1822.

Evans

V.

Eaton.

but not in principle, is not entitled to a patent for an improvement, which he cannot be by the 2d section of the law, he certainly cannot, in a like case, claim a patent for the machine itself.

The question for the jury then is, are the two Hopperboys substantially the same in principle? not whether the plaintiff's Hopperboy is preferable to the other. Because if that superiority amounts to an improvement, he is entitled to a patent only for an improvement, and not for the whole machine. In the latter case the patent would be too broad, and therefore void when the patent is single.

If you are of opinion that the plaintiff is not the original inventor of the Hopperboy, he cannot obtain a verdict on that claim, unless his is an excepted case. The 1st, 2d, 3d, and 6th sections of the general patent law conclusively support this opinion. But the judgment of the Supreme Court in this case is relied upon by the plaintiff's counsel to prove that this is an excepted case; insomuch that the plaintiff is entitled to a verdict, although you should be satisfied that he is not the original inventor of the Hopperboy. But we are perfectly satisfied that the interpretation put upon the last clause of the judgment by the plaintiff's counsel is incorrect; and that for the following reasons. 1. The question of priority of invention was not beiore the Supreme Court; and it is therefore incredible that any opinion, much less a judgment, would have been given upon that point. The error in the charge, which

a 3 Wheat. Rep. 519.

this part of the judgment was obviously intended to correct, is stated by the Chief Justice in the following words:

"The second error alleged in the charge, is 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 thereon by Oliver Evans.

"This part of the charge seems to be founded on the opinion, that if the patent is to be consiered as a grant of the exclusive use of distinct improvements, it is a grant for the Hopperboy itself, and not for an improvement on the Hopperboy."-p. 512.

It contradicts what is stated in p. 517, where it is said that the plaintiff's claim is to the machine "which he has invented," &c. Now, if he did not invent the Hopperboy he has no claim to it; and if so, could the Court mean to say, that he was nevertheless entitled to recover under that claim? Such a decision was certainly not called for by the terms of the "act for the relief of Oliver Evans," but would seem to be in direct violation of it. The act directs a patent to issue to Oliver Evans, not for his Hopperboy, elevator, &c., but "for his invention, discovery, and improvement in the art, &c., and on the several machines which he has discovered, invented, and improved." Now if the Hopperboy was not invented, &c. by O. E., this act, without which O. E. could not have obtained a patent, did not au thorize the Secretary of State to grant him one for that machine; or if granted, it is clear that it was

1822.

Evans

V.

Eaton

1822.

Evans

V.

Eaton.

improvidently done. If, indeed, the Supreme Court had ben of opinion, that the fact of Oliver Evans' prior invention was decided, and could constitutionally have been decided by Congress, there might have been more difficulty in the case; but the argument of counsel, which pressed that point upon the Court, was distinctly repudiated. We conceive that the meaning of that part of the opinion is, that this Court erred in stating to the jury that O. Evans was not entitled to recover, if the Hopperboy (that is the original Hopperboy) had been in use prior to the plaintiff's alleged discovery of it; because if the plaintiff was entitled to claim an improvement on the Hopperboy, which this Court had denied, and which the Supreme Court affirmed, this Court was clearly wrong in saying to the jury that the plaintiff could not recover for his improvement, which, in effect, was said. Upon the whole, then, the Court is of opinion, that O. Evans is not entitled to a verdict in his favour as the inventor of the Hopperboy: if you should be of opinion that another Hopperboy, substantially the same as his in principle, as before explained, up to the point, where any alteration or improvement exists in his Hopperboy, was invented, and in use prior to the plaintiff's invention or discovery, however they may differ in mere form, proportions, and utility.

2d. The plaintiff's next claim is to an improvement on a Hopperboy, which claim, we were of opinion in another case, has received the sanction of the Supreme Court His couusel contend that his improvement is, (1.) on the original method of supplying the

bolt, by manual labour; (2.) on his own Hopperboy; and (3.) on some Hopperboy, invented by some other person. Let this position be analyzed.

1. It is said to be an improvement on the original method by manual labour. But it is obvious that if this be the invention, it is of an original machine, because wherever the patent law speaks of an improvement, it is on some art, machine, or manufacture, &c., and not on manual labour, which was applied to the various arts long before the invention of machinery to supply its place.

2. An improvement on his own discovery.

But where is the evidence of such invention? It is true that Joseph Evans has stated that the plaintiff constructed, in 1784, a rude model of a Hopperboy; but it was no substitute for manual labour, because without the cords or leading lines, the arm could not move, and it was therefore turned by hand. It was, in fact, in an incomplete state; in progress to its completion, but not given out, or prepared to be given out to the world as a machine, before 1785; when the cords to turn the arm were added.

3. An improvement on a former machine.

This is a fair subject for a patent; and the plaintiff has laid before you strong evidence, to prove that his Hopperboy is a more useful machine than the one which is alleged to have been previously discovered and in use. If, then, you are satisfied of this fact, the point of law which has been raised by the defendant's counsel, remains to be considered, which is, that the plaintiff's patent for an improvement is void, because

1822.

Evans

7.

Eaton.

1822.

Evans

Y.

Eaton.

the nature and extent of his improvements are not stated in his specification.

The patent is for an improved Hopperboy, as described in the specification, which is referred to, and made part of the patent. Now, does the specification express in what his improvement consists? It states all and each of the parts of the entire machine, its use and mode of operating, and claims as his invention, the machine, the peculiar properties or principles of it, viz. the spreading, turning, and gathering the meal, and the rising and lowering of its arm, by its motion to accommodate itself to the meal under it. But does this description designate the improvement, or in what it consists? Where shall we find the original Hopperboy described either as to its construction, operation, or use; or by reference to any thing, by which a knowledge of it may be obtained? Where are the improvements on such original stated? The undoubted truth is, that the specification communicates no information whatever upon any of these parts. This being so, the law, as to ordinary cases, is clear that the plaintiff cannot recover for an improvement. The 1st section of the general patent law speaks of an improvement as an invention, and directs the patent to issue for this said invention. The 3d section requires the applicant to swear or affirm that he believes himself to be the true inventor of the art, machine, or improvement, for which he asks a patent; and further that he shall deliver a written description of his invention, in such full, clear and exact terms, that any person acquainted with the art, may know how to construct and use