O'Reilly v. Morse

v. O’Reilly et al. Morse et al. establish, her, and much less as to such them; they do an aber- of a ration mind would or justify imbecility presumption, conclusion, less' a and much of legal against validity she To and act such conclusion might every perform. only of and belief could the of expressions opinion these general and a conclusion

witnesses such come far short apply, very they of establishing. that of are therefore the decree We Circuit opinion, Court be the same affirmed, should is affirmed with hereby costs.

Order. This cause came heard on the 'on transcript record from the Circuit Court of the States for United the Dis- Carolina, arid was trict of North counsel. On argued whereof, ordered, it is here consideration now. adjudged, court, decreed this decree of the said Circuit Court affirmed, be, this cause and the same is with costs. hereby, Eugene Henry Whitman, W. F. O’Reilly, L. B. Morse, F. B. Hastings,Appellants, Vail, v. Samuel Alfred O. J. Smith. and Francis telegraph, original electro-magnetic inventor first for which was the Morse 1840, and reissued him in 1848. His invention patent prior issued to a to that of Steinhicl Munich, Davy England. or or Wheatstone compared. dates respective 'Their European time, preceded inventors had him for a if of these short even one But patent. . invalidated his A discovery would not have previous circumstance void, patent discovery render unless such foreign country does not or some sub- patented to have been so. publication. printed before or described in a it had been part of stantial And are not shown inventions these theirs; Besides, essential Morse’s a substantial and difference between is there being decidedly superior." that of Morse patent right inquiries because he has made not lose his does or An inventor persons. If a of different sought from other combination elements information used, men well as consult books to inventors confer with obtain this knowledge. various patent specifications in nothing in the additional the reissued incon- is There 1840. in the sistent those claims, inventions, subject specifications set forth not first seven The ground. this. exception. eighth broad covers too much I too specific parts machinery myself machinery de- limit or propose not do scribed .to claims; my foregoing specification being the essence invention in the current, galvanic which I call electro- the electric use the motive developed, making printing intelligible’characters, signs magnetism, however distances, being application power, a new of which I claim or to letters be the first inventor discoverer.” others, English Exchequer v. Harford Re- case of Reilson others al. v. Congress examined; also American decisions. The acts do not ports, (cid:127) (cid:127) so extensive. justify a claim claim, respects eighth yet and void far as although illegal so But disclaim, Congress, gives right act him and thus within the patentee is having is entitled. No been entered before portion disclaimer save suit, patentee is entitled of this institution to costs. circuits, in for the local .was reissued obtained second 1846 Morse In objection patent that was eighth to this embraced in the claim is no 1848. one, it, eighth objection was void.. is it an because that claim Nor the former of improvement patentee right upon an the has a it was former because that to improve his own invention. ' properly improvement and its reissue were issued. was new The This new specification. in embraced the former and not claim, exception patents being good eighth' the are two of These with infringed upon O’Reilly's telegraph, substantially by same means which uses the line, upon the main and the local circuits. both been' of in this counsel, not sit Justice did Curtis) (Mr. having cause. was an from the Circuit Court of the United appeal This for the district á of States ás Court Kentucky, sitting Equity. It is difficult make a fair this case without writ- report a book. The of counsel would fill a volume ing themselves. arguments by The drawn the learned case was history up oy Judge, Court of who over the the United States in District presides under and whose decree was review! Permission Kentucky, that been use reporter has Monroe given by Judge to this and he avails himself report, statement preliminary because, kindness; the narrative with pleasure although with the induced the interpersed occasionally opinions favor to decree an in of-Morse injunction judge yet history and clearness. is extracted with precision given great from the following statement opinion ' Monroe: Judge bill, their that Samuel F. B. allege complainants, them, the true Morse, one original inventor worked motive by. Electro-Magnetic Telegraph, thereon, and of several improvements by electro-magnetism, one is transmitted place which intelligence which of the United other distant places, by letters-patent Morse, issued to F. B. States, him, Samuel by par- duly Vail, to F. Smith and tial O. J. Alfred other assignments are the ex- invested with complainants,, lawfully together, they such clusive right constructing employing telegraph States, the United for the terms such throughout purpose, — mentioned, and which have not the letters-patent yet expired ' exhibit the they letters-patent. that the show óf in- great utility They practicability

O’Reilly et al. v. Morse et al. vention was established constructed under fully by telegraph Morse, means of superintendence appropriation made United States for the Congress purpose, the cities of between operation and Balti- put Washington more, in the year That had constructed, afterwards there agency means of joint-stock promoted companies, complain- ant, and contracts and license under operating patentee, lines, Morse and his assignees, telegraphs along amounting, the wher.eby of four miles, thousand five hundred aggregate, upwards communication was established between telegraphic States, cites of United from New principal Orleans.to Boston; and that now in of construction, there were progress lines, additional under contracts them, numerous more invention, benefits widely extending they believe if in the lawful use of their they protected rights', seetion the United States in a short will, time, have every improvements the benefits their in telegraphic correspond- ence. n all the that, in lines of communi- They represent telegraphic now successful cation United States in operation means of the by transmitting intelligence improvéfüent electro-magnetism, Morse, of S. F. B. or the and .chief essential prin- thereof, and parts employed. ciples n that established, show had caused to.be a line of They they from Louisville, communication of Frankfort telegraphic by way to in Maysville, and which was success- Kentucky, Lexington, ful operation. that had caused to be constructed, they They represent lines wires and from Louisville in the district of of posts Kentucky, Bardstown, Scottsville, of and way by Kentucky; .Glasgow, the Nashville, thence of Gallatin to in- district by way and of the Tennessee, for transmission means intelligence, of by of. their, and that had they expended telegraph; great improved, that this line therein; and is in the extension sums money Orleans, Louisiana; State and'is connected New another by that line, Tennessee; and sums of Memphis, large money work; all the in'this and lines ifi short time will completed, expended and assignments. have ex- that their and rights They represtent repeatedly admitted in divers of- and and indi- acknowledged ways by plicitly and associated citizens in various sec- viduals large'-bodies States; of the United that’ these had treated with them tions and thereof, their of licenses rights, parts purchase use their and had made to extensive patented they improvements; pr sales, licenses, to úse them to and indi- companies TERM, 1853.

O’Reilly v. Morse et lines, others, and to the New various amongst viduals, upon and line; New York and Buffalo York, Washington Albany, line; the and Boston and York line; Washington the New be- line from New Orleans; ; Petersburg line Petersburg and side lines. shorter sides numerous had been thus successful and state that they They them exercise by nowise rights granted uninterrupted United had been States, and letters-patent until, defendant, therein, the operations disturbed by mentioned, and the committing wrongs presently O’Reilly, him and his co-defendants. by had, state, defendant, O’Reilly, they early This another, with the then complainants, a contract entered into he, acknow- whereby O’Reilly, an interest having ledged afterwards, in various and that he had ways, their right; time, in, manifested his acquiescence and for a period long them, of, com- admissions privileges rights his them; to the use of them even insisted on right plainants, had, that he contract with under himself, under his this it, fact, under used and claims contract his employed such, complainants, persisted improved telegraph contract, all the lines embraced his claim, by employ But, of their validity patents. without questioning defendant, had, him- Henry O’Reilly, allege They constructed a line servants, self,. posts agents thereon, Louisville, wires from the metallic city suspended Bardstown, Nashville, of of the District Kentucky, by way Tennessee, all the facts w’ell knowing in the State had forth, he and his co-defendants worked set complainants’ line, said the same telegraph substantially employed invented the com- with the Electro-Magnetic Telegraph, mentioned, and in his Morse, will patents against plainant, them, authority complainants. They and without any contract, under which show that claimed their the terms on certain to the use of telegraph, right it, did extend to where north lines he employed any country river, and that there was no color for the Ohio claim thereof, the use within the District of defendants to Ken- the tucky, of the lines on them constructed. by the lately any part defendants, that in the opera- They represent, especially, of line so them con- and their tion working telegraph, by means, instruments, structed, used-and employed apparatus, substantial, material, the and essential are, in parts'thereof, which of the so said several the plan improvements upon principle Morse, or the the patented complainant, principle plan by And, of some and not other or different. of said improvements, et al. v. Morse defendants, the their such means servants state, that by They of more the than four months been for had space and agents, over line, said for still, intelligence transmitting and were past, such same; and for service, desired the had who any person from the compensation persons are been, receiving yet, all is in which viola- they allege the same whom performed; or of some the by letters-patent, tion of the rights granted thereof. the parts n , defendant, that the O’Reilly, further represent, They Orleans, to New and had line from the Nashville extending the and was last men- upon it to operating extended tioned Memphis, the them, violation of the rights line to Memphis, improvements, the use of their the patented complainants, that he had thereof; and declared and essential parts principle the line from Louisville his intention completing then the 'same instruments Orleans, and of employing New line from Louisville to then on the Nashville. using informed that defendants are some- state that They they that the complainant, times out in patents give speeches, out and times, Morse, pretend are and at Other that void; give use for the they the sion transmis- apparatus machinery said line, intelligence and the reception invention, which they, complain- is-a distinct and separate Columbian call the ants, defendants are Telegraph: informed that Whereas, patents charge good complainants defendant, law, his and that the con- O’Reilly, by and valid exercised, and having tract patentee, it, the exclusive exercise, under privi- his claim persisting their denying estopped the patents granted, leges by And, validity. in its is, That the said new invention essential pretended with, identical plan patented upon, principles, improvements same the use and that Morse, issued com- violation infringement Morse. plainant, received, and had were defendants then that They allege intelli- considerable sums of money transmitting receiving, District Ken- Louisville, within on line from gence ; they violation of complainants the rights tucky, unlawful had, their operations, defendants complain so exercise of their them the lawful rights, disturbed greatly diminution caused a them, and had great and held granted line their them, complainants, business constructed, to be had had caused telegraph, they and the District Kentucky; within operation now such violation of the from- refuse to desist com- the defendants Wherefore, plainants’ rights. TERM, 1853.

O’Reilly et al. v. Morse et al. order, defendants, that the and complainants pray The be court, hereafter enjoined may using the process violation such and infringement or employing telegraphs within the District of them, of complainants, rights to account be for the that compelled they may Kentucky; of their in consideration unlawful them received money exercise of the privileges, and rights, and wrongful operations, due that on and proceeding and complainants; property be made final and such order may final injunction hearing, other have such relief and that the effectual; complainants may And, require. as their case may all the framed on numerous interrogatories, propound They bill, and each defendant that material pray allegations answer, oath, to on his such as are for him be compelled and, to this have the relief end, and that they may designated, them, shall the writ subpoena. adjudged they pray

Answer and Grounds of Defence. defendants counsel, their and admitteu ua. appeared by had sufficient notice. read his to .the they complainants’ answer O’Reilly bill. admits the contract with the The respondent complainants, bill, stated the of the and seems had used, to admit that of under he. ” it, machine or combinations portions described Mr. Morse, -but denies he had 1840; used this under contract. others scientific, He he was not had not seen says after the had had forfeited his until he complainants alleged contract, ;_ instituted a insists suit have vacated he is not estopped deny validity patents. sets no He defence under contract, up disclaiming license from the to the-line .of complainants respect .in answers, believes, he question, grounds telegraph which inventor that his forth, and first he sets that Mr. Morse is not the original insists described in patents, telegraph their are, face, on that patents ground, states, null and other causes void. admits the construction and He lines of operation elsewhere, and others; himself Kentucky, telegraph that the instruments on them within but denying employed even on the complainants’ patents, the description sup- denies the their validity, infringement. position answer, of defence, But presented by grounds and, of the answer were assumed the matter in the-argument; whole will be under more stated the several heads fully motion. defence. The all united in defendants opposition v. read, without objection, a parties mass respectively great of their positions, and a model documentary proof, support described in letters-patent, Morse, Mr. telegraph proposed, telegraph employed, employed and to defendants, subjected was exhibited by tion applica- of of the parties, and explanation proofs, tribunal. inspection defence the answer of of presented by grounds O’Reilly, be assumed on will proofs, and under these comprehended of division: heads primary I. The was not the true and Morse, complainant, original inventor of this telegraph. II. The to him are and void their letters-patent null face, and for other causes dehors. III. The them, constructed and telegraph employed by defendants, is in law, and different from tele- substantially described in the Morse, to and graph of letters-patent, which he can claim And, exclusive lawfully therefore, employment: of the on the supposition extent, validity patents there has been no infringement. IV. The one, case on and what- pleadings proofs, ever be on bill, considered of it a final might hearing which will an order for injunction justify presently. These in their order. subjects Mr. Is Morse the of this original and of. inventor telegraph, several thereon described in his improvements letters-pa- tent? settle, that we ascertain and now what is the necessary to this will be invented; which-was and end it most thing venient con- its begin its conception, accompany down to its state of progress completeness. present apparent maturity

History the Invention.. Its fixed Mr. Morse himself, conception October, 1832, on board the on her packet ship Havre, Sully,” passage France, ,- to New York. He that was he says a historical by profession, painter, had, art; himself gone Europe in-that perfecting October, home, his return 1832, there were among Hon. ship, Rives, "William C. Minister of passengers the United to the .Court of France, States Dr. C. T. Jackson, Fisher, James Esq., Constable, William Philadelphia, Esq., and- other of extensive gentlemen reading intelligence; commenced, soon after the the then voyage experi- ments relation discoveries and the electro-magnetism, TEÉM, al. v. Morse et or their identity, magnetism, probable electricity affinity of conversation. a subject became that, discussion, course of this occurred to him In. letters, words, signs means electricity, representing figures, written down at and that the might same legibly any distance* current in con- produced effect might by bringing saturated with' some saline tact with ideas took solution. These’ paper full mind, residue possession during himself, in a in devis- measure, occupied voyage great them effect. means practical giving ing United he had States, he landed in the- conceived Before the form of an book, drawn out-in sketch instrument for and had noted electro-magnetic telegraph, arranged and. down a dots composed signs combination system which w'ere to and these were to represent spaces, figures * indicate to be found words where telegraphic dictionary, each word was to have its number. ha,d He also conceived out the drawn mode the electric or applying galvanic as to its current, so mark chemical effects. signs himself; This is the account the inventor but it' is sup- of disinterested witnesses. ported testimony 27, Rives, Mr. under date of 1837,' September addressing Mr. Morse, himself to says: “ I remember that to me the idea perfectly, you explained instrument, madl which we your ingenious together during voyage 1832. autumn of I also remember that during our culties to and confidence.” conversations on I several diffi- subject, many suggested and that obviated them with you,’ you promptness Pell, the commander cf Captain /the on the same ship, says, to Mr. Morse. himself day, addressing “ When I exa mined a instrument few since, I your days in it mechanical and recognized principles the.same arrange- ments had which I heard on board of explain vessel in you my And, 1832.” of two brothers of Mr.’ It'appears by Morse, depositions their him on board the she meeting ship, immediately York, had moored New had greeting passed hardly brothers, between the three and before reached they had. house one them, which to they immediately proceeded from the them tion, he announced to them his ship, told discovery, had, that'he his almost made an inven- during voyage, important had all which his time on One occupied ship-board, world, and of would astonish the success- of he was that he said this a invention was perfectly sanguine; means of that a so intelligence communicating by electricity, al. v. could be characters, down message permanent written manner, at and he took from distance; his pocket them, sketch-book, in his showed of his inven- representation tion. October, this was And Mr. the invention — Morse further says: !< States, after his in the United he com- Immediately landing friends, his invention to a number of his em- municated himself in to its preparations prove practicability ployed, value, actual end, mould, To that he made a experiment. cast, brother, York, at the house in New and commencement dots-and before the 1833, set of type, year representing intended to used for the spaces, purpose closing circuit in his experiments.” breaking contemplated And this statement is also other supported by testimony. But he was unable to for the want of proceed, pur- money, Wire, for a chase the materials galvanic battery return, subsistence, to his pencil; compelled, having led, from pursuit employment, place place, to the 1832 experiments latter he had no part.of opportunity making But, affirms, of his invention. he never lost in its faith it as soon as he abandoned intention practicability, testing could command the means. 1835, he In Professor in the York New appointed city November, and about the month of in that University, year, (cid:127) rooms Here he imme- occupied University buildings. commenced, means, limited diately experiment very his invention. upon “ His first instrument was made of an old or can- picture up vass-frame fastened to of an old table; the wheels wooden moved forward; clock three weight carry paper drums, one of wooden was wound and paper thence over a wooden sus- two; passed pendulum frame, top piece picture stretching pended across the as it over the wooden paper vibrating passed centre at the drum; a lower end of the in contact pencil pendulum to a across the fastened shelf with electro-magnet paper; frame, to an fast the to the the armature made picture stretching opposite rule and and breaking type closing pendulum; type band, bind- circuit, on an endless over resting composed carpet two rollers moved a wooden ing, passed wooden into crank; and carried downwards forward by points projecting, the a lever with small on the upper carpet binding; weight side, on end, and a tooth at one downwards operated projecting the and a metallic fork, downwards, also over type projecting mercury at the two other end a of one cups; galvanic battery et al. v. short circuit wire the helioes of the cup, electro-magnet, of embracing connected with the positive negative poles in the battery, terminating mercury cups. the. <{ rest, the When the instrument w'as at circuit was broken at As as the first soon in the mercury cups. type rule, type in motion the wooden cam e in crank,) by turning contact (put on the lever, the tooth it raised that end of the with lever and intp other, the fork bringing down depressed prongs thus the circuit. The current mercury, closing the through passing the helices of the caused the electro-magnet, pendulum move and the to make an mark oblique pencil which, time, mean had ih motion over paper, the wooden put drum. The tooth in the lever into the falling space first the circuit broken, between two when types, returned to its former position, pencil pendulum making mark as it returned across the another Thus as the lever paper. raised of the alternately points depressed by type, to and fro across the passed pencil strip paper, passing Of it, a mark v’s, under a succession of making resembling however, of vtfhich were considered as only, points signs. telegraphic .The between the caused the spaces mark types pen lines, short, horizontal to their own long proportion length. “ was, With this’ as it made before apparatus, completed of the he down, the first ligibly, telegraphic was enabled mark year intel- arrived to signs; having point, exhibited to some his friends in that and first early year, all, to Professor Léonard D. who was a Gayle, colleague Professor in University. instrument, was an- actual of the and a de- operation “.Here of its monstration tion.” the end of the inven- capacity accomplish And, This statement is the affidavit of Dr. fully supported by Gayle. He says: in the That in the month one January, thousand year was a hundred and Professor colleague in the eight thirty-six, York; of New Professor Samuel F. University city Morse, had rooms who Wash- University B. buildings, in said That the said month Square, city. during ington January, me- for aforesaid, said Morse invited year Professor room, in the into his said where I saw University, private time, the first certain Electro- apparatus, constituting The invention at that time consisted of Maguetic Telegraph. apparatus.” following pieces a full Here witness description gives apparatus, result, and of and of its result was operation, record. And. permanent legible making

O’Reilly et al. v. et al. Morse 1836. This Thus far it the state of Was the invention January, what the limit been ascertained was had not it known what and therefore was not magnetic power, of sufficient force to make wire would be found length record, devised of and there been no means had extending current of one would battery further operation, magnetic than attention this matter had not effectual. But escaped Mr. Morse, and he had means for supply devising defect be 1836, whatever found respect. in this might “ wire., He : feet forty procured says Early one was circuit, battery it in found that his cup, putting to him sufficient to This result work his instrument. suggested from the to be obtained that probability magnetism the circuit was electric current would diminish in proportion at so as to be insufficient purpose lengthened, practical obstacle to his distánces; and to remove that great probable ormore two circuits success, he the idea of conceived combining use of the battery, makirig each with an together, independent ; that of break the second the first to close and magnetism the second to on. third, and so close and break the “ concern, therefore, subsequent experiments, His chief from the sufficient was to ascertain at distance battery, what to be metal be obtained to vibrate could piece magnetism obtain the least he could used for motion at the that if knowing purpose, the ultimate miles, ten object distance of eight was within his grasp.” (cid:127) of one circuit to . A mode of the impulse communicating use, ma- was another now magnet analogous receiving exhibited to Pro- tured and then early spring And, fessor friend. confidential Gayle, statement of This is also confirmed statement fully Dr. He Gayle. It was says:*— Morse and Professor my- between question early self, to move a le- where was "the limit power magnetic be moved ver a lever could ? I doubt whether expressed ,and miles, this settled convic- at the of 20 distance my power force to was, tion mark characters fessor Morse was accustomed to not be done with sufficient it could this, To Pro- at 100 miles distance. on paper I can succeed iff If reply, ‘ miles, around the ten I can globe,’ working magnet chief go invention, to ascertain the at anxiety, stage he, co'uld or move a lever Morse, utmost limits which by work me,-1 how It matters not He often said magnetic power. all, delicate it at is all if I can obtain be, movement may I number want.’ Professor Morse referred of sta- often the. tions which and which he observed might required, would al. v. add to The said Morse complication expense. always his confidence of success in magnetic expressed propagating distance of electric conductors which cir- through any cumstances render desirable. His thus often might plan Morse, to me: said Professor ‘that in ex- ‘Suppose,’ explained wire, on miles of 'that we should find twenty perimenting of is so feeble that it will but move a lever magnetism power with breadth, insufficient, hair’s or that would be certainty be, to write to to it would be sufficient close print, yet another, or a and break second second 20 this further, circuit miles circuit made manner, could in the same to close and circuit, break a third and so on around the globe,’ to, of to This statement the means be resorted now general embraced in what is called the to render Receiving Magnet, dis- practical, Writing printing by telegraph, through long was tances, the detail, shown to me more in in early spring thousand hundred and year eight (one thirty-seven,) I am enabled to the date from approximate very an nearly, me, that accident late snow in the occurred to on the ice formed of falling spring year. “ The accident on the occasion to happened of removing Professor Morse’s rooms in the New some York University, apparatus prepare pieces temporary receiving magnet. “ The was on a apparatus in- arranged plan substantially in the sheet 2, dicated drawings affidavit. accompanying one line 1 terminus of a of conductors battery represent- 20 miles from one which conductor ing length, pole to the helix of an at the terminus, electro-magnet proceeds helix from thence it (the forming part returns conductor); in a o, from the battery, terminating cup mercury a wire cup the other contiguous p, mercury proceeds pole c, When fork of the lever unites the two battery. cups the circuit is and the b, is mercury, complete, magnet charged d, and attracts the armature of the lever which connects the cir- manner, cuit of in the same which battery again operates c, further, lever miles turn and so on. twenty ‘‘ I was This then and there depose say, plan revealed shown to me said Morse, and as I netic Professor which, so by far know, has constituted an essential of his part Electro-Mag- from that date till the time.” Telegraph present referred to by witness, attached to the diagram de- and exhibits the circuits position, combination elec- Morse, claimed Mr. as a his by part invention. tricity Their described, construction is and their fully operation been having witnessed is described in his by deponent, And, deposition. early spring This state invention of 1S37. XV. VOL.

u COURT..

O’Reilly et al. v. Morse et al. the invention had completing of fully appears Mr. the want of means Morse. inBut retarded by spring he to have been excited of this publication appears year ' two account of the invention of French telegraph by gen- an it was at first tlemen, Servel, M. Gonon and apprehended, announcement, no other the terms of its than the from but afterwards out turned Electro-Magnetic Telegraph; use, to be of the common form telegraph formerly only a notice taken one consented being newspapers York, invention, of his renewed increased New exertions to and demonstrate its perfect great superiority value. Professor, He was assisted fellow Gayle, trying Dr. consideration and of his further as- thereof, and in experiments, sistance work, him interest in inven- in such he' presented two, tion, and the united work of April Septem- it in an ber, to exhibit form. were enabled improved they Dr. states the In latter August, Gayle part operations visitors, in the Uni- instrument were shown numerous continues: And he versity. “ on second of September, Saturday, day Dauberry, University, be- English that Professor Oxford of invited, friends, on a visit with to this few country, ing in its form, to see the the Cabinet of then rude operations Telegraph of where it then New York City University, 1,700 wire, circuit feet of had stretched back and forth with put up, copper room. I well that remember long Vail, Professor and Mr. Alfred that Professor were Torrey, Dauberry, exhibition of the others. This Telegraph, present among constructed rude and although demonstrated to imperfectly machinery, very ; all invention present, practicability skill, means, the zeal of resulted enlisting at next week called the rooms Vail, Mr. Alfred who early Morse, Professor had a more perfect explanation invention.” the character “ mind, in Mr. Vail’s as he doubt to be dispelled stated, was, whether the stated, and has since frequently then to such a distance as could propelled by magnetism power This doubt in a few to be effective. was dissipated practically ever Morse; with Professor and I have minutes’ conversation that it means then dis- the full conviction was the been under wit, Mr. .Vail, Professor Morse closed plan to. distance required, any repeating magnetism Mr. Vail his that induced Alfred stated, Which I have brother, Vail, interest themselves at once to in- George. vention, moans, Morse Professor with mate- furnish experiment an on a and labor And. rial scale.” larger for TEEM, 1853. 75- DECEMBEB v. it al. Morse state of the invention in was the September, This new, to have constructed a Mr. accordingly proceeded on an more instrument for appli- larger, perfect exhibition cation for to Washington.

Caveat. — . October, 1837, order to time, day In the mean in. caveat in the Pa- invention, filed his protect right Office. tent It is in these words: Patents. Commissioner To the “ ¡ . . Morse, . —That F. B. represents of Samuel petition n invented a new method transmitting has petitioner your means electro-magnetism, recording intelligence denominates. The American Electro-Magnetic Telegraph, he and which he or used believes not been prior has known veriiy Your petitioner to the invention thereof further petitioner. by your . full, states, practical display machinery and he therefore is not prays his new invention yet completed, till he shall have matured of his machinery; right

protection and desires that be filed in the a- may caveat purpose' (cid:127) Office, and of the Patent in' archives preserved confidential terms- conditions in the- expressed according secrecy, act of that case made-and he with other provided; having Congress ' into the dollars Treasury;-and complied twenty paid of the said act. provisions 28th, York, 1837.” New Sept. ¡ annexed the caveat are the These specifications n invention consists in electric The nature or my laying or conductors of circuit distance. any length galvanic any ' metal, be made of such as conductors These copper iron, or df wire, or cords or twine, or iron other strips copper silvered, or covered substances, leaf, metal gilt, insulated,in the or beneath the ground, through properly air, the and the electric or water, or by through causing galvanic circuit, the means of current to of of through by pass generator ' of visible to make use signs presence electricity, circuit, of the said to communicate part electricity one place another. any.intelligence “ visible said of available for To make the signs electricity . aforesaid, I have invented the following apparatus, purpose ¡ namely “ numbers, and of which A signs, by First. system .conse- sentences, signified. words quently O’Reilly et al. v. Morse et al. “ Second. A set of adapted type communi- regulate cate the with cases for convenient signs, keeping type, and rules in which to set up type. “ Third. An called Port Rule, for apparatus regulating of rules, movement rules, which means of the type by type, in their turn the times intervals regulate of of passage electricity. “ Fourth. A records the register, signs permanently. “'Fifth. A of numbered dictionary words, vocabulary to this adapted system telegraph. “ Sixth. Modes conductors, them preserve laying

from injury.” Here is a of each articles of description invention, after concludes these words: “ IWhat claim as invention, and desire to secure let- my and to one for is a method of ters-patent, record- protect year, which, electrical means of ing metallic permanently signs, wires, or other conductors intelli- good convey electricity, between or more gence places.” two instrument, new which Mr. Morse was enabled to have with Mr. was Vail, arrangement completed constructed. end of latter year, succeeding February, 1838, it was exhibited in the Franklin Institute at Philadelphia, where with success of ten circuit miles operated through wire; committee of the Institute made of its report success. It was thence removed where it city Washington, exhibited the hall the House publicly Representa- tives, and a committee it, examine having appointed amade favorable and recommended an report, appropriation thousand dollars, to have thirty tested effectually utility invention. And, state of the invention This early spring

Petition Patent its Specifications. for The caveat was on the 7th followed, April, of Mr. Morse for It is to this effect: petition patent. known, F. Be if that I Samuel B. Morse, of city, county, and State chine York, of New have invented a and useful new ma- between signs transmitting intelligence system distant means of new and effect of points, by application sounds or either, electro-magnetism, producing signs,

and also the same means recording permanently, by ap- and effect thus signs plication electro-magnetism, any pro-

O’Reilly-et al. v. Morse et and duced, as before named, representing intelligence, transmitted and I distant said points, between invention the denominate of American which the Electro-Magnetic Telegraph, following exact to wit: is a full and description, “ of First, consists Of circuit of following parts: or conductors from of electric galvanic any generator electricity and or of one or more any galvanism, electro-magnets points said circuits.” of several invention con- Here parts gives them, each of then and adds and sisted, long description invented, he had affirmed he had in these what himself sums up words: “ and desire to secure invention, What claim as I my by*let- is as follows: ters-patent, “ of the several and parts rule, 1st. The formation arrangement rule, port mechanism constituting type straight lever, and the rule, levers, the two register circular port signal hammer, its as with and alarm combining, respectively lever levers, one or more electro- said armatures

with each of said described in the fore- and as are severally parts magnet, going specification. “ of the mechanism combination constituting The ándly. rollers and train accompanying recording cylinder, several wheels, with formation arrangement the formation and of which mechanism, arrangement parts as in the described above, claimed foregoing are cation. specifi- “ use, formation, and arrangement type The system, 3dly. distant between for transmitting intelligence signs, points, and metallic conduct- of electro-magnetism, the application described in the mechanism, speci- combined foregoing ors fication. “ mechanism, breaking, mode and The process 4thly. circuit of metallic or in any of electricity galvanism currents as described conductors, foregoing specification. “ connecting mode process propelling 5thly. desired or any through galvanism currents electricity conductors, from known of metallic of circuits number in the fore- or galvanism, described electricity generator going specification. means of of electro-magnets by “6th. The one application known conductors, gene- of metallic circuits more levers in the to the several rator of electricity galvanism, for the pur- foregoing specification, described machinery said ma- levers and said operating motion pose imparting

7* Morse et al. al. v. O’Reilly et sounds, by signs intelligence transmitting, chinery, to different points. simultaneously between.distant points, recording marking per- mode and 7thly. process transmitted between distant of intelligence signs manently to the application different points, by and.simultaneously points and use of in described the galvanism, electro-magnetism specification. foregoing “ of combination and arrangement electro-magnets, 8th. The conductors, with metallic armatures in moré circuits of one or sounds, of for intelligence signs transmitting magnets, to different simul- either, points between distant points, taneously. “ of the mutual several 9th. adaptation combination The and of with signs, of the type mechanism system parts words, described a3 and to the vocabulary dictionary the foregoing specification.” found the that no was issuing objection appears filed had been there except that immediately, and that set of .drawings, specifications duplicate it, to an to this commissioner wrote in answer application effect, on the 1st of May.

In France. England he secure had conceived might Morse hope, But-Mr. countries, of his invention -in foreign for the use consideration States, and the 15th of he re- well as in the United on May commissioner, next turrfed this answer departed for Liverpool: day 1-5,1838. University, May City

uNeiv York Henry L. Ellsworth. “Hon. — letter Excuse the answering your delay Sir, “Dear set instant, drawings my the 1st relative a duplicate favor of delay issuing ask the I you letters-patent.' May fear as I issu- me in hear-from Europe, until you letters-patent abroad. interfere with my plans them will present here ing “ Fare- for Liverpool. in the I sail to-morrow ship Europe

well.” inventor, to the American refused In England n — Invention of his that some description ground — had been published hereafter will appear substance the London Magazine. in France. received otherwise But Acaderny Science. French In the exhi- invention, his. a description .communicated He TERM, 1853. v. et al-. before French the instrument Academy bited operation, And, the 10th of Sciences, on September, “ the Comptes the account invention This published of the weekly journal Academy: Jtendus” Morse, of Mr. AppliedPhysics. Electro-Magnetic Telegraph — of New York.” Professor University “ under the The instrument has been eyes put operation of a is a literal translation large the Academy. following Morse to notice delivered Mr. Perpetual portion Secretaries: ' “ Morse is the conceives that his first practi- Mr. instrument the con- has made of electricity application cable struction of a telegraph. October, whilst This invented in instrument was America, in the author ship Sully. several packet was on way Europe fact is attested ship captain latter, the number passengers. Among Minister States near Rives, was Mr. United French government. Pell, is the account of Mr. Rives Captain given (Here set the out. After account which proceeds.)

already “ to the construction of citizen of idea of The galvanism applying is Coxe, Dr. a new; distinguished telegraphs, inserted him in of in a note makes mention Philadelphia, 162, in the Annals of Dr. Thompson, page February, of it. he did not means First Series: but give effecting “ Mr. of Morse’s the to which the invention Since period on same founded the back, other arrangements, telegraph goes announced, celebrated the most of which have principles, are those of Mr. bf Wheatstone, Munich, much mechanism. of and of Mr. Steinheil, differ' London. very They “ circuit,* but the fol American one The Telegraph employs, an it: is of abridged description lowing “ news is to the the the of circuit where At extremity of is It consists received, called the Register. an apparatus the the which forms an wire pro- electro-magnet, covering of the wire the circuit. longation (i of a to the end armature of this is attached magnet ; a under lever, at its holds pen small this which opposite extremity ais which moves forward required, ribband pen paper “* the occupy places with each Suppose put the in communication three, a points of certain triangle, angles quadrilateral, a of a angles of four single suffi- inclosing space, points would be passing through a all wire those line cient, according theory.” at least al. v. of wheels. At the means of a certain number other extre- by mity circuit, that is to at the station from of the which the say, out, is called the is to be sent another apparatus news Port Rule; it consists of at the battery generator galvanism, which, ends; circuit near the two of this circuit battery portion poles is extremities broken; two disjoined, near each other. into two cups mercury plunged “ attached to the the aid a bent wire of a By extremity be, will, at lever, little with each the two connection placed cups may is other, or left thus circuit separated; completed movement at mechanism interrupted pleasure. is as follows:. “ When the circuit complete magnet charged; armature, attracts the movement which brings pen into the with the When circuit contact paper. interrupted, ceases, horseshoe armature returns magnetism, from the first and the is withdrawn to-its pen position paper. When the circuit is and broken succes- completed rapidly sion, if, mere dots are paper; produced moving for a certain circuit remain complete length contrary, line, the is in time, the marks a which length proportion pen the circuit remains to the time which This complete. during of blank if the circuit interval remain paper presents long considerable time. These lines, some points, during interrupted of combinations. blanks, lead to a means By variety grpat Morse has constructed elements, of these Professor alphabet The letters written with and the may ciphers. signs of certain means machine types great rapidity, by causes to move with exactness, give proper these to the lever pen. Forty-five movements bearing be traced in one minute. characters may who is under the control senas person The register Rule, called the Port fact, from the extremity the news. In motion and be set in stopped mechanism register (cid:127) is, the news there- to receive will. The fore,.not the person of. presence which is the sound of bell rung by necessary, though about to be that the machine, begun. announces writing has been which the American Telegraph The distance at of France. The or four

tried, miles leagues is ten post English, of the Frank- a committee been witnessed have experiments a committee appointed by lin Institute of Philadelphia, these of com- The States. reports the United of Congress favorable. not extremely we have mittees, copied, of the appropriation of recommended The committee Congress thousand dollars.” thirty 1858. al.-». et Patent, 1838.

Frenen to Mr. Morse tbe French was accordingly granted A patent ; him no profit." but it pecuniary yielded government, 1838, and was delivered to is dated on the 20th It August, But, afterwards. the 30th October him on to be the invention into use required put law of France failure, of the exclusive privilege in two on years, of Mr. Morse had the means com- was forfeited. patentee plying the 1838, home with condition, returned with he in his confi- own sufficient- countrymen hope inspiring embarrassed, condition dence in his of the invention. But great time, of success him despair at. caused country to his to betake himself pencil, again being compelled until the no farther movement year. made succeeding 1840. Patent, American for his On to his former patent, application recurring set office, on the files duplicate remained had this, still were having supplied .but wanting; drawings Commissioner, directions of the some other complied (cid:127) was issued. 20th, sealed, and bears date June filed application The specifications to it as thereof. These are annexed specifications, part them, as will be set out here- or so much necessary, become the discussion. after, before or when they subject But, invention so in an extraor- confidence capitalists results, such incredible could not and one' promising dinary, able, himself, was not construct a patentee inspired, n use, it into and introduce actual line telegraphs, .he of the United States. This to the Congress applied again thousand.dollars, accord- of thirty appropriation resulted 1838, for to the recommendation committee ing purpose under practicability utility system, testing And, Mr. Morse. the superintendence in the construction the line resulted telegraph This and a demonstration .of to. complete Washington, Baltimore his invention. public great utility practicability And, June, 1844, the state of invention twelve This was , its after conception. years extension and then multiplication Efforts were made but were encountered the intro- its difficulties advantages, of an of such duction and affair novelty, establishment

82 O’Beilly et al. v. Morse et time such amount and some was large capital, requiring to overcome them. necessary continued, and were, however, exertions with the success of the in the establishment which stated progress telegraphs And, in the bill exhibits. seen, be Mr. time, In the mean presently will con- this tinued to exertions invention. perfect great improve Reissued,

1840 Patent 1846. 1846, the of the In specifications invention and January, mode its description operation having supposed defective, the be in was patent surrendered, to some respects, out its stead. taken new patent this will be adverted annexed to to specifications that, hereafter. for the to state sufficient, It be present, will affirmed he .invented, what the had summing up patentee to the there is found one article fifth and some corresponding of the other clauses in the 1840. specifications He says, (cid:127)“ I also claim the of two or more circuits combination of. batteries, independent galvanism electricity, generated by as above described.” means electro-magnetism, was that this that, It originally, design part appears to case be the invention resorted only galvanic of one be found insufficient on a current should battery long to afford the motive to work the line, register power necessary it does not appear and record had intelligence, and th^t date, that ascertained one been, before this battery distance. would not sufficient circuit New Improvement.

Patent of for, 1846, Mr. Morse ob- But, on the 16th April, applied on his own original for an improvement another patent tained And, invention. contained in the specifi- representations, appears then been that it had ascertained annexed to cations one would be battery, current generated galvanic current on line, any length the electric continue sufficient the bat- motive open sufficient close and afford sufficient, at considerable it would not ; but tery record, unless this and make distance, the register work and that such magnitude; battery was made great battery increased. be greatly would the expense operation he called receiver what had, therefore, contrived He local battery, situated battery worked by receiving magnet, et al. v. Morse ot al. transmitted, intelligence at the place circuit, circuit, connected with main but local second, short, force closed, and sufficient given register opened record. make the other this, and for for improvements, The second patent in these words: he sums which up “ to secure invention, as and desire let- claim is the my What-I aor a magnet, having receiving magnet, ters-patent, to the that sustains such relation character, register similar for and the contrivances magnetic registering, magnet, length current or line will enable me to the telegraphic a main with aid of battery, galvanic accomplish, such motion Or for of a local regis- introduction battery, otherwise, be obtained as could not .without use tering galvanic as much larger battery. <! (cid:127) use of a claim, invention, I local my battery connected in combination with battery magnet magnet, with above the main line or lines of conductors for the purpose specified. “ also claim the combination connected I apparatus clock-work, for off the with setting paper stopping lever, pen .the [M]. affixed in I also claim the combination points roller, on lever, marking with the grooved paper pen [N] described.” above But, June, 1848, on the on the 13th there were supposition of each of these two some defects in the specifications patents cancelled, extant, surrendered new then were both they “And, of each Obtained in the stead respectively. patents (cid:127) which exclusive These are right patents upon before is claimed us, now employment telegraph But, complainant. is of to fair and statement discus- It necessary, intelligible be set schedules out case, sion that large portions in their own words. Reissued

1840 Patent a reissue of the itself, 1846, which patents June, of 20th 1840, was a reissue of original which the terms of it be because will the sub- will given length, in connection with hereafter, the statute. discussion ject words: following op America, .United States letters-patent these shall come: to whom To all York, Morse, B. New Whereas, F. Poughkeepsie, Samuel CO.URT. O’Reilly ét al. v. Morse a new useful that he has invented improvement has alleged information the mode communicating signals, by which (for letters-patent were application electro-magnetism, which were sur- June,'1840, letters-patent on the 20th granted the 15th January, rendered and rescinded day of a on account cancelled defective hereby last letters-patent been known or used he states has not has'made oath that he be- specification,) is a citizen fore his application; he does that he is the States, that believe original United verily and that or discoverer of the said inventor improvement, and first belief, to the best of not, knowledge has same the previously into the used; has treasury known paid dollars, and peti- presented United States sum fifteen a desireof ob- Patents, tion to the Commissioner signifying said improvement, an exclusive property taining praying that a purpose. patent may granted law, are therefore to said according These grant, administrators, or for the heirs, F. Morse, assigns, Samuel B. June, one from the twentieth day term of fourteen years exclusive full and right thousand and hundred forty, eight to others and vending and of making, constructing, using, liberty whereof description said used, the improvement to be —a Morse, in the F. B. sche- Samuel of the said in the words given dule hereunto of these is made annexed, presents. and part in these words: The schedule annexed is shall presents To all to whom these come: (cid:127) Morse, now 1, Samuel F. B. known: that Be it of.......... and useful new appa- have invented York, of the State New ratus between for, of, intelligence and transmitting system means of which electro-magnetism, puts distant points by and sounds or signs, recording machinery producing motion material, which inven- or suitable said upon paper signs the American Telegraph, Electro-Magnetic tion I denominate full, clear, exact is a description the following it from all thereof, which distinguishes or character principle of mak- manner known; and other telegraphs previously said and of sys- said applying and constructing apparatus, ing mak- drawings had tem, reference accompanying being .of this ing specification........ part of the mode instruments, Here follows description to adverted here and their omitted which will operation, hereafter. completed, descriptions These particular specifications should understood sums he intends what up patentee TERM, 1 853. al. v. 0’B.eilly . and he invented; after disclaiming.all preten- had'not had kiiown, was before the invention what says to sions he had himself discovered or in- affirms what he specifies He or vented, improvements, and thus designates improvement he had before sche- given just whereof a description is made dule, part which patent. “ invention, I wish thus described Having my First. fully I do use of the not claim galvanic to be understood current, the. for the electricity, current purpose telegraphic as I use of claim communications, but what specially my generally; the motive invention and of currents, of making improvement, current or the action such when developed magnetism, forth' description as set foregoing substantially as invention, means operating first principal part my be used imprint or signals upon paper motion to machinery, giving material, or to or other suitable produce manner, sounds in communication desired telegraphic purpose, distances. had currents in which “'The ways galvanic only to be invention and used, my improvement, proposed prior the action were bubbles resulting decomposition, bar or needle; or exercise of electrical and the bubbles and power upon magnetized needles, thus deflections of produced, no were and had were subjects power, inspection, I therefore characterize record the communication. applied first invention or printing telegraph by my recording means of electro-magnetism. motion There are various modes producing Jknown but none of these had been applied prior electro-magnetism, my printing inventipn invention actuate or motion to improvement, give is the chief recording point my machinery, improvement. £( I also Second. claim invention my improvement, called or record- employment instrument, machinery register clock-wheels, the train of of ing composed cylinders,' the and other or their for ma- equivalent, apparatus, removing are to be and terial which the characters for imprinted, as the fore- characters, said set forth in

(cid:127)imprinting substantially the of second of invention. going description principal part my “ claim, Third. I also as and invention my improvement, of described, combination herein consisting machinery conductors, the circuit of generation contriv- electricity, circuit, ance for electro-magnet, closing breaking or for.sus- pen for contrivance marking, machinery one taining constituting ap- moving paper, altogether xv. VOL. al. v. Morse

O’Keilly.et I Ame- denominate machinery, telegraphic paratas rican Electro-Magnetic Telegraph. “ invention, also claim as combination I my Fourth. circuits, with or electric or two more independent galvanic described, the means herein batteries, for the substantially by diminished force of electro-magnetism purpose obviating me to sufficient circuits, and command enabling in long at or in motion dis- recording machinery put registering tance. “ invention, claim, con- Fifth. I as signs, the system my dots, and horizontal spaces, of dots and sisting spaces, words, numerals, letters, sentences, or lines, as .for substantially for illustrated,, set arid herein telegraphic purposes'. forth “ .of as invention the Sixth. I also claim signs, my system dots, and of and horizon- spaces, consisting spaces, dots illustrated, lines, as herein set forth and tal' com- substantially them, as for for recording signals bination with machinery telegraphic purposes. “ invention, I or their also claim types, my Seventh. rule, in combination and the rule and equivalent, post type described, or its herein for lever equivalent, the signal circuit of or elec- closing galvanic purpose breaking conductors. tric “ to the I to limit ma- do not myself specific Eighth. propose or in the described machinery, foregoing specifi- chinery, cations and claims: parts the essence invention use of my being current, I of the electric or which call the motive power galvanic for making however developed, printing .electro-magnetism, distances, characters,' letters, being signs, intelligible I claim be of that of which the first new'application power, discoverer.” inventor

1846 Patent Reissued 1846, is the- reissue April, This patent “in tele- electro-magnetic and useful a-new .improvement the term of use the exclusive patentee grants graphs.” and refers in April, from the eleventh day fourteen years, for the annexed specifications form to the schedule common the of in these words: schedule is This improvement. Morse,......have F. B. I, Samuel Be known and useful Electro-Magnetic improvement invented new full, is a following declare and I hereby do Telegraph, construction, exact, clear, object, description had thereof, accompanying reference being operation same. part making drawings, O’Keilly, al. et v.

. “ of the invention. Object “ of all and final the com- The original object telegraphing, at or of a distance by signs signals. intelligence munication ’“ of or Various modes or making telegraphing, signs signals for The distance, have in use. at a ages signs employed one common. and have had evanes- They quality heretofore cent— n shown moment, or heard no trace of their leaving The various modes evanescent existed. of these signs having have of characters, beacon fires different been by by flags, by firearms, bells from a heard distant balls, reports by by posi- from tion, movables, arms posts, &c.' (cid:127) not, therefore, claim to the inventor “Ido telegraphs gene- ais more recent kind of The electric telegraph telegraph, rally. last de- within the but no plan century, practical proposed Its. until about sixteen vised feature years ago. distinguishing to same effect the re- is the electricity general employment a distance at or sult signals. intelligence by signs communicating “ various this end The modes accomplishing by electricity been, have “ or The common machine electricity, early employment 1787, to an evanescent show sign by divergence pith balls. “ 1794, or The of common machine electricity, employment an evanescent electric spark. to show sign “ voltaic show The employment electricity, bubbles, evolution of evanescent sign gas decomposed a vessel of solution in transparent glass. “ of voltaic production The employment electricity 1820, to an evanescent show magnetism, sign temporary or needle. compass deflecting magnet “ electric result from all these contemplated, telegraphs evanescent or only. signs signals production “ to have not, therefore, do claim first I applied electricity evanescent for the purpose showing telegraphing signs signals. “ and final object telegraph The original my imprint’ at its distance as characters signals intelligence; object any dr in a manner. them permanent to mark impress “ in two end, I have distinct obtain this applied electricity To the motive I have novel 1st. process, applied, by ways. produced by electricity, magnetism of electro-magnetism, 2dly. .at distance. signals machinery printing operate signals I have electricity print .effects applied distance. chemical mark which I imprint or machine with apparatus v,

O’Keilly al. Morse et at a I distance, thus de- letters-for purposes signs telegraphic scribe.” instruments, a and of how description Here follows -the sums After which patentee are employed; up,

they invented, he had desires what he affirms to have specifies in these the words: him by grant; secured “ invention, I as First. What claim desire secure my by in a main circuit, the letters-patent, employment, telegraphic device called the com- of a or contrivance receiving magnet, a circuit each independent circuits, bination With short local or other or con- register magnet, magnetic having register trivatices, such relation to the for registering; sustaining contrivances for or magnetic registering, register magnet, and as me line, of-circuit of will enable length telegraphic obtain, circuit, the aid of and main with battery to and galvanic and local circuit, the intervention a local such battery be as could not obtained other- or for registering motion wise power if at all. the battery, without use much larger galvanic “ invention, the my also claim as combination Second.-1 with called the connected apparatus, self-stopping the apparatus the clock-work by in action, said the register, setting register F, as described. the lever herein it with pen and stopping invention the combination I also claim my Third. lever, or its with equivalent, the pen points pen point device, over which the or other roller, equivalent grooved the. paper,, made be suitable marking upon, or other material the receiving for the impression purpose pass I am enabled mark or means which' characters; print fabric, indentation, or other thus upon paper signals sign's dispensing use of matter for the marking, with coloring speci- 15th, 1846.” January my letters-patent fied itself, constructed according specifi- But Telegraph use, in actual been exhibited having cations and patents, in order to is necessary, put paper in proof, given heard, that instruments themselves has been case which described. Telegraph. Description —of, consists It its with circuit The main battery 1. lever. The with 2. signal key 3; with its The circuit battery. local receiver, mutator, with its electro-magnet. 4. lever, and grooved its pen with electro-magnet, 5. register, roller. et al. v. Morse-et observed, It bewill that in this description relay magnet, called, as it was which the combination of circuit was effected, will not be been found. It has originally substituted mutator, invented receiver or on the same by principle by subsequently main circuit each is combined with local circuit, or office, circuit in the sufficient mo- telegraph whereby tive is obtained to And, work register. rule is That also absent. It has been port supplied by lever, its improved register pen pen point rollers in connection. And, grooved will observed that has telegraphic dictionary indented, also abandoned; and characters pen constitute an little else beside alphabet, differing figure of the letters from the common is there- alphabet;

fore read, not as common manu- by peculiar dictionary,/but script. occurred in the case which makes it Nothing necessary to.de- scribe the self-stopping apparatus. The main circuit of the conductors, in connection with prin- lever, with which ciple battery, key pen upon- .its operates it, be thus described. may It is ain of and consists of these conductors: buried in the under begun plate ground copper office, the first telegraph A one end wire, inserted in the copper having copper plate, the other in one in room of the the pole galvanic battery, office. the wire, Another with one end inserted in other pole copper of the and after the rooms may battery, passed through convenient, and inserted with the other end of it extended up in and is brass, under one end of a short bar of which part the instrument called the key. We will here the of the circuit of conduct- stop description ors, and describe this instrument.

Key Lever. with its Signal consists of a of two flat of brass, This cross formed bars key table, or three screwed down the two inches long, upon .about fixed on each end of the arms table; or upon pedestal bars, of this cross there rise similar after the manner of inches about a high. surveyor’s compass, couple sights fulcrum lever. This These the fulcrum the support signal the two is between up- of the lever a steel extended cylinder bars on the arms of the its ends cross, terminating with right so that it ends, axles the bars near upper extending through be turned the lever is worked. when upon this ful- its centre The lever is a bar brass fixed with .of ‘ 's* et al. v. Morse its rest, horizontal when at and is It is kept cram. position fixed under its fulcrum extended back. A sort spring is of brass fixed under front button end of immediately cross; to the foot of the so lever, and in the when the proximity into contact lever is down is pressed brought a wire is extended its the end of up through it and tre. from cen- that, is so contrived short lever This button extended it, into contact with the it is turned from cross. brought We to the circuit of conductors. return now .. is the head of cross that wire in and under this It .the from bar inserted; the ductor. and this constitutes con- battery next — one the There aré noifr here two conductors conductor office, is from the when the transmitted being intelligence from transmitted other when office. intelligence being transmitted, then, after this When is not bar being intelligence its the button the brass wire centre having through key, button is so is the conductor. But position when bar, then it is not it is not in contact with this changed next and left hand arms of the conductor, cross right conductors, next and the are the lever signal and the fulcrum button, with the into contact is the down brought pressed conductor it. it and the up through wire projecting from the office, to be transmitted When intelligence button, out of brings changes position operator cross, and the circuit at the foot contact with is point the' next the constituted conductor but- lever broken, and the then command has The operator ton towards key. down into con- pressing key By circuit for operation. and the closed; button, pressure off, the circuit with the tact the circuit of This action produces corresponding is broken. he sends off. lever, intelligence registers pen now return of conductors. the circuit We is the conductor. the button next extended The wire table, the and then down under up is extended and is copper, of the situated receiving magnet, it near the pedestal through and from the distance inserted key, at a convenient on the table on stands one cor- end, which its near upper standard in a brass de- receiver, which will this presently ner of the pedestal And, scribed. next conductor. is the This standard the foot wire, extending brass is a small The next to the into the pedestal proximity standard through this up covered and with wire, prolonged This horseshoe magnet. silk-, horseshoe, first around of the shanks the is around wound then, constitute other, and made around the the one and end TERM, 1853. et al. v. Morse it is returned of the after which the helices down magnet; inserted in the foot of another the and stand- through pedestal, on another corner of the And, ard pedestal magnet. conductor. This standard is the next end wire with one inserted into next, is the brass other, end, and after its standard near its out of the extension upper iron wire on office, united posts. conductor to the. next office. This iron is the next wire On end of a office, wire, this it is united copper entering under the head of which has its other end inserted .and the circuit is cross of the in the office. Thence continued key office, as in the first of this office when instruments through it thus office; to extended out to another and posts again number, distance, over the last through any then, office, of the circuit. It is after being passed through office, offices,extended as in the other down instruments of and fastened in'a copper ground. plate conductor from this earth, it is constitutes the said, cop- out, from which set other, to the we and thereby per-plate circuit is completed. receiver, describe the more We will now return and properly called the mutator. Receiving Magnet. rests on the which has been This pedestal, already magnet broad, four or

mentioned, inches five with ten long, eight to the sides of horizontal, axis of its helices its parallel to the front what corresponds part pedestal, left, two standards horseshoe presented proximity on the circuit. passed we a brass across the It in its extended kept position by l?ar horseshoe, helices, near the heels kept pressed, end, them, a screw extended down from either firmly upon into pedestal. armature of a mov- heels themselves to horizontal Its present which, it lever, their attractive will able within power; upright circuit. found, is one of the conductors local be presently local circuit can now described. This begins gal- office, vanic consists these things: battery one of the local wire, A with one end inserted copper pole end office, in a room the brought up battery bar or brass table, into screwed upright through end, the'' back hand standard near its right upper standing corner of the of the receiver. pedestal then, And The next conductor A this standard. end under pedestal wire extended from its lower copper al. v. et al.

O’Reilly Morse et which constitutes there connected with steel cylinder; on which stands the movable lever fulcrum, men- already the main circuit. tioned describing (cid:127) of the is the heels horizontal, mag- This parallel cylinder across the net, and has them, but is in channel pedestal; below fixed sockets, its which turns allows ends And, it, forward and back. lever which stands to move upon This lever is the next conductor. is It stands held this position by spiral perpendicular, it and back against from behind holding spring extended but back; its screw, end of a in like manner against projected it, is- attracted which, armature, fixed across when forward, to motion of the consents its heels maghet, reádily will be conductor, which its another pre- meet near upper end- ' not, described, the attraction quickly and when sently withdrawn it to its former position. We to the and commence will now return back local battery, its other pole. is another thence, direction, The first in this copper conductor wire. and after This has one end the battery, being inserted of the has around, room, to the situation extended its according table near end under the electro-magnet brought up wire, small which is to a of the where it united register, conductor. next like bar, horseshoe man- It is and wound prolonged to constitute circuit, and made main wire on the ner with the end its other fastened has helices of this and then magnet, And, ato wire. large is the next conductor. This wire It table, and afterwards brought up, is extended under the standard, a brass into upon has its other end screwed corner pedestal or remaining right-hand front conductor. this is the next And standard receiver. wire, extended from irs lower end (cid:127)It succeeded brass between the helices of of the horizontal under pedestal, brought up bar, which side to the under receiving magnet, near the heels the helices left across we magnet, extended lately in this.bar. and there inserted this fixed wire, of this this énd over Immediately is the next bar, bar, stands horizontal conductor. perpendicular And, screw, through is a conductor, passed last brass out from extended end, horizontally bar, near its uppér lever, which we movable its it, presents platina point end of the the other left in conductors lately describing TERM, 185 3. v. the circuit whenever attracted forward to close ready battery, the heels to its armature below. the presented magnet act of the on his the the main "When, operator signal key, by “closed,” called, as it is the horseshoe is is circuit complete and the armature of the lever, an electro-magnet, instantly to, its the towards, heels, is into brought attracted contact lever. screw, the with the point presented platina brass of conductors is “closed;” the local circuit and front, and its said the wire of the local circuit whereon we the just horseshoe helices, converted into an the electro-magnet, had formed being lever, acts the instantly upon pen register, the register, describe, we will records the intelli- the in gence mode presently the operator proposed. broken, the main circuit the done, and spiral This spring lever, had before assented to its attrac- behind the readily withdraws it to its former forward, tion quickly position, another awaits signal. Lever, Pen and Grooved Rollers. Register, consists of a horseshoe The the lever, register magnet, a pen rollers, the clock-work, and the all fixed grooved spiral spring, a in frame brass ten or twelve upon pedestal proper inches long, breadth, about half fixed down and convenient the table at upon distance from the other instruments. is fixed on the end of the The magnet right-hand pedestal, of the helices heels axis perpendicular, upwards, pre- to an themselves armature of the lever within pen their senting attraction above. a brass bar. The lever is It rests in a horizontal pen position, one end extended to the with across the heels of the right, is where its armature fixed it, "across and the other magnet, the left extended to towards the rollers. for its fulcrum a steel fixed across its centre, has cylinder, its ends in sockets in the frame work. It is held to the with extended from the lower end spiral of a spring, position bar in, from, fixed extended down the centre of the fulcrum, extended back and thence which, towards fast, made magnet, extension, its fheile assents to the action instantly its ; the lever with withdraws it. pen quickly fixed work, The rollers are each with its axis in the frame one lever, its axis on level with the the other with its axis the line of next the lever of the over lower roller. periphery lever, this end of its The fixed for- upon projected pen,, its to the centre ward, upwards, presents point proximity roller, direction for action this upon upper proper paper down, it, its transit over when cast the attraction, up by end magnet. v. Morse et al. roller, above is from upper and paper guided passed rollers, their it, and between two around revolution rate suited action of the drawn forward at pen. is roller, each There is around under paper exactly a narrow of such depth pen, groove pen opposite point, on does its indentations not extend making paper, roller, the metal of the to the its whereby point preserved, line of on from characters contact with kept paper roller, and dimmed by ..either protected being compres- its sion'of the between them. transit paper, The revolution of the rollers the clock-work the left. motion, rollers put having electro-magnet end lever down, the armature with that attracted charged, and indents a the other cast with its character up, point the pen and the paper, discharged, spiral magnet spring n down the and holds it in has brought pen, position repeti- of the act. tion But will return signal we key, correspondent, the office stationed in distant whence the is to be intelligence transmitted, and follow in its course and see it recorded. been The intelli- having put possession operator, broken the circuit the lower conductors of his and gence, the, his lever a conductor of and made main thereby signal key, the and his hand lever circuit, presses upon signal applies is below, the main circuit the conductor down- instantly upon main the helices of this circuit is closed, within the horseshoe lever into con- armature has drawn its movable the a magnet, closed, is the horse- the local circuit with platina tact point, is an the helices this circuit shoe within armature lever has cast electro-magnet, lever, heels, the other end is its upon pen character indented up intelligible pen, the paper. upon broken, off,and circuit is The hand taken the main operator’s has is not a movable lever the receiver within it magnet, withdrawn, the local been its the platina point, by spring, broken, the is no circuit is the to magnet register longer magnet, from the and stands has down ready paper, pen sprung add character of the another repeat intelligence. character is lever, hand another upon operator’s And, added. characters.recorded, are read: are the how These they - —- - — C,---is D, E,---E,---is is is A,----is B, is —,— - - J, K,-is is L, is —:---is G, H, I,----is is - - - - R, S,— Q, is --is --is M,---is N, .O,.....is P,----is — - W,----is X, -Y, is T,---is U,----is "V",---is is - — - - is the Z, &, such alphabet. -.- TEEM, 1858. DECEMBEE v. —4, 3,-----is 1,-----is 2,------is Then----is 8,----is 9, 5,......is 6,----is 7,-----is --is -=— are the numerals. ; is 0 and these dot, lever an indented down the instant one holding a dash correspond- made holding'it longer length ( )— distances to the time. The dots were made at corresponding ing held And, to the time the hand the lever. off and its before us. This operations Telegraph evi- examine the Monroe then law proceeded (Judge case, dence all other and then points passed' following decree.) Court,

Decree November, the Circuit 12ih is found and that the court adjudged letters-patent Morse, the United States to Samuel F. B. complainant, of a his invention new useful mode improvement information of communicating by signals, by application 20th, but 1840, issued re- June electro-niagnetism, originally on the 15th issued afterwards day January, finally June, 1848, on the 13th of bill in their reissued read the the exhibited and of this are valid and acts cause, effectual hearing and that the government; assignments by complainants thereby, them in their bill vested alleged, granted. And thereby exclusive rights found and It is that .the adjudged court, defendants those disturbed the have, in as in their bid rights, complainants the defendants, after the thereof they, grant alleged; Morse,, Samuel F. B. and co- to his assignments patentee, and after the final reissue complainants, letters-patent mentioned, did, above within the and else- district Kentucky construct, and where, wrongfully unlawfully a telegraph, employ, -of combined circuits of consisting worked electricity, -motive electro-magnetism, same substantially plan construction and of of with principle operation of the telegraph Morse in his said described and letters-patent the ; and specified which which in one station, intelligence, was, by by.the defendants, transmitted to'other distant stations, by making record thereof in the thereat permanent alphabetical characters in described and the to the specified Morse, said letters-patent did violate and the and exclusive so thereby infringe rights the United States to him, the said Samuel F. B. granted by and invested in the Morse, found; above and complainants that the is considered heretofore injunction herein granted awarded and enforced. was rightfully itself, however, by It document read the com- appears, by ' ét et al. v. Samuel' their that F. B. patentee, plainants among proof, October, to the Morse, had, 1838, on of issu- prior 30th'day the United States of his for his awarded ing original by invention, of France obtainecbof the government pa- original tent for the invention of his in Electro-Mágñetic Telegraph, and Construction the same with that described of plan principle in said his so afterwards obtained of the United letters-pateiit' nn States, And It that the seems court exclusive right complain- is limited this fo- his ant,-hi'-respect original'invention, by its date. the term fourteen reign patent years ordered, decreed, therefore It is and defend- adjudged, ants, and commanded servants, be, their are enjoined they hereby, agents, desist, them, do still and each that they, fourteen from and 30th shall for day of the term of years during' October, use refrain, from all every altogether which in complainants Telegraph, Electro-Magnetic defendants, bill violation their charged-was, by employed forms described which,'in of their its several rights, the de- denominated witness in cause, proofs by answer, the in- Co- defendant, positions, O’Reilly, the transmission which"is intelligence lumbian in one Telegraph, thereat a distant ano her by making per- place place, characters in the manent record in the alphabetical Samuel F. B. invention or specified; Morse for' original thereat, the action of the-instrument would making out of sounds, and characters, make such them- alphabetical such or ordinary alphabet; characters words composing thereof, in and from the of such part using telegraph, so mode, granted other exclusive violation rights th.e and that States vested in United the complainants; they fourteen refrain from shall, for and the said term of years, during used to-be within district or vending making,-constructing, of circuits combined consisting Kentucky, any telegraph of on the motive electro-magnetism, electricity, worked-by Telegraph Electro-Magnetic plan-,andprinciple in his letters- Morse, described specified complainant, be transmitted shall may patent, by intelligence in the said above'stated, a record thereof in the mode making, Morse, or F. the said Samuel B. characters of alphabetical by making formed the same alphabet plan principle, shall or characters sounds, such such mode whereof exclusive and infringement in the violation composed, above adjudged. right complainants they the letters- court, is also found adjudged by-the Morse, for his in- F. 'B. to Samuel patent United States 185 97

O’Reilly al. v. et et in electro-magnetic of a new and useful vention improvement but the 11th issued on day April, telegraph,” originally amended June, 1848, with the reissued on the 13th of afterwards invented, is the bill in of the improvements specifications exhibited, made the record and part of the complainants and and effectual act cause, government; is a valid in and assignments by that their bill thereby, complainants grant- with the exclusive thereby vested rights alleged, ed. And disturbed have the defendants It is found and adjudged, found, is 'It the that the exclusive in these their rights. complainants last said of the defendants, before and after-the issuing June, 1848, in renewal of the 13th mentioned letters-patent and .did, the district of former within Kentucky patent, said unlaw- did elsewhere, constructed, cause to be and wrongfully use and as a of the Telegraph, fully employ part Electro-Magnetic denomi- an instrument denominated the Columbian Telegraph, construction, mutator, principle nated them the in by plan it, substantially, and by in purpose accomplished operation, and same described with improvement specified the, Morse, last said mentioned complainant, letters-patent to his his schedule called, in which consists of the contrivance this denomination and which magnet, receiving of the the first claim under head of described specified in his schedule. And improvements constructed, did, in like to be manner, That cause they Tele- said Columbia as another of the part unlawfully employ, graph, combina- instruments certain other apparatus construction, thereof, in operation, tions plan principle of the the same with the improvements substantially purpose, Morse, and him, the said F. B. in invented Samuel register the schedule the third claimed described and thing specified of the combination invention, him as his consisting over roller lever, grooved pen pen point which of his indentations receives the paper passed, use with the characters, and dispensed whereby alphabetical for the material, as original specified coloring issued and mentioned, first above invention telegraph, date And 15th, 1846. January bearing Tele- the Columbia found called It is that the said telegraph, im- the said two part graph, containing provements consisting .his Morse, described and said specified the defendants em- said last mentioned letters-patent, issue last mentioned last of the said before arid after the ployed, elsewhere, the district of letters-patent, within Kentucky mentioned, above mode transmission of intelligence VOL. jcv. al. v. Morse exclusive so violation infringement right granted last these mentioned the United States by letters-patent, by and held them and by alleged by complainants by court adjudged. decreed, and ordered, and adjudged, is therefore that and are defendants, their servants and agents, they hereby and them each of do and commanded still enjoined desist, they forever, and the term of fourteen shall and during years and from the eleventh hundred day eighteen forty-six, April, use from all and refrain of the. every altogether employment instruments, above-mentioned denominated the telegraphic mu- the other

tator, in the combination with above-described instru- ments of such or in combination on the any telegraph, same in the transmission of plan principle, intelligence the district of And Kentucky. desist, That do still for the said they term'of. during fourteen the transmission refrain from-all and such every years, employment in the district of within intelligence Kentucky, above-mentioned Morse, complainant, improvement in the of his register whereby telegraph, accomplished of his before mentioned, making alphabetical characters describ- ed, indentation instead matter, specified by coloring in violation of the exclusive theni rights complainants, by held under the aforesaid above And letters-patent adjudged. That' the shall, defendants for and the said term during fourteen from the said eleventh years day April, eighteen refrain from hundred and be forty-six, constructing vending within the in such transmission of employed intelligence, n districtof of the above-mentioned Kentucky, improvements, either the mutator, instrument denominated the the improved Morsé, of said register other of improvements so described and Electro-Magnetic Telegraph, in said specified as the invention of the F. letters-patent said Samuel B..Morse, whereof the exclusive him; and shall right granted they otherwise, aforesaid, in no for term violate, or. in any- wise the aforesaid infringe, rights within complainants district said -And Kentucky. ordered, isIt that the have complainants writs proper of execution on is above decreed. what decree then went (The provide damages, part is omitted.) defendants this decree. appealed The cause court in this Mr. Gillet Mr. argued Campbell for the Chase and Messrs.- .appellants, Harding and Mr. New for the York Philadelphia, appellees. Gifford

Q’Keilly v. et al. do more state for the than merely It is impossible reporter assumed counsel. respective positions contended counsel the appellants four- void, it runs of 1840 is because Morse’s patent First.. date of instead of that issue, teen from the its length years of his time from the date French patent. what is Second. Tn construing patent, th.e deciding conclusive. inventions summing thereby, up patented but claimed, what is in the sum- is patented expressly Nothing as' the invention. up, ming claimed, whe- Third. What described in a not not, ther invented is dedicated public, patentee as a in a be afterwards claimed and cannot part or otherwise. re-issue void whole, A is void in when Fourth. except part statute. otherwise provided by An invention is so as to be complete, patentable, Fifth. or to bar until is inventor, a another obtaining patent by to usé. perfected adapted a not Sixth. Where is for a combination of patent parts, for the combination, different the use of parts composing of those less than the is not whole an infringement. parts void, because Morse’s and 1848 are Seventh. of 1846 patents he the first of sub- was not inventor things patented, or stantial and material thereof. parts 13, 1848, Morse’s reissued dated June Eighth. patents, void, because has not shown that surrendered patents or other- were for defective invalid inoperative specification, wise, so on to make commissioner, as to confer jurisdiction out, such reissues. The surrendered set disprove patents being such jurisdiction. void, be- 1840, reissued, Ninth. The patent secondly cause the surrender and make a second commissioner had no a authority accept reissue. seeond reissued, void, Tenth. as secondly patent Morse’s n because it is broader than the invention patented. originally void, Morse’s 1846 is patent Eleventh.. Because 1. material of it had been known parts pub- use before lic his application. first circuits claim,covers the-inventions connecting Wheatstone, used 1837. Davy, by Henry, 2. Because the Silliman’s same was described by Henry Journal, and in the London containing Mechanics’ Magazine, invention; account of Morse’s Vail, Davy’s giving and others. thereof, 3. the same invention, part Because or a substantial et al. v. Morse Wheatstone, himself, Morse Davy, prior was patented 1846. for his patent application of 1846, is the same claim in the reissue first This last reissue of the 1846. the fourth claim thing and Moss shows Henry account Henry’s, given the same as Morse’s first were claim Wheatstone’s, and Davy’s, of 1846. the reissue of the patent is broader void, of 1846 is because it reissue Morse’s Twelfth. than original. of a its receiving 1. claims employment magnet, He short, local, cir- combination with independent equivalent, cuit, to obtain power. magnet, having register He there claimed the such claim in original. There is no contrivances, or registering invention which'sustained power, receiving magnet, him to obtain relations, as would enable certain short, local, cir- &e., independent without mentioning The claim short local circuits. He now claims two ma- cuit. terially enlarged. which includes 2. His third claim for combination .is over which pa- lever or its for any thing equivalent,” pen per may of receiving for the impression passed purpose fabrics, and other characters, indentation &c., paper matter, &c. with coloring dispensing of his claim. Here is a .enlargement palpable addition, Hi's and not historical recital is an unauthorized perfect specification. necessary reissue on of a account defect- surrender Thirteenth. The amendments authorizes only, changing ive specification claims. one, nor does it authorize new a new into the specification of 1840, reissue of the letters In the second Fourteenth. machine, and not a effect, manu- principle patents matter, or an facture, or improvement upon composition it is therefore void. either; ¡¿he considered patents sepa- The counsel for appellees viz. rately, Patent of 1840. Reissued 1848. Patent of 1846. 1848. Reissued Patent of 1840. To 1848. Reissued pre- it, claim five defences are and the under : sented It is by alleged appellants — in date I. void reason error That it is not an by alleged e. date of French patent.) (i. fifth, sixth, and That claimed in II. the things claims are not (cid:127)eighth patentable. 1853. 101 et al. v. inventor of substantial not the parts Morse was That III. as claimed. improvement insufficient. specification That description IV. do not infringe. V. That appellants examined these heads was The one of separately. (Each head, bestowed court following attention by particular view of the counsel insertion proper.)

renders 6th, 5th, 8th Claims ? and Are the Patentable II. fifth, is a claim the the 5th 6th. system Of I. dots, lines, and horizontal spaces, (suscep- composed of signs, combined, numerals, words, variously representing tible being an for in- purposes; telegraphic being improved sentences,) and strumentality the art of telegraphing by electricity galvan- ism. — The-sixth, claim to the art is a consisting marking lines, dots, horizontal spaces, composed (susceptible signs, words, combined, numerals, variously representing of being circuit more or breaking galvanic closing by sentences,) combined with to re- for telegraphing; rapidly machinery less them. cord 1836, the act of so is by improve An art patentable v. 1 Gall. Cutter, 478; it. Whittemore on Pa Phillips ment tents, 2 Wheeler, Barn. Ald. 349; v. & 110; King Crane P. C. Sch. 409; Kneass, Webster’s Bk. v. W. C. Price, 4 C. v. Howard, 204; v. Curtis 12; McClurg Kingsland, R. on and 37; French v. Patents, Opinion sect. Grier Rogers, Judges Kane, J., Hulme, Parker v. Kane; Pamphlet, p. the means exercise; is distinct from art its employed be, are, under this patented. both claim. II. Of eighth that, is to the effect claim declaratory, This having into effect carry to conceive the first plan imprinting characters he electro-magnetism, telegraphic that the mere idea instrumentalities described in negatives' the whole constitute invention claimed his patent thereof, or even the most or that him, part intended important ]ie he had to surrender to reduced public conception else be should able to devise other utility, anybody the practical means end, same the use of the same accomplishing it as his but claims property. power, ' discovers a devises one mode He who principle- useful, rendered can be is entitled to a practically same pa- jnt him the full which shall extent of his invention protect it. nd devices for all other against using

O’Reilly et al. v. Morse et al. Morse, If first discover that the power therefore* could be used for the of eleetro-magnetism purpose recording one devised mode for signs, practical it, telegraphic he using claim, secure to himself the of so may, by general right ap- it, as well as the devices which he did so. particular plying Arts, 1850, Jour. 130; London v. Rep. p. Jupe Pratt, 146; 145, Webster’s P. C. Patent, Webster’s P. Forsyth’s C. 96, Price, Crane v. Webster’s P. C. 97; 409, 410;Park v. Little, C. C. 3 Wash. 197. Rep. the cases See collected in on Patents, Lund Lib. Law Sept. 37, that the p. illustrating proposition rights are not restricted patentee particular em- application bodiment his invention, but to the. extend exclusion of other like applications. case; Kane’s Blanchard’s Judge opinion, Fr. Inst. Jour. 1847; Parker v. Pamphlet, Hulme, Kane’s Judge opinion.. 1846.

Patent Reissued 1848. The defences to this suggested by are, appellants I. That the is not improvement described, and sufficiently is not improvement sufficiently discriminated. That it is for the same II. invention that was patented to Morse of 1840. III. That it inwas use and on sale with patentee’s consent, before for a application patent. IV. As Morse was not the inventor. That head, 4th the counsel for the appellees contended that the list was shown following evidence to have Morse; invented by. He was 1. the first who an person employed electro-magnet in a circuit for placed long telegraphic purposes. 2. He was the first who devised person suitable machinery arid such recording, adapted an machinery electro-magnet in a- circuit. placed long galvanic 3. He was the-first an person who employed electro-magnet in a placed circuit to long galvanic open close another long circuit for galvanic telegraphic purposes. 4. He was the first who an person employed electro-magnet in a circuit, to placed long and close galvanic a short open local circuit at a distance for telegraphic purposes. 5. He was the first who person course of a placed long circuit at galvanic magnets* various distances a series apart, of electro- close, one open time, the' same a corre- .and series of short circuits, sponding means of recording at one arrangement operator station could- simultaneously at a record series distant stations. telegraphic et al. v. to an who adapted electro-magnet first 6. He was person circuit, suitable for in a record- machinery long galvanic placed duration current establishment galvanic through ing current. such galvanic long devised mode who 7. the first person process He was intervals of time at determinate continuing establishing conductors, circuit through current record- galvanic such' current in dots lines. the establishment ing ' devised a the first who system signs 8. He person lines, dots’and so the combination of applicable formed as to available render the above recording, process distance, letters, words, and sentences. at a representing who person employed electro-magnetism, 9. He was first the means the manner specified, when developed (for signs telegraphing. produce’distinguishable who to an first adapted 10. He was the person electro-magnet spring, adjustable a lever for an reacting with adjustable stops armature, and thus formed a re- such limiting play of nice so as to susceptible regulation galvanic electro-magnet, ceiving force currents varying operate equally main circuit. long .a combined such an who electro- 11. He was the first person circuit, with a short in a recording circuit magnet long such electro-magnet. and closed by opened devised He the first who constructed person consisting machine several telegraphing, apparatus each other the several re- sustaining following parts, following functions the several lations, following respect- performing ively: . . COURT SUFREME

O’Beilly et al. v. 13. The art of dots distance and lines at a recording telegraphing. counsel then examined the question.of (The infringement each concluded with the patent, separately, following:) Appellants- infringe The Patents 1840 and jointly considered. to consider the claims It-is proper together, patents in connection with the as well specifications separately, order secure the real invention to the patentee. effect the several claims of the first apart joint also each, claimed in makes it a specific things art, Morse’s new process, telegraphing, system in dots current, the variable duration of the recording galvanic lines. The second is for an means improvement art was carried into effect. The two the art, constitute together system, process, TERM, 1853 al. v. Morse et O’Reilly et words, or, in other improved, telegraphing means Telegraph.- considered, as used so whole jointly This system telegraph from that features, is in all its main copied the appellants, from the so, That it is will following appear appellees. each, used several table, parts apparatus showing relations and functions. several their appara- employing appellees agree appellants sustaining following parts, tus for telegraphing, consisting relations, and the several performing to each following — functions, several following respectively: et al. v. delivered the Mr. Chief Justice TANEY opinion court. case, the in this court In proceeding pronounce judgment sensible, its of the difficulties not but importance, only in some of the which it for decision. The questions presents over the court term, case was at the last and continued argued deliberate examination. And it more purpose giving counsel continuance, since the we have received from the on both sides all of the raised which printed questions arguments, on the trial have been discussed. elaborately fully first take three defence. In the grounds appellants Morse, that Professor was the first and place they deny original inventor of the described in his Telegraphs two Electro-Magnetic reissued the insist that if he patents Secondly, they under inventor, which he original claims have patents issued to the acts of and do conformably Congress, not confer him the the exclusive use. And right thirdly, are decided them, these two if propositions against insist they that of Professor different from Telegraph O’Reilly substantially Morse, it, use of no therefore, infringement rights.' shall, these In we questions first determining instance, our attention to the confine Professor Morse ob- and which was reissued in

tained 1848. The main dis- between of this upon parties .the validity patent; pute decision it will and the the chief con- points dispose in the other. troversy to the' first In relation point, (the originality invention,) have been examined on both witnesses sides. many that, is obvious for some before Professor Morse made years invention, scientific men in different were parts Europe in the same it- engaged pursuit. Electro-magnetism earnestly recent self was them' a new and un- opened discovery, a. labors, field for their á and-minds of order were high explored its and the developing engaged purposes be applied. might al. et v. Morse Institute, states in of the Smithsonian his Professor Henry, - 20, of 1819 that, to winter an prior electro-mag- testimony is to say, telegraph operating by netic telegraph —that — was magnetism influence electricity combined it on which scientific founded that the principles possible; that the first fact of unknown; then electro- until were Oersted, of in Copenhagen, was discovered that by magnetism and the account winter, and was widely published, everywhere received interest. with discoveries, account of the subse- He an also various gives to- different in different time, made from time persons quently by them its and powers, among places, developing properties 1828, his own. He commenced researches pursued success, ardor and from that time until them telegraph of Professor Morse was established and actual operation. that no has contributed more. Aud is due to him to one say to and to enlarge lay knowledge electro-magnetism, invention of which we foundations than the great spéaking, himself. professor however, to in detail discoveries give unnecessary, — those of others. enumerated it him either his own or But from his that soon after appears testimony very discovery of science this Oersted,'it made was believed that by men be used to intelli- communicate newly-discovered power might gence Paris, 1823, to before the distant And Ampere places. year science, one of the most successful cultivators of physical to the French But plan.for purpose. proposed Academy reduced to never And practice. project discovery was Woolwich, Barlow, of Military Academy Royal made 1825, that the current diminished galvanic greatly England, rest, time, at- increased, as the distance put all Subsequent to construct an tempts discoveries, however, electro-magnetic telegraph. and in when revived year th§ hope; have devoted himself the subject, Professor appears'to men of scienee the conviction everywhere general among could, be, later would accomplished. object sooner the fact that the in their gal- great difficulty way current, became vanic however strong gradu- beginning, wire; on the and was not weaker as it advanced strong ally distance effect, a mechanical after a certain enough had been traversed. produce the discoveries But, encouraged time, in the belief-that made from time were strong eminent and was practicable, many telegraph electro-magnetic n became men in well country, scientific Europe, what surmount appeared engaged endeavoring deeply ' - this state its And in the chief obstacle to- success.

O'Reilly et al. v. Morse et al. to be a matter that four ought not different things surprise have overcome the magnetic telegraphs, purporting.to difficulty, be invented and made so should at the public same time nearly each has claimed a and that a close that and priority; careful of the facts in each case to decide scrutiny between necessary simultaneous, them. The so were that neither nearly inventions inventor can accused of derived justly aid having from the discoveries of the other. these inventors, Steinhiel, Doctor Munich, in Ger- One. communicated his to the and of Science many, discovery Academy Paris, 1838, on the 19th of states, in in his communi- July, in cation, that it had more than a Operation year. inventors, Another of the Professor Wheatstone, European London, in 1837, the month of to Professors April, explained Bache, and then London, who were in his of an Henry plan and exhibited them his method electro-magnetic telegraph, of circuit, into second action a in order to bringing galvanic for diminution of force in a the circuit; provide remedy long Gale, it the of Professor that the appears, but testimony pa- to Wheatstone Cooke was not sealed until 21, tent January 1840, their was not filed the 21st of specification until July ; same is no evidence that there year any description it was before 1839. published is that of Edward remaining European patent Davy. 1838, His it sealed on 4th of was the but appears, July, his was not filed until 4,1839; and when specification January into these two that of with their English -patents brought competition Morse, take date the time of must they filing For it be borne in that, must mind respective specifications. as the law then sto’odin the inventor was allowed six England, tó months file of his invention after his description while, in this sealed; was filing specification country, for is simultaneous with patents. application all, The defendants contend that or at least some one of these were invented and made before the European telegraphs, public Morse; claimed that discovery method process which he to a distance is by the conveys intelligence substantially same, with for ’exception only its capacity impress- alphahet marks or he described ing upon invented. signs paper for the remarks upon present, any identity Waiving, . inventions; similitude of these the cour' opinion maintained, first and that branch cannot objection first inventor of the de- telegraph was original scribed in inventipns specification, his three preceded European the defendants.. relied

O’Reilly et al. v. Morse et al. full and clear that, evidence is when he was returning 1832, he was visit Europe, deeply from this engaged upon and that and means during voyage; process subject mind, so far own were developed arranged of ultimate It is in confident success. that he proof pur- these ardor and unremitting sued investigations industry, embarrassments; and we interrupted occasionally by pecuniary think that established, it is of Professor Gale testimony that, others Morse had invented early spring circuits, for two more electric or his with combining galvanic plan batteries independent purpose overcoming circuits, force of diminished long electro-magnetism although to, and that afterwards; not disclosed the witness until that he had so far is reasonable com- pow- there ground believing combination, that the invention, whole process, pleted mind, in his and that the de- were1 ers, machinery, arranged it out arose from his want means. For bringing lay required of skill to execute order mechanical highest and delicate work to the" nice put necessary telegraph adjust and the error defect would have been slightest into operation, success. He had not the means that time to to its prp- fatal cure character; of workmen of that the services without be would do could which to no model justice their aid prepared of it moreover sum And required large his invention.' money He, however, materials for the work. filed to proper procure 1837, October, and, on the on the 6th of 7th of April, caveat his 1838, his his Witt* application patent, accompanying applied invention, his of dnd describing process a specification It is true that to the effect. produce O’Reilly, used means that now combines answer, alleges plan by his currents, with or electric independent or more galvanic two batteries, but in that discovered’ not contained specification, was is evidence afterwards; but there no what- interpolated satisfied, we are And this charge. to from ever support as it now his specification, that plan, appears testimony, to intended be de- invented, and was been actually then had scribed. us, think it evident that the before we evidence this With- Steiñheil, Wheatstone, of was to that Morse of prior invention the time Steinheil, of discovery taking or Davy. Science, cannot to the French Academy himself gave the months May it back as beyond understood carrying to exhibited Profes- Wheatstone, that of June, 1837. And Bache, back year. April goes only sors Henry the invention in the evidence carry-back is nothing there And 1839, when specifiea- his -4th January, beyond of Davy 10

VOL. xv. v, al. et filed, said to have been tion was made in except publication 20, 1838; the London Mechanics’ and the Magazine, January to take date entitled invention Morse justly early And in the description inven- Davy’s spring 20, of' tion, 1838, in the there is publication January given could have borrowed; which Morse and we specified nothing invention ever have no evidence show his was or could be carried into successful operation. Wheatstone, In relation to there would seem be some dis- in the Professor Gale’s tes- According crepancy testimony. mentioned, as before Wheatstone specification timony, and 21, Cook was not. filed until informa- July tion is from the London Journal of' Arts and derived Sciences. it F.'Barnes, But of Edward that this testimony appears, by case, And, in 1839. in-actual telegraph operation Little, the Electric v. Brett & Common Telegraph Company Scott, said Pleas to have been Reports, specification 12,1837. But if last-mentioned date is filed December taken one, as the true it not make his invention to that prior would would, i f case must be decided And even it Morse. yet it, e cannot out record, the take into consideration a in tl we go testimony book fact in a stated reports. Moreover, because it has we have noticed this case merely do into the mention it pressed appellants argument. on it. their And if the answer, in their nor defence evi- put conclusive, it dence of its would avail them not. priority be allowed to surprise this suit. cannot For they pa- invention, of which tentee evidence of a they gave prior no him notice. was more doubtful, if the Morse’s invention But priority fact one of the conceded that in some in- and was European weeks, a few months a few ventors had not him would preceded that, The act provides invalidate his Congress patent. inventor, to the first believes himself a

when, the patentee not render shall his in foreign country previous discovery' - or some void, such part unless substantial discovery, patent of described in it, printed publi- had been before patented, cation. believed doubt that him- one will Morse v,No no we suppose for his inventor, to be when applied patent self the original does to have not appear 1838. Steinheil’s April, discovery described to have been any print- ever nor patented, neither of the And of that ed until publication July year. to have been are shown by testimony inventions English patented nor to after Morse’s application until as to em- publication have previous been so described any Ill 1853. et al. v. Morse n substantial his And if his part brace invention. appli- circumstances, for a was made under such cation patent if even of fact he was not the first in- point good, patent ventor. it this view the to subject, In unnecessary compare inventions, of Morse with these to ascertain telegraph whether the European are the same or not. If were they substantially they same in it would not bis every impair particular, rights. them, it is to examine and look at the impossible But and the process each, and results so as the facts far machinery us, at once the and essen- before without perceiving substantial between difference them and the decided tial superiority . Professor Morse. one invented by made, can the he of science in or the information or ad- Neither inquiries received, from course men re- vice he searches, character of an inventor. No right impair made, of a of of invention can combination possibly consisting elements of without different power, thorough knowledge them, in which of each of mode they properties difference, it can no each other. And make operate books, from or from he derives his information whether respect, the science. If it were with men skilled in other- conversation combination different in which wise, no patent, elements. be obtained. For no man ever ever made used, could such first obtained this information, without having an invention some fortunate accident. And it is it was discovered by unless as the an invention Tele* that such Electro-Magnetic evident have been into action without it. never brought could graph n of scientific and the nicest very knowledge aFor high degree it, are combined in and were ' mechanic arts both .skill successful it into and obtained And fact operation. bring necessary information arid necessary Morse that counsel sought sources, it, and acted neither upon the best im- ' inventor, nor detracts from his merits. as an his rights pairs as the first and inventor original Professor Regarding come to the which have been we objections the Telegraph, of made of his patent. to the Validity dwell upon think necessary objections We do not issued, which the first the proceedings taken reissued the additional specifications or to first, there alteration if was relation In commissioner, been a have appears the suggestion and, substance; regards rather than form, matter second, of the reis- or on the face proof is nothing there is not described the invention to show therein sued patent the original to be secured intended one the same O’Reilly et al. Morse et al. v. was lawful It the and it authority; reissued by proper patent. see commissioner to that it was the the did. duty patents more the invention. cover than It must be not original pre- not; until sumed, therefore, that does the contrary appears. Variations,from the the former description given specifica- not it is for tion do a different imply necessarily discovery. to the old surrender receive another in its right the, was for the to given place, enabling patentee purpose invention, a more of his perfect when give description mistake or was committed in his first. It oversight necessarily, therefore, varies it. see And we in the reissued nothing not, without to the contrary, patent as proof regarded than, one, a more the former careful description explaining the the more nice and delicate manner in which different fully elements of and combined act arranged together power another, one in order to the effect described in produce not is it because it does bear Nor void specification. date with French It is not to in- same- patent. necessary Professor Morse to whether the Patent quire application France, does or not ex- Office, in before he went does of the. act of from operation empt patent Congress upon it does ex- For, if it should be decided that subject. this be to effect of that decision would limit it, the- only empt date of from the fourteen foreign years patent. monopoly in full force at the case, in either time And, patent Court, Circuit when injunction granted pre- court. for this stood hearing sent appeal regularly us to the taken to the specifica- And exceptions brings the reissued of 1848. tion and claims of the patentee We objection description no well-founded perceive and its nor parts,- which is to of the whole invention given separate set seven forth to a the first inventions his right on the arises of his claims. difficulty eighth. specification words : It is following limit I do not specific propose myself Eighth. described in the or foregoing spe- machinery parts machinery invention ; essence my being, cification claims current, or galvanic use of the motive electric power or however developed marking I call electro-magnetism, distances, characters, letters, intelligible signs, printing I claim to be of that a new application power being discoverer.” the first inventor or of this claim. the extent to misunderstand impossible where the improvement claims the right every exclusive He current, result electric or galvanic motive characters, letters signs, intelligible marking printing at a-distance. H3 al. v. maintained, it matters not what can by claim pro- this If result is future For that accomplished. aught or machinery cess inventor, in the onward march of some know now

we or a mode of at a distance discover science, writing printing may current, or without electric using galvanic means by part forth in or combination set plaintiff’s spe- process — less be less liable complicated His may cification.- invention — construction, and in less its order expensive out of to get the inventor if is covered this patent But yet operation. could of it it, nor the have the benefit use without ñot public this patentee. permission inventions of the door all, this while he shuts against Nor is himself of able to avail would be the patentee other persons, of electro-mag- and powers discoveries properties new For he men scientific light. says which might bring netism of ma- to the or confine claim does not machinery parts he a but claims for himself he monopoly which specifies; chinery, at a of printing for use, its however purpose developed, enable science him discoveries physical New distance. elements, and new new it with to combine agents in a mflanner attain the superior present pro- object means "the if secure it. And he can different from cess and altogéther new it with he every patent may vary exclusive use present science, and need no de- place and development discovery scription cords of manner, or the re- of the new process, machinery, upon office. And when his patent public patent expires, ex- is.. claims an what it In fine he to him to learn must apply clusive right de- not has a manner and he to use process could invented, and therefore not had not indeed scribed and The court is of opinion he obtained his patent. describe when broad, and not warranted law. is too the Claim could maintain that Fulton have one, will we No suppose invention vessels for his by- a propelling taken out patent and claim- used, steam, ed under it the steam, machinery the process describing to use the motive exclusive power right vessels. propelling however developed, purpose a that under such he could can supposed hardly which science the use of the machinery improved have prevented steam, the motive ; power since introduced has although vessels. Neither could man is the the result propulsion first, that steam arrangement discovered might, by proper who a motive corn or be used as power spin grind machinery, exclusive use of as a steam motive cotton, claim right such effects. producing for the power purpose steam as motive use of Again, power printing-presses Was the first inventor modem discovery. comparatively O’Reilly et al. v. Morse et al. kind entitled or to a a machine process giving of him steam as how- use motive exclusive power, right for the marking printing intelligible ever developed, purpose the use ? he have Could prevented characters used steam was ? invented where Yet subsequently .so press both concerned improvements as patentable must rights far stand Both use a known motive same principles. no marks or and it can make dif- letters; to print intelligible laws, under whether the in their ference legal rights is done near at a distance. Both hand depend printing but success the motive power, merely upon never, And it has be- combined. we machinery one, inventor of lieve, been .that first supposed by any use of stearn, to the exclusive steam as a was entitled printing-press, for. however power, marking printing motive developed, characters. intelligible Indeed, the the are inconsistent acts of himself patentee 1846 took out a claim made his behalf. For in He patent the circuits, means of his new of local which for improvement by the at intermediate intelligence could be places along printed line of and he ; the obtained a reissued main for tric distance new could be telegraph patent in this this 1848. Yet new invention the invention in elec- the motive and was power, writing current a galvanic was the undoubtedly developed, effect. by But if his and new combinations. claim machinery eighth sustained, be this would improvement embraced by so embraced, if his he first it for patent And was the patent. be and void. For could not take invention, circuits would local illegal a of his first out a for and portion subsequent patent limited the extend his law. beyond period thereby monopoly by to in the cases have been referred which Many argument, been this in the and subject, decided Ameri- English have can upon .We of those seem to courts. shall be speak only on, And those most relied ones. considered and leading court, in behalf of the the patentee, cases pressed upon Neilson’s for the introduc-

which arose in tion patent England upon the fur- heated air between apparatus blowing of iron. manufacture nace is that of case this Neilson leading upon patent, others and others Court v. Harford English Exchequer. to. this : was have argued appears carefully elaborately case considered the court. The one in his described .his invention as Neilson, for specification, fires, air heat in improved produce application forges, furnaces, required. a Aud it- where apparatus blowing be : Thfeblast current of as follows air applied pro- et al. v. was to be duced into blowing apparatus passed made air-vessel or endure receptacle sufficiently strong n blast; and or from vessel or that means through receptacle by a tube, fire, into be aperture pipe, receptacle kept to a heated considerable heat exter- temperature artificially He then described rather terms the and general nally applied. manner in. ed, constructed receptacle might heat- conducted it to the fire: and the air that the stating through material, was not nor receptacle form the manner of ap- In the heat to it. action above-mentioned for plying ment of infringe- the defendant other defences among insist- ed— that air and it hot heating machinery throwing into the furnace was not tion, described sufficiently specifica- — void on that also, and the account patent that a hot air into the furnace, cold, instead of throwing patent thereby increasing of the heat, was a for a intensity that was not principle, principle patentable. defences, the first these found a man of Upon jury skill at the knowledge subject, looking ordinary spe- alone, could construct such an cification as would be apparatus of a beneficial result, sufficient to make it worth productive to furnaces, while toit in all cases of adapt machinery cupolas, forges, the blast is where used. the second of defence, And Baron Parke, who ground court, said : delivered opinion It is difficult it from the very for a distinguish specification and this at first created in the minds of principle, the court much but after- full consideration we think difficulty; does not claim a but plaintiff ma- merely principle, chine, and a valuable one. We embodying principle, very n must the case think considered if the well principle being known, the had first invented a mode of plaintiff applying furnaces, mechanical his invention then con- apparatus a in sists this: for.heated air by interposing between receptacle the furnace. the In this he apparatus receptacle blowing directs the air to be heated the heat by application externally the and thus he the accomplishes receptacle, object apply- the blast, was before cold air, in a heated state to the ing furnace.” We see in this in nothing differing opinion any degree from the familiar lawof cases. principles applicable patent Neilson claimed no mode the particular constructing recepta- cle, or of it. He out the pointed in which heating manner done; be admitted but that it be also might done.in might and at variety or lower ways; higher temperature; that all of or less them would the effect in a produce greater et al. v. Morse a doubted, heated heated by air was passing through provided degree, that the court seems And hence it first receptacle. whether more than the thing it was a patent any discovery fuel better air would than cold. ignition hot that promote court, it construction, the if this had been the appears, And void; to be because have held his patent discovery would science, is not in natural philosophy physical principle patentable. this consideration, it was decided that much finally But after known, and be that the must well regarded plaintiff principle it to furnaces; a mechanical mode applying had invented and a heated his that invention consisted interposing recepta- furnace, and and the this cle; the blower by between means blower, it was and before thrown after left air heating therefore, used method Whoever, into the fire. throwing this invented, he had furnace, into used the process air hot form of the his infringed patent, although receptacle thereby it, be or the mechanical different heating might arrangements For those described whatever form was patentee. from adopted or whatever mechanical for the receptacle, arrangements (cid:127) it, the effect would produced Were made for heating if the was receptacle less degree, placed heated greater between furnace, and the current of the blower and air it. through passed air the" that hot will principle promote Undoubtedly, cold, of fuel better than was embodied this machine. ignition because was supported was patent principle But embodied He have been entitled to in it. would equally invented an if he-had improvement mechanical or in fúrnaee, blowing while arrangements a apparatus, of air was still cold used. But his current was patent sup- he invented a because had mechanical apparatus,' ported, which air, cold, of hot instead a current could thrown in. protected new method patent. And this inter- form, aof heated was the receptacle, he position novelty invented. us, We do not how the claim the case before can perceive countenance from this decision. If Court derive had said'that Neilson’s was for the. Exchequer discovery, cold, would better than and that promote ignition hot air to use it for that had an exclusive there might, right purpose, reason to been some it. But the court have rely upon perhaps, to such'a claim, denied And his patent. right emphatically court, construed supported alto- before us. unliké patentee gether discovered, a. heated Neilson that by interposing For recepta- 117 v, a]. O’Keilly et furnace, and and the the blower conducting between cle it, the in the furnace was increased. of air through current heat be whatever might this effect always produced, And or the contrivances for heat- mechanical form receptacle, it, air and into the the current of it, through or for ing passing furnace. discovered, has that the electric or not But Professor Morse distance, at a matter what will current always print no galvanic may or contrivances form mechanical machinery as a You use electro-magnetism passes. through effect, is, described that not power, produce motive yet or To that at a marks produce distance print intelligible signs. with, effect, it and passed through, must be combined ad- and delicate certain complicated machinery, upon, operate prepared justed upon philosophical principles, arranged skill. it is the praise mechanical And high highest has been new combination Morse, able, Professor that he one, to dis- of known of which electro-magnetista powers, or marks signs may cover method which intelligible at thus a distance. And for method process printed discovered, not discovered he is But has entitled patent. as motive current, power, that the used electro-magnetic combination, will do method, and other as well. Court of We have on the case Exchequer commented much attention in the courts more because it has attracted fully, courts, and this as in the has been well country, English a mistaken construction understood. And differently of perhaps claim in the now that has to the broad decision led under consideration. do We not deem remark other other upon necessary decisions, nor to Nielson’s relation upon to, cases referred which stand similar principles. of Exche- case the Court have made on the observations we quer, to all of them. will equally apply We decisions. And principles to the American proceed in the case of stated, this court herein were recognized fully et last others, term, al. v. decided Tatham Leroy Howard, 156. had discovered that that, case, appeared patentee ain close lead, set, would, under heat and pressure recently so its as to vessel, reunite after a parts, separation perfectly, held that make he was not entitled ple of cast And court instead wrought, pipe. for this to patent newly-discovered princi- such a lead; discovery quality new for the was entitled to patentable. that he But lead art process method in the of making pipe, ét al. v. Morse to and him invent enabled discovery employ; and bound or in his such method,-fully, describe process specification. to to, have also been referred which cases were decided in Many found, think, we courts. It will be circuit upon careful the. them, the examination, that all of decision previous on on which this maintain principles Nielson’s decision patent, it is 'admitted, Since that case reported, is made. that made, which would seem extend have been to decisions able patent- the limits marked here out. As we have beyond rights see that which would sanc- said we opinion, nothing already of m the new law of the introduction principle tion But departing any patents. not would this otherwise, it it court if were justify as established from what we consider principles in what to show was heretofore the courts. And American to the annexed this we refer cases. We subject, doctrine upon because such an them, do to comment on examination stop, reasonable this all bounds. would extend opinion beyond Wyeth 270, ; 3 285 v. Stone, R. Sprague, Blanchard Sumn. v. Story, case point. The first mentioned directly Indeed, we do not of think judicial authority, independently the act used in can Congress, that the be language justly otherwise. expounded 5th of the act of declares that a section .patent . for a term not to the inventor fourteen exceeding shall convey -using, of making, the exclusive to right vending years, used, his invention or be discovery; others to referring thereof. for the particulars specification be entitled to a who shall patent, section directs The.6th it be on which conditions pro- terms and obtained. be to a dis- shall entitled who has patent vides that person any art, machine, or new and useful a manufacture, invented covered matter; a and useful or improvement new composition them. But before he either of receives previous discovery any á of his he shall deliver written invention description con- apd of' manner process or discovery, making, same,” in such exact structing, using, compounding skilled in the art or as to science terms which enable any person it most connected, it or with which nearly appertains, and use the same. make, construct, compound, decided, this court has that required This specification and that the issues for the law is part patent; patent described invention specification. as an art or machine, Now whether Telegraph regarded be must set forth using the manner process making o.r no act makes difference in exact terms. The .Congress in. An between an art machine. respect improvement TERM, 1853. al. et v. bar must iron or cotton de- art so spinning making art ; and so must the the motive scribed printing by power held, steam. And all these cases has always in. more embraces than 'the nothing improvement new, described and claimed one who afterwards any the same method object, discovered tially substan- accomplishing the one described, had a essentially differing there be use it. Can reason art of right good why distance, means the motive printing electric should stand current, on different ? galvanic principles there Is reason inventor’s should cover why It would difficult discover broader-ground?- the act any thing which would this distinction. Congress justify of this describes his invention specification and the patentee discovery, manner it; and process constructing using like mentioned, his covers inventions in the other arts above- patent, more. nothing The of the acts of in rfelation to provisions Congress patents be summed in a few words. may up Whoever discovers that a useful certain result will be pro- duced, art, machine, manufacture, in the use of certain or of mat- any composition ter, means, for it; entitled patent by he the uses in means he a manner so full and specifies provided exact, that one skilled in the science which it any appertains, can, the means he without using to, addition or by specifies, any them, subtraction from the result he produce déscribes. precisely And if this cannot means he describes, be done by pa- done, tent void. it And if can be then the confers on patent him-the exclusive to use the means he right specifies produce or the result effect he describes, and more. And it makes nothing in difference, no chemical coveries this respect, whether effect is produced by or or combination; agency dis- by application natural known principles unknown philosophy ; his invention or before machinery acting altogether upon - In mechanical manner either case he must principles. describe the above mentioned, and the end it process accom- And one lawfully same end plishes. without different any may accomplish if he uses means infringing substantially, from those described. Indeed, if the claim of be maintained, eighth can patentee there no than to necessity further any specification, say discovered that, that he of elec- had motive by using power he could print characters at dis- intelligible tro-magnetism, it We will be admitted hands, tance. on all no presume could have issued on this such specification. Yet patent derive claim no aid from the It is out- can filed. specification

O'Reilly et al. v. Morse it stands, it. And if it, arid the claims beyond side patentee that the broad terms above- on ground it must stand simply and entitled him to a description, were a mentioned sufficient broad. our terms In act of Con- judgment equally patent‘in gress so construed. cannot be void, so far then illegal arises whether the respects patent being claim, void, whole question patent eighth time, is disclaimed in a this of it reasonable after unless portion issued. that there It has been urged, complainants, part case of this in a kind. is no is for a disclaimer That necessity in which commits an in those cases required only party was known before, fact, error and which was in claiming something in this case discoverer; he not the first of electro- was the first to discover that the motive he his distance; at a and that be'used write magnetism might error, mtion, inv law, if was a mistake supposing any, claim this broad authorized as described in specification, that the therefore may regard- claim exclusive privilege; and allowed to without a stand ed as nullity, disclaimer, validity and without affecting patent. act of Con- be maintained. This distinction can hardly be so recited, invention shall de- above that the requires gress scribed, tó the science which skilled appertains, that person be able to connected, it is most shall con- or with which nearly from the- in- description struct improvement given ventor. one, but- of a case, no Now, there is description process at á distance. And letters which signs printed other mode and the exclusive any by claims right yet him, which the end not described although other process, as the is used motive if electro-magnetism can be accomplished, — a' effect he claims an pro- is to That say power. distinct from the use process the of electro-magnetism duced by it. The of the acts . to words necessary produce or machinery that no can above show patent lawfully quoted of Congress n de- claims what he has For he not such a claim. issue upon law. And for such' required patent the manner by in scribed act of as the if Congress, forbidden by claim is as strongly him. invented it before had other some person be to dis- he therefore, required should permitted Why, the other? The evil is the and not in one case the claim'in same invented, no than he has although if more be claims He at- before him. others prevents has invented person he manner and wrhich' to process improve upon tempting the. deter the sp.e has in ification —and described public 1853. O’Beilly al. v. Morse et al. it, even if discovered. He can claim using lawfully only

from what claims, described, and if he more he has invented And the in this case must be is void. judgment against patent he is the act of which unless within the patentee, Congress gives to disclaim. the right to disclaim, which him is not requires law permits is remedial. It intended for the of the but pa- protection penal to not, therefore, as receive tentee as the .well public, ought would restrict its narrower a construction that within operation It that when than its words limits fairly import. provides claimed to be the first shall have in.his specification patentee material or substan- inventor or discoverer and original he not first tial which was part thing patented, claim and shall have no to inventor, just legal original — so in to much of same,” he must disclaim order protect claim as is patented. legally he Whether, therefore, the is because patent part illegal described, has more than he sufficiently claims more than he disclaim, case save must in either in order to invented, he and he entitled; is is to do so when to which he allowed portion the error was committed mistake. be to would as well construction unjust public, A different the manifest law, and defeat as object patentee, intended to evil against guard. produce very been entered at the It that no disclaimer has-yet patent appears it is not unreasonable. office. But For delay entering claim sanctioned head the office; objectionable a circuit court, held be it has been valid differences to exist to it are found justices relation among opinion this court.. Under such circumstances had patentee disclaim it until the it, to insist and not court highest right to which it its could be carried pronounced judgment. The had. therefore, disclaim, does render the omission alto- suit, he void; and is entitled proceed gether infringement invention which is of his of that part legally disclaimer was and described. no entered the the ’claimed But instituted, cannot, office before this suit was patent act und.er costs wrongdoer, allowed al- against Congress, And we think it proved. infringement should though question But testimony. infringement proved by it is before reissued we embraces both of the patents, proper, to notice the made to that objections case, proceed part circuits, to the second for the. local originally obtained in 1846 and reissued no this patent, improve- objection certainly -eighth the former one. We claim in ment embraced VOL. XV.

122 v. Morse et void, and that is that this cNim said former already havé seven inventions but the first covers nothing specifically patent mentioned. that it Nor can its is validity ground impeached invention, for which the a former patentee an improvement upon It true that a is under the himself obtained patent. had already 13, of Professor Morse, it if s. was in he act to his former it, desired so as make But to annex specification, improvement a it from that time part original patent. him to take there in the act that forbids out a is nothing if he it. prefers new for the other improvement, Any be no do and there can reason or justice inventor in so: might inventor, the like the original for refusing privilege policy, And when there is law he must contrary, no positive . other inventor of stand the same with improve- footing on is bound in a Nor his new ment discovery. upon, previous All that the to refer his former one. law re- specially new, what is not claim covered him is he shall quires or made himself invention, former whether by person. new, is not however, It is that this said, improvement alleged and that and is in his former if some embraced specification; so as to new, is it is not described it portion distinguish new from the old: is to discuss this difficult, It part impossible, perhaps case, so as to one who has not model be understood by any him, before familiar opera- machinery perfectly not, therefore, We to de- tions shall attempt Telegraph. or its mode of So scribe the machinery operation. minutely aid as this can be of model far to livered cuit done without intelligibly, to, and well done in the de- has fully opinion point this ease in decided the Cir- the learned who judge Court. is, All that we think is useful necessary say that, examination of the we think the after a careful patents, force of tenable. The the ob- on this objection ground which it directed upon receiving jection magnet, mainly said is a of the first is forms the same office. But per- machinery part is not of magnet receiving itself claimed as a invention. claimed part new á new result. new combination or arrangement produce And For, a new and useful result. this combination does produce combinátion, and posi- this new arrangement circuit tion of the is and independent magnet, lpcal receiving as it current, the electric opened galvanic passes course; and the intelli- line, main it in its without interrupting moment at the same is recorded almost at the gence conveys

O'Reilly et al. v. Morse et al. the line the and at the different end of offices on its local Telegraph, it a model or a minute And needs way. hardly ‘ a examination of the to be satisfied that telegraph machinery the it different places, which intelligence prints conveys line, as it must current, means of the on the main passes along a different require arrangement combination necessarily The elements from the one that at the end. prints powers only in the former inven- which all have used compose may been and combination ; tion but it is evident that their arrangement The new must be different this new effect. patent to produce and we for the local circuits was therefore granted; properly or claim no to well-founded perceive objection specification contained in reissued patent valid, both with the The two reissued patents being first, ques- claim in the remaining only exception eighth is, or have tion whether the defendants. either of them infringed by they the case we same arises in this part difficulty and claims stated, of the have in the specification already speaking á It is difficult convey circuits. for the local the two Tele- differences in clear idea of the similitude or with machinery one not acquainted familiarly graphs of both. The court must content therefore, with itself, general de- more terms, themselves special patents referring of the matters in scription controversy. mere change It is a well-settled principle law/that form, form is specified particular machinery (unless or an the means the effect described produced) as alteration in the use of or in some of its unessential parts; machine, not essentially equivalent known powers, varying not make the new or will or its mode of organization, operation be an upon machine new invention. improvement may consent its use without former; but that will not justify the first patentee; does profess Columbian Telegraph (O’Reilly's) a new result. object or new produce Its. accomplish and effect end of the main purpose, at the distance, at a intelligence .communicate And on its line, and at the local circuits way. or letters paper is done means impressed this other signs is the of the Telegraph material. The obiect purpose, of Professor Morse. .same with that think he we Substantially, same means ? he use the Does He circuits. the local the main does, both upon .line or more of two line combination gal- the main uses for the batteries circuits, pur- with vanic or electric independent current, diminished force of the galvanic obviating pose al. O’Reilly et v. Morse et little in form from invention very in manner varying be said And, indeed, the same Morse. of Professor entire third claim. in the set forth For patentee’s combination to differ essen- can said substantially hardly O’Reilly’s combination which it. uses the composes He tially no material arrangement, change register of these and with the aid means consists; which it elements ' or marks signs upon he conveys intelligence by impressing — read and being these marks or being capable signs paper means of adapted an alphabet signs understood by of Professor Morse the second And regards (cid:127)purposé. circuits, does not local for the mutator defendant All of the essential efficient from in particular. vary elements' (cid:127) retained, or their places sup- combination is well-known Its equivalents. organization essentially plied by the same. . is the of marks and from Neither substitution signs, differing Morse, defence to this action. invented Professor any those of a but not. for the invention alphabet; His new patent of combination of tangible powers composed intangible elements, described in his means specification, by aat distance, upon paper marks signs may impressed if be are and understood. And marks or can there read that manner means of letters in impressed signs invention, or his the same with substantially process those marks of it covered his by communicate' particular part it read, and can be thus intelligence, signs in the character of his The variation patent. infringement the marks would understood. could be read it, not if the marks protect further the deem it comparison We unnecessary pursue The invasion between the patents. machinery stated, authorized the injunction already rights, the Circuit plaintiff’s of its decree Court, and so much must granted by hereinbefore But, for the reasons assigned, be affirmed. costs, and that portion are not entitled complainants this decree reversed, court, and a passed by must decree in this costs, his own to-pay directing each-party Court. Circuit NELSON, and Mr. Jus- Mr. Justice WAYNE, Mr. Justice of the court on the GRIER, from the tice dissent judgment of costs. question GRIER. Justice

Mr. court, ap- concur with majority I entirely

O'Reilly v. Morse et al. n pellee below, Morse, F. B. Samuel is the true complainant first inventor of and the first who Recording Telegraph, nature, has or element successfully applied agent called electro-magnetism, cha- printing recording intelligible distance; aat and that his 1840, racters reis- patent finally sued and his for his patent reissued improvements the same and valid; and that the year, good appellants have secured to the infringed both his rights patentee by But, as I do not concur in patents. the majority views court, to two I case, shall regard great points own. proceed express my T. Does the first complainant’s come within the patent pro- viso of the 6th act section of 1839 ? and should the term of fourteen it years from the date granted by commenee here, or date of his ? French in 1838 patent patent If the is within the complainant’s patent provisions' section, I cannot see can how we it void. escapeNrom declaring that, cases, declares proviso all such every patent (is- sued under the of that shall provisions be limited to section) the term fourteen from the date or years such publication true does it not that the foreign letters-patent.” tent say pa- shall be void if not limited such term its but face; n it no to the officer to issue a power for a gives patent greater If the does term. not show the true commencement of it, term has to de- granted patentee a term of ceive fourteen while in public, claiming years, be not more one. than reality may But I am of does question opinion come within this proviso. case, .facts of the as connected with this are these: point, October, 1837, On the 6th of Morse filed the office of the commissioner of a a caveat patents, accompanied by specifica- tion, forth his invention, and that it be setting praying may pro- tected, till he could finish some to experiments necessary per- 1838, its details. On the 9th of a fect he filed formal April, appli- cation for patent, accompanied specification drawings. On the first of 1838, the commissioner him, informs that May, his of commissioner to has been Morse answers on the 15th application granted. that he is to about sail and asks the May, just Europe, the issue of his for the patent delay present, its effect his abroad. fearing plans On October, 1838, the 30th of he French obtained his useless On his return to this he 1840, patent. requests country issued. patent filed perfected In application, on the 9th of 1838, there was an filling up April, oversight (cid:127)the and month. This clerical omission day wholly i'mma-. ' ll* al. v. Morse et al. terial, but ex filed, second cautela a affidavit was majori and the issued on the June, 20th patent 1840, for the term of fourteen from its date. years The a set 1838 had application annexed drawings the The second set of specification. section required the drawings, 6th of the act 1837, for the of annexa- being purpose tion the were the patent, till they entirely patent unnecessary

issued, and are not law to the required by accompany applica- tion when first made, and the want of them cannot affect the validity application. In instances, causes, to various is many not patent owing issued till months, mauy and sometimes a or more after the year application. specification; time to examine requires commissioner difficulties and amendments; and suggest arise, often which disputes of the But delay patent. issuing does renewed, and is application never require considered abandoned in consequence such It re- still delay.- mains as of the date of its beneficial to filing every purpose the its The law does not that the applicant. require specification should be in the form accompaniments precise they afterwards assume in that the requires patent. only ap- “ be “in w and that should plication make iting,” applicant inventor,” oath is the that he &c. The require- original ments of the act make no must of the but precede issuing of the -are not part prece- conditions application, dent to its validity. therefore, In the case, have, we a regular application present in due form, filed accompanied specification drawings, withdrawn, 9th of not been It has April, discon- tinued, or act of abandoned. There is nothing Congress that should be issued requires within patent filed, time after the or Which forbids the given postponement- application of it at the either time, for a suggestion there or the officer. applicant Nor any thing general forbids it. laws which On the policy patent contrary, desired, has to when always practice, foreign patent here, filed, after delay application issuing patent for'fe'ar of such It forms no application. part injuring foreign of the from acts to of our our citizens policy prevent abroad. obtaining patents swear Patent Act must By applicant invention, was not known used before application.” the time fixed determining filing application- If abroad, to a had issued right applicant’s patent. or the some had or described in invention been in use public work, it. The time time, before it was a defence to good TERM, 1853. v. Morse therefore, was, made law the crite- application filing A claim as first inventor. to foreign patent of his rion right set of his could the date up to application, subsequent The American the domestic a defence inventor patentee. against home, filed specification his was application who had thus abroad, to obtain his enabled without patent endangering This a valuable to at home. was American privilege his patent never been sub- citizens, and one of which he has deprived by till And thus the law stood the act 4th sequent legislation. July,'1836. a was confined to Before time to obtain patent right to citizens, or those had filed their intentions be- American who come of this act was in- foreign such. The to encourage policy do- ventors to introduce their inventions to this but.in country, our Own citizens it evinces no intention of so ing taking away limiting had hitherto from them enjoyed. rights they obtained a inventor, who had patent Accordingly gave a to have who a one abroad, right was generally foreigner, he made his here within six here, after the months nor provided application date of his Neither letter foreign patent. interferes of an inventor this act who spirit right here, from a abroad, his patent has filed application obtaining to a of fourteen from the date of or his term years, right patent. 1838, therefore, when filed In complainant application, March, an act 1839, entitled such But patent. it is 6th section of which alleged complain» passed, by affected. is as have been That section follows: ant’s rights shall no be debarred from That person receiving patent act of invention, &c;, 4th 1836, for to provided July, additional, this is reason of the same been. having in a more six months than his" foreign country, prior patented application. Provided, that the same not have been intro- shall use in into common the United States duced prior public ' for such also, And that in to the all teen provided, application patent. cases, be limited to the such shall term four- every the date of of such letters- publication foreign years patent.” shown, act as have had Now we have given privilege six to daté of such within months after foreign patentees affected, manner, It had not foreign patent. citizens, out American to take right previously enjoyed by n here. section after their filing This foreign patent applications additional those who had first taken out gives rights patents abroad, out an additional to foreign holding encouragement here, inventors introduce their inventions to certain subject al. v. et al.

O’Reilly et Morse letter, Neither the conditions contained proviso. spirit, act, to, have reference or of bearing nor upon, policy who had their the. case made here. just applications of'persons of a as to a class cases To construe not applicable proviso, violate all settled rules clause, its would of within enacting is to The office of either some- except construction. proviso, to exclude clause,- from the or some enacting possible thing ground to condition to of or state a which the misinterpretation, be the section shall subjected. privilege granted by inserted, is to restrain the Here words of general proviso on those who the section and condition impose accept the section. It privileges granted enlarged privileges to months, which had before been confined six foreign patentees, two conditions. 1st. Provided the invention on had not been introduced into abroad patented here; 2d, use public con- that such be dition should limited in its terms. every patent “ words, cases,” in all restrained when to general especially cannot extend the conditions such every patent, proviso such cases as are the subject-matter legislation in beyond of the act are to the section. The policy spirit grant privi- to certain did class which not persons they leges before.; enjoy to the introduction of inventions and encourage foreign citizens discoveries, and not to our-own here- deprive aright or to affect an different class of cases, tofore when entirely enjoyed, 'the had been filed before a here applications abroad. obtained .arise that certain evils might It supposed, allowing its issue till he for a here can obtain delay applicant answer which, To it is a sufficient to' patent. say, foreign should be found to exist, evil is for if such consequences them remedy by legislation. Congress court, a forced no of this construc- part duty statutes, to tion of remedy possible existing attempt evils by anticipation. that the as am, therefore, of complainant’s patent, I opinion a valid of the full term of renewed, contained fourteen grant date. its from original years I cannot concur with which opinion II. T-he point, claim the construction of eighth arises in of the majority, first amended. The as first finally complainant’s follow, should read in of all claim, explanatory (cid:127) are as follows: They connection with eighth. invention, I wish thus described 1st. fully my Having cur- the use of the do not claim understood, galvanic that I for the telegraphic of electricity, purpose currents rent claim I but what as my specially communications generally; TERM, 1853. et al. p. use of motive making improvement, power invention when action such current developed by of magnetism, as set forth description currents substantially foregoing invention, first means my operating principal part be used to sig- motion to machinery imprint or giving material, or to suitable or other sounds produce nals upon paper for the communica- desired manner purpose telegraphic in any distances. The galvanic tion only ways invention had been to be used my current proposed prior were bubbles from decomposition, improvement, resulting the action or exercise of electrical power upon magnetized needles needle; bar the bubbles and the deflections of the no thus and had subjects inspection, were produced, I record the communication. or were applied first characterize invention as the or therefore recording my means of telegraph by electro-magnetism. printing “ There are various known of motions modes producing to but none of these had applied prior electro-magnetism, motion to or invention and to actuate improvement give m37 printing the chief of or is which recording machinery, point my invention improvement.” “ 8th. I do not to limit to machinery propose specific myself of described or and in the foregoing specification parts machinery use of the of claims, being essence invention my current, of electric or I call power’ galvanic motive however for or electro-magnetism, developed, marking printing distances, or characters, letters, at being signs, any intelligible to claim be the first of that I of which new application power, or discoverer.” inventor is, broad, too to this claim that because The-objection does not confine inventor himself to or specific machinery of as described but claims that in his machinery, patent, parts essence his invention consists in application for as a motive however developed, electro-magnetism power, a new-applica- characters at a distance. This being printing tion claims of that element or to patentee power, first inventor or discoverer. tp order to test the-value of as this In objection, applied often aris- case, and of ideas too confusion escape any present us t'he let use of ill-defined terms propositions, ing. forms a 1st. or what examine, What may patented; proper under and acts of Con- the Constitution protection, subject to relative this subject. gress, con- now under What the nature of the invention 2d. rules machine, and sideration? Is it a mere subject effect to which affect a combination mechanical devices purpose. particular et al. v. 3d. if true, true, Is the claim fact ? how can it be And term, too broad, used, sense legal heretofore any acts or either in the in judicial decisions ?' Congress, too that it is broad, 4th. Assuming hypothesis how should affect the for costs in this case? judgment of the United 1st. Constitution States declares that

“ shall have Congress promote progress arts, times, science and useful for limited by securing authors inventors, the exclusive to their respective right writings and discoveries.” The act of 1836, confers exclusive Congress right “ a limited time, on has discovered who or person invented any manufacture, new and or art, machine, useful any composition matter, art, or new and useful any improvements matter, not machine, manufacture, or known composition used others, his or thereof, before their or invention discovery and not, at the time application public use,” &c.

A art new useful new and useful improvement on known is as much art entitled protection law as a machine or manufacture. The acts are English patent ” “ confined to terms; manufactures but the courts have con- strued them to cover arts as protect well machines; yet without any art. Here are not term we required make .using latitudinous construction of our statute for the sake of equity we have no even if policy; surely we right, had to curtail or its disposition, narrow liberal policy astute or fanciful construction. It is not definition what meant easy precise give — some, term art,” as used the acts of if not Congress all, the traits which an art from distinguish legitimate of a are subjects stated with clearness and accuracy by “ Mr. Curtis, in his art, Treatise on Patents. term The applies,” “he, to all those cases where says a application principle where, is the invention, most the ma- important part chinery, means, or other which the apparatus, principle applied, incidental and not of the essence of his inven- only tion. It result, also to all those applies effect, where cases or old, manufactured article the invention but consists ain new result, or method of process effect, srieh or manu- producing Curt, facture.” on Pat. 80. A be machine, instru- though may many composed parts, ments, dr devices combined still the idea of together, conveys ” “ unity. invented, but term be said to may discovery not could well of it. An art employ may predicated many different' machines, devices, .to manipulations, processes, 1 853. v. al. Morse et art a known a man useful result. In some previously produce of a or new new known process, discover some application may principle, nature, the advancement of element, or power same, to a for the as an im- art, ánd be entitled will patent or art,” invent a machine to in perform provement then be entitled to function, he will patent only given for machine. in the arts, in the consist new That ap- improvements element, law, or of some known power, physical plication not have machine combination machinery, any particular both patents frequently subject England and in this strate. our books most demon- the cases in amply country, would ; I time to examine them but have not length fuel in .Watt’s a method of to James for patent saving refer vessels, the steam in steam-engines separate by condensing ; substances to his steam-pipes Glegg’s applying non-conducting Pratt, Juhr v. Webster’s Pat. water; patent measuring gas 103; Cas. of Neilson’s and the celebrated case patent blast, an in the improvement of hot important application being iron. art smelting In their does an di where statute art in England, protect an art terms, made between rect have clear distinction no they machine, or manu art, or an in an process, improvement and confined narrowness facture. were hampered They acts. of their In phraseology patent country, is as broad as make it. And statute can if we yet, language office, at the titles of at the patent look the patents, given that our our.courts, statute -we language suppose might to machines. in Kneiss Notwithstanding, was confined entirely Bank, C. C. Mr. Justice Wash v. ington Washington Rep. (4 19,) which consisted in else but supported nothing new sides of a both bank-bill application copperplates as a The new was security to be counterfeiting. application against and, therefore, So the art, held patentable. in fact for an Howard, v. im McClurg (1 204) Kingsland chilled rollers in the art of provement casting conveying n in a direction mould of of of metal approaching tangent ; cylinder patentee protected yet principle aof known law was but the discovery, application (which ato all nature em new forms machinery purpose,) against the same bodying principle. art has the face of hu- changed great printing, civilization, man consisted in but newa society, nothing application known the world for thousands principles No or the years. one could consisted .press, type say in par- some any other machine device used performing 132 et al. v. function, ticular more the hands than in picked types ox Yet inventor of worked if the press. had, under printing law, this narrow of our construction claimed art distinct something machinery, from doctrine now ad- vanced, would have to its declared unpatentable full extent art, as an inventor and that could be protected but nothing his first and ill-contrived rough press. types I review do not intend to cases which English adopt for which I now contend, their principle nar notwithstanding statute; row but would refer to the of brother opinion my Nelson, in Howard, add, Mr. 177; will Justice McLean, in case, of court in that delivering opinion quotes with of Lord Justice approbation Clerke, language in the case, Neilson the question applicable precisely before us. He not claim does says: specification any as to form, thing nature, materials, or 'mathe numbers, shape, matical character of the vessel or air vessels which the is to heated, or as to mode such vessels.” Yet heating this was sustained as for patent ment of a new of a known ele application ; or, to use correct an in the art language, as improvement iron, without or smelting any regard parts machinery used in the application. Such I believe to be the machinery established doctrine of the courts. English He who first discovers that an or element law nature can be made operative for the result, some valuable production art, some new or the some art; known who improvement has devised the make it or machinery process operative, and introduced it in a form to the of mankind, knowledge practical is a discoverer and inventor of the class. The disco- highest of a new aof known element or very require than application agent may moré labor, industry, expense, persevering of ingenuity Sometimes, inventor true, machine. it is be the result of a or without the happy thought conception,

labor as in the case of the experiment, improvement art of rollers, chilled alluded to. In cases, casting already many it is the ; result numerous not the experiments consequence a priori, but as the any reasoning wholly empirical; discovery certain heat, when usual degree pro- applied rubber, cesses India substance curing produced with new and valuable qualities. element, law, mere of a new discovery principle nature, arts, without valuable of it application the subject of a But.he who takes new element patent. useless, power, laboratory yet philosopher, it the man; makes it to the who applies servant perfect- a new and useful or to one art, already ing improvement

O’Reilly et al. v. et al. to whom the law known, is the benefactor tenders its patent used exercise The devices machines in the of it protection. may may or new;, not be doctrine yet, by against I because contend, them, he cannot known were they can, in their Or, before. if he it is new used only application In other and combination in the new art. words, he perfecting new devices, but application mechanical may element which is the not new application operative in the invention. He essential combina- agent may patent but not art. tion machinery, a new and result, When hitherto unknown or bene- product to mankind, is effected a new ele- ficial ment of by application nature, devices, means of machines and whe- old, it cannot be that such ther new or denied invention or. to is entitled of a denomination “new discovery art.” The useful statute a the- of an art inventor in gives monopoly the exercise of it as chine. And as it does to inventor of a mere ma- fully exercises who such nekv art without person the the license of the inventor is an franchise of his infringer patent, and.of to him the as a reward law for his granted labor it. A construction the law ingenuity perfecting inventor, such an but the new protects chines or and refuses invented ma- nothing used in the exercise of his art, parts machinery itself, it to the exercise of the art annuls the patent future lowed to consequence letter and ties. It is distance words, it wrould retard law. ventor of devise better machines or ciple well bination distinction between an art and a An improvement against equivalents, protection of an art as VOL. To from those of say If the law improvements who can devise an xv. reason, the use of the same or pirate an art to his machines and viewing spirit not be coextensive with the invention in one case means of is to refuse it fully machinery, from it not given other it. patentee, gives in a known art as to the a statue or a ? progress for thus statute.; electro-magnetism, necessarily To look at an art as a franchise or fairly first devices, improvement who protection inventor art, confining give inventor monument to be inferred from and leads is misconstrue .claims the art of improvement, machine; it similar differing is as aof parts machinery' monopoly as an art. protection the franchise of the in- much the devices or machine, through microscope. in mechanical it, inextricable nothing overlooks the if those wTho should art, to only it, a its why writing subject or, mechanical ignores but all claims language. inventor draws shall difficul- is, a other such, com- prin- clear can al- its as et al. i>. Morse also, is itself; so, as the art an improvement on a patent machine. known Yet, if machine be patented, the original patentee of an will not have to use improvement right This original. has not been doctrine found retard the progress invention machines; the case I in trary see can no reason a con- why one should be to an art. applied is, The claim the that he patentee may protected in the art as of his who against persons exercise change cise. improve some of the processes in its machines exer- necessary The court, that this claim is too broad, vir- deciding decides that such an inventor of an tually improvement may the art he because it is of pirate improves, contrary public Or, restrain the invention.. policy words, progress it is said that it the courts to may refuse that policy to an art which it to a protection machine, which it affords is to policy Constitution and the laws grant. 2d. Let us now consider what is the nature of the invention now under consideration. It is anot or a or matter, manufacture, a ma- composition chine. It is the of a known or application element nature, to a new and useful- means of various purpose by pro- cesses, devices, instruments and if at all, it must patentable “ within the come of a new and useful art.” It is category much entitled to this denomination as the art of original print- itself. The name to it ing is given patent generally commissioner, act of the and in this, cases, as in other many The true nature of the invention must wrong one. be sought in the specification. The word is Greek, derived from telegraph signifies “ to off' write afar or a distance.” It has heretofore been ap- to various contrivances devices, to plied communicate intelli- means of gence by signals semaphores, speak eye Or a moment. Bütin its for and literal primary signification writ- at a distanee, it never ing, invented, printing, orfecording per- fected, or into till it was put practical operation Morse. done Steinheil, He Cook, Wheatstone, and preceded in the suc- Davy cessful of this application element of mysterious power elec- to this and his invention tro-magnetism purpose; has entirely “ their inefficient superseded and contrivances. It is not a new only useful.art,” if that term means but a most any won- thing, derful and invention, tenfold more astonishing requiring inge- it, than the nuity patient art of perfect print- experiment ing press, invented. types originally 3d. true, Is it as set forth in this claim of the eighth speci- fication, that the was the patentee first inventor or discoverer of the use application and record electro-magnetism print' et al. v. Morse et characters or letters ? It is the intelligible very ground court his Now the agree confirming patent. law patent inventor, an as a requires precedent condition obtaining to deliver a written his patent, invention or dis- description and to he claims covery,. particularly what to be his specify own invention or If he has stated the discovery. na- truly principle, ture of his and extent art or can the invention, how court it say doing too broad, is of his impugn validity what law requires aas condition for it ? And if obtaining is in case it ventor to of a machine that only the law requires in- what he claims as his own invention and specify dis- and to covery, old, what new from distinguish what then claim is eighth and cannot affect the superfluous validity useful, his art and the patent, provided is new and ma- chines and devices claimed are of his own invention. separately, ” If be in the use of the words however that the developed claim is to be broad, too then follows that a adjudged person for the using process purpose agent developing or element of than the electro-magnetism, common one now in use, and described in the art whole pirate pa- tented. But if it be that the adjudged broad, claim too of this element because the inventor claims the art, to his new application then his is to be invalidated for whole in- claiming vention, and more. If the result of this nothing application a new and useful art, and if the essence of his invention consists this hitherto useless element to record letters compelling words, at distance and in at the same mo- many places ment, how can it be said that the claim is or principle ? abstraction isWhat meant a claim ? broad being law decisions patent judicial be searched in vain for may a or decision that a provision be for patent may impugned no more than the claiming invented or discovered. patentee It when he claims before known and only used, something is. new new, as which is not either something mistake of in- that his is affected. tentionally, patent The act of Congress requires, for a to applicant patent “ that swear he is the first art, inventor of ma- original chine, It &e.” requires the to commissioner make an examina- “ tion of the invention, it and if shall that the alleged appear has not been same invented' invention, he prior alleged shall a &c. But it shall grant patent, that appear appli- if cant is not the thereof, first original inventor or discoverer or that of that which is claimed new, as had before any part been invented,” then the to have leave to withdraw applicant his application. Morse et al.

O’Keilly v. of defective specifications treats their section 13th The mistake or through inadvertency, where applicant, remedy “ to claim as new.” he had more than right claimed had the defences which a section, defend- in enumerating 15th The that to a states to make inter alia patent, be allowed ant may was not the and first show, original “that the patentee he may of a or substantial of the discoverer thing patented, or inventor claimed new.” And proviso thereof material part “ costs, when to section allows the court refuse the same to that, action on shall fail to sustain his ground plaintiff more that of claim, is embraced than his specification the first inventor.” was he 3,1837, defines 7th section the act March specially “ “ broad,” be when too phrase the meaning was the that of which the more than patentee original claims act, of the same 9th section inventor.” And the first and again mistake, accident or cases, for where by providing to, describes it entitled he is claims more than justly patentee “ claimed shall have his specification lie where to patentee material or sub- be the inventor or discoverer original inventor, he is not the first and of which original stantial part, same.” no shall have just right legal where, see that it inadvertence only through Thus we of which he has claimed mistake, the something patentee áre directed to refuse costs. inventor, that the court the first vain be searched in case of reports may books void, broad, too been declared being has where patent other sense. true, then, for the it to purpose argument, Assuming new electro-magnetism that application distance, at a characters art telegraphing printing because it is patenting principle; not the subject true, the .first who made this that Morse was as it is also yet application forth,in claim, set this I am eighth successfully, how, statute, in the words we can unable comprehend that he has action, on the failed to sustain ground adjudge more, than that of or claim embraces that specification is for this alone that the he the first inventor.” to refuse costs. authorizes us statute broad, to be too it well 4th. claim Assuming eighth a dis- said, has not unreasonably delayed that patentee it is not till this moment claimer, we consider when claims, bill had reason and was-too But broad. to.believe fias is sustained the defendant infringed proof, second for his complainant’s improvement. then, sustains The court of this Why, validity patent. 1853. Ely et al. v. Smith law, a to to his costs At entitled complainant recovery one is sufficient entitle the recover on costs; count plaintiff good and I can see no defendants particular equity claim, can who are to have two inventions adjudged pirated once. therefore, I Circuit am that the decree opinion, affirmed, Court should be with costs. Order. cause on to be This came transcript heard record, from the Circuit Court States for the Dis- of the United trict On considera- counsel. Kentucky, argued by whereof, decreed, it is here tion, this ordered, now adjudged, court, Court, the decree this of the said Circuit be, and the same cause, affirmed, so much except hereby, as decrees that shall recover thereof their complainants of this costs, suit, of and from the defend- prosecution ants, and that costs to part said decree giving be, and the reversed, same is and annulled. complainants, hereby, ordered, it is further and decreed, court, And that the their respectively, court, own costs in this pay parties, Court. said Circuit O. J. Henry B. Smith, Plaintiff, Ely, v. Heman Francis W. McCoy, O’Reilly, Robert Thomas Moodie, Michael Wray B. B. Bateham, Lincoln Goodale, Thomas, Albert and Robert Neil. Buttles O’Keilly case of preceding having principles settled the involved in them, controversy between this court argument upon declines to hear an the nical tech- pleading in a branch points coming case another from State. remanded to the Circuit Court. The case came cause Court of-the United up Circuit. This of Ohio, the District certificate States division upon between thereof. judges opinion Smith, action was of Morse An brought by assignee Vail, others, Ely, and of Morse’s against infringement O’Reilly, rights telegraph, particularly case. set forth report preceding count The first declaration reissued surrendered

12*

Case Details

Case Name: O'Reilly v. Morse

Court Name: Supreme Court of the United States

Date Published: Jan 30, 1854

Citation: 56 U.S. 62

Court Abbreviation: SCOTUS