168. Evans v. Eaton, 1 Peters' C. C. R., 323. Gray et al. v. James et al., 1 Peters' C. C. R. 394.

130. It is not enough that the thing designed to be embraced by the patent should be made apparent on the trial, by a comparison of the new with the old machine. The patent or specification must distinguish the new from the old, so as to point out in what the improvement consists. Dixon v. Moyer, 4 Wash. C. C. R. 68.

131. The schedule annexed to letters patent is part of the patent, so far as it is a description of the machine, but no farther. Evans v. Eaton, 1 Peters' C. C. R. 322.

132. The grant of an exclusive privilege by the patent can be only for the discovery recited and described in the patent and specification. Ibid.

133. In the present case, the patent and specification claimed for the patentee, as his invention, the cutting of ice of a uniform size by means of an apparatus worked by any other power than human. It claimed, also, not only the invention of this art, but also the particular method of the application of the principle, stated in the specification, which was by two machines described therei called the saw and the cutter. It was held by the court, that the specification, so far as it claimed the art of cutting ice by means of an apparatus worked by any other power than human, was the claim of an abstract principle, and void; but so far as it claimed the two machines described in the specification, it might be good, if a disclaimer were made of the other parts, according to the Patent act of 1837, ch. 45, § 7 and § 9, within a reasonable time, and before the suit were brought. But a disclaimer, after the suit brought, would not be sufficient to entitle the party to a perpetual injunction in equity, whatever might be his right to maintain a suit at law on the patent. Wyeth v. Stone, 1 Story, 273.

134. If the patentee has assigned his patent in part, and a joint suit is brought in equity for a perpetual injunction, a disclaimer by the patentee alone, without the assignee uniting in it, will not entitle the parties to the benefit of the 7th and 9th sections of the act of 1837, ch. 45. Ibid.

135. A single patent may be taken for several improvements on one and the same machine, or for two machines, which are invented by the patentee, and conduce to the same common purpose and object, although they are each capable of a distinct use and application, without being united together. But a single patent cannot be taken for two distinct machines, not conducing to the same common purpose or object, but designed for totally different and independent objects. Ibid.

136. An inventor is bound to describe in his specification in what his invention consists, and what his particular claim is. But he is not bound to any precise form of words, provided their import can be clearly ascertained by fair interpretation, even though the expressions may be inaccurate. Ibid.

137. A disclaimer, to be effectual for all intents and purposes, under the act of 1837, ch. 45, (§ 7 and 9,) must be filed in the Patent Office before the suit is brought. Unless it is filed before the suit, the plaintiff will not be entitled to recover costs in such suit, even if he should establish at the trial that a part of the invention, not disclaimed, had been infringed by the defendant. And where a disclaimer has been filed, either before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof, if he has unreasonably neglected or delayed to enter the same at the Patent Office; but an unreasonable neglect or delay will constitute a good defence and objection to the suit. Reed v. Cutter, 1 Story, 590.

138. Where an invention is so loosely and inaccurately described in the specification that the court cannot, without resorting to conjecture, gather what it is,

then the patent is void; but if the court can clearly see the nature and extent of the claim, however imperfectly and inartificially it may be expressed, the patent is good. Ames v. Howard, 1 Sumner, 482.

139. A patent contained the following words in the description of the invention: "I do not claim the felting, vats, rollers, presses, wire-cloth, or any separate parts of the above described machinery or apparatus, as my invention; what I do claim as new, and as my invention, is the construction and use of the peculiar cylinder above described, and the several parts thereof in combination for the purpose aforesaid." Held, that it is not the cylinder alone, or its several parts, which are claimed per se; but they are claimed in their actual combination with the other machinery to make paper. Ibid.

140. Under the former law, a patent was void, if the patentee claimed more than he had invented. Stanley v. Whipple, 2 McLean, 35.

141. Where the plaintiff, in a patent for "a new and useful improvement in the ribs of the cotton gin," claimed, as a part of his invention, the increasing the space between the upper and lower surface of the rib, either "by making the ribs thicker at that part, or by a fork, or by any other variation of the particular form," it was held, that the claim was sufficiently accurate as a matter of law, and that it was not necessary that he should describe all possible modes by which the rib might be varied, but only the most important, and that mere formal variations there from would be violations of the patent. Carver v. Braintree Manufacturing Co., 2 Story, 432.

142. Where the original patent was for "a new and useful improvement in the ribs of saw gins for ginning cotton," and the renewed patent was for "a new and useful invention in the manner of forming the ribs of saw gins for ginning cotton," and in the renewed patent was claimed, in addition to the thickness of the rib, the sloping up of it so as to leave no shoulder, it was held, that the claim in the renewed patent was not for two distinct improvements, but for additional parts of the same improvement, and that the same thing was patented in both patents. Ibid.

143. Where the plaintiff, in the specification of his patent, described his invention to be "a new and useful improvement," whereas, in fact, it consisted of a combination of several improvements, distinctly set forth in the specification, it was held, that the patent was good, not only for the combination, but for each distinct improvement, so far as it was his invention; and that the descriptive words were to be construed in connection with the specification. Pitts v. Whitman, 2 Story, 609.

144. Where the plaintiff claimed, as his invention, "the construction and use of an endless apron, divided into troughs and cells, in a machine for cleaning grain, operating substantially in the way described," it was held, that the claim was for a combination of the endless apron with the machine for cleaning grain; and that, if the combination were new, it was patentable, although a part of the apparatus were old. Ibid.

145. Drawings, not referred to in the specification of a patent, may be treated as part of the specification, and used to explain and enlarge it. Washburn v. Gould, 3 Story, 122.

146. The Court will give a liberal construction to the language of all patents and specifications; and will in all cases, by taking the whole together, adopt that interpretation of a specification, which will give the fullest effect to the nature and extent of the claim made by the inventor. Ryan v. Goodwin, 3 Sumner, 514.

147. The inventor of a new compound, wholly unknown before, is not limited to the use always of the same precise ingredients in making that compound; and if the same purpose can be accomplished by him by the substitution in

part of other ingredients in the composition, which have never been so used before, he is at liberty to extend his patent so as to embrace them also. Thus, where an inventor claimed as his invention the combination of phosphorus with chalk, or any other absorbent earth or earthy material, and glue, or any other glutinous substance, using the materials in the proportions substantially as set forth in the specification, in making matches; it was held, that the patent was not void as being too broad and comprehensive. Ibid.

148. An original patent being destroyed by the burning of the Patent Office, and the only record of the specifications being a publication in the Franklin Journal, the claim is not limited by that publication, because the whole of the specifications are not set forth in it. Simpson v. West Chester Railroad Co., 4 Howard, 380.

149. In the case of Woodworth's planing machine, the patent granted to the administrator was founded upon a sufficient specification and proper drawings, and is valid. Wilson v. Rosseau, 4 Howard, 646.

150. In order to obtain a patent, the specification must be in such full, clear, and exact terms, as to enable any one skilled in the art to which it appertains to compound and use the invention, without making any experiments of his own. Wood v. Underhill, 5 Howard, 1.

151. If the patent be for a new composition of matter, and no relative proportions of the ingredients are given, or they are stated so ambiguously and vaguely that no one could use the invention without first ascertaining, by experiment, the exact proportion required to produce the result, it would be the duty of the court to declare the patent void. Ibid.

152. But the sufficiency of the description in patents for machines, or for a new composition of matter, where any of the ingredients do not always possess exactly the same properties in the same degree, is generally a question of fact to be determined by the jury. Ibid.

153. Where a patent was obtained for a new improvement in the mode of making brick, tile, and other clay ware, and the process described in the specification was, to mix pulverized anthracite coal with the clay before moulding it, in the proportion of three fourths of a bushel of coal-dust to one thousand brick, some clay requiring one-eighth more, and some not exceeding half a bushel, this degree of vagueness and uncertainty was not sufficient to justify the court below in declaring the patent void. Ibid.

154. The court should have left it to the jury to say, from the evidence of persons skilled in the art, whether the description was clear and exact enough to enable such persons to compound and use the invention. Ibid.

155. If the patentee claims, as a part of his invention, some things which are old, and some new, he cannot succeed, without disclaiming what is old. Hovey v. Stevens, 1 Woodbury, 290.

156. It should appear also, with reasonable certainty, whether the complainant in his patent claims a new combination of old parts and things, or a new invention of new parts, and if not intelligible as to which is claimed, the patent may be void for uncertainty. Ibid.

157. It is the duty of the court, rather than the jury, to construe the language used in a specification of a patent, if no parol evidence is offered in explanation, or none which is contradictory. Davoll v. Brown, 1 Woodbury, 53.

158. If a patentee claims more than he has invented, his patent is not void, as under the former law, but so far as his invention goes he is protected. Peterson v. Wooden, 3 McLean, 248.

159. But where the patent is for the improvement of a machine, the patentee must show in what the improvement consists.

Ibid.

160. The thing invented must be accurately described. Boyd v. McAlpen, 3 McLean, 427.

161. The specifications of an improvement of a machine must be so clear as to enable a person acquainted with the structure of such a machine to build one. Brooks & Morris v. Jenkins et al., 3 McLean, 250.

162. If the claim of the patentee on letters patent do not expressly refer to another portion of his specification, he will be confined to the particular thing specifically described in his claim; but if he do refer to another portion of the specification for a definition of his invention, such portion of the specification becomes a part of his claim, as really as if it had been incorporated into it in the very words of the part referred to. By Judge Sprague, in Hovey v. Stevens, U. S. Č. C. Mass. District, November term, 1846.

163. Amendments to the specification made upon a re-issue of letters patent came to the benefit of the grantees of rights under said letters patent, as well as to the patentee. By Judge Kane, in Smith & Sloat v. Mercer and Pechin, U. S. C. C. Eastern District of Pennsylvania, October term, 1846.

164. If an amended specification describes a different improvement from that which was embraced in the original patent, the new patent will not be invalidated by variance. For the purpose of an injunction, if for nothing else, the invention must be taken to be the same in both patents, after the Commissioner of Patents has so decided by granting a new patent. Ibid.

165. It is not necessary under our Patent laws, as in England, that the disclosure of the secret, in the specification, should be such as to enable the public to use the invention after the Patent has expired. Whitney v. Emmett, 1

Bald. 303.

166. If there be a false suggestion in any of the several material facts set forth in a specification, the patent is invalid. Delano v. Scott, Gilpin, 489. 167. A patent for an improvement in a machine, must describe the machine in use of which it is an improvement, so that it may be known in what the improvement consists; and a note given for a patent defective in that respect is void for the want of a consideration. Cross v. Huntly, 13 Wend. 385.

III. Of the infringement of patent rights; and of damages.

168. The act of January 21st, 1808, ch. 117, for the relief of Oliver Evans, does not authorize those who erected his machinery, between the expiration of his old patent and the issuing of the new one, to use it after the issuing of the latter. Evans v. Jordan et al., 9 Cranch, 199.

169. A, having obtained a patent for a new and useful improvement, to wit, a machine for making watch chains, brought an action under the 3d section of the Patent act of April 17, 1800, c. 179, against B, for an alleged violation of his patent right. On the trial an agreement was proved between the defendant and C, by which the former agreed to purchase of the latter all the watch chains, not exceeding five gross a week, which he might be able to manufacture in six months, and C agreed to devote his whole time and attention to the manufacture of the watch chains, and not to sell or dispose of any of them so as to interfere with the exclusive privilege secured to the defendant of purchasing the whole quantity which it might be practicable for C to make: and it was proved that the machine used by C with the knowledge and consent of the defendant, in the manufacture, was the same as that invented by the plaintiff, and that all the watch chains thus made by C were delivered to the defendant according to the contract. Held, that if the contract was real and not colorable, and if the defendant had no other connexion with C than that which grew out of the contract, the facts proved did not amount to a breach by him of the plaintiff's patent right. Keplinger v. De Young, 10 Wheat. 358.

170. Such a contract, connected with evidence from which the jury might legally infer, either that the machine to be employed in the manufacture of the

patented article was owned wholly or in part by defendant, or that it was hired to defendant for the time specified, under color of a sale of the articles to be manufactured with it, and with intent to invade the plaintiff's patent right, would amount to a breach of his right. Ibid.

171. Under the Patent act of February 21, 1793, ch. 156, if the patentee has sold out a moiety of his patent right, a joint action lies by himself and his patentee for a violation of it." Whittemore v. Cutter, 1 Gallis. 429.

172. If there be a mere making and no user proved, nominal damages are to be recovered. Where the law gives an action for a particular act, that doing the act imports of itself a damage: every violation of a right imports some damage, and if none other be proved, the law allows a nominal damage. Ibid. Whittemore v. Cutter, 1 Gallis. 476.

173. By the terms "actual damage," which the plaintiff may recover under the Patent law, are meant such damages as he can actually prove, and has in fact sustained, as contradistinguished from mere imaginary or vindictive damages, which in personal torts are sometimes given. Ibid.

174. The rule of damages, where the user of a machine is proved, should be the value of the use of such a machine during the time of the illegal user. Ibid.

175. In an action for a violation of a patent right, the plaintiff can recover for actual damages only, and not for a vindictive recompense. Ibid.

176. Where merely the making of the machine is proved, as no actual damages have been sustained, the jury should give only nominal damages. Ibid. 177. The jury are to estimate the plaintiff's single damages, and the court will treble them in awarding the judgment. Ibid. Gray and Osgood v. James, 1 Peters' C. C. R. 394.

178. The sale of the materials of a patented machine by the sheriff, on an execution against the owner, is not such a sale as subjects the sheriff to an action for an infringement of the patent right under the Patent act of April 17, 1800, ch. 179. Sawin et al. v. Guild, 1 Gallis. 485.

179. The making of a patented machine to be an offence within the purview of the Patent act, must be the making with intent to use for profit, and not for the mere purpose of philosophical experiment, or to ascertain the verity and exactness of the specification. Ibid. See, also, Wittemore v. Cutter, 1 Gallis. 478. 180. In an action for the infringement of a patent right, the law gives to the plaintiff treble the actual damages sustained by him: and the rule is to allow him treble the amount of the profits actually received by the defendant, in consequence of his using the plaintiff's invention. Lowell v. Lewis, 1 Mason, 182. 181. The jury are to find the single damages, and the court to treble them in awarding judgment. Gray et al. v. James et al., 1 Peters' C. C. R. 394.

182. The statute declares it to be a good defence to an action for the infringement of the patent right, that the thing secured by the patent was not originally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery of the patentee. Kneass V. The Schuylkill Bank, 4 Wash. C. C. R. 106.

183. Any patent may be defeated by showing that the thing secured by the patent had been discovered and put into actual use prior to the discovery of the patentee, however limited the use or the knowledge of the prior discovery might have been. Ibid.

184. A patent may be for a new combination of machines to produce certain effects; and this whether the machines constituting the combination be new or old. But in such case, the patent being on the combination only, it is no infringement of the patent to use any of the machines separately, if the whole combination be not used. Barret et al. v. Hall et al., 1 Mason, 447.

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