prescribed limits, in taking upon itself a decision of it."18 The word imposition is of doubtful signification as applied to the case under consideration, which was that of a patent for a particular mode of winding cotton thread in balls, and wrapping them, not, for the method or process, but for the disposition of the thread in the balls, and the form of wrapping, things which could not, it is evident, like a new composition of matter, be patentable. Admitting that the patentee might have obtained a valid patent for his method or process, he certainly could not for the result, so as to exclude others from effecting the same thing by a different method or process. The patent was, therefore, void, as being for a subject not patentable. But this is not the imposition intended by the judge. If the patentee wound the balls full of interstices by means of crossing the threads so as to make a larger ball of the same quantity, and wrapped the balls in a way to strike the fancy of purchasers, and deceive them with their eyes open, this was a kind of imposition, if such it may be called, which is daily practised in shops and manufactories. It would be going very far to set the patent aside as not being useful on account of its fraudulent character. But the court seemed to view the method or invention, or whatever the subject of this patent is

13 Langdon v. De Groot, 1 Paine, 203

to be denominated, in this light, and thus considered it to be a question for the court. The decision, in this view, seems to be very questionable.

But the method might be considered to be too frivolous to be the subject of a patent, and so liable to the objection that it was not useful in this sense of utility, as distinguished from frivolousness. But in this construction, also, it seems rather to have been a question for the jury.

Lord Eldon considers the question of the utility of the invention to belong to the jury."

Lord Eldon considers the question, whether the patent covers too much, to be for the court.15 But he must have had in his mind the case of its appearing from the specification and patent, that the patentee claimed too much, as where he describes an old machine and his improvement, and claims the whole machine as thus improved; but if it be necessary to go out of the patent for proof of what was known before, this plainly presents a question for the jury.

It was a question much discussed whether the process for the repeal of a patent under the tenth section of the law of 1793, was to be adjudicated upon by the court alone, or by jury trial; and after a full

14 Hill v. Thompson, 3 Meriv. 632. 15 Hill v. Thompson, 3 Meriv. 630.

discussion, the decision was in favor of a trial by jury.16 This decision is highly approved by Mr. Chancellor Kent."7

CHAPTER XXII.

Damages.

By the act of 1800, in case of an infringement, the jury were to assess the actual damages and these were trebled by the court.'

By the act of 1836, s. 14, it is provided, "that whenever, in any action for damages for using or selling the thing whereof the exclusive right is secured by any patent heretofore granted, or which shall hereafter be granted, a verdict shall be rendered for the plaintiff in such action, it shall be in the power of the court to render judgment for any sum above

16 Ex parte, Wood, 9 Wheat. 603.

17 Com. v. 1, p. 381..

'See Lowell v. Lewis. 1 Mason's R. 182; Whittemore v. Cutter, 1 Gall. R. 484; Odiorne v. Winkley, 2 Gall. R. 51. By the French law, the infringing party forfeits the articles made in violation of the patent right. Renouard c. 10, s. 3, p. 361, Ed. of 1825. This was the provision of the act of Congress of 1790; also act 1800, c. 25, s. 3.

the amount found by such judgment as the actual damages sustained by the plaintiff, not exceeding three times the amount thereof, according to the circumstances of the case."

When, on account of some defect in the specification, a patent is surrendered and a new one taken out, damage can be recovered for an infringement only for the time subsequent to the taking out of the new patent.2

It has been held, by Mr. Justice Story, that the making of a patented machine for experiment or philosophical purposes merely, and not for use, sale or profit, is not an infringement, but that the making of it for sale, use or profit, though without any sale or use, and though no profit is made, is an infringement, but that the damage, in such case, is only nominal. This decision was made under the law of 1793, but is applicable to that of 1836.

In an action for an infringement, the jury were instructed that the making of the patented machine fit for use, and with a design to use it for profit, was an infringement, for which an action was given by the statute. This direction was objected to, on the part of the defendant. Story J. "This limitation of the making, was certainly favorable to the defen

2 Act of Congress, 1836, c. 357, s. 13. See Ames v. Howard, 1 Sumner's R. 482.

dant, 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. 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 first 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 fifth section of the same act gives an action against any person who shall make, devise, and 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 third section of the act of 1800, c. 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