Art. II.-DECISION OF SUPREME COURT OF THE UNITED STATES.

SAMUEL F. B. MORSE US. HENRY O'RIELLY.

This was an Appeal from the District Court of Kentucky, wherein Morse was granted an Injunction against O'Rielly, for an Infringement of the Morse Patents, by the use of the Columbian Telegraph. The Supreme Court perpetuates that Injunction.

HENRY O'RIELLY, EUGENE L. WHITMAN, and W. F. B. HASTINGS, Appellants, versus SAMUEL F. B. MORSE, ALFRED VAIL, and FRANCIS O. J. SMITH, Appellees.

Appeal from the Circuit Court of the United States for the District of Kentucky.

Chief Justice TANEY delivered the opinion, which was concurred in by Justices DANIEL, CATRON, and MCLEAN.

In proceeding to pronounce judgment in this case, the Court is sensible, not only of its importance, but of the difficulties in some of the questions which it presents for decision. The case was argued at the last Term, and continued over by the Court for the purpose of giving it a more deliberate examination, And since the continuance, we have received from the counsel on both sides printed arguments, in which all of the questions raised on the trial have been fully and elaborately discussed.

The appellants take three grounds of defence: In the first place, they deny that Professor Morse was the first and original inventor of the Electro-Magnetic Telegraphs, described in his two reissued patents of 1848. Secondly, they insist that if he was the original inventor, the patents under which he claims have not been issued conformably to the acts of Congress, and do not confer on him the right to the exclusive use. And thirdly, if these two propositions are decided against them, they insist that the Telegraph of O'Rielly is substantially different

from that of Professor Morse, and the use of it, therefore, no infringement of his rights.

In determining these questions, we shall, in the first instance, confine our attention to the patent which Professor Morse obtained in 1840, and which was reissued in 1848. The main dispute between the parties is upon the validity of this patent; and the decision upon it will dispose of the chief points in controversy in the other.

In relation to the first point, (the originality of the invention,) many witnesses have been examined on both sides.

It is obvious that, for some years before Professor Morse made his invention, scientific men in different parts of Europe were earnestly engaged in the same pursuit. Electro-Magnetism itself was a recent discovery, and opened to them a new and unexplored field for their labors, and minds of a high order were engaged in developing its power, and the purposes to which it might be applied.

Professor Henry, of the Smithsonian Institute, states in his testimony, that prior to the winter of 1819-20, an Electro-Magnetic Telegraph-that is to say, a Telegraph operating by the combined influence of electricity and magnetism-was not pos sible; that the scientific principles on which it is founded were until then unknown; and that the first fact of Electro-Magnetism was discovered by Oersted, of Copenhagen, in that winter, and was widely published, and the account everywhere received with interest.

He also gives an account of the various discoveries subsequently made from time to time, by different persons in different places, developing its properties and powers; and among them his own. He commenced his researches in 1828, and pursued them with ardor and success from that time until the Telegraph of Professor Morse was established and in actual operation. And it is due to him to say that no one has contributed more to enlarge the knowledge of Electro-Magnetism, and to lay the foundations of the great invention of which we are speaking, than the professor himself.

It is unnecessary, however, to give in detail the discoveries. enumerated by him-either his own, or those of others. But it appears from his testimony, that very soon after the discovery made by Oersted, it was believed by men of science that this newly-discovered power might be used to communicate intelligence to distant places. And before the year 1823, Ampère, of Paris, one of the most successful cultivators of physical science, proposed to the French Academy a plan for that purpose. But his project was never reduced to practice. And the discovery made by Barlow, of the Royal Military Academy at Woolwich, England, in 1825, that the galvanic current greatly diminished

in power as the distance increased, put at rest for a time all attempts to construct an Electro-Magnetic Telegraph. Subsequent discoveries, however, revived the hope; and in the year 1832, when Professor Morse appears to have devoted himself to the subject, the conviction was general among men of science everywhere, that the object could, and, sooner or later, would be accomplished.

The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect after a certain distance had been traversed. But encouraged by the discoveries which were made from time to time, and strong in the belief that an Electro-Magnetic Telegraph was practicable, many eminent and scientific men in Europe, as well as in this country, became deeply engaged in endeavoring to surmount what appeared to be the chief obstacle to its success. And in this state of things, it ought not to be a matter of surprise, that four different Magnetic Telegraphs, purporting to have overcome the difficulty, should be invented, and made public so nearly at the same time that each has claimed a priority; and that a close and careful scrutiny of the facts in each case is necessary to decide between them. The inventions were so nearly simultaneous, that neither inventor can be justly accused of having derived any aid from the discoveries of the other.

One of these inventors, Doctor Steinheil, of Munich, in Germany, communicated his discovery to the Academy of Science in Paris, on the 19th of July, 1838, and states in his communication that it had been in operation more than a year.

Another of the European inventors, Professor Wheatstone, of London, in the month of April, 1837, explained to Professors Henry and Bache, who were then in London, his plan of an Electro-Magnetic Telegraph, and exhibited to them his method of bringing into action a second galvanic circuit in order to provide a remedy for the diminution of force in a long circuit; but it appears by the testimony of Professor Gale, that the patent to Wheatstone & Cooke was not sealed until January 21, 1840, and their specification was not filed until the 21st of July, in the same year; and there is no evidence that any description of it was published before 1839.

The remaining European patent is that of Edward Davy. His patent, it appears, was sealed on the 4th of July, 1838, but his specification was not filed until January 4, 1839; and when these two English patents are brought into competition with that of Morse, they must take date from the time of filing their respective specifications. For it must be borne in mind that, as the law then stood in England, the inventor was allowed six

months to file the description of his invention after his patent was sealed, while, in this country, the filing of the specification is simultaneous with the application for patents.

The defendants contend that all, or at least some one of these European Telegraphs, were invented and made public before the discovery claimed by Morse; and that the process and method by which he conveys intelligence to a distance is substantially the same, with the exception only of its capacity for impressing upon paper the marks or signs described in the alphabet he invented.

Waiving, for the present, any remarks upon the identity or similitude of these inventions, the Court is of opinion that the first branch of the objection cannot be maintained, and that Morse was the first and original inventor of the Telegraph described in his specification, and preceded the three European inventions relied on by the defendants.

The evidence is full and clear that when he was returning. from a visit to Europe, in 1832, he was deeply engaged upon this subject during the voyage; and that the process and means were so far developed and arranged in his own mind, that he was confident of ultimate success. It is in proof that he pursued these investigations with unremitting ardor and industry, interrupted occasionally by pecuniary embarrassments; and we think that it is established by the testimony of Professor Gale and others, that early in the spring of 1837, Morse had invented his plan for combining two or more Electric or Galvanic Circuits, with independent Batteries, for the purpose of overcoming the diminished force of Electro-Magnetism in long circuits, although it was not disclosed to the witness until afterwards; and that there is reasonable ground for believing that he had so far completed his invention, that the whole process, combination, powers, and machinery, were arranged in his mind, and that the delay in bringing it out arose from his want of means; for it required the highest order of mechanical skill to execute and adjust the nice and delicate work necessary to put the Telegraph into operation, and the slightest error or defect would have been fatal to its success. He had not the means at that time to procure the services of workmen of that character; and without their aid no model could be prepared which would do justice to his invention; and it moreover required a large sum of money to procure proper materials for the work. He, however, filed his caveat on the 6th of October, 1837, and on the 7th of April, 1838, applied for his patent, accompanying his application with a specification of his invention, and describing the process and means used to produce the effect. It is true that O'Rielly in his answer alleges that the plan by which he now combines two or more galvanic or electric currents, with independent bat

teries, was not contained in that specification, but discovered and interpolated afterwards; but there is no evidence whatever to support this charge. And we are satisfied from the testimony, that the plan, as it now appears in his specification, had then been invented, and was actually intended to be described.

With this evidence before us, we think it is evident that the invention of Morse was prior to that of Steinheil, Wheatstone, or Davy. The discovery of Steinheil, taking the time which he himself gave to the French Academy of Science, cannot be understood as carrying it back beyond the months of May or June, 1837; and that of Wheatstone, as exhibited to Professors Henry and Bache, goes back only to April in that year. And there is nothing in the evidence to carry back the invention of Davy beyond the 4th of January, 1839, when his specification was filed, except a publication said to have been made in the London Mechanics Magazine, January 20, 1838; and the invention of Morse is justly entitled to take date from early in the spring of 1837. And in the description of Davy's invention, as given in the publication of January 20, 1838, there is nothing specified which Morse could have borrowed; and we have no evidence to show that his invention ever was or could be carried into successful operation.

In relation to Wheatstone, there would seem to be some discrepancy in the testimony. According to Professor Gale's testimony, as before mentioned, the specification of Wheatstone and Cooke was not filed until July 21, 1840, and his information is derived from the London Journal of Arts and Sciences. But it appears by the testimony of Edward F. Barnes, that this Telegraph was in actual operation in 1839. And in the case of the Electric Telegraph Company vs. Brett & Little, 10 Common Pleas Reports, by Scott, his specification is said to have been filed Dec. 12, 1837. But if the last-mentioned date is taken as the true one, it would not make his invention prior to that of Morse. And even if it would, yet this case must be decided by the testimony in the record, and we cannot go out of it, and take into consideration a fact stated in a book of reports. Moreover, we have noticed this case merely because it has been pressed into the argument. The appellants do not mention it in their answer, nor put their defence on it. And if the evidence of its priority was conclusive, it would not avail them in this suit. For they cannot be allowed to surprise the patentee by evidence of a prior invention of which they gave him no notice.

But if the priority of Morse's invention was more doubtful, and it was conceded that in fact some one of the European inventors had preceded him a few months or a few weeks, it would not invalidate his patent. The act of Congress provides that when the patentee believes himself to be the first inventor, a