717 Madison Place

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.”

Read the rest of this entry »

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?

Read the rest of this entry »