Peter Hogg and Cornelius H. Delamater, Plaintiffs in error, v. John B. Emerson, 11 How. 587

Mr. Justice WOODBURY delivered the opinion of the court; This is the same case which has been before us on a former occasion, as reported in 6 Howard, 437.

The decision there announced on the points presented by that record was accompanied by a ruling that, in writs of error in patent cases* all the questions of law which arose at the trial might be brought up, and not, as there, only such as the court below should deem reasonable, Thereupon the cotmsel for the plaintiffs in enor moved for a cernorari to transfer here such other questions as had not been before brought up and decided. ' s This certiorari and a subsequent one having been allowed, the same counsel proceeded to argue the questions appearing on the whole record, as well those on which an opinion had already been pronounced, as the new questions arising, on the additional parts of the record.

This was objected to by the defendants in error, but permitted by the court, on the ground, that a division among them existed before, and that two, if not three, members of the court were now present, who were not when the former opinion was agreed to. On this state of things, having heard the whole case fully reargued, the first inquiry is, if any of the points before settled- appear-to- have been ruled erroneously, either on the record as it then stood, or on it including the new matter since brought up.

It is very manifest that this matter does not relate to any of- the former points, and consequently does not impair, or in any way affect them, or our decision before given upon them. In the next place, has the new argument, or the further consideration of.the case, presented anything which justifies a change of views on what was then settled. We think not. Without repeating 'the whole reasoning and precedents stated in 6 Howard, in support of the former views of the court, we shall only submit a few, further explanations concerning some of them.

On the leading question, whether the invention is sufficiently described in the letters patent, it may be sufficient to add, that this depends on what must be considered as a part of those letters. The letters in this case were taken out in 1834, under the act .of 1793, and the law did not then require the patentee or the commissioner to make the specification a part of the letters patent, as it does by the act of 1836.

But the "inventor still had á right', if he pleased, for greater fulness and clearness, not only to file a specification as such, and as the law directed, but £b advise the Patent-Office also to incorporate it into the letters as a part of them by express terms of reference.

This it would be.peculiarly proper for the officers of the government to do, as the language of the’specification is the language of the inventor, and. describes the invention in his own way, and, it is to be presumed, in the best way; whereas the language of the letters is that of the Commissioner of Patents or the President, who signs them, and, if standing alone, might by mistake or accident not fully describe the invention.

Here, then, in order to avoid any such untoward result, they did expressly incorporate the whole specification into the patent as “ a part ” of it, besides referring to it for “a description” of the improvement. This the officers had a right to do, as grantors in deeds have a right to refer to other deeds or papers, and annex or incorporate them as a part of the instrument of conveyance. See cases cited in 6 Howard. A similar course is often pursued in policies of insurance by the makers of them, and in other contracts, as well as in declarations on accounts annexed.

That such a course, too, is prudent, and to be encouraged in the case of patents, is shown by Congress in the act of 1836, imperatively requiring it to be .done thereafter. The specification being, therefore, in this case, voluntarily, annexed, and made, in express terms, a pairt of the patent, though before the law required it to- be done, it still became a portion of the patent by general principles, as clearly as it does since by the words of the law.

It follows, also, that; being thus adopted and recognized as “ a part ” of the patent itself, if the • improvement is there described with due fulness and certainty, it is so described in the patent itself. But it is manifest that it is thus described there. In the very first lines it is set out, not only as “’.an improvement in the steam-engine,” but “ in the mode of propelling therewith either vessels on the water or carriages on the land.” These together constitute a full and satisfactory description of the whole.

It is an “ improvement in the steam-engine,” not in generating steam, but in applying it; and, after describing minutely the application of it for propelling carriages on land, it proceeds to point out, “ when used for steamboats,” how- it is to be connected with “ an improved spiral paddlé-wheel.” After all this, no one, it is believed, could justly contend that the patent itself was defective, or likely tamislead in describing the improvement which the patentee claims to have invented.

Referring to the former opinion in this case for other reasons and.decisions in support of this view, we proceed to the next objection. It is, that the improvement thus described is for more than one invention, and that one set of letters patent for. more than one invention is-not tolerated by law. But grant that such is the result when two or more iqven* , tions are entirely separate and independent, — though this is doubtful on principle, — yet it is well settled in the cases formerly cited, that a patent for more than one invention is not void, if they are connected in their design and operation.

This last is clearly the case here. They all here relate to the propelling of carriages and vessels by steam, and only differ, as they must on water, from what they are on land ; a paddle-wheel being necessary on the former, and not on the latter, and one being used on the former which is likewise claimed to be an improved one. All are a part of one combination when used on the water, and differing only as the parts must when used to propel in a different element. In Wyeth et al. v.

Stone et al., 1 Story, 288, in order to render different letters patent necessary, it is said, the inventions must be “ wholly independent of each other, and distinct inventions for unconnected objects”; as one to spin cotton and “ another to make paper.” Again, if one set of letters patent is permissible for one combination consisting of many parts, as is the daily practice, surely one will amply suffice for two or three portions of that combination. , The next point before decided was, that the description was sufficiently clear and certain.

Under the instructions of the court, the jury found that it was clear enough to be understood by ordinary mechanics, and that machines and wheels could readily be made from it, considering the specification as a whole, and adverting to the drawings on file. This is all which the law requires in respect to clearness, and it does not appear necessary to add tmy thing to what is cited and stated in the former opinion in support of the instructions given below on this point.

The court did right, too, in holding to the propriety of looking to the whole specification, and also to the drawings, for explanation of any thing obscure. The drawings, then, being proper to be referred to in illustration of the specification, they could be restored when burnt, and if appearing in some respects erroneous, they could be corrected. That this last was done, and done well, was distinctly shown by Doctor Jones, a skilful draughtsman and expert.

It would be unreasonable to prevent or refuse the correction of such errors, so as not to mislead nor cause contradictions ; because,' after all, it is the specification which governs, and the drawings merely illustrate. It is true that it would not be proper to leave the drawings so long, not restored nor corrected, as to evince neglect or a design to mislead the public; and the jury were allowed to decide what was a reasonable time for this purpose, under the circumstances of the case, and the duties imposed by law on the patentee.

This being a point in part ■ of law and in part of fact, it was properly submitted to the jury, and their finding must stand, unless it is shown, as has not ,been done, that illegal instructions were given to them concerning it, or that proper legal directions were omitted. See analogous cases, Chitty on Bills, 336, 379; 9 East, 347; 1 Camp. 246; Johnson v. Sutton, 1 D. & E. 514; 2 Barn. & Adol. 857, 858.

In respect to another objection, of the claim being too.broad that was fully answered in the former, opinion, and so was the objection, that damages could not be recovered after the,fire, and before the restoration of the specification and drawings. Certain new points are also presented on the new matter brought here by the certiorari: Among them, no qne seems specially relied on, which is not involved in those already considered, except the instructions on the rule for settling the whole damages.

It is true, that the verdict appears large in amount But if too large, and the jury were properly .instructed on the . subject, the fault is theirs rather than the Court’s, and cannot be corrected here. It is not, however, clear that it is too large, as it does not appear to have exceeded, and, indeed, it rather fálls short of,, the price paid for_a license to make an improvement like this to be used in so many vessels.

It is the making and selling to be used, and not the selling or buying or making alone, for which full damages are usually given. (10 Wheaton, 350; Curtis on Pat. 256, 3 note; 3 McLean, 427.) The court, therefore, being called on to lay down some general rule, very properly informed the jury that such price might be a suitable guide, and it is the customary one followed for making and selling patent stoves, lasts, spokes, &e., and seems once to have been treated by law as the chief, guide in all patent casesas the act of 1791, § 5, (1 Stat. at Large, 322,) gave three times its amount when one either made for sale or used a patented machine.

But that law being repealed, and the damages now left open for each case, the judge correctly added, that a fair ground existed for a mitigation below that amount, if the maker of the machine appeared in truth to be ignorant of the existence of the patent rightj and did not intend any infringement.' That would not, however, furnish a. reason, as was insisted by tfie plaintiffs in error, for allowing no damages when making the machine to be used, and not, as in some cases, merely for a model, or for fancy, or philosophical illustration. (Whittemore v. Cutter, 1 Gallis. 429; Jones v. Pearce, Webster’s P.

C. 125; 3 McLean, 583.) The intent not to injure, also, never exonerates, as is contended, in these cases, from all damages for the actual injury or encroachment, though it may mitigate them. (Bryce v. Dorr, 3 McLean, 583.) The further general suggestion by tfie judge, to give only the actual damages, was well calculated to prevent any thing vindictive or in excess, and justified the jury to go still lower than they did, if appearing just to them, and as has sometimes been done in this class of cases. (See Lowell v. Lewis, 1 Mason, C. C. 182; 1 Gall. C.

C. 420.) That, however, was a matter of discretion for the jury, under all the circumstances, and not a question of law for the court. Nor will the consequence of damages so large as the present seem harsh, if thereby ahy further recovery should be prevented for using or selling as well as making the machine, but which point is not decided by us now, because not raised on the record.

It may be added, however, in this connection,, that the defendants are certainly relieved now from one consequence by way of damages or penalty which once existed, and which was to forfeit the materials of the machine to the-patentee. (See

section 4th in act of April 10th, 1790,1 Stat. at Large, 111.) It must be a very extreme case, too, where .a judgment below; should be reversed on account of damages like'these in actions ex delicto, and when the instructions suggested to. the jury the true general rule and the leading ground for mitigation, as well as against excess, and when, if appearing to be clearly exces-' sive under all circumstances, a new trial could have been moved and had on that account in thé Circuit Court. Judgment below affirmed. Mr. Chief Justice TANEY, Mr. Justice 'CATRON, Mr. Justice DANIEL, and Mr. Justice GRIER dissented.' Mr.

Justice CATRON. To the opinion just delivered I.dissent. I think the letters patent are for a single improvement on the steam-engine, and that the

schedule has-added two distinct inventions.in addi-. tion; the one on the paddle to a wheel propelling machinery or a vessel of any kind in the water; and the second in applying the power of the shaft to turning a capstan by means of a cogwheel, These two claims are entirely independent of the improvement claimed in the .letters patent actually granted; this is for .inventing a piston and shaft which turn a wheel without employing á crank.

And as this controversy depends on a supposed infringement of the improved paddle (which, -in. my judgment, is not. covered- by the letter's), I,therefore think that the suit cannot be maintained on. the face of the letters. Secondly, if these three distinct improvements had been claimed and granted in the letters, and described in the schedule, then the patent would be void,.as I think, because.no more than one invention, distinct and disconnected from others, can be granted in the same letter's.

Such is the construction that has •been given to the 'legislation of Congress at the Patent-Office,' and is supposed by me to be the correct one.

If three independent inventions can be patented and monopolized together, so any number may be; by this means, the grant may cover many fictitious claims, with some valid ones, which latter will stand protected; so that little or no risjr will be run by obtaining a grant for that which is not ne.w; and by this mode of proceeding at the Patent-Office, fictitious claims may cover and assume to monopolize the ordinary implements now in use on the farm and’ in the workshop, and, yet more' than is now the case, harass the-public with' fictitious and ill-founded claims to make and sell exclusively things in daily and extensive use.

Although the claim may be fictitious, still this does not protect the public from harassment, as usually men using cheap implements cannot afford to litigate in the United States courts. It would be far better to allow the claim, unjust as it is, and pay the patentee his fraudulent demand, than incur the expense of a suit, which the patentee or his assignee may well afford to prosecute. Order. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of New York, and. was argued by counsel.

On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be; and the same,is hereby, affirmed, with costs, and damages at the rate of six per centum per annum.