Opinion of the court.

a paddle-wheel being necessary on the former, and not on the latter, and one being used on the former which is likewise claimed to be an improved one. All are a part of one combination when used on the water, and differing only, as the parts must, when used to propel in a different element.

In Wyeth et al. v. Stone et al., 1 Story, 288, in order to render different letters patent necessary, it is said, the inventions must be "wholly independent of each other, and distinct inventions for unconnected objects," as one to spin cotton, and "another to make paper."

Again, if one set of letters patent is permissible for one combination consisting of many parts, as is the daily practice, surely one will amply suffice for two or three portions of that combination.

The next point before decided was, that the description was sufficiently clear and certain. Under the instructions of the court, the jury found that it was clear enough to be understood by ordinary mechanics, and that machines and wheels could readily be made from it, considering the specification as a whole, and adverting to the drawings on file. This is all which the law requires in respect to clearness, and it does not appear necessary to add anything to what is cited and stated in the former opinion in support of the instructions given below on this point.

The court did right, too, in holding to the propriety of looking to the whole specification, and also to the drawings, for explanation of anything obscure. The drawings, then, being proper to be referred to in illustration of the specification, they could be restored when burnt, and if appearing in some respects erroneous, they could be corrected. That this last was done, and done well, was distinctly shown by Dr. Jones, a skillful draughtsman and expert. It would be unreasonable to prevent or refuse the correction of such errors, so as not to mislead nor cause contradictions; because, after all, it is the specification which governs, and the drawings merely illustrate. It is true, that it would not be proper to leave the drawings so long, not restored nor corrected, as to evince neglect, or a design to mislead the public; and the jury were allowed to decide what was a reasonable time for this purpose, under the circumstances of the case, and the duties imposed by law on the patentee. This being a point in part of law and in part of fact, it was properly submitted to the jury, and their finding must stand, unless it is shown, as has not been done, that illegal instructions were given to them concerning it, or that proper legal directions were omitted. See analogous cases,

Opinion of the court.

Chitty on Bills, 336, 379; 9 East, 347; 1 Camp., 246; Johnson v. Sutton, 1 D. & E., 514; 2 Barn. & Adol., 857, 858.

In respect to another objection, of the claim being too broad, that was fully answered in the former opinion; and so was the objection that damages could not be recovered after the fire, and before the restoration of the specification and drawings.

Certain new points are also presented on the new matter brought here by the certiorari. Among them, no one seems specially relied on, which is not involved in those already considered, except the instructions on the rule for settling the whole damages. It is true, that the verdict appears large in amount. But if too large, and the jury were properly instructed on the subject, the fault is theirs rather than the court's, and cannot be corrected here.

It is not, however, clear that it is too large, as it does not appear to have exceeded, and, indeed, it rather falls short of, the price paid for a license to make an improvement like this, to be used in so many vessels. It is the making and selling to be used, and not the selling or buying or making alone, for which full damages are usually given. 10 Wheaton, 350; Curtis on Pat., 256, note 3; 3 McLean, 427. The court, therefore, being called on to lay down some general rule, very properly informed the jury, that such price might be a suitable guide, and it is the customary one followed for making and selling patent stoves, lasts, spokes, &c., and seems once to have been treated by law as the chief guide in all patent cases,-as the act of 1791, sec. 5, (1 Stat. at Large, 322,) gave three times its amount when one either made for sale or used a patented machine.

But that law being repealed, and the damages now left open for each case, the judge correctly added, that a fair ground existed for a mitigation below that amount, if the maker of the machine appeared in truth to be ignorant of the existence of the patent-right, and did not intend any infringement. That would not, however, furnish a reason, as was insisted by the plaintiffs in error, for allowing no damages when making the machine to be used, and not, as in some cases, merely for a model, or for fancy, or philosophical illustration. Whittemore v. Cutter, 1 Gallis., 429; Jones v. Pearce, Webster's P. C., 125; 3 McLean, 583. The intent not to injure, also, never exonerates, as is contended, in these cases, from all damages for the actual injury or encroachment, though it may mitigate them. Bryce v. Dorr, 3 McLean, 583. The further general suggestion by the judge, to give only the actual damages, was well calculated to prevent anything vindictive or in excess, and justified the jury to go still lower than they did, if appearing just to them, and as has sometimes been done

in this class of cases. Gall. C. C., 420.

Dissenting opinion.

See Lowell v. Lewis, 1 Mason C. C., 182; 1

That, however, was a matter of discretion for the jury, under all the circumstances, and not a question of law for the court.

Nor will the consequence of damages so large as the present seem harsh, if thereby any further recovery should be prevented for using or selling as well as making the machine, but which point is not decided by us now, because not raised on the record. It may be added, however, in this connection, that the defendants are certainly relieved now from one consequence by way of damages or penalty which once existed, and which was to forfeit the materials of the machine to the patentee. See section 4 in act of April 10, 1790, 1 Stat. at Large, 111. It must be a very extreme case, too, where a judgment below should be reversed on account of damages like these in actions ex delicto, and when the instructions suggested to the jury the true general rule and the leading ground for mitigation, as well as against excess, and when, if appearing to be clearly excessive under all circumstances, a new trial could have been moved and had on that account in the Circuit Court.

Judgment below affirmed.

Mr. Chief Justice TANEY, Mr. Justice CATRON, Mr. Justice DANIEL, and Mr. Justice GRIER dissented.

Mr. Justice CATRON.

To the opinion just delivered, I dissent. I think the letters patent are for a single improvement on the steam-engine, and that the schedule has added two distinct inventions in addition: the one on the paddle to a wheel propelling machinery or a vessel of any kind in the water; and the second in applying the power of the shaft to turning a capstan by means of a cog-wheel. These two claims are entirely independent of the improvement claimed in the letters patent actually granted; this is for inventing a piston and shaft which turn a wheel without employing a crank. And as this controversy depends on a supposed infringement of the improved paddle, (which, in my judgment, is not covered by the letters,) I therefore think that the suit cannot be maintained on the face of the letters.

Secondly, if these three distinct improvements had been claimed and granted in the letters, and described in the schedule, then the patent would be void, as I think, because no more than one invention, distinct and disconnected from others, can be granted in the same letters. Such is the construction that has been given to the

Syllabus.

legislation of Congress at the Patent Office, and is supposed by me to be the correct one. If three independent inventions can be patented and monopolized together, so any number may be. By this means, the grant may cover many fictitious claims, with some valid ones, which latter will stand protected, so that little or no risk will be run by obtaining a grant for that which is not new; and by this mode of proceeding at the Patent Office, fictitious claims may cover and assume to monopolize the ordinary implements now in use on the farm and in the workshop, and, yet more than is now the case, harass the public with fictitious and ill-founded claims to make and sell exclusively things in daily and extensive use. Although the claim may be fictitious, still this does not protect the public from harassment, as usually men using cheap implements cannot afford to litigate in the United States courts. It would be far better to allow the claim, unjust as it is, and pay the patentee his fraudulent demand, than incur the expense of a suit, which the patentee or his assignee may well afford to prosecute.

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.

THOMAS OTIS LE ROY AND DAVID SMITH, PLAINTIFFS IN ERROR, V. BENJAMIN TATHAM, JUNIOR, GEORGE N. TATHAM, AND HENRY B. TATHAM.

(14 Howard, 156.)

1. In a patent for improvements upon the machinery used for making pipes and tubes from lead or tin, when in a set or solid state, by forcing it under great pressure from out of a receiver through apertures, dies, and cores, the claim of the patentees was thus stated: "What we claim as our invention, and desire to secure by letters patent, is the combination of the following parts above described, to wit, the core and bridge, or guide-piece, the chamber, and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same." 2. The Circuit Court charged the jury, "that the originality did not consist in the novelty of the machinery, but in bringing a newly-discovered principle into

Statement of the case.

practical application, by which an useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe.”

3. This instruction was erroneous.

4. Under the claim of the patent, the combination of the machinery must be novel. The newly-discovered principle-to wit, that lead could be forced by extreme pressure, when in a set or solid state, to cohere and form a pipe—was not in the patent; and the question whether it was or was not the subject of a patent, was not in the case.

[Mr. Justice Curtis, having been of counsel for the defendants in error, upon the letters patent drawn in question in this case, did not sit at the hearing.]

THIS case was brought up by writ of error from the Circuit Court of the United States for the Southern District of New York.

The declaration was filed by the defendants in error on the 8th of May, 1847, to recover damages in a plea of trespass upon the case, from the plaintiffs in error and Robert W. Lowber, for the alleged infringement of their patent for new and useful improvements in machinery or apparatus for making pipes and tubes from metallic substances.

The declaration alleged that John and Charles Hanson, of Huddersfield, England, were the inventors of the alleged improvements, on or before the 31st of August, 1837.

That on the 10th of January, 1840, the Hansons assigned, in writing, to H. B. & B. Tatham, two of the defendants in error, the full and exclusive right to the said improvements.

That on the 29th of March, 1841, letters patent of the United States were granted to H. B. & B. Tatham, as assignees of the Hansons, for the said improvements.

That on the 12th of October, 1841, H. B. & B. Tatham assigned to G. N. Tatham, the remaining defendant in error, one undivided third part of the said letters patent.

That on the 14th of March, 1846, the said letters patent having been surrendered, on account of the defective specifications of the said improvements, new letters patent were issued therefor on an amended specification, whereby there was granted to the plaintifïs below, their heirs, &c., for the term of fourteen years from the 31st of August, 1837, the full and exclusive right of making, vending, &c., the said improvements, a description whereof was annexed to and made a part of such patent.

That the letters patent were of the value of $50,000; and that the defendants below had wrongfully and unlawfully made, used, and