# O'Reilly v. Morse/Dissent Grier

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United States Supreme Court
56 U.S. 62
O'Reilly v. Morse
Mr. Justice GRIER.
I entirely concur with the majority of the court, that the appellee and complainant below, Samuel F. B. Morse, is the true and first inventor of the Recording Telegraph, and the first who has successfully applied the agent or element of nature, called electro-magnetism, to printing and recording intelligible characters at a distance; and that his patent of 1840, finally reissued in 1848, and his patent for his improvements as reissued in the same year, are good and valid; and that the appellants have infringed the rights secured to the patentee by both his patents. But, as I do not concur in the views of the majority of the court, in regard to two great points of the case, I shall proceed to express my own.
I. Does the complainant's first patent come within the proviso of the 6th section of the act of 1839? and should the term of fourteen years granted by it commence from the date of his patent here, or from the date of his French patent in 1838?
If the complainant's patent is within the provisions of this section, I cannot see how we can escape from declaring it void. The proviso declares that, 'in all cases, every such patent (issued under the provisions of that section) shall be limited to the term of fourteen years from the date or publication of such foreign letters-patent.' It is true it does not say that the patent shall be void if not limited to such term on its face; but it gives no power to the officer to issue a patent for a greater term. If the patent does not show the true commencement of the term granted by it, the patentee has it in his power to deceive the public, by claiming a term of fourteen years, while in reality it may be not more than one.
But I am of opinion that the patent in question does not come within this proviso.
The facts of the case, as connected with this point, are these: On the 6th of October, 1837, Morse filed in the office of the commissioner of patents, a caveat accompanied by a specification, setting forth his invention, and praying that it may be protected, till he could finish some experiments necessary to perfect its details. On the 9th of April, 1838, he filed a formal application for a patent, accompanied by a specification and drawings. On the first of May, 1838, the commissioner informs him, that his application has been granted. Morse answers on the 15th of May, that he is just about to sail to Europe, and asks the commissioner to delay the issue of his patent for the present, fearing its effect upon his plans abroad.
On the 30th of October, 1838, he obtained his useless French patent. On his return to this country in 1840, he requests his patent to be perfected and issued. In this application, filed on the 9th of April, 1838, there was an oversight in filling up the day and month. This clerical omission was wholly immaterial, but ex majori cautela a second affidavit was filed, and the patent issued on the 20th of June, 1840, for the term of fourteen years from its date.
The application of 1838 had a set of drawings annexed to the specification. The second set of drawings, required by the 6th section of the act of 1837, being for the purpose of annexation to the patent, they were entirely unnecessary till the patent issued, and are not required by law to accompany the application when first made, and the want of them cannot affect the validity of the application.
In many instances, owing to various causes, the patent is not issued till many months, and sometimes a year or more after the application. The commissioner requires time to examine the specification; he may suggest difficulties and amendments; and disputes often arise, which delay the issuing of the patent. But the application does not require to be renewed, and is never considered abandoned in consequence of such delay. It still remains as of the date of its filing for every purpose beneficial to the applicant. The law does not require that the specification and its accompaniments should be in the precise form which they afterwards assume in the patent. It requires only that the application be 'in writing,' and that the applicant should 'make oath that he is the original inventor,' &c. The other requirements of the act must precede the issuing of the patent, but make no part of the application, and are not conditions precedent to its validity.
In the present case, we have, therefore, a regular application in due form, accompanied by a specification and drawings, filed on the 9th of April, 1838. It has not been withdrawn, discontinued, or abandoned. There is nothing in the act of Congress which requires that the patent should be issued within any given time after the application is filed, or which forbids the postponement of it for a time, at the suggestion either of the applicant or the officer. Nor is there any thing in the general policy of the patent laws which forbids it. On the contrary, it has always been the practice, when a foreign patent is desired, to delay the issuing of the patent here, after application filed, for fear of injuring such foreign application. It forms no part of the policy of any of our patent acts to prevent our citizens from obtaining patents abroad.
By the Patent Act of 1793, the applicant must swear 'that his invention, was not known or used before the application.' The filing of the application was the time fixed for determining the applicant's right to a patent. If a patent had issued abroad, or the invention had been in use or described in some public work, before that time, it was a good defence to it. The time of filing the application was, therefore, made by law the criterion of his right to claim as first inventor. A foreign patent subsequent to the date of his application, could not be set up as a defence against the domestic patentee. The American inventor who had filed his application and specification at home, was thus enabled to obtain his patent abroad, without endangering his patent at home. This was a valuable privilege to American citizens, and one of which he has never been deprived by subsequent legislation. And thus the law stood till the act of 4th July, 1836.
Before this time the right to obtain a patent was confined to American citizens, or those who had filed their intentions to become such. The policy of this act was to encourage foreign inventors to introduce their inventions to this country, but in doing so it evinces no intention of limiting our own citizens by taking away from them rights which they had hitherto enjoyed.
Accordingly it gave an inventor, who had obtained a patent abroad, and who was generally a foreigner, a right to have one here, provided he made his application here within six months after the date of his foreign patent. Neither the letter nor the spirit of this act interferes with the right of an inventor who has filed his application here, from obtaining a patent abroad, or his right to a term of fourteen years, from the date of his patent.
In 1838, therefore, when complainant filed his application, he was entitled to such a patent. But in March, 1839, an act was passed, by the 6th section of which it is alleged the complainant's rights have been affected. That section is as follows:
'That no person shall be debarred from receiving a patent for any invention, & c., as provided in the act of 4th July, 1836, to which this is additional, by reason of the same having been patented in a foreign country, more than six months prior to his application. Provided, that the same shall not have been introduced into public and common use in the United States prior to the application for such patent. And provided, also, that in all cases, every such patent shall be limited to the term of fourteen years from the date of publication of such foreign letterspatent.'
Now the act of 1836, as we have shown, had given a privilege to foreign patentees to have a patent within six months after date of such foreign patent. It had not affected, in any manner, the right previously enjoyed by American citizens, to take out a foreign patent after filing their applications here. This section gives additional rights to those who had first taken out patents abroad, and holding out an additional encouragement to foreign inventors to introduce their inventions here, subject to certain conditions contained in the proviso. Neither the letter, spirit, nor policy of this act, have any reference to, or bearing upon, the case of persons who had just made their applications here. To construe a proviso, as applicable to a class of cases not within its enacting clause, would violate all settled rules of construction. The office of a proviso, is either to except something from the enacting clause, or to exclude some possible ground of misinterpretation, or to state a condition to which the privilege granted by the section shall be subjected.
Here the proviso is inserted, to restrain the general words of the section and impose a condition on those who accept the privileges granted by the section. It enlarged the privileges of foreign patentees, which had before been confined to six months, on two conditions. 1st. Provided the invention patented abroad had not been introduced into public use here; and 2d, on condition that every such patent should be limited in its terms. The general words, 'in all cases,' especially when restrained to every such patent, cannot extend the conditions of the proviso beyond such cases as are the subject-matter of legislation in the section. The policy and spirit of the act are to grant privileges to a certain class of persons which they did not enjoy before; to encourage the introduction of foreign inventions and discoveries, and not to deprive our own citizens of a right heretofore enjoyed, or to affect an entirely different class of cases, when the applications had been filed here before a patent obtained abroad.
It is supposed, that certain evils might arise by allowing an applicant for a patent here to delay its issue till he can obtain a foreign patent. To which, it is a sufficient answer to say, that if such evil consequences should be found to exist, it is for Congress to remedy them by legislation.
It is no part of the duty of this court, by a forced construction of existing statutes, to attempt the remedy of possible evils by anticipation.
I am, therefore, of opinion that the complainant's patent, as renewed, contained a valid grant of the full term of fourteen years from its original date.
II. The other point, in which I cannot concur with the opinion of the majority, arises in the construction of the eighth claim of complainant's first patent, as finally amended. The first claim, as explanatory of all that follow, should be read in connection with the eighth. They are as follows:
'1st. Having thus fully described my invention, I wish it to be understood, that I do not claim the use of the galvanic current or currents of electricity, for the purpose of telegraphic communications generally; but what I specially claim as my invention and improvement, is making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner for the purpose of telegraphic communication at any distances. The only ways in which the galvanic current had been proposed to be used prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and the bubbles and the deflections of the needles thus produced, were the subjects of inspection, and had no power or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnetism.
'There are various known modes of producing motions by electro-magnetism, but none of these had been applied prior to my invention and improvement to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement.'
'8th. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.'
The objection to this claim is, that it is too broad, because the inventor does not confine himself to specific machinery or parts of machinery, as described in his patent, but claims that the essence of his invention consists in the application of electro-magnetism as a motive power, however developed, for printing characters at a distance. This being a new application of that element or power, of which the patentee claims to be the first inventor or discoverer.
In order to test the value of this objection, as applied to the present case, and escape any confusion of ideas too often arising from the use of ill-defined terms and propositions, let us examine, 1st. What may be patented; or what forms a proper subject of protection, under the Constitution and acts of Congress, relative to this subject.
2d. What is the nature of the invention now under consideration? Is it a mere machine, and subject to the rules which affect a combination of mechanical devices to effect a particular purpose.
3d. Is the claim true, in fact? And if true, how can it be too broad, in any legal sense of the term, as heretofore used, either in the acts of Congress, or in judicial decisions?
4th. Assuming the hypothesis that it is too broad, how should that affect the judgment for costs in this case?
1st. The Constitution of the United States declares that 'Congress shall have the power to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.'
The act of Congress of 1836, confers this exclusive right for a limited time, on 'any person who has discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements on any art, machine, manufacture, or composition of matter, not known or used by others, before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use,' &c.
A new and useful art or a new and useful improvement on any known art is as much entitled to the protection of the law as a machine or manufacture. The English patent acts are confined to 'manufactures' in terms; but the courts have construed them to cover and protect arts as well as machines; yet without using the term art. Here we are not required to make any latitudinous construction of our statute for the sake of equity or policy; and surely we have no right, even if we had the disposition, to curtail or narrow its liberal policy by astute or fanciful construction.
It is not easy to give a precise definition of what is meant by the term 'art,' as used in the acts of Congress-some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, are stated with clearness and accuracy by Mr. Curtis, in his Treatise on Patents. 'The term art, applies,' says he, 'to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect, or manufacture.' Curt. on Pat. 80.
A machine, though it may be composed of many parts, instruments, or devices combined together, still conveys the idea of unity. It may be said to be invented, but the term 'discovery' could not well be predicated of it. An art may employ many different machines, devices, processes, and manipulations, to produce some useful result. In a previously known art a man may discover some new process, or new application of a known principle, element, or power of nature, to the advancement of the art, and will be entitled to a patent for the same, as 'an improvement in the art,' or he may invent a machine to perform a given function, and then he will be entitled to a patent only for his machine.
That improvements in the arts, which consist in the new application of some known element, power, or physical law, and not in any particular machine or combination of machinery, have been frequently the subject of patents both in England and in this country, the cases in our books most amply demonstrate. I have not time to examine them at length; but would refer to James Watt's patent for a method of saving fuel in steam-engines by condensing the steam in separate vessels, and applying non-conducting substances to his steam-pipes; Clegg's patent for measuring gas in water; Juhr v. Pratt, Webster's Pat. Cas. 103; and the celebrated case of Neilson's patent for the application of hot blast, being an important improvement in the art of smelting iron.
In England, where their statute does not protect an art in direct terms, they have made no clear distinction between an art or an improvement in an art, and a process, machine, or manufacture. They were hampered and confined by the narrowness of the phraseology of their patent acts. In this country, the statute is as broad as language can make it. And yet, if we look at the titles of patents, as given at the patent office, and the language of our courts, we might suppose that our statute was confined entirely to machines. Notwithstanding, in Kneiss v. The Bank, (4 Washington C. C. Rep. 19,) Mr. Justice Washington supported a patent which consisted in nothing else but a new application of copperplates to both sides of a bank-bill as a security against counterfeiting. The new application was held to be an art, and, therefore, patentable. So the patent in McClurg v. Kingsland (1 Howard, 204) was in fact for an improvement in the art of casting chilled rollers by conveying the metal to the mould in a direction approaching to the tangent of the cylinder; yet the patentee was protected in the principle of his discovery, (which was but the application of a known law of nature to a new purpose), against all forms of machinery embodying the same principle.
The great art of printing, which has changed the face of human society and civilization, consisted in nothing but a new application of principles known to the world for thousands of years. No one could say it consisted in the type or the press, or in any other machine or device used in performing some particular function, more than in the hands which picked the types or worked the press. Yet if the inventor of printing had, under this narrow construction of our patent law, claimed his art as something distinct from his machinery, the doctrine now advanced, would have declared it unpatentable to its full extent as an art, and that the inventor could be protected in nothing but his first rough types and ill-contrived press.
I do not intend to review the English cases which adopt the principle for which I now contend, notwithstanding their narrow statute; but would refer to the opinion of my brother Nelson, in 14 Howard, 177; and will add, that Mr. Justice McLean, in delivering the opinion of the court in that case, quotes with approbation the language of Lord Justice Clerke, in the Neilson case, which is precisely applicable to the question before us. He says: 'The specification does not claim any thing as to form, nature, shape, materials, numbers, or mathematical character of the vessel or vessels in which the air is to be heated, or as to the mode of heating such vessels.' Yet this patent was sustained as for a new application of a known element; or, to use correct language, as an improvement in the art of smelting iron, without any regard to the machinery or parts of machinery used in the application. Such I believe to be the established doctrine of the English courts.
He who first discovers that an element or law of nature can be made operative for the production of some valuable result, some new art, or the improvement of some known art; who has devised the machinery or process to make it operative, and introduced it in a practical form to the knowledge of mankind, is a discoverer and inventor of the highest class. The discovery of a new application of a known element or agent may require more labor, expense, persevering injustiry, and ingenuity than the inventor of any machine. Sometimes, it is true, it may be the result of a happy thought or conception, without the labor of an experiment, as in the case of the improvement in the art of casting chilled rollers, already alluded to. In many cases, it is the result of numerous experiments; not the consequence of any reasoning a priori, but wholly empirical; as the discovery that a certain degree of heat, when applied to the usual processes for curing India rubber, produced a substance with new and valuable qualities.
The mere discovery of a new element, or law, or principle of nature, without any valuable application of it to the arts, is not the subject of a patent. But he who takes this new element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of man; who applies it to the perfecting of a new and useful art, or to the improvement of one already known, is the benefactor to whom the patent law tenders its protection. The devices and machines used in the exercise of it may or may not be new; yet, by the doctrine against which I contend, he cannot patent then, because they were known and used before. Or, if he can, it is only in their new application and combination in perfecting the new art. In order words, he may patent the new application of the mechanical devices, but not the new application of the operative elements which is the essential agent in the invention. He may patent his combination of the machinery, but not his art.
When a new and hitherto unknown product or result, beneficial to mankind, is effected by a new application of any element of nature, and by means of machines and devices, whether new or old, it cannot be denied that such invention or discovery is entitled to the denomination of a 'new and useful art.' The statute gives the inventor of an art a monopoly in the exercise of it as fully as it does to the inventor of a mere machine. And any person who exercise such new art without the license of the inventor is an infringer of his patent, and of the franchise granted to him by the law as a reward for his labor and ingenuity in perfecting it. A construction of the law which protects such an inventor, in nothing but the new invented machines or parts of machinery used in the exercise of his art, and refuses it to the exercise of the art itself, annuls the patent law. If the law gives a franchise or monopoly to the inventor of an art as fully as to the inventor of a machine, why shall its protection not be coextensive with the invention in one case as well as in the other? To look at an art as nothing but a combination of machinery, and give it protection only as such, against the use of the same or similar devices or mechanical equivalents, is to refuse it protection as an art. It ignores the distinction between an art and a machine; it overlooks the clear letter and spirit of the statute; and leads to inextricable difficulties. It is viewing a statute or a monument through a microscope.
The reason given for thus confining the franchise of the inventor of an art to his machines and parts of machinery is, that it would retard the progress of improvement, if those who can devise better machines or devices, differing in mechanical principle from those of the first inventor of the art, or, in other words, who can devise an improvement in it, should not be allowed to pirate it.
To say that a patentee, who claims the art of writing at a distance by means of elector-magnetism, necessarily claims all future improvements in the art, is to misconstrue it, or draws a consequence from it not fairly to be inferred from its language. An improvement in a known art is as much the subject of a patent as the art itself; so, also, is an improvement on a known machine. Yet, if the original machine be patented, the patentee of an improvement will not have a right to use the original. This doctrine has not been found to retard the progress of invention in the case of machines; and I can see no reason why a contrary one should be applied to an art.
The claim of the patentee is, that he may be protected in the exercise of his art as against persons who may improve or change some of the processes or machines necessary in its exercise. The court, by deciding that this claim is too broad, virtually decides that such an inventor of an improvement may pirate the art he improves, because it is contrary to public policy to restrain the progress of invention. Or, in other words, it may be said that it is the policy of the courts to refuse that protection to an art which it affords to a machine, which it is the policy of the Constitution and the laws to grant.
2d. Let us now consider what is the nature of the invention now under consideration.
It is not a composition of matter, or a manufacture, or a machine. It is the application of a known element or power of nature, to a new and useful purpose by means of various processes, instruments and devices, and if patentable at all, it must come within the category of 'a new and useful art.' It is as much entitled to this denomination as the original art of printing itself. The name givento it in the patent is generally the act of the commissioner, and in this, as in many other cases, a wrong one. The true nature of the invention must be sought in the specification.
The word telegraph is derived from the Greek, and signifies 'to write afar off or at a distance.' It has heretofore been applied to various contrivances or devices, to communicate intelligence by means of signals or semaphores, which speak to the eye for a moment. But in its primary and literal signification of writing, printing, or recording at a distance, it never was invented, perfected, or put into practical operation till it was done by Morse. He preceded Steinheil, Cook, Wheatstone, and Davy in the successful application of this mysterious power or element of electro-magnestism to this purpose; and his invention has entirely superseded their inefficient contrivances. It is not only 'a new and useful art,' if that term means any thing, but a most wonderful and stonishing invention, requiring tenfold more ingenuity and patient experiment to perfect it, than the art of printing with types and press, as originally invented.
3d. Is it not true, as set forth in this eighth claim of the specification, that the patentee was the first inventor or discoverer of the use or application of electro-magnestism to print and record intelligible characters or letters? It is the very ground on which the court agree in confirming his patent. Now the patent law requires an inventor, as a condition precedent to obtaining a patent, to deliver a written description of his invention or discovery, and to particularly specify what he claims to be his own invention or discovery. If he has truly stated the principle, nature and extent of his art or invention, how can the court say it is too broad, and impugn the validity of his patent for doing what the law requires as a condition for obtaining it? And if it is only in case of a machine that the law requires the inventor to specify what he claims as his own invention and discovery, and to distinguish what is new from what is old, then this eighth claim is superfluous and cannot affect the validity of his patent, provided his art is new and useful, and the machines and devices claimed separately, are of his own invention. If it be in the use of the words 'however developed' that the claim is to be adjudged too broad, then it follows that a person using any other process for the purpose of developing the agent or element of elector-magnetism, than the common one now in use, and described in the patent, may pirate the whole art patented.
But if it be adjudged that the claim is too board, because the inventor claims the application of this element to his new art, then his patent is to be invalidated for claiming his whole invention, and nothing more. If the result of this application be a new and useful art, and if the essence of his invention consists in compelling this hitherto useless element to record letters and words, at any distance and in many places at the same moment, how can it be said that the claim is for a principle or an abstraction? What is meant by a claim being to broad? The patent law and judicial decisions may be searched in vain for a provision or decision that a patent may be impugned for claiming no more than the patentee invented or discovered. It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally, that his patent is affected.
The act of Congress requires the applicant for a patent to swear that 'he is the original and first inventor of the art, machine, &c.' It requires the commissioner to make an examination of the alleged invention, 'and if it shall appear that the same has not been invented prior to the alleged invention, he shall grant a patent, &c. But if it shall appear that the applicant is not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new, had before been invented,' then the applicant to have leave to withdraw his application.
The 13th section treats of defective specifications and their remedy where the applicant, through mistake or inadvertency, had claimed 'more than he had a right to claim as new.'
The 15th section, in enumerating the defences which a defendant may be allowed to make to a patent, states that inter alia he may show, 'that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new.' And the proviso to the same section allows the court to refuse costs, 'when the plaintiff shall fail to sustain his action on the ground that, in his specification or claim, is embraced more than that of which he was the first inventor.'
The 7th section of the act of March 3, 1837, specially defines the meaning of the phrase 'too broad,' to be 'when the patent claims more than that of which the patentee was the original and first inventor.' And the 9th section of the same act, again providing for cases, where by accident or mistake, the patentee claims more than he is justly entitled to, describes it to be 'where the patentee shall have in his specification claimed to be the original inventor or discoverer of any material or substantial part, of which he is not the first and original inventor, and shall have no legal and just right to the same.'
Thus we see that it is only where, through inadvertence or mistake, the patentee has claimed something of which he was not the first inventor, that the court are directed to refuse costs.
The books of reports may be searched in vain for a case where a patent has been declared void, for being too broad, in any other sense.
Assuming it to be true, then, for the purpose of the argument, that the new application of the power of electro-magnetism to the art of telegraphing or printing characters at a distance, is not the subject of a patent, because it is patenting a principle; yet as it is also true, that Morse was the first who made this application successfully, as set forth in this eighth claim, I am unable to comprehend how, in the words of the statute, we can adjudge 'that he has failed to sustain his action, on the ground that his specification or claim embraces more than that of which he was the first inventor.' It is for this alone that the statute authorizes us to refuse costs.
4th. Assuming this eighth claim to be too broad, it may well be said, that the patentee has not unreasonably delayed a disclaimer, when we consider that it is not till this moment he had reason to believe it was too broad. But the bill claims, and it is sustained by proof, that the defendant had infringed the complainant's second patent for his improvement.
The court sustains the validity of this patent. Why, then, is the complainant not entitled to his costs? At law, a recovery on one good count is sufficient to entitle the plaintiff to recover costs; and I can see no particular equity which the defendants can claim, who are adjudged to have pirated two inventions at once.
I am of opinion, therefore, that the decree of the Circuit Court should be affirmed, with costs.
This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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