Statement of the case. ceedings upon the rule to show cause are summary; and that when it is made absolute, it is not that the patent be repealed, but only that process issue to try the validity of the patent, on the suggestion stated in the complaint. That this process is in the nature of a scire facias at the common law, to repeal patents, and the issues of facts, if any, are to be tried, not by the court, but by a jury; that the judgment upon this process is in the nature of a judgment on a scire facias at common law, upon which a writ of error lies, as in other cases, to the Circuit Court, where there is matter of error apparent on the record, by bill of exceptions or otherwise. That the patent itself is slight but prima facie evidence, in favor of the patentee, that it is his invention; that if it appear that he is but a joint inventor, and he takes out the patent as his sole invention, it is an obtaining of the patent upon false suggestion within the act. Stearns v. Barrett, 1 Mason's R., 11. The remaining sections of the act (11, 12) contain no matter of any general importance; the eleventh being directory only as to the fees of office, and the twelfth being a repealing clause of the act of 1790. EVANS V. EATON. (7 Wheaton, 356.) 1. A party cannot entitle himself to a patent for more than his own invention; and if the patent be for the whole of a machine, he can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation. 2. If the same combination existed before in machines of the same nature up to a certain point, and the party's invention consists in adding some new machinery, or some improved mode of operation to the old, the patent should be limited to such improvement; for if it includes the whole machine, it includes more than his invention, and therefore cannot be supported. 3. When the patent is for an improvement, the nature and extent of the improvement must be stated in the specification, and it is not sufficient that it be made out and shown at the trial, or established by comparing the machine specified in the patent with former machines in use. 4. The former judgment of this court in the same case, commented on, explained, and confirmed. 5. A person having an interest only in the question, and not in the event of the suit, is a competent witness. 6. In general, the liability of a witness to a like action, or his standing in the same predicament with the party sued, if the verdict cannot be given in evidence for or against him, is an interest in the question, and does not exclude him. ERROR to the Circuit Court of Pennsylvania. This is the same case which was formerly before this court, and is reported ante, vol. 3, p. 454; and by a reference to that report the form of the patent, the nature of the action, and the subsequent proceedings will fully appear. The cause was now again brought before the court upon a writ of error to the judgment of the Circuit Statement of the case. Court, rendered upon the new trial had in pursuance of the mandate of this court. Upon the new trial, several exceptions were taken by the counsel. for the plaintiff, Evans. The first was to the admission of one Frederick as a witness for the defendant, upon the ground of his interest in the suit. The witness, on his examination on the roir dire, denied that he had any interest in the cause, or that he was bound to contribute to the expenses of it. He said that he had not a hopper-boy in his mill at present, it being then in court; that it was in his mill about three weeks ago, when he gave it to a person to bring down to Philadelphia; and that his hopper-boy spreads and turns the meal, cools it some, dries it, and gathers it to the boltingchest. Upon this evidence, the plaintiff's counsel contended that Frederick was not a competent witness. But the objection was overruled by the court. Another exception was to the refusal of the court to allow the deposition of one Shetter to be read in evidence by the plaintiff, which had been taken according to a prevalent practice of the State courts, instead of being taken pursuant to the provisions of the act of Congress. But the principal exceptions were to the charge by the Circuit Court, in summing up the cause to the jury, which it is deemed necessary here to insert at large. WASHINGTON, J. This is an action for an infringement of the plaintiff's patent, which the plaintiff alleges to be: 1. For the whole of the machine employed in the manufacture of flour, called the hopper-boy. 2. For an improvement on the hopper-boy. The question is, is the plaintiff entitled to recover upon either of these claims? The question is stated thus singly, because the defendant admits that he uses the very hopper-boy for which the patent is, in part, granted, and justified himself by insisting: 1st. That the plaintiff was not the original inventor of, but that the same was in use prior to the plaintiff's patent, the hopper-boy as patented. 2d. That his patent for an improvement is bad, because the nature and extent of the improvement is not stated in his specification; and if it had been, still the patent comprehends the whole machine, and is therefore too broad. 1st. The first is a mixed question of fact and law. In order to enable you to decide the first, it will be well to attend to the descrip Statement of the case. tion which the plaintiff has given to this machine in his specification, a model of which is before you. Its parts are: (1.) An upright round shaft, to revolve on a pivot in the floor. (2.) A leader or upper arm. (3.) An arm set with small inclining boards, called flights and sweepers. (4.) Cords from the leader to the arm, to turn it. (5.) A weight passing over a pulley, to keep the arm tight on the meal. (6.) A log at the top of the shaft, to turn it, which is operated upon by the water-power of the mill. The flights are so arranged as to track the one below the other, and to operate like plows, and at · every revolution of the machine to give the meal two turns towards the center. The sweepers are to receive the meal from the elevator, and to trail it round the circle for the flights to gather it to the center, and also to sweep the meal into the bolt. The use of this machine is stated to be: to spread any granulated substance over a floor, to stir and expose it to the air, to dry and cool it, and to gather it to the bolt. The next inquiry under this head is, when was this discovery made? Joseph Evans has sworn that, in 1783, the plaintiff informed him that he was engaged in contriving an improvement in the manufactory of flour, and had completed it in his mind some time in July of that year. In 1784, he constructed a rough model of the hopper-boy, but, having no cords from the extremities of the leader to those of the arm, it was necessary, in making his experiments, to turn round the arm by hand. In 1785, he set up a hopper-boy in his mill, resembling the model in court and the machine described in his specification. The evidence of Mr. Anderson strongly supports this witness, and, indeed, the discovery, as early as 1784 or 1785, is scarcely controverted by the defendant. The defendant insists that a hopper-boy similar to the plaintiff's was discovered and in use many years anterior even to the year 1783, and relies upon the testimony of the following witnesses: Daniel Stauffer, who deposes that he first saw the Stauffer hopperboy in his father's, Christian Stauffer's, mill, in the year 1774; in the year 1775 or 1776, he erected a similar one in the mill of his brother Henry, and another in Jacob Stauffer's mill, in 1777, 1778, or 1779. Philip Frederick swears that in 1778 he saw a Stauffer hopperboy in operation in Christian Stauffer's mill, and in the year 1783 he saw one in Jacob Stauffer's mill, and another in U. Charles's mill, and that it was always called Stauffer's machine. George Roup stated that in 1784 he erected one of these hopperboys in the mill of one Braniwar, and that in 1782 Abraham Stauf Statement of the case. fer described to him a similar machine, which his father used in his mill. Christopher Stauffer, the son of Christian, has sworn that his father, having enlarged his mill in the year 1780, erected a new hopper-boy of the description above mentioned, which is still in use in the same mill, now owned by Peter Stauffer. If these witnesses are believed by the jury, they establish the fact asserted by the defendant, that the Stauffer hopper-boy was in use prior to the plaintiff's discovery. The next inquiry is into the parts, operation, and use of the Stauffer hopper-boy. This consists of an upright square shaft, which passes lightly through a square mortise in an arm, underneath which are fixed slips of wood, called flights, and the arm is turned by a log on the upper end of it, which is moved by the power which moves the mill. The arm, with the flights, operates as it turns upon the meal placed below it, and its use is, in a degree, to cool the meal and to conduct it to the bolt. It will now be proper to compare this machine with the plaintiff's. They agree in the following particulars: They each consist of a shaft, or log, to turn it by the power of the mill, and an arm with flights on the under side of it; they each operate on the mill below the arm, to cool, dry, and conduct it to the bolt. In what do they differ? The plaintiff's shaft is round, and consequently could not turn the arm, into which it is loosely inserted, if it were not for the cords which connect the extremities of the arm to those of the leader. The shaft of the Stauffer hopper-boy is square, and therefore turns the arm without the aid of a leader or of cords. It has neither a weight nor pulley, nor are the flights arranged in the manner the plaintiff's are, and consequently it does not, in the opinion of most of the witnesses, cool or prepare the flour for packing as well as the plaintiff's. The question of law now arises, which is, are the two machines, up to the point where the difference commences, the same in principle, so as to invalidate the plaintiff's claim to the hopper-boy as the original inventor of it? I take the rule to be, and so it has been settled in this and in other courts, that if the two machines be substantially the same, and operate in the same manner to produce the same result, though they may differ in form, proportions, and utility, they are the same in principle; and the one last discovered has no other merit than that of being an improved imitation of the one before discovered and in use, for which no valid patent can be granted, because he cannot be considered as the original inventor of the ma Statement of the case. chine. If the alleged inventor of a machine, which differs from another previously patented merely in form and proportion, but not in principle, is not entitled to a patent for an improvement, which he cannot be by the second section of the law, he certainly cannot, in a like case, claim a patent for the machine itself. The question for the jury, then, is, are the two hopper-boys substantially the same in principle?—not whether the plaintiff's hopper-boy is preferable to the other. Because if that superiority amounts to an improvement, he is entitled to a patent only for an improvement, and not for the whole machine. In the latter case, the patent would be too broad, and therefore void when the patent is single. If you are of opinion that the plaintiff is not the original inventor of the hopper-boy, he cannot obtain a verdict on that claim, unless his is an excepted case. The first, second, third, and sixth sections. of the general Patent Law conclusively support this opinion. But the judgment of the Supreme Court in this case, (3 Wheat. Rep., 519, ante,) is relied upon by the plaintiff's counsel to prove that this is an excepted case; insomuch that the plaintiff is entitled to a verdiet, although you should be satisfied that he is not the original inventor of the hopper-boy. But we are perfectly satisfied that the interpretation put upon the last clause of the judgment by the plaintiff's counsel is incorrect; and that for the following reasons: 1. The question of priority of invention was not before the Supreme Court, and it is therefore incredible that any opinion, much less a judgment, would have been given upon that point. The error in the charge, which this part of the judgment was obviously intended to correct, is stated by the Chief Justice in the following words: "The second error alleged in the charge, is in directing the jury to find for the defendant, if they should be of opinion that the hopper-boy was in use prior to the improvement alleged to be made thereon by Oliver Evans. "This part of the charge seems to be founded on the opinion that if the patent is to be considered as a grant of the exclusive use of distinct improvements, it is a grant for the hopper-boy itself, and not for an improvement on the hopper-boy." Page 512. It contradicts what is stated on page 517, where it is said that the plaintiff's claim is to the machine "which he has invented," &c. Now, if he did not invent the hopper-boy, he has no claim to it; and if‘so, could the court mean to say that he was nevertheless entitled to recover under that claim? Such a decision was certainly not called for by the terms of the "act for the relief of Oliver Evans," but would seem to be in direct violation of it. The act directs a patent |