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13 U.S. 199 (1815)

9 Cranch 199

EVANS
v.
JORDAN AND MOREHEAD.

Supreme Court of United States.

March 2, 1815.

March 4, 1815.

Absent… . TODD, J.

200*200 HARPER, for the Plaintiff.

E.I. LEE, and P.B. KEY, contra.

201*201 WASHINGTON, J. delivered the opinion of the Court as follows:

202*202 The question certified to this Court, by the Circuit Court for the district of Virginia, and upon which the opinion of this Court is required, is, whether, after the expiration of the original patent granted to Oliver Evans, a general right to use his discovery was not so vested in the public as to require and justify such a construction of the act passed in January, 1808, entitled “an act for the relief of Oliver Evans” as to exempt from either treble or single damages, the use, subsequent to the passage of the said act, of the machinery therein mentioned, which was erected subsequent to the expiration of the original patent and previous to the passage of the said act.

The act, upon the construction of which the judges of the Circuit Court, were opposed in opinion, directs a patent to be granted, in the form prescribed by law, to Oliver Evans for 14 years, for the full and exclusive right of making, constructing, using, and vending to be used, his invention, discovery and improvements in the art of manufacturing flour and meal, and in the several machines which he has discovered, invented, improved, and applied to that purpose.

The proviso upon which the question arises is in the following words: “provided, that no person who may have heretofore paid the said Oliver Evans for license to use the said improvements, shall be obliged to renew said license, or be subject to damages for not renewing the same; and, provided also, that no person who shall have used the said improvements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages therefor.”

The language of this last proviso is so precise, and so entirely free from all ambiguity, that it is difficult for any course of reasoning to shed light upon its meaning. It protects against any claim for damages which Evans might make, those who may have used his improvements, or who may have erected them for use, prior to the issuing of his patent under this law. The protection is limited to acts done prior to another act thereafter to be performed, to wit, the issuing of the patent. To extend it, by construction to acts which might be done subsequent to the issuing of the patent, would be to make, not to interpret the law.

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The second patent decision by the U.S. Supreme Court was Evans v. Eaton, 16 U.S. 210 (1818):

16 U.S. 210 (1818)

3 Wheat. 210

EVANS
v.
EATON.

Supreme Court of United States.

223*223 February 6th. C.J. Ingersoll, for the plaintiff.

Hopkinson and Sergeant, contrà.

232*232 *503] *March 7th, 1818. MARSHALL, Ch. J., delivered the opinion of the court.

In this case, exceptions were taken in the circuit court, by the counsel for the plaintiff in error, 1st. To the opinion of the court, in admitting testimony offered by the defendant in that court. 2d. To its opinion in rejecting testimony offered by the plaintiff in that court. 3d. To the charge delivered by the judge to the jury.

Under the 6th section of the act for the promotion of useful arts, and to repeal the act heretofore made for that purpose, the defendant pleaded the general issue, and gave notice that he would prove at the trial, that the improved hopperboy, for the use of which, without license, this suit was instituted, had been used previous to the alleged invention of the said Evans, in several places (which were specified in the notice), or in some of them, “and also at sundry other places in Pennsylvania, Maryland, and elsewhere in the United States.” Having given evidence as to some of the places specified in the notice, the defendant offered evidence as to some other places 233*233 not specified. This evidence was objected to by the plaintiff, but admitted by the court; to which admission, the plaintiff’s counsel excepted.

The 6th section of the act appears to be drawn, on the idea, that the defendant would be not at liberty to contest the validity of the patent on the general issue. It, therefore, intends to relieve the defendant from the difficulties of pleading, when it allows him to give in *evidence matter [*504 which does affect the patent. But the notice is directed for the security of the plaintiff, and to protect him against that surprise to which he might be exposed, from an unfair use of this privilege. Reasoning merely on the words directing this notice, it might be difficult to define, with absolute precision, what it ought to be include, and what it might omit. There are, however, circumstances in the act which may have some influence on this point. It has been already observed, that the notice is substituted for a special plea; it is further to be observed, that it is a substitute to which the defendant is not obliged to resort. The notice is to be given only when it is intended to offer the special matter in evidence on the general issue. The defendant is not obliged to pursue this course, he may still plead specially, and then the plea is the only notice which the plaintiff can claim.^[1] If, then, the defendant may give in evidence, on a special plea, the prior use of the machine, at places not specified in his plea, it would seem to follow, that he may give in evidence its use, at places not specified in his notice. It is not believed, that a plea would be defective, which did not state the mills in which the machinery alleged to be previously used was placed.

But there is still another view of this subject, which deserves to be considered. The section which directs this notice, also directs, that if the special matter stated in the section be proved, “judgment shall be rendered for the defendant, with costs, and the patent shall be declared void.” The notice might be intended, not only for the information of the plaintiff, *but for the purpose of spreading on the record the cause for which [*505 the patent was avoided. This object is accomplished by a notice which specifies the particular matter to be proved. The ordinary powers of the court are sufficient to prevent, and will, undoubtedly, be so exercised, as to prevent the patentee from being injured by the surprise.

This testimony having been admitted, the plaintiff offered to prove that the persons, of whose prior use of the improved hopperboy the defendant had given testimony, had paid the plaintiff for licenses to use his improved hopperboy in their mills, since his patent. This testimony was rejected by the court, on the motion of the defendant, and to this opinion of the court, also, the plaintiff excepted. The testimony offered by the plaintiff was entitled to very little weight, but ought not to have been absolutely rejected. Connected with other testimony, and under some circumstances, even the opinion of a party may be worth something. It is, therefore, in such a case as this, deemed more safe to permit it to go to the jury, subject, as all testimony is, to the animadversion of the court, than entirely to exclude it.

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It strikes me that the patent bar is much more familiar with the opinions issued by the Federal Circuit than it is with US Supreme Court patent cases.  I thought it might be interesting to post a historical Supreme Court case each week.  In just a few years, we should be able to polish off all of the US Supreme Court’s patent opinions.

The Supreme Court’s first patent case is a short one and was decided in 1810 as Tyler v. Tuel, 10 U.S. 324 (1810): 

PRIOR HISTORY:       THIS was a case certified from the circuit court of the district of Vermont.

Tyler and others, as assignees of Benjamin Tyler, the original patentee of an improvement in grist-mills, which he called the wry-fly, or side wheel.

After a verdict for the plaintiffs, the judges of the court below, upon a motion in arrest of judgment, were divided in opinion upon the question “whether the plaintiffs, by their own showing, are legal assignees to maintain this action.”

There were two counts in the declaration.

The first set forth the substance of the statutes upon the subject of patents for useful discoveries, the facts necessary to entitle the patentee to a patent for his invention, and the patent itself, together with the specification, dated February 20, 1800.

The averment of the assignment of the patent right to the plaintiffs was in these words: “And the plaintiffs further say, that the said Benjamin Tyler afterwards, to wit, on the 15th day of May in the year last aforesaid, at said Claremont, by his certain deed of that date by him signed, sealed, and to the plaintiffs then and there by the said Benjamin delivered, and ready to be shown to the court, did in consideration of the sum of six thousand dollars, to him before that time by the plaintiffs paid, grant, bargain, sell, assign and set over to the plaintiffs, their executors, administrators and assigns, all the right, title and privilege in, unto, and over the said improvement in the said patent described, and thereby vested in the said Benjamin in any part of the United States, excepting in the counties of Chittenden, Addison, Rutland and Windham, in the state of Vermont.”

The second count, omitting the recital of the statutes and of the patent, stated concisely the same facts.  The averment of the assignment of the patent right was as follows: “And the said Benjamin Tyler, afterwards, and before the expiration of the said fourteen years, to wit, at said Claremont, on the 15th day of May, in the year last aforesaid, by his certain deed of that date by him then and there signed, sealed, and to the plaintiffs delivered, assigned to the plaintiffs the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, in and throughout the United States, excepting in the counties of Chittenden, Addison, Rutland and Windham, in the state of Vermont, as fully and amply as by said letters patent the said Benjamin Tyler was thereto entitled, and all his title and interest in and unto said improvement excepting as aforesaid.”

COUNSEL: Hubbard, for the defendant, contended that the assignment, being of part of the patent right only, was not such as would authorize the assignees to maintain an action on the statute.  (Laws U.S. vol. 2. p. 202. § 4, 5.

The fourth section of the act declares, “that it shall be lawful for any inventor, his executor or administrafor, to assign the title and interest in the said invention at any time, and the assignee, having recorded the said assignment in the office of the secretary of state, shall thereafter stand in the place of the original inventor both as to right and responsibility, and so the assignees of assigns to any degree.”

The fifth section provides, “that if any person shall make, devise and use, or sell the thing so invented, the exclusive right of which shall, as aforesaid, have been secured to any person by patent, without the consent of the patentee, his executors, administrators or assigns first obtained in writing, every person so offending shall forfeit and pay to the patentee a sum that shall be at least equal to three times the price for which the patentee has usually sold or licensed to other persons the use of the said invention; which may be recovered in an action on the case founded on this act, in the circuit court of the United States, or any other court having competent jurisdiction.”

It is evident from the whole purview of the statute, especially from the 4th, 5th, 6th and 10th sections, that no person can be considered as an assignee under the statute, who is not the assignee of the whole right of the original patentee.

Rodney, Attorney-General, contra.

Upon a motion in arrest of judgment, if the judges are divided, the motion fails, and the judgment must be entered of course.  It must follow the verdict, unless sufficient cause be shown to the contrary.  1 Salk. 17. Ld. Raym. 271.  3 Mod. 156.

If there can be no assignment but of the whole right, then the exception of particular counties is void; it being repugnant to the prior words and intention of the grant.

So if the jury find a fact inconsistent with a fact previously found, the latter fact shall be rejected.  Cro. Car. 130.  3 East. 6 Bac. Abr. 381.  Plowd. 564.  1 Bl. Com. 89.  2 Co. 83. 8 Co. 56. Dyer, 351.  1 Co. 3. 1 Vent. 521. Cor. Eliz. 244.

The whole passed at law by the deed of assignment.  The exceptions are in the nature of equitable assignments.

On a subsequent day the court directed the following opinion to be certified to the circuit court for the district of Vermont, viz. 

OPINION

 It is the opinion of the court that the plaintiffs, by their own showing, are not legal assignees to maintain this action, in their own names, and that the judgment of the circuit court be arrested.