CITE:  74 U.S. 295
CMON:  December 1868
PLAIN: Jacobs
DEFND: Baker
COURT: US Supreme Court
DATE:  December 1868


JACOBS filed a bill in the Circuit Court for Southern Ohio against Baker,
seeking relief for the infringement of four separate patents, which had
been granted to him, Jacobs, for improvements in the construction of
prisons. The bill set forth the different patents.

The first, dated January 7th, 1859, was for an improvement in the
construction of prisons, which the complainant set forth in his
specification with very numerous plates and designs. The claim concluded
thus: "What I claim as my invention, and desire to secure by letters patent,
is a secret passage, or guard-chamber, around the outside of an iron-plate
jail, and between said jail and a surrounding inclosure, constructed and
arranged, substantially as described, for the purpose set forth."  [The
purpose was to allow the keeper to oversee and overhear the prisoners,
without their being conscious of his presence.]

The next patent was dated 20th December, 1859, and purported to be for an
"improvement in iron-p]ate jails".  The claim was for "the improved iron
walls for the same, consisting of the following parts, arranged and united
as set forth, to wit: the entire wall plates (A) having their edges  
closely abutting, the joint plates (e) united to and uniting the plate A,
by rivets (i), which have their riveted ends inwards, and countersuuk to
the depth of the thickness of the plate A, in the manner and for the
purposes herein set forth".  This specification was also accompanied by
numerous plates.  

The third patent, dated 21st February, 1860, was for an "improvement in
joiniug plates of metal", and was stated to be specially applicable to
prisons. The claim was for "the construction of the joint, made by means
of the closely abutting plates (A A), and the flat and semicylindrical
plates B B, and rivets (c), suhstantially in the manner and for the  
purpose set forth".  This, too, had numerous drawingw.

The fourth patent, dated 24th July, 1860, was for an "improvement in iron
prisons".  The claim was for "constructing and arranging plate-iron cells
in jails, separately from each other, with vertical spaces (e), between
the cells, upon the same level, and horizontal spaces, between cells, 
arranged one above another, substantially as and for the purpose
described".  This was also profusely illustrated by drawings.

The bill, which averred that the complainant was the original and first
inventor of all these improvements, and that the defendant was an infringer
of his patents, asked that the defendant might answer the bill under oath,
and be compelled to state how extensively, and where he had sold the  
improvements patented, and to describe his modes of construction, etc.

The defendant did answer on oath, denying that the improveruents were
original with the complainant or new, but averring that they had been
long in use; and setting out various jails in different parts of the
country where they had been used in 1855, 1857, 1858, etc., all before
the date of the putents relied on.

A large amount of testimony was taken on both sides, upon which the court
below, considering that the defendant had established his case, dismissed
the bill with costs. The case was now here on an appeal by the patentee.

Mr. Fisher, for the appellant, assuming that the matters embraced by the
patents were the proper subjects of patents within the Patent Acts, went
into an elaborate examination of the testimony to show that the inventions
were original with the patentee.

No opposing counsel.

  Novel architectural plans could be patentable or copyrightable.



The patent act of 1836 (Section 6, 5 Stat. at Large, 119) enumerated the
discoveries or inventions for which patents shall be issued, and describes  
them ass "any new and useful art, machine, manufacture, or composition of

We have been at some loss to discover under which category to class the
four patents which are the subjects of this bill. The complainant alleges
that he has invented a new and useful improvement in the construction of
 jails . Now a jail can hardly come under the denomination of
"a machine"; nor, though made by hauds, can it well be classed with
"manufactures"; nor, although compounded of matter, can it be termed a
"composition of matter", in the meaning of the patent act.  "But if the
subject-matter be neither a machine nor a manufacture, nor a composition
of matter, then," says an author on the subject of patents (Curtis on
Patents, 91), "it must be an art, for there can be no valid patent except
it be for a thing made, or for the art or process of making a thing".
Now, without attempting to define the term "art" with logical accuracy,  
we take as examples of it, some things which, in their concrete form,
exhibit what we all concede to come within a correct definition, such as
the art of printing, that of telegraphy, or that of photography. The art
of tanning leather might also come within the category, because it requires
various processes and mauipulations. The difficulty still exists, however,  
under which category of the patent act an improvement in the construction
of jails is to be classed, or whether under any.  

The patent act of 1842 (Section 3, 5 Stat. at Large, 544) gives a copyright
for "new and original designs for manufacture, whether of metal or other  
material, for bust, statue, etc., or any new and original shape or
configuration of any article of manufacture, to any inventor who shall
desire to obtain an exclusive property, to make, use, and vend the same,
or copies of the same".

Now, although the complainant might contend (as one would suppose from the
immense number of plans, designs, and drawings with which the record in
the case has been incumbered) that his patent could be supported under
this act, yet still the difficulty remains whether the erection of a jail
can be treated as the infringement of a copyright.

But waiving all these difficulties as hypercritical, and assuming the
correctness of the positions taken, that whatever is neither a machine,
nor a manufacture, nor a composition of matter, must (ex necessitate) be
"an art"; that a jail is a thing "made"; and that the patent is for the
" process  of making it", let us examine the case as presented
by the bill and answer.

The bill relies upon four several patents which it sets forth.  They are
dated January 7th and 20th December, 1859; 21st February and 24th July,
1860. It would seem from the quick succession of these patents and before
the plans for building jails which they severally suggested could well be  
put practically into operation, aud before any inquiry was made as to how
other persons constructed jails, that as a new idea came into the
complainannt's mind, he immediately proceeded to the Patent Office to get
it patented.

It is not necessary to the decision of this case to examine whether all or
any of the suggestions made by the complainant were proper subjects of
patent. The biil presents a number of interrogatories to the defendant and
requires him to answer them under oath. The answer of the defandant denies
that the complainant was the original and first inventor of the several
inventions claimed, or of any of them, and avers that the devices described
in the complainant's patents were well known, and in use prior to the
pretended invention of them by the complainant. And it enumerates many  
persons who had used the devices before the complainant.

The record presents no question of law as to the construction of these
patents. The only issues were of fact. It would be a tedious as well as
an unprofitable task to attempt to vindicate the correctness of our
decision of this case by quoting the testimony and examining the volume
of plates axnexed to it. The decision could never be a precedent in any 
other case. It is enough to say that we see no reason to douut the
correctness of the decision of the Circuit Court on the issues made, or
the pleadings.