O'Reilly et al. v. Morse et al.

It is impossible for the reporter to do more than merely state the positions assumed by the respective counsel.

The counsel for the appellants contended

First. Morse's patent of 1840 is void, because it runs fourteen years from the date of its issue, instead of that length of time from the date of his French patent.

Second. In construing a patent, and deciding what are the inventions patented thereby, the summing up is conclusive. Nothing is patented but what is expressly claimed, in the summing up, as the invention.

Third. What is described in a patent and not claimed, whether invented by the patentee or not, is dedicated to the public, and cannot be afterwards claimed as a part of his patent, in a re-issue or otherwise.

Fourth. A patent void in part is void in whole, except when otherwise provided by statute.

Fifth. An invention is not complete, so as to be patentable, or to bar the obtaining a patent by another inventor, until it is perfected and adapted to use.

Sixth. Where a patent is for a combination of parts, and not for the different parts composing the combination, the use of any of those parts less than the whole is not an infringement.

Seventh. Morse's patents of 1846 and 1848 are void, because he was not the first inventor of the things patented, or of substantial and material parts thereof.

Eighth. Morse's reissued patents, dated June 13, 1848, are void, because he has not shown that the surrendered patents were inoperative or invalid for defective specification, or otherwise, so as to confer on the commissioner, jurisdiction to make such reissues. The surrendered patents being set out, disprove any such jurisdiction.

Ninth. The patent of 1840, as secondly reissued, is void, because the commissioner had no authority to accept a second surrender and make a second reissue.

Tenth. Morse's patent of 1840, as secondly reissued, is void, because it is broader than the invention originally patented. Eleventh. Morse's patent of 1846 is void,

1. Because material parts of it had been known and in public use before his application.

The first claim covers the inventions for connecting circuits used by Davy, Wheatstone, and Henry, in 1837.

2. Because the same was described by Henry in Silliman's Journal, and in the London Mechanics' Magazine, containing an account of Davy's invention; and by Vail, in giving Morse's and others.

3. Because the same invention, or a substantial part thereof,

O'Reilly et al. v. Morse et al.

was patented by Wheatstone, Davy, and Morse himself, prior to his application for his patent of 1846.

This first claim in the reissue of the patent of 1846, is the same thing as the fourth claim of the last reissue of the patent of 1846. The account given by Henry and Moss shows that Henry's, Wheatstone's, and Davy's, were the same as Morse's first claim of the reissue of the patent of 1846.

Twelfth. Morse's reissue of 1846 is void, because it is broader than the original.

1. He claims the employment of a receiving magnet, or its equivalent, in combination with a short, local, independent circuit, having a register magnet, to obtain power.

There is no such claim in the original. He there claimed the invention of the receiving magnet, or registering contrivances, which sustained certain relations, as would enable him to obtain power, &c., without mentioning a short, local, independent circuit. He now claims two short local circuits. The claim is materially enlarged.

2. His third claim is for a combination which includes the pen lever or " its equivalent," and for any thing over which paper may be passed for the purpose of receiving the impression of characters, &c., by indentation on paper and other fabrics, dispensing with coloring matter, &c.

Here is a palpable enlargement of his claim.

3. His historical recital is an unauthorized addition, and not necessary to perfect his specification.

Thirteenth. The surrender and reissue on account of a defective specification authorizes amendments only, and not changing the specification into a new one, nor does it authorize new claims.

Fourteenth. In the second reissue of the letters of 1840, Morse patents a principle or effect, and not a machine, manufacture, or composition of matter, or an improvement upon either; and it is therefore void.

The counsel for the appellees considered the patents separately, viz.

To this patent, and the claim under it, five defences are presented:

It is alleged by the appellants

I. That it is void by reason of an alleged error in date(i. e. not date of French patent.)

II. That the things claimed in the fifth, the sixth, and the eighth claims are not patentable.

O'Reilly et al. v. Morse et al.

III. That Morse was not the inventor of substantial parts of the improvement as claimed.

IV. That the description in the specification is insufficient. V. That the appellants do not infringe.

The

(Each one of these heads was examined separately. particular attention bestowed by the court to the following head, renders the insertion of the view of the counsel proper.)

II. Are the 5th, 6th, and 8th Claims Patentable?

1. Of the 5th and 6th. The fifth, is a claim to the system of signs, composed of dots, spaces, and horizontal lines, (susceptible of being variously combined, representing numerals, words, and sentences,) for telegraphic purposes; being an improved instrumentality in the art of telegraphing by electricity or galvan

ism.

The sixth, is a claim to the art—consisting of the marking the signs, composed of dots, spaces, and horizontal lines, (susceptible of being variously combined, representing numerals, words, and sentences,) by closing and breaking a galvanic circuit more or less rapidly for telegraphing; combined with machinery to re

cord them.

An art is patentable by the act of 1836, and so is an improvement on it. Whittemore v. Cutter, 1 Gall. 478; Phillips on Patents, 102, 110; King v. Wheeler, 2 Barn. & Ald. 349; Crane v. Price, Webster's P. C. 409; Sch. Bk. v. Kneass, 4 W. C. C. R. 9 and 12; McClurg v. Kingsland, 1 Howard, 204; Curtis on Patents, sect. 37; French v. Rogers, Opinion Judges Grier and Kane; Pamphlet, Kane, J., Parker v. Hulme, p. 7.

The art is distinct from the means employed in its exercise; both may be, and under this patent are, patented.

II. Of the eighth claim.

This claim is declaratory, and is to the effect that, having been the first to conceive and carry into effect a plan for imprinting telegraphic characters by the power of electro-magnetism, he negatives the idea that the mere instrumentalities described in his patent constitute the whole of the invention claimed by him, or even the most important part thereof, or that he intended to surrender to the public the conception he had reduced to practical utility, should anybody else be able to devise other means for accomplishing the same end, by the use of the same power, but claims it as his property.

He who discovers a principle and devises one mode by which the same can be rendered practically useful, is entitled to a patent which shall protect him to the full extent of his invention and against all other devices for using it.

O'Reilly et al. v. Morse et al.

If Morse, therefore, was the first to discover that the power of electro-magnetism could be used for the purpose of recording telegraphic signs, and devised one practical mode for using it, he may, by a general claim, secure to himself the right of so applying it, as well as the particular devices by which he did so.

London Jour. and Rep. Arts, 1850, p. 130; Jupe v. Pratt, Webster's P. C. 145, 146; Forsyth's Patent, Webster's P. C. 96, 97; Crane v. Price, Webster's P. C. 409, 410; Park v. Little, 3 Wash. C. C. Rep. 197.

See the cases collected in Lund on Patents, Law Lib. Sept. 1851, p. 37, illustrating the proposition that the rights of the patentee are not restricted to the particular application or embodiment of his invention, but extend to the exclusion of other like applications.

Judge Kane's opinion, Blanchard's case; Fr. Inst. Jour. 1847; and Pamphlet, Parker v. Hulme, Judge Kane's opinion.

Patent of 1846. Reissued 1848.

The defences suggested by the appellants to this patent are, I. That the improvement is not sufficiently described, and that the improvement is not sufficiently discriminated.

II. That it is for the same invention that was patented to Morse in the patent of 1840.

III. That it was in use and on sale with patentee's consent, before his application for a patent.

IV. That Morse was not the inventor.

As to the 4th head, the counsel for the appellees contended that the following list was shown by the evidence to have been invented by Morse :

1. He was the first person who employed an electro-magnet placed in a long circuit for telegraphic purposes.

2. He was the first person who devised suitable machinery for recording, and adapted such machinery to an electro-magnet placed in a long galvanic circuit.

3. He was the first person who employed an electro-magnet placed in a long galvanic circuit to open and close another long galvanic circuit for telegraphic purposes.

4. He was the first person who employed an electro-magnet placed in a long galvanic circuit, to open and close a short local circuit at a distance for telegraphic purposes.

5. He was the first person who placed in the course of a long galvanic circuit at various distances apart, a series of electromagnets, to open and close, at one and the same time, a corresponding series of short recording circuits, by means of which arrangement an operator at one station could simultaneously record at a series of distant telegraphic stations.

O'Reilly et al. v. Morse et al.

6. He was the first person who adapted to an electro-magnet placed in a long galvanic circuit, suitable machinery for recording the establishment and duration of a galvanic current through such a long galvanic current.

7. He was the first person who devised a process or mode of establishing and continuing at determinate intervals of time a galvanic current through a circuit of conductors, and of recording the establishment of such current in dots and lines.

8. He was the first person who devised a system of signs formed of the combination of dots and lines, and so applicable to the above process of recording, as to render it available for representing at a distance, letters, words, and sentences.

9. He was the first person who employed electro-magnetism, when developed in the manner and by the means specified, to produce distinguishable signs for telegraphing.

10. He was the first person who adapted to an electro-magnet a lever with an adjustable reacting spring, and adjustable stops for limiting the play of such armature, and thus formed a receiving electro-magnet, susceptible of nice regulation so as to operate equally with the varying force of the galvanic currents in a long or main circuit.

11. He was the first person who combined such an electromagnet in a long circuit with a short recording circuit, to be opened and closed by such electro-magnet.

12. He was the first person who devised and constructed an apparatus or machine for telegraphing, consisting of the several following parts, sustaining to each other the several following relations, and performing the several following functions respectively:

1. A main circuit

which con-a long conductor ex-the func-to transmit the galvanic sists of

tending through tion of
several stations, which is

movable screws

reacting spring and

play of lever,

current through its whole length whenever it is closed.

to supply the main conductor with a current sufficient to work the electro-magnets in its

course.

to break and close the main circuit.

to close the office circuit when a current passes through the main circuit.

to render receiving magnets sensitive to varying force of main current.