CITE: 29 F. Cas. 1120
CMON: May, 1813
PLAIN: Whittemore
DEFND: Cutter
COURT: Circuit Court, D. Massachusetts 
DATE: May, 1813

Several objections, which were taken to the opinion of the court delivered
to the jury at the trial, have been argued on the motion for a new trial,
and we are now to pronounce as to their validity.

  Experimental use of a patented invention for scientific ["philosophical"]
  research purposes is exempt from patent infringement.

JUDGE: STORY, Circuit Justice


The first objection is founded on the incompetency of the plaintiffs to
maintain the present action; one of the plaintiffs being the original
patentee, and the other an assignee of a moiety of the patent right,
deriving his title under the patentee. It is contended, that no action
will lie in this court for an infringement of a patent right in favor of
an assignee, unless he be the assignee of the whole title and interest.
And the language of the fourth section of the act of February 21, 1793,
c. 11 [1 Stat. 322], and the case of Tyler v. Tuel, 6 Cranch [10 U.S.] 325,
are relied on in support of the position. It is true, that a party relying
on an action given by a statute must bring himself within the provisions
of the statute.  But where, as in the present case, the law is remedial,
it should receive a liberal construction, to effectuate the intentions of
the legislature.  Upon the very rigid construction, which is assumed by
the defendant's counsel an action could not be maintained, where a joint
patent should be obtained by two persons, and one of them should assign
his whole interest. The action could not be jointly brought by the
patentees, because one would have parted with his whole interest; nor
jointly by the patentee and the assignee, for it would then be open to
the very difficulty which is pressed upon us in this case; nor by either
party separately, for it would be splitting the cause of action.  Other
cases might be put, in which the parties would be wholly without remedy.
We are well satisfied, however, that the direction given at the trial on
this point was correct.  The statute gives to the assignee all the right
and responsibility, which the original inventor had in the undivided
portion of the patent, which is conveyed; and an action may well be
maintained by all the parties, who at the time of the infringement are
the holders of the whole title and interest.  The case of Tyler v. Tuel
[supra] is clearly distinguishable. In the first place, it was brought
by persons, who did not purport to have the whole patent right in
themselves.  In the next place, there was, technically speaking, no
assignment of the patent right. The instrument could only operate as a
covenant or license for the exclusive use of the patent right in certain
local districts.  But a patent right itself is unsusceptible of local
subdivision. Nor is the present case within any of the mischiefs, which
were pressed on the court in that case.  The language of the fourth section
does not seem to have contemplated the case of joint inventors: yet there
can be no doubt, that being within the reason of the clause, they must be
held within the purview.  If either should die, can there be a question
that the executor or administrator might well maintain an action jointly
with the survivor for an infringement? and in what substantial respect
can an assignee in law be considered as distinguishable from an assignee
in fact?  Upon the most mature reflection, we are satisfied that this
objection cannot prevail upon the footing of the statute; and if urged
at common law, the case of Boulton v. Bull, 2 H. Bl. 463, where the action
was brought by the inventor and his assignee of two thirds of the patent
right, would afford a complete answer.

Another objection is to the direction, that the making of a machine fit
for use, and with a design to use it for profit, was an infringement of
the patent right, for which an action was given by the statute.  This
limitation of the making was certainly favorable to the defendant, and it
was adopted by the court from the consideration, that it could never have
been the intention of the legislature to punish a man, who constructed such
a machine merely for philosophical experiments, or for the purpose of
ascertaining the sufficiency of the machine to produce its described
It is now contended by the defendant's counsel, that the making of a machine
is, under no circumstances, an infringement of the patent.The first section of
the act of 1793 expressly gives to the patentee &c. "the full and exclusive
right and liberty of making, constructing, using, and vending to others to be
used" the invention or discovery.  The fifth section of the same act gives an
action against any person, who "shall make, devise, and use or sell" the same.
From some doubt, whether the language of the section did not couple the making
and using together to constitute an offence, so that making without using, or
using without making, was not an infringement, the legislature saw fit to
repeal that section; and by the third section of the act of April 17, 1800,
c. 25 [2 Stat. 37], gave the action against any person, who should "make,
devise, use or sell" the invention. We are not called upon to examine the
correctness of the original doubt, but the very change in the structure of
the sentence affords a strong presumption, that the legislature intended
to make every one of the enumerated acts a substantive ground of action.

It is argued, however, that the words are to be construed distributively,
and that "making" is meant to be applied to the case of a composition of
matter, and not to the case of a machine. That it is clear, that the use
of certain compositions (as patented pills) could not be an infringement,
and unless making were so there would be no remedy in such cases.  We
cannot feel the force of this distinction.  The word "making" is equally
as applicable to machines, as to compositions of matter; and we see no
difficulty in holding, that the using or vending of a patented composition
is a violation of the right of the proprietor.
It is further argued, that the making of a machine cannot be an offence,
because no action lies, except for actual damage, and there can be no
actual damages, or even a rule for damages, for an infringement by making a
machine. We are however of opinion, that where the law gives an action for a
particular act, the doing of that act imports of itself a damage to the party.
Every violation of a right imports some damage, and if none other be proved,
the law allows a nominal damage.  On the whole, we see no reason for
departing from the plain import of the language of the statute, and this
objection also must be overruled.
Another objection is to the direction, that the oath taken by the inventor
not being conformable to the statute formed no objection to the recovery in
this action.  The statute requires that the patentee should swear, "that he
is the true inventor or discoverer of the art, machine, or improvement".
The oath taken by Whittemore was, that he was the true "inventor or improver
of the machine".  The taking of the oath was but a prerequisite to the
granting of the patent, and in no degree essential to its validity.  It
might as well have been contended, that the patent was void, unless the
thirty dollars, required by the eleventh section of the act, had been
previously paid.  We approve of the direction of the court on this point,
and overrule this objection.
Another objection is to the direction respecting the specification. It was as
follows: "That if the jury should be satisfied, that the specification and
drawings, filed by the patentee in the office of the secretary of state, were
not made in such full, clear, and exact terms and manner as to distinguish the
same from all other things before known, and to enable any person skilled
in the art or science, of which it is a branch, or with which it is most
nearly connected, to make and use the same, this would not be sufficient to
defeat the right of the plaintiffs to recover in this action, unless the
jury were also satisfied, that the specification and drawings were thus
materially defective and obscure by design, and the concealment made for
the purpose of deceiving the public.  In this respect our law differed from
the law of England.  That if the specification and drawings were thus
materially defective, it afforded a presumption of a designed concealment,
which the jury were to judge of. That in deciding, as to the materiality
of the deficiencies in the specification and drawings, it was not sufficient
evidence to disprove the materiality, that, by studiously examining such
specification and drawings, a man of extraordinary genius might be able to
construct the machine, by inventing parts, and by trying experiments. The
object of the law was, to prevent the expenditure of time and money in
trying experiments, and to obtain such exact directions, that, if properly
followed, a man of reasonable skill in the particular branch of the art
or science might construct the machine, and, if from the deficiencies, it
was impracticable for such a man to construct it, the deficiencies were
material." In order fully to understand the objection to this direction,
it is necessary to advert to the third section of the act of 1793, which
specifies the requisites to be complied with in procuring a patent, and
the sixth section of the same act, which states certain defences, of which
the defendant may avail himself to defeat the action, and to avoid the
patent. The third section, among other things, requires the party applying
for a patent to deliver a written description of his invention, and of the
manner of using, or process of compounding the same, in such full, clear,
and exact terms, as to distinguish the same from all other things before
known, and to enable any person skilled in the art or science, of which
it is a branch, or with which it is most intimately connected, to make,
compound, and use the same; and in the case of any machine, he shall fully
explain the principle, and the several modes, in which he has contemplated
the application of that principle, or character, by which it may be
distinguished from other inventions. The sixth section provides, among
other things, that the defendant may give in his defence, that the
specification filed by the plaintiff does not contain the whole truth
relative to his discovery, or that it contains more than is necessary to
produce the described effect, which concealment or addition shall fully
appear to have been made for the purpose of deceiving the public.  It is
very clear, that the sixth section does not enumerate all the defences,
of which the defendant may legally avail himself; for he may clearly give
in evidence, that he never did the act attributed to him, that the patentee
is an alien not entitled under the act, or that he has a license or
authority from the patentee.

It is therefore argued, that if the specification be materially defective,
or obscurely or so loosely worded, that a skillful workman in that
particular art could not construct the machine, it is a good defence
against the action, although no intentional deception has been practiced.
And this is beyond all question the doctrine of the common law; and it is
founded in good reason; for the monopoly is granted upon the express
condition, that the party shall make a full and explicit disclosure, so as
to enable the public, at the expiration of his patent, to make and use the
invention or improvement in as ample and beneficial a manner as the patentee
himself.  If therefore it be so obscure, loose, and imperfect, that this
cannot be done, it is defrauding the public of all the consideration, upon
which the monopoly is granted.  Bull. N.P. 77; Turner v. Winter, 1 Term R.
602. And the motive of the party, whether innocent or otherwise, becomes
immaterial, because the public mischief remains the same.  It is said, that
the law is the same in the United States, notwithstanding the wording of
the sixth section, for there is a great distinction between a concealment
of material parts, and a defective and ambiguous description of all the
parts; and that in the latter case, although there may be no intentional
concealment, yet the patent may be avoided for uncertainy as to the subject
matter of it.  There is considerable force in the distinction at first
view; and yet, upon more close examination, it will be difficult to support
it.  What is a defective description, but a concealment of some parts,
necessary to be known in order to present a complete view of the mechanism?
In the present case the material defects were stated, among other things,
to consist in a want of a specific description of the dimensions of the
component parts, and of the shapes and position of the various knobs.  Were
these a concealment of material parts, or a defective and ambiguous disclosure
of them?  Could the legislature have intended to pronounce, that the
concealment of a material spring should not, unless made with design to
deceive the public, avoid the patent, and yet that an obscure description
of the same spring should at all events avoid it?  It would be somewhat
hazardous to attempt to sustain such a proposition.
It was probably with a view to guard the public against the injury arising
from defective specifications, that the statute requires the letters patent
to be examined by the attorney general, and certified to be in conformity
to the law, before the great seal is affixed to them.  In point of practice,
this must unavoidably be a very insufficient security, and the policy of the
provision, that has changed the common law, may be very doubtful.  This,
however, is a consideration proper before another tribunal.  We must
administer the law as we find it.  And, without going more at large into
this point, we think that the manifest intention of the legislature was,
not to allow any defect or concealment in a specification to avoid the
patent, unless it arose from an intention to deceive the public.  There is
no ground therefore, on which we can support this objection.  Considering
however the importance of the question in a general view, if the cause had
rested on this point, I should have been disposed to have had it certified,
on a division of opinion, for the determination of the supreme court.
Another objection is to the direction to the jury, that the letters
patent were to be considered as granted for an improvement in manufacturing
cards, and not for the whole machine described in the specification. This
direction was given under impressions derived from the case of Boulton v.
Bull; but we are now satisfied, that the direction was erroneous.  The
declaration is for an infringement of the patented machine, and although the
letters patent state, that the grant is for "a new and useful improvement in
manufacturing cards," yet the specification must be considered as controlling
the generality of expression, and limiting the grant to the machine
specifically described therein.  It is indeed clear, from all the other
papers in the cause, that the invention and the patent have always been
considered by the patentees as confined to a specific machine.
The last objection, which has been urged, is to the direction, that the
extraordinary expenses of vindicating the right of the plaintiffs, such as
counsel fees and expenses of witnesses beyond the taxable costs. ought to
be considered as items of actual damage.  And such, at the trial, we had
considered the established rule to be in estimating damages in cases of
mere tort, whether the action was for the redress of a personal injury, or
the vindication of a personal right.  Since the trial, however, we have
seen the case of Arcambal v. Wiseman, 3 Dall. [3 U.S.] 305, in which the
question, as to counsel's fees, was directly before the supreme court.
There can be no doubt that the case was founded on a tort; and we feel
ourselves bound by that decision, whatever might have been the opinion
we should otherwise have been disposed to entertain.
For the errors, therefore, in the two last exceptions, a new trial must be
granted.  A new trial awarded.