Evans v. Jordan & Morehead. 1 Brock. discovery itself, and is only perfected by the patent subjecting the future use of the machine, constructed previous to a patent, to that price which the inventor demands from others, for the use of it, his discovery will not appear to be one of those violent * invasions of the sacred rights [* 253] of property, which would justify a Court in disregarding the plain meaning of words. In deciding this first question, it still remains to inquire, whether, from the particular act under which Oliver Evans has obtained his patent, he derives rights as extensive as would have been conferred by the general law. In the enacting part of the law, reference is made to the general act, and it is declared that his patent grants, "for a term, not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to be used, his invention," &c. In the enacting clause, there is found no difference between this particular law and the general law. A patent issued under the one, or the other, confers equal rights. Is this construction varied by the proviso? The first proviso is, "That no person who may have heretofore paid the said Oliver Evans for a license to use his said improvements, shall be obliged to renew the said license, or be subject to damages for not renewing the same." The second is, "That no person who shall have used the said improvements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages therefor." The second proviso has been supposed to comprehend the case at bar. But, surely, this would be extending the proviso far beyond the meaning of the words. Their obvious import is, that no person who shall have used the said improvements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages for such previous use, or for such previous erection; but this no more. Evans v. Jordan & Morehead. 1 Brock. excepts the future use of a machine previously erected, from the operation of the enacting clause, than it excepts from that operation a machine to be in future erected. The legislature, knowing that an inchoate right to the exclusive use of his discovery was vested in the inventor, from the moment of discovery, and only perfected by the patent, might deem it necessary to guard against a continuation, which [* 254] would make this patent relate back to * antecedent transactions. This may have been a superfluous caution, but such caution is often found in legislative proceedings. This construction derives additional force from the first proviso. This does away the necessity of renewing licenses purchased under the former patent. The words of the proviso, certainly, apply to all former licenses, for which payment had been made, not to those for which no payment had been made, and shows that the legislature supposed it possible that the effect of the patent would be extended to such licenses. An attempt has been made to impair the influence of this proviso, by its application to cases in which a license had been obtained and paid for, but the machine had not been constructed. There is nothing in the words to justify the idea that the legislature designed to limit their operation to such particular cases; and to suppose their existence requires no inconsiderable effort of the imagination. It is difficult to assign a motive for purchasing, just before the expiration of a patent, a license to use a discovery, which the purchaser did not purpose to erect until the patent should expire. It is, then, the opinion of the Court, that the Act for the relief of Oliver Evans, considered independent of any former patent, would authorize him to sustain an action for the use of his invention, after the date of his patent, although the machinery itself had been constructed before its date. Evans v. Jordan & Morehead. 1 Brock. Does the existence of a former patent affect the question of law? The Court can perceive no ground upon which to rest an affirmative answer to this question. That construction of the constitution which admits the renewal of a patent, is not controverted. A renewed patent, then, has the same obligation, and confers the same rights, with an original patent. The inchoate property which vested by the discovery, is prolonged by the renewed patent, as well as by the original patent. There may be powerful reasons with the legislature for guarding a renewed patent, by restrictions and regulations, not to be imposed on original patents; but these reasons address themselves to the * legislature only. [* 255] If they have been overlooked or disregarded in the hall of Congress, it is not for this Court to set them up. NOTE.-The Court being divided in opinion, pro forma, on the question raised by the demurrer in this cause, the following order was made: "On the trial of this cause, it occurred, as a question, whether, after the expiration of the original patent granted to Oliver Evans, a general right to use his discovery was not so vested in the public, as to require and justify such a construction of the act passed in January, 1808, entitled, 'An Act for the relief of Oliver Evans,' as would exempt from either treble or single damages, the use, subsequent to the passage of the said act, of the machinery therein mentioned, which was erected subsequent to the expiration of the original patent, and previous to the passage of the act, entitled' An Act for the relief of Oliver Evans?' "Upon this question, the Court was divided in opinion, and it is, therefore, ordered to be certified to the Supreme Court for their decision and direction thereon." The Supreme Court of the United States unanimously sustained the above opinion of the Chief Justice. See 9 Cranch, 199; 3 Con. Rep. Sup. Ct. U. S. 358. The decisions of the United States Court, on cases arising under the Patent Act, are collated by Mr. Peters, in a note at the end of the case. — [Editor.] - Whittemore v. Cutter. 1 Gall. WHITTEMORE v. CUTTER. [1 Gall. 429.] Under the Patent Act of 21st February, 1793, ch. 11, if the patentee has sold out a moiety of his patent-right, a joint action lies, by himself and his assignee, for a violation of it. The making of a patented machine fit for use, and with design to use it for profit, in violation of the patent-right, is of itself a breach of the patentright, for which an action lies. If there be a mere making, and no user proved, nominal damages are to be given to the plaintiff. Where the law gives a remedy for a particular act, the doing of that act of itself imports a damage, for which an action lies. If the oath, required by the Patent Act previous to the issuing of a patent, be not taken, still the patent is valid. Under the Patent Act, no defect or concealment in any specification is sufficient to avoid a patent, unless it be with intent to deceive the public. Counsel fees for prosecuting the suit are no proper item of damage in an action for violation of a patent.1 THIS was an action for the violation of a patent-right in a machine for the making of cotton and wool cards. A verdict having been returned against the defendant, [* 430] he moved * for a new trial upon several grounds, which will appear in the opinion of the Court, de livered as follows, by STORY, J. Several objections, which were taken to the opinion of the Court delivered to the jury at the trial, have been argued on the motion for a new trial, and we are now to pronounce as to their validity. The first objection is founded on the incompetency of the plaintiffs to maintain the present action; one of the plaintiff's 1 See Allen v. Blunt et al.; Boston Manufacturing Co. v. Fiske et al.; Stimpson v. The Railroads. Whittemore v. Cutter. 1 Gall. being the original patentee, and the other an assignee of a moiety of the patent-right, deriving his title under the patentee. It is contended, that no action will lie in this court for an infringement of a patent-right in favor of an assignee, unless he be the assignee of the whole title and interest. And the language of the 4th section of the act of 21st February, 1793, ch. 11, and the case of Tyler & al. v. Tuel,1 are relied on in support of the position. It is true, that a party relying on an action given by a statute must bring himself within the provisions of the statute. But where, as in the present case, the law is remedial, it should receive a liberal construction, to effectuate the intentions of the legislature. Upon the very rigid construction which is assumed by the defendant's counsel, an action could not be maintained, where a joint patent should be obtained by two persons, and one of them should assign his whole interest. The action could not be jointly brought by the patentees, because one would have parted with his whole interest; nor jointly by the patentee and the assignee, for it would then be open to the very difficulty which is pressed upon us in this case; nor by either party separately, for it would be splitting the cause of action. Other cases might be put, in which the parties would be wholly without remedy. We are well satisfied, however, that [* 431] the direction given at the trial on this point was correct. The statute gives to the assignee all the right and responsibility which the original inventor had in the undivided portion of the patent, which is conveyed; and an action may well be maintained by all the parties who, at the time of the infringement, are the holders of the whole title and interest. The case of Tyler & al. v. Tuel is clearly distinguishable. In the first place, it was brought by persons who did not pur 16 Cranch, 325. |