HOGG ET AL v. EMERSON

The cause was argued in this court, in printed arguments, by Mr. Upton and Mr. John O. Sargent, for the plaintiffs in error, and Mr. Morton and Mr. Cutting, for the defendant in error. The arguments were too voluminous to be reported in extenso, and it is not possible, therefore, to give more than extracts from each.

The counsel for the plaintiffs in error assigned as errors the following points.

I. The defendant in error has no patent for an improved spiral paddle-wheel.

II. If the defendant's patent is for the combination of instruments described in the specification, there is no pretence that the combination has been infringed; if for several separate improved machines, it cannot be supported in law.

III. Defendant's patent is void for too broad a claim, and for not distinguishing his alleged improvement from other inventions, nor particularly specifying, as the statute requires, the particular improvement which he claims as his own invention or discovery. The case exhibits an improvement as the invention, and the claim is for the whole machine.

IV. The drawing filed March 27th, 1844, was not legal evidence of defendant's patented invention, because there was a drawing filed by the patentee on the 12th of February previous, which was, by the second section of the act of 1837, with his letters-patent, the only legal evidence of his invention, as patented, that could be offered in any judicial court of the United States.

V. — 1. The patentee, after an alleged correction of the record of his letters-patent, by filing the second drawing, could not, in law, avail himself of that alleged correction to cover by it alleged causes of action previously accruing; and in the absence of proof of any subsequent infringements, the plaintiffs here were entitled to a verdict below.

2. Nor was he entitled to recover damages for any alleged infringement prior to the alleged completion of his record by the filing of the corrected drawing of 27th March, 1844.

VI. What was reasonable time in this case for the restoration of defendant's patent to the office, if not expressly fixed by statute (act of 1837, sec. 2), was exclusively a question of law.

Mr. Upton, for plaintiffs in error.

I. This action was brought to recover damages from the defendants below, for their asserted infringement of an alleged patent of the plaintiff for "an improved spiral paddle-wheel"; and the first question to which the attention of the court is requested is one which is presented upon the face of the letters-patent, which constitute the basis of the action, and which are incorporated into the bill of exceptions; it is this: — Has the defendant in error any such patent?

If it be manifest to this court, upon an inspection of the record and an examination of the letters-patent, that he has no grant, as patentee, of "an improved spiral paddle-wheel," then it is submitted, that there is no escape from the necessity of reversing the judgment which has been rendered, awarding him damages for the invasion of such a grant. This necessity is in no manner affected, though it appear that the objection was not taken in the court below, either at the trial or upon a motion in arrest of judgment. It is sufficient if the defect be manifest upon the record; for it would be monstrous to contend that this court is powerless, in any case, to reverse the judgment, when it appears upon the record before them that the very foundation of the judgment is so incurably and fatally defective as to have been completely beyond the remedy of the party, though the objection were taken at the earliest possible stage of the proceedings. Authority can scarcely be necessary to sustain this position. But this court has decided, in the case of Slacum v. Pomeroy, 6 Cr. 221, that it is not too late to allege as error in the Supreme Court a defect which ought to have prevented the rendition of the judgment in the court below. "Had this error," say the court, "been moved in arrest of judgment, it is presumable the judgment would have been arrested"; and "there can be no doubt, that any thing appearing upon the record which would have been fatal upon a motion in arrest of judgment is equally fatal upon a writ of error." So also Garland v. Davis, 4 Howard, 131.

By the bill of exceptions it appears, that, upon the introduction in evidence of the letters-patent by the plaintiff, "the counsel for the defendants did insist before the said Circuit Court, on behalf of said defendants, that the said letters-patent so produced and given in evidence on the part of the said plaintiff, as aforesaid, were wholly insufficient as the basis of the aforesaid action and claim upon the said defendants." Now, by reference to the letters-patent (page 7 of the record), the court will perceive that the grant to the patentee, upon the face of the letters, is for "an improvement in the steam-engine," and for that alone; that it was for that alone that he solicited a patent by petition; that it was of that improvement only that he made oath that he was the original and first inventor. Such is the grant, and so is it recorded; and the public would seek in vain upon the records of the patent-office for a patent to the plaintiff below for "an improved spiral paddle-wheel."

It will not be contended that the letters, standing alone, confer any title to such an invention. But it may be said, that, inasmuch as the patentee has described a paddle-wheel, and also an improved method of causing a capstan to revolve upon the deck of a vessel, as well as his improvement in the steam-engine, and claimed these, as well as his steam-engine, in his schedule annexed to the letters-patent, the grant must be construed to cover the paddle-wheel and the capstan, as well as the steam-engine, though it be in express terms for the steam-engine only, though it was for that alone that he solicited a patent, and it was that alone that he made oath he had invented. Were this doctrine maintainable, it is obvious that it would be wholly subversive of the policy of the law, which looks as well to the protection of the public as it does to the encouragement of inventors. That the schedule annexed to letters-patent forms a part of the patent, and that they are to be construed together, is undoubtedly well established. This is the English doctrine, as well as that of our own courts; and, by a careful investigation of the authorities, it will be perceived that Mr. Phillips, in his elementary work (pp. 224 et seq.), is mistaken in supposing that there is any conflict between them.

By these authorities it is decided, that the title of the invention, as contained in the patent, may be explained by its description in the specification, whenever such title is general, ambiguous, or uncertain; and the patent will be sustained in all cases, unless the patent indicate one invention, and the specification describe another and different invention. American authorities. — Phillips on Patents, 224, and cases cited; Sullivan v. Redfield, Paine, C.C.R. 442; Shaw v. Cooper, 7 Peters, 292, 315; Evans v. Chambers, 2 Wn. C.C.R. 125; Barrett v. Hall, 1 Mason, 476; Whittemore v. Cutter, 1 Gall. 437; Evans v. Eaton, Peters, C.C.R. 341. English authorities. — Godson on Patents, 108, 113, and cases; Neilson v. Harford, Webster, 312, and arg.; Rex v. Wheeler, 2 Barn. Ald. 350; S.C., 3 Merivale, 629; Glegg's Patent, Webster, 117; Russell v. Cowley, Webster, 470; Househill v. Neilson, Webster, 679.

When Mr. Phillips says (Phillips on Patents, 225), that any defect in the title may be remedied by the specification, what he means is apparent by reference to the cases which he cites. The description comes in aid of a defective title, but never can create a new title; by adding to the grant. There must be such a conformity between the title and the specification as that the former shall give some idea of the latter. It is the description of the thing patented "which is made part of these presents," not a description of something else, of which the title of the grant gives no idea.

Thus reads the patent itself. After reciting that John Brown Emerson had by petition solicited a patent for an improvement in the steam-engine, had made oath that he was the first and original inventor of said improvement, and paid the fee of thirty dollars into the treasury, it grants to him the exclusive right,c., in the said improvement, "a description whereof is given in the words of the said John Brown Emerson himself, in the schedule hereunto annexed, and is made a part of these presents." Then follows the caption of the schedule, thus: — "The schedule referred to in these letters-patent, and making part of the same, containing a description in the words of the said John Brown Emerson himself of his improvement in the steam-engine."

No reported authority can be found in the remotest degree sustaining the proposition, that a description and claim of any thing contained in a specification are covered by the grant, though the grant make no reference to it, and the title is so entirely distinct from it as to suggest no idea of the thing described. Were this proposition tenable, then were we to strike out from this patentee's specification every word descriptive of his improvement in the steam-engine, leaving nothing but the comparatively few words descriptive of the spiral paddle-wheel and the improved capstan, the grant for the improvement in the steam-engine must be construed as a grant for an improved spiral paddle-wheel and an improved capstan. Now, would it not be monstrous to contend that an instrument of so solemn a character as a government grant of letters-patent is to be added to and enlarged by construction?

The doctrine as settled, upon every principle of construction, is the true doctrine; — that the description of the thing patented, contained in the schedule annexed to the patent, constitutes a part of the patent, and may be and should be resorted to, in construing the patent, to control the generality of the title and to explain or elucidate ambiguities or uncertainties; but that a description of a thing not indicated by the patent, not even remotely suggested by the grant or the title, can never be construed with the patent for the purpose of adding to or enlarging the terms of the grant.

That this doctrine may be made more obvious and conclusive, — if it be possible or desirable, — the court is referred to the provisions of the statute under which the letters-patent in this case issued.

The inventor is required to present his petition soliciting the patent, and to make oath that he is the inventor. The statute further requires that the letters-patent shall recite the allegations and suggestions of the petition, and give a short description of the invention. This requisition was obviously for the twofold purpose, 1st, that it might appear that the proper preliminary steps had been taken by the applicant, of which the recital in the letters was proof; and, 2d, that it might, on their face, be seen what was the nature and character of the grant. (Act of 1793, §§ 1, 3.) Now, did this patentee present his petition, soliciting a patent for an improved spiral paddle-wheel, and make oath that he was the inventor of that improvement? If it be answered that he did, then the positive requisition of the statute is not complied with, for the patent recites the allegations and suggestions of no such petition, and gives a short description of no such invention; and for this reason the patent would be absolutely void.

This is well established in the following cases: — Evans v. Eaton, Peters, C.C.R. 340; Kneiss v. Schuylkill Bank, 4 Wn. C.C.R. 9; Cutting et al. v. Myers, 4 Wn. C.C.R. 220; Evans v. Chambers, 2 Wn. C.C.R. 125.

If the letters-patent do recite the allegations and suggestions of the petition, then the patentee did not solicit a patent for "an improved spiral paddle-wheel" or an "improved capstan"; he did not make oath that he had invented these improvements, and hence the letters contain no description whatever of these improvements, and confer no grant of an exclusive right in them upon the patentee.

(The counsel then quoted largely from the opinion of Judge Washington in Evans v. Eaton, Peters, C.C.R. 340.)

II. At the trial, the defendants' counsel requested the court to instruct the jury, "that the patent of the plaintiff was void upon its face, for this, — that it embraces several distinct and separate inventions, as improvements in several distinct and separate machines susceptible of independent operation, and not necessarily connected with each other in producing the result aimed at in the invention, and the subject-matter of separate and distinct patents." The court charged the jury, that "the objection that the patent embraced several distinct discoveries is untenable." In this it is respectfully submitted that the court below erred.

(The counsel here cited and commented on Phillips on Patents. "It is well settled, that two or more distinct machines, capable of independent operations, cannot be united in one patent." 3 Wheat. 454; 1 Mason, 447; 2 Mason, 112; 1 Story, 290.)

III. At the trial of this case, the counsel for the defendants requested the court to instruct the jury, "that the claim of the plaintiff, as set forth in his specification annexed to his letters-patent, embraces the entire spiral paddle-wheel; the claim is, therefore, too broad upon the face of it, and the letters-patent are void upon this ground." Upon this point the court charged the jury as follows: — "It was made a question on the former trial, whether the plaintiff did not claim the entire wheel; but we understand it to be for an improvement upon the spiral paddle-wheel, claimed to be new and useful in the arrangement of its parts, and more effective, by fixing the spiral paddles upon the extremity of arms, at a distance from the shaft."

IV. At the trial, the counsel for the defendants also requested the court to instruct the jury, "that the patent is void upon its face for this, — that, purporting to be a patent for an improvement, and specifying that the invention is of an improved spiral paddle-wheel, `differing essentially from any that have heretofore been essayed,' without pointing out in what the difference consists, or in any manner whatever indicating the improvement by distinguishing it from the previously essayed spiral paddle-wheels, it is wanting in an essential prerequisite to the validity of letters-patent for an improvement." Upon this point the court charged the jury as follows: — that "the claim of the plaintiff was for an improvement on the spiral paddle-wheel or propeller, — that, by a new arrangement of the parts of the wheel, he has been enabled to effect a new and improved application and use of the same in the propulsion of vessels. That the ground upon which the claim is founded is this: it is the getting rid of nearly all the resisting surface of the wheels of Stevens, Smith, and others, by placing the spiral paddles or propelling surfaces on the ends of arms, instead of carrying the paddles themselves in a continued surface to the hub or shaft. It is claimed that a great portion of the old blade not only did not aid in the propulsion, but actually impaired its efficiency, and also that the improved wheel is much stronger." And the court further charged the jury, that "the description of the invention was sufficient."

Upon these two points, it is submitted that the court below erred. They are so connected, by reason of the peculiar circumstances of the case, that they will be presented and considered together, though they are distinct grounds of objection to the patent.

(The counsel then contended that the specification ought to be construed by itself, and be so clear as to be understood without resorting to evidence or any other source of information, and cited: — English authorities. — McFarlane v. Price, 1 Starkie, 199; In re Nickels, Hindmarch on Patents, 186; Hill v. Thompson, 3 Merivale, 622; S.C., 8 Taunton, 325. American authorities. — Dixon v. Moyer, 4 Wn. C.C.R. 69; Evans v. Hettick, 3 Wn. C.C.R. 425; Lowell v. Lewis, 1 Mason, C.C.R. 189; Ames v. Howard, 1 Sumner, 482.)

This leads to the principle in the law of patents involved in the fourth point. It is the positive requisition of the statute, and has been repeatedly considered and passed upon by the federal judicial tribunals.

Before an inventor shall receive a patent, he is required, "in case of any machine, fully to explain the principle and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions, and shall particularly specify and point out the particular improvement or combination which he claims as his own invention or discovery." The requisition of the English law is similar in this respect.

Now, before proceeding to consider whether the patentee, in this case, has complied with this positive and salutary requisition of the law, the attention of the court is requested to the reported cases in which the requisition has received judicial construction.

By a careful examination of these authorities, it will be found established, that, where a patent is taken out for an improvement, the specification must describe what the improvement is, and the patent be limited to such improvement; — if the patent includes the whole machinery, it includes more than the patentee invented, and is therefore void; — that if the patent be for an improvement in an existing machine, the patentee must, in his specification, distinguish the new from the old, and confine his patent to such parts only as are new, and if both be mixed up together, and a patent is taken for the whole, it is void; that, however the authorities may apparently vary in pointing out the particular manner in which the patentee must specify his improvement, and distinguish what he claims as new and his invention from what was old and before known, yet that they are in perfect harmony in deciding that he must do this in some manner, and upon the face of the specification. American authorities. — Evans v. Eaton, 3 Wheat. 454; Woodcock v. Parker, 1 Gall. 438; Whittemore v. Cutter, 1 Gall. 478; Odiorne v. Winkley, 2 Gall. 51; Lowell v. Lewis, 1 Mason, 182; Barrett v. Hall, 1 Mason, 447; Sullivan v. Redfield, Paine, C.C.R. 441; Evans v. Eaton, 7 Wheat. 408; Dixon v. Moyer, 4 Wn. C.C.R. 69; Isaacs v. Cooper, 4 Wn. C.C.R. 261; Cross v. Huntly, 13 Wend. 385; Head v. Stevens, 19 Wend. 411; Ames v. Howard, 1 Sumner, 482; Kneiss v. Schuylkill Bank, 4 Wn. C.C.R. 9; Morris v. Jenkins et al., 3 McLean, 250; Peterson v. Woodler, 3 McLean, 248. English cases. — McFarlane v. Price, 1 Starkie, 199; Williams v. Brodie, Davies, Pat. Cases, 96, 97; Manton v. Manton, Davies, Pat. Cases, 349; Hill v. Thompson, 8 Taunton, 325; Minter v. Wells, 1 Webster, 130; Rex v. Nickels, Hindmarch on Patents, 186.

Now apply the rule of law, as prescribed by the statute and construed by these authorities, to the patent in this case. Admit that rule, as most liberally stated, in any reported decision, and the counsel respectfully asks, in what manner, upon the face of the patentee's specification, has he distinguished that which he claims as new, and his invention, from what was old and before known, or pointed out in what his improvement consists? It is most confidently answered, that he has done this in no manner whatever, neither expressly nor by implication, nor by any reference, and it is not in the wit of man to determine, upon the face of the specification, what the improvement is which the patentee claims or intended to claim. The court below, in their construction of the claim, in charging the jury, say, that the improvement consists "in a new arrangement of the parts." Does this appear, either in terms, or even impliedly, upon the face of the description? So far from this, the last words of the patentee, in his description, are, that the "shape" of the thing is the "only point of importance." The court further say, that this new arrangement of the parts consists in "getting rid of nearly all the resisting surface of the wheel of Stevens, Smith, and others, by placing the spiral paddles or propelling surfaces on the ends of arms, instead of carrying the paddles themselves in a continued surface to the hub or shaft."

Where, upon the face of the description, is there any mention made of Stevens's, Smith's, or of any previously invented wheel, save in the general declaration by the patentee, that his improved wheel "differs essentially from any which have been heretofore essayed," — a declaration which the court in the case of Barrett v. Hall, above cited, declare to be "no specification at all"? And where, upon the face of the specification, is there the most remote allusion to the "getting rid of resisting surface"?

V. At the trial of the case, "it appeared in evidence that the drawing and model of the paddle-wheel of the plaintiff, filed and deposited originally in the patent-office, had been lost by the destruction of that office in December, 1836, and that, in restoring the record of the patent, under the act of March, 1837, the plaintiff sent from New Orleans to the office a new drawing, to be filed on the 5th of May, 1841, together with a court copy of the letters-patent, which were deposited in the office. The drawing was not sworn to by the plaintiff, but remained in the office till January, 1844, when it was delivered to an agent of the plaintiff, and sent to New Orleans, and sworn to by him, and filed in the department on the 12th day of February, 1844. On an examination, subsequently, by the plaintiff, it was discovered that this drawing was imperfectly made, and thereupon a second drawing was procured by him, which he claimed and offered to prove to be an accurate one, and was sworn to and filed on the 27th day of March, 1844, an authenticated copy of which was offered in evidence on the trial by the plaintiff, which was objected to by the counsel for the defendants; but the objection was overruled, and the evidence admitted, to which an exception was taken."

It is contended, that the Circuit Court erred in admitting in evidence the second drawing of March 27th, 1844, and in support of this position, the following considerations are respectfully submitted.

(The counsel then urged, —

That the patentee had exhausted his privilege, when he swore to the first drawing.

That, if allowed to file more than one, he might continue to file them down to the day of trial.

That the first drawing became, by the statute, primâ facie evidence of the invention, and there could not be two such.

That if this patentee had procured a re-issue of his patent, under the third section of the act of 1837, he would not have been entitled to the privilege which he now claims, and it is unreasonable to suppose that Congress intended to give greater privileges under one section than another.)

VI. At the trial of this case, the counsel for the defendants requested the court to instruct the jury as follows: — "that if, from the evidence, the jury are satisfied that no propelling-wheels were made by the defendants between the 27th of March, 1844, — the date of the alleged completion of the record of the plaintiff's patent, under the act of March 3d 1837, — and the commencement of this suit in April following, that, upon this ground, the defendants are entitled to a verdict."

The court refused to grant this prayer, and left it, as a question of fact, for the jury to say, whether there had or had not been unreasonable delay on the part of the patentee in restoring the record. Now, was this a question of fact? It is submitted, that it was not, but that, under the circumstances, it was purely a question of law, to be passed upon by the court.

The record shows, that, from the burning of the patent-office, in December, 1836, up to the month of May, 1841, no step whatever was taken by the patentee to restore the record of his patent, and that he then delayed to complete the record until the month of February, 1844. Of course, there could have been no dispute as to the fact in connection with the question of reasonable or unreasonable diligence. Now, the authorities are clear in establishing this doctrine, — that, when there is no dispute as to the facts, the questions of reasonable or unreasonable time, or delay, or diligence, are questions of law for the court, and not of fact for the jury. The following cases are referred to: — Ellis v. Paige, 1 Pick. 43; S.C., 2 ib. 71, 77, note; Gilbert v. Moody, 17 Wend. 354; Reynolds v. Ocean Ins. Co., 22 Pick. 191; Livingston Gilchrist v. Maryland Ins. Co., 7 Cr. 506.

And now as to the charge of the court, that "the damages were not necessarily confined to the making of the wheels between March, 1844, when the drawings were restored to the patent-office, and the bringing of this suit." Is not this error? Why was the drawing of March 27th, 1844, filed in the patent-office? For the reason only, as avowed, that the drawing of February preceding was incorrect and defective. For the reason only, that the public had no notice, or, what is still worse, that the public had an imperfect and deceptive information, by the first drawing of the particulars of the patentee's invention. Would it not be monstrous to allow a patentee to recover damages for an alleged infringement made at a time when, by his solemn oath, he declares that the defendant was not notified of the character of his invention? — nay, more, when he swears, that, at the time of the alleged infringement, the only recorded notice of his invention, sworn to by himself, was imperfect, incorrect, and insufficient?

But by an examination of the grounds upon which the court rest their decision upon this question, it will be seen in what manner the error has arisen. The court say, the limitation contended for by the defendants "assumes that there can be no infringement of the patent after the destruction of the records in 1836, until they are restored to the patent-office, and that, during the intermediate time, the rights of patentees would be violated with impunity." With the greatest deference, it will appear, upon a consideration of the statute provisions, that the doctrine contended for involves no such assumption.

The second section of the act of 1837 provides for the very difficulty which is urged by the court as the sole objection to the limitation contended for. Foreseeing that some time must necessarily elapse before patentees could be informed of their rights and duties, and prepare copies of their patents and drawings and models, Congress has provided, in this section, that, from the 15th of December, 1836, when the patent-office was burned, to the 1st day of June, 1837, and not after, patentees and others may give in evidence their patents in any court, notwithstanding that they have not been re-recorded, and no verified drawing of the invention has been filed in the patent-office.

Is there not great danger, in the disposition to give the most liberal and enlarged interpretation to statute provisions for the protection and encouragement of inventors, that the rights of the public may be too much disregarded?

By the burning of the patent-office, something more was involved than the loss of the evidences of the rights of patentees. The public were thereby deprived of the only notice which the law recognizes of what they could and what they could not do, without being subjected to prosecutions for invasions of patent-rights. For the public, in the language of Judge Washington, in a case before cited, "can depend upon no other information, to enable them to avoid the consequences of litigation, than what the records may afford. No description of the discovery, secured by a patent, will fulfil the demands of justice and of the law, but such as is of record in the patent-office, and of which all the world may have the benefit."

Now Congress, in legislating to repair the loss of the patent-office, and to provide against its natural consequences, had in view the protection of the public, as well as patentees; and while, on the one hand, it was justly considered that patentees ought not to suffer by reason of a loss arising from no fault of theirs, on the other, it was as justly considered that the public ought not to suffer by reason of a too long delay on the part of patentees to furnish to the public anew the recorded descriptions of their inventions. Thus the second section of the act of 1837, saving the rights of patentees, enables them to recover damages for infringements after the burning of the patent-office, and down to the month of June, 1837, notwithstanding the non-existence of any public record of their inventions; but, saving the rights of the public, the statute gives no further time.

Is not this clear? And being so, is it not manifest that the court below erred in the instructions given to the jury upon this point?

The drawing of a patentee, annexed to his patent, or referred to in his specification, constitutes a part of the patent, and oftentimes, as in this case, is the most material portion of the description, — without which the invention would be virtually undescribed. Now, when a patentee alters or amends his patent, whether in the written description or the delineated description, there is nothing better established than that he cannot recover damages for an alleged infringement committed prior to such amendment. The authorities to this point are conclusive, and in perfect uniformity; some of them, and those the most recent, going so far as to maintain that it makes no difference though the amendment be of a mere clerical error. In re Nickels, Turner Phillips, 44; S.C., 1 Webster, 659; Hindmarch on Pat. (Eng. ed.) 216 et seq.; Wyeth v. Stone, 1 Story, 290; Woodworth v. Hall, 1 Minot Woodb. 248, 389.

It is submitted, that a denial of the doctrine here urged on behalf of the plaintiffs in error would be equivalent to an abrogation of the provisions of the thirteen section of the patent act of 1837, which declares that a patent can only be amended by a surrender and re-issue, and that the amended patent can only operate upon causes of action accruing subsequently to the amendment.

Construe the first section of the act of 1837 as the court below has construed it, and what is the consequence? A patentee, whose grant is dated on or before the 14th of December, 1836, may maintain actions for infringement of his rights from then to the present time, without any public record of his patent whatsoever being in existence during the entire period, provided he produces at the trial an authenticated copy of his patent and drawings from the patent-office, recorded there, perhaps, but the day before! From this consequence, it is submitted, there could be no escape, and small, indeed, would be the hope of escape for the innocent invader of the unrecorded right, with the question of reasonable diligence in the restoration of the record left to the decision of a jury.

Mr. Morton and Mr. Cutting, for the defendant in error.

I. The first point raised by the plaintiffs in error does not properly arise. The jury rendered a verdict for $ 1,500 damages. The amount in controversy being less than $ 2,000, the defendants below had no right to remove the cause to this court. They moved the Circuit Court for a new trial upon a case made, which motion was denied, and judgment was docketed upon the verdict. The defendants below then applied to the Circuit Court for the allowance of a writ of error, under the 17th section of the act of Congress, approved July 4, 1836, which authorizes writs of error in patent cases to the Supreme Court of the United States, in the same manner, and under the same circumstances, as was then provided by law in other judgments and decrees of Circuit Courts, "and in all other cases in which the court should deem it reasonable to allow the same."

Having no right to a writ of error, therefore, unless the judges of the Circuit Court "should deem it reasonable to allow the same," application for the writ was made to the discretion of the court; and the application was granted so far as to allow the defendants to raise, for the consideration of the Supreme Court, five points specified by the court below, and which constitute the 2d 3d, 4th, 5th, and 6th points now presented by the plaintiffs in error. The defendants availed themselves of the permission to issue a writ of error, restricted as above stated, and now, after the writ has been allowed, they seek to argue a question not embraced in those specified by the court.

Writ of error allowed in respect to the question: —
1. Whether the patent is void as embracing two or more distinct and independent inventions or improvements.
2. Whether the claim is for entire paddle-wheel, or only for an improvement.
3. Whether the new is sufficiently distinguished from the old.
4. Whether the corrected drawing was properly allowed and filed.
5. Whether the rule of damages was correct, on condition that case be submitted on written argument to Supreme Court at ensuing term, before 1st February, and judgment to be secured by filing the usual bond.
A copy of Judge Nelson's indorsement on petition for writ of error.
ALEX'R GARDINER, Clerk

It is respectfully submitted, that this course ought not to be encouraged, and that the grounds discussed in the first point taken by the plaintiffs in error need not be considered by the counsel for the patentee. It may be briefly remarked, however, that the point referred to was not raised at the trial, and does not appear upon the face of the record, or even upon the bill of exceptions. It was insisted below, that the patent was void for the reasons specified in the bill of exceptions. The court will search in vain for the question attempted to be discussed by the counsel for the plaintiffs in error in his first point.

Even if it were raised by the bill of exceptions, and were a point that could be argued here, it would be untenable. The argument appears to be, that the patentee has no patent for "an improved paddle-wheel," because the title of the grant is for an improvement in the steam-engine, and the counsel for the plaintiffs in error argues as if the letters and the schedule were not part of the same instrument. By taking the whole patent together, that is, the letters and the specification, there can be no difficulty in ascertaining the extent of the patent. It grants to the patentee the right "of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said patentee himself in the schedule hereto annexed, and is made a part of these presents."

Thus the schedule is made a part of the patent, as much as if it were recited in the letters themselves. The grant is for the improvement described in the schedule, — and by referring to the schedule, the improved paddle-wheel is distinctly embraced as a part of the claim.

In the construction of patents, the schedule annexed must be always kept in view, and resorted to in order to ascertain what is the invention claimed and patented. If the claim or specification be more extensive than the actual invention, the patent may be void in part or in whole for that reason; but there can be no doubt that, primâ facie, the patentee has a grant for all that he claims in the schedule annexed to his patent. The description in the letters of the thing invented is always very brief, because it points to and incorporates the patentee's specification and description annexed, and which usually sets forth minutely the whole claim.

The argument on the other side, as to the effect of a variation between the title of the patent and the thing patented and described in the schedule, assumes that a good and perfect specification and description of the invention claimed by the patentee may be utterly defeated by a defect in the title, so that a specification and claim free from all ambiguity will be rendered utterly worthless by a defect in what the counsel terms "the title" of the patent. A rule of construction so harsh and unreasonable would be most destructive in its consequences. If applied to the interpretation of statutes, it would nullify many of them that are free from doubt; not many of the acts of Congress would stand, if defective titles were declared to be fatal to the laws themselves.

The patent act of 1793, section first, provides that the Secretary of State may cause letters-patent to be granted, "giving a short description of said invention or discovery." When the patentee presents his specification, it is referred to in, and made a part of, the patent, and it is from the patent, with schedules and drawings taken together, that it is to be determined what thing is intended to be patented. Pitt v. Whitman, 2 Story, 621. Any defect in the title is remedied by a proper description in the schedule. Barrett v. Hall, 1 Mason, 477; Whittemore v. Cutter, 1 Gall. 437; Phill. Pat. 224, 225.

In England, the rule appears to be different. There the patent is distinct from the specification, and controls it in construction, so that the patentee cannot cover any thing by the specification which is not embraced in the patent. Campion v. Benyon, 3 Brod. Bingh. 5; The King v. Wheeler, 2 Barn. Ald. 345.

II. But the plaintiffs insist, that the patent "is void, for the reason that it embraces several distinct and separate inventions, as improvements in several distinct and independent machines susceptible of independent operation, not necessarily connected with each other in producing the result arrived at in the invention, and the subject-matter of separate and independent inventions."

It is clear from the specification, that the patentee claims to have discovered an improvement in the steam-engine, and with it, in the mode of propelling vessels. He substitutes for the crank motion a mode of converting the reciprocating motion of a piston into a continued rotary motion, by a new combination of machinery for that purpose. From the revolving shaft described by him, a rotary motion may be communicated to paddle-wheels or other objects. When used for steamboats, the patentee employs the improved paddle-wheel described by him, which is necessarily to be worked in connection with the other machinery. When a capstan is required, as on board of a steamboat, he describes the mode of connecting the shaft of the engine with the capstan, so that it may be made to revolve by the action of the shaft; and he claims as his invention the substituting for the crank, in the reciprocating engine, a grooved cylinder, operating as described; the paddle-wheel constructed and operating as set forth; and the application of the revolving vertical shaft to the turning of a capstan.

Now it is manifest that the invention is a mechanical unity. The improved engine and paddle-wheel are intended to act together, and if a capstan be used, the improved engine is made to connect with and turn the capstan, as it does the paddle-wheels. Although the engine may be applied to the old-fashioned wheel, and though it may or may not be attached to the capstan, yet it is manifest that the improved engine connected with the paddle-wheel, or with a capstan, may be used in connection to produce or aid the result designed by the patentee, viz. the propulsion or navigation of a vessel.

(The remainder of the argument upon this head is omitted.)

III. The defendants prayed the court to instruct the jury, "that the claim of the plaintiff, as set forth in his specification annexed to his letters-patent, embraced the entire spiral paddle-wheel; that the claim was, therefore, too broad upon the face of it, and the letters-patent were void upon that ground.

The court charged the jury, that "it was made a question on the former trial, whether the plaintiff did not claim or intend to claim the entire wheel; but we understood it to be for an improvement upon the spiral paddle-wheel."

The counsel for the plaintiffs in error supposes that the court below arrived at this conclusion, not from the face of the patent, but from matters dehors the specification. This assertion is unfounded. The view of the court below is the result of a just construction of the patent itself.

It is difficult to perceive by what course of argument the patent can be shown to be too broad upon its face. By the expression "too broad," I presume, is intended that the patentee claims more than he has invented. This is usually a question of fact, dependent upon the proofs at the trial. The face of this patent certainly does not disclose the fact, that the patentee has a grant for any thing of which he does not claim to have been the inventor. The counsel for the plaintiffs has not discussed this point, except so far as his observations under his fourth point may be applicable to it; and it is therefore not deemed necessary here to enlarge further upon this branch of the case, except to observe that the patentee does not claim to be the inventor of "paddle-wheels," nor of "wheels acting on the spiral or screw principle"; on the contrary, he refers to wheels previously "essayed," upon which wheels the patentee claims to have improved. What he does claim, then, is an improved spiral propelling-wheel, constructed and operating under water in the manner described, which improvement, as described in the schedule, is new, and is the invention of the patentee.

IV. It is insisted, that the court below ought to have charged the jury as prayed for; namely, "that the patent is void upon its face for this, — that, purporting to be a patent for an improvement, and specifying that the invention is of an improved spiral paddle-wheel, differing from any which have heretofore been essayed, without pointing out in what the difference consists, or in any manner whatever indicating the improvement by distinguishing it from previously essayed spiral paddle-wheels, it is wanting in an essential prerequisite to the validity of letters-patent for an improvement."

The court refused so to charge, and held that the description of the invention was in this respect sufficient.

The point now raised is one purely technical, because it must be assumed after verdict, and upon the bill of exceptions, that the patentee was the real inventor of what he claims; that de facto he has not claimed as new that which had been known before; that the improvement is useful, and that the specification is so full and clear, and free from ambiguity, that any mechanic skilled in the art of making propellers could, by following it, construct the thing patented.

But however meritorious the invention may be, yet it is contended that the patent ought to be adjudged void, because it does not point out the difference between the improved propeller and all other propelling-wheels previously essayed.

The object of pointing out the old from the new is, that the public may be informed what the party claims as his invention, and may ascertain if he claims any thing in common use.

The law does not require that he should describe the various paddle-wheels then known, or point out the differences between them and his improvement; such a rule, even it practicable, would be too onerous to be endured. Take, for example, a patent for an improvement upon all stoves previously essayed; it would be unreasonable to prescribe that the specification should describe all the stoves in use, or that had ever been essayed, and that it should point out the difference between them and the particular improvement; such requirement would be impracticable. When Emerson applied for his patent, in 1834, there were a very great number of paddle-wheels and propellers known, or which had been essayed, many of which had been patented in this country and in England. Now, it was not necessary for him to have described all these various wheels and propellers. It is enough if he has specified his own improvement; and if he has done so in an intelligible form, his patent is good on its face, although, when tested by evidence dehors the patent, it might appear that he has claimed what was old, and thus his patent might be defeated.

In Evans v. Eaton, 7 Wheat. 435, the rule is thus expressed: — "We do not say that the party is bound to describe the old machine, but we are of opinion that he ought to describe what his own improvement is, and to limit the patent to such improvement. The law is sufficiently complied with by distinguishing in full, clear, and exact terms the nature and extent of his improvement only."

Most of the authorities cited by the counsel for the plaintiffs in error, under his fourth point, are referred to by Phillips, in his work on Patents, and the rule that he deduces from them is thus stated, at page 269: —

"In specifying an improvement in a machine, it is often necessary to describe the whole machine as it operates with the improvement, in order to make the description intelligible, and enable an artist to construct the machine, as the inventor is bound to do in his description, and which if he fails to do, he falls into the fault of obscurity; on the other hand, if the whole machine, as well the old as the new part, be thus described, it is requisite to distinguish what part the patentee claims, since, if this does not satisfactorily appear, the patent will, as we have seen, be void for ambiguity; or if the obvious construction is, that he claims the whole machine in its improved state, the patent will be void by reason of the patentee's claiming too much. The mode of expression generally used in the books, in relation to this subject, is, that the specification must distinguish the old from the new. The only object of this distinction is, however, to specify what the patentee claims, and the mere discrimination of the new from the old would not necessarily show this, for perhaps he does not claim all that is new. When the cases say, therefore, that the specification must distinguish the new from the old, we must understand the meaning to be, that it must show distinctly what the patentee claims, the only object of this distinction being for this purpose. This doctrine is illustrated by some of the cases already stated, and it runs through them all wherein this question arises."

Most of the patents describe the improved machine only, as will be seen by referring to the specifications in the patent-office, and to the reports of patent cases.

It has been, of late years, the practice of the courts of this country to give effect to patents, if possible, rather than to destroy them; and to this end, mere technical objections are no longer encouraged. The rigorous rules of the English courts, and of some of our earlier cases, by which meritorious patents were frequently overturned, have given place to more liberal and enlightened principles.

(The remainder of the argument upon this head is omitted.)

V. The authenticated copy of the corrected drawing, filed in the patent-office on the 27th of March, 1844, was correctly admitted.

The original drawing, filed with the patent in 1844, had been destroyed by fire; the patentee could not of course produce the original, and he therefore resorted to the next best evidence that the nature of the case permitted; this consisted of a copy which the plaintiff below offered to prove to be an accurate copy of the original; and this copy so offered was duly authenticated in the manner provided by the first and second sections of the act of March 3, 1837.

Upon the strictest principles of the law of evidence, the plaintiff below was entitled to prove what the original drawing really was. The original being lost, the next best evidence of it was an exact copy, proved to be accurate.

This proof would have been admissible and proper, irrespective of the act of 1837, and whether the copy so offered was a record of the patent-office or not. Suppose the act of 1837 had never been passed, and the plaintiff had proved the destruction of the original drawing, he might have produced upon the trial a copy of it; and after proof that it was a true copy, he would have entitled himself to read it in evidence.

But there can be no reasonable doubt that the corrected drawing, filed on the 27th of March, 1844, was properly received by the patent-office, and that an authenticated copy thereof was admissible as evidence under the provisions of the act of 1837.

That act was remedial in its character; its object was to restore the records, and to repair the loss occasioned by the fire. To that end, it was of the highest public importance that the specifications and drawings should be correctly and accurately restored. To have received imperfect or inaccurate copies would have increased, and not have remedied, the mischief, and to assert that the patent-office had exhausted its power to restore models and drawings by the reception of what were not copies or true representations of the originals would be to give a construction to the statute that would defeat its object.

The first section declares, "that it shall be the duty of the commissioner to cause the copies offered by the patentee, or any authenticated copy of the original record, specification, or drawing, which he may obtain, to be transcribed," c. It is not only within the powers of the department to receive corrected drawings or models, in place of those that prove to be inaccurate or imperfect, but it is the duty of the commissioner to obtain exact substitutes for the originals, if possible; and if those already filed are shown to be erroneous, imperfect, or untrue delineations of the originals, it is the duty of the commissioner to replace them with corrected copies. In this way only can the objects of the act be accomplished. To deny this power would be to perpetuate errors.

VI. The court below properly refused to charge the jury that the defendants were not entitled to a verdict, if they were satisfied that no propelling-wheels were made between the 27th of March, 1844, and the commencement of the suit.

The defendants excepted to the charge so far only as it did not adopt the prayer insisted on by them.

The prayer upon this point insists that the defendants were entitled to a verdict, if no wheels were made by them after the 27th of March, 1844, no matter how often they had infringed the plaintiff's patent prior to that date. It assumes that all persons may, with impunity, infringe upon all or any patents intermediate between the destruction by fire of the records of the patent-office, and the complete restoration of them under the act of 1837. If the principle contended for be sound, then the patentee has no remedy for wilful and deliberate violations of his patent committed intermediate the destruction of the records of the patent-office and the complete restoration of them, no matter how public and notorious the patent may have become, and no matter how extensively the patent may have been published and circulated in works of art or otherwise.

This principle cannot be sound; and the defendants' prayer and exception raise no other question. The prayer assumes the broad ground, that there is no liability for infringements committed prior to the restoration, not only of the patent itself, but of the drawings, and that the patentee is not entitled even to nominal damages.

The patent, in the present case, had been restored and recorded anew long before the 27th of March, 1844, namely, in the year 1841; the recorded copy of the specification and claim was correct, and disclosed the patentee's right; and yet the court was asked in effect to charge the jury, that infringements might be perpetrated with impunity at any time after the fire, and at any time after the recording anew of the letters and schedule, until the 27th of March, 1844. The letters-patent were published in the Franklin Journal in 1834, were filed anew in 1841, and of themselves were sufficient to protect the patentee, even if the restoration of the drawing had been imperfect.

The views of the learned judge in his charge need no illustration; he charged the jury as favorably for the defendants as they had a right to request.

The complaint of the counsel for the plaintiffs in error, that the court left the question of unreasonable delay, on the part of the patentee, in taking measures to restore his records to the jury, is not properly urged, upon the present writ of error, because, —

1. It is not one of the five points that the court below allowed to be raised.

2. That part of the charge was not excepted to at the trial, and, on the contrary, the exception was limited to the point taken in the defendant's prayers.

3. Even if this point were properly before the court, it is clear that the question whether the patentee had been guilty of unreasonable delay and neglect in restoring the records was a question of fact upon the evidence then before the court.

It was a question of fact, submitted to the jury for the benefit of the defendants below; for if there had been such neglect or delay, the court instructed the jury, that, if the defendants had innocently made the patented article, it would be a fair ground for a mitigation of the rule of damages, if not for the withholding them altogether.

The charge was as favorable to the defendants as the law and the evidence would permit.

Mr. John O. Sargent, for the plaintiffs in error, in reply and conclusion.

It is objected to the first point raised by the counsel for the plaintiffs in error, that it is not properly presented to the court, though it is admitted to arise upon the record. The argument is, that the court below intended to restrict the plaintiffs to the consideration of certain specified questions. True it is, that the court struck out from the bill of exception several points on which the plaintiffs relied; but the object of the court in so doing is misapprehended. It was the purpose of the court merely to disembarrass and relieve the record of objections which they considered ill-taken, and the discussion of which they deemed unnecessary. That, besides this limitation, of which the plaintiffs have not complained, it was the intention of the court to cut them off from their right of dealing with this record according to law, is not to be presumed or implied. No doubt whatever is entertained by the counsel for the plaintiffs, that the objection is well raised on the record, and that it is fatal to the defendant's claim.

I. The point made is, that the defendant in error has no patent for an improved spiral paddle-wheel.

The learned counsel for the defendant is mistaken in supposing that the argument of plaintiffs' counsel proceeds upon the idea, that the letters-patent and the specification are not parts of the same instrument. The specification forms a part of the patent, and they are to be construed together, but construed with reference to the fundamental principle of interpretation, Quoties in verbis nulla ambiguitas, ibi nulla expositio contra verba fienda est, — or, as it is sometimes laid down in the books, "No construction shall be made contrary to the very express words of a grant."

In construing this instrument, we must look to the situation of the parties, and the mode in which it was prepared. The formal letters-patent speak the language of both parties. In the instrument of grant, there is nothing equivocal or ambiguous. It is not capable of being misunderstood. No ingenuity can extort a double meaning from it. Mr. Emerson made oath that he was the inventor of an improvement in the steam-engine; solicited a patent for said improvement; received a patent reciting the exclusive privileges vested in him in said improvement, and making the description of said improvement contained in the schedule annexed a part of his patent. All this must be taken as absolute truth. The patentee claiming under this instrument is bound by its recitals, and estopped from denying any thing that it alleges. The letters-patent, in fact, are the joint production of the grantor and grantee. The Secretary of State adopted the description of his improvement which the grantee furnished in his petition. The entitling of the schedule is debatable ground. This may have been the work of the grantee alone, or of a clerk in the department. In either event, it indicates the intention of the parties, and, as if to exclude the possibility of the grantee's taking an exclusive privilege to any other thing than that contemplated and expressed in the patent, the heading or title of the schedule recites, in effect, that said schedule is made a part of the patent, so far as it contains a description of the improvement in the steam-engine, and no farther.

The language of the parties indicates plainly enough what was intended to be granted, and what was actually granted. Then comes the descriptive part of the schedule, or the specification, in the words of the grantee alone. This contains a particular description of the improvement in the steam-engine secured by the patent. It then describes an application of this improved engine to turn the capstan on the deck of a vessel; and an improved spiral paddle-wheel, alleged to differ materially from those previously essayed. Now, the ground taken by the counsel who opened this case is simply this, — that Mr. Emerson cannot, by the introduction of new matters in his specification, make his patent operate as a grant for the improvement mentioned in his petition, oath, and letters; and also as a patent for other things not mentioned in such petition, oath, and letters. It is respectfully submitted, that such is clearly the law.

It is presumed that there is no difficulty in the court's taking judicial notice of any thing involved in the construction of a patent, which a judge at nisi prius would know without the aid of a jury. If this view is correct, the court will know that an improved steam-engine is not an improved paddle-wheel, and was not at the time this patent was issued. This being so, the improved spiral paddle-wheel is not only not in terms included in this patent, but is by legal implication as absolutely excluded from the patent as if it were excluded in express terms. In the fair, natural, obvious interpretation of this grant, collecting its meaning from the terms used in it, understood in their plain, ordinary, and popular sense, the improved steam-engine is the subject, and the sole subject, of Mr. Emerson's patent. Apply these principles, which, in the language of a learned and eminent judge, furnish a "rule of construction which applies to all instruments," and they establish beyond a question that Mr. Emerson has no grant for an exclusive privilege in a spiral paddle-wheel.

And, first, because the force of the schedule is thus restrained in express terms by the patent, and these terms are the language of both parties. Again, because the language of the schedule is throughout the language of the grantee alone, and binds the grantor only so far as it has been expressly, or by necessary implication, adopted by him. Now the duty of the Secretary of State, under the act of 1793, was purely ministerial. He took no such judicial cognizance of specifications as is now rigidly exercised by the commissioner of patents. The grantee might have included many distinct machines in his schedule, and the Secretary of State was not called upon to notice the fact, did not notice it, and could not have prevented it. The patent was within his control, and the schedule so far as it was made a part of the patent, but not otherwise. He could so far restrict it as to limit its effect to the description of the thing patented, and to that extent he did in fact, in express terms, limit it. Beyond this he had no jurisdiction. The same is true of the Attorney-General. It was his duty merely to see that the patent purported to embrace but one improvement, and that the specification was signed by the patentee, and attested by two witnesses. His duty was then discharged, and he certified to the patent's being conformable to law. Now, is it not against reason, and therefore against law, to say that such a schedule, made by the grantee alone, and not examined by the grantor, is in any other respect, and to any greater extent, operative in conferring exclusive privileges, than it is made so by the mutual assent of the parties, expressed in their common and joint language in the patent itself? Can such recklessness and improvidence in the issue of its grants as a different construction would establish be attributed to any government? If the schedule had contained the specification of a spiral paddle-wheel alone, would it have been patented under the terms of this grant? Would the patentee in that case have complied with that provision of the statute of 1793, which required him to "recite" his invention in his petition? Would his oath to the invention of an improved steam-engine then have covered the invention of a spiral paddle-wheel? And if not in that case, why in this? Does the mere fact of describing the improved steam-engine in the schedule incorporate in this patent an improved paddle-wheel, which would not have been incorporated if the improved steam-engine had been omitted altogether? If such is the construction to be put upon these instruments, the Secretary might as well have issued his letters-patent in blank, and suffered individuals to fill them up at their pleasure. The petition, the oath, the description, the grant, the signing by the Secretary and President, the reference to the Attorney-General, were all superfluous. But, say the counsel for the defendant in error, the schedule is a part of the patent, and if the schedule contains a description and claim of a machine, that machine becomes the subject of the exclusive privileges granted by the patent, just as much as if the inventor had petitioned for, sworn to, paid for, and received a patent for the same. This understanding of the matter would have been a very convenient one for a patentee under the law of 1793, because it would have enabled him to include in his letters the inventions of others, without incurring the penalties of perjury; and as many of them as he pleased at the expense of a single fee. With all deference, but with all confidence, it is repeated, that the schedule is so far a part of the patent as it contains a description of the thing patented, and no farther. It is the description of the improvement patented contained in the schedule, which is the specification that forms a part of the patent. It is in this view that the language of the court is to be applied, when they say that the specification is a part of the patent, and that the whole is to be taken together, and construed as one instrument. As a general thing, under the law of 1793, the schedule contained only such a specification; in contemplation of law it never can contain any other; if it contains any thing more, the excess is surplusage. If it does not vacate the patent, it is at least inoperative, — it cannot enlarge the grant.

On the English cases there would be no doubt on this point. For the non-conformity between the title in the patent and the description in the specification, the patent would be declared void on two grounds: — 1st. For the false suggestion in the petition.2d. For the claim in the specification of an improvement not within the true meaning and extent of the grant.

Either of these objections would render a patent in England absolutely void: — 1st. Because the crown has been deceived.2d. Because the inaccurate title is calculated to deceive the public.

These consequences flow, not from any special provision in the English patents or statutes, but from principles of the common law applicable to all public grants. These principles apply with equal force to public grants of the United States, unless there is some provision in our patents as issued, or in our statutes on this subject, rendering them inapplicable. It is submitted, with all deference, that no such provision can be found, and that the reasons for sustaining them in their full effect are stronger under the system established by our act of 1793, than under the English system.

(The remainder of the argument upon this head is omitted.)

II. It is again objected by the counsel for the defendant in error, that there is nothing in the exception to the ruling of the court in regard to the insertion of several claims for distinct and separate machines in the specification.

The case of the defendant is obviously very much distressed by this point, and his counsel protest strongly that the inventions described exhibit a "mechanical unity," being all a means of propelling vessels. To maintain this proposition they resort to a very extraordinary mechanical discussion, to show that, by means of the capstan, without regard to the motive power of the engine, they could propel a vessel. If this be so, and the counsel should present their argument to the commissioner of patents in the shape of a specification, they might readily obtain a patent for it if a new and useful invention. They think, if a vessel with Mr. Emerson's machinery on board should be becalmed, without fuel, that, by applying "the motive power" by manning the capstan, motion would thereby be communicated to the propeller. The answer to this is, that no such application is contemplated by the patentee; and to arrive at it the learned counsel is compelled to sever and destroy his mechanical unity, by leaving the steam-engine useless for the want of fuel.

The question is now, for the first time, distinctly presented to this tribunal, and the doctrine on this subject is to be settled by the judgment of the court in this case. It is a question of no inconsiderable public importance, and it is desirable that it should be adjudicated on plain and substantial grounds. All inventions are supposed to conduce more or less to one common object, to wit, the benefit of the public. This common purpose is probably too remote to sustain the introduction of all manner of inventions into the same patent; but, for all practical purposes, it is precisely as proximate and tenable as the common purpose claimed for the patentee in this case.

It is most humbly submitted, that the doctrine of this court, as suggested in Evans v. Eaton, is the true doctrine on this subject: — "On the general patent law 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." This language obviously contemplates a case in which the machines patented might be used in combination; and the whole force of Mr. Justice Marshall's very sound and pregnant suggestion is destroyed the moment the converse of the proposition is established, namely, that when machines are capable of being used in combination, then any number of them may be united in the same patent. The language of the court in the case cited applies only to the case where the machines in question are capable of acting together; withdraw such cases from the operation of the principle propounded by the court, and there is an end of it. And yet this doctrine, as laid down by the court in that case, is daily acted upon by the patent-office, under the act of 1836; and if it is materially shaken or qualified, the revenues of the department will be very seriously diminished.

The suggestion in Evans v. Eaton, on this point, was much considered in Barrett v. Hall, and it may be said that no cases on record present more masterly expositions of the principles of patent law which they discuss. Wyeth v. Stone stands on the extreme verge of sound principle; but there the two instruments were in fact but part of one and the same machine. The instruments contemplated in that case formed a compound machine for cutting ice. They were, in fact, but parts of one and the same instrument. Two things cannot be readily imagined more absolutely distinct and separate instruments, than a steam-engine and a paddle-wheel. A steam-engine is employed to give motion to every manner of machinery. A paddle-wheel may be turned by horse-power, or man-power, or windmill-power, as well as by a steam-engine. Here the engine is the motive power; the wheel is the thing moved. The engine might be well employed to move any thing else; the wheel might well be put in action by any other motive power. They are as distinct and separate as cause and effect, and cannot be united in one patent, except upon principles that would entirely nullify the rule of law laid down in Evans v. Eaton and Barrett v. Hall, and admit of the introduction in the same patent of entirely distinct and separate machines.

It is suggested, that a different doctrine from that contended for by the plaintiffs prevails in England. We have cited no English authorities on this point. It arises on our own statutes, and is so rested by Mr. Justice Marshall.

There is no hardship in the rule contended for. In no other way can the subject-matter of an invention be distinctly brought out, so as to warn the public against undesigned infringements. If several machines can be mixed up in one specification, and several improvements on each, and then patented in the name of one of those machines, it is respectfully, but earnestly, insisted, that the patent-office cannot fail to become the source of more oppression and outrage than will be long tolerated by a people who are masters of their own institutions. Under such an understanding of the law, letters-patent will be regarded by the public as mere charters of iniquity, and the whole system must be swept away. It must be as impracticable to sustain such an institution in the United States as it would be to establish the Inquisition here, or vest in the government those odious prerogatives the abuse of which led to the English statute of monopolies.

It is most humbly submitted, then, that, on the authorities and on the reason of the case, there was error in the charge of his honor, the circuit judge, that "the objection that the patent embraces several distinct discoveries is untenable."

III. Counsel for the defendant in error cannot perceive by what course of argument this "patent" can be shown to be too broad upon its face. We are embarrassed somewhat in reasoning upon this case, because it is an anomaly. This is the first attempt on record to sustain a grant of an exclusive privilege by virtue of letters-patent which contain no allusion whatever to the alleged subject-matter of the privilege which is set up under them. We repeat, and to this point pray the special attention of the court, that, among the many hundred patent cases that have been adjudicated in this country and in England, not one such case is reported. In discussing analogies, therefore, we must waive for the time the great difference between this and all other cases, arising from the fact that the patent before us contains no grant of an exclusive privilege in a spiral paddle-wheel.

Plaintiffs' counsel do not allege, therefore, that this patent is too broad upon its face. It is as broad upon its face as the law will allow. It is broad enough to cover an improved steam-engine, and no more broad. It is made void by attempting to include more in the specification than is included in the grant, and more in the claim than is shown to be of the patentee's invention. The objection of plaintiffs' counsel is, that the claim is broader than the invention.

The claim is for the entire spiral paddle-wheel, constructed and operating as set forth; and more than that, it is for such a machine "not confined to precise forms or dimensions, but varied as experience or convenience may dictate, whilst the principle of action remains unchanged, and similar results are produced by similar means."

Here is a claim for the entire wheel, to be varied as the inventor may see fit to vary it, and for every other wheel operating on the same principle, and producing similar results by similar means. It is a claim, as broad and distinct as language can make it, for the spiral propelling-wheel, and every part of it, and for liberty to vary it in form as the inventor pleases, as long as a similar result — to wit, the propulsion of vessels — is produced by similar means, — to wit, by a spiral wheel. The result contemplated is propulsion; the means or instrument is a spiral wheel, of such form as experience or convenience may induce the inventor to make, without changing the principle of action. Such is the claim; and if the claim is a valid one, no man can effect the propulsion of a vessel on the principle of action contemplated by a spiral wheel, without invading Mr. Emerson's claim.

But, while such is the claim with which Mr. Emerson arms himself, and goes out among men, as Lord Kenyon expressed himself in a similar case, "hanging terrors over the unlearned," when we come to examine the specification of his wheel, we find an implied acknowledgment that it is only an improvement, and merely an implied acknowledgment. He speaks of an "improved spiral paddle-wheel," leaving the unavoidable inference, that he has improved the ordinary paddle-wheel by making it spiral, and that the spiral feature — or, as he subsequently describes it, his spiral trough — is the only material part of his improvement.

Here is the old defect, that has been decided over and over again to be fatal, — the invention of an improvement, and the claim of the whole machine. No ingenuity can withdraw this case from that large class of cases in which the rule we contend for has been laid down with a distinctness that cannot be mistaken, and applied with a wise, uniform, and unrelenting firmness. The courts say, that no man shall give that false color to his claim which may enable him to "hang terrors over the unlearned." The case before the court is Jessop's case, where the patent was for the whole watch, and the invention of a particular movement. It is the case presented in Williams v. Brodie, where the invention was an improvement on a stove, and the patent for the whole stove. It runs on all fours with Cross v. Huntley, where the invention was of an improvement in the washing-machine, and the claim was for the whole machine; where the court did not hesitate, in an action where the patent came up collaterally, to declare it void. It is Bovile v. Moore, where the patent for an improvement on a lace-machine was held void, because the claim was for the whole machine, though a considerable part of it had been long in use.

There is no matter of fact to be found, in order to bring out this defect, that the law may be applied to it. It lies on the face of the specification. Jessop, Williams, Cross, and Bovile showed that they had invented improvements, and claimed the entire machines. Emerson suggests that he has invented an improvement, and claims the entire machine. Where is the difference? What subtilty can distinguish between these cases? And why should we seek to establish thin, fine, and subtle distinctions, in a case where the policy of the law is so plain, obvious, and honest, and where the great end to be attained is to prevent patentees from "hanging terrors over the unlearned"?

These cases, it may be said, are not binding authorities upon this court. They are not so cited. No weight is claimed for them beyond that which they derive from their intrinsic good sense and sound reason. Their authority, as well-considered decisions, has never been judicially disturbed or questioned. But there is a case of controlling authority, — that of Evans v. Eaton, — sustaining the doctrine for which we contend to its full extent. To this case I shall have occasion again to refer, in considering the fourth head of the argument of the learned counsel for the defendant, to which I now pass.

IV. The fourth point discussed by the learned counsel for the defendant touches the second prayer made to the court below.

Plaintiffs contend that Mr. Emerson's specification does not define with precision the nature and extent of the alleged improvement in the spiral paddle-wheel, but describes the whole machine, and claims the whole as improved, without distinguishing the new from the old. A patent with such a specification cannot be supported. This doctrine rests so firmly on the authoritative decision of this court, that it may well be left to authority. We shall, therefore, merely allude to the obvious reason for it, which is, to limit the exclusive privilege to the actual improvement, and disarm the patentee of the power of "hanging terrors over the unlearned," and practising upon the fears and credulity of the public, by "pretending that his invention is more than what it really is, or different from its ostensible objects." If a patentee can mix up a single undefined improvement in details of the construction and operation of an old machine, and then claim the whole machine constructed and operating in the manner set forth, then a patent, instead of being merely the reward of meritorious invention, is a device to encourage litigation, extortion, and fraud. Such a patent shifts its grounds at every trial, changes its color according to the aspect in which it is presented or met, and adapts itself with a fatal elasticity to the length and breadth of the evidence which happens to be applied to it.

(The remainder of the argument upon this head is omitted.)

V. Now with regard to the drawings. It appears from the record (p. 10), that two drawings were filed by Mr. Emerson in the patent-office, under the act of 1837; one as early as 1841, which was re-filed, with the plaintiff's oath to its correctness, on the 12th of February, 1844, and the other, with the same oath, on the 27th of March, 1844. The second drawing was the one produced and relied on by the plaintiff below as constituting, with the letters-patent, that certified copy of the renewed record in the patent-office which the second section of the act last cited makes the only proof of the alleged patent admissible in any judicial court of the United States.

The learned counsel for the defendant in error suggest, that, after the original drawing was destroyed by fire, the next best evidence of it was an accurate copy of it, offered to be proved such. It is submitted, with great deference, that a drawing of Mr. Emerson's paddle-wheel, filed in March to lay the foundation of a suit in April, was not the next best evidence of the alleged original, for the reason that there was another drawing, previously filed and sworn to, which was something more than next best evidence of the lost original, being made by statute absolutely the only evidence of it that could be received in any judicial court of the United States. It might, indeed, be well contended, that the first-filed drawing did not at all partake of the character of secondary evidence. It became, by force of the statute, to all legal intent, the original drawing. It filled the place of the original drawing on the record, being verified by the same oath, vesting the same rights, construed in the same way as part of the specification, and conclusive proof of all that it purported to prove, until it should be rebutted. The letters-patent and first drawing filed by Mr. Emerson, under the first section of the act of 1837, became, by virtue of the second section, as far as the patentee was concerned, primary evidence. It was open to observation and impeachment to all the rest of the world; but by operation of the statute, in connection with well-established principles of law, it was at all events conclusive upon the patentee. The drawing, therefore, filed on the 27th of March, 1844, was not in law the "next best" evidence of Mr. Emerson's original drawing, because there was a prior drawing filed on the 12th of February, which the statute had expressly declared to be the legal original, at least for all purposes of litigation.

(The remainder of the argument upon this head is omitted.)

VI. On the question of damages, counsel for the defendant insist that there was no error in the charge of the learned judge, that "the damages were not necessarily confined to the making of the wheels between March, 1844, when the drawings were restored to the patent-office, and the bringing of the suit." Such a limitation was prayed below, and, as it was supposed, on well-established principles of law and equity. It is again pressed, with all deference, but with perfect conviction, that the refusal of the prayer was error, for which the judgment under consideration ought to be reversed.

The patent act contemplates, that every thing to be done by an inventor, with respect to his specification and drawings, is to be done before the patent issues. There is no such thing as correcting the record of a specification of drawing by mere substitution of some other specification or drawing. After the patent issues, the patentee cannot, by merely depositing a new drawing, on any plea whatever, make it a part of his patent, or any evidence whatever of his invention, as originally patented, so as to cover cases of alleged infringement prior to such change in the record. There can be only one motive of desiring to add a new drawing, and that is, to remedy a defect or insufficiency in the original drawing or specification, or to correct the same. The object of such a change can never be merely to present a more tasteful drawing, or a drawing more agreeable to the eye, or more in conformity to pictorial rules. Other arts than the fine arts induce such an application. The offer to file a new drawing is an admission on the part of the patentee, that his new drawing covers something in which the original drawing is defective or insufficient. And, under these circumstances, what does the statute say? That the patentee must surrender his patent, and that a new patent may issue in conformity with his corrected specification, and thereafter operate, for the residue of the original term, on the trial of all actions thereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form before the issuing out of the original patent. And in this case, the commissioner is not bound to grant such re-issue, nor can he grant it except in cases where the error has arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention. Similar proceedings may be had in regard to the addition of an improvement. (Act of 1836, § 13.)

(The remainder of the argument upon this head is omitted.)

It is respectfully submitted, then, —

1. Because the defendant in error has no grant of exclusive privilege in the machine, which is the subject-matter of the present controversy:

2. Because he could not in law receive a grant for it, as one of several distinct machines in the same patent:

3. Because, as the author of an improvement, he could not take out a valid patent for the whole machine:

4. Because he has not in his specification distinguished between the old and new parts of his alleged improved machine, but has claimed the whole machine as improved:

5. Because he did not produce in evidence the record of his patent which the law had made such, but another record; and,

6. Because he has recovered damages for causes of action accruing previously to the alleged correction of his record, and prior to the alleged renewal of it under the act of 1837:

For all these reasons, and for others raised upon the exceptions and record in this cause, presented perhaps too much at length, but not more at length, in the view of counsel, than their public importance may justify, — that the judgment of the Circuit Court in this case ought to be reversed.