a condition in a license, under which the licensee was bound not to sell the manufactured products of a machine to be carried for consumption out of the territory embraced by the license, works a forfeiture, and the licensee may be enjoined.1 In the next place, it has been held, that where the proprietor of the patent elects to treat a license as forfeited for breach of a condition, and to proceed against the licensee as against any other person using the patented thing without right, and to have the license declared void, the defendant is remitted to any rights he had anterior to the license, so that he may set up in his answer (in equity) a right which he had derived from the original patentee under a former term of the patent, and which in contemplation of law survived into the existing term.2 How far the principle of this decision would extend, to permit the defendant to avoid any admissions contained in the license respecting the validity of the patent, is, of course, questionable. It is to be observed that what was held in this case was that, where the plaintiff undertook to avoid the license by reason of a breach of a condition on the part of the licensee, or, in other words, to proceed against the licensee as a person without a title to use the invention, the latter could be permitted to show a prior title devolved upon him before the license, and still existing. But it may be questioned whether, in such a case, the defendant, as against admissions made by him in his contract of license respecting the validity of the patent, would be remitted to all the rights which he had anterior to the license, one of which would have been the right to dispute the patent itself. The decision above cited does not extend to this point. 1 Wilson v. Sherman, 1 Blatch. 536. In this case the condition on which a license was granted to use a machine for planing lumber was, that the licensee should not sell to others the manufactured products of the machine to be carried out of the territory or sold as an article of merchandise, or dress lumber for other persons to be carried out of the territory and resold as an article of merchandise. It was held that the true meaning and operation of this restriction was, that the manufactured product should not, with the privity or consent of the licensee, be sold out of the territory as an article of merchandise, or, with his privity and consent be sold within the territory, to be carried out and resold as merchandise. Woodworth v. Cook, 2 Blatch. 151. CHAPTER VI. THE SPECIFICATION. § 219. HAVING ascertained the kinds of subjects for which letterspatent may be obtained, and the parties entitled to take, renew, or extend them, we have now to state the proceedings requisite to the issuing, renewal, and extension of patents, and the principles which govern their construction. As the first step to be taken, in making application for a patent, is to prepare a written description of the invention or discovery, the requisites for this instrument, called the specification, and the rules for its construction, will first engage our attention. § 220. The act of Congress of July 4, 1836, c. 357, § 6, contains the following enactment: "But before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery. He shall, furthermore, accompany the whole with a drawing or drawings, and written references, where the nature of the case admits of drawings, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of mat. ter; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the Patent Office; and he shall, moreover, furnish a model of his invention, in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts." 1 § 221. The specification, under our law, occupies a relation to the patent somewhat different from the rule in England. In England the specification does not form part of the patent, so as to control its construction; but the rights of the inventor are made to depend on the description of his invention, inserted in the title of the patent, and cannot be helped by the specification, the office of which is to describe the mode of constructing, using, or compounding the invention mentioned in the patent.2 But in the United States the specification is drawn up and filed before the patent is granted, and is referred to in the patent itself, a copy being annexed. It is therefore the settled rule in this country that the patent and the specification are to be construed together, in order to ascertain the subject-matter of the invention, and that the specification may control the generality of the terms of the patent, of which it forms a part. In like manner drawings annexed to a 1 The Act of 1793, c. 55, § 3, sets forth the requisites of a specification as follows: "And be it further enacted, that every inventor, before he can receive a patent, shall swear or affirm, that he does verily believe, that he is the true inventor or discoverer of the art, machine, or improvement, for which he solicits a patent; which oath or affirmation may be made before any person authorized to administer oaths, and shall deliver a written description of his invention, and of the manner of using or process of compounding the same, in such full, clear, and exact terms as to 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, compound, and use the same. And in the case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions; and he shall accompany the whole with drawings and written references, where the nature of the case admits of drawings, or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention is of a composition of matter; which description, signed by himself and attested by two witnesses, shall be filed in the office of the Secretary of State, and certified copies thereof shall be competent evidence, in all courts, where any matter or thing, touching such patent right, shall 'come in question. And such inventor shall, moreover, deliver a model of his machine, provided the Secretary shall deem such model to be necessary.” 2 * Phillips on Patents, p. 223; Godson on Patents, p. 108, 117; Hogg v. Emerson, 6 How. 437, 479. Whittemore v. Cutter, 1 Gallis. 429, 437; Barrett v. Hall, 1 Mas. 447, 477; specification, in compliance with the statute, are held to form a part of it, and are to be regarded in the construction of the whole instrument.1 Where the term "patent," therefore, is used in the following discussion of the rules of construction, it will be' understood to include the specification and drawings annexed to it.2 § 222. In construing patents, it is the province of the court to determine what it is that is intended to be patented, and whether the patent is valid in point of law. Whether the invention itself be specifically described with reasonable certainty is a question of law upon the construction of the terms of the patent; so that it is for the court to determine whether the invention is so vague and incomprehensible as in point of law not to be patentable, whether it is a claim for an improved machine, for a combination, or a single invention; and, in short, to determine what the subject-matter is, upon the whole face of the specification and the accompanying drawings. It is, therefore, the duty of the jury to take the construction of the patent from the court, absolutely, where there are no terms of art made use of which require to be explained by evidence, and no surrounding circumstances to be ascertained as matter of fact, before a construction can be put upon the instrument. But where terms of art requiring explanation are made use of, or where the surrounding circumstances affect the meaning of the Pitts v. Whitman, 2 Story's R. 609, 621. So, too, the specification may enlarge The fifth section of the act of 1836 declares that every patent shall contain a short description or title of the invention or discovery, correctly indicating its nature and design," and "referring to the specification for the particulars thereof, a copy of which shall be annexed to the patent, specifying what the patentee claims as his invention or discovery." The Supreme Court of the United States, in a very recent case, have held that wherever this form of letters, with a specification annexed and referred to, has been adopted, either before or since the act of 1836, the specification is to be considered as part of the letters in construing them. Hogg v. Emerson, 6 How. 437, 482. Davis v. Palmer, 2 Brock. 298; Lowell v. Lewis, 1 Mas. 189; Carver v. Braintree Manf. Co. 2 Story, 434, 437, 441; Washburn v. Gould, 3 Story, 122, 130, 137, 138, 140, 141; Davoll v. Brown, 1 Woodbury & Minot, 53, 56; Emer son v. Hogg, 2 Blatch. 1. specification, these terms and circumstances are necessarily referred to the jury, who must take the construction from the court, conditionally, and determine it according as they find the facts thus put to them.1 Where, however, it becomes necessary to compare two specifications, e. g. where the defendant, in an action for infringement, controverts the novelty of plaintiff's invention by producing a patent previously granted to some third party, several questions arise, which have recently received in England an elaborate discussion. One is, whether the court alone can, on a mere comparison of the two specifications, decide that the inventions therein described are in fact identical.2 The other is, whether the prior specification, which is relied upon to defeat the claim of a subsequent patentee, must be in itself so clear and complete as to sustain a patent therefor, or whether it is enough if it contain a mere hint of the process or other invention underlying the subsequent patent.3 § 223. It is, however, the province of the jury to decide, on the evidence of experts, whether the invention is described in such 1 Washburn v. Gould, ut supr. In Neilson v. Harford, Webs. Pat. Cas. 370, in the Exchequer, Parke, B. delivering the judgment of the court, said: "Then we come to the question itself, which depends on the proper construction to be put on the specification itself. It was contended, that of this construction the jury were to judge. We are clearly of a different opinion. The construction of all written instruments belongs to the court alone, whose duty it is to construe all written instruments as soon as the true meaning of the words in which they are couched and the surrounding circumstances, if any, have been ascertained by the jury; and it is the duty of the jury to take the construction from the court, either absolutely, if there be no words to be construed as words of art, or phrases used in commerce, and the surrounding circumstances to be ascertained, or conditionally, where those words or circumstances are necessarily referred to them. Unless this were so, there would be no certainty in the law, for a misconstruction by the court is the proper subject, by means of a bill of exceptions, of redress in a court of error, but a misconstruction by the jury cannot be set right at all effectually. Then, taking the construction of this specification upon ourselves, as we are bound to do, it becomes necessary to examine what the nature of the invention is which the plaintiff has disclosed by this instrument.” On this point consult the chapter on Questions of Law and of Fact. As to this, see Chapter on Action at Law. The leading cases on the subject are Bovill v. Pimm, 36 E. L. & Eq. 441; Bush v. Fox, 38 E. L. & Eq. 1; Betts v. Menzies, 7 Law Times, N. S. 110, or 4 Best & Smith, Q. B. 996, overruling same case in 8 Ell. & Blackb. 923; Hill v. Evans, 6 Law Times, N. S. 90. |