Stimpson v. The West Chester Railroad Co. 4 How.

a mixed question of law and fact; of law so far as depends on written, and of fact as to parol evidence," &c.

4. "It is for you to say, whether you will take the evidence as we do; if you discredit it, in whole or in part, you will find accordingly."

Mr. Justice McLEAN delivered the opinion of the Court. The plaintiff brought an action against the defendant for an infringement of his patent, for a "new and useful improvement in the mode of turning short curves on railroads." The questions for decision arise on exceptions to the charge of the Court to the jury. And here it may be proper to remark, that the exceptions are to the charge as published at length, and not to the points ruled by the Court, as is the correct practice. Under the peculiar circumstances of this case, the Court will not dismiss the writ of error upon this ground, but it is expected that a different course will hereafter be pursued.

On the 21st of August, 1831, the plaintiff obtained a patent for an invention or improvement in the application of the flanches of the wheels on one side of railroad carriages and [*402 ] of the treads of * the wheels on the other side, to turn short curves upon railroads. The specification of this patent being defective, it was surrendered the 26th of September, 1835, and a renewed one obtained, in order, as proved, to limit and confine it to the turning short curves in streets, &c., by leaving out certain matters in it respecting the crossing of tracks or roads, and the passing over turnabouts, and to define the subject-matter of the patent more clearly, without its being necessary to refer to that simultaneously obtained, for forming and using cast or wrought-iron plates," &c.

In his charge, the judge said to the jury: "It clearly appears that the defendants constructed their railroad with the

Stimpson v. The West Chester Railroad Co. 4 How.

plaintiff's curves in 1834, one year or more before the plaintiff's application for his renewed patent; consequently, they may continue its use without liability to the plaintiff."

The patent was surrendered, and a new one obtained, under the third section of the "Act concerning Patents," of the 3d of July, 1832; and the correctness of the above opinion is to be ascertained by a reference to the proviso of that section. It is there declared "No public use or privilege of the invention so patented, derived from or after the grant of the original patent, either under any special license of the inventor, or without the consent of the patentee that there shall be a free public use thereof, shall, in any manner, prejudice his right of recovery for any use or violation of his invention, after the grant of such new patent as aforesaid."

The charge of infringement, in the declaration, is laid some years after the new patent, so that the question does not arise, whether an action could be sustained for a violation of the right prior to the corrected patent. The above proviso would seem to be susceptible of but one construction; and that is, that the patentee may sustain an action "for any use or violation of his invention after the grant of a new patent." Now it is plain that no prior use of the defective patent can authorize the use of the invention after the emanation of the renewed patent under the above section. To give to the patentee the fruits of his invention was the object of the provision; and this object would be defeated, if a right could be founded on a use subsequent to the original patent and prior to the renewed one.

The thirteenth section of the Act of the 4th of July, 1836, which remodelled the Patent Law in this respect, made no material change in the Act of 1832. The words in the latter act are," And the patent, so reissued, together with the corrected description and specification, shall have the same effect and operation in law, on the trial of all actions hereafter

Stimpson v. The West Chester Railroad Co. 4 How. commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the issuing out of the original patent." Now any person

using an invention protected by a renewed patent [* 403] * subsequently to the date of this act, is guilty of an infringement, however long he may have used the same after the date of the defective and surrendered patent.

The Circuit Court relied upon the seventh section of the Act of the 3d of March, 1839, as sustaining their construction in regard to the use of the invention after the renewed patent. But that section has exclusive reference to an original application for a patent, and not to a renewal of it. We think the Court erred in their instruction to the jury above stated.

In their charge, the Court said "The use of grooves was not claimed and was no part of the thing patented in 1831, for turning short curves, but was a part of the thing patented in 1835." That it was an essential part of the invention." And further," in taking the statement" of Dr. Jones" as proof of the facts there existing, our opinion is, that, connected with the publication in the Journal of the Franklin Institute, in 1832, when the matter was fresh in his recollection, and the specification in the new patent, the old one was invalid and inoperative, by reason of non-compliance with the requisites of the Act of 1793. That it did not embrace the groove, which was essential to its validity; that the new patent is not the same invention, and that the plaintiff has not made out a case of such inadvertence, accident, or mistake,' as justified the issue of the new patent, inasmuch as it appears, from the patent for plates on railroads issued at the same time with the one for short curves, that he had known and described the grooves."

The original patent, as proved by Dr. Jones, was burnt

Stimpson v. The West Chester Railroad Co. 4 How.

with the Patent Office, and no part of the specifications is preserved, except that which was published by the witness in the Franklin Journal. That publication does not purport to give the whole of the specifications, and, consequently, the claim is not limited by the notice in that journal. Doctor Jones, speaking of the patent issued in 1831, says, "The main defect, in my judgment, of the original specifications in the patent for turning short curves was the omission of the mention of the groove in the inner rail. I believe, however, that it was alluded to in the specifications, but the description of it was contained principally, if not wholly, in the specification of the patent for forming and using cast-iron or wrought plates," &c.

That there was a defect in regard to the grooves in the specifications of the first patent is shown, and also that the patent was surrendered in order to remedy that defect. But whether this vitiated the patent is not a question in this case, as it does not affect the right now asserted, if the first patent were void. Whether the new patent was substantially for a different invention from the first one, was a question for the jury on the evidence. But the Court ruled this point, withdrawing the facts from the jury. The witness thinks "that in the first patent the grooves were alluded to," but the * terms used are not recollected by him, and as [* 404 ] the patent has been burnt, they cannot now be proved. We think the Circuit Court erred in not leaving the jury to act upon the facts, as regards the difference between the original and the renewed patent. On the facts, we should draw a different conclusion from that which was given to the jury by the Circuit Court. An allusion to the grooves in this specification, as more particularly described in the other patent, would at least show the intention of the patentee, if it did not make good his patent.

By the thirteenth section of the Act of 1836, "if the patent

Wilson v. Rousseau et al. 4 How.

shall be inoperative or invalid, by reason of a defective or insufficient description or specification," &c., "if the error has or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful" to surrender it, &c. Now, as in granting the renewed patent, the officers of the government act under the above provisions, their decisions must at least be considered as prima facie evidence that the claim for a renewal was within the statute. But this would not be conclusive against fraud in the surrender and renewal, which, on the evidence, would be a matter for the jury. And we suppose that the inquiry in regard to the surrender is limited to the fairness of the transaction. In whatever manner the mistake or inadvertence may have occurred is immaterial. The action of the government renewing the patent must be considered as closing this point, and as leaving open for inquiry, before the Court and jury, the question of fraud only.

The judgment of the Circuit Court is reversed, and the cause remanded to that Court, with instructions to award a venire facias de novo.

JAMES G. WILSON, PLAINTIFF, v. LEWIS ROUSSEAU AND CHARLES EASTON.

[4 Howard, 646. January T. 1846.]

The eighteenth section of the Patent Act of 1836 authorized the extension of a patent, on the application of the executor or administrator of a deceased patentee.

Such an extension does not inure to the benefit of assignees under the original patent, but to the benefit of the administrator (when granted to an administrator) in his capacity as such. But those assignees who were in the use of the patented machine at the time of the renewal have still a right to use it. The extension could be applied for and obtained by the administrator, although