“Real-time”

July 25th, 2016

Oral arguments debating the meaning of the claim limitation “real-time” are always interesting.  Here’s a recent one: [Emblaze Ltd. v. Apple, Inc.].

You can read the court’s Rule 36 Judgment here: [Link].

Post-Prosecution Pilot (P3) Program

July 15th, 2016

Here is a link to the Federal Register Notice for the USPTO’s new Post-Prosection Pilot (P3) Program [Link].

Here is a link to the USPTO page [Link].

USPTO Issues New §101 Memo in Response to CellzDirect

July 14th, 2016

The USPTO posted a new memorandum to its patent subject matter eligibility page today in regard to the Federal Circuit’s recent CellzDirect case.

The memo is available [HERE].

What impact should the UCC as authority have on patent eligible subject matter?

July 12th, 2016

In yesterday’s opinion in Medicines Co. v. Hospira, Inc., __ F.3d __ (Fed. Cir. 2016) (en banc), the Federal Circuit relied upon the Uniform Commercial Code in establishing a test for when an “offer for sale” has been made. The Supreme Court has relied upon the UCC in the past, for example, in Pfaff v. Wells Electronics.   Since the unanimous Federal Circuit looked to the U.C.C. as authority in Medicines Co. v. Hospira, Inc., I wonder if litigants will begin seizing upon the U.C.C.’s definition of “goods” for 35 U.S.C. §101 purposes.

I think one argument might go as follows.  If a patent claim, such as a Beauregard claim, satisfies the U.C.C.’s definition of a “good,” then the claimed subject matter is subject to the U.C.C.  A good is defined by section 2-105 of the U.C.C., as follows.

(1) “Goods” means all things (including specially manufactured goods) which are movable at the time of identification to the contract for sale other than the money in which the price is to be paid, investment securities (Article 8 ) and things in action. “Goods” also includes the unborn young of animals and growing crops and other identified things attached to realty as described in the section on goods to be severed from realty (Section 2-107).

The Supreme Court has said that abstract ideas are “free to all men.”

The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” Chakrabarty, supra, at 309, 100 S.Ct. 2204. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years. See Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853). The concepts covered by these exceptions are “part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010).

The U.C.C. does not state that there are any goods that are abstract ideas and thus free to all men.  So, if claimed subject matter falls under the definition of good, then it must necessarily be non-abstract.

If this is not the case, then the ALI will need to revise the UCC to except those goods that are “abstract,” as any abstract good would necessarily need to be free to all people and reserved exclusively to none.

You can read the Medicines Co. v. Hospira, Inc. en banc decision here: [Read the opinion].

You can listen to the recording of the en banc oral argument here: [Listen].

Forty-four Percent of All Financial Expert Reports Excluded

July 1st, 2016

I was listening to a recording of a recent Federal Circuit oral argument where one of the advocates mentioned that a PWC study reports that forty-four percent of all financial expert reports are excluded under Daubert.  Quite an interesting statistic.  PWC notes:

  • 44% of financial experts were excluded in 2015. This is consistent with the 16-year average.
  • Across the 16-year timespan, the most common reason for financial expert exclusions has been lack of reliability. Exclusion rates have been highest in intellectual property and product liability cases.
  • Testimony “based on sufficient facts or data” is a common stumbling block for financial experts and is the most frequent reason for reliability exclusions.
  • In 2015, accountants faced the highest number of challenges and experienced the highest exclusion rate.
  • In a majority of cases (78%), appellate courts agree with lower court Daubert rulings on financial experts.

Here’s a link to the PWC study: [Link].

Supreme Court Case of the Week: Prouty and Mears v. Ruggles et al.

June 23rd, 2016

This week’s Supreme Court Case of the Week is a short one but an important one.  The key passage recites:

The patent is for a combination, and the improvement consists in arranging different portions of the plough, and combining them together in the manner stated in the specification for the purpose of producing a certain effect. None of the parts referred to are new, and none are claimed as new; nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described. And this combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the plough in the manner therein described, is stated to be the improvement, and is the thing patented. The use of any two of these parts only, or of two combined with a third, which is substantially different, in form or in the manner of its arrangement and connection with the others; is therefore not the thing patented. It is not the same combination if it substantially differs from it in any of its parts. The jogging of the standard into the beam, and its extension backward from the bolt, are both treated by the plaintiffs as essential parts of their combination for the purpose of brace and draft. Consequently the use of either alone, by the defendants, would not be the same improvement, nor infringe the patent of the plaintiffs.

Prouty and Mears v. RUGGLES ET AL., 41 U.S. 336, 341 (1842).

41 U.S. 336 (____)16 Pet. 336

DAVID PROUTY AND JOHN MEARS, PLAINTIFFS IN ERROR,
v.
DRAPER RUGGLES ET AL., DEFENDANTS IN ERROR.

Supreme Court of United States.

The case was submitted to the Court on printed arguments by 337*337 Mr. Choate, for the plaintiffs in error; and by Mr. Dexter, for the defendants.

The case is fully stated in the opinion of the Court.

Mr. Chief Justice TANEY delivered the opinion of the Court.

This case is brought here by a writ of error to the Circuit Court of the United States, for the district of Massachusetts.

The action was instituted for the purpose of recovering damages for an infringement of a patent, which the plaintiffs had obtained for an improvement in the construction of the plough.

The invention is described in the specification, as follows:

“Be it known, that we, the said Prouty and Mears, have jointly invented, made, and applied to use, a new and useful improvement in the construction of the plough, which invention and improvement we describe and specify as follows, viz.:

Heretofore, the standard and landside of the plough has been placed perpendicular to, and at right angles with the plane of the share; on this standard the beam has been placed in such manner as to form an acute angle with the landside, of such extent as to place that part of the beam to which the moving power is applied at the distance of three or more inches from an extended line of the landside, to the right; while the after-part of the beam extends one or more inches to the left of the perpendicular of the landside, near the handle; the object has been to cause the plough `to run to land,’ or hold its width of furrow. The effect produced has been an uneasy, struggling motion, as it meets resistance at the point, wing, or heel.

We make our plough with the standard and landside forming an acute angle with the plane of the share, the standard inclining to the right or furrow side, in such manner as to enable us to place the centre of the beam on a line parallel with the landside, the forepart thereof at such distance from the extended line aforesaid, as to cause the plough to hold its width of furrow, and the after-part falling within the perpendicular of the landside of the plough, the centre of it being nearly perpendicular to the centre of resistance, on the mould-board, which we conceive to be at about one-fourth part of the lateral distance from the landside to the wing of the share, and at about one-third part of the perpendicular 338*338 height from the plane of the share to the upper edge of the mould-board.

This location of the centre of resistance, we base on the fact, that many ploughs which have been used in sharp, sandy soils, have been worn quite through at that point. The result of this formation of the plough, is a steady, well-balanced motion, requiring less power of draft, and less effort in directing the plough in its course.

The inclination of the standard and landside causes the plough to cut under, and take up the furrow in the form of an oblique-angled parallelogram, or like a board, feather-edged, which being turned over, falls in level with the last furrow more readily than right-angled or square-edged work.

The coulter or knife, having a similar inclination, cuts the roots of the grass, &c., and leaves all vegetable matter on the surface, at a greater distance from the under edge of the furrow, which being turned over, more readily falls in, and is far better covered than with square-edged work.

The top of the standard, through which the bolt passes to secure the beam, is transversely parallel to the plane of the share, and extends back from the bolt to such distance as to form a brace to the beam, when the after-part is passed down by lifting at the forepart; the share being fast under a rock, or other obstruction, the after-part of this extension is squared in such manner, that being jogged into the beam, it relieves the bolt in heavy draft.

The bolts which we use to fasten the pieces of cast iron, of which our ploughs are made, together, and the wood-work, are round, with inverted convex heads, like the wood screw, with a projection on the under side of the head, of semicircular form, which fits into a groove in the counter-sink part of the bolt hole, as it is cast to receive it, which not only prevents its turning, but also diminishes the liability of breakage at the corners of square holes; all which will more fully appear by reference to the drawing annexed to, and forming part of this specification.

We hereby declare, that what we claim as new, and of our invention, is the construction of such ploughs as aforesaid, and the several parts thereof, not separately, but in combination, for the purposes aforesaid, viz.:

339*339 1. The inclining the standard and landside so as to form an acute angle with the plane of the share.

2. The placing the beam on a line parallel to the landside, within the body of the plough and its centre, nearly in the perpendicular of the centre of resistance.

3. The forming the top of the standard for brace and draft. We do not intend to confine our claim to any particular form or construction, excepting such form as may be necessary to place the beam in the perpendicular of the centre of resistance, and parallel to the landside, and also to such form of the top of the standard, as shall serve for brace and draft, but have given such form as we deem to be most convenient, which may be varied, as is obvious.”

The plaintiffs offered to prove the utility of the alleged improvement, which proof was dispensed with by the defendants. Certain ploughs alleged by the plaintiffs to be made in conformity with their letters patent, and certain ploughs made by the defendants, which were the alleged infringement of the plaintiff’s patent, were produced in Court; and no substantial difference between them was shown by the defendants to exist, unless the fact, that the top of the standard in the defendant’s plough was not jogged into the beam, and did not extend so far back upon the beam, was to be so considered.

And the plaintiffs offered evidence to show, that the top of the standard formed, as stated in the specification, would serve for both purposes of brace and draft, although not jogged into the beam.

The defendants introduced no evidence. The counsel for the plaintiffs requested the Court to instruct the jury as follows, to wit:

The counsel of plaintiffs respectfully move the Court to instruct the jury, that if the defendants have used, in combination with the other two parts, a standard of the description set forth in the specification, and it is proved to serve both for brace and draft, such use was an infringement of the plaintiffs claim in that particular, although the defendants may not have inserted into a jog in the beam.

Also, that if any two of the three parts described, as composing the construction claimed in the specification, had been used in 340*340 combination by the defendants, it was an infringement of the patent, although the third had not been used with them.

The Court refused to give the instructions so prayed, or either of them, in manner and form as prayed by the plaintiffs; but did instruct the jury as follows, to wit:

That upon the true construction of the patent, it is for a combination, and for a combination only. That the combination, as stated in the summing up, consists of three things, viz.:

1. The inclining the standard and landside so as to form an acute angle with the plane of the share.

2. The placing the beam on a line parallel to the landside, within the body of the plough and its centre, nearly in the perpendicular of the centre of resistance.

3. The forming the top of the standard for brace and draft.

That unless it is proved, that the whole combination is substantially used in the defendants’ ploughs, it is not a violation of the plaintiffs’ patent, although one or more of the parts specified, as aforesaid, may be used in combination by the defendants. And that the plaintiffs, by their specification and summing up, have treated the jogging of the standard behind, as well as the extension, to be essential parts of their combination for the purpose of brace and draft; and that the use of either alone by the defendants would not be an infringement of the combination patented.

And thereupon the jury rendered their verdict for the defendants.

The first question presented by the exception is, whether the extension of the standard, and the jogging of it into the beam, are claimed as material parts of the plaintiff’s improvement. We think they are. In the paragraph in which it is described, he states that it “extends back from the bolt to such a distance as to form a brace to the beam;” and also, “that being jogged into the beam it relieves the bolt in a heavy draft.” And in their summing up, they declare that they claim as new, and of their invention, the construction of such ploughs as aforesaid, and the several parts thereof, not separately but in combination; and proceeding then to specify the parts so claimed, they mention, “the forming of the top of the standard for brace and draft.” They indeed say that they do not mean to confine their claim to any particular form of construction, 341*341 except “to such form of the top as shall serve for brace and draft.” That is to say, the top is to be so formed and so connected with the beam as to answer both purposes. And as those purposes, according to the preceding part of the specification, are to be accomplished by its extension back from the bolt, and by jogging it into the beam, these two things are essential to it whatever variation may be made in its shape or size. They are, therefore, material parts of the improvement they claim.

The remaining question may be disposed of in a few words. The patent is for a combination, and the improvement consists in arranging different portions of the plough, and combining them together in the manner stated in the specification for the purpose of producing a certain effect. None of the parts referred to are new, and none are claimed as new; nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described. And this combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the plough in the manner therein described, is stated to be the improvement, and is the thing patented. The use of any two of these parts only, or of two combined with a third, which is substantially different, in form or in the manner of its arrangement and connection with the others; is therefore not the thing patented. It is not the same combination if it substantially differs from it in any of its parts. The jogging of the standard into the beam, and its extension backward from the bolt, are both treated by the plaintiffs as essential parts of their combination for the purpose of brace and draft. Consequently the use of either alone, by the defendants, would not be the same improvement, nor infringe the patent of the plaintiffs.

The judgment of the Circuit Court must therefore be affirmed.

Cherry picking and smushing references together

June 20th, 2016

Patent prosecutors — and applicants disillusioned with the patent process — will be particularly receptive to the comments that Judge Moore made during the recent oral argument of In re Neill.  During that oral argument Judge Moore remarked that it seemed like the PTO was merely cherry picking random elements of four different references and smushing them together to arrive at the claimed invention.  Judge Moore would further remark that the PTO was lucky that the standard of review for the case was very deferential.

Judge Moore: How often do you see four reference obviousness rejections? Because I’ll be honest, I’ve never seen one. That’s a lot of references you’ve got to piece together to get to obviousness.

Associate Solicitor for the USPTO:    It’s a good number of references; but, in this case the Examiner found the motivation to ….

Judge Moore:  The question I asked is actually quite personal.  How often have you seen a four reference obviousness rejection; because, I never have.  Not out of the PTO. Never.  I’ve seen people try to argue it in litigation, sure. But, I’ve never seen the PTO go to four separate references and cherry pick items and then combine them together.

Associate Solicitor for the USPTO:    Well, I don’t know if I’ve seen a four reference one; but, I don’t believe that the Board….

Judge Moore:  Or anything greater than four, let’s be clear so that this deposition transcript reads right, four or greater. (Laughter) That’s a lot of references!

Associate Solicitor for the USPTO:    It is; but, the Examiner here . . . All of those references come from the same field of art.  It’s all the transmission and recording of video programming data….

Judge Moore:  Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony.  Like the whole reason they came up with this is to get around the copyright problems with DVR’s in homes and try to reduce the amount of storage you need in your home.  That’s so different than pulling together these pieces … ‘well, this one mentions in the background cost savings;’…  ‘and this one mentions in the background efficient bandwidth;’ … ‘and this one mentions’. . . . And then you’re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it’s . . .  I don’t know, I mean you’re awfully lucky this is a very deferential standard of review, that’s for sure.

[Listen]

I was very surprised that Judge Moore had never before seen a four reference combination coming out of the PTO.  Patent prosecutors who run into her at future bar events might want to relate their war stories.  We already have case law that says construing claims to read out a preferred embodiment is rarely if ever correct.  Perhaps we’ll see case law in the future that says combining four or more references together to reject an applicant’s invention is rarely, if ever, correct.

Here’s a link to an old post about cobbling snippets together: [Link].

You can read the Federal Circuit’s Rule 36 opinion [here].

“Gist” or “Heart” of the Invention Oral Arguments

June 16th, 2016

The Federal Circuit heard oral arguments in recent months where the “gist” or “heart” of the invention was discussed.  The fact that appellants/appellees, district court judges, and Federal Circuit judges are now openly using the term “gist” and “heart” rather than euphemistic phrases such as “directed to,” “basic idea,” etc. takes on heightened interest because the Supreme Court in its Aro II case back in the 1960’s rejected characterizing claims based on a “gist” or “heart” of the invention:

[I]f anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U. S., at 667;320 U. S., at 684. The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination 345*345 the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the `heart of the invention’ or the `advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly.” 320 U. S., at 667.

And in Mercoid Corp. v. Minneapolis-Honeywell Co., supra,the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.” 320 U. S., at 684.No element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be.

Aro Mfg. v. Convertible Top Replacement Co., 365 U.S. 336, 344-45 (1961).

Therefore, forcing the Supreme Court to come to terms with Aro II would be a good thing.

The two recent Federal Circuit oral arguments referenced above are:  Jericho Systems Corp. v. Axiomatics and Essociate v. Clickbooth.  You can listen to those oral arguments [here] and [here], respectively.

Judge Reyna happened to sit on both panels.  One might gather that he rejects a “gist” or “heart” of the invention analysis from this sound bite in the Essociate oral argument.  [Listen].  I’ve added this sound bite to the audio key page.

Supreme Court Patent Case of the Week: Philadelphia & Trenton R. Co. v. Stimpson

June 16th, 2016

39 U.S. 448 (1840)14 Pet. 448

THE PHILADELPHIA AND TRENTON RAILROAD COMPANY, PLAINTIFFS IN ERROR,
vs.
JAMES STIMPSON, DEFENDANT IN ERROR.

Supreme Court of United States.

451*451 The case was argued by Mr. Coxe, and Mr. Southard, for the plaintiffs in error; and by Mr. J.R. Ingersoll, for the defendant.

457*457 Mr. Justice STORY delivered the opinion of the Court.

This is a writ of error to the judgment of the Circuit Court for the Eastern District of Pennsylvania, rendered in an action brought by Stimpson, the defendant in error, against the plaintiffs in error, for a violation of a patent right granted to him for a new and useful improvement in the mode of turning short curves on railroads.

A patent was originally granted to Stimpson, for the same invention, on the 23d day of August, 1831; and the renewed patent, upon which the present suit is brought, was granted on the 26th of 458*458 September, 1835, upon the former letters patent “being cancelled on account of a defective specification;” and the renewed patent was for the term of fourteen years from the date of the original patent. With the exception of the recital of the fact that the former letters patent were cancelled “on account of a defective specification,” and the statement of the prior date from which the renewed patent was to begin to run, the renewed patent is in the precise form in which original patents are granted.

At the trial upon the general issue, a bill of exceptions was taken to certain rulings of the Court upon points of evidence, to the consideration of which we shall at once proceed without any further preface.

The first exception taken is to the admission of the renewed patent as evidence in the cause to the jury. The patent act of 1832, ch. 162, sec. 3, under which this patent was obtained, provides, that whenever any patent shall be inoperative or invalid, by reason that any of the terms or conditions prescribed by the prior acts of Congress, have not, by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the inventor, it shall be lawful for the Secretary of State, upon the surrender to him of such patent, to cause a new patent to be granted to the inventor, for the same invention, for the residue of the period then unexpired for which the original patent was granted, upon his compliance with the terms and conditions prescribed by the third section of the act of the 21st of February, 1793, ch. 55.

Now, the objection is, that the present patent does not contain any recitals that the prerequisites thus stated in the act have been complied with, viz. that the error in the former patent has arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention; and that without such recitals, as it is the case of a special authority, the patent is a mere nullity, and inoperative. We are of opinion that the objection cannot, in point of law, be maintained. The patent was issued under the great seal of the United States, and is signed by the President, and countersigned by the Secretary of State. It is a presumption of law, that all public officers, and especially such high functionaries, perform their proper official duties until the contrary is proved. And where, as in the present case, an act is to be done, or patent granted upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act or granted the patent, is prima facie evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs, if laid before him, when the law has made such officer the proper judge of their sufficiency and competency. It is not, then, necessary for the patent to contain any recitals that the prerequisites to the grant of it have been duly complied with, for the law makes the presumption; and if, indeed, it were otherwise, the recitals would not help the case without the 459*459 auxiliary proof that these prerequisites had been, de facto, complied with. This has been the uniform construction, as far as we know in all our Courts of justice upon matters of this sort. Patents for lands, equally with patents for inventions, have been deemed prima facie evidence that they were regularly granted, whenever they have been produced under the great seal of the government; without any recitals or proofs that the prerequisites of the acts under which they have been issued have been duly observed. In cases of patents, the Courts of the United States have gone one step further, and as the patentee is required to make oath that he is the true inventor, before he can obtain a patent, the patent has been deemed prima facie evidence that he has made the invention. This objection, then, is overruled; and there was no error in the Circuit Court in the admission of the patent.

The next exception is to the refusal of the Court to allow a witness, Josiah White, to give a description of an invention which he had seen on the Mauch Chunk railroad, in 1827, which had a groove on one side, and run on the other on a flange for crossing, for the purpose of showing that the supposed invention of the plaintiff was known and in use by others, before the date of his patent. By the patent act of 1836, (which was applicable to the present point,) it is provided in the fifteenth section, that whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or use of the thing patented, he shall state in his notice of special matter to be used in his defence, the names and places of residence of those, whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used. The object of this most salutary provision is to prevent patentees being surprised at the trial of the cause, by evidence of a nature which they could not be presumed to know, or be prepared to meet, and thereby to subject them either to most expensive delays, or to a loss of their cause. It is incumbent on those who seek to show that the examination of a witness has been improperly rejected, to establish their right to have the evidence admitted; for the Court will be presumed to have acted correctly, until the contrary is established.

Read the rest of this entry »

Wheaton et al. v. Peters et al., 33 U.S. 591 (1834)

June 9th, 2016

A few years ago, I started a regular feature of posting the text of Supreme Court decisions that involved patents in some way.  The idea was to start with the earliest Supreme Court decisions and work toward present day.  Somehow that feature went off the rails.  So, let’s pick up again in 1834 with Wheaton et al. v. Peters et al., 33 U.S. 591 (1834), a copyright case that discusses the relationship between patents and copyrights:

HENRY WHEATON AND ROBERT DONALDSON, APPELLANTS
v.
RICHARD PETERS AND JOHN GRIGG.

Supreme Court of United States.

595*595 The case was argued by Mr Paine and Mr Webster, for the appellants; and by Mr Ingersoll, by a printed argument, and Mr Sergeant, for the defendants.

654*654 Mr Justice M’LEAN delivered the opinion of the Court.

After stating the case, he proceeded:

Some of the questions which arise in this case are as novel, in this country, as they are interesting. But one case involving similar principles, except a decision by a state court, has occurred; and that was decided by the circuit court of the United States for the district of Pennsylvania, from whose decree no appeal was taken.

The right of the complainants must be first examined. If this right shall be sustained as set forth in the bill, and the defendants shall be proved to have violated it, the court will be bound to give the appropriate redress.

The complainants assert their right on two grounds.

First, under the common law.

Secondly, under the acts of congress.

And they insist, in the first place, that an author was entitled, at common law, to a perpetual property in the copy of his works, and in the profits of their publication; and to recover damages for its injury, by an action on the case, and to the protection of a court of equity.

In support of this proposition, the counsel for the complainants have indulged in a wide range of argument, and have shown great industry and ability. The limited time allowed for the preparation of this opinion, will not admit of an equally extended consideration of the subject by the court.

Perhaps no topic in England has excited more discussion, among literary and talented men, than that of the literary property of authors. So engrossing was the subject, for a long time, as to leave few neutrals, among those who were distinguished 655*655 for their learning and ability. At length the question, whether the copy of a book or literary composition belongs to the author at common law, was brought before the court of king’s bench, in the great case of Miller v. Taylor, reported in 4 Burr. 2303. This was a case of great expectation; and the four judges, in giving their opinions, seriatim, exhausted the argument on both sides. Two of the judges, and Lord Mansfield held, that, by the common law, an author had a literary property in his works; and they sustained their opinion with very great ability. Mr Justice Yeates, in an opinion of great length, and with an ability, if equalled, certainly not surpassed, maintained the opposite ground.

Previous to this case, injunctions had issued out of chancery to prevent the publication of certain works, at the instance of those who claimed a property in the copyright, but no decision had been given. And a case had been commenced, at law, between Tonson and Collins, on the same ground, and was argued with great ability, more than once, and the court of king’s bench were about to take the opinion of all the judges, when they discovered that the suit had been brought by collusion, to try the question, and it was dismissed.

This question was brought before the house of lords, in the case of Donaldson v. Beckett and others, reported in 4 Burr. 2408.

Lord Mansfield, being a peer, through feelings of delicacy, declined giving any opinion. The eleven judges gave their opinions on the following points. 1st. Whether at common law an author of any book or literary composition, had the sole right of first printing, and publishing the same for sale; and might bring an action against any person who printed, published and sold the same, without his consent. On this question there were eight judges in the affirmative, and three in the negative.

2d. If the author had such right originally, did the law take it away, upon his printing and publishing such book or literary composition; and might any person, afterward, reprint and sell, for his own benefit, such book or literary composition, against the will of the author. This question was answered in the affirmative, by four judges, and in the negative by seven.

3d. If such action would have lain, at common law, is it taken away by the statute of 8 Anne; and is an author, by 656*656 the said statute, precluded from every remedy, except on the foundation of the said statute, and on the terms of the conditions prescribed thereby. Six of the judges, to five, decided that the remedy must be under the statute.

4th. Whether the author of any literary composition, and his assigns, had the sole right of printing and publishing the same in perpetuity, by the common law. Which question was decided in favor of the author, by seven judges to four.

5th. Whether this right is any way impeached, restrained or taken away, by the statute 8 Anne? Six, to five judges, decided that the right is taken away by the statute. And the lord chancellor, seconding Lord Camden’s motion to reverse, the decree was reversed.

It would appear from the points decided, that a majority of the judges were in favor of the common law right of authors, but that the same had been taken away by the statute.

The title and preamble of the statute, 8 Anne, ch. 19, is as follows: “An act for the encouragement of learning by vesting the copies of printed books in the authors or purchasers of such copies, during the times therein mentioned.

“Whereas printers, booksellers and other persons, have of late frequently taken the liberty of printing, reprinting and publishing, or causing to be printed, reprinted and published, books and other writings without the consent of the authors or proprietors of such books and writings, to their very great detriment, and too often to the ruin of them and their families,” &c.

In 7 Term Rep. 627, Lord Kenyon says, “all arguments in the support of the rights of learned men in their works, must ever be heard with great favor by men of liberal minds to whom they are addressed. It was probably on that account that when the great question of literary property was discussed, some judges of enlightened understanding went the length of maintaining, that the right of publication rested exclusively in the authors and those who claimed under them for all time; but the other opinion finally prevailed, which established that the right was confined to the times limited by the act of parliament. And, that, I have no doubt, was the right decision.”

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