of the patent . 340 when an action is pending against another party . 341 practice of the court in dissolving, reviving, &c. . 342 motion to dissolve, when may be made . . 342 after trial has been ordered .... 342 when an action is pending .... 342 while plaintiff is preparing to bring an action 342 after trial has been had 343 motion for, when to stand over • . . . 344 in case of an application for a new trial . . 344,345 granted as matter of course, after a judgment for plaintiff 345 account of profits ordered in lieu of . . . 34G, 347 when not dissolved on account of doubts of the vali- dity of the patent 349 when granted against one who has used the inven- tion by permission . . . . . . 350 a good defence to . . . . . . . 351 prior dedication to the public . . . 351-353 are always special ....... 354 when applied for before the answer Is filed . . 354 remedy in, in case of interfering patents ... p. 644 EQUIVALENTS 224 a., 245 a. EVIDENCE. {See Action at Law.) what may be given In, under the plea of general issue 270, 271 two kinds of in a patent cause .... 356 of title, relates to what ...... 356 of infringement 356,372 competent, to show the granting of the patent . 357 jar/mu /aci>, of novelty 30,39,358 negative, when to be offered by plaintiff . 359 effect of such evidence 360 672 INDEX. EVIDENCE, Continued. of novelty, when patentee's own declarations 361, Ih. note. '^ of utility, to be offered by plaintiff . . . 364 of sufficiency of specifications .... 364 nature of such evidence • • • . 365 who may give, as experts .... 155, 365-371 general rule of determining . . 365, 366, Ih. note. depends upon the nature of the subject- matter 366, lb. note, 369 persons of ordinary skill 155,366 when persons thoroughly scientific . . 367,368,3^0 nature and scope of, to explain specifications . . 154,371 principles of, as applied to the question of identitj- 372 two kinds of, applicable to this question . . 373 of experts, when admissible ..... 375 sufficiency of, how far determined by the court . 375, 376 positive, when offered by defendant . . . 377 who are competent to give 378 copies of records, when to be . . . pp. 636, 648 EXAMINING CLERKS, to be appointed by the Commissioner ... p. 653 compensation allowed to p. 653 EXECUTORS. {See Administrators and Executors.) EXPERIMENTS, unsuccessful, do not prevent subsequent invention 44, lb. note, 360 distinguished from invention ..... 44, 45 when presumed not to be invention . . -44, note. antecedent, by others, may be used by inventor . 51 EXPERTS, testimony of, when resorted to . . . 124, 154, 223 who may be regarded such 155, 365 persons of ordinary skill 155,366 depends upon the nature of the subject-matter 366, ifc. note, 369 when thoroughly scientific persons . . 367,368,369 EXTENSION OF PATENT, allowed by statute 117, 186, p. 645 administrator may apply for 117 right to grant, vested in the Commissioner 119 a., 187, p. 661 cannot be for a longer time than seven years 187, note. does not enure to the benefit of assignees . l\%,lh.notc. application for, to whom referred , . . . p. 661 INDEX. 673 F. FKK. lor filing caveat for taking out patent . for renewal of patent for extension of patent for filing disclaimer . 170, p. 641 175,p. G39 180, p. 642 p. 645 • . . . 287, p. 651 for taking out patent for designs 105 when patentee is a subject of the king of Great Britain 1 75, p. 039 for recording assignments p. 661 FIRST INVENTOR, alone, entitled to a patent .... 35,40,114 may be the new discoverer of a lost art . . 'M, 38 meaning of in our statute .... 10, lb. note. the expression, how construed in England . 40, lb. note. is he who first adapted his invention to use 40, note, 43, 48 in a race of diligence ...... 43 notwithstanding prior experiments . . 44, 48, note. how far may take suggestions from others . . 46-50 may u.-^e antecedent experiments .... 51 patentee must believe himself to be ... 63 FOREIGNER. (See Aliex.) FOREIGN INVENTION, introduction of not patentable .... 1 14 FOREIGN PATENT, when does not prevent a patent in the United States 115, p. 655 G. GENERAL ISSUE. (S^e Action at L.vw.) may be pleaded in an action for infringement 270, p. 643 defences under, without notice . • . 274-277 rerjuiring notice .'.... 278-313 GR.VNTEE. {See Assignee.) for particular district may bring an action in his own name. ........ 259 I. IDENTITY, involved in an infringement 220 what is, in machinery 221 - 224 in a manufacture 225-227 in the application of a principle . . • 229 - 233 85 674 INDEX. IMPROVEMENT, a test of novelty when it shows sufficiency of invention . must be substantial .... the subject-matter of a patent several, may be protected by one patent what is, as applied to machinery . sufficient to sustain a patent, how tested patent for, how made serviceable . description of, in specifications, how made patent for, how infringed INFRINGEMENT, none, where there is real improvement . by carrying the same principles into effect what is not defined by statute .... different modes of .... by miaking patented machine for use by using it ..... • by selling it whether by making for experiment by constructive user .... not by selling materials of a machine not by selling the articles produced by it by consumption of a composition when, by making to order by practising an art the great question concerning involves substantial identity . by a machine which incorporates the substance of the invention not where there is a material alteration when the change constitutes a mechanical equiva lent ........ of a manufacture when not shown by similarity of structure mode of proving ...... burden of proof of, on plaintiff when the subject-matter is the application of a principle ....... none, where there is a substantive invention how tested none, where there is a change of ingredients utility, when a test of . 9 19, 20 22, lb. note. 82,95-99 94 95 96,99 97 140 246, 247 19, 20 219, 223 138, 220 201 202 203 203 203 204 205, 206 , lb. note. 208 212-214 216 217 218 220 221 222 223, 224 225 226 227 227 228-233 284 234-240 241, 242 243. 244 INDBX. 675 245 . 110, 245 . . 246, 247 250 - 256, p. 642 255 257 314 ents p. 660 314 • 320 322 . 322 323 323 . 324 325 . 326- 332 32 8, 339, 342, 354 INFRINGE^IENT, Continued. relates to what is covered by the patent when subject-matter is a combination when patent is for improvements . damages allowed for . none, before the patent is obtained remedy for, by action at law . may be restrained by injunctions . by marking, penalty for INJUNCTION. (Sec Equity.) granted by the Court, to restrain infringements bill for, what it should contain on what principles granted application for, how made not granted on ex parte applications rule for granting, before trial three cases under . prima facie right to granting of, rests in discretion of the Court, 314, 333, 339 a. not granted, when irreparable mischief would ensue to defendant ..... nor where plaintiff has permitted defendant to incur expense notwithstanding defendant's admissions perpetual, only granted on full hearing motion to dissolve, when may be made . motion for, when to stand over when granted as matter of course when granted against one using by permission perpetual, a good defence to ... is always special ...... INSPECTION, of works, sometimes ordered by the Court INTENTION, when material to show abandonment INVENTION, sufficiency of, to support a patent process of reaching immaterial may result from accident result of, must not exclude design tests of .... when presumed a frivolous, not patentable distinguished from new use . must be beneficial to society 333 334 335 336 342 354 345 350 351,852 354 347 303 5, 9, 10, 15, 17, 18, 24 6, lb. note 6, 10 6, 10 8, 9, 14, 27 a. 15 7, 22 27 28 46-50 57, 60 62 63 66 70, note 112 676 INDEX. INVENTION, Continued. must be reduced to practice ... 40, note, 81 distinguislied from experiment . • • • 33, 45 how far may be suggested by others ■when abandoned, renders patent invalid must be absolutely new foreign, when not to affect patent every material part of, must be new in what it consists a joint, when subject of a patent not patented, whether it passes to assignees in • bankruptcy ^^^ principles of, remarks upon . . . . pp. 5 7 7 - 594 JURY, province of, in patent causes 123, 124, 136, 390, 395, 396 a. 397 questions of fact to be determined by .... 379 whether patentee was the inventor . 380 novelty of subject-matter 380, 401 whether renewed patent is for the same invention as the old one 381 abandonment of the invention .... 381 whether the means employed will be successful 382 - 384 whether the specifications claim what is not new 385, 391 the meaning of terms of art 385,396 facts referred to as part of the description . . 394 sufficiency of the description .... 395 the question of identity 402 JURISDICTION, of Congress 403,404 of Circuit Court 405, 406, p. 645 appellate, of Supreme Court of United States 405,407, p. 645 LAW AND FACT. (See Court, Jury.) questions of 379 LETTERS-PATENT. (See Patent.) LIBRARY, for the use of the Patent Office . • p. 646 appropriations for pp- 646, 655 LICENSE, by operation of statute, before patent is obtained . 59 what amounts to 60 INDEX. 677 ICENSE, Continued. distinguished from an assignment when assignable how construed ..... .ICENSEE, his rights as against the patentee when may dispute vaHdity of the patent iiust comply with the conditions of the license l.^i OF PATENTS, to be made by Commissioner to be published ..... . 195-197 . 198 197 198, Ih. note . 195-200 . 199, 200 200 p. C54 p. C54 M. lACHINE, vhen the subject of a patent principles of . • • • novelty in, how tested mere efTect of, not patentable .... change of form or proportions in, when a discovery meaning of, in the statute . . . *. improvements of, when patentable embraced in the term manufacture . when two are the same in princii)lt-" distinguished from manufacture when two may be embraced in one patent drawings of, to ac-company specifications . materials of, when to be stated in specifications patent for, how infringed MACHINIST, to be appointed in Patent Oflice compensation allowed to .... MANUFACTURE, when the subject of a patent . . 2, 88, 100 - 102 meaning of the term in the statute of monopolies 70, note, 71, 100 used in a literal and figurative sense includes the process of making a thing a new, by change of ingredients meaning of, in our statute distinguished from a machine what constitutes novelty in patent for, how infringed MARKS, required to be put on patented articles for sale 2, 3, 4, C, note, 93, 94 3, 23, note, 9G, note 3, 23, lb. note, 37 4 21 93 95-99 71, 100 78, note 102 111, 7/*. note 121 1C2 . 203-208 [>. G34 p. C,oi 71, 77 72, 74, 101 81 a. 102 102 2 225-227 p. COO 678 INDEX. MARKS OF TRADESMEN, the subject of patents MESSENGER, of Patent Office, how appointed his salarj- mSTAKES, in patent, how corrected .... MODE, (See Process.) of producing a thing, patentable MODELS, of invention, when to be furnished by patentee to be classified by the Commissioner duplicates of, in certain cases to be procured compensation for, when allowed . to be exhibited to the public MONEY. (SeeFEE.) when to be paid into court . . . • for patents, when to be returned carried to credit of patent fund 106 p. 634 p. 634 177 70, 71, 74 121, p. 636 p. 646 pp. 6^9, 650 p. 651 P- 647 . 3a4, 350 p. 637 p- 654 N. NEW PATENT. mav bo issued, on surrender of the old one presumed to be for the same invention in place of those destroyed, when to be issued NOTICE, when to be served on defendant to be construed strictly kind of, in actions at law NOYELTT, a statute requisite what is, in machinery what amount of thought it implies the great test of invention implies more than a frivolous invention utility, a test of ... some evidence of to be offered slight evidence of, snflicient prima facie evidence of consistent with what prior use what evidence of, beyond patent, may be plaintiff .... mode of proving . • . . .39 when in doubt, patentee may rest on patent 3 180, p. 641 181 pp. 649, 658 . 270, 323 . 272, 284 . 2S5, 295 1 3. 23, note, 25 6. 76. note 6, note 8, 15, 18, 28 29 29 30, 39, 358 . 31-40 by 39, Jiote note, 358-362 note, 358-362 INDEX. 679 NOVELTY, Continued. two Issues concerning .... how far consistent with suggestions by others inconsbtent with prior public use or sale . relates to other countries inconsistent with foreign patent inconsistent with a prior description in a public relates to the whole invention failure of, renders patent void . test of, in compositions of matter work AC,- 41 50 52 62 C2 C2 66 66, 283, 284 104 121. not not resident of O. OATH, required of an applicant for patent . prima facie proof of novelty . form of, when varicc an alien, when presumed not to claim things in use relations of, to a licensee, in regard to the validity of the patent penalty for infringing his right by marking . to mark articles offered for sale .... PATENT OFFICE, attached to the department of State officers of, to make oatli PENALTY. for infringing rights of patentee by marking . how recoverable PETITION, apj)lication for jiatont made by ... . PLEADING AND DEFENCES. (See Action at Law.) in actions at law ....... PRESIDENT, to appoint Commissioner of Patents PRINCIPLE, of a machine, what is . an abstract, not patentable . emlKxliment of, jtatcntablo . when it becomes a pmcess application of, what constitutes application of, not alwavs patentable PRINCIPAL EXAMINERS, two, to be app(jintod by Commissioner . application fur extension of patent to be referred to compensation allowed to . .... PRINTED PURLICATION. {See Piiu.ic Work.) PROCESS, when the subject of a patent ..... p. ()0 J p. 639 lU 115 132,391 199 p. 6G0 p. GGO p. G33 p. G34 p. 660 p. 6G0 171 270 p. C33 . 3, 23, nole. 72, 75, 143, p. 577 72, 71 - 79, 80 a, p. 577 72, 74, 143, note. . ><3-88, p. 578 85, p. 579 p. GGl p. GGl p. 6C1 when a principle becomes PROFERT OF LETTERS-PATENT, to be made in the declaration effect of in a bill for injunction .... PROOF. (See EviDEXCK.) burden of, to show infringement, on plaintiff 86 71, 74 72, 74, 143, note. 2G(; 2CG, note. 320 227 682 iifDEX. PUBLIC USE, prior, destroys right to a patent .... 52, 296 meaning of 53, 297, 304 PUBLIC WORK, prior description in, inconsistent with novelty . 62, 283 what is 65, 290 PURCHASE, before patent 60, note. PURPOSE, in the abstract, not patentable .... 27 Q. QUIA TIMET, bill, an ordinary remedial process in equity . . 321, note. R. RECORDING OF ASSIGX^IENT, proof of, when may be given in actions . . 269 when may be anew p. 6-47 RE-INVENTION. (See Lwektiox.) REJIEDY. (5ee Action AT Law ; Equity.) for infringement of patent 257,814 RENEWAL, of patent, when allowed by statute ... 180 when may be made 184 REPUGNANCY, between specifications and patent, effect of . . 125 RESULT, a test of invention 14,18,27 6 RULE OF DAMAGES. (See Damages.) for inlriugement of patent 250 S. SCIENCE, discoveries in, not patentable 75, 76 SEAL, for Patent Office, how provided p. 635 SECRETARY OF STATE, to sign patents . 176, p. 635 may correct mistakes in specifications . . . 177 INDEX. 683 49,50 49 49 SERV.VNT, suggestions by, when consistent with novelty . manual dexterity of, may be used by inventor when the principle is suggested by SPECIFICATIONS, must agree with the patent ... 70, note, 122, 125 of former patent, when read in an action for in- fringement 98 statute requirements of . . 121, 153, 1G3, 1G5, p. 636 drawings annexed to, a part of . . two objects of • . . • • • rules for preparing SPECIFICATIONS, Continued. must not be ambiguous .... must distinguish what is old from what is new to be liberally construed .... how to describe what is old .... to state the best mode of producing an effect . 122,163 . 128,129 . 130,152 130,131 . 131,133 132 134 135,157,161 to be construed by the Court . 123, 130, 136, 150, 385 how far to be judged of by the jury . 124, 136, 154, 385 must not contain useless descriptions . . . 173 should describe every thing essential 138, Ih. note, 157 must not misuse terms ...... 139 how to describe an improvement .... 140 - 142 must disclose a patentable subject . . . 143, 144 how to describe the application of a principle . 145-149 how construed, when several things are described in 150 must not mislead the public 151, 159 uddressed to persons of competent skill 124, 154 - 156, 161, 369 may contain technical terms .... 154, 161 must not require experiments .... 156 slight defects in, may render patent void . 157 when to state how substances may be procured 158,159 when may require experiments .... 160 need not describe what 161, 162 when to state materials of a machine ... 162 why to be accompanied with drawings . . . 163, 164 how attested 165 amendments of, allowed by statute . 166, pp. 666> 666 by disclaimers 167-169 synopsis of English cases concerning . . pp. 238 - 242 common defects in, according to English law pp. 242 - 266 1. ambiguous terms .... pp. 242-244 684 INDEX. SPECIFICATIONS, Continued. 2. omission of necessary descriptions pp. 242, 244 - 247 3. claiming what is not original . pp. 242, 247, 248 4. tilings put in to mislead - . pp. 242, 245 - 250 5. incorrect drawings . . • pp. 242, 250, 251 6. one of different ways or ingredients fails pp. 242, 251,252 7. one of several effects specified is not pro- duced pp. 242, 252 - 256 8. the things described are not the best known to the patentee . . pp. 242, 254 - 257 general observations on, as applied to machinerj' pp. 257, 258 improvements method reduced to practice chemical discoveries manufactures a disclaimer of, allowed by statute SUBJECT-MATTER, must be new and useful when may be an art . a machine a manufacture . a composition of matter . an improvement cannot be mere theory . pp. 258 - 262 p. 264 p. 264 pp. 264, 265 pp. 265, 266 1,16 . 2,90-92 2,3,4,93,94 2,100-102 2, 103, 104 . 9,19,20,82,94-99,140 2, 70 mere purpose or effect . . 4, 27, 75, 96, note. the application of what is old to a new purpose 4,26,27,87 must be substantially new . . . 6, 7, 17, 27, note. not a frivolous invention 7, 22, 28 when a substitution may be 8,11 when a new application of known agents . 10, 79, 81, 82 when a new combination .... 24,73,94,110 must be beneficial to society . . . . 17,28 cannot be an inchoate idea • 47 an elementarj' principle 70, 75, 78, 143 a science 75, 76, p. 301 when a process or application of a principle 74- 79, 80 a, 81, 85, 143, note. may be a new contrivance to effect an old object . 87 may be designs 105, 106, p. 666 must possess unity 107, 108 classification of, under the statute of monopolies . 69-72 under our statute . . . 89-106 INDEX. 685 SUBSTITUTION, when the subject of a patent an obvious, not an invention SUFFICIENCY OF INVENTION. (See Invention ; Novelty ; Utility.) SUGGESTIONS, by othci-s, when consistent with invention abstract, not patentable of possibility, not invention . of a servant, eflect of . of principle, is invention in course of experiment, may be adopted by an inventor ....... SUPREME COURT OF UNITED STATES, its appellate power, in patent causes 405, 407, 407 a. p. G45 SURRENDER, of patent, when may be made, and new one taken 8,11 7, 27 a. 4G-49 47 48 49 49 49 out and reissuej'effcct of, on extended patent T. . 180, p. C41 119 a. p. 173 TEMPORARY BOARD OF COMMISSIONERS, when appointed ...... their duties ....... TEMPORARY CLERKS, when may be appointed .... TEini, for which patent is granted . , . extension of THEORY, in the abstract, not patentable .... THOUGHT, amount of, sufficient to constitute invention . TREASURER, when to return money paid into the treasury pp. 037, G54, 658 p. G50 p. G50 p. 653 201 186 u. UNITY, of subject-matter, required by statute in case of two distinct inventions how determined .... when consistent with combinations 107 108, 111 109 110 686 INDEX. UNITY, Continued. in case of several improvements 111, lb. note. in case of a joint invention .... 112 UTILITY, a statute requisite 1 ■when a test of invention .... . 8, 9, 15, 16, 28 meaning of, in iVmerican law . . 16, 28, 383 degree of, not material .... 28 relates to the whole invention . 67 failure of, its effects upon the patent . 248, 249 w WITNESS, who are not incompetent 378 one who has used patented machine ... 378 patentee of another patent, who sold the machine to defendant 378 patentee, who has assigned his whole interest 378 a licensee, for the patent 378 WRIT OF ERROR, lies to Supreme Cour^of the United States . 40 7, p. 645 UCLA LAW LIBRARY For renewals call (310) 825-3ybu • ■■ . .... II II III I mil Hill I AA 000 744 269 ,_ r WW! i