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lit
III
11
iI4i4ililH)Wliltl<10ti<
LNiM Iv^llV
OF CALIFORNIA
LOS ANGELHS
SCHOOL OF UWV
UBR-\RY
A TRKATIHK
Till. LAW <U r.KTKNTS
USEFUL IXVDrnOK&
A TREATISE
THE LAW OF PATENTS
USEFUL INA^ENTIONS
UNITED STATES OF AMERICA.
SECOND EDITION,
WITU MANY ADDITIONS.
BY
GEORGE TICKNOR CURTIS,
COUNSELLOR AT LAW.
BOSTON:
LITTLE, BROWN AND COMPANY
1854.
r
Entered according to Act of Congress, in the year 1854,
By George T. Cuktis,
in the Clerk's Office of the District Court of the District of Massachusetts.
334OIC
KIVEUSIDE, cambkiuge:
ntlNTEU BY H. O. HOUGHTON AND COMI'ANY.
CONTENTS.
PART I .
The Subject-Matter of Patents, and the Parties entitled
THERETO.
CHAPTER I.
Novelty and Utility 25-83
CHAPTER II.
The Subject of Invention or Discovery . . . 84-137
CHAPTER III.
Unity of the Subject-Matter 138-147
CHAPTER IV.
The Persons entitled to take, renew, or extend Patents 148 - 177
PART II.
Proceedings to Obtain, Renew, or Extend a Patent.
CHAPTER I.
The Specification . 181-266
Vi CONTENTS.
CHAPTER II.
Proceedings at the Patent Office . . . • 267-282
1. Caveat for Incomplete Invention.
2. The Petition, Oath, Payment of Fees, etc.
3. Signatures of the Secretary of State and Commissioner.
4. Renewal or Amendment of a Patent.
PART III.
Transmission of the Ini'^.rest in Letters-Patent.
CHAPTER I.
Of Assignments and Licenses 285 - 302
PART IV.
Infringement and the Remedy therefor.
CHAPTER I.
Infringement 305-368
CHAPTER II.
Of the Remedy for an Infringement by Action at Law 369 - 418
CHAPTER III.
Of the Remedy in Equity to Restrain Infringements . 419 - 463
CONTENTS. Vll
CHAPTER IV.
Evidence 464 - 493
r
CHAPTER V.
Questions of Law and Questions of Fact . . . 494 - 512
CHAPTER VI.
Jurisdiction of Congress and the Federal Courts . 513-518
APPENDIX.
OiN THE Subject-Matter OF Letters-Patent for
Inventions ....... 521-61S
Laws of the United States relating to Patents
AND THE Patent Office .... 619 - 662
PREFACE TO THE SECOND EDITION.
A LITTLE more than four years has elapsed since
the first publication of this work, and a Second Edi-
tion is now called for. The English and American
decisions, made since the publication of the First Edi-
tion, have been incorporated with the notes; and such
alterations and additions have been made in the text,
as were necessary to adapt it to the advanced state
of the Patent Law. I have republished, in the Ap-
pendix to this Volume, Mr. Thomas Webster's very
able tract on the Subject-Matter of Patents.
I iivail myself of this opportunity to express my
grateful acknowledgments both to the Bench and the
Bar, for the manner in which this work has been
received, and for the place that has been assigned to
it, among the Treatises on this important branch of
jurisprudence.
Boston, January 1st, 1854.
PREFACE TO THE FIRST EDITION.
The following work, the fruit of careful studies in
a department of jurisprudence of great practical im-
portance, is presented to the Profession, not without
anxiety as to its reception. This branch of the law
is so peculiar, the subjects with which it is con-
cerned are so abstruse, and so much caution is requi-
site in dealing with its principles and in combining
them into a system, that no writer can expect wholly
to satisfy the wants of his readers, who does not
bring to its treatment a force of intellect and a repu-
tation as a jurist, which entitle him to be regarded
in the light of an authority. But it cannot be my
hope, as it is not my desire, to escape criticism.
Looking upon the law as a science of vast practical
consequence to mankind, and desiring to discharge
my humble debt to its Profession, I shall gratefully
receive, from any competent source, any suggestions
of errors or imperfections, in a work designed for
practical use.
Xii PREFACE.
I have endeavored to walk carefully by the light of
adjudged cases ; and, although experience has taught
me that the Patent Law admits of less reduction to
precise rules and axioms than any other branch of
jurisprudence, I have endeavored to indicate the true
uses of the judgments and opinions of the Courts.
The opinions and decisions of judges in patent causes
can rarely be treated strictly as precedents, unless
they concern the construction of a statute. They are
to be regarded as illustrations of the principles of
the law, when applied to a particular state of facts;
and, consequently, a precise rule is rarely to be eli-
minated from them, by separation of the principle
from the facts to which it has been applied, unless
it is certainly one of general or universal application.
Correctly regarded, indeed, it is the office of all adju-
dication to apply the principles of the law, with nice
discrimination, to the ever varying circumstances of
different states of fact, and not to rely upon former
decisions as absolute precedents, where the facts are
not certainly the same. But this is peculiarly and
eminently true, in the administration of the Patent
Law.
Boston, JIat 1st, 1849.
IIN^DEX or CASES CITED.
Note. The cases'cited in this work from "Webster's Patent Cases may be found, in
most instances, in other reports, by consulting this Index.
The references, iinless otherwise indicated, are to tlie sections, and not to the pages.
1
Where cited in this
Names of Cases.
Where reported.
Work.
Alden v. Dewey .
1 Stoiy's R. 336 .
28, 30, 48, 174, 223,
250, 358
Allen I'. Rawson
1 M. G. & Scott, 551 .
49
AUcn r. Blunt .
3 Story's R. 742; 2 Woodb. & M.
121
181 a, 367, 375
Ames V. Howard
1 Sumner, 482 ... .
93, 126, 130, 133, 150,
255, 258, 387, 394
Arkwright v. Nightingale .
Webs. Pat. Cas. 61 ; Dav. P. C. 37
254, 366
Bacon v. Jones .
4 Mylne & Cr. 433 .. .
315, 336, 346
Bainbridge v. Wigley .
Cited Godson on Patents
(p. 253)
Baird v. Neilson . ' .
8 CI. & Fin. 726 .
199
Barker t'. Harris .
Webs. P. C. 126 ; Hokoyd. Pat. 60
49
Barker r. Shaw .
Cited Godson on Patents
(p. 261)
Barrett v. Hall .
1 Mason, 447
93, 94, 95, 96, 109, 111,
112, 113, 122, 130,
133, 140, 142, 143,
219, 245, 374
Baskett v. Cunningham
2 Eden's Ch. R. 137 .. •
339
Bean r. Smallwood .
2 Story's R. 408 .
4, 26, 27, 94
Bedford v. Hunt
1 Mason's R. 302 .
16, 28, 33, 45, 383
Bentley v. Fleming .
1 Car. & Kirw. 587 .. .
304, 306
Bickford v. Skewes .
Webs. Pat. Cas. 218; 1 Q. B. 938
134, 327, 364, 366
Blanchard r. Sprague
2 Story, 164
144, 394, 403, 404
Blanchard r. Sprague
3 Sumner's R. 535
84, 93, 126, 403, 404
Blanchard's Gun-Stock
Factory v. Warner .
1 Blatchford's R. 258 .
118, note
Bloomer v. McQuewan
14 Howard, 539 .
118
Bloxam v. Elsee .
1 Car. & P. 558; Dav. Pat. Cas.
49, 130, 163, (p. 251,)
132
378
Boston Manufacturing
Company v. Fiske .
Boulton r. Bull .
2 Mason, 119
254
2 H. Blackst. 463; Dav. Pat. Cas.
72, 75, 76, 79, 80 a, 81,
162 ^ •
86, 93, 95, 100, (p.
250,) 339 a, 402
Boultonv. Bull(Ch.).
3 Yes. 140
329, 339
Boulton V. Watt .
339 a
Boville r. Moore .
2 :M'ar5h.' R. 211 ; Dav. Pat. Cas.
94, 133, 134, 138, (pp.
361
247, 250, 255, 256,
262,) 221
XIV
INDEX OF CASES CITED.
Names of Cases.
Bowman v. Rostrora
Bowman v. Taylor
Boyd v. Brown .
Boyd V. McAlpin
Bramali v. Hardcastle
Brooks V. Bicknell
Brooks V. Byam .
Brooks V. StoUey
Brown v. Moore .
Brunton v. Hawkes
Bryce v. Don-
Campion V. Benyon .
Carpenter v. Prov. Wash.
Ins. Co. .
Carpenter v. Smith .
Carver v. Braintree Manu-
factm-ing Company
Chanter v. Leese
Collard v. Allison
Cornish r. Keene
Crane v. Price .
Crompton v. Ibbotson
Crossley v. Beverley .
Crossley v. Derby Gas
Light Company
Cutler's Patent, In re
Cutting V. Myers
Davis V. Palmer .
Davoll V. Brown .
Dawson v. Pollen
Derosne v. Fairie
Dilly V. Doig
Dixon V. Moyer .
Dobson v. Campbell
DoUand's Case .
Earle v. Sawyer .
Electric Telegraph Co. v.
Brett
Elliott r. Aston .
Evans v. Eaton .
Evans v. Eaton .
Evans v. Eaton
Where reported.
Where cited in this
Work.
2 Ad. & E. 295 .
2 Ad. & Ellis, 278 .
.3 McLean, 295
3 McLean, 427
Cited Godson on Patents
3 McLean, 250
2 Story's R. 525 .
1 McLean, 523
Cited Godson on Patents
4 B. & Aid. 540; 1 Stark. N. P. C.
3 McLean, 582
4 B. Moore, 71 ; 3 Brod. & B. 5
4 How. 185
Webs. Pat. Cas. 530; 9 Mees. &
Welsh. 300
2 Story, 432
4 Mees. & W. 295 ; 5 Mees. & W.
698
4 Mykie & Craig, 487 .
Webs. Pat. Cas. 509 .
Webs. Pat. Cas. 393; 4 M. & G.
580
Webs. P. C. 83; Dan. & Lloyd. 83
Webs. Pat. Cas. 106 ; 3 Car. & P.
513 ; Mo. & Mai. 283 ; 9 B. & C. 63
1 Webs. Pat. Cas. 119; 1 Euss. &
My. 166
Webs. P. C. 418; 4 My, & Cr. 510
4 Wash. 220
199
199, 350
208
190, 209
(pp. 258, 260)
122, 142, 162, 163, 355
190, 195, 196, 198
200
(p. 255)
11, 95, 163, (pp. 248,
250, 253,) 246
216, 252, 253
2 Brockenbrough's E. 298 .
1 Woodbury & :Minot, 53
2 Washington, 311 . . .
Webs. P. C. 152; 1 Mo. & Rob.
457; 5Tyr. 393; 2 Cr. M. & R.
476
2 Ves. Jr. 486 . . . .
4 Washington, 68 .
1 Sumner, 319 ... .
2 H. Blackst. 470; Dav. Pat. Cas.
172; Webs. P. C. 42 .
4 Mason's R. 1
4 Eng. L. & Eq. E. 344 .
Webs. Pat. Cas. 224 .
Peters's Circ. C. E. 343
3 Wheaton, 454 .
7 Wheaton, 356
81 a, 131, (pp. 242,
248)
206
53, 131, 292
123, 124, 130, 135, 136,
142, 150, 182, 380, \
381
200
329, 331, 337, 338, 344
39, 53, 102, 359, 304
6, 8, 73, 79, 97, 244,
401
159, (p. 246)
131, 162, (p. 245, 257,)
348, 393, 394
346, 348, 353
223
265
21, 123, 124, 131, 134,
136, 223, 244
123, 124, 126, 244, 387,
394
62
9, 158, 161, (p. 251,)
319
30, 131, 133, 134, 189,
255, 272, 283, 373
268
40,93
6,75,122,163,244,251
224
53, 366
94, 245, 285
64, 93, 94, 95, 109, 111,
118, 133, 271, 272,
290, 378, 403, 404
128, 378
INDEX OF CASES CITED.
XV
Names of Cases.
Evans f. Hcttich
Evans r. Jordan .
Evans v. Kreraer
Evans v. Weiss .
Felton r. Greaves
Forsyth r. lliviere
Foster v. Moore .
Fox, ex parte
France r. Fringer
Fulton's Executors v. Myers
Galloway v. Bleaden
Gay r. Coniell .
Gayler r. "Wilder
Gibbs r. Cole .
Gibson v. Brand
Gibson r. Harris
Grant v. Raymond
Gray v. James .
Gray v. Osgood .
Guyon v. Smith .
Halliwell v. Dearman
Hall V. Boot
Hall V. Jervis
Harmer v. Plane
Haworth v. Hardcastle
Hayne v. Maltby
Heath v. Uuwin .
Herbert v. Adams
Hesse r. Stevenson
HiU V. Thompson, (Chan.)
Hill V. Thompson, (Law)
Hitchins v. Stevens .
Hogg I'. Emerson
Hornblower v. Boulton
Hotchkiss r. Greenwood
Househill Company, The,
V. Neilson
Hovey v. Stevens
Howe r. Abbott .
Huddart v. Griflashaw
7 Wheaton, 453 .
9 Cranch, 199
Peters's Cu-c. C. R. 215
2 ^^'ashington, 342
3 Car. & P. 611 .
Webs. P. C. 94; Chit. Prerog. Cr.
182 .
1 Curtis's R. .
1 Ves. & B. 67
Cro. Jac. 44 .
4 Wash. 220 .
Where cited in this
Work
378, 403
118
271, 272
255
(p. 244)
74, 79, 80 a, 230
245 a, 327
97, (p. 250)
268
265
Webs. Pat. Cas. 521 . . . 45, 51, 138, 202, 359,
360
1 Blatchford's R. 506 . . .189
10 How. 477 140, 195, 196
3 P. Will. 255 .... 355
Webs. Pat. Cas. 628; 4 Mann. &
Or. 179
1 Blatchford's R. 168 .
6 Peters's S. C. R. 248 .
1 Peters's Circ. C. R. 376
Peters's Circ. C. R. 394
1 Blatchford's R. 244 .
Webs. Pat. Cas. 401 .
Webs. Pat. Cas. 100 .
Webs. Pat. Cas. 100 .
14 Ves. 130 ; 11 East, 101 ; Dav.
Pat. Cas. 311 ... .
Webs. Pat. Cas. 480; 1 Bmg. N. C.
182; 4 M. & Scott, 720
3 T. R. 438
14 Eng. Law & Eq. R. 202 .
4 ^lason, 15 .
3 Bos. & P. 665 .
Webs. Pat. Cas. 237; 3 Meriv. 626;
J. B. Moore, 433 . . .
Webs. Pat. Cas. 239 ; 8 Taunt.
375
2 Shower, R. 233 .
6 Howard, 437; 11 Howard, 587 .
8 Term R. 95 . . . .
11 Howard, 248 .
\\ebs. Pat. Cas. 673 .
1 Woodbury & ilinot, 290 .
2 Story's R. 190 .
Webs. Pat. Cas. 86 ; Dav. Pat.
Cas. 295
43, 214, 366
119 a
57, 255, 272, 281, 306,
394
78, 92, 144, 156, 222,
250, 263, 2G6
223
250
81 a
227
73, 79, 87
97, 155, (pp. 250, 259,
264,) 327, 329, 339
132, (p. 252,) 248, 383,
391
199, 350
224 a
189, 260
189
73, 78, 79, 134,-141,
(pp. 244, 248,) 322,
324, 327, 329 a, 3G')
a, 343, 345, 346, 355,
383
48, 49, 134, 241, 242,
246
268
80 «, 122, 123, 171,
172, 252, 256, 407
72, 100, 339 a
6, 27 a
35, 36, 44, 143, 149,
251, 254, 369
27, 325, 330, 337, 338,
339
87, 94, 95, 150, 401
27, 85, 133, (p. 246,)
226, 366, 376
XVI
INDEX OF CASES CITED.
Names of Cases.
Where reported.
Isaacs V. Cooper
Jackson v. Pesked
Jones V. Pearce .
Jupe V. Pratt
Kay I'. Marshall .
Keplinger v. De Young
King, The, v. Arkwright
King, The, v. Cutler .
Kuig, The, V. Daniel .
King, The, v. Fussell .
King, The, v. Lister .
King, The, r. Wheeler
4 Washuigton, 359
1 M. & Selw. 234 .
Webs. Pat. Cas. 123; 3 McLean,
583
Webs. Pat. Cas. 144
Where cited in this
Work.
320, 325, 327
268
44, 144, 204, 223, 252
. 74, 78, 80 a, 231
Kneass v. The Schuylkill 4 Washington's R. 9, 106
Bank
Webs. Pat. Cas. 568; 1 Mylne &
Cr 373 . . . . •
10 Wheaton, 358 .
Webs. Pat. Cas. 66 ; Dav. Pat.
Cas. 61
1 Starkie, 354; Webs. P. C. 76
Godson on Pat. 274
Webster's Subject-Matter, 26
Ibid. 26
2 B. & Aid. 349 .
Lamb v. Lewis .
Langdon v. De Groot .
Le Koy v. Tatham
Lewis V. Davis .
Lewis V. Marling
Liardet v. Johnson
Livingston v. Van Ingen
Losh V. Hague .
Lowell r. Lewis .
MacFarland v. Price .
Makepeace v. Jackson
Manton v. Manton
Manton v. Parker
Many v. Jagger .
Martin v. Mott .
McClurg V. Kingsland
Mc^Iurdo V. Smith
Melius V. Silsbee
Minter r. Slower
Minter v. Wells .
Minter v. Williams
Moody V. Fisk .
1 Mason, ....
1 Fame's R. 203 .
14 Howard, 156 .
Webs. P. C. 488; 3 C. & P. 502
10 B. «Sc Cress. 22; 4 C. & P. 57;
5 M. & Ry. 66; Webs. P. C. 490
Webs. Pat. 'Cas. 53 ; Bull. N. P. 76
9 Johns. R. 507 .
Webs. Pat. Cas. 205 .
1 Mason's R. 182 ; 1 Gallis. C. C.
420
1 Stark. 199 ; Webs. P. C. 74
4 Taunt. 770 . . . .
Dav. Pat. Cas. 333
Dav. Pat. Cas. 329; 2 B. Moore,
457
1 Blatchford's Circ. Ct. R. 372 .
12 Wheat. R. 19
1 Howard, 202
7 T. R. 518 .
|4 Mason, 108 .
6 Adol. & Ell. 73i
1 138 .
iWebs. Pat. Cas. 132
Webs. Pat. Cas. 127
2 Mason, ll?. .
Webs. P. C.
13,320,329,338
209
8, 9, 11, 49, 99, 134,
137, 155, 156, 157,
164, (pp. 244, 250,
256, 258,) 366
387
79
7
7
70, 79, 80 a, 100, 101,
125, (pp. 243, 256)
16, 19, 28, 91, 130, 133,
139, 244, 260, 274,
277, 278
366
22, 383
79, 80 a
97, 98, 357
138, 246, 248, (pp. 253,
265,) 254, 383
157, (p. 255)
329
7, 53, 87, 95, 329, 335,
353, 401
2, 16, 28, 123, 124, 130,
131, 154, 155, 222,
250, 251, 252, 280,
367, 380, 383, 395,
402
(p. 258,) 280, 387
49
377
133,248, (pp. 247,251)
16
181 a
57, 58, 59, 60, 92, 118,
306, 308, 309
268, 369
32, 57, 297, 298, 300,
306
(p. 261,) 254
49, 147, 230, 358
144, 212
94, 110, 111, 131, 246,
387
INDEX OF CASES CITED.
XVll
Names of Cases.
Where reported.
Where cited in 1
Work.
Ms
Morgan v. Seaward .
Webs. Pat. Cas. 167 ; 2 M. &
11, 73, 138, 156,
157,
Welsh. 544 . . . .
162, 223, 246,
248,
305, 306, 332,
337,
346, 347, 366,
369,
370, 371
Neilson v. Fothergill .
Neilson v. Harford
Webs. Pat. Cas. 290 .
199, 200, 334, 346
,350
Webs. P. C. 191; 8 M. & W. 806 .
9, 74, 78, 80, 80 a
123,
130, 145, 148,
149,
150, 161, 232,
345,
366, 367, 369,
390,
398, 400
Neilson v. Thompson .
Webs. Pat. Cas. 275 .
327, 328, 333, 334
346
338,
Nesmith v. Calvert .
1 Woodbury & M. 34 . . .
189
Newton v. Grand Junction
Railway Co. .
6 Eng. Law & Eq. R. 557 .
11 Eng. Law & Eq. R. 689 .
245 a
Newton v. Vauchcr .
27 6
Noble f. Wilson .
1 Paige, 164
329
Norway v. Rowe
19 Ves. 146
355
Odiomc r. The Amesbury
Nail Factory .
2 Mason, 28
113
Odiorne v. Wmkley .
2 Gallison, 51 ....
95, 133, 140, 221,
312
Ogle V. Ege
4 Washington, 584 ...
319, 322, 327, 329
,337
Orr r. Badger .
10 Law Reporter, Feb. 1845 .
192, 329, 338, 339
,342
Orr V. Littlefield
1 Woodbury & M. 13 .
192, 320, 325, 327
338, 342, 355
329,
Orr I". Merrill
1 Woodbury & M. 376 .
340, 342
Park r. Little
3 Washington, 196 ...
88, 93, 260
Peacocii r. Peacock .
19 Ves. 49
355
Pennock v. Dialogue .
2 Peters, 1
31, 52, 296, 297,
302, 306
300,
Pennock v. Dialogue .
4 Wash. 538
30, 31, 40, 48, 57,
402
Pennock & Sellers v. Dia-
logue ....
1 Peters, 1
281
Perry v. ,Parker .
1 Woodb. & M. 280 .. .
323
Perry v. Skinner
Law Joum. p. 127 ; Cited Godson
on Pat
(p. 266)
Pettibone v. Derringer
Phila. & Trenton Railroad
4 Washington's R. 218 .
21
14 Peters, 448 ... .
181 a, 278, 283,
284,
Co. I'. Stimpson
358, 361
Pierson v. The Eagle Screw
Company
3 Story's R. 402 .
60, 251, 306, 308
Pitts V. Whitman
2 Story's R. 609 .
93, 122, 150, 190,
260, 266, 269
191,
Poor V. Carlton .
3 Sumner, 70 ....
355
Protheroe v. ilay
Webs. P. C. 415; 5 M. & W. 675 .
197
Prouty V. Draper
1 Story's R. 568 .
93, 94, 95, 150
Prouty V. Ruggles
16 Peters, 336 ... .
94, 95, 150
•
Reed v. Cutter .
1 Story's R. 590 .
33, 40, 43, 114,
312
288,
Roberts r. Anderson .
2 Johns. Ch. R. 202 .. .
329
Rogers v. Rogers
1 Paige, 426
329
Rogers i". Abbott
4 Wash. 514
322
Root V. Ball
4 McLean, 177 ... .
111, 297
Rundell v. Murray
Jacobs, 311
352
XVlll
INDEX OF CASES CITED.
Names of Cases.
Russell V. Barnsley
Russell V. Cowley
Ryan v. Goodwin
Saunders v. Smith
Savory v. Price .
Sawin v. Guild .
Sellers v. Dickinson .
Shaw V. Cooper .
Silsby V. Foote .
Simpson v. Wilson
Smythe v. Smythe
Stearns v. Barrett
Stimpson v. Baltimore R.
Road . . . .
Stimpson v. Westchester R.
R. Co
Stone V. Sprague
Stm-z V. De La Rue .
Sullivan v. Redfield .
Taylor v. Hare .
Tenant's Case .
Thompson v. Hill
Treadwell v. Bladen
Turner v. Winter
Tvler V. Tuel
Where reported.
Webs. Pat. Cas. 472 .
1 Cromp. Mees. & Rose. 864 ; Webs.
Pat. Cas. 459 .
.3 Sumner's R. 514
3 Mylne & Craig, 711
R. &M. 1; Webs. P. C. 83
1 GaUison, 485
6 Eng. Law & Eq. R. 544
7 Peters, S. C. R. 292
14 Howard, 218 .
4 Howard, 709
1 Swanst. 254
1 Mason, 153 .
10 Howard, 329 .
4 Howard, 380
1 Story's R. 270 .
Webs. Pat. Cas. 83; 5
R. 322
Paine's C. C. R. 441
University, Oxford and
Cambridge,?;. Richardson 6 Ves. 689
Russ
Where cited in this
Work.
Ch.
1 N. R. 260 .
Dav. Pat. Cas. 429
3 Meriv. 622 .
4 Washington, 706
1 T. R. 602 ; Webs. Pat
6 Cranch, 324
Cas. 77
Walton V. Bateman
Walton i\ Potter
Ward V. Van Bockelen
Washburn v. Gould .
Watson V. Bladen
Webster v. Lowther .
Westhead v. Keene .
Whitney v. Emmett .
Whittemore v. Cutter .
Williams v. Brodie
Wilson V. Rousseau
339 a, 341
73, 79, 230, 244, 347,
376, 387, 394
2, 24, 56, 104, 126, 134,
304, 306, 366
352
137, 159, (p. 249)
189, 204, 207
245
57, 62, 296, 297, 298,
299, 300, 302, 306
295 a, 396 a
208, 210
355
30, 358
27
181 a
76, 144
81 a, 139, 159, (p. 243,)
322
159
199
48
329
32, 219, 378
29, 134, 137, 139, 157,
(pp. 242, 246, 248,
251, 253, 265,) 242,
280, 364
259
329
Webs. Pat. Cas. 622 .
Webs. Pat. Cas. 585; 3 M. G
4 Scott, N. R. 91
1 Paige, 100 .
3 Story's R. 122 .
4 Washington, 583
Cited Godson on Pat. 232
1 Beav. 309 .
Baldw. 303 .
1 Gallison's R. 429, 478
411;
4 Howard, 646
157
40, 81 a, 124, 202, 220,
225, 235, 239, (p.
305,) 376
329
39, 48, 51, 122, 123,
124, 163, 325, 327
204
223
320
394
3, 23, 75, 93, 95, 96,
122, 133, 140, 142,
203, 207, 213, ^9,
250, 251, 252, 260,
272, 274, 280, 380,
402
(p. 258)
117, 118, 119, 119 a,
184, 193, 259, 261,
S18
INDEX OF CASES CITED.
XIX
Names of Cases.
Wilson V. Sanford
Wilson r. Tindal
Winans r. Boston and Pro-
vidence Railroad
Wood V. Turner .
Wood V. Underbill
Wood V. Zimmer
Woodcock f. Parker .
Wood worth v. Edwards
Woodworth v. Hall .
Woodworth v. Sherman
Woodworth v. Stone .
Woodworth v. Wilson
Wright's Patent .
Wyeth r. Stone .
Where reported.
10 Howard, 99 . . .
Webs. Pat. Gas. 730 .
2 Story's R. 412 .
Webs.' Pat. Cas. 82
5 Howard, 1 .
1 Holt, 50; Webs. P. C,U,n.
1 Gallison's R. 438
3 Woodb. & M. 120
X Woodb. & ]M. 248, 389
3 Stor\''s R. 171 ,
3 Story's R. 749 .
4 Howard, 712
Webs. Pat. Cas. 736
1 Story's R. 273 .
Where cited in this
Work.
118, 407 a
339 a, 355
4, 131, 387
157
160
(p. 255,) 300,804,305,
I 315
'3, 43, 133, 140, 312
181 a
177, 178,183,185,192,
206, 325, 327, 337,
349, 403
117, 193, 329, 358
181 a, 183, 192, 193,
I 320, 321
196, 197, 260, 319]
36
2, 25, 53, 54, 57, 76,
111, 126, 130, 131,
133, 145, 169, 191,
194, 221, 293, 296,
304, 306, 310, 317,
351, 352, 394
ERRATUM.
Pp. 37, 62, 53, 55, 75, 90, for Mass. read Mas.
PRELIMINARY OBSERVATIONS
Writers on the Law of Patents for useful inventions
have often introduced their discussions of this branch of
the law, by tracing the history of monopolies in the
Law of England. This example has not been followed
in the present work, because it is believed that it tends
to encourage incorrect conceptions of the legal nature of
a patent privilege. A patent for a useful invention is
not, under our law, or the law of England, a grant of a
monopoly, in the sense of the old common law. It is
the grant by the government, to the author of a new
and useful invention, of the exclusive right, for a term of
years, of practising that invention. The consideration,
for which this grant is made by the public, is, the benefit
to society resulting from the invention; which benefit
flows from the inventor to the public in two forms; first ,
by the immediate practice of the invention, under the
patent ; and secondlf/, by the practice of the invention, or
the opportunity to practice it, which becomes the pro-
perty of the public, on the expiration of the patent. As
the exercise of the invention is wholly within the control
of him who has made it, who may confine his secret
entirely within his own breast, it is apparent that his
1
2 PRELIMINARY OBSERVATIONS.
consent to make it known and available to others, and
finally to surrender it to the public, becomes a valuable
consideration, for which, upon the principles of natural
justice, he is entitled to receive compensation, in some
form, from the public to whom that consideration passes.
Inventors, in this respect, stand upon the same broad
ground "with authors. Both of these classes of per-
sons have created something, intellectual in its nature,
the knowledge of which it is desirable to others to pos-
sess. Both of them have, at first, the complete right of
disposition over that which they have created ; and when
they part with the exclusive possession of this know-
ledge, and confer upon others the opportunity of reaping
the benefit which it confers, they manifestly consent to
something for which they are entitled to receive an
equivalent.
Whether we regard the knowledge, remaining for the
present in the exclusive control of him whose intellectual
production it is, as property, or as a possession of ideas,
to which some other term might be more appropriate, it
is still a possession, of which the owner cannot, by any
rule of natural justice, be deprived, without liis consent.
In this view, it may, as it seems to me, justly be termed
property ; for although in political economy, and in com-
mon speech, material possessions, or the rights growing
out of them, are the objects generally included under
that term, yet no one will question that ideas constitute,
in ethical contemplation, a portion of a man's possessions
entirely under his own control ; and in the case of use-
ful inventions, or of written thought, there is to be added
to the power of control the further economical fact, that
other men will part with valuable possessions of all kinds,
in order to obtain that invention or writing in exchange.
PRELIMINARY OBSERVATIONS. 3
For these, and for otlier reasons, which I have endeavored
more fully to develop elsewhere, in relation to the rights
of authors, I do not hesitate to affirm, that in natural jus-
tice — the ethics of jurisprudence, by which civil rights
are to be examined, apart from all positive law, but on
which positive law is usually founded — the intellectual
conception of an inventor, or a writer, constitutes a valu-
able possession, capable of being appreciated as a con-
sideration, when it passes, by his voluntary grant, into
the possession of another. If, by the same voluntary
grant, this possession is bestowed upon the public, the
logical justice of compensation, in some form, will appear,
at once, by supposing the benefit to have been conferred
exclusively upon any one of the mass of individuals
who form in the aggregate the moral entity termed the
public.
Let us suppose that A., by the exertion of his inven-
tive fixculties, has ascertained, that by placing matter in
certain positions to be operated upon by the forces of
nature, a result will be produced, in the shape of an
instrument, wholly unknown before, and capable of being
usefully applied to the wants of mankind. Let us sup-
pose that B., seeing the result, but wholly ignorant oj
the process by which it may be attained, desires to pos-
sess that instrument. Common gratitude would prompt
him to return something valuable for it, if it were given
to him ; common policy would lead him to offer some-
thing for it, if it were not freely given; and common
justice requires that he should not take it, without an
equivalent. How does it alter the case, if, instead of a
single specimen of the instrument, we suppose A. to have
retained in his recollection the process by which copies of
that instrument may be indefinitely multiplied, and that
4 PRELIMINARY OBSERVATIONS.
it is the secret process of making the thing, the intel-
lectual conception and knowledge, which B. desires to
possess ? If he obtains it, he can make the thing for his
own use, or for the use of others, and by so doing can
acquire valuable possessions in exchange ; all of which
A. could do exclusively, by retaining his own secret.
But if he imparts that secret to B., he is surely entitled
to receive for it some reward or remuneration.
This secret the inventor undertakes to impart to the
public, when he enters into the compact, which the grant
of a patent privilege embraces. In that compact, he
promises, after the lapse of a certain period, to surrender
to the public completely the right of practising his inven-
tion ; and, as a guaranty against his concealment of the
process by which it is to be practised, and to prevent the
loss of this knowledge, he is required to deposit in the
archives of the government a full and exact description
in writing of the whole process, so framed, that others
can practise the invention from the description itself
The public, on the other hand, through the agency of the
government, in consideration of this undertaking of the
inventor, grants and secures to him the exclusive right
of practising his invention for a term of years.
In all this, a patent-right, under the modern law of
England and America, differs essentially from one of the
old English Monopolies. In those grants of the crown,
the subject-matter of the exclusive privilege was quite
as often a commodity of which the public were and long
had been in possession, as it was any thing invented,
discovered, or even imported by the patentee.
Nothing passed, in such cases, from the patentee to
the public, in the nature of a consideration for the enor-
mous privilege conferred upon him ; but the public were
PRELIMINARY OBSERVATIONS.
robbed of something already belonging to them, namely,
the right to make or deal in a particular commodity, for
the benefit of the favored grantee of the crown. So broad
is the distinction between these cases and that of the
meritorious inventor or importer of something new and
useful, that when Parliament, in the 21 James L, taking
encouragement from the courts of law, prohibited the
gi'anting of exclusive privileges in trade, by the Statute
of Monopolies, they introduced an exception in favor of
" letters-patent and grants of privilege for the term of
one and twenty years or under, heretofore made, of the
sole working or making of any manner of new manufac-
ture, witliin 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, so they be not contrary to law, nor mischievous to
the state, by raising the prices of commodities at home,
or hurt to trade, or generally inconvenient," &c.
Upon this exception, the law of England, concerning
Patents for Useful Inventions, stands to this day.
The modern doctrine, in England, and undoubtedly
the doctrine of our law, is, that in the grant of a patent-
right, a contract, or, as it has been said, a bargain, takes
place, between the public and the patentee. As far as
the old cases on the subject of monopolies furnish, like
other cases of grants by the crown, rules and analogies
for the construction of this species of grant, so far the
history of monopolies has a bearing upon this branch of
jurisprudence. But it should always be remembered
that in the grant of a patent privilege, as now under-
stood, a contract takes place between the public and the
patentee, to be supported upon the ground of mutual
considerations, and to be construed, in all its essential
6 PRELIMINARY OBSERVATIONS.
features of a bargain, like other contracts to whidi there
are two parties, each having rights and interests involved
in its stipulations.
It is necessary also to have clear and correct notions
of the true scope of a patent-right, because its nature
and character will show whether there is any close
analogy between such privileges and those to which the
term monopoly is correctly applied. In this connection,
therefore, I shall attempt a brief general description of
the subject of protection, in patent-rights ; without, how-
ever, designing to lay down definitions, or to draw exact
lines, within, or without which controverted cases may
fall ; but solely with the purpose of stating certain ge-
neral principles and truths, the application and develop-
ment of which may be found to assist, in particular
cases, the solution of the question, whether a particular
invention or discovery is by law a patentable subject.
In this inquiry it is necessary to commence with the
process of exclusion ; for although, in their widest ac-
ceptation, the terms invention and discovery include the
whole vast variety of objects on which the human intel-
lect may be exercised, so that in poetry, in painting,
in music, in astronomy, in metaphysics, and in every
department of human thought, men constantly invent
or discover, in the highest and the strictest sense, their
inventions and discoveries in these departments are not
the subjects of the patent law. Another branch of juris-
prudence, of a kindred nature, aims at the protection and
establishment of property in literary productions, and in
some of those which fall within the province of the fine
arts. The patent law relates to a great and comprehen-
sive class of discoveries and inventions of some new and
useful effect or result in matter, not referable to the
PRELIMINARY OBSERVATIONS.
department of the fine arts. The matter of which our
globe is composed, is the material upon which the creative
and inventive faculties of man are exercised, in the pro-
duction of whatever ministers to his convenience or his
wants. Over the existence of matter itself, he has no
control. lie can neither create nor destroy a single
atom of it ; he can only change its form, by placing its
particles in new relations, which may cause it to appear
as a solid, a fluid, or a gas. But under whatever form it
exists, the same matter, in quantity, that was originally
created, exists now, and, so far as we now know, will
forever continue to exist.
The direct control of man over matter consists, there-
fore, in placing its particles in new relations. This is all
that is actually done, or that can be done — namely, to
cause the particles of matter existing, in the universe, to
change their former places, by moving them, by muscu-
lar power, or some other force. But as soon as they are
brought into new relations, it is at once perceived that
there are vast latent forces in nature, which come to the
aid of man, and enable him to produce eifects and results
of a wholly new character, far beyond the mere fact of
placing the particles in new positions. He moves certain
particles of matter into a new juxtaposition, and the
chemical agencies and affinities called into action by this
new contact, produce a substance possessed of new pro-
perties and powers, to which has been given the name of
gunpowder. He takes a stalk of flax from the ground,
splits it into a great number of filaments, twists them
together, and laying numbers of the threads thus formed
across each other, forms a cloth, which is held together
by the tenacity or force of cohesion in the particles,
which nature brings to his aid. He moves into new posi-
8 PRELIMINARY OBSERVATIONS.
tions and relations certain particles of wood and iron, in
various forms, and produces a complicated machine, by
which he is able to accomplish a certain purpose, only
because the properties of cohesion and the force of gravi-
tation cause it to adhere together and enable the different
parts to operate upon each other and to transmit the
forces applied to them, according to the laws of motion.
It is evident, therefore, that the whole of the act of inven-
tion, in the department of useful arts, embraces more
than the new arrangement of particles of matter in new
relations. The purpose of such new arrangements is to
produce some new effect or result, by calling into activity
some latent law, or force, or property, by means of which
in a new application, the new effect or result may be
accomplished. In every form in which matter is used, in
every production of the ingenuity of man, he relies upon
the laws of nature and the properties of matter, and
seeks for new effects and results through their agency
and aid. Merely inert matter alone is not the sole mate-
rial with which he works. Nature supplies powers, and
forces, and active properties, as well as the particles of
matter, and these powers, forces, and properties are con-
stantly the subjects of study, inquiry, and experiment,
with a view to the production of some new effect or
result in matter.
Any definition or description, therefore, of the act of
invention, which excludes the application of the natural
law, or power, or property of matter, on which the inventor
has relied for the production of a new effect, and the
object of such application, and confines it to the precise
arrangement of the particles of matter which he may
have brought together, must be erroneous. Let us sup-
pose the invention, for the first time, of a steam-engine,
PRELIMINARY OBSERVATIONS. 9
in one of its simplest forms, the use of steam as a mo-
tive power having never been discovered before. Besides
all the other powers of nature, of which the inventor
avails himself almost without thought, by which the dif-
ferent parts of his machine are held together and enabled
to transmit the forces applied to them, he has discovered
and purposely applied the expansive power of steam, as
the means of generating a force that sets his machine in
motion. All that he actually does with the matter in
which this expansive power resides, is to turn certain
particles of matter into certain particles of vapor, and to
bring that vapor in contact witli an obstructing mass of
matter, to wdiich it communicates motion, by pushing it
from its place. But the invention consists in observing
and applying this natural power, the expansive force of
steam, to produce the effect or result of moving the
obstructing mass of matter from the place where it was
at rest. It would be singularly incorrect and illogical to
say, that a man who should take a certain other quantity
of matter, and convert it into a certain other quantity of
steam, and bring that steam in contact with a certain
other obstructing mass of wood or iron, for the purpose
of moving it, would not produce the same effect by the
same means, as the person who first discovered and
applied the expansive power of steam to move a piece
of wood or iron.
Again, let us take the case of an improvement in the
art of manufacturing iron, which consisted in the discovery
that a blast of air introduced into a smelting furnace in
a heated state, produces an entirely different effect on
the iron manufactured from the ore, to that produced by
blowing the furnace with cold air. What the inventor
did, in this case, was, to introduce a certain amount of
2
10 PRELIMINARY OBSERVATIONS.
caloric into the blast of air, on its passage from the blow-
ing apparatus into the furnace, thereby creating a blast
of a new character, productive of a new effect ; and any
other person who should introduce caloric into a certain
other quantity of atmospheric air, and use that air, so
heated, to blow a smelting furnace, would do precisely
the same thing. The invention consisted in the discov-
ery and application of the law or fact, that heated air
produces a different effect from cold air, in a particular
art, and in thereby accomplishing a new result in that art.
In these and in all other cases, there is a particular
arrangement of matter, which consists in the new rela-
tions and positions in which its particles are placed. But
beyond this, there is also the effect or result, produced
by the action of the forces of nature, which are for the
first time developed and applied, by the new arrangement
of the matter in which they reside. The use and adapta-
tion of these forces is the direct purpose of the inventor ;
it is as new as the novel arrangement in the particles of
matter ; and it is far more important. In fact, it is the
essence and substance of the invention ; for if no new
effect or result, through the operation of the forces of
nature, followed the act of placing portions of matter
in new positions, inventions would consist solely in new
arrangements of particles of inert matter, productive of
no new consequences beyond the fact of such new posi-
tion of the particles.
However inadequate, therefore, the term may be, to
express what it is used to convey, it is obvious that there
is a characteristic, an essence, or purpose of every inven-
tion, which, in our law, has been termed by jurists its
principle ; and that this can ordinarily be perceived and
apprehended by the mind, in cases where the purpose
PRELIMINARY OBSERVATIONS. 11
and object of the invention does not begin and end in
form alone, only by observing the powers or qualities of
matter, or the laws of physics, developed and put in
action by that arrangement of matter, and the effect or
result produced by their application. Even in cases
where the subject of the invention consists in form alone,
the principle or characteristic of the invention is the
result produced by the aid and through the action of the
qualities of matter. As, for instance, to take the sim-
plest case, if I make a round ball, for the first time, of
clay, or stone, or wood, I do so by putting the particles
of matter in those relations and positions, in which,
through the attraction of cohesion which holds them
together, the result of spherical form will be produced :
and this result, so produced, is the essence or principle of
the invention. In the case of inventions which are inde-
pendent of form, we arrive at the principle of the inven-
tion in the same w^ay. As, if I, for the first time, direct
a column of steam against a piece of wood or iron, for
the purpose of producing motion, the characteristic or
principle of my invention consists in the use and appli-
cation of the expansive force of steam and the effect of
motion thereby produced ; and these remain logically the
same, whether the form and size of the wood or iron, and
the form or size of the column of steam are the same as
mine, or dillerent.
It is apparent, then, that the mere novel arrangement
of matter, irrespective of the purpose and effect accom-
plished by such arrangement through the agency of
natural forces or laws, or the properties of matter, is not
the whole of invention ; but that the purpose, effect, or
result, and the application of the law, force, or property
by means of which it is produced, are embraced in the
12 PRELIMINARY OBSERVATIONS.
complex idea of invention, and give tlie subject of the
invention its peculiar character or essence. And if this
is true it is easy — and correct as it is easy — to
advance to the position that the discovery and applica-
tion of a new force or law of nature, as a means of
producing an effect or result in matter never before
produced, may, in some cases be the subject of a patent-
able invention. When it has been laid down that a
" principle " — meaning by this use of the term, a law of
nature, or a general property of matter, or rule of abstract
science — cannot be the subject of a patent, the doctrine,
rightly understood, asserts only that a law, property, or
rule cannot, in the abstract, be appropriated by any man ;
but if an inventor or discoverer for the first time pro-
duces an effect or result, practically, by the application
of a law, he may so far appropriate that law, as to be
entitled to say, that whoever applies the same law to pro-
duce the same effect or result, however the means, appa-
ratus, forms, or arrangements of matter may be varied,
practises or makes use of his invention, unless the varia-
tion of means, apparatus, method, form, or arrangement
of matter,. introduces some new law, or creates some new
charactferistic, which produces or constitutes a substan-
tially different result. For, in all such cases, the pecu-
liarity of the invention consists in the effect produced
by the application of the natural law, as an agent ; and
this effect is not changed by the use of different vehicles,
for the action of the agent provided there is still the
same agent, operating substantially in the same way, to
produce substantially the same effect or result.
This may be illustrated by several inventions or dis-
coveries, for which patents have been granted and which
have been the subjects of litigation. One of the most
PRELIMINARY OBSERVATIONS. 13
striking of these cases is that akeady mentioned, of the
application of a hut air bhist to the production of a par-
ticular eftect in the manufacture of iron. It is very easy
to say, in general terms, that no man can appropriate to
himself the use of caloric, which is a substance, or ele-
ment, or force in nature, bountifully supplied, as the
common property of mankind. But if any man has dis-
covered that the use of caloric in a particular manner,
never before observed, will, as a universal fact, produce a
particular effect, of a new character, upon matter, what
reason can exist why he should not appropriate to him--
self the production of that effect by the use of that par-
ticular agent ? His appropriation, in such a case, would
embrace strictly what he has invented. It may be more
or less meritorious ; it may have been more or less diffi-
cult or easy of discovery ; it is still his invention, and
any one else who does the same thing after the inventor,
however he may vavy the particular means or apparatus,
practises that invention which the inventor was the first
to discover and announce to the world. If the Patent
Law were to say, in this case, that the invention or dis-
covery" could not be appropriated by him who had made
it, because caloric is the common property of all men, it
would be obliged, in consistency, to say that a certain
arrangement of wood and iron, constituting a new machine,
could not be appropriated by the inventor, because co-
hesion, gravitation, and the laws of motion, which are all
applied by the inventor to the accomplishing a certain
effect, are the common property of every man. But the
patent law does not come to such determinations. It
proceeds upon the truth, that while the properties of
matter, the forces or elements of nature are common
property, any man who applies them to the production
14 PRELIMINARY OBSERVATIONS.
of a new and useful effect in matter, may rightfully claim
to have been the inventor of that application to the pur-
pose of that effect. The effect itself is what is commonly
regarded as the patentable subject ; but as that particular
effect must always be produced by the application of the
same properties of matter, or the same forces or elements
in nature, it is correct to say that the appropriation right-
fully includes their application to the production of the
effect, and that to this extent they may be appropriated.
Inventions which consist in the application of the
known qualities of substances, extend the appropriation
of the inventor to those qualities in the same manner and
in the same sense. For instance, in the case of Walton's
improvement in the manufacture of cards for carding
wool, &c., which consisted in giving elasticity and flexi-
bility to the backs of the cards, by making the sheet on
the back, in which the teeth are inserted, of India rubber,
instead of leather. The qualities of elasticity and flexi-
bility in India rubber were common property ; but this
did not prevent the inventor from sustaining a patent,
which was held to cover the general ground of giving
to the backs of cards elasticity and flexibility derived
from India rubber, by whatever form of application of
the India rubber the effect might be produced.'
In the same manner, inventions which consist in the
application of a well known law of physical science,
involve and admit of the appropriation of that law in
its application to the production of the particular effect,
however the machinery or apparatus may be varied.
There is a known law of physics, that the evaporation of
a liquid is promoted by a current of air, and this law is
1 See post, p. 305.
PRELIMINARY OBSERVATIONS. 15
common property. An invention of certain improve-
ments in evaporating sugar consisted in applying this
law, by forcing atmospheric air through the liquid syrup,
by means of pipes, the ends of which were carried down
nearly to the bottom of the vessel containing the solu-
tion ; and it is obvious that any person who should apply
the same law to the same purpose, though by a different
apparatus, would practise the same invention.^ Although,
therefore, it is not safe, in reasoning upon the Patent Law,
to lay down general rules, of an abstract character, with
the purpose of describing what every inventor appropri-
ates to himself, without regard to the particular circum-
stances of the invention, yet it is, on the other hand,
equally unsafe to assume, because the properties of mat-
ter, or the laws of physics, or the forces of nature, are
common property, that no inventor can establish a claim
of a general character, irrespective of particular methods
or forms of matter, to the application of such properties,
laws, or forces in the production of a certain effect
It is, in truth, wholly incorrect to say that the inventor,
in such cases, because his patent is held to embrace such
a general claim, monopolizes the law, property, or quality
of matter which he has applied by a particular means to
the accomplishment of a certain end. His patent leaves
the law, property, or quality of matter, precisely where it
found it, as common property, to be used by any one, in
the production of a new end, by a new adaptation, of a
different character. It appropriates the law, property, or
quality of matter, only so flir as it is involved in the sub-
ject with which, the means by which, and the end for
which the inventor has applied it ; and this application
1 Post, p. 307.
16 PRELIMINARY OBSERVATIONS.
constitutes the essence and substance of the invention, in
all cases, and is in reality what the patentee has invented.
He cannot be deprived of it, without violating the prin-
ciples on which all property in invention rests, and deny-
ing the whole policy of the Patent Law. The test which
marks the extent and nature of his just appropriation is
the same that is applicable to every invention.
This test may be stated thus ) that the truth, law, pro-
perty, or quality of matter, which, by reason of its appli-
cation, enters into the essence of an invention, may be
appropriated, to the extent of every application, which,
according to the principles of law, and the rules of logic,
is to be deemed piracy of the original invention.
One of the most well settled as well as soundest doc-
trines of the Patent Law, is, that where form, arrange-
ment of matter, proportion, method of construction, or
apparatus employed, are not of the essence of the inven-
tion, any changes introduced in them, which do not effect
a change in the characteristic, or purpose of the inven-
tion, are changes in immaterial circumstances. When
the patent is a patent for form, or particular arrangement,
or, for the apparatus devised to accomplish a particular
effect, changes in these respects will be changes in the
subject-matter of the invention ; but in cases where the
invention has a characteristic or an aggregate of cha-
racteristics, independent - of particular form, method,
arrangement, or apparatus, changes in these things
amount only to the substitution of one equivalent for
another, unless they cause a change in the character-
istic, essence, or, as it is commonly called, the principle
of the invention. This is very clearly seen in the case
of machinery. The characteristic, or principle of the
invention, consists in producing a certain effect by the
PRELIMINAKY OBSERVATIONS. 17
application of motion, through a form of apparatus adapted
to that result. But if the same effect of the combined
operation of the different parts of the mechanism can be
produced by substituting a different contrivance, which
does not change the characteristic of the machine, but is
a mere equivalent for the part for which it is substituted,
such a substitution is only a different mode of practising
the same invention.
In this sense, all inventions are independent of form,
except those whose entire essence, purpose, and charac-
teristics begin and end in form alone ; as would be the
case with the manufacture of a sphere, or a cube, for the
first time ; and as is the case with all manufactures, the
utility and advantage and proposed object of which
depend on form. But where there is a purpose that
does not begin and end in form alone, where the form or
arrangement of matter is but the means to accomplish a
result of a character which remains the same, through a
certain range of variations of those means, the invention
is independent of form and arrangement, to this extent,
that it embraces every application of means wMch accom-
plishes the result without changing its nature and cha-
racter. In other words, it may be stated, as a general
proposition, that in the characteristic, or principle of an in-
vention, are embraced the truth, law, property, or quality
of matter, which is applied to the production of a result,
and the result of such application ; and that, by reason
of such application, the truth, law, property, or quality of
matter is appropriated, to the extent of all other appli-
cations which a jury, under the guidance of the law,
shall consider as a piracy of the former.
In coming to this result, the Patent Law establishes no
monopoly beyond the fair fruits of actual invention. It
3
18 PRELIMINARY OBSERVATIONS.
protects the real inventor in the enjoyment of what he
was the first to produce ; and it recognizes, as substantive
inventions, all changes which may be produced in the
same line of experiment, or in the same department of
labor, which introduce new characteristics, new results, or
new advantages, not embraced by the former invention.
As long as the Patent Law exists at all, to afford protec-
tion to the labors of ingenious men, it must proceed upon
this fundamental principle. It is now too late in the
history of civilization, to question the policy of this pro-
tection, which forms a prominent feature in the domestic
polity of every nation which has reached any consider-
able stage of progress in the arts of civilized life.
It will be seen, in the following pages, how far these
views have prevailed in the administration of the Patent
Law, in England and America, and to what extent they
have been developed, in particular cases. They have
led, in the construction of patents in England, to a some-
what different spirit from that which formerly animated
the courts of law; for formerly, the judges exercised
their ingenuity to defeat every patent that came before
them, if it could by possibility be defeated. This was
done upon the notion, that a patent is the grant of a
privilege against common right ; and hence some judges
were in the habit of saying that they were " not favorers
of patents." But mthin the last twenty years, a differ-
ent view has been adopted ; the more just and liberal
doctrine has been acted upon, that public policy requires
the encouragement of the inventive powers of ingenious
men, and that this policy is supported by every consider-
ation of justice. The consequence has been, that the
Patent Law has made greater advances, in England,
within the last twenty years, towards a consistent and
PRELIMINARY OBSERVATIONS. 19
admirable systemof justice, than it has ever made before
during the whole period that has elapsed since the enact-
ment of the statute of Monopolies.
In America, the more liberal policy has always pre-
vailed, from the time when patent-rights came under the
protection of the General Government ; and the rule has
been often laid down by the courts of the United States
Avith a good deal of strength — as if in obedience to the
spirit of the Constitution — that patents ought to be con-
strued liberally. Perhaps the general language which
has thus been employed by judges, would lead to the
conclusion, that the leaning of the courts is, systemati-
cally, in favor of the patentee and against the public ;
but tliis tendency has not been exhibited so strongly, in
practice, as to derange the administration of the law.
The truth is, a patent should be construed as, what it
really is in stibstance, namely, a contract or bargain
between the patentee and the public, upon those points
which involve the rights and interests of either party.
These points relate to the extent of the claim, and to the
intelligibility of the description for the purposes of prac-
tice. The first is universally a question for the court;
the last is generally a question for the jury, under the
direction of the court. As to the first question — the
extent of the claim presents at once the relations between
the patentee and the public ; for it involves, among other
things, the inquiry, whether the patentee has claimed any
thing beyond Avhat w\as really his own invention. If, in
representing himself as the inventor of the thing for
which he has asked and received a patent, the inventor
has included in his claim any thing that existed before, he
has made a representation untrue in point of fact ; and
whether he has made this representation intentionally or
20 PRELIMINARY OBSERVATIONS.
Tinintentionally, the grant of the patent proceeds upon it,
and if it is not true, the grant is not supported by an ex-
isting consideration, such as the inventor has represented
it to be. In determining this question, whether the pa-
tentee has really included in his claim something which
he did not invent, two things are to be ascertained ; first,
whether he makes use of any thing not new ; and second,
whether that thing, according to the fair import of his
language, is represented to be a part of the invention
which he claims to have made. The fact of whether he
makes use of any thing not new, is a question depending
upon evidence, if it is not manifest on the face of the
description. It is upon the second branch of the inquiry,
whether the old thing is really included in the claim of
invention, that the true principles of construction have to
be applied. Recollecting, on the one hand, that if the
public have been misled, the patent oughi not to stand,
because of the false representation ; and on the other
hand, that a construction, which will destroy the patent,
ought not to be adopted lightly, it would seem to be the
true rule, to construe the patent fairly, and so as to arrive
at the just import of the language in which the claim is
set forth. But if, after applying this rule, the question
remains doubtful whether the claim is not broader than
the invention, then the rule should be adopted in favor
of the patent, that the patentee is to be presumed to have
intended to claim no more than he has actually invented.
Every patentee is presumed to know the law, and to
know that if he includes in his claim something which he
has not invented, his claim is void. Such a claim is a
kind of fraud upon the public, with whom the applicant
offers to enter into a contract, when he asks for his
patent ; and fraud is never to be presumed, but is always
PRELIMINARY OBSERVATIONS. 21
to be proved. The rule, therefore, which presumes, in
doubtful cases, that the patentee intended to claim no
more than his actual invention, is founded in a maxim of
general application to contracts ; and it will be seen, in
practice, that it has no tendency to support patents which
ought not to be supported, or to encourage loose and
sweeping claims. In all cases which are not doubtful, —
where it is manifest that the claim admits of no construc-
tion but that which makes it too comprehensive to be
valid, — this rule will have no application. The impo-
sition attempted will be apparent, and the fraud — so far
as it is a fraud — will not require to be presumed, but
will stand proved.
This rule, although not distinctly announced, by any
of our courts, has much to support it, in several author-
ities. Judges would seem to have had a rule of this
kind in view, when they have construed patents under
the guidance of the maxim, id res magis valeat, quani
pereat. The use of this maxim, which has often furnished
the spirit of construction in particular cases, implies that
the claim is to be supported, if it can be done without a
violation of principle. But the rule has been distinctly
applied in England, by the Court of Common Pleas, that
the patentee is not to be presumed to have intended to
claim things which he must have known to be in com-
mon use, although in describing his invention, he has not
expressly excluded them from the claim. There are also
cases, in this country, where it has been held not to be
necessary to use words of exclusion, in reference to
details, where it appears from the whole description of
the invention that the new is capable of being distin-
guished from the old.
The same rule, in cases of doubt, should be apj)lied to
22 PRELIMINARY OBSERVATIONS.
the construction, where the question is, whether the pa-
tentee has claimed as much as he has invented ; that is
to say, the specification should he so construed as to
make the claim coextensive with the actual invention, if
this can he done consistently with principle.
But heyond this rule, it is not necessary or wise to go,
in the construction of patents. By giving the patentee
the benefit of this presumption, in cases of doubt, the
doubt will be removed, and the patent will remain good
for the real invention. But where there is no room for
doubt, and no occasion for the application of the rule, but
the claim is manifestly broader or narrower than the real
invention, there can be no hesitation about the judgment
to be pronounced, especially since the provisions of our
law, by which a patent may remain valid p^o tanto, after
the real invention of the party has been judicially ascer-
tained.
PART I.
THE SUBJECT-MATTER OF PATENTS,
AND THE
PARTIES ENTITLED THERETO.
PART I.
THE SUBJECT-MATTER OF PATENTS, AND THE PAR-
TIES ENTITLED THERETO.
CHAPTER I.
NOVELTY AND UTILITY.
§ 1. The Patent Act now in force in this country requires
that the subject of every patent should be " new and useful,"
whether it be an art, machine, manufacture, or composition of
matter, or an improvement on any of these things.^ The
inquiry that meets us on the threshold is, what constitutes
novelty, and what constitutes utility, in the sense of the statute?
§ 2. It is one of the first principles of patent law, that a
patent cannot be obtained for a mere philosophical or abstract
theory, be the subject what it may : it can only be for theory
reduced to practice. If, therefore, the subject of the patent
be an art, it must be an art actually put in practice and un-
known before ; — if it be a machine, it must be substantially
new in its structure and mode of operation, and not merely
changed in form or in the proportion of its parts r^ — if it be
a manufacture, or composition of matter, it must be something
1 Act of July 4, 1836, c. 357, § 6.
2 Lowell V. Lewis, 1 Mason's K. 182, 187; Wyeth v. Stone, 1 Story's R.
273, 279.
4
26 LAW OF PATENTS.
actually made and substantially different from any thing the
making of which was before known.^
§ 3. In machinery, it is not necessary, in order to defeat a
patent, that a machine should have existed in every respect
similar to that patented ; for a mere change of former propor-
tions will not support a patent. If a patent is claimed for a
whole machine, it must in substance be a new machine ; that
is, it must be a new mode, method, or application of mechan-
ism, to produce some new effect, or to produce an old effect
in a new way.^ In cases of difficulty, where the machinery
is complicated, and many of the elements employed are powers
and instruments of motion long known, the test, which is to
determine the boundaries between what was known and used
before, and what is new, is, to observe what is new in the
mode of operation. If the principles of a machine, that is,
the peculiar device or manner of producing the given effect,
be new, although the effect itself be old, a patent may be
claimed for the machine.^
§ 4. On the other hand, the mere purpose, or effect of a
machine, however novel, can furnish no ground for a valid
patent, unless the machine itself, the instrument by which the
purpose is effected, is substantially new. The application of
what is old to a new purpose is not patentable.'*
§ 5. It is necessary, however, to consider somewhat in detail
what amount of invention is essential to support a patent.
1 Kyan v. Goodwin, 3 Sumner's K. 518.
2 Woodcock V. Parker, 1 Gallison's R. 438, 440 ; Whltemore v. Cutter,
Ibid. 480. If' new eiFects are produced by an old machine in its unaltered
state, no patent can be legally supported, for it is a patent for a legal effect
only. Ibid.
3 ^Vhitemore v. Cutter, 1 Gallis. 480, 481.
4 Winans v. Boston and Providence Railroad, 2 Story's R. 412 ; Bean v.
Smallwood, Ibid. 408,411.
NOVELTY AND UTILITY. 27
§ 6. It is often laid down, that provided the invention is
substantially new, it is of no consequence whether a great or
small amount of thought, ingenuity, skill, labor, or experiment
has been expended, or whether it was discovered by mere
accident.! Still it is sometimes necessary to ascertain what
1 In Crane v. Price, Webster's Pat. Cas. 411, Sir N. C. Tindall, C. J., said :
" But in point of law, the labor of tliouglit or experiment, and the expendi-
ture of money, are not the essential grounds of consideration on -which the
question, whether the invention is or is not the subject-matter of a patent
ought to depend. For if the invention be new and useful to the public, it is
not material whether it be the result of long experiment and profound search,
or whether by some sudden and lucky thought, or mere accidental discoveiy."
So also in Earle v. Sawyer, 4 Mas. 6, Mr. Justice Story said: " The thing
to be patented is not a mere elementary principle, or intellectual discovery,
but a principle put in practice and applied to some art, machine, manufac-
ture, or composition of matter. It must be new, and not known or used before
the application ; that is, the party must have found out, created, or constructed
some art, machine, &c., or improvement on some art, machine, &c., which
had not been previously found out, created, or constructed by any other per-
son. It is of no consequence whether the thing be simple or complicated ;
whether it be by accident, or by long, laborious thought, or by an instan-
taneous flash of the mind that it is first done. The law looks to the fact, and
not to the process by which it is accomplished. It gives the first inventor or;
discoverer of the thing the exclusive right, and asks nothing as to the mode
or extent of the application of his genius to conceive or execute it. It must
also be useful, that is, it must not be noxious or mischievous, but capable of
being applied to good purposes ; and perhaps it may also be a just interpre-
tation of the law, that it meant to exclude things absolutely frivolous and
foolish. But the degree of positive utility, is less important, in the eye of
the law, than some other things, though in regard to the inventor, as a mea-
sure of the value of the invention, it is of the highest importance.
The first question then to be asked, in cases of this nature, is, whether the
thin^ has been done before. In case of a machine, whether it has been sub-
stantially constructed before ; in case of an improvement of a machine,
whether that improvement has ever been applied to such a machine before,
or whether it is substantially a new combination. If it is 7ieiv, if it is useful,
if it has not been known or used before, it constitutes an invention, within the
very terms of the act, and, in my judgment, within the very sense and in-
tendment of the legislature. I am utterly at a loss to give any other inter-
pretation of the act; and, indeed, in the very attempt to make that more
clear which is expressed in unambiguous terms in the law itself, there is
danger of creating an artificial obscurity."
28 LAW OF PATENTS.
bearing the amount of thought, design, or ingenuity that may
have been expended, has upon the question of novelty. It
may not be necessary that there should be positive evidence
of design, thought, or ingenuity ; but if it is necessary that
the possibility of these qualities having been exercised should
not be excluded by the character of the supposed invention,
then such possibility becomes one test of the sufficiency of
invention. While the law does not look to the mental pro-
cess by which the invention has been reached, but to the re-
sult, it may still require that the result should be such as not
to exclude the possibility of some skill or ingenuity having
been exercised. It requires this, because it requires that the
subject-matter of a patent should be something that has not
substantially existed before. While such a thing may have
been produced by mere accident, and not by design, yet it
may also have been the fruit of design and study. If, how-
ever, the character of the alleged invention be such, that no
design or study could by possibility have been exercised in its
production, then its character is strong proof that it does not
differ substantially from what had been produced before. We
must look, therefore, to the character and purposes of the in-
vention, and not to the actual process by which it was pro-
duced, in order to see that the possibility of thought, design,
ingenuity, or labor having been exercised, is not excluded.^
§ 7. Thus, if an alleged invention is absolutely frivolous and
foolish, though it may have the element of novelty, in one
sense, it is not the subject of a patent. So, too, mere color-
able variations, or slight and unimportant changes, will not
support a patent; as the immersion of cloth in a steam bath,
with the view of damping it, instead of immersing it in hot
water ; ^ and the substitution of steam as the means of heating
hollow rollers over which wool was to be passed, instead of
1 See post ^ 27 a.
2 Rex V. Fussell, cited in "Webster on the Subject-Matter of Patents
p. 26.
NOVELTY AND UTILITY. 29
heating them by the insertion of hot iron bars.^ In such cases,
if the consequences resulting from the change are unimport-
ant, and the change consists merely in the employment of an
obvious substitute, the discovery and application of which
could not have involved the exercise of the inventive faculty,
in any considerable degree, then the change is treated as
merely a colorable variation, or a double use, and not as a
substantive invention.^
§ 8. On the other hand, the utility of the change, and the
consequences resulting therefrom, may be such, as to show
that the inventive faculty may have been at work ; and in
such cases, though, in point of fact, the change was the result
of accident, its utility and importance will aftbrd the requisite
test of the amount of invention involved in the change. Thus
the mere substitution of one metal for another, in a particular
manufacture, might be the subject of a patent, if the new
article were better, more useful, or cheaper than the old.^ In
Crane's patent the invention consisted in the use of anthracite
and hot air-blast, in the manufacture of iron, in the place of
1 Rex V. Lister, cited in Webster on the Subject-Matter of Patents, p. 26.
'^ The illustrations put by Lord Abinger, in Losh v. Hague, Webster's Pat.
Cas. 208, present the distinctions here taken in an amusing form. " If a
Suro-eon had gone to a Mercer, and said, ' I see how -well your scissors cut,'
and he said ' I can apply them instead of a lancet, by putting a knob at the
end,' that would be quite a diflerent thing, and he might get a patent for
that ; but it would be a very extraordinary thing to say, that because all
mankind have been accustomed to eat soup with a spoon, that a man could
take out a patent because he says you might oat peas with a spoon."
3 " If the composition of matter now called a silver tea-pot, had existed
before the introduction of tea, and been used for making similar infusions
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 medicine celebrated for one disease, 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 earthern pot are the same manufacture." Webster on the
Subject-Matter, p. 25, note. See post ^ 27 a.
30 LAW OF PATENTS.
bituminous coal and hot air-blast ; and the Court of Common
Pleas said : " We are of opinion, that if the result produced
by such a combination be either a new article, or a better
article, or a cheaper article, to the public, than that produced
before by the old method, that such a combination is an in-
vention or manufacture intended by the statute, and may well
become the subject of a patent." ^ But if the change be im-
material and productive of no beneficial result, so that the end
can be attained as well without as with the supposed improve-
ment, it will not support a patent.^
§ 9. A concise and lucid dictum of Buller, J., presents a
capital test of the sufficiency of many inventions : " If there
Ife any thing material and new which is an improvement of
the trade, that will be sufficient to support a patent."^
The term "improvement of the trade" was obviously
used by the learned judge in the commercial sense, mean-
ing the production of the article as good in quality at
a cheaper rate, or better in quality at the same rate, or
with both these consequences partially combined."* There
are many cases where the materiality and novelty of the change
can be judged of only by the effect on the result; and this
effect is tested by the actual improvement in the process of
producing the article, or in the article itself, introduced by the
1 Crane v. Price, Webs. Pat. Cas. 409. It has been suggested, that if the
immersion of cloth in steam, instead of hot water, had been attended with
any considerable improvement in the manufacture, the change would have
been held a sufficient substantive invention to have supported a patent.
Webster on the Subject-Matter, p. 26, note (/.)
2 lu Arkwright's case, there was evidence that the filleted cylinder had
been used before, both in the way in which he used it, and in another way.
Buller, 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 mate-
rial 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." Rex v. Arkwright, Webs. Pat. Cas. 72, 73.
3 Rex V. Arkwright, Webs. Pat. Cas. 71.
4 See Mr. Webster's note on this dictum, ut supra.
NOVELTY AND UTILITY. 31
alleged invention. To these cases this test is directly appli-
cable. Thus, in Lord Dudley's patent, the change consisted
in the substitution of pit coal for charcoal in the manufacture
of iron, and it was new both in the process of manufacture
and in the constitution of the iron.i In Neilson's patent, the
change consisted in blowing the furnace with hot air instead
of cold ; and in Crane's, the substitution of anthracite as fuel,
in combination with the hot blast. Both these processes were
great improvements, leading to a cheaper production of iron
of as good or a better quality.- In Derosne's patent, the in-
vention was by the application of charcoal in the filtering of
sugar, being a change in the process of manufacture, so as to
produce sugar in a way unknown before.^ In Hall's case,
the use of the flame of gas, to singe off the superfluous fibres
of lace, effected completely what had been done before in an
imperfect manner.*
§ 10. In these cases the subject of each invention was not
the particular machinery or apparatus by which the new ap-
plication was to be made available, but it was the new appli-
cation itself of certain known substances or agents, to produce
a particular result, differing either in the process or in the
article produced, from the former methods of producing the
same thing, and thereby producing a better article, or produc-
ing it by superior and cheaper processes. It is obvious that
the result, in such cases, furnishes a complete test of the suffi-
ciency of invention ; because the importance of the result
shows that whether actually exercised or not, the possibility
of the exercise of thought, design, ingenuity, and skill is not
excluded. The merit is the same, whether the invention was
the fruit of accident or design; because the merit consists in
having realized the idea and carried it out in practice. But
if the idea and the practice involve no beneficial results, su-
perior to what had been before attained, there could have been
» Webster's Pat. Cas. 14. 2 ibid. 191, 273, 375.
3 Ibid. 4 Ibid. 97.
32 LAW OF PATENTS,
no scope for the exercise of the inventive faculty, because the
result excludes the supposition of its having been exercised.
§ 11. The same test is also indirectly applicable to another
class of cases, where a particular instrument or machine, or
combination of machinery, is the subject of the patent. As
in Arkwright's case, the gist of the objection was, that the
alleged new machinery did not serve the purpose of spin-
ning cotton better than the machinery formerly used.^ And
wherever this objection lies to a particular machine or instru-
ment, there cannot be said to be a sufficiency of invention to
support a patent.2 In the case of Brunton's patent, which
covered two inventions, the one was for an improvement in
the construction of chain cables, and the other for an improve-
ment in the construction of anchors. As to the first invention,
chain cables had been formerly made with twisted links, a
wrought iron stay being fixed across the middle of the open-
ing of each link to keep it from collapsing. The alleged im-
provement consisted in making the links with straight sides
and circular ends, and in substituting a cast-iron stay with
broad ends, adapted to the sides of the link, and embracing
them. This combination of the link and the stay was calcu-
lated to sustain pressure better than the old form. The court
considered the substitution of a broad-headed stay in the link,
in place of a pointed stay, under the circumstances, a suffi-
cient invention to support a patent, on account of the utility
of the substitution, in connection with the principles to be
carried out, viz., the resistance of pressure according to the
action of forces.^
1 The King v. Arkwright, "Webs. Pat. Cas. 71.
2 In Morgan v. Seeward, 2 M. & Welsb. 562, Parke, B., said: " On a re-
view of the cases, it may be doubted whether the question 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."
3 Brunton v. Hawkes, 4 B. & Aid. 540, 550. Abbott, C. J., said : "As at
present advised, I am inclined to think that the combination of a link of this
NOVELTY AND rXILITY. 38
§ 12. In respect of the anchor, the invention consisted in
making the two flukes in one, with such a thickness 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 was
made conical or bell-mouthed, so that no strain could separate
the flukes from the shank, by which means the injury to the
iron, from repeated heating, was avoided, only one heating
being necessary to unite the end of the shank perfectly with
the side of the conical hole. But it appeared at the trial, that
the improvement in the anchor was the avoiding the welding,
by means well-known and practised in cases extremely similar.
It was a case of the simple application of a mode known and
practised for a similar purpose in other- like cases; and it did
not appear that anchors so made were superior to those which
had been made before. The court were therefore unanimously
of opinion that the patent, in respect of the anchor, could not
be sustained.^
particular form, with the stay of the form which he uses, although 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., said : " 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 for-
merly used for similar purposes. The former bars weakened the link, and
they were weak themselves, and liable to break, and thenif 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 hnk instead of
perforating it, that inconvenience would be avoided ; and therefore the pre-
sent impression on my mind as to this part of the case is, that the patent might
be supported."
1 Abbott, C. J., said: " 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 soUd cylin-
der, through the hollow and conical aperture, and it is then made to fiU up
the hoUow^nd to unite itself with it. Now that is precisely the mode by
which the shank of the 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
34 LAW OF PATENTS.
§ 13. In like manner, where the substance of an invention
consisted in spinning with a much less distance between the
the mode by which the different parts of the common hammer, and the pick-
axe also, are united together. Xow a patent for a machine, each part of
■which was in use before, but in which the combination of different parts is
new, and a new result is 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 these
two had been effected in a mode unknown before, as applied in any degree
to similar purposes, I should have thought it a good ground for a patent ; but
unfortunately, the mode was well known and long practised. I think that a
man cannot be entitled to a patent for uniting two things instead of three,
where that union is effected in a mode well known and long practised for a
similar purpose. It seems to me, therefore, that there is no novelty in that
part of the patent as affects 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., said : "As to the ship's anchor, in substance the patent is
for making in one entire piece, that which was foi-merly 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 through the hole. Could there be a patent for making in
one entire piece, what before had been made in two pieces ? I think not,
but if it could, I think that still this would not be new. In the mushroom
and the adze anchors, the shank is introduced into the anchor by a hole in
the centre of a solid piece ; and in reality the adze 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 argument
of the hammer and pickaxe, 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 anchor, are not ships' anchors, but mooring an-
chors. I think they are ships' anchors ; they are not indeed such anchors as
ships carry with them for the purpose of bringing 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 anchor for a
hold-fast to the ship. The analogj^ 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
NOVELTY AND UTILITY. 35
retaining and drawing rollers, than had been before practised,
the court held that spinning at a particular distance did not
the proper ground of a patent ; in realitj- 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., said : " 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 pickaxe and
the common hammer. It is said, however, that his invention consists in the
application of that which was known before, to a new subject-matter: viz.,
that he had, for the first time, applied to the manufacturing of anchors a
mode in which welding was avoided, which, however, had been long prac-
tised, in other instances to which I have before alluded ; but he does not
state as the ground upon which 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 practised in the manu-
facture of other instruments, viz., of making the two flukes of one piece instead
rftwo. If he had so described his process, the question would then arise
whether that would have been a good ground for a patent. I incline to think,
however, that it having been long known that welding may be avoided in
instruments of a similar form, the application of that practice for the first
time to a ship's anchor, cannot be considered a new invention, and therefore
that it is not the ground of a patent." Mr. Webster remarks upon this case :
" The judges were unanimous in their opinion that the patent, in respect of
the improvements in the anchor, could not be supported ; that the applica-
tion 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 sup-
posed to be more securely united, is as great a change as the substitution of
a broad-headed for a pointed stay across the 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 improvement In the cable, was the carrying out into practice,
certain important principles respecting the action of forces, by the substitu-
tion of a 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-beaded stay, as subsidiary 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
36 LAW OF PATENTS.
constitute a new manufacture, it having been the previous
practice to spin at variable distances.^
§ 14. It appears, then, according to the English authorities
that the amount of invention may be estimated from the
result, although not capable of being directly estimated on
a view of the invention itself.-
§ 15. The utility of the change is the test to be applied for
this purpose. As there cannot be a decidedly useful new re-
being borrowed from cases whicli 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 heep
confirmed by the result, for the cable is in constant and general use, but an-
chors are made as before the patent." Webster on the Subject-lMatter, &c.
p. 34.
1 Kay V. Marshall, Webs. Pat. Cas. 1 M. & Cr. 373.
2 Mr. Webster thus sums up the general doctrine : " But though the amount
of invention, and the consequent sufficiency of a change to support a patent,
cannot be directly estimated or ascertained, they may be estimated and as-
certained from the result ; and with this view, two things have to be con-
sidered, namely, the nature of the change, and its consequences. The change
may be considerable, that is, may of itself exhibit traces of thought, skill and
design ; the consequences produced thereby may be important and consider-
able, or unimportant and inconsiderable ; in the former case, both the means
and the result will be new, and there will be a sufficiency of invention.
These four cases, the only cases which can occur, are all included in the
following general proposition and practical test, that whenever the change
and its consequences taken together, and viewed as a sum, are considerable,
there must be a sufficiency of invention to support a patent. Thus, when
the change, however minute, leads to consequences and results of the greatest
practical utility, as in the case of Dudley's, Crane's, Hall's, and Daniell's
patents, the above condition is satisfied ; but if the consequence, as in the
case of Fussell's patent, be inconsiderable, the change also being inconsider-
able, and such as would most readily suggest itself to any one, the condition
is not fulfilled, and the invention is not sufficient to support a patent." Web-
ster on the Subject-Matter, &c. p. 29, 30.
NOVELTY AND UTILITY. 37
suit, without some degree of invention in producing the
change which effects that result, when a real utility is seen
to exist, a sufficiency of invention may be presumed. And
it is said, that whenever utility is proved to exist in a very
great degree a sufficiency of invention to support a patent
must be presumed.^
§ 16. The question now recurs, whether the same general
doctrine as to the sufficiency of an invention to support a
patent be not applicable under our law. Our statute requires
that the subject of a patent should be " new and useful."
The word " useful " is not supposed to be used, for the pur-
pose of establishing general utility as the test of a sufficiency
of invention to support a patent. It had been held, upon the
use of the same word in the same connection in the old Patent
Act of 1793, that it was used merely in contradistinction to
what is frivolous or mischievous to society. This terra was
held to be satisfied, if the alleged invention was capable of
use, and was not injurious to the well-being, good policy, or
sound morals of society .^
§ 17. But the subject of a patent must not only be " useful,"
in this sense, that is, capable of use and not mischievous, but
it must also be a " new" art, machine, manufacture, or com-
position of matter, or "a new improvement" upon one of
these things, " discovered or invented " by the patentee, and
" not known or used by others " before. It is obvious, there-
fore, that the subject-matter of a patent must be something
substantially different from any thing that has been known or
used before ; and this substantial difference, in all cases where
1 "Webster on the Subject-Matter, &c., p. 30 ; Webster's Pat. Cas. p. 71,
note (e.)
2 Lowell V. Lewis, 1 Mass. 186 ; Bedford v. Hunt, Ibid. 303; Kneass v.
Schuylkill Bank, 4 Wash. 9, 12. To maintain a patent, it is not necessary
that the thing should be the best of its kind ; but if the use for Avhich it is
constructed is practicable, that is sufficient to sustain it as a useful inven-
tion. Many v. Jagger, 1 Blatchford's Circ. Ct. R. 372.
38 LAW OF PATENTS.
analogous or similar things have been previously known or
used, must be the measure of a sufficiency of invention to
support the particular patent.^
§ 18. Our courts have, in truth, without using the same
terms, applied the same tests of the sufficiency of invention,
which the English authorities exhibit, in determining whether
alleged inventions of various kinds possess the necessary ele-
ment of novelty. That is to say, in determining this question
the character of the result, and not the apparent amount of
skill, ingenuity or thought exercised, has been examined ; and
if the result has been substantially different from what had
been effected before, the invention has been pronounced enti-
tled to a patent ; otherwise, the patent has failed.^
§ 19. Thus, where the patent was for an improvement in
copperplate printing of bank-notes, by printing copperplate on
both sides of the note, or copperplate on one side, and letter-
press on the other, or letter-press on both sides, as an addi-
tional security against counterfeiting; and the defendants had
used steel-plate printing ; the question was, whether " cop-
perplate printing" included "steel-plate printing." The
plaintiff's counsel contended, that even if copperplate did not
include steel-plate printing, still the use of the latter by the
defendants, applied to bank-notes, to produce the effect stated
in the patent, was a mere invasion and virtually an infringe-
ment. Washington, J., instructed the jury, that if the use of
1 Mr. Phillips has pointed out the provision in the act of 1 793, " that simply-
changing the form or the proportions of any machine or composition of matter
in any degree, shall not be deemed a discovery ; " and he remarks that this
construction would undoubtedly have been put upon the law without any
such express exception. He gives the same place in our law to the doctrine
of sufficiency of invention, that it occupies in the Enghsh law. See Phillips
on Patents, 125, 126, 127.
2 The application of these tests is most frequently found in cases, not where
insufficiency of invention has been expressly the ground of defence, but
where the question has been whether the patent did not claim something that
was not new.
NOVELTY AND UTILITY. 39
steel plates was an improvement upon printing from copper-
plates, for which a patent might have been obtained by the
inventor, the use of steel plates by the defendants could with
no propriety be considered as an infringement of the plaintiff's
right, unless it appeared that they had also used the plaintiff's
improvement.^
§ 20. This is in substance the test applied by Mr. Justice
Buller, of " any thing material and new, that is an improve-
ment of the trade." ^ If the process of printing by steel plates
was an improvement in the manufacture of notes, upon the
process of printing by copperplates, so as to be a benefit to
the trade of manufacturing notes, it would have been a sub-
stantive invention, and therefore not an infringement upon
the plaintiff's patent, if standing alone.
§ 21. So too, upon the clause in the former statute, " that
simply changing the form or proportion of any machine, shall
not be deemed a discovery." Mr. Chief Justice Marshall held
that the word " simply" was of great importance ; that it was
not every change of form or proportion which was declared
to be no discovery, but that which was simply a change of
form or 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 prin-
ciple also. The question will be therefore whether the change
has produced a different effect.^
\ 22. In like manner, Mr. Justice Livingston decided that
a patent was invalid, upon substantially the same test as that
of Mr. Justice Buller. The patent was for an alleged inven-
tion in folding and putting up thread and floss cotton, in a
1 Kneass v. The Schuylkill Bank, 4 Wash. 9, 11.
2 Cited ante, ^ 9.
3 Davis V. Palmer, 2 Brock. 298, 310. See also Pettibone i'. Derringer, 4
Wash. 218, 219.
40 LAW OF PATENTS.
manner different from the ordinary mode, so that it would
sell quicker and for a higher price, than the same cotton put
up in the common way. The article itself was imported and
underwent no change. The whole of the improvement con-
sisted in putting up the skeins or hanks in a convenient quan-
tity for retailing, with a sealed wrapper, and a label containing
the number and description of the article. The court declared
that the invention, upon the patentee's own showing, was
frivolous ; that it was in no way beneficial to the public, not
making the article itself any better, or altering its quality in
any way. In other words, it was no " improvement of the
trade " of making the article sold, but it was a mere improve-
ment in the art of selling it, by which the retailer could get a
higher price for the same article than could be obtained by
putting it up without the label.^
1 Langdon v. DeGroot, 1 Paine's C. C. R. 203. The learned judge said:
"The Invention is for holding the thread and floss cotton in a manner a little
different from the ordinary mode, in which form the cotton will sell quicker
and higher by twenty-five per cent, than the same cotton put up in the com-
mon way. The cotton thus folded is imported from the factory of Holt, in
England. The article itself undergoes no change ; and the whole of the im-
provement, for it Is a patent for an Improvement, consists In putting up skeins
of it, perhaps of the same size In which they are imported, decorated with a
label and wrapper ; thus rendering their appearance somewhat more attract-
ive, and Inducing the unwary, not only to give It a preference to other cotton
of the same fabric, quality, and texture, but to pay an extravagant premium
for It. "When stripped of these appendages, which must be done before it Is
used, the cotton is no better In any one respect than that of Holt's retailed in
the way put up by him. All this came out on the plaintiff's own testimony.
Now, that such a contrivance — for with Avhat propriety can it be termed
an useful art within the meaning of the constitution ? — may be beneficial to
a patentee. If he can exclude from the market all other retailers of the very
same article, will not be denied ; and if to protect the interest of a patentee,
however frivolous, useless or deceptive his Invention may be, were the sole
object of the law, It must be admitted that the plaintiff has made out a satis-
factory title to his patent.
But if the utility of an Invention Is also to be tested by the advantages which
the public are to derive from It, it is not perceived how this part of his title
is in any way whatever established. So the cotton manufactured by himself,
NOVELTY AND UTILITY. 41
§ 23. So, too, where the question was whether, in a patent
for a machine for making wool-cards, the patentee had not
claimed what had been substantially done before, his claim
being for the whole machine, which comprehended several
distinct operations or stages in the manufacture ; Mr. Justice
Story said the question was, whether either of these effects
had been produced in the machines formerly in use by a com-
bination of machinery or mode of operation substantially the
same as in the machine of the patentee. That it would not be
sufficient to protect the plaintiff's patent — it being for the
whole machine — that his specific machine, with all its various
combinations and effects, did not exist before; because, if the
different effects embraced in it were all produced by the same
application of machinery, in separate parts, and he merely
which is put up in this way. The very label declares it to be that of another
man. So anything done to alter its texture or to render it more portable, or
more convenient for use. Nothing of this kind is pretended. Does the con-
sumer get it for less than in its imported condition ? The only ground on
which the expectation of a recovery is built is, that he pays an enormous ad-
ditional price, for which he literally receives no consideration.
It is said that many ornamental things are bought of no intrinsic value, to
gratify the whim, taste or extravagance of a purchaser, and that for many of
these articles patents are obtained. This may be so ; but in such cases there
is no deception, no false appearances ; and the article is bought to be used
with all its decorations and ornaments which may have been the principal
inducements to the purchase, and which will last as long as the article itself.
In this the sight or pride of the party is gratified. But here it is the cotton
alone which it is intended to buy, and the little label and wrapper appended
to it, and which constitute the whole of the improvement, however showy,
are stripped oflf and thrown away before it can be used. And when that is
done, which may be at the very moment of its purchase, the cotton is no
better, whatever the buyer at the time may think, than when it first left the
factory.
When Congress shall pass a law, if they have a right so to do, to encourage
discovei'ies, by which an article, without any amelioration of it, may be put
off for a great deal more than it is worth and is actually selling for, it will be
time enough for courts to extend their protection to such inventions, among
which this may be very fairly classed."
6
42 LAW OF PATENTS.
combined them, or added a new effect, such combination
would not sustain his patent for the whole machine ;i that is
to say, without looking at the apparent amount of skill or
1 Wliittemore v. Cutter, 1 Gallis. 478. In this case, the learned Judge
said : " It is difficult to define the exact cases, when the whole machine may
de deemed a new invention, and when only an improvement of an old ma-
chine ; the cases often approach very near to each other. In the present
improved state of machinery, it is almost impracticable not to employ the
same elements of motion, and in some particulars, the same manner of opera-
tion, to produce any new effect. Wheels, with their known modes of opera-
tion, and known combinations, must be of very extensive employment in a
great variety of new machines; and if they could not, in the new invention,
be included in the patent, no patent could exist for a whole machine embrac-
ing such mechanical powers.
Where a specific machine already exists, producing certain efiects, if a
mere addition is made to such machine, to produce the same effects in a better
manner, a patent cannot be taken for the whole machine, but for the im-
provement only. The case of a watch is a familiar instance. The inventor
of the patent lever, without doubt, added a very useful improvement to it ;
but his right to a patent could not be more extensive than his invention.
The patent could not cover the whole machine as improved, but barely the
actual improvement. The same illustration might be drawn from the steam
engine, so much improved by Messrs. Watt and Boulton. In like manner,
if to an old machine some new combinations be added, to produce new effects,
the right to a patent is limited to the new combinations. A patent can in no
case be for an effect only, but for an effect produced by a given manner, or
by a peculiar operation. For instance, no patent can be obtained for the
admeasurement of time, or the expansive operations of steam; but only for
a new mode or new application of machinery to produce these efiects ; and
therefore, if new effects are produced by an old machine in its unaltered
state, I apprehend that no patent can be legally supported, for it is a patent
for an effect only.
On the other hand, if well known effects are produced by machinery in all
its combinations entirely/ new, a patent may be claimed for the whole machine.
So, if the principles of the machine are new, either to produce a new or an
old effect, the inventor may well entitle himself to the exclusive right of the
whole machine. 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 o/jfiranrf/, the peculiar
device or manner of producing any given effect. The expansive powers of
steam, and the mechanical powers of wheels, have been understood for many
NOVELTY AND UTILITY. 43
invention involved in bringing these several modes of opera-
tion into one machine, which was not the invention claimed,
if the result accomplished thereby did not differ substantially,
in respect to the processes embraced in it, from what had
ages ; yet a maeliine 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 complicated cases like the present, the exact boundaries between
what was known and used before, and what is new, in the mode of operation.
The present machine is to make cotton and woollen cards. These were
not only made before the present patent, by machinery, but also by ma-
chinery which, at different times, exhibited very different stages of improve-
ment. The gradual progress of the invention, from the first rude attempts
to the present extraordinary perfection ; from the slight combination of
simple principles to the present wonderful combinations, in ingenuity and
intricacy scarcely surpassed in the world, has been minutely traced by the
witnesses on the stand.
The jury, then, are to decide whether the principles of Mr. Whittemore's
machine are altogether new, or whether his machine be an improvement
only on those which have been in use before his invention. I have before
observed that the principles are the mode of operation. If the same effects
are produced by two machines by the same mode of operation, the princi-
ples of each arc the same. If the same effects are produced, but by a com-
bination of machinery operating substantially in a different manner, the
principles are different.
The great stages (it' I may so say) in making the cards by Whittemore's
machine, which admit of a separate and distinct operation in the machinery,
are, 1. The foi-ming and bending the wire. 2. The pricking the leather.
3. The sticking the wire into the leather ; and, 4. The crooking the wire
after its insertion. Were cither of these effects produced in the machines
formerly in use by a combination of machinery or mode of operation sub-
stantially the same as in this machine ? If so, then clearly his patent could
only be for an improvement, and of course it is void ; if not, then his patent
is free from any objection on the ground of being broader than his invention.
It will not be sufficient, to protect the plaintiff's patent, that this specific
machine, with all its various combinations and effects, did not exist before ]
for if the different effects were all produced by the same application of ma-
chinery in separate parts, and he merely combined them together, or added
a new effect, such combination would not sustain the present patent, any
more than the artist, who added the second hand or repeater to a watch,
could have been entitled to a patent for the whole watch."
44 LAW OF PATENTS.
been done before in separate machines, the subject-matter
claimed as the invention was not new.
§ 24. On the other hand, where the patent claimed, as the
invention of the party, a new and useful improvement in the
making of friction matches, by means of a new compound,
and it was said that the ingredients had been used before in
the making of matches, the court said that the true question
was, whether the materials had been used before in the same
combination, and if not, that the combination was patentable,
however apparently simple it might be. That is to say, if
the result at which the inventor had arrived, the production
of a friction match, by a particular combination of materials,
was new, there was a sufficiency of invention, without look-
ing at the apparent facility or difficulty of accomplishing it.i
§ 25. So, too, where it was said, in the defence, that a
machine for cutting ice was but an application of an old in-
vention to a new purpose, it being likened to the common
carpenter's plough, the court distinguished the machine from
1 Ryan r. Goodwin, 3 Sumner's R. 514, 518. In this case, ]Mr. Justice
Story said : " It is certainly not necessary that every ingredient, or, indeed,
that any one ingredient used by the patentee in his invention, should be
new or unused before for the purpose of making matches. The true ques-
tion is, whether the combination of materials by the patentee is substantially
new. Each of these ingredients may have been in the most extensive and
common use, and some of them may have been used for matches, or com-
bined with other materials for other purposes. But if they have never been
combined together in the manner stated in the patent, but the combination
is new, then, I take it, the invention of the combination is patentable. So
far as the evidence goes, it does not appear to me, that any such combina-
tion was known or in use before Phillip's invention. But this is a matter
of fact, upon which the jury will judge. The combination is apparently
very simple ; but the simplicity of an invention, so far from being an
objection to it, may constitute its great excellence and value. Indeed, to
produce a great result by verj- simple means, before unknown or unthought
of, is not unfrequently the peculiar characteristic of the very highest class of
minds."
NOVELTY AXD UTILITY. 45
everything that had been made before, by pointing out that
such a combination of apparatus had not been luiown be-
fore.i
§ 26. But where an invention was claimed to be a mode
by which the back of a rocking-chair could be reclined and
fixed at any angle required, by means of a certain apparatus,
the patent was declared void, because the same apparatus or
machinery had been long in use, and applied, if not to chairs,
at least in other machines, to purposes of a similar nature.^
An examination of the result attained by the plaintiff showed
that he had accomplished nothing which had not been done
before, but had merely applied an old contrivance to a new
purpose.
§ 27. This last case furnishes a clear line of demarkation
between invention and a mere application to a new use. It
shows that the end, efl'ect, or result attained must be new ;
1 TVyeth v. Stone, 1 Storj^'s R, 273, 279. In this case, Mr. Justice Story
said : " Assuming the patent to be for the machinery described in the specifi-
cation, and the description of the invention in the specification to be, in
point of law, certainly and correctly summed up, (points which will be here-
after considered,) I am of opinion that the invention is substantially new.
No such machinery is, in my judgment, established by the evidence to have
been known or used before. The argument is, that the principal machine,
described as the cutter, is well known, and has been often used before for
other purposes, and that this is but an application of an old invention to a
new purpose ; and it is not therefore patentable. It is said that it is, in sub-
stance, identical with the common carpenter's plough. I do not think so.
In the conmion carpenter's plough there is no series of chisels fixed in one
plane, and the guide is below the level, and the plough is a movable chisel.
In the present machine there are a series of chisels, and they are all fixed.
The successive chisels are each below the other, and this is essential to their
operation. Such a combination is not shown ever to have been known or
used before. It is not, therefore, a new use or application of an old machine.
This opinion does not rest upon my own skill and comparison of the ma-
chine with the carpenter's plough ; but it is fortified and sustained by the
testimony of witnesses of great skill, experience, and knowledge in this de-
partment of science."
2 Bean v. SmaUwood, 2 Story's R. 408, 410.
46 LAW* OF PATENTS.
and that if the same end, effect, or result has been attained
before, it is not new, and there has been no invention, but
merely an application of means before known to produce an
effect before known, on a new occasion. The purpose itself,
which is to be accomplished, is not patentable ; but the adap-
tation of materials to the execution of the purpose, or the
apparatus by which the purpose is accomplished, is the true
subject of the patent : and if the same purpose has in other
instances been accomplished by the same means, the use of
those means on a new occasion does not constitute a suffi-
ciency of invention. In other words, the machinery, appa-
ratus, or other means is not new.^
1 In the case last cited, Bean v. Smallwood, Mr. Justice Story said : " The
third and last specification of claim, upon the testimony of Mr. Eddy, ■which
is admitted to be true, is equally unsupportable. He says, that the same
apparatus stated in this last claim has been long in use, and applied, if not
to chairs, at least in other machines, to purposes of a similar nature. If
this be so, then the invention is not new, but, at most, is an old invention, or
apparatus, or machinery, applied to a new purpose. Now, I take it to be
clear, that a machine, or apparatus, or other mechanical contrivance, in
order to give the party a claim to a patent therefor, must, in itself, be sub-
stantially new. If it is old and well known, and applied only to a new pur-
pose, that does not make it patentable. A coffee-mill, applied for the first
time to grind oats, or corn, or mustard, would not give a title to a patent for
the machine. A cotton gin, applied, without alteration, to clean hemp,
would not give a title to a patent for the gin as new. A loom to weave cot-
ton yarn would not, if unaltered, become a patentable machine, as a new
invention, by first applying it to weave woollen yarn. A steam engine, if
ordinarily appHed to turn a grist mill, would not entitle a party to a patent
for it if it were first applied by him to turn the main wheel of a cotton fac-
tory. In short, the machine must be new, not merely the purpose to which
it is applied. A purpose is not patentable ; but the machinery, only, if new,
by which it is to be accomplished. In other words, the thing itself which is
patented must be new, and not the mere application of it to a new purpose
or object." In Huddart v. Grimshaw, Webster's Pat. Cas. 86, Lord Ellen-
borough said : " In inventions of this sort, and every other through the
medium of mechanism, there are some materials which are conmion, and
cannot be supposed to be appropriated in the terms of any patent. There
are common elementary materials to work with in machinery, but it is the
adaptation of these materials to any particular purpose that constitutes the
NOVELTY AND UTILITY. 47
§ 27 a. So, too, the substitution of one material for ano-
ther, in a particular manufacture, if the inventive faculty has
not been at work, has been held by the Supreme Court of
the United States not to be sufficient to support a patent ; and
the test whether the inventive faculty has been at work is,
whether more ingenuity and skill were required to make the
substitution than was possessed by an ordinary mechanic,
acquainted with the business. The plaintiff claimed a patent
for an improvement in making the knobs of doors, by making
them of clay or porcelain, instead of wood or metal. It ap-
peared that the mode of forming the knob, and the mode of
fastening it to the shank or spindle were old, and had been
used in Icnobs made of wood or metal. The court said, that
unless more ingenuity and skill, in applying the old method
of fastening the shank and the knob were required in the
application of it to the clay or porcelain knob, than were
possessed by an ordinary mechanic acquainted with the
business, there was an absence of that degree of skill and
ingenuity which constitute essential elements of invention.^
invention ; and if the application of them be new, if the combination in its
nature be essentially new, if it be productive of a new end, and beneficial to
the public, it is that species of invention which, protected by the king's
patent, ought to continue to the pereon the sole right of vending ; but if,
prior to the time of his obtaining a patent, any part of that which is of the
substance of the invention has been communicated to the public, in the
shape of a specification of any other patent, or is a part of the service of
the country, so as to be a known thing, in that case he cannot claim the
benefit of his patent." See also Hovey v. Stevens, 1 Woodbury and Minot's
R. 290, 297, 298, 299, where Mr. Justice Woodbury held it doubtful, whe-
ther a change, by merely attacliing several knives to a cylinder, to be
ground, instead of attaching but one, without any difference being shown in
producing the rotary motion, was a sufficient change in form, or principle, or
results, to justify a patent.
1 Ilotchkiss V. Greenwood, 11 Howard's R. 248, 2G4. Mr. Justice Nelson,
delivering the opinion of the court in this case, said : " The instruction
assumes, and as was admitted on the argument, properly assumed, that
knobs of metal, wood, etc., connected with a shank and spindle, in the mode
and by the means used by the patentees in their manufacture, had been
before known, and were in public use at the date of the patent ; and hence
48 LAW OF PATENTS.
§ 27 b. But, on the other hand, if the end, effect, or result
is new, although the same means may previously have been
the only novelty whicli could be claimed on their part was the adaptation of
this old contrivance to knobs of potter's clay or porcelain ; in other words,
the novelty consisted in the substitution of the clay knob in the place of one
made of metal or wood, as the case might be. And in order to appreciate
still more clearly the extent of the novelty claimed, it is proper to add, that
this knob of potter's clay is not new, and therefore constitutes no part of the
discovery. If it was, a very different question would arise ; as it might very
well be urged, and successfully urged, that a knob of a new composition of
matter, to which this old contrivance had been applied, and which resulted
in a new and useful article, was the proper subject of a patent.
The novelty would consist in the new composition made practically useful
for the purposes of life, by the means and contrivances mentioned. It
would be a new manufacture, and none the less so, within the meaning of
the Patent Law, because the means employed to adapt the new composition to
a useful purpose was old or well known.
But in the case before us, the knob is not new, nor the metallic shank and
spindle, nor the dovetail form of the cavity in the knob, nor the means by
which the metallic shank is securely fastened therein. All these were well
known, and in common use ; and the only thing new is the substitution of a
knob of a different material from that heretofore used in connection with
this arrangement.
Now it may very well be, that, by connecting the clay or porcelain knob
with the metallic shank in this well known mode, an article is produced bet-
ter and cheaper than in the case of the metallic or wood knob ; but this
does not result from any new mechanical device or contrivance, but from
the fact that the material of which the knob is composed happens to be
better adapted to the purpose for which it is made. The improvement con-
sists in the superiority of the material, and which is not new, over that pre-
viously employed in making the knob.
But this, of itself, can never be the subject of a patent. Ko one will pre-
tend that a machine, made, in whole or in part, of materials better adapted
to the purpose for which it is used than the material of which the old one is
constructed, and for that reason better and cheaper, can be distinguished
from the old one ; or, in the sense of the Patent Law, can entitle the manu-
facturer to a patent.
The difference is formal, and destitute of ingenuitj^- or invention. It
may afford evidence of judgment and skill in the selection and adaptation of
the materials in the manufacture of the Instrument for the purposes intended,
but nothing more.
NOVELTY AND UTILITY. 49
used to produce a different effect, and for a different purpose,
there may be a patent for the application of the materials to
produce the new effect or result. Thus, where the defendant
had obtained a patent for an improvement in packing hy-
I remember having tried an action in the Circuit in tlie District of Con-
necticut some years since, brought upon a patent for an improvement in
manufiicturing buttons. The foundation of the button was wood, and the
improvement consisted in covering the face with tin, and which was bent
over the rim so as to be firmly secured to the wood. Holes were perforated
in the centre, by which the button could be fastened to the garment. It
was a cheap and usefid article for common wear, and in a good deal of
demand.
On the trial, the defendant produced a button, which had been taken off a
coat on which it had been worn before the Revolution, made precisely in
the same "way, except the foundation was bone. The case was given up on
the part of the plaintiff. Xow the new article was better and cheaper than
the old one ; but I did not then suppose, nor do I now, that this could make
any difference, unless it was the result of some new contrivance or arrange-
ment in the manufacture. Certainly it could not, for the reason that the
materials with which it was made were of a superior quality, or better
adapted to the uses to Avhich the article is applied.
It seemed to be supposed, on the argument, that this mode of fastening
the shank to the clay knob produced a new and peculiar effect upon the
article, beyond that produced when applied to the metallic knob, inasmuch
as the fused metal by which the shank was fastened to the knob prevented
the shank from acting immediately upon the knob, it being inclosed and
firmly held by the metal ; that for this reason the clay or porcelain knob
was not so liable to crack or be broken, but was made firm and strong, and
more durable.
This is doubtless true. But the peculiar effect thus referred to is not dis-
tinguishable from that which would exist in the case of the wood knob, or
one of bone or ivory, or of other materials that might be mentioned.
Now if the foregoing view of the improvement claimed in this patent be
correct, it is quite apparent that there was no error in the submission of the
questions presented at the trial to the jury ; for unless more ingenuity and
skill in applying the old method of fastening the shank and the knob were
required in the application of it to the clay or porcelain knob than were
possessed by an ordinary mechanic acquainted with the business, there was
an absence of that degree of skill and ingenuity which constitute essential
elements of every invention. In other words, the improvement is the work
of the skilful mechanic, not that of the inventor.
7
50 LAW OF PATENTS.
draulic, and other machines, by means of a lining of soft
metal, and thereby rendering certain parts of such machines
air and fluid tight ; and the plaintiff afterwards discovered
that soft metal had the property of diminishing friction, and
of preventing the evolution of heat, when applied to surfaces
in contact when in rapid motion and subject to pressure,
and took a patent for the application of this discovery to
machines ; it was held, that the application of the soft metal
by the plaintiff, differing essentially from that of the defend-
ant, and the plaintiff having confined his claims to the new
effect produced, by embodying his discovery in a machine,
namely, the diminution of friction and heat, and not claim-
ing the former effect of packing, his patent was good.^
1 Newton v. Vaucher, 11 Law and Eq. K. 589, 592 (G Exch. Rep. 859.) In
this case, Mr. Baron Parke said : " The only question is, whether the plain-
tiif 's invention is contained in the defendant's and is old, and that question
must depend upon a comparison between the specifications of the plaintiflfs
patent of 1843, and of the defendant's of 1839. The specifications are to be
read in connection with their titles. I will take the defendant's specification
first, and see what his invention is. It is a patent for several machines ; and
his invention, as described in the specification (inta- alia,) is as follows : 'My
invention relates to a mode of packing parts of hydraulic engines or
machines, or rendering the same fluid tight, which part of my invention ap-
plies to steam engines, and in those parts where moving surfaces require to
be packed or rendered steam tight.' The defendant then proceeds to de-
scribe the mode of applying his invention ; and it is to be observed, that in
that part where he is speaking of the axis of the pump to be ' received into
a suitable recess or bearing,' he does not apply his invention to the bearing ;
for the axis is not to rest upon soft, but upon hard metal. He then proceeds
to remark that there is a material for packing that part where the axis
works, the end of the axis or piston working in a groove, the object being to
pack with metal in such a manner as to make all the parts water or fluid
tight. He then proceeds to describe the metallic composition he uses for
that purpose, to which we need not advert, as it is not material. Now, I
think it is obvious that this invention consists in the application of soft metal,
instead of elastic substances, which had been in use before, for the purpose
of enabling the axis of the machine to work in a case, and to be water, air,
or steam tight. Nothing is said ujion the subject of friction, or upon the
subject of bearings. After the date of the defendant's patent, it was dis-
covered by the person from whom the plaintiff purchased his patent, that
NOVELTY AND UTILITY. 51
§ 28. The doctrine in relation to utility being, in this
country, that the subject-matter of a patent must not be
soft metal could be used beneficially, not merely for the purpose of excluding
air or water, but that it produced this remarkable effect, that, where there
was pressure upon it, friction was in a great degree diminished. That pro-
bably arises, as my Brother Alderson has suggested, from the circumstance
that the particles of the soft metal (which may be said to approach more
nearly in their nature to those of a fluid,) have comparatively a more easy
motion among themselves than those of a hard metal. If water could be
confined in tlie same way as soft metal is, and the axis could be made to
revolve in the water so confined, the invention might possibly answer as
well. It was, however, discovered, that, by the adoption of soft metal, no heat
or friction, comparatively speaking, would take place. Then the question
is, whether the plaintiff's patent is for the application of that principle. Now,
upon looking at his specification, which embodies a new principle in a new
machine, it differs materially from the defendant's, which is for the purpose
merely of packing; for in the plaintiff's invention it is essential that there
should be not only the intervention of soft metal, but that there should also
be a hard rim covered in part with that soft metal, or some other means to
prevent the soft metal from e:y)anding and getting out of its place.
But any other hard rim covered with soft metal, or substances'covered with
soft metal, are part of that machine. That is no part of the defendant's in-
vention. Therefore, I think, the discovery of the person under whom the
plaintiff claims, is not merely a discovery of a new principle, but of a new
principle embodied in a new machine. Then, that being so, if the plaintiff
claims a patent for that new principle embodied in a new machine, and that
only for the purpose of diminishing friction, and the application of it is only
to cases where there is pressure as well as motion, that patent is perfectly
good ; but if he has also claimed in it the application of soft metal to all
cases of stuffing, to include fluids of every description, his patent in that re-
spect is for an old invention, and is void. The question is now reduced to
that single point. I entertained some doubt during the argument upon the
question, whether the plaintiff's patent is simply for the application of soft
metal for the purpose of preventing friction where there is pressure and mo-
tion, or whether it is not also for the application of soft metal in cases of
stuffing rods for the purpose of excluding aii', water, or other fluid. If the
determination of the question depended solely upon the specification, and the
title of the patent were not read, I should have been inclined to think that
the plaintiff" claimed both ; but if the specification and the title be read toge-
ther, (and the specification is always taken to be an exemplification of the
thing for which the patent is obtained,) it is clear that the plaintiff" 's claim
is confined to bearings in cases where there is pressure with motion. [His
52 LAW OF PATENTS.
injurious or mischievous to society, or frivolous or insignifi-
cant, it follows, that every invention for which a patent is
claimed must be, to a certain extent, beneficial to the com-
munity ; it must be capable of use for some beneficial
purpose ; but, when this is the case, the degree of utility,
whether larger or smaller, is not a subject for consideration
in determining whether the invention will support a patent.^
But it is obvious that the capability of use, for some bene-
ficial purpose, is a material element in determining whether
there is a sufficiency of invention to support a patent ; the
force of the word " useful," introduced into the statute in
connection with the epithet " new," being to determine
whether the subject-matter, upon the whole, is capable of
use, for a purpose from which any advantage can be derived
to the public. General rules will not decide this question in
particular cases ; but the circumstances of each case must
be carefully examined, under the light of the principles on
which general rules are founded.
lordship read the title of the plaintiff's specification.] That appears to me
to apply only to cases of bearings. I think the concluding part, " and also
improvements in oiling or lubricating the same," is wholly immaterial. In
the next place, we must see in what way he describes the machine for which
the patent is granted. [His lordship read the greater part of the plaintiff's
specification, and proceeded.] Now, had it not been for the title of this
patent, by which the plaintiff appears to me to confine his invention to bear-
ings, there would be strong reason to contend that he applied it also to cases
in which rods or bars were to slide. But reading it in conjunction with the
title, I think the plaintiff's patent does not extend so far, and consequently
that it is not void upon that ground. The steam engine is the example of
the case in which there is friction and pressure ; but in the case of guide
rods to locomotive steam engines, there is a bearing, and the instance he
gives is that of a bearing. As it is my opinion that the plaintiff's patent is
confined to these cases, no part of it includes an old invention, and, conse-
quently the patent is good."
1 Lowell V. Lewis, 1 Mass. 182; Bedford v. Hunt, lb. 302 : Kneass v. The
Schuylkill Bank, 4 Wash. 9, 12; 2 Kent's Com. 3G9 ; Phillips on Patents,
136 - 144. Evidence that the invention of the defendant is better than that
of the plaintiff is improper, except to show a substantive difference between
the two inventions. Alden v. Dewey, 1 Story's R. 336.
NOVELTY AND UTILITY. 63
§ 29. In considering the question of the novelty of an
invention, Buller, J., laid down the rule, that when the
novelty is disputed, the patentee is bound to offer some evi-
dence of novelty. That is, he must show in what his in-
vention consists, and that he produced the effect proposed
by his patent, in the manner specified. Slight evidence of
this, on his part, is sufficient, and it is then incumbent on
the party alleging the want of novelty to show the defect.^
§ 30. Under our law, it would seem that the patent itself
is prima facie evidence of the novelty of the invention. The
act of 1836, § G, requires the applicant to make oath that he
verily believes himself to be the original and first inventor
or discoverer of the thing, and that he does not know or
believe that it was ever before known or used. Mr. Justice
Story has held, that this oath, on a trial, is evidence in the
cause of a prima facie character, and that it is the founda-
tion of the onus probandi thrown upon the defendant.^ The
patent recites the oath, and thus the jury have cognizance of
it ; and, as the oath asserts that the patentee was the original
and first inventor, it must be evidence of the novelty of the
invention, if it is evidence of the fact that the patentee was
the inventor."
§ 31. In connection with the subject of novelty, it is further
to be remembered, that our statute also requires that the sub-
ject-matter of a patent should not have been " known or used
by others before the discovery or invention thereof" by the
patentee.*
1 Turner r. Winter, 1 T. R. 602, 607.
2 Alden v. Dewey, 1 Story's R. 336.
3 Ibid. See also Stearns v. Barrett, 1 Mass. R. 175; Pennock v. Dia-
logue, 4 Wash, R. 538 ; Dixon v. Moyer, Ibid. 68 ; Phillips on Patents,
407.
4 Act of 1836, § 6. Upon the former law, the words of which were " not
known or used before the application," the Supreme Court of the United
States put the construction which has been adopted by Congress in the sub-
54 LAW OF PATENTS.
§ 32. The time of the knowledge or use of an invention
by others which is to vitiate a patent, is a very important
point. In England, such knowledge, obtained at any time
and in any mode, before the application for a patent, is suffi-
cient to invalidate it. But in this country, it was settled as
the true construction of the act of 1793, which used the
words, "not known or used before the application," that
these words, taken in connection with other provisions of
the statute, meant that the invention should not have been
sequent statute. " TVTiat, then, is the true meaning of the words ' not known
or used before the ajiplication ? ' They cannot mean that the thing invented
was not known or used before the appUcation by the inventor himself, for
that would be to prohibit him from the only means of obtaining a patent.
The use, as well as the knowledge of his invention, must be indispensable to
enable him to ascertain its competency to the end proposed, as well as to
perfect its component parts. The words, then, to have any rational inter-
pretation, must mean, not known or used by others before the application.
But how known or used ? If it were necessary, as it well might be, to
employ others to assist in the original structure or use by the inventor him-
self; or, if before his application for a patent his invention should be pirated
by another, or used without his consent, it can hardly be supposed that the
legislature had within its contemplation such knowledge or use.
" We think, then, the true meaning must be, not known or used by the
public before the application. And thus construed, there is much reason for
the limitation thus imposed by the act. While one great object was, by
holding out a reasonable reward to inventors, and giving them an exclusive
right to their inventions for a limited period, to stimulate the efforts of
genius ; the main object was ' to promote the progress of science and useful
arts ; ' and this could be done best by giving the pubhc at large a right to
make, construct, use, and vend the thing invented, at as early a period as
possible, having a due regard to the rights of the inventor. If an inventor
should be permitted to hold back from the knowledge of the public the
secrets of his invention ; if he should for a long period of years retain the
monopoly, and make and sell his invention pubhcly, and thus gather the
whole profits of it, relying upon his superior skill and knowledge of the struc-
ture ; and then, and then only, when the danger of competition should force
him to secure the exclusive right, he should be allowed to take out a patent,
and thus exclude the pubUc from any further use than what should be de-
rived under it during his fourteen years ; it would materially retard the pro-
gress of science and the useful arts, and give a premium to those who should
be least prompt to communicate their discoveries." Pennock v. Dialogue,
2 Peter's S. C. R. 18, 19.
NOVELTY AND UTILITY. 65
known or used before the discovery by the patentee.'^ This
construction was afterwards adopted by congress, in the act
of 1836, in so many terms.
§ 33. The word " others," though used in the plural in this
statute, was used to denote that the use should be by some
other person or persons than the patentee; and, therefore,
the prior use by one person other than the patentee, is suffi-
cient to show that the patentee was not the first inventor.^
§ 34. But the question still remains, what constitutes
"use" and "knowledge," in the sense of the statute? Does
the act simply mean, that the mere product of an art, or the
mere existence of a machine, manufacture or composition
of matter, if found in the possession of another, before the
invention or discovery by the patentee, shall be sufficient to
invalidate a patent? Or does it mean, that the art itself,
the mode of constructing the machine, manufacture or com-
position of matter, must, at the time of the invention or
discovery by the patentee, be a known thing, and in use by
others than the patentee, in order to vitiate the patent ? This
presents the difficult question, what is to be the effect of a
perfected invention, once in actual use, and subsequently
abandoned or lost, upon the rights of an original inventor?
Many arts, formerly known, have been wholly lost ; the pro-
duct of such arts may be still extant ; and it is a most im-
portant inquiry, whether a new discoverer or inventor of
an art of producing the same or similar things, can or can-
not obtain a valid patent for his original independent dis-
covery.
§ 35. In England, the statute of monopolies permitted the
1 Melius i\ Silsbee, 4 Mass. R. 108 ; Treadwell v. Bladen, 4 Wasli. R.
707.
2 Reed v. Cutter, 1 Story's R. 590. See also Bedford v. Hunt, 1 Mass.
R. 302.
56 LAW OF PATENTS.
granting of a patent to " the true and first inventor of such
manufacture, which others, at the time of making such let-
ters-patent, shall not use." Our statute requires that the
patentee shall be the "first inventor" of an art, machine,
manufacture or composition of matter, not known or used
by others before his discovery," &c. There is no very mate-
rial difference between the English law and our own, there-
fore, except as to the time of the use by others, which, in Eng-
land, extends down to the issuing of the letters-patent, but
with us, is confined to the period of the patentee's invention
or discovery. Now, it is not settled in England, that the
prior knowledge of an invention, long lost sight of to the
public, will vitiate subsequent letters-patent for the same
invention. The doctrine in relation to prior use, in England,
has been recently promulgated in the House of Lords, as
follows : that, although the use of an invention may have
been discontinued, if it has been once publicly used, and the
recollection of it has not been wholly lost, it will be sufficient
to invalidate a subsequent patent.^ The subject-matter of
the patent, in this case, was machinery ; and the judgments
delivered by their lordships, who spoke upon the case, seem
to have proceeded upon the ground, that such prior use of a
perfected invention, in case of machinery, negatives the pro-
position that the patentee was the " first inventor," as also
the proposition that others had not previously used the same
thing. At the same time, a strong intimation was given,
that the prior use of an invention, if abandoned and lost
sight of, so as not to be known to the public, presents a
different question from an invention which has been merely
disused, but the existence of which shows that the public
have the knowledge and the means of making the same
thing, already in their possession.^
1 The HousehiU Company v. Neilson, Webs. Pat. Cas. 673, 709, 710,
716.
2 The Lord Chancellor (Lyndhurst) said : " It must not be understood
that your lordships, in the judgment you are about to pronounce, have given
any decision upon this state of facts, namely, if an invention had been for-
NOVELTY AND UTILITY. 57
§ 36. This distinction, if sound, presents two important
inquiries : first, whether there is any class of cases where the
mere previous existence of a thing, the art of making which
has been lost, negatives the fact, that a subsequent discoverer
of an art of making the same or a similar thing is the " first
inventor," as those words are used in the statute ; secondly,
whether the use or knowledge intended by the statute, in
cases of this kind, means the use or knowledge of the art of
making the thing, or whether it means merely the use of the
thing itself, or the knowledge that it exists, without the
means of practising the invention itself. Both of these
questions may arise, for instance, in reference to an article
which has been patented in England, to wit, an encaustic
tile, a description of which was well known in the middle
ages, but the art of manufacturing which has been lost ; ^ or
in reference to such arts as that of staining glass.
§ 37. With regard to the first question, if the words "first
inventor " are to be taken in their literal import, and without
reference to the character of the subject-matter, whether it
furnishes or does not furnish, on mere inspection or analysis,
a knowledge of the means by which it is produced, — then,
it is only necessary, in any case, to show that the thing itself
has existed before in order to negative the claim, that the sub-
sequent patentee is the " first inventor." This might be all
that would be necessary in cases of machinery, because the
machine is a collection of material parts in a certain combi-
nation, the existence of which, at any previous time, shows
that it cannot have been again invented for the first time.
merly used and abandoned many years ago, and the whole thing had been
lost sight of. That is the state of facts not now before us. Therefore, it
must not be understood that we have pronounced any opinion whatever
upon that state of things. It is possible that an invention may have existed
fifty years ago, and may have been entirely lost sight of, and not known to
the public. What the effect of this state of things might be is not necessary
for us to pronounce upon." lb. 717.
1 Wright's Patent, Webs. Pat. Cas. 736.
8
58 LAW OF PATENTS.
But with regard to the arts and the products of the arts, it
may be very different. The same thing may have been pro-
duced at one time by one process, now wholly lost sight of,
and at another time by another process, or by the independent
discovery of the same process. It can never be known with
certainty, whether the subsequent process of manufacture is
the same with the first, which may always have been a
secret, and is, at any rate, now unknown. The product alone
is the same or similar; and if the mere existence of the
same thing, without the knowledge of the mode by which it
was produced, excludes a subsequent independent discoverer
of a process of making that thing from being regarded as the
" first inventor," a large class of what are really original inven-
tions — and inventions "first," as regards the state of know-
ledge, — are excluded from the benefits of the Patent Law.
The difference between inventions or discoveries of this kind
and cases of machinery is, that, in a machine, the invention
consists in the putting together, in a certain combination, ma-
terial parts, intended to operate upon each other according to
certain laws of motion, to produce a given effect ; and this,
when once done, is done forever, and can only be done upon
one principle and plan, that remain always the same as long
as the same machine is reproduced ; but, in the case of a
manufacture or product of an art, the invention consists in
the process by which the thing itself is produced, which may
be invented in one way at one time, and in another way at
a subsequent time, so that the subsequent inventor may be,
literally as well as metaphysically, the "first inventor" of
his process of making the thing.
§ 38. Upon principle, therefore, it would seem, that, in
regard to some inventions, the phrase " first inventor " ought
to receive such a construction as will allow a patent to the
new discoverer of a process of producing a thing, the art of
making which has been lost, upon the ground that he is, as
far as can be ascertained, the first inventor of his process of
making that thing.
NOVELTY AND UTILITY. 69
§ 39. With regard to the second question which arises
under our statute, upon the clauses which provide against
the prior use and knowledge of the thing, it may perhaps be
considered that those provisions are cumulative upon the pre-
vious requisition that the patentee shall be the first inventor.
The statute requires that the patentee shall make oath that
he verily believes himself to be the original and first inventor,
and that he does not know or believe, that the thing, art, ma-
chine, composition, or improvement was ever before known
or used ;i and it provides that the negative of these proposi-
tions may be proved in defence against the patent.^ In the
case supposed, — that of an art long lost, but of which spe-
cimens of the manufacture can be proved to be or to have
been in existence, — the patent of a subsequent discoverer of
an art of making the same or a similar thing, would be
primd facie evidence that he is the first discover of his par-
ticular process of making the thing.^ The negative is then
to be shown in defence ; and whether this can be shown by
merely producing the thing, without showing the process by
which it was formerly made, depends upon the force to be
given to the words " use and knowledge." If those words
mean merely that the prior use of the thing itself, or the
1 Act of 1836, § 6. 2 Ibid. § 15.
3 The only evidence whicli the plaintiff can add to his patent, on the
issue of novelty, is that of persons who -were in the way of hearing of the
invention not having heard of it before. Upon this point, Sir N. C. Tindall,
C. J., said : " You cannot prove a negative strictly. You can only do so by
exhausting the affimiative instances of it, by calling persons who have never
heard of it or seen it, and the more those persons are in the way of hearing
of it or seeing it, if it had existed, the stronger is that exhausting evidence,
if I may so call it, in its effect and value with the jury." Cornish v. Keene,
Webs. Pat. Cas. 509. In Washburn v. Gould, 3 Story's R. 122, 142, Mr.
Justice Story instructed the jury upon the question of invention, that it was
for the defendant to show beyond a reasonable doubt that there was a prior
invention to the plaintiff's, because the plaintiff has a right to rest upon his
patent for his invention till its validity is overthrown. If there was a rea-
sonable doubt as to the priority of invention, the plaintiff was entitled to the
benefit of that doubt.
60 LAW OF PATENTS.
prior knowledge of its existence, is, in all cases, an answer to
the allegation of the patentee, that he is the first inventor or
discoverer, without showing that his process is the same as
that by which the thing was formerly produced, then, there is
no occasion to inquire further. But if, on the contrary, those
words are to be taken with reference to the character of the
subject-matter, in each case, then it is apparent that there
may be cases where, as in such arts as those above referred to,
the invention or discovery is not, strictly speaking, the thing
itself, but a process of making that thing. The words of
the statute must be taken with separate application to each
of the subjects recited as the proper subject-matters of a
patent. The language is, that " he is the original and first
inventor of the art, machine, composition, &c., and that he
does not know or believe that the same was ever before
known or used;"i and in the subsequent clause, the " thing
patented" is declared to be subject to the defence, that the
patentee was not " the original and first inventor or disco-
verer" or that "it" had been described in some public work,
or had been in public use.^ The " thing patented " is the an-
tecedent of " it," and in the case of an art, this may be, not
the product itaelf, but the process of producing it ; and where
it cannot be shown that the process invented by the patentee
has been " known " or " used " before, the mere production in
evidence of a similar manufacture, produced at a former
period by an unknown art, does not negative the allegation,
that the patentee invented or discovered the art by which he
has produced that manufacture.^
§ 40. In England the courts have so construed the expres-
sion, "first inventor," as to admit of a valid patent in a
variety of cases, where the patentee was not absolutely the
first person to make or discover the thing ; as where it had
been made previously by another person who had concealed
3 See a learned note on the bearing of the EngHsh statute on this question,
by Mr. Webster, Pat. Cas. 718, 719, 720.
NOVELTY AND UTILITY.
it from every one else ; ^ and generally, in England, the ques-
tion whether the patentee is the true and first inventor or not,
depends on whether he borrowed the invention from a source
open to the public.^ And since the first edition of this work
was published, a decision has been made in the Supreme
Court of the United States, which adopts a similar construc-
tion, for our statute. A person had made and used an
article similar to the one which was afterwards patented,
but had not made his discovery public, using it simply for
his own private purpose, and without having tested it so as to
discover its usefulness ; and it had then been finally forgotten
and abandoned : it was held that under such circumstances,
the patentee was to be regarded as the " first inventor." ^
1 Dolland's Case, 2 H. Blackst. 470, 487. Davies's Pat. Cas. 172.
2 Walton V. Potter, Webs. Pat. Cas. 592.
3 Gayler v. Wilder, 10 Howard, 477. In this case, Mr. Ch. Justice Taney
delivering the opinion of a majority of the Court, said : " It appears that
James Conner, who carried on the business of a stereotype founder in the
city of New York, made a safe for his own use, between the years 1829 and
1832, for the protection of his papers against fire ; and continued to use it
until 1838, when it passed into other hands. It was kept in his counting-
room and known to the persons engaged in the foundry ; and after it passed
out of his hands, he used others of a different construction.
It does not appear what became of this safe afterwards. And there is
nothing in the testimony from which it can be inferred that its mode of con-
struction was known to the person into whose possession it fell, or that any
value was attached to it as a place of security for papers against fire ; or that
it was ever used for that purpose.
Upon these facts the court instructed the jury, ' that if Conner had not
made his discovery pubUc, but had used it simply for his own private pur-
pose, and it had been finally forgotten or abandoned, such a discovery and
use would be no obstacle to the taking out of a jiatent by Fitzgerald or those
claiming under him, if he be an original, though not the first, inventor or
discoverer.'
The instruction assumes that the jurj'^ might find from the evidence that
Conner's safe was substantially the same with that of Fitzgerald, and also
prior in time . And if the fact was so, the question then was, whether the
patentee was ' the original and first inventor or discoverer,' within the
meaning of the act of Congress.
The act of 1836, ch. 357, § 6, authorizes a patent where the party has dis-
62 LAW OF PATENTS.
§ 41. We have already seen, that there are two issues, with
respect to novelty ; one, whether the patentee is the first in-
covered or invented a new and useful improvement, ' not known or used by
others before his discovery or invention.' And the 15th section provides
that, if it appears on the trial of an action brought for the infringement of a
patent that the patentee ' was not the original and first inventor or discoverer
of the thing patented,' the verdict shall be for the defendant.
Upon a literal construction of these particular words, the patentee in this
case certainly was not the original and first inventor or discoverer, if the
Conner safe was the same with his, and preceded his discovery.
But we do not think that this construction would carry into effect the
intention of the legislature. It is not by detached words and phrases that a
statute ought to be expounded. The whole act must be taken together, and
a fair interpretation given to it, neither extending nor restricting it beyond
the legitimate import of its language, and its obvious policy and object. And
in the 15th section, after making the provision above mentioned, there is a
further provision, that, if it shall appear that the patentee at the time of his
application for the patent believed himself to be the first inventor, the patent
shall not be void on account of the invention or discovery having been
known or used in any foreign country, it not appearing that it had been
before patented or described in any printed publication.
In the case thus provided for, the party who invents is not, strictly speak-
in<T, the first and original inventor. The law assumes that the improvement
may have been known and used before his discovery. Yet his patent is
valid if he discovered it by the efi'orts of his own genius, and believed him-
self to be the original inventor. The clause in question quahfies the words
before used, and shows that by knowledge and use the legislature meant
knowledge and use existing in a manner accessible to the public. If the
foreign invention had been printed or patented, it was already given to the
world and open to the people of this country, as well as of others, upon
reasonable inquiry. They would, therefore, derive no advantage from the
invention here. It would confer no benefit upon the community, and the
inventor therefore is not considered to be entitled to the reward. But if the
foreign discovery is not patented, nor described in any printed publication,
it might be known and used in remote places for ages, and the people of this
country be unable to profit by it. The means of obtaining knowledge would
not be within their reach ; and, as far as their interest is concerned, it would
be the same thing as if the improvement had never been discovered. It is
the inventor here that brings it to them, and places it in their possession.
And as he does this by the effort of his own genius, the law regards him as
the first and original inventor, and protects his patent, although the improve-
ment had in fact been invented before, and used by othei-s.
NOVELTY AND UTILITY.
ventor ; the other, whether the invention, at the time of his
application, be new as to public use and exercise. These
So, too, as to the lost arts. It is well known that centuries ago discoveries
were made in certain arts, the fruits of which have come down to us, but the
means by which the work was accomplished are at this day unknown. The
knowledge has been lost for ages. Yet it would hardly be doubted, if any
one now discovered an art thus lost, and it was a useful improvement, that,
upon a fair construction of the act of Congress, he would be entitled to a
patent. Yet he would not litei*ally be the first and original inventor. But
he would be the first to confer on the public the benefit of the invention.
He would discover what is unknown, and communicate knowledge which
the public had not the means of obtaining without his invention.
Upon the same principle and upon the same rule of construction, we
think that Fitzgerald must be regarded as the first and original inventor of
the safe in question. The case as to this point admits, that, although Con-
ner's safe had been kept and used for years, yet no test had been applied to
it, and its capacity for resisting heat was not known ; there was no evidence
to show that any particular value Avas attached to it after it passed from his
possession, or that it was ever afterwards used as a place of security for
papers ; and it appeared that he himself did not attempt to make another
like the one he is supposed to have invented, but used a different one. And
upon this state of the evidence the court put it to the jury to say, whether
this safe had been finally forgotten or abandoned before Fitzgerald's inven-
tion, and whether he was the original inventor of the safe for which he
obtained the patent ; directing them, if they fourtd these two facts, that
their verdict must be for the plaintiff. We think there is no error in
this instruction. For if the Conner safe had passed away from the memory
of Conner himself, and of those who had seen it, and the safe itself had
disappeared, the knowledge of the improvement was as completely lost as
if it had never been discovered. The public could derive no benefit from
it until it was discovered by another inventor. And if Fitzgerald made his
discovery by his own efforts, without any knowledge of Conner's, he invented
an improvement that was then new, and at that time unknown ; and it was
not the less new and unknown because Conner's safe was recalled to his
memory by the success of Fitzgerald's.
We do not understand the Circuit Court to have said that the omission of
Conner to try the value of his safe by proper tests would deprive it of its
priority ; nor his omission to bring it into public use. He might have
omitted both, and also abandoned its use, and been ignorant of the extent
of its value ; yet, if it was the same with Fitzgerald's, the latter would not,
upon such grounds, be entitled to a patent, provided Conner's safe and its
64 LAW OF PATENTS.
issues may be involved together, because if the last is nega-
tived, it may be negatived by evidence which shows that the
patentee was not the first inventor. But in point of law and
fact, these are distinct issues. The patentee may have been
the first inventor, and yet he may have allowed the invention
to get into public use, and exercise, before his application ;
or the invention may never have been in public use, and yet
the patentee may not be the first inventor, by reason of his
having learned it from some one else, or from some published
work, or from some other source open to the public.
§ 42. It is an important question of construction, therefore,
to determine when a claimant is the first inventor, in the
sense of the statute. This depends upon the nature and ex-
tent of the knowledge which any other person may have had
of the subject of the patent ; and upon this inquiry, we may,
perhaps, usefully follow the light of English authorities as
well as our owm.
§ 43. It is not sufficient to defeat a patent, already issued.
mode of construction were still in the memory of Conner before they were
recalled by Fitzgerald's patent.
The circumstances above mentioned, referred to in the opinion of the Cir-
cuit Court, appear to have been introduced as evidence tending to prove that
the Conner safe might have been finally forgotten, and upon which this hypo-
thetical instruction was given. Whether this evidence was sufficient for
that purpose or not, was a question for the jury, and the court left it to
them. And if the jury found the fact to be so, and that Fitzgerald again
discovered it, we regard him as standing upon the same ground with the
discoverer of a lost art, or an unpatented and unpublished foreign inven-
tion, and like him entitled to a patent. For there was no existing and living
knowledge of this Improvement, or of its former use, at the time he made the
discovery. And whatever benefit any individual may derive from it in the
safety of his papers, he owes entirely to the genius and exertions of Fitz-
gerald.
Upon the whole, therefore, we think there is no error in the opinion of
the Circuit Court, and the judgment is therefore affirmed."
NOVELTY AND UTILITY. 65
that another person has conceived the possibility of effecting
what the patentee has actually accomplished. To constitute
a prior invention, the party, alleged to have made it, must
have proceeded so far as to have entitled himself to a patent,
in case he had made an application ; or, in other words, he
must have reduced his idea to practice, and embodied it in
some distinct form.i It is true, that in a race of diligence
between two independent inventors, our law provides for the
priority of conception, by allowing the one who first invents
to obtain the patent, if he was using reasonable diligence in
adapting and perfecting his invention, although a second in-
ventor has, in fact, first perfected the invention, and reduced
it to practice.2 But where a patent has been granted to a
patentee, who did not surreptitiously obtain his knowledge
from a prior inventor, who was using reasonable diligence to
perfect and adapt the invention, in order to defeat it on the
ground that the patentee was not the first inventor, some
previous inventor must not only have had the idea, but must
also have carried the idea into practical operation ; for he is
entitled to a patent, who, being an original inventor, has first
perfected and adapted the invention to actual use.^
1 Reed v. Cutter, 1 Story's R. 590.
2 Act of 1836, § 15; Reed v. Cutter, 1 Story's R. 590.
3 Reed v. Cutter, ut supra. Woodcock v. Parker, 1 Gallison's R. 438,
439. In Gibson v. Brand, Webs. Pat. Cas. 628, Sir N. C. Tindall, C. J.,
said to the jury, " It is quite clear, that if, on the evidence you have heard,
you are satis6ed that this which is alleged to be a discovery by the plaintiffs,
had been publicly known and practised in England, there is an end to the
validity of the patent. It would not be sufficient to destroy the patent to
show that learned persons in their studies had foreseen, or had found out this
discovery, that is afterwards made public, or that a man in his private ware-
house had, by various experiments, endeavored to discover it and failed, and
had given it up. But if you perceive, on the evidence, that the thing which
is now sought to be protected by the patent has been used, and for a con-
siderable period, and used so far to the benefit of the public, as to be sold to
any body who thought proper to purchase it of those who made it, then it
becomes a material question, whether such mode of user is not, in your judg-
ment, a public using of the article, of the process, or of the invention, before
9
66 LAW OP PATENTS.
§ 44. But when may a prior invention be said to have been
perfected and adapted to actual use ? Does the law furnish
any test by which this question can be answered ? In the
first place, it is clear, that mere trials and experiments, though
continued up to the date of a patent, will not vitiate the
grant, if the patentee had no knowledge of those trials and
experiments ; because the first perfected invention, if original,
is entitled to the patent.^ In the second place, there may
often be a very satisfactory test, which will determine
whether the proceedings of an alleged prior inventor were
any thing more than trials and experiments, by ascertaining
whether he at any time, before the date of the patent, aban-
doned the pursuit of the object at which he was aiming. If
he did so, the abandonment has been said to furnish a pre-
sumption that his proceedings rested in experiment and trial
alone.2
the letters-patent were granted, and therefore you will apply the evidence,
when you come to it, subject to such an explanation, — not giving a force or
efficacy to any attempts that have been made towards the discovery which
the plaintiffs set up, but which have failed and been abandoned, and rested
indeed only in experiment, but at the same time giving full effect to such
evidence as has been brought before you, that tends to show that, by other
persons, on various occasions, the article has been made, and the process
been pui-sued, which is now sought to be protected, and has been sold to such
of the public as have thought proper to come forward and purchase,"
1 The Househill Company v. Iseilson, Webs. Pat. Cas. 708.
- In the case last cited, Lord Brougham said, "If an invention has not
been completed, but if it all rests in experiment and trial, then it is a most
material circumstance as a test, whether any given act of a party, other than
the invention, was trial or complete invention ; it is a most salutary and im-
portant test to apply with a view to ascertain that, to see whether he aban-
doned or continued it. If he abandoned it, if he gave it up altogether, and
for twenty or thirty years did nothing, it is a very strong presumption that it
was only experimental — not an invention completed. But suppose it was
complete, and suppose it is admitted not to have been a trial — suppose it is
allowed to have been an invention executed, if I may so speak, not merely
executory, or not merely in the progress of invention, but an invention
completed, then it is one of the greatest errors that can be committed, in
point of law, to say with respect to such an invention as that, it signifies one
NOVELTY AND UTILITY. ^ 67
§ 45. But if, on the contrary, his experiments and trials
were continued, or if there is not satisfactory evidence of an
abandonment of the object, then it becomes a question of fact,
depending on the nature of the proposed invention, the cha-
racter of the experiments, and the results attained, to deter-
mine whether the party had really accomplished the same
substantial result as that described in the patent.^
rush whether it Avas completely abandoned, or whether it was continued to
be used down to the very date of the patent. Provided it was invented and
publicly used at the time, twenty or thirty years ago, in this case forty years
ago, it is perfectly immaterial, not immaterial to the second question, the
second condition, namely, whether it was used or not at the time of the
granting of the patent, but totally immaterial to the other question, which is
equally necessary to be ascertained in the inventor's favor, whether or not
he was the first and true inventor ? — for he must be the first and true in-
ventor, as well as the only person using it at the time, otherwise he is not
entitled to the letters-patent." Webs. Pat. Cas. 713. In Jones v. Pearce,
Webs. Pat. Cas. 124, Patteson, J., instructed the jury as follows: " If on the
whole of this evidence, either on the one side or the other, it appeared this
wheel, constructed by Mr. Strutt's order in 1814, was a wheel on the same
principles, and in substance the same wheel as the other for which the
plaintiff had taken out his patent, and that was used openly in public, so that
every body might see it, and had continued to use the same thing up to the
time of taking out the patent, imdoubtedly then that would be a ground to
say that the plaintiff's invention is not new, and if it is not new, of course
his patent is bad, and he cannot recover in this action ; but if, on the other
hand, you are of opinion that Mr. Strutt's was an experiment, and that he
found it did not answer, and ceased to use it altogether, and abandoned it as
useless, and nobody else followed it up, and that the plaintiff's invention,
which came afterwards, was his own invention, and remedied the defects, if
I may so say, although he knew nothing of Mr, Strutt's wheel, he remedied
the defects of JMr. Strutt's wheel, then there is no reason for saying the
plaintiff's patent is not good ; it depends entirely upon what is your opinion
upon the evidence with respect to that, because, supposing you are of opi-
nion that it is a new invention of the plaintiff's, the patent is then good ;
then the only remaining question would be, whether the defendant has or
not infringed the patent."
1 In Galloway i-. Bleaden, Webs. Pat. Cas. 521, 526, Sir N. C. Tindall,
C. J., said to the jury, " The question you are to determine is, whether on
the evidence the thing itself was complete, so as to be used, or whether
68 LAW OF PATENTS.
§ 46. But although the subject of every patent must have
been "invented or discovered" by the party claiming to be
the inventor or discoverer, still, as suggestions and hints may
often have been made use of by a man of the most original
genius, in the production of inventions, it becomes necessary
to inquire who is to be regarded as the inventor or discoverer,
in the sense of being entitled to a patent for the thing in-
vented or discovered.
§ 47. The intellectual production, or that which, when per-
fected, constitutes the thing invented, differing from all other
things by some substantial peculiarity which gives it a dis-
tinct character, is what the iaw means to protect with an
exclusive privilege. It is clear, therefore, that many sugges-
only a series of experiments were going on Tliat there had
been many experiments made upon the same line, and ahuost tending, if not
entirely, to the same result, is clear from the testimony you have heard, and
that these experiments were known to various persons ; but if they rested in
experiment only, and had not attained the object for which the patent was
taken out, mere experiment, afterwards supposed by the parties to be fruit-
less, and abandoned because they had not brought it to a complete result,
that will not prevent a more successful competitor, who may avail himself, as
far as his predecessors have gone, of their discoveries, and add the last link
of improvements in bringing it to perfection." So also in Bedford v. Hunt,
1 Mas. 302, 305, Mr. Justice Story said, " If it were the mere speculation
of a philosopher or a mechanician, which had never been tried by the test of
experience, and never put into actual operation by him, the law would not
deprive a subsequent inventor, who had employed his labor and his talents
in putting it into practice, of the reward due to his ingenuity and enterprise.
But if the first inventor reduced his theory to practice, and put his machine
or other invention into use, the law never could intend that the greater or
less use in which it might be, or the more or less widely the knowledge of
its existence might circulate, should constitute the criterion by which to
decide upon the validity of any subsequent patent for the same invention. I
hold it therefore to be the true interpretation of this part of the statute, that
any patent may be defeated by showing, that the thing secured by the patent,
had been discovered and put in actual use, prior to the discovery of the
patentee, however limited the use or the knowledge of the prior discovery
might have been."
NOVELTY AND UTILITY. 69
tions may have been made, or many hints taken from others,
without invalidating the claim of a party to be considered as
the author of the invention; since it is not the abstract sug-
gestion or inchoate idea, which the law intends to treat as
the subject of the patent, but the perfected invention, in
which the idea is applied to a practical purpose and made
capable of useful operation. There may be a long interval
between the first suggestion of an idea, which leads to or
forms the germ of a discovery, and the actual production of
that discovery, in all its peculiarities, constituting in its per-
fect state the thing invented. This interval must, in many
cases, be occupied by the exercise of inventive power, of the
highest description, on the part of him who has taken the
first suggestion from another, by bringing it to perfection, or
developing and reducing it to practical application ; and the
extent to which this interval is so occupied will determine
whether the person originally suggesting, or the person sub-
sequently applying an idea, is entitled to be regarded as the
inventor.
§ 48. Thus it has been held that in order to invalidate a
patent, on the ground that the patentee received from another
person the suggestion of the invention, it is not enough to
show that the naked idea, or bare possibility of accomplish-
ing the object was suggested. On the other hand, it is not
necessary that the minutiae of the invention should have been
communicated by another person. But it must appear that
the invention was substantially communicated to the patentee,
so that without more inventive power he could have applied
it in practice.^ So too, it has been held, that although others
may have previously had the idea of a machine and made
some experiments towards putting it in practice, the person
who first brought the machine to perfection and made it
1 Alden v. Dewey, 1 Story's R. 336.
70 LAW OF PATENTS.
capable of useful operation, is the inventor, and is entitled to
the patent.^
§ 49. The extent to which a person may avail himself of
the suggestions or inventive faculties, or manual dexterity of a
servant, and afterwards claim to be the inventor, does not
perhaps admit of being stated in any precise general propo-
sition. It depends upon the relative situations of the parties,
the nature of the employment, and the fact of the employer
having planned or conceived the main idea of the invention.
The person who suggests the principle of an invention is the
inventor; and if this be the servant, the employer cannot
claim the invention as the author of it, although he may have
taken the servant into his employ for the express purpose.^
1 Washburn v. Gould, 3 Story's R. 122, 123. In this case, Mr. Justice
Story said, " The law is, that whoever perfects a machine, is entitled to a
patent, and is the real inventor, although others may previously have had
the idea, and made some experiments towards putting it in practice. In
England the law goes even so far as to grant such an one the patent,
although the antecedent experiments of others were known to and used by
him in perfecting his machine. The law In this country has not gone quite
so far, but I do not mean to say that there would be any difficulty in going
to that extent. At any rate, he is the inventor and is entitled to the patent,
who first brought the machine to perfection and made it capable of useful
operation." See also Pennock v. Dialogue, 4 Wash. 578. In Tenant's
case, Dav. Pat. Cases, 429, (cited in Hill v. Thompson, 8 Taunt. 395,) there
was evidence that a chemist had suggested to the patentee the basis of the
improvement in question. The patent was declared invalid ; but it appears
to have been mainly on the ground that the improvement had been in actual
use for six years before the patent. See 8 Taunt. 395, and 2 Evans's Sta-
tutes, p. 6, note; Webs. Pat. Cas. 125, note.
2 Minter v. Wells, Webs. Pat. Cas. 132. In this case, one of the ques-
tions submitted to the jury was, whether the patentee, or another person,
named Sutton, was the inventor. Alderson, B., instructed the jury as fol-
lows : " If Sutton suggested the principle to Mr. Minter, (the patentee,)
then he would be the inventor. If on the other hand Mr. Minter suggested
the principle to Sutton, and Sutton was assisting him, then Mr. Minter
■would be the first and true inventor, and Sutton would be a machine, so to
NOVELTY AND UTILITY. 71
But if the employer conceives the result embraced in the
invention, or the general idea of a machine upon a particular
principle, and in order to carry his conception into effect, it is
necessary to employ manual dexterity or even inventive skill,
in the mechanical details and arrangements requisite for car-
rying out the original conception, in such cases the employer
will be the inventor, and the servant will be a mere instru-
ment, through which he realizes his idea.^ The adoption by
an inventor, of a suggestion made in the course of experi-
speak, which Mr. Mintcr uses for the purpose of enabling him to carry his
original conception into effect." In Arkwright's case, with respect to a par-
ticular roller, part of the machinery, the evidence was, that Arkwright had
been told of it by one Kay ; that, being satisfied of its value he took Kay
for a servant, kept him for two years, employed him to make models, and
afterwards claiming it as his invention, made it the foundation of a patent.
The same fact was proved as to a crank, which had been discovered by a
person of the name of Ilargrave, which also had been adopted by Arkwright.
This evidence was fatal to the patentee's claim of originality in respect of
both these inventions. The King v. Arkwright, Davies's Pat. Cas. 61 ;
Webs. Pat. Cas. 64. See also IIIU v. Thompson, 8 Taunt. 375, 395; Bar-
ker V. Harris, Webs. Pat. Cas. 126.
1 Ibid. See also Bloxam v. Elsee, 1 Car. & P. 567 ; Dav. Pat. Cas. 132.
It was objected in this case that parts of the improvements in Foudrinier's
paper machine were the inventions of Mr. Donkin, who proved that when
he made those improvements he was employed as an engineer, for the purpose
of bringing the machine to perfection, and was paid for so doing, and that
he was acting as the servant of the inventor of the machine, for the purpose
of suggesting those improvements. He did not discover the principle of the
machine, nor invent the important movements of it. The patent was not
disturbed on that ground. Godson on Patents, 27, 28; Hindmarch on
Patents, 25, 26. Upon the same principle, the Court of Common Pleas, in
England, held that a calico-printer is entitled, after having discharged his
head color-man, to the book in which that servant has entered the processes
for mixing the colors, during his service, although many of the processes
were the invention of the servant himself Makepeace v. Jackson, 4 Taunt.
770. — Mr. Phillips, in his valuable work on Patents, states the doctrine in
regard to suggestions thus : " It is not a ground of defence that the patentee
availed himself of the suggestions of another, unless they go to an essential
part of the invention :" — p. 419, edition of 1837. But it seems to be capa-
ble of a more precise statement.
7S? LAW OF PATENTS.
ments, of something calculated more easily to carry his con-
ceptions into effect, does not affect the validity of the patent.^
§ 50. There may be a class of cases, where the patentee
having employed and paid for the inventive faculty of ano-
ther, may claim and hold a patent for the invention, not as
the inventor, but as the assignee of the inventor. But this
class of cases belongs to the subject of assignments of pa-
tents, and is distinguishable from the general principles
which determine who is the actual inventor.
§ 51. With regard to the use of the antecedent experiments
of others, Mr. Justice Story has intimated that our law would
go as far as the English doctrine, which allows an inventor
1 Allen V. EaAvson, 1 M. G. & Scott, 551, 574, Tindall, C. J. "The
real question is, whether or not the improvements suggested by Shaw and by
M'dner were of such a serious and important character as to preclude their
adoption by Williams as parts of his invention. The rule was granted
simply upon the objection that the patentee had claimed as a part of his
invention, the compound apron which was alleged to be the invention of
Shaw, and the longitudinal guides invented by Milner. And the question is,
whether, having so claimed these two things, they form any important parts
of the invention for which the patent has been obtained. The main object
and design of the patentee were the obtaining a long, even and uniform bat,
suitable to be made into commercial ends or pieces of cloth. The patentee,
in his specification, after describing the double or compound revolving apron,
thus refers to that which is called Shaiv's suggestion : — "As in many manu-
facturing premises, these two long extended aprons could not be so conve-
niently used, for want of room, I sometimes extend them backwards and for-
wards, and even with several aprons, as shown (in the drawings) at figures
6, 7, and 8, or perpendicularly up and down, where only two are required,
as shown at figures 9 and 10." This is, obviously, a mere matter of conve-
nience suggested to and adopted by the inventor. It would be difficult to
define how far the suggestions of a workman employed in the construction of
a machine are to be considered as distinct inventions by him, so as to avoid a
patent incorpoi-ating them, taken out by his employer. Each case must
depend upon its own merits. But when we see that the principle and
object of the invention are complete without it, I think it is too much that a
suggestion of a workman, employed in the course of the experiments, of
NOVELTY AND UTILITY. 73
to know and use the antecedent experiments of others in per-
fecting his invention.^ The English law is, that experiment
not brought to completion, or conducted to a full result, will
'not vitiate the patent of a more successful person in the
same line, though he avails himself of the knowledge gained
by the experiments of his predecessors.^
§ 52. The Statute of 1836 also requires that the subject of
the patent should not have been, at the time of the applica-
tion, in public use or on sale, with the consent or allowance
of the patentee, as the inventor or discoverer.^
§ 53. The phrase " public use," means use in public, and
not use by the public ; * so that, under this act, if there had
something calculated more easily to carry into effect the conceptions of the
inventor, should render the whole patent void. It seems to me, that this
was a matter much too trivial, and too far removed from interference with
the principle of the invention, to produce the effect which has been con-
tended for."
1 Washburn v. Gould, ut supra note, p. 41, 42.
2 In Galloway v. Bleaden, Webs. Pat. Gas. 525, Sir N. C. Tindall, C. J.,
stated the law to be that "a mere experiment, or a mere course of experi-
ments, for the purpose of producing a result which is not brought to its com-
pletion, but begins and ends in uncertain experiments — that is not such an
invention, as should prevent another person, who is more successful, or
pursues with greater industry the chain in the line that has been laid out for
him by the preceding inventor, from availing himself of it and having the
benefit of it."
3 Act of 1836, § 6. The law had previously been settled to be, that the
first inventor cannot acquire a good title to a patent, if he suffers the thing
invented to go into public use, or be publicly sold for use, before he makes
application for a patent. Such 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
Secretary of State is authorized to grant a patent. Pennock v. Dialogue,
2 Peters, 16.
* " The public use and exercise of an invention means a use in public,
not by the public." Per Lord Abinger, in Carpenter v. Smith, 9 Mees. &
Wels. 300. Webs. Pat. Gas. 530, 534. i possess a MS. note by Mr. Justice
10
74 LAW OF PATENTS.
been a use in public by any person, with the consent or allow-
ance of the patentee, the patent will be defeated.
§ 54. But then it is necessary that the machine, or other
subject of invention, should have been completed, and should
have been used in public substantially as it was patented,
with the consent of the patentee.^
§ 55. As the law stood, therefore, prior to the year 1839,
an invention might be allowed to be in public use by the
patentee, before his application, in two modes. He might
allow of its use in public by an individual or individuals, or
he might allow the whole public to use it, by having aban-
doned or dedicated his invention to the public before his
application. In either case, his patent would have been void.
§ 56. With regard to the first mode, where the use had
been permitted to an individual, it has been held that such
use must have been unlimited in time, extent, or object. If
allowed for a short or definite period, as an act of kindness,
or as a means of continuing experiments and testing the
utility of the invention it would not have had the effect of
defeating the patent under the act of 1836.2
Story to the case of AVyetli v. Stone, 1 Story's R. 273, referring to this
definition of public use with approbation. The use of a lock, in such a situ-
ation that the public might see it, is a public use and exercise of the inven-
tion. Carpenter v. Smith, iit supra. The manufacture and sale, without
secrecy, by a workman, of several dozens of locks, according to a model
which is retained, is a public use and exercise of the invention. Ibid. 540.
The publicly making and selling an article, though there may be no demand
or use for it at the time, will vitiate subsequent letters-patent. Losh v.
Hague, Webs. Pat. Cas. 205. The question of public use is for the jury ;
as whether the instances adduced show a manufacture to have been in public
use, or only that various experiments have been made and abandoned."
Elliott V. Aston, Webs. Pat. Cas. 224. Cornish v. Keene, Ibid. 519.
1 Wyeth V. Stone, 1 Story's R. 280, 281.
9 Ibid. Ryan v. Goodwin, 8 Sumner's R. 514, 518. In this last case Mr.
NOVELTY AND UTILITY. 75
§ 57. With regard to the second mode, a dedication or
abandonment of the invention to the public, before the appli-
cation for a patent, it has been said that the circumstances
ought to be very clear and cogent, before the court would be
justified in adopting a conclusion so subversive of private
rights, when the party has subsequently taken out a patent.^
Still, although the inventor's acts are to be construed libe-
rally, unequivocal evidence that he has dedicated his inven-
tion to the public will deprive him of his right, upon the
authority of previous decisions as well as that of the recent
statute presently to be cited.^
Justice Story said : — "It is clear by our law, •whatever it may be by the
law of England, that the public use or sale of an invention, in order to
deprive the inventor of his right to a patent, must be a public use or sale by
others, with his knowledge and consent, before his application therefor. II"
the use or sale is without such knowledge or consent, or if the use be merely
experimental, to ascertain the value or utility or success of the invention, by
putting it in practice, that is not such a use as will deprive the inventor of
his title. Our law also requires that the use or sale should not only be with
the knowledge and consent of the inventor, but that it should be before his
application for a patent. A sale or use of it, with such knowledge or con-
sent, in the intermediate time between the application for a patent and a
grant thereof, has no such efFect. It furnishes no foundation to presume that
the inventor means to abandon his invention to the public ; and does not,
because it is not within the words of our act, create any statute disability to
assert his right to a patent."
1 Wyeth V. Stone, ut supra.
2 Melius V. Silsbee, 4 Mass. 111. In this case Mi-. Justice Story said: —
" If the inventor dedicates his invention to the public, he cannot afterwards
resume it, or claim an exclusive right in it. It is like the dedication of a
public way, or other public easement. The question in such cases is a ques-
tion of fact. Has he so dedicated it V I agree his acts are to be construed
liberally ; that he is not to be estopped by licensing a few persons to use his
invention to ascertain its utility, or by any such acts of peculiar indulgence
and use as may fairly consist with the clear intention to hold the exclusive
privilege. But if the inventor proclaims his Intention to all the world, and
suffers it to go into general and public use, without objection ; if he asserts
no exclusive right for years, with a full knowledge that the public are led by
it to general use, such conduct, in my judgment, amounts to strong proof
76 LAAV OF PATENTS.
§ 58. Prior to the year 1839, therefore, if the patentee
allowed not merely the public use, but even a free individual
use of his invention, before he applied for a patent, his patent
would be invalid. But by the Act of 1839, ch. 88, § 7, this
inconvenience was remedied by the enactment, " that every
person or corporation, who has or shall have purchased or
that he waives the exclusive right, and dedicates the invention to the world.
After such conduct, the attempt to regain the exclusive right and secure it
by a patent would operate as a fraud upon the public ; and would hold out
inducements to incur heavy expenses in putting inventions into operation, of
which the party might be deprived at the mere will or caprice of the
inventor." So, also, Mr. Justice Washington held : — " That if an inventor
makes his discovery public, looks on, and permits others freely to use it,
without objection, or assertion of claim to the invention, of which the public
might take notice, he abandons the inchoate right to the exclusive use of the
invention, to which a patent would have entitled him had it been applied
for before such use ; and we think it makes no difference in the principle,
that the article so publicly used and afterwards patented, was made by a
particular individual, who did so by the private permission of the inventor.
As long as an inventor keeps to himself the subject of his discover}-, the
public cannot be injured ; and even if it be made public, but accompanied
by an assertion of the inventor's claim to the discovery, those who should
make or use the subject of the invention would, at least, be put upon their
guard. But if the public, with the knowledge and the tacit consent of the
inventor, is permitted to use the invention without opposition, it is a fraud
upon that public afterwai'ds to take out a patent. It is possible that the
inventor may not have intended to give the benefit of his discovery to the
public ; and may have supposed that, by giving permission to a particular
individual to construct for others the thing patented, he could not be pre-
sumed to have done so. But it is not a question of intention which is
involved in the principle which we have laid down, but of legal inference,
resulting from the conduct of the inventor, and affecting the interests of the
public. It is for the jury to say, whether the evidence brought this case
within the principle which has been stated." 4 Wash. 544. The question
which generally arises on trials is a question of fact rather than of law ;
whether the acts or acquiescence of a party furnish, in a given case, satisfac-
tory proof of an abandonment, or dedication of an invention to the public.
See Fennock v. Dialogue, 2 Peters, 16. Grant v. Raymond, 6 Pet. 248,
249. Shaw v. Cooper, 7 Pet. 313 - 323. McClung v. Kingsland, 1 Howard,
202, 207.
NOVELTY AND UTILITY. 77
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 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." ^
§ 59. This enactment relieved the patentee from the effect
of the former laws, and the construction that had been put
upon them by the courts, and put the person who, by the con-
sent and allowance of the inventor, had had a prior use of the
invention, on the same footing as if he had a special license
from the inventor to use his invention ; and at the same time,
the patent is valid, after it is issued, against all persons, except
such licensee, who will continue to have the right to use the in-
vention.2 Inventors may now, therefore, permit the use of their
inventions, by individuals, for a period of two years, prior to the
application for a patent, and still obtain a valid patent, not-
withstanding such use. But if the use thus allowed extends
over a period of more than two years prior to the application,
or if it amounts to an abandonment of an invention to the
public, whether for a longer or a shorter period, the patent
will be invalid.
§ 60. But to entitle a person to claim the benefit of this
statute, he must be a person who is a purchaser, or who has
Ji The words, " any newly invented machine, manufacture, or composition
of matter," in this statute, have the same meaning as " invention," or " thing
patented." McClurg v. Kingsland, ut supra.
2 McClurg V. Kingsland, ut supra.
78 LAW OF PATENTS.
used the patented invention before the patent was issued, by
a license or grant, or by the consent of the inventor, and not
be a purchaser under a mere wrong-doer.^ What will amount
1 Pierson v. The Eagle Screw Company, 3 Story's R. 402, 405. In tliis
case air. Justice Story said : " For the defendants the argument is, that the
Eagle Screw Company had a right to use the machines purchased by them
from Read before Crum's patent was obtained, although Crum was the prior
and true inventor, and patentee under the 7th section of the Patent Act of
1839, ch. 88 ; and great reliance is placed upon the case of McClurg v.
Kingsland, (1 How. S. C. R. 202.) In my opinion, neither the Act of Con-
gsess, nor the case of McClurg v. Kingsland justifies such a doctrine. Sup-
posing the argument to be well founded, what would be the legal result ?
Why, that a mere wrong-doer, who by fraud or artifice, or gross misconduct,
had gotten knowledge of the patentee's invention before he could obtain his
patent, without any laches on his part, could confer upon a purchaser under
him — Una fide and without notice — a title to the patented machine, which
he himself could not exercise or possess. Certainly there is no ground to
say, that a person who pirates the invention of any party prior in point of
time and right, can make any valid claim thereto against the prior and true
inventor. How then can he confer on others a title, which he himself does
not possess ? Upon general principles, the assignee can ordinarily claim no
more than his assignor can lawfully grant.
But it is said, that the 7th section of the Act of 1839, ch. 88, declares,
" That every person or corporation, who has or shall have purchased or con-
structed any newly invented maoliiue, manufacture or composition of matter,
prior to the application by the inventor or discoverer for a patent, shall be held
to possess the right to use, and vend to others to be used, the specific ma-
chine, manuf^ture or composition of matter, so made or purchased, without
liability therefor to the inventor, or any other person interested in the inven-
tion ; 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 appUcation for
a patent." Certainly, the language in the first clause of this section is very
general, not to say loose, in its texture. But if it stood alone, a first inter-
pretation of it might fairly lead to the conclusion, that the purchaser there
spoken of was a purchaser, not from a mere wrong-doer, but from the first and
true inventor before he had obtained his patent. The language of the clause
does not even include the qualification that the purchaser should be a hond
fide purchaser for a valuable consideration, without notice of the claim or
title of the inventor, or of any fraud of the vendor upon that claim or title.
NOVELTY AND UTILITY. 79
to such a license, grant, or consent, is well shown in a case
where a person employed in the manufactory of another.
Yet, surely, it could never have been the intention of this clause, to confer
on a fraudulent purchaser, or a purchaser with full notice, a right to use
an invention pirated from the original inventor, by wrong. If, on the other
hand, we interpret the language to mean a purchaser from the inventor him-
self, before his application for a patent, the omission of such qualifying
words is at once material and consistent with the apparent objects of the
section. But the remaining clauses of this section render this interpretation
perfectly clear and right. These clauses point solely to tlie inventor, and
demonstrate that the purchaser before spoken of, was a purchaser from the
inventor himself. The language is, " and no patent shall be held to be
invalid by reason of any such purpose, sale or use, prior to the application
for a patent, as aforesaid, except on proof of an abandonment of such inven-
tion to the public." Now the inventor, and the inventor alone. Is compe-
tent to abandon his invention to the public, and no use by the public, except
with his knowledge and consent, can be deemed an abandonment of his in-
vention to the public. It i^, therefore, put as an exception carved out of the
preceding words ; and if the purchase, sale or prior use, were from or under
the inventor, and with his consent and knowledge, the exception would have
its appropriate effect. It is an exception, ejusdem generis. The clause
would then read, in legal effect thus — the patent shall not be held invalid,
by reason that the inventor has sold or allowed his invention to be uged prior
to the application for a patent, unless he has abandoned it to the public.
Then follows the remaining clause : " Or that such purchase,, sale or prior
use, has been for more than two years prior to such application for a patent ; "
which also Imports another exception, limiting the right to make application
for a patent to the period of two years after the inventor has sold or allowed
his invention to be used by others. Any other construction of these clauses,
would lead to thi9<.extraordinary conclusion, that the Inventor would be de-
prived of the benefit of his invention, and his right to a patent without any
laches or misconduct on his own part, by the mere acts of a wrong-doer,
without his knowledge or against his will ; and the exceptions, in a practical
sense, would become nullities. But construed, as we construe them, and
they have a plain, appropriate and satisfactory meaning. This view of the
matter is in entire coincidence with the whole theory and enactments of all
the other Patent Acts, and with the judicial interpretations which have been
constantly put upon them. It has been the uniform doctrine of the courts
of the United States, that no fraudulent or wrongful use of an invention,
and no pubhc use without the consent or knowledge, or sanction of the
inventor, would deprive him of his right to a patent.
80 LAW OF PATENTS.
while receiving wages, made experiments at the expense and
in the manufactory of his employer, had his wages increased
The case of McClurg v. Kingsland, (1 How. Sup. Ch. R. 202,) properly
considered, contains nothing to conflict with this doctrine. The learned
judge (Mr. Justice Baldwin) who delivered the opinion of the court, in com-
menting upon the 7th section of the Act of 1839, said: " The object of this
provision is evidently twofold ; first, to protect the person who used the
thing patented, by having purchased, constructed or used the machine, &c.,
to which the invention is applied, from any liability to the patentee or
his assignee ; second, to protect the rights granted to the patentee against
any infringement by any other persons." This language is certainly general,
but then, in order to understand it correctly, we must apply it to the very
case then before the court ; and in this view it was perfectly accurate and
appropriate. What was that case ? It was a case where the patentee, be-
fore he obtained his patent, allowed the defendants to use for their own profit,
the very improvements invented by him ; and, indeed, the improvement was
invented by the patentee while he was in their employment, and receiving
wages from them, and he freely allowed them to use it. Afterwards, the
assignee of the patentee brought the suit against the defendants for using the
improvement after the patent was granted. The Circuit Court held that the
facts justified the jury in presuming, that the defendants used the improve-
ment under a license or privilege oi-iginally granted to them by the inventor,
and that the facts of the case brought it directly within the 7th section of the
Act of 1839. Mr. Justice Baldwin presided in the Circuit Court at the trial,
and he also delivered the opinion of the Supreme Court. So that, putting
both opinions together on the points in controversy, it is plain that the
learned judge, by the language above stated, meant to afiirm no more than
that where the invention had, before the patent, been used under a license or
grant of the patentee, that license or grant being a purchase or sale, or use
with the .consent of the patentee, was within the provision.^f the 7th section
of the Patent Act of 1839. It seems to us, that no reasonable objection
exists to this doctrine ; and it is in conformity to, and in illustration of, the
vejy doctrine already stated by us as the true meaning of the section.
Indeed, the context immediately following the passage here cited from the
opinion of the learned judge, shows this to have been his meaning. In the
former part of the opinion, he had endeavored to show that, under the prior
Acts of Congress, if the patentee allowed not merely the public use, but
even a free individual use of his invention before he obtained a patent, that
would deprive him of his right to a patent ; and that the 7th section of the
Act of 1839, was intended to cure this inconvenience and defect in the law.
" This " [section] says the learned judge, " relieved him (the patentee) from
NOVELTY AND UTILITY. 81
in consequence of the useful result of the experiment, made
the article invented, and permitted his employer to use it, no
compensation for its use being paid or demanded, and then
obtained a patent; it was held, that such an unmolested and
notorious use of the invention, prior to the application for a
patent, brought the case within the provisions of the statute.^
§ 61. But the further consideration of the subjects of license
and abandonment belongs to another part of this treatise.
§ 62. The novelty required by our law relates not merely to
previous inventions made in this country, but to inventions
made any where in the world. The invention must be abso-
lutely and not relatively new. It must not have been known
or used anywhere, and not described in any public work.^
§ 63. But there is an important proviso, introduced into the
statute, which declares that whenever it shall satisfactorily
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
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 sub-
stantial part thereof had before been patented or described in
the effect of the former laws and their constructions, by this Court, &c., &c.,
■while it puts the person who has had such prior use on the same footing as
if he had a special license from the inventor to use his invention ; which, if
o-iven before the application for a patent, would justify the continued use
after it issued without liability." So that here we have expressed, in a pointed
manner, the true object and intent of the 7th section of the Act of 1839,
which was to give validity to the patent, and yet to secure to a purchaser
from him before the patent, the same right to use the same after the patent
which he previously possessed."
1 McClurg V. Kingsland, 1 Howard, 202.
2 Shaw V. Cooper, 7 Peters, 292. Dawson v. Follen, 2 Washington, 311.
Actof 183G, § 15.
11
82 LAW OF PATENTS.
any printed publication.^ So that, as the law now stands,
an inventor who does not borrow from a foreign discovery,
that is, who believes himself to be the first inventor or dis-
coverer of the thing patented, can only be deprived of the
benefit of his patent, by showing that the thing had been
before patented, or described in some printed publication. It
will not be enough to show that the thing had been known
or used in a foreign country, if it had not been patented, or
described in a printed publication.
§ 64. Thus, while the recent statute still continues the pre-
sumption that the patentee has seen the prior description
contained in a printed publication, and makes that presump-
tion conclusive,^ it relieves an original inventor from the same
presumption, arising out of the mere previous knowledge or
use of the thing in a foreign country where it had not been
patented or described ; and if he can take the oath that he
discovered or invented the thing, he will not be debarred of
his patent, by a prior invention or discovery and secret use
of the thing, in a foreign country."^
§ 65. No judicial construction has yet been given to the
phrases, " described in some public work " and " described in
any printed publication." It has been suggested by a learned
writer, that the courts would not, probably, require that the
description in a public work should fully answer as a specifi-
cation, but would require that it should serve as a direction
for making or doing the thing to which the description re-
1 Act of 1836, § 15.
2 Upon tbe former law, the Supreme Court of the United States said " It
may be that the patentee had no knowledge of this previous use or previous
description ; still his patent is void ; the law supposes he may have known
it." Evans v. Eaton, 3 Wheat. 514.
3 The text was written before the opinion on this point lately given by the
Attorney-General of tlie United States, under date of August 30, 1848, which
agrees with mv construction of the Statutes.
NOVELTY AND UTILITY. 83
lated.i It also remains to be determined what is to be con-
sidered as a " public work," or " printed publication."
§ 66. It remains to be stated, that the consideration upon
which a patent is granted, is the novelty of every material
thing, process, or part of the invention, included in the sub-
ject-matter, that is represented as a substantial and material
part thereof; that this consideration is an entirety, and con-
sequently, that if any part of it fails, the patent is invalid.
This consequence results from the general principles of law
which govern grants by the public, and these principles are
recognized by the statute, which establishes as one of the
defences to an action on a patent " 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." ^
§ 67. So also, in respect of utility, if a patent contains
more than is necessary to produce the described effect, and
the addition was made for the purpose of deceiving the pub-
lic, it will be invalid ;3 and if the whole patent fails to pro-
duce the described eifect, no action can be maintained upon
it.4
1 Phillips on Patents, 1 75.
2 Act of July 4th, 1836, § 15. See further, as to the failure of the patent
in whole or in part, in respect to novelty, post, in the chapter on Infringe-
ment. As to the mode of remedying these defects, see post, in the chapter
on Renewal of Patents, and in the chapter on Defences.
3 Act of July 4th, 1836, § 15.
* See post in the chapter on Infringement.
CHAPTER II.
THE SUBJECT OF INVENTIOJT OR DISCOVERY.
§ 68. The Act of Congress of July 4, 1836, ch. 357, § 6,
declares the subject of letters-patent to be " any new and use-
ful art, machine, manufacture or composition of matter, or
any nevvajid useful improvement on any art, machine, manu-
facture or composition of matter." In the preceding chapter,
we have considered the qualifications of novelty and utility,
with reference to all these subjects ; and we have now to
treat of the several subjects themselves.
§ 69. In England, the Statute of Monopolies made the
subject-matter of letters-patent " the sole working or making
of any manner of new manufactures within this realm." It
has been doubted whether the employment of other phrases
has had any great tendency to elucidate the subject. Lan-
guage may be inadequate to express all the minute distinc-
tions which present themselves, in considering what may,
consistently with the purposes and objects of the Patent Law,
be the subject of a patent. But whether we have or have not
gained any thing in point of precision and certainty, by the
enumeration in our statute, perhaps we have not enlarged
the subject of patents beyond the general scope of the Eng-
lish law, as judicially expounded. At least, the English
exposition of the term " manufactures" will help us to under-
stand what is intended by the classification in our own sta-
tute.
§ 70. The cardinal principle, which lies at the foundation
INVENTION OR DISCOVERY. 85
of the Patent Law in England, as well as in this and most
other countries, is, that whatever be the character of the sub-
ject-matter, or the way in which it is described, the result
must be an effect produced in manufactured, as distinguished
from elementary matter.^ The subject-matter of a patent
may be either a thing produced or the mode of producing a
thing; but it must be the one or the other, and can never
be a new discovery of an elementary principle, without prac-
tical application to the production of some particular effect
in matter. This fundamental rule is deducible not only from
the meaning of the term " manufacture," which cannot be
made to mean any thing that does not result in manufactured
matter in some way — but also from the general scope and
spirit of the Patent Law, which was not designed to create
monopolies in abstract principles or theoretical discoveries,
but to promote the arts and manufactures of the country .2
1 " All invention, whatever its object, will consist in new applications, or
adaptations. Matter is endowed with certain properties, and subject to cer-
tain laws ; man cannot alter these properties or impose other laws, but he
has the power of applying those properties and of giving occasion for the
exercise of those laws according to his will, and the result of the exercise of
that will, is exhibited in manufactured as distinguished from elementary mat-
ter." AVcbster on the Subject-Matter of Letters-Patent for Inventions, (Lon-
don, 1841,) p. 7.
2 " Now the word ' manufactures ' has been generally understood to denote
either a thing made, which is useful for its own sake, and vendible as such,
as a medicine, a stove, a telescope and many others, or to mean an engine
or instrument, or some part of an engine or instrument, to be employed,
either in the making of some previously known article, or in some other useful
purpose, as a stocking-frame, or a steam-engine for raising water from mines.
Or it may perhaps extend also to a mere process, to be carried on by known
implements or elements, acting upon known substances, and ultimately pro-
ducing some other known substance, but producing it in a cheaper or more
expeditious manner, or of a better or more useful kind. But no merely
philosophical or abstract principle can answer to the word manufactures.
Something of a corporeal and substantial nature, something that can be made
by man from the matters subjected to his art and skill, or at the least, some
new mode of employing practically his art and skill, is requisite to satisfy
this word. A person, therefore, who applies to the crown for a patent, may
86 LAW OF PATENTS.
§ 71. But, subject to this restriction, the words, "any man-
ner of new manufactures," in the Statute of Monopolies, have
received in construction a comprehensive import. According
to the construction of the Courts, the word manufacture is
used in the statute in a literal and a figurative sense. It is
used in a literal sense, because it clearly includes any species
of new manufactured article, or tangible product of industry;
or a new machine, the construction or production of which,
as an arrangement of matter, is the result at which the
inventor aims. But when it is extended to include the mode
of producing an old or well-known substance, or an old and
well-known effect upon matter, by a new method or process,
it seems to be used in a sort of figurative sense ; because, in
such cases, it is the method or process of producing the thing
or the effect that is new, and is the real subject of the inven-
tion, and the manufacture, or the result attained in matter, is
then made to stand in the place of the new method or pro-
cess of attaining it.
§ 72. Thus, "manufacture" has been defined to be "some-
represent himself to be the inventor of some new thing, or of some new engine
or instrument. And in the latter case he may represent himself to be the
inventor of a new method of accomplishing that object, which is to be accom-
plished by his new engine or instrument, as was the case of WatCs Patent,
in which he represented himself to be the inventor of a new method of les-
sening the consumption of steam and fuel in fire-engines, and by his specifi-
cation he described certain parts to be used in the construction of fire-engines.
Or supposing a new process to be the lawful subject of a patent, he may
represent himself to be the inventor of a new process, in which case it should
seem that the word " method " may be properly used as synonymous with
process. The language of the patent may be explained and reduced to cer-
tainty by the specification ; but the patent must not represent the party to be
the inventor of one thing, and the specification show him to be the inventor
of another, because, perhaps, if he had represented himself as the inventor
of that other, it might have been well known that the thing was of no use,
or was in common use, and he might not have obtained a grant as the in-
ventor of it." The King v. Wheeler, 2 B. & Aid. 349, 350.
INVENTION OR DISCOVERY. 87
thing made by the hand of man;" ^ and it has also been held
to include the practice of making a thing, or of producing a
result.2 As in Watt's patent for " a method of lessening the
1 Per Lord Kenyon, in Hornblower v. Boulton, 8 T. R. 99.
2 " It was admitted, at the argument at the bar, that the -word ' manufac-
ture,' in the statute, was of extensive signification ; that it apphed not only
to things made, but to i\\Q practice of making, to principles carried into prac-
tice in a new manner, and to new results of principles carried into practice.
Let us pursue this admission. Under things made we may class, in the first
place, new compositions of things, such as manufactures in the most ordinary
sense of the word ; secondly, all mechanical inventions, whether made to
produce old or new effects, for a new piece of mechanism is certainly a thing
made. Under the practice of making, we may class all new artificial man-
ners of operating with the hand, or with instruments in common use, new
processes in any art, producing effects useful to the public. When the effect
produced is some new substance or composition of things, it should seem that
the privilege of the sole working or making ought to be for such new sub-
stance or composition, without regard to the mechanism or process by which
it has been produced, which, though perhaps also new, will be only useful as
producing the new substance. Upon this ground Dolland's patent was per-
haps exceptionable, for that was for a method of producing a new object
glass, instead of being for the object glass produced. If Dr. James's patent
had been for his method for preparing his powders, instead of the powders
themselves, that patent would have been exceptionable upon the same
ground. When the effect produced is no substance or composition of
things, the patent can only be for the mechanism, if new mechanism is used,
or for the process, if it be a new method of operating, with or without old
mechanism, by which the effect is produced. To illustrate this. The effect
produced by Mr. David Hartley's invention for securing buildings from fire
is no substance, or composition of things ; it is a mere negative quality, u\e
absence of fire. This effect is produced by a new method of disposing iron
plates in buildings. In the nature of things, the patent could not be for the
effect produced. I think it could not be for making the plates of iron,
which, when disposed in a particular manner, produced the effect ; for those
are things in common use. But the invention consists in the method of dis-
posing those plates of iron so as to produce their effect ; and that effect being
a useful and meritorious one, the patent seems to have been very properly
granted to him for his method of securing buildings from fire. And this
compendious analysis o(i\eiv manufactures mentioned in the statute, satisfies
my doubt, whether any thing could be the subject of a patent but something
organized and capable of precise specification. But for the more satisfac-
88 LAW OF PATENTS.
consumption of steam and fuel in fire-engines," which was
held, after great consideration, to be a good subject-matter.^
The distinction to which this case gave rise, and which
greatly extended the meaning of the term " manufacture," is
this : that although a principle, or a rule in mechanics, or an
elementary truth in physics, cannot be the subject of a
patent, yet a new principle, rule, or truth, developed, carried
out, and embodied in the mode of using it, may be the sub-
ject of a patent. A mere principle is an abstract discovery,
incapable of answering the term " manufacture ; " but a
tory solution of the other points which are made in this case, I shall pursue
this subject a little further. In Mr. Hartley's method, plates of iron are the
means which he employs ; but he did not invent those means ; the invention
wholly consisted in the new manner of usiny, or I would rather say of dis-
posing, a thing in commo7i use, and which every man might make at his
pleasure, and which, therefore, I repeat, could not, in my judgment, be the
subject of the patent. In the nature of things it must be that, in the carry-
inor into execution any new invention, use must be made of certain means
proper for the operation. Manual labor, to a certain degree, must always
be employed ; the tools of artists frequently ; often things manufactured,
but not newly invented, such as Hartley's iron plates ; all the common
utensils used in conducting any process, and so up to the most complicated
machinery that the art of man ever devised. Now let the merit of the
invention be what It may, it is evident that the patent, in almost all these
cases, cannot be granted for the means by which It acts, for In them there is
nothing new, and In some of them nothing capable of approbation. Even
where the most complicated machinery Is used, If the machinery Itself is not
newly invented, but only conducted by the skill of the inventor so as to pro-
duce a new effect, the patent cannot be for the machinery. In Hartley's
case It could not be for the ejfect produced ; for the effect, as I have already
observed, Is merely negative, though it was meritorious. In the list of
patents with which I have been furnished, there are several for new
methods of manufacturing articles In common use, where the sole merit and
the whole effect produced are the saving of time and expense, and thereby
lowering the price of the article, and Introducing it into more general use.
Now I think these methods may be said to be new manufactures, in one of
the common acceptations of the word, as we speak of the manufactory ot
glass, or of any other thing of that kind." Per Eyre, C. J., in Boulton v.
Bull. 2 H. Bl. 492.
i Boulton V. Bull, itt supra. Hornblower v. Boulton, ut supra.
INVENTION OR DISCOVERY. 89
principle so far embodied and connected with corporeal sub-
stances, as to be in a condition to act and to produce effects
in any art, trade, mystery, or manual occupation, becomes
the practical manner of doing a particular thing. It is no
longer a principle, but a process.^ Mr. Watt's invention was
the discovery of a practical means of lessening the consump-
tion of steam, by protecting the cylinder from the external
air, and keeping it at a temperature not below that of steam
itself. He thus brought a principle into practical application,
by the invention of a process.
§ 73. In like manner, a patent for the application of the
flame of gas, instead of the flame of oil, to remove the super-
fluous fibres of lace, was sustained.^ So, too, where the
invention consisted in the use and application of lime and
mine-rubbish in the smelting of iron, Lord Eldon said there
might be a patent for a new combination of materials pre-
viously in use for the same purpose, or for a new method of
applying such materials.^ But this distinction has been
made still more prominent by two recent cases. In one, the
patent was for the application of anthracite, combined with
hot-air blast, in the smelting or manufacture of iron from
iron stone, mine, or ore ; and the patent was sustained.* In
the other, the invention was of a mode of welding iron tubes,
without the use of a maundril, or any internal support ; and
this patent was also sustained.^
§ 74. These cases show that the term manufacture has
been extended to include every object upon which art or skill
^ See the remarks of Eyre, C. J., ante.
2 Hall V. Jervis, Webs. JPat. Cas. 100.
3 Hill V. Thompson, 3 Mer. 626. Webs. Pat. Cas. 237. In Morgan v.
Seaward, 2 Mecs. & W. 544, Mr- Baron Parke said : — " The word manu-
facture, in the statute, must be construed one of two ways ; it may mean
the machine when completed, or the mode of constructing the machine.
4 Crane v. Price, Webs. Pat. Cas. 393, 408.
5 Russell V. Cowley, Webs. Pat. Cas. 459.
12
90 LAW OF PATENTS.
can be exercised, so as to afford products fabricated by the
hand of man, or by the labor which he directs.^ In this sense
it includes a process ; so that a patent may, it is said, be
taken for a process, method, or practical application of a
principle, that will cover every means or apparatus by which
that process or method can be carried on, or by which that
principle can be applied, provided the patentee has not only
discovered the principle, but has also invented some mode of
carrying it into effect.^
§ 74 a. But it is necessary here to consider the broad
question, what constitutes a patentable subject, before we
attend to the classification of patentable subjects adopted by
our statute.
§ 75. It is constantly to be borne in mind, in considering
what may be the subject of a valid patent, that it cannot be
a mere elementary principle, or intellectual discovery ; but if
a principle constitutes an important part of the discovery, it
must be a principle put in practice and applied to some art.^
A science, therefore, or an elementary principle or discovery
in science, cannot be the subject of a patent. So, too, there
cannot be a patent for an effect, but it must be for the mode
or means by which the effect is produced ; ^ or the practical
mode of operating, by means of certain agencies or proper-
ties of matter, or laws of physics, so as to produce a given
effect.
1 Webster's Law and Practice, Supplement, p. 8.
2 Forsyth t'. Riviere, "Webs. Pat. Cas. 97, note. Per Alderson, B., in Jupe
V. Pratt, Ibid. 146, and in Xielson v. Hartford, Ibid. 342.
3 Earl V. Sawyer, 4 Mass. 1-6. " The very statement of what a prin-
ciple is, proves it not to be a ground for a patent. It is the first ground and
rule for arts and sciences, or, in other words, the elements and rudiments of
them. A patent must be for some new production from those elements, and
not for the elements themselves." Per Buller, J., in Boulton i;. Bull, 2 H.
Bl. 485.
4 Whittemore v. Cutter, 1 Gallis. 478, 480.
INVENTION OR DISCOVERY. 91
§ 76. The consequences of allowing a patent for an ab-
stract art or a principle, instead of allowing it only for a
principle as applied to the production of a particular thing,
or a particular result in matter, are apparent, when it is con-
sidered that principles are the elements of science ; and if a
a patent could be taken for a newly discovered principle in
science, it would cover every object to which that principle
could be applied, and the whole field of the arts would thus
at once be occupied by a few monopolists.^ If a patent for
an art or method of combining different elements or principles
in science were possible, without its being confined to a par-
ticular product or result by means of such an art or method,
every product, substance, or manufacture, to the creation of
which that art or method could be applied, would be included
in it. Thus it has been happily pointed out by an eminent
English judge that if a man could have a patent for the prin-
ciple or abstract art of intermixing water with oil colors, no
other man could have had a patent for any distinct manufac-
ture produced on the same principle.^ The distinction is
this : — if a discovery consists merely in detecting some new
property of matter, or of the elements of nature, or the laws
of physics, but no special and positive application is made of
it to specific fabrications, it is a discovery in science, or ab-
1 " Indeed it seems impossible to specify a principle, and its application to
all Ccises, which furnishes an argument that it cannot be the subject of a
a patent." Per Heath, J., in Boulton v. Bull, 2 H. Bl. 483.
2 The case of vrater tabbies, -which has often been mentioned in Westmin-
ster Hall, may afford some illustration of this subject. That invention first
owed its rise to the accident of a man's spitting on a floor cloth, which
changed its color, from whence he reasoned on the effect of intermixing
water with oils or colors, and found out how to make water tabbies and had
his patent for water tabbies only. But if he could have had a patent for the
principle of intermLvIng water with oil or colors, no man could have had a
patent for any distinct manufacture produced on the same principle, yet as
the floor cloth and the tabby are distinct substances, calculated for distinct
purposes, and were unknown to the world before, a patent for one would be
no objection to a patent for another." Per Buller, J., in Boulton v. Bull,
2 H. Bl. 487.
92 LAW OF PATENTS.
stract mechanics, and not patentable ; but if the discoverer
makes use of such a new property, or avails himself of sci-
entific or mechanical principles, for the production of a new-
substance, instrument or machine, obtaining a result that is
new, and of a vendible description, the particular mode of
producing that particular thing may be the subject of a pa-
tent.i This distinction has been previously noticed ; but it is
necessary here to examine the doctrine, and to ascertain to
what objects the distinction has been applied, and what seem
to be its necessary limits.
§ 77. We have already seen that the term "manufacture"
being the only generic term used in the Statute of Monopo-
lies to describe the subjects of lawful patents, it became ne-
cessary to enlarge it by construction much beyond its literal
import. As soon as it was held that a patent could be taken
1 A striking illustration of this distinction occurred before Mr. Justice
Story. The plaintiff's specification claimed " as new, to cut ice, of a uni-
form size, by means of an apparatus worked by any other power than human.
The invention of this art, as well as the particular method of the application
of the principle, are claimed by the subscriber." The learned judge said " it
is plain, then, that here the patentee claims a title to the art of cutting ice by
means of any power other than human power. Such a claim is surely un-
maintainable in pbint of law. It is a claim for an art or principle in the ab-
stract, and not for any particular method or machinery by which ice is to be
cut. No man can have a right to cut ice by all means or methods, or by all
or any sort of apparatus, although he is not the inventor of any or all of such
means, methods, or apparatus." "Wyeth v. Stone, 1 Story's R. 273, 285.
But the court intimated that the claim for the particular method of the appli-
cation of the principle would have been good, if a disclaimer had been filed
in season as to that part of the claim which was clearly bad. Ibid.
See also Stone v. Sprague, 1 Story's R. 270, where in a patent for an
improvement on looms, the invention claimed was the communication of
motion from the reed to the yarn beam, in the connection of the one with the
other, which is produced as follows, describing the mode, it was held, that
the invention was limited to the specific machinery and mode of communicat-
ing the motion, &c., specifically described in the specification ; otherwise it
would be a claim for the abstract principle of communicating motion in all
possible modes.
INVENTION OR DISCOVERY. 93'
for the mode of producing an effect, as in Watt's case, for
the mode of lessening the consumption of steam in a steam-
engine, the literal meaning of this term was widely departed
from, and that was held to be a "manufacture" within the
meaning of the statute, which in reality consisted in the new
application of certain principles of physics, to effect the more
economical use of a well-known machine. This, of necessity,
opened the whole subject of principle and method, and led to
the doctrine which we are now to state.
§ 78. Although a patent cannot be taken out for a new
principle, yet, where it has been embodied, so as to be capa-
ble of being made active, it is, as we have seen, a proper
subject of a patent ; and if any other person puts that prin-
ciple into use, in any other form, it is a question for a jury,
whether that form be not substantially an adaptation of the
principle, applied with the same view to answer the same
end, and merely imitated in substance, whatever difference
there may be in point of form. If the patentee has invented
some mode of carrying the principle into effect, he is entitled,
it is said, to protect himself from all other modes of carrying
the same principle into effect.^ In j)oint of fact, the patent
in such cases is taken, not for the principle itself but for the
mode of carrying into effect ;- so that when it is alleged that
1 In Jupe V. Pratt, Webs. Pat. Cas. 144, 14G, Alderson, B., said, " The diffi-
culty which ■will press on jou, and to which jour attention will be called, in
the present case, is this : you can take out a patent for a principle coupled
with the mode of carrying the principle into effect, provided you have not
only discovered the principle, but invented some mode of carrying it into
effect. But then you must start with having invented some mode of carry-
intr 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 a 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."
2 See HiU v. Thompson, Webs. Pat. Cas. 227 ; 3 Meriv. 626.
94 LAW OF PATENTS.
an infringement has taken place, the question is whether the
defendant has undertaken to 'carry the same principles into
effect in the same mode, so that, in substance, all the varia-
tions of means and appliances which he has made use of are
merely colorable variations of the mode of carrying it into
effect, invented by the patentee. This seems to be what is
intended by the learned judge whose observations are cited
in the foregoing note, when he says that the patentee is enti-
tled to protection against all other means of carrying the
principle into effect.^ He is entitled to protection against all
colorable variations for carrying the same principle into prac-
tice for obtaining the same effect or result.^
§ 79. Thus, there may be a patent for the practical appli-
cation of a known thing to produce a particular effect. As
in the case of Hartley's invention to protect buildings from
fire, by the application of plates of metal.^ So too, in the
case of Forsyth's patent, for the application of detonating
1 See the observations of the same learned judge, in Neilson v. Harford,
Webs. Pat. Cas. 342.
2 In Gray v. James, Peters's Cir. C. R. 394, 400, where the patent was
"for an improvement in the art of making nails by means of a machine
which cuts and heads the nail at one operation," Washington, J., applied
the same doctrine, holding that where two machines are substantially the
same, and operate in the same manner, to produce the same result, they
must be in principle the same ; and that when the same result is referred to
as the test, it must mean the same kind of result though it may differ in
extent. He further instructed the jury as follows : " The patent is sup-
posed to be for the machine itself, which is composed of parts which have
long become public property. This is not the fact. The patent is for an
improvement in the art of making nails by means of a machine which cuts
and heads the nails at one operation. It is therefore not the grant of an
abstract principle, nor is it the grant of the different parts of any machine ;
but of an improvement applied to a practical use, effected by a combination
of various mechanical powers to produce a new result. The lever, the vice,
the cutters, the dies, &c., may be used by any person without a violation of
the plaintiff"'s patent. But they cannot be used in their combined state to
produce by the same operation, the same result, which is the distinguishing
characteristic of the plaintiff's machine, without a license from the owners."
3 See Boulton v. Bull, 2 H. Bl. 495. Webs. Pat. Cas. 54, 56, note.
INVENTION OR DISCOVERY. 95
powder, which he did not invent, to the discharge of artillery,
mines, &c., the patentee succeeded in an action against a
party using a lock of different construction to any shown in
the drawing annexed to his specification, and thus established
his right to the exclusive use and application of detonating
powder as priming, whatever the construction of the lock by
which it was discharged.^ In the same way, where the plain-
tiff had obtained a patent for the application of the flame of
gas, to singe off the superfluous fibres of lace and other
goods, but did 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 gas to the purposes
described in his specification, he had a verdict founded on
his sole right to use gas flame for the clearing of fibres from
lace.2 So also, where the invention consisted in the use of
anthracite or stone coal, combined with the hot-air blast, in the
smelting or manufacture of iron from iron stone, mine or ore ;
and the using of the hot blast was known before in the manu-
facture of iron with bituminous coal, and the use of anthra-
cite or stone coal was known before in the manufacture of
iron with cold blast, but the combination of the hot blast and
the anthracite was not known before in the manufacture of
iron, the Court of Common Pleas declared, that if the result
produced by such a combination is either a new article or a
better article, or a cheaper article to the public than that pro-
duced before by the old method, such combination is an in-
vention or manufacture intended by the statute, and may well
become the subject of a patent.^ Again, where the invention
1 Forsyth v. Riviere, Webs. Pat. Cas. 95, 97, note.
~ Hall V. Jervis, Webs. Pat. Cas. 100, 103. See, also, a case where the
invention undoubtedly consisted in bringing a newly discovered principle
into practical application, namely, that lead could be forced by extreme
pressure, when in a set or solid state, to reunite, after separation of its parts,
as completely as though it had never been separated ; but the patent was
held not to be so drawn as to embrace it. Le Roy v. Tatham, 14 Howard,
156. See the very able discussion by Mr. Justice Nelson, in his dissenting
opinion, of the doctrine of the patentability of a principle, referred to in
the text.
3 Crane v. Price, Webs. Pat. Cas. .393, 408. In this case Sir N. C. Tin-
96 LAW OF PATENTS.
was to manufacture iron tubes by welding them, without the
dall, C. J., said : " Now in order to determine whether the improvement
described in the patent, is or is not a manufacture within the statute, we
must, in the first place, ascertain precisely what is the invention claimed by
the plaintiff; and then, by the application of some principles, admitted and
acknowledged in the application of the law relating to patents, and by the
authority of decided cases, determine the question in dispute between the par-
ties. The plaintiff describes the object of his invention to be the application of
anthracite or stone coal, combined with hot-air blast in the smelting or manu-
facture of iron from iron stone, mine, or ore, and states distinctly and une-
quivocally at the end of his specification, that he does not claim the use of a
hot-air blast, separately, as of his invention, when uncombined with the
application of anthracite or stone coal. Nor does he claim the application
of anthracite or stone coal, when uncombined Avith the using of hot-air blast,
in the smelting and manufacture of iron from iron stone, mine or ore. And
the question, therefore, becomes this — whether, admitting the using of the
hot-air blast to have been known before in the manufacture of iron with
bituminous coal, and the use of anthracite or stone coal, to have been known
before in the manufacture of iron with coal blast, but that the combination
of the two together (the hot blast and the anthracite) were not known to be
combined before in the manufacture of iron, whether such combination can
be the subject of a patent.
We are of opinion, that if the result produced by such a combination is
eitlier a new article, or a better article, or a cheaper article to the public,
than that produced before by the old method, that such combination is an in-
vention or manufacture intended by the statute, and may well become the
subject of a patent. Such an assumed state of facts falls clearly within the
principle exemplified by Abbott, C J., (The King v. Wheeler, 2 B. & Aid.
349,) where he is determining what is or what is not the subject of a patent;
namely, it may, perhaps, extend to a new process, to be carried on by known
implements or elements acting upon known substances, and ultimately pro-
ducing some other known substance, but producing it in a cheaper or more
expeditious manner, or a better or more useful kind. And it falls also within
the doctrine laid down by Lord Eldon, (Hill i-. Thompson, Webs. Pat. Cas.
p. 237,) that there may be a valid patent for a new combination of materials
previously in use for the same purpose, or even for a new method of applying
such materials. But the specification must clearly express, that it is in
respect of such new combination or application.
There are numerous instances of patents, where the invention consisted
in no more than in the use of things already known, and acting with them
in a manner ali-eady known, and producing effects already known, but pro-
ducing those effects so as to be more economically or beneficially enjoyed by
the public. It will be sufficient to refer to a few instances, some of which
INVENTION OR DISCOVERY. 97
use of any maundril, or internal support, but the patentee did
not claim any precise construction of apparatus for this pur-
pose, but his claim consisted in heating the previously pre-
pared tubes of iron to a welding heat, and then, without any
internal support, drawing them between dies or holes, by
which the edges of the heated iron became pressed and
welded together ; and the defendant had made tubes upon
the same principle of manufacture, but with a somewhat
varied apparatus ; the patentee had a verdict for the infringe-
ment, and his patent was afterwards sustained before the
Court of Exchequer in banc}
— V —
patents have failed on other grounds, but none on the ground that the inven-
tion itself was not the subject of a patent.
We may first instance Hall's patent for applying the flame of gas to singe
off the superfluous fibres of lace, where a flame of oil had been used before
for the same purpose. (Webs. Pat. Cas. p. 97.) Derosne's patent, in which
the invention consisted in filtering the syrup of sugar through a filter, to act
with animal charcoal, and charcoal from bituminous schistus, where charcoal
had been used before in the filtering of almost every other liquor, except the
syrup of sugar. (Webs Pat. Cas. p. 152.) Hill's patent, above referred to,
for improvements in the smelting and working of iron ; there the invention
consisted only in the use and application of the slags or cinders thrown off
by the operation of smelting, which had been previously considered useless
for the production of good and serviceable metal, by the admixture of mine
rubbish. Again, Daniell's patent was taken out for improvements in dress-
ing woolen cloth, where the invention consisted in immersing a roll of cloth,
manufactured in the usual manner, into hot water. (Webs. Pat. Cas. 71,
note e., and the King v. Daniell, Godson on Pat. 274.)
The only question, therefore, that ought to be considered on the evidence
is, was the iron produced by the combination of the hot blast and the anthra-
cite, a better or a cheaper article than was before produced from the com-
bination of the hot blast and the bituminous coal ; and was the combination
described in the specification, new, as to the public use thereof in England.
And, upon the first point, upon looking at the evidence in the cause, we
think there is no doubt, that the result of the combination of the hot blast
with the anthracite on the yield of the furnace was more, the nature, pro-
perties and quality of the iron better, and the expense of making the iron
less than it was under the former process, by means of the combination of
the hot blast with the bituminous coal."
1 Russell V. Cowley, Webs. Pat. Cas. 459, 465. At the trial, at the close
of the plaintirs case, Lord Lyndhurst, C. B., who presided, recalled Mr.
13
98 LAW OF PATENTS.
§ 80. And where the invention consisted in the application
of heated air as a blast for fires, forges, and furnaces, but the
Brunei and Mr. Donkin, when the following questions were put, and
answers given. Lord Lyndhurst, C. B. : " When the upper roller is down,
its lower edge lies upon the upper ledge of the under roller , and there is a
hole between the rollers, and through that hole, by means of the revolution
of the rollers, the heated tube is drawn. Now, I wish to ask you, whether
that (without the scorpion) which they say, by pressure, welds the heated
tube — the sides of the hole, they say, weld the tube — is in your judgment
similar, though not exactly the same, similar to the invention of the plaintiff;
the plaintiflf stating that his invention is of this description — " The principle
of my invention is the heating the previously prepared tubes of iron to a
welding heat, that is, nearly to the point of fusion, and then, after withdraw-
ing them from the heat, to pass them between dies, or through holes, by which
the edges of the heated iron may be pressed together, and the joint firmly
welded." " I want to know whether that effect is produced by the rollers,
although not so perfectly as by the dies?" Mr. Brunei — "It is produced
by the rollers."
" Then I want to know whether the passing them through the rollers in
that way alone is not similar, although not so perfect, as passing them
through the dies or through the tongs ? " Mr. Brunei — " It is my opinion
that it is the same."
" It is by the pressure of the sides of that hole, that the edges of the heated
iron are welded together ? " Mr. Brunei — " It is."
" By passing through the holes of the dies, it is by the pressure of the
sides of the hole that the edges of the heated iron are welded together ? "
Mr. Brunei — " Quite so."
" Then I ask, whether, if it is a question of welding, the one is in your
judgment similar to the other ? " Mr. Brunei — " It is."
" Mr. Donkin, you have heard the questions I have put to Mr. Brunei —
I wish to have your opinion upon the same point ? " Mr. Donkin — "I think
the holes, when closed, one upon the other, produce a similar effect, and the
method of welding is therefore the same."
" Then you think one invention, in principle, is similar to the other ? "
Mr. Donkin — "I do."
Lord Lyndhurst, C. B. : I confess it appeared to me from reading the spe-
cification, that without the scorpion, the one is an imitation of the other ;
because this party says, " I do not claim this particular apparatus only. I do
it by the die, or I do it by the tongs ; the principle of my invention is, to
pass the heated tubes through the hole at a welding heat, and by pressure
occasioned by that hole, to unite together the heated edges by welding."
That may be done more or less perfectly — whether it is by the rollers or by
the tongs, it is not very material ; the one is similar in principle to the other.
INVENTION OR DISCOVERY. 99
patentee claimed no particular form of apparatus for heating
the air, but described an apparatus by which it might be
heated ; and the defendant had employed an apparatus con-
fessedly superior in its effects to that described in the plain-
tiff's specification, and such an improvement as would have
supported a patent ; but as it involved the principle of the
plaintiff's invention, it was held an infringement.!
§ 80 a. A recent case in the Supreme Court of the United
States presents an apt illustration of the distinction between
a claim for the machinery by which a newly discovered prin-
ciple is carried into practical application, for the production
of a useful article, and the discovery and application of the
principle itself. The plaintiffs discovered the principle that
lead when recently set and solid, but still under heat and ex-
treme pressure, in a close vessel, would re-unite after a sepa-
ration of its parts, and " heal, as it were by the first inten-
1 Neilson v. Harford, Webs. Pat. Cas. 295, 310, 328. Mr. Baron Parke
in this case said to the Jury : " Now the best way of disposing of this case, I
think will be to take those questions in order upon Avhich you are to pro-
nounce your opinion ; and the first is, whether the defendants have been
guilty of infringing the patent? and I apprehend that there is no doubt they
have, if the patent be a good patent, and if the specification be free from the
objections that are raised to it ; and if the specification is to be understood
in the sense claimed by the plaintiffs, the invention of heating the air between
its leaving the blowing apparatus 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 defendants' 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 vessels 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 species of machinery or appa-
ratus constructed under this patent, it appears to me that it would be an
infringement of it ; therefore your verdict upon that issue would be for the
plaintiff, provided it is for the plaintiff on the other issues."
100 LAW OF PATENTS.
tion," as completely as though it had not been divided. This
new property they applied to the manufacture of lead pipe ;
but their patent, in the opinion of a majority of the court,
claimed the machinery alone, by which the application of the
discovery was made, and tliis machinery turned out not to
be new. The following dissenting opinion, delivered by
Mr. Justice Nelson, in this case, contains an exceedingly able
discussion of the doctrine by which the application of a newly
discovered principle becomes the subject of a patent, — a doc-
trine, it should be observed, which the view taken by the
majority of the court, did not necessarily controvert.^
" The patent in this case, according to the general description
given by the patentees, is for improvements upon, and additions
to, the machinery or apparatus of Thomas Burr, for manufac-
turing pipes and tubes from metallic substances. They declare
that the nature of their invention, and the manner in which
the same is to operate, are particularly described and set forth
in their specification. In that they refer to the patent of
Burr of the 11th April, 1820, for making lead pipe out of set
or solid lead by means of great pressure, the product being
wrought pipe, as contradistinguished from cast, or pipe made
according to the draw-bench system. The apparatus, as
described by Burr, consisted of a strong iron cylinder, bored
sufficiently true for a piston to traverse easily within it. This
cylinder was closed at one end by the piston, and also closed
at the other, except a small aperture for the die, which formed
the external diameter of the pipe. The core or mandrel which
determined the inner diameter, was a long cylindrical rod of
steel, one end of which was attached to the face of the piston,
extending through the centre of the cylinder, and passing also
through the centre of the die at the opposite end, leaving a
space around the core, and between it and the die, for the for-
mation of the pipe. The metal to form the pipe was ad-
mitted into the cylinder in a fluid state, and when it became
set or solid, the power of a hydraulic press was applied to
1 Le Roy v. Tathani, 14 Howard, 156, 17 7.
INVENTION OR DISCOVERY. 101
the head of the piston, which, moving against the body of solid
lead in the cylinder, drove it through the die, the long core
advancing with the piston and with the body of lead through
the die, and thus forming the pipe. The cylinder usually
holds from three to four hundred pounds of lead, and continu-
ous pipe is made till the whole charge is driven out.
This plan, though one of deserved merit, and of great ori-
ginality, failed when reduced to practice, except for the
purpose of making very large pipe, larger than that usually
in demand, and consequently passed out of general use.
The long core attached to the face of the piston, advancing
with it in the solid lead, under the great pressure required,
was liable to warp and twist out of a straight line, and out
of centre in the die, which had the eftect to destroy the uni-
formity of the thickness and centrality of the bore of the pipe.
The old mode, therefore, of making pipe by the draw-bench
system, continued down to 1837, when the patentees in this
case discovered, by experiment, that lead, when recently set
and solid, but still under heat and extreme pressure, in a close
vessel, would re-unite after a separation of its parts, and heal
(in the language of the patentees) as it were by the first in-
tention, as completely as though it had not been divided.
Upon the discovery of this property of lead, which had
never before been known, but on the contrary, had been sup-
posed and believed by all men of science skilled in metals to
be impossible, the patentees made an alteration in the appa-
ratus of Burr, founded upon this new property discovered in
the metal, and succeeded completely in making wrought pipe
out of solid lead by means of the hydraulic pressure. The
product was so nmch superior in quality to that made ac-
cording to the old mode, that it immediately wholly supersed-
ed it in the market. The pipe was also made much cheaper.
The patentees, by their discovery, were enabled to dispense
with the long core of Burr, and to fix firmly a bridge or
cross-bars at the end of the cylinder near the die, to which
bridge they fastened a short core extending into and through
the die. By this arrangement they obtained a firm, immo-
102 LAW OF PATENTS.
vable core, that always preserved its centrality with the die,
and secured the manufacture of pipe of uniformity of thick-
ness of wall and accuracy of bore, of any dimension. The
lead, after being admitted into the cylinder in a fluid state,
was allowed to remain till it became solid, and was then
driven by the piston through the apertures in the bridge into
the chamber between it and the die, where the parts re-united,
after the separation, as completely as before, and, passing out
at the die around the fixed short core, formed perfect pipe.
The patentees state, that they do not intend to confine
themselves to the arrangement of the apparatus thus particu-
larly specified, and point out several other modes by which
the same result may be produced, all of which variations
would readily suggest themselves, as they observe, to any
practical engineer, without departing from the substantial ori-
ginality of the invention, the remarkable feature of which,
they say, is that lead, when in a set state, being yet under
heat, can be made, by extreme pressure, to reunite perfectly
around a core after separation, and thus be formed into strong
pipes or tubes. Pipes thus made are found to possess great
solidity and unusual strength and a fine uniformity, such as
had never before been attained by any other mode. The
essential difference in its character, and which distinguishes
it from all other theretofore known, they add, is, that it is
wrought under heat, by pressure and constriction, from set
or solid metal.
They do not claim, as their invention or improvement, any
of the parts of the machinery, independently of the arrange-
ment and combination set forth.
' What we claim as our invention,' they say, ' is, the com-
bination of the following parts above described, to wit: the
core and bridge or guide-piece, with the cylinder, the piston,
the chamber and die, when used to form pipes of metal under
heat and pressure, in the manner set forth, or in any other
manner substantially the same.'
It is supposed that the patentees claim, as the novelty of
their invention, the arrangement and combination of the
INVENTION OR DISCOVERY. 103
machinery which they have described, disconnected from the
employment of the new property of lead, which they have
discovered, and by the practical application and use of which
they have succeeded in producing the new manufacture.
And the general title or description of their invention, given
in the body of their letters-patent, is referred to as evidence of
such claim. But every patent, whatever may be the general
heading or title by which the invention is designated, refers
to the specification annexed for a more particular description ;
and hence this court has heretofore determined, that the speci-
fication constitutes a part of the patent, and that they must
be construed together when seeking to ascertain the discovery
claimed. Hogg et al. v. Emerson, 6 How. 437.
The same rule of construction was applied by the Court
of Exchequer, in England, in the case of Neilson's patent for
the hot-air blast. Webster's Cases, 373.
Now, on looking into the specification, we see that the
leading feature of the invention consists in the discovery of
a new property in the article of lead, and in the employment
and adaptation of it, by means of the machinery described,
to the production of a new article, wrought pipe, never be-
fore successfully made. Without the discovery of this new
property in the metal, the machinery or apparatus would be
useless, and not the subject of a patent. It is in connection
with this property, and the embodiment and adaptation of it
to practical use, that the machinery is described, and the
arrangement claimed. The discovery of this new element
or property led naturally to the apparatus, by which a new
and most useful result is produced. The apparatus was but
incidental, and subsidiary to the new and leading idea of the
invention. And hence, the patentees set forth, as the leading
feature of it, the discovery that lead, in a solid state, but
under heat and extreme pressure in a close vessel, will
reunite, after separation of its parts, as completely as though
it had never been separated. It required very little ingenuity,
after the experiments in a close vessel, by which this new
property of the metal was first developed, to construct the
104 LAW OF PATENTS.
necessary machinery for the formation of the pipe. The
apparatus, essential to develop this property, would at once
suggest the material parts, especially in the state of the art at
the time. Any skilful mechanic, with Burr's machine before
him, would readily construct the requisite machinery.
The patentees, therefore, after describing their discovery of
this property of lead, and the apparatus by means of which
they apply the metal to the manufacture of pipe, claim the
combination of the machinery, only when used to form pipes
under heat and pressure, in the manner set forth, or in any
other manner substantially the same. They do not claim it
as new separately, or when used for any other purpose, or in
any other way ; but claim it^ only, when applied for the pur-
pose and in the way pointed out in the specification. The
combination, as machinery, may be old ; may have been long
used; of itself, what no one could claim as his invention, and
may not be the subject of a patent. What is claimed is,
that it had never been before applied or used, in the way and
for the purpose they have used and applied it, namely, in the
embodiment and adaptation of a newly discovered property
in lead, by means of which they are enabled to produce a
new manufacture — wrought pipe — out of a mass of solid
lead. Burr had attempted it, but failed. These patentees,
after the lapse of seventeen years, having discovered this new
property in the metal, succeeded, by the use and employment
of it, and, since then, none other than wrought lead pipe,
made out of solid lead, has been found in the market, having
superseded, on account of its superior quality and cheapness,
all other modes of manufacture.
Now, the construction which I understand a majority of
my brethren are inclined to give to this patent, namely, that
the patentees claim, as the originality of their invention,
simply, the combination of the machinery employed, with
great deference, seems to me contrary to the fair and reason-
able import of the language of the specification, and also of
the summary of the claim. The tendency of modern deci-
sions is to construe specifications benignly, and to look through
INVENTION OR DISCOVERY. ^ 105
mere forms of expression, often inartificially used, to the sub-
stance, and to maintain the right of the patentee to the thing
really Invented, if ascertainable upon a liberal construction of
the language of the specification when taken together. For
this purpose, phrases standing alone are not to be singled
out, but the whole are to be taken in connection. 1 Sumn.
482-485.
Baron Parke observed, in delivering the opinion of the
court in Neilson's patent, ' That, half a century ago, or even
less, within fifteen or twenty years, there seems to have been
very much a practice, with both judges and juries, to destroy
the patent-right, even of beneficial patents, by exercising
great astuteness in taking objections, either as to the title of
the patent, but more particularly as to the specifications, and
many valuable patent-rights have been destroyed in conse-
quence of the objections so taken. Within the last ten years
or more, the courts have not been so strict in taking objec-
tions to the specifications, and they have endeavored to hold
a fair hand between the patentee and the public, willing to
give the patentee the reward of his patent.'
Construing the patent before us in this spirit, I cannot but
think that the thing really discovered, and intended to be
described and claimed by these patentees, cannot well be
mistaken. That they did not suppose the novelty of their
invention consisted, simply, in the arrangement of the machi-
nery described, is manifest. They state, distinctly, that the
leading feature of their discovery consisted of this new pro-
perty of lead, and some of its alloys, — this, they say, is the
remarkable feature of their invention, — and the apparatus
described is regarded by them as subordinate, and as import-
ant only as enabling them to give practical effect to this
newly discovered property,, by means of which they produce
the new manufacture. If they have failed to describe and
claim this, as belonging to their invention, it is manifest,
upon the face of their specification, that they have failed to
employ the proper words to describe and claim what they
intended ; and that the very case is presented, in whiqh, if
14
106 LAW OP PATENTS.
the court, in the language of Baron Parke, will endeavor to
hold a fair hand between the patentee and the public, it will
look through the forms of expression used, and discover, if it
can, the thing really invented. Apply to the specification
this rule of construction, and all difficulty at once disappears.
The thing invented, and intended to be claimed, is too appa-
rent to be mistaken.
The patentees have certainly been unfortunate in the lan-
guage of the specification, if, upon a fair and liberal interpre-
tation, they have claimed only the simple apparatus em-
ployed; when they have not only set forth the discovery of
this property in the metal as the great feature in their inven-
tion, but, as is manifest, without it the apparatus would have
been useless. Strike out this new property from their descrip-
tion and from their claim, and nothing valuable is left. All
the rest would be worthless. This lies at the foundation upon
which the great merit of the invention rests, and without a
knowledge of which the new manufacture could not have
been produced ; and, for aught we know, the world would
have been deprived of it down to this day.
If the patentees had claimed the combination of the core
and bridge or guide-piece, with the cylinder, the chambers,
and the die, and stopped there, I admit the construction,
now adopted by a majority of my brethren, could not be
denied ; although, even then, it would be obvious, from an
examination of the specification as a whole, that the draughts-
man had mistaken the thing really invented, and substituted
in its place matters simply incidental, and of comparative
insignificance. But the language of the claim does not stop
here. The combination of these parts is claimed only when
used to form pipes of lead, under heat and pressure, in the
manner set forth ; that is, when used for the embodiment
and adaptation of this new property in the metal, for making
wrought pipe out of a solid mass of lead. This guarded
limitation of the use excludes the idea of a claim to the
combination for any other, and ties it down to the instance,
when the use incorporates within it the new idea or element
INVENTION OR DISCOVERY. 107
which gives to it its value, and by means of which the new
manufacture is produced. How, then, can it be consistently
held, that here is a simple claim to the machinery, and
nothing more, when a reasonable interpretation of the words
not only necessarily excludes any such claim, but in express
terms sets forth a different one, — one not only different in the
conception of the invention, but different in the practical
working of the apparatus to accomplish the purpose in-
tended ?
I conclude, therefore, that the claim, in this case, is not
simply for the apparatus employed by the patentees, but for
the embodiment or employment of the newly discovered
property in the metal, and the practical adaptation of it, by
these means, to the production or a new result, namely, the
manufacture of wrought pipe out of solid lead.
Then, is this the proper subject-matter of a patent ?
This question was first largely discussed by counsel and
court in the celebrated case of Boulton v. Bull, (2 How.
31, 463,) involving the validity of Watt's patent, which was
for ' a new invented method for lessening the consumption
of fuel and steam in fire-engines.' This was effected by
inclosing the steam vessel or cylinder with wood, or other
material, which preserved the heat in the steam vessel ; and
by condensing the steam in separate vessels. It was admit-
ted, on the argument, that there was no new mechanical
construction invented by Watt, and the validity of the patent
was placed on the ground that it was for well-known prin-
ciples, practically applied, producing a new and useful re-
sult. On the other hand, it was conceded that the applica-
tion of the principles in^the manner described was new, and
produced the result claimed ; but it was denied that this
constituted the subject-matter of a patent. Heath and
Buffer, Justices, agreed with the counsel for the defendant ;
but Lord Chief Justice Eyre laid down the true doctrine,
and which, I think, will be seen to be the admitted doctrine
of the courts of England at this day : — ' Undoubtedly,' he
observed, ' there can be no patent for a mere principle ; but
108 LAW OF PATENTS.
for a principle, so far embodied and connected with corpo-
real substances as to be in a condition to act, and to pro-
duce effects in any art, trade, mystery, or manual occupation,
I think there may be a patent. Now this,' he continues,
' is, in my judgment, the thing for which the patent stated
in the case was granted ; and this is what the specification
describes, though it miscalls it a principle. It is not that the
patentee conceived an abstract notion that the consumption
of steam in fire-engines may be lessened, but he has disco-
vered a practical manner of doing it ; and for that practical
manner of doing it he has taken this patent. Surely,' he
observes, ' this is a very different thing from taking a patent
for a principle. The apparatus, as we have said, was not
new. There is no new mechanical construction, said the
counsel for the patentee, invented by Watt, capable of being
the subject of a distinct specification ; but his discovery was
of a principle, the method of applying which is clearly set
forth.' Chief Justice Eyre admitted that the means used
were not new, and that if the patent had been taken out for
the mechanism used it must fail.
He observed : — ' When the effect produced is some new
substance, or composition of things, it should seem that the
privilege of the sole working or making ought to be for such
new substances, or composition, without regard to the me-
chanism or process by which it has been produced, which,
though perhaps also new, will be only useful as producing
the new substance.' Again : — 'W^hen the effect produced is
no new substance, or composition of things, the patent can
only be for the mechanism, if new mechanism is used ; or
for the process, if it be a new method of operating, with or
without old mechanism, by which the effect is produced.'
And again he observes : — 'If we wanted an illustration of
the possible merit of a new method of operating with old
machinery, we might look to the identical case before the
court.' p. 493, 495, 496.
This doctrine, in expounding the law of patents, was
announced in 1795, and the subsequent adoption of it by
INVENTION OR DISCOVERY. 109
the English courts shows that Chief Justice Eyre was consi-
derably in advance of his associates upon this branch of the
law. He had got rid, at an early day, of the prejudice
against patents so feelingly referred to by Baron Parke, in
Nielson v. Harford, and comprehended the great advantages
to his country, if properly encouraged. He observed, in
another part of his opinion, that ' The advantage to the
public from improvements of this kind are, beyond all calcu-
lation, important to a commercial country ; and the ingenuity
of artists, who turn their thoughts towards such improve-
ments, is, in itself, deserving of encouragement.'
This doctrine was recognized by the Court of King's
Bench, in the King v. Wheeler, 2 B. & Aid. 340, 350. It is
there observed, that the word ' manufactures,' in the patent
act, may be extended to a mere process, to be carried on by
known implements or elements, acting upon known sub-
stances, and ultimately producing some other known sub-
stance, but producing it in a cheaper or more expeditious
manner, or of a better or more useful kind.
Now if this process, to be carried on by known imple-
ments, acting upon known substances, and ultimately pro-
ducing some other known substance of a better kind, is
patentable, a fortiori will it be patentable if it ultimately pro-
duces not some other known substance, but an entirely new
and useful substance ?
In Forsyth's patent, which consists of the application and
use of detonating powder as priming for the discharge of
fire-arms, it was held, that whatever might be the construction
of the lock, or contrivance by which the powder was to be
discharged, the use of the detonating mixture as priming,
which article of itself was not new, was an infringement.
Webster's Pat. Cas. 94, 97, (n.) ; Curtis on Pat. 230.
This case is founded upon a doctrine which has been
recognized in several subsequent cases in England, namely,
that where a person discovers a principle or property of
nature, and also of some mode of carrying it out into prac-
tice, so as to produce or attain a new and useful effect or
110 LAW OF PATENTS.
result, he is entitled to protection against all other modes of
carrying the same principle or property into practice, for
obtaining the same result.
The novelty of the conception consists in the discovery
and application in the one case, and of the application in
the other, by which a new product in the arts or manufac-
tures is the effect ; and the question, in case of an infringe-
ment, is, as to the substantial identity of the principle or
property, and of the application of the same, and conse-
quently the means or machinery made use of, material only
so far as they affect the identity of the application.
In the case of Jupe's patent, for ' an improved expanding
table,' Baron Alderson obscved, speaking of this doctrine,
' 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. 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 invention.' Webster's Pat. Cases, 147. The
same doctrine was maintained, also, in the case of Neilson's
patent for the hot-air blast, in the King's Bench and Exche-
quer in England. Webster's Pat. Cases, 342, 371 ; Curtis,
§ 74, 148, 232 ; Webster's Pat. Cases, 310.
This patent came also before the Court of Sessions in
Scotland ; and, in submitting the case to the jury, the Lord
Justice remarked : — ' That the main merit, the most import-
ant part of the invention, may consist in the conception
of the original idea ; in the discovery of the principle in
science, or of the law of nature, stated in the patent ; and
little or no pains may have been taken in working out the
best mode of the application of the principle to the purpose
set forth in the patent. But still, if the principle is stated to
be applicable to any special purpose, so as to produce any
result previously unknown, in the way and for the object
described, the patent is good. It is no longer an abstract
INVENTION OR DISCOVERY- 111
principle. It becomes to be a principle turned to account,
to a practical object, and applied to a special result. It
becomes, then, not an abstract principle, which means a
principle considered apart from any special purpose or prac-
tical operation, but the discovery and statement of a prin-
ciple for a special purpose, that is, a practical invention, a
mode of carrying a principle into effect. That such is the
law,' he observes, ' if a well-known principle is applied for
the first time to produce a practical result for a special pur-
pose, has never been disputed ; and it would be very strange
and unjust to refuse the same legal cifect, when the inventor
has the additional merit of discovering the principle, as well
as its application to a practical object.'
Then, he observes again, ' Is it an objection to the patent
that, in its application of a new principle to a certain speci-
fied result, it includes every variety of mode of applying the
principle, according to the general statement of the object
and benefit to be attained ? This,' he observes, ' is a ques-
tion of law ; and I must tell you distinctly that this general-
ity of claim, that is, for all modes of applying the principle
to the purpose specified, according to or within a general
statement of the object to be attained, and of the use to be
made of the agent to be so applied, is no objection to the
patent. The application or use of the agent for the purpose
specified, may be carried out in a great variety of ways, and
only shows the beauty and simplicity and comprehensiveness
of the invention.'
This case was carried up to the House of Lords on excep-
tions to the charge, and, among others, to this part of it,
which was the sixth exception, and was as follows : — 'In so
far as he (the judge) did not direct the jury that, on the con-
struction of the patent and specification, the patentee cannot
claim or maintain that his patent is one which applies to all
the varieties in the apparatus which may be employed in
heating air while under blast ; but was limited to the parti-
cular described in the specification.' And although the
judgment of the court was reversed in the House of Lords
112 LAW OP PATENTS.
on the eleventh exception, it was expressly affirmed as
respects this one. Lord Campbell at first doubted, but after
the decision of the courts in England on this patent, he
admitted the instruction was right. Webster's Pat. Cases,
683, 684, -698, 717.
I shall not pursue a reference to the authorities on this
subject any further. The settled doctrine to be deduced from
them, I think, is, that a person having discovered the appli-
cation for the first time of a well-known law of nature or
well-known property of matter, by means of which a new
result in the arts or in manufactures is produced, and has
pointed out a mode by which it is produced, is entitled to a
patent ; and, if he has not tied himself down in the specifi-
cation to the particular mode described, he is entitled to be
protected against all modes by which the same result is pro-
duced, by an application of the same law of nature or pro-
perty of matter. And a fortiori, if he has discovered the law
of nature or property of matter, and applied it, is he entitled
to the patent and aforesaid protection.
And why should not this be the law? The original con-
ception — the*novel idea in the one case, is the new applica-
tion of the principle or property of matter, and the new
product in the arts or manufactures — in the other, in the
discovery of the principle or property, and application, with
like result. The mode or means are but incidental, and flow-
ing naturally from the original conception ; and hence of
inconsiderable merit. But, it is said, this is patenting a prin-
ciple, or element of nature. The authorities to which I have
referred, answer the objection. It was answered by Chief
Justice Eyre, in the case of Watt's patent, in 1795, fifty-
seven years ago; and more recently, in still more explicit
and authoritative terms. And what if the principle is incor-
porated in the invention, and the inventor protected in the
enjoyment for the fourteen years. He is protected only in
the enjoyment of the application for the special purpose and
object to which it has been newly applied by his genius and
skill. For every other purpose and end the principle is free
INVENTION OR DISCOVERY. 113
for all mankind to use. And where it has been discovered,
as well as applied to this one purpose, and open to the world
as to every other, the ground of complaint is certainly not
very obvious. Undoubtedly, within the range of the purpose
and object for which the principle has been for the first time
applied, piracies are interfered with during the fourteen years.
But any body may take it up and give to it any other appli-
cation to the enlargement of the arts and of manufactures,
without restriction. He is only debarred from the use of the
new application for the limited time, which the genius of
others has already invented and put into successful practice.
The protection does not go beyond the thing which, for the
first time, has been discovered and brought into practical use;
and is no broader than that extended to every other discoverer
or inventor of a new art or manufacture.
I own, I am incapable of comprehending the detriment to
the improvements in the country that may flow from this sort
of protection to inventions.
To hold, in the case of inventions of this character, that
the novelty must consist of the mode or means of the new
application producing the new result, would be holding
against the facts of the case, as no one can but see, that the
original conception reaches far beyond these. It would be
mistaking the skill of the mechanic for the genius of the
inventor.
Upon this doctrine, some of the most brilliant and useful
inventions of the day, by men justly regarded as public bene-
factors, and whose names reflect honor upon their country —
the successful application of steam power to the propulsion
of vessels and railroad cars — the application of the electric
current for the instant communication of intelligence from
one extremity of the country to the other — and the more
recent, but equally brilliant conception, the propulsion of
vessels by the application of the expansibility of heated air,
the air supplied from the atmosphere that surrounds them.
It would be found, on consulting the system of laws esta-
15
114 LAW OF PATENTS,
blished for their encouragement and protection, that the
world had altogether mistaken the merit of their discovery;
that, instead of the originality and brilliancy of the concep-
tion that had been unwittingly attributed to them, the whole
of it consisted of some simple mechanical contrivances which
a mechanician of ordinary skill could readily have devised.
Even Franklin, if he had turned the lightning to account, in
order to protect himself from piracies, must have patented
the kite, and the thread, and the key, as his great original
conception, which gave him a name throughout Europe, as
well as at home, for bringing down this element from the
heavens, and subjecting it to the service of man. And if
these simple contrivances, taken together, and disconnected
from the control and use of the element by which the new
application, and new and useful result may have been pro-
duced, happen to be old and well known, his patent would
be void ; or if some follower in the track of genius, with just
intellect enough to make a different mechanical device or
contrivance, for the same control and application of the ele-
ments, and produce the same result, he would, under this
view of the Patent Law, entitle himself to the full enjoyment
of the fruits of Franklin's discovery.
If I rightly comprehend the ground upon which a majority
of my brethren have placed the decision, they do not intend
to controvert so much the doctrine which I have endeavored
to maintain, and which, I think, rests upon settled authority,
as the application of it to the particular case. They suppose
that the patentees have claimed only the combination of the
different parts of the machinery described in their specifica-
tion, and therefore, are tied down to the maintenance of that
as the novelty of their invention. I have endeavored to
show, that this is a mistaken interpretation ; and that they
claim the combination, only, when used to embody and give
a practical application to the newly discovered property in
the lead, by means of which a new manufacture is produced,
namely, wrought pipe out of a solid mass of lead, which, it
is conceded, was never before successfully accomplished.
INVENTION OR DISCOVERY. 115
For, these reasons, I am constrained to differ with the
judgment they have arrived at, and am in favor of affirming
that of the court below."
§ 81. In cases of this class, where the most important part
and merit of the invention consists in the conception of the
original idea, rather than in the manner in which it is to be
carried out, or applied in practice, it is clear that a principle
carried into practice by some means, constitutes the subject-
matter of the patent. Inventions of this class may have a
character totally independent of the particular means by
which they are applied, although the patentee must have ap-
plied the invention by some means ; and when he has done
so, the imitating that character may be a piracy of that in-
vention, although the means may be very different, and such
as in themselves might constitute a distinct or substantial
invention.^ The machinery employed is not of the essence
of the invention, but incidental to it.^ In cases like the fore-
going, however, although machinery, apparatus, or other ar-
rangement of matter is not of the essence of the invention,
still it is of some importance. But there is another class of
cases, where the application of a principle is still more dis-
tinctly seen to constitute the subject-matter of the invention,
because it requires no peculiar and substantive machinery or
apparatus, or composition of matter to give it application.
§ 81 a. In these cases, the subject-matter of the invention
is an application and adaptation of a natural or known agent,
or a known substance or thing, to produce a given effect.^
1 Webster on tlie Subject-Matter, &e., p. 18.
2 Per Eyre, C. J., in Boulton v. BuU, 2 H. Bl. 496.
^ The adaptation of the properties and qualities of a known substance to a
particular purpose, for ■which they had never been known or used before, may
be the subject of a patent. As the use of India rubber as a fillet, in cards
for carding wool, &c., to receive the teeth, and thereby to give them greater
firmness and elasticity than when they are set in leather. See Walton v.
Potter, Webs. Pat. Cas. 585, 604.
116 LAAV OF PATENTS.
As ill Daniell's patent for improvements in dressing woollen
cloth, the invention consisted in immersing cloth, manufac-
tured in the usual manner, in hot water ; and in Fusell's
patent the cloth was subjected to a steam bath with the same
object.^ 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 effected was by "putting a glazed enamelled surface
on the paper by means of white lead and size, whereby the
finer lines of the engraving are better exhibited than hereto-
fore." 2 So too, the omission of any ingredient previously
used in and considered essential to a particular process or
manufacture, constitutes such a change in the series of pro-
cesses pursued, as to be a new manufacture. As where a
patent was taken for " a new and improved method of
making and manufacturing double canvas and sail-cloth
with hemp and flax, or either of them, without any starch
whatever ; " ^ and where another invention, for rendering
cloth fabrics water proof, consisted in immersing them in
1 Webster on the Subject-Matter, &c., p. 22. The latter patent was held
an infringement on the former; but both were' repealed for want of novelty.
lUd.
2 Sturz V. De La Rue, 5 Russ. Ch. K 322, 324. In this case Lord Lynd-
hurst, C. B., said : " 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 pre-
pared, and duly applied, and various processes must be gone through before
the impression is drawn off and brought to a finished state. An improvement
.in any one of these circumstances, in the preparation of the paper, for
instance, in the damping of it, &c., may truly be called an improvement in
copperj)late j^rinting. In this case, the principal part of the improvement
relates to the preparation of the paper. It is material to the perfection of
the copperplate printing that the lines should be as distinct as possible ; and
if, by adding any thing to the surface of the paper, more clearness is given to
the lines, that is an improvement in copperplate printing."
3 Campion v. Benyon, 4 B. Moore, 71, cited Webster on the Subject-Mat-
ter, &c., p. 23, note.
INVENTION OR DISCOVERY. 117
various solutions in a different order from that which had
been previously followed, although the same solutions had
been previously used.^
§ 82. It appears, then, that there is a large class of cases,
where improvements or inventions in the mode of producing
a particular known effect will be the subject-matter of letters-
patent ; and another large class of cases, in which the dis-
covery and application of new means of producing an effect
before unknown, will also be the subject-matter of a patent.
One of these classes embraces all cases of the new appli-
cation of known agents and things, so as to lead to a change
in the series of processes by which the particular effect, result,
or manufacture is produced, or by which an entirely new
effect, result, or manufacture is produced. The other em-
braces all cases of the discovery and application of new
agents or things, by which a new effect or result is to be
produced.^
1 Halliwell v. Dcarman, Webs. Pat. Cas. 401, note (t.) " The object of the
plaintiff's invention was the rendering fabrics water proof, but at the same
time leaving such fabrics pei-vious to air. It appeared that before the plain-
tiff's patent a solution of alum and soap was made, and the fabric to be
rendered water proof was immersed therein. By this means a water-proof
surface was produced on the fabric, but it was not of a lasting nature, it wore
off. According to the plaintifl's invention, the fabric is immersed first in a
mixture of a solution of alum^with some carbonate of lime, and then in a
solution of soap. The effect is, that by the first immersion every fibre
becomes impregnated with the alum, the sulphuric acid of the alum being
neutralized by the carbonate of lime, and by the second immersion the oily
quahty, rendering it repellant of water, is given to every fibre, so that each
fibre is rendered water proof, instead of the surface only ; but the whole
fabric continued pervious to air."
2 The application of electricity for the transmission of signals or messages,
copj-ing impressions and gilding, and the application of light for the purposes
of photography, belonging to one or the other of these classes, according to the
view taken of the agents made use of, and the result produced. In the case
of the electric telegraph, electricity was an agent known before this appli-
cation ; the effect, as produced by electricity, was wholly new. The same
118 LAW OF PATEXTS.
§ 83. In determining whether an alleged invention or dis-
covery is such as will support a patent, the question must
often arise, what is meant by the application of a principle ?
And this question involves two inquiries ; first, how must
the principle be made use of, and secondly, what must be the
result produced ?
§ 84. It has already been stated, that the embodiment of a
principle, so that it may be in a condition to act and to pro-
duce an effect, may be the subject of a patent. There is, in
other words, a distinction between the principle that is so
embodied, and the principle of such embodiment; the former
is a truth of exact science, or a law of matter, or a rule of
practice; while the latter is the practice founded on such
truth, law, or rule.^
may be said of the use of light in photography, for although pictures existed
before, such pictures as are produced by that process, were wholly new. It
is not always necessary, perhaps not expedient, to attempt a rigid classifica-
tion of such inventions. Each is to be tested by the application of general
principles to the particular facts of the case. In analyzing the subject-matter
of the invention, when it is of this character, we must first determine whether
the agents employed are themselves newly discovered, or well known;
secondly, whether they are applied in a new method; thirdly, whether they
produce, as applied, a new or an old result. According to the results of this
analysis, we may determine the patentable character of the invention or dis-
covery.
1 Webster on the Subject-Matter, p. 44. A clear illustration of this dis-
tinction is to be found in the case of Blanchard v. Sprague, 3 Sumner's R.
535. The plaintifi^'s patent was for "An invention of a machine for turning
or cutting irregular forms." The plaintiff, in his specification, declared that
" as to the mechanical powers by which the movements are obtained, he
claims none of them as his invention. These movements may be effected
by application of various processes indifferently. Neither does he claim as
his invention the cutter wheel, or cutters, or friction wheel as such, nor the
use of a model to guide the cutting instrument, as his invention. All these
are common property, and have been so for years, but he claims as his in-
vention the method or mode of operation in the abstract, explained in the second
article, whereby the infinite variety of forms, described in general terms in this
article may be wrought." In another part of his specification he said : " In
INVENTION OR DISCOVERY. 119
§ 85. This practice consists in the application of the prin-
ciple. But it is not every application of the principle, or
every occasion on which the principle can be applied, that
can be the subject of a patent. The principle may have
been discovered and applied before, and, when this is the
case, the new application may be only what is described in the
Patent Law as a " double use," which cannot be the subject
of a patent. In such cases, there may be in the new appli-
cation some degree of novelty ; something may have been
discovered, or found out, that was not known before ; but
unless the new occasion on which the principle is applied
explaining and describing the different modes in -which he contemplates the
application of the principle or character of his said machine or invention, he
does this in compliance with the requirements of the law, and not by way of
extending his claim for discovery or invention. His invention is described
and explained in the second article of this specification, to which reference
is hereby made for information of that, which constitutes the principle or
character of his machine or invention, and distinguishes it, as he verily be-
lieves, from all other machines, discoveries or inventions, known or used
before. In the second article, to which he refers, the plaintiff explained the
principle and character of his machine, and the mode of constructing it to
effect the different objects to be accomplished, and the mode of operation."
Mr. Justice Story said : " Looking at the present specification, and con-
struing all its terms together, I am clearly of opinion, that it is not a patent
claimed for a function, but it is claimed for the machine specially described
in the specification ; that it is not for a mere function, but for a function as
embodied in a particular machine, whose mode of operation and general
structure are pointed out. In the close of his specification, the patentee
expUcitly states that his " invention is described and explained in the second
article of his specification, to which reference is made for information of that,
which constitutes the principle or character of his machine or invention, and
distinguishes it, as he verily believes, from all other machines, discoveries or
inventions known or used before." Now, when we turn to the second arti-
cle, we find there described, not a mere function, but a machine of a particu-
lar structure, whose modes of operation are pointed out, to accomphsh a
particular purpose, function or end. This seems to me sufficiently expres-
sive to define or ascertain, what his invention is. It is a particular machine,
constituted In the way pointed out, for the accomplishment of a particular
end or object. The patent is for a machine, and not for a principle or func-
tion detached from machinery."
120 LAW OF PATENTS.
leads to some kind of new manufacture, or to some new-
result, it is only a double use of that which was known
before.
§ 86, Illustrations of this distinction may be seen in the
application of well-known medicines, drugs, and chemical
substances, upon new occasions, or for new specific purposes.
If it is discovered that a medicine, known and used as a
valuable remedy in one class of diseases, has also great effi-
ciency in curing another and different disease, there is a new
application of a known thing, but it is only a double use of
that thing.i
§ 87. In order to escape the objection of a double use, it is
necessary that the new occasion or purpose, to which the use
of a known thing is applied, should not be merely analogous
to the former occasions or purposes to which the same thing
has been applied. There is a very material distinction
between applying a new contrivance to an old object, and
an old contrivance to a new object. The former may be
patentable, but the latter cannot be, when the new object is
merely one of a class possessing a common analogy. Thus,
where a certain description of wheels had been used on other
1 In Boulton v. Bull, 2 H. Bl. 487, Buller, J., said : — " Suppose the world
were better informed tban it now is how to prepare Dr. Janes's fever pow-
der, and an ingenious physician should find out that it was a specific cure
for a consumption, if given in particular quantities ; could he have a patent
for the sole use of Janes's powders in consumptions, or to be given in parti-
cular quantities ? I think it must be conceded that such a patent would be
void ; and yet the use of the medicine would be new, and the effect of it as
materially different from what is now known, as Hfe is from death. So in
the case of a late discovery, which, as far as experience has hitherto gone,
is said to have proved eflicacious, that of the medicinal properties of arsenic
in curing agues, could a patent be supported for the sole use of arsenic in
aguish complaints ? The medicine is the manufacture, and the only object
of a patent ; and, as the medicine is not new, any patent for it, or for the use
of it, would be void."
INVENTION OR DISCOVERY. 121
carriages than railway carriages, Lord Abinger, C. B., held
that the plaintiff could not claim a patent merely for the use
of such wheels upon railway carriages ; ^ and where a patent
1 Losh V. Hague, AVebs. Pat. Cas. 207. In this case his Lordship said to
the jury : — " The learned counsel has stated to you, and very properly, and
it is a circumstance to be attended to, that Mr. Losh has taken out his
patent to use his wheels on railways. Now, he says, the wheels made by
Mr. Paton, or by the other workmen who were called as witnesses, were
never applied to railways at all. That opens this question, whether or not
a man who finds a wheel ready made to his hand, and applies that wheel to
a railway, shall get a patent for ap[)lying it to a railway. There is some
nicety in considering that subject. The learned counsel has mentioned to
you a particular case in which an argand lamp, burning oil, having been
applied for singing gauze, somebody else afterwards applied a lamp supplied
■with gas for singing lace, which was a novel invention, and for which an
argand lamp is not applicable, because gas does not burn in the same way
as oil in an argand lamp. But a man having discovered by the application
of gas he could more effectually burn the cottony parts of the gauze by
passing it over the gas, his patent is good. ("Webs. Pat. Cas. p. 98, Hall's
Patent.) That was the application of a new contrivance to the same pur-
pose ; but it is a different thing when you take out a patent for applying a
new contrivance to an old object, and applying an old contrivance to a new
object, that is a very different thing ; if I am wrong I shall be corrected.
In the case the learned counsel put, he says, if a surgeon goes into a mercer's
shop, and sees the mercer cutting velvet or silk with a pair of scissors with
a knob to them, he, seeing that, would have a right to take out a patent in
order to apply the same scissors to cutting a sore, or a patient's skin. I do
not quite agree with that law. I think if the surgeon had gone to him, and
said, ' I see how well your scissors cut,' and he said, ' I can apply them
instead of a lancet, by putting a knob at the end,' that would be quite a
different thing, and he might get a patent for that ; but it would be a very
extraordinary thing to say that, because all mankind have been accustomed
to eat soup with a spoon, that a man could take out a patent because he says
you might eat peas with a spoon. The law on the subject is this ; that you
cannot have a patent for applying a well known thing, which might be
applied to fifty thousand different purposes, for applying it to an operation
which is exactly analogous to what was done befoi-e. Suppose a man
invents a pair of scissors to cut cloth with, if the scissors were never
invented before, he could take out a patent for it. If 'another man found
he could cut silk with them, why should he take out a patent for that ? I
must own, therefore, that it strikes me if you are of opinion this wheel has
16
122 LAW OP PATENTS.
claimed, as the invention of the patentee, a process of curling
palm leaf for mattresses, but it appearing that hair had long
been prepared by the same process for the same purpose,
Mr. Justice Story held it to be a mere double use of an old
process.^
§ 88. When, therefore, the principle is well known, or the
application consists in the use of a known thing to produce
a particular effect, the question will arise, whether the effect
is of itself entirely new, or whether the occasion only upon
which the particular effect is produced, is new. If the occa-
sion only is new, then the use to which the thing is applied
been constructed, according to the defendant's evidence, by the persons
who have been mentioned, long before the plaintiff's patent, that, although
there were no railroads then to apply them to, and no demand for such
wheels, yet that the application of them to railroads afterwards, by Mr. Losh,
will not give effect to his patent, if part of that which is claimed as a new
improvement by him is, in fact, an old improvement, invented by other
people, and used for other purposes. That is my opinion on the law, and on
that I am bound to direct you substantially."
• Howe V. Abbott, 2 Story's R. 190, 193. In this ease the learned Judge
said : — "In the first place, it is admitted on all sides that there is no novelty
in the process by which the stripping, or twisting, or curling the palm leaf
is accomplished. The same process of twisting, and curling, and baking,
and steaming, has long been known and used in respect to hair used for
beds, mattresses, sofas, and cushions. It is, therefore, the mere application
of an old process and old machinery to a new use. It is precisely the same
as if a coffee-mill were now, for the first time, used to grind corn. The
application of an old process to manufacture an article, to which it had never
before been applied, is not a patentable invention. There must be some
new process, or some new machinery used, to produce the result. If the old
spinning machine to spin flax were now first applied to spin cotton, no man
could hold a new patent to spin cotton in that mode ; much less the right to
spin cotton in all modes, although he had invented none. As, therefore,
Smith has invented no new process or machinery, but has only applied to
palm leaf the old process and the old machinery used to curl hair, it does not
strike me that the patent is maintainable. He who produces an old result
by a new mode or process, is entitled to a patent for that mode or process.
But he cannot have a patent for a result merely, without using some new
mode or process to produce it."
INVENTION OR DISCOVERY. 123
is simply analogous to what had been done before. But if
the effect itself is new, then there are no known analogous
uses of the same thing, and the process may constitute such
an art as will be the subject of a patent. Thus, the use of
scissors to cut one substance produces a particular effect,
entirely analogous to that produced when they are used to
cut another substance ; the effect, therefore, is not new. But
the use of gas to singe off the superfluous fibres of lace, was
the use of an agent for a purpose not analogous to any other
purpose for which the same agent had ever been used before;
and therefore the effect, as produced by that agent, was new.
Great discrimination, however, is to be used, in determining
whether the analogy is such as to justify the inference, that
the occasion only is new, and that the effect is not new. Of
course, if any new contrivances, combinations, or arrange-
ments are made use of, although the principal agents em-
ployed are well known, those contrivances, combinations,
or arrangements, may constitute a new principle, and then
the application or practice will necessarily be new also.i
But where there is no novelty in the preparation or arrange-
ment of the agent employed, and the novelty professedly
consists in the application of that agent, being a well known
thing ; or, in other terms, where it consists in the practice
only, the novelty of that practice is to be determined accord-
ing to the circumstances, by applying the test, of whether
the result or effect produced is a new result or effect, never
before produced.^ If a new manufacture is produced, or if
1 As where anthracite and hot-air blast were used in the manufacture of
iron, in the place of bituminous coal and hot-air blast ; and where sail-cloth
was made, with the omission of an ingredient before used, that is, by a differ-
ent combination from that before used.
2 As in the case of the application of bells to fire-engines, to be rung by
the motion of the carriage, for the purpose of alarms or notice, which Wash-
ington, J., instructed the jury might be a subject for a patent. Park v. Little,
3 Wash. 196. The application of steam for propelling boats is another
illustration of novelty in practice. Ibid.
124 LAW OF PATENTS.
an old manufacture is produced by new means, then the
result or effect is new, as produced by that particular means,
and the new case is such as can be protected by letters-
patent. But if only an old manufacture is produced, or an
old result is attained, by means analogous to what the same
means have produced when applied the same way in other
cases, the new occasion of using those means does not con-
stitute a case that can be protected by a patent.
§ 89. Our statute having undertaken to classify the subjects
of patents under four general heads, we may here state what
is supposed tojbe embraced in each of them.
§ 90. I. An Art. The first subject of a patent mentioned
in the statute is " any new and usefnl art," or " any new and
useful improvement of an art." This term embraces the use-
ful as distinguished from the fine arts. It applies to all those
cases, where the application of a principle is the most import-
ant part of the invejition, and where the machinery, apparatus
or other means by which the principle is applied, is incidental
only and not of the essence of the invention. It applies also
to all those cases where the result, effect, or manufactured
article is old, but the invention consists in a new process or
method of producing such result, effect or manufacture. But
where machinery or apparatus of any kind is the chief subject
of invention, or where the result, effect, or article produced is
new, the subject of the patent will fall under one or the other
of the classes designated in the statute as " machine," " manu-
facture," or " composition of matter," according to its prin-
cipal characteristics and objects.
§ 91. A case which occurred before Mr. Justice Washing-
ton furnishes an illustration of an " art," as the subject of a
patent. The plaintiff alleged himself to be the inventor of a
new and useful improvement in the printing of bank-notes,
which was said to furnish an additional security against
counterfeiting. The invention, as summed up in his speci-
SUBJECT OP INVENTION OR DISCOVERY. 125
fication, was " to print copperplate on both sides of the note
or bill ; or copperplate on one side, and letter-press on the
other; or letter-press on both sides of a bank-note or bill, as
an additional security against counterfeiting." The art of
printing with both letter-press and copperplate, was not the
invention of the plaintiff'. He made use of old materials and
processes, in a new manner, for the purpose of producing a
new effect, namely, a new security against counterfeiting.
His patent, therefore, was for the new application of the
process of printing by copperplate and letter-press, by printing
on both sides of the note ; and this new application was held
by the court to be an art within the terms of the statute.^
§ 92. Another illustration is presented by a patent for a
mode of casting iron rollers or cylinders, so that when the
metal was introduced into the mould, it should receive a
rotary motion, by which the dross would be thrown into the
centre instead of upon the surface of the cylinder. This was
effected solely by changing the direction of the tube which
conveyed the metal to the mould, from a horizontal or per-
pendicular position to a direction approaching a tangent of
the cylinder.'-^
§ 93. U. A Machine. A machine, to be the subject of a
patent, must be a particular construction of mechanism, con-
taining the improved method of producing an old effect, or
the method of producing a new effect. If the subject of the
invention or discovery is not a mere function, but a function
embodied in some particular mechanism whose mode of
operation and general structure are pointed out, and which is
designed to accomplish a particular purpose, function, or
effect, it will be a machine, in the sense of the patent law.^ A
1 Kneass v. The Schuylkill Bank, 4 Wash. 9, 12.
2 McClurg V. Kingsland, 1 Howard, 204. See also Gray v. James, Peters's
Circ. C. R. 394.
3 Blanchard v. Sprague, 3 Sumner's R. 535, 540.
126 LAW OP PATENTS.
machine is rightfully the subject of a patent, when well-
known effects are produced by machinery entirely new m
all its combinations, or when a new or an old effect is pro-
duced by mechanism, of which the principle or modus operandi
is new.i The word " machine " in the statute, includes new
combinations of machines, as well as new organizations of
mechanism for a single purpose. There may be a patent for
a new combination of machines to produce certain effects,
whether the machines constituting the combination be new
or old. In such cases, the thing patented is not the separate
machines, but the combination.^ A single instance of such
a combination is presented by the telescope, in which a con-
vex and concave glass of different refracting powers are com-
bined to make the object-glass.^ What constitutes a claim
for a combination only, and what will be a claim for the
specific parts of a machine, as well as for the combination, is
a question of construction on the patent and specification,
the rules for which will be stated hereafter. But it is proper
here to state the general principles applicable to combinations
as the subject-matter.
§ 94. Where the invention consists of several distinct and
independent improvements in the same machine, a patent
may be taken for them in the aggregate, and such a patent
will protect each of the improvements. But when the patent
is for a new combination of existing machinery or machines,
and does not specify or claim any improvements or inven-
tions, except the combination, the subject-matter of the patent
1 Whittemore v. Cutter, 1 Gallis. 480 ; Boulton v. Bull, 2 H. Bl. 463,468.
Wben a mode of doing a thing is referred to something permanent, it is
properly termed an engine ; wben to something fugitive, a method. Per
Heath, J., in Boulton v. Bull.
2 Barrett v. Hall, 1 Mas. 474; Evans v. Eaton, 3 Wheat. 454, 476, 506;
Prouty V. Draper, 1 Story's R. 568 ; Park v. Little, 3 Wash. 196 ; Pitts v.
Whitman, 2 Story's R. 609 ; Ames v. Howard, 1 Sumner, 482.
3 Dolland's case. Webs. Pat. Cas. 42, 43.
SUBJECT OF INVENTION OR DISCOVERY. 127
will be the combination alone, and the making of the sepa-
rate machines will not be an infringement of it.^
1 In Barrett v. Hall, 1 Mas. 447, 474, Mr. Justice Story laid down the
doctrine thus-. "A patent may be for a new combination of machines to pro-
duce certain effects ; and this, whether the machines, constituting the com-
bination, be new or old. But in such case, the patent being for the combi-
nation only, it is no infringement of the patent to use any of the machines
separately, if the whole combination be not used; for in such case the thing
patented is not the separate machines, but the combination ; and the statute
gives no remedy, except for a violation of the thing patented. This was the
doctrine of Mr. Justice Washington in his most able opinion in Evans v.
Eaton ; and it has not been in the slightest degree shaken in the Supreme
Court. (Evans v. Eaton, 3 Wheaton's R. 454, 476, 506.) I hesitate not
one moment in adopting it, as established on solid foundations. It has,
indeed, been said, that where there is a patent for the whole of a machine,
whoever imitates it, either in whole or in part, is subject to an action at the
suit of the patentee. (Bovill v. Moore, 2 Marsh. R. 211.) But supposing
this doctrine to be true in any case and under any qualifications (which may
well be doubted) it can apply only where the whole machine is entirely
new, and cannot apply where the patent is limited, by its very terms, to the
combination of several machines." In the subsequent case of Moody v.
Fisk, 2 Mas. 115, 117, the same learned judge said: "Where the patent
goes for the whole of a machine as a new invention, and the machine is in its
structure substantially new, any'^person who pirates a part of the machine,
substantially new in its structure, deprives the inventor so far of his exclu-
sive right in his invention, and may in a great measure destroy the value of
the patent. Where the patent is for several distinct improvements in an
existing machine, or for an improved machine, incorporating several distinct
improvements, which are clearly specified, then if a person pirates one of the
improvements, he violates the exclusive right of the patentee, for the patent
is as broad as the invention, and the invention covers all the improvements ;
and it is a wrong done to the patentee to deprive him of his exclusive right
in any of his improvements. Where a patent is for a tiew combiuatiun. of
existing machinery, or machines, and does not specify or claim any improve-
ments or invention, except the combination, unless that combination is sub-
stantially violated, the patentee is not entitled to any remedy, although parts
of the machinery are used by another, because the patent, by Its terms,
stands upon the combination only. In such a case, proof that the machines,
or any part of their structure existed before, forms no objection to the patent,
unless the combination has existed before, for the reason, that the invention
is limited to the combination. And yet if the combination be not wholly
128 LAW OF PATENTS.
§ 95. The statute also makes a new and useful " improve-
ment" of a machine the subject of a patent. A patent for
the improvement of a machine is the same thing as a patent
for an improved machine.^ Improvement, applied to machi-
nery, is where a specific machine already exists, and an addi-
tion or alteration is made, to produce the same effects in a
better manner, or some new combinations are added, to pro-
duce new effects.^ In such cases, the patent can only be for
the improvement, or new combination.^ The great question,
of course, when an alleged invention purports to be ati im-
provement of an existing machine, is to ascertain whether it
be a real and material improvement, or only a change of
form. In such cases, it is necessary to ascertain, with as
much accuracy as the nature of such inquiries admits, the
boundaries between what was known and used before, and
what is new, in the mode of operation.'^ The inquiry there-
fore must be, not whether the same elements of motion, or
the same component, parts are used, but whether the given
new, but up to a certain point has existed before, and the patentee claims
the ■whole combination as new, instead of his own improvements only, as by
taking out a patent for the whole machine, doubtless his patent is void, for it
exceeds his invention. (Bovill v. Moore, 2 Marsh. R. 211 ; Davies on Pat.
361, 398, 404, 411.) But if there be different and distinct improvements
constituting parts of the combination, which are specified as such in the
patent and specification, and any one of them be pirated, the same rule seems
to apply, as in other cases where part of an invention is pirated, for the
patent then shows that the invention is not limited to the mere combination,
but includes the particular improvements specified." See also Evans v.
Eaton, 1 Peters's Circ. C. R. 343; Evans v. Eaton, 3 Wheat. 454,476,
^06; Prouty v. Draper, 1 Story, 568 ; Prouty v. Ruggles, 16 Peters, 336 ;
Howe V. Abbott, 2 Story's R. 190; Bean v. Smallwood, 2 Story's R. 408.
1 Per Heath, J., in Boulton v. Bull, 2 H. Bl. 463, 482 ; and per Story, J.,
in Barrett v. Hall, 1 Mas. 4 75.
2 Whittemore v. Cutter, 1 Gallis. 480.
3 Ibid; Odiorne v. Winkler, 2 Gallis. 51.
4 Whittemore v. Cutter, 1 Gallis. 478, 481. Whether an improvement is
trifling and insignificant, or real and important, is a question for the jury.
Losh V. Hague, Webs. Pat. Cas. 205.
SUBJECT OF INVENTION OR DISCOVERY. 129
effect is produced substantially by the same mode of opera-
tion and the same combination of powers, in both machines;
or whether some new element, combination, or feature has
been added to the old machine, which produces either the
same effect in a cheaper or more expeditious manner, or an
entirely new effect, or an effect that is in some material re-
spect superior, though in other respects similar to that pro-
duced by the old machine.^
§ 98. This inquiry will therefore often involve the question,
whether the alleged improved machine operates upon the
same principle as the former machine ; or, in other terms,
whether it produces the same effect by the same mechanical
means, or by means which are substantially the same. One
machine may employ the same mechanical power in the same
way as another machine, though the external mechanism may
be apparently different. At the same time a machine may
have an external resemblance to another, and yet may operate
upon a different principle.^ It is therefore necessary, where
the effect is the same, to determine whether the modus ope-
randi, the peculiar device or manner of producing the effect,
1 Whittemore v. Cutter, 1 Gallis. 478; Brunton u. Hawkes, 4 B. &
Aid. 540.
2 Barrett v. Hall, 1 Mas. 470. In this case, Mr. Justice Story said, " The
true legal meaning of the pi-inciple 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 or
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 principles of two machines may
be very different, although their external structure 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."
17
130 LAW OF PATENTS.
is substantially the same. Where the effect is different, the
test of a sufficient " improvement," to sustain a patent will
be the character and importance of the effect itself.^
1 Whittemore v. Cutter, 1 Gallis. 478, 479, 480, 481. In this case the
same learned judge remarked, " It is difficult to define the exact cases when
the whole machine may be deemed a new invention, and when only an
improvement of an old machine ; the cases often approach very near to each
other. In the present improved state of machinery, it is almost impractica-
ble not to employ the same elements of motion, and in some particulars, the
same manner of operation to produce any new effect. Wheels, with their
known modes of operation and known combinations, must be of very exten-
sive employment in a great variety of new machines, and if they could not,
in the new invention, be included in the patent, no patent could exist for a
whole machine embracing such mechanical powers.
Where a specific machine already exists, producing certain effects, if a
mere addition is made to such machine to jn-oduce the same effects in a better
manner, a patent cannot be taken for the whole machine, but for the
improvement only. The case of a watch is a familiar instance. The inven-
tor of the patent lever, without doubt, added a very useful improvement to
it ; but his right to a patent could not be more extensive than his invention.
The patent could not cover the whole machine as improved, but barely the
actual improvement. The same illustration might be drawn from the steam-
engine, so much improved by Messrs. Watt and Boulton. In like manner,
if to an old machine, some new combinations be added, to produce new effects,
the right to a patent is limited to the new combinations. A patent can, in
no case, be for an effect only, but for an effect produced in a given manner,
or by a peculiar operation. For instance, no patent can be obtained for the
admeasurement of time, or the expansive operation of steam ; but only for a
new mode or new application of machinery to produce these effects ; and,
therefore, if new effects are produced by an old machine in its unaltered
state, I apprehend that no patent can be legally supported ; for it is a patent
for an effect only.
On the other hand, if well-knoion effects are produced by machinery in all
its combinations entirely new, a patent may be claimed for the whole machine.
So, if the principles of the machine are new, either to produce a new or an old
effect, the inventor may well entitle himself to the exclusive right of the
whole machine. By the principle 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 7nodus operandi, the peculiar
device or manner 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
SUBJECT OF INVENTION OR DISCOVERY. 131
§ 97. There may be a patent for an improvement of a
machine that is itself the subject of an existing patent. It
has been held in England, that a patent including the subject-
matter of a patent still in force, is valid, if the improvement
only is claimed in the specification. In such cases, the new
patent will come into force, after the expiration of the old
one, or it may be applied by using a license under the former
patent, or by purchasing the specific machine which the for-
mer patent covers, before the expiration of the latter.^
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 complicated cases like the present, the exact boundaries between
what was known and used before, and what is new, in the mode of operation.
The present machine is to make cottop and woolen cards. These were
not only made before the present patent, by machinery, but also by machi-
nery, which, at different times, exhibited very different stages of improve-
ment. The gradual progress of the invention, from the first rude attempts to
the present extraordinary perfection, from the slight combination of simple
principles to the present wonderful combinations, in ingenuity and intricacy
scarcely surpassed in the world, has been minutely traced by the witnesses
on the stand.
The jury then are to decide, whether the principles of Mr. Whittemore's
machine are altogether new, or whether his machine be an improvement only
on those which ' have been in use before his invention. I have before
observed, that the principles are the mode of operation. If the same effects
are produced by two machines by the same mode of operation, the principles
of each are the same. If the same effects are produced, but by combinations
of machinery operating substantially in a different manner, the principles are
different."
1 Crane v. Price, Webs. Pat. Cas. 393, 413. In this case. Sir W. C. Tiu-
dall, C. J., said, " Now, it is further argued, that in point of law, no patent
can be taken out which includes the subgect-matler of a patent still running
or in force. No authority was cited to support this proposition, and the case
which was before Lord Tenterden, and in which he held, that where an
action was brought for an infringement of improvements in a former patent
granted to another person, and still in force, that the plaintiff must produce
the former patent and specification ; that at least affords a strong evidence
that the second patent was good. (Lewis v. Davis, 3 Car. & P. 502.) The
case of Harmar v. Playne, (14 Ves jr., 130; 11 East, 101 ; Dav. Pat. Cas.
311 •, Fox, ex parte, 1 Ves. & B. 67,) is a clear authority on the same point ;
132 LAW OF PATENTS.
§ 98, It has also been held, that in an action for an in-
fringement of a patent professing to be an improvement on a
former patent, the specification of that former patent must be
read. Bat it is not material whether a machine, made ac-
cording to that specification of the first patent, would be
useful or not, if it be shown that a machine, constructed
according to the subsequent patent, is useful.^
§ 99. In all cases of alleged improvements in machinery
the test of sufficiency may be found in the dictum of Buller,
J., that, " if there be any thing material and new, that will be
an improvement of the trade, that will be sufficient to sup-
port a patent." 2
§ 100. III. A Manufacture. It has been stated in a former
and upon reason and principle there appears to be no objection. The new
patent, after the expiration of the old one, will be free from every objection,
and whilst the former exists, the new patent can be legally used by the pub-
lic by procuring a license from Neilson, or b)' purchasing the apparatus from
him, or some of his agents; and the probability of a refusal of the license to
any one applying for it, is so extremely remote, that it cannot enter into
consideration as a ground of legal objection."
See also Fox, ex -parte, 1 V. & B. 67. Mr. AVebster puts this very clear
illustration : " For suppose a particular article, starch for instance, to be the
subject of letters-patent, and that all the starch in the country was patent
starch ; there are attached to the making and selling of that article certain
exclusive privileges; but the individual who has purchased it of the patentee
has a right to sell it again, and to use it at his will and pleasure ; the exclu-
sive privileges are in respect of that particular portion of the article so sold,
at an end, and do not pursue it through any subsequent stage of its use and
existence, otherwise every purchaser of starch would be obliged, according
to the terms of the letters-patent, to have a license in writing, under the hand
and seal of the jiatentee ; the absurdity of which is manifest. Hence it is
obvious, that if a person legally acquires, by license or jjurchase, title to that
which is the subject of letters-patent, he may use it or improve upon it in
whatever manner he pleases ; in the same manner as if dealing with property
of any other kind."
1 Lewis V. Davis, Webs. Pat. Cas. 488, 489.
2 The King v. Arkwright, Webs. Pat. Cas.. 71.
SUBJECT OP INVENTION OR DISCOVERY. 133
part of this chapter, that the term "manufacture" was used
in the English statute, 21 Jac. 1, to denote any thing made
by the hand of man ; so that it embraces, in the English law,
machinery, as well as substances or fabrics produced by art
and industry.^
§ 101. We have seen also that it came, by construction, to
include the process of making a thing, or the art of carrying
on a manufacture ; so that all the various objects, which are
now held in England to be the subjects of letters-patent, are
1 In Boulton v. Bull, Heath, J., said, " The statute 21 Jac. 1, prohibits
all monopolies, reserving to the king, by an express proviso, so much of his
ancient prerogative as shall enable him to grant letters-patent, and grants of
privilege, for the term of fourteen years and under, of the sole working or
making of any manner o^ neio manufactures within this realm, to the true and
first inventor and inventors of such manufactures. What then falls within
the scope of the proviso ? Such manufactures as are reducible to twolslasses.
The first includes machinery, the second substances, (such as medicines)
formed by chemical and other processes, where the vendible substance is the
thing produced, and that which operates preserves no permanent form. In
the first class the machine, and in the second the substance produced, is the
subject of the patent. I approve of the term manufacture^ in the statute,
because it precludes all nice refinements ; it gives us to understand the reason
of the proviso, that it was introduced for the benefit of trade. That which is
the subject of a patent, ought to be specified, and it ought to be that which
is vendible, otherwise it cannot be a manufacture."
In Hornblower v. Boulton, 8 T. R. 99, Lord Kenyon defined the term as
" something made by the hands of man." In the King v. Weeler, 2 B. &
Aid. 349, Abbott, L. C. J., defined it thus: "The word 'manufactures'
has been generally understood to denote either a thing made, which is useful
for its own sake, and vendible as such, as a medicine, a stove, a telescope
and many others, or to mean an engine or instrument, or some part of an
engine or instrument, to be employed, either in the making of some pre-
viously-known article, or in some other useful purpose, as a stocking-frame, or
a steam-engine for raising water from mines. Or it may perhaps extend also
to a new process to be carried on by known implements, or elements, acting
upon known substances, and ultimately producing some other known sub-
stance, by producing it in a cheaper or more expeditious manner, or of a
better and more useful kind."
134 LAW OF PATENTS.
included under this term, which alone saves them out of the
prohibition of the statute of monopolies.^
§ 102. Our statute, however, having made an enumeration
of the different classes of subjects which in England are held
to be patentable, it is to be presumed that this term was used
to describe one of these classes only, namely, fabrics or sub-
stances made by the art or industry of man, not being ma-
chinery .^ It may sometimes require a nice discrimination, to
determine whether one of these classes does not run into the
other, in a given case; as for instance, when a tool or instru-
ment of a novel or improved construction is produced, to be
used in connection with othei machinery, or to be used sepa-
rately. As an article of merchandise, found and sold sepa-
rately in the market, such a production would be a manu-
facture ; but regarded with reference to its use and intended
adaptation, it might be considered as a machine, or part of a
machine. In determining, in such cases, how the patent for
the article should be claimed, it would probably be correct to
range it under the one or the other of these classes, according
to the following test. If the article is produced and intended
to be sold and used separately, as a merchantable commodity,
and the merit of it, as an invention, consists in its being a
1 Ante, § 69, 71, 72, 73, 74. See also Hindmarch on Patents, p. 80.
2 Perhaps the best general definition of the term " manufacture," as the
subject of a patent, would be any new combination of old materials, constitu-
ting a new result or production, in the form of a vendible article, not being
machinery. In one sense, all materials are old ; as the amount of matter in
existence does not depend on the will or the skill of man, whatever he uses
is, in one sense, an old material. In this sense, therefore, aU that he does,
in producing a new manufacture, is to bring old materials into a new com-
bination, and by so doing to produce a new result in matter. It is this new
combination, carried into, or evinced by, a new result or production, that is
the subject of a patent. The use of all the materials in other combinations
may have been known before ; but if they are used in a new combination,
producing a new result, there will be a good subject for a patent for a
" manufacture," as there is in respect to " machinery " when the same thing
is effected. See Cornish v. Keene, Webs. Pat. Cas. 512, 517.
SUBJECT OF INVENTION OR DISCOVERY. 135
better article than had been before known, or in its being
produced by a cheaper process, then it may properly be con-
sidered simply as a manufacture. But if its merit appears
only after its incorporation with some mechanism with which
it is to be used, and consists in producing, when combined
with such mechanism, a new effect, then it should be re-
garded as a machine, or an improvement of an existing ma-
chine. These distinctions, however, are not vitally important
to be taken in the patent itself, since it is not necessary to
the validity of a patent, that the thing should be described
with entire accuracy as "a machine" or " a manufacture."
If the thing itself is correctly described, and it appears to be
novel and useful, and unites all the other requisites of the
statute, it may be left to general interpretation to determine
whether the subject-matter ranges itself under the one or the
other of these classes, or whether it partakes of the character-
istics of both. But if the subject-matter be neither a ma-
chine, nor a manufacture, or composition of matter, then it
must be an art. There can be no valid patent, except it be
for a thing made, or for the art or process of making a thing.
§ 103. IV. A Composition of Matter. The last class of
patentable subjects mentioned in the statute is described by
the term " composition of matter." It includes medicines,
compositions used in the arts, and other combinations of
substances intended to be sold separately. In such cases, the
subject-matter of the patent may be either the composition
itself, the article produced, or it may be the mode or process
of compounding it. Generally speaking, the patent covers
both, because if the composition is itself new, the process by
which it is made must also be new, and the law will protect
both as the subjects of invention. But if the article itself be
not new, but the patentee has discovered merely a new mode
or process of producing it, then his patent will not be for a
new " composition of matter," but for a new " art " of making
that particular thing.
§ 104. With regard to this class of subjects, it is sufficient
136 LAW OP PATENTS.
to observe, that the test of novelty must, of course, be, not
whether the materials of which the composition is made, are
new, but whether the combination is new. Although the
ingredients may have been in the most extensive and com-
mon use, for the purpose of producing a similar composition,
if the composition made by the patentee is the result of dif-
ferent proportions of the same ingredients, or of the same
and other ingredients, the patent will be good.^ The patentee
is not confined to the use of the same precise ingredients in
making his compound, provided all the different combi-
nations of which he makes use are equally new.^
§ 105. A new class of objects has, by a recent statute, been
made the subjects of letters-patent. These are new and ori-
ginal Designs for a manufacture of metal and other mate-
rials ; for the printing of woollen, silk, cotton, or other fabrics ;
for busts, statues, or bas-relief, or composition in alto or basso-
relievo; for any impression or ornament, or to be placed on
any article of manufacture in marble or other material ; for
any new and useful pattern, print, or picture, to be in any
manner attached to, or fixed on any article of manufacture ;
for any new or original shape or configuration of any article
or manufacture ; all such designs not being previously known
or used by others. Patents for these subjects are to be issued
on the like application and proceedings, as those prescribed
in other cases of patents, for the term of seven years, and on
payment of one half the fee required by the general Patent
Act.3
1 Ryan v. Goodwin, 3 Sumner's R. 514, 518.
2 Ibid.
3 Act of Cong. Aug. 29, 1842, § 3, 5. This is an act in addition to the
general Patent Act of 1836 ; but the 5th section provides an action for penal-
ties, for the infringement of this class of patentable subjects, in place of the
action for damages provided in respect of other patents by the Act of 1836.
The remedy in equity, by injunction, is not expressly granted; but it exists
undoubtedly, both by force of the provision in the Act of 1836, § 17, and of
the general principles of Equity Jurisprudence.
SUBJECT OF INVENTION OR DISCOVERY. 137
§ 106. The patents thus granted relate to the forms im-
pressed upon the material constituting particular articles of
manufacture, and to the marks adopted by tradesmen, whether
patterns, prints, or pictures, to distinguish their own manufac-
tures. They thus occupy a kind of middle ground between
copyrights and patents, as patents for useful inventions have
hitherto been classed. Indeed, the exclusive right to impress
upon matter a particular form, or to affix a particular device
to a bale of merchandise, is very closely analogous to the
exclusive right to print a particular book or engraving, if it is
not precisely the same right. The same general principles,
at least, must be resorted to, to determine the identity be-
tween two forms of matter, as forms, or between two devices,
as devices, which determine the identity of two books or
engravings. The leading principle, in such comparisons, is
that which shows that the one thing is a colorable imitation
of another, when there is not an exact resemblance; and
although this principle has its place in that system of Patent
Law, which is applied to machinery, arts, manufactures, or
compositions of matter, it is more fully developed and of
more frequent application in the law of copyright, as applied
to books and engravings.^
1 These principles may be found developed in a work in -which I have
endeavored to state the Law of Copyright.
18
CHAPTER III.
UNITY OF THE SUBJECT-MATTER.
§ 107. The several Acts of Congress on the subject of Pa-
tents, evidently require that the subject-matter of a patent
should be one invention or discovery. The Act of 1836, c.
357, § 6, speaks of an invention or discovery as the subject of
a patent, and not of inventions or discoveries ; and through-
out this and the subsequent statutes, the subject-matter is
always described or referred to in the singular and not in the
plural. It is, therefore, an important inquiry, how far several
distinct things can be made the subject of one patent.
§ 108. In the first place, it is manifest that where there are
two distinct and independent inventions, which have no ne-
cessary connection with each other, but which are applicable
to different objects and purposes, they cannot be united in
one patent; for the statute affords no warrant for including
more than one subject-matter in one patent. In the second
place, if two distinct subject-matters could be included in
one patent, great inconvenience and confusion would arise,
both to the patentee and the public, from the application of
the rule of law which renders void the whole patent, where a
part of the subject-matter turns out not to be original. Still,
these positions do not determine when several apparently
distinct objects constitute one subject-matter; or whether
there is any leading principle which will enable us to draw
the line between one collection of objects as constituting
one subject-matter, and another collection of objects as con-
stituting more than one subject-matter.
§. 109. The object which the inventor proposes to accom-
plish will always be the main guide, by which to determine
UNITY OF THE SUBJECT-MATTER. 139
whether his subject-matter is a unit or not. It may consist
of several distinct inventions, or several machines capable of
useful operation separately ; but if the inventor has brought
them together for a purpose which can only be effected by
their union, that purpose indicates the true character of the
subject-matter, when they are included in one patent, which
goes for the accomplishment of that purpose. But if the pa-
tent goes for the combination, or the purpose to be effected
by the several inventions united in one operation, and also
goes for the distinct purposes which each invention is, by
itself, capable of effecting, it is clear that several subject-mat-
ters are embraced in one patent.^
§ 110. If, indeed, the patentee describes several distinct
and independent parts of an invention, which are intended
to be used in combination, and he is the first and original in-
ventor of each of them, his patent will cover all the parts as
well as the combination, and the use of any one of them by
another person, will be an infringement. But where the pa-
tentee is not the inventor of the several things used in the
combination, but the combination itself is the true subject-
matter of his patent, then the use of any number of those
things not amounting to the same combination, is no infringe-
ment.2
1 In Barrett v. Hall, 1 Mas. 447, 4 75, Mr. Justice Story laid down the
doctrine thus : " A patent under the general Patent Act, cannot embrace
A-arious distinct improvements or inventions ; but in such case the party must
take out separate patents. If the patentee has invented certain improved
machines, which are capable of a distinct operation, and also has invented a
combination of those machines to produce a connected result, the same pa-
tent cannot at once be for the combination and for each of the improved ma-
chines ; for the inventions are as distinct as if the subjects were entirely dif-
ferent. A very significant doubt has been expressed on this subject by the
Supreme Court ; and I am persuaded that the doubt can never be success-
fully removed." See Evans v. Eaton, 3 Wheat. 454, 506.
2 In Moody v. Fiske, 2 Mas. 112, 117, the same learned judge said:
* Where the patent goes for the whole of a machine as a new invention, and
140 LAW OF PATENTS.
§ 111. It has also been held that a patent may be taken
for several improvements on one and the same machine, or for
the machine Is in its structure substantially new, any person ■who pirates a
part of the machine, substantially new in its structure, deprives the inventor
so far of his exclusive right in his invention, and may, in a great measure,
destroy the value of the patent. When the patent is for several improve-
ments in an existing machine, or for an improved machine, incorporating
several distinct improvements, which are clearly specified, then if a person
pirates one of the improvements, he violates the exclusive right of the pa-
tentee, for the patent is as broad as the invention, and the invention covers
all the improvements ; and it is a wrong done to the patentee to deprive
him of his exclusive right in any of his improvements. Where the patent
is for a new combination of existing machinery, or machines, and does not
specify or claim any improvement or invention, except the combination, un-
less that combination is substantially violated, the patentee is not entitled to
any remedy, although parts of the machinery are used by another, because
the patent, by its terms, stands upon the combination only. In such a case,
proof that the machines, or any part of their structure existed before, forms
no objection to the patent, imless the combination has existed before, for the
reason, that the invention is limited to the combination. And yet if the com-
bination itself be not wholly new, but, up to a certain point, has existed be-
fore, and the patentee claims the whole combination as new, instead of his
own improvements only, as by taking out a patent for the whole machine,
doubtless his patent is void, for it exceeds his invention. But if there be
different and distinct improvements constituting parts of the combination,
which are specified as such in the patent and specification, and any one of
them be pirated, the same rule seems to apply as in other cases where part
of an invention is pirated, for the patent then shows that the invention is not
limited to the mere combination, but includes the particular improvements
specified.
It is often a serious difficulty, from the obscure language of the specifica-
tion, to ascertain what is the nature and extent of the invention claimed by
the patentee. Whether his patent be valid or not, must materially depend
upon the accuracy and distinctness with which the invention is stated. But
in all cases where the patentee claims any thing as his own invention, in his
specification, courts of law cannot reject the claim ; and if included in the
patent, and found not to be new, the patent is void, however small or unim-
portant such asserted invention may be. This leads me to the first point
made at the bar ; as to which, it appears to me clear, both upon principle
and authority, that where a patentee in his specification states and sums up
the particulars of his invention, and his patent covers them, he is confined to
UNITY OF THE SUBJECT-MATTER. 141
two machines, which are invented by the patentee, and con-
duce to the same common purpose and object, although they
are capable of a distinct use and application, without being
united together.^ But a patent cannot be taken for two distinct
such summary ; and he cannot afterwards be permitted to sustain his patent
by showing that some part which he claims in his summing up as his inven-
tion, though not in fact his invention, is of slight value or importance in his
patent. His patent covers it ; and if it be not new, the patent must be void.
Here the plaintiff claims a particular position of machinery as his invention,
and it clearly appears in evidence, that the position is not new. It has ex-
isted before, not in machines exactly like the present, but in machines ap-
plied to analogous purposes, viz., in machines for roping cotton ; and applied
for the same purpose as the plaintiff applies them. AVithout doubt, he sup-
posed that he was the first inventor, but that was his mistake, and will not
help the case. The objection therefore is fatal. I wish it to be understood
in this opinion, that though several distinct improvements in one machine
may be united in one patent, it does not follow that several improvements in
two different machines, having distinct and independent operations, can be so
included. Much less that the same patent may be for a combination of dif-
ferent machines, and for distinct improvements in each."
1 In Hogg V. Emerson, 11 Howard, 587, 605, where a patent was issued
for an improvement in the steam-engine " in the mode of propelling there-
with either vessels on the water, or carriages on the land," and it was ob-
jected that it covered distinct machines, the Supreme Court of the United
States said : " But grant that such is the result when two or more inventions
are entirely separate and independent, — though this is doubtful on princi-
ple, — yet it is well settled in the cases formerly cited, that a patent for more
than one invention is not void, if they are connected in their design and
operation. This last is clearly the case here. They all here relate to the
propelling of carriages and vessels by steam, and only differ, as they must,
on water from what they are on land, a paddle-wheel being necessary on the
former and not on the latter, and one being used on the former which is
likewise claimed to be an improved one. AH are a part of one combination
when used on the water, and differing only as the parts must when used to
propel in a different element.
In Wyeth v. Stone, 1 Story, 288, In order to render different letters-patent
necessary, it is said, the inventions must be ' wholly independent of each
other, and distinct inventions for unconnected objects;' as one to spin cot-
ton, and ' another to make paper.'
Again, if one set of letters-patent is permissible for one combination con-
sisting of many parts, as Is the daily practice, surely one will amply suffice
for two or three portions of that combination."
142 LAW OF PATENTS.
machines not conducing to the same common purpose or ob-
ject, but designed for totally distinct and independent objects.^
1 In Wycth v. Stone, 1 Story's R. 273, 287, Mr. Justice Story said: " But
it has been said, that if each of the machines patented is independent of the
other, then separate patents should have been taken out for each ; and that
they cannot both be joined in one and the same patent ; and so there is a
fatal defect in the plaintiff's title. And for this position the doctrine stated
in Barrett v. Hall, 1 Mason, R. 473, and Evans v. Eaton, 3 Wheat. R.
454, 506, (see also Phillips on Patents, pp. 214, 215, 216,) is relied on. I
agree, that under the general Patent Acts, if two machines are patented,
■which are -wholly independent of each other, and distinct inventions, for
unconnected objects, then the objecilon will lie in its full force, and be fatal.
The same rule would apply to a patent for several distinct improvements
upon different machines, having no common object or connected operation.
For, if different inventions might be joined in the same patent for entirely
different purposes and objects, the patentee would be at liberty to join as
many as he might choose, at his own mere pleasure, in one patent, which
seems to be inconsistent with the language of the Patent Acts, which speak
of the thing patented, and not of the things patented, and of a patent for an
invention, and not of a patent for inventions ; and they direct a specific sum
to be paid for each patent. Besides, there would arise great difficulty in
applying the doctrine of the common law to such cases. Suppose one or
more of the supposed inventions was not new, would the patent at the
common law be void in toto, or only as to that invention, and good for the
rest ? Take the case of a patent for ten different machines, each appli-
cable to an entirely different object, one to saw wood, another to spin
cotton, another to print goods, another to make paper, and so on ; if any
one of these machines were not the invention of the patentee, or were in
public use, or were dedicated to the public, before the patent was granted,
upon the doctrines of the common law, the patent would be broader than
the invention, and then the consideration therefor would fail, and the
patent be void for the whole. But if such distinct inventions could be
lawfully united in one patent, the doctrine would lead to consequences
most perilous and injurious to the patentee ; for, if any one of them were
known before, or the patent as to one of them was void, by innocent mis-
take, or by priority of invention, that would take away from him the title to
all the others, which were unquestionably his own exclusive inventions. On
the other hand, if the doctrine were relaxed, great Inconvenience and even
confusion might arise to the public, not only from the difficulty of distin-
guishing between the different Inventions stated in the patent and specifica-
tion, but also of guarding themselves against fraud and imposition by the
UNITY OF THE SUBJECT-MATTER. 143
Hence, it would seem to follow that where a patentee has
invented two distinct and different machines, each of which
patentee, in including doubtful claims under cover of others wliich were
entirely well founded. In construing statutes upon such a subject, these
considerations are entitled to no small weight. At least, they show that
there is no ground, founded in public policy, or in private right, which calls
for any expanded meaning of the Acry words of the statute ; and that to
construe them literally is to construe them wisely. It is plain, also, that the
Act of 1837, ch. 45, in the ninth section, contemplated the rule of the com-
mon law as being then in full force : and therefore, it seeks to mitigate it,
and provides ' that whenever, by mistake, accident, or inadvertence, and
without any 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 invented,' (not of different
things invented) ' 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 good and valid for so much of the invention or discovery '
(not inventions or discoveries) 'as shall be truly and bond fide his own ;
provided 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.' This language manifestly points throughout to a definite and
single invention, as the ' thing patented,' and does not even suppose, that
one patent could lawfully include divers distinct and independent inventions,
having no conunon connection with each other, nor any common purpose.
It may, therefore, fairly be deemed a legislative recognition and adoption of
the general rule of law in cases not within the exceptive provision of the
Act of 1837.
And that is what I understand to have been intended by the Court in the
language used in Barrett v. Hall, 1 Mason, 44 7, 4 75, 4 78. It was there said,
(p. 475,) that ' a patent under the general Patent Act cannot embrace various
distinct improvements and inventions ; but in such a case the party must take
out separate patents. If the patentee has invented certain improved machines,
which are capable of a distinct operation, and has also invented a combination
of these machines to produce a connected result, the same patent cannot at
once be for the combination, and for each of the Improved machines ; for the
inventions are as distinct as if the subjects were entirely different.' And
again, (p. 478,) ' If the patent could be constructed as a patent for each of
the machines severally, as well as for the combination, then it would be void,
because two separate inventions cannot be patented in one patent.' It is
obvious, construing this language with reference to the case actually before
144 LAW OF PATENTS.
will accomplish the same end, he may unite them in one pa-
tent, as being distinct modes by which he contemplates the
the Court, that the Court were treating of a ease, where each of the patented
machines might singly have a distinct and appropriate use and purpose, un-
connected with any common purpose, and therefore each was a different
invention. In Moody v. Fiske, 2 Mason, 112, 119, the judge alluded still
more closely to the distinction, and said : ' I wish it to be understood, in this
opinion, that though several distinct improvements in one machine may be
united in one patent; (yet) it does not follow, that several improvements
in two different machines, having distinct and independent operations, can
be so included ; much less, that the same patent may be for a combination
of different machines, and for distinct improvements in each.' It is perhaps
impossible to use any general language in cases of this sort, standing almost
upon the metaphysics of the law, without some danger of its being found
susceptible of an interpretation beyond that which was then in the mind of
the Court. The case intended to be put in each of these cases was of two
different macliines, each applicable to a distinct object and purpose, and not
connected together for any common object or purpose. And, understood in
this way, it seems to me, that no reasonable objection lies against the doc-
trine.
Construing, then, the present patent to be a patent for each machine, as a
distinct and independent invention, but for the same common purpose, and
auxiliary to the same common end, I do not perceive any just foundation for
the objection made to it. If one patent may be taken for different and dis-
tinct improvements made in a single machine, which cannot well be doubted
or denied, how is that case distinguishable in principle from the present ?
Here there are two machines, each of which is or may be justly auxiliary
to produce the same general result, and each is applied to the same com-
mon purpose. Why, then, may not each be deemed a part or improvement
of the same invention ? Suppose the patentee had invented two distinct and
different machines, each of which would accomplish the same end, why may
he not unite both in one patent, and say, I deem each equally useful and
equally new, but, under certain circumstances, the one may, in a given case,
be preferable to the other ? There is a clause in the Patent Acts, which
requires that the inventor, in his specification or description of his invention,
should " 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." Now, this would seem clearly to
show that he might lawfully unite in one patent all the modes, in which he
contemplated the application of his invention, and all the different sorts of
UNITY OF THE SUBJECT-MATTER. 145
application of his invention, one of them being preferable in
certain circumstances to the other, and vice versa. In this
way the unity of the subject-matter is preserved; for the subject
matter consists, in such a case, of the object to be accomplished,
and of the several modes by which it may be accomplished.
§ 1 12. There is also another aspect in which what we have
called the unity of a patent must be preserved. It is impos-
sible that any invention should have been produced both as
the separate invention of a party, and as the joint invention
of the same party and another or others. It must have been
either the separate and sole invention of the party, or the
joint invention of the same party, acting with others. A joint
invention may be a good subject-matter of a patent, for the
statute supposes the case of a joint invention, and provides
for it ; but if an invention, which, in point of fact, was made
by more than one person, is made the subject of a patent by any
one of them, he cannot take the oath required by the statute,
machinery, or modifications of macbinery, by which, or to which it might be
applied ; and if each were new, there would seem to be no just ground of
objection to his patent, reaching them all. (Act of 1793, ch. 55, § 3 ; Act
of 1836, ch. 357.) A fortiori, this rule would seem to be applicable, where
each of the machines is but an improvement or invention conducing to the
accomplishment of one and the same general end.
But let us take the case in another view, (of which it is certainly suscepti-
ble,) and consider the patent as a patent, not for each machine separately,
but for them conjointly, or in the aggregate, as conducing to the same com-
mon end ; if each machine is new, why may they not both be united in one
patent, as distinct improvements ? I profess not to see any good reason to
the contrary. If they may be so united, and were both new, then, upon the
principles established in Moody v. Fiske, (2 Mason's R. 112, 117, 118, 119,)
it is not necessary, in order to maintain a suit, that there should be a viola-
tion of the patent throughout. It is sufficient if any one of the invented
machines or improvements is wrongfully used ; for that, pro tanto, violates
the patent. In this vicAv, therefore, the use of the cutter of the inventor,
without any use of the saw, would be a sufficient ground to support the
present bill, if it were not otherwise open to objection." See also Root u.
Ball, 4M'Lean, 177.
19
146 LAW OF PATENTS.
declaring himself to be the original and first inventor, or, if he
does take it, his patent will be void. On the other hand, if
his invention was the sole production of one party, a joint
patent for it encounters the same objection. It is necessary,
therefore, in all cases, that the subject-matter should be
claimed as the sole invention of one party, if such is the fact,
or as the joint invention of two or more parties, if it was in-
vented by more than one.i
1 In Barrett v. Hall, 1 Mas. 447, 472, the reasons are thus stated: "In
the first place, a joint patent may well be granted upon a joint invention.
There is no difficulty in supposing in point of fact, that a complicated inven-
tion may be the gradual result of the combined mental operations of two
persons acting together, pari passu, in the invention. And if this be true,
then as neither of them could justly claim to be the sole inventor in such a
case, it must foUow that the invention is joint, and that they are jointly
entitled to a patent. And so are the express words of the Eatent Act, (Act
of 21st February, 1793, ch. 11, § 1,) which declares, that if any person or
persons shall allege, that he or they have invented, &c., a patent shall be
granted to hitn or them for the invention.
In the next place, a joint patent cannot be sustained upon a sole invention
of either of the patentees, for the Patent Act gives no right to a patent,
except to the inventors, and requires an oath from the party, who claims a
patent, that he is the true inventor.
In the next place, a joint patent for an invention is utterly inconsistent
with several patents for the same invention by the same patentees. For it is
impossible that any person can be, at the same time, the joint and the sole
inventor of the same invention. If, therefore, each of the joint patentees
obtain a several patent for the same invention, as his own exclusive invention,
and afterwards, without surrendering the first patent, they obtain a joint
patent for the same as a joint invention, either the former sole patents are
void, or the joint patent is void. For, besides the apparent inconsistency of
the patents, if all could be sustained, then a recovery- upon the joint patent
would be no bar to a suit upon the several patents ; and the parties might
obtain a double recompense for the same infringement. There is an addi-
tional reason, which deserves great consideration ; and that is, that if sole
and joint patents could be sustained by the same parties for the same inven-
tion, they might be successively taken out, so that the term of the exclusive
right might be prolonged for a great length of time, instead of being limited
to fourteen years. I am, therefore, clearly of opinion, that a grant of a sub-
sequent patent for an invention is an estoppel to the patentee to set up any
<
I
UNITY OF THE SUBJECT-MATTER. 147
§ 113, An inventor cannot have two subsisting valid
patents, at the same time, for the same invention. The first
patent, while it remains in full force and unrepealed, is an
estoppel to any subsequent patent by the same person for
the same invention.^
prior grant to tlie same invention, which is inconsistent with the terms of
the last grant. And I have very great doubts, whether where a patent is
once granted to any person for an invention, he can legally acquire any right
under a subsequent patent for the same invention, unless his first patent be
repealed for some original defect, so that it might truly be said to be a void
patent.
In the next place, if several patents are taken out by several patentees for
a several invention, and the same patentees afterwards take out a joint patent
for the same as a joint invention, the parties are not absolutely estopped by
the former patents from asserting the invention to be joint ; but the former
patents are very strong evidence against the joint invention. The reason of
this doctrine is, not that estoppels are odious in the law, but that a party
may innocently mistake, as to the extent of his own claims, and though a sole
and joint invention, by the same persons of the same thing, cannot exist in
fact, yet a party may suppose that he has invented, what in truth has been
partly suggested by another mind."
1 Odiorne v. The Aniesbury Nail Factory, 2 Mason, 28. Barrett i'. Hall,
1 Mason, 447, 473.
CHAPTER IV.
THE PERSONS ENTITLED TO TAKE, RENEW, OR EXTEND PATENTS.
§ 114. We have seen that the person or persons entitled to
receive a patent can only be the inventor or inventors of the
thing proposed to be patented. Our statute does not admit
of a patent for the introduction of an invention from abroad,
however meritorious. The patentee must be the inventor,
and the original and first inventor.^ But where the inventor
has died before making application for a patent, the statute
provides that the right of applying for and obtaining a patent
shall devolve on his executor or administrator, in trust for his
heirs or devisees, and that the oath or atfirmation of original
invention shall be varied accordingly.^
§ 115. As the statute is silent on the subject of citizenship,
it follows, that an alien, who is the first and original inventor
of any patentable subject, may apply for and obtain a patent,
in the same manner as a citizen of the United States. The
eighth section of the Act of 1836, c. 357, seems to contem-
plate the case of an application by an alien, by providing that
the fact of a patent having been previously taken out in a
foreign country, shall not debar the original and true inventor
from a patent in the United States, where such foreign patent
has not been taken out, and the invention published more
than six months next before the filing of the specification and
1 Reed v. Cutter, 1 Story's R. 590, 596 ; Act of 1836, c. 357, § 6.
2 Actof 1836, c. 357, § 10.
EXTENSION OF PATENTS. 149
drawing.^ The subsequent Act of 1839, c. 88, § 6, has some-
what altered this provision, by declaring that no person shall
be debarred from receiving a patent, by reason of the inven-
tion having been patented in a foreign country more than six
months prior to his a.pp\ica.tion, provided, that the same shall
not have been introduced into public and common use, in the
United States, prior to the application for such patent.^
§ 116. So that under these two statutes, the rights of aliens
are these. An alien, who is the original and first inventor of
a patentable subject, may obtain a patent therefor in the
United States, under the same circumstances as a citizen, if
he has not patented his invention in a foreign country. If,
however, he has taken out a patent for his invention and
published the same abroad, if he applies for a patent in the
United States, he can obtain it, provided the subject has not
been introduced into public and common use in the United
States, before his application, notwithstanding he may have
received a patent for it abroad more than six months prior to
his application here. But if his application in the United
States is made within six months of the date or publication
of his foreign patent, and yet the subject has in the mean-
time been introduced into public and common use in this
country, it is not quite clear whether the statutes, taken toge-
ther, mean to give him a patent, notwithstanding such public
use, or whether they leave his case open to the general objec-
tion of a prior public use. It would seem to have been the
intention of Congress, in these provisions, to leave the space
of six months open to foreigners, where they are original and
true inventors, and not to exclude them by reason of the
introduction of their inventions within that period, com-
1 Act of 1836, c. 357, § 8. The sixth section of the statute also contem-
plates the case of a patentee being an alien, by requiring the applicant to
make oath of what country he is a citizen.
2 Act of 1839, c. 88, § 6.
150 LAW OF PATENTS.
mencing from the date of the patent or publication in a
foreign country.^
§ 117. The eighteenth section of the Act of 1836, provides
for an extension of a patent beyond the term of its limita-
tion, on the application of the patentee, in the mode therein
prescribed. It has been determined, that an administrator
is competent to apply for and receive this grant, although the
patentee had disposed of all his interest in the then existing
patent.^
§ 118. The question whether an assignee, under the first
term of a patent, can claim or exercise any right or interest
under the renewed or extended patent, has been much dis-
cussed. The patent for Woodworth's planing machine was
extended from 1842 to 1849, by the Board of Commissioners,
under the general Patent Act of 1836. Under this extension,
a majority of the Supreme Court of the United States, held
that the renewed franchise, or the right to make and sell the
machine, did not enure to the benefit of assignees under the
original term, but to the administrator of Woodworth to
whom it was granted ; but that assignees, who were in the
use of the patented machine at the time of the renewal, had
still a right to use it.^ Subsequently, the same patent was
1 la the case of interfei-ing applications, where the question is one of
priority of invention between an alien and a citizen of the United States, the
date of the enrolment of the foreign patent, and not that of the sealing, is
considered by the Patent-Office as the date of the foreign patent, beyond
which the foreign applicant is not permitted to go in order to prove the
priority of his invention.
2 Wilson V. Rousseau, 4 Howard, 646 ; Woodworth v. Sherman, 3 Story's
E. 171, 172; Brooks v. Bicknell, 3 M'Lean R. 250, 255, 260; Woodworth
V. Stone, 3 Story's R. 749.
3 Wilson V. Rousseau, 4 Howard, 646. Mr. Justice Nelson delivered the
opinion of a majority of the Court, (McLean, Wayne, and Woodbury, Justices,
dissenting,) as follows: "The second question is, whether, by force and opera-
EXTENSION OF PATENTS. 151
again extended by special Act of Congress, passed in 1845,
tion of the eigliteenth section already referred to, the extension granted to
W. W. Woodworth, as administrator, on the 16th day of November, 1842,
inured to the benefit of assignees under the original patent granted to Wil-
liam Woodworth, on the 27th day of December, 1828, or whether said exten-
sion "inured to the benefit of the administrator only, in his said capacity.
The most of this section has ali-eady been recited in the^consideration of the
first question, and it will be unnecessary to repeat it. It provides for the
application of the patentee to the commission for an extension of the patent
for seven years ; constitutes a board to hear and decide upon the application ;
and if his receipts and expenditures, showing the loss and profits accruing to
him from and on account of his invention, shall establish to the satisfaction
of the board, that the patent should be extended by reason of the patentee,
without any fault on his part, having failed to obtain from the use and sale
of his invention a reasonable remuneration for his time, ingenuity, and ex-
pense bestowed upon the same, and the introduction of it into use, it shall be
the duty of the commissioners to extend the same by making a certificate
thereon of such extension for the term of seven years from and after the first
term ; ' and thereupon the said patent shall have the same eflfect in law as
though it had been originally granted for the term of twenty-one years.
And then comes the clause in question :.— " 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 interests therein." '
The answer to the second question certified depends upon the true con-
struction of the above clause respecting the rights of assignees and grantees.
Various and conflicting interpretations have been given to it by the learned
counsel on the argument, leading to different and opposite results, which it
will be necessary to examine. On one side, it has been strongly argued,
that the legal operation and efiect of the clause save and protect all the rights
and interests of assignees and grantees in the patent existing at the time of
the extension ; and thus secure and continue the exclusive use and enjoy-
ment of these rights and interests for the seven years, to the same extent,
and in as ample a manner, as held and enjoyed under the first term. That
if A holds an assignment of a moiety of the patent, he will hold the same
for the new term of seven years ; if of the whole patent, then the whole
interest for that period. And that as soon as the new grant is made to the
patentee, the interest therein passes, by operation of this clause, to the
assignees of the old term in proportion to their respective shares. On the
other side, it has been argued, with equal earnestness, that, according to the
true construction and legal effect of the clause, protection is given, and
152 LAW OF PATENTS.
from 1849 to 1856. Under this extension, a majority of the
intended to be given, only to the rights and interests of assignees and gran-
tees acquired and held by assignments and grants from the patentee in and
under the second or new term ; and that it does not refer to, or embrace, or
in any way affect the rights and interests of assignees or grantees holding
under the old. In connection with this view, it is said that the rights thus
protected in the new term may be acquired by means of the legal operation
of the clause, either from a direct assignment or grant after the extension of
the patent, or by an appropriate provision for that purpose, looking to an
extension, contained in the assignment or grant under the old. It is not to
be denied, but that, upon any view that has been taken, or that may be
taken of the clause, its true meaning and legal effect cannot be asserted with
entire confidence ; and, after all, must depend upon such construction as the
Court can best give to doubtful phraseology and obscure legislation, having
a due regard to the great object and intent of Congress, as collected from
the context and general provisions and policy of the patent law. The rule is
familiar and well settled, that, in case of obscure and doubtful words or
phraseology, the intention of the law-makers is to be resorted to, if discover-
able from the context, in order to fix and control their meaning so as to
reconcile it, if possible, with the general policy of the law.
Now the serious difficulty in the way, and which renders the first inter-
pretation inadmissible, except upon the most explicit and positive words, is,
that it subverts at once the whole object and purpose of the enactment, as is
plainly written in every line of the previous part of the section. It gives to
the assignees and grantees of the patent, as far as assigned under the old
term, the exclusive right and enjoyment of the invention — the monopoly —
in the extended term for the seven years ; when, by the same provision, it
clearly appears that it was intended to be secured to the patentee as an addi-
tional remuneration for his time, ingenuity and expense in bringing out the
discovery, and introducing it into public use. It gives this remuneration
to parties that have no peculiar claims upon the government or the public,
and takes it from those who confessedly have.
The whole structure of the eighteenth section turns upon the idea of
affording this additional protection and compensation to the patentee, and to
the patentee alone, and hence the reason for instituting the inquiry before the
grant of the extension, to ascertain whether or not he has failed to realize a
reasonable remuneration from the sale and use of the discovery, — the pro-
duction of an account of profit and loss to enable the board to determine the
question ; and as it comes to the one or the other conclusion, to grant the
extended term or not.
It is obvious, therefore, that Congress had not at all in view protection to
EXTENSION OF PATENTS. 153
Court held, likewise, that an assignee under the original
term had the same right to continue to use the patented
assijjnees. That their condition, on account of dealing in^the subject of the
invention, whether successful or otherwise, was not in the mind of that body,
nor can any good reason be given why it should have been. They had pur-
chased portions of the interest in the invention, and dealt with the patent-
rights as a matter of business and speculation, and stood in no different rela-
tion to the government or the public, than other citizens engaged in the
common affairs of life. Nothing short of the most fixed and positive terms
of a statute could justify an interpretation so repugnant to the whole scope
and policy of it, and to wise and judicious legislation. We think this con-
struction not necessarily required by the language of the clause, and is alto-
gether inadmissible.
Then, as to the second interpretation, namely, that the clause refers to,
and includes assignees and grantees of interests acquired in the new term,
either by an assignment or grant from the patentee after the extension, or
by virtue of a proper clause for that purpose, in the assignment under the
old term. The difficulty attending this construction lies in the uselessness
of the clause upon the hypothesis, — the failure to discover any subject-
matter, upon which to give reasonable operation and effect to it, — and
hence, to adopt the construction is to make the clause virtually a dead letter,
the o-rounds for which conclusion we will proceed to state. The eleventh
section of the Patent Act provides, that every patent shall be assignable, in
law, either as to the whole interest, or any undivided part thereof, by an
instrument in writing, which assignment, and also any grant and convey-
ance of the exclusive right under any patent, &c., shall be recorded in the
Patent Ofllce. And the fourteenth section authorizes suits to be brought in
the name of the assignee or grantee, for an infringement of his rights, in a
court of law.
One object of these provisions, found in the general Patent system, is, to
separate the interest of the assignee or grantee from that which may be
held by the patentee, and to make each fractional interest held under the
patent distinct and separate ; in other words, to change a mere equitable
into a legal title and interest, so that it may be dealt with in a court of
law.
Now, in view of these provisions, it is difficult to perceive the materiality
of the clause in question, as it respects the rights of assignees and grantees
held by an assignment or grant in and under the new term, any more than
in respect to like rights and interests in and under the old. The eleventh
and fourteenth sections embrace every assignment or grant of a part or the
whole of the interest in the invention, and enable these parties to deal with
20
154 LAW OF PATENTS.
machine.! The following is the reasoning of the majority
of the Court upon this difficult question, which stands in
it, in all respects, the same as the patentee. They stand upon the same
footino-, under the new term, as in the case of former assignments under the
old. Nothing can be clearer. It is impossible to satisfy the clause by
referring it to these assignments and grants ; or to see how Congress could,
for a moment, have imagined that there would be any necessity for the
clause, in this aspect of it. It would have been as clear a work of superero-
gation as can be stated.
The only color for the argument in favor of the necessity of this clause,
in the aspect in which we are viewing it, is, as respects the contingent inte-
rest in the new term, derived from a provision in an assignment under the
old one, looking to the extension. As the right necessarily rested on con-
tract, at least till the contingency occurred, there may be some doubt whether,
even after its occurrence, the eleventh and fourteenth sections had the effect
to change it into a vested legal interest, so that it could be dealt with at law,
and that a new assignment or grant from the patentee would be required,
which could be enforced only in a court of equity. To this extent there
may be some color for the argument, some supposed matter to give operation
and effect to the clause.
But what is the amount of it ? Not that the clause creates or secures
this contingent interest in the new term, for that depends upon the contract
between the parties, and the contract alone, and which, even if the general
provisions of the law respecting the rights of assignees and grantees could
not have the effect to change into a legal right, might be enforced in a court
of equity. The only effect, therefore, of the provision in respect to assign-
ees and grantees of this description would bo, to change the nature of the
contingent interest after the event happened, from a right resting in contract
to a vested legal right; or, to speak with more precision, to remove a doubt
about the nature of the interest in the new term, after the happening of a
certain contingency, which event in itself was quite remote. This seems to
be the whole amount of the effect that even ingenious and able counsel have
succeeded in finding, to satisfy the clause. It presupposes that Congress
looked to this scintilla of interest in the new term, which might or might
not occur, and cast about to provide for it, for fear of doubts as to its true
nature and legal character, and the effect of the general system upon it.
We cannot but think a court should hesitate before giving a construction
to the clause so deeply harsh and unjust in its consequences, both as it
respects the public and individual rights and interests, upon so narrow a
foundation.
1 Bloomer v. Mc Que wan, 14 Howard, 539, 547.
EXTENSION OF PATENTS. 155
such a position that it can scarcely be regarded as finally
settled : —
But there are other difficulties in the way of this construction. The
eleventh section, regulating the rights of assignees and grantees, provides
' that every patent shall be assignable at law,' &c., ' 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,'
&c., ' shall be recorded.'
Now it will be apparent, we think, from a very slight examination of the
clause in question, that it does not embrace assignees or grantees in the
sense of the eleventh section at all ; nor is the sense in which they are refer-
red to, when speaking of these interests generally under the patent law, with-
out interpolating words or giving a very forced construction to those compos-
ing it. The clause is as follows : — ' 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 interests therein.'
It will be seen that the word ' exclusive,' used to qualify the right of a
grantee in the eleventh section, and indeed, always, when referred to in the
Patent Law, (§ 1-1,) and also the words ' to make,' and to grant to others
' to make and use,' are dropped ; so that there is not only no exclusive
right in the grantee, in terms, granted or secured by the clause, but no right
at all, no right whatever, to make or to grant to others to make and use
the thing patented ; in other words, no exclusive right to make or vend.
And it is, we think, quite obvious, from the connection and phraseology, that
assignees and grantees were placed, and were intended to be placed, in this
respect, upon the same footing. We should scarcely be justified in giving
to this term a more enlarged meaning as to the right to make and sell, as it
respects the one class, than is given to the others, as they are always used
as correlative in the Patent Laws, to the extent of the interests held by them.
The clause, therefore, in terms, seems to limit studiously the benefit, or
reservation, or whatever it may be called, under or from the new grant to
the naked ri<ifht to use the thing patented ; not an exclusive right, even for
that, which might denote monopol}', nor any right at all, much less exclusive,
to make and vend. This seems to have been guardedly omitted. We do
not forget the remaining part of the sentence, " to the extent of their respect-
ive interests therein," which is relied on to help out the difficulty. But we
see nothin" in the phrase, giving full effect to it, necessarily inconsistent with
the plain meaning of the previous words. The exact idea intended to be
expressed may be open to observation ; but we think it far from justifying
the Court in holding, that the grant or reservation of a right to use a thing
156 LAW OF PATENTS.
" The bill in this case was filed by the appellants, on the
6th of July, 1850, in the Circuit Court of the United States,
patented, well known and in general use at the time, means an exclusive
right to make and use it ; and not only this, but an exclusive I'ight to grant
to others the right to make and use it, meaning an exclusive right to
vend it.
The Court is asked to build up a complete monopoly in the hands of
assignees and grantees in the thing patented, by judicial construction, founded
upon the grant of a simple right to use it to the extent of the interest pos-
sessed; for the argument comes to this complexion. A simple right to use is
given, and we are asked to read it an exclusive right, and not only to read
it an exclusive right to use, but an exclusive right to make and vend the
patented article.
Recurring to the Patent Law, it will be seen that Congress, in granting
monopolies of this description, have deemed it necessary to use very differ-
ent language. The grant in the patent must be in express terms, for 'the
full and exclusive right and liberty of making, using, and vending,' in order
to confer exclusive privileges. The same language is also used in the act,
when speaking of portions of the monopoly in the hands of assignees and
grantees. (§ 11, 14.)
We cannot but think, therefore, if Congress had intended to confer a
monopoly in the patented article upon the assignees and grantees, by the
clause in question, the usual formula in all such grants w-ould have been
observed, and that we should be defeating their understanding and intent,
as well as doing violence to the language, to sanction or uphold rights and
privileges of such magnitude by the mere force of judicial construction. We
conclude, therefore, that the clause has no reference to the right or interest
of assignees and grantees under the new and extended term, upon the
ground : —
1. Because, in that view, giving to the words the widest construction,
there is nothing to satisfy the clause, or upon Avhich any substantial effect
and operation can be given to it ; it becomes virtually a dead letter, and work
of legislative superfluity ; and
2. Because the clause in question, upon a true and reasonable interpreta-
tion, does not operate to vest the assignees and grantees named therein with
any exclusive privileges Avhatever, in the extended term, and therefore can-
not be construed as relating to or embracing such interests in the sense of
the law.
The extension of the patent, under the eighteenth section, is a new grant
of the exclusive right or monopoly in the subject of the invention for the
seven years. All the rights of assignees or grantees, whether in a share of
EXTENSION OF PATENTS. 157
for the Western District of Pennsylvania, to obtain an in-
junction restraining the appellees from the use of two of
the patent, or to a specified portion of the territory held under it, terminate
at the end of fourteen years, and become reinvested in the patentee by the
new grant. From that date he is again possessed of 'the full and exclusive
right and liberty of making, using, and vending to others the invention,'
■whatever it may be. Not only portions of the monopoly held by assignees
and grantees, as subjects of trade and commerce, but the patented articles
or machines throughout the country, purchased for practical use in the busi-
ness affairs of life, are embraced within the operation of the extension. This
latter class of assignees and grantees are reached by the new grant of the
exclusive right to use the thing patented. Purchasers of the machines, and
who were in the use of them at the time, are disabled from further use
immediately, as that right became vested exclusively in the patentee. Mak-
ing and vending the invention are prohibited by the corresponding terms of
his grant.
Now, if we read the clause in question with reference to this state of
things, we think that much of the difficulty attending it will disappear. By
the previous part of the section, the patentee would become reinvested with
the exclusive right to make, use, and vend the thing patented ; and the
clause in question follows, and was so intended as a qualification. To what
extent V is the question. The language is, ' 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 interests therein ;' naturally, we
think, pointing to those who were in the use of the patented article at the
time of the renewal, and intended to restore or save to them that right which,
without the clause, would have been vested again exclusively in the patentee.
The previous part of the section operating in terms to vest him with the
exclusive right to use, as well as to make and vend, there is nothing very
remarkable in the words ; the legislature intending thereby to qualify the
riorht in respect to a certain class only, leaving the right as to all others in
the patentee, in speaking of the benefit of the renewal extending to this class.
The renewal vested him with the whole right to use, and therefore there is
no great impropriety of language, if intended to protect this class, by giving
them, in terms, the benefit of the renewal. Against this view it may be
said, that ' the thing patented' means the invention or discovery, as held in
McClurg V. Kingsland, 1 How. 202, and that the right to use 'the thing
patented' is what, in terms, is provided for in the clause. That is admitted;
but the words, as used in the connection here found, with the right simply to
use the thing patented, not the exclusive right, which would be a monopoly,
necessarily refer to the patented machine, and not to the invention ; and,
158 LAW or PATENTS.
Woodvvorth's planing machines, in the city of Pittsburg.
The term for which Woodvvorth's patent was originally
indeed, it is in that sense tbat the expression is to be understood generally
throughout the Patent Law, wlien taken in connection with the right to use,
in contradistinction to the right to make and sell.
The ' thing patented ' is the invention ; so the machine is the thing
patented, and to use the machine is to use the invention, because it is the
thing invented, and in respect to which the exclusive right is secured, as is
also held in M'Clurg v. Kingsland. The patented machine is frequently
used as equivalent for the ' thing patented,' as well as for the invention or
discovery ; and, no doubt, when found in connection with the exclusive right
-to make and vend, always means the right of property in the invention, — the
monopoly. But when in connection with the simple right to use, the exclu-
sive right to make and vend being in another, the right to use the thing
patented necessarily results in a right to use the machine, and nothing
more. Then as to the phrase, ' to the extent of their respective interests
therein,' that obviously enough refers to their interests in the thing patented ;
and in connection with the right simply to use, means their interests in the
patented machines, be their interest in one or more at the time of the
extension.
This view of the clause, which brings it down in practical effect and ope-
ration to the persons in the use of the patented machine or machines at the
time of the new grant, is strengthened by the clause immediately following,
■which is, ' that no extension of the patent shall be granted after the expira-
tion of the term for which it was originally issued.' What is the object of
this provision? Obviously to guard against the injustice wliich might other-
wise occur to a person who had gone to the expense of procuring the
patented article, or changed his business upon the faith of using or dealing
with it, after the monopoly had expired, which would be arrested by the
operation of the new grant. To avoid this consequence it is provided, that
the extension must take place before the expiration of the patent, if at all.
Now it would be somewhat remarkable if Congress should have been thus
careful of a class of persons who had merely gone to the expense of pro-
viding themselves with the patented article for use, or as a matter of trade,
after the monopoly had ceased, and would be disappointed and exposed to
loss if it was again renewed, and at the same time had overlooked the class,
who, in addition to this expense and change of business, had bought the
right from the patentee, and were in the use and enjoyment of the machine,
or whatever it might be, at the time of the renewal. These provisions are
in juxtaposition, and, we think, are but parts of the same policy, looking to
EXTENSION OF PATENTS. 159
granted, expired in 1842, but it was extended seven years by
the board establisiied by the 18th section of the Act of 1836.
And afterwards, by the Act of Congress of February 26,
1845, this patent was extended for seven years more, com-
mencing on the 27th of December, 1849, at which time the
previous extension would have terminated.
the protection of individual citizens from any special wrong and injustice
on account of the operation of the new grant. The consequences of any-
different construction from the one proposed to be given are always to be
regarded by courts, when dealing with a statute of doubtful meanino-. For
between two different interpretations, resting upon judicial expositions of
ambiguous and involved phraseology, that which will result in what may be
regarded as coming nearest to the intention of the legislature should be
preferred.
We must remember, too, that we are not dealing with the decision of the
particular case before us, though that is involved in the inquiry, but with a
general system of great practical interest to the country ; and it is the effect
of our decision upon the operation of the system that gives to it its chief
importance.
The eighteenth section authorizes the renewal of patents in all cases where
the board of commissioners is satisfied of the usefulness of the invention, and
of the inadequacy of remuneration to the patentee. Inventions of merit only
are the subjects of the new grant ; such as have had the public confidence,
and which it may be presumed have entered largely in one way and another
into the business affairs of life.
By the report of the commissioners of patents, it appears that five hundred
and two patents were issued in the year 1844 — for the last fourteen years,
the average issue yearly exceeded this number — and embrace articles to be
found in common use in every department of labor and art, on the farm, in
the workshop, and factory. These articles have been purchased from the
patentee, and have gone into common use. But if the construction against
which we have been contending should prevail, the moment the patent of
either article is renewed, the common use is arrested, by the exclusive grant
to the patentee. It is true, the owner may repurchase the right to use, and,
doubtless, would be compelled from necessity ; but he is left to the dis-
cretion or caprice of the patentee. A construction leading to such conse-
quences, and fraught with such unmixed evil, we must be satisfied, was
never contemplated by Congress, and should not be adopted unless compelled
by the most express and positive language of the statute."
160 LAW OP PATENTS.
It appears, from the pleadings and evidence in the case,
that, shortly after the passage of the Act of Congress of 1845,
William Woodworth, the administrator of the patentee, in
whose name the certificate of extension was directed to be-
issued, assigned all his right to James G. Wilson, from whom
the appellant pm'chased the exclusive right to construct and
use this machine, and to vend to others the right to construct
and use it, in a large district of country described in the
grant. Pittsburg, in which the machines in questioji are
used, is included within these limits. And the right which
the appellant purchased was regularly transferred to him by
Wilson, by an instrument of writing duly recorded in the
Patent-Office.
In the year 1833, during the term for which the patent
was originally granted, the defendants purchased the right to
construct and use a certain number of these machines within
the limits of the city of Pittsburg and Alleghany county ;
and the right to do so was regularly transferred to them by
different assignments, deriving their title from the original
patentee. The two machines mentioned in the bill were con-
structed and used by the respondent soon after the purchase
was made, and the appellees continued to use them up to the
time when this bill was filed. And the question is, whether
their right to use them terminated with the first extension, or
still continues under the extension granted by the Act of
1845.
The Circuit Court decided that the right of the appellees
still continued, and upon that ground dismissed the appel-
lant's bill. And the case is now before us upon an appeal
from that decree.
In determining this question we must take into considera-
tion not only the special act under which the appellant now
claims a monopoly, but also the general laws of Congress in
relation to patents for useful improvements, and the special
acts which have from time to time been passed in favor of
the particular patentees. They are statutes in pari materia;
and all relate to the same subject, and must be construed
EXTENSION OF PATENTS. 161
together. It was so held in the case of Evans v. Eaton, (3
Wheat. 518,) where the court said, that the special Act of
Congress in favor of Oliver Evans, granting him a new
patent for fourteen years for his improvements in manufactu-
ring flour and meal, was ingrafted on the general act for the
promotion of useful arts, and the patent issued in pursuance
of both. The rule applies with more force in the present
case ; for this is not the grant of a new patent, but an enlarge-
ment of the time for which a patent previously extended
under the Act of 1836, should continue in force.
Indeed, this rule of construction is necessary to give effect
to the special act under which the appellant claims the
monopoly. For this law does not define the rights or privi-
leges which the patent shall confer, nor prescribe the remedy
to which he shall be entitled if his rights are infringed. It
merely extends the duration of the patent, and nothing more.
And we are necessarily referred, therefore, to the general law
upon the subject to ascertain the rights to which the patent
entitled him, and also the remedy which the law affords him
if these rights are invaded.
Now, the Act of 1836, in express terms, gives the benefit of
the extension authorized by that law to the assignees and
grantees of the right to use the thing patented to the extent
of their respective interests therein. And under this pro-
vision it was decided, in the case of Wilson v. Rousseau,
(4 Howard, 688,) that the party who had purchased and was
using this planing machine, during the original term for
which the patent was granted, had a right to continue the
use during the extension. And the distinction is there taken
between the grant of the right to make and vend the ma-
chine, and the grant of the right to use it.
The distinction is a plain one. The franchise which the
patent grants, consists altogether in the right to exclude
every one from making, using, or vending the thing patented,
without the permission of the patentee. This is all that he
obtains by the patent. And when he sells the exclusive pri-
vilege of making or vending it for use in a particular place,
21
162 LAW OF PATENTS.
the purchaser buys a portion of the franchise which the patent
confers. He obtains a share in the monopoly, and that mono-
poly is derived from, and exercised under, the protection of
the United States. And the interest he acquires, necessarily
terminates at the time limited for its continuance by the law
which created it. The patentee cannot sell it for a longer
time. And the purchaser buys with reference to that period :
the time for which exclusive privilege is to endure being one
of the chief elements of its value. He, therefore, has no just
claim to share in a further monopoly subsequently acquired
by the patentee. He does not purchase or pay for it.
But the purchaser of the implement or machine, for the
purpose of using it in the ordinary pursuits of life, stands on
a different ground. In using it, he exercises no rights created
by the Act of Congress, nor does he derive title to it by
virtue of the franchise or exclusive privilege granted to the
patentee. The inventor might lawfully sell it to him, whether
he had a patent or not, if no other patentee stood in his way.
And when the machine passes to the hands of the purchaser,
it is no longer within the limits of the monopoly. It passes
outside of it, and is no longer under the protection of the Act
of Congress. And if his right to the implement or machine
is infringed, he must seek redress in the courts of the State,
according to the laws of the State, and not in the courts of
the United States, nor under the law of Congress granting
the patent. The implement or machine becomes his private,
individual property, not protected by the laws of the United
States, but by the laws of the State in which it is situated.
Contracts in relation to it are regulated by the laws of the
State, and are subject to State jurisdiction. It was so de-
cided in this Court, in the case of Wilson v. Sanford and
others, 10 Howard, 99. Like other individual property, it is
then subject to State taxation ; and from the great number of
patented articles now in use, they, no doubt, in some of the
States, form no inconsiderable portion of its taxable pro-
perty.
Moreover, the value of the implement or machine, in the
EXTENSION OF PATENTS. 163
hands of the purchaser for use, does not in any degree de-
pend on the time for which the exclusive privilege is granted
to the patentee ; nor upon the exclusion of others from its
use. For example, in the various patented articles used in
agriculture, in milling, in manufactures of different kinds, in
steam-engines, or for household or other purposes, the value
to the purchaser is not enhanced by the continuance of the
monopoly. It is of no importance to him whether it endures
for a year or twenty-eight years. He does not look to the
duration of the exclusive privilege, but to the usefulness of
the thing he buys, and the advantages he will derive from its
use. He buys the article for the purpose of using it as long
as it is fit for use and found to be profitable. And in the
case before us the respondents derive no advantage from the
extension of the patent, because the patentee may place
around them as many planing machines as he pleases, so as
to reduce the profits of those which they own to their just
value in an open and fair competition.
It is, doubtless, upon these principles that the Act of 1836
draws the distinction between the assignee of a share in the
monopoly, and the purchase of one or more machines, to be
used in the ordinary pursuits of business. And that distinc-
tion is clearly pointed out and maintained in the case of
Wilson V. Rousseau, before referred to.
Upon the authority, therefore, of the cases of Evans v.
Eaton, and WUson v. Rousseau, these two propositions may
be regarded as settled by judicial decision : 1. That a special
Act of Congress in favor of a patentee, extending the time
beyond that originally limited, must be considered as in-
grafted on the general law ; and 2. That under the general
law, in force when the special Act of Congress was passed,
a party who had purchased the right to use a planing machine,
during the period to which the patent was first limited, was
entitled to continue to use it during the extension authorized
by that law.
Applying these rules to the case before us, the respondents
must be entitled to continue the use'of their planing machines
164 LAW OF PATENTS.
jduring the time for which the patent is extended by the
special Act of Congress, unless there is something in the
lant^uage of the law requiring a different construction.
But there is nothing in the law to justify the distinction
claimed in this respect on behalf of the patentee. Its lan-
guage is plain and unambiguous. It does not even grant a
new patent, as in the case of Oliver Evans. It merely ex-
tends the time of the monopoly to which the patentee was
entitled under the general law of 1836. It gives no new
rights or privileges, to be superadded to those he then enjoyed,
except as to the time they should endure. The patent, such
as it then was, is continued for seven years longer than the pe-
riod before limited. And this is the whole and only provision
continued in this special act. In order, therefore, to deter-
mine the rights of the patentee during the extended term, we
are necessarily referred to the general law, and compelled to
inquire what they were before this special act operated upon
them and continued them. Indeed, the court has been obliged
to recur to the Act of 1836, in every stage of this suit, to guide
it in deciding upon the rights of the parties, and the mode of
proceeding in which they are to be tried. It is necessarily
referred to in order to determine whether the patent under
which the complainant claims, was issued by lawful au-
thority, and in the form prescribed by law: it was necessary to
refer to it in the Circuit Court, in order to determine whether
the patentee was entitled to the patent as the original in-
ventor, that fact being disputed in the Circuit Court ; also,
for the notices to which he was entitled in the trial of that
question ; and for the forum in which he was authorized to
sue for an infringement of his rights. And the right of the
appellant to bring the case before the court for adjudication,
is derived altogether from the provisions of the general law.
For there is no evidence in the record to show that the ma-
chines are worth two thousand dollars, and no appeal, there-
fore, would lie from the decision of the Circuit Court, but for
the special provision in relation to patent cases in the Act of
1836. And while it is "admitted that this special act is so
I
EXTENSION OP PATENTS. 165
ingrafted on the general law, as to entitle the patentee to all
the rights and privileges which that law has provided, for the
benefit and protection of inventors, it can hardly be main-
tained that the one in favor of the purchaser of a machine is
by construction to be excepted from it, when there are no
words in the special act to indicate that such was the inten-
tion of Congress.
This construction is confirmed by the various special acts
which have been pas.«ed from time to time, in favor of parti-
cular inventors, granting them new patents after the first had
expired, or extending the time for which they were originally
granted. Many of these acts have been referred to in the
argument, some of which contain express provisions, protect-
ing the rights of the purchaser under the first term, and others
contain no provision on the subject, and merely grant a new
patent, or, as in the case before the Court, extend the duration
of the old one. And in several instances, special laws in
favor of different inventors have been passed within a short
time of each other, in one of which the rights of the previous
purchaser are expressly reserved, and in the other there is no
provision on the subject. And the Act of March 3, 1845,
authorizing the patent of William Gale, for an improvement
in the manufacture of silver spoons and forks, to be extended,
was passed only a few days after the act in favor of Wood-
worth, and Gale's patent is subjected in express terms to the
conditions and restrictions in the Act of 1836, and conse-
quently protects previous purchasers from a new demand.
It has been contended, on behalf of the appellant, that the
insertion of these restrictions in one special law, and the
omission of them in another, shows that, in the latter. Con-
gress did not intend to exempt the purchaser from the neces-
sity of obtaining a new license from the patentee. And that
Congress might well suppose that one inventor had stronger
claims upon the public than another, and might, on that
account, give him larger privileges on the renewal.
But this argument only looks to one side of the question,
that is, to the interest and claims of the inventor. There is
166 LAW OF PATENTS.
another and numerous class of persons, who have purchased
patented articles and paid for them the fall price which the
patentee demanded, and we are bound to suppose that their
interests and their rights would not be overlooked or disre-
garded by Congress. And still less, that any distinction
would be drawn between those who purchased one descrip-
tion of patented machines and those who purchased another.
For example, the act granting a new patent to Blanchard, in
1834, for cutting or turning irregular forms, saves the rights
of those who had bought under the original patent. And we
ought not to presume, without plain words to require it, that
while Congress acknowledged the justice of such claims in
the case of Blanchard, they intended to disregard them in the
case of Woodworth. Nor can it be said that the policy of
Congress has changed in this respect after 1834, when Blan-
chard's patent was renewed. For, as we have already said,
the same protection is given to purchasers in the special law,
authorizing the renewal of Gale's patent, which was passed
a few days after the law of which we are speaking.
The fair inference from all these special laws is this, that
Congress has constantly recognized the rights of those who
purchase for use a patented implement or machine ; that in
these various special laws the patentee and purchasers of dif-
ferent inventions were intended to be placed on the same
ground; and that the relative rights of both parties under the
extension, by special Act of Congress, were intended to be the
same as they were when the extension was granted under the
general law of 1836. It would seem that, in some cases, the
attention of the legislature was more particularly called to
the subject, and the rights of the purchaser recognized and
cautiously guarded. And when the provision is omitted, the
just presumption is, that Congress legislated on the principle
decided by this Court in Evans v. Eaton, and regarded the
special law as ingrafted on the general one, and subject to all
of its restrictions and provisions, except only as to the time
the patent should endure. Time is the only thing upon
which they legislate. And any other construction would
EXTENSION OF PATENTS. 167
make the legislation of Congress, on these various special
laws, inconsistent with itself, and impute to it the intention
of dealing out a different measure of justice to purchasers
of different kinds of implements and machines ; protecting
some of them, and disregarding the equal and just claims of
others.
And if such could be the interpretation of this law, the
power of Congress to pass it would be open to serious objec-
tions. For it can hardly be maintained that Congress could
lawfully deprive a citizen of the use of his property after he
had purchased the absolute and unlimited right from the
inventor, and when that property was no longer held under
the protection and control of the General Government, but
under the protection of the State, and on that account sub-
ject to State taxation.
The 5th amendment to the Constitution of the United
States, declares that no person shall be deprived of life,
liberty, or property, without due process of law.
The right to construct and use these planing machines had
been purchased and paid for without any limitation as to the
time for which they were to be used. They were the pro-
perty of the respondents. Their only value consists in their
use. And a special Act of Congress, passed afterwards, de-
priving the appellees of the right to use them, certainly could
not be regarded as due process of law.
Congress undoubtedly have power to promote the progress
of science and useful arts, by securing for limited times, to
authors and inventors, the exclusive right to their respective
writings and discoveries.
But it does not follow that Congress may, from time to
time, as often as they think proper, authorize an inventor to
recall rights which he had granted to others, or reinvest in
him rights of property which he had before conveyed for a
valuable and fair consideration.
But we forbear to pursue this inquiry, because we are of
opinion that this special Act of Congress does not, and was
not intended to interfere with rights of property before ac-
X68 I'AW OF PATENTS.
quired ; but that it leaves them as they stood during the
extension under the general law. And in this view of the
subject, the appellant was not entitled to the injunction he
sought to obtain, and the Circuit Court were right in dis-
missing the bill." 1
1 Mr. Justice McLean and Mr. Justice Nelson dissented.
Mr. Justice McLean, —
" Woodworth's patent bears date the 27tli of December, 1828, and runs
for fourteen years. On the 29th of July, 1830, the patentees conveyed to
Isaac Collins and Barzillai C. Smith the right to construct, use and vend to
others, the planing machine invented, within several States, including Penn-
sylvania, except the city of Philadelphia. On the 19th of May, 1833, Col-
lins and Smith transferred to James Barret the right to construct and use,
during the residue of the aforesaid term of fourteen years, fifty planing
machbes, within Pittsburg and Alleghany county, for which he agreed to
pay four thousand dollars. Barnet agreed not to construct or run more than
fifty machines during the term aforesaid, and Collins and Smith bound them-
selves not to license during the term, or allow others to do so, in the limits of
Pittsburg and Alleghany county.
On the 27th of December, 1842, the patent expired, but it was renewed
and extended for seven years, under the Act of 1836. This extension ex-
pired in 1849 ; but Congress, on the 26th of February, 1845, passed an Act
which provided that ' the said letters-patent be, and the same is hereby,
extended for the term of seven years, from and after the twenty-seventh
day of December, 1849.'
The patentee, by deed dated the 14th of March, 1845, and also by a fur-
ther deed dated the 9th of July, 1845, conveyed to James E. Wilson all his
interest as administrator in the letters-patent under the extension by the Act
of Congress. And Wilson, on the 4th of June, 1847, for the consideration
of twenty-five thousand dollars, gave to Bloomer, the plaintiff, a license to
construct and use, and vend to others to construct and use, during the two
extensions, " all that part of Pennsylvania lying west of the Alleghany Moun-
tains except Alleghany county, for the first extension, which expires on the
27th day of December, 1849, and the States of Virginia, Maryland, Ken-
tucky and Missouri, excepting certain parts of each State.'
The defendants continued to run their machines during the residue of the
fourteen years for which the patent was granted, and during the first exten-
sion ; and the complainant filed his bill to enjoin the defendants from run-
ning their machines under the second extension, by the Act of Congress.
The contract of the defendants was entered into the 19th of May, 1831,
and under it Barnet had a right ' to construct and use, during the residue of
EXTENSION OF PATENTS. 169
§ 119. It was also held, in the case of Wilson v. Rousseau,
4 Howard, that a covenant by the patentee, made prior to
the aforesaid term of fourteen years, fifty planing machines,' &c. The patent
expired on the 27th of December, in 1842. The contract of defendants was
made the 19th of May, 1832, leaving about nine years and six months for
the patent to run, and this was the time limited by the contract, and for
which the consideration of four thousand dollars was paid. This was not left
to construction from the life of the patent, but the contract expressly de-
clared the right was purchased ' for the residue of the aforesaid term of
fourteen years.'
This term was enjoyed by the defendants, and under the decision of this
court, in the case of Wilson v. Rousseau et al., (4 Howard, 646,) the seven
years' extension under the Act of 1836, was also enjoyed by the defendants.
This construction of the Act of 1836, in my judgment, was not authorized,
and was not within the intention of the law, as was expressed at the time.
That extension having expired, another extension is claimed under the Act
of Congress. This claim is set up to an injunction bill, filed by the com-
plainant, who is the assignee of the patent for a part of Pennsylvania and
other States. And by the decision of four of my brethren, just delivered,
the defendants are to enjoy this extension, making fourteen years beyond
their control. This would seem to imply, that, under the Act of 1836, and
under the Act of 1845, the assignees were the favored objects of Congress.
But this is not the case. The patentee who made the invention, and through
whose ingenuity, labor, and expense, a great benefit has been conferred on
the public, in justice, is entitled to remuneration, and that only was the
ground of extension, whether under the law of 1836, or the special Act of
1845.
This, as well as the former decision, was influenced by the consideration
that the owners of the machines are, in equity, entitled to run them so Ion"'
as the exclusive right of the patent shall be continued. It is said that the
machines are property, and that no Act of Congress should deprive the
owners of the use of their property. But in this view, the property of the
patentee seems not to be taken into the account. He is the meritorious
claimant for protection. The assignee for a specific time, rests upon his con-
tract. He has conferred no benefit on society. His investment was made
with an exclusive reference to his own advantage. He has no more claims
upon the public sympathy than he who rents a mill, a farm, or engages in a
business open to all who expect a profit by it.
But the hardship is supposed to exist in the fact that, to use the right, a
planing machine must be constructed at an expense of some four or five hun-
dred dollars, and this will be lost to the occupier, if, by an extension he shall
22
170 LAW OF PATENTS.
the law authorizing extensions, that the covenantee should
have the benefit of any improvement in the machinery, or
not be permitted to run his machine. The answer is, when he entered into
the contract he knew, or is presumed to have known, that the patent might
be extended under the law of 1836, or by special act, and if he desired an
interest under the renewed patent, he should have provided for it in his con-
tract. Having failed to do this, it -would seem to be unjust that, under a
contract to run the machine less than ten years, he should be entitled to run
it sixteen years. The consideration paid was limited to the term specified in
the contract. But, it is answered, that the assignee expected to run his
machine after the termination of the contract on which the exclusive right
would end and become vested in the public.
Let us examine this plea, and it will be found that a great fallacy prevails
on this subject. A right that is common, is no more valuable to one person
than another, as all may use it. The injury, then, consists, so far as the
license is concerned, in the reduction of the value of his machine, by the
extension of the exclusive right in the patentee, to the exclusion of the
assignee. It is true this deprives him of the monopoly which his contract
secured to him. But he has enjoyed this to the extent of his contract, and
for which he has paid the stipulated consideration. Now his only equitable
plea to run his machine during the renewed patent, arises alone from the
supposed difierence in the value of his machine, under the renewal, without
a license, and where the right becomes vested in the public.
K there had been no renewal, the licensee might run his machine, and any
other person might run one. It is a fact known to every observing indi-
vidual, when a new business is set up, as a planing machine, supposed to be
very profitable generally, a competition is excited, which reduces the profit
below a reasonable compensation for the labor and expense of the business.
If the monopoly continued, as enjoyed under the contract, the consideration
paid for the monopoly would be added to the profits, which would make
them large. But when the monopoly ceases, the profits, if not destroyed, are
reduced by competition, at least as low, if not below the ordinary profit of
capital employed in other investments.
If the business of the county or city required the number of planing
machines in operation, the licensee could sell his machine at a reasonable
reduction for the time it had run. The machines of the defendant had
run, probably, from twelve to fifteen years. A considerable reduction would
be expected by the purchaser, as a machine could not be expected to last
more than twenty years. But suppose it can be used thirty, then one half of
the value must be deducted for the wear of the machine fifteen years, which
would reduce it to some two hundred and fifty or three hundred dollars.
But suppose the exclusive right should be continued in the patentee, by an
EXTENSION OF PATENTS. 171
alteration, or renewal of the patent, did not include the exten-
sion by an administrator, under the Act of 1836 ; but that it
extension of it seven years. Then, if the machines were not more nume-
rous than the public required, they would be wanted by their owners, or by
others disposed to engage in the business. And I hazard nothing in saying,
that, after deducting the compensation from the profits, paid for the exclusive
right, they would be larger than could be hoped for, where the right was
common. Under such circumstances, I can entertain no doubt that a machine
would sell for more money, under the extension of the patent, than where
the right goes to the public.
The idea that, to refuse the use of a machine under the extension of a
patent, is an unjust interference with property, I think is unfounded. There
is no interference with the property in the machine. The owner may sell it
to any one who has a license to use it. It is not the property in the machine
that is complained of, but because the right to run it longer than the contract
provided for is not given. The licensee has used the franchise, as long as he
purchased and paid for it ; and can he in justice claim more than his con-
tract ? The extension of the right to use, while the extended patent con-
tinues, does a wrong to the patentee, by taking his property without compen-
sation, and giving it to the licensee. The franchise is property, and it can no
more be transferred to another, without compensation or contract, than any
other property. It would seem that this description of property is not
governed by contract. That a contract to use the franchise ten years, does
not mean what is expressed, but may mean a right for twenty years, or any
other term to which the patent may be extended.
Every man who has sense enough to maike a contract, takes into his esti-
mate the contingency of a loss, to some extent, in going out of the business.
He fixes his own time for the contract, and if he wishes to provide for the
contingency arising from the renewal of a patent, he can embrace it in his
contract for a stipulated compensation.
It may be true that, unless the contrary appear, when the patentee sells a
planing machine, a right to use it may be applied. But the right to con-
struct and the right to use are distinct. Some purchase of the patentee the
right to construct the machine, others to use it. This planing machine can-
not be compared to a plough, or any other article which may be considered
the product of the patent. The machine is the instrument through which
the plank is planed. The plank is the product, and may be sold in the mar-
ket as other property. But the planing machine cannot be used, without a
license. The law protects the franchise, by prohibiting the use of the ma-
chine without a license. AVhen Barnet purchased the franchise for the fifty
machines, he did not buy the machines for a term as long as the machines
172 LAW OF PATENTS.
must be construed to include only renewals obtained upon the
surrender of a patent on account of a defective specification.
could run, but for nine years and six months. The contract, neither expressly
nor impliedly, extended beyond that term.
In this view, I think that I am not mistaken, and if I am not, the licensee
is not injured a dollar by the termination of his right to run his machine, as
fixed in his contract. But, on -whom is the injury inflicted by extending the
contract of the licensee with the patentee, and that without compensation?
In the present case, the patentee has been injured, by the use of fifty
machines, at least four thousand dollars, the amount agreed to be paid for
the right to run them less than ten years. And must not the property of the
patentee be taken into the account, as well as the imagined rights of the
licensee ?
The patentee is justly considered a public benefactor. He has conferred a
great benefit upon the world, and he is entitled, under our laws, to at least a
compensation for his expense, ingenuity and labor.
That the patentee is the only one whose interests are regarded, as the
ground of extending the patent in the Act of 1836, is clear. Now, suppose
the patentee has assigned the whole of the patent, without receiving such a
compensation as the law authorizes ; there can be no doubt he is entitled, on
that ground, to a renewal of the patent ; and yet, under the decision now
given, his assignees would receive aU the benefit of the renewal. Should not
this fact cause doubts whether the rule of construction of the statute be a
sound one, which defeats its avowed object ? If this be the consequence of
the assignment of the entire interest by the patentee, any partial assignment
must produce the same result, though to a more limited extent. A prmciple
which will not bear this test is not sound.
The Act of 1845, extending this patent, annexed no conditions. The ex-
clusive right was extended to the administrator of "Woodworth for seven
years, from the 27th of December, 1849. But the decision now given, in
effect, declares this exclusive right is not given. Indeed, the object of Con-
gress must be defeated if the machines, in operation at the time of the pas-
sage of the act, are to be continued without compensation. It is presumed
there are few places where planing machines were not constructed before
1849, the time the renewal took efiect, if the public required them. On this
supposition, the extension of the patent can be of little or no benefit to the
heirs of the patentee. Congress could have granted the act only upon the
ground to remunerate the heirs of the inventor.
There seems to be a great mistake as to the profits of this patent. It was
a valuable patent, but, as in all other cases, its value excited the rapacity of
men who seek to enrich themselves by taking the property of others. The
records of the courts show that piracies were committed on this jDatent in
EXTENSION OF PATENTS. 173
§ 119 a. The effect of a surrender and reissue on an ex-
tended patent has been considered in some of the other cases
every part of tlie country ; and that to sustain it, much expenditure and
labor have been required. It is stated that the sum of near two hundred
thousand dollars has been thus expended to estabUsh this patent. Congress
have extended many patents; in some instances conditions have been
imposed ; in others, the franchise has been extended unconditionally. Now,
where the patent is extended by Act of Congress, without conditions, I am
unable to perceive how the court can impose conditions. Such an act
would be legislation, and not construction.
By the Act of the 15th February, 1847, the patent of Thomas Blanchard,
for cutting irregular forms out of wood, brass, or iron, was extended for
fourteen years from the 20th of January, 1848 : ' Provided that such ex-
tension shall enure to the use and benefit of the said Thomas Blanchard, his
executors and administrators and to no other persons whomsoever, except
that a hona fide assignee of the invention, by virtue of an assignment from
the patentee heretofore made, shall have the benefit of this act, upon just,
reasonable and equitable terms, according to his interest therein. And if the
said Thomas Blanchard, his executors or administrators, cannot agree with
such assignee, the terms shall be ascertained and determined by the Circuit
Court of the United States for the district in which such assignee resides, to
be decreed upon a bill to be filed by such assignee for such purpose. And
provided further, that no assignee shall have the benefit of this act unless he
shall, within ninety days from its passage, agree with the said Thomas Blan-
chard as to the consideration upon which he is to have it, or file his bill,' &c.
Every one must perceive the justice and propriety of this act ; under the
decision now given, the assignee of Blanchard would have had the benefit of
the extension without paying for it. This act, extending Blanchard's patent,
was passed two years after the decision of this court in Wilson v. Rousseau,
which, under the Act of 1836, gave the benefit of the extension to the assignee.
This must have been known to Congress, and yet they deemed a special pro-
vision in behalf of the assignee necessary. This act, and several others of a
similar character, cannot fail to convince every one that Congress did not sup-
pose that the courts have power to annex a condition to a legislative grant.*
In the case of Evans v. Jordan and Morehead, (9 Cranch, 199,) this Court
held, that the Act of January, 1808, for the relief of Oliver Evans, does not
authorize those who erected their machinery between the expiration of their
old patents and the issuing of the new one, to use It after the issuing of the
latter.
The above act extended the patent fourteen years, ' provided that no
person who may have heretofore paid the said Oliver Evans for license to
* See Blanchard's Gunstock Factory v. AVarner, 1 Blatchford's R. 258, 275.
174 LAW OF PATENTS.
arising upon the patent for Woodworth's planing-machine. It
has been held, that after an extension of a patent under the
use the said improvements, shall be obliged to renew said license or be sub-
ject to damages for not renewing the same ; and provided also, that no per-
son who shall have used the said improvements, or have erected the same for
use, before the issuing of the said patent, shall be liable to damages therefor.'
This was a much stronger case for equitable consideration than the one
before us. Evans's patent had expired. His improvements were free to
the public, and they were adopted by the defendants before he made appli-
cation to Congress for a renewal of his patent. I will cite the reasoning of
the Supreme Court on that case. ' The language,' they say, ' of this
last proviso is so precise, and so entirely free from all ambiguity, that It is
difficult for any course of reasoning to shed light upon its meaning. It pro-
tects against any claim for damages which Evans might make, those who
have used his improvements, or who may have erected them for use, prior to
the issuing of his patent under this law. The protection is limited to acts
done prior to another act thereafter to be performed, to wit, the issuing of
the patent. To extend it, by construction, to acts which might be done sub-
sequent to the issuing of the patent, would be to make, not to interpret the
law.' ' The injustice of denying to the defendants the use of machinery
which they had erected after the expiration of Evans's first patent, and prior
to the passage of this law, has been strongly urged as a reason why the mode
of this proviso should be so construed as to have a prospective operation.
But it should be recollected that the right of the plaintiiF to recover damages
for using his improvement after the issuing of his patent, under this law,
although it had been erected prior thereto, arises not under this law, but
under the general law of the 21st of February, 1793. The provisos in this
law profess to protect, against the operation of the general law, three
classes of persons — those who had paid Evans for a license prior to the
passage of the law ; those who may have used his improvements ; and those
who may have erected them for use before the issuing of the patent.'
And the court say, ' The legislature might have proceeded still further, by
providing a shield for persons standing in the situation of these defendants.
It is believed that the reasonableness of such a provision could have been
questioned by no one. But the legislature have not thought proper to
extend the protection of these provisos beyond the Issuing of the patent
under that law; and this Court would transgress the limits of the judicial
power by an attempt to supply, by construction, this supposed omission of
the legislature. The argument founded upon the hardship of this and
similar cases, would be entitled to great weight if the words of this proviso
were obscure and open to constniction. But considerations of this nature
can never sanction a construction at variance with the manifest meaning of
the legislature, expressed in plain and an unambiguous language.'
EXTENSION OF PATENTS. 175
18th section of the Act of 1836, the original patent becomes
virtually a patent for the term of 21 years ; and that on a
The above views do not conflict vnth. the opinion of the Court in Evans v.
Eaton, 3 Wheat, 454. In that case the Court say : ' Some doubts have been
entertained respecting the jurisdiction of the courts of the United States, as
both the plaintiff and defendants are citizens of the same State. The fifth
section of the Act to promote the progress of useful arts, which gives to every
patentee a right to sue in a Circuit Court of the United States, in case his
rights be violated, is repealed by the third section of the Act of 1800, which
gives the action in the Circuit Court of the United States where a patent is
granted, ' pursuant ' to that act, or to the Act for the promotion of useful
arts. This patent, it has been said, is granted, not in pursuance of either
of those acts, but In pursuance of the Act ' for the relief of Oliver Evans.'
But this Court is of opinion, that the Act for the relief of Oliver Evans, is
ingrafted on the general Act for the promotion of useful arts, and that the
patent is Issued In pursuance of both. The jurisdiction of the Court is there-
fore sustained.'
There can be no question that the special law extending the grant, as to
its validity, is subject to the general Patent Law. The right was intended to
be exclusive, if it be established that Evans was the original Inventor of the
improvements claimed, and such improvements were stated with the neces-
sary precision. And also that it came under the class of cases on which
suit could be brought in the courts of the United States, without regard to
the citizenship of the parties. But it could not have been intended to apply
to any contract subsequent to the patent, and it could only be held to
embrace those general provisions of the Patent Law which relate to the
validity of the patent. Under the Act of Congress, a specification was
necessarily filed, and it seems to be the practice to Issue a patent under the
act. This, it appears to me, is unnecessary, as the grant in the act is sufli-
cient. But the schedule is necessary to show the nature and extent of the
claim, and these must be sustained on those principles which apply to patents
generally.
To give any other construction to the above remarks of the Court, would
be In direct contradiction to the language used, and the principle decided,
in the case above cited from Cranch. In fact, the remark that the relief of
Evans was Ingrafted on the general law, was made In reference to the juris-
diction of the Court, and cannot be extended beyond that and other ques-
tions, in relation to the validity of the patent.
This argument of the Court, in Evans v. Jordan, applies with all its force
and authority to the case before us ; and I need only say it was the language
of Marshall, of Story, of Washington, and of the other judges of the court,
except Judge Todd, who appears to have been absent. I can add nothing to
176 LAW OP PATENTS.
surrender and reissue, under the 13th section of the same
act, after such an extension, " the residue of the period then
unexpired, for which the original patent was granted," speci-
fied in that section, is the residue of the 21 years. The pa-
tent for 21 years is, in such case, to be regarded as " the ori-
ginal patent" within the meaning of that section. So that
where the patent originally granted to Woodworth, on the
27th December, 1828, was extended by Act of Congress of
February 26th, 1845, for a further period of seven years, after
one extension of seven years had been obtained under the
general law, it became a patent for 28 years from its ori-
ginal date ; and when a reissue was granted " for the term
of 28 years from the 27th day of December, 1828," such re-
issue was not invalid, but was in legal effect a patent for the
residue only of the 28 years unexpired at the time of the re-
issue.i
the weiglit of the argument ; but I -will proceed to name the judges of this
Court -who have given opinions opposed to the decision of this case by four of
my brethren.
Mr. Justice Wayne, being sick, did not sit in the case. In "Wilson v.
Rousseau, he held that, under the Act of 1836, the licensee had no right to
run his machine under the extended patent.
Mr. Justice Curtis having, as counsel, given an opinion opposed to the
right of the defendants, did not sit in the case. Mr. Justice Thompson and
Mr. Justice Story had both given opinions against the assignee, unless under
a special assignment. This was the opinion of Mr. Justice Woodbury, as
expressed in the case of Wilson v. Rousseau. Mr. Justice McBanley gave
an opinion against the right of the assignee under the Act of 1845, extend-
ing Woodworth's patent. The same decision has been frequently given, by
the justices of this bench, in the second and seventh circuits.
Sustained by the authority of seven justices of this Court, and by an argu-
ment of the Supreme Court, above cited, which, I think, is unanswerable, I
shall deem it to be my duty to bring the same question now decided, when it
shall arise in my circuit, for the consideration and decision of a full bench."
1 Gibson v. Harris, 1 Blatchford's R. 168. In this case Mr. Justice Nel-
son said : " An objection has been taken on this motion to the validity of the
new patent, issued on the 8th of July, 1845, on the surrender of the original
one, on the ground that the Commissioner of Patents had no authority to
issue it for the term of twenty-eight years.
EXTENSION OF PATENTS. 177
The extension of a patent in pursuance of the 18th section of the Act of
July 4th, 1836, is made by indorsing a certificate thereon to that effect;
and the Act of February 26th, 1845, granting the last extension, has directed
substantially the same thing to be done. The 18th section provides that after
the indorsement of the certificate on the original patent, " the said patent
shall have the same effect in law, as though it had been originally granted
for the term of twenty-one years." The Act of Congress providing for the
additional extension of seven years in this case, is not so explicit in its lan-
guage, but the legal operation and effect of the grant come to the same thing.
The 13th section of the Act of July 4th, 1836, providing for the surrender
of a patent and its reissue with an amended specification, authorizes the
Commissioner to issue the new patent " for the residue of the period then
unexpired for which the original patent was granted." The construction of
this part of the 13th section was involved in the tenth question certified to
the Supreme Court of the United States in the case of Wilson v. Rousseau,
(4 How. 646.) It was there contended, upon the peculiar phraseology of
the section, that the power of the Commissioner of Patents to receive a sur-
render and issue a new patent, was limited to the term of the original patent,
the fourteen years, and that the surrender and reissue after the expiration
of the original patent, were acts wholly unauthorized and void. But the
Court held otherwise. After an extension under the 18th section, the ori-
ginal patent becomes, as has been shown, virtually a patent for the term of
twenty-one years, and then, on a surrender and reissue, the residue of the
pei-iod unexpired of the original patent is the residue of the term. The pa-
tent for twenty-one years is, in such case, to be regarded as " the original
patent, within the meaning of the 13th section.
Now, if the extension by the Act of Congress of February 26th, 1845, is
as effectual and operative as the one granted under the 18th section of the
Act of 1836, (and it is difficult to see why it should not be,) then the patent,
when so extended, became a patent for the period of twenty-eight years,
instead of twenty-one years ; and a surrender and reissue after such exten-
sion, stand on the same footing as if they were made in the case of a patent
for twenty-one years. There can be no difference in principle or good
sense/
The patent, in this case, has been issued in form, for the whole term of
twenty-eight years, but as it dates and takes effect from the 27th of Decem-
ber, 1828, (the time of the granting of the original patent for the fourteen
years,) it is, in legal effect, a patent for the residue only of the period un-
expired at the time it was issued."
23
PAET II.
PROCEEDINGS TO OBTAIN, RENEW,
OR
EXTEND A PATENT.
PAET II.
PROCEEDINGS TO OBTAIN, RENEW, OR EXTEND A
PATENT.
CHAPTER I.
THE SPECIFICATION.
§ 120. Having ascertained the kinds of subjects for which
letters-patent may be obtained, and the parties entitled to take,
renew, or extend them, we have now to state the proceedings
requisite to the issuing, renewal, and extensio*] of patents,
and the principles which govern their construction. As the
first step to be taken, in making application for a patent, is
to prepare a written description of the invention or discovery,
the requisites of this instrument, called the specification, and
the rules for its construction, will first engage our attention.
§ 121. The Act of Congress, of July 4th, 1836, c. 357, § 6,
contains the following enactment.
"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 unne-
cessary prolixity, as to enable any person skilled in the art or
science to which it appertains, 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 princi-
182 LAW OF PATENTS.
pie 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 ; and shall particularly spe-
cify and point out the part, improvement, or combination, which
he claims as his own invention or discovery. He shall, further-
more, accompany the whole with a drawing or drawings, and
written references, where the nature of the case admits of draw-
ing, or with specimens of ingredients, and of the composition
of matter, sutTicientin quantity for the purpose of experiment,
where the invention or discovery is of a composition of mat-
ter ; which descriptions and drawings, signed by the inventor
and attested by two witnesses, shall be filed in the Patent
Office ; and he shall, moreovei", furnish a model of his inven-
tion, in all cases w^hich admit of a representation by model, of
a convenient size to exhibit advantageously its several parts." ^
1 The Act of 1793, c. 55, § 3, sets fortli the requisites of a specification,
as follows ; " And be it further enacted, that every inventor, before he can
receive a patent-, shall swear or affirm, that lie does verily believe, that he is
the true inventor or discoverer of the art, machine, or improvement, fur tvhich
he solicits a patent ; which oath or affirmation may be made before any
person authorized to administer oaths, and shall deliver a written descrip-
tion of his invention, and of the 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 person skilled in the art
or science, of which it is a bi'anch, or with which it is most nearly 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 ; 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, s,ufficient in quantity for the purpose of experiment, where the in-
vention 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 ques-
tion. And such inventor shall, moreover, deliver a model of his machine,
provided, the secretary shall deem such model to be necessary."
THE SPECIFICATION. 183
§ 122. The specification, under our law, occupies a relation
to the patent somewhat different from the rule in England.
In England, the specification does not form part of the
patent, so as to control its construction ; but the rights of
the inventor are made to depend on the description of his
invention, inserted in the title of the patent, and cannot be
helped by the specification, the object of which is to describe
the mode of constructing, using, or compounding the inven-
tion mentioned in the patent.^ But in the United States,
the specification is drawn up and filed before the patent is
granted, and is referred to in the patent itself, a copy being
annexed. It is, therefore, the settled rule in this country,
that the patent and the specification are to be construed to-
gether, in order to ascertain the subject-matter of the invention,
and that the specification may control the generality of the
terms of the patent, of which it forms a part.^ In like man-
ner, drawings annexed to a specification, in compliance with
the statute, are held to form a part of it, and are to be
regarded in the construction of the whole instrument.^
1 Phillips on Patents, p. 223 ; Godson on Patents, p. 108, 117; Hogg v.
Emerson, 6 Howard, 437, 479.
2 Whittemore v. Cutter, 1 Gallis. 429, 437 ; Barrett v. Hall, 1 Mas. 447,
477; Pitts v. Whitman, 2 Story's R. 609, 621. So, too, the specification
may enlarge the recitals of the invention in the letters. Hogg v. Emerson,
ut supra.
3 Earle v. Sawyer, 4 Mas. 9. It seems, too, that drawings not referred
to in the specification may be used to explain it. Washburn v. Gould,
3 Story's R. 122, 133; Brooks v. Bicknell, 3 McLean's R. 250, 261. But
they must be drawings accompanying the specification, otherwise they do
not form a part of it. In Hogg v. Emerson, 11 Howard, 587, 60G, where
the patent had been burned in the fire at the Patent Office, and afterwards
recorded anew and the drawings restored, and the drawings exhibited a
feature not described in the specification, it was held that the drawings
were to be looked to in connection with the specification. Mr. Justice
Woodbury, delivering the opinion of the Court, said : — " The next point
before decided was, that the description was sufficiently clear and certain.
Under the instructions of the Court, the jury found that it was clear enough
to be understood by ordinary mechanics, and that machines and wheels
184 LAW OF PATENTS.
Where the term patent, therefore, is used in the following
discussion of the rules of construction, it will be understood
to include the specification and drawings annexed to it.^
§ 123. In construing patents, it is the province of the Court
to determine what it is that is intended to be patented, and
whether the patent is valid in point of law. Whether the
invention itself be specifically described with reasonable cer-
tainty, is a question of law upon the construction of the
terms of the patent ; so that it is for the court to determine
whether the invention is so vague and incomprehensible as,
in point of law, not to be patentable ; whether it is a claim
for an improved machine, for a combination, or a single
invention ; and, in short, to determine what the subject-
matter is, upon the whole face of the specification and the
could readily be made from it, considering the specification as a whole, and
adverting to the drawings on file. Tliis is all which the law requires in
respect to clearness, and it does not appear necessary to add any thing to
what is cited and stated in the former opinion, in support of the instructions
given below on this point.
The Court did right, too, in holding to the propriety of looking to the
whole specification, and also to the drawings, for explanation of any thing
obscure. The drawings, then, being proper to be referred to in illustration
of the specification, they could be restored when burnt, and, if appearing
in some respects erroneous, they could be corrected. That this last was
done, and done well, was distinctly shown by Dr. Jones, a skilful draughts-
man and expert. It would be unreasonable to prevent or refuse the cor-
rection of such errors, so as not to mislead or cause contradiction ; because,
after all, it is the specification which governs, and the drawings merely illus-
trate. It is true that it would not be proper to leave the drawings so long
not restored nor corrected, as to evince neglect or a design to mislead the
public ; and the jury were allowed to decide what was a reasonable time
for this purpose, under the circumstances of the case, and the duties imposed
by law on the patentees."
1 The 5th section of the Act of 1836 declares, that " every patent shall
contain a short description, or title, of the invention or discovery, correctly
indicating its nature and design," and " referring to the specification for the
particulars thereof, a copy of which shall be annexed to the patent, specify-
ing what the patentee claims as his invention or discovery." The Supreme
THE SPECIFICATION. 185
accompanying drawings.^ It is, therefore, the duty of the
jury to take the construction of the patent from the court,
absolutely, where there are no terms of art made use of
which require to be explained by evidence, and no surround-
ing circumstances to be ascertained as matter of fact, before
a construction can be put upon the instrument. But where
terms of art requiring explanation are made use of, or where
the surrounding circumstances affect the meaning of the spe-
fication, these terms and circumstances are necessarily refer-
red to the jury, who must take the construction from the
court, conditionally, and determine it according as they find
the facts thus put to them.^
§ 124. It is, on the other hand, the province of the jury to
decide, on the evidence of experts, whether the invention is
described in such full, clear, and exact terms, as to enable a
skilful person to put it in practice from the specification
Court of the United States, in a very recent case, have held, that wherever
this form of letters, with a specification annexed and referred to, has been
adopted, either before or since the Act of 1836, the specification Is to be
considered as part of the letters in construing them. Hogg v. Emerson,
6 Howard, 437, 482. This case having a second time come before the
court, (11 Howard, 587, 604,) this point was reafiirmed.
1 Davis V. Palmer, 2 Brock. 298; Lowell v. Lewis, 1 Mas. 189 ; Carver
V. Braintree Manf Co. 2 Story, 434, 437, 441 ; Washburn v, Gould,
3 Story, 122, 130, 137, 138, 140, 141 ; DavoU v. Brown. 1 Woodbury & Minot,
53, 56.
2 Washburn v. Gould, tit supra. In Neilson v. Harford, Webs. Pat. Cas.
370, in the Exchequer, Parke, B., delivering the judgment of the court,
said : — " Then we come to the question Itself, which depends on the proper
construction to be put on the specification itself. It was contended, that of
this construction the jury were to judge. We are clearly of a different
opinion. The construction of all written Instruments belongs to the court
alone, whose duty It is to construe all written Instruments, as soon as the
true meaning of the words in which they are couched, and the surrounding
circumstances. If any, have been ascertained by the jury ; and It Is the duty
of the jury to take the construction from the court, either absolutely. If
there be no words to be construed as words of art, or phrases used in com-
24
186 LAW OF PATEl^TS.
itself.i As specifications 'are drawn by persons more conver-
sant with the subject than juries, who are selected indiscri-
minately from the public, and as they are addressed to com-
petent workmen, familiar with the science or branch of
industry to which the subject belongs, the evidence of those
persons must be resorted to who are able to tell the jury that
they see enough on the face of the specification to enable
them to make the article, or reproduce the subject of the
patent without difficulty .^
§ 125. The rule of our law, that the specification may con-
trol the generality of the terms of the patent, must be subject
to this qualification. If there is a clear repugnancy between
the description of the invention as given in the specification,
and the invention stated in the letters-patent, the patent will
be void ; for if the letters are issued for an invention that is
not described in the specification, the statute is not "complied
with. The rule which allows the letters-patent to be con-
trolled by the specification, cannot extend to a case where
the terms of the former are inconsistent with those of the
latter.^
merce, and the surrounding circumstances to be ascertained, or condition-
ally, "where those words or circumstances are necessarily referred to them.
Unless this were so, there would be no certainty in the law ; for a miscon-
struction by the court is the proper subject, by means of a bill of exceptions,
of redress in a Court of Error, but a misconstruction by the jury cannot be
set right at all effectually. Then, taking the construction of this specifica-
tion upon ourselves, as we are bound to do, it becomes necessary to examine
what the nature of the invention is which the plaintiff has disclosed by this
instrument."
1 Davis V. Pahner, 2 Brock. 298 ; Lowell v. Lewis, 1 Mas. 182, 190 ; Car-
ver V. Braintree Manf. Co. 2 Story's R. 432, 437, 441 ; Washburn v. Gould,
3 Story's R. 122, 138; DavoU v. Brown, 1 Woodbury & Minot, 53, 57;
Walton V. Potter, Webs. Pat. Cas. 585, 595.
2 Walton V. Potter, Webs. Pat. Cas. 585, 595.
3 The case of the King v. Wheeler, 4 B. & Aid. 345, presents an instance
of the invention stated in the patent remaining wholly undescribed by the
specification, which described something else.
THE SPECIFICATION. 187
§ 126. The general rule for the construction of patents in
this country is, that they are to be construed liberally, and
not to be subjected to a rigid interpretation. The nature
and extent of the invention claimed by the patentee is the
thing to be ascertained ; and this is to be arrived at through
the fair sense of the words which he has employed to describe
his invention.!
1 Ames V. Howard, 1 Sumner, 482, 485. Mr. Justice Story said : —
" Patents for inventions are not to be treated as mere monopolies, odious iu
the eyes of the law, and therefore not to be favored ; nor are they to be
construed with the utmost rigor, as striciissimi juris. The Constitution of
the United States, in giving authority to Congress to grant such patents for
a limited period, declares the object to be, to promote the progress of science
and useful arts, an object as truly national and meritorious and well founded
in public policy, as any which can possibly be within the scope of national
protection. Hence it has always been the course of the American Courts,
(and it has latterly become that of the English Courts also,) to construe these
patents fairly and liberally, and not to subject them to any over-nice and
critical refinements. The object is to ascertain what, from the fair sense of
the words of the specification, is the nature and extent of the invention
claimed by the party ; and, when the nature and extent of that claim are
apparent, not to fritter away his rights upon formal or subtle objections of a
purely technical character."
In Blanchard v. Sprague, 3 Sumner, 535, 539, the same learned judge
said : — " Formerly, in England, courts of law were disposed to indulge in a
very close and strict construction of the specifications accompanying patents,
and expressing the nature and extent of the invention. This construction
seems to have been adopted upon the notion that patent-rights were in the
nature of monopolies, and, therefore, were to be narrowly watched, and con-
strued with a rigid adherence to their terms, as being in derogation of the
general rights of the community. At present, a far more liberal and
expanded view of the subject is taken. Patents for inventions are now
treated as a just reward for ingenious men, and as highly beneficial to the
pubUc, not only by holding out suitable encouragements to genius and
talents and enterprise, but as ultimately securing to the whole community
great advantages from the free communication of secrets and processes and
machinery, which may be most important to all the great interests of society,
to agriculture, to commerce, and to manufactures, as well as to the cause of
science and art. In America, this liberal view of the subject has always
been taken ; and, indeed, it is a natural, if not a necessary result, from the
188 LAW OF PATENTS.
§ 127. But, at the same time, it is to be observed, that the
statute prescribes certain requisites for this description of an
invention, which are of long standing ; and the decisions of
the courts, explaining and enforcing these requisites, have
established certain rules of construction, intended to guard
the public against defective or insufficient descriptions, on
the one hand, and to guard inventors, on the other hand,
against the acuteness and ingenuity and captious objections
of rivals and pirates. The foundation of all these rules of
construction is to be found in the object of the specification,
which may be thus stated, in the language of the Supreme
Court of the United States.
§ 128. The specification has two objects : one is, to make
known the manner of constructing the machine (if the in-
vention is of a machine) so as to enable artisans to make and
use it, and thus to give the public the full benefit of the dis-
covery after the expiration of the patent. The other object
of the specification is, to put the public in possession of what
the party claims as his own invention, so as to ascertain if
he claim any thing that is in common use, or is already
known, and to guard against prejudice or injury from the. use
of an invention which the party may otherwise innocently
suppose not to be patented. It is, therefore, for the purpose
of warning an innocent purchaser, or other person using a
very language and Intent of the power given to Congress by the Constitution
on this subject. Congress (says the Constitution) shall have the power to
promote the progress of science and the useful arts, by securing for limited
times to authors and inventors the exclusive right of their respective writ-
ings and discoveries." Patents, then, are clearly entitled . to a liberal con-
struction, since they are not granted as restrictions upon the rights of the
community, but are granted " to promote science and useful arts."
See, also, Ryan v. Goodwin, 3 Sumner, 514, where it is said that if the
court can perceive, on the whole instrument, the exact nature and extent
of the claim made by the inventor, it is bound to adopt that interpretation,
and to give it full effect. See, also, Wyeth v. Stone, 1 Story's R. 270, 286 ;
Davoll V. Brown, 1 Woodbury & Minot, 53, 57.
THE SPECIFICATION. 189
machine, of his infringement of the patent ; and, at the same
time, of taking from the inventor the means of practising upon
the credulity or the fears of other persons, by pretending that
his invention is more than what it really is, or different from
its ostensible objects, that the patentee is required to distin-
guish his invention in his specification.^
§ 129. It has been justly remarked, by a learned writer,
that the statute requisites for a good specification run so
much into each other, in their nature and character, and are
so blended together that it is difficult to treat of them sepa-
rately.2 But the leading purposes of the whole of the statute
directions are two ; first, to inform the public what the thing
is of which the patentee claims to be the inventor, and there-
fore the exclusive proprietor during the existence of his
patent ; second, to enable the public, from the specification
itself, to practise the invention thus described, after the expi-
ration of the patent. The principles of construction, and the
authorities from which they are drawn may therefore be dis-
cussed with reference to these two objects.
§ 130. I. The first rule for preparing a specification is.
To describe the subject-matter, or what the patentee claims
to have invented, so as to enable the public to knotu ivhat his
claim is.
Whether the patentee has done this, in a given case, is, as
we have seen, generally a question of law for the court, on
the construction of the patent. It is not necessary that the
language employed should be technical, or scientifically accu-
rate, although at the same time it must not mislead. If the
terms made use of will enable the court to ascertain clearly^
by fair interpretation, what the party intends to claim, an in-
accuracy or imperfection in the language will not vitiate the
1 Evans v. Eaton, 7 Wheaton, 356, 433.
2 Phillips on Patents, p. 287.
190 LAW OP PATENTS.
specification.! But it must appear with reasonable certainty
what the party intends to claim ; for it is not to be left to
minute references and conjectures, as to what was previously
known or unknown ; since the question is not, what was
before known, but what the patentee claims as new.^ If the
patentee has left it wholly ambiguous and uncertain, so
loosely defined, and so inaccurately expressed, that the court
cannot, upon fair interpretation of the words, and without
resorting to mere vague conjecture of intention, gather what
the invention is, then the patent is void for this defect. But
if the court can clearly see, what is the nature and extent of
the claim, by a reasonable use of the means of interpretation
of the language used, then, it is said, the patentee is entitled
to the benefit of it, however imperfectly and inartificially he
may have expressed himself. For this purpose, phrases
-standing alone are not to be singled out, but the whole is to
be taken in connection.^
§ 131. The statute requires the patentee to give " a written
1 Wyeth V. Stoae, 1 Story's R. 271, 286 ; Carver v. The Braintree Manf.
Co. 2 Story's R. 408, 446 ; Neilson v. Harford, Webs. Pat. Cas. 331, 369 ;
Bloxara v. Elsee, 1 Car. & P. 558.
^ Lowell V. Lewis, 1 Mas. 182, 188. A general statement that the pa-
tented machine is, in all material respects, (without stating what respects)
an improvement on an old machine, is no specification at all. lb. See also
Kneass v. The Schuylkill Bank, 4 Wash. 9. If the patent be for an im-
proved machine, or for an improvement of a machine, (the meaning of the
terms is the same) it must state in what the improvement specifically con-
sists, and it must be limited to such improvement. If, therefore, the terms
be so obscure or doubtful, that the court cannot say which is the particular
improvement which the patentee claims, and to what it is limited, the patent
is void for ambiguity ; and, if it covers more than the improvements, it is void,
because it is broader than the invention. Barrett v. Hall, 1 Mas. 447.
^ Ames V. Howard, 1 Sumner, 482, 485. The drawings are to be taken
in connection with the words, and if, by a comparison of the words and the
drawings, the one would explain the other sufficiently to enable a skiful
mechanic to perform the work, the specification is suflSicient. Bloxam v.
Elsee, 1 Car. & P. 558.
THE SPECIFICATION. 191
description of his invention or discovery." This involves the
necessity, in all cases where the patentee makes use of what
is old, of distinguishing between what is old and what is
new. He is required to point out in what his invention or
discovery consists ; and if he includes in his description what
has been invented before, without showing that he does not
claim to have invented that, his patent will be broader than
his invention, and therefore void.^ Whatever appears to be
1 Dixon V. Moyer, 4 Wash. 68, 73. In this case, Mr. Justice Washington
said : " It was insisted by the plaintiiF's counsel, that this specification is per-
fectly intelligible to an artist, who could experience no difficulty in making
such a saddle as is there described ; and that if it be not so, still the defendant
cannot avail himself of the defect, unless he had stated it in his notice, and
also proved at the trial an intention in the plaintiff to deceive the public.
But these observations are all wide of the objection, which is not that the
specification does not contain the whole truth relative to the discovery, or
that it contains more than is necessary. It is admitted that the specifica-
tion does not offend in either of these particulars. But the objection is,
that throughout the whole of a very intelligible description of the mode of
making the saddle, the patentee has not distinguished what was new, from
what was old and before in use, nor pointed out in what particulars his im-
provement consisted." See also Carpenter v. Smith, Webs. Pat. Cas. 530,
532, where Lord Abinger, C. B., said : " It is required as a condition of
every patent, that the patentee shall set forth in his specification a true
account and description of his patent or invention, 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 machinery 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 particular 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." See also Davis v. Palmer, 2 Brock.
298 ; Wyeth v. Stone, 1 Story's K. 73 ; Lowell v. Lewis, 1 Mas. 188, where
Mr. Justice Story said : " 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,
192 LAW OF PATENTS.
covered by the claim of the patentee, as his own invention,
must be taken as part of the claim, for courts of law are not
at liberty to reject any part of the claim ; and, therefore, if it
turns out that any thing claimed is not new, the patent is
void, however small or unimportant such asserted invention
may be.^
and, if not intended to cover the wliole, it is impossible for the court to say
what, in particular, is covered as the new invention."
1 Moody V. Fisk, 2 Mas. 112, 118. In this case, Mr. Justice Story said :
" Where the patentee claims any thing as his own invention, in his specifica-
tion, courts of law cannot reject the claim : and, if included in the patent,
and found not to be new, the patent is void."
In the case of Campion v. Benyon, 3 Brod. & B. 5, the patent was taken
out for " an improved method of making sail-cloth, without any starch what-
ever." The real improvement consisted in a new mode of texture, and not
in the exclusion of starch, the advantage of excluding that substance having
been discovered and made public before. Park, J., said : " In the patentee's
process he tells us that the necessity of using starch is superseded, and mil-
dew thereby entirely prevented ; but if he meant to claim as his own an im-
proved method of texture or twisting the thread to be applied to the making
of unstarched cloth, he might have guarded himself against ambiguity, hy
disclaiming as his own discovery the advantage of excluding starch." In
this case, the specification itself furnished no means by which the generality
of its expressions could be restrained. But there is a case where the literal
meaning of terms which would have covered too much ground, was limited
by other phrases used in the context. The specification stated the invention
to be an improved apparatus for " exti-acting inflammable gas by heat, from
pit-coal, tar, or any other substance from which gas or gases, capable of being
employed, for illumination, can be extracted by heat." Lord Tenterden
held that the words "any other substance" must mean other substances
ejusdem generis ; and, therefore, that it was not a fatal defect that the appara-
tus would not extract gas from oil ; and that oil was not meant to be in-
cluded, it being at that time considered too expensive for the making of gas
for purposes of illumination, though it was known to be capable of being so
used. Crossley v. Beverly, 3 Car. & P. 513; Webs. Pat. Cas. 106. Upon
this distinction, Mr. Webster remarks that " the true principle would appear
to be the i ntention of the party at the jtime, first, as expressed distinctly on
th^ face of the specification ; and secondly, as may be inferred therefrom,
according to the state of knowledge at the time, and other circumstances."
Webs. Pat. Cases, 110, note. — Where the patentee in his specification
THE SPECIFICATION. 193
§ 132. But there is a very important rule to be attended to,
in this connection, which has been laid down by the Court
of Common Pleas in England : namely, that a specification
should be so construed, as, consistently with the fair import
of language, will make the claim coextensive with the actual
discovery. So that, a patentee, unless his language neces-
sarily imports a claim of things in use, will be presumed not
to intend to claim things which he must know to be in use.i
claimed " an improvement in the construction of the axles or bearings of
railway or other iclieeled carriages" and it appeared that the improvement,
though it had never before been applied to railway carriages, was well known
as applied to other carriages, it was held that the patent was not good.
Winans v. Providence R. Road Company, 2 Story's R. 412.
1 Haworth v. Hardcastle, "Webs. Pat. Cas. 480, 484. In this case, Sir N.
C. Tindall, C. J., said : " As to the second ground upon which the motion
for a nonsuit proceeded, we think, upon the fair construction of the specifi-
cation itself, the patentee does not claim as part of his invention, either the
rails or staves over which the calicoes and other cloths are to be hung, or the
placing them at the upper part of the building. The use of rails and staves
for this purpose was proved to have been so general before the granting of
this patent, that it would be almost impossible a priori to suppose that the
patentee intended to claim what he could not but know would have avoided
his patent, and the express statement that he makes, ' that he constructs the
stove or drying house in a manner nearly similar to those which are at pre-
sent in use, and that he arranges the rails or staves on which the cloth or
fabric is intended to be hung or suspended, near to the upper part of the
said stove or drying house,' shows clearly that he is speaking of those rails or
staves as of things then known and in common use, for he begins with de-
scribing the drying house as nearly similar to those in common use ; he gives
no dimensions of the rails or staves, no exact position of them, nor any par-
ticular description by reference, as he invariably does when he comes to
that part of the machinery which is peculiarly his own invention. There
can be no rule of law which requires the court to make any forced construc-
tion of the specification, so as to extend the claim of the patentee to a wider
range than the facts loould toarrant ; on the contrary, such construction ought to
be made as will, consistently with the fair import of the language used, make
the claim of invention coextensive with the new discovery of the grantee of
the patent. And we see no reason to believe that he intended, under this
specification, to claim either the staves, or the position of the staves as to their
height in the drying house, as a part of his own invention."
25
194 LAW OF PATENTS.
§ 133. The object of the distinction between what is new
and what is old is, to show distinctly what the patentee claims
as his invention. But it has been said, that the mere dis-
crimination between what is old and what is new will not, in
all cases, shov/ this, for perhaps the patentee does not claim
all that is new.^ But the meaning of the authorities, as well
as the purpose of the statute, shows that the object of the
specification is, to state distinctly what the patentee claims
as the subject-matter of his invention or discovery ; and the
discrimination commonly made between what is new and
what is old, is one of the means necessary to present clearly
the subject-matter of the invention or discovery .^ In order
to make this discrimination, the patentee is not confined to
any precise form of words.^ The more usual form is to state
affirmatively what the patentee claims as new, and, if he
makes use of any thing old, to state negatively that he does
not claim that tiling.^ It is not enough that the thing de-
1 Phillips on Patents, 270,
2 See Barrett v. Hall, 1 Mas. 475 ; Woodcock v. Parker, 1 Gallis. 438;
Whittemore v. Cutter, lb. 478; Odiorne v. Winkley, 2 Gallis. 51 ; Evans
v. Eaton, 3 Wheat. 534 ; 7 lb. 356; Wyeth v. Stone, 1 Story's R. 273;
Ames V. Howard, 1 Sumner, 482.
3 Wyeth V. Stone, 1 Story's R. 73.
4 If a specification truly sums up and distinguishes the invention of the
patentee, it ■will not be open to the objection of being too broad, although it
describes, "with unnecessary minuteness, a process well known to those con-
versant with the art. Kceass v. The Schuylkill Bank, 4 Wash. 9, 14. See
also Ames v. Howard, 1 Sumner, 482, 485. Mr. Godson gives the follow-
ing directions for drawing specifications : " That the new parts of the sub-
ject may be more clearly seen and easily known, the patentee must not only
claim neither more nor less than his own invention, but he must not appear,
even unintentionally, to appropriate to himself any part which is old, or has
been used in other manufactures. (Huddart v. Grimshaw, Dav. Pat. Cas.
295.) Those parts that are old and immaterial, or are not of the essence of
the invention, should either not be mentioned, or should be named only to
be designated as old. The patentee is not required to say that a screw or
bobbin, or any thing in common use, is not part of his discovery ; yet he
must not adopt the invention of another person, however insignificant it
may appear to be, without a remark. If any parts are described as essential,
THE SPECIFICATION.' 195
signed to be embraced by the patent, should be made appa-
rent on the trial, by a comparison of the new with the old
machine. The specification must distinguish the new from
the old, so as to point out in what the improvement consists.^
§ 134. In describing what is old, it is not always necessary
to enter into detail. Things generally known, or in common
use, may be referred to in general terms, provided they create
no ambiguity or uncertainty, and provided such reference is
accompanied by an intelligible description of what is new.^
In describing an improvement of a machine, or, what is the
same thing, an improved machine, great care must be taken
not to describe the whole in such a way as to make it ap-
pear to be claimed as the invention of the patentee. The
former machine, or other thing, should be set forth in the pa-
tent sufficiently to make known, according to the nature of
the case, what it is that the patentee ingrafts his improve-
ment upon ; he should then disclaim the invention of the
thing thus referred to or described, and state distinctly his
improvement as the thing which he claims to have invented.^
without a protest against any novelty being attached to them, it will seem,
thoutrh they are old, that they are claimed as new. (BoviU v. Moore, Dav.
Pat. Cas. 404 ; Manton v. Parker, Dav. Pat. Cas. 329.) The construction will
be against the patentee, that he seeks to monopolize more than he has invented,
or that, by dwelling, in his description, on things that are immaterial or known,
he endeavors to deceive the public, who are not to be deterred from using
any thing that is old by its appearing in the specification as newly invented.
They are to be warned against infringing on the rights of the patentee, but
are not to be deprived of a manufacture which they before possessed. (Dav.
Pat. Cas. 279, and 3 Meriv. 629.) It seems, therefore, to be the safest way
in the specification to describe the whole subject, and then to point out aU
the parts which are old and well known." Godson on Patents, 128.
» Dixon V. Moyer, 4 Wash. K. 68.
2 Davis V. Palmer, 2 Brock. 298.
3 In Hill V. Thompson, 8 Taunt. 375, Lord Ch. J. Dallas said, " This, like
every other patent, must undoubtedly stand on the ground of improvement
or discovery. If of improvement, it must stand on the ground of improve-
ment invented ; if of discovery, it must stand on the ground of the discovery
196 LAW OF PATENTS.
One of the most common defects in a specification, consists
in that sort of vagueness and ambiguity in the manner of
describing the invention, which makes it difficult or impos-
sible to determine what the invention is. This is an objec-
tion distinct from an ambiguity in the terms made use of.
Thus, where the directions contained in a specification were
" to take any quantity of lead and calcine it, or minium, or
red lead," the objection was that it was uncertain whether
the minium and red lead were to be calcined, or only the
lead.i So, too, if it be stated that a whole class of substances
may be used to produce a given effect, when, in fact, only
one is capable of being so used successfully, an ambiguity is
at once produced, and the public are misled ;2 but if the pa-
tentee states the substances which he makes use of himself,
and there are still other substances which will produce the
effect, and he claims them by a generic description as com-
prehended within his invention, his claim will not be void for
ambiguity, or too broad for his invention, provided the com-
bination is new in respect to all the substances thus referred
to.3
of something altogether new ; and the patent must distinguish and adapt
itself accordingly." See also Bovill v. Moore, Dav. Pat. Cas. 398.
1 Turner v. Winter, Webs. Pat. Cas. 80. Another objection taken, was,
as to the white lead, which the patent professed to make by the same pro-
cess by which it made something else ; to which it was answered that the
invention did not profess to make common white lead. Ashhurst, J., said,
" But that is no answer; for if the patentee had intended to produce some-
thing only like white lead, or answering some of the purposes of common
white lead, it should have been so expressed in the specification. But, in
truth, the patent is for making white lead and two other things by one pro-
cess. Therefore, if the process, as directed by the specification, does not
produce that which the patent professes to do, the patent itself is void."
2 Bickford v. Skewes, Webs. Pat. Cas. 218. If more parts be inserted
than are necessary, as ten, where four are sufficient, the specification is void.
The King v. Arkwright, Webs. Pat. Cases, 70.
3 Ryan v. Goodwin, 3 Sumner, 514, 519. In this case, Mr. Justice Story
said, " Then, as to the third point. This turns upon the supposed vagueness
and ambiguity and uncertainty of the specification and claim of the inventioif
THE SPECIFICATION. 107
§ 135. In like manner, where a particular effect or purpose
in machinery is a part of the invention, and that effect may
thereby. The specification, after adverting to the fact, that the loco-foco
matches, so called, are a compound of phosphorus, chlorate of potash, sul-
phuret of antimony, and gum arable or glue, proceeds to state that the com-
pound which he (Phillips) uses, ' consists simply of phosphorus, chalk, and
glue ; ' and he then states the mode of preparing the compound, and the
proportions of the Ingredients ; so that, as here stated, the essential difference
between his own matches and those called loco-foco, consists In the omission
of chlorate of potash and sulphuret of antimony, and using in lieu thereof
chalk. He then goes on to state, that ' the proportions of the ingredients
may be varied, and that gum arable, or other gum may be substituted for
glue ; and other absorbent earths or materials may be used instead of carbon-
ate of lime.' He afterwards sums up his invention In the following terms :
' "What I claim as my Invention Is, the using of a paste or composition to ignite
by friction, consisting of phosphorus, and [an] earthy material, and a gluti-
nous substance only, without the addition of chlorate of potash, or of any
other highly combustible material, such as sulphuret of antimony, In addi-
tion to the phosphorus. I also claim the mode herein described, of putting
up the matches in paper, so as to secure them from accidental friction.' Upon
this last claim I need say nothing, as It Is not In controversy, as a part of the
Infringement of the patent, upon the present trial. Now, I take It to be the
clear rule of our law in favor of Inventors, and to carry Into effect the ob-
vious object of the constitution and laws in granting patents, ' to promote
the progress of science and useful arts,' to give a liberal construction to the
language of all patents and specifications, (ut res magis valeat quam pereat)
so as to protect, and not to destroy the rights of real Inventors. If, therefore,
there be any ambiguity or uncertainty In any part of the specification ; yet
If, taking the whole together, the court can perceive the exact nature and
extent of the clauu made by the Inventor, It is bound to adopt that interpre-
tation, and to give it full effect. I confess that I do not perceive any ground
for real doubt In the present specification. The inventor claims as his In-
vention the combination of phosphorus with chalk or any other absorbent
earth, or earthy material, and glue, or any other glutinous substance in
making matches, using the ingredients in the proportions, substantially as set
forth In the specification. Now, the question Is, whether such a claim Is
good, or whether It Is void, as being too broad and comprehensive. The
argument seems to be, that the Inventor has not confined his claim to the use
of chalk, but has extended it to the use of any other absorbent earths or
earthy materials, which is too general. So, he has not confined it to the
use'of glue, or even of gum arable, but has extended it also to any other gum
198 LAW OF PATENTS.
be produced in several modes, it is sufficient for the patentee
to state the modes which he contemplates as best, and-his
or glutinous substance, which is also too general. Now, it is observable,
that the Patent Act of 1793, c. 55, does not limit the inventor to one single
mode, or one single set of ingredients, to carry into effect his invention. He
may claim as many modes as he pleases, provided always that the claim is
limited to such as he has invented, and as are substantially new. Indeed,
in one section, (§ 3,) the act requires, in the case of a machine, that the in-
ventor 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 same enactment exists in the
Patent Act of 1836, c. 357, § 6. I do not know of any principle of law, which
declares that, if a man makes a net? compound, wholly unknown before for
a useful and valuable purpose, he is limited to the use of the same precise
ingredients in making that compound ; and that, if the same purpose can be
accomplished by him by the substitution in part of other ingredients in the
composition, he is not at liberty to extend his patent so as to embrace them
also. It is true, that, in such a case, he runs the risk of having his patent
avoided, if either of the combinations, the original, or the substituted, have
been known or used before in the like combination. But, if all the various
combinations are equally new, I do not perceive how his claim can be said
to be too broad. It is not more broad than his invention. There is no proof,
in the present case, that the ingredients enumerated in this specification,
whether chalk or any other absorbent earth or earthy substance, were ever
before combined with phosphorus aiad glue, or any gum or other glutinous
substance, to produce a compound for matches. The objection, so far as it
here applies, is not, that these gums or earths have been before so combined
with phosphorus, but that the inventor extends his claim, so as to include aU
such combinations. There is no pretence to say, upon the evidence, that the
specification was intended to deceive the public, or that it included other
earthy materials than chalk, or other glutinous substances than glue, for the
very purpose of misleading the public. The party has stated frankly, what
he deems the best materials, phosphorus, chalk, and glue, and the proportions
and mode of combining them. But, because he says that there may be sub-
stitutes of the same general character, which may serve the same purpose,
thereby to exclude other persons from evading his patent, and depriving him
of his invention, by using one or more of the substitutes, if the patent had
been confined to the combination solely of phosphorus, chalk, and glue, I
cannot hold that his claim is too broad, or that it is void. My present im-
pression is, that the objection is not well founded. Suppose the invention
had been of a machine, and the inventor had said, I use a wheel in a cer-
THE SPECIFICATION. 199
claim will not be void, as too vague or comprehensive,
altkough he claims the variations from those modes as being
equally his invention, without describing the manner of pro-
ducing those variations.^
tain part of the machine for a certain purpose, but the same effect may be
produced, by a crank, or a lever, or a toggle joint, and therefore I claim
these modes also ; it would hardly be contended, that such a claim -would
avoid his patent. I do not know that it has ever been decided, that, if the
claim of an inventor for an invention of a compound states the ingredients
truly, which the inventor uses to produce the intended effect, the suggestion,
that other ingredients of a kindred nature may be substituted for some part
of them, has been held to avoid the patent in toto, so as to make it bad for
what is specifically stated. In the present case it is not necessary to consider
that point. My opinion is, that the specification is not, in point of law, void,
from its vagueness, or generality, or uncertainty."
1 Carver v. Braintree Manf. Co. 2 Story's E. 432, 440. " Another objec-
tion is, that the plaintiff, in his claim, has stated, that the desired distance or
space between the upper and the lower surfaces of the rib, whether it ' be
done by making the ribs thicker at that part, or by a fork or division of the
rib, or by any other variation of the particular form,' is a part of his inven-
tion. It is said, that the modes of forking and dividing are not specified, nor
the variations of the particular form given. This is true ; but then the Patent
Act requires the patentee to specify the several modes ' in which he has
contemplated the application of the distinguishing principle or character of
his invention.' (Act of 1836, ch. 357, § 6.) Now, we all know that a mere
difference of form will not entitle a party to a patent. What the patentee
here says in effect is : One important part of my invention consists in the
space or distance between the upper and lower surfaces of the ribs, and
whether this is obtained by making the rib solid, or by a fork or division of
the rib, or by any other variation of the form of the rib, I equally claim it as
my invention. The end to be obtained is the space or distance equal to the
fibre of the cotton to be gained ; and you may make the rib solid, or fork it,
or divide it, or vary its forms in any other manner, so as that the purpose is
obtained. The patentee, therefore, guards himself against the suggestion,
that his invention consists solely in a particular form, solid, or forked, or
divided ; and claims the invention to be his, whether the exact form is pre-
served or not, if its proportions are kept so as to be adapted to the fibre of
the cotton which is to be ginned. In all this I can perceive no want of accu-
racy or sufficiency of description, at least so far as it is a matter of law, nor
any claim, broader than the invention, which is either so vague or so com-
prehensive, as, in point of law, not to be patentable. It was not incumbent
200 LAW or PATENTS.
§ 136. This kind of ambiguity is also distinguishable from
the want of clear or specific directions, which will enable a
mechanic to make the thing described. A specification may
be perfectly sufficient, as to the point of stating what the
invention is, and yet the directions for making the thing may
be so vague and indefinite, as not to enable a skilful mechanic
to accomplish the object.^ It is for this reason, as we have
seen, that the question, whether the specification discloses
what the invention is, is a question for the court on construc-
tion of the patent ; while the question, whether it sufficiently
describes the mode of carrying the invention into practice, is
a question for the jury.^
on the patentee to suggest all tlie possible modes by which the rib might
be varied, and yet the eflect produced. It is sufficient for him to state the
modes which he contemplates to be best, and to add, that other mere formal
variations from these modes he docs not deem to be unprotected by his pa-
tent."
1 It may not, perhaps, be easy to draw a precise line of distinction
between a specification so uncertain as to claim no particular improvement,
and a specification so uncertain as not to enable a skilful workman to under-
stand the improvement and to construct it. Yet we think the distinction
exists. If it does, it is within the province of the jury to decide whether a
Bkilful workman can carry into execution the plan of the inventor. In
deciding this question, the jury will give a liberal common-sense construc-
tion to the directions of the specification." Per Marshall, C. J., in Davis
V. Palmer, 2 Brock. 2D8, 308.
2 Thus, in the case of a patent for " a new and useful improvement
in the ribs of the cotton gin," Mr. Justice Story said, " It is true, that the
plaintiif in his specification, in describing the thickness of the rib in his
machine, declares, that it should be so thick, that the distance or depth be-
tween the upper and the lower surface should be ' so great as to be equal to
the length of the fibre to be ginned,' which, it is said, is too ambiguous and
indefinite a description to enable a mechanic to make it, because it is notorious,
that not only tlie fibres of dillerent kinds of cotton are of dilTerent lengths, long
staple and short staple, but that the different fibres in the same kind of cotton
are of unequal lengths. And it is asked, what then is to be the distance or
depth or thickness of the rib ? Whether a skilful mechanic could, from this
description, make a proper rib for any particular kind of cotton, is a matter
of fact, which those only, who are acquainted with the structure of cotton
gins, can properly answer. If they could, then the description is sufficient,
THE SPECIFICATION. ' 201
§ 137. The ambiguity produced by a too great fulness of
detail in the specification is liicely to mislead, both in deter-
mining what the invention claimed is, and in determining
whether it is described with such accuracy as will enable a
competent workman to put it in practice. We shall have
occasion hereafter to state the rule, that the patentee is bound
to disclose the most advantageous mode known to him, and
any circumstance conducive to the advantageous operation
of his invention ; and it is a correlative of this rule, that, if
things wholly useless and unnecessary are introduced into
the specification, as if they were essential, although the terms
are perfectly intelligible, and every necessary description has
been introduced, and the parts claimed are all newly invented,
the patent may be declared void. The presumption, in such
cases, according to the English authorities, is, that the useless
and unnecessary descriptions were introduced for the purpose
of overloading the subject and clouding the description, in
order to mislead the public and conceal the real invention.^
although it may require some niceties iu adjusting the different thicknesses
to the different kinds of cotton. If they could not, then the specification is
obviously defective. But I should suppose, that the inequahties of the dif-
ferent fibres of the same kind of cotton would not necessarily present an
insurmountable difficulty. It may be, that the adjustment should be to be
made according to the average length of the fibres, or varied in some other
■way. But this is for a practical mechanic to say, and not for the Court.
What I mean, therefore, to say on this point is, that, as a matter of law, I
cannot say that this description is so ambiguous, that the patent is upon its
face void. It may be less perfect and complete than would be desirable,
but still it may be sufficient to enable a skilful mechanic to attain the end.
In point of fact, is it not actually attained by the mechanics employed by
Carver, without the application of any new inventive power or experiments ?
If so, then the objection could be answered as a matter of fact or a practical
result," Carver v. The Braintree Manufacturing Company, 2 Story's R.
432, 437.
1 In Arkwrlght's case, several things were introduced into the specifica-
tion, of which he did not make use. BuUcr, J., said, "Wood put No. 4,
5, 6, and 7, together, and that machine he has worked ever since ; he don't
recollect that the defendant used any thing else. If that be true, it will
26
202 I-AW OF PATENTS.
§ 138. There is one case where it seems to have been held
that an improved mode of working his machine by the pa-
tentee, different from the specification of his patent, casts
upon him the bm-den of showing that he made the improve-
ment subsequently to the issuing of his patent, otherwise it
will be presumed that he did not disclose in his specification
the best method known to him.i But where a patentee of an
improved machine claimed, as his invention, a part of it which
turned out to be useless, it was held that this did not vitiate
the patent, the specification not describing it as essential to
the machine.2 xt the same' time, it is necessary that the
specification should be full and explicit enough to prevent
the public from infringing the right of the patentee. An
infringement will not have taken place, unless the invention
can be practised completely by following the specification ;
otherwise, it has been said, it would be an infringement to do
that perfectly, which, according to the specification, requires
blow up the patent at once ; lie says he believes nobody that ever practised
would find any thing necessary upon this paper but the No. 4, 5, 6, and 7 ;
he should look after no others. Now if four things only were necessary,
instead of ten, the specification does not contain a good account of the inven-
tion." The King v. Arkwright, Webs. Pat. Cas. 70.
In Turner's patent for producing a yellow color, minium was directed to
be used among other things, but it appeared that it would not produce the
desired efiect. The same learned judge said, " Now in this case no evi-
dence was offered by the plaintiff to show that he had ever made use of the
several different ingredients mentioned in the specification, as for instance
minium, which he had nevertheless inserted in the patent ; nor did he give
any evidence to show Jiow the yellow color was produced. If he could
make it with two or three of the ingredients specified, and he has inserted
others which will not answer the purpose, that will avoid the patent. So if
he makes the article, for which the patent is granted, with cheaper materials
than those which he has enumerated, although the latter will answer the
purpose equally well, the patent is void, because he does not put the pubUc
in possession of his invention, or enable them to derive the same benefit
which he himself does." Turner v. Winter, 1 T. R. 602, 607. See also
Savory v. Price, R. & M. 1.
1 Bovill V. Moore, Dav. Pat. Cas. 361, 401.
2 Lewis V. MarUng, 10 B. & Cress. 22.
THE SPECIFICATION. 203
something else to be done to make it perfect. An infringe-
ment is a copy made after and agreeing with the principle
laid down in the patent ; i and if the patent does not fully
describe every thing essential to the making or doing of the
thing patented, there will be no infringement by the fresh
invention of processes which the patentee has withheld from
the public.2
1 Per Sir N. Tindal, C. J., in Galloway v. Bleaden, Webs. Pat. Cas. 523.
2 This doctrine was very clearly laid down by Alderson, B., in Morgan
V. Seaward, Webs. Pat. Cas. 167, 181. " Then Henry Mornay, a young gen-
tleman in Mr. Morgan's employment, where he has been apparently study-
ing the construction of engines, speaks of a circumstance which does appear
to me to be material. He says, Sir. Morgan in practice makes his rods of
different lengths. He must necessarily do so, in order that the floats may
follow at the same angle as that at which the driving float enters the water.
The problem which Mr. Park solved is a problem applying to three floats
only ; but it appears that the other floats will not follow in the same order,
unless some adjustment of the rods is made. Now, suppose it was to be
desired that the floats should all enter the water at the given or required
angle, if one should go in at one angle, and one at another, the operation of
the machine would not be uniform ; and the specification means that the
part)' constructing a wheel, should be able to make a wheel, the floats of
which shall all enter at the same angle, and all go out at the same angle.
Now, in order in practice to carry that into effect, if there are more than three
floats, something more than Mr. Park's problem would be required ; and Mr.
Mornay says actually, that Mr. Morgan in practice makes his rods of differ-
ent lengths, and he must necessarily do that in order that the floats may fol-
low at the same angle as the driving float enters the water. If so, he should
have said in his specification, ' I make my rods of different lengths, in order
that the rest of my floats may enter at the same angle ; and the way to do
that is so and so.' Or he might have said, ' it may be determined so and so.'
But the specification is totally silent on the subject ; therefore, a person
reading the specification would never dream that the other floats must be
governed by rods of unequal length ; and least of all could he ascertain what
their lengths should be, until he had made experiments. Therefore it is con-
tended that the specification does not state, as it should have stated, the proper
manner of doing it. He says, if they are made of equal lengths, though the
governing rod would be vertical at the time of entering, and three would be so
when they arrived at the same spot, by reason of the operation Mr. Park sug-
gests, yet the fourth would not come vertical at the proper point, nor would
the fifth, sixth, or seventh. Then they would not accomplish that advan-
204 LAW OF PATENTS.
§ 139. The ambiguity produced by a misuse of terms, so
as to render the specification unintelligible, will be as fatal as
any other defect. Thus, where the directions were to use
« sea-salt, or sal-gem, or fossil-salt, or any marine-salt," and it
appeared that " sal-gem " was the only thing that could be
used, and that "fossil-salt" was a generic term, including
« sal-gem," as well as other species of salt, it was held that
the use of the term " fossil-salt " could only tend to mislead,
and to create unnecessary experiments, and therefore that the
specification was in that respect defective.i In like manner
where the specification directed the use of " the finest and
purest chemical white-lead," and it appeared that no such
substance was known in the trade by that name, but that
white-lead only was known, the specification was held defect-
tage which professes to be acquired. The patentee ought to state in his
specification the precise way of doing it. If it cannot completely be done by
following the specification, then a person will not infringe the patent by
doing it. If this were an infringement, it would be an infringement to do
that perfectly, which, according to the specification, requires something else
to be done to make it perfect. If that be correct, you would prevent a man
from having a perfect engine. He says, practically speaking, the difference
in the length of the rods would not be very material, the difference being
small. But the whole question is small, therefore it ought to have been
specified ; and, if it could not be ascertained fully, it should have been so
stated. Now this is the part to which I was referring, when, in the prelimi-
nary observations I addressed to you, I cited the case before Lord Mansfield,
on the subject of the introduction of tallow to enable the machine to work
more smoothly. There it was held, that the use of tallow ought to have been
stated in the specification. This small adjustment of these different lengths
may have been made for the purpose of making the machine work more
smoothly ; if so, it is just as much necessary that it should be so stated in
the specification, as it was that the tallow should be mentioned. The true
criterion is this, has the specification substantially complied with that which
the public has a right to require ? Has the patentee communicated to the
public the manner of cai-rying his invention into effect ? If he has, and if he
has given to the public all the knowledge he had himself, he has done that
which he ought to have done, and which the public has a right to require
from him."
1 Turner v. Winter, 1 T. R. 606.
I
THE SPECIFICATION. 205
ive.^ But a mere mistake of one word for another in writing
or printing, if explained by other parts of the patent and
specification, as the use of the word " painting " for " print-
ing," is immaterial.^
§ 140. The description of an improvement, when an im-
provement is the real subject-matter of the patent, should be
made in such a manner as will clearly show that the improve-
ment only is claimed by the patentee. If a machine substan-
tially existed before, and the patentee makes an improvement
therein, his patent should not comprehend the whole machine
in its improved state, but should be confined to his improve-
ment ;2 and this is true, although the invention of the pa-
tentee consists of an addition to the old machine, by which
the same effects are to be produced in a better manner, or some
new combinations are added, in order to produce new effects.^
But if well-known effects are produced by machinery which,
in all its combinations, is entirely new, the subject-matter will
be a new machine, and, of course, the patent will cover the
whole machine.^
§ 141. If the invention be an improvement, and be claimed
as such, but nothing is said of any previous use, of which
the use proposed is averred to be an improvement, the patent
may incur the risk of being construed as a claim of entire
and original discovery. Hence arises the necessity for recit-
ing what had formerly been done, and describing a different
mode as the improvement claimed.^
1 Sturz V. De La Eue, Webs. Pat. Cas. 83.
2 Kneass v. The Schuylkill Bank, 4 Wash. 9.
3 Woodcock V. Parker, 1 Gallis. 438 ; Odiorne v. Winkley, 2 Gallis. 51 \
Barrett v. Hall, 1 Mas. 447, 476.
4 Whittemore v. Cutter, 1 Gallis. 478.
5 Ibid.
6 In Hill V. Thompson, Webs. Pat. Cas. 226, 228, 229, the specification
contained, among other things, the following claim : " And that my said im-
provements do further consist in the use and application of lime to iron, sub-
206 LAW OF PATENTS.
§ 142. But, in describing the improvement of a machine in
use and well known, it is not necessary to state in detail the
sequently to the operations of tlie blast furnace, -wliereby that quality in iron
from which the iron is called " cold short," howsoever and from whatever
substance such iron be obtained, is sufficiently prevented or remedied, and
by which such iron is rendered more tough when cold." " And I do further
declare, that I have discovered that the addition of lime or limestone, or other
substances consisting chiefly of lime, and free or nearly free from any ingre-
dient known to be hurtful to the quality of iron, will sufficiently prevent or
remedy that quality in iron from which the iron is called " cold short," and
will render such iron more tough when cold ; and I do, for this purpose, if
the iron, howsoever and from whatever substance the same may have been
obtained, be expected to prove " cold short," add a portion of lime or lime-
stone, or of the other said substances, of which the quantity must be regu-
ated by the quality of the iron to be operated upon, and by the quality of
the iron wished to be produced ; and further, that the said lime or limestone,
or other aforesaid substances, may be added to the iron at any time subse-
quently to the reduction thereof, in the blast furnace, and prior to the iron
becoming clotted, or coming into nature, whether the same be added to the
iron while it is in the refining or in the puddling furnace, or in both of them,
or previous to the said iron being put into either of the said furnaces." It
appeared that " cold short " had been prevented by the use of lime before ;
and Dallas, J., said, " The purpose is, to render bar iron more tough, by pre-
venting that brittleness which is called "cold short," and which renders
bar iron less valuable ; the means of prevention stated, are the application
of lime. In what way, then, is lime mentioned in the patent ? The first
part of the specification, in terms, alleges certain improvements in the smelt-
ing and working of iron, during the operations of the blast furnace ; and
then, introducing the mention of lime, it states, that the application of it to
iron, subsequently to the operation of the blast furnace, will prevent the
quality called " cold short."
So far, therefore, the application of lime is, in terms, claimed as an im-
provement, and nothing is said of any previous use, of which the use pro-
posed is averred to be an improvement ; it is, therefore, in substance, a claim
of entire and original discovery. The recital should have stated, supposing
a previous use to be proved in the case, that, " whereas lime has been in
part, but improperly, made use of," &c., and then a difi"erent mode of applica-
tion and use should have been suggested as the improvement claimed. But
the whole of the patent must be taken together, and this objection will ap-
pear to be stronger as we proceed. And here, again, looking through the
patent, in a subsequent part of the specification, the word " discovery " first
occurs, and I will state the terms made use of in this respect. "And I do
THE SPECIFICATION. 207
structure of the entire and improved machine. It is only-
necessary to describe the improvement, by showing the parts
of which it consists, and the effects which it produces.^ In
the case of machinery, there is a particular requisition in the
statute, designed to insure fulness and clearness in the speci-
fication. "And in case of any machine, he (the patentee)
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 ; and shall particularly specify and point out the
part, improvement, or combination, which he claims as his
own invention or discovery.^ By the principle of a machine,
as used in this clause of the statute, is to be understood the
peculiar structure and mode of operation of such machine ; ^
or, as the statute itself explains it, the character by which it
may be distinguished from other inventions. By explaining
" the several modes in which he has contemplated the appli-
cation of that principle," the statute is presumed to direct
the patentee to point out all the modes of applying the prin-
ciple which he claims to be his own invention, and which
further declare, that I have discovered that the addition of Ume -will prevent
that quality in iron from Avhich the iron is called " cold short," and -will ren-
der such iron more tough when cold ; and that, for this purpose, I do add a
portion of lime or limestone, to be regulated by the quantity of iron to be
operated upon, and by the quality of the iron to be produced, to be added at
any time subsequently to the reduction in the blast furnace, and this from
■whatever substance the iron may be produced, if expected to prove " cold
short." Now this appears to be nothing short of a claim of discovery, in
the most extensive sense, of the eifect of lime applied to iron to prevent
brittleness, not qualified and restrained by what follows, as to the i^referable
mode of applying it under various circumstances, and, therefore, rendering
the patent void, if lime had been made use of for this purpose before, sub-
ject to the qualification only of applying it subsequently to the operations in
the blast furnace."
1 Brooks V. Bicknell, 3 M'Lean's E. 250, 261.
2 Act of July 4, 1836, § 6.
3 Whittemore v. Cutter, 1 Gallis. 478, 480 ; Barrett v. Hall, 1 Mas. 447,
470.
208 LAW OF PATENTS.
he means to have covered by his patent, whether they are
those which he deems the best, or are mere formal variations
from the modes which he prefers. In other words, he is to
state not only the peculiar device or construction which he
deems the best for producing the new effect exhibited in his
machine, but also all the other modes of producing the same
effect, which he means to claim, as being substantially appli-
cations of the same principle. But, in doing this, it is not,
as we have seen, necessary for him to enter into a minute
description of the mode of producing those variations of
structure which he thus claims, in addition to the structure
which he prefers. It is sufficient, if he indicates what varia-
tions of the application of the principle he claims beyond
those which he deems the best.^
§ 143. The duty of determining what the claim of the
patentee is, involves the necessity of determining whether
the description in the specification discloses a patentable
subject. The real invention may be a patentable subject ;
but, at the same time, it may be claimed in such a way as
to appear to be a mere function, or abstract principle, which
it will be the duty of the court to declare is not patentable ;
whereas, if it had been described differently, it would have
been seen to be a claim for a principle or function, embodied
in a particular organization of matter for a particular pur-
pose, which is patentable. The patentee may have been
engaged in investigations into the principles of science or
the laws of nature. He may have attained a result, which
constitutes a most important and valuable discovery, and he
may desire to protect that discovery by a patent ; but he
cannot do so by merely stating his discovery in a specifica-
tion. He must give it a practical application to some useful
purpose, to attain a result in arts or manufactures not before
^ See the observations of Mr. Justice Story, cited ante, from the case of
Carver v. The Braintree Manuf. Co. 2 Story's K. 432, 440.
THE SPECIFICATION. 209
attained ; and his specification must show the application
of the principle to such a special purpose, by its incorpora-
tion with matter in such a way as to be in a condition to
produce a practical result.^ Care should be taken, therefore,
I In The Househill Co. v. Neilson, Webs. Pat. Cas. 673, 683, Lord Justice
Clerk Hope, in the Court of Sessions, made the following clear observations
to the jury : — "It is quite true that a patent cannot be taken out solely for
an abstract philosophical principle ; for instance, for any law of nature, or
any property of matter, apart from any mode of turning it to account in the
practical operations of manufacture, or the business and arts and utilities
of life. The mere discovery of such a principle is not an invention, in the
patent-law sense of the term. Stating such a principle in a patent may be
a prolongation of the principle, but it is no application of the principle to
any practical purpose. And, without that application of the principle to a
practical object and end, and without the application of it to human indus-
try, or to the purposes of human enjoyment, a person cannot in the abstract
appropriate a principle to himself. But a patent will be good, though the
subject of the patent consists in the discovery of a great, general, and most
comprehensive principle in science, or law of nature, if that principle is, by
the specification, applied to any special purpose, so as thereby to effectuate a
practical result and benefit not previously attained.
The main merit, the most important part of the invention, may consist in
the conception of the original idea, in the discovery of the principle in
science or of the law of nature, stated in the patent ; and little or no pains
may have been taken in working out the best manner and mode of the
ajiplication of the principle to the purpose set forth in the patent. But still,
if the principle is stated to be applicable to any special purpose, so as*to
produce any result previously unknown, in the way and for the objects
described, the patent is good. It is no longer an abstract principle. It
comes to be a principle turned to account, to a practical object, and applied
to a special result. It becomes, then, not an abstract principle, which
means a principle considered apart from any special purpose or practical
operation, but the discovery and statement of a principle for a special pur-
pose ; that is, a practical invention, a mode of carrying a principle into
effect. That such is the law, if a well-known principle is applied for the
first time to produce a practical result, for a special purpose, has never been
disputed. It would be very strange and unjust to refuse the same legal
effect, when the inventor has the additional merit of discovering the prin-
ciple, as well as its application to a practical object. The instant that the
principle, although discovered for the first time, is stated in actual applica-
tion to, and as the agent of, producing a certain specified effect, it is no
longer an abstract principle ; it is then clothed with the language of prac-
27
210 LAW OF PATENTS.
in drawing specifications, not to describe the invention as a
mode or device for producing an effect detached from machi-
nery, or from the particular combination or use of matter by
which the effect is produced.^ The danger, in such cases, is,
that the claim will appear to be a claim for an abstract prin-
ciple, or for all possible modes of producing the effect in
question, instead of being, what alone it should be, a claim
for the particular application of the principle which the
patentee professes to have made.
§ 144. This is well illustrated by several cases. In one, the
invention claimed, was " the communication of motion from
the reed to the yarn-beam, in the connection of the one with
the other, which is produced as follows," describing the mode.
The patent was sustained, only by construing it as a claim
for the specific machinery invented by the patentee for the
communication of motion from the reed to the yarn-beam, spe-
cially described in the specification. As a claim for all pos-
sible modes of communicating the motion, &c., it would have
been utterly void.^ In another case, a patent "for an im-
provement in the art of making nails, by means of a machine
which cuts and heads the nails at one operation," was seen
at once not to be a grant of an abstract principle, but of a
combination of mechanical contrivances operating to pro-
duce a new effect, and constituting an improvement in the
art of making nails.^ So too, where the patentee, in a patent
for a machine for turning irregular forms, claimed " the
method or mode of operation in the abstract, explained in the
second article, whereby the infinite variety of forms, described
in general terms in this article, may be turned or wrought,"
and the second article in his specification explained the struct-
tical application, and receives the impress of tangible direction to the actual
business of human life."
1 Barrett v. Hall, 1 Mas. 476.
2 Stone V. Sprague, 1 Story's R. 270.
3 Gray v. James, Peters's Giro. C. E. 394.
THE SPECIFICATION. 211
ure of a machine, by which that mode of operation was car-
ried into effect, and the mode of constructing such a machine
so as to effect the different objects to be accomplished, it was
held that the specification did not claim an abstract principle
or function, but a machine.^ So also, it has been held that
the making of wheels on a particular principle which is de-
scribed in the specification, is the subject of a patent ; ^ and,
where the plaintiff claimed as his invention, " 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 pressure against the back of such chair, as above de-
cribed," it was held not to be a claim to a principle, but to
an application to a certain purpose, and by certain means.^
^ Blanchard v. Sprague, 2 Story's R. 164, 170. In this case, Mr. Justice
Story said : " Looking at the present specification, and construing all its
terms together, I am clearly of ojjinion, that it is not a patent claimed for a
mere function ; but it is claimed for the machine specially described in the
specification ; that is, for a function as embodied in a particular machine,
•whose mode of operation and general structure are pointed out. In the close
of his specification, the patentee explicitly states that his " invention is de-
scribed and explained in the second article of his specification, to -which
reference is made for information of that which constitutes the principle or
character of his machine or invention, and distinguishes it, as he verily be-
lieves, from all other machines, discoveries or inventions known or used
before." Now, when we turn to the second article, we find there described
not a mere function, but a machine of a particular structure, whose modes of
operation are pointed out, to accomplish a particular purpose, function, or
end. This seems to me sufliciently expressive to define and ascertain what
his invention is. It is a particular machine, constituted in the way pointed
out, for the accomplishment of a particular end or object. The patent is for
a machine, and not for a principle or function detached from machinery."
2 Jones V. Pearce, "Webs. Pat. Cas. 123.
3 Minter v. Williams, Webs. Pat. Cas. 134. " Godson, in pursuance of
leave reserved, moved for a nonsuit, on the ground that the specification is
for a principle, the plaintifi" having summed up the whole of his patent in his
claim to the principle, and not to any particular means. Either the plaintiff"
claims a principle, or he does not ; to the former he is not entitled ; and as
to the latter, the defendant has not used the mechanical means of the plain-
tiff"." [Lord Lyndhurst, C. B. : He says : " What I claim as my invention is.
212 LAW OF PATENTS.
§ 145. But, on the other hand, a claim to a principle, to be
carried into etl'ect by any means, without describing an appli-
thc application of a self-adjusting leverage to the back and seat of a chair,
whereby the weight on the scat acts as a counterbalance to the pressure
against the back of such chair, as above described." This is what he claims,
a self-adjusting leverage acting in that way. Then he points out the par-
ticular mode in which that is cHected. The c[uestion, therefore, is, whether
you have infringed that particular method.] [Alderson, B. : All the wit-
nesses proved that there never had been a self-adjusting leverage in a chair
before.] That I admit, and contend that this case is nearly the same as
K. V. Cutler, (1 Stark. 354 ; Webs. Pat. Cas. 76, n.) [Lord Lyndhurst,
C. B. : He says, " I claim the application of a self-adjusting leverage to the
back and seat of a chair," so as to produce such an eifect.] Yes, my lord,
that effect being nothing more than the motion of a lever backwards and for-
wards, producing such an effect. [Lord Lyndhurst, C. B. : It is the appli-
cation of a self-adjusting leverage to the back and seat of a chair, he having
described what that self-adjusting leverage was before. Any application of
a self-adjusting leverage to the back and seat of a chair producing this effect,
that the one acts as a counterbalance to the pressure against the other, would
be an infringement of this patent, but nothing short of that.] l_Alderson, B. :
The difference between this chair and all others, as it appeared in evidence,
was very well described by Mr. Brunton ; he says, this chair acts, (looking
at the one you produced,) this chair acts, but not by a self-adjusting leverage.
By pressing on the back the seat rises, and vice versa, by pressing on the
seat the back rises ; that is what he calls a self-adjusting leverage. In the
other case, you might sit forever, and the back would never rise.] The
plaintiff, by his specification, has appropriated to himself a first principle in
mechanics, namely, the lever, and therefore nobody else may use it. [Lord
Lyndhurst, C. B. : It is not a leverage only, but the application of a self-
adjusting leverage ; and it is not a self-adjusting leverage only, but it is a
self-adjusting leverage producing a particular effect, by the means of which
the weight on the seat counterbalances the pressure against the back.] This
is nothing more than one of the first principles of mechanics. [Parke, B. :
But that, not being in combination before, can that not be patented ? It is
only for the application of a self-adjusting leverage to a chair — cannot he
patent that ? He claims the combination of the two, no matter in what
shapes or way you combine them ; but if you combine the self-adjusting
leverage, which he thus applies to the subject of a chair, that is an infringe-
ment of his patent.] What is the combination ? [Lord Lyndhurst, C. B. :
Why the application of a self-adjusting leverage producing a particular effect.
He says, I do not confine myself to the particular shape of this lever.]
TUB SPECIFICATION. 213
cation of the princijile by some means, is a claim to the ab-
stract principle. As where a specification stated that " It is
claimed as new, to cut ice of a uniform size by means of an
apparatus worked by any other power than human," it was
held that this claim to the art of cutting ice by means of any
other power than human was utterly void.i It is, therefore,
essential that the specification should describe some practical
mode of carrying the principle into effect; and then the sub-
ject-matter will be patentable, because it will be, not the
principle itself, but the mode of carrying it into effect ; and,
on the question of infringement, it will be for the jury to say,
whether another mode of carrying it into effect is not a color-
able imitation of the mode invented by the patentee.^
Kyour lordships translate tliis to mean machine, of course I have no further
argument to urge. [Lord Lyndhurst, C. B. : It is every machine consisting
of a self-adjusting leverage producing that particular effect in a chair.]
That is the extent to which I am putting it. If your lordships say you can,
in favor of the patentee, so read it, that it is the machine and the combina-
tion only that the plaintiff has claimed, then I should be wasting your lord-
ship's time if I argued the matter further. [Lord Lyndhurst, C. B. : Sub-
stantially that combination.] IParke, B. : Therefore a chair made upon
that principle which you have directed to be constructed here, would be an
infringement of his patent, that is, the application of a self-adjusting leverage
to a chair, such a one as you have produced here to-day.] [Lord Lyndhurst,
C. B. : It has the particular effect.] Rule refused.
1 Wyeth V. Stone, 1 Story's R. 271, 285.
2 In Neilson v. Harford, Webs. Pat. Cas. 342, Alderson, B., said : " I
take the distinction 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 specification, 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 discovered that, by condensing steam in a separate
vessel, a great saving of fuel would be effected by keeping the steam cyUnder
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 vessel ; but, then, Mr. Watt carried that practically into effect,
by describing a mode which would effect the object. The difficulty which
214 LAW OP PATENTS.
§ 146. This being the case, the question next arises, whether
it is necessary, after having described the application of the
principle by some mechanical contrivance, or other arrange-
ment of matter, to claim, in the specification, all the other
forms of apparatus, or modifications of matter, by which the
principle may also be applied in order to produce the same
beneficial effect, or whether the patent does not cover all
these, without particular description, by covering the appli-
cation of the principle. When we consider that the subject-
matter of such a patent is, the application of the principle
effected by means of some machinery, or other arrangement,
it will be apparent that the reason why the patentee is bound
to describe some machinery or practical method of making
the application, is in order to show that he has actually ap-
plied the principle, and to enable others to do so after him.
But the real subject of the patent is the practical application
of the principle ; and hence, although the means by which the
patentee has made that application must be described, in
order to show that he has done what he says he has done,
and to enable others to do what he says can be done, yet a
variation of the means and machinery, if it produces the
same beneficial effect, that is, is the same application of the
same principle, does not show that the party making such
variation has not infringed the patent, by making use of that
which exclusively belonged to another, namely, the appli-
cation of the principle to produce a particular effect.
§ 147. Examples will best illustrate this distinction. Min-
ter's patent, for a self-adjusting chair, which has been already
referred to, was a case of the application of a well-known
principle, that of the lever, for the first time applied to a
presses on my mind here, is, that this party has taken out a patent, in sub-
stance like Watt's, for a principle, that is, the application of hot air to fur-
naces, but he has not practically described any mode of carrying it into
effect. If he had, perhaps he might have covered all other modes, as being
a variation."
THE SPECIFICATION. 215
chair. He made no particular claim of shape or form for the
construction of the chair, but showed that if a lever was ap-
plied to the back of the chair, so that the weight of the seat
would act as a counterpoise to the back, in whatever posture
the occupant might be sitting or reclining, a self-adjusting
chair would be obtained. Now, there might be various
modes of constructing a chair on this principle ; but as the
constructing of chairs on this principle was the true subject
of the patent, the court held the making of any chair upon
the same principle of a self-adjusting leverage, was an in-
fringement.i
§ 148. Neilson's patent involved the principle of blowing
furnaces, for the smelting of iron, with a blast of hot air,
instead of cold, and he applied that principle by finding out
a mode by which air may be introduced in a heated state
into the furnace, viz., by heating the air in a close vessel
between the blowing apparatus and the furnace. The speci-
fication, after stating that the air, heated up to red heat, may
be used, but that it is not necessary to go so far to produce a
beneficial effect, proceeded to state that the size of the recep-
tacle would depend on the blast necessary for the furnace,
and gave directions as to that. It then added, " The shape
of the receptacle is immaterial to the effect, and may be
adapted to local circumstances." After great consideration,
it was held that the word " effect " was not meant to apply
to the degree of heat to be given to the air in the heating
receptacle, but that any shape of the heating receptacle would
produce the beneficial effect of passing heated air into the
furnace. This construction settled what the patent was for,
viz., the application of the principle of blowing with hot air,
by means of a vessel in which the air should be heated, on its
passage from the blowing apparatus to the furnace. Conse-
quently, the subject-matter embraced all the forms of appa-
i Minter v. Wells, Webs. Pat. Cas. 134.
216 LAW OF PATENTS.
ratus by which the application of the same principle could be
effected.^
1 Neilson v. Harford, Webs. Pat. Cas. 295, 369. The same patent was
litigated in Scotland, and upon the point of the generality of the claim, as
regards the forms of the apparatus, Lord Justice Clerk Hope made the fol-
lowing observations to the jury : " Is it any objection, then, in the next
place, to such a patent, that terms, descriptive of the application to a certain
specified result, include every mode of applying the principle or agent so as
to produce that specified result, although one mode may not be described more
than another — although one mode may be infinitely better than another —
althouo-h much greater benefit would result from the application of the prin-
ciple by one method than by another — although one method may be less
expensive than another ? Is it, I next inquire, an objection to the patent,
that, in its application of a new prmciple to a certain specified result, it
includes every variety of mode of applying the princijile according to the
generar statement of the object and benefit to be attained ? You will observe,
that the greater part of the defenders' case is truly directed to this objection.
This is a question of law, and I must tell you distinctly, that this generality
of claim, that is, for all modes of applying the principle to the purpose speci-
fied, according to or within a general statement of the object to be attained,
and of the use to be made of the agent to be so applied, is no objection what-
ever to the patent. That the application or use of the agent for the purpose
specified, may be carried out in a great variety of ways, only shows the
beauty and simplicity and comprehensiveness of the invention. But the
scientific and general utility of the proposed application of the principle, if
directed to a specified purpose, is not an objection to its becoming the sub-
ject of a patent. That the proposed applications may be very generally
adopted in a great variety of ways, is the merit of the invention, not a legal
objection to the patent.
The defenders say — you announce a principle, that hot air will produce
heat in the furnace ; you direct us to take the blast without interrupting, or
rather without stopping it, to take the current in blast, to heat it after it
leaves the blast, and to throw it hot into the furnace. But you tell us no
more — you do not tell us how we are to heat it. You say you may heat in
any way, in any sort of form of vessel. You say, I leave you to do it how
you best can. But my application of the discovered principle is, that, if
you heat the air, and heat it after it leaves the blowing engine, (for it is plain
you cannot do it before,) you attain the result I state ; that is the purpose to
which I apply the principle. The benefit will be greater or less ; I only say,
benefit you will get ; I have disclosed the principle ; I so apply it to a speci-
fied purpose by a mechanical contrivance, viz., by getting the heat when in
blast, after it leaves the furnace ; but the mode and manner, and extent of
THE SPECIFICATION. 217
§ 149. In this case, it was also laid down by Parke, B., to
the jury, that the omission to mention in the specification any
heating, I leave to you, and the degree of benefit, on that very account, I do
not state. The defenders say, the patent, on this account, is bad in law.
I must tell you, that, taking the patent to be of this general character, it is
good in law. I state to you the law to be, that you may obtain a patent for
a mode of carrying a principle into effect ; and if you suggest and discover,
not only the principle, but suggest and invent how it may be applied to a
practical result, by mechanical contrivance and apparatus, and show that you
are aware that no particular sort, or modification, or form of the apparatus,
is essential, in order to obtain benefit from the principle, then you may take
your patent for the mode of carrying it into effect, and you are not under
the necessity of describing and confining yourself to one form of apparatus.
If that were necessarj', you see, what would be the result ? Why, that a
patent could hardly ever be obtained for any mode of carrying a newly
discovex-ed principle into practical results, though the most valuable of all
discoveries. For the best form and shape, or modification of apparatus,
cannot, in matters of such vast range, and requiring observation on such a
great scale, be attained at once ; and so the thing would become known, and
so the right lost, long before all the various kinds of apparatus could be
tried. Hence you may generally claim the mode of carrying the principle
into effect by mechanical contrivance, so that any sort of apparatus applied
in the way stated, will, more or less, produce the benefit, and you are not
tied down to any form.
The best illustration I can give you, and I think it right to give you this
illustration, is from a case as to the application of that familiar principle,
the lever to the construction of chairs, or what is called the self-adjusting
lever. (Minter's Patent, Webs. Pat. Cas. 126 and 134.) This case,
which afterwards came under the consideration of the whole court, was
tried in the Court of Exchequer during the presidency of Lord Lyndhurst.
The case was, as to the patent reclining chair, the luxury of which some of
you may have tried ; it had a self-adjusting lever, so that a person sitting or
reclining, — and I need not tell you what variety of postures can be assumed
by a person reclining in a chair, — in whatever situation he placed his back,
there wa3 sufficient resistance offered through means of the lever, to pre-
serve the equilibrium. Now any thing more general than that I cannot con-
ceive ; it was the application of a well-known principle, but for the first
time applied to a chair. He made no claim to any particular parts of the
chair, nor did he prescribe any precise mode in which they should be made ;
but what he claimed was, a self-adjusting lever to be applied to the back of a
chair, where the weight of the seat acts as a counterpoise to the back, in
whatever posture the party might be sitting or reclining. Nothing could be
28
218 LAW OF PATENTS.
thing which the patentee knows to be necessary for the bene-
ficial enjoyment of the invention, is a fatal defect ; but the
omission to mention something which contributes only to
the degree of benefit, provided the apparatus would work
beneficially and be worth adopting, is not a fatal defect.^
§ 150. As it is the duty of the Court to determine, on the
construction of the patent, what the subject-matter is, it is
often necessary to decide whether the patentee claims a
combination of several things, or the distinct invention of
several things, or both. General principles cannot be laid
down for the determination of questions of this kind, de-
pending exclusively on the particular facts. There is, how-
ever, one circumstance that will always be decisive in con-
struing a patent, against a claim for the several things
described in the specification, and that is, that one or more
of them is not new. If this turns out to be the case, the
question may then be, whether the patent can be sustained
for the combination.^ In determining this question it is to
more general. Well, a verdict passed for the patentee, with liberty to have
it set aside ; but Lord Lyndhurst and the rest of the court held, that this
•was not a claim to a principle, but to the construction of a chair on this prin-
ciple, in whatever shape or form it may be constructed. (Minter v. Wells,
Webs. Pat. Cas. 134.) Just so as to the hot blast, only the principle is also
new. The patentee says, " I find hot air will increase the heat in the fur-
nace, that a blast of hot air is beneficial for that end." Here is the way to
attain it — " heat the air under blast, between the blowing apparatus and the
furnace ; if you do that, I care not how you may propose to do it — I neither
propose to you, nor claim, any special mode of doing it; you may give the
air more or less degrees of heat ; but if you so heat it, you will get, by that
contrivance, the benefit I have invented and disclosed, more or less, according
to the degree of heat." This is very simple, very general; but its sim-
plicity is its beauty, and its practical value — not an objection in law." The
Househill Company v. Neilson, Webs. Pat. Cas. C84, 686.
1 NeUsonv. Harford, Webs. Pat. Cas. 317.
X or some of the cases where the question has been between a combina-
tion, or a claim for several distinct things, see Howe v. Abbott, 2 Story's R.
190 ; Ames v. Howard, 1 Sumner, 482 ; Prouty v. Ruggles, 16 Peters, 336 ;
THE SPECIFICATION. 219
be observed, that a patent for a combination of three things
cannot, at the same time, be a patent for a combination of any
two of them. If the subject-matter is the combination of
any given number of things, or processes, or parts, no portion
of the combination less than the whole can be considered at
the same time as being also the subject-matter.^
§ 151. The rule which we have thus endeavored to illus-
trate, which requires the patentee so to describe his inven-
tion as to enable the public to know what his claim is, of
course imposes upon him the duty of not misleading the
public, either by concealing any thing material to the inven-
tion, or by adding any thing not necessary to be introduced.
The ambiguity which we have been considering in the pre-
ceding pages, may be produced involuntarily ; but there is a
special provision of the statute, aimed at the voluntary con-
cealment or addition of any thing material. The statute
enacts it, as one of the defences to an action on a patent,
that the specification " does not contain the whole truth rela-
tive to his invention or discovery, or that it contains more
than is necessary to produce the described effect; which con-
cealment or addition shall fully appear to have been made
for the purpose of deceiving the public." ^ This defence will
be made good, when it appears that the patentee fraudulently
concealed something that he knew to be material to the
practice of his invention, or fraudulently added something
which he knew was not useful, material, or necessary, at the
time when he prepared his specification. If it was subse-
quently discovered not to be useful, material, or necessary,
his patent will not be affected by it.^
S. C. Prouty v. Draper, 1 Story, 5G8 ; Pitts v. Whitman, 2 Story's K. 609 ;
Carver v. Braintree Manuf. Co. 2 Story's R. 432.
1 Prouty V. Draper, 1 Story, 568, 572 ; S. C. Prouty v. Ruggles, 16 Pe-
ters, 336.
2 Act of July 4th, 1846, § 15.
3 See Post, in the chapter on Infringement, and also in the chapter on
Remedy by Action.
220 LAW OF PATENTS.
§ 152. 11. The second rule for preparing a specification is,
To describe the invention in such a manner as to enable
the public to practice it from the specification alone.
§ 153. The statute requires the patentee to describe " the
manner and process of making, constructing, using, and
compounding his invention or discovery, 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 distinguished from
other inventions; and shall particularly specify and point out
the part, improvement, or combination, which he claims as
his own invention or discovery."
§ 154. We have seen that the question, whether a specifi-
cation answers this requisite of the statute, is a question of
fact for the jury; and, although it is not necessary that tech-
nical terms should be made use of in a specification, they
often are made use of, and often require to be explained by
evidence. In judging of a specification, therefore, a distinc-
tion must be taken between that sort of ambiguity which a
person unacquainted with technical terms would encounter,
and the ambiguity which might appear to a person skilled in
the particular art. It is not necessary that the specification-
should contain an explanation level with- the capacity of
every person, which would often be impossible.^ The statute
allows the patentee to address himself to persons of compe-
tent skill in the art, and it requires him to use such full,
clear, and exact terms, as will enable that class of persons to
reproduce the thing described from the description itself. It
1 Per Story, J., in Lowell v. Lewis, 1 Mas. 182.
THE SPECIFICATION. 221
is, therefore, important to ascertain what the rules of con-
struction are, which define what will constitute an ambiguity
or uncertainty to artists and persons skilled in the subject.
§ 155. And first, with regard to the persons whose judg-
ment and apprehension are thus appealed to. They are not
those who possess the highest degree of skill or knowledge
in the particular art or science to which the subject-matter
belongs, nor are they day-laborers ; they are practical work-
men, or persons of reasonably competent skill in the parti-
cular art, science, or branch of industry. If persons of the
highest skill were those whom the law has in contemplation,
the object of a specification, which is to enable competent
persons to reproduce the thing patented, without making
experiments, inventions, or additions of their own, could not
generally be answered.^
§ 156. Secondly, as to the application of their knowledge
and skill, by such persons, to the understanding and carrying
out of the description given by the patentee. The descrip-
tion must be such as will enable persons of competent skill
and knowledge to construct or reproduce the thing described,
without invention or addition of their own, and without
repeated experiments.^ Thus it has been held, that any
1 The King v. Arkwright, Dav. Pat. Cas. 106; Webs. Pat. Cas. 64;
Lowell V. Lewis, 1 Mas. 182; Harmer t'. Playne, 11 East, 101. And see
particularly the observations of Mr. Baron Parke, cited Post, from Neilson
V. Harford.
2 The King v. Arkwright, Webs. Pat. Cas. 66, 67, 69, 70. It will not
do to rely for the correction of errors on the ordinary knowledge of compe-
tent workmen. In ?[eilson v. Harford, the specification contained a parti-
cular passage, which the jury found to be untrue ; but they also found that
any workman of competent knowledge of the subject would correct the
statement. Parke, B. : — " Nor do we think that the point contended for
by Sir William Follett, that if a man acquainted well with the process of
heating air were employed, this misstatement would not mislead him, would
at all relieve the plaintiffs from the difficulty ; for this would be to support
222 LAW OF PATENTS.
material alteration to be made in existing apparatus or
machinery, must be stated, and not left to be supplied by the
workman ; as, with reference to the materials employed, or
their form, or the speed of the parts, or their relative dimen-
sions, where these are material.^ So, too, the specification
is insufficient, if information must be derived from experi-
ments, or from seeing others make the thing described ; ^ or,
the specification by a fresh invention and correction by a scientific person,
and no authority can be found that, in such a case, a specification would be
good. To be valid, we think it should be such as, if fairly followed out by
a competent workman, without invention or addition, would produce the
machine for which the patent is taken out, and that such machine, so con-
structed, must be one beneficial to the public." Webs. Pat. Cas. 37.
1 Ihid. p. 67.
2 Ibid. p. 67, 70, 71. Upon this point Buller, J., said: — "Immison says,
that, from the specification, he should have made a parallel cylinder, and not
a spiral one ; but this is the one used by the defendant. As to the rollers,
it does not appear from the specification some were to go faster than others ;
from the specification, without other sources, it is impossible to say how they
should be made, as there is no scale or plan to work by. A roller is neces-
sary to the feeder, to give regular direction to the work ; it will not answer
without it. From the knowledge he has now, he should add a roller if he
was directed to make the machine. But that does not prove the specifica-
tion to be sufficient ; because if a man, from the knowledge he has got from
three trials, and seeing people immediately employed about it, is able to
make use of it ; if his ideas improve the plan, and not the merit of the specifi-
cation ; if he makes it complete, it is his ingenuity, and not the specification
of the inventor." ..." Upon the other hand, several respectable
people are called upon the part of the defendant, who say they could do it,
but there is this difference in their description ; most, if not every one of
them, have looked at and seen how the machines were worked by the defend-
ant, and have got their knowledge by other means, and not from the specifi-
cation and plan alone ; besides, they admit the manner the defendant works
it is not consistent with the plan laid down, particularly as to the cylinder,
a particular part of the business ; for Moore says this, upon the face of it,
must be taken to be a parallel, whereas that which plainly appears to be
used is a spiral. Besides, after all this, they have spoken, most of them, in
a very doubtful way, particularly Mr. Moore, who qualified his expression
in the way which I have stated to you; and the others qualifying their
expressions, saying they think, upon the whole, they could do it. Suppose
THE SPECIFICATION. 223
as it has also been said, if it requires the solution of a pro-
blem.^ And, generally, a specijfication, to be valid, must be
r
it perfectly clear they could, with the subsequent knowledge they had ac-
quired, yet if it be true that sensible men, that know something of this parti-
cular business, and mechanics in general, cannot do it, it is not so described
as is sufficient to support this patent."
1 In Morgan v. Seaward, Webs. Pat. Cas. 170, 174, Alderson, B., said : —
" If the invention can only be carried into effect by persons setting them-
selves 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 invention,) 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 com-
mon to the trade, but you cannot call upon him to exercise any thing more.
You have no right 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 pre-
judice, either one way or the other ; for it is a fair observation to make, that
both parties here stand, so far as this observation 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 suflicient ;
and, on the other hand, the patentee should not be tripped up by captious
objections, which do not go to the merits of the specification. Now, apply-
ing those criteria to the evidence in the cause, if you shall think that this
invention has been so specified that any competent engineer, having the
ordinary knowledge which competent engineers possess, could carry It into
effect by the application of his skill and the use of his previous 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
band, 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 specificatioti would be bad." See, also,
Gray v. James, 1 Pet. C. C. R. 376.
224 ^^^ OF PATENTS.
such as, when fairly followed out by a competent workman,
without invention or addition, the object of the patent may
be obtained.!
1 In Neilson v. Harford, Webs. Pat. Cas. 295, 313, Parke, B., instructed
the jury as follows : — " Now, then, understanding the meaning of this spe-
cification to be the sense I have given to it, that he claims as his invention
a mode of heating the blast between the blowing apparatus and the furnace,
in a vessel exposed to the fire, and kept to a red heat, or nearly, (and which
description I think sufficient,) of the size of a cubic foot for a smith's forge,
or the other size mentioned, or of any shape, these questions will arise for
your decision. It is said that, understanding it in that sense, the patent is
void, because there are no directions given for any mode of constructing the
instrument. But, understanding the patent in that sense, it seems to me,
that, if you should be of opinion that a person of competent skill (and I will
explain to you what I mean by that,) would, nevertheless, construct such a
vessel as would be productive of some useful and beneficial purpose in the
workinw of iron, that the patent, nevertheless, is good, though no particular
form of vessel is given. Then it is to be recollected that this claim is a
patent-right, a right of heating in any description of vessel ; and, in order
to maintain that right, it is essential to the heating in any description of
vessel, either the common form, the smith's forge, the cupola, or the blast-
furnace, that it should be beneficial in any shape you may choose for all
those three purposes. Now, then, I think, therefore, that this is correctly
described in the patent ; and if any man of common understanding, and
ordinary skill and knowledge of the subject, and I should say in this case
that the subject is the construction of the blowing apparatus ; such a person
as that is the person you would most naturally apply to, in order to make an
alteration of this kind ; if you are of opinion, on the evidence, that such a
person as that, of ordinary skill and knowledge of the subject, (that is, the
construction of the old blowing apparatus,) would be able to construct,
according to the specification alone, such an apparatus as would be an
improvement ; that is, would be productive practically of some beneficial
result, no matter how great, provided it is suflicient to make it worth while
(the expense being taken into consideration,) to adapt such an apparatus to
the ordinary machinery, in all cases of forges, cupolas, and furnaces, where
the blast is used. In that case, I think the specification sufficiently describes
the invention, leaving out the other objection, (to which I need not any
further direct your attention,) that there is not merely a defective statement
in the specification, unless these conditions were complied with, but there is
a wrong statement. But leaving out the wrong statement for the present,
and supposing that it was not introduced, then, if, in your opinion, such a
THE SPECIFICATION. 225
§ 157. Slight defects in a specification will sometimes pre-
vent the object of the patent from being obtained, by any-
competent person who may undertake to apply it, and will
therefore render the patent void, because they create a neces-
sity for the exercise of inventive power, on the part of the
person who thus undertakes to apply the description. As,
the omitting to state the use of tallow, which the patentee
employed for facilitating the manufacture of steel trusses : ^
or, in a patent medicine, stating the ingredients, without stat-
ing the proportions.^ If any thing be omitted, which gives
an advantageous operation to the thing invented, it will
vitiate the patent ; as, the omission to state the use of a mate-
rial, aqua-fortis, which the patentee used himself for obtaining
the effect more rapidly ;3 for the patentee is bound to give
the most advantageous mode known to him, and any circum-
stance conducive to the advantageous operation ; otherwise,
he does not pay the price for his monopoly, because he
person as I have described, a man of ordinary and competent skill, would
erect a machine which would be beneficial in all those cases, and be worth
while to erect. In that case, it seems to me that this specification is good ;
and the patent, so far as it relates to this objection, will be good. It is to be
a person only of ordinary skill and ordinary knowledge. You are not to
ask yourselves the question, whether persons of great skill, — a first-rate
engineer, or a second-class engineer, as described by Mr. Farey — whether
they would do it ; because, generally, those persons are men of great science
and philosophical knowledge, and they would, upon a mere hint in the spe-
cification, probably invent a machine which would answer the purpose
extremely well. But that is not the description of persons to whom this
specification may be supposed to be addressed ; it 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, what-
ever its shape was, according to the terms of this specification, then I think
that this specification was good, and that the patent may be supported so far
as relates to that."
^ Liardet v. Johnson, Webs. Pat. Cas. 53.
2 Ibid, 54, note.
3 Wood V. Turner, Webs. Pat. Cas. 82.
29
226 LAW OF PATENTS.
does not give the public the benefit of all that he knows
himself.!
§ 158. So, too, if a specification directs the use of a sub-
stance, which, as generally known, contains foreign matter,
the presence of which is positively injurious, and does not
show any method of removing that foreign matter, or refer
to any method generally known, or state how the substance
in a proper state can be procured, the specification will be
defective.2
1 Morgan i;. Seaward, Webs. Pat. Cas. 175, 182. See the remarks of
Alderson, B., cited ante. See also, The King v. Arkwright, Webs. Pat.
Cas. 6Q ; Walton v. Bateman, Ibid. 622; Turner v. Winter, Ibid, 81, where
the employment of cheaper materials than tbose mentioned in the specifica-
tion, or the insertion of materials which would not answer, were said to be
sufficient to avoid a patent.
2 Derosne u. Fairie, Webs. Pat. Cas. 154, 162. In this very instructive
case, Lord Abinger, C. B., said : " Upon the main point, however, that re-
specting the bituminous schistus, nothing that I have heard has removed my
original impression, that there was no evidence to show that this process,
carried on with bituminous schistus, combined with any iron whatsoever,
would answer at all. The plaintiff himself has declared, that, in that bitu-
minous schistus which he himself furnished, the whole of the iron was ex-
tracted ; and it appears, that it was admitted by the counsel, that the presence
of iron would not only be disadvantageous, but injurious. Thus, then, it ap-
pearing by the evidence that, in all the various forms in which the article
exists in this country, sulphuret of iron is found, and the witnesses not
describing any known process by which it can be extracted, it appears to me
that the plaintiff ought to prove one of two things — either that the sulphu-
ret of iron in bituminous schistus, is not so absolutely detrimental as to make
its presence disadvantageous to the process, (in which case, this patent
would be good,) or that the process of extracting the iron from it is so sim-
ple and well known, that a man may be able to accomplish it with ease. As
the bituminous schistus which was procured and used, was exclusively that
which was furnished by the plaintiff, not in its original state, but after it had
undergone distillation, and had been made into charcoal in a foreign country ;
and as, in that stage of its preparation, it could not be discovered by examin-
ing it, whether it was made from one substance or another, (the residuum,
after distillation, of almost every matter, vegetable as well as animal, being
a charcoal mixed more or less with other things,) then there is only the
THE SPECIFICATION. 227
§ 159, In like manner, a specification will be defective, if
an article be described by a particular name, the patentee
knowing that the requisite article cannot ordinarily be pro-
cured under the name by which it is described in the specifi-
cation, and it be not stated where it may be procured ; be-
cause the public have not that full and precise information
which they have a right to require.^ A specification will also
be defective, which states that the manner in which a power
is to be applied varies with the circumstances in some mea-
sure, without showing in what the improvement consists, as
distinguished from all former modes of doing the same tiling.^
If obscure terms be employed for the sake of concealment, so
as to induce the belief that elaborate processes are necessary,
when the simplest will succeed, the specification is bad ; ^ and
if a patentee states that he prefers a certain material, having
ascertained that no other will answer, he misleads the public*
§ 160. The rule, however, which forbids a patentee to leave
plaintiff's statement to prove tbat the substance wliicli was furnished by him
and used, was charcoal of bituminous schistus. It appeared, also, that he
had declared to one of the witnesses, that he had extracted all the iron from
the substance so sent, and that it also underwent another process. I am,
therefore, of opinion that, without considering whether or not the patent
would be avoided by the process requiring the use of means to extract the
iron from the bituminous schistus, which were kept secret by the patentee,
he has not shown in this case, that what he has described in the patent could
be used as so described, without injury to the matter going through the pro-
cess. Under all these circumstances, I think that the plaintiff ought to have
given some evidence to show that bituminous schistus, in the state in which
it is found and known in England, could be used in this process with advan-
ta<^e, and, as he has not done that, the defendants are entitled to a nonsuit ;
but, at the same time, as it Is alleged that the plaintiff may supply the defect
of proof, as to the schistus, on a new trial, by other evidence, we are desirous
that the patent, if a good one, should not be affected by our judgment, and
think it right to dii-ect a new trial on the terms which have been stated."
1 Sturzu. De La Rue, Webs. Pat. Cas. 83.
2 Sullivan V. Redfield, Palne's C. C. R. 441, 450, 451.
3 Savory v. Price, Webs. Pat. Cas. 83.
4 Crompton v. Ibbotson, Ibid. 83.
228 LAW OF PATENTS.
the public to find out by experiment how to apply his disco-
very or invention, is subject to one important limitation. If,
for instance, the specification of a patent for a composition
of matter is so drawn, that no one can use the invention,
without first ascertaining by experiment the exact proportion
of the different ingredients required to produce the intended
result, the patent will be void. But it has been determined
by the Supreme Court of the United States, that if, in such a
specification, the patentee gives a certain proportion as the
general rule applicable to the ordinary state of the ingredients,
he may, without the risk of having his patent declared void
by the court, for vagueness and uncertainty, state other and
variable proportions as exceptions to the rule, applicable to
the varying states of the ingredients, although the precise
proportion adapted to a given state of the ingredients, other
than the usual state, can only be ascertained by computing it
from the general rule, after the particular state of the ingre-
dients is ascertained. In such cases, it is for the jury to
decide, on the evidence of experts, whether the general rule
given is susceptible of application, and whether it furnishes
the means of determining the proportions to be used, in the
excepted cases, by the exercise of the ordinary knowledge and
skill of the workman.^
1 Wood V. Underliill, 5 How. S. C. II. 1, 3, 4. The specification in this
case was as follows : " Be it known that I, the said James "Wood, have in-
vented a new and useful improvement in the art of manufacturing bricks and
tiles. The process is as follows : Take of common anthracite coal, unburnt,
such quantity as will best suit the kind of clay to be made into brick or tile,
and mix the same, when well pulverized, with the clay before (it) is moulded ;
that clay which requires the most burning, will require the greatest propor-
tion of coal-dust ; the exact proportion, therefore, cannot be specified ; but,
in general, three fourths of a bushel of coal-dust to one thousand brick will
be correct. Some clay may require one eighth more, and some not exceed-
ing a half-bushel. The benefits resulting from this composition are, the
saving of fuel, and the more general diffusion of heat through the kiln, by
which the contents are more equally burned. If the heat is raised too high,
the brick will swell, and be injured in their form. If the heat is too mode-
rate, the coal dust will be consumed before the desired eflfect is produced.
THE SPECIFICATION. 229
§ 161. But, although it is necessary that a specification
should clearly and fully describe the invention, and should
Extremes are, therefore, to be avoided. I claim as my invention, the using
of fine anthracite coal, or coal dust, "with clay, for the purpose of making
brick and tile as aforesaid, and for that only, claim letters-patent from the
United States." Mr. Chief Justice Taney, delivering the judgment of the
court, said, " The plaintiff claims that he has invented a new and useful im-
provement in the art of manufacturing bricks and tiles ; and states his in-
vention to consist in using fine anthracite coal, or coal dust, "with clay, for
the purpose of making brick or tile ; and for that only, he claims a patent.
And the only question presented by the record is, whether his description of
the relative proportions of coal-dust and clay, as given in his specification, is,
upon the face of it, too vague and uncertain to support a patent. The degree
of certainty which the law requires is set forth in the Act of Congress. The
specification must be in such full, clear and exact terms, as to enable any
one skilled in the art to which it appertains, to compound and use it without
making any experiments of his own. In patents for machines, the sufii-
ciency of the description must, in general, be a question of fact to be deter-
mined by the jury. And this must also be the case in compositions of mat-
ter, where any of the ingredients mentioned in the specification do not
always possess exactly the same properties in the same degree. But, when
the specification of a new composition of matter gives only the names of the
substances which are to be mixed together, without stating any relative pro-
portion, undoubtedly it would be the duty of the court to declare the patent
to be void. And the same rule would prevail where it was apparent that the
proportions were stated ambiguously and vaguely. For, in such cases, it
would be evident, on the face of the specificfition, that no one could use the
invention without first ascertaining, by experiment, the exact proportion of
the different ingredients required to produce the result intended to be
obtained. And, if the specification before us was liable to either of these
objections, the patent would be void, and the instruction given by the Circuit
Court undoubtedly right. But we do not think this degree of vagueness and
uncertainty exists. The patentee gives a certain i^roportion as a general
rule ; that is, three fourths of a bushel of coal-dust to one thousand bricks.
It is true, he also states that clay which requires the most burning, will
require the greatest proportion of coal-dust ; and that some clay may require
one eighth more than the proportions given, and some not more than half a
bushel, instead of three fourths. The two last mentioned proportions may,
however, be justly considered as exceptions to the rule he has stated ; and
as appUcable to those cases only where the clay has some peculiarity, and
differs in quaUty from that ordinarily employed in making bricks. Indeed,
in most compositions of matter, some small difference in the pro2;)ortions
230 LAW OF PATENTS.
give the best process, materials, and methods, known to the
inventor, yet it is not necessary for the patentee to describe
the mode of making every thing which he uses, or detail
known processes, or explain the terms appropriate to the par-
ticular art, or science, or branch of industry to which his in-
vention belongs.! The specification is, as we have seen,
addressed to persons acquainted with the nature of the busi-
ness ; some technical knowledge is presumed on the part of
those who will undertake, after the patent is expired, to
carry out the invention ; and such persons are to be called as
witnesses to explain the language to the jury, while the
patent is in force, and to show that it is capable of being un-
derstood by those to whom H is addressed. Accordingly, it
has been said, that a specification containing scientific terms,
which are not understood, except by persons acquainted with
the nature of the business, is not bad because an ordinary
person does not understand it, provided a scientific person
does ; but a specification using common language, and stating
that by which a common man may be misled, though a
must occasionally be required, since- the ingredients proposed to be com-
pounded, must sometimes be in some degree superior or inferior to those most
commonly used. In this case, however, the general rule is given with
entire exactness in its terms ; and the notice of the variations, mentioned in the
specification, would seem to be designed to guard the brick-maker against
mistakes, into which he might fall if his clay was more or less hard to burn
than the kind ordinarily employed in the manufacture. It may be, indeed,
that the qualities of clay generally diifer so widely, that the specification of
proportions, stated in this case, Is of no value ; and that the improvement
cannot be used with advantage in any case, or with any clay, without first
ascertaining by experiment the proportion to be employed. If that be the
case, then the invention is not patentable. Because, by the terms of the Act
of Congress, the inventor is not entitled to a patent. But this does not
appear to be the case on the face of this specification. And whether the fact
is so or not, is a question to be decided by a jury, upon the evidence of per-
sons skilled In the art to which the patent appertains. The Circuit Court,
therefore, erred In instructing the jury, that the specification was too vague
and uncertain to support the patent, and its judgment must be reversed."
1 Per Lord Abinger, C. B., in Neilson v. Harford, Webs. Pat. Cas. 341-
See also Derosne v. Falrie, Ibid. 154, 167.
THE SPECIFICATION. 231
scientific man would not, when it does not profess to use
scientific terms, and an ordinary man is misled by it, would
not be good.^ And it has been held that, if a specification
contain an untrue statement in a material circumstance, of
such a nature that, if literally acted upon by a competent
workman, it would mislead him, and cause the experiment
to fail, the specification is therefore bad, and the patent in-
validated, although the jury, on the trial of an action for the
infringement of the patent, find that a competent workman,
acquainted with the subject, would not be misled by the
err9r, but would correct it in practice.^
§ 162. The specification need not describe that which is
within the ordinary knowledge of any workman who would
be employed to put up the apparatus ; as, a condenser, in
constructing a gas apparatus.^ So, too, a deviation from the
precise dimensions shown by the specification and model, so
as to make different parts work together, is within the know-
ledge of any workman.* But if the practical application of
1 Ibid.
2 Neilson v. Harford, 8 M. & W. 806 ; S. C. Webs. Pat. Cas. 328.
3 Crossley v. Beverley, Webs. Pat. Cas. 110, note.
4 Morgan v. Seaward, Webs. Pat. Cas. 176. In this case, Alderson, B.,
said to tbe jury, " 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 speci-
fication, which model would not work. The model was a copy of the draw-
in<T, 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-
man of ordinary skUl, 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 Avould 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 wiU feel much difficulty."
232 LAW OF PATENTS.
the invention involves a particular kind of knowledge on the
part of a workman, requiring him to do that which a person of
ordinary engineering skill ought to know how to do, it must,
at least, suggest to him that that thing is to be done, if it
does not specifically point out the mode of doing it.i In like
manner, it is not necessary, in the description of a machine,
to state of what material every part should be made, where
the principle of operation and the effect are the same,
whether the parts be made of one material or another ;2
but, if a particular material be essential to the successful
operation of the machine, as the patentee uses it, he must
direct the use of that material.
§ 163. In the case of machinery, the statute directs the
patentee to accompany his specification with " a drawing or
drawings, and written references, where the nature of the
case admits of drawings." The object of annexing drawings
is, both to distinguish the thing patented from other things
1 In the case last cited, the same learned judge further instructed the jury
as follows : " Mr. George Cottam says, 'It is a common problem to find a
centre from three given points, and a person of ordinary engineering skill
ought to be able to do that.' The question is, whether it ought not to be
suggested to him by the specification, that that is the problem to be solved.
Then Mr. Curtis says, ' I have made wheels on this plan.' You see he made
the two wheels which were sent to the Venice and Trieste Company, but
those were made under the direction of ]\Ir. Galloway, the inventor. Now,
it somewhat detracts from the weight due to his testimony, not as to his'
respectability, but as to the value of his evidence to you, that he had re-
ceived the verbal instructions of Mr. Galloway. It may be that he could do
it because of his practice under Mr. Galloway ; and it must be recollected
that people in other places would not have that advantage. He says, he
■would not have any difficulty in doing it ; and he says, ' I should not con-
sider my foreman a competent workman unless he were able to make the
wheel from the specification and drawings.' He says, ' I could alter the
angle by altering the cranks.' The question is not, whether he could do
that, but whether he could alter the angle to a particular angle by altering
the cranks in a particular way, that is, whether, having the angle given to
him, he could make the alteration that was desired."
2 Brooks V. Bicknell, 3 M'Lean's R. 250, 2G1.
THE SPECIFICATION. 233
known before, and to explain the mode of constructing the
subject of the patent. It has been settled, that the drawings
constitute a part of the specification, when annexed thereto,
and may be used to explain or help out the otherwise imper-
fect description in the specification. So that it is not ne-
cessary that the description should be wholly in writing, but
it maybe partly in writing and partly in drawing; and if,
by a comparison of the words and the drawings, the one will
explain the other sufficiently to enable a skilful mechanic to
perform the work, and to show what is the invention claimed,
the specification will be sufficient.^ And it has been held,
that, in order to make a drawing, when annexed to or accom-
panying a specification, part of the specification, so that the
written description may be read by it, it is not necessary that
the written description should contain references to the draw-
ing; that the direction in the statute, to annex "drawings
and written references," means, that, where references from
the writing to the drawing are necessary to the understanding
of the machine or improvement, they are to be made ; but
that the description of many machines or improvements,
when accompanied by a drawing, may be perfectly under-
stood without references in the description itself.^
§ 164. It was formerly held in England, that the drawings
annexed to specifications ought to be drawn on a scale ; so
that the relation and proportion of the parts to each other,
and the dimensions of the different parts might appear in due
ratio to each other.^ But this rule has been modified ; and
it seems now to be considered, that, if a mechanic can make
the subject of the patent from the drawing in perspective, it
1 Earle v. Sawyer, 4 Mas. 1, 9 ; Bloxam v. Elsee, 1 Car. & P. 558 ;
Brunton v. Hawkes, 4 B. & Aid. 540.
2 Brooks V. Bicknell, 3 M'Lean's E. 250, 261 ; Washburn v. Gould,
3 Story's K. 122, 133.
3 The King v. Arkwright, Dav. Pat. Cas. 114.
30
234 LAW OF PATENTS.
is not necessary that there should be a scale.i Indeed, it is
a necessary consequence of the rule which makes the written
description open to explanation by the drawing, to hold that
the drawing is open to explanation by the written description.
So long as both together enable the public to know and prac-
tice the invention, it must be immaterial whether the drawing
is made upon a scale or not. But if the subject of the patent
could not be made without many experiments, unless the
drawing is upon a scale, then undoubtedly the whole speci-
fication taken together, being the written description and the
drawing, would be defective.
§ 165. It should not be forgotten, that the statute requires
a formal attestation of the specification and drawings. They
must be signed by the inventor and by two witnesses.^ It
has been suggested, that the signing of the specification re-
ferring to the drawings is in effect attesting the drawings.-^
But whether the statute is to be so construed as to require
both the specification and the drawings to be signed, has not
been decided.
§ 166. Provision is made by the thirteenth section of the
Act of 1836, for the amendment of the specification, by the
addition of new improvements made after the patent has
issued. The description of any such new improvement may
be filed in the Patent-Office, and is directed to be annexed by
the commissioner to the original specification, with a certifi-
cate of the time of its being so annexed, and, thereafter, it is to
have the same effect as if it had been embraced in the ori-
ginal specification.*
1 Godson on Patents, p. 137.
2 Act of July 4, 1836, § 6, " which description and drawings, signed by
the inventor and attested by two witnesses, shall be filed in the Patent-
Office."
3 Phillips on Patents, p. 302, 303.
4 Act of 4th July, 183G, § 13.
THE SPECIFICATION. 235
§ 167. A still further provision is made for the amendment
of a redundant specification, by the filing of a Disclaimer.
The Act of 1837, ch. 45, § 7, provides that, " whenever any
patentee shall have, through inadvertence, accident, or mis-
take, 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 ad-
ministrators, executors, and assigns, whether of the whole or
of a sectional interest therein, may make disclaimers 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-Olfice, 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 spe-
cification, to the extent of the interest which shall be pos-
sessed in the patent or right secured thereby, by the disclaim-
ant, and by those claiming by or under him subsequent to
the record thereof. But no such 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."
§ 168. The 9th section of the same act provides as follows :
" (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 pa-
tentee shall have in his specification claimed to be the ori-
ginal and first inventor or discoverer of any material or sub-
stantial 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
236 LAW OF PATENTS.
discovery as shall be truly and bond fide his own : Provided^
it shall be a material and substantial part of the thing pa-
tented, and be definitely distinguishable from the other parts
so claimed without right, as aforesaid. And every such pa-
tentee, his executors, administrators, and assigns, whether of
a whole or a sectional interest therein, shall be entitled to
maintain a suit at law or in equity on such patent, for any
infringement of such part of the invention or discovery as
shall be bond fide his own, as aforesaid, notwithstanding 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, 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."
§ 169. The disclaimer mentioned in the seventh section,
has been held to apply solely to suits pending when the dis-
claimer was filed in the Patent-Office ; and that mentioned in
the ninth section, to suits brought after the disclaimer is so
filed.i
1 Wyeth V. Stone, 1 Story's R. 273, 293. In this case, Mr. Justice Story
thus expounded the statute: "We come, then, to the remaining point,
whether, although under the Patent Act of 1793, ch. 55, the patent is abso-
lutely void, because the claim includes an abstract principle, and is broader
than the invention : or, whether that objection is cured by the disclaimer
made by the patentee, (Wyeth,) under the act of 183 7, ch. 45. The seventh
section of that Act provides, ' That, whenever any patentee shall have,
through inadvertence, accident, or mistake, made his specification 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 or justly his
own, any such patentee, his administrators, executors, or assigns, whether of
THE SPECIFICATION. 237
the Avliole or a sectional part thereof, 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, &c., &c. And such disclaimer shall be thereafter
taken and considered as a part of the original specification, to the extent of
the interest which shall be possessed in the patent or right secured thereby
by the disclaimant, &c.' Then follows a proviso, that ' no such 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.'
The ninth section provides, ' That whenever, by mistake, accident, or inad-
vertence, and without any wilful default, or intent to defraud or mislead the
public, any patentee shall have, in his specification, claimed to be the first
and original 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
shaU be deemed good and valid for so much of the invention or discovery as
shall be truly and iond fide his oivn ; provided it shall be a material and
substantial part of the thing patented, and shall be definitely distinguishable
from the other parts so claimed without right, as aforesaid.' Then follows a
clause, that, in every such case, if the plaintiff recovers in any suit, he shall
not be entitled to costs, ' 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 : ' with a proviso, ' That
no person bringing any such suit shall be entitled to the benefits of the pro-
visions contained in this section, who shall have unreasonably neglected or
delayed to enter at the Patent-Office a disclaimer as aforesaid.'
" Now, it seems to me, that, upon the true construction of this statute, the
disclaimer mentioned in the seventh section must be interpreted to apply
solely to suits pending, when the disclaimer is filed in the Patent-Office ; and
the disclaimer mentioned in the ninth section to apply solely to suits brought
after the disclaimer Is so filed. In this way, the provisions harmonize with
each other ; upon any other construction they would seem, to some extent,
to clash with each other, so far as the legal effect and operation of the dis-
claimer is concerned.
" In the present case, the suit was brought on the first of January. 1840,
and the disclaimer was not filed until the twenty-fourth of October, of the
same year. The proviso, then, of the seventh section, would seem to pre-
vent the disclaimer from affecting the present suit in any manner whatsoever.
The disclaimer, for another reason, is also utterly without effect in the pre-
sent case ; for it is not a joint disclaimer by the patentee and his assignee,
Tudor, who are both plaintiffs in this suit ; but by Wyeth alone. The dis-
claimer cannot, therefore, operate in favor of Tudor, without his having
joined in it, in any suit, either at law, or in equity. The case, then, must
stand upon the other clauses of the ninth section, independent of the dis-
claimer.
238 LAW OF PATENTS.
" This leads me to say, that I cannot but consider, that the claim made in
the patent for the abstract principle or art of cutting ice, by means of an
apparatus ■worked by any other power than human, is a claim founded in
inadvertence and mistake of the law, and without any wilful default or intent
to defraud or mislead the public, within the proviso of the ninth section.
That section, it appears to me, was intended to cover inadvertences and mis-
takes of the law, as well as inadvertences and mistakes of fact ; and, there-
fore, without any disclaimer, the plaintiffs might avail themselves of this
part of the section, to the extent of maintaining the present suit for the
other parts of the invention claimed, that is, for the saw and for the cutter,
and thereby protect themselves against any violation of their rights, unless
there has been an unreasonable neglect or delay to file the disclaimer in the
office. Still, however, it does not seem to me, that a court of equity ought
to interfere, to grant a perpetual injunction in a case of this sort, whatever
might be the right and remedy at law, unless a disclaimer has been in fact
filed at the Patent-Office before the suit is brought. The granting of such
an injunction is a matter resting in the sound discretion of the Court ; and
if the Court should grant a perpetual injunction before any disclaimer is
filed, it may be, that the patentee may never afterwards, within a reasonable
time, file any disclaimer, although the Act certainly contemplates the neg-
lect or delay to do so, to be a good defence both at law and in equity, in
every suit, brought upon the patent, to secure the rights granted thereby.
However, it is not indispensable in this case to dispose of this point, or of
the question of unreasonable neglect or delay, as there is another objection,
which, in my judgment, is fatal, in every view, to the maintenance of the
suit in its present form."
Note. — The following synopsis of the. leading English cases on the sub-
ject of specifications may be found convenient to the reader, although they
are cited in the foregoing chapter. The references are to the pages of
Webster's Patent Cases ; but the same cases may be found in other reports,
by reference to the Index of Cases prefixed to this work.
The object of the specification is. As, the omitting to state the use of
that, after the term has expired, the tallow, which the patentee employed
public _ shall have the benefit of the for facilitating the manufacture of
invention. Arkwright v. Nightingale, steel trusses. Ibid.
Webster's Pat. Cas. 61. Or, the omitting to state the use
The meaning of the specification of a material, aquafortis, which the
is, that others may be taught to do patentee used for obtaining the effect
that for which the patent is granted, more rapidly. Wood v. Zimmer, 82.
and, if any material part of the pro- Or, if the patentee employ cheaper
cess be omitted, the specification is articles than those specified,
bad. Liardet v. Johnson, 53. Turner v. Winter, 81.
THE SPECIFICATION.
239
It is required, as the price of the
monopoly, that the patentee should
enrol, to the very best of his know-
ledge and judgment, the fullest and
most sufficient description of the par-
ticulars on -which the effect depended,
that he was enabled to do.
Liardet v. Johnson, 54.
The most advantageous mode
known to the inventor, and any cir-
cumstance conducive to the advanta-
geous operation, must be stated.
Morgan v. Seaward, 175, 182.
The specification is intended to
teach the public ; it must fully dis-
close the secret, and contain nothing
materially false or defective.
R. v. ArkicrigJit, 66.
The specification must give the
best mode known to the inventor,
and must not mislead.
Walton v. Bateman, 622.
The specification ought to be so
clearly worded, as to enable any
person of sufficient understanding on
the particular subject, to attain the
result, without doubt or difficulty ; it
being the price paid by the inventor
for keeping the public out of the
manufacture.
Gibson V. Brand, 629.
Some knowledge is requisite in
the person reading the specification,
which is addressed to artists of com-
petent skill in the particular manu-
facture. Biclford v. Skeices, 219.
The specification is addressed to
persons of skill in the subject-matter
and particidar trade. Arkierigld v.
Nightingale, 61 ; Elliott v. Aston, 224.
The specification must be sufficient
for persons skilled in the subject.
Huddart \. Grimshaic, 87.
The general test of sufficiency of
the specification, for mechanics or
persons acquainted with the subject,
limited by the condition, that they
should be able to make the machine,
by following the directions of the
specification, without any new inven-
tions or additions of their own.
Px.. V. Arkicright, 66.
Any material alteration to be made
in existing apparatus or machines,
must be stated. Ibid. 67,
As, with reference to the materials
employed, or their form, or the speed
of the parts, or their relative dimen-
sions. Ibid.
The representation and description
of parts of no use, or without distin-
guishing to what purposes they are
to be applied, or for the purpose of
puzzling, will render the patent void,
the specification not affording that
fair, full, and true discovery, which
the public have a right to demand in
return for the monopoly. Ibid. 69.
If that which is shown will not do
of itself, but requires something to be
added, the specification is bad.
Ibid. 70.
If different parts are to move with
different velocities, that must be
stated. Ibid.
If more parts be inserted than are
necessary, as ten, where four are
sufficient, the specification is void.
Ibid.
Information must not be requisite
from other sources. Ibid.
As, where a workman has learned
to make the machine from seeing
others make it. Ibid.
The specification must be such as
can be followed by a person possess-
ing the ordinary knowledge common
to the trade, without invention or
addition, or setting himself to solve a
problem. Morgan v. Seaicard, 174.
Information acquired from other
sources than the specification, is to
be excluded ; but reasonable data
must be given. Ibid. 179.
All extreme or exaggerated cases
must be discarded, and the sub-
stance of the thing looked to.
Ibid. 180.
It is not sufficient that a skilful
person should be able to find it out ;
the invention must be effected by the
directions contained in the specifica-
tion. Ibid. 185.
The specification cannot be sup-
ported by the fresh invention and
correction of a scientific person. To
be valid, it must be such as, when
fairly followed out by a competent
workman, without invention or addi-
tion, the object of the patent may be
obtained. Neilson v. Harford, 3 71.
By competent skill and knowledge,
240
LAW OF PATENTS.
are meant ordinary skill and know-
ledge, such as that possessed by prac-
tical workmen ; not the degree of
skill which would enable a person, on
a mere hint, to invent a machine for
the purpose. Ibid. 314.
The specification, being for the
benefit of the trade, must be sufficient
for workmen competent to the ordi-
nary business of that trade ; first-rate
engineers and common laborers must
be excluded.
The HouseJiill Co. v. Neilson, 692.
The compositions and proportions,
where materials and quantity are of
the essence of the invention, must be
given. Liardet v. Johnson, 54, n.
As, in the case of a medicine or
paint. Ibid.
A specification which merely sug-
gests something, so as to throw on
the public the trouble of experiment,
is bad. Morgan v. Seaward, 1 75.
A deviation from the precise di-
mensions shown, so as to make differ-
ent parts work together, is within the
knowledge of any workman.
Ibid. 1 76.
The omission to give directions, as
to matters within the knowledge of
a workman, who would, under ordi-
nary circumstances, be employed to
carry out the invention, is no ground
of invalidity.
Crossley v. Beverley, 110, n. n.
The omission to mention in the
specification any thing which the
patentee knows to be necessary for
the beneficial enjoyment of his inven-
tion, is a fatal defect.
Neilson v. Harford, 317, 321.
But the omission to mention some-
thing which contributes only to the
degree of the benefit, provided the
apparatus described would work be-
neficially and be worth adopting, is
not a fatal defect. Ibid. 317.
The omission to mention the use
of water twyres will not invalidate
the specification, it appearing that a
beneficial efiect could be produced
without such apparatus, and that any
person acquainted with smelting,
knows that, if the heat is increased,
recourse must be had to some method
of guarding the pipe, and that the
water twyre was well known as one
mode for that purpose Ibid. 318.
If the apparatus described can be
used beneficially in its simplest form,
it is no objection that great improve-
ments may have been made.
Ibid. 317.
Not necessary that the apparatus
described should produce the great-
est amount of benefit.
The Househill Co. v. Neilson, 695.
It is sufficient, if persons acquainted
with heating air, would construct an
apparatus productive of -some benefit.
Ibid. 694.
If experiments are necessary for
the production of any beneficial ef-
fects, the patent is void.
Neilson v. Harford, 320.
As, if a particular temperature be
essential and not stated. Ibid. 318.
The specification need not describe
that which is within the knowledge
of any workman who would be em-
ployed to put up the apparatus.
Crossley v. Beverley, 110, n. n.
As, a condenser, in constructing a
gas apparatus. Ibid.
A patentee is bound to insert in
his specification the most improved
means of carrying out his invention,
with which he is acquainted at the
time of the enrolment of the specifi-
cation. Ihid. 116.
As, the different mechanical con-
trivances for carrying out the prin-
ciple in respect of which he applied
for his patent. Ibid.
If it were otherwise, and if such
contrivances must be the subject of
fresh letters-patent, the monopoly
would be prolonged. Ibid.
Time is allowed for the specifica-
tion, in order that the invention may
be brought to its greatest state of
perfection. Ibid. 117.
All improvements made during the
interval for enrolling the specification
should be described. Ibid.
The insertion or representation of
any thing as important, not being so
in fact, will vitiate the specification.
Iluddart v. Grimshaw, 93.
Letters-patent are void if the spe-
THE SPECIFICATION.
241
cification be ambiguous, or give di-
rections which tend to mislead the
pubHc. Turner v. Winter, 77.
As, where a generic term, " fossil
salt," is employed, but one species
only, " sal gem," will succeed.
Ibid. 80.
Or, where one of several articles
named will not succeed. Ibid. 81.
Where the specification directed
the use of a subject, bituminous
schistus, saying, the carbonization
has nothing particular, only it is con-
venient, before carbonization, to se-
parate the sulphates of iron which
are mixed with it, and it appeared
that all bituminous schistus had such
sulphates, and that no easy means
were generally known of removing
them, and that, without their removal,
the schistus could not be efficaciously
used ; the specification held insuffi-
cient. Derosne v. Fairie, 15 7.
If a substance, as generally known,
contain foreign matter, the presence
of which is positively injurious, the
plaintiff must show that a method of
easily removing such foreign matter
is known. Ibid. 162.
Aliter, if such foreign matter inter-
fere to a limited extent only with the
degree of benefit. Ibid. 159.
The substance named must answer
the purpose proposed beneficially.
Ibid. 163, 164.
A specification must state at least
one method which will succeed.
Ibid. 165.
All the substances which will an-
swer the purpose of the invention
need not be stated, only the public
must not be misled.
Bickford v. Skeioes, 218.
But, if a whole class of substances
be stated as suitable, and any one of
them will not answer, the specifica-
tion is bad, as misleading the pubhc.
Ibid. 218.
The plainest and most easy way
of production must be stated, and, if
obscure terms be employed for the
sake of concealment, so as to induce
the belief that elaborate processes are
necessary when the simplest will suc-
ceed, the specification is bad.
Savory v. Price, 83.
31
If a patentee states that he prefers
a certain material, having ascertained
that no other would answer, he mis-
leads the public.
Crompton v. Ibbotson, 83.
If an article be described by a par-
ticular name, the patentee knowing
that the requisite article cannot be
ordinarily procured under the name
by which it is described in the speci-
fication, and it be not stated where it
may be procured, the public have
not that full and precise information
which they have a right to require.
Sturtz V. De La Rue, 83.
A studied or manifest ambiguity
will vitiate.
Galloioay v. Bleaden, 524.
It is no objection, prima facie, to a
specification, that it contains terms of
art requiring explanation.
Derosne v. Fairie, 157.
A specification containing scientific
terms, which are not understood ex-
cept by persons acquainted with the
nature of the business, is not bad,
because an ordinary person does not
understand it, provided a scientific
person does ; but a specification using
common language, and stating that by
which a common man may be misled,
though a scientific man would not,
when it does not profess to use scien-
tific terms and an ordinary man is
misled by it, would not be good.
Neihon v. Harford, 341.
If the invention be an improve-
ment, it must distinctly appear on the
face of the specification as such, and
not as an original discovery.
Hill V. Thompson, 24 7.
The specification must inform the
public what is new and what old.
McFarland v. Price, 74.
A person is to be warned by the
specification against the use of the
particular invention. Ibid.
A specification describing a ma-
chine as a whole is sufficient, though
the invention be an improvement on
a former patent.
Harman v. Playne, 75.
The specification is to warn the
public of what is prohibited, and to
teach them the invention.
Morgan v. Seaivard, 1 73.
242
LAW OF PATENTS.
The specification must distinguish
between what is new and old ; if not,
the presumption is, that the patent
extends to the whole and to each
part. Carpenter v. Smith, 532.
A mistake in a specification does
not, of necessity, vitiate letters-
patent; as, where air was called an
imponderable substance, or sulphur
a mineral. Neilson v. Harford, 340.
Semble, that a mistake in respect
of a matter foreign to the invention,
and which cannot mislead, will not
vitiate the specification. Ibid. 353.
The inaccurate use of words, if
explained by the context, will not
vitate a specification. Ibid. 369.
Sernble, that the evidence of a per-
son of ordinary skill cannot be al-
lowed, to contradict or correct the
plain grammatical sense of one part
of the specification. Ibid. 329.
The sufficiency of the specification
in matters of description, is a ques-
tion for the jury.
Walton V. Potter, 595.
In the absence of evidence on the
part of the defendants, that persons
have been misled by the specifica-
tion, it is sufficient for the plaintifi" to
call persons who say, that to them it
is clear. Cornish v. Keene, 502.
The attention of the plaintiff must
be fully and clearly directed to the
objection to the specification.
Bickford v. Skewes, 219.
The finding of the jury on an
objection as to the distinctness of
the specification, is conclusive.
Ibid. 220.
Note. — I borrow from Mr. Godson's excellent work the following sum-
mary of the defects common in specifications, as they are treated in the Eng-
hsh law. The specification is bad, when
1. The terms are ambiguous.
2. Necessary descriptions arc omitted.
3. Parts claimed are not original.
4. Things are put in to mislead.
5. The draioings are incorrect.
6. One of different ways, or different ingredients named, fails.
7. One of several effects specified is-iiot produced.
8. The things described are not the best Jcnotvn to the patentee.
If the terms in which the description of the subject is expressed be ambi-
guous, if the words are used in any other sense than that in which they are
generally understood, the invention may be wholly or partially concealed ;
and, therefore, on that account, the grant would be invalid.
Taking the title, patent and specification of Campion's letters-patent ^
together, it was very difficult to say whether the word " whatever" referred
to the total exclusion of starch, or whether when combined with the words
" without any starch," it was merely a description of the thread of the sail-
cloth which had been improved. For that ambiguity the patent was declared
to be void.
It is mentioned in Turner's specification,^ " take any quantity of lead, and
1 Campion v. Benyon, 3 B. & B. 5.
* Turner v. Winter, 1 T. R. 602.
THE SPECIFICATION. 243
calcine it ; or minium or red lead," whence it was inferred that the lead
only was to be calcined, and a doubt arose whether the minium or the red
lead was to be calcined. Such an objection, if the only one, would probably
not invalidate a grant, though a similar ambiguity is carefully to be guarded
against. In that case, however, calcination would not produce the effect ;
fusion was necessary.
It was objected to the same patent, that the substance intended to be pro-
duced, and called white lead, could only be applied to a few of the purposes
of white lead. The answer that it was not intended to make white lead was
not sufficient. In the specification, the inventor should have stated that the
effect produced a substance similar to white lead, and then have set forth the
useful purposes to which this new substance might be converted ; and ought
not to have misapplied the teim white lead.
There was also another word in that specification which was not intelli-
gible. It was directed that fossil salt should be used. Now, fossil salt is a
genus having many species, and only one of the latter, sal gem, would
answer the intended purpose. For those reasons the patent was declared to
be void.
If a term have a technical meaning, or one differing in the usage of trade
from the ordinary sense annexed to it, the word may be received in its per-
verted sense; and if the manufacture be otherwise intelligibly described, a
mere verbal inaccuracy will not vitiate the patent ; i but, if a word be not
used in its common acceptation, then it should be explained. Thus, in
^Vlleeler's specification ,2 it appeared, that by the word " malt," the patentee
meant barley fully prepared for making beer ; but that the word " malt," in
its common acceptation, is applied to the grain as soon as it has germinated
by the effect of moisture, and before it has been dried ; and it was held that
he ought to have explained his meaning.
In another case,^ one of the ingredients was a white substance imported
from Germany, and which could be purchased at one or two color shops in
London.
The only description or denomination given to it in the specification was,
" The purest and finest chemical white lead ; " but there was no article
known by that denomination in the trade, or in the shops where white lead
is usually sold, and the finest white lead that could be obtained would not
answer the purpose. The specification was held to be insuflicient.
If, in a manufacture, something well known be used, and the inventor
give a design of it, which appears to be of a different thing, though he means
that the thing known should be used, the specification is in terms ambigu-
1 2 Hen: Bla. 485.
2 King V. Wheeler, 2 Barn. & Aid. 349.
3 Sturz V. De La Rue and others, 5 Russell's Rep. 322.
244 LAW OF PATENTS.
ous ; and it "will be considered as being worded with an endeavor to conceal
the invention and deceive the public. Thus, Mr. Arkwright, although he
used the old spiral cyUnder in his machine, so managed the drawing and
description, that, on the face of the specification, it appeared that he intended
to use a parallel cylinder, i
The several distinct parts of the subject of a patent may be divided into
the new and the old. In a specification, aU that is new must of course be
clearly elucidated. The old parts may be distinguished as they are material
and immaterial in producing the desired effect. Any particular thing,
although in common use, when it is applied in a new manner to the produc-
tion of a new effect, is material, and becomes a part of the substance of the
invention, and must be described. And if it is not mentioned, and its use
pointed out, the description will be defective. It is only the well-known and
immaterial old parts that need not be described.-
A material alteration, from rollers in general, had been made in the rollers
of Arkwright's machine, of which no description was given, and it was con-
sidered as wilfully concealed.^ Mr. Arkwright's machine was intended to
prepare for spinning, not only cotton, but silk, flax, and wool ; yet he de-
scribed all the parts of it as one entire instrument. He did not state, as he
should have done, that the hammer in the front of it was only to be used in
preparing flax.4 Other parts which were put on or off as occasion required,
appeared as though they were fixed, and to be used in every stage of
manufacturing each of the articles.^ Those omissions in the description were
considered of sufficient importance to invalidate the patent.
Every part of the invention which is new must be accurately described, as
to the manner in which it is to operate. In the case of Felton v. Greaves,^
the patent was granted for a machine for an expeditious and correct mode of
giving a fine edge to knives, razors, scissors, and other cutting instruments.
The machine described in the specification consisted of two circular rollei-s
of steel made rough, like files, and the instrument to be sharpened was
passed backward and forward in an angle formed by their intersection. It
appeared in evidence that if the machine was intended to give a fine edge to
scissors, that the one roller should be smooth.
In the specification it was also stated that other materials besides steel
might be employed, and it appeared that if Turkey stones, instead of steel,
were used for both the rollers, it was possible to succeed with scissors. The
Lord Chief Justice observed : "The specification describes both the rollers
1 Printed Case, 175; Dav. Pat. Cas. 113. Gods, on Pat. 54.
2 Hill V. Thompson, 2 B. Moore, 450, 455, &c.
3 Printed Case, 173; Dav. Pat. Cas. 107.
* Kmg V. Arkwright, Printed Case, 175 ; Dav. Pat. Cas. 117.
5 King V. Arkwright, Printed Case, 173 ; Dav. Pat. Cas. 109.
6 3 Car. & Payne's Eep. 611.
THE SPECIFICATION. 245
as files. It is not stated either that the rollers must be one rough and the other
smooth, or that Turkey stones must be substituted for the files, when it is
intended to sharpen the edges of scissors. The specification is insufficient."
There are persons who imagine that if they introduce the words " and for
other useful purposes," into the title of the patent, that the title must be good ;
and that if they insert the words " other materials may be used," or, " any
other substance from which the thing can be obtained," into the description,
that it is impossible to find fault with the specification. There is not a
greater error. In the last case it appeared that the words " other materials,"
did not assist the description, or save the specification.
In addition to the old authorities, another case ^ has been decided, by which
it appears that the words " any other substance " had been nearly fatal to an
important patent. In the introductory part of the specification, Clegg, the
original patentee, used these words : " My improved gas-apparatus is for
the purpose of extracting inflammable gas by heat from pit-coals, tar, or any
other substance from which gas or gases, capable of being employed for illu-
mination, can be extracted by heat ; " and then he went on to mention the
other inventions. In the description of the retort, he called it " a horizontal
flat retort, in which coal, or other materials capable of producing Inflam-
mable gas, are heated, and the gas extracted by distillation ; and in the
course of it he spoke of the " coal or other substance " being " spread In a
thin layer." Throughout the description of the retort, and the explanation
of the drawings, he always spoke of " coal," or " coal or coke," or " coal or
other substance " only.
It appeared that the retort was incapable of obtaining gas, except very
imperfectly, or by considerable modifications, from oil. The date of the
patent was December 9, 1815, that of the specification, June 8, 1816. At
these periods It was known, as a philosophical fact, that gas was producible
from oil ; but it had not been proposed to manufacture such gas for purposes
of Illumination. Some speculations, indeed, were then going on, and a
patent was obtained about the same time for making it ; and the manufacture
was subsequently brought into use, though not very generally.
The counsel for the defendant submitted that the unfitness of the retort for
making gas from oil was fatal to the patent, and contended that it was the
duty of the patentee not to overstate the limits within which his invention
would be useful, that no person may be led to unavailing expense in trying
it upon purposes for which it Is unfit.
Lord Tenterden said : " I must look at the whole of the specification
together ; and, doing so, I think it is evident that it only represents the retort
as suited to materials of the same kind as coal. I am of opinion, also, that I
ought to understand the " other substances " mentioned, to signify substances
Crossley v. Beverley, 1 Mood. & Malk, 283 ; and sec 3 Car. & Payne, 513.
246 LAW OF PATENTS.
then knoion to be available for the purpose of illiitninating with gas, not
every thing which will burn with a flame : for all these, in a certain sense,
will produce gas. It is clear, on the evidence, that oil was not then gene-
rally considered as such a substance ; and the fact that some speculations
were going on at the time, with respect to its being so, will make no differ-
ence. The patentee cannot be required to foresee the success of these spe-
culations, if they have succeeded ; but I must consider him, as a practical
man, to have spoken of things which practical men then treated as usable
for the purpose specified.
On both grounds, therefore, I must decide against the objection. The law
is severe enough, in breaking up patents altogether for a fault in any part of
them, without straining it, in favor of such an objection.
This position of law was further illustrated in the case of Crompton v.
Ihhotson.^ The patent was for an improved method of dr}nng and finishing
paper. The specification contained these words : " the invention consists in
conducting paper, by means of a cloth, or cloths, against a heated cylinder :
which cloth may be made of any suitable material, but 1 prefer it to be made
of linen warp and woollen weft ; which cloth is shown in the drawing by blue
lines."
It appeared by the evidence of the plaintiff's witness, that, as to the con-
ducting medium, he had tried several things, but he was not aware of any
thing that would answer the purpose, except the material which the patentee
said he preferred. TVhereupon Mr. Justice Bayley directed a nonsuit. A
motion was made to set aside that nonsuit. It was refused, and Lord Tent-
erden said, the patent was obtained for the discovery of a proper conducting
medium. The plaintiff found, after repeated trials, that nothing would serve
the purpose except the cloth described in the specification ; yet he says the
cloth may be made " of any suitable material," and merely that he prefers
the particular kind there mentioned. Other persons, misled by the terms of
this specification, may be induced to make* experiments which the patentee
knows might fail, and the public has not the full and entire benefit of the
invention ; the only ground on which the patent is obtained. But this rule
must not be extended to the rudiments of a science, nor to the mere incidents
of a subject. If gold were directed to be used in a state of fusion, the man-
ner and utensils for putting it in that state need not be mentioned.^
That the new parts of the subject may be more clearly seen and easily
known, the patentee must not only claim neither more nor less than his own
invention, but he vnustnot appear, even unintentiondly, to appropriate to him-
self any part which is old, or has been used in other manufactures.3 Those
1 Danson and Lloyd's Eep. 33.
'■^ Turner v. Winter, 1 T. K. 602. Gods, on Pat. 120.
3 Huddart v. Grimshaw, Dav. Pat. Cas. 295. Ellenborough, C. J. : " As to the
THE SPECIFICATION. •. 247
parts that are old and immaterial, or are not of the essence of the invention,
should either not be mentioned, or should be named only to be designated as
old. The patentee is not required to say that a screw or a bobbin, or any
thing in common use is not part of his discoverj- ; yet he must not adopt the
invention of another person, however insignificant it may appear to be, with-
out a remark. If any parts are described as essential, without a protest against
any novelty being attached to them, it will seem, though they are old, that
they are claimed as new.i The construction will be against the patentee,
that he seeks to monopoHze more than he has invented, or that, by dwelling,
in his description, on things that are immaterial or known, he endeavors
to deceive the public, who are not to be deterred from using any thing
that is old, by its appearing in the specification as newly invented. They
are to be warned against infringing on the rights of the patentee, but are not
to be deprived of a manufacture which they before possessed.^ It seems,
bobbins, they are not worth mentioning ; the springs and tubes are the things in
which it should seem the principal originality of the invention consists. It is
contended that the springs are not an essential part of the invention ; if they are
enrolled as an essential part, whether they are so or not, it would certainly go to
destroy this patent, because no deceptive things are to be held out to the public ;
those that are material are to be held out as material : according to the evidence
of Mr. Eennie, they are material. It appears to me that the springs in Belfour
and Huddart's machine both produce the same end, to regulate the tension. Now,
if it is a spring to regulate the tension of the yarn, which is essential to be regula-
ted, it does seem to me, but it is for your judgment to say, whether it is a material
part of the invention, and relied upon as such, as it should seem it is by both ; and,
if it is the same, then that which lias been communicated by Mr. Belfour, Mr. Hud-
dart cannot take the benefit of.
It is for you to say, for that is the substance of the case, as to the invention of
the patent, whether any essential part of it teas disclosed to the public before. If you
think the same effect in substance is produced, and that the springs in Mr. Bel-
four's, by producing tension, obtains a material end in the making of ropes in this
way proposed, and that it is, in substance, the same as in the other, this patent cer-
tainly must, upon principles of law, fall to the ground. If you think it is not the
same, or if you think it is not material, though we have had the evidence of Mr.
Eennie upon its materiality ; if you think this patent has been for a new inven-
tion, carried into eflect by methods new and not too large beyond the actual in-
vention of the party, in that case the patent may be sustained. But, if rou think
otherwise, in point of law or expediency, the patent cannot be sustained."
The verdict was for the plaintiff, with nominal damages ; but it is evidently at
variance with the opinion of Lord EUenborough.
' Boville 1-. Moore, Dav. Pat. Cas. 404 ; and see Manton v. Parker, Dav. Pat.
Cas. 329.
- Dav. Pat. Cas. 279, and 3 Meriv. 629.
248 LAW OF PATENTS.
therefore, to be the safest way in the specification to describe the -whole sub-
ject, and then to point out all the parts which are old and well known.
In the case of Campion v. Benyon,^ it appeared that the patent was taken
out " for an improved method of making sail-cloth, without any starch
whatever^ The improvement or discovery consisted in a new mode of tex-
ture, and not in the exclusion of starch ; and the advantage of excluding
that substance had been discovered and made public before that time. The
Court held that the patent was void, as claiming, in addition to what the
patentee had discovered, the invention of something' already made public.
Mr. Justice Park observed : " In the patentee's process, he tells us that the
necessity of using starch is superseded, and mildew thereby entirely pre-
vented ; but, if he meant to claim as his own, an improved method of texture
or twisting the thread to be applied to the making of unstarched cloth, he
might have guarded himself against ambiguity &?/ disclaiming, as his own dis-
covery, the advantage of excluding starch."
Upon the same principles of reasoning, but certainly with much more
force, if there be several things specified that may be produced, and one of
them is not new, the whole patent is void. This point underwent a very full
discussion in the case of Brunton v. HaicJces.^
If things useless and unnecessary have been mixed with a substance, or
attached to a machine, though the terms are intelligible, and every necessary
description has been introduced, and the parts claimed are only those which
have been newly invented, the patent is void. Of this nature are those
parts that have never leeti used by the patentee. It is from that circumstance
inferred, that they have been introduced to overload the subject, and, by
clouding the description, to mislead the public, and conceal the real inven-
tion. Thus, in Arkwright's machine, the introduction of several things,^
which were never used by him, was considered as done merely to mislead
the public.
If any considerable part of a manufacture be unnecessary to produce the
desired effect, it will be presumed that it was inserted only with a view to
perplex and embarrass the inquirer. In the specification to Turner's patent^
for producing a yellow color, among other things, minium is directed to be
used, which, it appeared, would not produce the desired effect. In the same
case, among a great number of salts which were specified, it was left to the
public to use those they pleased, without either of them in particular being
pointed out, and only one would answer the intended purpose. For either
of these reasons, the validity of a patent could be impeached.
1 3 B. & B. 5.
2 4 Barn. & Aid. 550.
3 Godson on Pat. p. 26, n. ; and see Printed Case, 182, 186, 187 ; and see Dav.
Pat. Cas. 129, 139, 140 ; also Hill v. Thompson, 2 B. Moore, 450.
* Turner v. "Winter, 1 T. R. 602 ; Godson on Pat. 120.
THE SPECIFICATION. 249
This rule, that, if any considerable part of the things described in the
specification be unnecessary, it "will be presumed that it was inserted only
with a view to perplex and embarrass the inquirer, was confirmed by the
case of Savory v. Priced-
That patent had been granted for a method of making a neutral salt
or powder, possessing all the properties of the medical spring at Seidlitz,
under the name of " Seidlitz Powder." The specification enrolled within
the time required by the patent, set out three distinct receipts, and described
the modes and proportions in which the results were to be mixed, in order to
produce the " Seidlitz Powder." It was proved that the three products so
mixed answered the purpose professed in the patent, and that the comhination
loas new and useful. But, upon cross-examination of the plaintiff's witnesses,
the following facts were established. The recipe No. 1, produced the sub-
stance called " Kochelle Salts." Rochelle salts were known to the world
before 1815 under that name, and also as Soda Tartarizata.
Recipe No. 2, produced " Carbonate of Soda," which was known before
1815, and was in the Pharmacopoeia of 1809; and a more expensive, but
more perfect way of making it was also known, and it might be bought in
shops.
The recipe No. 3, produced " Tartaric Acid," the method of making
which was known at the time of the patent, and, under that or some other
name, it might be bought in chemists' shops ; and other methods of making
it were known, all of which would be equally efficacious for the combination
of Seidhtz Powders. Rochelle salts, carbonate of soda, and tartaric acid,
mixed in the manner prescribed, produced the Seidlitz Powders.
The Chief Justice said: " It is the duty of any one, to whom a patent is
granted, to point out in his specification the plainest and most easy way of
producing that for which he claims a monopoly ; and to make the public
acquainted with the mode which he himself adopts. If a person, on reading
the specification, would be led to suppose a laborious process necessary
to the production of any one of the ingredients, when, in fact, he might go
to a chemist's shop and buy the same thing as a separate simple part of
the compound, the public are misled. If the results of the recipes, or of
any one of them, may be bought in shops, this specification, tending to make
people believe an elaborate process essential to the invention, cannot be
supported."
Although the unnecessary part had occasionally been used, it would still be
a question whether it had not been put there to mislead the public. But
this rule is not so strictly enforced that a person is compelled to go on using
every part of his invention, to secure and continue his patent-right. If any
particular parts have been once fairly introduced, and not laid aside, until, by
1 Kyan & Moody, 1.
32
250 LAW OF PATENTS.
some discoveiy or contrivance, made subsequent to the date of the patent,
they were found to be unnecessary, the patentee may, without prejudice,
leave them out ; or cease to make use of them. But the presumption is
against the inventor, until he give a good reason for the discontinuance.^
Watts, in his specification, gave a description of several things, which, being
incomplete, would not have supported a patent ; and yet, inasmuch as he
did not claim them as part of the subject of his patent, it was considered
that they were matters of intention only, and that the specification was not
rendered less intelligible by the introduction of them.2
It is not absolutely necessary to annex to the specification a model, diagram,
picture, or drawing, descriptive of the manufacture.^ If without it, the sub-
ject is clearly described, it is better omitted. It is, however, an easy way
of illustrating the parts of a machine, and, therefore, has generally been
adopted. It was" formerly said, that, in every instance in which a drawing
was introduced, it was indispensable that it should be drawn on a scale,
&c. ; ^ that, in it, the diameters of wheels, the length of levers, &c., every
proportion and relation of the parts, ought to appear in due ratio to each
other ; and that the whole should be capable of being put together without
leaving the length, breadth, or relative velocity, of any of the parts to be
found out by conjecture and experiments, or the patent would be void.
Arkwright's machine,^ though shown in a perspective drawing, could not be
made, for want of a scale to determine its dimensions.
This rule has of late been modified. If a common mechanic can make
the subject of the patent from the drawing in perspective, it is not necessary
that there should be a scale. It was also formerly considered that the words
of the specification ought, of themselves, to be sufficiently descriptive of the
improvement ; that the specification ought to contain within itself all the
necessary information, without the necessity of having recourse to a diagram,
and that, if a diagram were given, it ought to be taken merely as an illustra-
tion, and not as constituting a principal or essential part of the specification ;
and, therefore, that a person was not bound to look at the diagram to learn
the invention. But a very learned judge has, however, held, that, if a draw-
ing or figure enable a workman of ordinary skill to construct the improve-
ment, it is as good as any written description.^
1 Boville V. Moore, Dav. Pat. Cas. 398.
2 Boulton V. Bull, 2 Hen. Bla. 480 ; Dav. Pat. Cas. 187, 188.
3 2 Hen. Bla. 479; Dav. Pat. Cas. 187; and see Ex parte Fox, 1 Ves. &
Beam. 67.
* Harmer v. Playne, 11 East. 112 : 14 Ves. 130, S. C
5 King V. Arkwriglit, Printed Cas. 176. Dav. Pat. Cas. 114.
« Brunton v. Hawkes, 37 Vol. Rep. of Arts, N. S. p. 105; and seeS.C.4 Barn.
& Aid. 541 ; 1 Stark. N. P. C. 201, and Post.
THE SPECIFICATION. 251
On the trial at nisi prius, it was objected, in the case of Bloxam v. Elsee,^
that the specification ■was bad, because there -were several words in it not in
English ; such as vice depression, vice repulsion, and vice de re-action, for
different screws; and the French word chapitre, for a cap, also occurred.
It was, however, proved, that, from the drawings annexed to this specifica-
tion, a skilful mechanic might make the machine ; but it was contended that,
as a specification could not be made by drawings alone, it must be made in
apt words, intelligible to mechanics ; and, if this specification were held good,
every thing mentioned in a specification might be called by a wrong name,
and drawings referred to for the whole. Even the scale appended to the
drawings was a scale of pieds and 2^ouces, terms unknown to English
mechanics.
The Lord Chief Justice observed : — "It was proved that the names to
the scale were quite immaterial; for relative proportion, which was all that
was wanted, the scale would have been good as if there had been no
names at all. An inventor of a machine is not tied down to make such a
specification as, by words only, would enable a skilful mechanic to make the
machine, but he is to be allowed to call in aid the drawings which he
annexes to the specification ; and if, b}^a comparison of the words and the
drawings, the one would explain the other sufficiently to enable a skilful
mechanic to perform the work, such a specification is sufficient."
The consequences which attend the introduction of any thing into the
specification, merely to misguide the public, have been mentioned. The
means must be adapted to the end.^ The description must not give several
ways and methods which may or may not answer, according to the skill
exercised in the attempt to produce the manufacture. Thus, in the specifi-
cation of Winter's patent,3 a great number of salts were mentioned, by
which it appeared that the public might take either of them, to make the
subjects of the patent. There was only one of them that would produce
the effect, and, therefore, his patent was void. Even if there be only one
thing which will not answer the intended purpose, the specification is in-
correct.
In Dei'osne v. Fairie,^ the specification stated a method of depriving
syrups, of every description, of color, by filtering them through charcoal,
produced by the distillation of bituminous schistus, and used alone or mixed
■with animal charcoal, or even through animal charcoal alone, when placed
in thick beds. It appeared that iron was combined with a bituminous
1 1 Car. & P. 558.
2 Dav. Pat. Cas. 331. And see Manton v. Parker, Dav. Pat. Cas. 328 ; 2 B.
Moore, 457, 458.
3 Turner v. Winter, 1 T. E. 602.
* Derosne v. Fairie and others, 5 Tyr. Rep. 393.
252 LAW OF PATENTS.
schistus, found in this country, and it was doubtful -whetlier the charcoal
distilled from the schistus was not only disadvantageous but injurious to the
matter going through the process. The charcoal sworn to have answered
the purpose of the patent, was received from Derosne, at Paris, where it had
been made, and was declared by him to be the residuum of bituminous
schistus, from which the iron had been extracted. But no means existed of
ascertaining, in this country, of what substance it actually was the residuum,
nor did the specification mention any process for extracting the iron from
bituminous schistus. The Court held, that, whether the latter omission
avoided the patent or not, the patentee ought to prove, either that the pre-
sence of iron in the bituminous schistus, used in the process of filtering,
was not absolutely disadvantageous to the matter going through that pro-
cess, or that the method of extracting the iron from it was so simple and
known, that a person practically acquainted with the subject could accom-
pUsh it with ease, or that bituminous schistus, as known in England, could
be used in this process with advantage ; and a verdict having been found for
the plaintiff, the Court aet it aside on terms, and granted a new trial.i
Not only must there not be any unnecessary means mentioned in the
specification, but effects that cannot accurately be produced must not be
mentioned and described. The patentee should inform the inquirer of the
exact nature of the manufacture invented. If the article described have not
the qualities, or the machine produce not the results which are set forth in
the specification, the grant is invalid.^
1 There was not any further litigation, but the patentee disclaimed the use of
bituminous schistus.
2 See Haworth v. Hardcastle, 1 Bing. N. C. 1822.
Tiudal, C. J. : — '-The motion for entering a nonsuit was grounded 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 specification had held
out to the public. Secondly, that the patentee had claimed, in his specification,
the invention of the rails of 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 suQicient
for a mechanic, properly instructed, to make a machine ; and that there has been
an infringement of the patent ; but they also find that the machine is not useful in
some cases, for taking up goods."
The specification must be admitted, as it appears to us, to describe the invention
to be adapted to perform the operation of removing the calicoes, and other cloths,
from off the rails or staA-es, after they have been suificiently dried. But we think
we are not warranted in drawing so strict a conclusion from this finding of the
jury, so as to hold that they have intended to negative, or that they have thereby
negatived, that the machine was not useful, in the generality of the cases which
THE SPECIFICATION. 253
Such is the law, too, if the patentee take his gi'ant for the invention of
several things, and he faQ in any one of them. By Winter's invention,!
three things were to be produced ; one reason for its being considered void
was, that the second article, which was called in the patent "white lead," was,
in fact, quite a different substance, and which could be used only for a very
few of the purposes for which common white lead is applied. Bainbridge's
patent,^ for the improvement of the hautboy, was for neiu notes, in the plural
number. On proof, it appeared that he had only found out one new note,
and he consequently failed in an action of damages for an infringement of
the grant, although great ingenuity had been exerted, and the fingering was
rendered less complicated by the invention.
In the case of Lewis v. Marling,^ a most important point was settled. A
patent was granted for improvements on shearing machines, for shearing or
cropping woollen and other cloths. The patentees, in their specification,
claimed, (amongst other things,) " the application of a proper substance
fixed on or in the cylinder, to brush the surface of the cloth to be shorn."
The brush for the surface of the cloth was soon found to be useless, and the
patentees never sold any machines with it.
The Court decided, that if the patent be granted for several things, one of
which is supposed (at the time of enrolling the specification) to be useful,
but is afterwards found not to be so, yet the grant is good in law. The
opinions of the judges are very excellent.
Lord Tenterden observed : — "As to the objection on the ground that the
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, what 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 which are hung out, to the mode of
dressing the cloths, to the thickness of them, or to any other cause, distinct and
different from the defective structure, or want of power in the machine, this find-
ing of the jury gives us no information whatever. Upon such a finding, there-
fore, in a case where the jury have given their general verdict for the plaintiff,
we think that wc 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 Turner v. Winter, 1 T. E. 602.
2 Bainbridge i». Wigley, K. B. Dec. 1810; and see Brunton v. Hawkes, 4 Barn.
& Aid. 451.
3 10 Barn. & Cress. 22.
254 LAW OF PATENTS.
application of a brush was claimed as a part of the invention, adverting to
the specification, it does not appear that the patentee says the brush is an
essential part of the machine, although he claims it as an invention. When
the plaintiffs applied for the patent, they had made a machine to which the
brush was affixed, but, before any machine was made for sale, they discovered
it to be unnecessary. I agree, that, if the patentee mentions that as an essen-
tial ingredient in the patent article which is not so, or even useful, and
whereby he misleads the public, his patent may be void ; but it would be
very hard to say that this patent should be void, because the plaintiffs claim
to be the inventors of a certain part of the machine not described as essen-
tial, and which turns out not to be useful. Several of the cases already
decided have borne hardly on patentees, but no case has hitherto gone the
length of deciding that such a claim renders a patent void, nor am I disposed
to make such a precedent."
Mr. Justice Bayley said : — "I am of the same opinion. To support a
patent, it is necessary that the specification should make a fuU and fair dis-
closure to the public of all that is known to the patentee respecting his
invention. If he does not, the consideration on which he obtains his patent
fails. If he represents several things as competent to produce a specific
effect, when only one will answer, that is bad ; or if he suppresses any thing
which he knows will answer,. that also is bad. But it is objected here,
that the plaintiffs described the application of the brush as parcel of their
discovery. At the time when the patent was obtained, a brush was used,
and there is no reason to doubt that the plaintiffs, at that time, thought it
necessary."
Mr. Justice Parke : — " The objection to the patent, as explained by the
specification, may be thus stated. The patent is for several things, one of
which, being supposed to be useful, is now found not to be so ; but there is
no case deciding that a patent is on that ground void, although cases have
gone the length of deciding, that, if a patent be granted for three things, and
one of them is not new, it fails in toto. The prerogative of the crown, as to
granting patents, was restrained by the statute 21 Jac. 1, c. 3, § 6, to cases
of grants, ' to the true and first inventors of manufactures, which others, at
the time of granting the patent, shall not use.' The condition, therefore, is,
that the thing shall be new, not that it shall be useful ; and, although the
question of its utihty has been sometimes left to a jury, I think the condition
imposed by the statute has been complied with when it has been proved to
be new."
Although the description may be otherwise complete and correct, although
the means may be adapted to the end, and the things specified be pro-
duced ; yet, if the subject be not given to the public in the best and most
improved state known to the inventor, the patent is void. If, at the time of
obtaining the grant, he was acquainted with the mode of making his manu-
THE SPECIFICATION. 255
facture more beneficial than by the one specified, the concealment will be
considered fraudulent. Thus, Lord Mansfield held a patent for " steel
trusses " to be void, because the inventor had omitted to mention that, in
tempering the steel, he rubbed it with tallow, which was of some use in
the operation.i
In the specification for a patent for making verdigris,^ aqua fortis, which
was used by the inventor, was not mentioned. It appeared that the patentee
mixed the aqua fortis, with great secrecy, which raised the presumption that
he knew of its value when the grant was sealed. The patent was, there-
fore, declared to be void.
Nor can any alteration, known to the inventor before he procures the
patent, be made, however insignificant it may be, even if it were nothing
more than the means of working the machine a little more expeditiously,
without raising a presumption that the patentee fraudulently concealed the
best method. A lace machine,^ for which Mr. Boville had obtained a patent,
was worked with greater expedition by bending together two teeth of the
dividers, or by making one longer than the others, than if it were used as
1 Liardet v. Johnson, Bull. N. P. 76 ; and see 1 T. E. 608.
2 Wood and Others v. Zimmer and Others, 1 Holt, 50. Gibbs, C. J. : " It is said that
this patent makes verdigris, and is, therefore, sufficient. The law is not so. A
man who applies for a patent, and possesses a mode of carrying- on that invention
la 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 Avill enable the public, at the
expiration of his privilege, to make it in the same way, and with the same advan-
tages. If any thing which gives an advantageous operation to the thing invented
be concealed, the specification is void. Now, though the specification should ena-
ble 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 of aqua
fortis, it is a prejudicial concealment, and a breach of the terms whicli the patentee
makes with the public."
3 Boville V. Moore, Dav. Pat. Cas. 400. Gibbs, C. J. : "There is another consi-
deration respecting the specification, which is also a material one ; and that is,
whether the patentee has given a full specification of his invention ; ncft only one
that will enable a workman to construct a machine answerable to the patent, to
the extent most beneficial within knowledge of the patentee at the time; for a
patentee, who has invented a machine useful to the public, and can construct it in
one way more extensive in its benefit than in another, and states in his specifica-
tion only that mode which would be least beneficial, reserving to himself the
more beneficial mode of practising it, although he will have so far answered the
patent as to describe in his specification a machine to which the patent extends ;
yet he will not have satisfied the law, by communicating to the public the most
beneficial mode he was then possessed of, for exercising the privilege granted to
him." And see Brown v. Moore, Eep- of Arts. 28th vol. p. 60.
256 LAW OF PATENTS.
specified. This mode of using it was known to the inventor before he
obtained the patent ; and, therefore, Gibbs, C. J,, thought that the patent was
bad on that account.
If the patentee use cheaper materials, in making the manufacture, than those
he has enumerated, his grant will not be sustained by his proving that the
articles specified will answer the purpose as well.^
It signifies not in what manner this advantage accrues to the patentee ; it
is not necessary that any palpable alteration has taken place ; that something
has been added or something taken away from the invention as specified, to
render the patent void ; it will be invalid, if, htj any means whatever, a benefit
is derived by the patentee, which was concealed from the pubhc at the time
the patent was obtained, even if it be merely a small part of a machine on
wbich a particular motion is impressed, at a given moment, in a particular
direction.2
If this improved manner of using the invention be unintentionally left
undescribed, still the patent is void. " If it was inadvertent," says Gibbs,
C. J., speaking of Boville's omission in not describing the bending of the
teeth, " if he actually knew and meant to practice that mode, and inad-
vertently did not state the whole in his specification, he must answer for his
inadvertence." ^
But if it appear that this better mode of using the manufacture be a
subsequent discovery ; that the patentee has, since the date of the grant, found
out this new means of carrying on his own invention to a better effect ; then
the grant will continue valid ; ^ but, as before stated, the presumption of
concealment will be against him.
1 1 T. R. G07 ; 1 Holt's N. P. C. 60 ; Kiwj v. Wheeler, 2 Barn. & Aid. 345.
2 King v. Arkwright, Printed Cases, 50. The cylinder in the specification was
a parallel ofie ; but that which was used, spiral.
3 Boville V. Moore, Dav. Pat. Cas. 413. Gibbs, C- J., observed to the jury, " You
will say whether you think there is any fraudulent concealment in the specification."
A juryman : " It might be inadvertent, and not fraudulent." Gibbs, C. J. : " Cer-
tainly; and if it were inadvertent ; and if he actually knew and meant to practise
that mode, and inadvertently did not state the whole in his specification, he must
answer for his inadvertence ; but it might be a subsequent discovery." Verdict
for the defendant.
* Boville V. Moore, Dav. Pat. Cas. 401. Gibbs, C J. : " If Mr. Brown, since he
obtained his patent, had discovered an improvement, effected by bending the
teeth, or adding a longer tooth, he might apply that improvement ; and his patent
will not be affected by his using his own machine in that improved state ; but if,
at the time he obtained his patent, he was apprized of this more beneficial mode
of working, and did not by his specification communicate it to the public, that
must be considered as a fraudulent concealment, although it was done inadvert-
ently, and will render the patent void." \_
THE SPECIFICATION. 257
Another Important rule of law was established in the case of Crossley
V. Beverley y Mr. Clegg, the patentee, had a grant for an improved gas ap-
paratus, and he claimed a gas meter, (or part of it,) as described in the speci-
fication. It appeared, on the examination of Mr. Clegg himself, that he had
invented the method of making the gas meter, as described in the specifica-
tion, in the time between the dates of the patent and the specijication. Before
he took out the patent, he had completed the design of the meter, but he had
not actually made one, and he found several improvements upon it before he
sent in his specification, in which he described the meter so improved as the
invention claimed by him. The court was clearly of opinion that the patent
was valid in law, and Lord Tenterdon observed that he was at a loss to know
upon and for what reason a patentee is allowed time to disclose his invention,
unless it be for the purpose of enabling him to bring it to perfection. If,
added his lordship, in the intermediate time, another person were to discover
the improvements for so much of the machine, the patent would not be
available. But Mr. Justice Bayley said, " It is the duty of a person taking
out a patent, to communicate to the public any improvement that he may
make upon his invention before the specification has been enrolled."
Upon these grounds and for these reasons, applicable to the specifications
of almost all kinds of manufactures, many patents have been declared to be
void. The inventor bearing them in mind, and attending to the nature of
each kind of manufacture, whether it be a substance or machine, &c., as it
is distinguished from the rest in the last chapter, will be able, by avoiding
similar errors, to make a correct specification for any invention. Indeed, no
further assistance can be given to him than that which may be derived from
a few general observations on the description peculiar to each manufacture.
The description of a machine must disclose the nature of the invention,
and the manner in which it is to be performed. It must be minute without
perplexity, and luminous without being overwrought. When it descends to
particulars, the elements that are known to all should not be noticed ; nor yet,
in its fulness, should any thing be included that is not necessary to render it
intelligible. It should be such that a common mechanic, with a reasonable
degree of skill upon the subject, may comprehend it. * Though it need not be
so full as to instruct a person ignorant of the first principles of mechanics in
the method of its formation and use ; yet, on the other hand, a person emi-
nently skilled in the subject must not be required to make it. A reasonable
knowledge and skill (of which the jury decide) must be possessed by the
person who complains that the specification is obscure, and that he cannot
make the machine. No contrivance or addition, no trial or experiment, it is
said, must be resorted to for a full knowledge of the invention.^ This rule
1 9 Bam & Cress. 63. " 2 Hen. Bla. 484.
33
258 LAW OF PATENTS.
must, however, be taken in a limited sense. Though no inventive faculty-
must be exercised, or any thing new addfed, yet trials, if they are not essen-
tially necessary, may be made. If the inventor leave any thing to be found
out by experiment, the specification is bad ; unless the data, manner of per-
forming, and the expected results are so clearly given, that it may easily be
done.
Reference may be made to the rudiments of that science by which the
principles of the machine are explained, but not to scientific books.^ A pro-
position, or truth generally known, needs no reference ; and that which can
be found only in some particular treatise must be explained, but not claimed
as new.
If a piece of machinery be contemplated for the purpose of giving a full
description of it, the several parts, as wheels, rollers, screws, springs, &c.,
&C-, must be set forth, together with the proportion of their diameters,
thickness, tension, &c.2 Then the method by which they are united, and
the relative velocities of the movable parts.3
If the thing specified be the component parts of two machines, the union
of the parts that make uj) each of them must be clearly shown.4 If parts of
the machine are to be put on and o3' during some of its operations, in order
to produce the desired effect, or if several articles are intended to be worked
on, or several manufactures to be produced, it must be distinctly stated
what those parts are, their proportions for different purposes, and where
they are to be applied.^
It has been shown that the grant must not be more extensive than
the invention ; 6 and that, where the patent is for an improvement or addition,
the inventor cannot monopolize the whole subject. The specification will,
therefore, be incorrect, if it contain a description of more than the improve-
ment or addition ; ''' unless it particularly distinguish the new from the old
parts.
The inventor is not bound down to any particular mode of describing his
improvement, so that he informs the public exactly in what his invention con-
sists. He may describe it by words, or by diagrams,^ but he must confine
himself to his invention.
1 11 East, 105.
2 King v. Arkwright, Printed Cas. 174 ; Dav. Pat. Cas. 111.
3 Id. Printed Cas, 62, 179; Dav. Pat. Cas. 122.
* Id. Printed Cas. 174 and 177; Dav. Pat. Cas. Ill and 117.
5 Ibid.
^ Godson on Pat.
T Bramah v. Hardcastle, MS. post, 156 ; and Williams v. Brodis, cited by
counsel in King v. Arkwright, Printed Cas. 162.
* McFarlandv. Price, 1 Stark. 199. Action for infringement. The patent was
for certain improvements in the making of umbrellas and parasols. The specifi-
THE SPECIFICATION. 259
The patent for the improvement of a thing, or for the thing improved, is
in essence for the same manufacture.^ The inventor may either accurately
describe the addition, and then point out the method by which it is applied
to the known parts ; or he may describe the whole as one machine, and then
particularize the parts newly discovered.
It is not absolutely necessary that the old parts should be described. They
may be referred to generally, if the whole is not thereby rendered unintelli-
gible. Thus, in Jessop's case,2 whose invention consisted of a single move-
ment in a watch, it was said to be sufficient to refer generally to a common
watch, and then to give directions how the new part was to be added to it.
There is one decision on an improvement which appears to be an anomaly.
HarmarS obtained a patent for a machine. Having very much improved it,
cation professed to set out the improvements, as specified in certain descriptions
and drawings annexed; but no distinction was made, either in the description, or
by any marks in the drawings, between what was new and what was old.
EUenborough, C. J. The patentee, in his specification, ought to inform the per-
son who consults it, what is new and what is old. The specification states that
the improved instrument is made in the manner following. That is not true,
since the description comprises what is old, as well as what is new. Then it is
said, that the patentee may put in aid the figures. But how can it be collected
from the whole of these, in what the improvement consists 1
1 2 Hen. Bla. 481,482.
2 2 Hen. Bla. 489.
3 Harmary. Playne, 11 East, 101.
The patent was for " a machine invented for raising a shag on all sorts of
woollen cloths, and cropping or shearing them, which together come under the
description of dressing woollen cloths, and also for ci'opping or shearing of fus-
tian." There were drawings of the machine. Harmar afterwards invented some
improvement of his machine, for which he prayed a patent ; which patent was
granted upon the usual condition, that he should ascertain the nature of the said
invention or the said improvements. The second specification recited the first
patent, and described the whole of the machine, without showing in words, or
marking in the drawing, where the first machine ended, or fi-om what point the
improvements began. The improvement could only appear by comparing
together the two specifications. It was contended for the plaintiff", that the patent
and specification referring to it, are to be construed together as one instrument.
The first patent being enrolled, the public were bound to take notice of it; and,
being recited in the second, the improvements easily appeared by comparing
them. That it was more convenient to give a description of the whole, than, by
a literal compliance, to state what the improvements were.
For the defendants it was said, that improvements should be distinctly marked
and made known by this second specification alone, without further search or
trouble.
Le Blanc, J. Suppose the specification had merely described the improvements,
must not the party still have referred to the original specification, or at least have
260 LAW OF PATENTS.
he procured another patent, in which the first -was recited. In the second
specification, without any reference being made to the description of the
former subject, the whole machine so improved was set forth, without the
new parts being distinguished from the old ones. The second grant was
held to be good, because the second patent, by reciting the first, referred to
its specification, which, by the enrolment, was matter of record, and therefore
supposed to be within every person's knowledge.
It must be here observed that Harmar referred to his oion patent. It
seems, by the same reasoning, that it might be laid down as a general rule,
that every person, making a manufacture from the subjects of several ex-
pired patents, might recite and refer to the specifications of them, without
taking any note of their contents.
Sometimes it is difficult to determine, whether the improvements be an
addition of new parts, properly so called, or the parts of an old machine,
newly arranged, with some material alteration. In the latter case, it is safer
to claim the whole as a new engine ; and then, in the specification, to dis-
tinguish accurately between the old and new manufacture, showing the
peculiar qualities of each, the improvement effected, the means that pro-
duced it, and the use to which it is to be applied. From the decision it
appears that there are several ways of making a correct specification of an
improvement.
First. By describing the whole manufacture, and then particularizing
with great exactness the addition or improvement of the inventor.^
Secondly. By a description of the whole manufacture, pointing out the
parts that either are old or not material to the invention.
Thirdly. By giving an accurate and intelligent description of the im-
brought a full knowledge of it with him, before he could understand truly to
adapt the new parts described to the old machine 1
Ellenborough J. It would lead to great inconvenience, if hooks of science
were allowed to be referred to. A person ought to tell, from the specification
itself, what the invention was for which the specification was granted, and how it
is to be executed. If reference may be made to one, why not to many works ? It
may not be necessary, indeed, in stating a specification of a patent for an im-
provement, to state precisely all the former known parts of the machine, and then
to apply to those the improvement ; but, on many occasions, it may be suflScient
to refer generally. But, however, I feel impressed by the observation of my
brother Le Blanc, that the trouble and labor of referring to and comparing the
former specification, would be fully as great if the patentee only described in this
the precise improvements of the former machine. Eeference maj'^ be made to
general science. The court certified to the Lord Chancellor in favor of the spe-
cification.
1 In Bramah v. Hardcastle, before Lord Kenyon, 1789, the inventor did not dis-
tinguish the part he really invented from the parts that were old, in his new water-
closet.
THE SPECIFICATION. 261
provement, and the manner in which it is applied to the subject, or parts
that are old.
Fourthly. By describing the -whole manufacture, if it be an improve-
ment of another for which a patent has been obtained, taking care to refer,
in the new specification, to that of the former patent.
The observation of the court, in Minter v. Mower,^ are worthy of atten-
tion, in drawing a specification of a machine. In the specification, the inven-
tion was described to be of " An improvement in the construction, making,
or manufacturing of chairs," and to consist in the application of a self-
adjusting leverage to the back and seat of a chair, whereby the weight on
the seat acted as a counterbalance to the pressure against the back, and
whereby a person sitting in the chair, might, by pressing against the back,
cause it to take any inclination, and yet might be supported. In an action
for infringing the patent, it was pleaded that the specification did not de-
scribe the invention. It was proved that a chair had previously been sold,
to which a similar leverage was appUed, acting by the pressure in the same
way, but having also other machinery, which prevented the incUnation of the
back from being shifted, except when a spring was touched by the hand.
The jury found, that, without such other machiner}-, the chair previously
sold would have produced an equilibrium by the self-adjusting leverage;
that the maker of it was the inventor of the machine, and found out the
principle, but not the practical purpose to which it was now applied ; and
that the plaintifi" had discovered such purpose.
Lord Denman, ordering a nonsuit, thus delivered the judgment of the
court. " An action between the same parties has already been decided by
the court of exchequer, in which the patent claimed by the plaintiff was
deemed good and valid. But, on the trial in this court, an entirely new fact
was given in evidence, and affirmed by the verdict of the jury ; namely, that
a chair very closely resembling that made by the plaintiff's patent, had been
made and sold before that patent was taken out. The words of the jury
were these: 'We are of opinion that Browne 2 was the inventor of the
machine, and found out the principle, but not the practical purpose to which
it is now applied. We think that Minter (the plaintiff) made the disco-
very.' This statement might not be fatal to the plain tifTs title, if his inven-
tion were truly set forth in the specification ; but the material issue in this
cause being simply, whether the plaintiff did thereby particularly describe
and ascertain the nature of the said invention, we find it needful to examine
the terms of it.
1 Minter v. Mower, 6 Add. & Ell. Rep. 735.
^ A workman, see Godson on Pat. 27. Also Barker v. Shaw, before Holroyd
J., at Lancaster, 1823, in which the plaintiff was nonsuited, because his workman
invented the improvement in hats.
262 LAW OF PATENTS.
" Now, the patent is taken out for ' An improvement in the construction,
making, or manufacturing of chairs ; ' the method of making the machine,
and the way in which it acts, are then fully described, without any mention
of any of the means employed in Browne's chair. The specification thus
concludes: 'Wliat I claim as my invention, is 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 pressure against the back of such
chair, as above described.' Now it was perfectly clear, upon the evidence,
that this description applies to Browne's chair, though that was encumbered
with some additional machinery. The specification, therefore, claimed more
than the plaintifi" had invented, and would have actually precluded Mr.
Browne from continuing to make the same chair that he had made before
the patentee's discovery. We are far from thinking that the patentee might
not have established his title, by showing that a part of Browne's chair could
have effected that for which the whole was designed. But his claim is not
for an improvement upon Browne's leverage, but for a leverage so described
that the description comprehended Browne's. We are, therefore, of opinion,
that the patent cannot be sustained, and a nonsuit must be entered."
Every combination appears, at first sight, to be subject to the same rules
for describing it, as an improvement or addition. The same end, a clear and
intelligent description of the manufacture, without any extraneous matter, is
to be obtained ; but the manner of attaining it is somewhat different.
If it is only a combination of substances, materials, or parts of machines
in common use, previously applied for the same or different purposes, then
the specification will be correct which sets out the whole as the invention of
the patentee :,^ if he clearly express that it is in respect of such new com-
1 Boville v. Moore, 2 Marsh. 211 ; S. C Dav. Pat. Cas. 411.
A patent was taken out by Mr. Browne, for " a machine or machines, for the
manufacture of bobbin lace or twist net, similar to and resembling the Bucking-
hamshire lace net and French lace net, as made by the hand with bobbins or pil-
lows," who assigned it to the plaintiff.
Gibbs, C. J. Now, gentlemen, the objections made to this specification upon
this part of the case are, that it goes farther than it ought ; that it states more to
be the invention of Mr. Browne than really was so ; and I think I may state
generally to you, that thev say that all that precedes the crossings of the threads
is old, whereas he has stated it as part of his invention ; and, besides that, they
state that the forks and dividers, which he has stated as part of his invention, are
equally old. I think, with respect to the principle, if there existed, at the time
Mr. Browne took out his patent, engines for the making of lace, of which his was
only an improvement, then his patent ought to have been only for an improvement ;
and certainly, if he could have supported his patent for an engine, his specifica-
tion ought to have pointed out those parts only which were of his invention,
as those to which his privilege applied ; and, if you should be of opinion that he
THE SPECIFICATION. 263
binatlon or application, and of that only, without laying any claim to the
merit of original invention in the use of the materials. Nothing more than the
invention must be claimed. Every old part which is essential and material
has, in his specification, stated more than he is entitled to, as what was his inven-
tion, then, in my opinion, his specification is bad.
Now, the answer that the plaintiffs have endeavored to give to that objection is
this, — they say there is nothing in the world that is absolutely new ; you may
refer it all to first principles. The Avheels are well known ; and yet you may
state them in your specification as one of the means by which you effect your
purpose. Levers are well known ; but yet you may state them in the same way ;
that certainly is so. They go on to say, their invention consists not in that or
this particular part, of which their machine is composed, as being new, but in the
conformation of all the parts of it ; the novelty consisting in that conformation ;
and, if the new conformation of all those parts was of the plaintiff's invention,
then, although every one of the parts was old, they would be entitled to a patent
for a machine composed by that ncAV conformation of the whole ; but if you find
that another person had combined all those parts up to a given point, and that
Mr. Browne took up his combination at that point, and went on combining
beyond that, if the subsequent combinations alone were his invention, the former
combinations he will have no right to. Those combinations could not exist
before, unless there had existed an engine in which they were found, and, if there
existed before this time an engine in which they were found, it is for you to say,
whether this which Mr. Browne has invented is any more than an improvement
of that engine, or whether it is the invention of a new engine. If Mr. Browne has
only invented an improvement of the old engine, be it Heathcote's, or be it any
one or two engines which existed before, then his specification by which he claims
the whole to himself will be bad. If, on the other hand, you think that he has
invented an engine, which consists of a perfectly new conformation of parts,
although all the parts were used before, yet he will be entitled to support his
patent for a new machine.
Now, I wish to have what I state upon this subject observed by the counsel on
both sides, that they may be aware how I put it. If a combination of those parts
existed before ; if a combination of a certain number of these parts existed up to
a given point before, and Mr. Bi-owne's invention sprung from that point, and
added other combinations to it ; then I think this specification, stating the whole
machine as his invention, is bad. If, on the other hand, you think he has the
merit of inventing the combination of all the parts from the beginning, then I
think the specification is good, and that he is entitled to your verdict. Verdict
for the defendant.
Gibbs, C. J. Gentlemen, I will just ask you this : — Do you find that the com-
bination of the parts up to the crossing of the threads is not new ?
Foreman. Yes, my lord.
Juryman. The threads, then, taking a new direction, and certainly the most
valuable part to the plaintiff, is a new invention ; but we are of opinion it is
nothing more than an improvement.
264 LAW OF PATENTS.
in producing the intended effect will be considered as claimed, if it be not
designated as old. If the part in common use be even an elementary prin-
ciple or a single combination, and effect a new end, it becomes a part of the
substance of the invention, and must be protested against as not being
claimed.
If the invention consist of a new set of comhinations, added to a manufac-
ture composed of combinations, then, though the effect produced be differ-
ent throughout, the specification should only describe the new combina-
tions which have been invented, and how they are to be added to the old
ones.
If the comhination consist of the subjects of several patents which have
expired, or of some new ones that have been bought, it would appear from
the reasoning of EUenborough, C. J., that a description of the method by
which they were combined, with a reference to the several specifications,
would be all that is required to sustain the patent.^
Pursuing the same order, in giving rules for making specifications, as was
followed in the former chapter, when the different subjects of patents were
examined, the necessary description of the fifth kind of new manufactures,
piinclples, or methods carried into practice by tangible means, must now be
investigated. It was shown in the last chapter, that a principle could not be
the object of a patent. The impossibility of giving a description of it, in
every instance in which it might be used, was urged as a strong argument
against its being allowed to be monopolized.
Reasons have also been assigned why a method, merely as such, is not a
proper subject for a patent. If a method can be the subject of a patent, the
description of it must, indeed, be very accurate. It must be so clear and
evident that no experiments must be necessary to learn it, and to put it in
practice as beneficially as the patentee enjoys it.
If neither a principle nor a method can be the subject of a patent within
the meaning of the statute of James ; if, when a patent is obtained for a
method, it is, in fact, granted for tangible means of carrying that method into
practice ; 2 it is quite evident that the specification of a method is governed
by the same rules as if the description was to be given of some one kind of
the above-mentioned manufactures, whether the real subject of the patent be
a machine, improvement, or combination, and, therefore, that any further
comment would be superfluous.
When a chemical discovery is the foundation of the invention for which
the patent has been granted, inasmuch as the substance or thing produced,
and not the principle, process, or method, is the legal subject of the patent,
it ought to be described. The ingredients, their proportions, the time of
1 Harmar v. Playne, 11 East, 107 : Godson on Pat. 1.59.
- Godson on Pat. 73.
THE SPECIFICATION. 265
mixing, &c., ought to be fully stated, and then the beneficial vse to which the
substance can be applied.^
A manufacture, when first introduced into England, whether it be a sub-
stance or machine, an improvement of something alreadv known here, or a
combination of native discoveries, still it must be fully and correctly ex-
plained. Its specification is regulated by the same laws, and is subject to the
same critical examination, as if it were an EngUsh invention.
Thus it appears that every part which is new, however minute, must be
clearly described. In the specification of a substance, the simplest elements
of which it can be formed, and the best modes of making and using it, must
be accurately stated. In descriptions of machines, there must, with scrupu-
lous fidelity, be set forth the cheapest materials, the most exact proportions
of the parts, the most expeditious and the best mode of conducting them, with
the precise times of putting on or taking off any part of the machine ; and
an improvement or new comlination must be kept distinctly apart from the
old manufacture.
The public must be put in possession of the manufacture, in a wav as
ample and beneficial as the patentee enjoys it.
It has been shown that it is a technical, but unjust rule of law, that, If the
Inventor claims any thing in the title to his patent, or In the specification,
which is not neiv, or has been before used, then the whole patent becomes
void. It has also been contended, that every part should be useful as well
as new ; but that was overruled by the judges, In the case of Lewis v.
Marling/^
In the first section of 5 & 6 'Will. IV. c. 83, the law has been altered In
the following words : —
" Any person who, as grantee, assignee, or otherwise, hath obtained, or
who shall hereafter obtain letters-patent, for the sole making, exercismf,
vending, or using of any Invention, may. If he think fit, enter with the clerk
of the patents of England, Scotland, or Ireland, respectively, as the case
may be, (having first obtained the leave of his Majesty's attorney-general or
solicitor-general in case of an English patent, of the lord-advocate or soli-
citor-general of Scotland in the case of a Scotch patent, or of his Majesty's
attorney-general or solicitor-general for Ireland In the case of an Irish patent,
certified by his fiat and signature,) a disclaimer of any part of either the title
of the invention or of the specification, stating the reason for such disclaimer^
or may, with such leave as aforesaid, enter a memorandimi of any alteration
in the said title or specif cation, not being such disclaimer or such alteration.
1 Turner r. "Winter, 1 T. R. 602. The specification to this patent is what a
scientific man, unacquainted with legal strictness, would naturally have made. It
contains almost every fault generally found in the descriptions of this class of
manufacttu-es. It is, therefore, given fidly in the different parts of the text.
2 10 B. & C. 22.
34
266 LAW OP PATENTS.
as shall extend tie exclusive right granted by the said letters-patent ; and"
such disclaimer or memorandum of alteration, being filed by the said clerk
of the patents, and enrolled with the specification, shall be deemed and taken
to be part of such letters-patent, or such specification, in all courts whatever ;
provided always, that any person may enter a caveat, in like manner as caveats
are now used to he entered,\ against such disclaimer or alteration ; which
caveat, being so entered, shall give the party entering the same a right to
have notice of the application being heard by the attorney-general or sdli-
citor-f»eneral, or lord-advocate, respectively ; provided also, that no such dis-
claimer or alteration shall be receivable in evidence, in any action or suit
(save and except in any proceeding by scire facias) pending at the time when
such disclaimer or alteration was enrolled, but, in every such action or suit,
the original title and specification alone shall be given in evidence, and
deemed and taken to be the title and specification of the invention for which
the letters-patent have been or shall have been granted ; provided also, that
it shall be lawful for the attorney-general or solicitor-general, or lord-advo-
cate, before granting such fiat, to require the party applying for the same to
advertise his disclaimer or alteration, in such manner as to such attorney-
general or solicitor-general, or lord-advocate, shall seem right; and shall, if
he so require such advertisement, certify in his fiat that the same has been
duly made."
The entry of a disclaimer of part of a specification, under the 5 & 6 Will.
IV. c. 83, § 1, does not give a right of action for infringements committed
previously to the disclaimer.2
1 See Godson on Pat. eh. v. as to the method of entering caveats.
2 Perry v. Skinner, in Exch. E. T. 1837 ; Law Journal, p. 127.
CHAPTER II.
PROCEEDINGS AT THE PATENT OFFICE.
I. Caveat for Incomplete Invention.
n. The Petition, Oath, Payment of Fees,
m. Signatures of the Secretary of State and Commissioner.
IV. Interfering Applications.
V. Renewal and Amendment of Patents.
\
Caveat for Incomplete Invention.
§ 170. The twelfth section of the Act of July 4, 1836, pro-
vides that any citizen of the United States, or alien, who
shall have been resident in the United States one year next
preceding, and who shall have made oath of his intention to
become a citizen thereof, who shall have invented any new
art, machine, or improvement thereof, and shall desire fur-
ther time to mature the same, may, on payment of the sum
of twenty dollars, file in the Patent-Office a caveat, setting
forth the design and purpose thereof, and its principal and
distinguishing 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 be considered a part of the sum required for the
same. And such caveat shall be filed in the confidential
archives of the office, and preserved in secrecy. And if ap-
plication shall be made by any other person within one year
from the time of filing such a caveat, for a patent of any in-
vention with which it may in any respect interfere, it shall be
the duty of the commissioner to deposit the description, spe-
cifications, drawings, and model, in the confidential archives
268 LAAV OF PATENTS.
of the office, 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, specifications,
drawings, and model ; and if, in the opinion of the commis-
sioner, the specifications of claim interfere with each other,
like proceedings may be had in all respects as are provided
in the case of interfering applications.
The Petition, Oath, Payment of Fees, etc.
§ 171. The Act of 1836, § 6, requires an inventor who de-
sires to obtain a patent, to " make application in writing to
the Commissioners of Patents," &c. This application in
writing has, from the origin of the government, been by way
of petition, generally with the specification annexed and re-
ferred to, or accompanied by the specification, filed at the
same time. The form of the petition is not material, pro-
vided it set forth the facts to which the applicant is required
to make oath. When filed, it is to be presumed to adopt the
specification, or schedule, filed at the same time, and to ask
for a patent for the invention therein described.^
§ 172. The applicant is also required to make oath or af-
firmation, that he does verily believe that he is " the original
and first inventor," &c., " and that he does not know or be-
lieve 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 authorized by law to admi-
nister oaths.2
^ Hogg V. Emerson, 6 Howard, 437, 480. The rules of tlie Patent-Office
give a form of petition which it is advisable to adojDt, in all cases. Sec Ap-
pendix.
2 Act of July 4, 1836, § 6. The oath extends to all described in the
schedule filed with the petition, as well as to the title or description of the
invention contained in the petition itself. Hogg v. Emerson, 6 Howard,
437, 482.
THE PETITION, OATH, PAYMENT, ETC. 269
§ 173. The applicant is required to make oath or affirma-
tion, not that he is the original and first inventor or disco-
verer, but that he believes himself to be so. He cannot know
absolutely whether he first invented or discovered the thing
for which he claims a patent, but he may believe that he did ;
and it is only when he is willing to make oath that he so
believes, that the law grants him the patent. A subsequent
section of the same statute provides for one case, in which a
patent shall still be valid, if issued to an applicant who be-
lieved himself to be the first inventor or discoverer, although
he was not so, in point of fact. This case is where the in-
vention or discovery had been previously known or used in
a foreign country, but had not been patented or described in
any public work, and the patentee was ignorant of that fact.
If the patentee, before making his application, had learned
that the thing had been known or used in a foreign country,
although not patented, or described in any foreign work, he
cannot have believed himself to be the first inventor or dis-
coverer. But if he learn the fact after he has taken the oath,
it will not invalidate his patent.^
§ 174. An irregularity in the form of the oath will be cured
by the issuing of the patent, and it seems that a patent would
be valid, when issued, although the oath might not have been
taken at all. It has been held that the taking of the oath is
only a prerequisite to the granting of the patent, and in no
degree essential to its validity; so that, if the proper author-
ities, from inadvertence or any other cause, should grant a
patent, where the applicant had not made oath according to
the requisitions of the statute, the patent would still be valid.
But where the oath has been taken and is recited in the pa-
tent, it is the foundation of the onus probandi thrown on the
party who alleges that the patentee was not the original and
first inventor.2
1 Act 4th July, 1836, § 15.
2 Aldcn V. Dewey, 1 Story's R. 336, 341.
270 I^AW OF PATENTS.
§175. The ninth section of the statute provides that, before
any application for a patent shall be considered by the com-
missioner, the applicant shall pay into the treasury of the
United States, or into any of the deposit banks, to the credit
of the Treasury, if he be a citizen of the United States, or
an alien, and shall have been resident in the United States
for one year next preceding, and shall have made oath of his
intention to become a citizen thereof, the sum of thirty dol-
lars ; if a subject of the King of Great Britain, the sum of
five hundred dollars.^
Signatures of the Secretary of State and of the
Commissioner of Patents.
§ 176. The Act of July 4, 1836, c. 357, § 5, provides that
patents shall be issued from the Patent-Office, " in the name
of the United States, and under the seal of said office, and be
signed by the secretary of state, and countersigned by the
commissioner of said office."
§ 177. It has been held that the sanction of the secretary
of state to a correction of a clerical mistake in letters-patent,
may be given in writing afterwards ; and that he need not
resign the letters themselves. But the commissioner, if he
be the same officer who countersigned the letters originally,
may make the correction, without resigning or resealing.
If the mistake occurs in the copy of the patent, and not in
the record or enrolment, it may be corrected by the commis-
sioner, and made to conform to the original. If the mistake
in the enrolled patent be a material one, the letters cannot
operate, except on cases arising after the correction is made;
but, if the correction be of a clerical mistake only, it operates
back to the original date of the letters, unless, perhaps, as to
1 Act 4tli .July, 1836, § 9.
RENEWAL OR AMENDMENT OF A PATENT. 271
third persons, who have acquired intervening rights to be
affected by the alteration.^
§ 178. It has also been held, that a signature to the patent,
and a certificate of copies by a person calling himself " acting
commissioner," is sufficient on its face, in controversies be-
tween the patentee and third persons, as the law recognizes
an acting commissioner to be lawful.^
Renewal or Amendment of a Patent.
§ 179. The Act of July 4, 1836, § 13, makes the following
provision in case of a defective or insufficient specification, or
of the subsequent invention of something which the patentee
wishes to add to his specification.
§ 180. " And be it further enacted : That, whenever any
patent which has heretofore been granted, or which shall
hereafter be granted, shall be inoperative or invalid, by reason
of a defective or insufficient description or specification, or
by reason of the patentee claiming in his specification, as his
own invention, more than he had or shall have a right to
claim as new ; if the error has or shall have arisen by inad-
vertency, accident, or mistake, and without any fraudulent or
deceptive intention, it shall be lawful for the commissioner,
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 cor-
rected description and specification. And, in case of his
death, or any assignment by him made of the original patent.
1 Woodworth v. Hall, 1 Woodb. & M. 248 ; S. C. Ibid. 389.
2 Woodworth v. Hall, 1 Woodb. & M. 248. Where evidence is offered
to prove that the " acting commissioner " who signs a patent was not appointed
by the President, it is doubtful whether it is competent in controversies
where he is not a party. S. C. 1 Woodb. & M. 389.
272 LAW OF PATENTS.
a similar right shall vest in his executors, administrators, or
assignees. And the patent so reissued, together with the
corrected description and specification, shall have the same
effect and operation in law, on the trial of all actions, here-
after commenced for causes subsequently accruing, as thpugh
the same had been originally filed in such corrected form,
before the issuing out of the original patent. And whenever
the original patentee shall be desirous of adding the descrip-
tion and specification of any new improvement of the original
invention or discovery, which shall have been invented or dis-
covered 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 herein before provided, have the same annexed to the
original description and specification; 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." ^
§ 181. The question has been made, how far the decision
1 The Act of Marcli 3, 1837, § 8, makes a further provision on this
subject :
" And be it further enacted, That, ■whenever application shall be made
to the commissioner for any addition of a newly-discovered improvement to be
made to an existing 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 restriction, in 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 accordance 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 pro-
ceedings, as are provided by law in the case of original applications for
patents."
RENEWAL OR AMENDMENT OF A PATENT. 273
of the commissioner upon the existence of a defective descrip-
tion, arising from inadvertence, accident, or mistake, is reex-
aminable elsewhere. This question arises, when the defence
is set up, that the renewed patent is for a different invention
from the old one. As the description in the new patent dif-
fers from that in the old, if the decision of the commissioner,
by which the new patent was granted under the statute, is
open to reexamination, so that the fact of the existence of
defects in the former patent can be inquired into, the point
is open to the defendant to contend that the new patent is
not for the same invention, covered by the old one. But, on
the other hand, if the action of the Commissioner is conclu-
sive, then the granting of a new patent, in the proceeding
provided by the statute, precludes all inquiry into the fact
whether it was rightly granted, and makes the new patent of
necessity applicable to the same invention as the old one.
§ 181 a. It has not been satisfactorily determined, what
precise weight is to be given to the decision of the Commis-
sioner. Under the Act of 1832, the Supreme Court of the
United States held, that the reissue of a patent by the Com-
missioner, on account of a defective specification, was primd
facie evidence that the proofs required by the statute had
been regularly made, and were satisfactory .^ Subsequently,
under the Act of 1836, the same court appear to have con-
sidered the granting of the renewed patent as so far conclu-
sive upon the question of the existence of error in the original
patent, arising from inadvertency, accident, or mistake, that
nothing remained open but the fairness of the transaction ;
that the question of fraud might be raised, and that this was
* for the jury; but that, unless the surrender and renewal were
impeached by showing fraud, the reissue must be deemed
conclusive proof that the case provided for by the statute
1 The Philadelpliia and Trenton Rail Road Company v. Stimpson, 14
Peters, 448.
35
274 LAAV OF PATENTS.
existed.^ This was the view taken by Mr. Justice Story, in
two previous cases.^ Mr. Justice Woodbury seems to have
1 Stimpson v. Westchester Eail Road Company, 4 Howard, 380.
2 Woodwortli V. Stone, 3 Story's R. 740, 753. In tins case, -vvbicli was in
equity, the learned judge said: "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 dif-
ferent. But I apprehend that, upon the face of the present patent, the ques-
tion is scarcely open for the consideration 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 the 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 appa-
rent 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 invention, and none other, that Is contained in
the old patent. The avowed difference 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 ascertained. 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 was any deficit in the specification or not, by Inad-
vertence, accident, or mistake ; and, consequently, he must have decided
that the combination of machinery claimed in the old patent was. In sub-
stance, 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 dressing 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
RENEWAL OR AMENDMENT OF A PATENT. 275
regarded the effect of the Commissioner's action, as held by
the Supreme Court, somewhat differently.^
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 jjroperly
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 reverse 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."
In Allen v. Blunt, 3 Story's R. 742, 743, which was an action at law, he
observed, " The 13th section of the Patent Act of 1836, ch. 357, enacts,
that, whenever any patent shall be Inoperative or invalid, by reason of a de-
fective or insufficient description or specification, or by reason of the j^atentee
claiming in his specification, as his own Invention, more than he had or shall
have a right to claim as new, if the error has or shall have arisen by Inad-
vertency, accident, or mistake, and without any fraudulent or deceptive in-
tention. It shall be lawful for the commissioner, 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 for the same Invention, for the residue of the
term, then unexpired, for which the original patent was granted, in accord-
ance with the patentee's corrected description and specification. Now, the
specification may be defective or Insufficient, either by a mistake of law, as
to what is required to be stated therein In respect to the claim of the Inventor,
or by a mistake of fact, in omitting things which are indispensable to the
completeness and exactness of the description of the invention, or of the
mode of constructing, or making, or using the same. Whether the invention
claimed in the original patent, and that claimed in the new amended patent.
Is substantially the same. Is and must be. In many cases, a matter of great
nicety and difficulty to decide. It may involve consideration of fact, as well
as of law. Who is to decide the question ? The true answer is, the Com-
missioner of Patents ; for the law entrusts him with the authority, not only
1 Allen V. Blunt, 2 Woodb. & ]\Iinot, 121, 138 ; Woodworth v. Edwards,
3 Woodb. & Mnot, 120.
276 LAW OF PATENTS.
§ 182. Mr. Justice Story has held, that the statutes which
authorize the reissue of a patent, because of a defective or
redundant specification or description, without fraud, or for
to accept the surrender, but to grant tlie new amended patent. He is bound,
therefore, by the very nature of his duties, to inquire into and ascertain,
whether the specification is sufficient or insufficient, in point of law or fact,
and whether the inventor has claimed more than he has invented, and, in
such case, whether the error has arisen from inadvertency, accident, or
mistake, or with a fraudulent or deceptive intention. No one can well
doubt, that, in the first instance, therefore, he is bound to decide the whole
law and facts arising under the application for the new patent. Prima facie,
therefore, it must be presumed that the new amended patent has been pro-
perly and rightfully granted by him. I very much doubt whether his deci-
sion is or can be reexaminable in aay other place, or in any other tribunal,
at least, unless his decision is impeached, on account of gross fraud or con-
nivance between him and the patentee ; or unless his excess of authority is
manifest upon the very face of the papers ; as, for example, if the original
patent were for a chemical combination, and the new amended patent were
for a machine. In other cases, it seems to me, that the law, having
entrusted him with authority to ascertain the facts, and to grant the patent,
his decision, honu fide made, is conclusive. It is like many other cases,
where the law has referred the decision of a matter to the sound discretion
of a public officer, whose adjudication becomes conclusive. Suppose the
Secretary of the Treasury should remit a penalty or forfeiture incurred by
a breach of the laws of the United States, would his decision be reexamina-
ble in any court of law, upon a suit for the penalty or forfeiture ? The
President of the United States is, by law, invested with authority to call
for the militia to suppress insurrections, to repel invasions, and to execute
the laws of the Union ; and it has been held by the Supreme Court of the
United States, that his decision as to the occurrence of the exigency, is
conclusive. (Martin v. Mott, 12 Wheat. R. 19.) In short, it may be laid
down as a general rule, that, where a particular authority is confided to a
public officer, to be exercised by him, in his discretion, upon the examination
of facts, of which he is made the appropriate judge, his decision upon these
facts Is, in the absence of any controlling provisions, absolutely conclusive
as to the existence of those facts. My opinion, therefore, is, that the grant
of the present amended patent by the Commissioner of Patents, is conclusive
as to the existence of all the facts which were by law necessary to entitle
him to issue it ; at least, unless it was apparent on the very face of the
patent Itself, without any auxiliary evidence, that he was guilty of a clear
excess of authority, or that the patent was procured by a fraud between him
and the patentee, which Is not pretended In the present case."
RENEWAL OR AMENDMENT OF A PATENT. 277
the purpose of adding thereto an improvement, do not require
the patentee to claim, in his renewed patent, all things which
were claimed in his original patent, but they give him the
privilege of retaining whatever he deems proper.^
1 Carver v. The Braintree Manuf. Co. 2 Story's K 432, 438. In this case,
the learned judge said : " The next objection is, that the patentee has
omitted some things in his renewed patent, which he claimed in his original
patent as a part of his invention, viz., the knob, the ridge, and the flaring of
the lateral surface of the rib above the saw, and that he claims, in his renewed
patent, the combination of the thickness and the slope of the front and back
surfaces of the rib. Now, by the thirteenth section of the Patent Act of
1836, ch. 357, it is provided, that, whenever any patent which is granted,
" shall be inoperative or invalid, by reason of a defective or insufficient de-
scription or specification, or by reason of the patentee claiming in his speci-
fication, as his own invention, more than he had or shall have a right to
claim as new, if the error has or shall have arisen by inadvertency, mistake,
or accident, and without any fraudulent or deceptive intention, it shall be
lawful for the commissioner, upon the surrender to him of such patent, and
the payment of the further sum of fifteen dollars, to cause a new patent to
be issued to the 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 it is afterwards
added, that, " Whenever the original patentee shall be desirous of adding the
description of any new improvement of the original invention or discovery,
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 here-
inbefore provided, have the same annexed to the original description and
specification. The Act of 1837, ch. 45, § 8, further provides, " that, when-
ever any application shall be made to the commissioner for any addition, or
a newly discovered improvement, to be made to an existing patent, or when-
ever a patent shall be returned for correction and reissue, the specification
annexed to every such patent shall be subject to revision and restriction, in
the same manner as original applications for patents ; the commissioner shall
not add any such improvements 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 accordance with the decision of the
commissioner." (Act of 1836, ch. 357, § 15.)
Now I see nothing in these provisions which, upon a reissue of a patent,
requires the patentee to claim all things in the renewed patent, which were
claimed as his original invention, or part of his invention in his original
278 LAW OF PATENTS.
§ 183. When a patent is thus renewed, it is granted for
the unexpired term, commencing from the date of the original
patent, which is surrendered. Consequently, it operates from
the commencement of the original, and will enure to the
benefit of assignees, who became such before the renewal,
although no assignment is made to them after the renewal.^
patent. On the contrary, if liis original patent claimed too much, or if the
commissioner deemed it right to restrict the specification, and the patentee
acquiesced therein, it seems to me, that, in each case, the renewed patent, if
it claimed less than the original, would be equally valid. A specification
may be defective and unmaintainable under the Patent Act, as well by an ex-
cess of claim, as by a defect in the mode of stating it. How can the court
in this case judicially know, whether the patentee left out the knob and
ridge, and flaring of the lateral surface of the rib, in the renewed patent,
because he thought that they might have a tendency to mislead the public,
by introducing what, upon further reflection, he deemed immaterial or unes-
sential, and that the patent would thus contam more than was necessary to
produce the described effect, and be open to an objection, which might be
fatal to his right, if it was done to deceive the pubhc ? (Act of 1836, ch.
357, § 15.) Or, how can the court judicially know, that the commissioner
did not positively require this very omission ? It is certain, that he might
have given it his sanction. But I incline very strongly to hold a much
broader opinion ; and that is, that an inventor is always at liberty, in a re-
newed patent, to omit a part of his original invention, if he deems it expedi-
ent, and to retain that part only of his original invention, which he deems
it fit to retain. No harm is done to the public by giving up a part of what
he has actually invented ; for the public may then use it ; and there is
nothing in the policy or terms of the Patent Act, which prohibits such a
restriction.
The other part of the objection seems to me equally untenable. If the
description of the combination of the thickness, and the slope of the front
and back surfaces of the rib, were a part of the plaintiff's original invention,
(as the objection itself supposes,) and were not fully stated in the original
specification, that is exactly such a defect as the Patent Acts allow to be
remedied. A specification may be defective, not only in omitting to give a
full description of the mode of constructing a machine, but, also, in omitting
to describe fully in the claim, the nature and extent, and character of the
invention itself. Indeed this latter is the common defect, for which most
ronewed patents are granted."
1 Woodworth v. Stone, 3 Story's E. 749. Woodworth v. Hall, 1 Wood-
bury & Minot, 248. Both of these cases related to the same patent. In the
RENEWAL OR AMENDMENT OF A PATENT. 279
§ 184. The Supreme Court of the United States have de-
cided, upon great consideration, that the Commissioner of
first, Mr. Justice Story said : " If the present case had stood merely upon
the original bill, it ai:)peaas to me clear, that the motion to dissolve the
injunction granted upon that bill, ought to prevail, because, by the surren-
der 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 pa-
tentee, by a surrender of his patent, to aflFect 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 assignees, who are parties to the original
and supplemental bill, have consented to such a 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 accu-
racy, some of the objections to the continuance of the injunction, it may be
necessary to state, that the original patent to William Woodworth, (the in-
ventor,) who is since deceased, was granted on the 27th of December, 1828.
Subsequently, under the 18th section of the Act of 1836, ch. 357, the Com-
missioner of Patents, on the 16th of November, 1842, recorded the patent in
favor of William W. Woodworth, the administrator of William Woodworth,
(the inventor,) for seven years, from the 27th of December, 1842. Con-
gress, by an act passed at the last session, (Act of 27th of February, cb. 27,)
extended the time of the patent for seven years, from and after the 27th
of December, 1849, (to which time the renewed patent extended) ; and the
Commissioner of Patents was directed to make a certificate of such exten-
sion, in the name of the administrator of William Woodworth, (the inventor,)
and to append an authenticated 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 certificate on the ori-
ginal patent. On the 8th day of July, 1845, the administrator surrendered
the renewed patent granted to him, " on account of a defect in the specifica-
tion." The surrender was accepted, and a new patent was granted on the
same day to the administrator, reciting the preceding facts, and that the sur-
render was " on account of a defective specification," and declaring that the
new patent was extended for fourteen years from the 27th December, 1828,
" in trust for the heirs at law of the said W. Woodworth, (the inventor,)
their heirs, administrators or assigns."
Now, one of the objections taken to the new patent is, that it is for the
280 LAW OF PATENTS.
Patents can lawfully receive a surrender of letters-patent for
a defective specification, and issue new letters-patent upon
term of fourteen years, and not for tlie term of seven years, or for two suc-
cessive 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 effect 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 unexpired period existing on the 8th of July, 1845, by reference to the
ori<^inal 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 W. Wood-
worth, 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 13h sections of
the Act of 1836, ch. 357, taking 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 bill, can ha^-e no application
to the new patent, and there is no ground to suggest, that, since the in-
junction 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 establish
a breach before the suit was brought. But, in a suit in equity, the doctrine
is far otherwise. A bill will lie 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
already granted, (supposing both patents to be for the same invention,) is
prima facie evidence of an intended violation, if not of an actual violation."
In the last case, Mr. Justice Woodbury said : " The original patent for
fourteen years, given in December, 1828, expired in 1842, and, though it
was extended by the board for seven years more, which would last till 1849,
and by Congress for seven more, which would not expire till 1856, yet all
of these patents were surrendered July 8th, 1845, and a new one taken out
for the whole twenty-eight years from December, 1828. This was done,
also, with some small amendments or corrections, in the old specification of
1828. After these new letters-patent for the whole term, no assignment
RENEWAL OR AMENDMENT OF A PATENT. 281
an amended specification, after the expiration of the term for
which the original patent was granted, and pending the
existence of an extended term of seven years. Such sm*-
render and renewal may be made at any time during such
extended term.^
§ 185. Specifications may also be amended by another pro-
cess, that of filing a disclaimer, whenever, through inadvert-
ence, accident, or mistake, the original claim was too broad,
claiming more than that of which the patentee was the ori-
ginal or first inventor, provided some material and substan-
tial part of the thing patented is justly and truly his own.
Such a disclaimer may be filed in the Patent Ofiice by the
patentee, his administrators, executors, and assigns, whether
of the whole or of a sectional interest in the patent ; and it
having been made to Washburn and Brown, but only one previously on the
2d of January, 1843, the plauitifTs contend that, all the previous letters being
surrendered, and a new specification filed, and new letters issued, any con-
veyance of any interest under the old letters is inoperative and void under
the new ones ; and hence that Washburn and Brown possess no interest in
these last, and are improperly joined in the bill.
But my impression, as at present advised, is, that, when a patent has been
surrendered, and new letters are taken out with an amended specification,
the patent has been always considered to operate, except as to suits for vio-
lations committed before the amendment, from the commencement of the
original term. The amendment is not because the former patent or specifi-
cation was utterly void, as seems to be the argument, but was defective or
doubtful in some particular, which it was expedient to make more clear.
But it is still a patent for the same invention. It can by law include no new
one, and it covers only the same term of time which the former patent and
its extensions did.
In the present case, these are conceded to have been the facts ; and it is
an error to suppose that, on such facts, the new letters ought to operate only
from their date. By the very words of those letters, no less than by the
reasons of the case as just explained, they relate back to the commence-
ment of the original term, and, for many purposes, should operate from that
time."
1 Wilson t'. Rousseau, 4 Howard, 646. If a new patent, issued on a sur-
render of an old one, be void for any cause connected with the acts of pub-
36
f
282 LAW OF PATENTS.
will be thereafter taken and considered as part of the ori-
ginal specification, to the extent of the interest of the dis-
claimant in the patent, and by those claiming by or under
him, subsequent to the record thereof.^
§ 186. Patents are sometimes extended by special Acts of
Congress, passed upon the application of the patentees. But,
by the Act of July 4th, 1836, c. 357, § 18, the Secretary of
State, the Commissioner of the Patent Office, and the Soli-
citor of the Treasury were constituted a board of commis-
sioners, to hear evidence for and against the extension prayed
for, and to decide whether, having due regard to the public
interest therein, it is just and proper that the term of the
patent should be extended, because the patentee has failed to
obtain a reasonable remuneration. The commissioners being
satisfied that the patent ought to be renewed, it was made
the duty of the Commissioner of Patents to make a certi-
ficate on the original patent, showing that it is extended for
a further term of seven years from the expiration of the first
terra.
§ 187. But, by a very recent statute, this power is vested
solely in the Commissioner of Patents, who is required to
refer the application to the principal examiner, having charge
of the class of inventions to which the case belongs, and,
upon his report, to grant or refuse the patent, upon the same
principles and rules that have governed the board provided
by the former act.^
lie officers, it is questionable whether the original patent must not be consi-
dered in force till its term had expired. Woodworth v. Hall, 1 Woodb. &
Minot, 389.
1 Act of Mar. 3, 1837, § 7. As to the effect of a disclaimer on actions,
see the Chapter on Remedy.
2 Act of Cong. May 27, 1848, § 1. This act declares that no patent shall
be extended for a longer term than seven years.
PART III.
TRANSmSSION OF THE INTEREST
IN
LETTERS-PATENT.
I
PAET III.
TRANSMISSION OF THE INTEREST IN LETTERS-
PATENT.
CHAPTER I.
OF ASSIGNMENTS AND LICENSES.
§ 188. The Act of Congress of July 4, 1836, § 11, provides
" that every patent shall be assignable in law, either as to
the whole interest, or any undivided part thereof, by any in-
strument 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."
§ 189. The interest that is thus made assignable by statute,
is undoubtedly assignable at common law. But it has been
deemed proper to regulate the assignment of patents by sta-
tute. An invention may be assigned for the patent before it is
taken out, so as to vest in the assignee the exclusive inte-
rest when the patent has issued ; but the application must be
made and the specification duly sworn to by the inventor, and
the assignment must be recorded.^ The interest in a patent
1 Act of Mar. 3, 1837, § C. Herbert v. Adams, 4 Mas. 15; Dixon y.
286 LAW OF PATENTS.
may also be assigned by operation of law, in case of the bank-
ruptcy of the patentee, as well as by his voluntary assignment.
There is no question that a patent already obtained passes to
assignees in bankruptcy ; and, in England, it has been held that
a patent issued after an act of bankruptcy and an assignment
by the commissioners, but before the bankrupt had obtained
his certificate, passes to the assignees.^ It is necessary, how-
ever, that the intention should have been perfected, and, at
least, that the bankrupt inventor should have applied for a
patent. It was said, in the case just cited, that the schemes
which a man has in his head, or the fruits which he may
make of them do not pass ; but if he has carried his schemes
into effect, and thereby acquired a beneficial interest, that
interest is of a nature to be affected by an assignment in
bankruptcy. Under our system, I conceive that such an in-
terest would have been acquired, after the application for a
patent. The party has then done all that the law requires
for the creation of the interest, and the issue of the patent
Moyer, 4 Wash. 71, 72. So also, it has been held that a contract may be
made to convey a future invention, as -well as a past one, and for any im-
provement or maturing of a past one ; and that a bill in equity -will lie to
compel a specific performance. Nesmith v. Calvert, 1 Woodb. & M. 34.
"An assignment of an invention before the issuing of a patent, is valid, under
§ 6 of the Act of March 3d, 1837, (5 U. S. Stat, at Large, 193,) although it
is made after the rejection, by the Commissioner of Patents, of the assignor's
application for a patent, and after an appeal thereon to the Chief Justice of
the District of Columbia.
" The assignee under such an assignment may file a bill in his own name,
under § 16 of the Act of July 4th, 1836, (5 U. S. Stat, at Large, 123,) and
§ 10 of the Act of March 3d, 1839, (Id. 354,) against the patentee to whom
the patent was issued on the rejection of the assignor's application, for the
purpose of annulling the patent issued, and having one granted to him as
assignee.
" And it is not necessary that the assignment should be recorded in the
Patent Office before the filing of the biU. It is enough, if it be recorded at
any time before the issuing of the patent." Gay v. Cornell, in Equity,
1 Blatch. Ct. Court R. 506.
1 Hesse v. Stevenson, 3 Bos. & P. 565.
OF ASSIGNMENTS AND LICENSES. 287
furnishes him with the evidence of his exclusive right.
Whether an invention perfected and reduced to practice, ca-
pable of supporting a patent, but for which no application
had been made for a patent, at the time when the assignment
in bankruptcy attaches to the bankrupt's effects, would pass to
the assignees, is a more difficult question. The mere mate-
rial in which the invention had been incorporated would un-
doubtedly pass, but this is distinguished from the invention
itself, which has not become a vested interest under the Patent
Law, until the proper application has been made by the proper
party, who mvist be the inventor and no one else. It would
seem that the assignees would not render themselves liable
to an action for infringement, at the suit of the subsequent
patentee, (the bankrupt,) for selling such materials, as in the
case of a newly invented machine, patented after the property
in the materials had passed to them;^ but, whether the pur-
chaser could thus acquire any right, as against the inventor,
to use those materials in the shape of the invention, as intend-
ed to be used by the inventor, who had used due diligence
in obtaining his patent, may admit of doubt.
§ 190. The statute renders it necessary to record the assign-
ment in the Patent Office. Three classes or degrees of inte-
rest by assignment, and no others, are thus required to be
recorded ; first, an assignment of the whole patent ; second,
an assignment of an undivided part of the whole patent ; and,
third, a grant or conveyance of the exclusive right under the
patent, for any part or specified portion of the United States.
Assignments, of these several classes, must be recorded in the
Patent Office, within three months of the execution thereof,
to affect intermediate bond fide purchasers, without notice.
But it has been held that, in other respects, the statute is
merely directory, and that any subsequent recording will be
sufficient to pass the title to the assignee.^
1 Sawin v. Guild, 1 Gallis. 485.
2 Brooks V. Byam, 2 Story's R. 526 ; Pitts v. Whitman, lb. 609, 614. In
288 LAW OF PATENTS.
§ 191. But the assignee can maintain no suit, in law or
equity, upon the patent, either as a sole or as a joint plain-
this last case, Mr. Justice Story said : — " The first objection taken upon the
motion for a new trial is, that the deed of assignment from John A. Pitts
to the plaintiff, dated on the 17th of April, 1838, was not recorded in the
Patent Office until the 19th of April, 1841, after the present suit was com-
menced ; whereas it ought to have been recorded within three months after
the execution thereof By the Patent Act of 1 793, ch. 55, § 4, every assign-
ment, when recorded in the office of the Secretary of State, was good to
pass the title of the inventor, both as to right and responsibility ; but no
time whatever was prescribed, within which the assignment was required to
be made. By the 11th section of the Act of 1836, ch. 357, it is provided,
" That every patent shall be assignable in law, either as to the whole inte-
rest or any undivided part thereof, by any instrument in writing ; which
assignment, and also every grant and conveyance of an 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 portion of the United
States, shall be recorded in the Patent Office, within three months from the
execution thereof" Now, it is observable, that there are no words in this
enactment which declare that the assignment, if not recorded, shall be
utterly void ; and the question, therefore, is, whether it is to be construed as
indispensable to the validity of an assignment, that it should be recorded
within the three months, as a sine qua non ; or whether the statute is merely
directory for the protection of purchasers. Upon the best reflection which
I have been able to bestow upon the subject, my opinion is, that the latter is
the true interpretation and object of the provision. My reasons for this
opinion are, the inconvenience and difficulty and mischiefs, which would
arise upon any other construction. In the first place, it is difficult to say
why, as between the patentee and the assignee, the assignment ought not
to be held good as a subsisting contract and conveyance, although it is
never recorded, by accident, or mistake, or design. Suppose the patentee
has assigned his whole right to the assignee, for a full and adequate consider-
ation, and the assignment is not recorded within the three months, and the
assignee should make and use the patented machine aflerwards ; could the
patentee maintain a suit against the assignee for such making or use, as a
breach of the patent, as if he had never parted with his right? This would
seem to be most inequitable and unjust; and yet, if the assignment became a
nulfity and utterly void, by the non-recording within the three months, it
would seem to follow, as a legitimate consequence, that such a suit would be
maintainable. So strong is the objection to such a conclusion, that the
learned counsel for the defendant admitted, at the argument, that, as between
OF ASSIGNMENTS AND LICENSES. 289
tiff, against third persons, until his assignment has been
recorded, according to the requisitions of the statute.^ For
the patentee and the assignee, the assignment would be good, notwithstand-
ing the omission to record it. If so, then it would seem difficult to see why
the assignment ought not to be held equally valid against a mere wrong-
doer, piratically invading the patent-right.
Let us take another case. Could the patentee maintain a suit against a
mere wrongdoer after the assignment was made, and he had thereby parted
with all his interest, if the assignment was not duly recorded ? Certainly it
must be conceded that he could not, if the assignment did not thereby
become a mere nullity, but was valid as between himself and the assignee ;
for then there could accrue no damage to the patentee, and no infringement
of his rights under the patent. Then, could the assignee, in such a case,
maintain a suit for the infringement of his rights under the assignment ? If
he could not, then he would have rights without any remedy. Nay, as upon
this supposition, neither the patentee nor the assignee could maintain any
suit for an infringement of the patent, the patent-right itself would be utterly
extinguished in point of law, for all transferable purposes. Again ; could
the assignee, in such a case, maintain a suit for a subsequent infringement
against the patentee ? If he could, then the patentee would be in a worse
predicament than a mere wrongdoer. If he could not, then the assignment
would become, in his hands, in a practical sense, worthless, as it would be
open to depredations on all sides. On the contrary, if we construe the 10th
section of the act to be merely directory, full effect is given to the apparent
object of the provision, the protection of purchasers. Why should an
assignment be required to be recorded at all ? Certainly not for the benefit
of the parties, or their privies ; but solely for the protection of purchasers,
who should become such, honCi fide, for a valuable consideration, without
notice of any prior assignment. By requiring the recording to be within
three months, the act, in effect, allows that full period for the benefit of the
assignee, without any imputation or impeachment of his title for laches in the
intermediate time. If he fails to record the assignment within the three
months, then every subsequent lond fide purchaser has a right to presume
that no assignment has been made within that period. If the assignment
has not been recorded until after the three months, a prior purchaser ought,
upon the ground of laclies, to be preferred to the assignee. If he purchases
after the assignment has been recorded, although not within the three months,
the purchaser may justly be postponed, upon the ground of mala fides, or
constructive notice of the assignment. In this way, as it seems to me, the
1 Wyeth V. Stone, 1 Story's K. 273.
37
290 LAW OF PATENTS.
the purposes of such a suit, however, it will be sufficient
if the assignment is recorded at any time before the trial or
hearing.^
§ 192. An assignment vests in the assignee an interest in
the patent, indefeasible by act of the patentee, so that the
patentee cannot, by a surrender of his patent, affect the
rights of an assignee, to whom he has previously granted the
whole or a part of the patent, without the consent of such
assignee.2 j^ fact, the statute which authorizes a surrender
and reissue of a patent, on account of a defective specifica-
tion, expressly saves the rights of assignees in the patent, by
this clause ; " and in case of his (the patentee's) death, or
any assignment by him, made of the original patent, a simi-
lar right (that of surrender and reissue,) shall vest in his exe-
true object of tlie provision is obtained, and no injustice is done to any party.
In respect to mere wrongdoers, who have no pretence of right or title, it is
difficult to see what ground of policy or principle there can be in giving them
the benefit of the objection of the non-recording of the assignment. They
violate the patent-right with their eyes open ; and, as they choose to act in
fraudem legis, it ought to be no defence, that they meant to defraud or injure
the patentee, and not the assignee. Indeed, if the defence were maintain-
able, it would seem to be wholly immaterial whether they knew of the
assignment or not.
In furtherance, then, of right and justice, and the apparent policy of the
act, ui res magis valeat quam j^ereat, and in the absence of all language
importing that the assignment, if unrecorded, shall be deemed void, I con-
strue the provision as to recording to be merely directory, for the protection
of boiid fide purchasers without notice. And, assuming that the recording
within the three months is not a prerequisite to the validity of the assign-
ment, it seems to me immaterial (even admitting that a recording at some
time is necessary,) that it is not made until after the suit is brought. It is
like the common case of a deed required by law to be registered, on which
the plaintiff founds his title, where it is sufficient, if it be registered before
the trial, although after the suit is brought ; for it is still admissible in evi-
dence, as a deed duly registered." See, also, Boyd tj. McAlpiu, 3 McLean's
R. 427.
1 Pitts V. Whitman, ul supra.
3 Woodworth v. Stone, 3 Story's R. 749, 750.
OP ASSIGNMENTS AND LICENSES. 291
cutors, administrators, or assignees." ^ Strictly, therefore, an
assignee should be a party to the surrender ; but if he is not,
and the surrender is made by the patentee, and the patent is
reissued to him, it seems that assignments, made before the
surrender, are not vacated, but the patent remains the same,
in contemplation of law, and the interests of assignees re-
main the same, without any new assignment.^
1 Actof 1836, § 13.
2 Woodworth v. Hall, 1 Woodbury & Miaot, 248, 256. " The original
patent for fourteen years, given in December, 1828, expired in 1842, and
though it was extended by the board for seven years more, which would last
till 1849, and by Congress for seven more, which would not expire till 1856,
yet all of these patents were surrendered July 8th, 1845, and a new one
taken out for the whole twenty-eight years, from December, 1828. This
was done, also, with some small amendments or corrections, in the old speci-
fication of 1828. After these new letters-patent for the whole term, no
assignment having been made to Washburn and Brown, but only one pre-
viously, on the 2d of January, 1843, the plaintiffs contend that, all the pre-
vious letters being surrendered, and a new specification filed, and new
letters issued, any conveyance of any interest under the old letters is
inoperative and void under the new ones ; and, hence, that Washburn and
Brown possess no interest in these last, and are improperly joined in the
bUl.
But my impression, as at present advised, is, that, when a patent has been
surrendered, and new letters are taken out with an amended specification,
the patent has been always considered to operate, except as to suits for
violations committed before the amendment, from the commencement of the
original term. The amendment is not because the former patent or specifi-
cation was utterly void, as seems to be the argument, but was defective or
doubtful in some particular, which it was expedient to make more cleai'.
But it is still a patent for the same invention. It can, by law, include no
new one, and it covers only the same term of time which the former patent
and its extensions did. In the present case, these are conceded to have been
the facts, and it is an error to suppose that, on such facts, the new letters
ought to operate only from their date. By the very words of those letters,
no less than by the reasons of the case, as just explained, they relate back
to the commencement of the original term, and, for many purposes, should
operate from that time. I do not say for all, as an exception will hereafter
be noticed. This is in strict analogy to amended writs and amended judg-
292 LAW OP PATENTS.
§ 193. A fortiori, if the assignee of a patent has consented
to the surrender, although he is not a party on the record of
ments, which, for most purposes, have the same effect as if the amended
matter was in them originally.
Again ; if such were not the result generally, the new letters would be
treated as taking out a new patent, or an old one in a form then first valid ;
and, in such a view, would, of course, run fourteen years from the date of
the new letters, instead of only fourteen from the issue of the original let-
ters ; or, if they had been extended, as here, fourteen longer, they would not
run only twenty-eight years from the beginning of the original term, that is,
December, 1828, as here, but twenty-eight years from July, 1845, the date
of the new letters.
Besides these considerations, it has been held that recoveries, under the
original patent, are evidence, after the new lettei's and new specification, to
strengthen the title of the plaintiff, so as to obtain an injunction ; thus
treating the patent as one and the same ; and the conveyance of it once,
therefore, for a specified term, as good for the term, whether an amended
specification be filed or not before the term closes. See Orr v. Littlefield,
1 Woodb. & M. 13. Also Orr v. Badger, before Justice Sprague, February,
1845.
It would be a little strange that a recovery, under the new and amended
and corrected specification, should be, as is another argument for the defend-
ant, any stronger evidence of right than a recovery, even when the specifi-
cation was more objectionable. Independent of these circumstances, it is
averred in the bill, as amended, that Washburn and Brown have adopted
and approved of the new specification ; and that they claim, under their
contract, and to the extent of it, all the rights conferred by it on the
patentee. There is, moreover, a clause in the Act of July 4, 1836, ch. 357,
§ 13, which seems to have been designed to dispose of such objections ; and,
thouorh it does not mention contracts or assignments, it is quite broad and
comprehensive enough to cover them. It is : — " The patent, so reissued,
together with the corrected descriptions and specifications, shall have the
same effect and operation in law, on the trial of all actions hereafter com-
menced for causes subsequently occurring, as though the same had been
originally filed in such corrected form, before the issuing of the original
patent."
It would be very doubtful, also, whether a misjoinder of parties, as
plaintiffs in an application of this kind, could defeat a prayer for an injunc-
tion not to use a machine in which any of them were interested. At law,
such a misjoinder could be objected to only in abatement, as the act sounds
ez delicto, (1 Ch. PI. 75) ; and, probably, it could not be objected to at all
or ASSIGNMENTS AND LICENSES. 293
the application at the Patent Office, it enures to his benefit
and becomes his act, and he is properly made a party in any
suits brought for infringement, within the territory covered
by the assignment.^ But the assignee or grantee, under the
original patent, does not acquire any right under the extended
patent, which may be obtained pursuant to the 18th section
of the Act of 1836, unless such right be expressly conveyed
to him by the patentee.^ But assignees, who were in the
use of a patented machine at the time of the renewal, have
still a right to use the machine, under the clause of the sta-
tute which declares that " 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 interests
therein." ^
§ 194. When a disclaimer is to be filed, under the 7th and
9th sections of the Act of 1837, an assignee of the whole
patent will be the proper party to file it ; and, if the patent
has been previously assigned in part, it has been held that the
disclaimer will not operate to the benefit of such an assignee,
in any suit by him, at law or in equity, unless he joined in
the disclaimer.^
in equity, though in the final judgment, of course, it would be entered up in
favor of those alone who appeared to have some right and interest to be
protected.
As the claims of two of the plaintiffs, however, have been already proved
and established, in several recoveries, before the new letters ; and the con-
tract now offered, under which they claim, confers on them a right to use
fifty planing machines within certain territory, including this city ; and
there is a covenant, by the grantees of that right, not to sell to different
persons liberty to use others within those limits, during the time of Wash-
burn and Brown's contract, their interest within them would seem to be
sufficiently exclusive to make them properly plaintiffs, and entitled to judg-
ment."
1 Woodworth v. Stone, 3 Story's R. 749.
2 Woodworth v. Sherman, 3 Story's R. 171 ; Wilson v. Rousseau, 4 How-
ard, 646.
3 Wilson V. Rousseau, ut supra.
4 Wyeth V. Stone, 1 Story's R. 273.
294 LAW OF PATENTS.
§ 195. The distinction between an assignment and a li-
cense relates to the interest in the patent, as distinguished
from the right to use the thing patented, or to practise the
invention. An assignment is a grant in writing of the whole
or a part of the exclusive right vested in the patentee by the
patent ; and such a part may be designated as an undivided
part of the whole patent, extending wherever the patent ex-
tends, or as a grant of the exclusive right within a particular
district. Each of these grants may carry with it the right to
grant to others the power of making and using the thing
patented, and in no degree diminishes the right of the paten-
tee ; it does not, per se, carry the right to grant to others the
power of exercising the invention, although it may involve
the right of selling the specific thing made, with the inci-
dental right of using it. Thus, when the patentee sells to
another a patented machine, made by himself, or permits such
person to make the machine, the party thus authorized be-
comes a licensee, with the right of selling the machine, which
carries with it the right of using it. But that party has no
interest in the patent ; he cannot authorize others to make
the machine ; nor does the permission extended to him dimi-
nish, in any degree, the exclusive right of the patentee to
make, or to authorize others to make, the patented machine.
So, where the subject of the patent is a compound or compo-
sition of matter, if the patentee authorizes another to make
and sell the article, that party becomes a licensee, with the
right of selling the article he may make to others, to be used
by them, in the way of consumption, for the purposes for
which it is intended, but he has no interest in the patent, and
no power to grant to others any portion of the exclusive right
of making the thing, which is vested in the patentee.^
§ 196. Upon this distinction, it may often be necessary to
1 Brooks V. Byam, 2 Story's R. 525, 538, 539, 5i2. In this case, Mr.
Justice Story held that the true construction of the statute is, that a license
is not required to be recorded.
OF ASSIGNMENTS AND LICENSES. 295
determine whether a particular instrument amounts to an
assignment, or only to a license. Our statute seems to as-
sume and proceed upon the clear distinction, that every grant
which embraces the exclusive right under the patent, either
as to a part or the whole, is an assignment ; and it requires
such grants to be recorded. The test to be applied, therefore,
is, whether the instrument vests in the grantee the exclusive
right, either for the whole country, or for a particular district,
of making and using the thing patented, and of granting that
right to others.^ If it does so, it is an assignment. But, if it
merely grants a right to make, use, and sell the thing patent-
ed, whether in limited or unlimited quantities, without mak-
ing that right exclusive, it is a license.- Thus, where the
patentee granted " the right and privilege of making, using,
and selling the friction matches," being the thing patented,
and the right " to employ in and about the manufacture, six
persons, and no more, and to vend said matches in any part
of the United States," with a proviso that nothing herein
contained should prevent or restrict the patentee from " mak-
ing and vending the same, or of selling and conveying similar
rights and privileges to others," with a further proviso that
the grantee " shall not manufacture the said matches in any
place within forty miles of M. ; " it was held that this was a
license or authority to make and vend the matches, without
any exclusive right of making them, and, consequently, did
not require to be recorded under the statute.^ The same
would be true of a grant to make and use a certain number
1 If an assignment is of the entire and unqualified interest, the assignee
may sue in his own name ; otherwise the suit must be in the name of the
assignor. Gayler v. Wilder, 10 Howard, 477.
2 An a<Treement that the assignee might make and vend the article pa-
tented, within certain specified limits, upon paying to the assignbr a cent per
pound, reserving, however, to the assignor the right to establish a manufac-
tory of the article upon paying to the assignee a cent per pound, was only a
license, and a suit for an infringement must be in the name of the assignor.
Gayler v. "Wilder, 10 Howard, 477.
^ Brooks V. Byam, ut supra.
296 LAW OP PATENTS.
of patented machines, in a particular place ; but if the cove-
nant were, that the grantee might make and use ten ma-
chines, and that he should have the exclusive right of making
and using the machines in a particular district, limiting him
to ten, it seems that it would be an assignment, provided the
grantee were authorized to grant to others the right to make
and use any of the ten machines.^ In such a case as this,
the patentee would have limited the exercise of his own pri-
vilege to ten machines, and would have granted the whole of
his privilege, as he had seen fit to limit it, to the grantee, who
would thus have acquired an interest in the patent. But if
the parties to such an instrument were mutually to agree to
open the subject of the contract again, the patentee might
enlarge the exclusive privilege indefinitely, as to the quantity
of machines ; but the relations of the parties would still be
those of assignor and assignee, as long as the exclusive right
should be vested in the grantee.
§ 197. Still, if the grant of an exclusive right to work un-
der the patent appears, upon the tenor of the whole instru-
ment, to have been intended by the parties to operate as a
license and not as an^ assignment, it seems that it should be
so construed ; and such an intention will be evinced by pro-
visos for determining the license, and by the reservation of'a
rent or per centage on the gross sales or manufactures, in-
stead of granting an interest in the profits of working the
patent.2 But whether such an instrument, conferring the
1 Woodwortli V. Wilson, 4 How. 712.
2 Protheroe v. May, Webs. Pat. Cas. 415. In this case, the Court of Ex-
chequer, upon a case sent for their opinion by the Vice-Chancellor, gave a
decided opinion that an exclusive license is no more than a common license ;
and so it seems to be regarded by our statute, which does not treat the grant
as an assignment, requiring to be recorded, unless there is added to the
exclusive right of making and using, the right to grant to others to make and
use the thing patented. The case of Woodworth v. Wilson, 4 How. 712,
contains an instrument granting the exclusive right to make and use ten ma-
chines in a particular district. The instrument is in form a license for the
OF ASSIGNMENTS AND LICENSES. 297
exclusive right for a particular district, would amount to an
assignment, under our statute, or to such a grant as requires
to be recorded, will further depend, it would seem, upon the
fact of there being a right vested in the grantee to grant to
others the " right to make and use the thing patented."
§ 198. Whether a license is assignable, must depend upon
its terms. A mere license to the party, without mentioning
his assigns, is, of course, nothing more than the grant of a
power, or the dispensation with a right or remedy, and con-
fers a personal right upon the licensee, which is not transmis-
sible to any other person. It seems, however, that the use of
the word assigns, in the granting part of such an instrument,
will not necessarily operate to make a license assignable,
when, from the tenor of the whole instrument, it appears to
have been intended as a personal privilege.^ But, whether a
license is assignable or not, as to the entirety of the privilege,
it is still more questionable whether it is apportionable, so as
to permit the licensee to grant rights to others to work the
patent, by subdividing the rights that may have been granted
to himself. This question arose in a case already referred
to, where the patentee of friction matches granted to another
party the right to make, use, and sell the friction matches,
and " to have and to hold the right and privilege of manufac-
turing the said matches, and to employ in and about the same
six persons, and no more, and to vend the said matches in the
United States." The licensee afterwards undertook to sell
gross sum of fifteen hundred dollars. The point did not arise whether it
ought to have been recorded, nor does the fact appear whether It had been
recorded. The question was, whether the patentee still retained such an in-
terest as to render him a proper party to a bill in equity with the grantee,
brought in the district to which the grant related. The court held that the
patentee was properly joined in the suit. There was no grant of the right
to grant to others to make and use ; but merely a grant authorizing the
grantee to " construct and use " ten machines within, &c. This instrument,
therefore, I conceive to have been a license, not necessary to be recorded.
1 Brooks V. Byam, 2 Story's R. 525, 544.
38
298 LAW OF PATENTS.
and convey to a third person " a right of manufacturing fric-
tion matches, according to letters-patent, &c., in said town of
A., to the amount of one right, embracing one person only, so
denominated, in as full and ample a manner to the extension
(extent) of the said one right, as the original patentee." Mr.
Justice Story held that every conveyance of this sort must
be construed according to its own terms and objects, in order
to ascertain the true intent and meaning of the parties ; and
that, in this case, the interest under the license was an entirety,
incapable of being split up into distinct rights, each- of which
could be assigned to different persons in severalty.^
1 Brooks V. Byam, 2 Story's K. 525, 543. The reasoning of the learned
judge was as follows : " The othtr question, as to the indivisibility of the
license granted to Brown, involves considerations of more nicety and diffi-
culty. By the agreement between Brown and Brooks, 18th of September,
1837, it was agreed by Brown to sell and convey unto Brooks "a right of
manufacturing friction matches, according to letters-patent granted to Phil-
lips, &c., in the said town of Ashburnham, to the amount of one right,
embracing one person only, so denominated, in as full and ample a manner
to the extension of the said one right, as the original patentee ; " and Brown
further agrees " to go to Ashburnham and assist Brooks in learning the art
and mystery of manufacturing such friction matches, &c., &c. ; " and, also,
" not to sell any right of manufacturing said friction matches, or of vending
the same to any person living, or intending to live, to manufacture, or vend
said matches, within forty miles of said Ashburnham." The question, then,
is, whether the license or privilege granted by the patentee to Brown is not
an entirety, and incapable of being split up into distinct rights, each of which
might be assigned to different persons in severalty. I do not meddle with
another point, and that is, whether the entirety of the license or privilege to
Brown was capable of being assigned, though, if it were intended to be a
personal privilege or license, it might open a ground for argument, notwith-
standing the use of the word " assigns." That point does not arise in the
present case ; for here the whole license or privilege is not sold or assigned ;
but one right, embracing one person only. It has been well said, that the
right or license may be transmissible, though not apportionable. There is
some obscurity in the language of the instrument, which makes it somewhat
difficult to give a definite interpretation to it. Brown's privilege or license
is, at most, to himself and his assigns, and " to employ in and about the
manufacturing of the matches sis persons, and no more." Brown agrees to
sell to Brooks " one right, embracing one person." Now the privilege or
OF ASSIGNMENTS AND LICENSES. 299
§ 199. The relations of the patentee and the licensee, with
regard to the validity and extent of the patent, must depend
on the terms of the license. The taking of a naked license
or permission to work under a patent, does not, without some
recitals or covenants amounting to an admission, estop the
licensee from denying the validity of the patent, or the fact
of infringement, if he is subsequently proceeded against. It
is necessary to look into the instrument, and to ascertain
license to Brown, (assuming it to be capable of assignment,) is to him and
to his assigns, to employ six persons. "Whoever is employed is to be
employed by Brown and his assigns. It would seem to be a reasonable
interpretation of this language to say, that all of these persons should be
employed by one and the same party, either all by Brown, or all by his
assigns. But the sub-agreement with Brooks conveys to him one right in
severalty, embracing one person ; that is, (as I understand it,) the right to
employ one person in the manufacture of the matches. So that, if this
agreement be valid, then the original privilege or license, granted by the
patentee to Brown upon this construction, includes six distinct and inde-
pendent rights, each of which may be granted to a different person in
severalty. Now I must confess, that such a construction is open to all the
objections stated at the bar. It exposes the patentee to the competition of
six different distinct persons, acting in severalty, and independently of each
other. It may make an essential diflfercnce to the patentee in his own sales,
whether the whole of the right or privilege granted to Brown be in the
possession of one or more persons, having a joint interest, and of several
persons, each having a separate and independent interest. The danger,
too, to the patentee, of an abuse or excess of the right or privilege granted
by him, is materially enhanced by the circumstance, that each of the sub-
holders may be acting at different places, at the same time, and the nature
and extent of their claim and use of the right or privilege may be difficult
for him to ascertain, and leave him without any adequate remedy for any
such excess or abuse of it. The language ought, in my judgment, to be
exceedingly clear, that should lead a court to construe an instrument of this
sort, granting a single right or privilege to a particular person or his assigns,
as also granting a right or license to split up the same right into fragments
among many persons in severalty, and thus to make it apportionable as well
as transmissible. The patentee might well agree to convey a single right
as an entirety to one person, to manufacture the matches and employ a fixed
number of persons under him, when he might be wholly opposed to appor-
tioning the same right in severalty among many persons."
300 LAW OF PATENTS.
what recitals and covenants will deprive a licensee of the
defence to which all other persons may resort. If, by his
agreement, the licensee has admitted that the process or thing
which he uses is the patented process or thing, and he is
afterwards proceeded against for not complying with the
terms of his agreement, it seems that he will not be at liberty
to show, that he did not use the patented thing or process.^
So, too, if the deed contain recitals or statements amounting
to an admission of the validity of the patent, either as to the
novelty or utility of the supposed invention, or the sufficiency
of the specification, the licensee will be estopped, in an ac-
tion of covenant for the rent or license dues, to deny the
validity of the patent, by setting up any thing contrary to the
admissions in his deed.^ In like manner, it has been held
that a licensee, who has paid an annuity in consideration of
a license to use a patent privilege, which he has had the
benefit of, but which afterwards turns out to be void, cannot
recover back the money he has paid, in an action for money
had and received.^ This is upon the ground that the licensee
has had the benefit of what he stipulated for ; but, if the pa-
tent turns out to be invalid, before a payment becomes due,
and the license deed contains no admission of its validity,
the licensee may plead the fact in answer to an action of
covenant for money reserved by the license.^
1 Baird v.Nellson, 8 CI. & Fin. 726.
2 Bowman v. Taylor, 2 Ad. & E. 278. But if the patentee join issue
upon an allegation made by a licensee contrary to an admission in his deed,
instead of pleading the estoppel, the deed will be evidence for the patentee,
but will not as evidence be conclusive. Bowman v. Rostrom, 2 Ad. & E. 295.
3 Taylor v. Hare, 1 N. R. 260.
4 Hayne v. Maltby, 3 T. R. 438. This case was thus explained by Lord
Cottenham, C, in Neilson v. Fothergill, Webs. Pat. Cas. 290. " 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 disputing 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
OF ASSIGNMENTS AND LICENSES. 301
§ 200. And where there has been no enjoyment by the
licensee, who, in an agreement not under seal, has stipulated
to pay a certain sum for the right to use a patent privilege,
the invalidity of the patent will be a good plea in bar to an
action upon the agreement, on the ground of failure of con-
sideration.i The competency of a licensee to dispute the
validity of a patent, is a question which may also arise, where
the licensee is proceeded against for an infringement, on the
ground that he is using the patent contrary to the conditions
in his license. If, for instance, a party receives a license to
use a patented machine, on condition that he pay a stipu-
lated sum on all the articles which he may manufacture by
means of the machine, and, after having been put in posses-
sion of the machine, he uses it, but refuses to pay the rent or
license dues, or to comply with any other condition, he may
be enjoined in equity for an infringement. The sole right
which such a party can have to use the machine depends on
the license ; and he can use under the license only by com-
plying with the conditions ; so that his use aside from the
license is an infringement.^ If, in such a case, the licensee
refuses to pay under the license, or sets up, as a reason for
not performing any of his covenants, that the patentee has
not complied with the terms of the contract on his part, will
the licensee be permitted to question the validity of the
patent, in any proceeding either at law or in equity, for using
the patent without right ? This must depend, in the first
place, upon the admissions in the license deed. If the deed
exactly coming to the point ■which I put, Tyhether, at law, the party was
estopped from disputing the patentee's right, after having once dealt with him
as the proprietor of that right ; and it appears from the authority of that
case, and from the other cases, that, ft'om the time of the last payment, if
the manufacturer can successfully resist the patent-right of the party claim-
ing the rent, that he may do so in answer to an action for the rent for the
use of the patent during that year."
1 Chanter v. Leese, 4 M. & W. 295, affirmed in error, 5 M. & W. 698.
2 Brooks V. StoUey, 1 M'Lean's K. 523; Neilson v. Fothergill, Webs.
Pat. Cas. 287, 290.
302 LAW OF PATENTS.
contains no admission of the plaintiff's title, then the licensee
will not be estopped from denying it ; but, if it contains such
admissions, and, a fortiori, if, after such admissions, the
licensee has worked under ttte license, and has paid the
license dues before his refusal, or, if he still continues to
claim under the deed, and excuses his non-payment by reason
of the non-performance of some covenant on the part of the
patentee, he will be estopped from denying the validity of
the patent, and the sole question will be, whether he is liable
for an infringement; which will depend upon the validity of
his excuse for not paying, on account of the non-performance
by the patentee.^ But, in the second place, if the licensee
repudiates the contract altogether, and stands upon the right
of every man to use the alleged invention because it is not
new, or because the patent is void for some other reason, he
foregoes all benefit of the license as a permission to use the
invention, and becomes a trespasser. In that event, I con-
ceive that his solemn admission, under hand and seal, of the
validity of the patent, may still be used against him as an
estoppel, both in an action and under a bill in equity for the
infringement, unless he can show that he was deceived and
misled; otherwise, a party might obtain possession of the
invention, under a license, and then repudiate the contract
at his pleasure.
1 In equity, no alleged failure on the part of the patentee, under the con-
tract of license, will authorize the use, unless the licensee does every thing
in his power to perform the contract. Brooks v. Stolley, ut supra. If the
license is granted on condition of a weekly payment, the payment must be
made weekly, or the licensee may be enjoined for infringing. Ibid.
PART IV.
INFRINGEMENT,
AND
THE REMEDY THEREFOR.
PAET IV.
INFRINGEMENT, AND THE REMEDY THEREFOR.
CHAPTER I.
INFRINGEMENT.
§ 201. The statute grants to the patentee, for a term not
exceeding fourteen years, " the full and exclusive right and
liberty of " making, using, and vending to others to be used,
the invention or discovery ; " ^ and it gives a right of action
for damages, in case of " making, using, or selling " the
thing patented.^ No definition of what is to constitute an
infringement is given in the statute ; but, of course, there is
an infringement of the right, when one " makes, uses, or sells
a thing " which another has the exclusive right of " making,
using, and vending to others to be used." But what con-
stitutes making, using, and selling, with reference to the
various things that may be the subjects of patents, so as to
interfere with the exclusive right of the patentee, is left by
the statute for judicial interpretation.
§ 202. An infringement takes place whenever a party
avails himself of the invention of the patentee, without such
1 Act of July 4, 1836, c. 357, § 5.
2 Ibid. § 14.
39
306 LAW OF PATENTS.
variation as will constitute a new discovery ; ^ or, as it has
also been stated, an infringement is a copy made after and
agreeing with the principle laid down in the specification.^
1 In Walton v. Potter, Webs. Pat. Cas. 585, 586, Sir N. C. Tindall, C. J.,
said to the jury : " Now, according to the general rule upon this subject,
that is a mere question of fact and peculiarity for the consideration of a jury,
and it -will be for you to say, under the circumstances that have been brought
in review before you, whether that which has been done by the defendants
amounts to such an infringement or not. Where a party has obtained a
patent for a new invention, or a discovery 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 circumstances, that may be more or less
immaterial, that which has been done by the defendants varies from the spe-
cification of the plaintiff's patent, but to see whether, in reality, in substance,
and in effect, the defendants have availed themselves of the plaintiff's inven-
tion, 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 invention of the plaintiff. The course which the
evidence has taken has made it not an immatei'ial, but, on the contrary, a
very necessary inquiry for you, upon this first head of investigation, to deter-
mine whether the defendant's patent, which they have taken out, is, in effect,
borrowed from the plaintiff's or not, because there can be no doubt whatever
that all the defendants have done they have endeavored to clothe themselves
with the right of doing, by taking out the subsequent patent of 1839. The
only evidence of infringement we have had before us, is the purchase, at the
manufactory of the defendants, of that little piece of card which was marked
with the initials S. G., and there can be no doubt but that that fabric, which
was so produced in evidence before us, is made on the plan and according to
the specification of their own patent, and, therefore, it will not be immaterial
to call to your attention, upon this first head of inquiry, the specification of
the plaintiff's, and next that of the defendant's patent, in order that we may
compare them together, and see whether there reaUy is that variation in sub-
stance, so as to give the denomination of a new discovery to what the
defendants have done, or whether they ai'e not following out the invention
of the plaintiff, with some variation in the description, which may not allow
it the name of a new discovery."
■^ Galloway v. Bleaden, Webs. Pat. Cas. 523.
INFRINGEMENT. 307
There will be, therefore, different modes in which patents
may be infringed, according to their subject-matter. Our
statute has made use of the phrases " making, using, and
vending to others to be used," to comprehend the exclusive
right of the patentee ; and, consequently, the making, using,
or selling, are the modes in which that right may be in-
fringed, according to the nature of the subject-matter. We
are now, therefore, to consider the meaning of these phrases,
as applied to the infringement of the several classes of things
which may be the subjects of letters-patent.
§ 203. 1. As to a machine. — When a machine is the sub-
ject of a patent, the patent covers both the machine itself, the
thing invented, and the mode or process of making it. The
statute vests in the patentee the exclusive right of making it,
the exclusive right of using it, and the exclusive right of vend-
ing it to others to be used. It is, therefore, an infringement to
make a patented machine, for use or for sale, though in fact
it is neither used nor sold;i it is an infringement to use
1 Whittemore v. Cutter, 1 Gallis. 429, 433. In this case, Mr. Justice
Story said : " Another objection is to the direction, that the making of a
machine fit for use, and with a design to use it for profit, was an infringe-
ment of the patent-right, for which an action was given by the statute.
This limitation of the making was certainly favorable to the defendant, and
it was adopted by the Court, from the consideration that it never could have
been the intention of the legislature to punish a man who constructed such
a machine merely for philosophical experiments, or for the purpose of ascer-
taining the sufficiency of the machine to produce its described effects. It is
now contended by the defendant's counsel, that the making of a machine is,
under no circumstances, an infringement of the patent. The first section of
the Act of 1793, expressly gives to the patentee, &c., " the full and exclu-
sive right and liberty of making, constructing, using, and vending to others
to be used," the invention or discovery. The fifth section of the same Act
gives an action against any person who " shall make, devise, and use or sell,"
the same. From some doubt, whether the language of the section did not
couple the making and ttsing together to constitute an offence, so that mak-
ing without using, or using without making, was not an infringement, the
legislature saw fit to repeal that section ; and, by the third section of the Act
of 17th April, 1800, ch. 25, gave the action against any person, who should
308 LAW OF PATENTS. _
it, though made by another ; and it is an infringement to
sell it, whether made by one's self or by another ; because the
statute vests the exclusive right of doing all these things in
the patentee.
§ 204. The doctrine suggested by Mr. Justice Story, that
the making of a machine for philosophical experiment, or
for the purpose of ascertaining its sufficiency to produce
the described effect, would not be an infringement, is founded
in the supposition that such a making is not injurious to the
patentee. It is true, that the making for the purpose of using
becomes directly injurious to the patentee, because it deprives
him of a purchaser of that which he alone is authorized to
construct and sell ; and it is also true, that, when the machine
is made by one not the patentee, for the mere purpose of
experimenting on the sufficiency of the specification, no
profits are taken away from the patentee. There is, therefore,
a difference, undoubtedly, in the tendency of the two acts ;
but it is not quite clear, that the legislature meant to recog-
" make, devise, use or sell " the invention. "We are not called upon to ex-
amine the correctness of the original doubt, but the very change in the struc-
ture of the sentence affords a strong presumption, that the legislature intend-
ed to make every one of the enumerated acts a substantive groimd of action.
It is argued, however, that the words are to be construed distributively, and
that " making " is meant to be applied to the case of a composition of matter,
and not to the case of a machine. That it is clear, that the use of certain
compositions, (as patented pills,) could not be an infringement, and, unless
making were so, there would be no remedy in such cases. We cannot feel
the force of this distinction. The word " making " is equally as applicable
to machines, as to compositions of matter ; and we see no difficulty in holding
that the using or vending of a patented composition is a violation of the right
of the proprietor. It is further argued, that the making of a machine cannot
be an offence, because no action lies, except for actual damage, and there
can be no actual damages, or even a rule for damages, for an infringement
by making a machine. We are, however, of the opinion, that; where the law
gives an action for a particular act, the doing of that act imports of itself a
damage to the party. Every violation of a right imports some damage, and,
if none other be proved, the law allows a nominal damage."
INFRINGEMENT. 309
nize this difference, or that they used the words " make, use,"
&c., in any other than their ordinary sense. The prohibition
is express, that no other person shall "make"; and that no
other person shall " use " ; and Mr. Justice Washington held,
that the motive of testing the practical utility of a machine
was no answer to a charge of infringement by having " used "
it.i But it was held by Mr. Justice Story, that the making
of a patented machine is an infringement only when it is
-made for use or for sale, and the doctrine seems to be the
same in England.^ The test is, whether the party made the
machine with an intent to infringe the patent-right, and de-
prive the owner of the lawful rewards of his discovery .^
§ 205. It is said that there may be a constructive using of
a patented machine ; as, if a person were to make a machine,
in violation of the right of the patentee, or purchase it of one
who had so made it, and then hire it out to another person
for use, he might, under some circumstances, be held respon-
sible for using it. There is a case, where the plaintiff was
the patentee of a machine for making Avatch-chains, and it
appeared that the defendant had made an agreement with
one C, to purchase of him all the watch-chains, not exceeding
five gross a week, which C. might be able to manufacture
within six months, and C. had agreed to devote his whole
time and attention to the manufacture of watch-chains, and
not to sell or dispose of any of them, so as to interfere with the
exclusive privilege secured to the defendant of purchasing the
whole quantity which it might be practicable for C. to make ;
1 Watson V. Bladen, 4 Wash. 583.
2 In Jones u. Pearce, Webs. Pat. Cas. 125, Patteson, J., said, in reply to
a question by the jury whether there was any evidence of the defendant hav-
ing used or sold the -wheels : — " The terms of the patent are, ' without leave
or license make,' &c. ; now if he did actually make these wheels, his mak-
ing them would be a sufficient infringement of the patent, unless he merely
made them for his own amusement, or as a model."
3 Sawin v. Guild, 1 Galhs. 485, 487.
310 LAW OF PATENTS.
and it was proved that the machine used by C, with the
knowledge and consent of the defendant, in the manufacture,
was the same with that invented by the plaintiff, and that all
the watch-chains thus made by C. were delivered to the de-
fendant according to the contract ; the Supreme Court of the
United States held, that, if the contract were real and not co-
lorable, and if the defendant had no other connection with C.
than that which grew out of the contract, it did not amount
to a " using " by him of the plaintifPs machine ; but that
such a contract, connected with evidence from which the jury
might legally infer, either that the machine which was to be
employed in the manufacture of the patented article was
owned wholly or in part by the defendant, or that it was
hired by the defendant for six months, under color of a sale
of the articles to be manufactured with it, and with intent to
invade the plaintiff's patent-right, would amount to a breach
of his right.i
1 Keplinger v. De Young, 10 Wheaton, 358, 363. Washington, J., deli-
vering the judgment of the Court, said: "The only question which is pre-
sented by the bill of exceptions to the consideration of this Court is, whether
the Court below erred in the instruction given to the jury ; and this must
depend upon the correct construction of the third section of the Act of Con-
gress, of the 17th of April, 1800, ch. 179, which enacts 'that, where any
patent shall be granted, pursuant to the Act of the 21st of Februarj^, 1793,
ch. 156, and any person, without the consent of the patentee, his executors,
&c., 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 per-
son, so offending, shall forfeit and pay to the said patentee, a sum equal to
three times the actual damage sustained by such patentee,' &c.
The contract, taken in connection with the whole of the evidence stated
in the bill of exceptions, if the same were believed by the jury, formed most
certainly a strong case against the defendant, sufficient to have warranted
the jury in inferring, either that the machine which was to be employed in
the manufacture of watch-chains, was owned in whole or in part by the de-
fendant, or that it was hired to the defendant for six months, under color of
a sale of the articles which might be manufactured with it, and with intent
to invade the plaintiff's patent-right. Whether the contract, taken in con-
nection with the whole of the evidence, does or does not amount to a hiring
by the defendant of the machine, or the use of it for six months, is a point
INFRINGEMENT. 311
§ 206. It seems to be in accordance with the doctrine of
this case, to consider that a using of a machine is to be taken
■wbicli is not to be considered as being decided either way by tlie Court.
The bill of exceptions does not call for an opinion upon it.
But the contract, taken by itself, amounted to no more than an agreement
by the defendant to purchase, at a fixed price, all the Avatch-chains not ex-
ceeding five gross a week, which Hatch and Kirkner might be able to manu-
facture in the course of six months, with any machine they mi"ht choose to
employ ; and an agreement, on the part of Hatch and Kirkner, to devote
their whole time and attention to the manufacture of the chains, and not to
sell or dispose of any of them, so as to interfere with the exclusive privilege
secured to the defendant, of purchasing the whole quantity which it mio-ht
be practicable for them to make.
If this contract was real, and not colorable, which is the obvious meaning
of the instruction, and the defendant had no other connection with H. & K.,
in regard to these chains, than what grew out of it, it would, in the opinion
of the Court, be an extravagant construction of the Patent Law. to pronounce
that it amounted to a breach of the plaintiff's patent-right, by fixing upon
the defendant the charge of having used the plaintiff's machine. Such a
construction would be highly inconvenient and unjust to the rest of the com-
munity, since it might subject any man, who might innocently contract with
a manufacturer to purchase all the articles which he might be able to make
within a limited period, to the heavy penalty inflicted by the act, although
he might have been ignorant of the plaintiff's patent, or that a violation of it
would be the necessary consequence of the contract. It might possibly
extend farther, and affect contracts express or implied, though of a more
limited character, but equally innocent, as to which, however, it is not the
intention of the Court to express any opinion, as this case does not call for it.
This cause was argued by the plaintiff's counsel, as if the opinion of the
Court below had been given upon the whole of the evidence. But this was
not the case. No instruction was asked for but by the defendant's counsel,
and that was confined to a single part of the case, the connection between
the defendant and H. & K., in regard to the watch-chains which the latter
bound themselves, by their contract, to manufacture and deliver to the for-
mer. If the jury had been of opinion, upon the whole of the evidence, that
the contract was not a real one, or that that instrument did not constitute
the sole connection between those parties, or that the transaction was merely
colorable, with a view to evade the law, the jury were not precluded by the
instruction from considering the plaintiff's patent-right as violated, and find-
ing a verdict accordingly.
Had the plaintiff's counsel thought proper to call upon the Court for an
312 LAW OF PATENTS.
as proved, either when the party charged has used it himself,
or has employed others to use it for him, or has profited by
the use of it.^
opinion and instruction to the jury, upon any points arising out of the whole,
or any part of the evidence, it would have been their duty to give an opinion
upon such points, leaving the conclusion of fact from the evidence to be
drawn by the jury. But this course not having been pursued, this Court can
take no notice of the evidence, although spread upon the record, except so
far as it is connected with the single point upon which the opinion, which is
excepted to, was given. As to the residue of that opinion, that ' the legal
aspect of the case would not be changed, although the defendant might, on
any occasion, have supplied, at the cost of H. & K., the wire from which the
chains so manufactured were made,' it is quite as free from objection as the
preceding part of it, since it stands ol. precisely the same principle."
1 Woodworth v. Hall, 1 Woodb. & M. 248, 251. In this case, Mr. Justice
Woodbury said : — " There has been no evidence whatever offered in this
case, of any use of the planing machine by Isaac Hall, since his license
expired, except what is contained in the affidavit of Aaron Pratt. This
witness did not see him use it ; but made a bargain with him, about the 15th
of July, 1845, to plane for the witness certain boards, at the ordinary price,
intending to set off the amount against rent due from said Isaac.
Clement Hall, however, was present, and said, ' We can plane them for
you,' and the work was done ; but the witness does not say by whom, nor
whether, in fact, the compensation for it was made to Isaac.
Against this is the answer of Isaac, responsive to the bill, and sworn to,
denying that he had ever used the machine since his license expired ; and
this agrees with Clement's assertion in his answer, that the machine was used
by him alone. The facts testified by Pratt might, standing alone, be suffi-
cient to justify an inference, that Isaac had placed the boards and used the
machine.
In such cases, it may be, that any workman on the machine, though not
interested in it, is liable to be restrained, in order to prevent evasions, by
treating all as principals who are aiding.
It is a common case, also, that, if one does not in person perform the work,
but procures another to do it for his advantage, on a machine owned by him-
self, he can still be restrained, and is estopped from denying ; qui facit per
allum, facit per se. Possibly, too, if one hires another to do work on such a
machine, he may be restrained. 4 Mann. & Grang. 1 79. But It is not neces-
sary to give a decisive opinion on this, after comparing the evidence with
the denial in Isaac's sworn answer.
After that answer, thus testified to as true, the probability is, and it is a
INFRINGEMENT. 313
§ 207. As to the sale of a patented machine, in order to be
an infringement of the right, it must be something more than
a sale of the materials, either separate or combined ; it must
be a sale of a complete machine, for use as a machine, which
is patented, in order to render the vendor liable for an in-
fringement of the patent by a " sale." ^
construction not inconsistent with the veracity of both Pratt and Isaac, that
the boards were planed by Clement alone, and on his own contract, or his
own assent to the arrangement, and for his own profit. It would seem, also,
very easy to produce further evidence of the fact of Isaac's using the
machine, or receiving the profits from it, if such was the truth. Until it is
produced, the fairest construction of the affidavits and answer are, that
Isaac did not work the machine, or profit by it. If this construction were
not the most reasonable, and did not reconcile what is sworn to in the affi-
davit and answers, the Court would still be compelled to refuse to issue an
injunction against Isaac, on the affidavit of Pratt alone, for the want of evi-
dence in it to overcome Isaac's answer. Because something more must be
produced than the evidence of a single witness, to overcome an answer under
oath, and responsive to the bill. Carpenter v. Prov. Wash. Ins. Co. 4 How.
185. Certainly, something more than the evidence of one witness, and he
not testifying explicitly that Isaac either owned or worked the machine, or
received any of its profits.
But, in respect to the liability of Clement to an injunction, the testimony
is very dIS'erent •, and, notwithstanding the several ingenious objections that
have been urged, I have come to the conclusion that one ought to be issued
against him."
1 A sale of the materials of a patented machine, by a sheriff, on execu-
tion, is not an infringement. Sawin v. Guild, 1 Gallis. 485. In this case,
Mr. Justice Story said : — " This is an action on the case, for the infringe-
ment of a patent-right of the plaintiffs, obtained in February, 1811, for a
machine for cutting brad nails. From the statement of facts agreed by the
parties, it appears that the defendant is a deputy-sheriff of the county of
Norfolk, and, having an execution in his hands against the plaintiffs, for the
sum of S5G7.27, debt and costs, by virtue of his office, seized and sold, on
said execution, the materials of three of said patented machines, which were,
at the time, complete and fit for operation, and belonged to the plaintiffs.
The purchaser, at the sheriff's sale, has not, at any time since, put either of
the said machines into operation ; and the whole infringement of the patent
consists in the seizure and sale by the defendant, as aforesaid. The question
submitted to the Court is, whether the complete materials, of which a patented
40
314 LAW OF PATENTS.
§ 208. The sale of the articles produced by a patented
machine is composed, can, while such machine is in operation by the legal
owner, be seized and sold on an execution against him.
The plaintiiFs contend, that it cannot be so seized and sold, and they rely
on the language of the third section of the Act of the 17th of April, 1800,
ch. 25, which declares, that, if ' any person, without the consent of the pa-
tentee, his or her executors, &c., first obtained in writing, shall make, devise,
use, or sell the thing, whereof the exclusive right is secured to the said
patentee, such person, so offending, shall forfeit,' &c.
It is a sound rule of law, that every statute is to have a sensible construc-
tion ; and its language is not to be interpreted so as to inti'oduce public mis-
chiefs, or manifest incongruities, unless the conclusion be unavoidable. If
the plaintiffs are right in their construction of the section above stated, it is
practicable for a party to lock up his whole propertj^, however great, from
the grasp of his creditors, by investing it in profitable patented machines.
This would, undoubtedly, be a great public mischief, and against the whole
policy of the law, as to the levy of personal property in execution. And,
upon the same construction, this consequence would follow, that every part
of the materials of the machine might, when separated, be seized in execu-
tion, and yet the whole could not be, when united ; for the exemption from
seizure is claimed only when the whole is combined and in actual operation,
under the patent.
We should not incline to adopt such a construction, unless we could give
no other reasonable meaning to the statute. By the laws of Massachusetts,
property like this is not exempted from seizure in execution ; and an officer,
who neglected to seize, would expose himself to an action for damages, un-
less some statute of the United States should contain a clear exception. No
such express exception can be found 5 and it is inferred to exist, only by
supposing that the officer would, by the sale, make himself a wrongdoer,
within the clause of the statute above recited. But, within the very words
of that clause, it would be no offence to seize the machine in execution.
The whole offence must consist in a sale. It would, therefore, follow, that
the officer might lawfully seize ; and, if so, it would be somewhat strange
if he could not j>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 len<yth of saying that a specification , in cases of this kind,
" ]yir. George Cottam says, ' it is a common problem to find a centre from
three given points, and a person of ordinary engineering skill ought to be
able to do that.' The question is, whether it ought not to be suggested to
him by the specification, that that is the problem to be solved. Then Mr.
Curtis says, ' I have made -wheels on this plan.' You see he made the two
wheels which were sent to the Venice and Trieste Company, but those were
made ixnder the direction of Mr. Galloway, the inventor. Now, it somewhat
detracts from the weight due to his testimony, not as to his respectability,
but as to the value of his evidence to you, that he had received the verbal
instructions of Mr. Galloway. It may be that he could do it, because of
his practice under Mr. Galloway ; and it must be recollected that people in
other places would not have that advantage. He says, he would not have
any difiiculty in doing it ; and he says, ' I should not consider my foreman a
competent workman, unless he were able to make the wheel from the speci-
fication and drawings.' He says, ' I could alter the angle by altering the
cranks.' The question is not, whether he could do that, but whether he
could alter the angle to a particular angle by altering the cranks in a parti-
cular way ; that is, whether, having the angle given to him, he could make the
alteration that was desired. Then, Mr. Joseph Clement says, he is a
mechanic, and did the work of Mr. Babbage's calculating machine ; that he
has seen the model of the steam-engine and paddle-wheels. He speaks of
the similarity of the plaintiffs' and defendants' wheels, and says, ' I could
make the machine from the specification and drawing. The float ought to
enter the water at a tangent to the epicycloid.' That is only his opinion as
to the most convenient angle. The real motion of the boat is this. The
wheel keeps turning round and round on its own axis ; during that time the
boat has a progressive motion. The wheel, therefore, has a double motion ;
therefore, every point of the wheel does not move in a circle, but in a cycloid,
that being the curve described by the rolling of a circle on a flat surface.
He says, it should enter at a tangent, that is, that the angle should be such
that it will enter the water perpendicularly, in consequence of the motion of
the boat, and of the point of the wheel. He says, in like manner, it ought
to go up. That is, probably, a very correct view of the caee. He says, ' I
should have no difiiculty in constructing a float to enter at any angle ordina-
rily required. A man, properly instructed in mechanics, would have no
difficulty in doing it.' That is his evidence, which is material for you to
consider ; and he is a mechanic himself
" Then, Henry Mornay, a young gentleman in Mr. Morgan's employment,
where he has been apparently studying the construction of engines, speaks
EVIDENCE. • 481
would be good, if every competent artisan who might be
of a circumstance, wMch does appear to me to be material. He says, Mr.
Morgan, in practice, makes his rods of diflferent lengths. He must neces-
sarily do so, in order that the floats may follow at the same angle as that at
■which the diiving float enters the water. The problem, which Mr. Park
solved, is a problem applying to three floats only ; but it appears that the
other floats wiU not follow in the same order, unless some adjustment of the
rods is made. Now, suppose it was to be desired that the floats should all
enter the water at the given or required angle, if one should go in at one
angle, and one at another, the operation of the machine would not be uni-
form ; and the specification means, that the party constructing a wheel
should be able to make a wheel, the floats of which shall all enter at the
same angle, and all go out at the same angle. Now, in order, in practice, to
carr}- that into efl*ect, if there are more than three floats, something more
than Mr. Park's problem would be required ; and IMr. Mornay says, actually,
that Mr. Morgan, in practice, makes his rods of difierent lengths, and he
must necessarily do that, in order that the floats may follow at the same
angle as the driving float enters the water. If so, he should have said in his
specification, ' I make my rods of different lengths, in order that the rest of
my floats may enter at the same angle ; and the way to do that is so and so.'
Or, he might have said, ' it may be determined so and so.' But the specifi-
cation is totally silent on the subject ; therefore, a person reading the speci-
fication would never dream that the other floats must be governed by rods
of unequal length ; and, least of all, could he ascertain what their lengths
should be, until he had made experiments. Therefore, it is contended that
the specification does not state, as it should have stated, the proper manner
of doing it. He says, if thej' are made of equal lengths, though the govern-
ing rod would be vertical at the time of entering, and three would be so
when they arrived at the same spot, by reason of the operation Mr. Park
suggests, yet the fourth would not come vertical at the proper point, nor
would the fifth, sixth, or seventh. Then they would not accomplish that
advantage which professes to be acquired. The patentee ought to state, in
his specification, the precise way of doing it. If it cannot completely be
done, by following the specification, then a person will not infringe the
patent by doing it. If this were an infringement, it would be an infringe-
ment to do that perfectly, which, according to the specification, requires
something else to be done, to make it perfect. If that be correct, you
would prevent a man from having a perfect engine. He says, practically
speaking, the difference in the length of the rods would not be very mate-
rial, the difference being small. But the whole question is small, therefore
it ought to have been specified ; and, if it could not be ascertained fully, it
should have been so stated. Now, this is the part to which I was referring,
61
482 LAW OF PATENTS.
called, were to testify that he could not apply the directions
when, ill the preliminary observations I addressed to you, I cited the case
before Lord Mansfield, on the subject of the introduction of tallow, to enable
the machine to work more smoothly. There it was held, that the use of
the tallow ought to have been stated in the specification. This small
adjustment of these different lengths may have been made for the pui-pose
of making the machine work more smoothly ; if so, it is just as much neces-
sary that it should be so stated in the specification, as it was that the tallow
should be mentioned. The true criterion is this, — has the specification
substantially complied with that which the public has a right to require V
Has the patentee communicated to the public the manner of carrpng his
invention into effect ? If he has, and if he has given to the public all the
knowledge he had himself, he has done that which he ought to have done,
and which the public has a right to require from him.
" I will now read the defendant's evidence, and you will see, whether, upon
the whole, there is evidence before you, on which you think you can come
to any reasonable conclusion.
"Now, first of all, Mr. Donkin, a man of considerable experience, is
called ; but, before I go to his evidence, I will remark, that I have always
found that there is a great deal of contradiction, in questions of this dcscriji-
tion ; but that is not to be attributed, in the least degree, to conniption, or
to any intention to misrepresent, or mislead — people's opinions vary. They
come to state to you, not matters of fact, but matters of opinion, and they
tell you, conscientiously, what their opinion really is. You may have a great
difference of opinion, among scientific men, on a question relating to science ;
but though, by their evidence, they contradict one another, they arc not
influenced by a corrupt desire to misrepresent.
-" Now, Mr. Donkin says, ' On first reading the specification, I thought
there was a defect, in its not explaining the mode of obtaining the required
angle. In my judgment, a workman of ordinary skill would not be able to
find out any mode of obtaining the required angle.' He says, a geometri-
cian might discover the mode of adjusting the three angles ; the angle of
immersion, the vertical angle, and the angle of emersion ; but, in order to
discover the mode, by which all the paddles may enter at the same angle,
another discovery must be made. He says, it requires to be ascertained, by
experiment or diagram, whether the adjustment is to be made by altering
the bent stem, or by varying the length of the rods, and you have nothing
but the drawing to guide you, in that respect. He says, he must first ascer-
taui whether he is to produce the effect, by altering the centre, or by alter-
ing the bent stem, or varying the lengths of the movable rods. What are
those but experiments to ascertain how the thing should be done, all of
which he ought to have been saved, by its being stated, in the specification,
EVIDENCE. 483
successfully, provided a scientific witness, of the other class,
how to do it. Ho-wever, that is his evidence ; he says, the angle must
depend on the dimensions of the several parts of the -wheel. Then he goes
on to the other parts of the case, and, on his cross-examination, he says, < I
think a competent workman would be able to do it, if he made the previous
discovery f but he would not do it, unless a careful investigation was gone
into.' He says, ' Few ordinary workmen would be able to get the desired
angle ; I think my foreman would — I think a person moderately acquainted
■with geometry might do it, but he must find it out — he could sit down and .
determine it. If he possessed proper information, he ought to be able to do
it. An engineer, properly skilled in geometry, ought to be able to find out
how the angle was to be determined. If he sat down, and referred to his
general knowledge, he would find it out.' Now, the criterion is not, whe-
ther he could find it out or not, but whether he could do it, by means of
the information contained in this specification and drawing, calling in aid
his general knowledge, and those mechanical means with which he may rea-
sonably be expected to be familiar ; but if he is to sit down, and consider
how it is to be done, that is not sufficient. You will judge whether or not
the evidence of this witness satisfies you on these points, and whether it
makes out the proposition for which the defendants contend.
" Then, INIr. Brunton says, • I think a workman, of competent skill, could
not construct a machine, so as to have the floats enter at any particular
angle, and leave at a particular angle.' He says, if the required angle was
dilTorcnt from the drawing, it would be an exceedingly difficult thing, and
he is not prepared to say how he could do it. Then, Mr. Hawkins says, ' I
do not think a workman of ordinary skill could, from the plan and specifica-
tion, make a wheel that should enter and quit the water at a diflerent angle
from that given in the drawing, unless he possessed considerable ingenuity
for inventing the method of doing it.'
" Then, ISIr. Peter Barlow says, ' There are not, I think, sufficient data to
adjust the angle.' He says, if the length of the stems was given, the diffi-
culty would be very great, but it would have been a guide, and it ought
to have been explained. Tliat appears to me to be a very good common-
sense observation. Then, Mj. John Donkin says, ' I think an ordinary
workman would find considerable difficulty in altering a paddle-wheel, to
suit a particular angle, and I doubt whether he could do it.' On his cross-
examination, he says, ' It requires more than a common knowledge of geo-
metry ; I think a man moderately acquainted with geometry might do it ;
but he would have to make experiments, and his first experiments would
fail. A skilful engineer would have less difficulty in it, but he ought to be
able to find it out.' Then, Mr. Bramah says, ' I think I could discover
how to do it.' He has been an engineer many years, and he says, ' I
484 LAW OF PATENTS.
were to testify that he could teach or demonstrate to an
artisan how to apply them ; ^ although proof may be offered
(
think I could discover it, but I do not knoTr, at present, liow to do it. Yes-
terday I attended to tlie evidence, and this morning I tried to find out how
it Tvas to be done, but I could not' Supposing Mr. Bramah had to make a
machine of this kind, is he to sit down and invent a mode of doing it, or
ouwht he not to have such information afforded, as would enable him to do
it at once, hj means of the specification ? Then, Mr. Francis Bramah says,
' I have examined the specification ', I could not make a machine from the
specification, the floats of which should enter and leave the water at any
required anglel Till I came into Court, yesterday, I presumed that the
ano-le given in the drawing was the best angle, that is, that the specification
had not only stated how to do it, but had described the best angle.' If so,
it would be a specification only foi that particular angle. He says, ' I can
go as far as I was told, yesterday, but no farther.'
" Now, gentlemen, I have gone through the evidence on both sides, on
this point, and the question, upon this part of the case, revolves itself into
this : Do the witnesses, on the plaintiff's side, satisfy you that the patentee
has, in his specification, given to the public the means of making a machine,
which shall enter and leave the water at any angle that may be ordered ;
that is, if a man ordered a machine, at an angle likely to be required for
entering and going out, and to be vertical at the bottom, could an ordinary
workman, with competent skill, execute that order, by following the direc-
tions given in this specification ? If you think he could, then the specifica-
tion would be sufficient. If, on the other hand, you think he would not be
able to execute the order, unless he sat down and taxed his invention to
find out a method of doing that which has not been sufficiently described
in the specification, then the specification would be bad. If you think the
specification good, then you ought to find for the plaintiffs upon that issue ;
if you think the specification bad, then you ought to find for the de-
fendants."
1 In Allen v. Blunt, 3 Story's E. 747, 748, Mr. Justice Story made use of
the following language : — "As to the relative weight of the evidence of
persons practically engaged In the trade, employment, or business of the
particular branch of mechanics to which the patent-right apphes, and the
evidence of persons who, although not practical artisans, are thoroughly
conversant with the subject of mechanics, as a science. It appears to me,
that the Patent Acts look to both classes of persons, not only as competent,
but as peculiarly appropriate witnesses, but for different purposes. Two
important points are necessary, to support the claim to an invention : First,
that it should be substantially new ; as, for example, if it be a piece of
EVIDENCE. 485
of the opinions of scientific witnesses, that a particular
means, which might be used to carry out the general direc-
mechanism, that it should be substantially new in its structure, or mode of
operation. Secondly, that the specification should express the mode of
constructing, compounding, and using the same, in such full, clear, and
exact terms, ' as to enable any person, skilled in the art or science to which
it appertains, or with which it is most nearly connected, to make, construct,
compound, and use the same.' Kow, for the latter purpose, a mere artisan,
skilled in the art with which it is connected, may, in many cases, be an
important and satisfactory witness. If, as a mere artisan, he can, from the
description in the specification, so make, construct, compound, and use the
same, it would be very cogent evidence of the sufliciency of the specifica-
tion. Still, it is obvious, that, although a mere artisan, who had no scientific
knowledge on the subject, and who was unacquainted with the various
mechanical or chemical equivalents employed in such cases, might not be
able to make and compound the thing patented, from the specification ; yet,
a person who was skilled in the very science on which it depended, and
with the mechanical and chemical jiowers and equivalents, might be able to
teach and demonstrate to an artisan, how it was to be made or constructed,
or compounded or used. A fortiori, he would be enabled so to do, if he
combined practical skill with a thorough knowledge of the scientific princi-
ples on which it depended." It is not quite clear, upon this passage, whe-
ther the learned judge did or did not mean to intimate, that a specification
would be good, if a scientific witness could teach an artisan how to make,
compound, or use the thing patented, although the artisan could not prac-
tise the invention without such aid. The sense in which he seems to oppose
the word " artisan " to that class of persons who are not practical artisans,
but who are " thoroughly conversant with the subject of mechanics, as a
science," or are " skilled in the very science on which the invention
depends," would seem to imply that an obscurity, or other defect, in a speci-
fication, which would embarrass an artisan, may be cured by a scientific per-
son, whose superior knowledge of the principles of the science might be used
to teach the workman, from the specification ; if so, this is not the standard
which the same learned judge adopted on other occasions. In Lowell v.
Lewis, 1 Mas. 190, he instructed the jury, that the question was, whether
the specification was so clear and full, that a pianp-maker of ordinary skill
could, from the terms of the specification, construct a pump on the plan
described. Perhaps, however, in the more recent case, he intended only to
draw a distinction between mere mechanics, or laborers, in a particular art,
manufacture, or trade, and persons conversant with the science on which it
depends ; and to say, that the latter are competent, and often the most satis-
486 LAW OF PATENTS.
tions of a specification, would succeed, without showing that
that means had actually been tried and had succeeded.^
§ 368. Whether there is a class of inventions, addressed so
entirely to scientific witnesses as to render their knowledge
and skill requisite, in the practical application of the direc-
tions, so that there cannot be said to be any recognized class
of artisans, to whose capacity the directions can be referred,
is another question. This must depend on the nature of the
invention.
§ 369. Before it can be determined, in any case, what class
of persons are to be taken as those, whose ability to apply
the directions furnishes the standard of the sufficiency of the
specification, it must first be ascertained to what class of per-
sons the specification is presumed to be addressed, as being
those who are to carry out the directions. If the inquiry
arose after the patent had expired, this class of persons would,
in most cases, be readily ascertained, by observing what per-
sons applied themselves to the practice of the invention. But
it actually arises before the patent has expired, and before
its dedication to the public enables us to see what persons
will undertake to practise the invention. That state of
things must, therefore, be anticipated, so far as to ascertain
what persons will undertake practically to carry out the
factory witnesses, which is certainly obvious. It is scarcely to be prcsumetl,
that he meant to say that, where the description in a patent is of a thing,
which a particular class of mechanics would be employed to make, the speci-
fication would be sufficient, although it could not be carried out by a work-
man of that class, having ordinary skill, provided it could be understood by
a " person thoroughly conversant with the subject of mechanics,*as a sci-
ence." This, as a general proposition, would confine the practice of many
inventions, after the patent had expired, to the latter class of persons, which
the Patent Law does not intend.
i Neilson v. Harford, Webs. Pat. Cas. 295, 315, 316.
EVIDEI^CE. 487
directions of the patent, for the purpose for which the in-
vention is designed. The standard, therefore, will vary
greatly, according to the nature of the invention. In some
cases, the persons who will undertake to practise it will be
very numerous, in others, very limited, in point of numbers.
In some cases, the qualifications will be very moderate ; in
others, a very high state of accomplishment, skill, and know-
ledge, will be requisite. The nature and object of the in-
vention must be resorted to, to see to what persons the speci-
fication is to be presumed to be addressed. If it be a ma-
chine destined to a particular use, the workmen whose voca-
tion it is to make similar machines, for similar purposes, will
be the persons who would be called upon to make the ma-
chine after the patent has expired. If it be a composition of
matter, involving the knowledge of practical chemists, such
persons will attempt to practise the invention, when they are
at liberty to do so. If it be a manufacture of an improved
character, the persons whose business it has been to make
the old article, will -be the persons who will make the new
one„ In all these and similar cases, where there is a class of
workmen who are habituated to the practical exercise of the
art or science under which the patented invention falls, the
specification is to be presumed to be addressed to them ;
and, although scientific witnesses may be examined, as to
the clearness and fulness of the specification, its sufficiency
must be referred to the ability of competent practical work-
men, of ordinary skill, to understand and apply it. This
limitation of the evidence follows, necessarily, from the prin-
ciple that the specification cannot be supported by the fresh
invention and correction of a scientific person. The ordinary
knowledge and skill of practical workmen being the standard,
where the specification is for the benefit of a particular trade,
the evidence cannot be carried so far as to include the degree
of skill and knowledge possessed by a scientific person, who
could, on a mere hint, invent the thing proposed to be accom-
plished ; although such a witness may be asked, whether a
Si
488 LAW OF PATENTS.
competent workman could attain the object of the patent,
by following out the direction s.^
§ 370. But if the invention be of a character entirely novel,
embodying an effect never before produced, and which it is
not within the province of any particular class of workmen
to produce, but which it belongs rather to the province of
men possessed of some science to apply, by directing the la-
bors of common artisans, upon principles which such artisans
do not commonly understand or undertake to use, then the
specification may be presumed to be addressed to men capa-
ble of applying those principles, and not to mere artisans,
who have previously been employed in the construction of
things of the same class which it is the object of the invention
to supersede. Thus, in the case of an invention, which con-
sisted in an improvement on paddle-wheels for propelling
vessels, by a mode of constructing them, so that the floats
might enter and quit the water at any required angle, the
specification would be addressed to engineers capable of de-
termining what angle was required, and it ought to furnish
the rules by which such persons could ascertain the angle,
and the mechanical means by which it could be applied in
practice.2 The understanding of such a specification would
be somewhat above the range of acquirements belonging to
mechanics employed in the manual labor of constructing the
machinery : that is to say, the specification would be address-
ed to competent engineers, of ordinary skill in that profes-
sion.''^
^ 371. But it should be remembered, that, whenever, in a
case of this kind, as in all other cases, the persons to whom
the specification is to be presumed to be addressed, have
1 Morgans. Seaward, Webs. Pat. Cas. 174; !Neilson v. Harford, Ibid.
371 ; The Housebill Co. v. Nellson, Ibid. G92.
2 Morgan v. Seaward, Webs. Pat. Cas. 170 ; Ante, p. 409 et seq.
3 Ibid.
EVIDENCE. 489
been ascertained, a rule becomes applicable, which defines
the nature and scope of the evidence that may be offered, to
explain the specification. This rule is, that the patentee
must not, in framing his specification, call upon the persons
to whom it is addressed, to exercise more than the actual ex-
isting knowledge common to their trade or profession. He
has a right to exhaust this knowledge ; but if, in order to ap-
ply his directions, the members of the trade or profession are
required to tax their ingenuity or invention, so that, beyond
the exercise of ordinary and competent skill, they would have
to solve a problem, or supply something, in the process, by the
exercise of the inventive faculty, the specification would be
bad.i
§ 372. II. As to the Infringement. Upon the question of
infringement, the point to be determined is, whether the thing
made or used by the defendant is, in the sense of the Patent
Law, identical with the invention of the patentee. This is
the same question as that which arises on the issues of nov-
elty, when it is necessary to determine whether the invention
of the patentee is the same as some former thing, or different,
and therefore entitled to be regarded as a novelty. "VVc may,
therefore, here consider the principles of evidence applicable
to the inquiry, whether two things are identical in the sense
of the Patent Law.
§ 373. It is obvious that there may be two kinds of evi-
dence applicable to this issue, both of which may be drawn
from experts. Whether one thing is like another, is a matter
of judgment, to be determined on the evidence of our own
senses, or the senses of others. If we rely on the senses of
others, the sole testimony which they can bear, is, either as
to the matters of fact which constitute the precise differences
or resemblances between the two things, or as to matter of
1 Ibid.
62
490 LAW OF PATENTS.
opinion, by which they infer that these differences or resem-
blances do, or do not affect the question of the substantial
identity of the two things. Both of these kinds of evidence,
however, run so nearly into each other, and the boundaries
between them are often so shadowy, that it is sometimes dif-
ficult to draw the line between fact and opinion. The actual
differences or resemblances between two things are prima
facie matters of fact, to be observed by the senses ; but, with
the act of observing these differences or resemblances, we
blend the process of reasoning, by which we determine, for
our own satisfaction, what is a real, and what only an appa-
rent difference or resemblance; what constitutes a diflerence
or resemblance, in point of principle ; and the result of this
process, expressed in the conclusion, that the two things are
or are not identical, is matter of opinion. Between these two
branches of evidence, it is exceedingly difficult to draw the
line, so as to define the true office of an expert, and to admit
all proper evidence of facts and opinions, without leaving to
the witness the whole determination of the issue.^
§ 374. At the same time, it is certain that a boundary ex-
ists somewhere. The question whether two things are iden-
tical, in the sense of the Patent Law, is a mixed question of
law and fact ; and when it is submitted to a jury, it is for
the Court to instruct them, after the actual differences or re-
semblances are ascertained, what constitutes, in point of law,
1 In Dixon v. Moyer, 4 Wash. GS, 71, ;Mr. Justice Washington said : " In
actions of this kind, persons acquainted with the particular art to which the
controversy relates, are usually examined, for the purpose of poLntinu out and
explaining to the jury the points of resemblance, or of difference, between
the thing patented and that which is the alleged cause of the controversy ;
and the opinions of such "svilnesses, in relation to the materiality of apparent
differences, are always entitled to great respect. But, after all, the jury
must judge for themselves, as well upon the information so given to them,
as upon their own view, where the articles, or models of them, are brought
into court." ♦■
evidenjce. 491
a difference or identity.^ There is, therefore, a most im-
portant function to be discharged, if one may so say, by the
law itself; for it has to determine, upon all the facts open to
the observation of the senses, whether guided by the superior
facility for observation enjoyed by experts, or not so assisted,
whether, in the sense of the law, there is an identity or a dif-
ference. This function is always in danger of being en-
croached upon, by a loose mode of receiving the testimony
of experts, by whom the whole question is often in reality
left to be decided.
§ 375. The testimony of persons skilled in the particular
subject is undoubtedly admissible, for two purposes ; first., to
point out and explain the points of actual resemblance or
differences ; secondly^ to state, as matter of opinion, whether
these resemblances or differences are material ; whether they
are important or unimportant ; whether the changes intro-
duced are merely the substitution of one mechanical or chem-
ical equivalent for another, or whether they constitute a real
change of structure or composition, affecting the substance
of the invention. But when these facts and opinions have
been ascertained, the judgment of the jury is to be exercised,
upon the whole of the evidence, under the instructions of the
Court, as to what constitutes such a change as will, in point
of law, amount to a fresh invention, and, therefore, will not
be an infringement.-
§ 376. The duty of giving this instruction should not be
1 Barrett v. Hall, 1 Mas. 447, 470, 471, 472.
2 In Allen v. Blunt, 3 Story's R. 742, 748, 749, Mr. Justice Storj-, dis-
cussing the relative value of scientific witnesses and mere artisans, said :
" The very highest -witnesses to ascertain and verify the novelty of an in-
vention, and the novelty or diversity of mechanical apparatus and contri-
vances, and equivalents, are, beyond all question, all other circumstances
being equal, scientific mechanics ; they are far the most important and use-
ful to guide the judgment, and to enable the jury to draw a safe conclusion,
whether Ihe modes of operation are nev: or old, identical or divei^e."
492 LAW OF PATENTS.
surrendered by the Court. A scientific witness may be asked,
for instance, whether, in his opinion, a particular machine is
substantially new in its structure, or mode of operation, or
whether it is substantially the same thing as another, with only
apparent differences of form and structure. But when the
differences or resemblances have been pointed out, and when
the view that science takes of their relative importance has
been ascertained ; when the fact appears, of whether a par-
ticular change is or is not regarded by mechanicians as the
substitution of one mechanical equivalent for another, the
Court must instruct the jury, whether the particular change
amounts, in point of law, to a change of what is commonly
called the principle of the machine. This is a question
wholly aside from the function of a witness. The most
skilful and scientific mechanician in the world can only say
what, in his opinion, are the differences or resemblances be-
tween one machine and another, and how far they are re-
garded by mechanicians as material or substantial. But the
question of what constitutes a fresh invention, or what, upon
a given state of facts, amounts to a change so great as to
support an independent patent for a new thing, is a question
of law ; and this question is involved in every issue as to the
identity of two things, whether it relates to the question of
infringement or of prior invention.^
§ 377. The evidence for the defendant, upon the question of
novelty, will, of course, consist of proof, positive in its nature,
that the thing patented existed before ; and, if any credible
evidence of this is adduced, it will outweigh all the negative
evidence that can be offered by the plaintifi'.^ But, whenever
the defendant relies on the fact of a previous invention, know-
1 Sec the instructions of the Court in Walton i: Potter, Webs. Pat. Cas.
585, 586, 587, 589, 591 ; Huddart v. Grimshaw, Ibid. 85, 86, 91, 92, 95.
See also the examination of certain experts in Russell v. Cowley, Ibid. 462,
before Lord Lyndhurst, in the Exchequer, cited ante.
2 Mantont'. Manton, Dav. Pat. Cas. 250.
EVIDENCE. . 493
ledge, or use of the thing patented, he must give notice of
the names and places of residence of the persons who, he
intends to prove, have possessed a prior knowledge, or had a
prior use of it.^
§ 378. Persons who have used the machine patented, are
not thereby rendered incompetent, as witnesses, on account
of interest.^ It has been held, that a witness, who was
patentee in another patent, and had sold to the defendant
the right to use the machine, the use of which was com-
plained of as an infringement, was a competent witness ;
since any verdict that the plaintiff might recover could not
be given in evidence by the plaintiff, in an action against the
witness.^ A patentee, who has assigned the whole of his
interest in the patent, is a competent witness for the assignee
in support of it.* A licensee is a competent witness for the
patent, in an action for an infringement ; for he has no direct
pecuniary interest in supporting the patent, but it may be for
his advantage that it should not be supported.^ Evidence,
on the part of the plaintiff, that the persons, of whose prior
use of a patented machine the defendant had given evidence,
had paid the plaintiff for licenses, ought not to be absolutely
rejected, though entitled to very little weight.^
1 As to the evidence appropriate to the different defences to an action,
see ante, in the chapter on Actions at Law.
2 Evans v. Eaton, 7 Wheat. 356 ; Evans v. Uettich, Ibid. 453 ; 2 Greenl.
on Evid. § 508.
3 Treadwell r. Bladen, 4 Wash. 704.
4 Bloxam v. Elsee, 1 C. & P. 563.
5 Derosne v. Falrie, Webs. Pat. Cas. 154.
6 Evans v. Eaton, 3 Wheat. 454,
CHAPTER V.
QUESTIONS OF LAW AND QUESTIONS OF FACT.
§ 379. The several provinces of the Court and the jury, in
the trial of patent causes, have already been incidentally
alluded to, but it may be proper to give here a summary of
the principal questions which constitute matters of fact and
matters of law.
§ 380. The question of novelty is a question of fact for
the jury. It embraces the two questions, of whether the
plaintiff, or patentee, was the inventor of the thing patented,
and whether the thing patented is substantially different from
any thing before known. These are questions of fact for the
jury, upon the evidence.^ But it is for the Court to instruct
the jury what constitutes novelty, in the sense of the Patent
Law, as well as what amounts to a sufficiency of invention
to support a patent. So, also, the question of prior public
use is a question of fact.^
§ 381. The question, whether the renewed patent is for the
same invention as the original patent, is also a question of
fact for the jury ; ^ as is likewise the question, whether the
invention has been abandoned to the public*
1 Whittemore v. Cutter, 1 Gallis. 478 : Lowell v. Lewis, 1 Mas. ; Carver
V. Braintree Manuf. Co. 2 Story's R. 432, 441.
2 Ante, § 53, note 3.
3 Carver v. Braintree Manuf. Co. 2 Stoiy's E. 432, 441.
4 Ante, § 57, note 2.
QUESTIONS OF LAW AND QUESTIONS OF FACT. 495
§ 382. The question of utility is a question of fact, under
some circumstances, and, under other circumstances, it may-
be for the Court, without referring it to the jury, to pro-
nounce the patent void. We have seen that a " useful
invention," in the sense of our law, is one not injurious or
mischievous to society, and not frivolous or insignificant, but
capable of use, for a purpose from which some advantage
can be derived ; and that, when an invention is useful in
this sense, the degree or extent of its usefulness is wholly-
unimportant. There are, therefore, two modes, in which the
utility of an invention may be impeached ; first, when it
appears, on the face of the letters-patent and specification,
that the invention is injurious to the morals or health of
society ; secondly, when it appears, on the evidence, that
the thing invented, although its object may be innocent or
useful, is not capable of being used to effect the object pro-
posed.
§ 383. The question, whether the invention is useful, in
the first sense, is a question whether the patent is void, on
the face of it, as being against public policy ; or, in other
words, because the subject-matter disclosed by the patent is
not a patentable subject. This is a question of law for the
Court.i But when it does not appear that the invention
has any noxious or mischievous tendency, but, on the con-
trary, that its object is innocent or salutary, there may be a
farther question, whether the means, by which the inventor
professes to accomplish that object, will, in practice, succeed
or fail. It is not essential to 'the validity of a patent, that
the success of the means made use of should be complete, or
that the thing invented should supersede any thing else
used for the same purpose ; because the law looks only to
the fact that the invention is capable of some use. Thus,
1 Langdon v. De Groot, Fame's C. C. R. 203 ; Lowell v. Lewis, 1 Mason,
182 ; Phillips on Patents, p. 432.
496 LAW OF PATENTS.
if a machine is useful for some of the cases for which it is
intended, although cases may occur in which it does not
answer, it is still useful, in this sense of the Patent Law ; i
but if any thing claimed as an essential part of the inven-
tion is useless altogether, the patent is invalid, because there
is a total failure in point of usefulness.^ These questions,
whether the invention is capable of use, for the purpose for
which it is claimed, and whether any thing claimed as essen-
tial is entirely useless, depend upon evidence, and are ques-
tions of fact for the jury.^
§ 384. In like manner, the question whether an invention
is frivolous or insignificant, is a question of law. If the
object proposed to be accomplished is a frivolous or insigni-
ficant object, from which no advantage can be derived to the
public, it is for the Court to pronounce the patent void, as
not being for a patentable subject. But if the object pro-
posed is not clearly frivolous and unimportant, but the means
by which it is proposed to be accomplished do not succeed
in producing the result, the question returns to the usefulness
of the means, and this again becomes a question of fact for
the jury.
§ 385. The construction of the specification, as to the
extent of the claim, belongs to the province of the Court.
The Court must determine, upon the whole instrument,
what the claim actually covers, and whether the patent is
valid in point of law. The jury are, therefore, to take the
construction of the patent, as to the extent of the claim,
from the Court, and to determine whether any thing that is
included in the claim is not new. But if the specification
1 Hawortli v. Hardcastle, Webs. Pat, Cas. 480.
2 Lewis V. Marling, Webs. Pat. Cas. 490, 495.
3 Ha-worth v. Hardcastle, ut supra ; Lewis v. Marling, ut su])ra ; Hill i'.
Thompson, 3 Meriv. 630, 632 ; Lowell v. Lewis, 1 JVIason, 182 ; Bedford v.
Hunt, Ibid. 302.
QUESTIONS OF LAW AND QUESTIONS OP FACT. 497
contains terms of art, which require explanation, by means
of evidence, it is for the jury to find the meaning of those
terms.i
§ 386. And, here, it is very important to ascertain whether
there are any principles, which are to guide the Covirt in
construing patents, peculiar to these instruments, or whe-
ther they are to be construed, in all respects, like other
written instruments, and without the aid of extrinsic evi-
dence. In one sense, a patent is a deed, being a grant of
the government, under seal ; the letters-patent, the specifica-
tion, and the drawings annexed, being taken together as one
instrument. But it often happens, that the extent of the
claim is not manifest on the face of the specification itself/
The question arises, therefore, how is the Court to ascertain
the precise extent of the claim, as matter of law? The spe-
cification is a written instrument, in which the patentee has
undertaken to state the invention which he professes to have
made, and for which he has obtained letters-patent. In
determining the real extent of the claim thus made, it is
obvious, that the actual invention of the party is a necessary
auxiliary to the construction of the language which he has
employed in describing it. The thing of which the patentee
was the real inventor, is what he was entitled to claim, and
the question, in all cases requiring construction, will be, whe-
ther he has claimed more or less than that thing, or exactly
what that thing is. If he has claimed more than his actual
invention, that is, more than that of which he was an original
and the first inventor, his claim is inoperative, under our law,
pro tanto. If he has claimed less, his exclusive right is
restricted to what he has claimed. If he has claimed the
just extent of his actual invention, he is entitled to hold it,
in all its length and breadth.
'&'
§ 387. There are two sources to which the Court is enti-
l^n<e, §123, 124.
63
498 LAW OF PATENTS.
tied to resort, in construing a claim. In the first place, resort
may be had to the descriptive parts of the specification,
where the patentee has undertaken to state what his inven-
tion is ; in other words, the Court is to inquire what the
patentee has said that he had invented. If his statement or
description of the invention is clear and explicit, then the
language in which he has made his claim, which is gene-
rally to be found in a summary statement of the subject-
matter for which he asks a patent, may and should be con-
strued so as to include the actual invention previously set
forth, if it can be so construed without violation of princi-
ple ; ^ for the general maxim, under which the construction
is to be pursued, is, according to the spirit of the modern
Authorities, ut res magis valeat quam pereat.
§ 388. But it may be uncertain, upon the terms of the
descriptive parts of the specification, if unaided by evidence,
what the precise extent of the invention was ; and this may
happen, without that degree and kind of ambiguity which
renders a patent void for uncertainty, or because the direc-
tions could not be carried out by a competent workman.
For instance, the patentee may state that he employs some-
thing which turns out not to be new ; and the question will
then be, whether he has so described that thing as to claim it
as part of his invention ; — or his invention may be so stated.
1 See Kussell v. Cowley, Webs. Pat. Cas. 469, 470 ; DavoU v. Browii,
1 Woodbury & M. 53, 59. AMiere the construction depends, as it gene-
rally does, in the first instance, on the terras of the specification, the pre-
amble may sometimes be resorted to. Winans v. Boston & Providence
Kailroad, 2 Story's E. 412. Sometimes the body of the specification. Rus-
sell V. Cowley, ut supra, 459, 463, Sometimes the summing up. Moody i'.
Fiske, 2 Mason, 112, 118. Generally, the whole is examined together,
unless the summary seems explicitly to exclude the rest of the specification,
and to require a construction by itself alone. McFarlane v. Price, Webs,
Pat, Cas, 74; 1 Starkie, 199; The Iving i'. Cutler, Webs. 76, note;
1 Starkie, 354 ; Ames v. Howard, 1 Sumner, 482, 485. See Davoll v. Brown,
ut supra.
QUESTIONS OF LAW AND QUESTIONS OF FACT. 499
as to render it doubtful, whether he has invented or disco-
vered the general application of a principle to produce a
particular effect, and is, therefore, entitled to claim all the
forms in which the same principle can be applied to produce
the same effect, or, whether he has only invented or disco-
vered a form of giving effect to a principle, the application of
which was known before. So, too, on the general descrip-
tion of a machine, or a manufacture, which, as a whole, may
be new, it may be uncertain, whether the party invented the
various parts of which that whole is composed, or only in-
vented the combined whole, as he has produced it; and, if
the latter, whether he invented the whole, as it may embrace
all the forms and dimensions in which that whole can be
produced, or, whether his claim is to be confined to certain
forms and dimensions, there being other wholes, of the same
general character, of other forms and dimensions, which it
. does not include.
§ 389. In such cases, the character and scope of the inven-
tion can only be ascertained, by attending to what the evi-
dence shows is new or old ; to the state of the art ; to the
fact of whether the principle, which the patentee has em-
ployed, had been discovered and applied before, and, there-
fore, that he could have invented only a new form of the
application, or, whether he has invented the application of
the principle itself, and, consequently, is entitled, if he has
not restricted himself, to claim the same application of the
same principle, under other forms or dimensions, or by other
means, than those which he has specifically described. The
question, whether he has limited himself to particular forms,
dimensions, or methods, necessarily involves an inquiry into
the substance and essence of his invention. In other words,
before it can be ascertained, in doubtful cases, what he has
claimed, some attention must be paid to his actual invention,
as ascertained on the evidence.
§ 390. To what extent, then, is the Court entitled to receive
500 LAW OF PATENTS.
evidence of the actual invention, and how is that evidence to
be applied to the construction of the claim? In the progress
of a nisiprius trial, the state of the art, the surrounding cir-
cumstances in which the inventor was placed, the previous
existence of some things mentioned or referred to in the pa-
tent, will all be likely to be developed on the evidence ; and
these facts may materially affect the construction to be given
to the claim. It has been said, and with great propriety, that,
in the exercise of the duty of determining what the claim is,
in point of law, the judge must gather as he goes along ;
informing himself upon the evidence, and observing what
facts are controverted, and what facts are not controverted,
which bear upon the meaning of the claim, in reference to its
extent.^ If the facts material to the construction are not left
in doubt on the evidence, the construction will be given to
the jury, absolutely; but, if the evidence requires a finding
of facts by the jury, the construction will be given to them
conditionally.-
§ 391. Among the facts which will thus exercise an impor-
tant influence on the extent of the claim, is the previous exist-
ence of something mentioned in the specification. If it is
manifest, on the face of the terms in which the patentee has
described his invention, that he has included something of
which he was not the inventor, his patent cannot be allowed
to cover it. But it may be doubtful, whether he has so in-
cluded the thing, which the evidence shows to be old ; and
then the degree or extent to which that thing was known
before, its great familiarity and constant use for analogous
purposes, will be important elements in the question, whether
the patentee has claimed it as of his own invention. This
consideration hat given rise to the rule, that the patentee is
to be presumed not to intend to claim things which he must
1 Per Lord Abinger, C. B., in Neilson v. Harford, Webs. Pat. Cas.
350, 351.
2 Ibid. p. 370.
QUESTIONS OF LAW AND QUESTIONS OF FACT. 501
know to be in use ; which is only another application of the
broader rule, that a specification should be so read, as, con-
sistently with the fair import of language, will make the
claim coextensive with the actual discovery or invention.^
§ 392. Another important consideration will be the state
of the art. If, for instance, a patent contemplates the use of
certain substances, although it may make use of terms exten-
sive enough to embrace other substances, which, in the pro-
gress of the art, have been ascertained to be capable of the
same use, but, at the time of the patent, were not known to
be so, or, being known at the time to be capable of the same
use, were yet so expensive as not to be expected to be in use
for the same purpose, the general terms of the specification
will be so interpreted as to include only those substances
cjusdem generis with the particular substances mentioned,
which may reasonably be supposed, on the state of the art,
to have been contemplated at the time. This is to be ascer-
tained by evidence.
§ 393. Thus, on a specification describing "An improved
gas apparatus, for the purposes of extracting inflammable gas
by heat, from pit coal, or tar, or any other substance from
which gas, or gases, capable of being employed for illumi-
nation, can be extracted by heat ; '' it appeared that it was
known, at the date of the patent, as a philosophical fact, that
oil would yield inflammable gas, but that the apparatus de-
scribed in the specification, could not be used advantageously,
if at all, for the making of gas from oil ; it was answered,
that it was a general opinion at the time, that nothing but
coal would be cheap enough for purposes of illumination ;
and the Court held, that the patentee must be understood to
mean things that were in use, and not every thing which
would produce gas, but, from being so expensive, was never
expected to be in use.^
1 Haworth v. Hardcastle, Webs. Pat. Cas. 484, 485.
2 Crossley v. Beverley, Webs. Pat. Cas. 106, 107, 108.
502 LAW OF PATENTS.
§ 394. Sometimes, the construction may rest on facts,
which are so referred to as to make part of the description and
to govern it. If these facts are controverted, they are to be
left to the jury. But if they are proved, or admitted, the
Court will take notice of them, in giving a legal construction
to the instrument. Thus, where the question was, whether,
in the specification of an improvement in the machine, known
by the name of speeder, double speeder, or fly-frame, used for
roving cotton, preparatory to spinning, the patentee had con-
fined himself to the use of the bow-flyer, that is, a flyer in
" one continuous piece," as part of his new combination ; it
appeared that the specification thus described the invention :
" It will be seen that the flyers, as used by me, and shown at,
&c., are made in one continuous piece, instead of being open at
the bottom, as is the case with those generally used in the
English fly-frame, and this, among other reasons, enables me
to give the increased velocity above referred to." The paten-
tee then summed up his claim as follows : " What I claim
as new, &c., is the arrangement of the spindles and flyers, in
two rows, in combination ivilh the described arrangement of
gearing,^'' which he had previously pointed out. Although
the language here did not admit of much doubt, as to the
kind of flyer intended to be claimed, the Court took notice of
the admitted or apparent facts, which tended to show that
the bow-flyer alone was intended ; one of which was, that
the bow-flyer alone could be geared, as the patentee had
described his flyer to be, in two places, through its bottom ;
the other form of the open-flyer having no bottom susceptible
of being used or geared in that manner.^
1 Davoll V. Brown, 1 Wood. & M. 53, 58, 59, 60. In this case, Mr.
Justice Woodbury said : " The construction seldom rests on facts to be
proved by parol, unless they are so referred to as to make a part of the
description and to govern it ; and when it does at all depend on them, and
they are proved or admitted, and are without dispute, as here, it is the duty
of the Court, on these facts, to give the legal construction to the instrument.
But, whether the Court gave the right construction to the patent in dispute,
so far as regards the kind of flyer to be used in it, is a proper question for
QUESTIONS OF LAW AND QUESTIONS OF FACT. 503
§ 395. The sufficiency of the description, to enable compe-
tent persons to apply the invention, is a question of fact for
consideration now ; and, if any mistake has occurred in relation to it, in tlie
hurry and suddenness of a trial, it ought to be corrected, and will be most
olieerfuUy. There is no doubt, as to the general principle contended for by
tlie defendant in this case, that a patentee should describe, with reasonable
certainty, his invention. Several reasons exist for this. One is, the Act of
Congress itself requires, that he ' shall, particularly specify and point the
l)art, improvement, or combination, which he claims as his own invention.'
And another is, that, unless this is done, the public are unable to know
whether they violate the patent or not, and are also unable, when the term
expires, to make machines correctly, and derive the proper advantages from
the patent. These principles, however, are not inconsistent with another
one, equally well settled, which is, that a liberal construction is to be given
to a patent, and inventors sustained, if practicable, without a departure from
sound principles. Only thus can ingenuity and perseverance be encouraged
to exert themselves, in this way, usefully to the community ; and only in this
way can we protect intellectual propertj', the labors of the mind, productions
and interests, as much a man's own, and as much the fruit of his honest
industry, as the wheat he cultivates, or the flocks he rears. Grant v. Ray-
mond, 6 Peters, 218 ; See also Ames v. Howard, 1 Sumn. 482, 485 ; "Wyeth
r. Stone, 1 Story, 273,287; Blanchard v. Sprague, 2 Story, 164.— The
patent laws are not now made to encourage monopolies of what before
belonged to others, or to the public, — which is the true idea of a mono-
poly, — but the design is to encourage genius in advancing the arts, through
science and ingenuity, by protecting its productions of what did not before
exist, and of what never belonged to another person or the public. — In this
case, therefore, the jury were instructed to consider the case under these
liberal views, unless the invention, such as the Court construed it to be, in
point of law, was described with so much clearness and certainty, that other
machines could readQy be made from it, by mechanics acquainted with the
subject.
Looking to the whole specification and drawing, both the figure and lan-
guage, could any one doubt that bow-flyers were intended to be used in the
new combination which was patented ? The figure is only that of a bow-
flyer, so is the language. First, the spindles are described as working up
and down ' thi-ough the bottom of the flyers, as seen at a,' which is not pos-
sible in the case of the open-flyer, as that has no bottom for the spindle to
work in.
Again, the specification says, ' to the bottom of each flyer a tube is
attached, as seen at b, figures 1 and 2,' which is impracticable with an open
504 ^^^ OF PATENTS.
the jury, on the testimony of experts and the language itself.i
But it does not follow from this, that the construction of the
flyer. Again, it says, motion is communicated to the flyer independently,
but that is not feasible with the open flyer. And finally, towards the close,
in order to remove all possible doubt, the specification adds, ' it will be seen
that the flyers, as used by me, and shown at ii and kk, are made in one con-
tinuous piece, instead of being open at the bottom, as is the case with those
generally used in the English fly-frames.' All know, that the flyer in one
continuous piece is the bow-flyer. Besides this, other admitted or apparent
facts tended to show that the bow-flyer alone was intended. One great
advantage, claimed from the new combination in the patent, was an increased
velocity of the spindle. Thus, in the early part of the specification, it is
stated, among the advantages of his improvement, that ' the machine will
bear running at a much higher velocity than the English fly-frame.' And,
towards the close, he says, that it is the use of the flyer in ' one continuous
piece,' that is, the bow-flyer, instead of the open one, as in the English fly-
frame, which, ' among other reasons, enables me to give the increased velo-
city above referred to.' How could there, then, be any reasonable doubt,
that, in his patent, it was this bow-flyer he intended to use in his new
combination ?
In truth, he not only says so, and could not otherwise obtain one of his
principal objects and advantages, but it is manifest from the form of the flyer
itself, and was not doubted at the trial, that only the bow-flyer could be
geared, as he described his flyer to be, in two places, through its bottom ;
the other form of the open flyer confessedly having no bottom susceptible of
being used, or geared in this manner There was
no fact in doubt about this, to be left to the jury ; and there was but one con-
struction as to the kind of flyer intended to be used, that was consistent
either with the drawings, or the express language employed, or the chief
object of the machine in its increased velocity, or in the practicability of
gearing it in the manner before described by him in two important parti-
culars, or of giving motion to it ' independently.' It is as clear and deci-
sive on this point as if he had said the before described spindles and flyers,
because he says the spindles and flyers ' with the described arrangement of
the gearing,' and no other spindles or flyers but the short spindles and bow-
flyers could be geared in the manner before described, through the bottoms
of the latter.
Matters like these must be received In a practical manner, and not decided
on mere metaphysical distinctions. Crossley v. Beverley, 3 Car. & Payne,
513, 514.
1 Lowell V. Lewis, 1 Mason, 190, 191.
QUESTIONS OF LAW AND QUESTIONS OF FACT. 505
specification is to be drawn into the province of the jury.
Their province is, after having been informed what the spe-
cification has £aid, to determine whether the directions are
sufficiently clear and explicit to enable a competent workman
to practise the invention. The information of what the spe-
cification has said, is to come from the Court ; although it
may happen, that, in determining the meaning of the speci-
fication, the aid of the jury will be required to ascertain the
meaning of words of art, or the surrounding circumstances
which govern that meaning. When such words of art, or
such surrounding circumstances, do affect the meaning, the
Court will instruct the jury that the specification has said so
and so, according as they find the meaning of the scientific
terms, or the existence of the surrounding circumstances.
But if there are no words of art, and no surrounding circum-
stances, to be ascertained, the Court, as we have seen, will
instruct the jury what the specification has said ; and then
the jury will determine, the specification having said so and
so, whether the description is sufficient to enable a competent
workman to put the invention in practice.^
§ 396. There is no positive rule by which it can be deter-
mined, in a given case, a priori, whether the meaning of
Taking with us. also, the settled rules, that specifications must be sustained
if they can be talrly, (Russell v. Cowley, 1 Cromp. Mees. & Eosc. 8C4,
866; Wyeth v. Stone, 1 Story, 273, 287,) that we should not be astute to
avoid inventions, and that it is a question for the Court, and not the jury,
whether the specification can be read and construed intelligibly in a particu-
lar way, (Whitney v. Emmett, Baldw. 303, 315; Blanchard v. Sprague,
2 Story, 164, 160,) we think the instructions given at the trial in this case
were correct, and that no sufficient ground has been shown for a new trial."
i It follows, from the proposition that the Court are to declare what the
specification has said, that it is also a question of law, upon the construction of
the specification, whether the invention has been specifically described with
reasonable certainty. This is a distinct question from the intelligibility of
the practical directions, although both may arise upon the same passages.
Ante, §§ 123, 12-1, 126, note 2; 130, 134, note 3 ; 136, note 1, 2.
64
506 liAW OF PATENTS.
words of art, or the bearing of surrounding circumstances,
affects the sense of the specification ; or which limits the
right of the plaintiff to offer evidence to show that its mean-
ing is so affected. The plaintiff is always entitled to say,
that his specification requires the explanation of facts, to de-
termine the extent of his claim and the character of his in-
vention ; and the only course that can be taken is, for the
Court to receive and watch the evidence, and to apply it to
the construction, taking care that it be not allowed to go so far
as to supply positive omissions, which would render the speci-
fication defective. Within this limit, the construction, which
is nothing more than the ascertaining of the meaning of
what is written, may always be affected by evidence ; which
is to be taken into view, although no conflict arises, requiring
a finding of the jury, because the Court can have no judicial
knowledge either of the terms of art, or of the surrounding
circumstances, and cannot say, until it has heard the evidence,
that the meaning is not to be affected by them.
§ 396 a. In some cases, too, although the construction of
the claim is for the Court, the application of the claim may
be a question for the jury. As, where a claim does not point
out and designate the particular elements which compose a
combination, but only declares, as it properly may, that the
combination is made up of so much of the described machi-
nery as affects a particular result, it is a question of fact,
which of the described parts are essential to produce that re-
sult; and, to this extent, it is to be left to the jury to say,
upon the evidence of experts, or an inspection of the two ma-
chines, or both, what parts described, in point of fact, enter
into and constitute the combination claimed.^
§ 397. The provinces of the Court and the jury, then, are
distinct, and, upon this particular question of the practica-
1 Silsby V. Foote, 14 Howard, 218.
QUESTIONS OF LAW AND QUESTIONS OF FACT. 507
bility of the specification, it is of consequence that they
should not be confounded. When it is put to a jury to deter-
mine, whether a specification has so fully and accurately de-
scribed the invention, that others can practise it from the
description, the danger sometimes arises, of their undertaking
to determine what the claim is ; because the extent and char-
acter of the claim itself may depend on the same words, on
which they are to decide the intelligibility of the directions,
and may thus seem to be inseparably blended with the ques-
tion of that intelligibility. But, in truth, these questions are
always separable, and care should be taken to separate them.
In one aspect, every thing is for the jury, which bears on the
question, whether the specification sufl^lciently describes the
mode of carrying the invention into efiect ; but, on the other
hand, the meaning of the very passages on which this question
arises, in relation to the prior question of what the specifica-
tion has said, is for the Court, after the facts which bear
upon that meaning have been ascertained.
§ 398. The case of Neilson v. Harford presents an apt
illustration of the nicety and importance of these distinctions.
Mr. Neilson invented the application of the hot blast to
smelting furnaces, by introducing, between the blowing ap-
paratus and the furnace, a chamber or receptacle, in which
the air was to be heated on its passage, before it entered the
furnace. After describing the mode in which this was to be
accomplished, his specification said, " The form or shape of
the vessel or receptacle [the vessel in which the air was to
be heated] is immaterial to the effect, and- may be adapted to
the local circumstances or situation." This direction, it was
contended, was calculated to mislead a workman, because it
was not true ; it was said, in point of fact, that the size or
shape of the heating vessel was immaterial to the "effect"
on the air in the vessel ; and this, it was argued, was the
" effect " concerning which this delusive statement was made
in the specification. On the other hand, the plaintiff con-
tended that the meaning of this passage was, that the size
508 LAW OF PATENTS.
and shape of the heating vessel were immaterial to the
effect on /Ae /wmace, and that it was true, in pomt of fact,
that some beneficial effect might be produced on the furnace,
whatever the size or shape of the heating vessel might be,
provided the temperature of the air be sufficiently raised.
§ 399. The principal question raised upon the pleadings
was, whether the directions were calculated to mislead a
workman who might be employed to construct such an ap-
paratus, by stating that which was not true. This, it was .
allowed, was a question for the jury, but, before it could be
determined, it was necessary to ascertain what the specifica-
tion had said ; since the fact of its having or not having sta-
ted what was not true, would depend altogether upon the
sense in which the words were to be received. At the trial,
the presiding judge construed the word " effect " to mean the
eftect on the air in the heating vessel ; and, the jury having
found that the size and shape of the heating vessel were ma-
terial to the extent of beneficial effect produced, a verdict
was entered for the defendants.
§ 400. Upon a motion to enter the verdict for the plaintiff",
on this issue, founded on the special verdict, which also as-
certained that some beneficial result would be produced from
any shape of the heating vessel, it was argued, with great
force and ingenuity, that, the question being whether the spe-
cification could or could not be carried into effect, which is
confessedly a question for the jury, the whole question of the
meaning of the passages on which they were to decide the
sufficiency of the specification, was also for the jury, who
were to say, whether the words were or were not sufficient
for carrying into practical effect the invention or discovery,
which the patentee supposed he had made. It was further
argued, that the meaning of the words depended upon evi-
dence ; whereas, if the Court were to pass upon the meaning
of the paper, they must act upon the written paper alone, \
without evidence. But the Court laid down the doctrine
QUESTIONS OF LAW AND QUESTIONS OF FACT. 509
that, in all cases, the meaning of the specification is for the
Court; and, although the question which goes to the jury is,
whether the directions in the specification are sufficient or
not, it is necessary for the Court to declare what the speci-
fication has said. This must be done, either by taking into
view, at the time, the evidence which bears upon the meaning,
where it is not controverted, or by leaving to the jury, as matters
of fact, to pass upon that evidence, in order to ascertain the
meaning of scientific words, or the surrounding circumstances
on which the construction depends. In the one case, the
construction is given absolutely ; in the other, it is given con-
ditionally, because dependent upon facts to be found by the
jury.i
1 Neilsoa v. Harford, Webs. Pat. Cas. 295, 349. Sir W. FoUett argued
as follows: "I submit to your lordships that the whole question upon the
validity of the specification, that is, on the meaning of the specification, and
■whether it can or cannot be carried into effect, is a question for the jury, and
not for the Court, and that the jury are to put their construction upon the
meaning of the words, and that the jury are to say whether the words are
or not sufficient, and that it is for them to say, whether the specification does
sufficiently show the mode of carrying the invention and discovery which the
patentee supposed he had made, into practical effect. [Lord Abingcr, C. B. :
Why is the specification, which is a written instrument, more particularly to
be considered by a jury, than any other instrument? The meaning of sci-
entific words must be matter of evidence.] [Alderson, B. : The construction
of it is surely for the Court.] I do not know quite the extent to Avhich it is
supposed the authorities have gone, in stating that certain papers are for the
Court. In many cases, undoubtedly, written papers are for the Court, but I
apprehend that is by no means a general doctrine of law ; but that written
papers, which involve a question of fact like this, whether or not the party
has sufficiently described the invention, that that written paper is for the jury,
and not for the Court, because it is for the jury to say, as a matter of fact,
whether there be or not a sufficient description in that Instrument to enable
parties to carry it into effect. That I apprehend to be a question entirely
for the jury. Certainly, the whole of this is a question of evidence, and a
question of fact. It is a question of fact as relates to the paper ; it is a ques-
tion of fact as regards the evidence at the trial ; it is not a question of law
at all ; and I do not know any rule which is to say that the Court is to con-
strue that specification, and to take it from the jury, because, supposing the
510 LAW OF PATENTS.
§ 401. The question, whether the invention disclosed by
the specification is a proper subject for a patent, is a question
fact to be, that evidence was given at the trial on scientific matters, which
evidence would aid the meaning or the construing of the instrument, your
lordships can have no judicial notice of that at all. If it be a written paper
for your lordships to decide upon, it must be without evidence. It is not
that your lordships can come to a conclusion upon the meaning of the paper
by looking at the evidence at the trial, but, if it comes within the rule, that
is a written paper which the Court is to act upon, then it must act upon the
written alone. I think I can show your lordships that, in every single case
in which any question has arisen. It has been submitted to the jury, not de-
cided by the Court. [Lord Abinger, C. B. : Not consistently with my re-
collections ; I have always thought that the meaning of the specification was
to be determined by the Court. That meaning may be varied by the evi-
dence of particular words. A man must gather as he goes along, in order to
construe the written instrument. It is quite new to me that it is not to be
considered by the Court.] [AldersonB.; Surely the Court is to tell the
jury what the specification has said. If the specification contains words of
art, the Court is to say — If you believe these words of art to mean so and
so, the specification has said so and so ; leaving the question of words of art
to the jury. But if there are no words of art, what the specification has said
is to be construed by the Court. Then It Is to be left to the jury, whether,
the specification having so said, It is or not a sufficient description of the in-
vention according to their judgment.] I do not mean the validity of the
specification as to questions in which you may direct nonsuits In point of law,
arising out of objections of a different kind, but that this question, whether
or not the specification sufficiently describes the mode of carrying the In-
vention into effect, that every thing relating to that Is for the jury, and not
for the Court — the meaning of the passage in the specification, and every
thing. I should submit to your lordships that the whole of it was for the
jury, and not for the Court. [Alderson, B. : That there are some things
in the specification which are questions of fact, is true, and there are some
things in the specification which are questions of law ; the construction is to
be given by the Court, but the intelligibility of It is for the jury.] That Is
all I am contending. [Lord Abinger, C. B. : The Intelligibility means with
reference to words of science, or matters In It which persons may explain so
as to satisfy the jury. You are discussing an abstract principle where It Is
not necessary; If you take an abstract principle, I must say the meaning of
the specification is a matter of law, and that the judge must be Informed, by
evidence, of the facts, and then he must leave those facts to the jury, for
them to find whether they be true or not.] See also Ante, note.
QUESTIONS OF LAW AND QUESTIONS OF FACT. 511
of law, on which the Court will instruct the jury. It may-
involve the finding of a variety of facts ; but, when the facts
are all ascertained, it is purely a question of law, whether
the invention or discovery is a patentable subject. This is a
distinct and very different question from that of the novelty of
the invention. The thing claimed as the subject of a patent
may be entirely new, and yet it may not fall within that
class of discoveries or inventions, recognized by the Patent
Law as the subjects of patents, and, as such, comprehended
within the description of the statute. Thus, the subject-
matter may turn out to be the application of an old or well-
known thing to a new purpose, constituting a new use only
so far as the occasion is concerned ; which the law decides is
not the subject of a patent.^ Or, on the other hand, the
claim may be for the use of a known thing, in a known
manner, to produce effects already known, but producing
those effects so as to be more economically or beneficially
enjoyed by the public ; which the law decides is a patent-
able subject.- In these and other cases, where the question
arises, upon all the facts attending and surrounding the
alleged invention, whether it is a patentable subject, it is for
the Court to settle that question. Of course, the novelty of
the invention is a prerequisite to the validity of the patent,
and this is a question of fact ; but, the alleged invention being
ascertained to be new, it is still to be determined, whether it
is that species of invention to which the law gives the pro-
tection of a patent.
§ 402. The question of infringement is, as has already
been stated, a question whether the invention of the defend-
ant is substantially the same thing as that of the plaintiff.
The identity of two things is a matter of fact, depending
upon evidence; and, although it is to be determined under
1 Losh V. Hague, Webs. Pat. Cas. 202, 207 ; Howe r. Abbott, 2 Story's R.
2 Crane v. Price, Webs. Pat. Cas. 408, 409.
510 LAW OF PATENTS.
the guidance of those principles which determine what con-
stitutes identity and diversity, in the sense of the Patent
Law, yet it is for the jury to determine, as matter of fact,
under 'proper instructions, whether the two things are the
same or different.^
1 Boulton r. Bull, 2 H. Bl. 4 ; Whittemore v. Cutter, 1 Gallis. 478 ; Pen-
nock V. Dialogue, 4 Wash. 538 ; Lowell v. Lewis, 1 Mason, 191 ; Phillips on
Patents, 431.
CHAPTER VI.
JURISDICTION OF CONGRESS AND THE FEDERAL COURTS.
§ 403. The Constitution of the United States confers upon
Congress power, " to promote the progress of science and
useful arts, by securing, for limited times, to authors and
inventors, the exclusive right to their respective writings and
discoveries." This power is general ; there is no distinction
which limits it to cases where the invention has not been
known or used by the public. Accordingly, it is well settled,
that Congress may pass general or special laws, in favor of
inventors; and they may leave a particular inventor to the
protection afforded by a general law, or they may specially
exempt his case from the operation of a general law, by
extending his exclusive right beyond the term fixed by such
general law. This may be done after the invention has been
in the possession of the public, as well as before ; for, when
the exclusive privilege has once been secured, the grant does
not imply an irrevocable contract with the public, that, at
the expiration of the period, the invention shall become pub-
lic property.^
§ 404. Congi-ess, therefore, has power to pass an act, which
will operate retrospectively, to give a patent for an invention
which is already in public use ; but no act, it has been said,
1 Evans v. Eaton, 3 Wheaton, 545 ; S. C. Peters's Circ. C. R. 332 ; Evans
V. Hcttich, 7 AMieat. 453 ; Blancliard v. Sprague, 2 Store's R. 164 ; S. C
S Sumner, 535 ; Woodworth v. Hall, 1 Woodb. & M. 248.
65
514 LAW OF PATENTS.
ought to be construed to operate retrospectively, unless such
a construction is unavoidable.^
1 Blancbard v. Sprague, ut supra. Letters-patent were granted to the
plaintiff, Thomas Blanchard, on the 6th of September, 1819; and, being
deemed inoperative, by reason of defects in the specification, new letters-
patent were granted, on the 20th of January', 1820, for the space of fourteen
years. Afterward, by Act of Congress, passed the 30th of June, 1834, the
sole right was granted to the plaintiff, to make, use, and vend his invention,
for the term of fourteen years from the 12th of January, 1834. This act
not being thought to describe, with sufficient accuracy, the letters-patent to
which it was intended to refer, an additional act was passed, on the Cth of
February, 1839, renewing the Act of the 30th of June, 1834, and correcting
the date of the 12th of January, 1834, to the 20th of January, 1834. This
last act was as follows : — " An Act to amend and carry into effect the inten-
tion of an Act, entitled an Act to renew the Patent of Thomas Blanchard,
approved June 30th, 1834. Sec. 1. Be it enacted, &c.. That the rights
secured to Thomas Blanchard, a citizen of the United States, by letters-
patent granted on the sixth of September, eighteen hundred and nineteen,
and afterwards, on a corrected specification, on the twentieth day of Janu-
ary, Anno Domini eighteen hundred and twenty, be granted to the said
Blanchard, his heirs and assigns, for the further term of fourteen years from
the twentieth of January, eighteen hundred and thirty-four, said invention,
so secured, being described, in said last-mentioned letters, as an engine for
turning or cutting irregular forms out of wood, iron, brass, or other material
which can be cut by ordinary tools. Provided, that all rights or privileges,
heretofore sold or granted by said patentee, to make, construct, use, or vend
the said invention, and not forfeited by the purchasers or grantees, shall
enure to and be enjoyed by such purchasers or grantees, respectively, as
fully, and upon the same conditions, during the period hereby granted, as
for the term that did exist when such sale or grant was made. Sec. 2. And
be it further enacted, that any person who had, bond fde, erected or con-
structed any manufacture or machine, for the purpose of putting said inven-
tion into use, in any of its modifications, ot was so erecting or constructing
any manufacture or machine, for the purpose aforesaid, between the period
of the expiration of the patent heretofore granted, on the thirtieth day of
June, one thousand eight hundred and thirty-four, shall have and enjoy the
right of using said invention, in any such manufacture or machine, erected
or erecting as aforesaid, in all respects, as though this act had not passed.
Provided, that no person shall be entitled to the right and privilege by this
section granted, who has infringed the patent-right and privilege heretofore
granted, by actually using or vending said machine, before the expiration of
said patent, without grant or Ucense, from said patentee or his assignees, to
use or vend the same."
JURISDICTION OP CONGRESS AND FEDERAL COURTS. 515
§ 405. The Act of Congress of July 4, 1836, § 17, declares,
" that all actions, suits, controversies, and cases, arising under
any law of the United States, granting or confirming to in-
Upon this Act, Mr. Justice Story said : — " Then it is suggested, that the
grant of the patent, by the Act of Congress of 1839, ch. 14, is not constitu-
tional ; for it operates retrospectively to give a patent for an invention,
which, though made by the patentee, was in public use, and enjoyed by the
community, at the time of the passage of the act. But this objection is
fairly put at rest by the decision of the Supreme Court, in the case of the
Patent of Oliver Evans. Evans v. Eaton, 3 Wheat. 454. For myself, I
never have entertained any doubt of the Constitutional authority of Con-
gress to make such a grant. The power is general, to grant to inventors ;
and it rests in the sound discretion of Congress to say, when and for what
length of time, and under what circumstances, the patent for an invention
shall be granted. There is no restriction which limits the power of Con-
gress to cases where the invention has not been known or used by the
public. All that is required is, that the patentee should be the inventor.
The only remaining objection is, that the act is unconstitutional, because it
makes the use of a machine, constructed and used before the time of the
passage of the Act of 1834, ch. 213, and the grant of the patent under the
Act of 1839, ch. 14, unlawful, although it has been formerly decided, that,
under the Act of 1834, the plaintiff had no valid patent ; and so the defend-
ant, if he constructed and used the machine during that period, did lawful
acts, and cannot now be retrospectively made a Avrongdoer. If this were
the true result of the language of the act, it might require a good deal of
consideration. But I do not understand that the act gives the patentee any
damages, for the construction or use of the machine, except after the grant
of patent under the Act of 1839, ch. 14. If the language of the act were
ambiguous, the Court would give it this construction, so that it might not be
deemed to create rights retrospectively, or to make men liable for damages,
for acts lawful at the time when they were done. The Act of Congress,
passed in general terms, ought to be so construed, if it may, as to be deemed
a just exercise of constitutional authority ; and not only so, but it ou"-ht to
be construed not to operate retrospectively, or ex post facto, unless that con-
struction is unavoidable ; for, even if a retrospective act is or may be consti-
tutional, I think I may say, that, according to the theory of our jurispru-
dence, such an interpretation is never adopted without absolute necessity ;
and courts of justice always lean to a more benign construction. But, in
the present case, there is no claim for any damages but such as have accrued
to the patentee from a use of his machine, since the grant of the patent under
the Act of 1839, ch. 14."
516 LAW OF PATENTS.
ventors the exclusive right to their inventions or discoveries,
shall be originally cognizable, as well in equity as at law,
by the Circuit Courts of the United States, or any District
Court having the powers and jurisdiction of a Circuit Court,
which courts shall have power, upon 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 conditions as said courts may deem reasonable:
Provided, however, 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
judgments and decrees of Circuit Courts, and in all other
cases in which the Court shall deem it reasonable to allow
the same."i
§ 406. The jurisdiction of the Circuit Courts of the United
States embraces, therefore, all cases, both at law and in
equity, arising under the Patent Laws, without regard to the
citizenship of the parties, or the amount in controversy ; and
it seems to be the better opinion, that this jurisdiction is
exclusive, and that the state courts cannot entertain a suit
for the infringement of a patent, or to declare a patent
void.2
§ 407. When a case is sent to the Supreme Court of the
United States, under the discretion conferred upon the court
below, by the seventeenth section of the Act of 1836, the
whole case is to go up. The word « reasonable," in the sta-
1 See, also, the Act, Feb. 15, 1819, c. xix.
2 3 Kent's Com. 3G8 ; Story's Com. on the Constitution. The course of
legislation on the subject of patents, may be seen in the Appendix of this
work.
JURISDICTION OF CONGRESS AND FEDERAL COURTS. 517
tute, applies to the " cases," rather than to the points of the
1
cases.
§ 407 a. A bill filed on the equity side, to set aside an
assignment, is not one of the "cases" contemplated by the
act ; since the dispute does not arise under any act of Con-
gress, nor does the decision depend upon the construction of
any law in relation to patents.^
1 Hogg V. Emerson, 6 Howard, 439, 4 78.
The Court there said : — " It may be very proper for the court below to
examine those points separately, and with care, and, if most of them present
questions of common law only, and not of the construction of the Patent
Acts, and others present questions under those acts, which seem very
clearly settled or trifling in their character, not to grant the writ of error
at all. It might, then, well be regarded as not ' reasonable' for such ques-
tions, in a controversy too small in amount to make the writ a matter of
right to persons, if standing on an equal footing with other suitors. But, we
think, from tlie particular words used rather than otherwise, that the act
intended, if the Court allowed the writ as ' reasonable ' at all, it must be
for the whole case, or, in other words, must bring up the whole for consider-
ation."
2 Wilson V. Sandford, 10 Howard, 99, 101. In this case, the Court said :
" The object of the bill was to set aside a contract, made by the appellant
with the appellees, by which he had granted them permission to use, or
vend to others to be used, one of Woodworth's planing-machines, in the
cities of New Orleans and Lafayette; and also to obtain an injunction
against the further use of the machine, upon the ground that it was an
infringement of his patent-rights. The appellant states, that he was the
assignee of the monopoly in that district of country, and that the contract
which he had made with the appellees had been forfeited, by their refusal to
comply with its conditions. The license in question was sold for fourteen
hundred dollars, a part of which, the bill admits, had been paid. The con-
tract is exhibited with the bill, but it is not necessary, in this opinion, to set
out more particularly its provisions.
The appellees demurred to the bill, and, at the final hearing, the demurrer
was sustained, and the bill dismissed. And the case is brought here by an
appeal from that decree.
The matter in controversy between the parties arises upon this contract,
and it does not appear that the sum in dispute exceeds two thousand dollars.
On the contrary, the bill and contract exhibited with it show that it is below
518 LAW OF PATENTS.
that sum. An appeal, therefore, cannot be taken from the decree of the
Circuit Court, unless it is authorized by the last clause in the seventeenth sec-
tion of the Act of 1836.
The section referred to, after giving the right to a writ of error or appeal,
in cases arising under that law, in the same manner, and under the same
circumstances, as provided by law in other cases, adds the following provi-
sion : — ' And in all other cases in which the Court shall deem it reasonable
to allow the same.' The words, ' in all other cases,' evidently refer to the
description of cases provided for in that section, and where the matter in
dispute is below two thousand dollars. In such suits, no appeal could be
allowed, but for this provision.
The cases specified, in the section in question, are, * all actions, suits, con-
troversies, on cases arising under any law of the United States, granting or
confirming to inventors the exclusive right to their inventions or discove-
ries.' The right of appeal to this Court is confined to cases of this descrip-
tion, when the sum in dispute is below two thousand dollars. And the pecu-
liar privilege given to this class of cases was intended to secure uniformity
of decision, in the construction of the Act of Congress in relation to
patents.
Now, the dispute, in this case does not arise under any act of Congress ;
nor does the decision depend upon the construction of any law in relation
to patents. It arises out of the contract stated in the bill, and there is no act
of Congress providing for or regulating contracts of this kind. The rights
of the parties depend altogether upon common law and equity principles.
The object of the bill is, to have this contract set aside and declared to be
forfeited ; and the prayer is, ' that the appellant's reinvestiture of title to
the license granted to the appellees, by reason of the forfeiture of the con-
tract, may be sanctioned by the Court,' and for an injunction. But the
injunction he asks for is to be the consequence of the decree of the Court,
sanctioning the forfeiture. He alleges no ground for an injunction, unless
the contract is set aside. And if the case made in the bill was a fit one for
relief in equity, it is very clear that, whether the contract ought to be
declared forfeited or not, in a Court of Chancery, depended altogether upon
the rules and principles of equity, and in no degree whatever upon any act
of Congress concerning patent-rights. And, whenever a contract is made
in relation to them, which is not provided for and regulated by Congress, the
parties, if any dispute arises, stand upon the same ground with other liti-
gants, as to the right of appeal ; and the decree of the Circuit Court cannot
be reversed here, unless the matter in dispute exceeds two thousand dol-
lars."
APPENDIX.
APPENDIX.
ON THE SUBJECT-MATTER
OF
LETTERS-PATENT YOU INVENTIONS.
BY THOMAS WEBSTER, M. A., F. R. S.
BAKRISTER AT LAW.
In defining, arranging, and classifying the subject-matters
of Letters-Patent for inventions, difierent terms have been
employed in the laws of different countries,^ and various
arrangements and classifications adopted, according to the
particular views and objects of their authors.'^
1 In the United States, " Any new and useful art, machine, manu-
facture, composition of matter, or any new and useful improvement on
any art, machine, manufacture, or composition of matter." Act of
Congress, A. D. 1836.
In France, " Every discovery or new invention in all kinds of indus-
try is the property of the inventor."
In the Netherlands, '• An invention or essential improvement in any
branch of arts or manufactures."
In Spain, " "Whosoever invents, improves, or imports a new branch
of industry, has a right of property thereto."
In Austria, " All new discoveries, inventions, and improvements, in
every branch of industry."
See Pari. Rep. 12th June, A.D. 1829. Papers by John Farey.
2 Mr. Godson adopts the following terms and classification: — 1. A
substance or thing made. 2. A machine or instrument. 3. An im-
66
522 LETTERS-PATENT FOR INVENTIONS.
But the subject-matter of inventions having at all times
and in all countries one general characteristic, namely, the
adaptation of things that exist to the wants and conveniences
of man, it will be found that the laws of different countries,
notwithstanding the diversity of terms employed, have all the
same object, and all express substantially the same thing.'
The same uniformity of character ought also to exist in
the arrangements and classifications of these adaptations or
subject-matters of invention ; and such will be the case, if
they are founded on distinctions having a real substantive
existence in the invention itself, and are not made to depend
on certain preconceived views respecting the meaning of
words and the propriety of the terms employed.2
provement or addition. 4. A combination or arrangement of things
already known. 5. A principle, method, or process, carried into prac-
tice by tangible means. 6. A chemical discovery.
Mr. Kankin : — 1. A thing manufactured. 2. A manufacturing
process.
Mr. Holroyd: — 1. Things made. 2. Practice of making.
Mr. Carpmael: — 1. "A new combination of mechanical parts or
instruments, whereby a new machine is produced, though each of the
parts be sepai-ately old and well kno^\^^."
2. " An improvement on any known machine, whereby such ma-
chine is rendered capable of performing more beneficially."
3. " Where the vendible substance is the thing produced, whether by
chemical or mechanical process, such as a new description of fabric."
4. " Where an old substance is improved by some new working —
the means of producing the improvement, in most instances, is patent-
able, whether chemical or mechanical."
5. " The application of a known substance or material to a new pur-
pose, when there requires art to adapt it, is the subject of a patent."
The latter classification seems unobjectionable, and expresses, in a
practical manner, the vai-ious kinds of inventions, and the means by
which they are to be carried into practice.
1 See Law & Practice, 8, n. x.
2 The meaning of words, their propriety, and applicability, have
been a fruitful source of discussion in Patent Law.
Watt's case presents an instance of a most elaborate discussion on
the word ' principle.' The specification stated the invention to " con-
sist in the following principles," and then proceeded to describe the
nature of the invention, and the particular manner in which it was to
be can-ied into practice. (Law & Pr. 46.)
That description was held sufficient, after the verdict of the jury ; also
THE SUBJECT-MATTER. 523
Letters-Patent are granted for inventions. The form of
the legal instrument by which certain privileges are granted
to the true and first inventor, or the manner in which this
character may be acquired,^ does not form any part of the
present inquiry, which is directly simply to the question,
on what kind of inventions these privileges can by law be
conferred.
Invention, in its most extended sense, may be defined to lavention
be the embodying in words, figures, or some material form,
the conceptions and creations of the mind. Such an ex-
tended application, however, of the term, including the prac-
tical exercise of mind in whatever sensible or material form
exhibited, is not the subject of the present inquiry, which is
confined to the class of inventions which may become the
subject of Letters-Patent, and which is, defined in the statute, f^^^^}^°J^
by the words "the working or making of any manner of tent,
new manufactures." 2 But there are inventions to which
the term principle was explained by what followed, though " particu-
culars " or " rules of practice " might have been more correct ; and, had
those been used, much of the lengthened disquisition and apparent
confusion in this case would probably have been spared. Boulton and
Watt V. Bull, 2 II. Bl. 4G3.
The irrelevancy of this kind of discussion seems to have struck some
Qf the judges in the subsequent case of Hornblower and Mabcrly
I'. Boulton and Watt.
Lord Kcnyon, C. J. : " No technical words arc necessary to explain
the subject of a patent ; as Lord Ilardwicke said upon another occa-
sion, there is no magic in words."
Lawrence, J. : " Principle may mean a mere elementary truth, but it
may also mean constituent parts, and, in effect, the specification is this :
< The contrivance by which I lessen the consumption of steam consists
in the following principles' (that is, constituent or elementary parts) ;
' A steam-vessel, in which the powers of steam are to operate, to be
kept as hot as the steam by a case ; a distinct vessel to condense the
steam, and pumps to draw off such vapor as is likely to impede the
motion of the fire-engine,' &c. That is the description of the thing."
8 T. E. 92. See, as to this term, post. 43.
1 As to these, see Law & Pr. 49, n. (j.
2 See Law & Pr. 45, n. e.
Heath, J. : " I approve of the term manufactures in the statute,
because it precludes all nice refinements ; it gives us to understand
the reason of the proviso, that it was introduced for the benefit of
trade." 2 H. Bl. 482.
524
LETTERS-PATENT FOR INVENTIONS.
registra-
tion.
Character
of the in-
vention.
these terms would appear to be applicable, which, neverthe-
less, are not the subject of letters-patent ; such, for instance,
Subjects of as those which are the subject of registration, under the re-
cent statutes^ giving copyright in designs for articles of
manufacture.
The invention will have a peculiar character, according
to the department of knowledge from which it is derived ;
and, since the adaptation of the truths of exact science, or
of the laws of physical science, or the application of the
general properties of matter, may furnish, either alone or in
combination with each other, practical results, the terms
usually employed therein will be the most convenient terms
to employ, in treating of the inventions derived from these
respective sources.
Thus, should the invention consist in the practical appli-
cation of some simple proposition in geometry, the term
" axiom "^ would appropriately be introduced in the de-
scription of the invention, and, inasmuch as the same term is
frequently employed to express, though, perhaps, with less
propriety, the more simple truths or propositions of other
departments of knowledge, and, also, any acknowledged
truth, this term may be appropriately introduced in the de-
scription of any invention founded thereon.
Axiom.
Ashurst, J. : " Every new invention is of importance to the wealth
and convenience of the public ; and, when they are enjoying the fruits
of a useful discovery, it would be hard on the inventor to deprive him
of his reward." 8 T. R. 98.
Eyre, C. J. : '• The advantages to the public from improvements of
this kind are, beyond all calculation, important to a commercial country,
and the ingenuity of artists who turn their thoughts towards such im-
provements, is, in itself, deserving of encouragement ; and, in my appre-
hension, it is strictly agreeable to the spirit and meaning of the statute
21 Jac I., that it should be encouraged. 2 H. Bl. 494.
1 Consolidated and amended by 5 & 6 Vict. c. 100; as to which,
post.
2 The term "axiom" is used to express the simplest order of propo-
sitions, or a proposition of so simple a nature that no reasoning can
add to its force ; or, which may be said to be the necessary and self-
evident consequence of the definitions, and not susceptible of any
formal demonstration. It is also applied to all kinds of admitted
truths, and all demonstrations ; that is, all reasoning founded on defi-
nitions may be said to terminate in axiom.?.
THE SUBJECT-MATTER. 525
Should the invention consist in the practical application of ^^^^^ ""^l
/•,-,. principle,
some of the truths or facts of physical science, the term law,
or principle, may most appropriately be employed in explain-
ing the nature of the invention and the manner in which it
is to be performed.
Should the invention consist in the application of some ofsiethod,
, . « . , . , , process,
the properties of matter, or in the simple arrangement and ami mode.
combination of particles, without reference to any theoreti-
cal analysis respecting the laws or principles of action of
that matter, the general words, ' method, process, or mode,'
will suggest themselves as the most convenient and appro-
priate words for describing that invention.^
In the great majority of cases, several of these terms may
be applied with perfect indifference ; the peculiar habits
and occupation, or the peculiar theoretical and philosophical
views, of the person describing the nature of the invention,
and the manner in which it is to be performed, will lead him,
unconsciously, to select some in preference to the others,
and to use several in the same description ; and the terms,
consequently, will not unfrequently be either misapplied, or
used in senses somewhat inconsistent with their strict and
proper application.
But such misapplication of terms cannot affect the sub-
stantial and distinctive features of the invention, and, unless
the terms are employed in a manner so perverse and contrary
to their ordinary acceptance that the crown may have been
deceived in granting the letters-patent, or the public may
be unable to understand the invention as described by them,
the validity of the grant will not be affected by the particu-
lar terms employed.^ Such, then, being the various terms
1 Thus, Bullcr, J. : " The method and the mode of doing a thing
arc tlie same, and I think it is impossible to support a patent for a
method onl\', without having carried it into effect, and produced some
new substance. But here it is necessary to inquire, what is meant
by a principle reduced into practice ? It can only mean a practice
founded on principle, and that practice is the thing done or made, or,
in other words, the manufacture which is invented.' 2 11. Bl. 486.
LawTcnce, J. : " Method, properly speaking, is only placing several
things and performing several operations in the most convenient order;
but it may signify a contrivance or device ; so may an engine, and,
therefore, I think it may answer the word method." 8 T. R. 64.
2 A brush being thought improperly described as a " tapering
526
LETTERS-PATENT FOR INVENTIONS.
Extension vvhich may be made use of, according to the department of
ceding ^ knowledge from which the invention is derived, it becomes
terms. necessary to consider certain other applications, which may,
with equal propriety, be made of them. These terms having,
originally, reference to those truths and facts with the origin
of which man had nothing to do, are, by a very natural and
common transition, transferred to the arrangements of mat-
ter due to man's inventive skill, and the particular modes
which he has devised for operating and producing effects,
are expressed by the terms ' laws and principles.'
Thus, matter and things ar^ said to be arranged according
to a certain law, that is, according to a certain rule or order
which man has devised, and machines are said to act accord-
ing to certain princip'es, that is, in certain manners. All
these cases, however, are referable to the ulterior laws or
principles of the particular department of knowledge from
which the invention may be considered as derived.
Many instances occur, in which it is said that the one
arrangement is a mechanical equivalent for another, because,
according to the truths or propositions of mechanics, the re-
lations between forces and motions may be varied indefinitely,
the same effects still being produced. Hence it follows,
that the same effects may be produced by two machines
apparently extremely dissimilar in construction, but of which
the principles are essentially the same.
Thus, under certain circumstances, a wheel and axle are
the same as a lever, and an inclined plane the same as a
screw, and the invention will be the same, whether the one
or the other be used.i
Instances.
In mecha-
uics.
brush," it was lield that the difficulty arisiug from the grammatical
construction could not be removed, unless the term had, by the usage
of the trade, acquired a perverted sense. Per Lord Ellenborough, C. J.
K. V. Metcalf, 2 Stark. 249. But see Ecports on Patents, 141.
But the use of French terms will not vitiate. Per Abbott, C. J.
Bloxam v. Elsee, 1 Car. and P. 558.
Nor the use of words in a purely technical; or in a new sense, if ex-
plained by the context. Derosne r. Fairie, Pat. Ecp. 157.
Clear inconsistency is a fatal defect. See Law & Practice, 88, n, b.
1 In a theoretical point of view, or according to the laws of mecha-
nics, a simple lever is the same machine as a wheel and axle ; but, in
respect of their practical applications, they are very different. The
same is the case with the inclined plane and screw. From these may
THE SUBJECT-MATTER.
527
The principle of all steam-engines, in respect of their The stea
being applications of the elastic force of steam, is the same /"^"^^'
but in respect of the mechanical arrangements by which
that law of nature may be made available, so as to constitute
an invention, an unlimited variety may exist. Indeed, it is
not possible that one piece of matter, arranged by the hands
of man, should resemble, in every respect, any other arrange-
ment of matter, but, the same principles or rules for our
guidance being observed in each arrangement, the results
are substantially the same.
In every other department of science, in chemistry or Chemistry
•' ' .-111 find Llectn-
electricity, for instance, there exist various substances by city.
which the same result or effect may be produced ; it may
be a matter of perfect indiflerence which substance is cm-
ployed ; but one invention may possess the same distinctive
character as another, though the particular means by which
certain results and effects are produced, are not precisely
the same. The question to be determined in these cases
is, whether the particular means constitute the substance of
the invention.!
All results are brought about, or effects produced, by the
intervention of certain agents ; as, though agents are sub-
stantially the same or different, the inventions are similar
or dissimilar accordingly.
The above general review of the various objects of in-
vention will point out certain consequences and distinctive
features, or characteristics, in inventions, of great importance
hereafter.
First, it may be of importance to remark, that the dis- j^^^ disco-
coverv and announcement of any axiom or proposition of very of a
■^ - ■ ■ 1 /< 1 • truth not an
abstract science, of any law of nature or prmciple of physi- invention.
cal science, of any property of matter, is not an invention
be drawn important illustrations of the subject-matter of patents. Sup-
pose a simple lever or the inclined plane to have been known and in
use ; the inventor of the •wheel and axle, or of the screw, would have
been entitled to a patent, but lie would have had some difficulty in
describing it, except as a new application of the principle of the lever,
or of the inclined plane. Thus in Morgan v. Seaward, an eccentric disk
and a crank were held to be mechanical equivalents. Pat. Rep. 168
and 171.
1 See post 528, note 1.
528 LETTERS-PATENT TOR INVENTIONS.
in the sense in which the term is here used, or such a dis-
covery as can be the subject-matter of letters-patent. Such
an invention or discovery is an addition to our knowledge
only ; it must be applied so that some results or effects may
be produced, whereby the arts and manufactures, or trade
and commerce of the country may be benefited.
The appii- Secondly, an invention may consist in the application of
suSmth an axiom or proposition of abstract science, of a law or
may be an principle of physical science, to a special purpose, or in
invention, r r r j i i •.
some peculiar arrangement of matter whereby those axioms
or laws are in a condition to act. And it will be material
to inquire, whether the application of the axiom and princi-
ple to a specified purpose, and with an assigned object, or
the particular arrangement whereby it is applied, is the sub-
stantial and essential part of the invention.
Illustration An illustration of the preceding may be derived from the
S.^^"' celebrated case of Watt's patent. The object of this in-
vention was to lessen the consumption of steam and fuel in
fire-engines ; and this was to be effected by various means ;
among others, by casing the steam cylinder, so that the ex-
terior might be kept as hot as the interior. This end might
be attained in many ways, which would readily suggest
themselves to the parties.
The characteristic, then, of this part of the invention was,
the keeping in the heat of the steam by the application of
some casing — the mode in which it was to be performed
would be subsidiary to the main idea. This, whether effect-
ed by a jacket kept full of steam, or by a wooden case con-
taining sawdust, or any other non-conductor of heat, would
still, substantially, be the same invention.
A similar observation may be made with respect to the
rest of his invention, which furnishes an instructive example
of an invention, in which the particular arrangement by
which th^ principles were to be carried out is not of the sub-
stance of the invention, but incidental to the main idea.^
1 The doctrine here insisted on seems fully recognized by Eyre, C J.
" The substance of the invention is a discovery, that the conducting
the steam out of the cylinder, and protecting the cylinder from the
external air, and keeping it hot to the degree of steam heat, will les-
sen the consumption of steam. This is no abstract principle ; it is in
THE SUBJECT-MATTER.
529
But, in the case of Arkwright's machinery for spinning Arkwri-hfa
cotton, the particuh\r arrangement of the parts was the sub-
stance of the invention ; and the same is the case whenever
the invention consists in the making or producing some par-
ticular thing or substance, as a machine, a paint, or a medi-
cine.^
It would follow, from the above considerations, that in- Twodasses
, of inveu-
ventions may be viewed in one of two classes, the one, where tion.
the particular arrangement of matter is the substance of
the invention, so that the result, or eflect produced is the
real subject-matter ; the other, where the particular mode of
attaininir the arrangement or result is the substance of the
invention, so that the real subject-matter is the mode of pro-
duction. Thus, the first stocking made by hand was a new
invention or manufacture, belonging to the former class, and
the first stocking made by macliincry was also a new inven-
tion, belonging more properly to tlie latter class. Under one
its very statement clothed with practical application ; it points out
what is to be done in order to lessen the consumption of steam. Now
the specification of such a discovery seems to consist in nothing more
tban saying to the constructor of a fire-engine, ' for tlic future, con-
dense your steam out of the l)ody of the cylinder, instead of condensing
it within it — put something round the cylinder, to protect it from the
external air, and to preserve the heat witliin it, and keep your piston
air-tight without water.' Any particular manner of doing this, one
should think, would hardly need to he pointed out, for it can scarcely
be supposed that a workman, capable of constructing a fire-engine,
would not be capable of making such additions to it as should be
necessar)' to enable him to execute that which the specification re-
quires him to do. But if a very stupid workman should want to
know how to go about this improvement, and, in answer to bis ques-
tion, was directed to conduct the steam, which was to be condensed,
from the cylinder into a close vessel, by means of a pipe and a valve
communicating with the cylinder and the close vessel, to keep the close
vessel in a state of coldness sufficient to produce condensation, and to
extract from it any part of the steam which might not be condensed
by the pump — and was also told to inclose the cylinder in a wooden
case, and to use a resinous substance, instead of water, to keep the pis-
ton air-tight — can it be imagined that he would be so stupid as not
to be able to execute this improvement, with the assistance of these
plain directions ?' 2 H. Bl. 497.
See Law & Practice, 46.
1 See R. V. Arkwright, printed case; and Pat. Rep. 56.
67
530 LETTERS-PATENT FOR INVENTIONS.
of these two classes — the thing produced, or mode of pro-
duction — inventions may be classified.
All inven- It will follow also from the preceding, that all invention,
plicatlon^'r whatever its object, will consist in new applications or adap-
adaptation. Nations. Matter is endowed with certain properties, and
subject to certain laws ; man cannot alter these properties
or impose other laws, but he has the power of applying
those properties and of giving occasion for the exercise of
those laws, according to his will, and the result of the exer-
cise of that will is exhibited in manufactured, as distinguished
from elementary matter.^
Subject-matter., ly Statute.
Such then being the general nature of that invention by
which the arts and manufactures of a country may be ad-
^^^^^^\ vanced, it is necessary to compare the preceding with the
words of the statute, and to show the various ways m which
the letter and spirit of the statutes of the common law may
be complied with.
According to the words of the statute, letters-patent are
to be for the " working or making of any manner of new
manufactures within this realm, which others, at the time
of making such letters-patent, shall not use " ; '" and the
letters- patent are granted for the particular new invention
stated in them. The terms " new invention" must be con-
sidered as defined and interpreted by the words of the sta-
tute ; or such new inventions only will be the subject-matter
of letters-patent as the spirit and letter of the statute will
fairly comprehend. The express words of the statute will
include all the objects of the adaptations and arrangements
1 The phrase "manufactured matter" seems to express, in a pe-
culiar and distinct manner, all those particular arrangements which are
due to the exercise of the inventive faculty of man. Matter exists in
its elementary state in the iron-stone, limestone, and fuel ; but when
these materials have been subjected to certain processes devised by the
ingenuity of man, the result is that particular species of manufactured
matter which we call iron.
2 See 21 Jac. 1. c. 3, s. 6 ; Law & Practice, 44 ; and Tat. Rep. 31.
THE SUBJECT-MATTER. 531
of matter to which attention has already been directed, and
may be considered as pointing out generally, first, the class
or kind of objects, and secondly, the character of the sub-
ject-matter in respect of which the proviso was introduced.
The arts and manufactures of the country constitute the
class of objects ; the character of the subject-matter, or the
nature of the invention as defined by these words, remains
to be considered.
The generality of the expression " any manner of new Meaning of
manufacture " removes all difiiculty which might be felt, in '',nanufac-
the present advanced state of the arts, respecting the stridor *"'^*^-'
literal meaning and import of the word " manufacture." That
word, in its etymological sense, would refer to some object
of skill or industry executed by the hands of man, and the
manufactures of a country are all those objects viewed col-
lectively ; but, inasmuch as the perfection of manufacture
consists in the substituting other agents for human labor, this
term " manufacture " now includes every object upon which
art or skill can be exercised, so as to aflbrd products fabri-
cated by the hand of man, or by the labor which lie directs.
Nor must the import of the words " any manner " be
passed over without notice, since cases may occur in which,
by virtue of the generality of the expression " any manner
of new manufactures," inventions, respecting which some
doubts might otherwise be entertained, will at once be re-
cognized as comprehended within both the letter and spirit
of the statute.
Now all manufacture consists in a scries of processes,
and the particular character of each manufacture depends on
the particular series of processes pursued. And this series
of processes may consist in executing a certain number of
things in a certain definite order, or in the application of
known things in a particular manner, and for particular pur-
poses, or in some particular arrangements and combinations.
And any change in the series of processes pursued will con-
stitute a new manufacture.^
^ Eyre, C. J. : " Probably I do not overrate it when I state that two
thirds, I believe I might say three fourths, of all patents granted since
the statute passed, arc for methods of operating and of manufacturing,
producing no new substance, and employing no new machinery'." 2 H.
Bl. 494.
532
LETTERS-PATENT FOR INVENTIONS.
Any im-
provement
a new ma-
nufacture.
Manufac-
tured mat-
ter aiul its
applica-
tions.
The conducting or executing the series of processes,
upon which the character of the manufacture depends, is
expressed in the statute by the words, " working or mak-
ing," either of which is equally applicable, though some
cases will occur in which one term may appear prefer-
able to the other ; and it is unnecessary to attempt dis-
tinctions, when the general import of the words is clearly
expressed.
The definition of a manufacture, as consisting in the parti-
cular series of processes, and the consideration of the con-
sequences of any change in such scries, leads at once to
the important practical conclusion, that any improvement in
the mode of obtaining a known product is a manner of new
manufacture. Hence, both the words and spirit of the sta-
tute are satisfied, either by the invention of a product not
before known, or by an improvement in the mode of pro-
duction ; that is, by a new article, or by an article made in
a new manner.
The clause of the statute has hitherto been considered
with reference to those inventions, in which some distinct
product or substance is produced. It must, also, be consi-
dered with reference to a class of inventions, in which no
single product or distinct substance, but a general eiTect or
result, is obtained. In the infancy of the arts or manufac-
tures of a country, the objects of invention will be almost
exclusively new products, or new methods of obtaining
those products.! But, as the arts and manufactures ad-
vance, that ingenuity which was at first exercised in obtain-
ing new products, by the arrangements of matter in its ele-
mentary state, that is, in the production of manufactured
matter, will be principally directed to the application of
those products, or to new arrangements of that manufac-
tured matter.
1 Some of the new manufactures, before the statute, (21 Jac. 1, c. 3,)
were frisadocs, (Hastings's case); somclliing concerning lead ore,
(Bircot's) case; a new knife, (Matthey's case); an instrument for
melting lead, (Ilumplncy's case) ; those mentioned in the statute
relate to glass, alum, smalt, and making iron by means of pit coal,
(Lord Dudley's.) See these in my Reports of Patents.
TJIE SUBJECT-MATTER. 533
The latter class of inventions is commonly described as New appli-
the new application of known substances in known man- k,iowii sub-
ners, and objections have been made to such subject-matters, ^^,'|"^^.*;* "^
but, it is conceived, without good reason. For, whether the manners.
invention consist in the production of some new thing, or in
some new mode of producing that thing, it really consists
in the application or adaptation of matter to the particular
purpose, or in the particular manner ; this, as has already
been observed, beinjr one characteristic of all invention
whatsoever.^ The first production of iron, for instance,
was a new application of known substances ; and the first
production of a knife, a stockmg, or of any other article, is
an application of some known substance or thing. Tiie
substance or thing having been once produced, attention
will be directed to improvements in the mode of production.
An invention, having this object, may consist cither in the
new application of some known substance, as of lime to
iron, or in the particular order or series of the processes
pursued ; any change in that order or series constituting, as
■we have ^een, a new manufacture.^ A particular mode of
production consists only in arranging, according to some
definite rule or law, existing matter, so as to bring about a
known result in that particular manner; and sucli an inven-
tion may also be described as a new application.
Hence, whether the thing produced or the mode of pro-
duction be the subject-matter of the invention, the result
obtained is manufactured matter.
On the same principle that the application and adaptation j.xtcnsion
of elementary, as exhibited in manufactured matter, are V^ I'f*'^^*^"
•' ' inp to ma-
included under the letter and spirit of the statute, the appli- chines and
, , . ~ « , , . -combiiia-
cation and adaptation ot manulactured matter, ttiat is, ot ti„„s gcuc-
existing substances and things, are also included. From '"'^^J'"
these result the various combinations of parts and elements,
whereby machines, compound substances, and constructions
are produced, and the application of such machines, sub-
stances, and constructions, to produce results in a more
beneficial and economical manner. For no distinction can
be drawn betwixt the application and adaptation of matter
1 See ante, p. 530. ^ See ante, p. 531.
534 LETTERS-PATENT FOR INVENTIONS.
in its elementary state, and the application and adaptation
of matter in a state next to the elementary, that is, in a
manufactured state, and the statute will consequently include
the new applications and adaptations of such existing sub-
stances and things.
Distinction In the preceding, the terms application and adaptation
appUcation ^ave been used in connection with each other, and they are
andadapta-gengraiiy of the same import; but cases will occur, in
which it will be necessary to distinguish between them, and
to point out instances of applications which are not adapta-
tions, in that sense of the term in which either is the subject-
matter of letters-patent.i
. It may, also, be convenient to distinguish between the
cases in which the thing produced, or final result, presents
no traces of the particular application or adaptation wherein
the invention consists, and the cases in which the thing
produced, or final result obtained, exhibits the particular
application or adaptation. Iron, and similar manufactures,
present, in the final result, no traces of the particular ele-
mentary matter which has been applied and adapted, or of
the particular process pursued ; but a steam-engine, and
other constructions, present the particular applications and
adaptations by and for which they exist.
Classification of Cases.
It will be convenient to show the classifications which
may be made of inventions, which have formed the sub-
ject-matter of letters-patent, more especially such of them
as have given rise to legal and other proceedings. The
following classifications are suggested, as distinct and com-
prehensive.''^ ^
1 A mere application may be sometimes described as a double use.
Sec post, 24, 25.
- Most classifications, if rigidly examined, fail; but still, for prac-
tical purposes, they may be extremely useful. This is peculiarly the
case with all classifications of the subject-matters of letters-patent.
Under one point of view, all inventions have the same character,
ante, 529 ; and, of the classes here given, the first may be considered as
THE SUBJECT-MATTER.
535
I. An arrangement, combination, or composition of mat-
ter ; the particular arrangement, combination, or composi-
tion being of the essence and substance of the invention.
II. An arrangement, combination, or composition^of mat-
ter, with the view of carrying out into practice certain trutlis,
laws, or principles ; the particular arrangement, combina-
tion, or composition not being of the essence or substance
of the invention, except as in connection with, and subsi-
diary to the truths, laws, or principles, which are to be so
carried out into practice.
III. An application and adaptation of natural or known
agents, and of known substances or things.
Under one of the preceding classes, the subject-matter of
letters-patent may be readily and conveniently arranged.
I. An arrangement, combination, or composition of mat- First cJass.
ter ; the particular arrangement, combination, or composi-
tion being of the essence and substance of the invention.
The earlier cases, as the letters-patent granted to Hast- Hastings's.
in^s, (9 Eliz.) in consideration that he brought in the skill
of making frisadoes from abroad ; to Matihey, for a knife ;
and to Humphrey, for a sieve or instrument for melting
lead,^ present instances under this class. In these and Tiic mode
similar cases, either the thing produced, or the mode of t'J,"[i,c
production, may be considered as the subject-matter of ^^e r^|^| ^^^^^^-^^
invention ; but, when a thing has been produced before, the
subject-matter of the invention will have reference to the
mode of production ; and it is sometimes convenient to con-
sider the essence and substance of every invention, in which
some particular thing is produced, as consisting in the mode
of production, that is, in the mode of applying and adapting
the matter which already exists.
including the second ; also several of the cases cited in illustration of the
third, may be referred to the first class. But the several inventions,
if tlieir nature be considered in a practical, rather than in a theoretical
point of view, will be found conveniently to group themselves in the
classes here suggested ; and a classification of this kind contributes
very much to a clear exposition of what is a manufacture, witliin the
meaning of the statute, and to a distinct conception of tlic points to be
attended to, in the structure of the specification.
1 See Pat. Rep. 6 & 7.
536 LETTERS-PATENT FOR INVENTIONS.
Lord Dud- Lord Dudley's patent, (19 Jac. 1,) for melting of iron
'®^'®' ewer, and making the same into cast-works, or bars, with
sea coals, or pit coals, may also be referred to this class ;
for the iron so made would be a different composition of
matter from that made with charcoal ; but, inasmuch as that
particular combination or composition could not be dis-
tinctly defined, or distinguished from those arrangements,
combinations, or compositions of the similar elements which
constituted iron as before known, it seems better to refer this
invention to the third class. The invention, in this case,
could only relate to the mode of production ; since the iron
would have apparently the same physical properties, and,
for all practical purposes, would be the same substance as
had been produced by the use of charcoal.'
Ark- In Arkwright's patent, (A. D. 1773,) for certain machines
for preparing silk, cotton, flax, and wool, for spinning, the
invention consisted in the combination of known elements
of machinery, that is, in a particular arrangement of manu-
factured matter.
Morris's. In Morris's patent, (A. D. 1761,) for a machine with a
set of working needles, to be applied to a stocking-frame
for making oilet-holes, or net-work, in silk, thread, or cot-
ton, the invention consisted in the addition to an existing
thing, the old stocking-frame, of this particular combination
of known things. In an action for the infringement of this
patent, it was objected, that there could be no patent for an
addition, but the objection was overruled by Lord Mans-
field. The plaintiff" iiad a verdict, with 500/. damages.^
1 The same observations will apply to many subsequent patents, as,
for instance, to Hill's, for cinder iron, and curing the defect of cold
short by the addition of lime, Pat. Rep. 225 ; and to Crane's, for the
anthracite iron. The substances so produced would be new composi-
tions of matter, but arc more conveniently described as new applica-
tions of known things ; also, having the same apparent qualities as
the substances known before, they may be spoken of as improvements
in the mode of production. Thus, Crane's invention may be described
as the mode of procuring iron, by combining the hot-blast and anthra-
cite. See post.
2 See Pat. Rep. 51 ; Bull. N. P. 76, c.
Lord Mansfield, C. J.: — " If the general question of law, namely,
that there can be no patent for an addition, be with the defendant, that
THE SUBJECT-MATTER. 537
Since the preceding case, an addition or an improvement An addition
generally has been held a subject-matter for letters-patent ;hucntasub-
and an examination of the list of patents will show by fafject-matter.
the greater number of patents to have been granted for im-
provements. This old objection was subsequently raised, on
a caveat at the Great Seal, in the particular case in which
the letters-patent solicited were for an improvement on an
existing patent, but the objection was overruled by Lord
Eldon, L. C, who said, that a party having invented im-
provements on any patent, could not use that patent before
the expiration of its term ; and the solicited letters-patent
were granted.^
The addition or improvement, supposing it a separate and
independent instrument or thing, may be a new arrangement
of matter, but the real subject-matter of the invention will, in
general, bo the old and new instrument or thing in combina-
tion, and such combination will be a new arrangement of
matter, by virtue of that very' addition.^ And in the same
is open upon the record, he may move in arrest of judgment ; but
tliat objection would go to repeal almost every patent that was
granted."
1 See Boulton & Watt v. Bull, 2 11. Bl. 489.
Buller, J. : " In later times, whenever the point has arisen, the incli-
nation of the Court has been in favor of the patent for the improve-
ment, and the parties liavc acfjuicsccd where the objection miglit liave
been brought directly before the Court."
Also llornblower & Maberly v. Boulton & Watt, 8 T. R. 104.
Grose J. : " If indeed a patent could not be granted for an addition,
it would be depriving the public of one of the best benefits of the
statute of James."
2 Fox, ex parte, 1 Ves. &, B. 67.
This objection was not raised in the case of Harmer's patent, (Har-
mer v. Plane, 14 Ves. Jr. 130; 11 East, 101,) nor Lewis's, (3 Car.
& P. 502,) wliich were expressly for improvements on existing patents ;
and several other important cases, as Iluddart's and Russell's, were, in
fact, improvements on existing patents.
It was urged, as an objection to Crane's patent, that the invention
required the use of a subsisting patent, but the Court of Common
Pleas decided such subsequent patent to be valid, though it could only
be worked by license under the former patent. Crane v. Price and
others, Pat. Rep.
3 In cases of this kind, the specification must clearly distinguish in
what the improvement consists. See Harraer v. Plane. Dav. Pat.
Cas. 311. Macfarland v. Price, 1 Stark. 199 ; Pat. Rep. 74.
68
538
LETTERS-PATENT FOR INVENTIONS.
Omi:ssioii
a subject-
matter.
manner that an addition to an existing thing constitutes a
new arrangement of matter, an omission of an existing thing
also constitutes a new arrangement of matter, which may be
the subject-matter of letters-patent. In Whitehouse's patent
(A. D. 1825, assigned to Russell,) for improvements in manu-
facturing tubes for gas and other purposes, the substance of
the invention consisted in omitting an instrument called a
maundril, which was used in the manufacture of these tubes
under a previous patent, (James & Jones,) and upon which
the subsequent patent was an improvement. The tubes so
manufactured, (by the omission of the maundril,) were a
particular arrangement or composition of matter, but the
invention in this case is more properly described as the
mode of producing such tubes or arrangements of matter.^
In Else's patent for a new manufacture of lace, called
French, otherwise ground lace, the substance of the inven-
tion consisted in a particular arrangement of matter, or in
the mode of mixing silk and cotton thread upon the frame.2
In Brunton's improvements in chain cables, the invention
consisted in substituting a cast-iron stay with a broad end,
so as to clasp the sides of the link for a wrought-iron stay,
which pierced the links of the cable as made on Brown's
method. This, as well as the other improvements included
in the same patent, was a new combination or arrangement
of matter.*^
Galloway's In Galloway's improvements in paddle wheels, the inven-
tion consisted in the particular arrangement according to an
assigned law of the float-boards, previously used for the
same purposes, but arranged in a different manner ; in this
invention, the particular arrangement was the essence of the
invention."*
Else's.
Brunton's.
1 See Russell v. Cowley, 1 Cr. M. & R. 864, and 1 Rep. Arts, N. S.
2 Sec R. I'. Else, Pat. Rep. 76.
Buller, J. : " The patent claims the exclusive liberty of making lace
composed of silk and cotton thread mixed, not of any particular mode
of mixing it ; and, therefore, as it has been clearly proved and admitted,
that silk and cotton thread were before mixed on the same frame for
lace, in some mode or otlier, the patent is clearly void." Ibid.
3 See Brunton v. Hawkcs, 4 B. & A. 541 ; and ;>os^
* 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<e,andPat. Rep. 152.
3 Ante.
* It was generally believed that the use of steam was neither so
good nor so convenient, and only a colorable evasion.
THE SUBJECT-MATTER.
559
and leading to results beneficial to the manufactures of the
country.^
But, though the amount of invention, and the consequent Sufficiency
sufficiency of a change to support a patent, cannot be di- certained
. , . , , , .■ , A A from tlie
rectly estimated or ascertained, they may be estimated and^.^^g^^j
ascertained from the result ; and, with this view, two things
have to be considered, viz., the nature of the change and
its consequences. The change may be considerable, that
is, may, of itself, exhibit traces of thought, skill, and design ;
the consequences produced thereby may be important and
considerable, or unimportant and inconsiderable ; in the
former case, both the means and the result may be new ;
in the latter, the means new and the result the same ; in
both cases there will be a sufficient invention. Next, the
change, in itself, may be inconsiderable or minute, that is,
exhibiting, of itself, no trace of thought, skill, or design ; and
the consequences produced thereby may be important and
considerable, or unimportant and inconsiderable ; in the
former case both the means and the result will be new, and
there will be a sufficiency of invention — in the latter, the
means will be new, but the result unchanged, or there will
be an insufficiency of invention. These four cases, the only
cases which can occur, are all included in the following
general proposition and practical test — that, whenever the If^«ie ^^^
change and its consequences, taken together and viewed as its conse-
a sum, are considerable, there must be a sufficiency of in- ^["^"j^ ^^^
vention to support a patent. Thus, when the change, how- JJ°*'^^™"
ever minute, leads to consequences and results of the
greatest practical utility, as in the case of Dudley's, Crane's,
Hall's, and Daniell's patents, the above condition is satisfied ;
but if the consequence, as in the case of Fussell's, be in-
considerable, the change also being inconsiderable, and such
as would most readily suggest itself to any one, the condi-
tion is not fulfilled, and the invention is not sufficient to sup-
port a patent.'
1 See ante, p. 552, n.
' This consideration of the change and its consequences in connec-
tion, will be found sufficient, and consistent with all the cases. See
Law & Practice, 1 1 .
The consideration of the change alone is quite inadequate. See
post.
560 LETTERS-PATENT FOR INVENTIONS.
The utility The Utility, then, of the change, as ascertained by its con-
the real test j ^ > 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 c<iuity
ACCIDENT,
may lead to invention or discovery
ACCOUNT OF PROFITS,
when ordered in lieu of granting an injunction
upon what principle granted
extends to all the articles made
ACTION AT LAAV,
a remedy for infringement ..... 2.'>7
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 varic<l
irregularity in. how cured
omission of. docs not invalidate patent
required of odicei-s in Patent Ofiice
when affirmation may be substituted for
before whom taken, when an applicant is
the United States
OFFICERS OF PATENT OFFICE,
a commissioner
a chief clerk
two examining clerks .
two copying clerks
two principal examiners
four assistant examiners
a draughtsman
a machinist ....
a messenger ....
two other permanent clerks .
temporary clerks .
disfiualified from taking interest in patents
to make oath
compensation allowed to . . pp. 634, 653,
172
PP
p. 636
30,174
114
174
174
p. 634
p. 654
p. 659
p. 634
p. 634
p. 653
p. 662
p. 661
655,661
p. 634
p. 634
p. 634
p. 634
653, 655
p. 634
p. 634
661, 662
PATENT,
subject-matter of, (See Scbject-Matter.)
principles of law of
270
680
INDEX.
PATENT, Continued.
itself, evidence of novelty .... 30, 39, 358
which of two applicants is entitled to . . . 43,44
should contain no more than is necessary . . . 67
design of law of ....... "0, 244
consti-ued with specifications ... 70, note, 122, 125
cannot be more extensive than the invention j^
9G, note, 110, note, 131, 140, 386
111, Jh. note.
112, lb. note.
108, 111, 7i. 7iote.
. 112, note.
113
114-117, pp. 636, 659
may cover two machines .
Avhen to be joint
cannot cover distinct inventions
cannot be both joint and several
cannot be two, for same invention
persons entitled to take .
foreign, when (Joes not i»revent a patent in United
States ....
construction of, by tlic Court
to be construed liberally .
application for, how made
how to be issued
mistakes in, how corrocted
when surrendered, and new one tak
. 115, 116, p. G55
123, 130, 136, 150
126,132
. 171, p. 636
I 7*;, pp. 636, 651
177
en out
119 o, 180, 184, p. 641
time for which renewed patent is granted . . 183
how extended . . , 186,187
how may be nssigned 188, 189, p. 640
assignment of, when to be recorded . . Ifnl, loi. p. 640
for how long time granted 201
extent of, as applied to machinery .... 203
infiingcmcnt of, (.S\'<' iN'KniXGEMKXT.) . . 202
consideration for granting (16, 246
rendered invalid by fraud ..... 247
effect of a failure of ntilit}- on 248,249
damages for infringing 250-254
when granted, relates back to the time of invention 255
remedy for infringing, by action at law ... 257
protected by injunctions 314
to be signed by Secretan.- of State and by Commia-
sioner of Patents 176, p. 635.
additions to, when may be made by patentee
180, pp. 642, 650, 652
interfering, remedy in case of p. 644
issued prior to loth Dec. 183G, may be reconled anew p. 64 7
list of patents to be made annually .... p. 655
INDEX.
Gyl
PATENT, Continued.
list of patents to be published . . . . .
when may be dated back ....
PATENTEE,
who may be, under the statute ...
may l>c 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
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