Statement of the case.

cant is required to swear or affirm that he verily believes that he is the true inventor or discoverer of the art, machine, or improvement for which he solicits a patent; and he must also deliver a written description of his invention, and of the manner of using it, so clearly and exactly as to distinguish the same from all other things before known, and to enable others skilled in art to construct and use the same. That from this short analysis of the law, the following rules might be deduced: 1st. That a patent may be for a new and useful art; but it must be practical; it must be applicable and referable to something by which it may be proved to be useful; a mere abstract principle cannot be appropriated by patent. 2d. The discovery must not only be useful, but new; it must not have been known or used before in any part of the world. It was contended, by the plaintiff's counsel, that the title of the patentee cannot be impeached, unless it be shown that he knew of a prior discovery of the same art, machine, &c.; and that true and original are synonymous terms in the intention of the legislature. But, as it was not pretended that those terms meant the same thing in common parlance, neither was it the intention of the legislature to use them as such. The first section of the law, referring to the allegations of the application for a patent, speaks of the discovery as something "not known or used before the application"; and in the sixth section it is declared that the defendant may give in evidence that the thing secured by patent was not originally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery. 3d. If the discovery be of an improvement only, it must be an improvement in the principle of a machine, art, or manufacture before known or used; if only in the form or proportion, it has not the merit of a discovery which can entitle the party to a patent. 4th. The grant can only be for the discovery as recited and described in the patent and specification. If the grantee is not the original discoverer of the art, machine, &c., for which the grant is made, the whole is void. Consequently, if the patent be for the whole of the machine, and the discovery were of an improvement, the patent is void. 5th. A machine or an improvement may be new, and the proper subject of a patent, though the parts of it were before known and in use. The combination, therefore, of old machines, to produce a new and useful result, is a discovery for which a patent may be granted.

The above principles would apply to most of the questions that had been discussed. It was strongly insisted upon, by the defendant's counsel, that this patent is broader than the discovery; the evidence

Statement of the case.

proving that, in relation to the hopper-boy, for the using of which this suit is brought, the plaintiff can pretend to no discovery beyond that of an improvement in a machine known and used before the alleged discovery of the plaintiff. This argument proceeded upon the supposition that the plaintiff had obtained a patent for the hopper-boy, which was entirely a mistake. The patent was "for an improvement in the art of manufacturing flour," by means of a hopperboy and four other machines described in the specification, and not for either of the machines so combined and used. That the plaintiff is the original discoverer of this improvement, was contested by no person, and, therefore, it could not, with truth, be alleged that the patent is broader than the discovery, or that the plaintiff could not support an action on this patent against any person who should use the whole discovery.

But could he recover against a person who had made or used one of the machines which in part constitutes the discovery? The plaintiff insisted that he could, because, having a right to the whole, he is necessarily entitled to the parts of which that whole is composed. Would it be seriously contended that a person might acquire a right to the exclusive use of a machine, because when used in combination with others a new and useful result is produced, which he could not have acquired independent of that combination? If he could, then if A were proved to be the original inventor of the hopper-boy, B of the elevator, and so on as to the other machines, and either had obtained patents for their respective discoveries, or chose to abandon them to the public, the plaintiff, although it was obvious he could not have obtained separate patents for those machines, might nevertheless deprive the original inventors, in the first instance, and the public, in the latter, of their acknowledged right to use those discoveries, by obtaining a patent for an improvement consisting in a combination of those machines to produce a 'new result.

The court further charged the jury that it was not quite clear that this action could be maintained, although it was proved beyond all controversy that the plaintiff was the original inventor of this machine. The patent was the foundation of the action, and the gist of the action was the violation of a right which that instrument had conferred. But the exclusive right of the hopper-boy was not granted by this patent, although this particular machine constitutes a part of the improvement of which the plaintiff is the original inventor, and it is for this improvement, and this only, that the grant is made. If the grant, then, was not in this particular machine, could it be

Statement of the case.

sufficient for the plaintiff to prove, in this action, that he was the original inventor of it?

Again, could the plaintiff have obtained a separate patent for the hopper-boy, in case he were the original inventor of it, without first swearing or affirming that he was the true inventor of that machine? Certainly not. Has the plaintiff then taken, or could he have taken, such an oath in this case? Most assuredly he could not; because the prescribed form of the oath is, that he is the inventor of the art, machine, or manufacture for which he solicits a patent. But since the patent which he solicited was not for the hopper-boy, but for an improvement in the manufacture of flour, he might, with safety, have taken the oath prescribed by law, although he knew at the time that he was not the true inventor of the hopper-boy; and thus it would happen that he could indirectly obtain the benefit of a patent-right to the particular machine, which he could not directly have obtained without doing what, it must be admitted, in this case he had not done.

But this was not all. If the law had provided for fair and original discoverers a remedy when their rights are invaded by others, it had likewise provided corresponding protection to others, where he has not the merit. What judgment could the District Court have rendered upon a scire facias to repeal this patent, if it had appeared that the plaintiff was not the true and original inventor of the hopperboy? Certainly not that which the law has prescribed, namely, the repeal of the patent; because it would be monstrous to vacate the whole patent, for an invention of which the patentee was the acknowledged inventor, because he was not the inventor of one of the constituent parts of the invention, for which no grant is made. But the court would have no alternative but to give such a judgment, or, in effect, to dismiss the scire facias; and if the latter, then the plaintiff would have beneficially the exclusive right to a machine which could not be impeached in the way prescribed by law, although it should be demonstrated that he was not either the true or the orig inal inventor of it. And supposing the jury should be of opinion, and so find, that the plaintiff was not the original inventor of this machine, would not the court be prevented from declaring the patent void, under the provisions of the sixth section of the law, for the reason assigned why the District Court could not render judgment upon a scire facias? Indeed, it might well be doubted whether the defense now made by the defendant could be supported at all in this action, (if this action could be maintained,) inasmuch as the defendant cannot allege, in the words of the sixth section, that the thing secured by

Statement of the case.

patent was not originally discovered by the patentee, since, in point of fact, the thing patented was originally discovered by the patentee, although the hopper-boy may not have been so discovered. But if this defense could not be made, did not that circumstance afford a strong argument against this action? If the plaintiff was not the inventor of the parts, he had no right to complain that they were used by others, if not in a way to infringe his right to their combined effect. If he was the original inventor of the parts which constitute the whole discovery, or any of them, he might have obtained a separate patent for each machine of which he was the original inventor.

Upon the whole, although the court gave no positive opinion upon this question, they stated that it was not to be concluded that this action could be supported, even if it were proved that the plaintiff was the original inventor of the hopper-boy. But if an action would lie upon this patent for violation of the plaintiff's right to the hopperboy, still the plaintiff could not recover, if it had been shown to the satisfaction of the jury that he was not the original discoverer of that machine.

It appeared, by the testimony of the defendant's witnesses, that Stauffer's hopper-boy was in use many years before the alleged discovery of the plaintiff; that the two machines differed from each other very little in form, in principle, or in effect. They were both worked by the same power which works the mill; and they both stir, mix, cool, dry, and conduct the flour to the bolting-chest. Whether the flights and sweepers in the plaintiff's hopper-boy were preferable to the slips attached to the under part of the arm in Stauffer's, or whether, upon the whole, the former is a more perfect agent in the manufacture of flour than the latter, were questions which the court would not undertake to decide; because, unless the plaintiff was the original inventor of the hopper-boy, although he had obtained a separate patent for it, he could not recover in this action, however useful the improvement might be which he had made in that machine. If the plaintiff had obtained a patent for his hopper-boy, it would have been void, provided the jury should be of opinion, upon the evidence, that this discovery did not extend to the whole machine, but merely to an improvement on the principle of an old one, and if this should be their opinion in the present case, the plaintiff could not recover.

It had been contended, by the plaintiff's counsel, that the defendant, having offered to take a license from the plaintiff, if he would consent to reduce the price of it to forty dollars, he was not at liberty to deny that the plaintiff is the original inventor of this machine. This argument had no weight in it, not merely because the offer was

Argument for the plaintiff.

rejected by the plaintiff's agent, and was, therefore, as if it had not been made, but because the law prevents the plaintiff from recovering, if it appear on the trial that he was not the original inventor. If the offer amounted to an acknowledgment that the plaintiff was the original inventor, (and further it could not go,) this might be used as evidence of that fact, but it would not entitle the plaintiff to a verdict if the fact proved to be otherwise.

The plaintiff's counsel had also strongly insisted that, under the equity of the tenth section of the law, the defense set up in this case ought not to be allowed after three years from the date of the patent. This argument might, perhaps, with some propriety, be addressed to the legislature, but was improperly urged to the court. The law had declared that in an action of this kind the defendant may plead the general issue, and give in evidence that the plaintiff was not the original inventor of the machine for which the patent was granted. The legislature has not thought proper to limit this defense in any manner; and the court could not do it.

But what seemed to be conclusive of this point was, that the argument would tend to defeat altogether the provision of the sixth section, which authorizes this defense to be made; for, if it could not be set up after three years from the date of the patent, it would be in the power of the patentee to avoid it altogether, by forbearing to bring suits until after the expiration of that period. And thus, although the law has carefully provided two modes of vacating a patent improvidently granted, the patentee, though not the original inventor, and however surreptitiously he may have obtained his patent, may secure his title to the exclusive use of another's invention, if he can for three years avoid an inquiry into the validity of his title.

The last point was, that Stauffer's invention was abandoned, and, consequently, might be appropriated by the plaintiff. But if Stauffer was the original inventor of the hopper-boy, and chose not to take a patent for it, it became public property by his abandonment; nor could any person obtain a patent for it, because no other person would be the original inventor.

To this charge the plaintiff's counsel excepted.

February 26. Mr. C. J. Ingersoll, for the plaintiff, premised, that this patent granted an exclusive right for fourteen years in the improvement in the art, by means of the five machines, and for the several machines; the peculiar properties of each in its practical results, and the improvement of the art by the combination of the