pute in the cause. The 3d has been already disposed of, and the 2d will now be examined. It is contended by the defendant's counsel, that this is not the correct construction of the above sentence of the Court, because it is inconsistent with the pretensions of the plaintiff's counsel, and with the argument of the Chief Justice, throughout the opinion, which led to the above conclusion. This supposed inconsistency may, in the opinion of this Court, be explained by the following observations: The exceptions taken to the charge of this Court, in the case of Evans v. Eaton, were, 1st. that Oliver Evans' patent was only for the combined effect of all the machines mentioned in his patent, and, 2d. in directing the jury to find for the defendant, if they should be of opinion that the Hopperboy was in use prior to the improvement alleged to be made by Oliver Evans. These were the only questions presented to the view of the Supreme Court, upon which it was deemed proper by that Court to give an opinion. The reasoning of the Chief Justice, therefore, is intended to prove, and correct these errors in the charge, by showing that Oliver Evans was entitled, by his patent, and the accompanying documents, not only to the general combination of the different machines, but to an improvement on the Hopperboy, one of the machines used in combination. If he had a right to an improvement on the Hopperboy, then this Court was clearly wrong in directing the jury to find a verdict for the defendant, if they should be of opinion that the Hopperboy was in use prior to the plaintiff's improvement; because it was unimportant who was 1822. Evans V. Hettich. 1822. Evans V. Hettich. the original discoverer of the Hopperboy, provided the plaintiff had a patent for an improved Hopperboy, and the defendant used that improvement, and the charge precluded that inquiry. But whilst the Chief Justice aims to prove that Oliver Evans was entitled to this double claim, he does not exclude any other claim. There is an expression relied upon by the defendant's counsel, as having this appearance; but it is more likely that the word relied on is a typographical error, than that the Court should both deny and affirm the plaintiff's right, as an original inventor of the Hopperboy. When the Court came to state, definitively, what were the plaintiff's claims under this patent, the whole are distinctly stated. The act for the relief of Oliver Evans authorizes a grant to him of his improvement, in the art of manufacturing flour, and in the several machines which he has invented, and in his improvements, &c. The Court says, that "the application is for a patent coextensive with the act," &c." If, then, in this enumeration of the plaintiff's rights under the patent, those to the machines had been omitted, it might have been supposed that it was not recognized by that Court, and it is consequently introduced, in order to prevent a conclusion against its validity, although it had not been brought into view in the previous argument; because a matter not in dispute. This course of reasoning is, we think, strongly fortified, by what the Court says, p. 518. "In all cases where his claim is for an improvement," &c. Now, if his claim was confined to an improvement, a 3 Wheat. Rep. 508. produced by the combined operation of all the machines, and if an improvement in the separate machines, why should the Court have stated, hypothetically, that which was to be proved in case the plaintiff claims for an improvement? The sentence following immediately that which has been relied on by the defendant's counsel seems to explain it, and to fortify the construction, which we have given to it. Upon the whole, we are of opinion, that the question, who is the original inventor of the Hopperboy? is left open by the Supreme Court, and is now to be decided by the jury. If, then, the jury should be of opinion upon the evidence, that the Hopperboy which the defendant uses, was invented, and was in use, prior to the discovery of Oliver Evans, then your verdict ought to be for the defendant. But to this construction there are objections made, which it is proper to notice. 1. It is contended, that the judgment of the Supreme Court in Evans v. Eaton," where it is said that there is error in the proceedings below, in this, that in the charge the opinion is expressed, "that Oliver Evans was not entitled to recover if the Hopperboy in his declaration mentioned had been in use previous to his alleged discovery," entitles the plaintiff to a verdict, although the jury should be of opinion that he is not the original inventor of the Hopperboy. That the Court did not mean this is most obvious, from what is said in page 517, that Oliver Evans may claim the exclusive use in the several machines which he has invented. Could the Supreme Court 1822. Evans V. Hettich. 1822. Evans Hettich. intend to say, immediately after, that he is entitled to a verdict for a machine which he has not invented? Can it be supposed that the Court meant to ride over the 3d section of the patent law, and set up a different rule, to govern this case, without having stated the reasons for so extraordinary a distinction? This is altogether inadmissible. It is also worthy of remark, that the words "in his declaration mentioned" in the judgment of the Supreme Court, are not in the charge of the Circuit Court, as stated by the Chief Justice; and it is the insertion of those words in the judgment which produces all the difficulty. Leave them out, and then the judgment is consistent with the whole reasoning of the Chief Justice, which condemned the charge of the Circuit Court, because it precluded Oliver Evans from obtaining a verdict for his improvement, if he was not the original inventor of the elementary parts of this machine. Retain them, and it follows, that if Oliver Evans was proved not to be the inventor of the Hopperboy in his declaration mentioned, still the defendant was not entitled to a verdict. This would be in such direct opposition to the 6th section of the patent law, that we cannot suppose this was the meaning of the Supreme Court. 2. The next objection to the construction is, that the act of the Legislature of Pennsylvania, of 1787, conveyed to Oliver Evans the original Hopperboy, and consequently the existence and use of the Stouffer Hopperboy, at a period prior to the plaintiff's discovery, cannot now be urged to invalidate his patent. It is by no means to be admitted that the act operates to make such a transfer. But if it did, still the plaintiff cannot recover, if he appears not to be the first or original discoverer of the Hopperboy. His claim is not derivative either from the State or from an individual. His suit is founded on his patent, and unless he was himself the original inventor of the Hopperboy, he cannot recover. 3. Another objection stated by the plaintiff's counsel is, that the Stouffer Hopperboy, although the jury should believe it was in use in many mills before the plaintiff's discovery had fallen into disuse, and therefore cannot be urged to invalidate the plaintiff's right of recovery. The answer to this is, that whether it fell into disuse or not, if it was used before the plaintiff's discovery, the plaintiff could not obtain a patent for it, so as to exclude the defendant from using it, if he chose to do so. 4. The last objection is, that the use of the Stouffer machine cannot affect the plaintiff's patent, unless it was public. Whether that Hopperboy was in public use or not, the jury will judge from the evidence. It was erected and used in four or five mills, if the defendant's witnesses are believed. But this argument has no foundation in the act of Congress, which does not speak of public use. It is immaterial whether the patentee had notice of the prior invention or not. If it was in actual use in any part of the world, however unlikely or impossible that the fact could come to the knowledge of the patentee, his patent for the same machine cannot be supported. 1822. Evans V. Hettich. |