ERROR to the Circuit Court for the district of Pennsylvania.
This was an action brought by the plaintiff in error, against the defendant in error, for an alleged infringement of the plaintiff's patent-right to the use of his improved hopperboy, one of the several machines discovered, invented, improved and applied by him to the art of manufacturing flour and meal, which patent was granted on the 22d January 1808.
The defendant pleaded the general issue, and gave the notice hereafter stated. The verdict was rendered, and judgment given thereupon for the defendant, in the court below; on which the cause was brought, by writ of error, to this court.
At the trial in the court below, the plaintiff gave in evidence, the several acts of congress entitled respectively, "an act to promote the progress of useful arts, and to repeal the acts heretofore made for that purpose;" "an act to extend the privilege of obtaining patents, for useful discoveries and inventions, to certain persons therein mentioned, and to enlarge and define penalties for violating the rights of patentees;" and "an act for the relief of Oliver Evans;" the said Oliver's petition to the secretary of state, for a patent, and the patent thereupon granted to the said Oliver, dated the 22d day of January, in the year 1808; and further gave in evidence, that an agent for the plaintiff, wrote a note to the defendant, in answer to which, he called on the agent, at Chambersburg, at the house of Jacob Snyder, on the 9th of August 1813; there were a number of millers present; the defendant then told the agent, that he had got Mr. Evans' book, a plate in the Millwright's Guide, and if the agent would take $40, the defendant would give it him; the defendant said that his hopperboy was taken from a plate in Mr. Evans' book: he said, he would give no more, alleging, that the $100 the agent asked was too much; that the stream on which his mill was, was a small head of Conogocheage. The agent then declared, that if the defendant would not pay him by Monday morning, he would commence a suit in the circuit court.
TO JAMES MADISON, Esq., Secretary of State:
The petition of Oliver Evans, of the city of Philadelphia, a citizen of the United States, respectfully showeth, that your petitioner having discovered certain useful improvements, applicable to various purposes, but particularly to the art of manufacturing flour and meal, prays a patent for the same, agreeably to the act of congress, entitled, "an act for the relief of Oliver Evans."
The principles of these improvements consist: 1. In the subdivision of the grain, or any granulated or pulverized substance; in elevating and conveying them from place to place, in small separate parcels; in spreading, stirring, turning and gathering them, by regular and constant motion, so as to subject them to artificial heat, the full action of the air to cool and dry the same, when necessary, to avoid danger from fermentation, and to prevent insects from depositing their eggs, during the operation of the manufacture. 2. In the application of the power which moves the mill, or other principal machine, to work any machinery which may be used to apply the said principles, or to perform the said operations, by constant motion and continued rotation, to save expense and labor.
The machinery by him already invented, and used for applying the above principles, consists of an improved elevator, an improved conveyor, an improved hopperboy, an improved drill, and an improved kiln-drier. For a particular explanation of the principles, and a description and application of the machines which he has so invented and discovered, he refers to the specifications and drawings hereunto annexed; and he is Page 457 ready, if the secretary of the state shall deem it necessary, to deliver models of the said machines.
OLIVER EVANS.
Description of the several machines invented by Oliver Evans, and used in his improvement on the process of the art of manufacturing flour or meal from grain, and which are mentioned in his specification as applicable to other purposes.
THE UNITED STATES OF AMERICA: To all whom these Letters-patent shall come:
Whereas, Oliver Evans, of the city of Philadelphia, a citizen of the United States, hath alleged that he hath invented a new and useful improvement in the art of manufacturing flour and meal, by means of certain machines, which he terms an improved elevator, an improved conveyor, an improved hopperboy, an improved drill, and an improved kiln-drier: which machines are moved by the same power that moves the mill or other principal machinery, and in their operation subdivide any granulated or pulverized substance, elevate and carry the same from place to place, in small and separate parcels, spread, stir, turn and gather them by regular and constant motion, so as to subject them to artificial heat, and the air to dry and cool, when necessary: Page 462 a more particular and full description in the words of the inventor is hereby annexed in a schedule; which improvement has not been known or used before his application; has affirmed that he does verily believe that he is the true inventor or discoverer of the said improvement, and agreeably to the act of congress entitled, "an act for the relief of Oliver Evans," which authorizes the secretary of state to secure to him by patent, the exclusive right to the use of such improvement in the art of manufacturing flour and meal, and in the several machines which he has discovered, improved and applied to that purpose; he has paid into the treasury of the United States, the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the secretary of state, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose: These are therefore to grant, according to law, to the said Oliver Evans, his heirs, administrators or assigns, for the terms of fourteen years, from the twenty-second day of January 1808, the full and exclusive right and liberty of making, using and vending to others to be used, the Page 463 said improvement, a description whereof is given in the words of the said Oliver Evans himself, in the schedule hereto annexed, and is made a part of these presents. In testimony whereof, I have caused these letters to be made patent, and the seal of the United States to be hereunto affixed.
Given under my hand, at the city of Washington, this twenty-second day of January, in the year of our Lord, SEAL one thousand eight hundred and eight, and of the independence of the United States of America, the thirty-second.
TH: JEFFERSON. By the President, JAMES MADISON, Secretary of State.
City of Washington, to wit:
I do hereby certify, that the foregoing letters-patent were delivered to me on the twenty-second day of January, in the year of our Lord, one thousand eight hundred and eight, to be examined; that I have examined the same, and find them conformable to law. And I do hereby return the same to the secretary of state, within fifteen days from the date aforesaid, to wit: on this twenty-second day of January, in the year aforesaid.
C.A. RODNEY, Attorney-General of the United States. Page 464
The plaintiff further gave in evidence, that another agent for the plaintiff was in the defendant's mill, on the second of November 1814, and saw a hopperboy there, on the principles and construction of the plaintiff's hopperboy. This witness had heard that a right was obtained under Pennsylvania; but did not know of any rights under Pennsylvania, sold by the plaintiff; and did not know that it was erected in any mill, after the patent under Pennsylvania. The defendant's hopperboy had an upright shaft, with a leading arm, in the first place, and a large arm inserted with flights, and leading lines, and sweepers; a little board, for the purpose of sweeping the meal in the bolting hoppers, and spreading it over the floor; a balance weight, to cause the arms to play up and down lightly over the meal. The leading arms were abont five feet long, and seemed to be in proportion, the arm about fourteen, and the length of the sweep about nine inches. And to the defendant, having previously given the plaintiff written notice, that upon the trial of the cause, the defendant would give in evidence, under the general issue, the following special matter, to wit: "1st. That the improved hopperboy, for which, inter alia, the plaintiff in his declaration alleges he has obtained a patent, was not originally discovered by the patentee, but had been in use anterior to the supposed discovery of the patentee, in sundry places, to wit: at the mill of George Fry and Jehu Hollingsworth, in Dauphin county, Pennsylvania; at Christian Stauffer's mill, in Warwick township, Lancaster county, state of Pennsylvania; at Jacob Stauffer's mill, in the same county; at Richard Downing's mill, in Chester county, Pennsylvania; at Buffington's mill, on the Brandy wine; at Daniel Huston's mill, in Lancaster county, Pennsylvania; at Henry Stauffer's mill, in York county, Pennsylvania; and at Dihl's mill, in the same county, or at some of the said places, and also at sundry other places in the said state of Pennsylvania, the state of Maryland and elsewhere in the United States. "2d. That the patent given to the plaintiff, as he alleges in his declaration, is more extensive than his discovery or invention, for that certain parts of the machine in said patent, called an improved hopperboy, and which the plaintiff claims as his invention and discovery, to wit, the upright shaft, arms, and flights, and sweeps, or some of them, and those parts by which the meal is spread, turned and gathered at one operation, and also several other parts, were not originally invented and discovered by him, but were in use prior to his said supposed invention or discovery, to wit, at the places above mentioned, or some of them.
"3d. That the said patent is also more extensive than the plaintiff's invention or discovery; for that the application of the power that moves the mill or other principal machine to the hopperboy is not an original invention or discovery of the plaintiff, but was in use anterior to his said supposed invention or discovery, to wit, at the places before mentioned, or some of them.
4th. That the said patent is void, because it purports to give him an exclusive property in an improvement in the art of manufacturing meal, by means of a certain machine, termed an improved hopperboy, of which the said plaintiff is not the original inventor or discoverer; parts of the machine in the description thereof referred to by the patent, having been in use anterior to the plaintiff's said supposed discovery, to wit, at the places above mentioned, or some of them; and the said patent and description therein referred to contains no statement, specification or description, by which those parts, so used as aforesaid, may be distinguished from those of which the said plaintiff may have been the inventor, or discoverer, protesting at the same time that he has not been the inventor or discoverer of any of the parts of the said machine.
5th. That the improved elevator, described in the declaration, or referred to therein, was not originally discovered by the plaintiff, but was anterior to his said supposed discovery or invention, described in certain public works, or books, to wit, in Shaw's Travels; in the first volume of the Universal History; in the first volume of Mormer's Husbandry; in Ferguson's Mechanics; in Bossuet's Histoire des Mathematiques; in Wolf's Cours des Mathematiques; in Desagulier's Experimental Philosophy, and in Proney's Architecture Hydraulique, or some of them.
6th. That the said patent is more extensive than the invention or discovery of the plaintiff, because certain parts of the machine called an improved elevator, were, anterior to the plaintiff's said supposed invention or discovery, described in certain public works, or books, to wit, the works or books above mentioned, or some of them; and that the said patent is void, because it neither contains or refers to any specification or description by which the parts so before described in the said public works, may be distinguished from those parts of which the plaintiff may be the inventor or discoverer, protesting, at the same time, that he has not been the inventor or discoverer of any of the parts of the said machine."
He gave in evidence the existence of hopperboys, prior to the plaintiff's alleged discovery, at sundry mills in the state of Pennsylvania, mentioned in the said notice; and further offered to give in evidence the existence of hopperboys, prior to the plaintiff's alleged discovery, at sundry other mills, in the state of Pennsylvania, not mentioned in the said notice; and the counsel for the plaintiff objected to the admission of any evidence of the existence of hopperboys in the said mills not mentioned in the said notice. But the court decided that such evidence was competent and legal. To which decision the counsel for the plaintiff excepted.
The plaintiff, after the above evidence had been laid before the jury, offered further to give in evidence, that certain of the persons mentioned in the defendant's notice as having hopperboys in their mills, and also certain of the persons not mentioned in the said notice, but of whom it had been shown by the defendant, that they had hopperboys in their mills, had, since the plaintiff's patent, paid the plaintiff for license to use his improved hopperboy in the said mills respectively. But the counsel for the defendant objected to such evidence, as incompetent and illegal, and the court refused to permit the same to be laid before the jury. To which decision, the plaintiff's counsel excepted.
The court below charged the jury, that the patent contained no grant of a right to the several machines, but was confined to the improvement in the art of manufacturing flour by means of those machines; and that the plaintiff's claim must, therefore, be confined to the right granted, such as it was. That it had been contended, that the schedule was part of the patent, and contained a claim to the invention of the peculiar properties and principles of the hopperboy, as well as the other machines. But the court was of opinion, that the schedule was to be considered as part of the patent, so far as it is descriptive of the machines, but no further; and even if this claim had been contained in the body of the patent, it would have conferred no right which was not granted by that instrument.
The court further proceeded to instruct the jury, that the law authorized the president to grant a patent, for the exclusive right to make, construct, use and vend to be used, any new and useful art, machine, manufacture, or composition of matters or any new and useful improvement, in any art, machine, c., not known or used before the application. As to what constitutes an improvement, it is declared, that it must be in the principle of the machine, and that a mere change in the form or proportions of any machine shall not be deemed a discovery. Previously to obtaining the patent, the applicant is required to swear, or affirm, that he verily believes that he is the true inventor or discoverer of the art, machine or improvement for which he solicits a patent; and he must also deliver a written description of his invention, and of the manner of using it, so clearly and exactly, as to distinguish the same from all other things before known, and to enable others, skilled in the art, to construct and use to same. That from this short analysis of the law, the following rules might be deduced. 1st. That a patent may be for a new and useful art; but it must be practical; it must be applicable and referrible by something by which it may be proved to be useful; a mere abstract principle cannot be appropriated by patent.2d. The discovery must not only be useful, but new; it must not have been known or used before in any part of the world. It was contended by the plaintiff's counsel that the title of the patentee cannot be impeached, unless it be shown that he knew of a prior discovery of the same art, machine, c., and that said true and original are synonymous terms in the intention of the legislature. But, as it was not pretended, that those term meant the same thing, in common parlance, neither was it the intention of the legislature to use them as such. The first section of the law referring to the allegations of the application for a patent, speaks of the discovery as something "not known or used before the application;" and in the 6th section it is declared, that the defendant may give in evidence that the thing secured by patent, was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery. 3d. If the discovery be of an improvement only, it must be an improvement in the principle of a machine, art or manufacture, before known or used; if only in the form or proportion, it has has not the merit of a discovery, which can entitled the party to a patent. 4th. The grant can only be for the discovery, as recited and described in the patent and specification. If the grantee is not the original discoverer of the art, machine, c., for which the grant is made, the whole is void. Consequently, if the patent be for the whole of the machine, and the discovery were of an improvement, the patent is void. 5th. A machine, or an improvement, may be new, and the proper subject of a patent, though the parts of it were before known and in use. The combination, therefore, of old machines, to produce a new and useful result, is a discovery for which a patent may be granted.
The above principles would apply to most of the questions that had been discussed. It was strongly insisted on by the defendant's counsel, that this patent is broader than the discovery; the evidence proving, that in relation to the hopperboy, for the using of which this suit is brought, the plaintiff can pretend to no discovery beyond that of an improvement in a machine known and used before the alleged discovery of the plaintiff. This argument proceeded upon the supposition, that the plaintiff had obtained a patent for the hopperboy, which was entirely a mistake. The patent was "for an improvement in the art of manufacturing flour," by means of a hopperboy and four other machines described in the specification, and not for either of the machines so combined and used. That the plaintiff is the original discoverer of this improvement, was contested by no person, and therefore, it could not, with truth, be alleged, that the patent is broader than the discovery, or that the plaintiff could not support an action on this patent against any person who should use the whole discovery.
But could he recover against a person who had made or used one of the machines, which in part constitute the discovery? The plaintiff insisted that he could, because, having a right to the whole, he is necessarily entitled to the parts of which that whole is composed. Would it be seriously contended, that a person might acquire a right to the exclusive use of a machine, because when used in combination with others, a new and useful result is produced, which he could not have acquired, independent of that combination? If he could, then if A. were proved to be the original inventor of the hopperboy; B. of the elevator, and so on, as to the other machines, aad either had obtained patents for their respective discoveries, or chose to abandon them to the public, the plaintiff, although it was obvious, he could not have obtained separate patents for those machines, might nevertheless, deprive the original inventors, in the first instance, and the public, in the latter, of their acknowledged right to use those discoveries, by obtaining a patent for an improvement, consisting in a combination of those machines to produce a new result.
The court further charged the jury, that it was not quite clear, that this action could be maintained, although it was proved beyond all controversy, that the plaintiff was the original inventor of this machine. The patent was the foundation of the action, and the gist or the action was, the violation of a right which that instrument had conferred. But the exclusive right of the hopperboy was not granted by this patent, although this particular machine constitutes a part of the improvement of which the plaintiff is the original inventor, and it is for this improvement, and this only, that the grant is made. If the grant, then, was not of this particular machine, could it be sufficient, for the plaintiff to prove in this action, that he was the original inventor of it?
Again, could the plaintiff have obtained a separate patent for the hopperboy, in case he were the original inventor of it, without first swearing or affirming, that he was the true inventor of that machine? Certainly not. Has the plaintiff then taken, or could he have taken, such an oath in this case? Most assuredly he could not; because the prescribed form of the oath is, that it is the inventor of the art, machine or manufacture for which he solicits a patent. But since the patent which he solicited was not for the hopperboy, but for an improvement in the manufacture of flour, he might, with safety, have taken the oath prescribed by law, although he knew. at the time, that he was not the true inventor of the hopperboy; and thus it would happen, that he could indirectly obtain the benefit of a patent-right to the particular machine, which he could not directly have obtained, without doing what, it must be admitted, in this case, he had not done.
But this was not all. If the law had provided for fair and original discoverers a remedy, when their rights are invaded by others, it had likewise provided corresponding protection to others, where he has not the merit. What judgment could the district court have rendered upon a scire facias to repeal this patent, if it had appeared, that the plaintiff was not the true and original inventor of the hopperboy? Certainly not that which the law has prescribed, viz., the repeal of the patent; because it would be monstrous to vacate the whole patent, for an invention of which the patentee was the acknowledged inventor, because he was not the inventor of one of the constituent parts of the invention for which no grant is made. But the court would have no alternative, but to give such a judgment, or, in effect, to dismiss the scire facias; and if the latter, then the plaintiff would have beneficially the exclusive right to a machine, which could not be impeached in the way prescribed by law, although it should be demonstrated, that he was not either the true or the original inventor of it. And supposing the jury should be of opinion, and so find, that the plaintiff was not the original inventor of this machine, would not the court be prevented from declaring the patent void, under the provisions of the 6th section of the law, for the reason assigned why the district court could not render judgment upon a scire facias? Indeed, it might well be doubted, whether the defence now made by the defendant could be supported at all, in this action (if this action could be maintained), inasmuch as the defendant cannot allege, in the words of the 6th section, that the thing secured by patent was not originally discovered by the patentee, since, in point of fact, the thing patented was originally discovered by the patentee, although the hopperboy may not have been so discovered. But if this defence could not be made, did not that circumstance afford a strong argument against this action? If the plaintiff was not the inventor of the parts, he had no right to complain that they were used by others, if not in a way to infringe his right to their combined effect. If he was the original inventor of the parts which constitute the whole discovery, or any of them, he might have obtained a separate patent for each machine of which he was the original inventor.
Upon the whole, although the court gave no positive opinion upon this question, they stated, that it was not to be concluded, that this action could be supported, even if it were proved, that the plaintiff was the original inventor of the hopperboy. But if an action would lie upon this patent, for the violation of the plaintiff's right to the hopperboy, still the plaintiff could not recover, if it had been shown to the satisfaction of the jury, that he was not the original discoverer of that machine.
It appeared, by the testimony of the defendant's witnesses, that Stauffer's hopperboy was in use many years before the alleged discovery of the plaintiff; that the two machines differed from each other very little in form, in principle or in effect. They were both worked by the same power which works the mill; and they both stir, mix, cool, dry and conduct the flour to the bolting chest. Whether the flights and sweepers in the plaintiff's hopperboy were preferable to the slips attached to the under part of the arm in Stauffer's; or whether, upon the whole, the former is a more perfect agent in the manufacture of flour than the latter, were questiont which the court would not undertake to decide; because, unless the plaintiff was the original inventor of the hopperboy, although he had obtained a separate patent for it, he could not recover in this action, however useful the improvement might be, which he had made in that machine. If the plaintiff had obtained a patent for his hopperboy, it would have been void, provided the jury should be of opinion, upon the evidence, that his discovery did not extend to the whole machine, but merely to an improvement on the principle of an old one, and if this should be their opinion, in the present case, the plaintiff could not recover.
It had been contended by the plaintiff's counsel, that the defendant, having offered to take a license from the plaintiff, if he would consent to reduce the price of it to $40, he was not at liberty to deny that the plaintiff is the original inventor of this machine. This argument had no weight in it, not merely because the offer was rejected by the plaintiff's agent, and was, therefore, as if it had not been made; but because the law prevents the plaintiff from recovering, if it appear on the trial, that he was not the original inventor. If the offer amounted to an acknowledgment that the plaintiff was the original inventor (and further it could not go), this might be used as evidence of that fact, but it would not entitle the plaintiff to a verdict, if the fact proved to be otherwise.
The plaintiff's counsel had also strongly insisted, that under the equity of the tenth section of the law, the defence set up in this case ought not to be allowed, after three years from the date of the patent. This argument might, perhaps, with some propriety, be addressed to the legislature, but was improperly urged to the court. The law had declared, that in an action of this kind, the defendant may plead the general issue, and give in evidence that the plaintiff was not the original inventor of the machine for which the patent was granted. The legislature has not thought proper to limit this defence in any manner; and the court could not do it.
But what seemed to be conclusive of this point was, that the argument would tend to defeat altogether the provision of the sixth section, which authorizes this defence to be made; for, if it could not be set up, after three years from the date of the patent, it would be in the power of the patentee to avoid it altogether, by forbearing to bring suits, until after the expiration of that period. And thus, although the law has carefully provided two modes of vacating a patent improvidently granted, the patentee, though not the original inventor, and however surreptitiously he may have obtained his patent, may secure his title to the exclusive use of another's invention, if he can for three years avoid an inquiry into the validity of his title.
The last point was, that Stauffer's invention was abandoned, and, consequently, might be appropriated by the plaintiff. But if Stauffer was the original inventor of the hopperboy, and chose not to take a patent for it, it became public property by his abandonment; nor could any other person obtain a patent for it, because no other person would be the original inventor. To this charge, the plaintiff's counsel excepted.
Mr. Chief Justice MARSHALL delivered the opinion of the court.
In this case, exceptions were taken in the circuit court, by the counsel for the plaintiff in error, 1st. To the opinion of the court, in admitting testimony offered by the defendant in that court.2d. To its opinion in rejecting testimony offered by the plaintiff in that court.3d. To the charge delivered by the judge to the jury.
Under the 6th section of the act for the promotion of useful arts, and to repeal the act heretofore made for that purpose, the defendant pleaded the general issue, and gave notice that he would prove at the trial, that the improved hopperboy, for the use of which, without license, this suit was instituted, had been used previous to the alleged invention of the said Evans, in several places (which were specified in the notice), or in some of them, "and also at sundry other places in Pennsylvania, Maryland, and elsewhere in the United States." Having given evidence as to some of the places specified in the notice, the defendant offered evidence as to some other places not specified. This evidence was objected to by the plaintiff, but admitted by the court; to which admission, the plaintiff's counsel excepted.
The 6th section of the act appears to be drawn, on the idea, that the defendant would be not at liberty to contest the validity of the patent on the general issue. It, therefore, intends to relieve the defendant from the difficulties of pleading, when it allows him to give in evidence matter which does affect the patent. But the notice is directed for the security of the plaintiff, and to protect him against that surprise to which he might be exposed, from an unfair use of this privilege. Reasoning merely on the words directing this notice, it might be difficult to define, with absolute precision, what it ought to be include, and what it might omit. There are, however, circumstances in the act which may have some influence on this point. It has been already observed, that the notice is substituted for a special plea; it is further to be observed, that it is a substitute to which the defendant is not obliged to resort. The notice is to be given only when it is intended to offer the special matter in evidence on the general issue. The defendant is not obliged to pursue this course, he may still plead specially, and then the plea is the only notice which the plaintiff can claim. If, then, the defendant may give in evidence, on a special plea, the prior use of the machine, at places not specified in his plea, it would seem to follow, that he may give in evidence its use, at places not specified in his notice. It is not believed, that a plea would be defective, which did not state the mills in which the machinery alleged to be previously used was placed.
But there is still another view of this subject, which deserves to be considered. The section which directs this notice, also directs, that if the special matter stated in the section be proved, "judgment shall be rendered for the defendant, with costs, and the patent shall be declared void." The notice might be intended, not only for the information of the plaintiff, but for the purpose of spreading on the record the cause for which the patent was avoided. This object is accomplished by a notice which specifies the particular matter to be proved. The ordinary powers of the court are sufficient to prevent, and will, undoubtedly, be so exercised, as to prevent the patentee from being injured by the surprise.
This testimony having been admitted, the plaintiff offered to prove that the persons, of whose prior use of the improved hopperboy the defendant had given testimony, had paid the plaintiff for licenses to use his improved hopperboy in their mills, since his patent. This testimony was rejected by the court, on the motion of the defendant, and to this opinion of the court, also, the plaintiff excepted. The testimony offered by the plaintiff was entitled to very little weight, but ought not to have been absolutely rejected. Connected with other testimony, and under some circumstances, even the opinion of a party may be worth something. It is, therefore, in such a case as this, deemed more safe to permit it to go to the jury, subject, as all testimony is, to the animadversion of the court, than entirely to exclude it.
We come next to consider the charge delivered to the jury. The errors alleged in this charge may be considered under two heads: 1st. In construing the patent to be solely for the general result produced by the combination of all the machinery, and not for the several improved machines, as well as for the general result.2d. That the jury must find for the defendant, if they should be of opinion, that the hopperboy was in use prior to the invention of the improvement thereon by Oliver Evans.
The construction of the patent must certainly depend on the words of the instrument. But where, as in this case, the words are ambiguous, there may be circumstances which ought to have great influence in expounding them. The intention of the parties, if that intention can be collected from sources which the principles of law permit us to explore, are entitled to great consideration. But before we proceed to this investigation, it may not be improper to notice the extent of the authority under which this grant was issued. The authority of the executive to make this grant, is derived from the general patent law, and from the act for the relief of Oliver Evans. On the general patent law alone, a doubt might well arise, whether improvements on different machines could regularly be comprehended in the same patent, so as to give a right to the exclusive use of the several machines, separately, as well as a right to the exclusive use of those machines in combination. And if such a patent would be irregular, it would certainly furnish an argument of no inconsiderable weight against the construction. But the "act for the relief of Oliver Evans" entirely removes this doubt. That act authorizes the secretary of state to issue a patent, granting to the said Oliver Evans the full and exclusive right, in his invention, discovery and improvements in the art of manufacturing flour, and in the several machines which he has invented, discovered, improved and applied to that purpose. Of the authority, then, to make this patent co-extensive with the construction for which the plaintiff's counsel contends, there can be no doubt.
The next object of inquiry is, the intention of the parties, so far as it may be collected from sources to which it is allowable to resort. The parties are the government, acting by its agents, and Oliver Evans. The intention of the government may be collected from the "act for the relief of Oliver Evans." That act not only confers the authority to issue the grant, but expresses the intention of the legislature respecting its extent. It may fairly be inferred from it, that the legislature intended the patent to include both the general result, and the particular improved machines, if such should be the wish of the applicant. That the executive officer intended to make the patent co-extensive with the application of Oliver Evans, and with the special act, is to be inferred, from the reference to both in the patent itself. If, therefore, it shall be satisfactorily shown from his application, to have been the intention of Oliver Evans to obtain a patent including both objects, that must be presumed to have been also the intention of the grantor.
The first evidence of the intention of Oliver Evans is furnished by the act for his relief. The fair presumption is, that it conforms to his wishes; at least, that it does not transcend them. The second, is his petition to the *508] secretary of state, which speaks of his having discovered certain useful improvements, and prays a patent for them, "agreeably to the act of congress, entitled, an act for the relief of Oliver Evans." This application is for a patent co-extensive with the act. This intention is further manifested by his specification. It is not to be denied, that a part of this specification would indicate an intention to consider the combined operation of all his machinery as a single improvement, for which he solicited a patent. But the whole, taken together, will not admit of this exposition. The several machines are described with that distinctness which would be used by a person intending to obtain a patent for each. In his number 4, which contains the specification of the drill, he asserts his claim, in terms, to the principles, and to all the machines he had specified, and adds, "they may all be united and combined in one flour-mill, to produce my improvement in the art of manufacturing flour complete, or they may be used separately for any of the purposes specified and allotted to them, or to produce my improvement in part, according to the circumstances of the case."
Being entitled by law to a patent for all and each of his discoveries; considering himself, as he avers in his specification and affirmation, as the inventor of each of these improvements; understanding, as he declares he did, that they might be used together so as to produce his improvement complete, or separately, so as to produce it in part; nothing can be more improbable, than that Oliver Evans intended to obtain a patent solely for their combined operation. His affirmation, which is annexed to his specification, confirms this reasoning. To the declaration that he is the inventor of these improvements, he adds, "for which he solicits a patent." With this conviction of the intention with which it was framed, the instrument is to be examined.
The patent begins with a recital, that Oliver Evans had alleged himself to be the inventor of a new and useful improvement in the art of manufacturing flour, c., by the means of several machines, for a description of which reference is made to his specification. It will not be denied, that if the allegation of Oliver Evans was necessarily to be understood as conforming to this recital, if our knowledge of it was to be derived entirely from this source, the fair construction would be, that his application was singly for the exclusive right to that improvement which was produced by the cambined operation of his machinery. But in construing these terms, the court is not confined to their most obvious import. The allegation made by Oliver Evans, and here intended to be recited, is in his petition to the secretary of state. That petition is embodied in, and becomes a part of the patent; it explains itself, and controls the words of reference to it. His allegation is not "that he has invented a new and useful improvement," but that he has discovered certain useful improvements. The words used by the department of state in reciting this allegation, must then be expounded by the allegation itself, which is made a part of the patent. The recital proceeds, "which improvement has not been known," c. These words refer clearly to the improvement first mentioned and alleged in the petition of Oliver Evans, and are, of course, to be controlled in like manner with the antecedent words, by that petition. This part of the recital is concluded by adding, that Oliver Evans has affirmed, that he does verily believe himself to be the true inventor or discoverer of the said improvement. But the affirmation of Oliver Evans, like his petition, is embodied in the grant, and must, of course, expound the recital of it. That affirmation is, that he does verily believe himself to be the true and original inventor of the improvements contained in his specification. In every instance, then, in which the word improvement is used in the singular number, throughout the part of the recital of this patent, it is used in reference to a paper contained in the body of the patent, which corrects the term, and shows it to be inaccurate.
The patent, still, by way of recital, proceeds to add, "and agreeably to the act of congress, entitled `an act for the relief of Oliver Evans,' which authorizes the secretary of state to secure to him, by patent, the exclusive right to the use of such improvement in the art of manufacturing flour and meal, and in the several machines which he has discovered, improved and applied to that purpose; he has paid into the treasury, c., and presented a petition to the secretary of state, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose."
To what do the words "said improvement" relate? The answer which has been given at the bar is entirely correct. To the improvement mentioned in the statute and in the petition, to both of which direct reference is made. But in the statute, and in the petition, the word used is "improvements," in the plural. The patent, therefore, obviously affixed to the word improvement, in the singular, the same sense in which the plural is employed, both in the statute and in the petition. We are compelled, from the whole context, so to construe the word, in every place in which it is used in the recital, because it is constantly employed with express reference to the act of congress, or to some document embodied in the patent, in each of which the plural is used. When, then the words "said improvement" are used as a term of grant, they refer to the words of the recital, which have been already noticed, and must be construed in the same sense. This construction is rendered the more necessary, by the subsequent words, which refer for a description of the improvement to the schedule. It also derives some weight from the words, "according to law," which are annexed to the words of grant. These words can refer only to the general patent law, and to the "act for the relief of Oliver Evans." These acts, taken together, seem to require that the patent should conform to the specification, affirmation and petition of the applicant.
It would seem as if the claim of Oliver Evans was rested, at the circuit court, on the principle, that a grant for an improvement, by the combined operation of all the machinery, necessarily included a right to the distinct operation of each part, inasmuch as the whole comprehends all its parts. After very properly rejecting this idea, the judge appears to have considered the department of state, and the patentee, as having proceeded upon it, in making out this patent. He supposed the intention to be, to convey the exclusive right in the parts as well as in the whole, by a grant of the whole; but as the means used are, in law, incompetent to produce the effect, he construed the grant according to his opinion of its legal operation. There is great reason in this view of the case, and this court has not discarded it, without hesitation. But as the grant, with the various documents which form a part of it, would be contradictory to itself; as these apparent contradictions are all reconciled by considering the word "improvement" to be in the plural instead of the singular number; as it is apparent, that this construction gives to the grant its full effect, and that the opposite construction would essentially defeat it, this court has, after much consideration and doubt, determined to adopt it, as the sound exposition of the instrument.
The second error alleged in the charge, is, in directing the jury to find for the defendant, if they should be of opinion, that the hopperboy was in use, prior to the improvement alleged to be made thereon by Oliver Evans. This part of the charge seems to be founded on the opinion, that if the patent is to be considered as a grant of the exclusive use of distinct improvements, it is a grant for the hopperboy itself, and not for an improvement on the hopperboy. The counsel for the plaintiff contends, that this part of the charge is erroneous, because, by the "act for the relief of Oliver Evans," congress has itself decided, that he is the inventor of the machines for which he solicited a patent, and has not left that point open to judicial inquiry. This court is not of that opinion. Without inquiring whether congress, in the exercise of its power "to secure for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries," may decide the fact, that an individual is an author or inventor, the court can never presume congress to have decided that question in a general act, the words of which do not render such a construction unavoidable. The words of this act do not require this construction. They do not grant to Oliver Evans the exclusive right to use certain specified machines; but the exclusive right to use his invention, discovery and improvements; leaving the question of invention and improvement open to investigation, under the general patent law.
The plaintiff has also contended, that it is not necessary for the patentee to show himself to be the first inventor or discoverer. That the law is satisfied, by his having invented a machine, although it may have been previously discovered by some other person. Without a critical inquiry into the accuracy with which the term invention or discovery may be applied to any other than the first inventor, the court considers this question as completely decided by the 6th section of the general patent act. That declares, that if the thing was not originally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery of the patentee, judgment shall be rendered for the defendant, and the patent declared void. Admitting the words "originally discovered," to be explained or limited by the subsequent words, still, if the thing had been in use, or had been described in a public work, anterior to the supposed discovery, the patent is void. It may be, that the patentee had no knowledge of this previous use or previous description; still, his patent is void: the law supposes he may have known it; and the charge of the judge, which must be taken as applicable to the testimony, goes no further than the law.
The real inquiry is, does the patent of Oliver Evans comprehend more than he has discovered? If it is for the whole hopperboy, the jury has found that this machine was in previous use. If it embraces only his improvement, then the verdict must be set aside. The difficulties which embarrass this inquiry are not less than those which were involved in the first point. Ambiguities are still to be explained, and contradictions to be reconciled. The patent itself, construed without reference to the schedule other documents to which it refers, and which are incorporated in it, would be a grant of a single improvement; but construed with those documents, it has been determined to be a grant of the several improvements which he has made in the machines enumerated in his specification. But the grant is confined to improvements. There is no expression in it which extends to the whole of any one of the machines which are enumerated in his specification or petition. The difficulty grows out of the complexity and ambiguity of the specification and petition. His schedule states his first principle to be the operation of his machinery on the meal, from its being ground until it is bolted. He adds, "this principle I apply by various machines, which I have invented, constructed and adapted to the purposes hereafter specified."
His second principle is the application of the power that moves the mill to his machinery. The application of these principles, he says, to manufacturing flour, is what he claims as his invention or improvement in the art. He asserts himself to be the inventor of the machines, and claims the application of these principles, to the improvement of the process of manufacturing flour, and other purposes, as his invention and improvement in the art. The schedule next proceeds to describe the different machines as improved, so as to include in the description the whole machine, without distinguishing his improvement from the machine as it existed previous thereto; and in his fourth number, he says, "I claim the exclusive right to the principles, and to all the machines above specified, and for all the uses and purposes specified, as not having been heretofore known or used, before I discovered them.
If the opinion of the court were to be formed on the schedule alone, it would be difficult to deny that the application of Oliver Evans extended to all the machines it describes. But the schedule is to be considered in connection with the other documents incorporated in the patent. The affirmation which is annexed to it avers, that he is the inventor, not of the machines, but of the improvements herein above specified. In his petition, he states himself to have discovered certain useful improvements, applicable to the art of manufacturing flour, and prays a patent for the same; that is, for his improvements, agreeable to the act of congress, entitled, "an act for the relief of Oliver Evans." After stating the principles as in his schedule, he adds, "the machinery consists of an improved elevator, an improved conveyor, an improved hopperboy, an improved drill, and an improved kiln-drier." Although, in his specification, he claims a right to the whole machine, in his petition, he only asks a patent for the improvements in the machine. The distinction between a machine, and an improvement on a machine, or an improved machine, is too clear, for them to be confounded with each other.
The act of congress, agreeable to which Evans petitions for a patent, authorizes the secretary of state to issue one, for his improvements in the art of manufacturing flour, "and in the several machines which he has invented, discovered, improved and applied to that purpose."
In conformity with this act, this schedule, and this petition, the secretary of state issues his patent, which, in its terms, embraces only improvements. Taking the whole together, the court is of opinion, that the patent is to be constructed as a grant of the general result of the whole machinery, and of the improvement in each machine. Great doubt existed, whether the words of the grant, which are expressed to be for an improvement or improvements only, should be understood as purporting to be a patent only for improvements; or should be so far controlled by the specification and petition, as to be considered as a grant for the machine as improved, or in the words of the schedule and petition, for "an improved elevator, an improved conveyor, an improved hopperboy, an improved drill, and an improved kiln-drier." The majority of the court came at length to the opinion, that there is no substantial difference, as they are used in this grant, whether the words grant a patent for an improvement on a machine, or a patent for an improved machine; since the machine itself, without the improvement, would not be an improved machine. Although I did not concur in this opinion, I can perceive no inconvenience from the construction.
It is, then, the opinion of this court, that Oliver Evans may claim, under his patent, the exclusive use of his inventions and improvements in the art of manufacturing flour and meal, and in the several machines which he has invented, and in his improvements on machines previously discovered. In all cases where his claim is for an improvement on a machine, it will be incumbent on him to show the extent of his improvement, so that a person understanding the subject may comprehend distinctly in what it consists.
Some doubts have been entertained, respecting the jurisdiction of the courts of the United States, as both the plaintiff and defendant are citizens of the same state. The 5th section of the act to promote the progress of useful arts, which gives to every patentee a right to sue in a circuit court of the United States, in case his rights be violated, is repealed by the 3d section of the act of 1800, ch. 179, which gives the action in the circuit court of the United States, where a patent is granted "pursuant" to that act, or to the act for the promotion of useful arts. This patent, it has been said, is granted, not in pursuance of either of those acts, but in pursuance of the act "for the relief of Oliver Evans." But this court is of opinion, that the act for the relief of Oliver Evans is engrafted on the general act for the promotion of useful arts, and that the patent is issued in pursuance of both. The jurisdiction of the court is, therefore sustained.
As the charge delivered in the circuit court to the jury differs in some respects from this opinion, the judgment rendered in that court is reversed and annulled, and the cause remanded to the circuit court, with directions to award a venire facias de novo, and to proceed therein according to law.
Judgment reversed.
JUDGMENT. This cause came on to be heard, on the transcript of the record of the circuit court for the district of Pennsylvania, and was argued by counsel, on consideration whereof, this court is of opinion, that there is error in the proceedings of the said circuit court, in this, that the said court rejected testimony which ought to have been admitted; and also in this, that, in the charge delivered to the jury, the opinion is expressed, that the patent, on which this suit was instituted, conveyed to Oliver Evans only an exclusive right to his improvement in manufacturing flour and meal, produced by the general combination of all his machinery, and not to his improvement in the several machines applied to that purpose; and also, that the said Oliver Evans was not entitled to recover, if the hopperboy, in his declaration mentioned, had been in use previous to his alleged discovery. Therefore, it is considered by this court, that the judgment of the circuit court be reversed and annulled, and that the cause be rendered to the said circuit court, with directions to award a venire facias de novo.
See Appendix, Note II.