Art. I.-THE AMERICAN ELECTRO-MAGNETIC TELEGRAPH.

BY HON. AMOS KENDALL.

An Extract from an Argument submitted to the Supreme Court of the United States.

SELDOM, if ever, has a more important case been brought before the Supreme Court of the United States for its decision.

It is important on account of the pecuniary interests involved in it; it is important as involving the fame of a distinguished citizen, and through him, to some extent, the fame of our common country. It is transcendently important in the principles of patent law which it presents for final decision by this tribunal.

It is now to be tested whether Prof. Morse is to share the fate of so many distinguished inventors, who have gone before him; whether individuals or the public, eager to possess the fruits of his mental labor before they rightfully become public property, shall be permitted to gratify their cupidity; whether Prof. Morse, like the inventor of the cotton gin, is to lose the profits of his invention, while thousands of his instruments, the originality of which no man doubts, resound throughout the land, almost in the presence of the tribunal which must decide upon his patents.

It is now to be tested, whether American courts are hereafter to consider patent privileges as the price paid by the Government for the fruits of mental labor, to be held as sacred from piracy, theft, or trespass, as any other species of private property; or whether, like the English courts for a long period, now happily at an end, they are still to confound them with

odious monopolies, of what, before the issue of the special grants, had become the property of the public.

It is now to be tested, whether American courts, as the English courts so long did, are hereafter to look to machinery or instrumentalities as the only objects to be protected by patents, and avail themselves of errors or variances in structure or description, not fatal to the result, for the purpose of annulling patent rights; or whether they shall look through the means to the end, as the real object of protection, and in their decisions secure the results to the inventor, if arrived at by any mode intelligibly described by him, especially if the process be new.

We confidently assert, that if this Court come up to the principles established by the highest courts in England, enough is admitted by our adversaries to entitle us to a decree in our favor.

A leading principle decided in England is, that when an inventor has by a new principle, or a new application of a known principle, power or substance, produced a new result, or an improved result, and has intelligibly described the manner in which he uses those means, they being of his own invention, and has patented his means, nobody can deprive him of the exclusive use of his new principle, or new application, or new result, by any improved or different means.

At page 11 of Mr. Chase's printed argument, he asks, "What Morse actually invented?" and he proceeds to reply, "He invented the first practically useful MARKING Telegraph." "The evidence in this case," says he, "I freely admit must satisfy the Court, that though his patent and the practical application of his invention, were subsequent in date to some foreign patents and to the actual construction. of some foreign telegraphs, still, his was the first practically useful marking telegraph. For that telegraph, beyond a doubt, he was entitled to a patent."

It is also admitted, that Morse invented the means by which this new and useful result was accomplished. "Morse," says the learned counsel, "attached a marker to the armature of the magnet. He brought the paper and its revolving cylinder within the stroke of the marker. He adopted a contrivance for withdrawing the marker from contact with the paper at the instant of the cessation of the magnetic impulse. The combination of these contrivances, with the known means of operation from the distant station, enabled him to produce marks at a distance, &c."

Again: "It occurred to him [Morse] that the motion which previous discoverers and inventors had been able to produce by means of electro-magnetism, might be made to mark dots and horizontal lines. A simple contrivance sufficed for this."

Though we by no means concede, that these admissions cover all of Morse's invention, or any considerable part of it, yet they cover enough to secure to him not only those means, but the new result obtained by their use. Having been the first to invent a practically useful marking Electro-magnetic Telepraph by any contrivances, however simple, which "occurred to him," or were by him invented, and which he has intelligibly described in his patent, he is entitled to the exclusive use of marking for telegraphic purposes by any mode in which ElectroMagnetism is the essential agent. There are in fact two distinct grounds on which his general claim rests.

First. He makes a new application of a known power to produce a useful result.

Secondly. He produces a useful result never before produced by any power.

But for one branch of our argument the two may be resolved into one, a new result produced by a new application of a known power, a result which our adversaries admit to be new, and produced by means of contrivances which they admit to be his.

There are many cases in the English books tending to establish the principle that an inventor, who has produced a new, result or a result in any degree useful by a new application of a known agent, may, by giving to the public an intelligible description of the means he uses, those means being of his own invention, secure to himself, through a patent for the means, an exclusive right to the new application and its result against interference by any other means. The leading case, and the only one it is necessary to present in any detail, is that of Neilson's Patent for what was called the Hot Air Blast.

Cold air injected by a bellows had previously been used to produce heat in furnaces employed in the production and manufacture of iron. Neilson perceived that a large portion of the heat generated in the furnace was absorbed in heating the cold air, and he conceived the idea that if the air could be heated before it went into the furnace, the heat of the furnace-fire absorbed in that process would be saved, by which means the furnace could be made much hotter. To carry out his idea, he constructed and patented a clumsy iron box placed between the blower and furnace through which the air must pass, and under the box he put a fire to heat the air in its transit.

His patent was denominated a patent "for the improved application of air to produce heat in fires, forges, and furnaces where bellows or other blowing apparatus are required," the only instru mentality described being the iron box with a fire under it between the blower and the furnace.

The discovery proved to be of vast public utility, and his mode of heating the air was greatly improved by various devices, among which was the substitution of iron pipes for his clumsy iron box. The parties who had substituted other modes for heating the air, maintained, as the appellants in this case do, that Neilson's patent was for his mode of heating the air only, and as they used different modes, they were not infringers.

Neilson on the other hand maintained, that being the first to conceive the idea, and having rendered it useful by one mode of his own invention, he was entitled to the exclusive right of using the hot blast by all modes during the existence of his patent. The opposing counsel in that case, as our adversaries do in this, insisted that the patentee was entitled only to the mode described in his patent, that a patent covering all modes would be a patent for a principle; and they were alert, as our adversaries are in this case, to point out how very little the patentee had invented. And little indeed it was in that case. The manufacture of iron was old; the furnace was old; the fuel was old; the blower was old; hot air was old; iron boxes were old;-not a single new thing was used by him--nothing equal to the "simplest contrivance" in Morse's Telegraph. He did nothing whatever in the way of invention, but to put a few old things together, and that not in a very satisfactory manner.

The reported litigation upon this patent occupies upwards of 150 pages in Webster's Reports of Patent Cases. It was contested with all the talents, zeal and perseverance which unlimited means could command: after appearing in various shapes in the English Courts, a case involving its validity and extent went by appeal from the Court of Sessions in Scotland up to the House of Lords.

A long, lucid, and most able charge was given to the jury by the Court below, to which exceptions were taken; and upon those exceptions, the case was taken up. To show distinctly that the House of Lords decided upon the question now at issue, we are obliged to quote somewhat extensively from this charge to the jury. In that address the learned Judge spoke as follows, viz.:

"It is quite true that a patent cannot be taken out solely for an abstract philosophical principle: for instance, for any law of nature, or any property of matter apart from any mode of turning it to account in the practical operations of manufacture, or to the business, and arts, and utilities of life. The mere discovery of such a principle is not an invention, in the patent-law sense of the term. Stating such a principle in a patent may be a promulgation of the principle, but it is no application of the principle to any practical purpose; and without that application of the principle to a practical object and end, and without the

application of it to human industry, or to the purposes of human enjoyment, a person cannot, in the abstract, appropriate a principle to himself. But a patent will be good, though the subject of the patent consists in the discovery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained.

"The main merit, the most important part of the invention, may consist in the conception of the original idea-in the discovery of the principle in science, or of the law of nature, stated in the patent, and little or no pains may have been taken in working out the best manner and mode of the application of the principle to the purpose set forth in the patent. But still, if the principle is stated to be applicable to any special purpose, so as to produce any result previously unknown in the way and for the objects described, the patent is good. It is no longer an abstract principle. It comes to be a principle turned to account, to a practical object, and applied to a special result. It becomes then not an abstract principle, which means a principle considered apart from any special purpose or practical operation, but the discovery and statement of a principle for a special purpose, that is, a practical invention, a mode of carrying a principle into effect. That such is the law, if a well-known principle is applied for the first time to produce a practical result for a special purpose, has never been disputed.

"It would be very strange and unjust to refuse the same legal effect, when the inventor has the additional merit of discovering the principle, as well as its application to a practical object. The instant that a principle, although discovered for the first time, is stated, in actual application to, and as the agent of, producing a certain specified effect, it is no longer an abstract principle; it is then clothed with the language of practical application, and receives the impress of tangible direction to the actual business of human life. Is it any objection then, in the next place, to such a patent, that terms descriptive of the application to a certain specified result, include every mode of applying the principle or agent so as to produce that specified result, although one mode may not be described more than another? Although one mode may be infinitely better than another, although much greater benefit would result from the application of the principle by one method, than by another-although one method may be much less expensive than another? Is it, I next inquire, an objection to the patent, that in its application of a new principle to a certain specified result, it includes every variety of mode of applying the principle according to the general state