Dissenting opinion. that "every patent," "the exclusive right under any patent," "the thing patented," may be assignable. The fact or existence of a patent is in every instance inseparable from the right given. It is this fact, and this only, which impresses the quality of assignability. Of course, under these provisions there could be no transfer of the legal title previously to a patent. By section six of the act of Congress approved March 3, 1837, it is provided, that thereafter any patent to be issued may be made to the assignee of the inventor or discoverer, upon the conditions set forth in this section. Yet, still it is presumed, that until the issuing of a patent, so far is it from being true that a legal estate or title existed in such assignee, it is clear, on the contrary, that no legal title existed before the patent in the inventor himself; for it is the patent which constitutes his title. Of course, then, the assignee can, at most, hold nothing but an equity under such an assignment, which he may insist upon under this assignment against the inventor or against the government; but he has no legal title by force merely of such an assignment; and, a fortiori, he has no legal title if the patent, notwithstanding such an assignment, is in fact issued to the inventor, but is thereby entirely excluded from all pretension to a legal title. Thus, in the case before us, the patent under which the plaintiff claims was, subsequently to the agreement between Fitzgerald and Enos Wilder, issued to Fitzgerald, the inventor, and, according to the proofs in the cause, has never been renewed to Enos Wilder, nor to any claimant under him, nor been assigned to any such claimant, but remains still in the alleged inventor, Fitzgerald. It seems to me, then, indisputable, that the legal title indispensable for the maintenance of this suit at law never was in the plaintiff, and that he could not maintain the action. The second instance in which I hold the learned justice who tried this cause to have erred, is that in which he instructed the jury as follows: "That if Conner had not made his discovery public, but had used it simply for his own private purpose, and it had been finally forgotten or abandoned, such discovery and use would be no obstacle to the taking out of a patent by Fitzgerald, or those claiming under him, if he be an original, though not the first, inventor or discoverer of the improvement." In considering this instruction of the learned judge, the first vice with which it appears to be affected is its violation of a rule thought to be universally applicable to instructions to juries in trials at law; and that rule is this, that instructions should always arise out of, and be limited to, the facts or evidence in the cause to which the questions of law propounded from the bench should be Dissenting opinion. But strictly applicable; and that instructions which are general, abstract, or not springing from, and pertinent to, the facts of the case, are calculated to mislead the jury, and are therefore improper. Tried by this rule, the instruction of the learned judge, so far as it relates to Conner's not having made his discovery public, or having finally forgotten or abandoned it, is certainly irrelevant to, and unsustained by, any evidence in the record. So far is the existence of such testimony from being shown, the converse is proved and is justly inferable throughout; for although it does not appear that Conner advertised his invention in the public papers, or claimed a patent for it, it is admitted that he used this safe in an extensive business establishment, to which it is certain, from the nature of his business, the public had access; and it is not pretended that he made any effort at concealment of what he had invented, and the record is entirely destitute of evidence of an abandonment of his invention. As to the assumption of his having forgotten it, there is neither a fact, an inquiry, nor conjecture in the testimony pointing to such a conclusion. The instruction appears to me to be wholly gratuitous and irrelevant. supposing this instruction to have been founded upon testimony introduced before the jury, let us consider for a moment its correctness as a rule of law applicable to this cause. This charge, it must be recollected, admits that Conner was, or might have been, the first inventor; and, notwithstanding, asserts that Fitzgerald, though posterior in time, might, upon the conditions and considerations assumed by the judges, become the owner of the right. Are these conditions warranted, either by the rules of public policy, or by the terms and language of legislative provisions on such subjects? It is said that patent privileges are allowed as incitements to inventions and improvements by which the public may be benefited. This position, that may be conceded in general, should not be made a means of preventing the great and public purposes its legitimate enforcement is calculated to secure. The admission of this principle leaves entirely open the inquiries, whether he is more the benefactor of the public who makes a useful improvement which he generously shares with his fellow-citizens, or he who studies some device which he denies to all, and limits, by every means in his power, to a lucrative monopoly; and still more, whether the latter shall be permitted to seize upon that which had already (as is here admitted) been given to the public, thereby to levy contributions, not only on the community at large, but upon him even who had been its generous benefactor. It was doubtless to prevent consequences like those here presented, that the priority and originality of inventions are so uniformly Dissenting opinion. and explicitly insisted upon in all the legislation of Congress, as will presently be shown. The tendency of the learned judge's charge to mislead the jury, from its want of precision, and its failure to define any certain predicament upon which the action of the jury should be founded, is, of itself, an insuperable objection to that charge. Thus, it is said if Conner "had not made his discovery public." In what mode? it may be asked. What form of publicity did the learned judge intend the jury should require? It is shown that Conner used his safe publicly; that is, he concealed it from no one; and if any mode or kind of publication or concealment was requisite, either to establish or conclude the right of Conner, or to conclude common right, (a delinquency in the nature of a forfeiture,) surely that mode, if found either in any statute or in the rules of the common law, ought to have been clearly laid down, so as to guard the rights of all. In the next place, it is said, by the learned judge, that if Conner had abandoned this improvement which the charge admits him to have invented, this would justify a patent to another who had not known of the improvement, although a subsequent inventor. I have always understood it to be indisputable law, that wherever an inventor abandons or surrenders an invention or improvement which he has certainly made, and neither claims an exclusive right in himself nor transfers it to another, the invention or improvement is given to the public; but by the charge in this case, such an abandonment transfers an exclusive right to one who, by the case supposed, is admitted not to be the first inventor. So, too, with respect to the hypothesis of the learned judge, that the invention had or might have been forgotten. To this, the same objections of vagueness and uncertainty, and the graver objection of injustice to the real inventor or to the public, are applicable. By whom, and for what interval of time, must this inprovement have been forgotten, in order to transfer it from the origi nator thereof? For a term of years? And if so, for how long a term? But suppose he forgets it for his lifetime, shall his executor or his posterity, upon the exhibition of indisputable proofs of the invention, yea, the very machine itself, perfect in all its parts and in its operation, be cut off? This surely cannot be; but, at any rate, the jury should have been furnished with some rule or measure of obliviousness, if this was to be made the substantive cause of deprivation as to the original inventor, or the foundation of right, and of exclusive right, in one confessedly not the first inventor. An attempt has been made to compare the doctrine propounded by the court to what it might be thought is the law as applicable to the discovery, or rather recovery, of the processes employed in what have been called the lost arts. Dissenting opinion. This illustration is, in itself, somewhat equivocal, and by no means satisfactory; for if that process could certainly be shown to be the same with one claimed by the modern inventor, his discovery could scarcely have the merit of originality, or be the foundation of exclusive right. But, in truth, the illustration attempted to be drawn from a revival of a lost art is not apposite to the present case. The term lost art is applicable peculiarly to certain monuments of antiquity still remaining in the world, the process of whose accomplishment has been lost for centuries, has been irretrievably swept from the earth, with every vestige of the archives or records of the nations with whom those arts existed, and the origin, or even the identity, of which process none can certainly establish. And if a means of producing the effect we see and have amongst us be discovered, and none can, either by history or tradition, refer to a similar or to the identical process, the inventor of that means may so far claim the merit of originality, though the work itself may have been produced possibly by the same means. But not one principle drawn from such a state of things can be applied to a recent proceeding, which counts from its origin scarcely a period of fifteen years. In fine, this ruling of the learned judge is regarded as being at war not less with the policy and objects than it is with the express language of all the legislation by Congress upon the subject of patent-rights, which legislation has uniformly constituted priority of invention to be the foundation and the test of all such rights. Thus, in the act of April 10, 1790, the first Patent Law, (1 Statutes at Large, 109,) it is declared, by the first section, "That upon the application of any person or persons, &c., setting forth that he, she, or they hath or have invented or discovered any useful art, &c., not before known or used," &c.; and the second section of the same statute, requiring a specification of any invention or discovery, declares that it shall be so described "as to distinguish it from all other things known or used." The act of February 21, 1793, (1 Statutes at Large, 318,) provides, that when any citizen or citizens of the United States shall allege that he or they have invented any "new and useful art, &c., not known or used before the application," &c. By the act of April 17, 1800, (2 Statutes at Large, 38,) which extends the privilege of patents to aliens, proof is required that the art, invention, or discovery hath not been known or used in that or any foreign country. It is true, that this requisition has been so far relaxed as to admit of the patenting in this country inventions which had been invented and used abroad; but, with respect to this country, the invention, &c., must still be original. Syllabus. In the act of July 4, 1836, (5 Statutes at Large, 117,) reorganizing the Patent Office, the language of the sixth section is as follows: "That any person or persons having discovered or invented any new and useful art, &c., not known or used by others before his or their discovery," &c. The language and import of the laws here cited are too plain to require comment; and I think that the production of a single instance from the statute-book may safely be challenged, by which the requisites above mentioned have been dispensed with. Every law, on the contrary, has emphatically demanded originality and priority as indispensable prerequisites to patent privileges, and every aspirant to such privileges is expressly required to swear to these prerequisites, as well as to establish them. These tests ordained by the laws are not only founded upon the true reason for the privileges conferred, but they are simple and comprehensible; whereas the innovations permitted by the ruling of the learned judge not only conflict with the true reason and foundation of patent privileges, but tend to an uncertainty and confusion which cannot but invite litigation and mischief. I think that the judgment of the Circuit Court should be reversed, and the cause remanded for a venire facias de novo. Mr. Justice GRIER also dissented. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of New York, and was argued by counsel; on consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, affirmed with costs, and damages at the rate of six per centum per annum. AFFIRMED WITH COSTS. CHARLES J. GAYLER AND LEONARD BROWN, PLAINTIFFS IN ERROR, V. BENJAMIN G. WILDER. (10 Howard, 509.) 1. After a case has been decided, and judgment pronounced by this court, it is too late to move to open the judgment for the purpose of amending the bill of exceptions, upon the ground that material evidence which might have influenced the judgment of this court was omitted in the bill. 2. If there was any error or mistake in framing the exception, it might have been corrected by a certiorari, if the application had been made in due time and |