which admitted that the specification did not show in what the improvement consisted, by contending for the extravagant position that it was competent to show it by evidence at the trial, which is in effect to say, that the plaintiff was entitled to whatever the defendant had not disproved.

It has been said, however, and to our very great surprise, that the Court below erred in dealing with this patent as a patent for an improvement; that it is not for an improvement, but for an improved Hopperboy. When this case was formerly before the Circuit Court, that Court dealt with the patent as a patent for a Hopperboy, and not for an improvement. Upon error to this Court, one error principally relied upon was, that the Court below had thus construed it to be a patent for the machine." And it was contended that an "improved Hopperboy," and an "improvement on a Hopperboy," were one and the same. "This," says one of the counsel, "was a patent for an improvement on the particular machine in question, and not for its original invention." And of that opinion were the Court, after much deliberation." And can it now be contended, in the same Court, and by the same party, that this is not to be dealt with as a patent for an improvement? But, the truth is, it has been treated in this case as a patent for both the machine and the improvement, so as to give the plaintiff the full benefit of either construction. The real aim of the argument is to main

a 3 Wheat. Rep. 486. 502. VOL. VII.

50

b3 Wheat. Rep. 517.

1822.

Evans

V.

Eaton.

1822.

Evans

V.

Eaton.

tain, that a patent for the whole may be expounded as a patent for each of the parts, and legally covering as many as the patentee may be able to prove he has invented; that it may be a patent in words for one thing and in law for another; that it may have a sort of elastic ambiguity, capable of contraction, if not of expansion, so as to adapt itself to whatever it may be found convenient at any given time to embrace. This is against all settled principles; it is against good policy; and it is against the words and the spirit of the act of Congress.

Such being unquestionably the established law upon the subject of patents in general, it remains only to inquire, whether the case of Oliver Evans is on any account an exception. And it is insisted here, that the special act for his relief makes it an exception. The history of that act is sufficient to show, that its only object was, to authorize a new patent to be issued, by reason of the first having been declared void for irregularity of form attributable to the officers of the government. This gave an equitable title to relief. The appropriate relief was an extension of the time, so that the inventor might enjoy the privileges of a patent for the same time that he would have enjoyed them if the irregularity had not occurred, that is to say, the same privileges. This was sufficiently liberal, for the first patent had actually expired before the new one was granted. The new patent, too, was made retrospective, and gave to Oliver Evans an exclusive right for eight and twenty years, double the usual period; yet it was contended, formerly, that this special act, liberal as it

confessedly was, went the further length of dispensing altogether with the necessity of proving he was the inventor, and even precluded all right to question the invention, which was in effect to say, that the exclusive privilege was secured to him, whether he was the inventor or not. That was overruled by this Court, upon the plainest grounds." And the whole scope of the opinion then delivered distinctly establishes, that except the extension of time, and the union of different inventions in the same patent, which otherwise perhaps could not be regularly joined, the patent to be issued, was to be in all respects conformable to the general law, and subject to the same regulations as other patents. Such was the interpretation of the plaintiff himself: he applied in the usual manner by petition, with a specification and oath. Such was the interpretation of the officers of government: the patent underwent the usual examination, and is in the usual form. Such is at this moment the interpretation: for it is upon the adoption of the general law by reference, that the jurisdiction of the Federal Courts in cases growing out of this patent entirely rests. If that law be not applicable, this Court has no power to adjudicate the cause. It is needless to pursue this further, being already decided by the former decision of this Court. For the terms and conditions upon which the patent was to be granted-the jurisdiction to attach to it-the rules to govern it-the special act makes no provision, but by reference to the existing laws; and

a 3 Wheat.Rep. 513.

1822.

Evans

V.

Eaton.

1822.

Evans

V.

Eaton.

but for this reference we could not advance a single step in the inquiry.

All that has been said of the act of the Legislature of Pennsylvania passed in the year 1787, may be disposed of in a single word. What its provisions were does not appear, and if it did, the right they conferred, whatever it may have been, was surrendered by accepting a patent under the law of the United States. The seventh section of the act of Congress is express.

In conclusion, then, it is confidently submitted, that the patent of Oliver Evans must be considered as a patent either for the machine or for the improvement.

That if it be for the machine, it is void, because it is fully proved that he was not the original inventor, but the machine was known and used before.

That if it be for an improvement, it is void, because it is broader than his invention, and does not specify in what his improvement consists, so as to distinguish it from what was known and used before.

The learned counsel also argued the points of evidence in this and the next following case, (Evans v. Hettich,) but as they are so fully noticed in the opinion of the Court, it is not thought necessary to report that part of his argument.

Mr. Harper, in reply, observed, that in the opinion of the Circuit Court, two propositions were distinctly affirmed: (1.) That Evans' patent of the Hopperboy was a patent for an improvement, and not for an original invention or discovery and (2)

That being for an improvement, it was void, because the specification did not in terms distinguish the improvements from the original machine, called the Stouffer Hopperboy. Both these propositions were indispensable for supporting the judgment below. He denied them both, and should endeavour to show that they were equally void of foundation. If he could succeed in overthrowing either, the judgment of the Circuit Court must be reversed, and the patent right of the plaintiff supported; but he believed, and should endeavour to show, that both were wholly unfounded.

And first, is the patent of Oliver Evans a patent for an improvement, or for an original invention? The decisions of the Circuit Court maintained the former. He should endeavour to demonstrate the latter.

In the outset of this investigation it would be proper to remark, that the specification makes part of the patent; and he had the authority of this Court, in the former decision in this case," for saying, that in order to ascertain what Oliver Evans obtained by his patent, one of the proper points of inquiry was, what did he ask for? what was it his wish and intention to obtain? This question may be satisfactorily answered, by referring to that part of his of his specification which relates to the Hopperboy. This specification is printed at length in a note to 3 Wheat. Rep., and the part of it now in question is found at p. 468. The description of the machine is very full,

a 3 Wheat, Rep. 507.

1822.

Evans

V.

Eaton.