Dissenting opinion.

by the doctrine against which I contend, he cannot patent them, because they were known and used before; or if he can, it is only in their new application and combination in perfecting the new art. In other words, he may patent the new application of the mechanical devices, but not the new application of the operative element which is the essential agent in the invention. He may patent his combination of the machinery, but not his art.

When a new and hitherto unknown product or result, beneficial to mankind, is effected by a new application of any element of nature, and by means of machines and devices, whether new or old, it cannot be denied that such invention or discovery is entitled to the denomination of a "new and useful art." The statute gives the inventor of an art a monopoly in the exercise of it as fully as it does to the inventor of a mere machine; and any person who exercises such new art without the license of the inventor is an infringer of his patent, and of the franchise granted to him by the law as a reward for his labor and ingenuity in perfecting it. A construction of the law which protects such an inventor in nothing but the new invented machines, or parts of machinery, used in the exercise of his art, and refuses it to the exercise of the art itself, annuls the Patent Law. If the law gives a franchise or monopoly to the inventor of an art as fully as to the inventor of a machine, why shall its protection not be coëxtensive with the invention in one case as well as in the other? To look at an art as nothing but a combination of machinery, and give it protection only as such, against the use of the same or similar devices or mechanical equivalents, is to refuse it protection as an art. It ignores the distinction between an art and a machine; it overlooks the clear letter and spirit of the statute; and leads to inextricable difficulties. It is viewing a statute or a monument through a microscope.

The reason given for thus confining the franchise of the inventor of an art to his machines and parts of machinery, is that it would retard the progress of improvement, if those who can devise better machines or devices, differing in mechanical principle from those of the first inventor of the art, or, in other words, who can devise an improvement in it, should not be allowed to pirate it.

To say that a patentee who claims the art of writing at a distance by means of electro-magnetism necessarily claims all future improvements in the art, is to misconstrue it, or draws a consequence from it not fairly to be inferred from its language. An improvement in a known art is as much the subject of a patent as the art itself; so, also, is an improvement on a known machine; yet if the original

Dissenting opinion.

machine be patented, the patentee of an improvement will not have a right to use the original. This doctrine has not been found to retard the progress of invention in the case of machines; and I can see no reason why a contrary one should be applied to an art.

The claim of the patentee is, that he may be protected in the exercise of his art as against persons who may improve or change some of the processes or machines necessary in its exercise. The court, by deciding that this claim is too broad, virtually decides that such an inventor of an improvement may pirate the art he improves, because it is contrary to public policy to restrain the progress of invention. Or, in other words, it may be said that it is the policy of the courts to refuse that protection to an art which it affords to a machine, which it is the policy of the Constitution and the laws to grant. 2d. Let us now consider what is the nature of the invention now under consideration.

It is not a composition of matter, or a manufacture, or a machine. It is the application of a known element or power of nature to a new and useful purpose, by means of various processes, instruments, and devices, and if patentable at all, it must come within the category of "a new and useful art." It is as much entitled to this denomination as the original art of printing itself. The name given to it in the patent is generally the act of the Commissioner, and in this, as in many other cases, a wrong one. The true nature of the invention must be sought in the specification.

The word telegraph is derived from the Greek, and signifies “to write afar off, or at a distance." It has heretofore been applied to various contrivances or devices, to communicate intelligence by means of signals or semaphores, which speak to the eye a moment. But in its primary and literal signification of writing, printing, or recording at a distance, it never was invented, perfected, or put into practical operation till it was done by Morse. He preceded Steinheil, Cooke, Wheatstone, and Davy in the successful application of this mysterious power or element of electro-magnetism to this purpose; and his invention has entirely superseded their inefficient contrivances. It is not only "a new and useful art," if that term means anything, but a most wonderful and astonishing invention, requiring tenfold more ingenuity and patient experiment to perfect it than the art of printing with types and press, as originally invented.

3d. Is it not true, as set forth in this eighth claim of the specification, that the patentee was the first inventor or discoverer of the use or application of electro-magnetism to print and record intelligible characters or letters? It is the very ground on which the court

Dissenting opinion.

agree in confirming his patent. Now, the Patent Law requires an inventor, as a condition precedent to obtaining a patent, to deliver a written description of his invention or discovery, and to particularly specify what he claims to be his own invention or discovery. If he has truly stated the principle, nature, and extent of his art or invention, how can the court say it is too broad, and impugn the validity of his patent for doing what the law requires as a condition for obtaining it? And if it is only in case of a machine that the law requires the inventor to specify what he claims as his own invention and discovery, and to distinguish what is new from what is old, then this * eighth claim is superfluous, and cannot affect the validity of his patent, provided his art is new and useful, and the machines and devices claimed separately are of his own invention. If it be in the use of the words "however developed" that the claim is to be adjudged too broad, then it follows that a person using any other process for the purpose of developing the agent or element of electro-magnetism than the common one now in use, and described in the patent, may pirate the whole art patented.

But if it be adjudged that the claim is too broad because the inventor claims the application of this element to his new art, then his patent is to be invalidated for claiming his whole invention, and nothing more. If the result of this application be a new and useful art, and if the essence of his invention consists in compelling this hitherto useless element to record letters and words, at any distance and in many places at the same moment, how can it be said that the claim is for a principle or an abstraction? What is meant by a claim being too broad? The Patent Law and judicial decisions may be searched in vain for a provision or decision that a patent may be impugned for claiming no more than the patentee invented or discovered. It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally, that his patent is affected.

The act of Congress requires the applicant for a patent to swear that "he is the original and first inventor of the art, machine, &c." It requires the Commissioner to make an examination of the alleged invention," and if it shall appear that the same has not been invented prior to the alleged invention, he shall grant a patent, &c. But if it shall appear that the applicant is not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new had before been invented," then the applicant to have leave to withdraw his application.

The thirteenth section treats of defective specifications, and their

Dissenting opinion.

remedy where the applicant, through mistake or inadvertency, had claimed "more than he had a right to claim as new."

The fifteenth section, in enumerating the defenses which a defendant may be allowed to make to a patent, states that inter alia he may show "that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new." And the proviso to the same section allows the court to refuse costs, "when the plaintiff shall fail to sustain his action, on the ground that in his specification or claim is embraced more than that of which he was the first inventor."

The seventh section of the act of March 3, 1837, specially defines the meaning of the phrase "too broad" to be, "when the patent claims more than that of which the patentee was the original and first inventor." And the ninth section of the same act, again providing for cases where, by accident or mistake, the patentee claims more than he is justly entitled to, describes it to be, "where the patentee shall have in his specification claimed to be the original inventor or discoverer of any material or substantial part of which he is not the first and original inventor, and shall have no legal and just right to the same."

Thus we see that it is only where, through inadvertence or mistake, the patentee has claimed something of which he was not the first inventor, that the court are directed to refuse costs.

The books of reports may be searched in vain for a case where a patent has been declared void for being too broad in any other

sense.

Assuming it to be true, then, for the purpose of the argument, that the new application of the power of electro-magnetism to the art of telegraphing or printing characters at a distance is not the subject of a patent, because it is patenting a principle, yet, as it is also true that Morse was the first who made this application successfully, as set forth in this eighth claim, I am unable to comprehend how, in the words of the statute, we can adjudge "that he has failed to sustain his action, on the ground that his specification or claim embraces more than that of which he was the first inventor." It is for this alone that the statute authorizes us to refuse costs.

4. Assuming this eighth claim to be too broad, it may well be said that the patentee has not unreasonably delayed a disclaimer, when we consider that it is not till this moment he had reason to believe it was too broad. But the bill claims, and it is sustained by proof, that the defendant has infringed the complainant's second patent for his improvement.

Statement of the case.

The court sustains the validity of this patent. Why, then, is the complainant not entitled to his costs? At law, a recovery on one good count is sufficient to entitle the plaintiff to recover costs; and I can see no particular equity which the defendants can claim, who are adjudged to have pirated two inventions at once.

I am of opinion, therefore, that the decree of the Circuit Court should be affirmed with costs.

ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Kentucky, and was argued by counsel; on consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed, except so much thereof as decrees that the complainants shall recover their costs in the prosecution of this suit of and from the defendants, and that that part of the said decree giving costs to the complainants be, and the same is hereby, reversed and annulled.

And it is further ordered and decreed by this court, that the parties respectively pay their own costs in this court and in the said Circuit Court.

FRANCIS O. J. SMITH, PLAINTIFF, v. HEMAN B. ELY, HENRY O'REILLY, ROBERT W. MCCOY, THOMAS MOODIE, MICHAEL B. BATEHAM, LINCOLN GOODALE, WRAY THOMAS, ALBERT B. BUTTLES, AND ROBERT NEIL.

(15 Howard, 137.)

1. The preceding case of O'Reilly and Morse having settled the principles involved in the controversy between them, this court declines to hear an argument upon technical points of pleading in a branch of the case coming from another State.

2. The case is remanded to the Circuit Court.

THIS cause came up from the Circuit Court of the United States for the District of Ohio, upon a certificate of division in opinion between the judges thereof.

An action was brought by Smith, as the assignee of Morse and Vail, against Ely, O'Reilly, and others, for an infringement of Morse's patent-rights to the telegraph, which are particularly set forth in the report of the preceding case.