Peter Hogg and Cornelius H. Delamater, Plaintiffs in error, v. John B. Emerson, 6 How. 437

Mr. Justice WOODBURY delivered the opinion of the court. This is a writ of error brought under some peculiarities which are first to be noticed.. . It comes here by virtue of the 17th

section of the general* patent law of July 4th, 1836. (A Statutes at Large, 124.) That

section grants a writ of error- from decisions in actions on patents, as in ordinary cases, and then adds the privilege of it “in all other cases in which the court shall deem it reasonable to allow the same.” This was doubtless intended to reach suits where the amount in 'dispute was less than $ 2,000, on ae-. count of the importance of the points sometimes raised, and the convenience of having the decisions oh patents uniform, by being finally settled, when doubtful, by. one tribunal, such as the Supreme Court.

The judges below, in - this case, deemed it reasonable, that only a certain portion of the questions raised at the trial, concerning the validity of the patent; should come here, and the record was made up accordingly. But -the appellants contend for their right to bring here all the questions which arose in the cáse, and this is a preliminary point to be settled before going into the merits.

The present is believed to be the first writ of the kind, which has given occasion for settling the construction of any part, of the above provision; and therefore, without the aid of precedent, after due consideration of the words and design of the statute, we have come to the conclusion, that the position of the plaintiffs in error, in this respect, is the correct one, and that when a court below deem it “ reasonable ” to allow a writ of error at all,-under the discretion vested in them by this special provision, it must be on the whole case.

The word “reasonable” applies to the “eases,” rather than to any discrimination between the different points in the cases. It may be very proper for the court below to examine those points separately and with care, and if most of them present questions of. common law only, and not of the construction of the patent acts, and others present questions under those acts which seem very clearly settled or trifling in their character, hot to grant the writ of error at all.

It might, then, well be regarded as not “ reasonable ” for such questions, in a controversy too small in amount to make the writ a matter of right to persons, if standing on an equal footing with other suitors. But we think, from the particular words used rather than otherwise, that the act intended, if the court allowed the writ as “ reasonable ” at all, it must be for the whole case, or, in other words, must bring up the whole -for consideration.

We shall, therefore, proceed to eximine all the questions made at the trial, which it is supposed are relied on, and are now before us on the original writ and a certiorari issued since. Looking to the declaration, the action is for á violation of a patent for an .“ improvement in the steam-engine, and in the mode of propelling therewith either vessels on the water or carriages on the land.” The evidence. offered at the trial was a patent for “ a new and useful improvement in the steam-engine,” “ a description whereof is given in the words of the said John B. Emerson himself, in. the

schedule hereto annexed, and is made a part of these presents.” In the

schedule annexed is described fully what he says he invented, viz., — “certain improvements in the steam-engine, and in the mode of propelling therewith either vessels on the water or carriages on the land.” The first question arising on this statement is, whether the evidence proves Such a patent as is set out in the writ to have been violated by the respondents. If the patent is to be ascertained from the letters alone, or rather from what is sometimes called their title or heading, without reference, to the

schedule annexed, .the evidence is undoubtedly defective, as the writ speaks of a patent for an “ improvement, in the steam-engine and in the mode of propelling ” vessels, &c., therewith, — while the letters themselves, in their title Or heading, speak only of a patent for “ a new and useful improvement in the steam-engine.” But the

schedule annexed and referred td for further description, after “ improvement in the steam-engine,” adds, “ and in the mode of propelling therewith ” vessels, &c. It can. hardly be doubted, therefore, that the improvement referred to in the writ and in. the letters-patent, with the.schedule V>r specification.'annexed, was in truth one and the same. Coupling the two last together, they constitute- the very thing described in the writ.

But whether they can properly be so united here, and the effect of it to remove the difficulty, have been questioned, and must therefore be further examined; We are apt to be misled, in this country, by the laws and forms bearing on this point in England being so different in some respects, from what exist here.

There the patent is first, issued, and contains no reference to the specification, except a stipulation that one shall, in the re-: quired time, be filed, giving a more minute description of the matter patented. (Webster on Pat. 5, 88; Godson on Pat. 6, App.) It need not be filed under two to four months, in the discretion of the proper officer: (Godson on Pat. 176.) Under these circumstances* it will be seen that the patent, going out aloné there, must in its title or heading be fuller than here, where it goes out with the minute specification.

But even there it may afterwards be aided, and its matter be made more clear, by what the specification contains. They are, says Godson on Pat. 108, “connected together,” and “ one may be looked at to understand the other.” See also 2 Hen. Bl. 478; 1 Webst. Pat. R. 117 ; 8 D. & E. 95.

There, however, it will not answer to allow the specification, -filed separately and long after, to be resorted to for supplying any entire omission in the patent; else something .may be. thus inserted afterwards which had never been previously examined by the proper officers, and which, if it had been submitted to them in the patent and examined, might have prevented the allowance of it, and which the world is not aware of, seeing only, the letters-patent without the specification, and without any reference whatever to its contents. 3 Brod. & Bingh. 5. The whole facts and law, however, are different here.

This patent issued March 8th, 1834, and is therefore to be tested by the act of-Congress then in force, which passed February. 21st, 1793. (1 Statutes at Large, 318.) ■in the third

section of that act it is expressly, provided, “ that every inventor, before he can receive a patent*” “ shall deliver . a written description of his invention,” &c.thus giving priority very properly to the specification rather than the patent. 'This change from the English practice existed in the first patent law, passed April 10th, 1790 (1 Statutes at Large, 109), and is retained in the last act. of Congress on this subject, passed July 4th, 1836 (5 Statutes at Large, 119).

It was wisely introduced, in order that the officers of the.govermhent might at the outset have before them full means to examine and understand the claim to an invention better, and decide more judiciously whether to grant a patent or not, and might be able to give to the world fuller, more accurate, and early descriptions of it than would be possible under, the laws and practice in England.

In this country, then, the specification being required to be prepared and filed before the patent issues, it can well Jre referred to . therein in extenso, as containing, the whole subject-matter of the claim or petition for a patent, and then not only be íécorded for information, as the laws both in England and here require, but beyond what is practicable there, be united and go out with the letters-patent themselves, so as to be sure that these last thus contain the substance of what is designed to be regarded as a portion of the petition, and thus exhibit with accuracy all the claim by the inventor. ' But before inquiring more particularly into the effect of this change, it may. be useful to see if it is a compliance with the laws • in respect to a petition which existed when this patent issued, but were altered in terms shortly after.

A petition always was, and still is, required to be presented by an inventor when he asks for a patent, and one is recited in this patent to have been presented here.

It was also highly important in England, that the contents of the petition as to the description of the invention should be full, in order to include the material parts of them in the patent, no specification being so soon filed there,'as here, to obtain such, description .from, or to be treated as a portion of the petition, and the whole of it sent out with the patent, and thus complying with the spirit of the law, and giving fuller and more accurate information as to the invention than any abstract of it could.

In this, view, and under such laws and practice here, at will be seen that the contents of the petition, as well.as the petition itself, became a very unimportant form, except as construed to adopt the specification, and .the contents of the latter to be considered substantially as the contents of the former.

Accordingly, it is not a little-curious, that, though the act of 17.93, which is to goverii this case, required, like that of 1790, a petition to be presented, and the patent when issued, as in the English form, to recite the “ allegations and suggestions of the petition,” (1 Statutes at Large, p. 321, sec. 1, and p. 110, sec. 3,) yet, on.careful inquiry at the proper office; so, far as its records. are restored, it appears that, after the first act of 1790 passed, the petitions, standing alone seldom contained any thing as to the patent beyond a mere title; sometimes fuller, and again very imperfect and general, with no other allegations or suggestions, or descriptions whatever, except those in the

schedule or specification. The .only exception found is the case of Evans v. Chambers, 2 Wash. C. C. 126, in a petition, filed December 18th, 1790. Though the records of the patent-office before 1836 were consumed in that year, many have been restored, and one as far back as August 10th, 1791, where the petition standing alone • speaks of having invented only “ an easy method of propelling boats and other vessels through the water by the power Of horses and cattle.” All the rest is left to the schedule.

Other petitions, standing alone, áre still more meagre; one, for instance, in 1804, asks a patent only of a “new and useful improvement, being a composition or tablets to write or draw on ”; another, only “ a new and useful improvement in the foot-stove ”; and another, only “ a new and useful improvement, for shoemaking”; and so through the. great mass of them for nearly half a century; But the specification being filed at the same time, and often on the same paper, it seems to have been regarded,, whether specially named in the petition or not, as a part of it, and as giving the particulars desired in it; and hence, to avoid mistakes as to the extent of the invent- or’s claim, and to comply with , the law, by inserting in the patent at least the substance of the petition, the officers inserted, by express reference, the whole descriptive portion of it as contained in the schedule.

This may have grown out of the. decision óf Evans ,®. Chambers, in order to remedy one difficulty there; Cases have been found'as early as 1804, and with great uniformity since, explicitly making the

schedule annexed a part of the letters-pátent. Proofs of this exist, also, in our reports, as. early as. 1821, in Grant et al. v. Raymond, 6 Peters, 222; and one, 1st Oct., 1826, in Gray et al. v. James et al., Peters, C. C. 394; and 27 Dec. 1828, Wilson v. Rousseau; 4 How. 649. Indeed, it is the only form. of a patent here known at the patent-office, and the only one given in American treatises on patents. Phillips on Pat. 623, Doubtless this Use of the

schedule was adopted, because it contained,' according to common understanding and practice, matter accompanying the petition as a part of its substance, and all the description of the invention ever desired either in England or here in the petition. Hence it is apparent, if the

schedule itself was made a part of the patent, and sent out to the world with it, all, and even more, was contained in it than could be. in any abstract or digest of a petition, as in the English, form. We regard this mode and usage on this subject, adopted so early here and practised so long, as not proper to be overruled nuw, to the destruction of every patent, probably, from 1791 to 1836 ; and this, too, when the spirit of all our system was thus more fully carried out than it could have been in any other way.

As this course, however, sometimes was misunderstood and led to misconstructions, the revising act as to patents, in July 4th, 1836, changed the phraseology of the law in this respect, in order to conform to this long usage and construction under the act of 1793, and required not in terms any abstract of the petition in the patent, but rather “ a short description ” or title ■of the invention or discovery, “ correctly indicating its nature and design,” and “ referring to the specification for the particulars thereof, a copy of which shall be annexed to the patent.” And it is that;— the specification or

schedule — which is fully to specify “ what the patentee claims as his invention or discovery.” Sec. 5. (5 Statutes at Large, 119.) It was, therefore, from this long .construction, m such various ways established or ratified; that, in the present pateilt, the schedule, or, in other words, the specification, was incorporated expressly and at length into the letters themselves, — not by merely annexing them with wafer or tape, as is argued, but describing the invention as an ■ “improvement, a description whereof is given in the words of the. said John B. Emerson himself, in the

schedule hereto annexed, and is made a part of these presents.” Hence, too, wherever this form has been adopted, either before or since the act of 1836, it is as much to be considered with the letters, — literce patentes, — in construing them, as any paper referred to in a deed or other contract. Most descriptions of lands are to be ascertained only by the other deeds and records expressly specified or referred to for guides; and so of schedules of personal property, annexed to. bills of sale. Foxcroft v. Mallett, 4 How. 378; 21 Maine, 69 ; 20 Pick. 122; Phil. on Pat. 228; Earle v. Sawyer, 4 Mason, C.

C. 9; Ex parte Fox, 1 Ves. & Beames, 67. The schedule, therefore, is in such case to be regarded as a component part of the patent. Peters, C. C. 394, and Davis v. Palmer et al., 2 Brockenbrough, 301. The oath, of Emerson, too, that he was inventor of the improvement, must thus be' considered as extending to all described in the schedule, no less than the title; and this is peculiarly proper, when the specification is his own account of the improvement, and the patent is usually only the account of it by another, an officer of the government.

Taking, then; the specification and letters together, as the patent-office and the inventor have manifestly in this instance intended • that they should be, and they, include what hais long been deemed a part and the substance of the petiiion ; ■ and the.patent described in them is quite broad enough to embrace what is. alleged in.the writ to have been taken out .as a patent by the plaintiff, and to have been violated by the defendants. They are almost ipsissimis verbis.

And when we are called upon to decide the meaning of the patent included in these letters, it seems our duty not only to look for aid to the specification as a specification, which is customary, (1 Gall. 437; 2 Story, R. 621; 1 Mason, C. C. 477,) but as a schedule, made here an integral portion of the letters themselves, and going out with' them to the world, at first, as á part and parcel of them, and for .this purpose united together for ever as. identical.

It will thus be seen, that the effect of these changes in our patent laws and the long usage and construction under them is. entirely to remove the objection, that the patent in this case was not as broad as the claim in the writ, and did not comply substantially with the requirements connected with the petition, . From want of full attention to the differences between the English laws and ours, on patents, the views thrown out in some of the early cases in this country do not entirely accord with those now1 offered. Paine, C. C. 441; Pennock et al. v. Dialogue, 2 Pet. 1.

Some other diversity exists át. times, in consequence of the act of 1793, and the usages under it in the patent-office, not being in -all respepts as the act of 1836. But it is not important, in this case, to go farther into these considerations. The next objection is, that this description in the letters, thus considered covers, more than one patent, and is, therefore, void.

There seéms to have been no: good reason at first, unless it be a fiscal one on the part of the government when issujng patents, why more than one in favor of the same inventor should not be embraced in one instrument, like more than óne tract of land, in one deed, or patent for. land. Phillips on Pat. 217. Each could be set out in separate articles or paragraphs, as different counts, for different matters in libels in admiralty or declarations at common law, and the specifications could be made distinct for each, and equally clear.

But to obtain more revenue, the public officers have generally declined to issue letters for more than one patent described in them. Renouard, 293; Phillips on Pat. 218. -Thé courts have" been disposed to acquiesce in the practice, as conducive to clearness and certainty.. And if letters issue, otherwise inadvertently, to hol'd them, as a general rule, null. But it is a well-established exception, that patents may be united, if two or more, included in one set of letters, relate to a like subject, or are in their nature or operation connectéd together. Phil. on Pat. 218, 219; Barrett v. Hall, 1 Mason, C.

C. 447; Moody v. Fiske, 2 Mason, C. C. 112; Wyeth et al. v. Stone et al., 1 Story, 273. Those here are of that character, being all connected with the use of the improvements in the steam-engine, as applied to propel carriages or vessels, and may therefore be united in one instrument. Another objection is, that these letters, even when thus connected with the specification, are not sufficiently cléar and certain in their description of the inventions. This involves a question of law only in part, or so far as regards the construction of the written words used. Reutgen v. Kanowrs et al., 1 Wash. C.

C. 168; Davis v. Palmer et al., 2 Brockenbrbugh, C. C. 303; Wood v. Underhill, 5 How. 1. ' The degree of clearness and freedom from ambiguity required in such cases is, by the patent act itself of 1793, to be sufficient “ to distinguish the same from all other 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.” 1 Statutes at Large, 321. See also on this, Godson on Pat. 153, 154 ; 2 Hen. Bl. 489; Wood v. Underhill, 5 How. 1; Davoll et al. v. Brown 1 Woodb. & Min. 57; Pet. C.

C. 301; Sullivan v. Redfield, Paine, C. C. 441. There are some further and laudable objects in having exactness to this extent, so as, when the specification is presented, to enable, the commissioner of patents to judge correctly, whether the matter claimed "is new or too broad. 3 Wheat. 454; 3 Brod. & Bingh. 5; 1 Starkie, N. P. 192. So, also, to enable eourts, when, it is contested afterwards before them, to form a like judgment. 1 Starkie, N. P. 192. And so that the public, while the term continues, may be able to understand what' the patent is, and refrain, from its. use, unless li- . censed.

Webster on Pat. 86 ; 11 East, 105 ; 3 Merivale, 161; Evans v. Eaton, 3 Wash. C. C. 453; 4 Wash. C. C. 9 ; Bovill v. Moore, Davies’s Cas. 361; Lowell v. Lewis, 1 Mason, C. C. 182 - 189.

In the present instance, yielding to the force of such reasons in favor of a due and rational degree- of certainty in describing any improvements claimed as new, there still seems to us, though without thé aid of experts and machinists, no difficulty in ascertaining, from the language used here, the new movement intended to be given to the steam-engine, by substituting a continued rotary motion for a crank motion, and the new form of the spiral wheel, when, the engine is used in vessels, by changing the form of the paddles and placing them near the qnds of the arms; and the new connection of the power with the capstan of such vessels, by inserting the upper end of the shaft into the capstan.

It is 'obvious, also, that the inventor claims as his improvement,- not the whole of the engine, nor the whole of the wheel, but both merely in the new and superior form which he particularly sets out. He,- therefore, does not claim too much, which might be bad. Hill v. Thompson et al., 2 J. Marsh. 435; 4 Wash. C. C. 68; Godson on Patents, 189; Kay v. Marshall, 1 Mylne & Cr. 373; 1 Story, R. 273; 2 Mason, C. C. 112; 4 Barn., & Ald. 541; Bovill v. Moore, 2 Marsh. Com. P. Rep. 211.

The novelty in each he describes clearly, as he should; and it is not necessary he should go further. (1 Story, R. 286; Webster on Pat. 86, note. MacFarlane v. Price, 1 Starkie, 199; and King v. Cutler, ib. 354; 3 Car. &. Payne, 611; 2 Mason, C. C. 112; Kingsby & Pirsson on Pat. 61; Godson on Pat. 154; Isaacs v. Cooper et al., 4 Wash. C. C. 259. He need not describe particularly, and disclaim all the. old parts. 7 Wheat. 435 ; Phil. on Pat. 270, and cases cited.

And the more especially is that unnecessary, when such disclaimer is manifestly, in substance, the result of his claiming as new only the portions which he does describe specially. All which is required on principle in order to be exact, and not ambiguous, thus becomes so. It is to be recollected, likewise, that the models and drawings were a part of this, case below, and ,are proper to be resorted to for clearer information. Earle v. Sawyer, 4 Mason, C. C. 9.

With them and such explanatory testimony as experts and machinists could furnish, the court below were in a condition to understand better all the details, and to decide more correctly on the clearness of the description; but from all. we have seen on the record alone, we do not hesitate to concur in the views on this point as expressed in that court. In conclusion, on the other objections to the proof, as to the drawings and to the charge below in relation to the effect of them and to the destruction of them by fire, we likewise approve the directions given to the jury.

The destruction.by fire was no fault of the inventor; and his rights had all become previously perfected. This is too plain to need further illustration.. We cannot consent to be over astute in sustaining objections, to patents. 4 East, 135.; Crosley v. Beverly, 3 Car. & Payne, 513, 514.

The true, rule pf construction in respect to patents and specifications, and the doings generally of inventors, is to apply to them plain and ordinary principles, as we have endeavoured to on this occasion, andjnot, in this most metaphysical branch of modern law, to yield to subtilties and technicalities, unsuited to the subject and not in keeping with the liberal spirit of the age, and likely to prove ruinous to a class of the community soi inconsiderate and unskilled in business as men of genius and inventors usually are.

Indeed,' the English letters-patent themselves now, however different may have been once their form or the practice under them, declare that “they are to be construed” “in the most favorable and beneficial sense, for the best advantage ” of the patentee. Godson on Pat. 24, App. 7; Kingsby & Pirsson on Patents, 35. See also, on this rule, Grant v. Raymond, 6 Peters, 218; Ames v. Howard, 1 Sumner, 482 - 485; Wyeth v. Stone, 1 Story, R. 273, 287; Blanchard v. Sprague, 2 Story, R. 164; 2 Brockenbrough, C. C. 303.; 2 Barn. & Ald. 345, in The King v. Wheeler; 5 Howard, 708, in Wilson v.

Rousseau et al.; 1 Crompt., Mees., & Ros. 864, 876, in Russell v. Cowly. The judgment below is affirmed. Note. — After the delivery of this opinion, the counsel for the plaintiffs in error suggested that other questions were made below, which they desired to be considered, and therefore moved for áfióther certiorari to bring them up. This was allowed, and judgment suspended till the next term.