31 U.S. 218 (1832) 6 Pet. 218
JOSEPH GRANT AND OTHERS
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.”