The New York herald., 1851-11-06
IMPORTANT DECISIONS.
THE GREAT TELEGRAPH CASES.
fhs Morse Line vs.. the Balm Line, at the South /;
and the Morse Line vs.. the House
Line, at the East.
The Decision Of Judges Grier and Kane, AT
Phlladelphia.
Circuit Court In Equity, September, 1851

his case Is before as on hnal hearing upon the
KleedIng and proofs.
Professor Morse, under whom the complanants
hold, has three patents the frst dated 10Th June,
S40 re-issued after surrender on the 9th anuary
1886 and again re-issued, after second surrender,
on the 18th June, 1885, which has been referred to
in the argument as the Magnet: Telegraph Patent;
the second dated llth April, lsi6, also re-issued
the 18th June, 1885, referred to as the Local Circuit
Patent the third, dated lst May, lS49, referred
as the Chemical Patent The bill charges that the
respondents have infringed all three Of these pa
teRs-the answer denies the infringements and con-
troverts the validity of the patents.
], The objections TO the validity Of the first pa
tert-thst for the magnetic telegraph-are stated
IN the defendants brief as follows
eel That ii does not run from the date Of Morse
French patent.
-. That the Commissioner of Patents had no
authority in law TO reissue second time.
"3. That the claims set out in the first reissue
broader than the claims in the original patent and
the claims in the second reissue are broader thar
those OF either Of its predecessors and not FOL
lte same invention"
a. The frs: of these objections founds Itself upeu
he isct that Mr.. Morse had obtained patent il
France for this same invention, twenty-five months
before his patent issue here; and il asserts that
u-der the second proviso Of tie 9th section of tue
act Of 1883, his American patent 50 ould in conse-
enence have been limited 70 the term OF fourteen
years rom the date Of the French patent ana that,
Dot having been so limited IL is void
Tks objection was fully net in the argument OF
the complainants. Mr.. Mor'e's application for a
was fled and acted on in the Paten. Once before
the 10Th of that month bis French patent bears
date the 18th OF August following. There is there.
fore no room for the questions, which were argued
80 eaboraely, of the proper Interpretation of this
pToyiso in the 9th section Of the act of lS9 and the
s;h sec.on I'd clause, of the act Of 1886, which was
also invoked ia any possible bearing upon the case
Of Mr.. Morse. The proviso Of 1899 must be inter-
Yreted by reference to the enactiAg words OF the
section which it limits and the provisions Of both
the sections relate only tc such patents as are ap
Piled for here after the issue Of foreign patent.
but Mr. Morse's application here was before mis- pa
tent sbroad-in nOwise after it ana his American
patent was granted, therefore, under the general
tnactments OF the act Of 1886, not under any spe-
eial proviso or exception whatever, and Its term
Ians properly from its due.
We do not see the justice Of the criticisms upon
his application, that the urat affixed to i: is with
cat date of day or month and that the drawings
which accompanied it, were not in duplicate. There
is DO act that requires the jurat to be dated
at all and the supplementary provision OF
the 9th section Of the act of 1897, that the appi
cant shall be held to furnish duplicate draw
ings," though directory in its terms, is not coa-
Gition and it has obvious reference, in point of
time, to the issuing of the patent, and not to the
fling of the petition for it. Such has heretofore
teen the Interpretation Of the Patent Office,
nounced in he official circulars fer the instruction
and guidance Of inventors the practi ,e founded
it is both reasonable and convenient. and no act
Of Congress appears 70 conflict with It. II Mr..
Morses patent is invaded on this ground, more than
half the modern patents for mechanical inventions
must probably fan with it.
z fhe Sc ,ond objection to the patent is tina. the
act Of Congress makes no provision for second
surreE der and rei sue.
The 18th sectisn Of the act Of lSSS6, which pro-
ydes, in certain cases, for the surrender of defes
tive patent and its reissue in an amended form, re-
CARDS the patent substituted for the old one,
with just the same effect and operation in law,
If the specification had been filed first In the form
which II takes in the reissue. It is difficult to see
why, if the original patent could be amended, its
substitute, having all the legal attributes OF the
original, cannot be amended also.
There is nothing in the words of the act, or in the
policy which it proclaims that limits the correction
If errors to such as may have been the hrst dis
covered. On the contrary, If It be true, as We have
supposed in determining the recent case Of Battin
Vs. Taggert, that the patent is granted to the in
ventor IN consideration Of some benefit to be derived
by the public from his disclosures, and that the re-
issue is in consideration Of some more full more
accurate disclosure than that which he had made in
his original specification, or some renunciaton On
his part Of an apparently secured rght-it is fer me
public interest that the surrender and reissue should
be allowed to follow each other just as often az the
pstentee is content TO be more specific, or more
modest in his claims.
Besides ii might not be safe to assume too readily
that the act was intended to withdraw alto gether
from the officers Of the executive department the
power to accept q surrender and grant reissue,
which they had before, and which would sanction a
second reissue quite as readily as a first. The act
might perhaps, be regarded more justly as Affirming
the proprety Of the usage which had obtained under
the former laws, and had been repeatedly recog-
nized by the.courts, morris VS. Huntington, Pain.
3j5 o Grant vs.. Raymond, Pet. 30 Shaw VS.
Cooper, Pet. 3l5 y and as prescribing in addition
the conditions and incidents, which should attach to
it thereafter, in certain cases II IS hardly to be
supposed that the merely clerical error OF an en-
crossing subordinate, or the accidental inadver.
ttnce Of the Commissioner himself is not capable Of
being rectifed supplied now, Just as II was before
the passage OF the act. And yet the construction,
which regards this section as superseding the i'm
al of osrsiou mil taad M.
this since the act makes no provision for correct
ing such mistakes the part Of the patent officers
Still further II must, as we think, be conceded,
that if the Commissioners power to reissue is 50
restricted by the act as to be exhausted by sin
gle exercise, his power TO accept the surrender must
be equally restricted, and equally transtory. And
the argument then resolves itself only into another
form OF the queston-whether the patent was for
any purpose valid one, il stood after the first
reissue because, IL the second reissue was invalid
Tor want Of authority to make II, the second sur
render was nefectiye for want Of authority TO ac-
cept it-and 50 the patent stands as If IL had not
been surrendered the second time The surrender
and the reissue, no matter how eften they recur,
are reciprocal-each in consideration Of the other
and forming together but single act between the
parties IL would be unconsoientious 30 retain the
consideration, while denying the validity Of the
grant See WoOdrorth vs. Hall, Wood & ". 100
) We pass 70 tAe third Objectionable supposed
variance in the 70 oissues
tfem the course of some parts Of the argument
on this point, II might be inferred that the objects
as vel as the import e the 18th section Of the act
OF 100 had been misapprehended by the learned
counsel for tie respondents. Ii is not the meaning
OF the law that the patentee whs applies for a re-
issue must at his peril describe and claim, in his
new specihcaiioa either IN words or idea, just what
was described and claimed in bis old one His new
specification must be Of the same invention and his
claim cannot embrace a different subject matter
from that which he sought TO patent originally
But, unless we narrow down the correction which
the statute plates, till il becomes mere dis.
clsimer, il is not possible in any case 10 frame
corrected specification which shall not be broader
than the one originally fled. To supply acefect TO
repair an nsufciepcy, is to addeither directly or
by modifying or striking out Limitation in either
form, the effe,t il 10 amplify the proposition in
che case Of specification under the patent laws, IL
is 20 smplify the description and enlarge the claim
There are few things more difficult, even for well
educated and practised lawyers, than to describe
new invention clearly, and point out the principle
which dting guishea he subiect Of Il from all things