has described in his specification, and may deter the public from using it, even if discovered. He can lawfully claim only what he has invented and described, and if he claims more his patent is void. And the judgment in this case must be against the patentee, unless he is within the act of Congress which gives the right to disclaim.

The law which requires and permits him to disclaim is not penal, but remedial. It is intended for the protection of the patentee as well as the public, and ought not, therefore, to receive a construction that would restrict its operation within narrower limits than its words fairly import. It provides, "that when any patentee shall have in his specification claimed to be the first and original inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor, and shall have no legal or just claim to the same," he must disclaim in order to protect so much of the claim as is legally patented.

Whether, therefore, the patent is illegal in part, because he claims more than he has sufficiently described, or more than he invented, he must in either case disclaim, in order to save the portion to which he is entitled; and he is allowed to do so when the error was committed by mistake.

A different construction would be unjust to the public, as well as to the patentee, and defeat the manifest object of the law, and produce the very evil against which it intended to guard.

It appears that no disclaimer has yet been entered at the Patent Office. But the delay in entering it is not unreasonable. For the objectionable claim was sanctioned by the head of the office; it has been held to be valid by a Circuit Court, and differences of opinion in relation to it are found to exist among the justices of this Court. Under such circumstances, the patentee had a right to insist upon it, and not disclaim it until the highest court to which it could be carried had pronounced its judgment. The omission to disclaim, therefore, does not render the patent altogether void, and he is entitled to proceed in this suit for an infringement of that part of his invention which is legally claimed and described. But as no disclaimer was entered in the Patent Office before this suit was instituted, he cannot, under the act of Congress, be allowed costs against the wrong-doer, although the infringement should be proved. And we think it is proved by the testimony. But as the question of infringement embraces both of the reissued patents, it is proper, before we proceed to that part of the case, to notice the objections made to the second patent for the local circuits, which was originally obtained in 1846 and reissued in 1848.

It is certainly no objection to this patent, that the improvement is embraced by the eighth claim in the former one. We

have already said that this claim is void, and that the former patent covers nothing but the first seven inventions specifically mentioned.

Nor can its validity be impeached upon the ground that it is an improvement upon a former invention, for which the patentee had himself already obtained a patent. It is true that, under the act of 1836, S. 13, it was in the power of Professor Morse, if he desired it, to annex this improvement to his former speci fication, so as to make it from that time a part of the original patent. But there is nothing in the act that forbids him to take out a new patent for the improvement, if he prefers it. Any other inventor might do so; and there can be no reason, in justice or in policy, for refusing the like privilege to the original inventor. And when there is no positive law to the contrary, he must stand on the same footing with any other inventor of an improvement upon a previous discovery. Nor is he bound in his new patent to refer specially to his former one. All that the law requires of him is, that he shall not claim as new what is covered by a former invention, whether made by himself or any other person.

It is said, however, that this alleged improvement is not new, and is embraced in his former specification; and that if some portion of it is new, it is not so described as to distinguish the new from the old.

It is difficult, perhaps impossible, to discuss this part of the case so as to be understood by any one who has not a model before him, or perfectly familiar with the machinery and opera tions of the Telegraph. We shall not, therefore, attempt to describe minutely the machinery or its mode of operation. So far as this can be done intelligibly, without the aid of a model to point to, it has been fully and well done, in the opinion delivered by the learned Judge who decided this case in the Circuit Court. All that we think it useful or necessary to say is, that after a careful examination of the patents, we think the objection on this ground is not tenable. The force of the objection is mainly directed upon the receiving magnet, which, it is said, is a part of the machinery of the first patent, and performs the same office. But the receiving magnet is not of itself claimed as a new invention. It is claimed as a part of a new combination or arrangement to produce a new result. And this combination does produce a new and useful result. For by this new combination, and the arrangement and position of the receiving magnet, the local independent circuit is opened by the electric or galvanic current as it passes on the main line, without interrupting it in its course, and the intelligence it conveys is recorded almost at the same moment at the end of the line of the Telegraph and at the different local offices on its way. And it

hardly needs a model or a minute examination of the machinery to be satisfied that a Telegraph which prints the intelligence it conveys, at different places, by means of the current as it passes along on the main line, must necessarily require a different combination and arrangement of powers from the one that prints only at the end. The elements which compose it may all have been used in the former invention, but it is evident that their arrangement and combination must be different to produce this new effect. The new patent for the local circuits was, therefore, properly granted, and we perceive no well-founded objection to the specification or claim contained in the reissued patent of 1848.

The two reissued patents of 1848, being both valid, with the exception of the 8th claim in the first, the only remaining ques tion is, whether they, or either of them, have been infringed by the defendants.

The same difficulty arises in this part of the case which we have already stated in speaking of the specification and claims in the patent for the local circuits. It is difficult to convey a clear idea of the similitude or differences in the two Telegraphs to any one not familiarly acquainted with the machinery of both. The Court must content itself, therefore, with general terms, referring to the patents themselves for a more special description of the matters in controversy.

It is a well-settled principle of law, that the mere change in the form of the machinery (unless a particular form is specified as the means by which the effect described is produced), or an alteration in some of its unessential parts, or in the use of known equivalent powers, not varying essentially the machine, or its mode of operation or organization, will not make the new machine a new invention. It may be an improvement upon the former, but that will not justify its use without the consent of the first patentee.

The Columbian (O'Rielly's) Telegraph does not profess to accomplish a new purpose or produce a new result. Its object and effect is to communicate intelligence at a distance, at the end of the main line and at the local circuits on its way. And this is done by means of signs or letters impressed on paper or other material. The object and purpose of the Telegraph is the same with that of Professor Morse.

Does he use the same means? Substantially, we think he does, both upon the main line and in the local circuits. He uses upon the main line the combination of two or more galvanic or electric circuits, with independent batteries, for the purpose of obviating the diminished force of the galvanic current, and in a manner varying very little in form from the invention of Professor Morse And, indeed, the same may be said of the

entire combination set forth in the patentee's third claim. For O'Rielly's can hardly be said to differ substantially and essentially from it. He uses the combination which composes the Register, with no material change in the arrangement, or in the elements of which it consists; and with the aid of these means he conveys intelligence, by impressing marks or signs upon paper; these marks or signs being capable of being read and understood by means of an alphabet, or signs adapted to the purpose. And as regards the second patent of Professor Morse, for the local circuits, the mutator of the defendant does not vary from it in any essential particular. All of the efficient elements of the combination are retained, or their places supplied by well-known equivalents. Its organization is essentially the

same.

Neither is the substitution of marks and signs differing from those invented by Professor Morse any defence to this action. His patent is not for the invention of a new alphabet, but for a combination of powers composed of tangible and intangible elements, described in his specification, by means of which marks or signs may be impressed upon paper at a distance, which can there be read and understood. And if any marks, or signs, or letters are impressed in that manner, by means of a process substantially the same with his invention, or with any particular part of it covered by his patent, and those marks or signs can be read, and thus communicate intelligence, it is an infringement of his patent. The variation in the character of the marks would not protect it, if the marks could be read and understood.

We deem it unnecessary to pursue further the comparison between the machinery of the patents. The invasion of the plaintiff's rights, already stated, authorized the injunction granted by the Circuit Court, and so much of its decree must be affirmed. But for the reasons herein before assigned, the complainants are not entitled to costs, and that portion of the decree must be reversed, and a decree passed by this Court, directing each party to pay his own costs in this and in the Cir

cuit Court.

Art. III-DISSENTING OPINION OF JUSTICE GRIER.

SUPREME COURT OF THE UNITED STATES,

December Term, 1853.

HENRY O'RIELLY, et al., Appellants,

vs.

SAMUEL F. B. MORSE, et al., Appellees.

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

The opinion of Justice GRIER, concurred in by Justices NELSON and WAYNE.

I entirely concur with the majority of the Court that the appellee and complainant below, Samuel F. B. Morse, is the true and first inventor of the recording telegraph, and the first who has successfully applied the agent or element of nature, called electro-magnetism, to printing, and recording intelligible characters at a distance; and that his patent of 1840, finally reissued in 1848, and his patent for his improvements, as reissued in the same year, are good and valid; and that the appellants have infringed the rights secured to the patentee by both his patents. But, as I do not concur in the views of the majority of the Court, in regard to two great points of the case, I shall proceed to express my own.

I.-Does the complainant's first patent come within the proviso of the sixth section of the act of 1839; and should the term of fourteen years, granted by it, commence from the date of his patent here, or from the date of his French patent in 1838 ?

If the complainant's patent is within the provisions of this section, I cannot see how we can escape from declaring it void. The proviso declares, that" in all cases every such patent (issued under the provisions of that section) shall be limited to the term of fourteen years from the date or publication of such foreign letters patent." It is true it does not say that the patent shall be void if not limited to such term on its face; but it gives no power to the officer to issue a patent for a greater term. If the patent does not show the true commencement of the term granted by it, the patentee has it in his power to deceive the public by claiming a term of fourteen years, while in reality it may be not more than one.

But, I am of opinion, that the patent in question does not come within this proviso. The facts of the case, as connected with this point, are these: On the 6th of October, 1837, Morse filed, in the office of the Commissioner of Patents, a caveat, accompanied by a specification, setting forth his invention, and praying that it may be protected till he could finish some experiments necessary to perfect its details. On the 9th of April, 1838, he filed a formal application for a patent, accompanied by a specification and drawings. On the