1 F. Cas. 448 | U.S. Circuit Court for the District of Massachusetts | 1845
The 13th section of the patent act of 1836, c. 357, enacts, that whenever any patent 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 for the same invention for the residue of the term then unexpired, for which the original patent was granted, in accordance with the pat-entee’s corrected description and specification. Now the specification may be ■ defective or insufficient either by 9. 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 considerations of fact as well as of law. Who is to decide the question? The true answer is, the commissioner of patents; for the law entrusts him with the authority, not only to accept the
The defence upon the merits turned upon two points: (1) That the defendants did not use the same combination as the plaintiff, and consequently there was no violation of his patent. (2) That the invention patented did not belong to the patentee, he not being the first inventor thereof. In the course of the trial, the counsel for the defendant, in support of their defence, offered j in evidence the record of a suit in equity | between the same parties in the circuit court of the United States, for the district of New York, in which the court had directed an issue upon the same points, which were now in controversy, and the jury found a verdict upon those points in favor of the defendants. But it further appeared upon the record, that no further proceedings were had upon the verdict, and no hearing was had upon the merits of the case by. the court; but the plaintiff, by the leave of the court, was allowed to dismiss his own bill without any final hearing thereon.
Curtis and Choate, for the plaintiff, contended that, under these circumstances, the record was not admissible as evidence. Gray and Dexter, for the defendants, contended that it was, being a verdict upon the very points now in controversy.
My opinion is, that the record is not admissible as evidence. No hearing was ever had by the court subsequently to the verdict, and no decree rendered upon the merits of the case. A verdict upon an issue ordered by a court of equity is, in no just sense, final upon the facts it finds, or binding upon the judgment of the court. The court may at its pleasure set it aside, and grant a new trial, or, disregarding it, may proceed to hear the cause and decide in contradiction to the verdict; or it may adopt the verdict, sub modo, and give it a limited effect only. But it can never be-known what effect is given to the verdict, or whether any is given to it, until the subsequent hearing upon the merits, and a decree rendered thereon by the court. Under such circumstances, it is- plain to me, that this, verdict is not admissible in evidence, for it has not been sanctioned or established 1 by the court, and without such sanction , it is no' proof of any fact, but that it was actually rendered in the case, and not proof of the facts found thereby. Indeed, I entertain great doubts, whether a verdict given in a suit at law is ever evidence of anything, but the fact that it was rendered, unless- a judgment has been duly rendered thereon; for judgment may have been arrested therein, or a new trial granted; and then the verdict would become a nullity. Phil. & A. Ev. (Ed. 1838,) pt 2, c. 3, § 1, p. 618. See 3 Phil. Ev. (Cow. & H.) note 729, p. 1070. But in a court of equity, the verdict, independent of the adoption and sanction of it by the court, can establish nothing in the case.
Tlie cause was afterwards argued to the jury upon the facts.
in summing up to .the jury, said: There is one consideration applicable to the evidence, which has been-much discussed by the learned counsel, and upon which it is proper that I should say a few words. It is 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 applies, 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 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.” Now 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 wonld be very cogent evidence of the suffi•ciency of the specification. 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 or -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 powers 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 principles on which it depended. But upon the question of the novelty of an invention, and in reference to this, the identity or diversity of two or more machines, or compounds, it is obvi- . ous, that mere artisans, however well skilled in the mere details of their art, might be wholly incapable of giving a satisfactory answer; when a person trained in the science to which it belonged, would, at a glance, ascertain whether the mechanical apparatus or . chemical compound was identical in its composition and structure or not, or whether the differences consisted in the mere change of one known mechanical equivalent for another. In short, science alone would be able to answer the question whether or not a particular machine was substantially in its | mode of operation new, or identical with | another, although with apparent differences of form and structure, which might mislead the unscientific mind. The like considerations would apply to a chemical compound; j Sir Humphrey Davy, for example, might, I from his vast knowledge of the chemical af-I Unities of different substances, be able to tell, what must be the effect of the combination thereof from their known gualities, and what would be a mere change of known chemical equivalents without any exercise of the inventive powers, although he might ( never, perhaps, have made the particular compound then before the court. I should, therefore, say to the jury that each of these classes of witnesses was important and competent for different purposes in causes respecting patents for inventions. But that the very highest witnesses to ascertain and verify the novelty of an invention, and the identity or diversity of mechanical apparatus and contrivances, and equivalents, were, beyond all question, all other circumstances being equal, scientific mechanics; that they were far the most important and most useful to guide the judgment, and to enable the jury to draw a safe conclusion, whether the modes of operation were new or old, were identical or diverse.
The judge then proceeded to sum up the facts, and left them to the jury. The jury, not being able to agree upon a verdict, were discharged.