Argument for the plaintiff. whole. The proof of this position is, that the defendant uses the precise machine, copied by the plaintiff's application, and offered to pay for it; but they differed in price, which led to the contesting the originality of the plaintiff's invention. 1. It is said, in the charge of the court below, that the action is founded on the patent, which contains no grant of a right to the several machines, but is confined to the improvement in the art by means of those machines. The patent is to be made out in the manner and form prescribed by the general act. What are the manner and form? By reciting the allegations and suggestions of the petition, giving a short description of the invention or discovery, and thereupon granting an exclusive right in the said invention or discovery. The manner and form of these letters patent are a recital of: 1st. The citizenship of the patentee. 2d. The allegations and suggestions of the petition, as to both the improvement and the machines in a short description, referring to the annexed schedule for one more full and particular, in the inventor's own words. 3d. That he has petitioned agreeably to the special act. 4th. A grant of the said improvement. The description must be short and referential. It must be a description. By the first section of the act of the 10th of April, 1790, ch. 34, it was to be described clearly, truly, and fully; perhaps, because the board, constituted by that law, were to decide whether they deemed the discovery or invention sufficiently useful or important for letters patent. The patent, by express reference, adopts the special act in extenso. 'The connecting terms which and said, bind the whole to the granting clause; the allegations and suggestions recited are part of the grant; the machines are the means of every end, particular as well as general; nor can there be any practical result without them. To confine such a patent to one general result from a combination of the whole machines, nullifies it. It is never so in practice, and would operate infinite injustice in other cases. 2. But the schedule is part of the patent in all cases; in this case it is especially so. By the act of 1790, ch. 34, § 6, the patent or specifications are primâ facie proof of everything which it is incumbent on the plaintiff to establish; and by the existing law, the specification is considered as explanatory of the terms used in the patent, so as to limit or enlarge the grant. Whittemore v. Cutter, 1 Gallis., 429. But it is said, in the grant, that the schedule annexed is made part of the patent. It is made so by the public agent, to avoid trouble, litigation, and unnecessary recitals. The petition, schedule, and description are all referred to, and incorporated with the patent. What does the law mean by a recital of allegations and suggestions? What Argument for the plaintiff. more can a petitioner do than allege and suggest? He cannot shape or prescribe the manner and form of the grant. The charge denies that the schedule, at any rate, is more than descriptive of the machines, or that it would confer any right, even if claimed in the patent. But if no right would be conferred by insertion in the grant itself, what becomes of the argument which ascribes such potency to the grant? The charge says the grant can only be for the discovery as recited and described in the patent and specification. The grant is not for the parts, because it is for the whole; not in their rudiments or elements; not for wheels, cogs, or weights, nor for wood, iron, or leather; but for the peculiar properties, the new and useful practical results from each machine, and the vast improvements from their combination in this art. The charge supposes it impossible to obtain a patent for a hopper-boy, unless the plaintiff could swear that he invented that machine. But the oath is not a material, or at least not an indispensable, prerequisite. Whittemore v. Cutter, 1 Gallis., 433. 3. The special act for the relief of the plaintiff decides him to be the inventor of the machines and improvements for which he has obtained a patent. By the Constitution, art. 1, § 8, Congress have power to promote the progress of science and the useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries. This has been done by Congress in the instance of the plaintiff. The special act is an absolute grant to him, binding on all the community, and precluding any inquiry into the originality of the invention. It includes a monopoly in his invention, discovery, and improvements in the art, and in the several machines discovered, invented, improved, and applied for that purpose. The patent is to issue on a simple application in writing by the plaintiff, without any prerequisites of citizenship, oath, fee, or petition, specification, and description to be filed. The act of 1793, ch. 156, requires all these, and then grants a patent for invention or discovery; whereas this grant is for that, and for improvements in the art, and in the several machines. It is a remedial act, and should receive a liberal construction to effectuate the intentions of the legislature. Whittemore v. Cutter, 1 Gallis., 430. The patent is as broad as the law, if the grant be governed by the recital. Its construction is to be against the grantor, and according to the intent; nor is it to be avoided by subtle distinctions;-if there are two interpretations, the sensible one is to be adopted. Jenk. Cent., 138; Eystor v. Studd, Plowd., 467; The United States v. Fisher, 2 Cranch, 386, 399. 4. The improved hopper-boy of the plaintiff is the only new and useful discovery which was in evidence in the case. Argument for the plaintiff. The court misconstrued the law in their charge in this respect, inasmuch as the true construction of it is not that the patentee shall be the first and original discoverer of a patentable thing, but "the true inventor" of such a thing; that such a thing was truly discovered and patented without knowledge of its prior use, or public employment, or existence; more especially where, as in the present instance, the controversy is not between conflicting patents, but between the true patentee of a new and useful patentable thing, and a person defending himself against an infringement on the plea of its prior use by third persons who had no patent, and whose discovery, even if proved, was of a thing never in use or public existence, but in total disuse. The statute 21 Jac. 1, ch. 3, § 6, an. 1623, grants the monopoly "of the sole working or making of any manner of new manufactures, within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such grant, shall not use," &c. It is contended, under our law, that the utility is to be ascertained as well the originality; and that this, as well as that, is partly a question for the jury. The thing patentable must be useful as well as new. The useful thing patented prevails over one not useful nor patented, though in previous partial existence. This is not the case of conflicting patentees; and to destroy this patent, the previous use must appear, there being no pretense of description in a public work. The title of the act is "for the promotion of the useful arts." The first section speaks of "any new and useful arts," not known or used, &c. The sixth, of that which "had been in use, or described in some public work, anterior to the supposed discovery." What degree of use does the law exact?-a use known or described in a public work. Not merely an experimental, or essaying; nor a clandestine, nor obscure use. It must be useful, and in use-perhaps in known, if not public use; something equivalent to filing a specification on record. Now, here utility was lost sight of in search of novelty. It seemed to be taken for granted that proving the preexistence of an unpatented hopper-boy defeated the plaintiff's patent. The desuetude of the rival hopper-boy from inutility was established. The question was between a new and useful patented machine, and an useless and obsolete one never patented; and which, not being useful, never could be patented. But that the patentee's is useful, nobody questions. At all events, the question of fact, whether in use, should have been left to the jury. The jury are substituted for the board which, under the first law, was to decide whether the supposed invention was "sufficiently useful and important" for a patent. The court below suppose Stauffer to have Argument for the defendant. given his discovery to the public. But it fell into disuse; there was nothing to give. Stauffer did not know its value; if he had abandoned a field with unknown treasure in the ground, could he afterward claim the treasure? Grotius de J. B., ac. Pl. 3, ch. 20, § 28. 5. The defendant's testimony of the use of hopper-boys in mills not specified in his notice was erroneously admitted. The object of the provision in the sixth section of the Patent Law of 1793, ch. 156, was to simplify the proceedings, and to enable the defendant to give in evidence under his notice what he would otherwise be obliged to plead specially. The sufficiency of the notice is, therefore, to be tested by the rules of special pleading, which, though technical, are founded in good sense and natural justice, and are intended to put the adverse party on his guard as to what the other intends to rely upon in his defense. But such a notice as this could not answer that purpose. 6. The plaintiff's testimony of the payment for licenses to use his improved hopper-boy ought not to have been rejected. It ought to have been admitted as circumstantial evidence entitled to some weight. Mr. Hopkinson and Mr. Sergeant, contra. 1. The admissibility of evidence of the use of the hopper-boys anterior to the plaintiff's alleged invention, in mills not specifically mentioned in the notice, depends upon the construction that may be given to the sixth section of the act of the 21st of February, 1793, ch. 156, taken in connection with the notice. This section is substituted for the sixth section of the act of the 10th of April, 1790, ch. 34. The office of the section, in each of these acts, is twofold: 1st. To state what shall constitute a defense. 2d. To state the manner in which the defendant may avail himself of it. And whatever difficulties may exist, if any there be, in the construction of the section, arise from the combination of this twofold object. That this was the object of the section, is perfectly obvious. The general issue would be a denial of the allegation contemplated by the fifth section of the act of 1793 and the fourth of the act of 1790. If the acts had stopped there, it is manifest that the defendant could have had no defense but what was legally within the scope of the general issue. The tenth section would not have availed him, because the limitation of time and the grounds for repealing a patent upon a scire facias are totally different from those which ought to constitute a defense to the action. The patent may be opposed in an action upon the ground that the patentee is not the original inventor; but it can be repealed only upon the ground that he is not the true in Argument for the defendant. ventor. Fraud (proof that it was surreptitiously obtained) is the necessary basis in the one case; but error and mistake are equally available in the other. Neither could the defendant avail himself of the provisions in the prior part of the act; for these are merely directory, and they terminate in the provision made by the fifth section, which would have been conclusive. The sixth section is, therefore, a proviso to the fifth. The sixth section of 1790, made the patent prima facie evidence only, which would have opened the inquiry as to the truth of the invention. It appears, then, that the object of the proviso was, in the first place, to settle what should constitute a defense. These matters would not have been within the scope of the general issue, by the rules of pleading. They would have presented the subject of a special plea in bar. The act, therefore, at the same time provides that they may be given in evidence under the general issue. The design, in this respect, was to save the necessity of special pleading on the one hand, and, on the other, to give a reasonable notice. Does the law require the evidence to be set out? No; and yet, if surprise is to be fully guarded against, this ought certainly to be stated, in order that the plaintiff may prove that it is false, or proceeds from corrupt witnesses, &c. Is it, then, necessary that all the particulars should be given the State, county, township, town, street, square, number of the house? The law does not require it. What certainty, then, is required in the notice? The answer is obtained by ascertaining the use and intention of the section, which were to save the necessity of special pleading. What, then, must be alleged in a special plea? Not the evidence or facts, but the matter of defense, which may be that the plaintiff was not the true inventor, but that the invention was before his supposed discovery. You must state what is the ground and essence of the defense, and nothing more,-all else is surplusage: e. g., that the plaintiff was not the true inventor of the hopper-boy, but the same was in use, prior to his supposed discovery, at the mill of A. Now, its being in use at the mill of A is not of the essence of the defense, for it is as good if used at the mill of B; the essence is, that it was used before. The defendant then would be entitled to lay the place under a videlicet, and of course would not be obliged to prove it, but might prove any other. If, then, the law did not mean to increase the dif ficulty of the defendant, the same may not be done in a notice. Consider the inconveniences of a contrary practice. A machine has been used in a foreign country; the country, town, and place may be unknown. Shall I, therefore, be deprived of the benefit of my invention? Again, it is known. I am bound to give thirty days' notice |