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HOBB V. EMERSON, 47 U. S. 437 (1848)
U.S. Supreme Court
Hobb v. Emerson, 47 U.S. 6 How. 437 437 (1848)
Hobb v. Emerson
47 U.S. (6 How.) 437
When a case is sent to this Court under the discretion conferred upon the court below by the seventeenth section of the Act of July 4, 1836 (Patent Law), 5 Stat. 124, the whole case comes up, and not a few points only.
The specification constitutes a part of a patent, and they must be construed together.
Emerson's patent for "certain improvements in the steam engine, and in the mode of propelling therewith either vessels on the water or carriages on the land," decided not to cover more ground than one patent ought to cover, and to be sufficiently clear and certain.
A patentee, whose patent right has been violated, may recover damages for such infringement for the time which intervened between the destruction of the patent office by fire, in 1836, and the restoration of the records under the act of March 3, 1837.
This was a suit for the violation of a patent right, and the writ of error was allowed under the seventeenth section of the act of 1836.
On 8 March, 1834, John B. Emerson, the defendant in error, obtained the following letters patent, which were recorded anew on 5 March, 1841, viz.:
"The United States of America, to all to whom these letters patent shall come: "
"Whereas John B. Emerson, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the steam engine, which improvement he states has not been known or used before his application; hath made
oath that he doth verily believe that he is the true inventor or discoverer of the said improvement; hath paid into the Treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose. These are therefore to grant, according to law, to the said John B. Emerson, his heirs, administrators, or assigns, for the term of fourteen years from the eighth day of March, one thousand eight hundred and thirty-four, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said John B. Emerson himself, in the schedule hereto annexed, and is made a part of these presents."
"In testimony whereof, I have caused these letters to be made patent, and the seal of the United States to be hereunto affixed."
"Given under my hand, at the City of Washington, this eighth day of March in the year of our Lord one thousand eight hundred and thirty-four and of the independence of the United States of America the fifty-eighth."
"By the President:"
"LOUIS McLANE, Secretary of State"
"CITY OF WASHINGTON, to-wit:"
"I do hereby certify, that the following letters patent were delivered to me on the eighth day of March in the year of our Lord one thousand eight hundred and thirty-four, to be examined; that I have examined the same, and find them conformable to law; and I do hereby return the same to the Secretary of State, within fifteen days from the date aforesaid, to-wit, on this eighth day of March, in the year aforesaid."
"B. F. BUTLER"
"Attorney General of the United States"
The schedule referred to in these letters patent, and making part of the same, containing a description in the words of the said John Brown Emerson himself, of his improvement in the steam engine:
"To all whom it may concern: "
"Be it known, that I, John Brown Emerson, of the City of New York, have invented certain improvements in the steam engine, and in the mode of propelling therewith either vessels on the water or carriages on the land, and that the following is a full and exact description thereof. "
"One object of my improvement is to substitute for the crank motion a mode of converting the reciprocating motion of a piston into a continued rotary motion, by a new combination of machinery for that purpose."
"This mode is applicable to an engine either with one or with two cylinders, and is carried into effect as follows. Alongside of the cylinder I place a shaft, the lower end of which may revolve in a step on the platform or foundation upon which the cylinder stands, in which case it must be somewhat longer than twice the length of the cylinder, as it must extend above it to a height somewhat greater than the length of the stroke of the piston. Sometimes, however, this shaft may have its lower gudgeon only a small distance below the upper end of the cylinders, whence it must extend above it as before. Its upper gudgeon must of course be sustained by a suitable frame. This shaft is to stand parallel to the piston rod, from which it is to receive its revolving motion. Upon the upper end of the shaft, above the top of the cylinder, there is to be placed a solid cylinder of wood or of any other convenient substance of such diameter as shall cause its periphery to come nearly into contact with the piston rod for its whole length, when the piston is raised. The solid cylinder above described is to be made to revolve in the following manner. I make a groove in it, which commences near its lower end, and, passing spirally, extends half-way round it by the time it reaches nearly to the upper end, or to a distance vertically equal to the stroke of the engine; from that point it passes down around the opposite half, and returns into itself at the point of beginning. Upon the upper end of the piston, against its side, I place a friction roller, which is to work in the groove in the solid cylinder; the piston rod rising between parallel guide pieces, by which it is kept in its proper place, and its tendency to turn round by the action of the roller in the groove is checked. When the piston is down, this friction roller will stand in the V formed by the junction of the grooves on the opposite sides, and as it is raised, it will in its passage to the upper junction give half a revolution to the solid cylinder, and in descending will complete the revolution by the action of the friction roller on the other portion of the groove."
"When two cylinders are used, they are to be placed parallel to each other, and at such a distance apart that the pistons of each may, in like manner, act upon the solid cylinder; the piston of one being up when the other is down. The boiler, the steam pipe, the valves for the admission and discharge of steam, and other appendages, may be similar to some of those already in use. From the revolving shaft, already described,
a rotary motion may be communicated to paddle wheels, steam carriages, or other objects. As it is my intention, in general, to place my cylinders and revolving shaft vertically, I communicate motion to the horizontal shaft of a paddle wheel by means of bevel geared wheels near the lower end, or at any convenient part of the shaft, and by similar gearing, carriages may be propelled upon rail or ordinary roads."
"When used for steamboats, I employ an improved spiral paddle wheel, differing essentially from those which have heretofore been essayed. This spiral I make by taking a piece of metal of such length as I intend the spiral propeller to be, and of a suitable width, say, for example, eighteen inches; this I bend along the center so as to form two sides, say of nine inches in width, standing at right angles, or nearly so, to each other, and give to it, longitudinally, the spiral curvature which I wish. Of these pieces I prepare two or three or more and fix them on to the outer end of the paddle shaft by means of arms of a suitable length, say of two feet, more or less, in such a position that the trough form given to them longitudinally shall be effective in acting upon the water. It must be entirely under water, and operate in the direction of the boat's way; instead of metal, the spiral propeller may be formed of wood, and worked into the proper form -- the shape, and not the material thereof, being the only point of importance."
"Where a capstan is required, as on board of a steamboat, I allow the upper end of the vertical shaft before described to pass through the deck of the vessel, and attach the capstan thereto so that it may be made to revolve by the action of the shaft, using such ray wheels and falls to connect the shaft and the capstan as will allow of their being conveniently engaged and disengaged."
"What I claim as my invention and for which I ask a patent is the substituting for the crank in the reciprocating engine a grooved cylinder, operating in the manner hereinbefore described, by means of its connection with the piston rod, together with all the variations of which this principle is susceptible, as, for example, a bar of metal may be bent in the form of a groove, and attached to the revolving shaft, and friction wheels on the piston rod may embrace this on each side, producing an effect similar to that produced by the groove. I also claim the spiral propelling wheel, contracted and operating in the manner in which I have set forth, and likewise the application of the revolving vertical shaft to the turning of a capstan on the deck of a vessel. Not intending in either of these parts to confine myself to precise forms or dimensions, but to vary them in such manner as experience or convenience may
dictate, whilst the principle of action remains unchanged, and similar results are produced by similar means."
"JOHN BROWN EMERSON"
At April term, 1844, Emerson brought an action of trespass on the case in the Circuit Court of the United States for the Southern District of New York against Hogg and Delamater for an infringement of his patent right. As one of the points decided by the court was whether or not the allegations of the declaration corresponded with the evidence of the patent, it is thought proper to insert the declaration. It was as follows, viz.:
"John B. Emerson, a citizen of the State of New York, by Peter Clark, his attorney, complains of Peter Hogg and Cornelius Delamater, citizens of the same state, defendants, in custody &c., of a plea of trespass on the case."
"For that, whereas the said plaintiff was the original inventor of a certain new and useful improvement, in the letters patent hereinafter mentioned and fully described, the same being a certain improvement in the steam engine, and in the mode of propelling therewith either vessels on the water or carriages on the land, which was not known or used before his said invention and which was not, at the time of his application for a patent, as hereinafter mentioned, in public use with his consent or allowance. And the said plaintiff being so as aforesaid the inventor thereof, and being also a citizen of the United States, on the eighth day of March, one thousand eight hundred and thirty four, upon due application therefor, did obtain certain letters patent therefor, in due form of law, under the seal of the United States, signed by Andrew Jackson, then President, and countersigned by Louis McLane, then Secretary of State, bearing date the day and year aforesaid, whereby there was secured to him, the said plaintiff, his heirs, executors, administrators, or assigns, for the term of fourteen years from and after the date of the said patent, the exclusive right and liberty of making, using, and vending to others to be used, the said improvement, as by the said letters patent in court to be produced will fully appear. And the said plaintiff further says that the said defendants, well knowing the said several premises but contriving, and wrongfully and injuriously intending to injure the plaintiff and deprive him of the profits, benefits, and advantages which he might and otherwise would have derived and acquired from the making, using, and vending of the said invention or improvement after the making and issuing of the said letters patent, and within the term of fourteen years in said letters patent mentioned, to-wit, on the
first day of January, eighteen hundred and forty, and on divers other days and times between that time and the commencement of this suit, at the City of New York, and within the Southern District of New York, wrongfully and unjustly, without the leave or license, and against the will, of the plaintiff, made and sold divers, to-wit, ten machines for propelling boats, in imitation of the said invention and improvement or a part of the said invention or improvement, to the benefit, use, and enjoyment whereof the said plaintiff was and is entitled as aforesaid, in violation and infringement of the said letters patent, and of the exclusive right and privilege to which the plaintiff was and is entitled as aforesaid, and contrary to the form of the statutes of the United States in such case made and provided."
"And the said plaintiff further says that the said defendant, well knowing the said several premises, but further contriving and intending as aforesaid, after the obtaining of the said letters patent by the said plaintiff as aforesaid, and within the said term of fourteen years, to-wit, on the said first day of January, eighteen hundred and forty and at divers other times between that day and the commencement of this suit, within the Southern District of New York aforesaid, wrongfully and unjustly, without the leave or license, and against the will of the plaintiff, did make and sell divers, to-wit, ten improved machines for propelling boats or vessels upon the water, constructed in a similar form and acting upon the same principle as the said machine or improvement, to the benefit, use, and enjoyment whereof the said plaintiff was and is entitled by his said letters patent as aforesaid, in violation and infringement of the exclusive right so secured to the said plaintiff by the said letters patent as aforesaid, and contrary to the form of the statute in such case made and provided."
"And the said plaintiff further says that the said defendant, well knowing the said several premises but contriving and intending as aforesaid, after the obtaining of the said letters patent by the said plaintiff as aforesaid and within the said term of fourteen years, to-wit, on the said first day of January, eighteen hundred and forty and at divers other times between that day and the commencement of this suit, in the Southern District of New York aforesaid, wrongfully and unjustly and without the consent or allowance and against the will of the plaintiff did imitate in part and make a certain addition to the said invention or improvement to the benefit, use, and enjoyment whereof the plaintiff was and is entitled as aforesaid, in breach of the said letters patent and in violation and infringement of the exclusive right and privilege so secured to the
said plaintiff as aforesaid, and contrary to the form of the statute in such case made and provided."
"By means of the committing of which said several grievances by the said defendants as aforesaid the said plaintiff is greatly injured and has lost and been deprived of divers great gains and profits which he might and otherwise would have derived from the said invention and improvement in the said letters patent described and set forth, and in respect whereof he was and is entitled to such privilege as aforesaid, and was and is otherwise damnified to the damage of the said plaintiff of ten thousand dollars, and therefore,"
To this declaration, the defendants pleaded the general issue and filed a copy of the special matters of defense to the action.
In May, 1847, the cause came on for trial. The patent was given in evidence, when the counsel for the defendants prayed the court to instruct the jury that the patent thus produced in evidence by the said plaintiff was void, for the reasons following:
1. That the claim of the plaintiff, as set forth in his specification annexed to his letters patent, embraces the entire spiral paddle wheel; the claim is therefore too broad upon the face of it, and the letters patent are void upon this ground, and the defendants are entitled to a verdict.
2. That the patent is void upon its face, for this, that purporting to be a patent for an improvement and specifying that the invention is of "an improved spiral paddle wheel, differing essentially from any which have heretofore been essayed," without pointing out in what the difference consists or in any manner whatever indicating the improvement by distinguishing it from the previously essayed spiral paddle wheels, it is wanting in an essential prerequisite to the validity of letters patent for an improvement.
3. That the patent is void upon its face, for this, that it embraces several distinct and separate inventions as improvements in several distinct and independent machines susceptible of independent operation not necessarily connected with each other in producing the result arrived at in the invention, and the subject matter of separate and independent inventions.
4. It appears in evidence that the drawing and model of the paddle wheel of plaintiff filed and deposited originally in the patent office had been lost by the destruction of that office in December, 1836, and that in restoring the record of the patent, under the act of March, 1837, the plaintiff sent from New Orleans to the office a new drawing, to be filed on 5 May, 1841, together with a court copy of the letters patent which were deposited in the office. The drawing was not
sworn to by he plaintiff, but remained in the office till January, 1844, when it was delivered to an agent of the plaintiff and sent to New Orleans, and sworn to by him, and filed in the department on 12 February, 1844. On an examination subsequently by the plaintiff, it was discovered that this drawing was imperfectly made, and thereupon a second drawing was procured by him, which he claimed and offered to prove to be an accurate one, and was sworn to, and filed on 27 March, 1844, an authenticated copy of which was offered in evidence on the trial by the plaintiff, which was objected to by the counsel for the defendants, but the objection was overruled and the evidence admitted, to which an exception was taken.
5. That if from the evidence the jury are satisfied that no propelling wheels were made by the defendants between 27 March, 1844, the date of the alleged completion of the record of the plaintiff's patent, under the Act of March 3, 1837, and the commencement of this suit in April following, that, upon this ground, the defendants are entitled to a verdict.
The court charged, in respect to the instructions prayed for, that
"The claim of the plaintiff was for an improvement on the spiral paddle wheel or propeller; that, by a new arrangement of the parts of the wheel, he had been enabled to effect a new and improved application and use of the same in the propulsion of vessels; that the ground upon which the claim is grounded was this: it is the getting rid of nearly all the resisting surface of the wheels of Stevens, Smith, and others by placing the spiral paddles or propelling surfaces on the ends of arms instead of carrying the paddles themselves in a continued surface to the hub or shaft. It is claimed that a great portion of the old blade not only did not aid in the propulsion, but actually impaired its efficiency, and also that the improved wheel is made stronger. It was made a question on the former trial whether the plaintiff did not claim or intend to claim the entire wheel. But we understand it to be for an improvement upon the spiral paddle wheel, claimed to be new and useful in the arrangement of its parts, and more effective, by fixing the spiral paddles upon the extremity of arms, at a distance from the shaft."
The court further instructed the jury that "the description of the invention was sufficient, and that the objection, that the parts embraced several distinct discoveries, was untenable."
The court further charged
"That the damages were not necessarily confined to the making of the wheels between March, 1844, when the drawings were restored to the patent office, and the bringing of the suit. Such a limitation assumes
that there can be no infringement of the patent after the destruction of the records, in 1836, until they are restored to the patent office, and that during the intermediate time, the rights of patentees would be violated with impunity."
We do not assent to this view.
In the first place, the act of Congress providing for the restoration was not passed till 3 March, 1837, and in the second place, in addition to this, a considerable time must necessarily elapse before the act would be generally known, and then a still further period before copies of the drawings and models could be procured. Patentees are not responsible for the fire, nor did it work a forfeiture of their rights.
The ground for the restriction claimed is that the community have no means of ascertaining, but by a resort to the records of the patent office, whether the construction of a particular machine or instrument would be a violation of the rights of others, and the infringement might be innocently committed.
But if the embarrassment happened without the fault of the patentee, he is not responsible for it; nor is the reason applicable to the case of a patent that has been published, and the invention known to the public. The specification in this case had been published. It is true if it did not sufficiently describe the improvement without the aid of the drawing, this fact would not help the plaintiff. If there had been unreasonable delay and neglect in restoring the records, and in the meantime a defendant had innocently made the patented article, a fair ground would be laid for a mitigation of the rule of damages, if not for the withholding them altogether, and the court left the question of fact as to reasonable diligence of the patentee or not in this respect, and also all questions of fact involved in the points of the case for the defendants, to the jury.
The counsel for the defendants excepted to each and every part of the charge of the court so far as said charge did not adopt the prayer on the part of the defendants.
The verdict of the jury was that
"The said Peter Hogg and Cornelius Delamater, the defendants, are guilty of the premises within laid to their charge in manner and form as the said John B. Emerson hath within complained against them, and they assess the damages of the said plaintiff, on occasion thereof, over and above his costs and charges by him about this suit in this behalf expended, at one thousand five hundred dollars, and for those costs and charges at six cents."
The judgment of the court was
"That the said John B. Emerson do recover against the said Peter Hogg and Cornelius Delamater his damages, costs, and charges in form aforesaid
by the jurors aforesaid assessed, and also three hundred and twenty four dollars and fifteen cents for his said costs and charges by the said court now here adjudged of increase to the said John B. Emerson, and with his assent, which said damages, costs, and charges, in the whole, amount to one thousand eight hundred and twenty four dollars and fifteen cents. "
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