1822. Evans V. Eaton. and if it did, still the patent comprehended the whole machine, and was broader than the invention. To the examination of these points, and summing up the evidence, the attention of the Circuit Court was exclusively directed; and the question is, whether the charge, in respect to the matters of law involved in these points, was erroneous to the injury of the plaintiff. We will consider the points in the same order in which they were reviewed by the Circuit Court. Was the patent of the plaintiff, so far as respects his improved Hopperboy, a patent for the whole machine as his own invention? It is not disputed that the specification does contain a good and sufficient description of the improved Hopperboy, and of the manner of constructing it; and if there had been any dispute on this subject, it would have been matter of fact for the jury, and not of law for the decision of the Court. The plaintiff, in his specification, after describing his Hopperboy, its structure, and use, sums up his invention as follows: "I claim as my invention, the peculiar properties or principles which this machine possesses, in the spreading, turning, and gathering the meal at one operation, and the rising and lowering of its arms by its motion, to accommodate itself to any quantity of meal it has to operate upon." From this manner of stating his invention, without any other qualification, it is apparent that it is just such a claim as would be made use of by the plaintiff, if the whole machine was substantially in its structure and combinations new. The plaintiff does not state it to be a specific improvement upon an existing machine, confining his claim to that improvement, but as an invention substantially original. In short, he claims the machine as substantially new in its properties and principles, that is to say, in the modus operandi. If this be true, and this has been the construction strongly and earnestly pressed upon this Court by the plaintiff's counsel, in the argument at the present term, what are the legal principles that flow from this doctrine? The Patent Act of the 21st of February, 1793, ch. 11. upon which the validity of our patents generally depends, authorizes a patent to the inventor, for his invention or improvement in any new and useful art, machine, manufacture, or composition of matter not known or used before the application. It also gives to any inventor of an improvement in the principle of any machine, or in the process of any composition of matter which has been patented, an exclusive right to a patent for his improvement; but he is not to be at liberty to use the original discovery, nor is the first inventor at liberty to use the improvement. It also declares that simply changing the form or the proportion of any machine or composition of matter, in any degree, shall not be deemed a discovery. It farther provides, that on any trial for a violation of the patent, the party may give in evidence, having given due notice thereof, any special matter tending to prove that the plaintiff's specification does not contain the whole truth relative to his discovery, or contains more than is necessary to produce the effect, (where the addition or concealment shall appear to have been to 1822. Evans V. Eaton. 1822. Evans V. Eaton. between a pa. deceive the public,) or that the thing secured by the patent was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery of the patentee, or that he had surreptitiously obtained a person's invention; and provides that in either of these cases judgment shall be rendered for the plaintiff, with costs, and the patent shall be declared void. It farther requires, that every inventor, before he can receive a patent, shall swear or affirm to the truth of his invention," and shall deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all things before known, and to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same; and in the case of any machine, he shall fully explain the several modes in which he has contemplated the application of the principle, or character by which it may be distinguished from other inventions." Distinction From this enumeration of the provisions of the whole machine, act, it is clear that the party cannot entitle himself tent for the and for an im provement. to a patent for more than his own invention; and if Plaintiff not en titled to a pa- his patent includes things before known, or before in tent, as the in ventor of the use, as his invention, he is not entitled to recover, Hopperboy. for his patent is broader than his invention. If, therefore, the patent be for the whole of a machine, the party can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation. If the same combinations existed be 1822. Evans V. Eaton. fore in machines of the same nature, up to a certain point, and the party's invention consists in adding some new machinery, or some improved mode of operation, to the old, the patent should be limited to such improvement, for if it includes the whole machinery, it includes more than his invention, and the refore cannot be supported. This is the view of the law on this point, which was taken by the Circuit Court. That Court went into a full examination of the testimony, and also of the structure of Evans' Hopperboy, and Stouffer's Hopperboy, and left it to the jury to decide, whether, up to a certain point, the two machines were or were not the same in principle. If they were the same in principle, and merely differed in form and proportion, then it was declared that the plaintiff was not entitled to recover; or, to use the language of the Court, if the jury were of opinion that the plaintiff was not the inventor of the Hopperboy, he was not entitled to recover, unless his was a case excepted from the general operation of the act. We perceive no reason to be dissatisfied with this part of the charge; it left the fact open for the jury, and instructed them correctly as to the law. And the verdict of the jury negatived the right of the plaintiff, as the inventor of the whole machine. The next inquiry before the Circuit Court was, whether the plaintiff's case was excepted from the general operation of the act. Upon that it is unne- general paten? cessary to say more than that the point was expressly decided by this Court in the negative, upon the former writ of error. And we think the opinion of this Court, delivered on that occasion, is correctly under Plaintiff's case not ex cepted from the law. 1822. Evans V. Eaton. stood and expounded by the Circuit Court. It could never have been intended by this Court to declare, in direct opposition to the very terms of the patent act, that a party was entitled to recover, although he should be proved not to have been the inventor of the machine patented; or that he should be entitled to recover, notwithstanding the machine patented was in use prior to his alleged discovery. There is undoubtedly a slight error in drawing up the judgment of the Court upon the former writ of error; but it is immediately corrected by an attentive perusal of the opinion itself. And we do not think that it can be better stated or explained than in the manner in which the Circuit Court has expounded it. We are then led to the examination of the other point of view in which the plaintiff's counsel have attempted to maintain this patent. That is, by conwhole of the ma sidering it, not as a patent for the |