United States v. John Mott.

crediting thereon, the sum which has been brought into Court as aforesaid, and which is, by this decretal order, directed to be paid to the complainants. And it is further ordered, adjudged, and decreed, that the said William Ironside do also ascertain and report what property was conveyed by the deed of assignment in the pleadings mentioned, bearing date the 20th day of May, in the year of our Lord 1816, that is to say:all the particulars, whether real or personal, of which the same consisted, and what part or parts thereof have been sold by the trustees therein named, or by either of them, and to whom, and for what prices, and what sums of money have been received by the said trustees, or by either of them, under and in virtue of the said deed of assignment, and how the same have been applied, and what part of the estate, real or personal, granted by the said deed, remains unsold, or in the hands of the said trustees, or either of them, and what is the value thereof. And also that the said William Ironside report, whether there were any and what encumbrances, and of what kind and nature, and to what extent, on any part of the real estate mentioned in the said deed of assignment; and whether any and what part of such estate has been sold in virtue thereof. And it is further ordered, that in taking the said account, the said William Ironside may examine on oath, the District Attorney for the Southern District of New-York, or any or either of the defendants, as well as any other person or persons. And any further direction or decree is reserved until the coming in of the said report.

CIRCUIT COURT OF THE UNITED STATES,

NEW-YORK, SEPTEMBER TERM, 1822, AT NEW-YORK.

BEFORE

Hon. BROCKHOLST LIVINGSTON, Associate Justice of the Supreme Court.

Hon. WILLIAM P. VAN NESS, District Judge.

LANGDON V. DE GROOT ET al.

An invention or improvement for which a patent has been obtained, must be useful within the meaning of the patent law, or the patent is void. Whether the usefulness of an invention be matter of fact to be left to the jury, or whether the Court are to decide it as matter of law? Quere.

But, it seems, that if on the plaintiff's own showing, the invention appears to be useless, and an imposition on the public, the Court should so direct the jury.

An invention of an oruamental mode of putting up thread, which gave it no additional value, but merely made it sell more readily at retail, and for a larger price, was held not useful, within the meaning of the patent law. Specification held bad for uncertainty.

THIS was a motion to set aside the verdict in this cause for misdirection of the Court.

The declaration was for a breach of a patent right.

It appeared at the trial, that the plaintiff had obtained letters patent from the President of the United States, for "an improvement in preparing and packing cotton and other threads, and floss cotton for retailing." The specification was as fol

Langdon v. De Groot.

be denied; and if to protect the interest of a patentee, however frivolous, useless, or deceptive his invention may be, were the sole object of the law, it must be admitted that the plaintiff has made out a satisfactory title to his patent.

But if the utility of an invention is also to be tested by the advantages which the public are to derive from it, it is not perceived how this part of his title is in any way whatever established. Is the cotton manufactured by himself which is put up in this way? The very label declares it to be that of another man. Is any thing done to alter its texture, or to render it better or more portable, or more convenient for use? Nothing of this kind is pretended. Does the consumer get it for less than in its imported condition? The only ground on which the expectation of a recovery is built is, that he pays an enormous additional price, for which he literally receives no consideration.

It was said, that many ornamental things are bought of no intrinsic value, to gratify the whim, taste, or extravagance of a purchaser, and that for many of these articles patents are obtained. This may be so: But in such cases there is no deception, no false appearances; and the article is bought to be used with all its decorations and ornaments, which may have been the principal inducement to the purchase, and which will last as long as the article itself. In this the sight or pride of the party is gratified. But here it is the cotton alone which it is intended to buy, and the little label and wrapper appended to it, and which constitute the whole of the improvement, however showy, are stripped off and thrown away, before it can be used. And when that is done, which may be at the very moment of its purchase, the cotton is no better, whatever the buyer at the time may think, than when it first left the factory.

When Congress shall pass a law, if they have the right so

Langdon v. De Groot.

to do, to encourage discoveries by which an article, without any amelioration of it, may be put off for a great deal more than it is worth, and is actually selling for, it will be time enough for Courts to extend their protection to such inventions-among which this may be very fairly classed.

But a complaint is made, that this question should have been submitted to the jury. It may be that the Court expressed itself in terms too strong, and should have let the jury pass on this point on the evidence before them; and were this the only difficulty in the cause, I should not object to giving the plaintiffs an opportunity of obtaining such an opinion, by awarding a new trial; being never very desirous of treating mere questions of fact, if this be of that description, as questions of law.

But an objection is made to the specification, which, in the judgment of the Court, is conclusive.

It is said, and with truth, that it does not appear with sufficient precision, in what respects the method of putting up cotton in the plaintiff's way differs from that followed by Holt. It is certain that in two of the particulars in which the improvement is alleged to consist, Holt had anticipated him; that is, in folding the cotton into skeins of a convenient quantity for retailing, and in putting a label on them.

The only remaining direction in the specification is, that these skeins must be furnished with a sealed wrapper. Now, admitting this wrapper to be of the plaintiff's invention, and an improvement on Holt's mode of preparing his cotton for retailing, yet as he has not distinguished between the methods already in use and his own, but has taken a patent for all of them, it is void, in conformity with the decision in Evans and Eaton.

If the patent in its present form be good, he may sue any one who retails cotton put up in the form previously practised

Langdon v. De Groot.

by Holt; nor would so trifling a deviation from the specification, as the omission of a wrapper, furnish any defence to such an action, any more than changing the form or proportions of a machine would be regarded a discovery.

The rule to show cause why there should not be a new trial is discharged, and judgment must be entered on the verdict.