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CHAPTER III.

OF THE SUBJECT-MATTER OF LETTERS-PATENT, IN RESPECT TO UNITY OR DIVERSITY OF INVENTION, AND OF THE RELATION OF THE PATENTEE THERETO.

§ 107. We have seen that the subject-matter of valid letterspatent must possess certain qualities, and must stand in a certain position relatively to the state of the art to which the invention belongs; and we have also seen what are the limits within which the antecedent state of the art is to be confined in the comparison to be instituted between the supposed new invention and what has gone before it. These requisites having been ascertained, there next arises the important inquiry, how far the unity of an invention is consistent with a diversity of objects in the same patent. The terms of the patent acts do not admit of distinct inventions as the subject of a single patent, but, on the contrary, they imply that the subject-matter must be one invention or discovery. How far is it consistent with this unity, that the same patent should be made to cover a new machine or other invention, consisting of several parts working to a common end, and the several new parts, each as working for its separate purpose ?

§ 108. In some of the earlier cases on this subject, language was used by the courts tending to create doubts as to the legality of claiming, in the same patent, improvements on different mechanisms, so as to give a right to the exclusive use of the several mechanisms separately, as well as a right to the exclusive use of those mechanisms conjointly. Thus, in reference to the patent granted, under a special act of Congress, to Oliver Evans, for his improvement in the machinery for manufacturing flour, the Supreme Court intimated a doubt whether such a patent as the special act authorized could have been taken out under the. general patent law. Evans's invention comprehended five machines, each of which was designed for, and capable of, a distinct operation for a special purpose of its own, in the process of manufacturing flour, but the whole of which, when combined and operating together, constituted a complete flouring-mill, in which every opera

tion necessary to the converting of the grain into bolted flour could be carried on without the intervention of manual labor, and by the motive-power of the mill. In his specification, Evans claimed the machines both separately and conjointly, giving notice that "they may all be united and combined in one flour-mill to produce my improvement on the art of manufacturing flour complete, or they may each be used separately for any of the purposes specified and allotted to them, or to produce my improvement in part, according to the circumstances of the case." Upon this claim, the Supreme Court said that, under the general patent law alone, it was doubtful whether such a patent would not be irregular; but the special act for the relief of Evans was held to have expressly authorized it.1

§ 109. In the subsequent case of Barrett v. Hall, Mr. Justice Story made use of the following language: "A patent under the general Patent Act cannot embrace various distinct improvements or inventions; but in such case the party must take out separate patents. If the patentee has invented certain improved machines, which are capable of a distinct operation, and has also invented a combination of those machines to produce a connected result, the same patent cannot at once be for the combination and for each of the improved machines; for the inventions are as distinct as if the subjects were entirely different. A very significant doubt has been expressed on this subject by the Supreme Court, and I am persuaded that the doubt can never be successfully removed."2

§ 110. In a subsequent case, however, the same learned judge developed to some extent the distinctions which appear now to be generally recognized between the three cases of, first, a machine new as a machine and an entirety; second, several distinct improvements in an existing machine; and, third, a new combination consisting of elements wholly or partially old.3 That these three classes of cases are distinguishable from each other, as subjects of letters-patent, there can be no reasonable doubt. instance of the first class is presented by the sewing-machine invented by Howe, which as an automatic machine for uniting two

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pieces of cloth by a stitch of thread, in contradistinction to working ornaments of thread on the surface of cloth, is said to have had no predecessor. In such cases where the machine as a whole is claimed to be a new invention, giving rise to an entirely new art,—the art of sewing by automatic machinery, - the subjectmatter which it is necessary to secure is the machine itself. This of course can require but one patent; and whether that patent will cover not only the machine as an entirety, but the new subcombinations embraced in it, will depend upon the manner in which the subject is described and claimed, and upon the character of those sub-combinations. An instance of the second class appears in certain improvements upon the steam-engine, patented by one Emerson, and which became the subject of much litigation, involving the nature and relations of several inventions as capable of being embraced in one patent. The title of this patent was "for certain improvements in the steam-engine, and the mode of propelling therewith either vessels on the water or carriages on the land." The patentee claimed to have invented three distinct mechanisms, contrived with the view of being used conjointly, and as conducing to a common end, namely, the better propelling and navigating a ship; but each of these mechanisms was capable of a distinct use without the other two; and it was suggested in the specification that one of them, by the use of similar gearing, could be applied to the turning of the wheels of carriages on rail or ordinary roads, as it was applied to the turning of the paddle-wheels of a ship. In the Circuit Court it was held, that the patent covering the three inventions was rightly taken, upon the ground that, although each was a distinct invention, yet as they were capable of being used in connection and to subserve a common end, they might be united together in one patent, which would protect the patentee from the wrongful use of either of them separately.1 This conclusion appears to have been reached in conformity with the views expressed by Mr. Justice Story in the case of Wyeth v. Stone, in which he modified his dicta in the previous cases of Barrett v. Hall and Moody v. Fiske. In Wyeth v. Stone, it appeared that the patentee had invented an apparatus for cutting surface ice into blocks of uniform size, consisting of two machines capable of being used separately or together. The one, called a cutter, was a contrivance for marking the surface with parallel

1 Emerson v. Hogg, 2 Blatch. 1, 8.

grooves; the other, called a saw, was a mechanism for working a circular saw in the groove so cut, by means of which the ice could be cut through or so nearly through as to be easily pryed off with a chiselled iron bar. The two machines were embraced in one patent, which was construed by the court as a claim, not for the combination of the two, but for each distinct machine as a separate invention, yet conducing to the same common end. It appeared that in practice the patentee had himself discontinued the use of the saw, it being found that after the ice had been marked off in grooves by the cutter, it could be split off without being sawed. The suit was against a party using the cutter only; and consequently the point presented by the case was whether a patent describing and claiming two distinct machines was good as a patent for one of them, it appearing that they were not claimed as a combination. In order to sustain it as a patent for one of the machines, it became necessary to find some rule by which it could be saved from the objection that it embraced more than one subject-matter. Such a rule was supposed to be afforded by the fact that the machines, although capable of distinct use, were auxiliary to one common purpose.1 Following this rule, the Circuit Court, in Emerson v. Hogg, adopted the principle that where distinct inventions are capable of being used in connection, and to subserve a common end, they may be included in one patent, and their actual employment together is not required to sustain the validity of the patent in which they are united; and that the wrongful use of either machine is a violation of the patent right pro tanto. Applying this principle to the case before them, the court came to the following conclusion: "We think the specification in this case shows that these three separate machines were contrived with the view of being used conjointly, and as conducing to a common end, in the better propelling and navigating a ship; and in our opinion, their capability of being used separately and independent of each other does not prevent their being embraced in one patent."2 This case came twice before the Supreme Court, and on each occasion the ruling of the Circuit Court on this point was sustained, although at last there appears to have been a division of opinion among the judges.3

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1 Wyeth v. Stone, 1 Story, 273, 287.

Emerson v. Hogg, 2 Blatch, 8.

Hogg v. Emerson, 6 Howard, 437; s. c. 11 Howard, 587. In delivering the

§ 111. The third class of cases embraces what may be called technical combinations. In machinery the distinction between a new combination and a new machine may be illustrated in the history of the sewing-machine, of which there are several different varieties. Assuming that A was the first person to make a sewing-machine, consisting of certain elemental parts operating together automatically, to make a stitch uniting two pieces of cloth, the field of invention is in one direction closed; that is to say, no opinion of the court in 6 Howard, Mr. Justice Woodbury said: "There seems to have been no good reason at first, unless it be a fiscal one on the part of the government when issuing patents, why more than one in favor of the same inventor should not be embraced in one instrument, like more than one tract of land in one deed, or patent for land. Phillips on Pat. 217.

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Each could be set out in separate articles or paragraphs, as different counts for different matters in libels in admiralty, or declarations at common law, and the specifications could be made distinct for each, and equally clear.

"But to obtain more revenue, the public officers have generally declined to issue letters for more than one patent described in them. Renouard, 293; Phillips on Pat. 218. The courts have been disposed to acquiesce in the practice, as conducive to clearness and certainty. And if letters issue otherwise inadvertently, to hold them, as a general rule, null. But it is a well-established exception, that patents may be united, if two or more, included in one set of letters, relate to a like subject, or are in their nature or operation connected together. Phil. on Pat. 218, 219; Barrett v. Hall, 1 Mason, C. C. 447; Moody v. Fiske, 2 Mason, C. C. 112; Wyeth et al. v. Stone et al. 1 Story, 273.

"Those here are of that character, being all connected with the use of the improvements in the steam-engine, as applied to propel carriages or vessels, and may, therefore, be united in one instrument."

In 11 Howard, the same learned judge said, in answer to the same objection: "But grant that such is the result when two or more inventions are entirely separate and independent, though this is doubtful on principle, yet it is well settled, in the cases formerly cited, that a patent for more than one invention is not void, if they are connected in their design and operation. This last is clearly the case here. They all here relate to the propelling of carriages and vessels by steam, and only differ, as they must on water, from what they are on land; a paddle-wheel being necessary on the former, and not on the latter, and one being used on the former which is likewise claimed to be an improved one. All are a part of one combination when used on the water, and differing only as the parts must when used to propel in a different element.

"In Wyeth et al. v. Stone et al., 1 Story, 288, in order to render different letterspatent necessary, it is said, the inventions must be wholly independent of each other, and distinct inventions for unconnected objects'; as one to spin cotton, and another to make paper.'

“Again, if one set of letters-patent is permissible for one combination consisting of many parts, as is the daily practice, surely one will amply suffice for two or three portions of that combination."

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