by the counsel for the plaintiff, Evans. The first was to the admission of one Frederick as a witness for the defendant, upon the ground of his interest in the suit. The witness, on his examination on the voir dire, denied that he had any interest in the cause, or that he was bound to contribute to the expenses of it. He said that he had not a Hopperboy in his mill at present, it being then in Court; that it was in his mill about three weeks ago, when he gave it to a person to bring down to Philadelphia; and that his Hopperboy spreads and turns the meal, cools it some, dries it, and gathers it to the bolting chest. Upon this evidence, the plaintiff's counsel contended that Frederick was not a competent witness; but the objection was overruled by the Court.

Another exception was to the refusal of the Court, to allow the deposition of .one Shetter to be read in evidence by the plaintiff, which had been taken according to a prevalent practice of the State Courts, instead of being taken pursuant to the provisions of the act of Congress.

But the principal exceptions were to the charge by the Circuit Court, in summing up the cause to the jury, which it is deemed necessary here to insert at large.

Mr. Justice WASHINGTON. This is an action for an infringement of the plaintiff's patent, which the plaintiff alleges to be,

1. For the whole of the machine employed in the manufacture of flour, called the Hopperboy.

2. For an improvement on the Hopperboy. The question is, is the plaintiff entitled to recover upon either of these claims? The question is stated

1822.

Evans

V.

Eaton.

1822.

Evans

V.

Eaton.

thus singly, because the defendant admits that he uses the very Hopperboy for which the patent is. in part, granted, and justifies himself by insisting,

1st. That the plaintiff was not the original inventor of, but that the same was in use prior to the plaintiff's patent, the Hopperboy as patented.

2d. That his patent for an improvement is bad; because the nature and extent of the improvement is not stated in his specification; and if it had been, still the patent comprehends the whole machine, and is therefore too broad.

1st. The first is a mixed question of fact and law. In order to enable you to decide the first, it will be well to attend to the description, which the plaintiff has given of this machine, in his specification, a model of which is now before you. Its parts are, (1.) An upright round shaft, to revolve on a pivot in the floor. (2.) A leader or upper arm. (3.) An arm set with small inclining boards, called flights and sweepers. (4.) Cords from the leader to the arm to turn it. (5.) A weight passing over a pulley, to keep the arm tight on the meal. (8.) A log at the top of the shaft to turn it, which is operated upon by the water power of the mill.

The flights are so arranged as to track the one below the other, and to operate like ploughs, and at every revolution of the machine to give the meal two turns towards the centre. The sweepers are to receive the meal from the elevator, and to trail it round the circle for the flights to gather it to the centre, and also to sweep the meal into the bolt.

The use of this machine is stated to be, to spread any granulated substance over a floor; to stir aud expose it to the air, to dry and cool it, and to gather it to the bolt.

The next inquiry under this head is, when was this discovery made? Joseph Evans has sworn, that in 1783 the plaintiff informed him, that he was engaged in contriving an improvement in the manufactory of flour, and had completed it in his mind, some time in July of that year. In 1784 he constructed a rough model of the Hopperboy, but having no cords from the extremities of the leader to those of the arm, it was necessary, in making his experiments, to turn around the arm by hand. In 1785 he set up a Hopperboy in his mill, resembling the model in court, and the machine described in his specification. The evidence of Mr. Anderson strongly supports this witness, and, indeed, the discovery as early as 1784 or 1785 is scarcely controverted by the defendant.

The defendant insists that a Hopperboy, similar to the plaintiff's, was discovered, and in use, many years anterior, even to the year 1783, and relies upon the testimony of the following witnesses:

Daniel Stouffer, who deposes, that he first saw the Stouffer Hopperboy in his father's, Christian Stouffer's mill, in the year 1764. In the year 1775 or 1776, he erected a similar one, in the mill of his brother Henry, and another in Jacob Stouffer's mill. in 1777, 1778, or 1779.

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Evans

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Eatou.

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Eaton.

Philip Frederick swears, that in 1778 he saw a Stouffer Hopperboy in operation in Christian Stoutfer's mill, and in the year 1783 he saw one in Jacob Stouffer's mill, and another in U. Charles' mill, and that it was always called Stouffer's machine.

George Roup stated, that in 1784, he erected one of these Hopperboys in the mill of one Braniwar ; and that in 1782 Abraham Stouffer described to him a similar machine, which his father used in his mill. Christopher Stouffer, the son of Christian, has sworn, that his father, having enlarged his mill, in the year 1780, erected a new Hopperboy of the description above mentioned, which is still in use in the same mill, now owned by Peter Stouffer.

If these witnesses are believed by the jury, they establish the fact asserted by the defendant, that the Stouffer Hopperboy was in use prior to the plaintiff's discovery.

The next inquiry is into the parts, operation, and use of the Stouffer Hopperboy. This consists of an upright square shaft, which passes lightly through a square mortice in an arm, underneath which are fixed slips of wood, called flights, and the arm is turned by a log on the upper end of it, which is moved by the power which moves the mills.

The arm, with the flights, operates as it turns upon the meal placed below it, and its use is, in a degree, to cool the meal and to conduct it to the bolt. It will now be proper to compare this machine with the plaintiff's. They agree in the following particulars. Iney each consist of a shaft, or log, to turn it by the power of the mill, and an arm

with flights on the under side of it. They each operate on the mill below the arm, to cool, dry, and conduct it to the bolt.

In what do they differ? The plaintiff's shaft is round, and consequently could not turn the arm, into which it is loosely inserted, if it were not for the cords which connect the extremities of the arm to those of the leader. The shaft of the Stouffer Hopperboy is square, and therefore turns the arm without the aid of a leader or of cords. It has neither a weight nor pulley, nor are the flights arranged in the manner the plaintiff's are, and consequently it does not, in the opinion of most of the witnesses, cool or prepare the flour for packing as well as the plaintiff's.

The question of law now arises, which is, are the two machines, up to the point where the difference commences, the same in principle, so as to invalidate the plaintiff's claim to the Hopperboy as the original inventor of it? I take the rule to be, and so it has been settled in this, and in other Courts, that if the two machines be substantially the same, and operate in the same manner, to produce the same result, though they may differ in form, proportions, and utility, they are the same in principle; and the one last discovered has no other merit than that of being an improved imitation of the one before discovered and in use, for which no valid patent can be granted, because he cannot be considered as the original inventor of the machine. If the alleged inventor of a machine, which differs from another previously patented, merely in form and proportion,

1822.

Evans

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Eaton: