case. Whittemore v. Cutter. 1 Gall. port to have the whole patent-right in themselves. In the next place, there was, technically speaking, no assignment of the patent-right. The instrument could only operate as a covenant or license for the exclusive use of the patent-right in certain local districts. But a patent-right itself is unsusceptible of local subdivision. Nor is the present case within any of the mischiefs which were pressed on the Court in that The language of the 4th section does not seem to have contemplated the case of joint inventors; yet there can be no doubt, that being within the reason of the clause, they must be held within the purview. If either should die, can there be a question that the executor or administrator might well maintain an action jointly with the survivor for an infringement? and in what substantial respect can an assignce in law be considered as distinguishable from an assignee in fact? Upon the most mature reflection, we are satisfied that this objection cannot prevail upon the footing of the statute; and if urged at common law, the case of Boulton & Watt v. Bull,1 where the action was brought by the inventor and his assignee of two thirds of the patent-right, would afford a complete answer. Another objection is to the direction, that the making of a machine fit for use, and with a design to use it for profit, was an infringement of the patent-right, for which an action was given by the statute. This limitation of the making [* 432] *was certainly favorable to the defendant, and it was adopted by the Court from the consideration that it could never have been the intention of the legislature to punish a man who constructed such a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects. 12 H. Bl. 463. 66 Whittemore v. Cutter. 1 Gall. It is now contended by the defendant's counsel, that the making of a machine is, under no circumstances, an infringement of the patent. The 1st section of the Act of 1793 expressly gives to the patentee, &c., "the full and exclusive right and liberty of making, constructing, using, and vending to others to be used," the invention or discovery. The 5th section of the same act gives an action against any person who shall make, devise, use, or sell" the same. From some doubt whether the language of the section did not couple the making and using together to constitute an offence, so that making without using, or using without making, was not an infringement, the legislature saw fit to repeal that section; and by the 3d section of the Act of 17th April, 1800, ch. 25, gave the action against any person who should "make, devise, use, or sell" the invention. We are not called upon to examine the correctness of the original doubt, but the very change in the structure of the sentence affords a strong presumption that the legislature intended to make every one of the enumerated acts a substantive ground of action. It is argued, however, that the words are to be construed distributively, and that "making" is meant to be applied to the case of a composition of matter, and not to the case of a machine. That it is clear, that the use of certain compositions, (as patented pills,) could not be an infringement, and unless making were so, there would be no remedy in such cases. We cannot feel the force of this distinction. word "making" is equally as applicable to machines, as * to compositions of matter; and we see [* 433 ] no difficulty in holding, that the using or vending of a patented composition is a violation of the right of the proprietor. The It is farther argued, that the making of a machine cannot be an offence, because no action lies, except for actual damage, and there can be no actual damages, or even a rule Whittemore v. Cutter. 1 Gall. for damages, for an infringement by making a machine. We are, however, of opinion, that where the law gives an action for a particular act, the doing of that act imports of itself a damage to the party. Every violation of a right imports some damage, and if none other be proved, the law allows a nominal damage. On the whole, we see no reason for departing from the plain import of the language of the statute, and this objection also must be overruled. Another objection is to the direction, that the oath taken by the inventor not being conformable to the statute, formed no objection to the recovery in this action. The statute requires that the patentee should swear, " that he is the true inventor or discoverer of the art, machine, or improvement." The oath taken by Whittemore was, that he was the true “inventor or improver of the machine." The taking of the oath was but a prerequisite to the granting of the patent, and in no degree essential to its validity. It might as well have been contended that the patent was void, unless the thirty dollars required by the 11th section of the act, had been previously paid. We approve of the direction of the Court on this point, and overrule this objection.. Another objection is to the direction respecting the specification. It was as follows: "That if the jury should be satisfied that the specification and drawings filed by the patentee in the office of the Secretary of State, were not made in such full, clear and exact terms and manner as to [* 434 ] * distinguish the same from all other things before known, and to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly connected, to make and use the same, this would not be sufficient to defeat the right of the plaintiff's to recover in this action, unless the jury were also satisfied that the specification and drawings were thus materially defective and ob Whittemore v. Cutter. 1 Gall. scure by design, and the concealment made for the purpose Whittemore v. Cutter. 1 Gall. which it may be distinguished from other inventions. The sixth section provides, among other things, that the defendant may give in his defence, that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce. the described effect, which concealment or addition shall fully appear to have been made for the purpose of deceiving the public. It is very clear, that the sixth section does not enumerate all the defences of which the defendant may legally avail himself; for he may clearly give in evidence, that he never did the act attributed to him, that the patentee is an alien not entitled under the act, or that he has a license or authority from the patentee. It is therefore argued, that if the specification be materially defective, or obscurely or so loosely worded, that a skillful workman in that particular art could not construct the machine, it is a good defence against the action, although no intentional deception has been practised. And this is beyond all question the doctrine of the common law; and it is founded in good reason, for the monopoly is granted upon the express condition that the party shall make a full and explicit disclosure, so as to enable the public, at the expiration of his patent, to make and use the invention or improvement in as ample or beneficial a manner as the patentee himself. If, therefore, it be so obscure, loose, and imperfect, that this cannot be done, it is defrauding [* 436] the public of all the consideration upon which the monopoly is granted.1 And the motive of the party, whether innocent or otherwise, becomes immaterial, because the public mischief remains the same. It is said, that the law is the same in the United States, notwithstanding the wording of the sixth section, for there is 1 Buller, N. P. 77; Turner v. Winter, 1 T. R. 602. |