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1822.

Evans

V.

Hettich.

"that if the patent be for an improvement in an existing machine, the patentee must, in his specification, distinguish the new from the old, and confine his patent to such parts only as are new, for if both are mixed together, and a patent taken for the whole, it is void." What is the reason for all this?

In the first place, it is to enable the public to enjoy the full benefit of the discovery, when the patentee's monopoly is expired; by having it so described on record, that any person skilled in the art, of which the invention is a branch, may be able to construct it. The next reason is, to put every citizen upon his guard, that he may not, through ignorance, violate the law, by infringing the rights of the patentee, and subjecting himself to the consequences of litigation. The inventor of the original machine, if he has obtained a patent for it, and all persons claiming under him, may lawfully enjoy all the benefits of that discovery, notwithstanding the improvement made upon it by a subsequent discoverer. If he has not chosen to ask for a monopoly, but abandoned it to the public, then it becomes public property, and any person has a right to use it. The inventor of an improvement may also obtain a patent for his discovery, which cannot legally be invaded by the inventor of the original machine, or by any other person. These rights of each are secured by law, and there is no incompatibility between them. But if a man wishing to use the original discovery, and honestly disposed to avoid an infraction of the improver's right, is unable to discover, from any certain and known standard, when the original invention ends, and

the improvement commences, how is it possible for him to exercise his own acknowleged right, freed from the danger of invading that of another? And to what acts of oppression might not this lead? Might not the patentee of this mysterious improvement obtain from the ignorant, the timid, and even the prudent members of society, who wish to use only the original discovery, the price he chooses to ask for a license to use his improvement, and in this way compel them to purchase it, rather than incur expenses and inconveniences far greater than the sum demanded? If this may happen, then the improver enjoys in a degree, the benefit of a discoverer, both of the original machine, and also of the improvement. In short, the patentee of the improvement may, to a certain extent, keep men at arm's length as to the use of the original invention, or make them pay him for it, in derogation of the rights of the inventor of the original machine. If the law, as applicable to cases in general, be rightly laid down, the next inquiry is, is the present an excepted case? The plaintiff's counsel have not directly asserted it to be so; but they have referred, with some emphasis, to what is said by the Supreme Court, in the case of Evans v. Eaton." The expressions are, " In all cases where the plaintiff's claim is for an improvement on a machine, it will be incumbent on him to show the extent of his improvement, so that a person understanding the subject, may comprehend distinctly in what it consists." This decision does not state, in what way the ex

a 3 Wheat. Rep. 518.

1822.

Evans

V.

Hettich.

1822.

Evans

V.

Hettich.

tent of the plaintiff's improvement is to be proved;, nor did the case require that the Supreme Court should be more explicit. The obvious conclusion is, that the Court left that matter undecided, and meant. that the extent of the plaintiff's improvement should, be shown according to rules of law. A contrary construction would be most unfair and unwarranted.

Is it possible to believe, that if the Supreme Court, intended to decide contrary to the provisions of the 3d section of the Patent Law, and of the English and American decisions, that this was a case without the influence of that law, and those decisions, that such intention would have been expressed in such general terms? This cannot be admitted: neither can the private act for the relief of Oliver Evans warrant the argument, that this case is freed from the restrictions contained in the 3d section of the patent law; because, except as to the extent of the grant, it refers to, and the Supreme Court in the before mentioned case, considers it as within, the provisions of that law.

Is it likely that the Supreme Court could have meant, that the plaintiff might cure the defects of his specification, by proving to the jury in what his improvement consisted? If so, then, as to the present › defendant, such an explanation would be unavailing to save him from the consequences of an error against which the sagacity of man, could not have guarded him. He has sinned already, if he has invaded the plaintiff's right, and it is too late to couvince him of his error, if he must be a victim of it, for the want of that light, which is now shed upon the act long after his supposed transgression. But of

what avail would that explanation be, after the expiration of the plaintiff's monopoly? The parol evidence given in a Court of justice being seldom recollected with accuracy, it affords the most unsafe notice of facts, particularly when they respect matters of art, that can well be supposed. What man, who wishes not to invade the plaintiff's patent, would venture to erect a Hopperboy, merely upon the information which he could gather from this trial? He could obtain none upon which he could safely rely; nor could any artist, after the expiration of the plaintiff's right, be enabled from such a source, to know how to construct the improved Hopperboy. But even if the extent of the improvement could be proved in this way, the plaintiff has not attempted to prove it, and what is more, his counsel, though repeatedly called upon to point it out, have not been able to do it.

Can the jury, without evidence, and without the aid of the plaintiff, or his counsel, say in what those improvements consist? If they had never seen ano. ther Hopperboy, supposed to be the original, this would be impossible. If, having seen the Stouffer Hopperboy, they can do so by comparing with it the plaintiff's improved Hopperboy, then the consequence seems almost to be inevitable, that the Stouffer Hopperboy is the original one; the point which under the next head is denied by the plaintiff. But if the specification had stated in what the plaintiff's improvement consisted, still he is not entitled to a verdict for a violation of his patent, unless he has proved, to your satisfaction, that the defendant has infringed it.

1822.

Evans

V.

Hettich.

1822.

Evans

V.

Hettich.

Upon the whole, then, this patent, so far as it is for an improvement, cannot be supported; and as to any claim founded on this right, the plaintiff is not entitled to your verdict.

2. The plaintiff contends that he is the original inventor, not only of the improved Hopperboy, but of the whole machine; that his patent grants him the exclusive right for both; and that this claim has received the sanction of the Supreme Court. Whether, in point of fact, he is the original inventor of the Hopperboy, will be attended to hereafter. Neither shall I stop to inquire, whether the plaintiff's patent grants him the right, because if the Supreme Court has sanctioned the claim, that is law to this Court. The part of the decision of that Court, relied upon by the plaintiff's counsel, is found in 3 Wheat. Rep. 517. where the Chief Justice says, "The opinion of the Court, then, is, that Oliver Evans may claim under his patent the exclusive use of his inventions and improvements in the art of manufacturing flour and meal, and in the several machines which he has invented, and in his improvements on machines previously discovered."

It would seem almost impossible to misunderstand this positive declaration of the Court. It appears to be the result of the previous reasoning. It states that the plaintiff may claim, (1.) The exclusive use of his improvements, and inventions, in the art of manufacturing flour. (2.) In the several machines which he has invented. (3.) In his improvements on machines previously discovered. As to the 1st, there is no dis

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