U.S. Supreme Court Stimpson v. West Chester Railroad Company, 45 U.S. 4 How. 380 380 (1846)
Stimpson v. West Chester Railroad Company
5 U.S. (4 How.) 380
ERROR TO THE CIRCUIT COURT OF THE
UNITED STATES FOR EAST PENNSYLVANIA
The practice of excepting generally to a charge of the court to the jury without setting out specifically the points excepted to censured. The writ of error not dismissed only on account of the peculiar circumstances of the case.
Where a defective patent had been surrendered and a new one taken out, and the patentee brought an action for a violation of his patent right, laying the infringement at a date subsequent to that of the renewed patent, proof of the use of the thing patented during the interval between the original and renewed patents will not defeat the action.
The seventh section of the Act of March 3, 1839, has exclusive reference to an original application for a patent, and not to a renewal of it.
An original patent being destroyed by the burning of the Patent Office, and the only record of the specifications being a publication in the Franklin Journal, the claim is not limited by that publication, because the whole of the specifications are not set forth in it.
Whether a renewed patent, after a surrender of a defective one, is substantially for a different invention is a question for the jury, and not for the court.
As the thirteenth section of the act of 1836 provides for the renewal of a patent where it shall be
"inoperative or invalid by reason of a defective or insufficient description or specification, . . . if the error shall have arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention,"
the fact of the granting of the renewed patent closes all inquiry into the existence of inadvertence, accident, or mistake, and leaves open only the question of fraud for the jury.
This was a suit brought in the circuit court by Stimpson against the Railroad Company for a violation of his patent right.
On 23 August, 1831, Stimpson took out letters patent for an improvement in the mode of turning short curves on railroads. These letters were not given in evidence upon the trial, having been burned in the conflagration of the Patent Office in December, 1836, and no copy could be found. Secondary evidence was given of their contents by the following publication in the Franklin Journal.
"For an improvement in the mode of turning short curves on railroads, such as the corners of streets; James Stimpson, City of Baltimore, August 23."
"37. The plan proposed is to make the extreme edges of the flanges flat and of greater width than ordinary, and to construct the rails in such a manner that where a short turn is to be made, the extreme edge of the flange shall rest upon it instead of upon the tread of the wheel, thus increasing the effective diameter of the wheel in a degree equal to twice the projection of the flange. The claim is made to 'the application of the flanges of railroad carriage wheels to turn short curvatures upon railroads or tracks, particularly turning the corners of streets, wharves, crossing of tracks or roads, and passing over turnabouts,'"
&c.; Franklin Journal, vol. 9, p. 124.
On turning to pages 270 and 271, vol. 4, there will be found specifications of two patents granted to James Wright of Columbia, Pennsylvania, for the mode of turning curves claimed by Mr. Stimpson. The only difference is that Mr. Wright proposes to adapt his cars to several different curves by having three or more offsets in his wheels when necessary.
On the same day, namely, 23 August, 1831, Stimpson took out also letters patent for an improvement in the mode of forming and using cast or wrought iron plates or rails, for railroad carriage wheels to run upon. These letters being also destroyed, the following extract from the Franklin Journal was given in evidence.
Franklin Journal, vol. 9, 125.
"39. For an improvement in the mode of forming and using cast or wrought iron plates, or rails, for railroad carriage wheels to run upon; James Stimpson, City of Baltimore, Maryland, August 23 (1831)."
"The claim in this case is to"
"the application of cast or wrought iron plates for the use of railways on the streets or wharves of cities or elsewhere, the objects of said improvement being to employ rails that will not present any obstacles to the ordinary use of streets, or sustain injury therefrom, and so to form the plates at the intersections of streets or other crossings, that cars will readily pass over them, and also on circles of small radius."
"The rails are to be formed with a groove in them to receive the flanges of the wheels; on one side of the groove, the width is to be sufficient for the tread of the wheel; on the other, it need not exceed three quarters of an inch. These rails are to be laid flush with the pavement of the streets. At corners to be turned, the rails are to be cast, or made of the proper curvature, one of them only being provided with a groove, as the flange is to run upon the other, upon the principle described in No. 37. Provision is to be made by scrapers or brushes preceding the carriages to clear the grooves of dust, ice, and other obstruction."
In 1835, the first mentioned of these letters -- namely for an "improvement in the mode of turning short curves on railroads" -- were surrendered on account of a defective specification, and on 26 September, 1835, a renewed patent was issued for the term of fourteen years from 23 August, 1831. The schedule referred to in this patent was as follows.
" Short Curves "
" 23 August, 1831 -- Renewed 26th September, 1835 "
" To all whom these presents shall come be it known that I, James Stimpson, of the City and County of Baltimore and State of Maryland, have invented a new and useful improvement in the mode of turning short curves upon railroads with railroad carriages, particularly those round the corners of streets, wharves &c.;, and
that the following is a full and exact description of said invention or improvement as invented or improved by me -- namely, I use or apply the common peripheries of the flanges of the wheels for the aforesaid purpose, in the following manner: I lay a flat rail, which, however, may be grooved, if preferred, at the commencement of the curvation, and in a position to be centrally under the flanges of the wheels upon the outer track of the circle, so that no other part of the wheels which run upon the outer circle of the track rails shall touch or bear upon the rails, but the peripheries of the flanges, they bearing the whole weight of the load and carriage, while the opposite wheels, which run upon the inner track of the circle, are to be run and bear upon their treads in the usual way, and their flanges run freely in a groove or channel, which treads are ordinarily about three inches in diameter less than the peripheries of the flanges."
" Were the bearing surfaces of the wheels which are in contact with the rails while thus turning the curve to be connected by straight lines from every point, there would thus be formed the frustrums of two cones (if there be four wheels and two axles to the carriage), or if but one axle and two wheels then but one cone, which frustrums, or the wheels representing their extremities, will, if the wheels are thirty inches in diameter, and are coupled about three feet six inches apart, turn a curve of about sixty feet radius of the inner track rail. The difference in diameter between the flanges and treads before stated, the tracks of the usual width, and the wheels coupled as stated, would turn a curve of a somewhat smaller radius if the axles were not confined to the carriage in a parallel position with each other; but this being generally deemed necessary, the wheels run upon lines of tangents, and these upon the inner track being as wide apart in the coupling as the outer ones, keep constantly inclining the carriage outwards, and thus cause the carriage to tend to run upon a larger circle than the difference in diameter of the treads and flanges would otherwise give; but the depth of the flanges and the couplings may be so varied as to turn any other radius of a circle desired."
" What I claim as my invention or improvement is the application of the flanges on the wheels on one side of railroad carriages, and of the treads of the wheels on the other side, to turn curves upon railways, particularly such as turning the corners of streets, wharves &c.;, in cities and elsewhere, operating upon the principle herein set forth."
"Witnesses -- JAMES H. STIMPSON"
"GEORGE C. PENNIMAN"
In October, 1840, Stimpson brought his action against the
West Chester Railroad Company for a violation of this renewed patent, and laid the infringement to have taken place in 1839.
In April, 1842, the case came on for trial.
The plaintiff produced his patent and gave evidence that the defendants had used upon their road several curves of this description.
The defendants disputed the originality of the invention of the thing patented, under which head of defense much evidence was given, and also contended that the groove was not claimed in the first patent of 1831, and therefore was not included in the renewed patent of 1835. The evidence of Dr. Jones upon this last head being referred to by the court below, it is proper to insert that part of it.
" Interrogatory fifth. What are the contents of the specification of the alleged improvement of August 23, 1831? What are your means of knowing what were their contents? If you know them, are they dissimilar or similar to those of the plaintiff's specification of September 26, 1835, a copy of which, marked A, is hereto annexed? If dissimilar, state in what particulars, and whether they are as to matters of form and substance, and particularly describe the difference, if any. Answer fully."
"To the fifth interrogatory I answer that the plaintiff exhibited to me the specification in question, previously to his filing the same in the Patent Office; as he likewise did at the same time the specification of a patent for 'forming and using cast iron plates or rails for railroad carriage wheels to run upon,' which last patent is noticed on page 125, vol. 9, second series, of the Journal of the Franklin Institute. I then examined them cursorily, and expressed an opinion, that the improvements described in the two specifications might have been embraced in one, and that it would have been better to have pursued that course. The specification of the mode of turning short curves appeared to me incomplete; an essential feature of it being contained in that for 'forming and using cast iron plates,' &c.; The papers, however, remained as drawn up by Mr. Stimpson's legal adviser, and when the patents were subsequently surrendered in 1835, it was thought best to preserve the division into two; it was probably in fact necessary to pursue this course, as I am not aware of any precedent for uniting two patents into one, although one may be divided into two or more."
"Nearly ten years have elapsed since I first saw the specifications upon which these patents were first issued, and nearly six years since I last read them; and my recollection of them extends to certain prominent points only. The claim under the patent for turning short curves, as given in vol. 9, 124, of my Journal is, I have no doubt, literally correct. There has been an omission in the printing of inverted commas ['] after the word 'turnabout,' &c.; In this specification it was proposed to make the extreme
edges of the flanges flat, and of greater width than ordinary; this, however, did not enter into the claim, and it is not probable that I should have recollected the fact, had it not been noted in my Journal, or called up by some other collateral circumstance. The main defect, in my judgment, of the original specification, in the patent for turning short curves, was the omission of the mention of the groove in the inner rail. I believe, however, that it was alluded to in this specification, but the description of it was contained principally, if not wholly, in the specification of the patent for 'forming and using cast iron on wrought plates,"
&c.;, above noticed, as may be inferred from a reference to my Journal, vol. 9, 125, patent 39.
" Cross Interrogatories. 1. Did you or did you not prepare the papers of the plaintiff when his patent for short curves was surrendered and renewed? What was the object of such surrender and renewal? Was it or was it not that the claim of running over or across tracks at right angles might not continue any longer to be incorporated in the same patent with the claim for short curves, as it had been theretofore?"
"To the first cross-interrogatory I answer that I did prepare the papers of the plaintiff when his patent for turning short curves was surrendered for reissue; that the object of such surrender and renewal was to limit and confine it to the turning short curves in streets &c.;, by leaving out certain matters in it respecting the crossing of tracks or roads, and the passing over turnabouts; and to define the subject matter of the patent more clearly, without its being necessary to refer to that simultaneously obtained for 'forming and using cast or wrought iron plates,'"
The bill of exceptions taken by the plaintiff was to the following part of the charge of the court to the jury, namely:
"Having thus presented you with a view of the rules and principles of the common law applicable to the renewal of patents, as laid down by the supreme court, together with the provisions of the different acts of Congress on this subject, we will now state to you what is in our opinion their legal result."
"To authorize the surrender of an old patent and issue of a new one consistently with the provisions of the original patent law of 1793 and the decisions of the Supreme Court, independently of any act of Congress conferring such power, there are these requisites indispensable to the power arising."
"(1) The original patent must be inoperative or invalid for the causes set forth in the act of 1832 -- the noncompliance with the third section of the act of 1793, for the want of a proper specification of the thing patented, through inadvertence, accident, or mistake, without any fraudulent or deceptive intention. This being the only case embraced in the law to which the authority conferred applies."
"(2) 1, the defect in the specification, which makes it incompetent to secure the rights of the patentee, must have arisen from inadvertence, accident
or mistake, and 2, not from any fraud or misconduct. The reissue of the patent by the appropriate officer is presumptive evidence that the requisites of the law have been complied with, on the production of such evidence or proof otherwise as justified it; but the question of the validity of the new patent is a judicial one, depending on the fact of inadvertence or fraud, as you shall find it, and the opinion of the court on matters of law involved in the inquiry. 39 U. S. 14 Pet. 458; 31 U. S. 6 Pet. 243; 32 U. S. 7 Pet. 321; Act of 1839, 5 Lit. & Brown's ed. 353. The reason why there must be an inquiry into both the inadvertence and fraud arises from the settled construction of the act of 1793 that where the defect is not owing to fraud, the defendant is entitled to a verdict and judgment in his favor, but not to a judgment that the patent is void for the defect unless he shows that the defect was owing to fraud. 1 Bald.; 31 U. S. 6 Pet. 246."
"You must then be satisfied affirmatively that the defect of the patent arose from the inadvertence of the patentee, and negatively, that it did not arise from his fraud or misconduct, or, in the words of the acts of 1832 and 1836, 'without any fraudulent or deceptive intention.' The finding the fact of inadvertence may negative the fact of fraud, but in this as in other cases, fraud may be inferred from gross inadvertence or negligence, such as may be the indication of a design to deceive the public. The defects in the old patent must be in the specification when it does not comply with the requisites of the third section of the act of 1793 calling for a correct description of the thing patented, 31 U. S. 6 Pet. 247; a new one may be issued on compliance with those requisites, which are there prescribed. But the new patent must be confined to the thing patented by the old one -- the thing invented or discovered -- 'the same invention'; it cannot embrace another substantive and essential matter which was not before patented; the thing, the invention, must be the same in both patents, the only object in the renewal being no cure a defect in the description, not to supply the omission of an essential part of the invention; the new patent cannot be broader than the old one. If the thing patented is the same in both patents, its public use did not, under the former laws, amount to an abandonment, or such an acquiescence as to affect the new patent on the ground of delay or negligence in the assertion of the right of the patentee, from the date of the old patent to its reissue. But when an essential part is omitted, and the patentee suffers it to remain unpatented till it has come into public use, before the new patent issues, it will be subject to the same rules which apply to an original patent, making it incompetent to protect the patentee in his claim to such part in virtue of the patent reissued, if it was not described in the one surrendered."
"The thirteenth section of the act of 1836 authorizes a new improvement, invented since the first patent, to be added in a renewed
one; no law gives any authority to add an improvement, which had been invented by the patentee before the original grant, for it is not and cannot be any part of the description or specification of another distinct improvement. A patent for the combination of the parts of an old machine must show wherein such combination exists; what parts compose it; how they are combined in their action; if the description is defective, it may be corrected by a new one; the correction, however, must not extend beyond the combination of the parts first specified, as the introduction of other parts, not before specified, makes an entire new combination; consequently the thing patented becomes essentially different, being not the same invention, but a new one, made by a combination of a part not combined before, which might be a proper subject of an original patent, yet would not be authorized in a renewed one."
"These are the tests which the law applies to the description of the thing patented in order to ascertain whether, in the words of the act of 1832, the old patent was 'invalid or inoperative' by reason that the conditions of the former law not having been complied with, or, in the language of the Supreme Court, the patent 'is found to be incompetent to secure the reward which the law intended to confer on the patentee for his invention.' In such case, the patent may be surrendered for reissue in order to correct the defects which invalidated the first, but the law expressly makes the new patent 'in all respects liable to the same matter of objection and defense' as the old one, and imposes on the patentee the obligation 'of compliance with the terms and conditions prescribed by the third section of the act of 1793.' This is done by showing, according to its requisitions, what was the invention, the thing patented, by a designation of the invention principally, made in fuller, clearer, and more exact terms than those used, so as to give it validity and effect and secure the same invention, which is the only legitimate office of the renewed or reissued patent. A specification consists of two parts -- description and claim; the descriptive part is the explanation of the improvement in all the particulars required by the law; the claim or summary, at the close of the description or specification, is the declaration of the patentee of what he claims as his invention, by which he is bound, so that he can claim nothing which is not included in the summary, and could disclaim nothing which was included in it till the passage of the act of 1837. But the summary may be referred to the description, and both will be liberally construed to ascertain what was claimed, and if the words will admit of it, both parts will be connected in order to carry into effect the true intention of the patentee as it may appear on a judicial inspection of the whole specification. This makes it a question of law what is the thing patented, depending not on the actual or supposed intention of the patentee, but the conclusion of the law
on the language he has used to express it; a part of the description may be construed as a claim, and carried into the summary and made a part of the thing patented, the effect of which is the same as if it was included in the summary in express terms. Cooper v. Matheys, C.C. MSS. To authorize a recovery for the violation of a patent right, the plaintiff must show that he is the inventor of everything he claims so claimed and patented has in the patent, and that everything so claimed and patented has been infringed by the defendant; thus, where the patent is for a particular combination of the parts of an old machine, and the defendant has not used the whole combination as specified in the description, and carried into the summary, the plaintiff cannot recover. Prouty v. Ruggles, 16 Pet. 336."
The court then proceeded to state the substance of the plaintiff's declaration, and referred to the patent of 1835 and the specification thereto attached in order to ascertain the thing patented by that patent which was stated therefrom; it then inquired what was the thing patented in 1831, by referring to the evidence of Thomas P. Jones, contained in the deposition aforesaid, in connection with the Journal of the Franklin Institute referred to by him. The court, remarking that there being in evidence no copy of the patent of 1831, any drawing or specification of the thing patented, or other proof of the contents of either than was contained in the deposition and Journal aforesaid, then gave their opinion to the jury that on this evidence the use of grooves was not claimed, and was no part of the thing patented in 1831 for turning short curves, but was a part of the thing patented in 1835. That it was an essential part of this invention, as Jones testified, and without which all the witnesses agreed that the invention was useless, as without the groove the cars would run off the road, and that the patent was not for any parts of the machine which were new, but for a new combination of the old parts. It was then submitted to the jury whether, on the evidence aforesaid, the omission of the groove in the patent of 1831 arose from inadvertence, and if it was done contrary to the advice of Jones, and in conformity with the opinion of the legal adviser of the plaintiff, and whether, without the groove, the description of the thing patented was sufficient, under the third section of the act of 1793, which was read and commented on by the court, who then proceeded as follows.
"The Secretary of State is a ministerial officer, who must issue a patent if the requisites are performed. 31 U. S. 6 Pet. 241. The question of inadvertence or mistake is a judicial one, which the Secretary cannot decide, nor those judicial questions on which the validity of the patent depends. He issues the patent without inquiry. The correct performance of all the preliminaries to the
"In the application of the law to the evidence before you, the first inquiry is into the state of facts existing at the time of granting the patent of 1835; did they present a case for renewal, under the rules of law on which we have given you our instructions? Whether the original patent was invalid or inoperative is more a question of law than fact, to be ascertained on a judicial inspection of the patent, specification, drawings, models, and the evidence of the contents; the court must construe all written evidence; but as depositions are considered merely as oral testimony, a jury must decide what parts are proved by them. The court must take as true the statements of witnesses as they are made, and lay down the law on the assumption of their credibility, and both court and jury must take an agreed or admitted uncontested state of facts to be their rule of action; a jury may deem a witness unworthy of credit or not believe his statement, but ought to do neither without good cause. Whether the defects in the old patent arose from inadvertence or otherwise is also a mixed question of law and fact -- of law so far as depends on written, and of fact as to parol evidence; on this subject you have the evidence of Dr. Jones, who officially examined the old patent &c.;, and made out the new, and we are mainly left to ascertain the facts in relation to both patents from him. In laying down the law to you, we assume his verity in all he says, and, taking his statement as proof of the facts there existing, our opinion is that, connected with the publication in the Journal of the Franklin Institute in 1832, when the matter was fresh in his recollection, and the specification in the new patent, the old one was invalid and inoperative by reason of noncompliance with the requisites of the act of 1793. That it did not embrace the groove, which was essential to its validity, that the new patent is not for the same invention, and that the plaintiff has not made out a case of such inadvertence, accident, or mistake as justified the issue of the new patent, inasmuch as it appears from the patent for plates on railroads, issued at the same time with the one for short curves, that he had known and described the grooves."
"It is for you to say whether you will take this evidence as we do; if you discredit it in whole or in part, you will find accordingly."
"Another important question arises in this case on the construction of the seventh section of the act of 1839, taken in connection with former laws, which is whether the plaintiff can sustain an action for the use of his invention in the construction of his curves before the granting of the patent of 1835."
"This section provides"
" That every person or corporation who has or shall have purchased or constructed any newly invented machine, manufacture or composition of matter prior to
the application by the inventor or discoverer for a patent shall be held to possess the right to use and vend to others to be used the specific machine, manufacture, or composition so made or purchased, without liability therefor to the inventor or any other person interested in such invention, and no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent as aforesaid except on proof of abandonment of such invention to the public or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent."
"Though this act is retrospective in its effects on then existing patents, it is not void on that account; it was within the constitutional power of Congress to enact it as a rule for all cases to which its words and intentions apply, by its fair and legal interpretation, which we must ascertain by looking at the old law, the mischief and the remedy, which must be traced through the decisions of the supreme court, and the acts of Congress on the same subject."
"In 1808, an act was granted to Oliver Evans renewing his patent, which had expired by its own limitation; in the interval, the defendant had constructed a machine of his invention and continued to use it; after the new patent issued, he was held liable according to the words of the law for such subsequent use, but the Supreme Court thus express their opinion of the case, had it rested on general principles:"
"The legislature might have proceeded still further, by providing a shield for persons standing in the situation of these defendants; it is believed that the reasonableness of such a provision could have been questioned by no one &c.; The argument, founded on the hardship of this and similar cases, would be entitled to great weight if the words of this proviso were obscure and open to construction."
Evans v. Jordan, 9 Cranch 203.
And thereupon the counsel for the plaintiff did then and there except to the aforesaid charge and opinion of the said court.
The above not being enough of the charge of the court below to the jury, the counsel for the plaintiff in error applied for and obtained a writ of certiorari to bring up additional extracts.
The return was as follows.
"On searching the record and proceedings of the Circuit Court of the United States in and for the Eastern District of Pennsylvania in the Third Circuit in a certain cause therein lately depending between James Stimpson, plaintiff, and the West Chester Railroad Company, defendants, we find the following omission in the charge of the judge to the jury, which, in obedience to the annexed writ of certiorari, is hereby certified, to-wit:"
" In Morris v. Huntington, Judge Thompson held that after a patent was surrendered, the invention would be open to public use
without hazard, so far as depends on such patent. 1 Paine 355. In Grant v. Raymond, the court notice the case of the use of the invention between the date of the old and before the new patent, but remark, that that defense is not made; and the circuit court did not say that such defense would not be successful; and they add, 'The defense, when true in fact, may be sufficient in law, notwithstanding the validity of the new patent.' 31 U. S. 6 Pet. 244. The court, in this and the subsequent case of Shaw v. Cooper, held that the new patent was a continuation of the old, but gave no opinion on the question, whether damages could be recovered for the intermediate use of a machine constructed after the first."
" This question was, however, put at rest by the last clause of the act of 1832, which, assuming that damages could not be recovered for a use of the patented invention, before the new patent, provides: 'But no public use or privilege of the invention so patented, derived from or after the grant of the original patent, either under any special license of the inventor, or without the consent of the patentee that there shall be a free public use thereof, shall in any manner prejudice his right of recovery for any use or violation of his invention, after the grant of such new patent as aforesaid.' The act of 1836 is still more explicit, by providing for the right of recovering damages only for 'causes subsequently accruing.'"
" It thus appears that the act of 1839 goes only one step beyond those of 1832 and 1836, and is a dead letter, if it protects the person who has purchased, constructed, or used the machine invented by the patentee no farther than from damages accruing prior to the new patent, for the same protection is given by those laws."
" To have any effect, it must be held to be, in the words of the Supreme Court, 'a shield,' which covers the party from all liability, and by so construing it, the act of 1839 embodies the very principle, and none other, which, in Evans v. Jordan, 9 Cranch 203, that Court declared to be one which they believed that no one could question its reasonableness, in order to prevent the hardship of a case precisely similar in principle to that presented. Such construction is the more reasonable when it is considered that the protection is confined to the specific machine used before the patent, and cannot be extended to protect the use of any new or other machine or construed to invalidate the patent or justify the subsequent use by any other persons than those so protected."
" That such was the intention of Congress in relation to an original patent cannot be doubted, and we can perceive no reason why they should omit the very case on which the Supreme Court had so explicitly declared their opinions, if the words of the act of 1808 would have permitted them to apply an unquestionable principle. The act of 1839 not only does not exclude its application, but authorizes and requires it. In referring to the application
for a patent, it was evidently intended to apply is to the patent on which the patentee sought to recover, the renewed one, on which alone his right rested, for the law cannot be presumed to be intended to apply to a patent which, being invalid or inoperative, as a ground of action, had been surrendered, cancelled, and cancelled by the act of the patentee himself, and was thus divested of all intrinsic efficiency by the acts of 1832 and 1836. It could have no effect without the aid of the new one, and it would be absurd to suppose that the law overlooked the application for the only effective patent, and looked only to that which derived new life from it; besides, the act of 1839 would take from a defendant the protection of the acts of 1832 and 1836 by confining its operation to the old patent, for damages could then be recoverable for the use between the date and the renewal -- a conclusion wholly inadmissible on a sound construction of either the acts in question."
" The act of 1832 expressly declares that the new patent shall be subject in all respects to the same matters of objection and defense as the original one, from which it necessarily follows that if the purchase or construction of a machine, before the application for an original patent, would protect a defendant from all liability to the patentee, the same defense is available when applied to the new one."
" This view of the act of 1839 suffices for the purposes of the present case; a broader one has been taken of it, in all its bearings, in another district in this circuit, which it is not now necessary to examine to decide the point now under consideration."
" In the case before us it clearly appears that the defendants constructed their railroad with the plaintiff's curves in 1834, one year or more before the plaintiff's application for his renewed patent; consequently they may continue its use without liability to the plaintiff. "
MR. JUSTICE McLEAN delivered the opinion of the Court.
The plaintiff brought an action against the defendant for an infringement of his patent for a "new and useful improvement in the mode of turning short curves on railroads." The questions for decision arise on exceptions to the charge of the court to the jury. And here it may be proper to remark that the exceptions are to the charge as published at length, and not to the points ruled by the court, as is the correct practice. Under the peculiar circumstances of this case, the Court will not dismiss the writ of error upon this ground, but it is expected that a different course will hereafter be pursued.
On 21 of August, 1831, the plaintiff obtained a patent for an invention or improvement in the application of the flanges of the wheels on one side of railroad carriages and of the treads of
the wheels on the other side, to turn short curves upon railroads. The specifications of this patent being defective, it was surrendered 26 September, 1835, and a renewed one obtained, in order, as proved,
"to limit and confine it to the turning short curves in streets &c.;, by leaving out certain matters in it respecting the crossing of tracks or roads, and the passing over turnabouts, and to define the subject matter of the patent more clearly, without its being necessary to refer to that simultaneously obtained, for forming and using cast or wrought iron plates,"
In his charge the judge said to the jury
"It clearly appears that the defendants constructed their railroad with the plaintiff's curves in 1834, one year or more before the plaintiff's application for his renewed patent; consequently they may continue its use without liability to the plaintiff."
The patent was surrendered and a new one obtained under the third section of the "act concerning patents" of 3 July, 1832, and the correctness of the above opinion is to be ascertained by a reference to the proviso of that section. It is there declared
"No public use or privilege of the invention so patented, derived from or after the grant of the original patent, either under any special license of the inventor or without the consent of the patentee that there shall be a free public use thereof, shall in any manner, prejudice his right of recovery for any use or violation of his invention after the grant of such new patent as aforesaid."
The charge of infringement in the declaration is laid some years after the new patent, so that the question does not arise whether an action could be sustained for a violation of the right prior to the corrected patent. The above proviso would seem to be susceptible of but one construction, and that is that the patentee may sustain an action "for any use or violation of his invention after the grant of the new patent." Now it is plain that no prior use of the defective patent can authorize the use of the invention after the emanation of the renewed patent under the above section. To give to the patentee the fruits of his invention was the object of the provision, and this object would be defeated if a right could be founded on a use subsequent to the original patent and prior to the renewed one.
The thirteenth section of the Act of 4 July, 1836, which remodeled the patent law in this respect, made no material change in the act of 1832. The words in the latter act are
"And the patent so reissued, together with the corrected description and specification, shall have the same effect and operation in law on the trial of all actions hereafter commenced for causes subsequently accruing as though the same had been originally filed in such corrected form, before the issuing out of the original patent."
Now any person using an invention protected by a renewed patent subsequently
to the date of this act is guilty of an infringement, however long he may have used the same after the date of the defective and surrendered patent.
The circuit court relied upon the seventh section of the Act of 3 March, 1839, as sustaining their construction in regard to the use of the invention after the renewed patent. But that section has exclusive reference to an original application for a patent, and not to a renewal of it. We think the court erred in its instruction to the jury above stated.
In its charge, the court said
"The use of grooves was not claimed and was no part of the thing patented in 1831, for turning short curves, but was a part of the thing patented in 1835. . . . That it was an essential part of the invention."
And further, "in taking the statement" of Dr. Jones
"as proof of the facts there existing, our opinion is that, connected with the publication in the Journal of the Franklin Institute in 1832, when the matter was fresh in his recollection, and the specification in the new patent, the old one was invalid and inoperative, by reason of noncompliance with the requisites of the act of 1793. That it did not embrace the groove, which was essential to its validity, that the new patent is not the same invention, and that the plaintiff has not made out a case of such 'inadvertence, accident, or mistake,' as justified the issue of the new patent, inasmuch as it appears, from the patent for plates on railroads issued at the same time with the one for short curves, that he had known and described the grooves."
The original patent, as proved by Dr. Jones, was burnt with the Patent Office, and no part of the specifications is preserved except that which was published by the witness in the Franklin Journal. That publication does not purport to give the whole of the specifications, and consequently the claim is not limited by the notice in that journal. Doctor Jones, speaking of the patent issued in 1831, says
"The main defect, in my judgment, of the original specifications in the patent for turning short curves was the omission of the mention of the groove in the inner rail. I believe, however, that it was alluded to in the specifications, but the description of it was contained principally, if not wholly, in the specification of the patent for forming and using cast iron or wrought plates,"
That there was a defect in regard to the grooves in the specifications of the first patent is shown, and also that the patent was surrendered in order to remedy that defect. But whether this vitiated the patent is not a question in this case, as it does not affect the right now asserted if the first patent were void. Whether the new patent was substantially for a different invention from the first one was a question for the jury on the evidence. But the court ruled this point, withdrawing the facts from the jury. The witness thinks "that in the first patent the grooves were alluded to," but the
terms used are not recollected by him, and as the patent has been burnt, they cannot now be proved. We think the circuit court erred in not leaving the jury to act upon the facts, as regards the difference between the original and the renewed patent. On the facts, we should draw a different conclusion from that which was given to the jury by the circuit court. An allusion to grooves in this specification, as more particularly described in the other patent, would at least show the intention of the patentee, if it did not make good his patent.
By the thirteenth section of the act of 1836,
"if the patent shall be inoperative or invalid, by reason of a defective or insufficient description or specification, . . . if the error has or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful"
to surrender it, &c.; Now as in granting the renewed patent, the officers of the government act under the above provisions, their decision must at least be considered as prima facie evidence that the claim for a renewal was within the statute. But this would not be conclusive against fraud in the surrender and renewal, which, on the evidence, would be a matter for the jury. And we suppose that the inquiry in regard to the surrender is limited to the fairness of the transaction. In whatever manner the mistake or inadvertence may have occurred is immaterial. The action of the government in renewing the patent must be considered as closing this point, and as leaving open for inquiry, before the court and jury, the question of fraud only.
The judgment of the circuit court is reversed and the cause remanded to that court with instructions to award a venire facias de novo.