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perfect result, Still the evidence would not be conclusive, because the report that such an invention had been made might have arisen from what had been done in the way of experiment alone. But it would be very strong presumptive evidence that the experiments had terminated successfully, if persons who were in the way of hearing of such inventions should testify that they had heard of such an invention having been announced, although they had not seen it. On the other hand, if such persons had not heard of such an invention, the evidence would not show conclusively that the prior experiments rested in experiment alone, but it would have a very strong tendency to establish this conclusion, because there is an irresistible tendency in inventions to become known, as to their results, if not as to their processes, whenever the results are accomplished.2

§ 475. There is one other species of evidence, applicable to the issue of novelty, when the question is as to the time when the patentee had completed his invention. It may be necessary for the plaintiff to rebut evidence offered by the defendant as to the invention and use of the same thing by other persons before the date of his patent, and hence it may be important to show the precise time when the invention was completed by the patentee. For this purpose the patentee may give in evidence his own declarations, as part of the res gestæ, describing the nature and object of the invention, to an extent which has been defined by the Supreme Court of the United States.3

1 If such persons had seen the thing, no further inquiry would be necessary, for the proof would be positive that the thing existed before. But the evidence we are here considering relates merely to the fact of such persons having or not heard of the invention, which fact, if shown in the affirmative, of course must be aided by proof of its having been made by somebody, and would not alone be conclusive proof of its actual previous existence.

The case of Galloway v. Bleaden, Webs. Pat. Cas. 521, 525, presents a state of facts similar to that which we have supposed in the text. Two witnesses conversant with subjects of the description of the patented invention, and who devoted themselves to the knowledge of the inventions made from week to week, testified that they had not before heard of such a discovery previous to the issuing of the plaintiff's patent. The court said this was enough to call on the other side to show affirmatively that the invention was not new, and that it was for the jury to say whether the evidence as to what had been done by the antecedent experiments or efforts of others, in the way in which it ought to be understood, had brought their minds to that conclusion.

"In many cases of inventions, it is hardly possible in any other manner to as

But where the inventor has parted with his interest in the letters-patent, e. g. by assignment, any subsequent declarations made by him are wholly inadmissible, either to show a want of title in him, or to affect the quality of the article, or to impair in any way the rights of the assignee.1

§ 476. Sometimes the issue of novelty involves the identity or diversity of the thing patented, compared with something before known or used, on which the defendant relies to defeat the patent. The nature of the evidence and the sources from which it is to be drawn, are the same upon this issue as when the question of identity or diversity arises under the issue respecting an infringement; and the consideration of the principles of evidence on both of these issues may here be postponed until we come to the general discussion of the question of identity.

§ 476 a. Where the patent is for a combination, the patentee is certain the precise time and exact origin of the particular invention. The invention itself is an intellectual process or operation; and, like all other expressions of thought, can in many cases scarcely be made known, except by speech. The invention may be consummated and perfect, and may be susceptible of complete description in words, a month, or even a year before it can be embodied in any visible form, machine, or composition of matter. It might take a year to construct a steamboat, after the inventor had completely mastered all the details of his invention, and had fully explained them to all the various artisans whom he might employ to construct the different parts of the machinery. And yet, from those very details and explanations, another ingenious mechanic might be able to construct the whole apparatus, and assume to himself the priority of the invention. The conversations and declarations of a patentee, merely affirming that at some former period he invented that particular machine, might well be objected to. But his conversations and declarations, stating that he had made an invention, and describing its details and explaining its operations, are properly to be deemed an assertion of his right, at that time, as an inventor, to the extent of the facts and details which he then makes known, although not of their existence at an antecedent time. In short, such conversations and declarations, coupled with a description of the nature and objects of the invention, are to be deemed a part of the res gestæ, and legitimate evidence that the invention was then known to and claimed by him; and thus its origin may be fixed at least as early as that period." The Philadelphia and Trenton Railroad Company v. Stimpson, 14 Peters, 462. In Pettibone v. Derringer, 4 Wash. 215, the patentee was allowed to give in evidence his letters to the Secretary of State, containing applications and specifications, and certified under the department seal as papers remaining in that office. See Allen v. Blunt, 2 Woodb. & Min. 121, where a motion for a new trial, on the ground that such letters had been admitted in evidence, was refused.

1 Many v. Jagger, 1 Blatchf. 376.

not permitted, on the trial, to abandon a part of the combination as useless, still less can he be suffered to prove it useless.1

With regard to the evidence of damages in an action for infringement, see ante, chapter on Infringement, where this topic is discussed at length. Here it may suffice to state that, in the absence of a license fee, actual damages must be proved by evidence bearing directly on the point, so that the jury may be furnished with sufficient data, and not left to the exercise of their ingenuity in guessing probable damages.2

§ 477. The plaintiff must also offer some evidence of the utility of his invention. The degree of utility, as we have seen, is not material; but the invention must be capable of some use, beneficial to society. This is ordinarily proved by the evidence of persons conversant with the subject, who may be called upon to say whether the thing invented is or is not capable of the use for which it is designed, or whether it is an improvement upon what had been in use before. But it may also be proved by other testimony, which will show that large orders have been given for the article by the public, or that licenses have been taken for the exercise of the right.

§ 478. The plaintiff, in addition to the prima facie evidence of the novelty of his subject-matter, must also offer some proof of the sufficiency of his specification. In other words, he must show, to use the language of the statute, that his specification is "in such full, clear, and exact terms, as to enable any person, skilled in the art or science to which it appertains, to make, construct, compound, or use " the thing patented. This may be apparent to the jury on the face of the specification itself, from its simplicity and the absence of technical terms and descriptions; but where the invention is at all complicated, or terms of art or science are made use of, requiring the exercise of technical knowledge to determine whether the specification is sufficient, it is at least advisable, if not necessary, for the plaintiff, in opening his case, to give

1 Vance v. Campbell, 1 Black. 427.

Seymour v. McCormick, 16 How. 480; City of New York v. Ransom, 23 How. 487; Suffolk Co. v. Hayden, 3 Wall. 315. In view of these subsequent cases, it may be questioned whether the rule on the evidence and measure of damages, as laid down by Judge Nelson, in Stevens v. Felt, 2 Blatchf. 37, is still to be considered as law.

some evidence that his specification can be applied by those to whom the law supposes it to be addressed. If the sufficiency of the specification is disputed, the plaintiff must go into evidence to sustain it. How much of this evidence may properly be reserved for answer to the defendant's case, and how much should be introduced in the plaintiff's opening, must depend on the circumstances of the trial, although it may be stated, as a general rule, that slight evidence of sufficiency is all that is necessary to be offered at first, in order to make it incumbent on the defendant to falsify the specification.1

§ 479. The nature and source of the evidence, to show the sufficiency of a specification, present a topic of much interest, under that somewhat difficult branch of the law of evidence which relates to experts. What is the meaning of the statute, when it refers to the ability of persons "skilled in the art or science" to which the invention appertains, "or with which it is most nearly connected," to make, construct, compond, and use the same? Does it mean to adopt as witnesses those only who have the practical skill of artisans in the art or science, and to make their ability to understand and apply the specification the test of its sufficiency, or does it include that higher class of persons, who, from general scientific knowledge, or from a theoretical acquaintance with the principles of the art or science involved, might be able to teach an artisan or practical workman how to practise the invention? It is apparent that both of these classes of persons may be within the literal meaning of the phase "skilled in the art or science"; but the question is, whether the law contemplates one only, or both of them, as the proper witnesses to determine the sufficiency of a specification. It seems to me very clear that the law means to adopt, as a general standard of the sufficiency of a specification, the ability of skilful

1 It seems to be the rule in England that the plaintiff must open with some evidence of the sufficiency of his specification, unless the defendant admits that it was tried and succeeded. Turner v. Winter, Webs. Pat. Cas. 81; 1 T. R. 602; Cornish v. Keene, Webs. Pat. Cas. 503. And if a whole class of substances be stated as suitable, the plaintiff must show that each of them will succeed. Bickford v. Hewes, Ibid. 218. Under our system of pleading, the same rule should be followed. Although the defendant is obliged to give notice if he intends to rely on the insufficiency of the specification, the plea of not guilty puts the sufficiency of the specification in issue, and the plaintiff must therefore prove it as one of the things necessary to found his action.

practical workmen to practise the invention from the directions given in the specifications. The standard of acquirement and knowledge may vary with the nature of the subject-matter; but where the invention falls within the province of an art or science, which is practised by a particular class of mechanics, operators, manufacturers, or other workmen, who possess and whose vocation it is to apply technical knowledge in that particular branch of industry, the patent law refers to their capacity to take the specification and carry out in practice the direction which it contains, without invention or addition of their own.

§ 480. Thus, if the invention be of a pump, or of some improvement in pumps, the question will be whether a pump-maker of ordinary skill could construct one upon the plan given in the specification, from the directions given. If it be a composition of matter falling within the art of practical chemistry, the question on the specification will be whether its directions are so clear and intelligible that a practical chemist of ordinary skill could make the compound by following out the directions.2 If it be a process involving the application of a principle in physics to a particular branch of manufacture, to be carried into effect in a particular manner, the question will be whether the directions, if fairly followed out by a competent workman, of the class ordinarily employed to construct an apparatus of that kind, would produce the effect intended. This seems to be the general rule, applicable to a very large proportion of the inventions which become the subjects of patents; and accordingly it may be stated as a general rule that the proper witnesses to determine on the sufficiency of a specification are practical workmen of ordinary skill in the particular branch of industry to which the patent relates, because it is to them that the specification is supposed to be addressed.*

1 Lowell v. Lewis, 1 Mason, 182.

Ryan v. Goodwin, 3 Sumner, 514.

3 Neilson v. Harford, Webs. Pat. Cas. 371.

Gibson v. Brand, Webs. Pat. Cas. 629; Bickford v. Skewes, Ibid. 219; Arkwright v. Nightingale, Ibid. 61; Elliott v. Aston, Ibid. 224; Huddart v. Grimshaw, Ibid. 87; Morgan v. Seaward, Ibid. 174; Neilson v. Harford, Ibid. 371. The following instructive charge, given by Alderson, B. to the jury in Morgan e. Seaward, contains an elaborate illustration of the law on this point of intelligibility. “I will now begin with the specification. It is the duty of a party who takes out a patent to specify what his invention really is, and although it is the bounden

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