what the patent Hopperboy differs from those antecedently in use, the answer is, and it ought to be conclusive, that the patentee does not mean to abridge or restrain the public from using those or any other machines, so that they differ from the one described by him; and that any mechanic, on having his specification before him, can avoid an interference with his invention. To confine our examination to the only Hopperboy which was produced on this trial, and which was called Stouffer's Hopperboy, and of which a model has been exhibited to the Court, together with a model of Evans' improved Hopperboy, can a doubt be entertained for an instant, that they are very dissimilar, and that any mechanic would not, in a moment, point out the distinctions between them, either from the specification or the model-or that he would not be able to make a Stouffer Hopperboy, or the improved Hopperboy of Evans, as he might be directed; and in like manner he would be able, when brought together, to discriminate between any other Hopperboy and that of Evans, provided they were different, so that those who were desirous of having a Hopperboy, on an old construction, and of not interfering with the rights of Mr. Evans, would labour under no difficulty whatever. But inasmuch as Evans himself has not discriminated or exhibited in his specification all the points of difference between his and other Hopperboys, it is supposed that his patent is for some Hopperboy already in use, as well as for his improvement thereon. The very terms of his specification precluded every supposition of that kind. If there 1222. Evans V. Eaton. 1822 Evans V. Eaton, were a thousand of those machines, on different constructions, in use before the date of his patent, he leaves to the public the undisturbed enjoyment of them. He meddles not, nor does he pretend to interfere with any of them, until they make or use one constructed, in all its parts, upon his model. That form, and that form alone, he claims as his invention or improvement. It would not have been difficult, even from British authorities, to show that this specification was sufficient; but I prefer recurring to our own law as the only proper criterion of the validity or invalidity of the specification in question. My opinion is, that it has all the certainty which is required by law. Such a specification as is required by the Circuit Court, is not only not prescribed by law, but, to me, it appears to be one extremely difficult, if not impracticable. If the inventor of an improved Hopperboy is to discriminate, in his specification, between his improvements and any particular Hopperboy, which may be produced on that trial, and is to be nonsuited for not having done so, however correct and distinguishing it may be in every other respect, he must do the like as to all other Hopperboys; and if he must describe any, he must describe all others with which he may be acquainted; and, after all, some one may be introduced at the trial, of which he had never heard, or which he had never seen; and inasmuch as he had not stated in what respects it was improved by his machine, although this would immediately be seen on inspection, he must not only fail of recovering damages for a manifest violation of his right, but must have his patent declared void by the Court, without a trial by jury, and be deprived of the fruits of a most valuable improvement, not because he was not the bona fide inventor -not because he had not described his improvement with sufficient certainty, according to the act of Congress-but because something more was required of him, of which he had no means of information. The only Hopperboy which made its appearance on this trial, except the plaintiff's, was that known by the name of the Stouffer Hopperboy; but non constat, that there may not have been a hundred different kinds in use, and some entirely unknown to the plaintiff. If he could have described them all, which would not have been an easy task, and stated in what particulars his Hopperboy differed from them all, his specification would have extended to an immoderate length, and after all have been less intelligible and satisfactory than a full description, such as is given here, of all the parts of which his consisted, and of the manner in which they are put together. There may be cases in which an improvement may be so simple as to describe it at once by reference to the thing or machine improved, as in the case of an improvement of this kind on a common watch. But even in the case of a watch, if the improvement pervades the whole machine, it would be a compliance with the terms of the law, if the patentee described every part of his improved watch, with its principle, without discriminating particularly in what respect his different wheels, &c. varied from all other watch 1822. Evans V. Eaton. 1822. Evans V. Eaton. es then in use. Many patents have been obtained for improvements on stoves, locks, &c. ; but has it ever been required of the patentee, in such cases, not only to describe in what manner his stove or lock is constructed, and the benefits resulting from such construction, but to point out every particular in which they differ from those already in use? This, to say the least, would be a work of great labour, and of little or no use to the public, who would be at liberty to use a stove or lock of any construction, not interfering with the one described in the specification of the patentee. A few observations will show that such a description as the defendant's counsel contend for, would be of no greater use than the one which Mr. Evans has adopted. After all the pains to discriminate had been taken, the question would still recur, how is the improved Hopperboy to be constructed? and if, from the specification, that could not be ascertained, then, and then only, ought it to be pronounced defective. But if, from the description, the improved Hopperboy could be made by a skillful mechanic, then the public is informed, not only of what has been patented, but of what still remains common as before, and if an action be brought for a violation of the patented right, and it should appear that the Hopperboy used is not of such construction, the plaintiff must fail in his suit. It cannot be said, with any justice, that if the discrimination be not made, the patent includes not only the improvement, but the old machine on which the improvement is engraft ed. The old machine still remains public property; may be used by every one; nor can any person be considered as infringing on the patent right, until he adds to the machine already in use the improvements of the patentee, or, in other words, until he makes a machine resembling, in all its parts, the one which is described in the specification. 2d. But if the specification be defective in the points which have been mentioned, is the patent therefore necessarily void? This is a question of vital importance to every patentee. I am aware that it has been said in England, that the patent must not be more extensive than the invention; therefore, if the invention consists in an improvement only, and the patent is for the whole machine, it is void. But I am not aware that it has ever been decided there that when a patent is for an "improved machine," and is taken out only for the machine thus improved, and not for the machine as before used, that such patent is void. But whatever may have been some of the late decisions in that country, I prefer, and think it the better course, to consider this question also under our own act, which, in this respect, is different from the English statute, and will therefore afford us more light, and be a safer guide than either that statute or the judgment on it. In what part, then, of our act, may it be asked, is an authority given to the Federal Courts to declare a patent void for a defective specification, however innocently made, and which in its consequences can injure no one? I state the question in this way, not because I think it necessary to show that if injurious conse 1822. Evans v. Eaton. |