is primâ facie evidence), and that it is not only a new but a useful invention (which is not disputed),

1. Your first inquiry will be, have the plaintiffs proved to your satisfaction, that the defendants have infringed the franchise or monopoly granted by this patent?

A question of infringement is one of fact, which it is the province of the jury to decide. It is impossible for the Court to give you a general or abstract definition of what is an infringement, which will be easily applied to every variety of case. An infringement is said to take place whenever a party avails himself of the invention of the patentee, without such variation as will constitute a new discovery.

It may be, by making, using or selling the thing patented. When the subject-matter is a manufacture, the question will be, whether in reality and in substance the defendant has availed himself of the invention of the patentee. A mere colorable variation in process or application should not be allowed to protect a defendant.

the

In order to apply these principles to the present case, you must carefully observe the peculiar nature of the invention, improvement, discovery or composition of matter claimed in the specifi

cation.

claimed,

In the specification the form or proportion of the safe are not nor the use of one chest within another, nor the idea of interposing a lining of some non-conducting substance between the outer and inner chests, to resist the effect of fire. Salt, charcoal, asbestos, soapstone, and perhaps many other substances and compounds had been used for this purpose. If the plaintiff has discovered some substance possessing the requisite qualities for the purpose required, he has a right to patent his invention. But the defendant has an equal right to make or compound any

other,

or essentially different composition or substance for the same purpose. But he has no right to avail himself of the plaintiff's invention or discovery, by making some colorable alteration in the mode of its application. Now, what is the composition of matter which the plaintiff's patent claims to have invented, for the purpose of lining chests or safes? It is plaster of Paris in raw state, or calcined or prepared as set forth in the specifi

the

VOL. 1.-3

cation, either alone or with mica. Has the defendant used substantially this substance or composition of matter?

Price, the plaintiff's witness, says that he furnished the composition used by defendants in making their safes, one of his own making, that he had used it twenty-five years, that it contained about one-third plaster and many other ingredients.

Now if it be true, that the composition of matter sold by witness to defendant, was one known and used as a non-conductor for twenty-five years and more, and was not a mere colorable evasion of the plaintiff's patent, taking advantage of his discovery, and merely varying it by a mixture of other ingredients to cover the infringement, even though plaster of Paris may have been one of the ingredients of such composition, the use of it is not necessarily an infringement of the plaintiff's patent. The patentee does not, and could not claim all composition known and unknown, of which gypsum might be a component part, which might be used as non-conductors in lining safes. He claims gypsum alone or with mica. If, in your opinion the composition used by defendants be substantially the same as that patented, or the defendants have merely varied their composition to cover the infringement, while they obtain the benefit of the plaintiff's discovery, you should find it an infringement. If not, your verdict should be for defendants on this point, and in such case your labor might end here.

2. The next question to be considered (if you find the defendants have infringed the patent) is, whether the patentee is the original and first inventor. As I have said, the patent is prima facie evidence of this, i. e., sufficient till the contrary is shown. The Patent Act of 1836, § 6, provides :

"That any person or persons having discovered or invented any new or useful art, machine, manufacture, or composition of matter, or any new or useful improvement on any art, machine, manufacture or composition of matter, not known or used before his or their discovery or invention thereof, may apply for a patent, &c. The applicant is required to make oath or affirmation that he does verily believe that he is the original and first inventor, &c., and that he does not know or believe that the same was ever before known or used."

The commissioner is required before he is allowed to grant a patent, "to inquire whether the same had been invented or discovered by any other person in this country, prior to the alleged invention or discovery thereof by the applicants, &c."

The mere speculation of, a philosopher or mechanic, never put into practice or operation, will not deprive a subsequent inventor, who has employed his labor and talents in putting it into practice, of the reward due to his ingenuity and enterprise. But, if the first inventor reduced his theory to practice, and put his machine or other invention into use, the law never would intend that the greater or the less use in which it might be, or the more or less widely the knowledge of its existence might circulate, should constitute the criterion by which to decide upon the validity of any subsequent patent for the same opinion. A patent may therefore be defeated by showing that the thing secured by the patent, had been discovered and put in actual use prior to the discovery of the patentee, however limited the use or knowledge of the prior discovery have been. Bedford v. Hunt, 1 Mason 302.

323.

If the original inventor of a machine abandons the use of it, and does not take out a patent for it, no other person can entitle himself to a patent for it: Evans v. Eaton, 1 Peters C. C. Rep. There are exceptions to this general rule, as in case of a lost art, where the knowledge of it had been lost for ages; and in the present case, if you should find that Connor discovered this valuable property of plaster of Paris before Fitzgerald, and put it in practice by lining the interstices of a safe, but that the safe itself had disappeared, and the knowledge of the improvement was as completely lost as if it never had been discovered, and Fitzgerald had afterwards made the same invention and discovery anew, his patent might stand. But if Connor's safe was in existence and in use, and the knowledge of it not entirely forgotten and lost, his omission to bring it into public use or notice by public exhibition and experiments, would not give Fitzgerald, if he was a posterior inventor, a right to a patent. Connor might have abandoned its use, and been ignorant of the extent of its value; and yet, if his invention was substantially the same with that of Fitzgerald, the latter would not upon that ground, be entitled to a patent, provided Connor's safe and its mode of construction were

still in the memory of Connor, or in the knowledge and use of others before they were recalled by Fitzgerald's patent: 10 Howard 498.

The evidence bearing on this point has been very fully and ably commented on by the counsel, and it is for you to apply it to the principles of law announced by the Court.

3. If you should find from the evidence, that Fitzgerald was the first inventor of the subject-matter of the patent, you will then have to consider a third point made by the defendant's counsel, viz. Whether Fitzgerald had abandoned his invention to the public before his application for a patent.

A first inventor cannot acquire a good title to a patent, if he suffers the thing invented to go into public use, or to be publicly sold for use more than two years before he made application for a patent. By a public use, is meant a use in public, that is to say, if the inventor himself makes and sells the thing to be used by others, or if it is made by one other person only, with his knowledge and without objection, before his application for a patent, a fortiori if he suffers it to get into general use, it will have been in public use: Curtis 297.

This patent issued in 1843. The immediate application on which it was granted was made in 1839. Salamander safes had been made and sold from 1835 to 1839 by Fitzgerald and others. The affidavit of Fitzgerald filed with this application of 1839 states that he made the invention in 1835. It is contended by plaintiff that an application was made before the burning of the Patent Office, in 1836, and renewed in 1837. Defendants deny that this application was for the invention patented in 1843, but for an entirely different one, being a composition of salt, saltpetre, plaster, &c.; and moreover that this application was abandoned, and the money paid returned, and that after Wilder had purchased this claim in 1839, the first application for the invention as now patented was made by Wilder, who in resuscitating the abandoned claim, endeavored to connect it with the former abandoned application for a different invention, in order to save and give validity to his patent. Which of these hypotheses is true, is for you to decide.

If you find that the application of 1836, renewed in 1837, was for this same subject-matter now patented, and if such applica

tion was not withdrawn by Fitzgerald, but the delay was caused by the conduct of the Commissioner of Patents, in refusing to grant the patent for the same invention since patented, then Fitzgerald should not be considered to have abandoned his invention to the public, unless he had abandoned it before 1836, which is not contended.

On the contrary, if you believe the application of 1836 and 1837, was not for the same invention with that patented, and therefore was rejected by the Commissioner, or was withdrawn and abandoned by the applicants, and continued so until Enos Wilder got up an application for the present patent, and in the meanwhile the invention had gone into public use for more than two years, then you will find this point for defendants, and they will be entitled to your verdict.

In the District Court of the United States for the Western District of Pennsylvania.

PENNOCK V. GILLELAND.

(Vol. I., p. 37, 1853.)

1. A scire facias, suggesting breaches upon a judgment for the penalty of a bond does not entitle the party to inquire into the merits of the original judgment.

2. In an action against one, either as executor, administrator or trustee, upon his personal obligation, naming him as executor, administrator or trustee, is mere surplusage, and the judgment will be entered against him in his personal character.

The opinion of the Court was delivered by

WILLIAMS, A. J.-This case has been argued as if it were an action of debt on the bond upon which the original judgment was obtained, instead of a scire facias upon that judgment. But it is well settled that in no case, nor under any circumstances, can the merits of the original judgment be inquired into for the purpose of furnishing a defence to a scire facias. Cardesa v. 5 S. & R. 65; Lysle v. Williams' Adm'x., 15 Id. 135;

Humes,