Evans v. Eaton

¶1(common law.)

¶2Under life fi.tb.section of the patent law of 1793, ch; 156. the defend,ant pleaded the general issue, and. gave notice that tie woulq prove at Jim'trial, that the machine, for l he use of which, without license, the suit was brought; bad been used previous to the alleged ' invention .of the plaintiff, in several places which were specified in the notice, or in some - of them, “and also at sandry other places in Pennsylvania, Maryland,, and. elsewhere in the United States.” Tile- defendant having given tiVidincens to some of the places specified, offered evidence as to others not'specified: -Held, that this evidence was admissible. But tho powers oftho court, iri such a case,- áre sufficient to prevent, and will be « excised to prevent, the patentee from being injured by. surprise.

¶3Testimony, on the part of the plaintiff, that the persons of whose pri- or use of the machine the defendant had given evidence, had paid-the plaint iff for licenses to use the machine since his patent, ought not to he ' absolutely rejected, though'entitled to very little weight.

¶4Qume, Whether, under .the goneral patent law, improvements OB different machines cm be comprehended in the same patent, so as. to give a right to the e elusive use of several machines separately, as well as a right to .the exclusive use of those machines in combination 1

¶5■ However this may be,, the act of the 21st January, 1808. ch. 117 “for the relief of Oliver Evans.” authorizes the issuing to him of a patent for his invention, discovery, and improvements, in the art of manufacturing flour, and in. thesevetal machines applicable to that purpose.

¶6Quiere, Whether congress can constitutionally decide .the fact, that a particular individual is an author or inventor of a certain writing or invention, -so as to preclude judicial inquiry into the originality of the' authorship or invention ?

¶7Be this as it may, the act for the relief of Oliver Evans does not decide that fact, hut leaves the question of invention and improvement opes to investigation under the general patent law.

¶8Unde; the sixth section of the patent law,c(i 156. if the thing secured by patent had been in use, of had been described in' a public work an*455tffioy tothe sopppsed d seovery, thé patent ip void, wbpther the patentee had a knowledge of this previous use or description, pr feat.

¶9. Oliver Evans may claim, under hia/p itent, the pxoltisive use of his inventions and improvement in the art of manufacturing 'flour end.' fneal, «nd iñ the several-machine* which he lias invented, and in hi* Itnprov»menton machines previously .discovered. But where his cfufrey is for an improvement on a machine, he mnst show the extentof his imjii'reveineni *b that «'person understanding the subject may comprehend diatmcily in what it consists.

¶10i" henotfortlia relief of O. E. is engrafted on'the. general pateat, htvdj - eo' as to give him a right to sue in the circuit conri, for en infriagemenl ' of hie patent rights, although the .defendant may be a citizen of the same state with'himself. ’ ’

¶11Error, to the circuit court for the, district of Pennsylvania.

¶12This was ap action brought by the plaintiff in error^ against the defendant in error, for an alleged- infringemeht of the plaintiff^ patent right to the use of his improved hopper-boy,\ one of the several machines dieebvere.d, invented, improved, and applied by him”'to the art of manufacturing flour and meal, which patent was. granted on-the 22d January, Í8G8. The defendant pleaded the general issue, and gave the notice- hereafter stated.. The Verdict was rendered, and judigmen.t given thereupon for the defendant in the court below j on which the cause was bro ught, by writ of prro^,,to this court.

¶13At the trial.inthe court below, the plaintiff gave in’ evidence, the several a,Cts of congress entitled respec-. tively, “An act to promote the progress of useful arts, and to repeal the acts heretofore made -fop that purpose An act to extend "the privilege - of obtaining patents* for useful discoveries and invent*456tions, to certain persons thérein mentioned, and to enlarge añ'd defi ne 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, fgr a patent,a and the patent thereupon grant*457ed to the said Oliver, dated the1 twenty-second day oi January, in the year 1808;* and further gavd ih eye*458dence, that an agent for the plaintiff; wrote a note to the defendant in answer to which, he called on the *459agent at Chambersburg, at thé house of Jacob Snyder, on the ninth of'August, 1813; there werb'a aum*460ber Of millers present; the, defendant then told the agent-that he had got Mr. Evans’ Book, a plate in *461tie:.Millwright’s Guide, and if the agent would take forty dollars, the defendant would give it him;, the *462defendant said that his hopper-boy was taken fióín a plate in Mf. Evan’S book j he said he would give no mofe, alleging, that the hundred dollars the agejit asked wás 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, saitrin the circuit court.

¶14' The plaintiff further gave in evidence, that another agent for the plaintiff was in. the defendant’s mill On the second of November,- IS 14, and saw a hopper-boy there, on the principles and construction oí the plain¿ tiff’s hopper-boy. This witness had heard that ’ a *463right wasxbtained under Pennsylvania; but did not ■known <of any rights under Pennsylvania sold by the . plaintiff 3 and did not know that it was erected in any mill after the patent under Pennsylvania. The de *464fendant’s hopper-boy had an upright shaft, with alead ing arm, in the. first place, and a large arm inserted. *465With flights, and leading lines, and sweepers; a little board, for .the purpose of sweeping the meal in the *466bolting hoppers and spreading.it over'the floor;' a ba. lance weight, tó cawse the arms to.play yp and down lightly over the meal. The leading arms were aboyt 5 *467feel long, a nd seemed-to be in pro portion, the arm about 14, and the length of the sweep about 9 inches. *468And. the defendant, havifig previously given "the. plaintiff written n'otice., that upon the trial of the *469'«¿use, the' defendant would give in evidence, under the general issue, ihe following special matter, to *470wit: “1st.- That.the improved hopperboyj for which* inter alia, the plaintiff in his declaration -alleges, be *471has 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 Brandywine ; at Daniel Huston’s n¿l] in Lancaster. county, Pennsylvania; at Henry Stauffer’s milbin Yoyk county, Pennsylvania; and at DihPs mill -in the same county, or at ¡some of the said plaCés, and also at sundry other places in the said state of' Pennsylvania., the state of Maryland, and elsewhere-*472in the United .States. 2d. That the patent given t’ct 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 kopper-boy, .and'which the plaintiff elaiins as his. invention and-discovery; to wit, the upright shaft, ayftis,'-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 áaid, 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 thai moves the mill or other principal machine to the hopper-boy is riot an original invention or discovery of the plaint ff, but was in use anterior to his said supposed invention o'r- discovery, to- wit, at the places abové mentioned, or some of them. 4th'. That the said patent is void, becausfe it purports to give him an exclusive property in an improvement in the art of mapufácturing meal,, by means of a certain machine, terme.d an improved- hnpperboy, 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; arid ifle-said patent and description therein referred to contains no statement,, specification, or description». *473by which those parts, so used as aforesaid,' may be distinguished from those of which the said plaintiff may have-bepu the inventor, .or' discoverer, protesting at thé same timé that he has no,t 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 vblume: of Mormer’s Husbandry; in. Ferguson’s Mechanics; in Bossuet ’s Histoire des Mathematiques; in Wolf’s Fours des Mathematiques; in Hesagulier’s Experimental Philosophy, and in Proney’s Architecture Hydrmlique, 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 ah improved elevator, were, anterior to the plaintiff ’s said supposed in- ■ vention 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 gave in evidence the existence of hopperboys prior to the plaintiff’s alleged discovery at sundry mills in the state of Penn*474sylvania, mentioned in the said notice; and- farther offered to give in- evidence the existence of hopperboys prior to the plaintiff’s aiieged discovery, at sundry-other mills in the scute bf 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. Ih'e 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 Ibid before- the jury, offered further to .give ia 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 inills, 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 tobe .laid before the jury. To which decision the plaintiff’s counsel excepted.

¶15The 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 tó the right granted, such as it' was. That it had been contended that the schedule was paof the patent, and contained a claim to.the invention of the peculiar properties and principles of the hopperboy, as *475well as other machines. But the court was of opimon, that the schedule is to be considered as part of the patent, so far as it is descriptive of the machines, but not Farther; and even if this claim had been contained in the body of fhe patent, it would have conferred no right which was not granted by that instrument..

¶16The court further proceeded to instruct the jury that the law authorized the president to grant a pa. tent, for the exclusive right to make, construct, use, and vend to be used, any new and useful art, ma chine, manufacture., or composition of, matter,, 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 he 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. Previous ly 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 indention, 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' the same. That from this short analysis of the laW, the following rules might he deduced. 1st, That a patent may be for a new and ■useful art; but it must he practical, it must be applicable and referiahle to something by which it maj' be proved to he useful; a mere abstract principle cannbt be apprepriated by patent. 2d. The discovery must not only be useful, hut new; it must not.have been *476known 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 samé art, machine, &c;; and that true, and original are synonyinous.terms in the intention of the legislature.' But, as it was- not pretended that thosé terms 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 fpr 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 bv patent, was not originally discovered-by tbe pa- . tentea, but has. been ^ in use, had been described in some.public work anterior to the supposed discovery. 3d. ‘lithe discovery be of an improvement only, it must be an improvement in the principles of a machine. art. or manufacture, before known of used; if only. in the form or proportion, it has not the merit of a discovery which can entitle the party tó a patent. 4th. The grant can only be for the discovery as recited ■anil described in the -patent and specification. If the grantee, is not, the original, discoverer oi the art, machinev &c. for which the grant fs made, the wholé is void. Consequently, if the patent be for the-whoie of the machine, and the discovery were of an improvement, •the patent is void. 5th. A machine, oran improvement, maybe hew, and the proper subject of a patent, though -tire pajts of it were before known and in use. The com" %inatioh,Xherefore, of old machines, to produce a new *477and useful Jesuit, is a disco very for which & patent may' be granted.

¶17The above principles would apply to most of the questions that had beeft discussed. It was strongly insisted upon by the defendant’s cdunsel, that this pa tent is broader than the discqvery ; 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. u,pop.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 riot' for either of the machines so combined and -used. That the plaintiff is the original discoverer of this improve* ment, was contested by nd person, and, therefore, it coüld not with truth be alleged that the patent ishí easier than the discovery, or that the plaintiff could.bqt Support an action on thispatent against any person who should use the whole, discovery.

¶18But could, be recover, against a person who ;had made caused one of the machines, which in part;constitute the .discovery ? .The plaintiff insisted that .ire 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 exclusive1-use of a machine, because when used in combination, with others, a new and useful result is- produced, which Be could not have acquired independent of that combi* *478-nation ? If he could, then if A. were proved to be the original inventor of the hopperboy; B. of the élevator,'and so on, as to the other machines, and 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 acknowledgéd right to use those discoveries, by obtaining a patent for an improvement Consisting in a combination of those machines to produce a new result.

¶19The court further charged the jury, that it was not quite clear that this action could be maintained, although it á¡vas 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 of,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 pnly, 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 ?

¶20Again ; 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 riot. 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 *479is, that he' is the inventor of fhe art, machine, or manufacture, for which he solicits'la patent. But s'ince 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.

¶21But this was not all. If the law had provided for fair and original discoverers a remedy when their fights 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 on a scire facias to repeal this patent, if it had appealed .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 he 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 po 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 ncft either the trtie or 'the original inventor of it. And *480Supposing 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-apt render judgment'upon a seire 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,) in as much 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 1 If *he plaintiff was not the inventor of the parts, he had no right to complain that thejF were used by other's, 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 ahy of them, he might have obtained a separate patent for each machine of which tie was the original inventor.

¶22Upon 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 t]iat the plaintiff was the original investor of the hdpperboy. But if an action would lie upon this patent for the violation of the plaintiff’s right tq the hopperboy, still the plaintiff could not recover,- if R had been shown to the satisfaction of the *481Jury, that he was not the original discoverer of that, machine.

¶23■ It appeared- by th'e testimony of the defendant’s'witnesses, that Stauffer’s hopper-boy Was in use. many years before the alleged discovery of the plaintiff 5 that the two machines- differed from each other very little in form, in principle, of 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 aim- in Stauffer’s ; or whether, upon the whole, the former is a more perfect agent in-the manufacture of flour than the latter, were questions which the court would not undertake to decide.; because, unless the plaintiff wa8 the original inveptor of the hopperboy, although he had obtained a separate patent for it, he could Nñot - recovér in this action, however useful the improve» ment might be, which he had made in that machine. If the plaintiff had obtained a patent for his hopper-boy, it would have been void, provided the jury should be of opinion, upon the evidence, that his- discovery did nót éxtend to the vvhole machine, but merely to an improvement on the principle of,am old one, and if this hould be their opinion in the present case, the. plaintiff could not recover.

¶24It had been contended by the plaintiff’s counsef that the defendant, having offered to take a license from the. plaintiff, if he would consent to reduce the price of it to forty dollars, hé was not at liberty to deny .that the plaintiff is the'original inventor of this ma*482chine. This argument had no weight in it, not inere^- ^ because ^ 0^er 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 hot the original inventor. If the offer amounted to- an acknowledgment, that, the plaintiff was th& original inventor, (and further it'could-not go,) this might be used as evidence of that fací, but it would not. entitle the plaintiff to a verdict, if the fact proved to be other, wise.

¶25The plaintiff’s- counsel had also strongly insisted, That under the eqüíty of the tenth section of the law, ttie defence set up in this ease ought not to be allow* ed after three years from the date of the patent. This argument might, perhaps, with some propriety, be ad" dressed.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 th.e plaintiff was not the originaFinventor of the ma'chine 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.

¶26But what seemed to be conclusive of this ppint was,, that the argument would tend to defeat altogether the provision of the sixth section, wjiich authorisesthis 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 pow;er of the patentee to'avoid it altogether^ by forbearing to bring suits until after the expiration ©f. that period. And. thus, although the law has care- *483. fully 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 v.ears avoid an Inquiry into the validity o,f his title.

¶27The 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 those not to .take a patent for it, it became public property by his abandon* snoent; nor could other person · Case Law">any other person obtain a patent for , it, because no other person would be the original inventor.

¶28To this charge the -plaintiff’s counsel excepted.

¶29Mr. C. J. Ingersojl, for the plaintiff,

¶30premised, that this patent granted an exclusive right for fourteen years in the improvement in the art, by means of the five machines,- and for the several machines , the pe* cuitar properties of each in its practical ¿esults, and the improvement of the art by the combination of the whole. The proof of this position is, that the defendant uses the precise machine, copied from the plaintiff's publication, and offered to pay for it; .but they differed in price, which let,! to the contesting the originality of the plaintiff’s invention.

¶311.-It is said; in the charge of the court below, that the .action is founded on'the patent, which contains no grant off a. right to the several machines; but is confined to the' improvement in the art, by means of those machines. The patent is to be made out in the *484manner and form prescribed by the general act. What, are that manner and form?. By reciting the allegations and suggestions of the petition; giving a short description of'the invention, or discovery:; and thereupon granting an exclusive right in' the. said invention, or- discovery.\ The manner and form of these letters patent are a recital Of, 1st. The citizenship of the patentee. 2d. The allegations and suggegtions of the petition, as-to.both the improvement and the ma-chin.es in a short description, referring to the. annexed, schedule-for one more full and particular' ip the inventor’s own 'words. 3d. That he has petitioned agreeably to the special act. 4th. A grant of the said improvement. — The description must be - short and referential. It must be a description. By the first section of the act of-the 10th' of April, 1790, c"h. ■34, it was to be described .clearly, truly, and fully .perhaps because the board, constituted.'by that law, was to decide whether theydeemed ‘the discovery or invention sufficiently, useful or important for letters, patent. The patently express reference, adopts the special act in extenso. The connecting terms which ¡and said, bind the whole to the granting-clause ; the -állegati'ons and suggestions recited are part.of the' grant; the machines are the- means of every end, particular as well as general; nor can there^be any practical result without them. To confine such a patent to one general result from a combination of'the whole ¡machines, nullifies it. It is never so. in practice, and would • operate infinite injustice in other cases. 2. Hut the-schedule is párt of the patent inv all casas ;' *485in this case it is esneciallv' so. By the act of 1790, ch. 34, s. 6. the patent; or specifications are prima fads proof of everv thing which it is incuipbent on the plaihtiif to establish ; and by the existing law, the specification is considered as explanatory of the, terms used in the patent, so as to limit, or enlarge the grant.a But .it is said in the grant, that the schedule annexed is made part of the patent, it is made so by the, public agent to avoid trouble, litigation, and unnecessary recitáis. , The petition, schedule, arid description, are all referred to, and incorporated with the patent. What does the law mean by a recital of allegations and suggestions ? What more can a petitioner do than allege and suggest ? He jcpnnot shape or' prescribe the manner and form of the' grant. The "charge denies that the schedule, at any'rate i’s more than descriptive of the machines, or that it would confer any right,' even if claimed'in the patent. But if no right would be conferred by insertion in the grant itself, what becomes of the argument which ascribes such potency to the grant ? The charge says, the grant can only he for the discovery as redted and described in the patent and spectjication. The grant is not for ¡¡he. parts, because u is for the whole ; not in tneir rudiments or elements ; not for wheels, cogs, qr weights, nor for wood, iron, or leather'; but for the peculiar properties, the new and useful practical results froto ;each machine, and the vast improvements from their combination in this art. The charge supposes it impossible to obtain a patent *486for a hopperboy, unless the plaintiff could swear that he invented that machine. But (he oath is not a material, or at least,- not an indispensable prerequisite.a 3. The special act for the relief-of the . plaintiff, de.cídes híim ,to he the inventor of the machines and im" provements for which he has obtained a .patent. By the constitution, art. 1. s'. 8,. congress have potrer to promote the progress of science and the useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings - and discoveries .This has been done by, Congress in the instance of the plaintiff The special act is an absolute grant to him, binding on all the community, and prer eluding any inquiry into the originality of the invention.• It includes a monopoly iri his invention, discovery, and improvements in the art, and in the several machines • discovered, invented, improved, and applied, for that purpose. > The patent is to issue on a simple application in writing by the plaintiff, without any prerequisites of citizenship, oath, fee, or petition, specification and description to he filed. The act of 1793, ch. 158, requires all these, and then grants a patent for invention or discovery; whereas this grant is for that, and for improvements in' the art, and in the s'everal. machines. It is a..remedial act,'and should receive a liberal construction to effectuate the intentions of the legislature.b The patent is as broad as the law, if the grant be governed by the recital. Its construction is to be against the grantor, and according to the intent,; *487nor is it to be avoided by subtle distinctions: .if there are two interpretations*- the sensible one is to be adopted-.a 4. The improved hopperboy of the plaintiff is the Only new and useful discovery which was in evidence in the case; the court misconstrued the law in their charge in this respect, inasmuch as the true construction of it is not that the patentee shall be the first and original cjiscoverer of a - patentable thing, but “the true inventor” of such'a thing; that such a thing was truly discovered and .patented without knowledge of its prior use, or public employment, or existence: inore especially -where; as in the present instance, the controversy is not between conflicting patents, but between the true patenteelof a nesv and useful patentable thing, and a person-defending himself against an infringement,1 on the plea ofitspiiof us.e by third persons who had no patent,'and whose discovery, even if'proved, Was of a thing never in us.e or public existence, bpt in total disuse. The stat. 21. Jac; 1. ch. 3, s. 6. an. 1623, .grants the monopoly “of the sole working or ¿na* king of any manner of new manufactures, within this realm, to the trueand first inventor' and inventors of such manufact ures, which others at the time of making such'grant, shall not úse,” &c. It is contended,-under Our law, that the utility is to be ascertained as well as-the originality ; and that-thispas well as .that, is partly á question for the jury. The thing phtentaole must •be useful as well as- ¿lew. '.The useful' thing patented drevails over one, not useful nor patented, though in *488previous partial existence: This is not the casé of conflicting patentees ; and to destroy this patent, the previous use must appear, there being no pretence of description in a public, work. The title .of the act is “fop the promotion of the useful arts.” The first section speaks of'“any new and useful arts,” not known- or used, &c.- The sixth, of that which “Had been in use, or described in some- public work' anterior to the supposed discovery.” What degree of use does-the law exact? a use known or -described in a public work. Not merely-an experimental, or essaying ; nor a clandestine, nor obscure use. It must be. useful,' and in use,- perhaps in known,, if-not public ,us.e; something equivalent to filing -a specification-off re.cord. Now here utility was lost sight of irt search of. novelty. It seemed to be taken for granted, that.pro- ihg the- pre-existence of an unpatented' hopperboy defeated- the .plaintiff’s patent. The desuetude, of the rival' hopperboy'from inutility was-•established* The .question was between' anew and useful patented machine, and an .useless and obsoleteane never patented; and which, not being, useful,never, could be patented. But that the patentee’s is useful'nobody questions. At all events,-.the question of fact, whether in usé, should have been left to. the jfíry. The jury ate substituted for the board, which, Under the first law, was to decide whether the .supposed invention was. “sufficiently useful- and important” for a patent- The coust below suppose Stauffer to have given his discovery to the public. - But it fell into disuse ; there w<*s nothing to giv.e. Stauffer did not know its value: if he *489bad abandoned ó field with .unknown treasure in the ground could he afterwards claim the treasure?a — 5 The defendant’s testimony of the uSe of hopperboys in milla, not specified in his notice, was erroneously admitted. The object of the provision' in the 6th section of the patent law of 1793, c,lu 156, was to simplify the proceedings, and to enable the defendant to give in evidence under bis notice, what he would otherwise be obliged to plead specially.. The sufficiency of the notice is, therefore, to be tested by the rules of special pleading; which, though technical, are founded in goo.d sen.se and natural justice, and áre intended to put the adverse party,on his guard as to whát the other intends to rely upon 'in his defence. But such a notice as this could not answer that purpose. — 6. The plainliff’s testimony of the payment for licenses to use. his improved1 hopperboy, ought not- to have been rejected. It ought to have been admitted as circumstantial evidence entitled • to some, weight.

¶32Mr. Hopkinson and Mr. Sergeant, contra.

¶331. The admissibility of evidence of the úse of the hopper-boy, anterior to the plaintiff’s .alleged.invention, in ' mills not specifically 'mentioned in the notice, deperids upon the construction that may be given to the §th section of the act of the 21st of February, 1793,.ch. 156,' taken in connection with the notice. This section is Substituted for tie 6th section of the act of the 10th of Apri], 1790, ch. 34. The office of the sec*490tion, in each 'of these acts, is two-fold : 1st. Tosíate what shall constitute a defence. 2d. ' To state the manner in whhh. the defendant may avail'himself cf it. ' And whatever difficulties may exist (if any there be) in.,the construction of the rection, arise fiotn the combination of this two-fold object. That this was the object of the section is peifectly obvious. The general issue would lie a denial of the allegation contemplated by the 5lh section of tbe act of 1793, and the 4th of the act of 1790. If the acts had stopped there, it is manifest that the defendant could have had no defence, but what was- legally within the scope of the general issue.. The 10th section would not have availed him, became," the limitation of time, and the grounds for repealing a patent-upon a scire facias, are -totally'different from 1 those^ which ought to constitute a defence to the action. ' The patent may he opposed, in an action, upon the ground that the patentee is net .the original inventor; but it can be repealed only upon the ground that he is not the true inventor. Fraud • (proof that it was surreptitiously obtained) js.the necessary basis, in the one case ; but error and mistake is equally available in- the other. Neither could the defendant avai] himself' of the .provisions in the prior part of the act: For,- these are merely, dtr<ectory¡ and they terminate in the provision-made by the 5th section, which would have been conclusive* • The6th section is, therefore, a proviso to.the 5th. The 6tii section of the act of. 1790, made the patent prima facie evidence only, which- would have opened the inquiry as to the truth of the invention. It'appeavs, then* that, the object of the proviso was, in the first place. *491to settle what should constitute a defence. These matters would not have been within the scope of the general issue, by the rule's of pleading. They would have presented the subject of a'plea in bar · Case Law">special plea in bar. The act, ‘therefore, at the same time provides, that they may be given in evidence under the general issue. The design, in this' respect, was to save the necessity of special pleading on the one hand, andop.the otler, to give a reasonable • notice. Does' the law require the evidence to beset out? No ; and yet,' if surprise is' to be fully guarded against, this ought certainly to be stated, in order that the plaintiff^ may prove that- it isialse, or proceeds from corrupt witnesses, &c. Is'it then necessary that all'the particulars should be givén^ the stale-, county, township, town, street., square, number of the house ? The law does not require it. What ■ certainty, then, is required in the notice? • The answer is obtained by ascertaining the use ahd intention of the section, which, were to save the. necessity of special pleading. What then" must be alleged in a spe-, cial plea? Not the evidence or facts, but the- matter of defence, which may be that the plaintiff was not the true inventor, but that the invention was before his supposed discovery. You must state what is the ground and essence of the defence, and nothing more ; all else is surplussage.' E.. G. That the plaintiff was not' the true inventor of the hop* perboy, but the same >was in use, prior to his supposed discovery, at the mill <f A. Now its being in use at the mill of A. is not of the qssence of ¿he defence, for it is as good if used at the mill f B. r the essence is, that it was used before. TV defend* *492ant then would be entitled to lay the place under á yideli^ét, nnd of course would not be obliged to prove it,-but fnight prove any other. If, then, the law did not mei n to increase the difficulty of ,the defendant, the' same'may'be done in a notice. Consider the in.* Conveniences of a contrary practice. Amachine has. been used rft a foreign country : the country, town, apd. place,' may be -iinknovm■ Shall I, therefore, be deprived of the benefit of my invention? Again, it is known. I'ani bound to give thirtv'days notice'before trial and no more. Cid bono, that I should mention a town or place in' England ? The intention is, that the., plaintiff shall come prepared to prove where his invention' was made, and not,to disprove the defend” ..ant’s evidence ; Ihht he shall have notice of the kind of defence intended* in order that he may shape hi?; case accordingly! If notice is given' that the defen^.antwill. give in evidence^ that the plaintiff’s machine wás. used:hefóre his supposed discovery, this is.no tice df special matter,' vencling to prove- that it was not invented by him-. Tlié law does not require a state._ ment or description oi tin special matter, hut notice., that special matter will.be given in evidence, tending to. prove certain facts.. There is no reciprocity jp the contrary rule. The' declaration i§ general; it does, not'specify the., date .of the invention, the place of .the invention,, nór thpj evidence, or . facts by which the . originality' and truth' c!,f the invention are'to be proved. Yet these are álf extremely important to the defendant,' to enable him ¡i(? prepare- his defence.- A.s. to tht breach, it is equally general; it does not state th«/wae, except as.a mete ' matter- of form, by which *493the plaintiff is pot bound. It does not state the plaoe^ except by the very liberal description necessary fo.r the. venue, but which is not at all binding.. And,, final» Jy, -the rule contended for is impracticable, ponsjstr ent.ly with the purposes of. justice; for it may, without; aftv fault of the defendant, deprive him p.f the benefit \©f a’perfectly good defence, upon, a,mqre requisition of fofm, which, he cannot possibly comply with. The-notice states that the use of the hopperboy at a numbej. of mills, specially described by the state, county, ^nd name of the proprietor, “and at sundry .other places in. tpe said state of Pennsylvania, me state of Maryland, apd,elsewhere in the.Únited States.” It is. pot alleged nor could it’be, that the' defendant had the knowledge that would have enabled him. to extend the., specific a,*. tjon. Nor is it alleged, that he qould•• have' acquired the..knowledge, by any exertion he might have roadej on the contrary,'the course be has taken is indicative of perfeptly fair intention. The exception is, that the de», fendant was permitted to give, evidence that the hcjj>perbpy “had been used at sundry other mills in .Penh» sylvania,” precisely in the words of thfe notice. To sustain this’exception, .then, the court must decide,¡that this cannot in a.py case be dope. But if it cannot bp shown, .that in a, single suppogable, case, this would, work injustice and defeat the, law, it is sufficient.. Now, it is very clear, that in many, cases,. this may. bp precisely the state of the. party’s knowledge, and all.be can obtain, and it .may be precisely the state of the.,evidence.' Suppose á witness should know that hopper-boys were used ip sundry mills, but n.ot their precise io*494cal situation, name of owner, &c.- Or, suppose he-, should have seen a hopperboy that bore the most evident marks of having been used in a mill, or mills. The effect of such evidence .is quite another question; its competency arid relevancy aro for the court; its credibility, ■ and the inferences of fact- that are to be made from it,are for the,jury. The same supposition would' apply to its having been described in a public work. It is necessary to give the title of the book, name of the author, and number of the edition ? This may be impracticable. The defendant may have a witness who has seen the thing in usq in a foreign country, and not-be able to give a single particular; or who has seen it described in a foreign work, of which he can give no further "account. Such evidence, if credited, would be efttirely conclusive; an.d yet he could have no benefit of it'because he. had not «Jone what was impossible. But even if the witness knows'all these particulars, the defendant has'no 'means of compelling him to disclose them before the trial. The rules of pleading aim to es ablish a convenient certainty on the record, by giving the party notice of what is alleged, and furnishing evidence of what has been decided. In many instances, they fal-1 short of this, their avowed design; in none do they go beyond it. For the purpose of preventing surprise, they áre wholly ineffectual; they give no notice of particular' facts, of evidence of, witnesses. The corrective of the evil, if evil there be, is to be found in the exercise of the general superintending authority of the court, applied to cases where there may really be surprise or fraud. So in this case, if there really had been sur*495prise, (fraud.is out of the question,) the court had the power to grant a new tria!. This power is an amply sufficient corrective'; and its existence affords adecisive answer to the argument drawn from the possible injustice that may be done*' — 3. The exception to the refusal to admit evidence-of the payment, for the use .of licenses, will be easily disposed' of. The fact to be established pa the one side, and disproved on the other., was, that the ho'pperboy - was in use before the alleged invention or discovery of Evans. The evidence offered had no bearing whatever upon-the'.quesi-, tion .of fact. If -believed, it went no farther than to show, that thos,e who had paid, thought it best to pay \ a. decision that might be equally prudent, whether th® fact was, or was not; as alleged. Such testimony Would be more objectionable than the opinion- of the witness ; for it would be only presumptive proof of opinion, without the- possibility of examining its ■grounds. -As opinion, it would be inadmissible; as evidence of opinion, it would be still more objectionable. — 3., The plaintiff’s patent can only be considered in one of three points of view. -1st. As a patpnt for the improvement in the art of' manufacturing flour ; that is, for the combination. 2d. As a patent for the combination, and also for the several machines ; that is, a joint and several, {latent. 3d. As a patent simply for the several machines. It is very dear that the patent itself is. for the combination only; though.. it is equally clear; that by the terms of the law, ne might have obtained a patent'or the whole^. and also for the .i&veralparts. That this is the necessary construction *496of the patent, is plain from the patent itself, ta.; ken in Connection with the act of the 21st of January, ISOS, ch. 117. The act authorizes a.patent to be is 'sued for his improvements in the art of manufacturing flour, and in the several machines, &c. The matters, are pláinly diiFéreht. They are the subject of distinct patents, to be obtained' in the “mariner and, jform” prescribed by the act of 1793, ch. 156.. The object of the special act,, was to put Evans upon the samé footing as if his former patent had not héen issued ; but it did not mean to dispense with any of the requisites of the general law. With the general' Requisite (that he was the inventor) it could nót dispense ; the constitution did not permit it. By the general law, improvement in 'an art-,' and improvement in a machine, are dislihct patentable objects. This patentfs. only for the improvement in the art of manufacturing flour, and the .recital of the special act, and.tbe words “which” and “said” do not at all Help it. It is triie,< it is an improvement operated by means óf the machines, but not exclusively. The result may be’ sécuréd, without, securing the ¿deans. This patent was granted to the plaintiff; was recefyby him ; and must be presumed to be according to his application and his oath. The oath is, that lie ik the true inventor of the “improvements above specified which term is applied in the specification, as in the patent,, only to the art. But, it is. said the specification is.a part of the patent, 'and limits, or eiilargesit, as the ease may be.. . Mr. Justice Story, in the dase which has been cited* only says, that the spe*497cification may control the generality of the patent.a But the specification- in the case now before the court,. does- not claim the machines. If the patent. was for a combination, the plaintiff’s action was gone; he could not maintain- it against á person using one of the machines.. If the patent was for the combination, and air so for the-several machines, that is'a joint and several patent, then the. patentee might proceed upon it as.the one or the other,.according’to-the nature of-the. alleged-invasion. If he proeeeded-upon it for a breach of the right.to the combination; he- must show the originality, of invention, and might he defeated by opposite proof; If for a breach xof the right-to any one of'the machines, he.might.be- defeated by' showing that he-was. not .the Original inventor of the machine.. So if it;tre considered a several patent, that is, as if he had five distinct patents.. But, in no-conceivable case, can hé stand ¡upon any but one of these three grounds, npr claim to. have the benefit of a larger, or even of-a different par tept.- -4. From-this analysis, which-is sneces.sary to prer. vent confusion, we-come to- inquire into.,the nature of the case presented to the court for decision, .and :to which , the charge was ta. be applied; premising, 1st.' That no»exception-.can be taken , to,what the; court,did' not give in charge to the jury; and -2dly. - T^mt no exception, can betaken Tp. an opinjpn, however ¡erroneous*,that had, no ,hearingjappp thp.ispue¡to-be decided by jhe jury. It is,apparent.from; the -record, that,the action of- tha plaintiff was founded upon The alleged: *498use, by the .defendant, of a machine called a hopper-boy, of which the plaintiff claimed to be the, inventor? that the evidence on both sides applied to this allegation, and to this alone; the plaintiff claiming to be the inventor, and the defendant denying it. The • charge of the court noticed the several arguments1 that had been used at the bar, . and examined the general question as to the chara°ter of the patent; upon which however,-, as it had not been discussed, no' opinion was given. This is clear: for if an opinion hud been expressed, it must have beeri.that the action was not: maintainable. Nothing short oí: that Would have been material. But the court- left the cáse, to the jary, as’ óí an action, that was< maintainable, and instructed them -as to the principles by* which it was tc* be decided; Which negatives the conclusion of any opinion having been given, that the action was not • maintainable. If the defendant1 bad requited the court to charge‘that the action was nótmáin tamable, and they had1 charged-that'it" was, of declined- to charge’ at alí, he wónld-have had ground • of* exception. But the-plaintiff Pannof complain, because fié has wiwsbis equivalent! tb a- decision ih': Ms fó^oar-; — r-61 '-TB'é> statute Of - Jabíes; [SI .Pec, I1, o. 3;)¡ Ai IX ld2^.' cOhfined monopolies W: the first, and tmedufentor's' OF manufactures riot known or. used, before; Onte1:htftii dted; and seventy yeatá had' elápsed When oUr'abt paSS-' eet;- commerce- and the arte had. ’ made such adVám-easy, such- facilities had been-Created’ fori the" diffúsiori of- knowledge, that every thing known by use, or described in,bo&te,. might; be considered, as common property. It would have, been strange to adopt Ufdff*499feient .principle. The act of congress does not. -It is a mistake to suppose there is in this respect any difference between the act of congress and the act of parliament. One says useful” inventions, the other … new arid useful;” but both have the expressions “ not used or known, before.”. A patent can only be upon an allegation that the applicant has invented something new and useful. Its novelty may certainly be questioned ; perhaps its usefulness. But where the defence is, that the thing was known or used before, is it necessary to prove the usefulness of the thing so known or used? The act does not require it; nor is there any good reason why the patentee should be permitted to controvert it.

¶34.Mr. Harper, in reply,

¶35insisted, 1. That the court below had erred in admitting testimony of the use of the plaintiff’s machine in mills not specified in the notice. The statute was not framed with á view to the benefit of the defendant ?\me. The notice to be given, is not that vague, indistinct, general notice, which is set up on the other side. It must be an effectual, useful notice ; such a notice as may put the patentee on his guard, and enable Him to see what are the precise grounds of defence. It must be more specific than a mere transcript of the particular class! of grounds of defence, such as suppression of parts, redundancy, &c. The circumstances of the tim$f the place when and where used, and by what persms, are essentially necessary in order to enable thá patentee to meet the defence. The burthen of proof is, in effect, thrown upon the patentee; and the law *500' intended that he should- meet it'fairly. ‘ Súch a notice as that given in this case would, not ■ be good; if put into the form of. a special plea. The degree of certainty required in a -.plea, in the statement of the time and place when and-where material : facts have happened, is one of the most difficult questions of the law:; but-these circumstances must always be laid; and must be proved sis laid, whenever it ‘is- essential to enable the other party to. maintain his case. There is. a distinction between the matter, vf defence arid the evidence by which it is tobe maintained. A notice of the particulars of the evidence is! not reqriired, but etf-the'Time arid place where • the formér ‘ps.e -of The Tnachine in question occurred; Nor is'this unreasonable;’ for'it is highly improbable that any body would be. able- to testify 'as to the minute particulars of an invention.^ without being able to' remember in what wrirki he “had..-seen, it described, or to state In what place and s at what .time he had -seen it -used. — r21 The ■ special • act- for ffie plaintiff’s relief .is a distinct,, -substantive, Independent grant, rtecláring 'the plaintiff f© bp. the, original' inventó?, and as such, entitled to á .patent. -It ."Contains rio reference to the general patent lawy.nq.rdoe's it reserve • any-- right in others to contest The origiriality .of his .indention. The defendant, therefore,-cannot say-that'the plaintiff is not the inr ventor,- though he ma.y deny that he-hás violated the plaintiff ’s rights as inventor. Congress is net-Confined by the constitution to any particular mode of determining.-the fact who are' inventors or,authors.. :Ifc. is true, a patent or copyright can only he granted t© ,pn inventor' or author; hut the..originality of the in-*501mention or authorship may be determined by 'eongress itself, upon such testimony as it deems- sufficient,; or by an administrative act, by- the decision of some board or executive ‘officer; or, lastly, by a- judicial investigation: according ■ as the legislative will may prescribe either of these. several 'modes. The -act of -parliament, 15 Geo. 3, for the- relief-of Watt and Boulton, +he inventors of the improved steam-engine, and extending the, term'of their patent'for twenty-five, years, contained an -express provision that every objection in law competent against the patent; should be competent against the- act, “ to all • intents arid purposes, except so far as reídles 'to >the temí thereby granted.”a The act of congress 'for the relief of Oliver Evans contains no .such provision. The conclusion, therefore, is; that th'e legislature- meant to iquiet ' him in 'his claim, after he 'had so long enjoy-' ed it, and in- consideration of his peculiar' merits, and of his’ former patent having been vacated for informality. — 3. The court, below instructed the ju- ' xy that "the patent was not for any one machine, but for the combined 'effect of the whole ; though they concluded by leaving it upon' the prior1 use, still'the. intimation' that the action could not be maintained; even-though the prior- use was hot proved,-'did ndt leave the fact to the jury free from bias'. Though • not a positive direction to the jury to find for the defendant, it had the effect of a nonsuit. The wishes of. the grantee, and the intention of the grantor, both extended, as well to a patent for the several machines, *502as to a patent for- the combined effect of the whole The word. improvement,” though in' the, singular num_ her, extends not only to the plaintiff’s improvement-in the art of manufacturing floury but to his improvement in the several machines by means of which the operations of the ait arg conducted. This was a patent for =an ‘ improvement on t'he particular machine in question, and not for its original invention. In this respect it is like that of Watt and, Boulton for their improvement *pn the steam-engine. — 4. The prior, use, which is to defeat a patent, wight to be a public use. The defence here set up, under the bth section of the patent law of 1793, ch. 156, was, that the patentee was not the original discoverer, and.that the thing had been in use, &C.. But how else could it be shown that lie was not the discover ;r, but by showing that it had before been in public, use 1 ‘ A mere secret furtive usé would not disprove, the fact of his being the original discoverer. If this were so, then the art of printing and gun-powder were not invented in Europe, because they had been before used in. a sequestered corner of the globe, like China.. But'there, is, a. distinction between a first discovery- and an original discovery. The art of printing was originally discovered in Germany, though it was first invented in China: So the plaintiff would not cease to be' the original inventor, of the hopper-boy, even if it had been proved that another similar machine had been before privately used in a single mill It'ought, therefore,, to have been left to the-jújy to find for the plaintiff, if they believed that the use was a secret use.

¶36*503c¡ent notice uñ tent law of 1793,01.156,of the prior use patented.1*””*’