717 Madison Place

JOSEPH SHAW, PLAINTIFF IN ERROR
v.
JOSEPH COOPER.

32 U.S. 292 (1833)

Supreme Court of United States.

299*299 The case was submitted to the court, on printed arguments, by Mr Paine, for the plaintiff in error; and Mr Emmet, for the defendant.

310*310 Mr Justice M’LEAN delivered the opinion of the Court.

This writ of error brings before this court, for its revision, a judgment of the circuit court of the United States for the southern district of New York.

An action was brought in the circuit court by Shaw against the defendant Cooper, for the violation of a certain patent right, claimed by the plaintiff. The defendant pleaded the general issue, and gave notice that on the trial he would prove “that the pretended new and useful improvement in guns and fire arms, mentioned and referred to in the several counts in the declaration; also that the said pretended new and useful improvement, or the essential parts or portions thereof, or some or one of them, had been known and used in this country, viz. in the city of New York and in the city of Philadelphia, and in sundry other places in the United States, and in England, in France, and in other foreign countries, before the plaintiff’s application for a patent as set forth in his declaration,” &c.

On the trial, the following bill of exceptions was taken: “to maintain the issue joined, the plaintiff gave in evidence certain letters patent of the United States, as set forth in the declaration, issued on the 7th day of May 1829; and also that the improvement for which the letters were granted, was invented or discovered by the plaintiff in 1813 or 1814; and that the defendant had sold instruments which were infringements of the said letters patent.

“And the defendant then proved, by the testimony of one witness, that he had used the said improvement in England, and had purchased a gun of the kind there, and had seen others use the said improvement, and had seen guns of the kind in the duke of York’s armoury in 1819. And also proved by the testimony of five other witnesses, that, in 1820 and 1821, they worked in England at the business of making and repairing guns, and that the said improvement was generally used in England in those years; but that they had never seen guns 311*311 of the kind prior to those years: and also proved that in the year 1821, it was used and known in France; and also that the said improvement was generally known and used in the United States after the 19th day of June 1822.

“And the plaintiff, further to maintain the issue on his part, then gave in evidence, that he not being a worker in iron in 1813 or 1814, employed his brother in England, under strict injunctions of secrecy, to execute or fabricate the said improvement for the purpose of making experiments. And that the plaintiff afterwards, in 1817, left England and came to reside in the United States; and that after his departure from England, in 1817 or 1818, his said brother divulged the secret for a certain reward to an eminent gun maker in London. That on the arrival of the plaintiff in this country, in 1817, he disclosed his said improvement to a gun maker, whom he consulted as to obtaining a patent for the same, and whom he wished to engage to join and assist him. That the plaintiff made this disclosure under injunctions of secrecy, claiming the improvement as his own, declaring that he should patent it. That the plaintiff treated his invention as a secret after his arrival in this country, often declaring that he should patent it; and that this step was only delayed, that he might make it more perfect before it was introduced into public use: and that he did make alterations which some witnesses considered improvements in his invention, and others did not. That in this country the invention was never known nor used prior to the said 19th day of June 1822; that on that day letters patent were issued to the plaintiff, being then an alien, and that he immediately brought his invention into public use. That afterwards, and after suits had been brought for a violation of the said letters patent, the plaintiff was advised to surrender them on account of the specification being defective; and that he did accordingly, on the 7th day of May in the year 1829, surrender the same into the department of the secretary of state, and received the letters patent first above named.

“And the plaintiff also gave in evidence that prior to the 19th day of June 1822, the principal importers of guns from England in New York and Philadelphia, at the latter of which cities the plaintiff resided, had never heard any thing of the 312*312 said invention, or that the same was used or known in England; and that no guns of the kind were imported into this country, until in the years 1824 or 1825. And that letters patent were granted in England on the 11th day of April 1807, to one Alexander J. Forsyth, for a method of discharging or giving fire to artillery and all other fire arms; which method he describes in his specification as consisting in the `use or application as a priming, in any mode, of some or one of those chemical compounds which are so easily inflammable as to be capable of taking fire and exploding without any actual fire being applied thereto, and merely by a blow, or by any sudden or strong pressure or friction given or applied thereto, without extraordinary violence; that is to say, some one of the compounds of combustible matter, such as sulphur or sulphur and charcoal, with an oxmuriatic salt; for example, the salt formed of dephlogisticated marine acid and potash (or potasse), which salt is otherwise called oxmuriate of potash; or such of the fulminating metallic compounds as may be used with safety; for example, fulminating mercury, or of common gunpowder mixed in due quantity with any of the above mentioned substances, or with any oxmuriatic salt, as aforesaid, or of suitable mixtures of any of the before mentioned compounds; and that the said letters patent continued in force for the period of fourteen years from the time of granting the same.”

And the defendant, further to maintain the issue on his part, gave in evidence a certain letter from the plaintiff to the defendant, dated in December in the year 1824, from which the following is an extract: “some time since I stated that I had employed counsel respecting regular prosecutions for any trespass against my rights to the patent; I have at length obtained the opinion of Mr Sergeant of this city, together with others eminent in the law, and that is, that I ought (with a view to insure success) to visit England, and procure the affidavits of Manton and others, to whom I made my invention known, and also of the person whom I employed to make the lock at the time of invention; for it appears very essential that I should prove that I did actually reduce the principle to practice, otherwise a verdict might be doubtful. It is, therefore, my intention to visit England in May next for this purpose; in the mean time 313*313 proceedings which have commenced here are suspended for the necessary time.”

And the court, on these facts, charged the jury that the patent of the 7th of May 1829, having been issued, as appears by its recital, on the surrender and cancelment of the patent of the 19th day of June in the year 1822; and being intended to correct a mistake or remedy a defect in the latter; it must be considered as a continuation of the said patent, and the rights of the plaintiff were to be determined by the state of things which existed in the year 1822, when the patent was first obtained.

That the plaintiff’s case, therefore, came under the act passed the 17th day of April 1800, extending the right of obtaining patents to aliens; by the first section of which the applicant is required to make oath, that his invention has not, to the best of his knowledge or belief, been known or used in this or any foreign country. That the plaintiff most probably did not know, in the year 1822, that the invention for which he was taking out a patent, had, before that time, been in use in a foreign country; but that his knowledge or ignorance on that subject was rendered immaterial by the concluding part of the section, which expressly declares, that every patent obtained pursuant to that act, for any invention which it should afterward appear had been known or used previous to such application for a patent, should be utterly void. That there was nothing in the act confining such use to the United States; and that, if the invention was previously known in England or France, it was sufficient to avoid the patent under that act. That the evidence would lead to the conclusion that the plaintiff was the inventor in this case, but the court were of opinion that he had slept too long on his rights, and not followed them up as the law requires, to entitle him to any benefit from his patent. That the use of the invention, by a person who had pirated it, or by others who knew of the piracy, would not affect the inventor’s rights, but that the law was made for the benefit of the public as well as of the inventor; and if, as appears from the evidence in this case, the public had fairly become possessed of the invention before the plaintiff applied for his patent, it was sufficient, in the opinion of the court, to invalidate the 314*314 patent; even though the invention may have originally got into public use through the fraud or misconduct of his brother, to whom he entrusted the knowledge of it.

Under this charge the jury found a verdict for the defendant, on which a judgment was entered.

There is a general assignment of errors, which brings to the consideration of the court the principles of law which arise out of the facts of the case, as stated in the bill of exceptions.

It may be proper, in the first place, to inquire whether the letters patent which were obtained in 1829, on a surrender of the first patent, have relation to the emanation of the patent in 1822, or shall be considered as having been issued on an original application.

On the part of the plaintiff it is contended, that “the second patent is original and independent, and not a continuation of the first patent.” That in adopting the policy of giving, for a term of years, exclusive rights to inventors in this country, we adopted at the same time the rules of the common law as applied to patents in England: and that by the common law, a patent when defective may be surrendered to the granting power, which vacates the right under it, and the king may grant the right de novo either to the same or to any other person.

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31 U.S. 218 (1832) 6 Pet. 218

JOSEPH GRANT AND OTHERS
v.
E. AND H. RAYMOND.

Supreme Court of United States.

227*227 The case was argued by Mr Webster, for the defendants in the circuit court, now before the court as plaintiffs in error; and by Mr Ogden, for the defendants, plaintiffs in the circuit court.

Mr Ogden, for the defendants in error.

238*238 Mr Chief Justice MARSHALL delivered the opinion of the Court.

239*239 This action was brought by Grant and Townsend against E. and H. Raymond, to recover damages for an infringement of their right under a patent granted to the plaintiff Joseph Grant, in April 1825. It recited that a former patent had been issued in August 1821, to the same person for the same improvement, “which had been cancelled, owing to the defective specification on which the same was granted.” The exclusive privilege given by the patent on which the suit is brought, is to continue fourteen years from the day on which the original was issued.

One of the pleas filed by the defendants, contained the following averment: “and the defendants aver that said specification does not correctly or accurately describe the improvement claimed by the said Joseph Grant as his invention, but said specification, and the drawings thereto annexed, are altogether defective in this, among other things, namely: in said specification no proportion, sizes or distances are given, and the bigness or size of none of the principal parts of said machine is given in said specifications or drawings, but the same is wholly omitted; and in other particulars, said specifications and drawings are wholly defective: and the defendants aver that said specification annexed to and making part of said letters patent, with the drawings thereto annexed, do not contain a written description of his the said Joseph Grant’s invention and improvement aforesaid, and manner of using it, in such full, clear and exact terms, as to distinguish the same from all other things before known, and so as to enable any person skilled in the art of which said machine or improvement is a branch, or with which it is most nearly connected, to make and use the same; and that for the cause aforesaid, said letters patent are void.”

The plaintiffs reply that they ought not to be barred, “because they say that the specification mentioned in the said last mentioned plea, does correctly and accurately describe the improvement claimed by the said Joseph Grant as his invention; and because they say further, that neither the said specification, nor the drawings thereto annexed, are defective in any of the particulars in that behalf alleged in the said last mentioned plea, and this they pray may be inquired of by the country.” On this replication issue was joined.

240*240 At the trial the counsel for the defendants objected that the secretary of state had no power by law to accept a surrender of, and to cancel the said letters patent, or to inquire into or to decide upon the causes for so doing, or to grant said second patent for the same invention with an amended specification, for the unexpired portion of the term of fourteen years which had been granted by the first patent.

The court decided that such surrender might be made when the defect arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee; and that the secretary of state had authority to accept such surrender, and cancel the record of the patent, and to issue a new patent for the unexpired part of the fourteen years granted under the old patent, in manner aforesaid. To which decision the counsel for the defendants excepted.

After adducing the testimony on which they relied to support their plea herein before stated, the counsel for the defendants moved the court to instruct the jury that if they found that the defendants had maintained and proved their averments in that respect, that they must find the same for the defendants; which instructions the court refused to give, but instructed the jury that the patent would not be void on this ground, unless such defective or imperfect specification or description arose from design, and for the purpose of deceiving the public; to which opinion the counsel for the defendants also excepted.

The jury found a verdict for the plaintiffs, and assessed their damages to three thousand two hundred and sixty-six dollars sixty-six cents: the judgment on which is brought before this court by a writ of error.

The first question in the cause respects the power of the secretary of state to receive a surrender of a patent, cancel the record thereof, and issue a new patent for the unexpired part of the fourteen years for which the original had been granted. The court was of opinion that this might be done “when the defect in the specification arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee.”

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27 U.S. 449 (1829)2 Pet. 449

PLOWDEN WESTON AND OTHERS, PLAINTIFFS IN ERROR
vs.
THE CITY COUNCIL OF CHARLESTON, DEFENDANTS.

Supreme Court of United States.

451*451 The case was argued by Mr Hayne, for the plaintiffs in error; and by Mr Cruger and Mr Legare, for the defendants.

463*463 Mr Chief Justice MARSHALL delivered the opinion of the Court.

This case was argued on its merits at a preceding term; but a doubt having arisen with the Court respecting its jurisdiction in cases of prohibition, that doubt was suggested to the bar, and a re-argument was requested. It has been reargued at this term.

The power of this Court to revise the judgments of a state tribunal, depends on the 25th section of the judicial act. That section enacts “that a final judgment or decree in any suit in the highest court of law or equity of a state in which a decision in the suit could be had,” “where is drawn in question the validity of a statute or of an authority exercised under any state, on the ground of their being repugnant to the constitution, treaties, or laws of the United States, and the decision is in favour of such their validity,” “may be re-examined and reversed or affirmed in the Supreme Court of the United States.”

In this case the city ordinance of Charleston is the exercise of an “authority under the state of South Carolina,” 464*464 “the validity of which has been drawn in question on the ground of its being repugnant to the constitution,” and “the decision is in favour of its validity.” The question therefore which was decided by the constitutional court, is the very question on which the revising power of this tribunal is to be exercised, and the only inquiry is, whether it has been decided in a case described in the section which authorises the writ of error that has been awarded. Is a writ of prohibition a suit?

The term is certainly a very comprehensive one, and is understood to apply to any proceeding in a court of justice, by which an individual pursues that remedy in a court of justice, which the law affords him. The modes of proceeding may be various, but if a right is litigated between parties in a court of justice, the proceeding by which the decision of the court is sought, is a suit. The question between the parties, is precisely the same as it would have been in a writ of replevin, or in an action of trespass. The constitutionality of the ordinance is contested; the party aggrieved by it applies to a court; and at his suggestion, a writ of prohibition, the appropriate remedy, is issued. The opposite party appeals; and, in the highest court, the judgment is reversed and judgment given for the defendant. This judgment was, we think, rendered in a suit.

We think also that it was a final judgment in the sense in which that term is used in the 25th section of the judicial act. If it were applicable to those judgments and decrees only in which the right was finally decided, and could never again be litigated between the parties, the provisions of the section would be confined within much narrower limits than the words import, or than congress could have intended. Judgments in actions of ejectment, and decrees in chancery dismissing a bill without prejudice, however deeply they might affect rights protected by the constitution, laws, or treaties of the United States, would not be subject to the revision of this Court. A prohibition might issue, restraining a collector from collecting duties, and this Court would not revise and correct the judgment. The word “final” must be understood in the section under consideration, as applying 465*465 to all judgments and decrees which determine the particular cause.

We think then that the writ of error has brought the cause properly before this Court.

This brings us to the main question. Is the stock issued for loans made to the government of the United States liable to be taxed by states and corporations?

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27 U.S. 1 (____)

2 Pet. 1

ABRAHAM L. PENNOCK & JAMES SELLERS, PLAINTIFFS IN ERROR
vs.
ADAM DIALOGUE.

Supreme Court of United States.

4*4 Mr Webster, for the plaintiff in error.

Mr Sergeant, for the defendant.

14*14 Mr. Justice STORY delivered the opinion of the Court.

This is a writ of error to the circuit court of Pennsylvania. The original action was brought by the plaintiffs in error for an asserted violation of a patent, granted to them on the 6th of July 1818, for a new and useful improvement in the art of making leather tubes or hose, for conveying air, water, and other fluids. The cause was tried upon the general issue, and a verdict was found for the defendant, upon which judgment passed in his favour; and the correctness of that judgment is now in controversy before this court.

At the trial, a bill of exceptions was taken to an opinion delivered by the court, in the charge to the jury, as follows, viz. “That the law arising upon the case was, that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons 15*15 the inchoate right to the exclusive use of the invention, to which a patent would have entitled him had it been applied for before such use. And, that it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. And thereupon, did charge the jury, that if the evidence brings the case within the principle which had been stated, the court were of opinion that the plaintiffs were not entitled to a verdict.”

The record contains, embodied in the bill of exceptions, the whole of the testimony and evidence offered at the trial by each party, in support of the issue. It is very voluminous, and as no exception was taken to its competency, or sufficiency, either generally or for any particular purpose; it is not properly before this Court for consideration, and forms an expensive and unnecessary burthen upon the record. This Court has had occasion in many cases to express its regret, on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record, since the opinion of the court delivered to the jury, presented a general principle of law, and the application of the evidence to it was left to the jury.

In the argument at the bar, much reliance has been placed upon this evidence, by the counsel for both parties. It has been said on behalf of the defendants in error; that it called for other and explanatory directions from the court, and that the omission of the court to give them in the charge, furnishes a good ground for a reversal, as it would have furnished in the court below for a new trial. But it is no ground of reversal that the court below omitted to give directions to the jury upon any points of law which might arise in the cause, where it was not requested by either party at the trial. It is sufficient for us that the court has given no erroneous directions. If either party deems any point presented by the evidence to be omitted in the charge, it is competent for such party to require an opinion from the court upon that point. If he does not, it is a waiver of it. 16*16 The court cannot be presumed to do more, in ordinary cases, than to express its opinion upon the questions which the parties themselves have raised at the trial.

On the other hand, the counsel for the defendant in error has endeavoured to extract from the same evidence, strong confirmations of the charge of the court. But, for the reason already suggested, the evidence must be laid out of the case, and all the reasoning founded on it falls.

The single question then is, whether the charge of the court was correct in point of law. It has not been, and indeed cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure; for, where gifts are once made to the public in this way, they become absolute. Thus, if a man dedicates a way, or other easement to the public, it is supposed to carry with it a permanent right of user. The question which generally arises at trials, is a question of fact, rather than of law; whether the acts or acquiescence of the party furnish in the given case, satisfactory proof of an abandonment or dedication of the invention to the public. But when all the facts are given, there does not seem any reason why the court may not state the legal conclusion deducible from them. In this view of the matter, the only question would be, whether, upon general principles, the facts stated by the court would justify the conclusion.

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23 U.S. 358 (1825)

10 Wheat. 358

KEPLINGER
v.
DE YOUNG.

Supreme Court of United States.

359*359 This cause was argued by Mr. Webster and Mr. Sergeant, for the plaintiff, and by the Attorney General, for the defendant.

Mr. Justice WASHINGTON delivered the opinion of the Court.

This was a suit commenced by the plaintiff, Keplinger, in the Fourth Circuit for the District of Maryland, against the defendant, for the violation of the plaintiff’s patent right, secured to him according to law, in a certain new and useful improvement, to wit, a machine for making watch chains, &c. The third count in the declaration, upon which alone this cause has been argued, is in the usual form, charging the defendant with having unlawfully used the said improvement, without the consent of the plaintiff first had and obtained in writing. The defendant pleaded the general issue, and gave notice to the plaintiff that he should deny that the exclusive right of using the improvement mentioned in the declaration, was vested in the plaintiff, or that he was the original and first inventor of the said improvement, and that he should give evidence to establish those facts.

360*360 At the trial, the plaintiff read in evidence the letters patent duly granted, bearing date the 4th of May, 1820, and proved, that he was the true and original inventor of the machine specified in the patent, and that the defendant, together with John Hatch and John C. Kirkner, did use the said machine in the making of watch-chains from steel, from the 4th of May till some time in the month of December, 1820.

The defendant, in order to prove that any concern or connexion which he had with the said Hatch and Kirkner, in the making of watch-chains, by means of the said machine, was merely as a purchaser of watch-chains from them under the following contract, produced and gave the same in evidence. The agreement referred to, bearing date the 3d of May, 1820, is between M. De Young, and J. Hatch and J. Kirkner, and witnesses, “that the said Hatch and Kirkner do hereby engage and obligate themselves to manufacture and deliver to M. De Young, or at his store in said city, not less than three gross, but as many as five gross, of wire watch chains, agreeably to a sample to be deposited with T. Barly, (if practicable to manufacture so many,) in each week, from the date hereof, for the term of six months, one half of which number to be with turned slides, and the other half wire slides; the whole number to be four strands, if the said De Young so choose; but he is to have the privilege of directing the description to be furnished, that is to say, what number of four, five, six, or eight strands; the prices of 361*361 which to be as follows: four strands, two dollars per dozen; six strands, two dollars sixty-six cents and two thirds per dozen, and eight strands at the rate of three dollars thirty-three cents per dozen; said Hatch & Kirkner to devote their whole time and attention to said manufactory, and neither to sell, barter, nor dispose of, in any manner, or way, or means whatever, of any goods of the description herein before described, or which may, in any manner or way whatsoever, interfere with the exclusive privilege herein before granted, but will faithfully manufacture for said De Young, and none other, as far as five gross of chains per week, if practicable, and not less than three gross per week, at the prices herein before stipulated, and payable as follows: one half in cash at the end of every week, for the total number delivered within the week, and the other half in said De Young’s promissory note, payable at sixty days from the date thereof. And the said De Young, on his part, doth hereby promise to receive from the said Hatch & Kirkner, such quantity of watch-chains answering the description of the sample, as it may be in their power to manufacture, not exceeding five gross per week, reserving to himself the privilege of directing what proportion thereof shall be four, six, or eight strands, and pay for the same weekly in the following manner, viz. the one half amount of week’s delivery in cash, the other half in a note at sixty days, the same to be settled for weekly; in manner aforesaid, if required.”

The defendant also gave evidence to prove 362*362 that all the connexion he ever had with the said Hatch & Kirkner, relative to watch-chains made by them with the said machine or otherwise, was merely as a purchaser of such chains from them, under and in pursuance of the said contract.

The plaintiff then proved, that, at the time of making the said contract, the defendant was fully apprized of the existence of the machine described and specified in the patent, and of its prior and original invention by the plaintiff, and of the intention of the plaintiff to obtain the said patent; and that the said contract was made with a view to the employment by the said Hatch & Kirkner, in the manufacture of watch-chains, of a machine precisely similar to that invented by the plaintiff, after the plaintiff should have obtained his patent; and that a machine precisely similar to that invented by the plaintiff was employed by the said Hatch & Kirkner in the manufacture of watch-chains by them under the said contract, and with the knowledge and consent of the defendant during the whole period aforesaid, he and they having received notice, on the 5th of May, 1820, of the plaintiff’s patent; and that the watch-chains so manufactured by Hatch & Kirkner, during the whole of the said period, were delivered by them to the defendant, and by him received, under and in conformity with the said contract.

Upon this evidence, the Court, at the request of the defendant’s counsel, instructed the jury, that the plaintiff was not entitled to a verdict on the first and second counts in his declaration. 363*363 because the acts which they charge, if true, constitute no offence against the plaintiff’s patent. And that, if the jury should be of opinion, on the evidence, that the plaintiff is the sole and original inventor of the whole machine; and that the defendant had no other connexion with Hatch & Kirkner with regard to these chains, than that which arose from his said contract with them, under which he procured the chains to be made by Hatch & Kirkner, and sold them when so made; and that the said contract is a real contract; then these acts constituted no breach of the plaintiff’s patent-right on the part of De Young, and that the verdict must be for the defendant; and that this legal aspect would not be changed, although the defendant may, on any occasion, have supplied, at the cost of Hatch & Kirkner, the wire from which the chains so manufactured were made.

To this instruction the plaintiff’s counsel took a bill of exceptions, and a verdict and judgment having been rendered for the defendant, the cause is brought into this Court by a writ of error.

The only question which is presented by the bill of exceptions to the consideration of this Court is, whether the Court below erred in the instruction given to the jury; and this must depend upon the correct construction of the 3d section of the act of Congress, of the 17th of April, 1800, c. 179. which enacts, “that where any patent shall be granted, pursuant to 364*364 the act of the 21st February, 1793, c. 156. and any person without the consent of the patentee, his executors, &c. first obtained in writing, shall make, devise, use, or sell, the thing whereof the exclusive right is secured to the said patentee by such patent, such person so offending shall forfeit and pay to the said patentee, a sum equal to three times the actual damage sustained by such patentee,” &c.

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22 U.S. 603 (1824)

9 Wheat. 603

Ex parte WOOD & BRUNDAGE.

Supreme Court of United States.

March 11, 1824.

March 17, 1824.

This cause was argued by Mr. Haines,^[a] in support of the rule, and by Mr. Emmett,^[b] against it.

Mr. Justice STORY delivered the opinion of the Court.

The District Judge of the southern district of New-York, under the 10th section of the patent act, of the 21st of February, 1793, chapter 11., granted a rule upon Charles Wood and Gilbert 604*604 Brundage, at the instance and complaint of Jethro Wood, to show cause why process should not issue against them, to repeal a patent granted to them for a certain invention, in due form of law; and upon hearing the parties, no sufficient cause being, in his judgment, shown to the contrary, he, on the 2d day of July, 1823, passed an order, that the said rule be made absolute, and that the said patent be repealed; and that process issue to repeal the said patent, and for the costs of the complainant. The patentees, by their counsel, moved the Court to direct a record to be made of the whole proceedings, and that process, in the nature of a scire facias, should be issued, to try the validity of the patent. The Court denied the motion, upon the ground that these were summary proceedings, and that the patent was repealed de facto, by making the rule absolute; and that the process to be issued, was not in the nature of a scire facias, to try the validity of the patent, but merely process repealing the patent.

A motion was made, on a former day of this term, in behalf of the patentees, for a rule upon the district Judge, to show cause why a mandamus should not issue from this Court, directing him to make a record of the proceedings in the cause, and to issue a scire facias, for the purpose of trying the validity of the patent. The rule having been granted, and due service had, the case has since been argued by counsel, for and against the rule; and the opinion of this Court is now to be delivered.

Two objections have been urged at the bar, 605*605 against the making this rule absolute. The first is, that these proceedings, being summary, are not properly matters of record. The second, that this is not a case in which, by law, a scire facias, or process in the nature of a scire facias, can be awarded, to try the validity of the patent.

Both of these objections are founded upon the provisions of the 10th section of the patent act, and must be decided by a careful examination of those provisions. The words are, “that, upon oath or affirmation being made, before the Judge of the District Court, where the patentee, his executors, &c. reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said Court within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the Judge of the said District Court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee, or his executor, &c. show cause why process should not issue against him, to repeal such patent; and if sufficient cause shall not be shown to the contrary, the rule shall be made absolute; and thereupon, the Judge shall order process to be issued against such patentee, or his executors, &c., with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such Court for the repeal of the said patent. And if the party at whose complaint the process issued, shall have judgment given against him, he shall pay all 606*606 such costs as the defendant shall be put to in defending the suit, to be taxed by the Court, and recovered in due course of law.”

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Recently, I was looking for more information on the state granted business monopoly (business method??)  that was at the heart of the dispute in Gibbons v. Ogden when I ran across the book Gibbons v. Ogden, Law, and Society in the Early Republic.   The author, Thomas H. Cox, recounts the legislative process for the Patent Act of 1793:

The Patent Act of 1790 appeared simple, but in practice, it proved unworkable.  Many inventors complained that federal patents were expensive, hard to obtain, impossible to enforce, and limited in scope. Secretary of State Thomas Jefferson condemned the very concept of patents as antidemocratic. In truth, he  and his colleagues lacked the time to review applications. On February 4, 1791, Jefferson lobbied Congress to revise existing U.S. patent law. Three days later, he submitted a bill that made the application process more costly and timeconsuming.  Specifically, the bill required an applicant to petition the secretary of state for a warrant that testified to the usefulness of the invention. After paying a fee directly to the treasury, the inventor then had to register with every U.S. federal district court and publish notices of the invention three times in a major paper in each of those districts to warn away other competitors.

While Jefferson drafted the bill, the Patent Board reviewed requests from John Fitch, James Rumsey, Henry Read, and John Stevens. To avoid confrontations, the board canceled a hearing with the inventors and urged them to wait for the passage of the new patent bill, which was before Congress at the time. Fitch protested the bill, stating he “had no idea that he must go all the way from Kentucky to Cape Cod, and quite the Distance of Province of Main[e] to publish his inventions, and to pay out large fees wherever he goes for the same.” For once on the same side as Fitch, Joseph Barnes published a polemic that condemned Jefferson’s bill for favoring European technological discoveries over American inventive genius. Despite Barnes’s strong words, the ever-wary Fitch suspected Jefferson and Rumsey of collusion to keep him from developing a steamboat franchise.

Jefferson resubmitted his bill to Congress early in March 1792. The measure now required an applicant to register with the secretary of state, pay a fee, and provide a short description and model of the invention. The inventor, however, still had to file and register the patent in every judicial district in the United States. The new bill also allowed an offender to claim ignorance of the law or irrelevancy of the patent in question as valid defenses. It specified that patents were the private, intellectual property of their owners and that the public would not be allowed to view related documents until the originals expired. In addition, the bill asserted that federal patents trumped any state licenses granted before the

ratification of the U.S. Constitution. Furthermore, applicants had to be American citizens.

When Congress reconvened in January 1793, it appointed a committee, chaired by Hugh Williamson, to consider Jefferson’s bill. The following month, the bill passed both houses of Congress to become the Patent Act of 1793. In 1800, Congress revised the act to allow resident aliens to apply and to set heavy fines for those who infringed on patent rights.  However, like its predecessor, the revised act allowed applicants to secure patents for inventions regardless of how similar their discoveries might  be. Fitch, Rumsey, Read, and Stevens quickly secured federal patents for their steamboats under the new federal guidelines. However, realizing the worthlessness of such documents, the inventors quickly turned to the states to protect their work.

 Gibbons v. Ogden, Law and Society in the Early Republic, Ohio University Press-Swallow Press, 2009 at pp. 14-15.

22 U.S. 1 (1824)9 Wheat. 1

GIBBONS, Appellant,
v.
OGDEN, Respondent.

Supreme Court of United States.

February 4, 5, and 6, 1824.

March 2, 1824.

3*3 Mr. Webster, for the appellant.

Mr. Oakley, for the respondent.

186*186 Mr. Chief Justice MARSHALL delivered the opinion of the Court, and, after stating the case, proceeded as follows:

The appellant contends that this decree is erroneous, because the laws which purport to give the exclusive privilege it sustains, are repugnant to the constitution and laws of the United States.

They are said to be repugnant —

1st. To that clause in the constitution which authorizes Congress to regulate commerce.

2d. To that which authorizes Congress to promote the progress of science and useful arts.

The State of New-York maintains the constitutionality of these laws; and their Legislature, their Council of Revision, and their Judges, have repeatedly concurred in this opinion. It is supported by great names — by names which have all the titles to consideration that virtue, intelligence, and office, can bestow. No tribunal can approach the decision of this question, without feeling a just and real respect for that opinion which is sustained by such authority; but it is the province of this Court, while it respects, not to bow to it implicitly; and the Judges must exercise, in the examination of the subject, that understanding which Providence has bestowed upon them, with that independence which the people of the United 187*187 States expect from this department of the government.

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20 U.S. 356 (1822)

7 Wheat. 356

EVANS
v.
EATON.

Supreme Court of United States.

March 4, 1822.

March 20, 1822.

357*357 Mr. C.J. Ingersoll,^[a] for the plaintiff.

Mr. Sergeant, contra.

Mr. Justice WASHINGTON.

This is an action for an infringement of the plaintiff’s patent, which the plaintiff alleges to be,

1. For the whole of the machine employed in the manufacture of flour, called the Hopperboy.

2. For an improvement on the Hopperboy.

The question is, is the plaintiff entitled to recover upon either of these claims? The question is stated 358*358 thus singly, because the defendant admits that he uses the very Hopperboy for which the patent is, in part, granted, and justifies himself by insisting,

1st. That the plaintiff was not the original inventor of, but that the same was in use prior to the plaintiff’s patent, the Hopperboy as patented.

2d. That his patent for an improvement is bad; because the nature and extent of the improvement is not stated in his specification; and if it had been, still the patent comprehends the whole machine, and is therefore too broad.

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20 U.S. 453 (1822) 

7 Wheat. 453

EVANS
v.
HETTICH.

Supreme Court of United States.

March 20, 1822.

468*468 Mr. Justice STORY delivered the opinion of the Court.

This case is an action for an infringement of the same patent as in Evans v. Eaton;^[a] and many of the remarks in that case are applicable to this; and therefore the opinion now delivered will refer to such points only, as are not completely disposed of by the opinion already delivered. The evidence in this case does not establish, that the defendant used the plaintiff’s improved Hopperboy; but the Hopperboy used by the defendant, is asserted to be Stouffer’s Hopperboy. At the new trial, a Mr. Aby was offered as a witness by the defendant, to prove the nature and character of the Hopperboy used by the defendant; the plaintiff objected to his testimony, as incompetent, because he was sued by the plaintiff for an infringement of his patent right, under circumstances similar to those alleged in proof against the defendant. The Court overruled the objection; and the witness was then sworn on the voir dire, as to his interest in the suit; but upon a full examination, it did not appear that he was really interested; and the Court therefore permitted him to be sworn in chief. The plaintiff took an exception to this decision of the Court. The objection to the competency of Aby, so far as he has an interest from being sued, cannot 469*469 be distinguished, in principle, from that already overruled in the case of Evans v. Eaton. There is this additional circumstance in this case, that Aby was not called as a general witness, but to establish a single fact, viz. the nature and character of the Hopperboy used by the defendant. The other objection upon his answers on the voir dire, is disposed of by the single remark that he purged himself of any real interest in the event of the suit. A question was asked of this witness, on his examination in chief, whether the Hopperboy in the defendant’s mill was like the model exhibited in Court of the plaintiff’s patented Hopperboy; the plaintiff objected to the question, because such testimony could not be given in this case, for want of notice thereof. But the objection was overruled by the Court; and, in our judgment, with perfect correctness. No notice was necessary to authorize the inquiry; and if the plaintiff meant to rely on the notice required by the sixth section of the patent act, in certain cases, it is only necessary to say, that this was not within the provision of that class of cases. The question was perfectly proper under the general issue. Similar objections were taken to other witnesses; but it is unnecessary to remark on them.

An inquiry was proposed by the plaintiff, to one of the witnesses, whether one Peter Stouffer had paid the plaintiff for a license for his mill; but the Court refused to allow the question to be asked; and we see no reason why it should have been allowed, for it merely referred to an act among strangers, which ought not to prejudice the defendant. A 470*470 similar question was proposed to be asked of the same witness, whether the executors of Jacob Stouffer had paid the plaintiff for a license for the mill of Jacob; the Court overruled the question; and for the same reason, it was rightly overruled.

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