Opinion of the court.

tions, may or may not be incomplete, or imperfectly stated, cannot be known in an appellate court. Bills of exception, when properly taken and duly allowed, become a part of the record, and, as such, cannot be contradicted.

By the admission of the parties in this case, it appears that the defendants, before the date of the plaintiff's writ, had used certain machinery, constructed in conformity with the specification of the plaintiff's patent. In the absence of any explanation or suggestion to the contrary, it must be inferred that the use of the machinery so admitted was without the license or consent of the plaintiff, and subsequent to the period when he became the owner of the patent for the extended term; and if so, the admission was sufficient, under the pleadings, to make out a prima facie case for the plaintiff. To maintain the issue on their part, the defendants proved in effect, or it was admitted, that all the machinery so used by them had been constructed, and was in use, as aforesaid, before and at the time the original letters patent expired, and that in using the machinery they had conformed to the directions contained in the specification, and that the same was so used for the purposes and in the manufacture of the articles specified and described in the before-mentioned indenture. As before stated, they had previously proved, or it had been admitted, that the owner of the original term of the patent had granted the exclusive right and license to a third party to use the invention, for the same purposes for which the defendants, both under the original and extended term of the patent, had used their machinery; but they did not prove, and there is no evidence in the case to show, any privity between themselves and that license, either by assignment or in any other manner. They offered no proof tending to show that their use of the machinery in question, under either term of the patent, was with the license, consent, or knowledge of the patentee, or of any other person who ever had or claimed to have any power or authority under him to convey the right. Provision is made by the eighteenth section of the act of Congress passed on the 4th day of July, 1836, for the extension of patents beyond the time of their limitation, on application therefor, in writing, by the patentee, to the Commissioner of the Patent Office, setting forth the grounds for such extension. By the latter clause of that section, the benefit of such renewal is expressly extended to assignees and grantees of the right to use the thing patented, to the extent of their respective interests therein. 5 Stat. at Large, 125. Under that provision, it has been repeatedly held, by this court, that a party who had purchased a patented machine, and was using it during the original term for which

Opinion of the court.

the patent was granted, might continue to use the machine during the extended term. Bloomer v. Mc Quewan, 14 How., 549; Wilson v. Rousseau, 4 How., 646. That rule rests upon the doctrine that the purchaser, in using the machine under such circumstances, exercises no rights created by the act of Congress, nor does he derive title to it by virtue of the franchise or the exclusive privilege granted to the patentee.

When the patented machine rightfully passes to the hands of the purchaser from the patentee, or from any other person by him authorized to convey it, the machine is no longer within the limits of the monopoly. According to the decision of this court in the cases before mentioned, it then passes outside of the monopoly, and is no longer under the peculiar protection granted to patented rights. By a valid sale and purchase, the patented machine becomes the private individual property of the purchaser, and is no longer protected by the laws of the United States, but by the laws of the State in which it is situated. Hence it is obvious, that if a person legally acquires a title to that which is the subject of letters patent, he may continue to use it until it is worn-out, or he may repair it or improve upon it as he pleases, in the same manner as if dealing with property of any other kind. Applying these principles to the present case, as it is exhibited in the bill of exceptions, there would be no difficulty in sustaining the instructions given to the jury, provided it appeared that the machinery used by the defendants had been legally purchased by them of the patentee or his assigns during the original term of the patent. But nothing appears in the evidence reported to warrant the inference that they were either assignees or grantees of the thing patented, within the meaning of the act of Congress or the decisions of this court. All that the indenture offered in evidence showed was the nature and extent that the defendants had used the invention, but, as is well contended by the counsel for the plaintiff, it proved nothing more. It did not prove, or tend to prove, that the defendants were rightfully in the enjoyment of the thing patented during the original term of the patent; and having failed to establish any right or license to use their machinery during the extended term by any other proof, they appear in the record as naked infringers.

Their right to continue to use the machinery as against the plaintiff is predicated in the instruction upon the assumption that they had a title to it, and were rightfully in the use of it under that title, before and at the time the original letters patent expired. That assumed fact finds no support in the evidence reported. It is clearly error for the court, in its instruction to the jury, to assume a material

Syllabus.

United

fact as proved, of which there is no evidence in the case. States v. Breitling, 20 How., 255. And when the finding of the jury accords with the theory of the instruction, thus assumed without evidence, the error is of a character to deserve correction.

Another position is assumed by the counsel of the plaintiff, which ought not to be passed over without a brief notice. They contend that the invention of the plaintiff, as described in the letters patent, is for a process, and not for a machine or machinery; and that the act of Congress extending the benefit of renewals to assignees and grantees of the right to use the thing patented, when properly construed, does not include patents for a process, but should be confined to patents for machines. That question, if properly presented, would involve the construction of the letters patent in this case, as well as the act of Congress; but as the patent is not in the record, it is not possible to determine it at the present time, and we only advert to it that it may not appear to have escaped attention.

The decree of the Circuit Court is reversed with costs, and with directions to issue a new venire.

REVERSED WITH COSTS.

LEWIS TEESE AND LEWIS TEESE, JR., PLAINTIFFS IN ERROR, v. C. P. HUNTINGDON AND MARK HOPKINS.

(23 Howard, 2.)

1. Counsel fees are not a proper element for the consideration of the jury in the estimation of damages in actions for the infringement of a patent-right. This point has been directly ruled by this court, and is no longer an open question.

2. By the fifteenth section of the Patent Act of the 4th of July, 1836, the defendant is permitted to plead the general issue and give any special matter in evidence provided notice in writing may have been given to the plaintiff or his attorney thirty days before the trial.

3. It is not necessary that this should be served and filed by an order of the court; and it is sufficient if it was served and tiled subsequently to the time when the depositions were taken and filed in court.

4. For the purpose of impeaching a witness, a question was asked of another witness, "What is the reputation of the [first] witness for moral character?” This question was objected to, and properly not allowed to be put by the court below.

5. The elementary writers and cases upon this point examined.

6. Another witness was asked, what was the reputation of the first witness for truth and veracity, who replied that he had no means of knowing, not having had any transactions with him for five years. This question was excluded by the court, which must judge according to its discretion whether or not it applies to a time too remote.

Argument for the defendants.

THIS case was brought up by writ of error from the Circuit Court of the United States for the Northern District of California.

The history of the trial in the court below is fully set forth in the opinion of this court.

It was argued by Mr. Phillips, for the plaintiff's in error, and by Mr. Gifford, for the defendants. The arguments of the counsel upon many of the points which occurred are omitted, and only the two following will be noticed.

With respect to impeaching the character of a witness, Mr. Phillips said:

Evidence was offered to impeach the character of one of defendants' witnesses, by showing his "general reputation for moral character." It was objected, that "the inquiry should be limited to his general reputation for truth and veracity"; and the objection was sustained.

The authorities on this point are to be found carefully collated in 21 American Law Journal, N. S., page 145, where it is said, that so far as the decisions in England are concerned, "they are unanimous to the point that the true criterion of the credit of a witness is his general character and conduct, and not his general character for truth and veracity. The English books will be examined in vain for a single authoritative case which in any respect limits the examination upon this point to the character for truth and veracity."

Upon examination, it will be found that this rule obtains in most of our States.

Other evidence was then offered to prove the reputation of the witness from 1850 to 1853 for truth and veracity. To which it was objected, that "the dates named were too remote, and that the reputation of the witness at a period less remote from the time of trial could be alone put in issue." This objection was also sustained.

The judgment was rendered on the 26th October, 1857, and the time covered by the inquiry was from 1850 to 1853, so that the intermediate period was less than four years.

This is certainly a short statute of limitations in favor of reputation. Whatever influence the question of time was entitled to, was for the jury to consider. The judge could not exclude the evidence as incompetent, for there is neither common-law rule nor statute to justify it.

The view which Mr. Gifford took of these points was the following: The objection to the inquiry as to Jesse Morrill's reputation for "moral character" was properly sustained.

Argument for the defendants.

1. It is not in any case proper to seek to impeach a witness, by proving what was his reputation for moral character. The inquiry should be as to his reputation for truth and veracity. United States v. Van Sickle, 2 McLean, 219; Goss v. Stimpson, 2 Sumner, 610; Gilbert v. Sheldon, 13 Barb., 623; The People v. Rector, 19 Wend., 569; Jackson v. Lewis, 13 Johns., 504; The State v. Bruce, 24 Maine, 71, 72; Phillips v. Ringfield, 1 Appl., 375; Commonwealth v. Morse, 3 Pick., 194, 196; Morse v. Pine, 4 Vt., 281; State v. Smith, 7 Id., 141; State v. Forrest, 15 Id., 435; State v. Randolph, 24 Conn., 363; State v. Howard, 9 N. H., 485; Gilchrist v. McKee, 4 Watts, 380; Chess v. Chess, 1 Penn., 32; Uhl v. Commonwealth, 6 Gratt., 706; Ward v. The State, 28 Ala., 53-(court divided;) Ford v. Ford, 7 Humph., 92; Jones v. The State, 13 Tex., 168; Perkins v. Nobley, 4 Warden's Ohio State R., 668; Taylor on Evidence, sec. 1083.

The testimony was properly excluded as to what was the reputation of Jesse Morrill in 1852 or 1853,-about five years before the trial.

1. Because it does not appear that said Morrill was a witness called by the defendants. He is not named in the notices of special matter of defense as one of the defendants' witnesses, and he is not named in the lists of witnesses examined by the defendants.

It must appear by the record that he was called by the defendants, or this objection for that reason must fall.

The law requires that an authenticated transcript of the record and an assignment of errors shall be returned with the writ; and there can be no error cognizable by this court, unless it appears from the record.

The mere assertion of facts in the assignment of errors to show error cannot be substituted for the record. Judiciary Act of 1789, sec. 22; Conkling's Treatise, 3d ed., 689; Stevens v. Gludding & Proud, 19 How., 64; Parsons v. Beddford et al., 3 Peters, 433, 445.

All the information the record gives, is that this Morrill "had, as a witness in said case, given material evidence for the defense on said trial."

There is nothing more common than for a witness called by one party to give "material evidence" for the other party. This is constantly done on cross-examinations, and often by the party opposed to the one calling the witness, making him his own witness as to certain facts.

A party cannot impeach a witness called by himself, by proving him unworthy of belief. Graham & Waterman on New Trials, 953. The court below ruled out the evidence offered to impeach Morrill,