The New York Herald Newspaper, November 6, 1851, Page 2

IMPORTANT DECISIONS. THE GREAT TELEGRAPH CASES, The Morse Line vs. the Bain Line, at the South ; ~ and the Morse Line vs. the House Line, at the East, eens The Decision of Judges Grier and Kane, at Philadelphia. Chreult Court in Equity, September, 1551. FRENCH VS, ROGERS—Or!NION OF THE COURT. Purapeiruta, Monday, Nov. 3. This case is before us on final hearing upon the ph and proofs. ofessor Morse, under whom the complainants bold, has three patents: the first, dated 20th June, 1840, re-iseued after surrender on the 25th January, 1846, and again re-issued, after a second surrender, on the 13th June, I8#8, which has been referred to in the argument as the Magneti: Telegraph Patent; the second, dated 11th April, 1540, also re-issued on the 13th June, 1848, referred to as the Local Circuit Patent; the third, dated Ist May, 1549, to as the Chemica! Patent. The bill charges that the respondents have infringed all three of these pa- tents—the answer denies the infringements, and con- troverts the validity of the patents. 1, The objections to the validity of the first pa tert—that for the magnetic telegraph—are stated im the defendants’ brief as follows:— “1. That it does not ran from the date of Morse’s French patent “2 at the Commissioner of Patents had no « Suthority in law to re-issue a second time. ‘bat the claim: set out in the first reissue are er than the claime in the original patent ; and aime in the second reissue are broader than those of either of its predecessors ; and are not for ibe same invention.” a. The first of these objections founds i:self upea tbe fact that Mr. Morse bad obtained a patent ia Ysance for this same invention, twenty-two months before bis patent e here; and it asserts that - b=der the second proviso of the 6th sec f the act of 1839, his American patent should conse- quence have been limite the term of fourteen years from the date of — rench patent; andthat, | t is void. in the argument of ligation for a Was ma; pril, 1838, and in the Patent Office before not having been so limi: ‘This objection was the complainants patent io this coun! was fled and acted ¢ the l0:h of that mont. a the Isth ot Augu: wing. There is there- om for the questions, which were argued tely, of the proper interpretation of this Pp the 6th section of the act of 1839, and the - Sth seetion, 2d clause, of the act of 1536, which was also invoked, in any possible bearing upon the case of Mr. Morse. The proviso of 1839 must be inter- preted by reference to the enacting worda of the section Which it limits ; and the provisions of both the sections relate only tc such patents as are ap- jied for here after the issue of a foreign patent. ir. Mors pplication here was before his pa- tent abroad—in nowise after it— and his American patent was granted, therefore, under the gen enactments of the act of 1836, not under any sp: cial proviso or exception whatever, and its ter rang properly from its due. We do not see the justice of the critic his application, that the jurat affixed to out date of day or month ; and that the drawings which accompanied it, were not in duplicate. There is no act that requires the jurat to be dated at all; and the supplementa: provision of the section of the act of 1837, that ‘the appli- cant shall be held to furnish duplicate draw- ings,” though directory in its terms, is not # coa- dition ; and it has obvious reference, in point of time, to the issuing of the patent, and not to the filing of the petition for it. Such has heretofore been the interpretation of the Patent Office, an- nounced in the o' 1 circulars for the instruction and guidance of inventors ; the practize founded on it is both reasonable and convenien «l no act of Congress appears to conflict with it. If Mr. Morse’s patent is invaded on this greund, more than half the modern patents for mechanical inventions must probably fall with it. 2 Fhe sesond objection to the patent is that the zet of Congress makes no provision for @ second gurrek der and reissue. The 13th section of the act of 1%, which pro- | vides, in certain cases, for the surrender of a detee- tive patent, and its reissue in an amended form, re- gards the new patent as substituted for the old one, with just the “* same effect and operatien in law,” as if the specification had been filed first in the form which 11 takes in the reissue. It is difficult to see why, if the original patent could be amended, its suber original, cannot be amended also Frere is nothing in the words of the act, orin the pelicy which it proclaims, that limits the correction of errors to such as may have been the first dis- covered. On the contrary, if tt be true, as we have fuppoced in determining the recent case of Batti vs. Taggert, that the patent is granted to the in- ventor in consideration of some benefit te be derived by the public from his disclosures, and that the re- issue is in consideration of some more full er more accurate disclosure’ than that which he had made in his original specification, or some renunciation en his ofan Ser secured right—it is fer the blic interest that the surrender and reissue should allowed to follow each other just as often aa the patentee is content to be more specific, or more modest in his claims. “ Besides, it might not be safe to assume too readily that the act was intended to withdraw altogether from the officers of the executive department the power te accept a surrender and grant @ reissue, which the) before, and which would sanetion a second rei . ome as ae ay asa a ae act might, perhaps, regarded morejustly as affirming Eba prowelety of the usage which had obtained under the former laws, and nized by the{courts, (Morris vs. Hun! 355 6; Grant vs. Raymond, 6 Pet. r Cooper, 7 Pet. 315;) and as prescribing in addition the conditions and incidents, whieh should attach to it thereafter, in certain cases. {t is hardly to be supposed that the merely clerical error of an en- grossing subordinate, or the accidental inadver- tence oft being rectified or supplied now, just as it was before the passage of the act. And yet, the construction, which regards this section as superseding the im- plied power of tho Commissioner, might lead to this; since the act makes no provision for correct- ing such mistakes on the part of the patent officers Sein further: it must, as we think, be conceded, that if the Commissioner's power to reissue is so restrieted by the act, as to be exhausted by a sin- le exercise, his power to accept the surrender must equally restricted, and equally transitory. And the ent then resolves itself only into another form of the question—whether the patent was for any purpose a valid one, a: it stood after the first reissue ; because, if the second reissue was iavalid for want of authority to make it, the second sur- render wasineffective for want of authority to ac- cept it—and so the patent stands if it had not been surrendered the second time. The surrender and the re no matter how eften they recur, i b in consideration of the other— tber but a single act between the d be unconscientious to retain the ile denying the validity of the th vs. Hall, 1 Wood & M. 490 rd chjection—the supposed parties grant ; Variance Frem t rgument n this po’ objects ae well as the act of 1836, bad i by the learned counrel for the responden' tis not the meaning of the law that the patentee whe applies for a re issue must at his peril de im, in his new specific her in a, just what ibed and claimed in one. His new vention, and his im cannot embrace a diferent subject-matter from that which he sought to patent originally but, unless we narrow down the correct! which the statute contemplates, till it b. dia- claimer, it is not ase to frame @ corrected specification which shall not be broader than the one originally filed. To supply adefect, to repair an insufficiency, is to add—oither directly or by modifying or striking out a limitation: in either form, the effect is to amplify the propositi the case of a specification under the patent laws, it is to amplify the description and enlarge the claim ‘There are few things more difficult, even for well educated and practised lawyers, than to describe a new invention clearly, and point out the principle which distinguishos the subject of it from all things known before us. And as inventors are r ez- Perts either in philology or law, it has long been established asa rule that their writings are to be soanned with agood degree of charity. But it is gary to abuse this liberality to the purposes of fraud. The public has rights to be guarded alse; and these exact that the patentes’s epesifieation shall set forth his invention s* fully and definitely that it cannot be readily misunderstood {t isthe purpose of the statute to reconsile this seeming conflict; and it effects it by allowin; inventor to amend the mistakes he hat bh fallen into in his deseription and claim of as #0on and a4 often as he discovers them. And there is the more reason for this indulgence, sinc the act of 1836, section 7, the specification ed by the Commissioner before the and is very often modified in acco: evggestions, or to obviate objections made by to its ori form. He may be supposed to know, therefore, better than any one else but the patentee bimeelf, what the invention was for which the pa- t was cought at first; and he may also know whese inadvertence, accident, or mistake it was shat made the figet specification inoperative of inv: nes with bh ; bis French patent bears | ute, having all the legal attributes of the | | he Commissioner himself, is not capable of | lid. is not absolutely impossible that it may bave been his own, as pan it had his implied And this consideration furnishes consi s a ment forthe rule that the prema bee | sctios in ordinary cases of re-issue shall have more than a prima facie influence in finally desis ¢ identity of invention. Whatever be the extent ip apart ny hy me gder igre cussion before the Court but the issue of fraud, as ars to have been the undivided opinion of the Sipreme Court, in the of + How., 404; og whether we: oursel) pt from ay eed eae a ssape a mn cl re ol ously different that claimed im the inal; or whether, with Ju Story, in Allen vs. Biunt, 3 Stor., 740, and in Woodworth vs. Stone, Ibid, 749, we hold the grant of the amended patent to be ‘conclusive a3 to the existence of sioner to issue it; at least, ualess it is apparent, on the face of the instrument itself, without any auxili- ary evidence, that he was guilty of an exe thority, or that the patent was ured b; between him and the patent Whatever be the rule, or its limitations, the propriety of the re-issue in the case before us can claim a judicial re- view. There is no want of jurisdicticn, a rent on the face of the proceedings, or ‘asserted y the evidence; and there is ne fraud imputed, or justly imputable. ris there an: ter a re) specifications, with their peepee re claims, ply aided by the acumen of highly ingenious counsel, we have not founda mate: difference of import petween any of them. The order in which the sub- jects of claim are marshalled is no; the same throughout; a phrase is more concise in one, in an- other more popular; in one, a seieutific term, or a general expression, takes the place of the descriptive or defining language, or the detailed particulars of another; in a word, they are unequal as specimens of artistic writing, and a close examination may de- tect defects in the two first, which are repaired in Bat they ali describe the same thing es- d we should find it easier to argue that flagrant diversity of claim. Af ially; neither the firet nor the second specifieatioa could be rightfully regarded as “ inopera’ive or invalid” for want of precision and clearness, than that there | wes an important variance in the second from the | first, or in the third from either. ob, on. | Mr Morse’s patent of 1840, in all its changes, as- | serts bis title to two distinet patentable sudjects-— the first, founded on the discovery cf a new art; the | second, om the imvention of the means of prac- | tising: it. , f 1. That he was first to devise and practice the art of recording language, at telegraphic distances, b, , the dynamic force of the electro magnet, or, indeed, | by any agency whatever, is, to our minds, plain upon all the evidence. It is unnecessary to review the testimony for the purpose of showing this. His application for a patent ia April, 1838, was preceded by a series of experiments, results, illustrations and proofs of final success, which leave no doubt what- ever, but that his great invention was consummated before the early spring of 1837. There is no one person whese invention has beer epoken of by any witness, or referred to in any book, as involving the principle of Mr. Morse’s discovery, but must yiell | precedence of date to this. Neither Steinkall, nor Cooke and Wheatstone, nor Davy, nor liyer, nor Henry, had at this time made a recording telegraph | ofany sort. The devices of the three first were mer semaphores that spoke to the eye for the mo- ment—besring about the same relation to the great discovery now before us, asthe Abbe Sicard’s inven- tion of a visual alphabet for the purposes of conver- sation bore to the ar: of printing with movable types. Mr. Dyer’s had no recording apparatus, as be expressly tells us; and Professor Henry had con- tented himself with the abundant honors of his labo- ratory and lecture rooms. When, therefore, Mr. Morse claimed, in bis first specification, “ the application of electro magnets” “for transmitting, by signs and sounds, intelligence between distant points,” and ‘‘ the mode and pro- cess of recording or marking permanently signs of intelligence transmitted between distant points;” and when in his second specificasionhe claimed * the making use ofthe motive power of magnetism, when developed by the action of currents of electricity, as a means of eperating apd giving motionto mchinery, which may be used to imprint signals upon paper or other suitable material,” ‘for urpose of tele- graphic communication,” chara zing his * in- vention as the first recording or printing telegraph by means of electro-magnetism;” and when io his third, after again describing his machinery and process, he once more characterized it in the same terms, and claimed ‘as the essence of his invention | the use ofthe motive power of the electrie or gal- | vane current, (electro-galvanism, as he now terms | it.) however, developed, for makiog or printing in- | telligible characters, signs or letters, at any dis- tance;” through theee several forms of specification | claiming, and renewing his claim, of property in | the came invention, as it seems to us—and claim- ing in each and all of th no more, as it also feems to us, than he was justly entitled to claim— he declared the existence of a new art, asserted his right in it as its inventor and owner, and announc- ing fully its nature and demerite, invoked in return the contracted protection of the laws. from this time his title was vested as patentee of the art, and other men became competitors with him only in the work of diversifying aud perfecting its details. He himsel! used the sty/us, to impress per or hment, or wax-coated tablets, it may e; though he sometimes made a colored record by the friction of a pencil; another substitutes a liquid pigment, or stains bis paper with a chemical iok; the next Fagiey stains his paper beforehand, and writes on it by decomposing the celoring matter; and another yet, more studious of originality than the rest, writes in a cyclovolute instead of a straight line, and manufactures his ink as he goes along, by decomposing the tip of his stylus on a chemically- moistened paper. They are, no doubt, all of them inventors; as was the man who first cast t; ina mould, or first bent metal into the practical sem- blance of a gray goose quill, or first devised sympa- thetic ink, that the curious in letter-writing might veil their secrets from the profane. All these toiled ingeniously and well, to advance or embellish a pre- existing art. But they bad no share in the discovery of the art itself, and can no more claim to share the property which its discovery may have conferred on another, than he who has devised some appropriate » can assert an interest in the gom | ling invention is correctly designated asa new art; and that he has sought to patent it accordingly, by a compliance with ali the requisi- tions of the statute; it is still contended, and with much of elegant research into the radical meanil of the term, that an at — neon pe ma the subject of a patent. jut interpreting lan; ec ae men we it arvand us, and as it reflects ideas, the ion can hardly be regarded as doubtful. The onal gto under which our patent laws are framed, looks to the promotion of ‘useful arts.” The act of Cong and use ful art” among the eri purposes to protect, and assigns to it the frst place on the list. The statute of 21 James |., ¢. 3, from which the patent system of England has grown up, speaks only of “new manufactures.” \et ye of that king: dom find a warrant in this limited expression for sustaining pacents for an art, and even for the re- newed discovery of an art that had been lost. [See the hot-blast case, Webster, p. c. 653,717, and Mr. aces “a Webster's note at p. 718, and the case of Wright's | atent, rbid. 7%, and the cases grouped in Hind- march, 77—102 } Indeed, the author whose treatise we have cited last, agserts wich much and nothing else, which is the characteristic subject of every privilege granted by a patent under the statute, p. 92 nd it may be noted, as no: without interest, that in just accordance with the spirit of the | -nglish law cases, the English patents of Vooke but in Jangrage as unequivocal as that employed by Mr. Morte Nor can we see that there is any reaton of policy which should deny protection to an art, while ex- tending it to the machinery, or processes, whic! e art teacher, employs makes useful. Wh: should the type, or the irk ball, or the pross itself, & such humble sabordipation, and without which | they are rubbieh! Will you nt the new pro- | duct, and the new elementa ns, and the new process by which they act, ther you may patent the art’ it sirendy iS You have patented that it has been held in that the € patented must some re ce to a manufacture. (See Hindmarch, ut suy But such a deduction might be legitimate from the words of the statute of James, it would be ob- beral phraseolo- And even in England, st Ty one who hae watched progress of their patent system, tI | tation i# praetically disregarded be jiated #0 soon as i ith the protection of Yet in truth, there of practi- cal moment to the daily concerns of men, even in the lapse of many years, that are not more or lees directly connected with some department of taanu- facturing industry or skill. The convex lens—the steamboat—the iron road, on which cars are pro- pelled by the friction of driving wheel these may be #o indirectly connected wit! tures, or rather they are associated so intimately with the leading pursuits and ieneceeys sand ener mente of all of us,as to make it difficult to refer them to the category of » particular manufacture Would it not be strange, if on this account, they | Were exeluded from the benefite of the patent sy» lem! Jf we go back to ihe carly story of our rage, the question | il the facts | which by law are necessary to entitle the Commis- | careful examination of the three | e observations form the answer to the third | | small body of iron be made to form the extremity ¢ admittin , for the sake of argument, that — emphasis, that it is the art, | & Wheatstone, Davy, and bain, claim property in | the arts, for which their mechanical devices are re- | spectively adapted; not, indeed, in so many words, | be dignified beyond the art to which they minister | nd then debate whe- | theught, to letters, its record—and from ktters to ig, which first diffused letters, widely, | } yg = Sones among men—and from 4 the legrap! a ee amma sane eres rH of spreading ol over the ent world, and i it ebro simultaneously every- where, as of one heart; who will say that each transition betweea these great signalize the moral and intellectual of mankind, not be marked by & mm as stately as first ¢! 1g of a cute or the com} ding ef a new ty of liquid blacking? or that the men to whom we owe thom should not be dealt with as liberally, or at least as justly, by the State? ‘ 2. The second general subject of Mr. Morse’s mt of 1840 includes many particulars; all of m interesting and valuable in connection with the claim we have just been considering. Taken ive a” tical form to his leadin, guard it form the imputation of being a mere act notion—s principle resting in idea. Taken singly, some of them aR tous to be new; aa his alphabet, (claim 5,) combined (claim 4,) by which the electric current om one battery, pefire entirely expending itself in its lengthened circuit, is made to set another bat- tery in action, from which another circait traverses | to @ battery still beyond—and so onwards; his | adaptation of clockwork to the recording cylinder, « 2,) and others, are only new as they aro elements of a novel combination. Taere is no roof before us that any of the devices which Mr. Morse has claimed in this patent, whether as inde- | pendent inventions or parts of @ com! tion, are | not really his as far as he has claimed them. It is unnecessary to discuss them in detail, for they are all sabstantial!y protected, as appliances of the art | which is the great subject of his pa:ent, JI. The second patent of Mr. Morse is for what has been termed his Local Circuit ‘o understand the questions which arise upon thie, it is necessary to refer back to the apparatus which he had pa- tented before, and to explain in general terms ics principle and modes of operation. I shall attempt todo this in popular language, without stopping to consider very carefully the varying niceties ofscien- tific komenclature. 2 Jt is well known th: current of galvanic eles tricity, while passing along awire that bas been woucd spira'ly roand a bar of soft iron, communi- cates to the iren @ certain degree or magnetic vir- tue, and that the iron loses this magnetic character again as soon as the electricity ceases to pass along the wire that surrounds it. It is alzo well knowa that the clectric fluid may be pessed along a wire of great length, and yet retain when at the farthest end of the Wire, # sufiicient de of energy to impart this occasional magnetism to the iron, and to make it capable, for the time, of attracting any tmall body of iron that may be near it. If sucha of a nicely balanced lever, it is plain that while the one extremity of the lever is attracted towards the temporary magnet, the other extremity will be moved in the opposite direction; and if to this other extremity we affix a pencil or stylus, this will press upon whatever surface may be interposed in the way of its motion, and may either mark the surface, or, if it be of a yielding nature, indent it. It is plain, also, that when the bar of soft iron ceases to be magnetic, in coasequence of the elec- tric fluid ceasing to pass around it, the lever will take ite original peaiien, andthe stylus ceases to press upon the resisting surface. If, now, we suppese that surface to be moved uni- formly below the stylus, it ie obvious that the sur- face will be marked with a straight line, and that this marked line will be interrupted during any in- termission of the electric current, s0 as to forma broken series of straight linee, er ifthe electric cur- rent passes and intermits in rapid alternation, a se- ries of dots or pointe. These broken traces of the stylus, the lines and dots, constitute the alphabet of Mr. Morse ; a certain succession of either, or a certain combination of the two, being arbitrarily chosen to indicate a particular letier. b The galvanic battery cones the electric fluid continuously ; whenever the two extremes or poles of the battery are connected with a suitable con- dusting medium, such a: a metallic wire, water, or the earth itself, along which conductor, it is called, the electric Quid may pass between one pole of the battery and the other, thus performing what is termed an electric circuit. Let us now extend a continuous wire from one of 1 vanic battery to a distant point, it shall not be intermediately in tact with the earth or with any other good con- ductor of electricity ; and let us, at a distant point, ass the wire in a spiral coil round a bar of soft on, and thence lead it back again to the other pole of the battery, or avail oureelves of the earth iteelf as part of the circuit. It is obvious, from what we have said before, that the electric fluid, parsing from the battery along the wire, around the occasional magnate, and back to the battery, and then at eppropriate intervals of time interrupt- ed in its circuit, will cause the sty/us to make its trace of lines or dots, or in other words its alpha- betical record, at the distant station. It only re *, then, to devise a mode of inter- ropting and renewing at pleasure the flow of the electricity —breaking and closing the circuit, in the language of the experts. This is done by dividing the wire near the battery, and then arranging a simple finger key, which, when struck or pressed upon by the finger, brings a short metallic conduc- tor into intimate contact with the two ends of the divided wire, and thus restores the continuity of the circuit while the pressure continues on the key. This may serve as a rude explanation of Mr. erg lectro- Magnetic Telegraph in its simplest form. It was found, however, at an early period, that, | though the electric current was still appreciable after it had passed over s great length of wire, yet, im traversing the very long circuits that were re- quired to include distant telegraphic stations, it ceased to impart @ sufficient of energy to the temporary magnet to work the stylus eflective- i. To meet this difficulty, Mr. Morse resorted to e simple device of employing a series of batteries distrib over his line of telegraphic communica- tione, with as many shorter circuits, each operating, by means of a net at its extremity, to control the movements of a small lever that oppened or onan beaker = the ong! beyond. The vd | tery gave efficiency to the recording apparatus | at the aise it Station” This formed "the combined series of Mr. Morse’s first patent. It is easy to te the intermediate magnets of the combined series, besides opening and closing the circuits, might be also made to act as recording magnets, by merely adapting to them the stylus with ite appendages ; and that there would thus be #2 mary stations of telegraphic communication as | there were batteries and minor circuits. But there still remained this objection to the combined se- ries—that it could only be worked in one directien, | and that it was necessary, therefore, to have two complete lines of wires, with their batteries and — magnets, in order to establish ® reciprocating com- | munication. To dispense with this duplication of machinery and pbs ton was the object of Mr. Morse inthe | invention which is the subject of his second patent. It kad been found that the magnetism excited 7 the electric coil was capable, at this end of an al- most indefinitely extended circuit, of giving motion to a delicately adjusted lever, but that this was the apparent limit of ite dynamic power. A single wire might be employed then, without interver 04 magnets, by connecting it at extremities wi electro magnets, of great sensibility of mec! and employing the force of those magnets merely | to open short loca! circuits, from which local cir cuite the degree of magnetic energy adequate to the purposes of the recording apparatus could be derived. Put the electric current, after passing over a long Wire, does not exert a u m dynamic energy However carefully ineulated at fret, the wire | comes after a time more or lets exposed to atmos. heric action, and the fluid is more or less dissipated in consequence. The posts on which it is supported become conductors during storms of rain, and carry off the fluid to the earth. Under other circum- stances, the electro-magnetic phenomena are exag- gerated at the receiving station by atmospheric electricity from the regions throvgh which the con- ducting wire 8 weed. The batteries, too, do rate the finid with the same rapidi- | rd, the current atthe extremity of t he regular. all this, it is foun pot * ty. In atrenit jutely cease atthe instant of breaking the circuit; but seems to linger in the iron for an appreciable interval of time afterwi an intensity, which, h slight, bears rent relation to the intensity a of the current that induced it. This of itself would interfere tly with the very rapid operation of the telegray lever wore left to withdraw iteelf from the net, to which it sorves as an armature, by the force of gravity alone. A small pring is therefore connected with the machine, of tuficient strength to overcome the attrastion of this lis gering. ‘oie ie oe magnetic foree, but not sufficient to resist the attraction of the magnet when the circuit is closed Now, it is apparent that, under the varying cir- cumstances that influence the magnetic energy at the further extremity of the circuit, the elias ment of this spring must not be ani f ite tension Were just that which would neutralize or barely overcome the continuous magnetism in- | duced by an electric current of small iy, it would not draw back the armatare when the in- | ducing current had been in greater force; and, on the otker hand, a stronger tpring, adapted to the case of a powerful current, would oppose a controll- ing resistance to the magnetism induced by a feeble ore. The Adjustible Receiving Magnet, described in Mr Morse’s cccond patent, meets per- fectly the conditions of thie difficulty, and enables the 7 the mere touch of @ finger on an adjusting screw, to regulate the tension of the | patent has been infringed w | have been invalidated b: ee ring, and adapt his apparatus to the ciream- stances of the moment. with its delicate heel eae rding cireuit at receiv! and its short reco: each ———_ made no provision for interme- diate or collateral stations. But a3 it had been found desirable in ice to distribute the bat- teries in which the electrie flaid was generated, of the line, so as to reinforce the energies of the current in its progress, it was an a ry alone 8 estion to sae oh Sese a ints & magnet cha- Tsober sliher with the ae line, or with the bat- tery. forming part ed and to attach to this re- cols magnet @ lo: registering eireuit, or a bea circuit leading to _ er more collateral 0. ns. Such I understand to be Mr. Morse’s local or in- dependent circuit. His patent of 1546, as re-issued in 1848, claims it in these words :— ‘The employment in a certain belogrephic cir- cuit, of a device or contrivance called receiving magnet, in combination with a short local indepen- dent circuit or cireuits, each having a register and registering magnet or other magnetic contrivances for registering, and such a relation to the re magnet or contrivances. for registering, and to the length of circuit of tele- raphic line, as will enable me to obtain, with the grap! '» aid ofa main galvanic battery and circuit, and the intervention of a local and circuit, such mo- tion or power for registering as could not be ob tained otherwise without the use of a much larger galvanic battery, if at all.” That the local or independent circuit, as we have described it, and as it is more aczurately and per- haps mere intelligibly set out by Mr. Morse, in his specification, was original with him, cannot be riously questioned, The devices referred to inthe patents of Cooke, and Wheatstone, and Davy, are at best imperfect modifications of the combined series of Mr. Morse’s first patent; one of them not improbably borrowed from it. The adjustible re- ceiving magnet, the indispensable and characteris- tie element of the local circuit patent, no one claimed but himself. It is only to make the first approach to a contro- versy on this point, to prove to us that Professor Henry bad, as early as 1525, made the intensity magnet, with whish the ecientitic world is now faniliar—or that he afterwards, and before Mr. Morse’s first application for apatent, had illustrated before his class at Princeton the manner in which one circuit could operate to hold another closed or to break it at pleasure—or that be had foreseen the applicability of his discoveries to the purposes of a telegraph, Ihe question, is not one of scientific precedence; and it it were, thie is not a forum that could add to or detract from the eminent fame of Mr. Henry. It ie purely a question of iaveation, applied in & practical form to a specific use; and so regarded, it admits but of a single ans ‘n passing from the questions of inality and identify of invention that have been raised in the cause, Without a more detailed review ofall the tes- timony, there is oceasion, perhaps, for an explana- tory remark. It is thie: the decree of a Judge Gnds its apprepriate and only justification in the facts proved before him, nut in theories, however ingenious, or the less speculative inferences of other minds ; and where the essential facts of a case are us clearly established as they are here, it would be unprofitable as well as painfal to discuss the parti- culars ef variance between the witnesses. There is no place in which the evidence of scientific men upon topics within their own departments of knowledge, is more to be desired than in this Court, when sit- ting for the trial of patent causes ; and the opinions also of sueh men, when ie? supported by reason- ings founded on ascertained fact, must of course ba valued highly. But it is a mis‘ake to suppese that, even on a question of science, opinion cau be digui- fied here or elsewhere with the mantle of authority. Still less can we allow it to avail us here, when it assumes contested fasts, or volunteers to aid usin determining the important written instruments. These remarks are not dictated by a spirit of un- kind; or uncourteous commentary on the deposi- tions before us. We know that when opinion is ac- tive, it is not always easy tolimit itsrange. There is besides very much of accurate scientific meena & and of just and well guarded deduction from it, in these two volumes ofexhibits. But it must be con- fessed also, that there is to be found here and there not a little ofimperfectly considered dogma, as well as something of doubtfully-regulated memory—and it has seemed to us, in this ease as well asin some others, that the toil and expense ‘and excitemen: of litigation might have been moderated, perhaps, if the appropriate tone and province of testimony had been more exactly understood by some of the witnesses. The objections which have been taken to the terms of the re-iseue of Mr. Morse’s patent of 1916, may be answered by a simple reference tothat part of our opinion in which we have considered the ar- guments of the same character that were urged against the patent of 1510. It is beyond controversy that the local circuit pon at some of the sta- tions of the respondent’s line; and it is the opinion of the court, that it is also violated whenever the branch circuit of Mr. Rogers is employed. We have not been able to see the asserted difference in i between the two devices. Both are equal- well described as branch or as local circuits. ey have the same purpose ; they effect it by the same instiumentality, even in appearance, toa great degree ; and they seem to vary only in this—that the one derives its electric fluid {rom a battery placed witbio the line of the main circuit ; the other, from a battery placed without it. The change may be for the better, or it may not ; if it be, it ts patenta- ble as an improvement ; but it cannot be used, with- pened Morse’s license, until after his patent has expired. ll. The third patent is for the chemical telegraph. to enter on the discus-ion of this. We donot — | The sabjee ol it is clearly within the eee tent of Mr. Morse, if we have correctly — the legal inte: ion and effect of that instru- ment. We will only say that we do not hold it to the decision of the learne:| Chief Justice of the rict of Columbia, on the uestion of interference. The form of the two ma- a ~4 Loree’ ee — the ne 3 hme the ae of wing been alre: te and secured by the May netic Tolegraphy patent of 1840, nothing remained but form, to be the subject of interference. The counsel for the complainants will be pleased to pr e, for the consideration of the court, the | draught of a decree in aceordance with the prayer Soaneel fo plainante—Hon. A ‘ounsel for com| s—Hon. Amos George Gifford, * George T. Cam; poll, as Ae Esqs. For respondents—Wm. M. Mere- H. Gillette, Wm. Schley, and Peter Mo- Call, Eeqs. ‘The counsel were directed to draw up a decree in accordance with this opinion. The Deckion of Judge Woedbary, at Boston. ireuit Court, District of chusetts, May Term, 1550, SMITH YS. HUGH DOWNING, ET AL bill in chancery for an injunction ot to ute longer an electro-mi een Boston and New York alleged thas the plaintiff by assignment was owner of the patent for Morse’s telegraph between those two cities, and that the defendants without license sing & similar one on that line, and thus in- on Morse’s patent, and injuring greatly the plaintiff. é ‘The bill was Sled in October, 1849, but not being ready for a hearing, asked for a temporary injanc- tion till the spring of 1860. Such temporary {a- junction was then in the spring waived; andthe case was ret down for a final hearing June 15, 1850, on the application for a final and permanent injurction The record was very long, with muoh evidence by witnesces and depositions, and many documents. The contents of the bill need not be further re- cited here, as anything more in it, which is deemed material, willbe noticed in the opinion of the court. The answers by some of tho defendants denied their participation in the use of any telegraph ex- cept as tharebolders in one worked by the other dejendante; and the others, ina separate answer, denied the originality of Morse’s invention, as well a6 claimed that Houge’s, which they yon inverted by him, was unlike Morses in princi- and wat no bgt ge on it in any way. ‘he testimony, which was very voluminous, will, where necessary, be referred to, or recited in the opinion, and need not be di ailed here. The case was argued the time assigned, by i. Curtis for the plaintifi, and by | Bong Woodbury, Gifford and Choate, for the jefendan Woonn ny J is case is full of difficulty, in h to the facts and the law. ricity and jot very well understood, cept by those who have made them a special study; and the trouble in comprehending with clearness and fullness their operations here, is increased by the intricate and novel mechanism employed More epeany is this last the case with the mackire worked by the defendants, and all to have been invented by Mr. House, and h is made still more complicated by the use of the new species of magnetism, called axial magnetism, and by the use of air as an additional power to move arts of the machine. As these two inventions are oth corceded to be remarkable in their charactor —trelating to an improvement in telegraphic com- munication by electro magnetiem at great distances with almost lightning speed, and thus forming ono inst metic it was | | b 22, 27) of the wonders of the age; and, as their value is estimated te be very large, both to their owners and the public, | have hastencd to examine the rights of each party as early ard as fully as other prossing avocations would permit. ‘The prayer of the bill by Smith, tho assignee of | | is of freque Morse, is for ® permanent and final injunction in gguity ainst those who are operating under louse. And this rem should be gualet, if it a) on the whole evidence, that Morse was the or first inventor of what he really claims in his patent, and that the machine by House is not a in principle, but the same in substance as 8. loree These two questions, with some incidental consi- erations under each, will be found to cover the whole case. _1n order to asco: whether Morse was tho ori- ginal inventor of all which he claims, it will be ne- cessary first to and settle how much he does cla thas is, how much is embraced im his speci- This inquiry is made somewhat complicated by his havia, out two differeat patents on the subject of electro magnetism and its use in tele- graphs, and horas renewed one of them twice and e other once, and having preceded the first patent by a caveat, describing its character and extent. But what he claims does not seem material in this case, except asset forth in the first patent and es os Fade shal refore, confine m: juiry to that, though the others must be at ee adverted to, the better to uad what was meant in that. As represented in his letter to the Troasury Do- panee. in 1837, Morse says he had been attempt- g since 1832 to make electricity visible at a tance by signs, intelligible and certain, so as to communicate information. (See it in Vail’s Hist., 152.) And in his caveat ef Oct. 6th, 1837, he claims to have “invented a new method of transmitting and mnerns, rane by means of electro mag- netiem.’” , in other words in the same instru- ment, ‘‘a method of recording permanently electrical signs” at adistanee. His specification filed in 1838, April 7th, is much the same in substance. ollowing up a like idea in 1840, in his first pa- tent he claims in tat to have invented only a ‘new and useful improvement in the mode of communi- cating information by signals,” and by the power fo pits magnetism. (See first patent, June 20th, Such is, in substance, the title of this p&tent in its original form and under all its renewals. In bis last speciications in 1848, he/claims to have invented merely “a new method,” or “a new and useful apparatus for a system of trant- mitting” intelligence, which puts in ‘motion ma chinery foe producing signs, and at a distance re- mane said signs. (See laet renewal, !3th June, 48. From all these, standing by themselves, it would seem manifest that he makes no pretension to have invented or digcovered any new principles in physics, or to have discovered the old principles of eloo tricity or galvanism. Nor does he claim to have invented or discovered any new Fem oa in me- chanics—like a new power, resembling the lever or screw. As little would any one have supposed, that be meant to claim as bis invention and as new—the ication at all, of electro magnetism to the pur- P of telegrapbing at a distance, whother by making intelligible marks or signs there, or in some other mode—if it had not been for some re- marks in one of hia letters in 1537, andsome words in the eighth clause of his last specification, and the ground taken inthe argument, recently, by his couneel. Thus, in his letter in September, 1837, to Jack- son, be seems to have believed he had some claim is discovery, viz:—as he describes it-—‘*The inal suggestion of conveying intelligence by electricity”—as well as to the invention, which he calls “the devised mode of doing it.” —(79. a liv.) Yet nothing of this is believed to be inserted in ay of his official documents, till 1843. [n bis last renewal in 18i8, there are introduced for the first time, some changes of language and some tendencies in & part of them, as well a some of the arguments, to make the claim br and, as in the letter just quoted—to cover al cation of electro-magnetiam, if not of elect to convey intelligence, or to telegraph toa d But as late as 184, so far from claiming t covery or inventien of any new general principle or art, and asking a patent to protect himself in the exclusive use, as inventor, of all telegraphs by electro-magnetism—he asks for protection of only his own improvement—his ovn method—his own apparatus. Andhe seems in his last specification, in 1848, to regard as the great excellence and novelty of his invention, that it im- prints the signals at one end, which were fent at the other, and in such characters as to be intelligible, without an observer to note them, and easily translated into English by means of his stenographic alphabet—ard hence he there styles ita‘ recording or ting telegraph.” When there, for the first time, he speaks also of “ the essence of my invention being the use of the motive power of the electric or galvanic current,” ‘‘ however deve- loped” ‘for marking or printing intelligible cha- racters,” “at any distance,” being “‘ a new applica- tion of that er of which [claim to be the first inventor or discoverer,” he must, by all before said and done, be considered as claiming i: in the form of bis application—according to his machinery—and in the modes be had described in 1837, 1538; 1840, ard 18i6—rather than in this succceding clause of 14, and by it intending to cover the application itself of electro magnetism to telegraphic purposes, in every possioleform therwise, his renewed pa- tent of IS48 must be regarded as void for claimin, too much, and for wishing to protect a mere princi- ple, or effect, “‘however developed,” and without reference to any method described by him, and to cover A principle, also, before known —(Harvey Ev., ) But, limiting the patent to what is described as his method, or mode, and considering that in his “first claim,” in 1848, be disclaims such broad views as appear inthe “eighth claim,” of that date, and expressly says, ** 1 wish to be understood that I do not claim the use of the galvanic current, or current of electricity, for the purpose of tel- eqreabie commantantiens enerally, but a new mode of using it, to move machinery to print signs, &c., as described,” all is consistent and confined sub- stantially to the mode he sets out in his specifica- Lay aa in his own testimony in the record, 4). What he thus sets out is the subject invented. What is to be protected is not an abstract or isolated principle, but the embodiment of a princi- ple intoa e or manufacture, as described in the speci ion; and it isthe invention, ia con- formity to that embodiment or representation of its working, which the act of Congress will protect, (Bolton va. Bull, 2 H. BL 403, 453, and bD. & Web. ; Web. on 4, 3 2 Stor. R. » 408; Curtis on Pa. 96 & 1455; 1 Stor. R. 271; Godson on Pat. Phil. Pa. %; 1 Gallis, 47%; Hindmarsh, ecause by those , the inventor is not to be protected, unless describes plainly and fully what he has done, so that the public may oop, or imitate, and use it after his term expires. bat is the consideration for the exclusiy during the period of the Patent, and hi prevents the patentee from claiming more than he had invented when (Web. case 719, 1 128 205. And wi the misty future he cannot describe, he must be presumed not to have invented. 2Hen. Bl. 453.) As this broader claim goes far beyond what we e already seen was that made in the caveat, and he first specification, and in the original patent, ag well as in all the subsequent renewais—as it con- fliets with much of the language in this very last renewal— looking only to a new method and a mere | improvement on what existed before, and aa he seeme to disavow it in his own evidence, (4% record) and as, on everything in the case, it is at least ques- tiouable whether he could have intended to patent anything, except an imprevement on what before existed, 1 ¢o no’ ink it just fo place q broader ind nature of the case construction, travelling too far, on doubtful ground, is to be adopted; but rather what is vatural and clear, considering what al- hi (Haworth va. s Brown, 1 1 Stor. Stor. R. 164; 1 1. tke mere readily adopt this course eee essuch a broader viow m bject fie patent to be considered void, both claiming toomuch, and for claiming also the invention of a mere principle. It woula be claiming too much, 8s it Would cover the application in every way of electro magnetism to te! _ hs. When thi will be seen hereafter by t istory of this sub- ject, and is eworn to by a large number of highly intelligent experts, had been thrown publicly and for years before Morse’s first attention to the sub- ect in 1582. (Prof. rev2v; C. B. E ; Steele Liv. 245-6; Reid Ev. wick Ev. 2345 150; Chilton. Ey. 286; Borden Ey. 21S: Channiog nif ded, Sole wT J JE ) indeed, he himse! tually admits the truth o} this in his testimony. (Moree By. #6) : Othere, no leas than the perons cited, as well as the history seon to be given of the progress on this subject, show that several bad, before Morse, not only made this discovery, but applied both electri- city and electro magnetism to the purpose of tele- rhe. But if, by his alphabet and record, he ad been successful in making an improvement in the use of electricity for that purpose, and wished to secure the new method of doing it, liberty, in point of law, to take out tent for ye tew mode, but for nothing more PUlenry’s He came into the world too late for traly claiming | much asnew. A large galaxy of discoverers on this oles bad preceded is. f aig he avoidance of patents for claiming too mush occurrence and needs no explanation as tothe r na for it, when an applicant is eo im- Provident or ur; more tha: invented, and the credit or fit of which belengs to others rather than himeelt, (See V Stor Ke 273; 2 Stop. Re 4; A Syner 425 1 te, ‘ whole sub- | it to others as to claim for himeclf | oe) 465; 6 Peters 218; 1 Wood and Min. As to the second objection, that this would be bee! cover by @ patent ci) ith = 407 ey or setod of enor ‘ing it, 2 Hen, Pete 4 fe Gyn tee Rover to Gib eral since em ae or important it may be per se—res i the exclusive use of the invention, for re et years, is given to the tee, to reward his geaine oe Eynabice-soaly ral em ° patent is, in such cage, and must be ies possess validity, not for the principlo—bat for the mode, machine or manufacture, to carry out the inetple and reduce it to practice. (Webs. on Pat. 49-8.) In short, the principle thus becomes the modus operandi, and rests in the modo adopted to accomplish certain results. And though some expressions may have been used by one or two judges, which look like # sanction to patenting a principle, yot they are used in the above sense, ofa ciple in operation, in the man- ner set out in the specification, or, are used too loogely from haste and inadvertence. Except for this view as to the method, what use would there be in @ specification describing the machine or method? where any judge speaks of patenting an art—it is net an art in the obstract, without a specification of the manner in which it is to operate —as & manufacture or otherwise. Butit is the art thus explained in the specification and illustrated bya machine, er model, or drawings, when of a character to be. It is the art so represented or ex- emplified, like the principle thus embodied, which alone the patent laws ever are designed to protect. In tho English Paten acts, the word, “art” is not used at all. And in ours, ag wellas in our constitution, the word art means a useful art or a manufacture whick is beneficial, and which, by, the samo law, is re- quired to be described with exastness in its mode of operation, and which, of course, for the reasons al- ready laid down, can be protected only in the mode to the extent thus deecrived. (1 Story, R. 273, 4 Wash ©. C.9, 12; 1 Howard, 204, “Web: on P.,8,9; Pail. Pat , 71 to 76; Hindmarsh, 49; Car- tis, 38—9th section ) No lawyer, conversant with the patent system. could for a moment suppow, that because Ark- wright first invented and perfected the art of spin- ning by machinery, he could have taken out a tent for this art generelly, and covered and monopo- lized a)l kinds ot future and different inyprovements in that art. On the entrary he could shield no mode of the art but that which he had devised, used and described. So it has been held that a patent for cutting ice by human power, does not — apy mode but that deseribed, (1 Story, K. ). So, though Woodworth first invented planing boards by machinery—he could not take out a pa- tent for that art, principle or system generally, and thus cither monopolize or prevent future improve- ments, when Koga J substantially from his ma- chine. But the whole effort of Woodworth’s as- signees has been to describe his particular mode of planing, so as not to omit anything ma‘erial, or to cover too much—and no attempt is made to protect anything connected with planing by machinery, except the mode thus described—or what is vail stantially the same. Considering the opinion th this, and as will soon )o vs; on othe the case, it does uot seem this occasion, whether the scy crit ick has been le by the counsel for the respondent . other portions of Morse’s claims are wel! Jed or not; and more eg lly, whether hie f patent is not invalid, because covering too iy included by a previous cign patent not having been deducted. It suf- fices now toadd, that the general conclusion ag to the extent of Mr. Morse’s claim in his specification, as amended or renewed, is, that he intended, in the words of the patent, to embrace only “anew and useful improvement.”” Or, as repeated in the spe- cification itself, only ‘a new method” of communi- cating and recording signs by “electro magne- tism;” and he does not seom to have meant to cover merely a new object or purpose, to which an old principle or machine was to be applied, and which is not patentable; (Hindmarch on Patents, 96; Webs. Ca., 208, Curtis, § 42; Stor. R., 408.) Nor a new abstract principle to proiuce new re- sultsin telegraphing by meaus of electro magne- tism. The eseence of his method beyond wha’ before had existed or been practised, was to make the electro magnetism when sited and moving in a partisular form, and marking at one ead of the wiree—not merely ibi the other end, but to trace and thus record there, permanently. Thies sign is excited by the closing and opening of the cireuit by a etroke or by lifting the wire trom the cup, or by a knob pressed down and acting by a epring, and the mark by maouiuery is made to as- ‘ume several forme—but the one generally prac- tieed. is thac of dots and straight lines. Tnese, ‘raced in succession on the rolling paper, and by being different in number aid combinasion are, by the stenograpbic a!phab: invented by Mr. Morse and embraced as a par: of the system, made to represent all the letters, wad when you please certain words in most common use. The great result of the imp-ovement is by thie machiney and the alphabet of signs for letters, to trace at one end the dota and liaes, which represent what it is wished to communicate and thus to have the same traced at the other ead on paper, by like dote and lines. The great beauty of the system is the identity of the tracing at both ends by the new machine, (whe- ther through the type rule at tho beginning of the ro closing the circuits thro type rule orithumb spring,) and also the rapidisy, as well as the exactness, with which this tracing or record- is accomplished. indeed, so impressed was the inventor with this prior sgn in hie system, that in his last specification he proposes to racterize it a1 “the fret cng aud printing telegraph by electro magne! \." *Leecribing his invention as including these im- rovements, and limiting it to them, he escapes the mputasion or fatal error of too much, or claiming to have discovered only a new ora mere art ‘The next question in connection with the first head of enquiry is, if this improvement or method were original with Mr. Morse t states that the first idea be formed in relatior to the subject of communicating information by. electricity to a dirtance, was on board the Sully, on his return from Europe, in (a2 autumn of 1832. But | from various obstacles and imperfections in exist- ing batteries, and a want of B peng means, and the novelty and Seg ye nature of the pro- poeed improvements, he was not al to complete it tili October, 1407, when he filed a ca- vVeat on the subject, andin April, 1838, put his 9 cification and drawings on the records of the = " office, and in June, 1540, took out his first nt. ~ hafman — Ree at — to the sub hee 2, not having betore n particularl; engaged in scientific Peraulta, though possessed ot good general information and much A (Days Ev. 92 a.: Prof Silliman Ev 94 @.,) he did not appear to know with ex 088 what discovo- | ries had before been made i matter, and how far others, by vast inges and science in the fame path, had already carried into effect what thens'ruck bim as prac’ and likely to prove highly useful. | Whether be 6 br. Ja occasion, of what wight | Ms the power of elect: ee: ‘on first spoke, on that bly be done to con- occasion ; and it is a coi discuss, if avoidable, betw — reputation and public u 188. t would seem probabl:, that, after the matter wae broached by some Dr. Jackson, from the nature of his ntific studies, fresh from lectares in Paris, with an electro-magnot in his gage on board, and some recent books treating of some of the operations which had besa performed with this power, (Jackton Lv. is7r, ltr, I8r.,) could impart more information in respect to it, to any probable movement in the use of it. While, on the ether band, it is certain, {-om what has taken place since, that Mr. Morse aged the verance. industry and skill to go on with inquiries concerning the subject, when once started, till he perfected an instrument or machine to acsgomplish what was then agitated; andthat he is. therofore, under the Patent | System, alone entitled to bo J hae ne as the inven- tor of what is claimed aad described ia his specifi- cation—so far as it had not been completed bef »re— ¥y others. (1 Mason, %, 105; 3 Story, It., 133; 2 Woodbury & M., in Alloa vs Blunt.) ' ndoubtedly much, which, in his first reflection: on the matter, seemed to him novel, had been mat. a! ot on one Atm Had the unive: 8 a8 ‘aboratories of Europe | and even of America id Itappears, on examination, that early ag 1746, | Winkler at Leipsic, had used common. eleotricit; tor tel junications by the discharge of Leyde in connection with a long wire. (” Anovals 6f Electricity, 415 p ) In 1748, thi was done By Watson with two wires onan led circuit of four miles. (Ditto, 146, and Barret’s Ey. 205 And in 17% or 1787, Loneard, by frictional ¢lec- tricity and a wire ¢xtonding thence into another mitted telegraphic signale. History, 121) In 17, Reizer, by an electrie spark and wires, minated letters of tin foil at a distanee on a #8 plate. And in 1795, Betancourt, in Spain, sont this epark by Leyden jars and a wire, twenty- tix miles, and in the same year, Salva, at Madrid, worked for many iniles what was called “an lee (Vail's