disqualify him on the ground of discredit, but must believe him, unless otherwise contradicted. By this course of proceeding, the defendants were their own witnesses, and the plaintiff was not allowed to discredit them. (4.) The Court should have suffered the plaintiff to prove that the son of one of the Stouffers, and the executors of another, purchased Evans' improvements. On the former occasion, similar evidence was sanctioned as to the Stouffers themselves, the alleged originators of the Hopperboy." And why not the acknowledgments of their descendants and legal representatives? It was treated before as evidence of opinion.-If so, why not the opinion of one generation as well as another? But it was more than opinion. It was traditionary history of the invention and improvements. (5.) The Court should have suffered the defendant's witness, Philip Frederick, to be asked whether Daniel Stouffer was subject to fits of mental derangement.-Stouffer was the defendant's principal witness; and that was a most material circumstance in his faculty to bear credible testimony as to remote periods and obscure circumstances. Besides, the witness, Philip Frederick, if he had denied the fact, might have been contradicted by other testimony; in which respect it was a very important inquiry to be made of him, with a view to Frederick's credit. (6.) The deposition of Michael Forner was overruled, after that of John Shetter had been received under precisely the same circumstances. Neither of them was taken according to the act of Congress, which is inconvenient and a 3 Wheat. Rep. 495. 505. 1822. Evans V. Eaton. 1822. Evans V. Eaton. Rules for depositions were Both parties took deposiWhen the defendant offer unfair in its operation. entered by both parties. tions under these rules. ed to read Shetter's deposition, no objection was made, and it was laid before the jury. But when the plaintiff offered to read Forner's, taken in the same manner, and under the same rules, it was objected to, and overruled. The clerk testified, that for 20 years the practice had been to take depositions by rule, on notice, instead of taking them under the act of Congress, which requires no notice where the witness lives more than 100 miles from the place of trial. There was, therefore, evidence of mutual consent and understanding between the parties, deducible both from the invariable practice, and from the rules entered and acted on in these cases. Yet the Court rejected the plaintiff's proof, and suffered the defendant's to remain as received in force. Thus the plaintiff was most unexpectedly deprived of some of his most material testimony, while the defendants themselves were their own witnesses. The main matter in dispute was on "the Court's construction of the word improvement, which it imputed to the patent. This radical difficulty escaped notice when these cases were before discussed in the Circuit and Supreme Courts. 1. It was a misapprehension to suppose that the word exists at all in the patent or specification, in connexion with the Hopperboy. The patent is for improvements in the art of manufacturing flour, and for certain other machines, one of which is denominated an improved Hopperboy. But the distinction is obvious, between something patented as an improvement of a Hopperboy, and something patented as an improved Hopperboy. The latter was so called, as substituting mere machinery for manual labor. It might be so called as a caveat against unknown but possibly existing originals, which, in the strong illustration of the Court, would avail a defendant if he could prove their existence in the mountains of China. It might be so called, as meaning nothing more than a melioration of the inventor's own original essays. Evans' Hopperboy was a great and most beneficial improvement, which he called an improved Hopperboy. But it had no original. Even the bolt-filler, ascribed to Stouffer, alleged to be of earlier origin, was as different in principle, as it was inferior in practice, to the plaintiff's machine. 2. It was a second error of the Court, to take it for granted, that the improved Hopperboy was not so described in the specification, as to distinguish it from all things before known or used, and to enable a person skilled in the art to make it. It is so described. [Here the counsel went into a specification of the peculiar structure and properties of the Hopperboy.] No one skilled in the art could misapprehend this description, or be misled by it. The error of the Court was, in condescending to consider itself skilled in the art of which this is a branch. The law does not require of patentees to describe new and old, but merely to distinguish new from old. Otherwise a patent would be more complex and voluminous than a Welsh pedigree. Take a boat, for instance; must every species, from the ark downwards, 1822. Evans V. Eaton. 1822. Evans V. Eaton. be described? The peculiar properties of the improved Hopperboy are perfectly explained. It is not a mere change of form and proportions, but a combination of well known materials, on new principles, essentially set forth in the specification, so as to prevent all interfering claims during the exclusive term, and to impart the rights to the public afterwards. The authorities were misunderstood by the Court in this respect. They all require, to be sure, a discrimination, when the subject matter is an improvement: But they require only an essential improvement; not a recapitulation of the particulars of both the old rudiments, and the new combinations, in detail, distinguishing them in terms. 3. This, however, was a question of fact to have been submitted to the jury, instead of being, as it was, exclusively assumed and determined by the Court. How can a Court decide, whether a person skilled in the art could understand a description, and copy a machine? The cases are uniformly so." In all these cases, the Court left this inquiry as a fact to the jury. Indeed, the 6th sect. of the act of 1793, c. 11. treats it not only as matter of fact, but of fraud. It must appear that the specification is untrue, either deficient or redundant, in order to deceive the public. It is matter of concealment. Can the Court infer this scienter? 4. Indeed, it may well be doubted whether any discrimination is necessary, where, as in this case, a 8 T. R. 95. 11 East's Rep. 101. 2 Marsh. Rep. 211. Starkie's N. P. Rep. 199. 3 Meriv. 622. 1 Gallis. 438. 2 Gallis. 51. 1. Mass. 182. 452. 3. Wheat. Rep. 514. Appx. 17. there is but one patent in existence. The second cases. 5. The special act of Congress for the relief of Oliver Evans, vouchsafes him from all technical obstacles. His improvements by that time were universally acknowledged. Congress did not mean to forestall the ascertainment of their originality, which any citizen might try, if he chose, nor their utility. But the relieving act dispenses with specification, oath, fee, and all the other prerequisites of common It was not designed merely to prolong the term of monopoly, but to releave it from vexations and frivolous embarrassments. Accordingly, it uses the term improvements, in addition to the terms applied to such subjects by the act of 1793; and confers on Oliver Evans an exclusive right in his discoveries, inventions, machines, and improvements in general, and specifically. The obvious design of this act of grace, was to relieve the grantee from all the formalities to which patentees in common are subjected, 1822. Evans V. Eaton. |