At April Term, 1844, Emerson brought an action of trespass on the case in the Circuit Court of the United States for the Southern District of New York, against Hogg and Delamater, for an infringement of his patent right. As one of the points decided by the court was whether or not the allegations of the declaration corresponded with the evidence of the patent, it is thought proper to insert the declaration. It was as follows, viz.:

John B. Emerson, a citizen of the State of New York, by Peter Clark, his attorney, complains of Peter Hogg and Cornelius Delamater, citizens of the same State, defendants, in custody &c., of a plea of trespass on the case.

For that, whereas the said plaintiff was the original inventor of a certain new and useful improvement, in the letters patent hereinafter mentioned and described, the same being a certain improvement in the steam engine, and in the mode of propelling therewith either vessels on the water or carriages on the land, which was not known or used before his said invention, and which was not, at the time of his application for a patent, as hereinafter mentioned, in public use with his consent or allowance. And the said plaintiff being so as aforesaid the inventor thereof, and being also a citizen of the United States, on the eighth day of March, one thousand eight hundred and thirty-four, upon due application therefor, did obtain certain letters patent therefor, in due form of law, under the seal of the United States signed by Andrew Jackson, then President, and countersigned by Louis McLean, then Secretary of State, bearing date the day and year aforesaid, whereby there was secured to him, the said plaintiff, his heirs, executors, administrators, or assigns, for the term of fourteen years from and after the date of the said patent, the exclusive right and liberty of mak ing, using, and vending to others to be used, the said improvement, as by the said letters patent in court to be produced will fully ap And the said plaintiff further says, that the said defendants, well knowing the said several premises, but contriving, and wrongfully and injuriously intending to injure the plaintiff, and deprive him of the profits, benefits, and advantages which he might, and otherwise would, have derived and acquired from the making, using, and vending of the said invention or improvement, after the making and issuing of the said letters patent, and within the term of fourteen years in said letters pat

pear.

"And the said plaintiff further says, that the said defendant, well knowing the said several premises, but further contriving and intending as aforesaid, after the obtaining of the said letters patent by the said plaintiff as aforesaid, and within the said term of fourteen years, to wit., on the said first day of January, eighteen hundred and forty, and at divers other times between that day and the com mencement of this suit, within the southern district of New York aforesaid, wrongfully and unjustly, without the leave or license, and against the will, of the plaintiff, did make and sell divers, to wit., ten improved machines for propelling boats or vessels upon the water, consructed in a similar form and acting upon the same priuciple as the said machine or improvement, to the benefit, use, and enjoyment where of the said plaintiff was and is entitled by his said letters patent, as aforesaid, in violation and infringement of the exclusive right so secured to the said plaintiff by the said letters patent as aforesaid, and contrary to the form of the statute in such case made and provided.

"And the said plaintiff further says, that the said defendant, well knowing the said several premises, but contriving and intending as aforesaid, after the obtaining of the said letters patent by the said plaintiff as aforesaid, and within the said term of fourteen years, to wit., on the said first day of January, eighteen hundred and forty, and at divers other times between that day and the commencement of this suit, in the southern district of New York aforesaid, wrongfully and unjustly, and without the consent or allowance, and against the will, of the plaintiff, did imitate in part and make a certain addition to the said invention or improvement, to the benefit, use, and enjoyment whereof the plaintiff was and is entitled as aforesaid, in breach of the said letters patent, and in violation and infringement of the exclusive right and privilege so secured to the *said [*443 plaintiff as aforesaid, and contrary to the form of the statute in such case made and provided.

"By means of the committing of which said several grievances by the said defendants as aforesaid, the said plaintiff is greatly injured, and has lost and been deprived of divers great gains and profits which he might and otherwise would have derived from the said invention and improvement in the said letters patent described and set forth, and in respect whereof

he was and is entitled to such privilege as aforesaid, and was and is otherwise damnified to the damage of the said plaintiff of ten thousand dollars, and therefore," &c.

To this declaration, the defendants pleaded the general issue, and filed a copy of the special matters of defense to the action.

In May, 1847, the cause came on for trial. The patent was given in evidence, when the counsel for the defendants prayed the court to instruct the jury that the patent, thus produced in evidence by the said plaintiff, was void, for the reasons following:

1. That the claim of the plaintiff, as set forth in his specification annexed to his letters patent, embraces the entire spiral paddle wheel; the claim is, therefore, too broad upon the face of it, and the letters patent are void upon this ground, and the defendants are entitled to a verdict.

2. That the patent is void upon its face, for this, that, purporting to be a patent for an improvement, and specifying that the invention is of "an improved spiral paddle wheel, differing essentially from any which have heretofore been essayed," without pointing out in what the difference consists, or in any manner whatever indicating the improvement by distinguishing it from the previously essayed spiral paddle wheels, it is wanting in an essential prerequsite to the validity of letters patent for an improvement.

3. That the patent is void upon its face, for this, that it embraces several distinct and separate inventions, as improvements in several distinct and independent machines susceptible of independent operation, not necessarily connected with each other in producing the result arrived at in the invention, and the subject matter of separate and independent inventions.

4. It appears in evidence, that the drawing and model of the paddle wheel of plaintiff, filed and deposited originally in the patent office, had been lost by the destruction of that office in December, 1836, and that in restoring the record of the patent, under the Act of March, 1837, the plaintiff sent from New Orleans to the office a new drawing, to be filed on the 5th of May, 1841, together with a court copy of the letters patent which were deposited in the 444*] office. The drawing was not sworn to by the plaintiff, but remained in the office till January, 1844, when it was delivered to an agent of the plaintiff and sent to New Orleans, and sworn to by him, and filed in the department on the 12th of February, 1844. On an examination subsequently by the plaintiff, it was discovered that this drawing was imperfectly made, and thereupon a second drawing was procured by him, which he claimed and offered to prove to be an accurate one, and was sworn to, and filed on the 27th of March, 1844, ¦ an authenticated copy of which was offered in evidence on the trial by the plaintiff; which was objected to by the counsel for the defendants, but the objection was overruled and the evidence admitted, to which an exception was taken.

5. That if from the evidence the jury are satisfied that no propelling wheels were made by the defendants between the 27th of March, 1844, the date of the alleged completion of the

record of the plaintiff's patent, under the Act of March 3d, 1837, and the commencement of this suit in April following, that, upon this ground, the defendants are entitled to a verdict.

The court charged, in respect to the instructions prayed for, that “the claim of the plaintiff was for an improvement on the spiral paddle wheel or propeller; that by a new arrangement of the parts of the wheel, he had been enabled to effect a new and improved application and use of the same in the propulsion of vessels; that the ground upon which the claim is grounded was this: it is the getting rid of nearly all the resisting surface of the wheels of Stevens, Smith and others, by placing the spiral paddles or propelling surfaces on the ends of arms, instead of carrying the paddles them selves in a continued surface to the hub or shaft. It is claimed that a great portion of the old blade not only did not aid in the propulsion, but actually impaired its efficiency, and also that the improved wheel is made stronger. was made a question on the former trial, whether the plaintiff did not claim, or intend to claim, the entire wheel. But we understand it to be for an improvement upon the spiral paddle wheel, claimed to be new and useful in the arrangement of its parts, and more effective, by fixing the spiral paddles upon the extremity of arms, at a distance from the shaft."

It

The court further instructed the jury, that the description of the invention was sufficient, and that the objection, that the parts embraced several distinct discoveries, was untenable.”

The court further charged, "that the damages were not necessarily confined to the making of the wheels between March, 1844, when the drawings were restored to the patent office, and the bringing of the suit. Such a limitation assumes that there can be no infringe- [*445 ment of the patent after the destruction of the records, in 1836, until they are restored to the patent office, and that, during the intermediate time, the rights of patentees would be violated with impunity." We do not assent to this view.

In the first place, the act of Congress providing for the restoration was not passed till 3d March, 1837; and, in the second place, in addition to this, a considerable time must necessarily elapse before the act would be generally known, and then a still further period, before copies of the drawings and models could be procured. Patentees are not responsible for fire, nor did it work a forfeiture of their rights.

The ground for the restriction claimed is, that the community have no means of ascertaining, but by a resort to the records of the patent office, whether the construction of a particular machine or instrument would be a violation of the rights of others, and the infringement might be innocently committed.

But if the embarrassment happened without the fault of the patentee, he is not responsible for it; nor is the reason applicable to the case of a patent that has been published, and the invention known to the public. The specification in this case had been published. It is true, if it did not sufficiently describe the improvement without the aid of the drawing, this fact would not help the plaintiff. If there had been unreasonable delay and neglect in restoring the records, and in the mean time a defendant had

innocently made the patented article, a fair ground would be laid for a mitigation of the rule of damages, if not for the withholding them altogether; and the court left the question of fact as to reasonable diligence of the patentee or not in this respect, and also all questions of fact involved in the points of the case for the defendants to the jury.

The counsel for the defendants excepted to each and every part of the charge of the court, so far as said charge did not adopt the prayer on the part of the defendants.

The verdict of the jury was, that the said Peter Hogg and Cornelius Delamater, the defendants, are guilty of the premises within laid to their charge, in manner and form as the said John B. Emerson hath within complained against them, and they assess the damages of the said plaintiff, on occasion thereof, over and above his costs and charges by him about this suit in this behalf expended, at one thousand five hundred dollars, and for those costs and charges at six cents.

The judgment of the court was, that the said John B. Emerson do recover against the said Peter Hogg and Cornelius Delamater his damages, costs, and charges in form aforesaid 446*] *by the jurors aforesaid assessed, and also three hundred and twenty four dollars and fifteen cents, for his said costs and charges by the said court now here adjudged of in crease to the said John B. Emerson, and with his assent; which said damages, costs, and charges, in the whole, amount to one thousand eight hundred and twenty-four dollars and fif

teen cents.

The cause

was argued in this court, in printed arguments, by Mr. Upton and Mr. John 0. Sargent for the plaintiffs in error. and Mr. Morton and Mr. Cutting for the defendant in error. The arguments were too voluminous to be reported in extenso, and it is not possible, therefore, to give more than extracts from each. The counsel for the plaintiffs in error assigned as errors the following points:

I. The defendant in error has no patent for an improved spiral paddle wheel.

II. If the defendant's patent is for the combination of instruments described in the specification, there is no pretense that the combination has been infringed; if for several separate improved machines, it cannot be supported in law

III. Defendant's patent is void for too broad a claim, and for not distinguishing his alleged improvement from other inventions, nor par ticularly specifying, as the statute requires, the particular improvement which he claims as his own invention or discovery. The case exhibits an improvement as the invention, and the claim is for the whole machine.

IV. The drawing filed March 27th, 1844, was not legal evidence of defendant's patented invention, because there was a drawing filed by the patentee on the 12th of February previous, which was, by the second section of the Act of 1837, with his letters patent, the only legal evidence of his invention, as patented, that could be offered in any judicial court of

the United States.

V.-1. The patentee, after an alleged correction of the record of his letters patent, by filing the second drawing, could not, in law, avail

himself of that alleged correction to cover by it alleged causes of action previously accruing; and in the absence of proof of any subsequent infringements, the plaintiffs here were entitled to a verdict below.

2. Nor was he entitled to recover damages for any alleged infringement prior to the alleged completion of his record by the filing of the corrected drawing of 27th March, 1844.

VI. What was reasonable time in this case for the restoration of defendant's patent to the office, if not expressly fixed *by statute [*447 (Act of 1837, sec. 2), was exclusively a question of law.

Mr. Upton, for plaintiffs in error:

I. This action was brought to recover damages from the defendants below, for their asserted infringement of an alleged patent of the plaintiff for "an improved spiral paddle wheel"; and the first question to which the attention of the court is requested is one which is presented upon the face of the letters patent. which constitute the basis of the action, and which are incorporated into the bill of exceptions; it is this: Has the defendant in error any such patent?

If it be manifest to this court, upon an inspection of the record and an examination of the letters patent, that he has no grant, as patentee, of an improved spiral paddle wheel," then it is submitted, that there is no escape from the necessity of reversing the judgment which has been rendered, awarding him damages for the invasion of such a grant. This necessity is in no manner affected, though it appear that the objection was not taken in the court below, either at the trial or upon a motion in arrest of judgment. It is sufficient if the defect be manifest upon the record; for it would be monstrous to contend that this court is powerless, in any case, to reverse the judgment, when it appears upon the record before them that the very foundation of the judgment is so incurably and fatally defective as to have been completely beyond the remedy of the party, though the objection were taken at the earliest possible stage of the proceedings. Authority can scarcely be necessary to sustain this position. But this court has decided, in the case of Slacum v. Pomery (6 Cranch, 221), that it is not too late to allege as error in the Supreme Court a defect which ought to have prevented the rendition of the judgment in the court below. "Had this error," say the court, “been moved in arrest of judgment, it is presumable the judgment would have been arrested"; and

'there can be no doubt, that anything appearing upon the record which would have been fatal upon a motion in arrest of judgment is equally fatal upon a writ of error.' (So, also, Garland v. Davis, 4 Howard, 131.)

By the bill of exceptions it appears, that, upon the introduction in evidence of the letters patent by the plaintiff, "the counsel for the defendants did insist before the said Circuit Court, on behalf of said defendants, that the said letters patent so produced and given in evidence on the part of the said plaintiff, as aforesaid, were wholly insufficient as the basis of the aforesaid action and claim upon the said defendants." Now, by reference to the letters patent (page 7 of the record), the *court [*448 will perceive that the grant to the patentee,

upon the face of the letters, is for "an improvement in the steam engine," and for that alone: that it was for that alone that he solicited a patent by petition; that it was of that improvement only that he made oath that he was the original and first inventor. Such is the grant, and so is it recorded; and the public would seek in vain upon the records of the patent of fice for a patent to the plaintiff below for "an improved spiral paddle wheel."

It will not be contended that the letters, standing alone, confer any title to such an invention. But it may be said, that, inasmuch as the patentee has described a paddle wheel, and also an improved method of causing a capstan to revolve upon the deck of a vessel, as well as his improvement in the steam engine, and claimed these, as well as his steam engine, in his schedule annexed to the letters patent, the grant must be construed to cover the paddle wheel and the capstan, as well as the steam engine, though it be in express terms for the steam engine only, though it was for that alone that he solicited a patent, and it was that alone that he made oath he had invented. Were this doctrine maintainable, it is obvious that it would be wholly subversive of the policy of the law, which looks as well to the protection of the public as it does to the encouragement of inventors. That the schedule annexed to letters patent forms a part of the patent, and that they are to be construed together, is undoubtedly | well established. This is the English doctrine, as well as that of our own courts; and, by a careful investigation of the authorities, it will be perceived that Mr. Phillips, in his elementary work (pp. 224 et seq.), is mistaken in supposing that there is any conflict between them.

By these authorities it is decided that the title of the invention, as contained in the patent, may be explained by its description in the specification, whenever such title is general, ambiguous, or uncertain; and the patent will be sustained in all cases, unless the patent indicate one invention, and the specification describe another and different invertion. (American authorities-Phillips on Patents, 224, and cases cited; Sullivan v. Redfield, Paine, C. C. R., 442; Shaw v. Cooper, 7 Peters, 292, 315; Evans v. Chambers, 2 Wash. C. C. R., 125; Barrett v. Hall, 1 Mason, 476; Whittemore v. Cutter, 1 Gall., 437; Evans v. Eaton, Peters, C. C. R., 341. English authorities-Godson on Patents, 108, 113, and cases; Neilson v. Harford, Webster, 312, and arg.; Rex v. Wheeler, 2 Barn. & Ald., 350; S. C., 3 Merivale, 629; Glegg's Patent, Webster, 117; Russell v. Cowley, Webster, 470; Househill v. Neilson, Webster, 679.)

When Mr. Phillips says (Phillips on Patents, 225), that any defect in the title may be rem449*] edied by the specification, what *he means is apparent by reference to the cases which he cites. The description comes in aid of a defective title, but never can create a new title, by adding to the grant. There must be such a conformity between the title and the specification as that the former shall give some idea of the latter. It is the description of the thing patented "which is made part of these presents," not a description of something else, of which the title of the grant gives no idea.

Thus reads the patent itself. After reciting

that John Brown Emerson had by petition solicited a patent for an improvement in the steam engine, had made oath that he was the first and original inventor of said improvement, and paid the fee of thirty dollars into the treasury, it grants to him the exclusive right, &c. in the said improvement, a description whereof is given in the words of the said John Brown Emerson himself, in the schedule hereunto annexed, and is made a part of these presents." Then follows the caption of the schedule, thus: "The schedule referred to in these letters patent, and making part of the same, containing a description in the words of the said John Brown Emerson himself of his improvement in the steam engine."

No reported authority can be found in the remotest degree sustaining the proposition, that a description and claim of anything contained in a specification are covered by the grant, though the grant make no reference to it, and the title is so entirely distinct from it as to suggest no idea of the thing described. Were this proposition tenable, then were we to strike out from this patentee's specification every word descrip tive of his improvement in the steam engine, leaving nothing but the comparatively few words descriptive of the spiral paddle wheel and the improved capstan, the grant for the improvement in the steam engine must be construed as a grant for an improved spiral paddle wheel and an improved capstan. Now, would it not be monstrous to contend that an instru ment of so solemn a character as a government grant of letters patent is to be added to and enlarged by construction?

The doctrine as settled, upon every principle of construction, is the true doctrine-that the description of the thing patented, contained in the schedule annexed to the patent, constitutes a part of the patent, and may be and should be resorted to, in construing the patent, to control the generality of the title and to explain or elucidate ambiguities or uncertainties; but that a description of a thing not indicated by the patent, not even remotely suggested by the grant or the title, can never be construed with the patent for the purpose of adding to or enlarg ing the terms of the grant.

That this doctrine may be made [*450 more obvious and conclusive-if it be possible or desirable-the court is referred to the provisions of the statute under which the letters patent in this case issued.

The inventor is required to present his petition soliciting the patent, and to make oath that he is the inventor. The statute further requires that the letters patent shall recite the allegations and suggestions of the petition, and give a short description of the invention. This requisition was obviously for the twofold purpose, 1st, that it might appear that the proper preliminary steps had been taken by the applicant, of which the recital in the letters was proof; and, 2d. that it might, on their face, be seen what was the nature and character of the grant. (Act of 1793, secs. 1, 3.) Now, did this patentee present his petition, soliciting a patent for an improved spiral paddle wheel, and make oath that he was the inventor of that improvement? If it be answered that he did, then the positive requisition of the statute is not complied with, for the patent recites the allegations and sug