Evans v. Eaton. 7 W.

fore common, he would do it, not only with no prospect of success, but with the certainty of a defeat, attended with a very heavy expense. As long, therefore, as he could maintain no action but for his improvement, it is not perceived why he should be visited with so heavy a denunciation as the forfeiture of his improvement, merely because, by some construction of his specification, which might after all be a mistaken one, he had included in his invention something, of ever so trifling a nature, which was already known. But if such be the law, and such the frail tenure on which these rights are held, however hard it may apply in particular cases, it must have [*449] its course. But I cannot think it our duty, or that we have any right to pronounce a patent void on this account; but that this important office is exclusively confided to a jury. Whether we have this right or not, will now be examined. If such summary authority were intended to have been conferred on the federal courts, the patent law ought to have been, and would have been, explicit. This is so far from being the case, that in the patent law, a provision, but of a different kind, is inserted on this very subject, which is not the case in the statute of James. It was foreseen that it must sometimes happen, either from the imperfection of language or the ignorance of a patentee, that defective specifications would be made; it was also foreseen that an imperfect specification might be made from design, and with a view of deceiving the public. We accordingly find it provided by law, that among other matters which the defendant may rely on in an action for infringing a patent right, is, "that the specification filed does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect, which concealment, or addition, must fully appear to have been made for the purpose of deceiving the public." If judgment is rendered for the defendant on this ground, the patent is to be declared void. This section applies as well to patents for an improvement on an existing machine, as for an invention entirely new; and was intended to protect the patent in either case against an avoidance for an imperfect and innocent specification of the in

vention patented. If, therefore, the defect which is alleged, [ * 450 ] *really exist in the specification of the patented improvement, the court is not authorized, on its mere inspection, to declare it imperfect, and the patent, on that account, void. Both questions are clearly questions of fact, and are so treated by the legis lature. The party has a right to insist, with the jury, not only that his specification is perfect, but that, if it be otherwise, no deception was intended on the public; and on either ground they may find a verdict in his favor. So if, on the allegation that the thing secured

Evans v. Eaton. 7 W.

by patent was not originally discovered by the patentee, a verdict passes against the plaintiff; he loses his patent. In like manner, in this case, if it had appeared that the "improved hopper-boy," which was the thing secured by patent, had not been originally discovered by Mr. Evans, and a verdict had passed against him on that ground, there would have been an end of his patent. From the 10th section, also, an argument may be drawn against the right of a court to declare a patent void on mere inspection, for redundancy or deficiency in a specification. This section provides a mode of proceeding before the district court, where there may be reason to believe a patent was obtained surreptitiously, or upon false suggestions; and if, on such proceeding, it shall appear that the patentee was not the true inventor, judgment shall be rendered by such court for a repeal of the patent. This is the only case in which a power is conferred on a court, to vacate a patent, without the intervention of a jury. If a proceeding of this kind had been instituted before the proper tribunal, against Mr. Evans, the court would *have [* 451 ] examined witnesses, and have formed its opinion on their

testimony; and it is not clear that even in this case a jury might not have been called in. This section has been taken notice of, to show that it could never have been the intention of the legislature that a patent should be avoided, on any account whatever, on the opinion of the court alone, without some examination other than that of the specification, whatever might be its excess or poverty of description. If it had been intended to vest so important a power in the court, it would not have been left to mere implication, but would have been conferred in terms admitting of no doubt. My opinion, therefore, on this part of the charge is, that the court erred in taking upon itself to pronounce the patent void, even if the specification had been defective, or imperfect, in not particularly describing what the improvements of the patentee were; this being a power expressly delegated to a jury, who, under all the circumstances of the case, are to decide both questions of fact; that is, whether the specification be deficient, or superfluous, and the intention with which it was made so. I repeat once more, that whatever may have been the decisions in England, which are not admitted to be contrary to the view which has here been taken of the subject, they are not of authority, and are upon an act so very different in its structure from our own, as to afford little or no useful information on the subject. One great and important difference in the two laws is, that the statute of James I. has not prescribed a mode in which a patent for a vicious specification is to be set aside. The patent is granted on [*452 ] condition that a specification be enrolled.

*

Evans v. Hettich. 7 W.

I give no opinion on the questions which arise from the admission of certain witnesses, who were supposed to be disqualified, on the score of being interested; for if the patent for the hopper-boy be void, for a defect in its specification, and that question is not to be referred to the jury, and such I understand to be the opinion of four of the judges, it is very unimportant, whether any error was committed in this respect by the court before which the cause was tried; as a verdict must ever be rendered against the representatives of the patentee, on this ground, whatever may be the state of the evidence.

JOHNSON, J., and DUVALL, J., also dissented.

Judgment affirmed, with costs.

7 W. 457; 4 P. 1; 6 P. 291; 4 H. 123; 6 H. 437; 7 H. 198; 15 H. 212.

EVANS V. HETTICH.

7 W. 453.

A person sued for an infringement of a patent is a competent witness for another person sued for infringing the same patent.

A deposition read in evidence without objection, cannot be afterwards objected to and excluded for a cause apparent on the caption.

If a witness is sane when examined, evidence is not admissible to prove he is liable to fits of derangement.

ERROR to the circuit court of the United States for the district of Pennsylvania.

The action was founded on the same patent as the last preceding case, and the only points of law herein determined, besides those embraced in the preceding opinion of the court, were questions of evidence, the nature of which appears in the opinion of the court.

[ * 468 ]

STORY, J., delivered the opinion of the court.

This case is an action for an infringement of the same patent as in Evans v. Eaton ;' 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 hopper-boy; but the hopper-boy used by the defendant, is asserted to be Stouffer's hopper-boy. At the new trial, a Mr. Aby was offered as a witness by the defendant, to prove the nature and character of the hopper-boy used by the defendant; the plaintiff objected to his testimony, as incompetent,

17 W. 356.

Evans v. Hettich. 7 W.

The

because he was sued by the plaintiff for an infringement of his patentright, 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. objection to the competency of Aby, so far as he has an interest from being sued, cannot *be distinguished, in princi- [ * 469 ] ple, 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, namely, the nature and character of the hopper-boy 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 hopper-boy in the defendant's mill was like the model exhibited in court, of the plaintiff's patented hopper-boy; 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 6th 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 similar question was proposed to [* 470 ] 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.

The deposition of one John Shetter was read in evidence by the defendant, without opposition, and afterwards the plaintiff moved to have the same rejected, because not taken according to the rules of

The Gran Para. 7 W.

the court; but the court refused to reject it; and in our judgment rightly, because it having been once introduced with the acquiescence and consent of the plaintiff, he could not afterwards avail himself of the objection.

The plaintiff then proposed to ask a question of a witness, whether Daniel Stouffer was subject to fits of derangement, and whether the witness had said so; but the court overruled the question. It does not appear distinctly in the record, that Daniel Stouffer was a witness in the cause; but if he was so, the question was properly overruled, because a person being subject to fits of derangement, is no objection either to his competency or credibility, if he is sane at the time of giving his testimony.

The next objection of the plaintiff's counsel, is to the charge of the court, in summing up the cause to the jury; but the points on which that charge materially depends, have been so fully discussed in the opinion just delivered in Evans v. Eaton, that it is unnecessary to examine them at large.

Upon the whole, it is the opinion of the majority of the court, that the judgment ought to be affirmed, with costs.

7 W. 356.

THE GRAN PARA. The Consul-General of Portugal, Libellant.

7 W. 471.

It is firmly settled that if captures are made by vessels which have violated our neutrality acts, the property may be restored, if brought within our territory.

A vessel armed and manned in one of our ports, and sailing thence to a belligerent port, with the intent thence to depart on a cruise with the crew and armament obtained here, and so departing and capturing belligerent property, violates our neutrality laws, and her prizes coming within our jurisdiction will be restored.

A bonâ fide termination of the cruise for which the illegal armament was here obtained, puts an end to the disability growing out of the violation of our neutrality laws, which does not attach indefinitely; but a colorable termination has no such effect.

APPEAL from the circuit court of the United States for the district of Maryland.

This was a libel filed in the district court of Maryland, by the consul-general of Portugal, alleging that a large sum of money in silver and gold coins had been, in the year 1818, taken out of the Portuguese ship Gran Para, then bound on a voyage from Rio Janeiro to Lisbon, by a private armed vessel called The Irresistible, which had been fitted out in the United States, in violation of the neutrality acts; that the said sum of money had been brought within our territorial jurisdic tion, and deposited in the Marine Bank of Baltimore; and praying that the same might be restored to the original Portuguese owners.