Evans v. Eaton

CASES THE SUPREME COURT IN 356 1822. Law. [Common Evans v v. Eaton parent a his inven- more own cannot entitle himself

A party than machine, whole of can main- the patent befor and if tion the i*it establishing ="bstantially in its only new a title to it tain operation. structure mode up nature existed before in ofthe same combination machines same If the party’s adding some point,, and invention consists in the to certain old, mode of machinery; improved operation, some the new improvement; such for if it should be includes the limited to .patent n invention, machine, more than his and therefore it- includes whole ’ supported.’ cannot improvement, is'for an the and extent the When nature n specification, must be in and is not stated sufficient it. trial, that it be made at the by compa- out and or established shown ring specified, the machine in the machines former use. p, judgment case, former in the III. The of this. Court same vol. (ante, n oni, explained, confirmed. 454.),commented having only question, an in the person A interest event of notm me suit;,is'acpmpetent witness'. action, a like liability standing of a witness to or his general, In sued, party, with the if predicament same the verdict cannot be him, against given question, evidence for in the interest him. not exclude and does to the Circuit Court of

Error Pennsylvania. the, case same was before This formerly , vol. 3. únte, Court, and is 454.; reported p. to that reference form report, patent, action, nature subsequent proceed- The cause was will now fully appear. again ings, pf Court error to before the writ upon brought rendered Circuit Court, judgment upon . '.trial, of the mandate of this new had in pursuance Court. taken the new several were trial, exceptions

Upon UNITED STATES OF THE counsel for the Evans. The first plaintiff, admission, of one as a Frederick witness of his for the interest defendant, upon the-ground EJ^ on the suit. examination witness, voir- dire, he denied had interest in the he bound to cause, or that contribute to ex- was the it. He said that he had not a of penses Hopperboy at it in his mill then in that it present, being Court; in' his was mill three weeks when he about ago, to. a it to down to person gave bring Philadelphia 5, meal, and that and turns the spreads Hopperboy it, it dries to cools it the some, gathers bolting chest. the Upon counsel evidence, plaintiff’s that Frederick was not a wit- contended competent the but ; ness overruled the objection Court. by was to Another the of refusal the exception Court, the of to allow to .one Shetter be read in deposition evidence the which had been ac- taken plaintiff, to a of State the cording prevalent Courts, practice of. taken the to pursuant instead being provisions . act the Congress. were to the

But exceptions principal charge Circuit Court, cause up summing which’ is deemed here to in- the jury, necessary at sert large. Washington. Justicé

Mr. This is action ah. for an which infringement plaintiff’s patent, alleges he, plaintiff For 1. whole machine in the eniplbyed of flour, manufacture called the Hopperboy. For an

2: on improvement Hopperboy. is, The question entitled recover plaintiff either of these ? claims is stated upon question COURT IN CASES THE SUPREME admits the defendant because thus singly, is. in for which the

uses veyy Hopperboy himself insisting, part, granted, justifies v; invent- was not original 1st. That the plaintiff use was in plain- the same prior of, tiff’s patented. Hopperboy patent, is bad for an 2d. That his improvement the* the nature and-extent because and if it had specification ; is not stated in his been, the whole machine, still patent comprehends too therefore broád. , fact a. mixed first is 1st. The question to decide the to enable In order you first, law. attend description, be well will in his of this has machine, spe- given plaintiff is now before of which a model cification, you. round to re- An are, shaft, Its upright (1.) parts floor. A leader in the volve on (2.) pivot set with small An arm arm. inclining (3.) upper Cords called boards, sweepers. flights (4.) it. arm to turn A from the leader to the weight (5.) arm the to over tight keep pulley, passing of the shaft to it, turn at the A meal. top log (8.) which,is water power operated upon milk track the as to one are so

The arranged flights like other, and to at ploughs, operate below to meal machine revolution give every The are centre. turns towards sweepers two elevator, to trail from the the meal receive to to circle for the to flights gather it round bolt. meal into the also sweep centre, 359 UNITED OF THE STATES. be, is stated this machine use of spread The Í822. over a to stir and floor substance granulated Evans it, and cool and to air, to the gather dry expose it to bolt. is, was this head next when under inquiry sworn, has ? tiiat this made Joseph discovery informed.him, that he in 1783 en plaintiff in in manu contriving gaged flour, and had it in his mind, factory completed In time 1784 he con some of that in year. July but ha structed a model rough Hopperboy, no the. cords from extremities the leader ving those of arm, it was his necessary, making to turn the arm hand. In experiments, around in;his he set mill, up Hopperboy resembling model and the machine court, described evidence Of.Mr. specification. Anderson The. witness, and, indeed, the dis strongly supports .1784 early contro covery 1.785 scarcely the defendant. verted . by similar,

The defendant insists that a Hopperboy, was discovered, and in use,, plaintiff’s, many- anterior, even to. the 1783, and relies year yéars of'the witnesses: upon testimony following Daniel who he first Stouffer,' saw deposes, his, the Stouffer Hopperboy father’s, Christian Stóuffer’s in the In mill, 1775 year year 1776, he a similar erected one, in the mill of his mill, brother and another in Henry, Jacob Stoulfer’s 1777, in or 1779. 1778, SUPREME IN THE COURT

CASES 1778 he saw a swears, that in Frederick Philip Christian Stout- Stouffer in in operation Hopperboy one in Jacob fer’s in saw mill, year mill, U. and another in Charles’ Stouffer’s mill, machine. Stouffer’s that it was called always 1784, one he erected that in stated, George Roup of one mill Braniwar; these Hopperboys him Stouffer described to in 1782 Abraham and that his uséd in machine, which father his milk a similar has the son of Christian, Stouffer, Christopher mill, father, *hat his sworn, enlarged having de- 1780, erected a new of the Hopperboy year mentioned, which is above still use in scription Peter Stouffer. owned the same now mill, by are believed If these witnesses by jury, they defendant, fact asserted establish by was in use to the the Stouffer .Hopperboy prior discovery. plaintiff’s is next

The into inquiry parts, operation, This consists Stouffer use Hopperboy. shaft, which square passes an lightly upright arm, underneath mortice in square. through called and the are-fixed wood, flights, which slips on the of which end turned upper it, log arm the mills. moved moves power as it turns arm, flights, operates its it, use below is, the meal placed upon conduct the meal cool it. degree, ma- compare It will now' bolt. proper in the follow- They agree with the chine plaintiff’s. shaft, 1 ney consist of a each particulars. ing arm and an mill, turn power log, 361 UNITED STATES. OF THE each the side of it. 1822. under on They with flights arm, cool, mill the below dry, operate conduct it to the bolt. and Eaton‘ is ? shaft what do differ The In plaintiff’s they arm, could not round, turn and consequently if it were for into inserted, which loosely which the extremities the arm cords connect those of the shaft of the Stouffer leader. The turns the arm and therefore Hopperboy square, or of cords. It has the aid of a leader without ar- neither a nor nor are flights weight pulley, in the conse- manner are, plaintiff’s ranged of most of the it does in the not, opinion quently cool for flour as witnesses, prepare packing as the well plaintiff’s. 'of law now are which question arises, is, machines,

two to the where the difference up point .tq the same in so as commences, invalidate principle, claim plaintiff’s Hopperboy origi inventor of I be, it? take rule nal so it been settled has Courts, other this, if two machines substantially same, in the same the same manner, operate produce result, form, differ though they may proportions, are the same in and the utility, they principle last has no one discovered other than that of merit an dis imitation one before being improved and in for which no valid can be covered use, patent because considered cannot be granted, inventor of the machine. If original. alleged machine, of a which differs from another inventor in form and merely patented, proportion, previously 46 Vor.. VJT COURT IN THE CASES SUPREME

362 is not entitled to not in principle, 2d sec he cannot improvement, v- cannot, „ law, certainly case, like tion of the he n , (cid:127) iJ claim machine for the itself. are the is,

The two for the then question jury the same ? .Hopperboys substantially principle whether the not is plaintiff’s Hopperboy preferable to the other. Because if that amounts superiority he is only entitled improvement, patent for an for machine. and not the whole improvement, In the latter case be too the would broad, patent therefore void when the is single. patent the are that is not

If the plaintiff you opinion inventor of the he cannot ob- original Hopperboy, a verdict on claim, tain that unless his is an excepted 1st, The Case. and 6th sections of the 2d, 3d, law this conclusively general support opinion. the Court But in this judgment Supreme relied the is counsel case" upon by plaintiff’s prove this is an that insomuch that case; excepted is entitled to plaintiff should verdict, although you be that he is not the inventor of original satisfied But we are satisfied Hopperboy. that perfectly the last interpretation put clause upon counsel incorrect; is judgment plaintiff’s that for the reasons. 1. The following question of of invention was not before the priority Supreme incredible, and it is therefore Court; that any opi- much less a nion, would have been judgment, given The error in upon point. charge,, £19,

«3 Wheat.Rep. OF UNITED STATES. THE . n m was obviously 1822. intended part judgment in Chief follow- stated correct, is Justice words: ing , V. . “ is in di- in.the second alleged charge, error for to-.find the. defendant, if'they recting jury should, . be of Hopperboy opinion use to made be alleged thereon prior Oliver Evans. This the charge seems ito founded part -on if consi- to. opinion, use of. distinct ered as im- exclusive grant of it is a itself, for grant Hopperboy provements, on; an improvement Hopper- ..and boy.”: p.— 517, .it what is stated where contradicts

It p. - to -is the that the said claim machine plaintiff’s Now, &c. if he did not “which he has invented” to he has no claim the invent it; if Hopperboy the,Court he was so, mean to that could never? say, ? to recover under claim theless entitled that Such not called for the a decision was terms certainly 44 of Oliver but the relief act for Evans,” the violation of it. act seem, be in direct would to Evans, not for his to Oliver issue directs “ &c., for his dis but invention, Hopperboy,,elevator, art, &c., in the on the covery, improvement he has several which discovered, invented, machines not Now Hopperboy was. improved.” if act, without which O. &c. invented, O. this E., au patent, did not could not have obtained a E. - him one State to

thorize Secretary grant machine; that it or if it is clear was that granted, THE CASES IN SUPREME COURT Court indeed, done. If, improvidently Supreme Evans’ had that fact of Oliver n opinion, Evans . v. was and could invention constitution decided, prior have been there decided ally by Congress, might case;

.have in the been more difficulty argu ment that which upon counsel, pressed point was We Court, conceive distinctly repudiated. this opinion is, thalrpart meaning in to the O. erred Court stating. jury recover, if the was not entitled (that Hopperboy had been in use original Hopperboy) prior if because it; alleged discovery plaintiff’s entitled to claim an was plaintiff improvement Court had this denied, which On Hopperboy, was affirmed, Court Court the Supreme that the plaintiff jury wrong saying clearly which, his recover could not improvement, .for the Court is effect, then, Upon whole, was said. a verdict Evans is entitled to that O. of opinion, : if favour as inventor his Hopperboy that another be of should -Hopperboy, opinion you before the same as his principle, substantially alteration where any. point, explained, up exists in invented, Hopperboy, or dis invention and in use prior plaintiff’s in mere differ however form, pro covery, they may and utility. portions, is to claim next

2d. The improvement plaintiff’s claim, we which were on opinion Hopperboy, has sanction received Su- another case, in his His couusel contend that Court. improve- preme on the method of ment is, (I.) original supplying OF UNITED THE STATES. manual on his own

bolt, by labour; (2.) Hopper- on some invented ; some boy (3.) by Hopperboy, Evans r, person. other Let this position analyzed. It1. is said to be an improvement original method manual labour. it is obvious that if But machine, this be the invention, it is of an original because wherever of an im- law speaks it is on some art, machine, provement, manufacture, labour, not on manual which was &c., applied before various arts the invention ma- long its chinery supply place.

2. An on his own improvement discovery. But where is the evidence such invention ? It is true that has stated that con- Joseph plaintiff structed, rude model of a Í784, Hopperboy; it was substitute for manual because with- no labour, out the cords or lines, arm could not leading and it was It move, therefore turned hand. was,. in an its fact, state; incomplete progress but not to be out,

completion, given prepared given out to the world as a before 1785 machine, when the cords to turn the arm were added.

3. An on a former improvement machine. ais fair

This for a and the subject plaintiff patent; before laid has you evidence; strong prove is a more useful machine than the Hopperboy one which is to have been discovered alleged previously use. If, are satisfied of this then, you fact, point lawof which has been raised the defendant’s counsel, remains to be that the is, considered, for an plaintiff’s patent because void, COURT IN

CASES THE SUPREME are of his and extent nature improvements his stated in specification. an descri- for Hopperboy,

The improved patent and is referred made to, which in the bed specification, Now, does the of the specification ex- part patent. It states ? his in what consists press improvement machine, its use of the entire each and all parts invention, claims as and mode and operating, or the machine, principles properties peculiar meal, it, viz. the turning, gathering spreading, its motion and the of its arm, by lowering rising it. But meal under itself to the accommodate does this or designate improvement, description in what we find consists Where shall ? original construction, its as to described either Hopperboy or use; reference operation,-or any thing, ? Where obtained knowledge of it bemay ? stated The are the such improvements original communi- undoubted truth that the is, specification no information whatever these cates upon cases, so,-the as to This ordinary law, parts. being an im- clear cannot for recover is. plaintiff 1st The section general provement. invention, of an law> improvement speaks directs, the this said invention. issue swear 3d requires section applicant true inven- that he believes himself to affirm for which machine, tor of the art, improvement, shall, he, that he deliver asks further patent; -full, in such of his invention, written description acquainted cfear, and any person terms,, exact use to construct know with the how art, THE UNITED STATES. OF same, &c. That necessary validity should describe in what patent, is decided Mr. Justice consists, to to the cases referred in the appendix Story, 3 in the cases of v. Bule, Bombon Wheat. Rep. Price, Poor,

Boville v. M'Farlane v. Harmer v. (cid:127)'some What are the others. Playne; perhaps reasons which this ? doctrine is founded upon They are to an unintentional in guard public against its continuance, fringement during patent, to enable an artist to make the improvement, by reference to some known and certain to authority, be found records of the office the Se among after has run out. -But it State, cretary patent is contended counsel, the law plaintiffs be to would unreasonable and that it does require, to be this unless the done, require improvement is of which machine, upon patented description can be obtained reference to the records of the office; State’s Secretary often be might for the to impossible and conse patentee discover, use, describe of a machine in quently parts in' some obscure of the world. only perhaps part The answer to this that an neces is, improvement an and unless the is sarily original, implies patentee he which he with original acquainted supposes has must he calls talk his when improved, idly, invention an improvement. his

If he knows then inven- an nothing original, tion is an and the subsequent nothing: original, is of an one defeat appearance original un- is risks, every exposed patentee IN CASES THE SUPREME COURT der our law. As between distinction supposed an on a machine and one not patented, is there in it. both so, In cases the im- nothing must this differ- provement described, ence :—That in the former case it be sufficient refer to for a specification, description machine, in what and then to original state, such consists: —where- improvements, original de- as, case, the latter would necessary also improve- scribe machine, original too obvious is distinction The reason for this ment. to need explanation. has been this

If the law cor- subject upon general is, stated, the excepted next question rectly it is so. It contended case ? plaintiff E.; act the relief of O. the of In virtue 1st. Court. the decision and Supreme by 2dly, that, declares, the act: That the pa- 1. Under private and the manner prescri- is be tent granted form constitutes What the law. bed the patent general by the is which by and form granted patent manner the answer is, petition patent, obvious law ? The —the and seal of President the the signature oath or to it—the affirmation United States affixed invention, or description —tlie specification, section—the and the 3d drawings by required that a it contended Will be patent if models, required. in the manner be prescribed would granted form were whatever there no law, if description it and if would which is taken ? not, invention total between the is difference where for granted, no refe- one has aof wtñch absence specification., OF THE UNITED for which at invention all to the

rence patent ? granted is not of an or obscure

This the.case imperfect but of one which relates exclusively description; the invention for which wholesmachine; whereas, is for an granted, improvement. Court, states, which Supreme Theopinion s< be incumbent on the where it will plaintiff, to show extént claims for improvement, that a of his so understand person improvement, in what distinctly the subject may comprehend ing ? be shown how is it to But it consists.a11 manner, and we out the Court has pointed is, that fair it think therefore only implication of the United shown as the statute States be must i. e. lawof require, principles general it be If shown may specification. as the counsel evidence plaintiff’s jury, parol asked cui bono? then it contend may, fairly be, sort so far would then showing useful ? As to would productive purpose defendant, the evidence comes late, too to save of an error him consequences innocently As to the at with a committed. view to public large caution, the continuance of the during patent, information the nature of the after evidence its the in this cause must termination, given useless. be evanescent and totally

We feel convinced that the of perfectly meaning Court, the as this is misun- Supreme again point, the derstood counsel,, not for plaintiff’s the only above and reasons extent because mentioned, the

a 3 Wheat. 518. Rep. CASES IN THE SUPREME COURT va», construction of the and the plaintiff’s patent, of in lidify relation it, one the of were machines, before that v. and none others questions Court; (in reference to bar, were at the charge) argued the Chief in Justice, upon by reasoned delivering the opinion. whole, we are of that the

Upon opinion, plaintiff not entitled for verdict infringe- alleged of his ment for of patent, Hop- perboy. thereon were a verdict and

Whereupon judgment for rendered the defendant in the Circuit Court, cause of was error this writ again brought Court.

March4th. C. premised Mr. plaintiff, /. Ingersoll,a in inventions

review of Evans’ improvements 1783, causé, perfected, in the originating proof in 1785, grants regards Hopperboy, of Delaware, Pennsylva- Maryland, Legislatures under of the first plaintiff 1787 nia, 1808, the second in 1790, federal government, for the relief áct .of virtue Congress special Evans; of those improvements utility Oliver great while the acknowledged, patentee now was univerally It was all their singular- advantages. was deprived under the others, to be ne- for him, misfortune among time before second bringing cessity same which much revision, case, in the Court, for the construction of the the matter in dispute reversing formerly pronounced, opinion of evi- points of his argument applicable part a Some case of Evans Hettich. subsequent dence in STATES., THE UNITED OF which that Court had Court Pennsylvania, Circuit It was earnest review: occasion to hope decisión would now take a full final plaintiff E^ rest. to so at subject .as put place, of evidence, he the matters con With to. respect that David was as a Aby imcompetent tended,^!.) delicto, sued witness,, because he was and of pari to course vacate himself he:had disposed Interest in such question infringed'. equivalent to interest in the cause. even the verdict Perhaps under 6th section evidence, might given c. which act it on the 1793, 11, Court to enjoins void in the of a verdict event declare the-patent answer to this defendant. plaintiff’s objec tion, is for several machines is, could not annul such a Court pa improvements, aof tent, verdict all foundation against on. ?not But declare it Why why claims. to com tanto ? Every applicable

void principle pro it to this. is even more ne Nay, cases mon applies so complicated monopoly, guard cessary, or vexation, demands -imposition against public tried, and founded, on it,of part abrogated. (2.) any a witness, to David Aby, was objected It the defendants others, in these including and six on his dire, as was ascertained cases, voir combined and for that the suits, purpose defeat contributed bear common expenses purse defending was to If remained, them. any surplus return witness, as, acted who treasurer —if ed by raised was to be further levies deficiencies, was down all This dis breaking contributors. COURT THE SUPREME

CASES IN amounted, It bias interest. between tinction suf David maintenance.a Aby (3.) perhaps, of the Stouffer the existence original fered prove the that evidence would notice was when Hopperboy, the of the existence of improved Hopperboy. given this, a com 3in Wheat. 470. notice By The Rep. de inflicted on the The was surprize plaintiff. plete was, that he waiv for this fendant’s position purpose, evidence, the notice of matter ed the gave special issue, as of non-user. But the under general proof itwas to a notice equivalent plea, as the special in, to the to after defendant, putting competent it on the trial ? There no doubt abandon are.cases avail himself the defendant general when might matter, was a case this of But is sue.b special that the con does not prove tending the that was not whole truth, tain the thing origi the decisive discovered by patentee. nally was al-' is, that defendant this of position proof the same evidence show that to use lowed not was original Hopperboy, plaintiff defendant did not use that he used show evasion wholesome It an was Hopperboy. of sixth the act of section of provisons 1793c means which to destroy calculcated patent by controvert. never could It possibly patentee of these objections aggravation after witness was ru Court charged jury, not to be could led the Court competent, jury a Burr. 5. 49. 5 2730. Phill. Ev. ch. p.

b Wheat. 3. 27. Appx. Rep. 1793; s. 6. 504. c. 11. 3 Wheat. Rep.

c Actof THE UNITED STATES. OF on the him but must discredit, ground disqualify him, otherwise contradicted. unless By believe '"^ns’ the defendants were their own course proceeding, was not allowed dis witnesses, plaintiff have The Court should them. suffered the credit (4.) son of one the Stouffers, plaintiff prove another, the executors Evans’ im purchased On former occasion, similar evi provements. as to

dence was sanctioned Stouffers themselves, .a And why originators Hopperboy alleged of their descendants and acknowledgments it was ? treated before evi representatives legal so, dence not the of one opinion. why opinion —If well as another ? But it was more generation It was than of the in opinion. traditionary history vention The improvements. Court (5.) should suffered the defendant’s have Freder witness, Philip to be asked whether Stouffer Daniel was ick, sub of fits mental was derangement. ject —Stouffer ; witness defendant’s and that was most principal in his circumstance material to bear credible faculty as to remote and obscure circum testimony periods stances. Frederick, Besides, if witness, Philip fact, he had denied have been contra might other dicted in which it was testimony respect to be very made of important him, inquiry with a view to Frederick’s credit. The (6.) deposition Michael Forner was after that of overruled, John Shetter had been received under the same precisely circumstances. Neither them was taken accord to the act of which is ing Congress, inconvenient

a 3 Wheat. 495. 505. Rep.

CASES IN THE SUPREME COURT unfair in Rules its were operation. depositions Both entered took parties. by both parties deposi rules. these When the under tions defendant offer ed Shettér’s no Was deposition, objection read -But, it was laid before the made, and when jury. Forner’s; read takeri'in the offered plaintiff it, under the same was ob rules, same manner, apd The overruled. clerk testifiedj to, jected had been to take for 20 years practice depositions instead rulé, on them notice, tinder taking' no notice Where.the act of requires Congress, more miles lives witness than-100 from place therefore, evidence of mutual There trial. was, con sent,and uhders between anding parties, Reduci and from the invariable ble practice, both in, Yet the these cases. and acted entered' rules and suffered Court rejected proof, plaintiff’s force. Thus as received to remain defendant’s some most was deprived unexpectedly plaintiff the defendants while material his most testimony, their were own witnesses. themselves mátter in was on the main Court’s dispute of the word which it im- construction improvement, This radical patent. úted difficulty escaped p cases were before when discussed notice these n 1. It Courts. Circuit Supreme misappre- exists that the word at all in the hension suppose with the in connexion or specification, Hop- patent is for in the The improvements art perboy. for certain ma- other flour, manufacturing, one of is denominated chines, improved which But the distinction between obvious, Hopperboy. UNITED THE STATES OF as an of a something patented Hopper- as an something improved Hop- patented boy, called, latter was so as substituting perboy.

mere manual labor. so It machinery might a called caveat ex- unknown possibly against which, in the illustration isting originals, strong avail if he would defendant could Court, prove their existence the mountains of China. It might called, beso more than a melio- meaning nothing ration of the inventor’s own Evans’ original essays. awas and most beneficial great improve-

Hopperboy which he called an ment, improved Hopperboy.

itBut had no Even the ascribed original. bolt-filler, toStouffer, earlier as dif- alleged origin, ferent in as Wasinferior in principle, practice, machine; plaintiff’s

°Z. It was Court, second error of the to take it for that the was not granted, improved so Hopperboy from, described as to specification, distinguish all before known or used, and to enable a things per son skilled in the make art to it. It is so.described. the counsel into went

[Here pe culiar structure and properties Hopperboy.] ope No skilled the art could this de misapprehend or be misled it. scription, The error of was, Court to consider condescending skill itself ed in the art this is branch. The law does not to describe new require patentees old, but new old. distinguish Other merely from a wise be more would complex volumi- nous than a Welsh . Take a for in pedigree. boat, stance must ark downwards, every species, IN CASES THE SUPREME COURT 376 ? The described of the im- peculiar properties 1822. are isIt not explained. proved Hopperboy perfectly a mere of form and. but a com- change proportions, Eaton* known new bination of principles, well materials} as so forth specification, set essentially exclusive claims all during interfering prevent after- term, public and to rights impart were misunderstood The authorities wards. to he all sure, require,

Court They respect. is matter an im- discrimination, the subject a when an essential im- orily But they require provement: a particulars ; not recapitulation provement and the new combinations, both the rudiments, old terms. them detail, distinguishing have of fact to This, however, 3. question itas instead been submitted being, jury, and determined by assumed was, exclusively decide, person How can a Court whether Court. understand description, skilled in art could so.a are uniformly The cases machine ? copy aas left this the Court inquiry In all these cases, sect, Indeed, of the act the 6th fact to the jury. of fact, matter c. II. treats it only 1793, un must of fraiid. appear to de in order either deficient redundant, true, Can of concealment. It is matter ceive the public. Court infer this scienter ? doubted whether well 4. it may Indeed, where, case, in this discrimination necessary, 211. Marsh. Rep. 2 T. R. 11 East’s Rep. 101. a 8 95. 2 Gallis. 1 Gallis. P. Meriv. 438. N. 622. Starkie's 3 199. Rep. 514. Appx. Rep. Wheat. 1. Mass. 3. 5 152. 452. THE UNITED OF STATES. one in existence. The second is but

there a, the case of of the law section prior speaks pa- have the The Court would third tented machine. substantive, without association to be with section can a But how de- and sixth. the second patentee If not before ? what he never saw . scribe patented, knew, If he but ? conceal- he see how could know it not of fraud ? is matter The ed his knowledge, will be found to cases, when have most examined, to their of them referred of reasoning point con- is the Such fact in v. Harmer flicting patents. Moore, v. v. Bovill Lowell Lewis.

Playne, Which all to a correct understand- explanation important of those cases. ing of act for the

5. The of Congress special relief vouchsafes from all technical ob- Oliver Evans, him. His time were uni-

stacles. improvements did mean Congress, acknowledged. versally ascertainment of their w hich forestall originality, if he nor citizen their chose, try, utility. might act But dispenses specification, relieving all the other of common oath, fee, and prerequisites It was not cases. merely designed prolong releave it from vexations and term monopoly, friyolous it uses the embarrassments. Accordingly, addition terms term applied improvements,*in act 1793 corifers on to such .and subjects by in his discoveries, an exclusive Oliver Evans right inventions, machines, improvements general, obvious this act The design and specifically. from all the formali- to relieve the grantee

grace, . are common subjected, to which ties patentees IN CASES THE SUPREME COURT alone question leaving priority originality 1822. to inquiry by country. open even this 6. But was not inquiry these competent Eaton-' defendants, who are citizens of Pennsylvania. act of that 1786, assembly commonwealth, confers Evans the exclusive in his right Hopper- and inflicts on all infractors of it. To penalties boy, defendants this acceded act, arid contri directly buted their : and it ais well set representatives their, tled are principle, they bound by legislat position Nor is ion.a at all affected 7th 1793, of the act of c. section contra. Mr.' A intended se- Sergeant, patent inventor an to exclusive cure for limited right, to his invention. At the time, of the expiration pe- thus secured is to thing become riodj public pro- tp which one is at use. in the perty, liberty one is mean to time., every abstain from using at of a thing severe patented, peril responsi- in damages. bility provisions law have view tó these several all of objects, are to promoted which be as far as re- possible, with each cohciled other, public security the benefit protected, well the being interests of the inventor. He is to of the fruits his in- enjoy terms and upon are genuity, com- conditions, with the patible and the safety, interests peace, other of citizens

A patent, place, therefore, the first can only

a 10 East's 3 536. Rep, Johns. Ch. 598. Rep. STATES. THE UNITED

OF It is of no invention. an i&n. importance, original believes himself tó be the that a man inven- really n made discove- or is true inventor, tor, having n even the without himself, knowledge, ry himself have was he supposes thing -invented^ before, or described in used some known or public be, honest he However he has no work. may merit, the rest discover^ respects community, was known and What common already ing open allowed to use, will he be nor appropriate thing himself, because has made a mistake. The one, truth .his not an invention, though original will him protect against summary proceeding his under set aside the 10th sec. the act avail c. him to will enforce ; 1793, an claim in action an individual. The want against that the was showing originality, proved by thing or used known in some before, described public a valid and de- conclusive work, is, every case, fence. an invention machine,

Again; on a machine of something before, unknown or of. an entirely addition or alteration known, what was so as previously it more to make useful. Each of these is a patent- both, able the as to is to for object; patent, the invention and the laws that thus only, it, govern will be found to be same. understood, the exactly it, is an the and on- essential of is Novelty merit, part is what new to be the ly secured patent.

A mistake is as fatal the the just patentee one case inas and if he be- other; should really IN THE SUPREMÉ COURT CASES to have invented an lieve when himself improvement, used described in truth it was he known, before, his effect to could There legal patent. give is, in the of however, one case for im- peculiarity patents a relative Improvement being

provements. term, existence to which it something presupposes to the inventor at the known time of refers, making If he does not know of supposed improvement. know has cannot it, he he and improved it; upon it, know of can describe he does he. if readily is, made, he has his own invention. improvement a who has never heard of manA time-keeper, might of one himself the inventor but it is suppose impos- conceive, a has that man who never sible heard believe should himself of such the in- thing, anof ventor time-keeper. upon entire covers the for an A machine whole— on the for improvement, contrary, covers and necessarily improvement, there only supposes It is are not are line be- patented. parts which are tween these, parts patented, and. defines the pretensions respective patentee unless, that line be somehow public; and. where marked, say impossible termi- one. Confusion, other begins.-, nates, uncertainty, would be the fraud, litigation extortion, inevi- table consequence. business

It is duty inventor, then, his the time at before patent, applying “ deliver receive written patent, can descrip- invention, and of manner tion using, in such full, same, compounding process clear, STATES, THE UNITED OF the same all as to terms, exact distinguish .1822. from to enable known, any person other things before a which it is branch, or science the art n skilled make, connected, com- it is most nearly with This &e. sec. and use same,” spe- pound, in the office of is to remain Secretary cification evi- made State, a it is where copy every is manifest; The dence. design provision invention, use of the is to secure public for which after the period pa- expiration and to individuals, enable tent granted time, js it is that intended to be know what mean if avoid secured, so that interference, they or, the claim of think dispute originality. they proper, it was these there For both necessary purposes, evidence, and recorded be authentic accessi- should all, ble to unchan- unchangeable remaining Without a would be specification, patent ged. which does not A comply

void. the act of le- all Congress, is, requirements and the no would intents, specification, patent gal as if there were void, no literally specifica- equally tion. case, the is-to be

In present patent regarded, a or, As for the machine, whole either,' patent (1.) for an a on an old and As (2.) utmost that can machine. known contended, has an election to is, that the consider it as patentee one, the other: and that a liberal con- very cession, it is inasmuch as founded upon ambigui- bis own specification, which, generally, ty not to be to derive an advan- permitted man ought CASES IN SUPREME THE COURT But clear that cannot be tage. it.is it.

both; would be legal absurdity, involving terms. contradiction plain, As 1. for the whole machine, a.patent including void, the be plaintiff’s alleged improvement, inventor, cause the the was not plaintiff original machine; the The that a. known fact, Hopperboy, the name of an S. or Stouffer Hopperboy, having all machine, the essential parts plaintiff’s t'o the uses and same applied purposes, (whether more or less not material to perfectly, inquire,) .is existed, use, and was before the date the plain earliest tiff’s has twice been alleged discovery, pro ved satisfaction in each of intelligent juries these and. now be for cases, granted, taken At established. the former the trial, conclusively Washing learned who judge presided (Mr..Justice pf if should instructed be ton) they jury, opinion Oliver Evans not the that was’ inventor, original find for the did defendant; they accordingly, satisfied of fact. error to this fully being Upon was on the. the0 Court;, reversed., judgment ground was for machine, but for patent “ improvement; phrase improved hopperboy,” hesitation, after deemed much equivalent being, (i improvement” Hopperboy. But opinion admits, Court what indeed cannot distinctly questioned, if, respects be. Hopperboy, been for the whole nad direction patent machine, learned would have judge been right. In of the alter^ plaintiff benefit giving the case in the view most favourable native, put OF THE UNITED STATES. him. He

for as inventor of the claim whole might or he claim as inventor of the im- machine, might but, under this he could not claim provement; patent for both: and in must claiming either, course abide the settled of law, principles appli- cable to the construction of the thus adopted. must taken could two not be

Each singly. confounded, as to so entitle him one to the upon benefit of to the other. If the belonging principles be for the whole it.is void if he is machine, riot inventor; that he is has been original not, established. fully intimated, however,

It is in will probably sisted the S. or Stouf hereafter, upon admitting to have been fer known and Hopperboy previously machines are so the two used, different, that entirely well be entitled to a Mr. Evans for the might of fact, a whole. As has been decided question verdict of the and of the by jury, identity must be taken machine now unless the granted, led to the were conclusion an erroneous jury by from the Court. What constitutes charge identity, what is a diversity, frequently question great It and the difficulty. right duty inform what were the judge jury principles their deliberations and this it, guide deciding clearness, has done admirable with and in con best with the this abstruse formity authority upon “ of the law. Where machine specific already part “ exists,” Mr. Justice cer (says producing Story,) effects, if a mere addition ma tain is made to such the same effects in better manner. chine, produce CASES IN THE COURT SUPREME machine, cannot be taken for the whole but for an And same improvement, learned only.”a judge tl (cid:127) is not.whether therefore, material.qaestion, Eaton the same motion, elements of or the same component are used, but’ whether

parts effect is given pro duced mode of same substantially' by operation, and the same combination of in both ma- powers, n chinés.b” The here .is identity perfectly apparent still so more upon description, upon inspec both, tion the models. the sáme The object lo with labour, manual dispense supply small, hopper supply gradually, successive, —to means of the moves regular portions, power contrivances for mechanical mill; substituting same, turn, human The is the agency. effect stir, and flour, cool the it for bolt thus prepare before it is delivered. The construction ing, “ machines, as to the mode “the operation,” both, there combination of is the same. In powers,” turned an shaft, power cog, upright on arm, that moves the mill; resting lightly shaft; meal, and turned something upright whether the under of the arm, sweep part flights far, in the meal to the So ers, tO hopper. gather súme. for the differences. are the Now they shaft, a has a round instead of machine plaintiff’s are has one; lines, it necessary leading square round, a and the shaft weight being consequence all be arm." These to. balance the improve do not and ments, but are they improvements, only The name a different bespeaks itself machine. make Cutter, 1 Gallis. 450. a Whittemore 2 Gallis. Winkley, b Odiorne v. THE

OF UNITED STATES. 885 called was old machine bolt-filler, : identity 1822Í is called an “ ,* theplaintiff’S improved Hopperboy v.- Hopperboy.” different, as to be so machines éntirely ifBut whole, for the entitle to a though plaintiff used, known S. previously Hopperboy if the that even follow, then it would necessarily inventor were improved original plaintiff invention, first was the any yet machine, use such ma- make one with impunity might tois by strip- the S. say, chine as Hopperboy himself entitlé some might parts, off ping mon- toó is This residue. to use the proposition . it decides it be sound, If

strous maintained. to be ori- any question regard case without Eaton used defendant invention, only ginal S. the Hopperboy.

. test, con- A sure howeyer, identity, what are both machines. sider parts indispensable are, arm, shaft with the. in it, They, upright cog machine will these, With. sweeps. without.them, will not. These are work; parts machines. What both is it that common to is not has ? What added indispensable, plaintiff That is of an better. exactly definition perhaps he, in his Can improved . improvement. machine, one of the with parts dispense any belong is clear —he old answer cannot. machine ? Can . of his ? additions Yes, we with dispense all of The machine them. efficient complete, , its without them ; the evidence agent purpose, for: even leaves doubtful whether from the ele- apart ;wo. vator, it is the better It is certainly Vox.; VII. COURT

CASES IN SUPREME THE for use, is the the use of machine very doubt, Mr. Eaton sued. There can be no serious that if has it is for an claim, plaintiff only improvement. an void,

2. As for it is improvement, not does because show in what or, in other consists, what words, improvement “ claims as plaintiff invention: the na- extent of ture and are not stated in his This was the specification.” precise ground decision below. counsel for

The the plaintiff who the ar- opened to concede, was understood that if the gument, pa- improvement, an tent and there be nothing circumstances of this case to .the make it particular from exception general law was cor- rule, down. laid And there can no certainly rectly this, we consider doubt whether spirit act of terms of the decisions in Congress, Eng- land, or cases in the United States. adjudged is uniform authority, sort, every currenf establish, to be invention must patented in such be described full and exact terms “ the same from all distinguish before things The 2d known.” section of the act has no rela- to this tion question. That for the provides cáse, man one has where for a machine, another for an that the one improvement, declaring shall at not be use invention liberty and thus other, their precisely limiting respective follow, Does it aif has rights. machine been he who has .patented, right improves upon the whole to and withdraw appropriate himself, STATES THE UNITED

OF use ? before property public what was public make use the old and can afterwards oné no That v- machine, paten- „ license of the’ the without known * n (cid:127) Eaton. made with tee ? The-section yiew, was. different same is for tne leaves what provided upon it before stood. What was com- on which footing so;, remains the of the im- mon patentee property at, is to «se because it is it com- provement liberty and no mon, was to enable legislation necessary he is not allowed him it to j-.but him- appropriate of the exclusion more than self to others, any ap- the of a invention The prior propriate patentee. which, section, áit

6th makes go.od defence, the. mpre.or has less stated than the in his truth patentee “ for- the of purpose specification, deceiving pub- lic,” no hhs relation is question. There no here machine will allegation not produce described or that more less or been has stated effect, dr for purpose deceiving misleading pub- this, will lic. Nor Court is sum- recollect, aside the set under proceeding, mary patent 10th section. and the is whe question, only question,

But ;action patentee in an a person ther against his it is not charged infringing patent, necessary in what his invention show consists. plaintiff In' the former this Court have case, argument t where, it in all tha cases down laid expressly, is for it will be claim incumbent on improvement, ‘ to show him his. so the extent that a improvement, the subject person, understanding may comprehend in what it consists aHow is distinctly this.to-be

a 3 Wheat. 518. Rep. . IN THE SUPREME COURT CASES shown ? answer is is to shown The obvious—it That from the the .mean such specification. al is their evident from ing Court adopting act most words very Congress, ,the are office of to describe employed specifica “ so &c. That

tion, person understanding,” evident, for else is their could nothing meaning cannot be such, denied, the clear design and such is law act of the established Congress, authoritative decisions. collected invention ; than the extensive not be more must addition of an invention consists if the therefore and the is for whole only, In void." manufacture, England, machine but is the not annexed is the patent, specification is a Yet in specification enrolled Chancery. the. of for the ascertaining purpose part the extent invention.b alleged nature it filed is Department this country, In annexed authenticated An always State. copy of.itis abso forms a and' patent, part patent, so call because the properly patent, essential, lutely no that to description^ referring fact gives ed,' established The used in formula the specification. be and to found in present all is, patent, patents, il whereof is the said description improvement, said Oliver Evans him words given and is madeos hereto schedule self, in the annexed, Now, what these should part pa presents»” Bull, N. P. Boulton Bl. H. 76. Bull. Rep. 463. v,. Term Rep. Boulton, Bull. b Hornblower Boulton OF THE UNITED STATES. ? Where the combination of a cer

tent comprehend to a tain number has certain parts existed, up machines, in former add point, patentee merely combinations, other should ing compre hend such And cases that improvements onlya have been referred that if clearly already decide, of an it invention be is indis improvement only, that the should not be broader than pensable .patent the invention and the should be drawn specification in terms not include but the im that do thing up new, It is essential to out what is provement. point what so as extent to show old, precisely “ alleged improvement. ought, patentee in his to inform the specification, con who person it, sults what new and what is old. He should consists in say, my improvement this, describing words, if he if reference to or, can, not, by But here the is neither de .figures.

scribed in and would not be words figures; the wit of unless he were man, previously acquaint ed with the instrument, construction of say was old A what was new. what person ought to be warned the use of against , invention.b It need denied that particular description refer might sufficiently given by ence as machine, other some ; or some patented well known use. machine familiar For instance, use illustration Ellenbo Lord employed «.Moore, Bevill 2 Marsh. 211. Rep. Price,

b Per 1 Slarkie’- v. Ellenborough. M‘Farlane Lord 199. Rep. ÍN THE COURT GASES SUPREME

S90 watch, take if we should say, rough, commoif. 1822. . add alter such and them. parts, and such pr describing and that is that is contended, All fully supported v. the reason of the is, cáse, authority, other, orway some must, distinguish from what from the old, the new improvement before, so as to show what patented was known than is broader else invention is, patent The decided cases the Uni invention, and void. inventor are effect. If the States to the same ted. whole for the obtain improvement more than extensive machine, being is void.a invention, well are digested,

The cases brought together, 3to in the stated Wheat Appendix principles 13. Rep. the extent else can

How at the trial ? evidence Then it be by ? Shall shown of the act would defeated, entirely the design The useless. argument the specification below conclusive. Court point upon perfectly be for whole ma- To say patent may ás for as much the claim can plaintiff chine, rather defendant to be cannot original, th prove is make the upon right depend, disprove* fact of nor even up- upon originality, patent, it in his have on the evidence the power party skill and his r produce," intelligence apply it. uniform instead being every ing right, Parker, 439. Whittemore Woodworth v. 1 Gallis. Rep. Gallis, Cutter, 1 475. Odiorne v. Winkley, Gallis. Rep. Rep. THE UNITED STATES.

OF in one where, State, one. another be might thing State, of same Courts In different in another. Court, And same different. even might ^ton- at as the evidence times, different hap- particular

pened to be more or less extensive. would vary, effect be out- would an pátent nothing to of be filled oc- line, course, up large enough Thjs is an and, stervé» what might absurdity, casion Besides, to fraud. un- worse, great temptation der this how man inform him- supposition, is.any self so that avoid what it is that is he. patented, ? It of is too at the late time. danger infringement of answer defendant. trial, any good purpose at be informed And how are expi- public is a of ration how skill to be person time, short, make the able to what improvement; unless it be use is define, specification, the extent nature of the ? precision, improvement refers to the The act of emphatically Congress spe- alone, as and to that cification, furnishing thing, every aid, and so it extrinsic must do* If it be without invention, the is void. than the broader here, it is that this was a But objected question for Court. Whether for jury, invention, than broader may per some cases.be a mix haps question fact, or, ed fact and of question law, construction written instrument for the specification being and the case other evidence for in the Court, jury. il But, if it incumbent to show upon plaintiff .the extent nature of and that improvement,” tois be shown from the then it is specification, plainly incumbent him show from the upon specification, COURT IN THE

CASES SUPREME dé* he has where claims .an improvement, a known scribed distinguished exclusively isit being And submitted, machine. that, of the face a instrumentáis arising upon question Let us for the Court. spe examine. question even which in it pro? Is there cification. thing any ,an describe fesses to distinguished improvement, it not Does or before ? a machine known used ? machine the whole and in include plainly, terms, face That is law, upon evidently question instrument; it pronounced, confidently man does include the no can whole, read so as to which ascertain specification, parts are claimed are not ; and which or, by plaintiff, are claimed that there are not which any parts further to him. it is due to the Court, say, But, all other as in in this must, charge respect, to the cases, be with reference understood allega If there been an at the evidence. had and to tions an the most distant even assertion, prove, tempt intimation, that men skill mechanics, bringing aid of this difficult to. the specification, study it a line be could discern knowledge, peculiar limits of defined new and improve tween old, fit to heard, that would doubtless been have ment, whatever matter for the consideration proper submit have would have been arisen, jury might was offered— evidence But no such ted jury. even was No shows it such record suggestion shows it was not it; made; charge pretended —the itself a for excepted reply by part Court, counsels, to an plaintiff’s argument UNITED

OF THE STATES. show not admitted that the did specification, consisted, in what contending that it was for extravagant position competent evidence at. the in effect show which is trial, tq that the was entitled whatever say, plaintiff had defendant not disproved. said,

It has been and to our however, great very that the Court below.erred in surprise, dealing as a for an that it patent improvement; is not for an but for improvement, an improved Hop When this case was before the perboy. formerly Court, that Circuit Court dealt with the patent as for a Hopperboy, improve Court,, ment. error to this Upon one error princi was, relied that pally upon Court below had thus construed it to be a for the machine.a patent And “ improved contended it that an Hopperboy,” “ and an on a improvement were one Hopperboy,” “ and the same. one of Wys This,” counsel, “ particular awas for an on the patent improvement machine in and not its for' inven question, original tion.” . And of that Court, were the after opinion contended, much deliberation.b it And can now be Court, the same the same that this is party, dealt to be with as a for an patent ? is, truth it has been treated as a But, case for both machine and ther so patent improvement, as of to the full benefit either con give plaintiff . of struction. The real aim the is to main argument b 3 a 3 Wheat. 486. 502. Rep. Wheat. Rep. VII.

Vot.. COURT

CASES IN THE SUPREME tain, be for the that whole expounded may patent cover each of the for patent parts, legally be able as the to ing may prove many patentee has it invented words ; may patent n forone another; and in for law it may thing, have a of elastic contrac sort ambiguity, capable tion, itself to to if not so as expansion, adapt it be found convenient at whatever given any all settled time to This is embrace. princi against it it is is good ples; against against policy the act of words and spirit Congress.

Such the established law unquestionably being subject patents general, remains upon whether the case of to Oliver Evans only inquire, an account And it is exception. insisted act for relief here, that the makes an special of that act sufficient history exception. was, authorize its new show, object only reason of the first issued, by having void form declared attributa- been irregularity This officers ble government. gave relief. The title relief was appropriate equitable so that time, an extension might inventor of a for the same time privileges enjoy if the have them that he would enjoyed irregularity occurred, is to the same had say, privileges. for the first had was liberal, This sufficiently patent the new one before was granted. expired actually too, was made and new retrospective, patent, exclusive Evans an Oliver right to eight gave double usual it was the period yet years, twenty act, liberal that this contended, special formerly, OF THE STATES. UNITED the went further was, confessedly length djspen- with the sing altogether necessity proving inventor, was the even all precluded to. right Eatan. which, invention, the in effeet to was question say, was,Secured that-the exclusive to privilege him, whe- .the, ther he was inventor or not. That was overruled this the Court, And the by upon plainest grounds.

whole then scope opinion delivered distinctly establishes;, time, extension except the union of different inventions in the same patent, which otherwise could not be perhaps regularly joined, towas in all patent issued, be. re- law, conformable to the spects general subject.to same other Such was regulations patents. :(cid:127) he interpretation himself plaintiff applied in the usual manner awith by petition, and oath. Such officers interpretation underwent usual ex- government: ¿he amination, and is in usual form. Such at this moment the : for it is interpretation Upon adop- law tion of general reference, juris- Courts in diction the Federal. cases out growing rests. If that he not -of this law patent entirely ap- this Court has no plicable, power adjudicate isIt cause.. needless pursue further, being the former decided decision of this Court. already For terms conditions upon

towas to attach jurisdiction granted —the it—-the rules to it—the act special makes no govern reference and; laws provision, existing Wheat.Rep. 513.

a 3 CASES COURT IN.THE SUPREME for but this reference not advance we could single in the inquiry. step act Legisla-

All been has said of .that 1787, may ture in year Pennsylvania passed What its ain word. provisions single disposed'of it if they did, not right were does appear, was surren- have been, it may whatever conferred, of the law under dered patent by accepting the- act of section of seventh The United States. is express. Congress submitted, it is then, confidently conclusion,

In .considered must be Oliver that thepatent.of im- machine for the either provement. it is because it void, befor if it machine,

That inventor, not the he was original is fully proved and used before. known was the machine it is void be- be for if it improvement, That invention, and does than his not cause it broader consists, so as to what specify known and used be- was what distinguish fore. also counsel the points learned argued case, next (Evans

evidence following so noticed are but as fully v. Hettich,) they not Court, necessary thought opinion, of his argument. part report in the opi- observed, reply, Mr. Harper, dis- Court, two were Circuit propositions nion That Evans’ :' affirmed (1.) tinctly for an improvement, .patent Hopperboy : invention (2.) discovery for an original STATES. OF UNITED THE because it was for an void, That improvement, being the im- did terms not in distinguish specification Evans called the from the machine, original provements were Stouffer these Both propositions Hopperboy. below. for indispensable judgment supporting to show endeavour should He and denied them both, they foundation. If he void w’ere equally either, succeed in could judgment overthrowing and the Court musí.De of the Circuit reversed, patent ; believed, but he supported plaintiff right that both were wholly should endeavour show, unfounded. is the of Oliver

And first, or for an for an invention ? original improvement, of the Circuit maintained the decisions Court He should endeavour former. demonstrate the latter. of this outset it would be

In investigation pro remark, makes ot specification part per Court, he had the this authority the patent; case,a for decision in this former saying, what Oliver Evans obtained to ascertain order was, one points inquiry his proper patent, he ask for ? what was in did wish and what ? This be satisfac obtain question tention to that of his answered, spe torily referring part relates This cification which Hopperboy. in a 3 at' note to Wheat. printed is length question now in of it found at

Rep., part ful!, of the machine 468. The description very p.

a 3 Wheat. Rep. CASES IN THE SUPREME COURT minute, and clear and it with this concludes decla “ : claim invention the my peculiar ration pro machine : perties principles possesses viz. the meal, spreading, turning, gathering one at and the its arms operation, using lowering motion, its to accommodate itself to ,by any quantity of meal it on.” has' operate This what he as his invention. For claimed for the machine which this'he Not patent. asked on which for the thus had principle improved, has not He it was made to accurately very operate,. himself, the ob- between expressed distinguished obtained, and the mode to be. ject proceeding attainment; apd the means; the end. its between is which it the the modus and operandi result obvious; The his is still But meaning produced. result,' the obtained, the was the to be end object,, “ meal, at one the and ,gathering turning, spreading,, machine, the the modus of The principle operation;” tp.be was accomplished, the object Which operandi of was in a and better the'ma-. power new ,yvsy, motion, own arms it's to lower its raise and chine to less itself or accommodate any greater so as which, it have to on of flour may operate. quantity discovery, which he or invention then, is This, his .a demands for which he pa- claims as his own,.an'd He is with. what demand gets His complied tent. intended is what'the This asked. grantors to the former I decision, and. him; appeal again give what order ascertain doctrine, for look of the receiver, we must request given; of intention giver. OF STATES. THE UNITED then, is, of It for his peculiar principle machine, for its of new mode Oliver operating, for Evans asked and received. That new modus a new combination of old instruments operandi, by so as to either a new machines, effect, produce an old effect in a new subject proper way, matter of a authori- numerous from appears patent, be considered as of ties, settled principle It was that Watt’s law. .patent this principle on the steam improvements engine, Hall, made so noise which much Westminster in. effects, sdch . was produced important finally and established. supported law of different though patents, English its was same

ours in in its prin origin, probably ciples. en our act was a mere Indeed, Congress actment principles, system, Courts had . That established. English system grew out crown in ancient prerogative Eng land, This grant monopolies. power, long most often exercised, oppressively abolished the early of James the part First’s act reign, by which, was Parliament, of the earliest fruits of one increase of correct knowledge, progress ideas, and the in the. of socie condition at that had to which, time, ty, But.for begun appear. of. and industry pro encouragement ingenuity was

viso statute, introduced into the that the king- “ manner, still of grant might monopoly new any manufactures,” to the first term not for inventors, this 14years.a exceeding this Upon short proviso, ap See the case Hornblower v. Boulton. 8 T. R. 105. The opinion of Mr. Justice Lawrence. IN THE COURT

CASES SUPREME foundation, the whole structure scanty pareatiy law, raised was English by govern English patent es and The ment Courts. system .they'thus was our act of This tablished by Congress. adopted is said required specification. system Nothing it, but statute ; required by the government it by on The clause every patent. principle express Was this: The statute con which it was required, him a mo the inventor, ferred^ benefit by giving time. For a limited of his invention nopoly on th® community, conferred benefit patentee a return. make that he should it was just thought That, and in the use free consisted knowledge return which, specification, his invention, ex after obtain, should enable community us This enables of his principle monopoly. piration the origin to understand object only its also.its nature character1, specification, of the in was to possession pfiblic put object vention, so as to ena ceased, after had monopoly it was beneficially; to use it indispensa ble all persons sobe fully should clearly invention ble skilled in the same to enable persons explained, all This was and use it. to make art. all the specification, consequently effected same cer contain. very

that was required persons skill enable which would of description tainty invention, and use after art in. make ed enable to avoid would them expire, should monopoly it, so as to subject themselves making using mo- during the continuance loss, penalties, THE UNITED STATES. OF 401 1822. it was same manner im In established, machines or in old processes, might provements Erins lC manufactures,” as new combined and become the This was also incor principle patents. subject into, express act of our terms. Congress, porated rule was here the same And adopted respect “ new The to the specification. manulacture,” in a or consisted machine whether process entirely of an old was to be de one, new, as to with such enable skill scribed certainty, persons the invention, to make use the art after the ed in should avoid it to while the mo expire, monopoly The should exist. were principle object nopoly cases, in both and the same rule was same adopt our act of as both, ed in well as Congress, decisions. English shall now be able to

We perceive application case of Watt’s under patent,a con point which, considered, let it sideration is to ascer how far the of new tain discovery modus operandi, a new an so old one in a produce effect, new is the of a subject way, proper patent, useful invention, and noi .is improvement. of steam had been expansive power many years discovered xhe

before by Marquis who Winchester, it, though very imperfectly, various me- applied chanical Among rest, purposes. employed put in motion, machines communicating them movement steam made to in beams and levers. Thus was laid the produce invention, of that wonderful foundation the steam a 8 95. T. R. VII. 51

Vol. supreme cases in the court Various machines of kind, engine. more or time, less from time to were, perfect, into brought use and at Newcomen amade steam ; length engine, was as which. considered attained the long having of It

utmost consisted of a point perfection. cylin- or der of made smooth iron, tube large perfectly within, and and uniform at the closed completely at bottom, the Inside of this open cylin- top. a thick strong der was horizontally, plate placed, the the to of the at inner surface so fitted iron, edges air to be as right, easily yet up play cylinder, the centre of Into was down. fitted plate iron, of stem of the re- a length strong upright stem and made what and the plate together quired end of the the piston is called upper piston. beam, a ato. was fastened horizontal stem by joint a the or fast near centre was made which by joint, end, as to near end so allow its at farthest- the it is at- the which with piston and down up play the under the the bottom At cylinder, tached. a tube, leading was introduced pipe piston, into was the the where generated, steam the boiler, thjs awith valve. When furnished cylinder, the steam it let the through pipe was valve opened, under pis- the lower cylinder, into part raised was thus by explosive which ton, up it the end and raised steam, power it attached. was beam which the horizontal had been beam it the and with When the piston, intended, the valve in was as high raised machine, motion was shut by steam pipe was same valve opened, at the moment, and, connected which pipe, the same means, THE STATES. OF UNITED with, A of cold water. vessel quantity cylinder then into water was introduced of this cylinder, under where it steam condensed piston, created more less vacuum completely, more or of which the less in consequence perfect; was down of the at- piston pressed weight air it, carried down mospheric resting upon with it the end beam horizontal was attached. When it had subsided as low valve, the steam desired, and let in opened steam under which was raised as be- piston, fore, and down again pressed weight on the air, steam condensed the in- being again by of cold water. This went on troduction operation and thus an and continually, ascending descending motion was which communicated produced, was by ,to beam horizontal the whole machinery.

The defect of this at engine length began observed. consisted in the of the It cylin- cooling der the cold water let in to by condense the steam.

The thus cylinder steam, rendered colder than being a considerable of the steam was portion introduced condensed this coldness, by while was piston was thus it rising; before had done destroyed its office. This a rendered greater generation steam and of course a necessary, greater consump- tion too, fuel. was steam, suddenly condensed, so as to let the perfectly descend piston with sufficient or force; which the rapidity by pow- er and effect of the machine were diminished. The into water, which steam had been converted also, condensation, by the bottom in remained

CASES THE IN COURT SUPREME and further the descent cylinder, impeded in a coun- These defects felt were piston; seriously where fuel became continually try dear, more so. threatened rnore and. At length they a fender, the useless, creating engine by entirely than could fuel greater compensated expense the labour of the machine. power by saving who, Then Watt after reflection arose, long idea con- conceived the happy many experiments, from that vessel different the steam densing effected office. This he it its by which was perform called machine with the another vessel connecting was connected with the which cylinder connector, This valve in it. h with valve being opened pipe machine, when same moment at the the motion to its ascended had greatest-height, the piston conductor, it where into the rushed steam through the same water, introduced of cold a stream met before letting had been employed means condensed it as cold This water into cylinder. was also contrived, as it fast came pump drew out of the machine, motion work by uncondens- remained the steam all conductor the water condensation. all ed and produced by vacuum in the con- was created a most Thus perfect denser, in the connected and consequently cylinder descended with freedom, the rapidity, it; piston the touched cylinder, being and force; retained heat the cold water, equal affected by of the steam intro- that no : so of steam portion too soon. into was condensed it, duced" were others the . This was improvement; great STATES. OF THE UNITED was effect. increase its cylinder employed to retain the best calculated a case surrounded this case and heat, and the between cylin- space Thys water. der full of steam or was boiling kept hottest state.; was possible kept cylinder preservation state best adapted as its office : and steam thus steam, while performing at- was found to be more effectual than preserved of. air in down piston, top mospheric bringing was introduced and steam closed, cylinder This steam well as below it. above piston into was conducted and there con- condenser, out, densed manner with the same pumped : that introduced below and thus the al- being piston down, elastic ternately pressed up power steam, in its most efficacious condition,, gave most and uniform motion to the powerful, steady, were substances instead of engine. Oily employed the vessels air water, ; keeping tight especially of the the steam where top cylinder, piston it. Thus the machine was rendered through played as it seems capable perfect becoming. machine Now, in what does this differ from the Newcomen, which was in. steam use be- engine Both ? had boiler to e fore produce steam, to receive it. The was the cylinder same in piston in the connected same both, manner with the for the horizontal beam, purpose communicating the motion to the rest of the In both machinery. was raised piston by. expansive power steam after its office had been steam, perform- ed, was condensed cold so toas create a water, COURT IN THE SUPREME CASES 406 in de- vacuum the cylinder, permit piston 1822. ; and both scend valves of the same con- pipes was struction for used, introducing alternately v. In what, cold water. did then, steam dif- they Pfer in a which, new modus with Merely operandi, addition of another the cold water was vessel, pre- vented from while it cooling conducted cylinder, steam; and the steam was made to Operate down, well as forcing piston forcing up. this In new a different modus operandi, produced by old construction arrangement machines, the addition of one new to receive and vessel, steam, condense consisted the great invention of for which he obtained his Watt; patent, avowedly invention, new language British “new and not for statute, manufacture,” His is inserted improvement. at length (a) 8in T. R. 96. note where it will that he appear of his invention, as new and not speaks discovery anas and never once mentions or improvement, al- to the old ludes machine. con¿ist

In did this what ? I new. answer discovery with the two of the Common Pleas in judges Eng land who were in favour one of patent, was whom Lord Chief Justice and with the Eyre,a four Bench, who were Judges unani King’s mous on the that it consisted in new point,b prin the steam and which ciple condensed, was carried into effect a new combination old with the addition one new machinery, instru Bl, H. b 8 R. 95. T. Bull, 2 Boulton UNITED STATES.

OF THE “ in relation used The word ment. principle,” 1822. not taken in its subject, this is philosophi to general Evans aor a law of motion where it means cal pro sense, v. Eaton. its me he termed matter; of but in what may perty a method of. sense, chanical in which signifies other a of a or doing purpose, thing, effecting a words, modus operandi. solemn

It is therefore established and ela- by two, borate decision of six English Judges against after great repeated arguments consideration, or carried a new modus into principle, operandi prac- useful tical and effect use of new by instruments, a new or combination old with or. with- by ones, of one more the addition out an new ori- ones, for invention which patent may ginal supported, without reference former invention or ma- chine, for the-same or asimilar performing operation. aas maxim

This which the betaken cases re- will be ferred to found folly support.

Let us now this maxim to the of Oli apply ver Evans. We shall soon see that according established, the doctrine thus was not discovery <c mere the Court below improvement,” pro it to nounced invention. be, original models, learned here two counsel produced one Stouffer’s, of Evans’ one Hopperboy, the difference between their explained minutely prin- or modus which consisted in this : ciples, operandi, in Stouffer’s the arms Hopperboy, through mortice in which the square square upright post made were carried round means pass, by the sides post pressing upon square upright CASES IN SUPREME THE COURT mortice, which renders it arms to impossible of themselves, rise and fall as the meal under them increase diminish while in the might Hopperboy of Evans round, upright post passes arms, are round hole in the which loosely through carried round two of timber of the pieces proper called which are inserted into leaders, firmly length, at their attached ends upper part post, cords, lines or ends small corresponding the arms. These lines and put being leaders round arms, motion trail upright post, at the same time on the loosely post, play rise as the* meal under and and fall of themselves, And to them increases or diminishes in quantity. meal, make them more the and rise on press lightly and fall with more as occasion facility, require, a little is than attached weight lighter themselves, over a the to them a cord which pulley passes of the This balances upper part post. weight nearly and enables them to arms, and down play up much more and easily effectually.

The counsel also of Evans’ produced drawing from machine show mo- office, del was and referred to the correct, facts of evi- dence the record where the machine of Stouffer and its and defects described, properties explain- ed.

He then remark that machine proceeded Evans was constructed a new obviously upon prin- the modus was new. ciple^ operandi entirely both machines was to object great conduci chest, into meal stir, turn. bolting THE UNITED STATES.

OF thither. on its The essential way dry, cool.it if were arms, they operation agents On must of ne- remained stationary they post, in Stouffer’s could not do machine, possibly cessity this operation advantage perform They might as its sink down jfoeál, quantity decreased, rise when it not was but could increased possibly meal when was new; on the Consequently, placed must, bé floor, the machine and the arms lifted Stopt, Hence, its motion unequal, its up. opera- Veiy irregular tion necessarily It imperfect. a hand or^

also required constantly, to be frequently, thus increased present, expense Thus the condensation steam within .Of in Newcomen’s itself, steam cylinder cooled engine, steam, wasted made cylinder improperly, more fuel and rendered the necessary, operation ma- chine and too Here imperfect, expensive. simi- larity imperfection complete.

Evans removed the imperfection Hopper- to its boy, merely intro- parts, adding new and modus ducing totally principle operand'd.

He detached the arms upright jtost entirely, and carried round them means of the leaders and which have lines been them to described, leaving and on down play up so as to freely ac- post, commodate to the themselves or increas- decreasing of meal under them ; and their ing quantity move- ment and he up down, and ren- facilitated, regulated, dered means of the and perfect, by weight pulley.

modus of the two machines, consisted in operandi the manner of round the was arms. This carrying

Vof, VII 0% SUPREME COURT IN THE CASES Evans That of machines. both principle 1822. and new, infinitely superior. Watt of Newcomen’s So remedied defects in a differ- the stéam steam engine, by condensing the ef- from the increased vessel ent cylinder, as the steam above fect piston by introducing a new below it. This was as well principle the two resemblance cases between here again complete.

It then Evans had clear made a new being as invention and not what Hopperboy, merely law this calls an and the subject improvement, an cases that such invention is the showing subject an matter of for original invention; fol- have lows obtained a for might his as invention an invention, and not original merely an This leads to the improvement. for inquiry, ? was this what it for an patent granted Was origi- own, or for invention his nal improvement on Stouffer’s invention ?

have We of this in its authority Court, former in this case,a decision that when we saying in what was it is quire in the first granted, proper place to ascertain what the wished to grantee obtain, next, what had the intention and grantor the . power to Evans wished obtain, give. What fully and most stated in the explicitly sen concluding of his tence After specification.b most ful describing, ly clearly, structure, principle, operation “ thus, he concludes claimI Hopperboy, my

a 3 Rep. Wheat. b Ib. 468. note. STATES THE UNITED OF this which ma invention, properties peculiar viz. the and spreading, chine turning, possesses; and the one ; the meal at operation rising gathering motion, accommodate arms to its lowering Here to on” has mealit any quantity operate itself the effect describes intended is that he manifest, was the same both ma which produced, viz. the chines ; turning, spreading, gathering meal at one and his modus operation operandi, effect, this which was entirely new, producing the' viz. arms^ lowering machine, rising its own so as to itself accommodate motion, of meal. For increasing diminishing quantity this modus he principle, operandi, property claims patent.

It clear that off the equally grantor patent what intended thus asked for is a give ; that for this new This principle. patent trom appears act on which the special Congress, and to founded; refers; terms from the itself; which is ex- it, into as one of its pressly incorporated constituent parts.

As a further illustration of this the most position, celebrated invention of modern times important to, referred an invention which was destined more effects produce than important other sin- effort of human mind. He alluded to the gle sublime, boat; that steam which had conception, con- ferred so much its author and glory country.

What was a steam newa combination boat, off machines, known a steam these a boat, well engine,. SUPREME COURT IN THE CASES all machines most familiar wheel, and a flutter of such But they knew thing who subjects. Evans most as to a and combined new produce so were effect., a new This modus by operandi. surprising and a steam consisted engine

method attaching dimensions ato boat of flutter wheels proper two a in such manner, them and arranging and strength, were set motion wheels flutter the water, instead struck and against steam engine, are in a common saw as struck it, they being oars, act water, as Thus they mill. against striking boat as and or rather forward. propel paddles, in this new machine? Not the Now, was there what and manner combining them, but the instruments, this combina- produced by their manner operating to the author of denied one has no and tion *, yet idea the merit of an sublime and beautiful called in question patent, invention, origihal invention. an how- original He, for patent old combined their machines, ever, changing merely so to suit his new forms and purpose. proportions old combined added machines, not only and means of both and essential parts, new pro- new, modus altogether duced highly operandi can it be said what then, ground, useful. Upon when Watt was so- an inventor, is original not Fulton unanimously allowed to adjudged, lemnly ?sobe contend, that Evans was an

I therefore original an improver that his merely inventor, for invention, is an and not an original for patent so, If decision the Circuit improvement. UNITED STATES. THE OF and the casesa must reversed, two in these Court is established. client my if But it be not invention; original the decision below for an but merely improvement, erroneous, declaring defect This consists, according defective. below, state in the omission to

decision particularly consists, distinguish what machine. terms from it in pre-existent familiar maxim applicable: Here very quod lex ad ad vana aut neminem impossibilia cogit. to do that which would be use- requires nobody

law done, do. is to And less if or it bono cui impossible be discrimination; ; can it and this how made make ? law it On the is what required provision by case de- must to these three answer questions a discrimination it If can shown that such pend. and made, or if is

would be useless impracticable, and it is not required that positively by expressly it will follow/ act of judgment Congress, reversed. below must be make the discrimination ? What

And bono cui (1.) ? do, it it, would could In or- body any good we must to answer these revert der questions, again and uses object specification. The law confers benefit on the discoverer artful consists in a any invention, monopoly of his time. The for a limited invention considera- tion which him benefit, for this .requires pay ; his put invention so public possession as to enable all after shall to use it, monopoly

a The case, present and case subsequent Hettich. IN THE COURT SUPREME

CASES. all to avoid and themselves expire; in'con- involving and difficulties, troversies inadvertently infringing it while it continues. Hence the of a necessity spe- ; uses, extent, cification and we its its here find and said its statute limitations. nothing British but it introduced execu- every tive and condition government, patent,, and character, its have objects, been accu- properties settled by judicial decisions rately England. From it was borrowed those decisions our act of Con- its and into gress, incorporated positive, enactments. In its both uses, systems, -conse- objects and, its nature are the same. Its properties, quently, all is to public object enable the to enjoy after the invention beneficially fully, monopoly have it, shall avoid interference with expired, while it shall continue. what necessary for Now certainly ? more object attaining nothing than the invention should so this, described and where the specification, by writing, nature will and models, as subject permit, by drawings one skilled in the art or science competently to which be enabled to relates, understand, make, This use is what and it. deci- English have sions established as the necessary properties and what specification; statute our expressly, and in terms, requires. vvious, is

Now it that in the case an improve- ment the the same as in that principle exactly invention, invention. original that is, in its must be arid thing improved state, accurately described fully ; and draw- by writing always, models and where the ings nature of the will case OF THE-UNITED STATES. any it is When this manifest done,

permit. so as can understand who improved one thing, it, case, in. distin- and use make may, every possible any improvement every guish original antecedent of the same or sort. Take these thing as an two example, Hopperboys inspect I hands. hold which my Cannot man> any models has sufficient mechanical skill to who make Hop- use, its see understand one at perboy, glance these two machines differ from what each other ? the Court see it ? not

Does Cannot me- such chanic, make and use the therefore, Hopperboy Stauffer, he if should think and avoid all in- proper, with improvement terference of Evans ? it can- be doubted he And so may. person skilled in the art or science to sufficiently which an relates, case. When every possible has the he or the suf- improvement, improved thing described, as the of Evans is ficiently Hopperboy be, admitted to and is informed of any pre-existing or nature, same machine, thing general use, sell, make, or look he wishes can at that with thing, compare improved machine, with models in the description, drawings pa- difference, see the office; tent make and use the an¿3 old the least without of inter- one, original danger Where, then, is the fering improvement.

use or old describing original, invention, improvement; and of discri- in terms, between them ? It is manifest minating, useless, would be such description perfectly cogit. ad vana lex and vain neminem THE SUPREME IN COURT CASES that it use, be of 2. Hut some would might admitting next, of ? This head possible inquiry: I that would not. contend it be remembered, here let And that this doctrine of discrimination is not confined to such inventions are or avowed on express improvements, particu- It inventions. lar extends to all inven- necessarily which that existed tions before. improve any thing In the there so case far at least present happened, known, to be' but now one that of Hopperboy, there in use before But Stouffer, Evans’. suppose been of as had ? different kinds would twenty, many not have been all théy original respect Evans’s, ? man, : antecedent to it or and every Undoubtedly had,‘a Evans’ would have notwithstanding patent, or What use them of reáson them. all, any right of could one require description principle not would which Evans, equally specification is none. There Let us take to all ? certainly apply for an stove, the example improved heat, or for other How increasing object. what an endless- millions stoves, many variety used in the world. are Must the constructions, pa- of this or of this tentee stove, improved stoves, them all in his describe specification, out in terms difference between each of point them, and his invention P It is manifest that he must, to the doctrine of the Circuit Court: and according manifest, it is could that he do equally possibly His it. would constitute a library itself, which no man would could read, also, could office ini- contain. hardly So

OF THE UNITED STATES. 41? and all the mnl- chimneys, improved proved carriages, 1822. titude other real or on imaginary, improvements,- ase, are which obtained, things general patents of the same and having pre-existent things nature, used for the same be described must genera! purpose, which, each if it were specification possible as it write would be, it, far would be very seldom too voluminous be understood or read.

Thus is manifest, it the discrimination con- tended would be useless, well as for, impossible, on in relation improvement's unpatented machines.

Where, indeed, machine already it is patented, it in the to describe very im- easy out all the particulars point which provement, a.nd from each other. The differ original they specifica- in the and tion is be office, referred to: may and are there, model and drawings be seen. may Here rule discrimination in terms requiring between and invention, original improve- would unreasonable : ment, and it not-.be be might useful; prevent tending disputes between the The different mistake we which patentees. com- has arisen probably plain, discriminating between on improvements patented unpatented latter, In the inventions. discrimination is mani- as well useless. In impossible, festly former, it would be be some use. It easy; might might to. it in case, one whether law proper require it To it or not. in the positively enjoins require other, would be to the law is both make what require useless This can be done impossible. never statute, must construction merely Vol. 53 VII. IN CASES THE SUPREME COURT said that the be reasonable. But always submit,. it. statute If we must so, positively enjoins will, has its clearly When legislature expressed us no but to Court This brings obey. have duty, has the what enjoined legislature question, ? subject to relate is con- can be

3. All that supposed 2d 3d-sections. second in the speaks tained It the third specifications. of improvements; directs out the object specification, points its attainment. The be done for shall object what in of the in- to the complete public possession put improvement or an vention, dis- whether original itwith be interference avoided so that may covery continues, its. and benefits mav be while the patent after the the public, expires. enjoyed fully the it applicant this end enjoins To “ a written his invention, deliver description shall or manner using, and process compound- full, clear, and exact such the terms, same; ing all the same from other toas before distinguish things enable skilled in known; the and to art any person or or with branch, which it is which science it is to connected, make, and compound, most use nearly same.,” the This is directory part. the thing “ as to so it be described from to all distinguish before, other, known.” How it distinguish ? things point- known, before and all things describing By opt differs what from it them terms all ? ing of it but so not; giving description Certainly “ to accurate, as enable and any person complete art, make, use &c. compound, skilled OF UNITED THE STATES. for, same.” Is discrimination contended for this statuté, in the

but mentioned necessary P skilled in art means. no purpose By Any person science, make, or use the in order to compound, new to look to the has invention, description He need not invention itself. know how nearly resembles, it differs, from how other widely any before With he known. these has concern. no thing And he wishes other if, use hand, nothing and to before used- avoid with known, interfering invention, or he has patented improvement, only so which wishes tu make or he compare thing use, invention, patented description contained in specification; see wherein they differ, immediately will he uses the avoid while he former. enabled latter, further awith view This directs, 3d) (the section the same inventor, objects, applicant, “ “ machine,” shall in case of explain fully several and the in which has modes principle, of that the application principle or. contemplated character, distinguished Here, in the rest sec as inventions.” other is said as distin about- tion, improvements, nothing are discoveries. all from They original guished Ciinventions,” are as and pre placed treated equally are all to so They same be ground. on cisely be in described, as that distinguished their they as as in their and well modus operandi. principles, from other inventions: and composition, construction of means, not a formal be effected by tois this terms, them, and any between discrimination, SUPREME COURT CASES IN THE or- same other nature; thing things general but of full and accurate verbal aided description, models, where the by drawings, specimens; such a nature as to matter admit their use. In “ this, is said or all hinted about nothing improve “ ments,” as dis from contra-distinguished original “ All are coveries.” treated alike as inventions,” same means all concerned, enabling them or used, from before known, distinguish things are relation both. provided “ fact, what is In an abut new in- improvement,” ? that is vention made better im- Every thing makes another ; thing every proved thing it in a is an or does better improvement. better, way, it is an invention so as new, it be far If goes. is the in- improvement, greater greater : differs from vention improvement any any other, from an if there or original discovery, but not in nature such thing, degree. They may or inventions more or less less; be greater inge- or less more asfar as useful; are, nious they and are are all treated inventions, so they precisely which, alike law; portion I mention, makes no aiid no repeat, hint gives again a discrimination, im- between improvement, provement, thing and the original thing which the improved, is made. them all Treating alike as “ inventions,” it all, requires, respect shall so described they clearly distinguish them, as to all enable concerned to distin- is, them all other the same na- guish things STATES. THE UNITED

OF the sta- construe To or known. ture, before in use not tute, as to it only so make require description the same all invention, but of new things in a discrimination before and nature known, general in as unreasonable them, would be terms between dis- as of an of an the case original improvement, unreasonable be would and perfectly covery, do that which would make the statute It either. law can do terms and

its not indicate, make re- It it would to intend. never presumed va- is not what it great only impossible quire would what, if cases done, riety do, This can- case be w useless and vain. every holly ad toas for neminem be so construed require: ad lex ant vana cogit. impossibilia where then 2d counsel section,

The adverted said, was might supposed, something doctrine found to discrimination. support section of. That particularly improvements, spoke It said which the third silent. wholly its whatever objects specification, nothing It- made both useful as de- motive. two provisions, on their the lawj clarations persons put guard but both undoubtedly law, prevent mistakes, such declaration. first without any was, of an discoverer patentee should not be entitled to make, before thing patented, or vend nor the inventor use, paten- original 5 make, use, tee or vend the original improve- Here were both considered as-in- ment. they again It was both on the same ventors, footing. put information, declared, prevent general 422 IN CASES THE SUPREME COURT doubts and that mistakes, one should not be entitled

1822 to the invention of the other: but said was nothing about manner of these inventions distinguishing one the other. That was left to the third sec- it was ; tion done where without the least mention or hint the formal terms, of in con- discrimination, for in below. It was judgment manifest tended discrimination derive this could no countenance of second section. from this branch It obvious- derive none from the other could which ly branch, information giving public, merely, pre- “ mistakes, declared venting simply changing machine, or or form any proportions compo- in shall not be deemed of matter, sition any degree, This amounts what a merely discovery.” saying, have been the construction of law with- would clearly declaration,' constitute such out patenta- either or there improvement, ble by discovery, original new or modus and not abe must principle opercmdi, of form or If proportion. change change merely be such as to or should of form proportion produce then it would or modus new operandi, principle it amounts to an whether á invention, discovery : and im- here only improvement again original inventions, treated as were equally provements distinction them between discoveries; original nature, in in. degree. merely being ex- has been under consideration But the point : in case this decision settled, the former pressly this for want discrimination, the same objection, trial on first the court in below, made down laid subject doctrine expressly the same OF UNITED STATES. THE formed one this Circuit doctrine Court: stated in the distinctly grounds objection, Court, and was of the cáse this former argument with this Court: and noticed part distinctly distinct- below, it, opinion objection on this this same this Court decided ly view, its valid, want of notwithstanding discrimination between in terms express was an and the invention; original favour plaintiff decision on point, He various error. referred to report parts Eaton,a of Evans the these case support former the cer- Court remarking, although positons; its not bound own deci- absolutely by tainly was them, overrule when satisfied of ought sions, the incorrectness; were land- yet they great their not to overturned or the marks of ought lawrand and clearest reasons. the strongest without shaken, the also cited authorities counsel The learned to the objection cited in margin, below, ground upon Court charge of the re in jury, it had invaded province proper and to to the the.specificatión, sufficiency spect as an invention, nature patentee’s or an discovery.b original Story March20th. delivered

Mr. Justice opinion Court before the same' case which was

This is. formerly 454. Wheat.Rep. a 3

b 497. 8 T. 99. 12 478. 484. R. 101. 103. 1 Gal H. Bl. Mason, 1 189. 191

lis. 481. . CASES IN THE SUPREME COURT 424 Court, this and is in 3 Wheat. 454. reported Rep. to that a reference the form of the report, vs. nature action, patent, subsequent cause, will now fully appear. proceedings, comes before us writ error to the upon judg- Court, ment of the rendered new Circuit upon had mandate of trial, in pursuance Court. the new trial were several taken

Upon exceptions The first was to the the counsel for th"qieS! plaintiff. in petenfonC°the asimilar the hume not dicament standing' in Prenáer"lB ac¿íon° pre. defendant. admission trov3.rsy whether the between the of a Mr. It plaintiff to be Frederick, parties observed, entitled to recover for an at the new as a witness that the trial sole was, con» breach his the defendant patent by te«Us!d his improved Frederick, using Hopperboy. denied that he examination on the voir had dire, cause, or that he was bound to con interest in the of it. said He he. had tribute expenses mill at then in his being Hopperboy present, it was about three mill weeks Court; to a when down to bring gave person ago, that his Hopperboy Philadelphia; spreads meal, it, the cools it dries .and some, turns gathers the chest. this the evidence bolting Upon plain counsel that not a tiff’s contended Frederick was witness, but the was overruled competent objection the Court.. It does not this exami by appear nation whether the Frederick used by Hopperboy as was that not; by plaintiff, improved are we that witness suming was, opinion OF UNITED'STATES. THE admitted. It is clear, rightly perfectly per an son interest in the and not having question, only the event of the in is a witness suit, competent in of a to a witness like general liability action, or his in the same predicament with the standing if the verdict cannot be in sued, evidence party given him, for or an is interest question, against does not him. If exclude had been con nothing case, in this as to the troversy validity itselt, and the issue had been general only pleaded, would have fallen within present objection gene the:special ral rule. But notice in this case asserts if and found matter, true, specially by authorize Court might adjudge pa jury, void, and it that this constitutes tent such supposed interest in an Frederick in event causé, rendered But in thereby incompetent. Frederick stands in the same this situation respect, other If the person every community. pa void, is declared tent the invention used may whole all persons be said community, to have an interest in it public But making property. results from a general that a principle law, can take a void nothing and so far

party patent; as such interest we think it is to the goes, credit and not of the witness. It is competency the verdict in this if case, cleairthat for Evans, given would not be evidence in a suit against Frederick, but Frederick would entitled contest every cause, in the same manner if step no suit had such existed. Non constat, Frederick himself will ever be sued that if plaintiff, Vn.

Vol. (cid:127) CASES IN THE SUPREME COURT sued, can be had any him, recovery even if against should plaintiff’s not be avoided suit. It rests remote therefore contingencies, whether will, Frederick under circumstances,

have an interest in the suit, event of this and the law when he has adjudges party only incompetent certain, It interest. has been contingent inclination Courts of law times, in modern to lean to testimo generally, against exceptions This is a case which be considered some ny. may what and we to admit think it safest anomalous ^ its testimony, leaving credibility thejury. ofTltheprasíate Another was to the refusal of the exception sanction '“the ¡íí Court allow to be read deposition plain- depositions had which taken been to a tiff, according prevalent ts Couunite°d taken lot are State Courts. It is not practice pretended deposition according was admissible of íhe laws ° States, United law, rules of of the Circuit positive rules oiMhtf oftheirCourts! and it is hot now so we Court'; can produced, see what were the circumstances under it was taken. No can however ¡practice, convenient, give which are not taken accord- validity depositions to law, or the rules of the Circuit unless ing Court, or, waive the parties expressly objection by pre- vious to have them consent, taken agree made evidence. at This objection, therefore, once may Inconvenient Jjg dismissed, unnecessa- ^ however, The at the bar have principal arguments, spreading been against urged charge given by Circuit inraterao^fn n tHc record tn Court cause up summing jury. in extenso record,

charge, spread upon prac- tice which and inconvenient, unnecessary rise to minute criticisms give observations ÜNITED OF THE STATES. introduced, for

apon incidentally points purposes 1822. and no means essential illustration, argument the In merits of the cause. causes of this na- ture think "the we substance of the only charge to be and if it examined; the whole, appears, upon expounded law was the justly jury, need and would expressions, general if receive were the direct qualification, they point are to be understood in such restricted judgment, sense, has been that the whole contro- stated,

It already the trial turned the use at of the versy upon plain- tiff’s other of inventions, no the in- ; Hopperboy cluded in was asserted his to be patent, supposed the defendant. pirated with a view to the maintenance plaintiff,

of his that his so suit, far as contended, patent, the had double respected aspect. Hopperboy,.

1. That it was to asbe for the whole the patent of the whole machine improved Hopperboy, is, his own invention. 2. That if not susceptible an construction, it was for improvement upon and he was entitled to recover Hopperboy, the defendant for against using improvement.

The defendant admitted that he used the improved his defence two Hopperboy, put upon grounds: 1. That machine, if the i. e. for was the whole was not improved Hopperboy, plaintiff inventor of the so patented: improved Hopperboy That if the was only de- did not upon . Hopperboy, nature and extent the improvement: scribe. IN- SUPREME COURT

CASES THE still and if it did, patent comprehended than invention. machine, was broader whole of these To the examination points, summing the attention Circuit Court evidence, up is, whe- directed question exclusively to the matters of law ther respect charge, was erroneous to these involved in inju- points, ry plaintiff. same order consider

We will the points- Court. reviewed the Circuit in which were they far as his Was so of respects plaintiff, patent a for the whole ma- improved Hopperboy, It is not own chine as his. invention ? disputed and sufficient does contain good and of of description improved Hopperboy, it; and if manner of there had been constructing it would have on this been mat- any dispute subject, of and not of law for the for the ter fact de- jury, his The in cision of the Court. plaintiff, specifica- his its after tion, describing Hopperboy, structure, “ as : sums his invention follows and I use, up claim as invention, my peculiar properties machine which this possesses, principles the meal at and one gathering turning, spreading, its and the arms operation, rising lowering motion, to its accommodate itself to any quantity has to From this of meal it man- upon.” operate invention, ner other without quali- stating any fication, claim that it such just apparent if use of as wmuld made plaintiff, its whole structure machine substantially not state does combinations new. The plaintiff OF THE UNITED STATES. improvement an

it to be ma- upon specific existing his claim to that but chine, confining improvement, invention he In short, substantially original. the machine claims new in its substantially pro- that is say, the modus perties principles, this be If this has been con- true, operandi. struction strongly pressed upon earnestly Court in the at plaintiff’s counsel, argument term, what are the present legal principles flow from this doctrine ? Patent Act of the 21st 1793, ch. 1!. February, which the upon validity of our authorizes patents generally depends, patentto inventor, for his invention or iu any art, new and useful machine, com- manufacture, not matter known or used before the position ap- It also inventor of an plication, im- gives or in the provement principle any machine, . of matter any composition which has

process been an exclusive to a for his patented, right im- iá to be at liberty to provement use the nor is the first inventor at original discovery, liberty use It also declares that sim- improvement. or the form the of changing ma- ply any proportion or of in chine composition matter, shall any degree, a deemed not be It farther discovery. that provides, a trial for violation of any the the patent, party due notice may evidence, there- give having given of, matter to that any special the tending, prove does not contain the whole plaintiff’s specification relative his truth or more than discovery, .contains effect, the ad- necessary produce (where or shall concealment to have been to dition appear SUPREME COURT CASES IN tHE deceive that the secured or .the public,) thing was not discovered patent patentee, originally m been or had been described some use, had of work anterior to discovery public the.supposed obtained or that he had patentee, surreptitiously in either of

a invention and person’s provides for the shall these cases be rendered judgment costs, shall be declared plaintiff, patent ?nd void. It inventor, farther before requires, every or can receive shall swear affirm the patent, “ shall deliver written truth of his invention, invention, of his manner and of the of description same, or in such using, compounding process futí, clear, to distinguish terms, and exact same kqownj all enable before any things -is the art which science, skilled in person connected, it most or with which biáncb, nearly and in the case make, and use same; compound, machine, the several he shall fully explain heffiap . modes contemplated application which it or character principle, frpm other inventions.” distinguished Distinction enumeration of provisions From this between pa- for tent cannot himself that the entitle it is clear act, party machine, whole an im- for and if more than his own invention ; for to a.patent provement. Plaintiff en- known, before before includes pa- his things patent to a titled in- tent, as the to recover, entitled invention, he is not as his use, ventor Hopperboy. there- his invention. than If, is broader machine, of a for the whole fore, a title to maintain establishing only by can party mode its structure and new in it is substantially existed If the same combinations be- operation. OP THE UNITED STATES. machines

fore in of the same to a certain nature, up the invention party’s consists adding point, some new some mode of machinery, improved ope- ^0*' ration, old, the should limited tosuch for if it the whole improvement, machinery, includes invention, it includes more than his and the refore cannot This is view of the law supported.

on this was taken Court. point, by the.Circuit Court into a That went full tes- examination also of the structure of Evans’ timony, Hopper- and Stouffer’s and left it to boy, Hopperboy, whether, to a decide, certain two jury up point, were or machines were not the same in principle.

If were same in dif- they principle, merely fered in form was declared then proportion, that the not entitled to recover; plaintiff was or, Court, use the if the were language’ jury that the was the inventor of opinion plaintiff n recover, he was not entitled unless Hopperboy, awas case from the excepted general operation act. We of the no reason dissatisfied perceive be. this it left the fact part charge ; open as to law. instructed them jury, correctly verdict

Ano the negatived jury right the inventor of the whole machine. plaintiff, next before the Circuit Court was, inquiry case was from the whether plaintiff’s excepted casfla'"Óf’ex- act. that it is unne- operation Upon general genlrai'patem. la"' the. more than cessary say point expressly this Court decided former upon negative, _ of error. writ And we think the opinion Court, occasion, under- delivered on that is correctly 482 COURT ÍN THE SUPREME CASES It could the stood Circuit Court. by expounded

1822. -*Fv'**/ Cour{ been to declare, have intended this by never .Evaas jn ,jjrect the of to the terms patent opposition very recover, he was entitled that act, although party of the been inventor not

should to have proved entitled should be the that machine patented the patented recover, notwithstanding machine There to his discovery. use was in alleged prior the in judg- drawing up slight undoubtedly error error; the former writ Court upon ment the an attentive it is corrected peru- immediately that itself. And we do not think the sal of opinion than in the man- stated.or it can.be better explained which, it. has the Circuit Court ner in expounded the other led to We are then. the examination of view which the counsel have plaintiff’s point ' this That maintain con patent. is, attempted as a for the it, whole of the ma patent sidering but as an chine Hopperboy, improved improve Considered under this as ment Hopperboy. itself which was presents point pect, urged counsel, if viz. that it be defendant’s for patent void, because ah it is nature improvement, extent of the is not stated speci The Circuit into an elaborate Court-went fication. of the law to this examination applicable point,, into á construction the tferms itself, patent no distinct came conclusion improve- . that such was merit specifi patent; specified

cation in a improvement, necessary patent.for and that for entitled defect, this was not plaintiff recover, to be for an improve supposing STATES, THE

OF UNITED It of an justly machine. existing ment only the cause; arises at this all whether point doubted, Evan? they have been terms of patent, very Eaton, , construed have been considered, they already counsel, at at the present the. plaintiff’s bar-by n argument, establish, almost seem conclusively machine, for the is, for the whole and not for whole of the improved Hopperboy, But, old mere improvement Hopperboy. upon at asserted doctrine can waiving point, of an be bar no im maintained, specification it patent; is and that in the is necessary provement at the out and shown be if trial, made: sufficient the machine established or comparing may in patent the with former in machines use? specified po of. distinct there is im specification That is not in denied; present patent, provement is the of is without in it, good patent subject to this be decided reference Let quiry. pa tent act. section of. the act requires, third u

has been stated, that the shall de already party invention, liver written such in description clear, full, exact as to the same and terms, distinguish all other from before enable known, things Src, or science, skilled the art in &c. any person the same.” The use make, compound, one two is to has make then, objects; specification, manner known machine constructing the the invention is of so toas enable arti amachine) (if use thus make it, public give sans full benefit after expiration discovery 55 VII. Yqv, CASES IN THE SUPREME COURT

1822. of the It not is that the pretended patent. plaiutiiFs is not exact and sufficiently respect Eváns^ minute But whether it or be so description. Eaton not, not is material to the The other present inquiry. is, public put pos ubject claims as his session what own inven party as to if he tion, so ascertain claim that is in any thing use, and to or known, common already guard against the use of an invention injury prejudice otherwise innocently suppose party therefore, It to be is, purpose patented. innocent other purchaser of warning person machine, of infringement patent ; using his. from the inventor the same time at the taking or the fears of upon credulity means practising that his invention is other pretending persons, is, or different from its than what os really more that the to dis patentee required tensible objects, in his his invention specification. Nothing tinguish words of direct than the act. more very can “ describe the invention must The specification and distinct to full, terms, such clear, distinguish known.” How- all other things the same before from of an sufficient be can that specification improve does which not machine, what distinguish in ment is, state what it nor nor consists, the improvement Which extends ? describes invention far how as a and accurately, whole, fully mixing machine in the does not but slightest new and de old, up or limit of is the nature the im what explain gree as his claims own ? It party provement such a clear that us specification to perfectly seems STATES. THE UNITED OF 1822* is that not party do say We is indispensable. are machine; we of old to describe bound own im his what describe to ought Eaton, opinion to such improve his limit patent is, provement with the view indeed, For another ment. purpose, it the machine, may construct artizans of enabling of the old so much to state him become necessary-for of the struc his will make machine law But the complied sufficiently ture intelligible. other

with in relation point, distinguishing, extent, terms, the nature and and exact full, clear, his only. that the not consider the Cir We do opinion material cuit Court this differs, respect, act on of the this and if the patent point; exposition is to be considered aas patent patent plaintiff’s an upon existing improvement- Hopperboy, defective specifying improvement, not to recover. therefore ought plaintiff it is the of the whole, opinion Upon majority that the Circuit Court, judgment Court costs. be affirmed ought Livingston Justice dissented. At

Mr. this late is in when his patentee grave, his period, death, natural we has are called expired patent ever had a whether legal say, existence, seem not important may very represen- what tatives decision patentee Court, But understanding this other many ac- are for a violation tions pending part and that infractions have taken right, place for actions may yet commenced, w.hich believing CASES IN THE SUPREME COURT that the decision we are about to make will have a extensive, if not disastrous very on ma- bearing other and will in fact ny patents improvements, to a amount them, I have many repeal though reasons for my assign from the proper dissenting delivered. just opinion this, remarks will be doing my confined princi- Court, so far charge

pally as it applies to the claim of Evans for an on a improvement Hop- perboy.

I was much struck with the argument plaint- counsel tiffs in favour of the for an ori- patent being for an invention, ginal nor improvement; it in construction, be a would forced my opinion it as a. for a combination of regard machines to Certain and not for results, of the ma- produce nor different chines, which the parts whole is composed.

But it as for an considering in which it had of. been Hopperboy, light regarded, Court, well Circuit when this before, here I cause was to examine the proceed to this so far as relates of the sub- part charge, ject. afteV in what

The Court, stating particulars contended. counsel that his improvement plaintiff’s consists, repeat here, unnecessary pro- ceeds— laid has before evidence plaintiff you strong is a more useful machine Hopperboy prove one which have been

than alleged previ- If, then, are satis- and in use. discovered you ously has of law which been of this fied point facti STATES. UNITED OF THE be con- to remains counsel the defendant’s raised by for an im- the which is, patent sidered, plaintiff’s extent his the because nature void provement ^ the is not stated in specification. improvement “ for The Hopperboy, improved patent is referred to which described specification, How does and made speci part patent. what consists ? his

fication express of the entire ma It all states and each parts chine, its use and mode claims, operating; or his invention, properties principles peculiar viz. the machine, spreading, gather turning, of its and the arms meal, lowering ing raising the meal its accommodate itself to un motion, does it. But der im description designate or ? in what consists Where shall we provement, described, find the either as to original Hopperboy construction, its or reference use, operation, of it be ob any thing by knowledge tained ? Where are on such improvements ori ? stated The undoubted truth that the ginals is, spe cification communicates no information whatever of these After stfme farther upon rea points.” on the soning subject, showing plaintiff’s case is not from the rule of excepted general law, the act which relief, was passed Court for this imperfection omission declares.that in the u is not entitled to specification, plaintiff recover for an of his alleged infringement for the on This (cid:127)improvement was Hopperboy.” equiva lent that for this defect in the saying specification, (cid:127)the for the improved and, Hopperboy void,

CASES IN THE COURT SUPREME of course, that no at all, action be whatever might state of the could be for the use maintained evidence, of it. It . left as it nothing, regarded improved is the for the decide. Such Hopperboy, jury and it is too be delivered terms plain charge, misunderstood. considered, to it are now to objections will shown, this it doing

1st. That defective, and is not it does not discriminate in what par- although the machine in ticulars does differ from other question in if from the of the de- whole use, Hopperboys yet, taken the machine is so scription together, specified and so as to be and minutely, accurately, directly from all other distinguished easily Hopperboys'ante- has been done which cedently known-, every thing law is and the requires, patent good.- be 2d. That if vicious in the specification be mentioned, not to con- the patent points ought sidered as is and the void but it absolutely enough, if be ta- interest care public sufficiently guarded, ken that shall to create mono- not be extended machine, in not other which poly may may mentioned in the which was patent, previously or in known use. And,

3d. if That aside for such must be set de- fect be left to the in should specification, jury, whether the im- before decide evidence them, all forth with be not set necessary provement'patcnted precision.

1. I have is not defective. said seem but In it would question, this determining STATES. UNITED OF THE of a granted validity and that the natural just be tested should act under Congress, particular of our decisions used, the terms there and that are of Courts, authority, so own far they cautious adopting we should extremely countries, other into introduced been rules which have our like own, laws not in and under every respect be which the tribunals may however respectable the more this have espe- rules ; those prescribed which as most of the decisions England, cially, been seem have are to. implicitly cited, generally subse- of a date are followed long country, them revolution, many posterior quent in this laws country, the patent to .the passage in the contem- therefore have could been which at the time. there Besides, Congress plation ato somewhat constantly applying pa- hardship made on a tentee in this Bri- adjudications country, unlike and with tish of Parliament our act own, very has no means of decisions ac- becoming until after of fhem can knowledge quainted long be of service. have we extended any Already pa- machines, for on several tents old improvements recent decisions England, although long late in that and as doubted 1776, country, year the 21 Í. c 3. could the^ct of James whether there by for an addition be When only. patent English of decided favour such Courts also patents, they construction, for made rules their as cases there arose; direct no in the statute on the being sub- provisions have we law, As not for the provided only ject. new, of but also for inventions entirely

security CASES IN THE SUPREME COURT of those who protection discover may new and any useful &c. any art, machine, known or used before, and have the terms prescribed on which under it patents bemay obtained, it would if all those seem, terms are in- complied with, useful, vention new and that no really Court can have add terms, other right require aof more than patentee any what law has thing on him. Let us how before us enjoined try patent this rule 21st II. February, 1793,c. :--The.act after in what cases letters for inventions stating issue, obtained, and how are to be they may requires, inventor, before he that the receivés inter his alia, pa- a certain shall deliver tent, take a writ- shall oath, of his and of the manner of ten invention, description clear, in such and exact same, full, terms, using the same all other to distinguish things from before known, and to enable skilled in the art or any person branch, it is a science or with is most which connected, to make use the same. And in nearly of a he shall the case machine, fully explain in which he has and the several modes con- principle, of that or charac- principle, templated application which it other in- distinguished ter and he is to the whole ventions accompany and written where nature of references, drawings admits a model if the case it; machine, is State, also to be de- required by Secretary livered.

In present case, improved Hopperboy; particular description which, its will be It found uses, in Wheat. Rep. THE STATES.

OF UNITED machine, if made not that this in confor pretended Mr. Evans, with could mity giverr description not be from in fact else be every thing distinguished fore into when with known, it, brought comparison nor that a skilful its would from description, person, be W'hieh it; not like able make one would seem.to lawr. But defend every requisition satisfy ant’s counsel It should say is not enough. in its be different

only organization aggregate every else,- in from which it respect every thing operation in its construction ma differs from other Or be should in chines. stated minutely specification; wmrds, or, in other that other machines heretofore be for similar should either used described purposes, or referred differences therein, between the machines and those be care patented use, former fully designated. to this that the does answer not re- law is, it is it—that would of no

quire impracticable, use. the law seen have no

We prescribes already which would have been form specification, precise no fo obligation imposes describe, impracticable, question. the machine Not mode, particular said a w'ord is as to in what particulars showing differs all from other patented machines If, then in úse. for the same on the whole purpose taken machine of description together, plain tiff other can machines distinguished wrhen words compared his, the law objects are satisfied. The law have appears else nothing view, in than the requiring specification, instruc

Voi..VIL SG COURT IN THE SUPREME

CASES ; n a is, that tion of to them the public guard against violation of the enable and to patented improvement, them, letters the the when from speci expire, to a the one fication make machine similar to filed, there which had befen patented. only inquiry, be, to -whether this obvious intention fore, ought has been answered by legislature particular which be the specification may litigation subject and if to either appears, prevent person enough or on from encroaching right patentee, which machine skilful make enable person not resemble shall one patented, produce only the like more not to be effect', required. ought Whether ends be these de attained particular machine, or scription part- every improved in what it differs other from by describing respect can make no difference. The informa machines, tion to the is as valuable if public intelligible, so, more than in latter. not former case, be, If it taken machine, an for altogether, improved results, and so de purpose certain producing scribed it that be from other may distinguished ma chines, and that others made on same it ais literal model, with all the law compliance If requires. different machine, parts their combination, or connexion, be de accurately or forth, scribed, set should not intelligibly why no reference be supported, made although other machines construction, dissimilar which, are same although applied purpose, inferior in the beneficial them. results produced by To the objection, that does precisely appear

OF UNITED STATES. THE those, differs from ante Hopperboy what the is, to be and it the answer ought in use, cedently does conclusive, .not patentee metfii Eaten. from any restrain those public using abridge differ, de so one machines, other that they mechanic, on scribed by him; having him, Can.avoid interference his before To our examination invention. confine produced w$as only Hopperboy Stouffer’s was called trial, and which Hopperboy, has a model been exhibited which and of awith of Evans’ Court, model improved together a for. can doubt be an in entertained Hopperboy, me thar stant, are that very dissimilar, any they a would in out the- dis not, chanic moment, point between specification tinctions them, either not able or model —or be to make that he would improved of or Stouifer Hopperboy Hopperboy, ii,ke and in Evans, as directed manner he be might to when discri he would brought able, together, artd minate other between that any Hopperboy of different, those were so Evans, they that- provided of desirous on an who were having Hopperboy, construction, and old of not with the interfering Mr. no of would Evans, labour.under rights difficulty But whatever. inasmuch has not himself his exhibited discriminated or all the in specification difference between his other points Hopper- isit that his is for some boys, supposed Hop use, as well as for his already perboy thereon. terms his very specification pre cluded If kind. there every supposition 444 COURT IN THE' SUPREME CASES machines, those thousand of different wore constructions, before of his use the date patent,

.E.wms he leaves undisturbed public enjoyment not, meddles He nor them. does pretend until or use interfere make any them, they his model. all its constructed, one parts, upon alone, he and that form claims form, That been not have It would improvement. invention authorities, to difficult, show even from British I recur sufficient; prefer specification criterion as the our own law only proper ring of the specification invalidity validity is, has all the cer opinion My question. required which bylaw. tainty the Circuit as is Such required by law, me, but, is not Court, prescribed only not im- difficult, to be one if extremely appears practicable. improved

If ot inventor Hopperboy im- discriminate, between his in his specification, particular Hopperboy, provements produced is to trial, and be non- on that done, correct, however not and suited for so, having be other he it every distinguishing may respect, all other and if do the like as to must Hopperboys ; all he must describe he describe others must any, he aftei which be and, with acquainted all, may of trial, be introduced he one at some which may never heard, he had had never or which seen; not stated in what inasmuch as he had respects machine, was his this would improved although by be not seen on must immediately inspection, OF THE UNITED STATES fail of vio- only manifest recovering damages for lation of his but must have his declared right, void Court, without trial be by jury, of fruits a most valuable deprived improve- ment, not because he was not the bona inventor fide -—not because he had not described his improvement with sufficient act of Con- certainty, according because more was gress something required —but him, of which he had no means information.

The only made its which Hopperboy appearance that, this known trial, except plaintiff’s, the name of the but non constat, Stouffer Hopperboy; may that there not have been a hundred different use, kinds in and some unknown entirely plain- tiff. If he could all, have described them which would been an easy have and stated in what task, particu- speci- his lars differed from them his Hopperboy all, have fication would extended to an immoderate after all have been less length, intelligible than full such as is satisfactory description, given all the here, which his parts consisted, manner are they pot together. improvement be cases in which an may There as to it at so describe once reference to simple or machine as in the improved, case of an thing kind on a common watch. Cut if watch, the case of a even in improvement per- machine, compliance vades whole would law, the terms if the patentee described watch, of his with its every part principle, improved without in what discriminating particularly respect wheels, all &c. from other watch" different varied

CASES IN COURT THE SUPREME esthen in use. have been for obtained Many patents locks, on ever but has.it stoves, &c.; improvements cases, not in such been only required patentee, stove or is con- to describe w lock hat manner structed,, from such con- benefits resulting struction, out in which but to particular every point ? This, differ from those in use say they already least, labour, Would be work of little great who at or no use to the would be liberty public, interfe- construction, not a stove lock use with described ring one the patentee.

. tew will show such A observations descrip- for, would contend counsel tion as defendant’s Mr. Evans one which than the no use be greater discriminate all has After adopted. pains recur, how still* would taken, had been the question ? to be constructed is the Hopperboy improved , be ascer- that could not if, from the specification, be tained, then, then pronoun- only, ought if, im- But ced description, defective. skillful me- be made could by' Hopperboy proved informed, of what chanic, not then the only public still common j what remains but been has patented a violation and if action before, brought that the should appear right, patented construction, such not of used is Hopperboy said, cannot It suit. fail in'.his must plaintiff be ndt if made, discrimination any justice, improvement, includes only engraft- old machine UNITED THE STATES. OF ; still femains old machine property ed. The public can one nor any person used ; may by every until he right, patent considered infringing in use improvements machine adds already a words, until he makes other in or, patentee, the one which all in its machine parts, resembling, is in described specification- be, defective if the in

2d. But mentioned, is have been patent points ? is a void This of vi- therefore question necessarily tal patentee. every importance am aware it has been said

I England, than must not be more extensive the in- patent - if the invention vention in an therefore, consists im for and the is the whole ma- patent pro,vement only, it void. But I am not aware that it is fias ever chine, when for been decided there that is an “im- patent is, out machine,” taken for the ma- only proved net the machine as before chine thus improved, But void. whatever that such used, patent late decisions in that some of the have been country, course, it better consider and think I prefer, own w under our in this act, also hich, this question statute, from the is different English respect} us more afford and be a safer therefore light, will that statute or the on it. In than either judgment guide asked, of our it be is an then, au- act, may what part, to declare Federal Courts patent thority given however for a defective innocent- void specification, its can and whicfi no consequences injure made, ly in this state the ? I because way, one question that if to show I think conse* necessary injurious CASES IN THE SUPREME COURT flow from an quences might imperfect specification, must be declared but be- necessarily void, cause 1 think must be admitted that there no evi- dence whatever cause, in this to induce one to take, believe that Mr. Evans either intended he did a patent receive for any thing beyond invention, which was the the im- Jiioppcrboy condition which he To de- describes it. proved for a clare useful ab- highly void, a defective solutely merely.lor specification, be if this is a and should very high penalty, one$ be not unless inflicted, lightly rendered absolutely more law as without re- necessary ;tne .especially, to .so a a Court and harsh will measure;, curring jury a be able on always patent remedy, confine actually secured, violations the improvement if should so’ be or .as patentee foolish, ill-adyised, its reach the machine within in attempt bring unimproved state, or other before its any machine common, it, he would do not with no only prospect ot a but with the attend- success, defeat, certainty a As ed with very heavy expense. therefore,,as long, action, could maintain no his he improvement, he should with so it is be visited perceived why a hiá im- as the denunciation forfeiture heavy some construction of merely because, by provement, specification, after all mistaken which be his a might invention, had included one, something nature, already ever so which was known. trifling, on law, if such tile tenure such be the frail But it held, are which these however hard may rights But cases, it its course. must have apply particular STATES. THE UNITED OF that we have duty, our right I think cannot account; but that void on this a to pronounce to a confided is office exclusively jury. this important will now be ex- this not, have we right Whether were intended authority summary If such amined. pa- on Federal Courts, conferred been

to have been, have and would have been, tent law ought from is so far This explicit. being case, law, but of kind, different provision, subject, not the on inserted very James. It the statute that it foreseen, case .was either from the sometimes must imperfection happen, of a that de- or, patentee, the ignorance language, would was also made; fective specifications imperfect foreseen, specification might with a view of made design, deceiving find it law, We public. provided accordingly other matters which defendant that among action for in an infringing patent right, is, rely “ filed does not contain to his or that truth relative it con- whole discovery, is the than described necessary tains more produce or must effect, concealment, addition, which fully for have been the made deceiv- purpose appear is If rendered for the de- the judgment public.” ing patent is on to be declared fendant this ground, for an well This section void. applies patents for an an in- on existing machine, intended to was vention new; protect entirely an for an in either avoidance case against the patent invention and innocent specification imperfect therefore, which defect If, alleged, patented.

Vor,. VII. IN

CASES THE SUPREME CUURT the, really exist in im- specification patented the Court is not on provement, its mere authorized, to declare it and the inspection, imperfect, on patent, that void. Both account, are questions clearly fact, and are so questions treated by legisla- ture. The has a to insist party right jury, that not his but that if only perfect, it be no was otherwise, intended deception on the and on either find a public; ver- ground, may they his dict favour. So on the in- if, allegation, secured not was discovered thing by patent originally verdict a patentee, by passes against plaintiff, like his In he loses in this manner, case, patent. if “ had .appeared improved Hopperboy,” was the secured had which not been thing patent,, Mr. and a verdict Evans,. discovered originally on there him would had ground, against passed an From the end been tenth patent. have also, be drawn against section, argument.may void, a Court declare mere right redundancy deficiency speci- inspection, a mode of This section fication. provides proceeding where there Court, District before reason obtained was believe surreptitiously, if, false on such suggestions; upon proceeding, that the true it shall in- appear patentee be rendered such ventor, shall Court judgment This is the for a case in repeal only patent.. aon is conferred to vacate a power Court, without the of a intervention a If jury. pro- patent, of this kind had been before instituted ceeding, Court Mr. would tribunal against proper Evans, OF THE UNITED STATES. witnesses, its have formed

have examined opi- and it is not clear that even their on nion testimony a have called in. this case not been in might jury Eaton.' bas that been taken notice show This section of, have of it could never been intention the legisla- be avoided, a should on account ture, patent of on the Court alone, without whatever, the-opinion examination other some than that the specifica- be its or excess, whatever tion, might poverty it been intended to so If had vest im- description. in the not have been Court, power would

portant have left mere would been con- implication, terms of no ferred in doubt. admitting My opinion, is, this that the Court therefore, on charge part itself erred in taking upon pronounce void, if the had been specification defective, even the im- not what particularly describing imperfect, patentee were; be’ing power provements to a all cir- who,-under jury, delegated expressly are to decide both case, cumstances questions whether defi- fact; is, specification intention cient, superfluous, more, once so. I made whatever repeat which are been decisions have England, has view which admitted contrary taken of are not been subject, they here an act so are different very upon authority, own, afford as to little or no our structure its One information subject. great useful the, laws two is—-that difference important I. has not mode in which James prescribed statute a vicious be set aside.

CASES IN THE SUPREME COURT on that a condition granted specifica- be enrolled. tion

I on the arise no. opinion questions give admission certain who were witnesses, in- be on the score of supposed disqualified, being for ; terested if the be void, Hopperboy for a defect in its question specification, referred to and such not to understand I jury, it is un- to be the four very opinion judges, in this error was committed whether any important, cause the Court before which respect as a verdict ever be rendered tried must against representatives what- patentee, ground, the state evidence. ever may Mr. Justice Mr. Justice Duvall, Johnson, also dissented. affirmed with costs.

Judgment

Case Details

Case Name: Evans v. Eaton

Court Name: Supreme Court of the United States

Date Published: Mar 21, 1822

Citation: 20 U.S. 356

Court Abbreviation: SCOTUS