#### EVANS *v.*JORDAN and MOREHEAD.

*.Msent..,Tom>, J.*

This w*as a case certified from the Circuit Court for the district of Virginia, in which, the judges were divided in opinion upon the question, whether after the expiration of the original patent granted to Oliver Evans, a general right to use his discovery, was not so vested in the public, as to require and justify such a construction of the act passed in January', 1808, entitled “ an act for the relief of Oliver Evans” as to exempt from either single or5treb]e damages, the nse, subsequent to the passage of the said act, of the machinery therein mentioned, w*as erected subsequent to the expiration of the original patent and previous to the passage of the said act. ' The art Cto/. 9, *v- 20.J*authorizes the secretary of state to issue letters patent *to*Oliver Evans in the manner and form prescribed by the general patent lawv, granting to *200him for the term of 14 years the exclusive right of making, using, and vending for use *the machinery, in (files*tion, *“provided,*that no person who may have hereto- “ fore paid the said Oliver Evans for license to' use his *“*said improvements, shall be obliged to renew tlie said *“*license, or be subject to damages for not renewing the *“ same; and provided also,*that no person who *shall have “*used the said improvements, *or have*erected the sama “ for use, before the issuing of the said patent, shall be *“*liable to damages *therefor.”*

*199The 34 of Jammy, *?03, oronvevU^ vans, <ioes not TMoseTMRoerented his ma-r ablner-v,bepTratimi ofhu 0,(1 patent and to «se it after jjj® af

*200Harper, *for the Plaintiff.*

The former patent of the Plaintiff having expired, congress, in consideration of the particular circumstances of his. case, authorized a new patent to issue for another term of 14 years. Between the expiration of fhe old and the issuing of the new patent, the Defendants had erected and used and continued to use the Plaintiff’s machinery in the manufacture of flour, contending that they we re protected by the proviso of the act of January 21st, 1808.

We contend that the proviso does not authorize them to continue the use of the machinery after fhe issuing of the new patent, but merely protects them from damages for *having*used and for *having*erected for use the machinery in question, *prior*to the issuing of the new patent. '

The second patent was intended to place Evans in fhe situation in which he would have been if fhe first patent had continued in force, except as to his right to damages for acts (¡one in the intermediate time between th ft’first and second patent. If the Defendants chose to continue to use fhe machinery afteV the new patent, they were bound to pay for the right to use it.

E. I. Lee, and P. B. Key, *contra.*

If-the construction contended for on the other side be correct, the proviso was wholly useless, because the Defendants needl'd no saeh protection. Evans could have no claim against them for acts done after his.patent hail •expired,'and before the issuing of the new patent. Tlie Defendants liad a full and perfect right to erect, and ose tlie machinery. A law to1 oblige them now to abandon *201their property, or to pay what Mr. Evans may cliqse to exact, is in the nature, of an *expost facto*law; and al-' though' it may not be absolutely unconstitutional, ye¿ is so far within the spirit of the. constitution, that this Court will not give such a construction to the proviso, if it can possibly be avoided. The proviso says that n® person *who shall have erected the machinery for*use, shall be liable to damages therefor. The. Defendants *had*erected the machinery for use, and are consequently not liable therefor. What can the proviso mean, unless to give those who arc in the situation oftbe Defendants, the right to use their own machines lawfully erected ? The inventions had become public1 property ; every one had a right to use them. Congress did not mean to take away, that vested right from those who had availed themselves of it., ’ To deprive a person of the *use*of his property is equivalent to depriving him of the property itself. Congress could not mean to do this.-- This Court will give the act such an equitable construction, as. will give effect to the proviso,

Harper, *in reply**

The words of the proviso are clear and explicit, and admit not of construe ion. The legislature may have supposed that the new patent, which was intended to be a continuation of the old one, might have subjected those, who had already erected the machinery, to damages, and intended to guard against them. It is not certain that under the law, under which the patent issued, this would not have been the effect — but it is sufficient if the legislature supposed it would.have. been. We are not bound to show the motives of the legislature — if their words are clear and explicit, there is no room for construction. The acts which are protected by the proviso are acts done *before*the issuing the patent; the opposite counsel contend, that the legislature, when they said « before,” meant *after**

The proviso is too plain to bear an argument,

*March 4th.*

MsenU...Todd, *J.*

Washington, *3.*

delivered the opinion of the Coot? as follows:

*202The question certified to this Court, by the Circuit Court for the district of .Virginia, and upon which the opinion of this Court is required, is, whether, after the expiration of the original patent granted, to Oliver Evans, a general right to use his discovery was not so vested in the public as to require and justify such a construction of the act pkssrd in January, 1808, entitled *“*an act for the relief of Oliver Evans” as to exempt from either treble or single damages, the use, subsequent to the passage of the said act, of the machinery therein mentioned, which was erected subsequent to the expiration of the' original pati nt and previous to the passage of the said act.

The act, upon the construction-of which the judges of the Circuit Court, were' opposed in opinion, directs a patent to be granted, in the form prescribed by law, to Oliver Evans for 14 years, for the full and exclusive right of making, constructing, using, and vending to be used, his'invention, discovery and improvements in the art of manufacturing flour and meal, and in the several machines w’hich he has discovered, invented, improved, and applied to that purpose.

The *proviso*Upon which the question arises is in the following words : “ provided. that no person who may-have heretofore paid the said Oliver Kvans for license to use the said improvements, shall be obliged to renew said license, or be subject to damages for not renewing the same ; and, *provided,*also■ that no person who símil have used the said improvements, or have erected the same for use, before tlr* issuing of the said patent, shall be liable to damages therefor ”

The language of this last proviso is so precise, and so entirely free from all ambiguity, that it is difficult for any course of reasoning to shed light upon its meaning. It protects against any claim for damages which Evans might, make, those who may have used his improvements, or who may h'avb erected them for *usp, prior to the issuing of his patent*under this law. The protection is limited to acts done prior to another art thereafter *t«*be performed, to wit,-theissuingofthe patent.. To extend it, by construction to acts which might, be done subsequent to the issuing of the patent, would be to make, not to interpret the law.

*203The injustice pf denying to the Defendants the use of machinery which they had erected aiter the expiration of Evans’s first patent and prior to the passage of this law, has been strongly urged as a reason \yhy the words of this proviso should be so construed as to have a pros-p.ective operation. But it should be recollected that the right of tire Plaintiff to recover damages for using his improvement after the issuing of his patent under this law, although it had been erected prior thereto, arises, not under this law, hut under the general law of the 21sN>f February, 1793.* The provisoes in this law profess to protect against the operation of the general law, three classes of.persons; -those who had paid Evaris for a license prior to (lie passage of the law; those who *may have used*his improvem, *nts;*and those who *may have erected*them for úse, before the'issuing of the patent.

The legislature might have proceeded still further, by providing a shield for persons standing in the situation' of these Defendants. It is believed tiiat the reasonableness of such a provision could have been questioned by no one. But the legislature have not thought proper to. extend the protection of these provisoes beyond the issuing of the. patent under that law, and this Court would transgress the limits of judicial power by an attempt to supply, by construction, this, supposed omission of the legislature. The argument, founded upon the hardship of this and similar cases, would be entitled to great weight, if the words of this proviso were obscure and open to construction. But considerations of this nature can never sanction a construction at variance with the manifest meaning of the legislature, expressed in plain and unambiguous language.

The. argument of the Defendants counsel that unless the construction they contend for be adopted, the proviso is senseless and inoperative, is susceptible of the same answer.

*204Whether the proviso was introduced from abundant caution, or from an opinion reálly entertained by the legislature tiiat those who migiit have erected these improvements or might have used them prior to the issuing of the patent, would be liable to damages for having done it is impossible for this Court to say. It is not difficult however to imagine a state of things which migiit have afforded some ground for such an opinion.

Although this Court has been informed, and the judge, who delivers this opinion knows, that the former patent given to Evans had been adjudged tobe void by the Circuit Court of Pennsylvania, prior to the passage of this law, yet that fact is not recited in the law, nor does it appear that it was within the view of the legislature/ and if that patent right liad expired by its own limitation, the legislature migiit. well make it a condition of tlie'new grant that the patentee should not disturb those who had violated the former patent. This idea was certainly in the mind of the legislature- which passed the act of the 21st of February, 1793. which after repealing the act of the 10th of April, 1790, preserves the right» of patentées under the repealed law only in relation to violations committed after the passage of the repealing law.

If the decision above mentioned was made known to tlie legislature, it. is not impossible but that a doubt might have existed whether the patent was thereby rendered void *ab initio,*or from the time of rendering the judgmentj and if the latter, then the proviso would afford a protection against all -preceding violations. But whatever might be the inducements with the legislature to limit the proviso, 'under consideration, as we find it, this Court cannot, introduce a different, proviso totally at variance with it in language and intention.

It is the unanimous opinion of this Court that the act passed in January, ISOS, entitled « an act for the relief of Oliver Evans,” ought not to be iso construed as to exempt from either treble or single damages, the use, subsequent to the passage of the said act, of the machinery '(.herein mentioned, which was erected subsequent to the expiration of the. original patent, and previous to the pas - sage of the said act. Which opinion is ordered to be certified to the Circuit Court for the district of Virginia..

*

*■*The 5th § of the act of 21st of February, 1793, which is the only section of that Act which gives damages for violation of the patent right, is repealed by the 4th the act of the 17th of April, 1800, vol.* 5, p. 90, the'3d § of which act gives treble damages, for the violation of any patent granted pursuant t© that act, ot the act of 1793,