Phila. & Trenton R.R. Co. v. Stimpson, 39 U.S. (14 Pet.) 448 (1840)

Action for the violation of a patent-right, granted to the patentee, for “ a new and useful improvement in turning short curves on railroads.” On the 26th September 1835, a second patent was granted, the original patent, granted in 1831, having been surrendered and cancelled, on account of a defective specification; the second patent being for fourteen years from the date of the original patent; the second patent was in the precise form of the original, except the recital of the fact, that the former patent was cancelled “ on account of a defective specification,” and the statement of the time the second patent was to begin to run. It was objected, , that the second patent should not be admitted in evidence, on the trial of the case, because it did not contain any recitals that the pre-requisites of the act of congress of 1836, authorizing the renewal of patents, had been complied with : Held, that this objection could not, in point of law, be maintained. The patent was issued under the great seal of the United States, signed by the president, and countersigned by the secretary of state; it is a presumption of law, that all public officers, and especially such high functionaries, perform their proper official duties, until the contrary is proved. Where an act is to be done, or patent granted, upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act, in granting the patent, is primd facie evidence that the proofs have been, regularly made, and were satisfactory; no other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs, when the law has made the officer the proper judge of their sufficiency and competency.1 Patents for lands, equally with patents for inventions, have, in courts of justice, been deemed prirnd facie evidence that they have been regularly granted, whenever they have been produced under the great seal of the government, without any recitals or proofs that the pre-requisites of the acts under which they have been issued have been duly observed. In cases of patents, the United States have gone one step farther; and as the patentee is required to make oath that he is the true inventor, before he can obtain a patent, the patent has been deemed primd facie evidence that he has made the invention.2 p. 377¡1840] OF THE UNITED STATES. 448

Error to the Circuit Court for the Eastern District of Pennsylvania. At the April session of the circuit court, James Stimpson instituted an action p. 378against the plaintiffs in error, for the recovery of damages, for the violation of a patent granted to him by the United States, on the 26th day of September 1835, for “a new arid useful improvement in the mode of turning short curves on railroads.” The case was tried on the 16th day of February 1839 ; and a verdict wras rendered for the plaintiff, for the sum of $4250. On the 6th of May 1839, a remittitur was entered on the docket of the court, for the sum of $1000 ; and a judgment was entered for the plaintiff for $3250.

2. The defendants offered to give in evidence, by Josiah White, the 3T8 p. 379description of a flange upon one side of the railroad cars, and the running upon the tread of the wheel upon the other side, with the flange in agroove, for the turning of curves, which he had seen in use before the date of plaintiff’s patent ; w’hich was objected to by the counsel for the plaintiff, and the objection sustained by the court. The objection of the counsel for the plaintiff to the introduction of the testimony of Josiah White, was founded on the absence *of the notice required by the act of congress r of the use of the machine at Mauch Chunk; at which place, it was L said, his testimony would show it had been used.

There was no decision, before the case of Morris v. Huntington, 1 Paine 348, which affirmed the right of a patentee to surrender his patent for an erroneous or imperfect specification. After this case, congress authorized such a surrender. Act of Congress *of July 3d, 1832. By this act, the cause of the surrender must be made out to the satisfaction of the L secretary of state, when a second patent is asked for. It has been decided, p. 380that a patent is primd facie evidence of the statements on its face. This does not give any other validity to those statements ; and it is not sufficient, that some of the requirements of the act of congress are stated. All must be set forth, and an averment must be made, that everything has been done. There is no halting point. Those requirements exist as to any patent granted after the surrender of a patent. The errors or imperfections in the specification, on which the surrender has been made, should be stated. Grant n. Haymond, 6 Pet. 218. In the case cited, there was a recital of the surrender of the patent, and the cause of its surrender. There is in the patent which was before the circuit court, no recital of the imperfections of the first specification ; no allegation that there was no fraud in the transaction. There is nothing shown but the gratuitous act of the officer in granting the second patent. And yet all the prerequisites to the granting of a second patent should appear in it, as well as be of record in the patent-office. Without these essential features in a patent given on the surrender of a previous one for the same invention, it cannot be read in evidence to a jury. The requirements in both the acts of congress of 1792 and 1832, must appear in it. If all those matters are not shown, the second patent stands as a new patent : and by allowing it to be given in evidence, the court altogether disregard the law. If the patent, in this imperfect form, is admitted as primd facie proof, all the burden of contradicting it is thrown on the opposite party. Cited, on these points, Shaw v. Cooper, 7 Pet. 292.

As to the fourth exception, it is admitted, that it was the right of the plaintiff to prove, by legal rebutting evidence, that the invention made by him, and for which he held the patent, was in use before the period in which the defendant had proved the invention by him. But this evidence could not be given, by showing the conversations of the plaintiff on the subject of the invention, before the date of the first patent. p. 381Conversameet and to disprove the plaintiff’s declarations, which the court had admitted as testimony.

3. Although, in truth, the offer to examine Mr. Latrobe upon certain points, was not rejected by the court, but withdrawn by the counsel, yet as it appears by the record to have been a point decided, I will submit to treat it accordingly. The testimony would, no doubt, have been rejected, if the offer had been persisted in, and the delay *that would be requisite to put the record right would be deeply injurious to my client, t (1.) The inquiries suggested for the witness are impracticable, and they lead to impracticable results. The inquiry refers to a “ negotiation,” “ arrangement,” and “ settlement.” It asserts the fact, that a “ grant ” or “ contract,” - was made. Negotiation is the necessary preliminary to a contract, is absorbed in it, and forms a part of it. How can you separate them ? Out of one identified existence, two things, are to be made, essentially distinct from each other. That is impossible. (2.) The inquiries are irrelevant. The arrangement contemplated was res inter alios acta. The plaintiffs in error were alogether strangers to it. Many inducements may lead to a settle-" ment with one person, which would not render it desirable with another^ - if it were not that Ross Winans had previously been cross-examined by the' counsel for the plaintiffs in the circuit court, to the point of settlement with _ the Baltimore and Ohio Company, no pretence for the inquiry would exist. - If that was wrong, this will not make it right. It was not objected to. If not strictly cross-examination, we had no right to resort to it. Ellmaker v. Buckley, 16 Serg. & Rawle 72. If it was regular cross-examination, it p. 38245 4 SUPREME COURT [Jan’y

Two objections were taken to the character of the proof : 1st. That it was derived from the plaintiff himself : 2d. That the alleged improvement was not then brought into practical use by him. • Answer 1st. It was an invention ; else not patentable : in other words, it must spring from himself. An exhibition of it must necessarily, in some shape or other, be his act. Whatever might be said or done by others, could not be available to him. The exhibition might be effected by deeds, signs or words. It matters not in what particular manner the effect is produced, but the discovery must make manifest its paternity ; and it can do so only through the medium of its proper parent. This may be done by his works —a machine constructed. Let it be produced ; original, practical, perfect in all its parts. Nothing is gained by the author, unless something more than all this appears, viz., authorship. However eloquent the machiije may be as to its uses, it cannot speak for itself, as to its author. The nearest it can come to speech would be an inscription or label on its front : “ J. S. fecit” for example. That would, at best, be a written declaration. What difference would it make, that the writing, or stamping, or printing, should be in a book ? That description of evidence in a sister department of the law, is conclusive of important rights. In maintaining copyrights, the writing of the party is the essence of the discovery, and the sole proof o invention or originality. If, instead of writing with hris own hand, the same author dictates to another person, cannot the amanuensis prove the dictation, and hence the authorship ? A blind author has often given to the world t e p. 383result of his genius, through the pen of another. On a question of authorship, surely the testimony of the scribe would be received as competent. Another species of proof of invention remains, namely, oral explanation alone. Why may it not be received ? It is the very thing itself. To speak it, was to create it, if it did not already exist in thought,; and if it did, it must prove it. The proof was givfen, to counteract the allegation of earlier discovery. It produces the effect, by showing that the earlier discoverers, as they are regarded, received from the plaintiff the information which enabled them to put the invention in use, and then attempt to deny the right of showing how the information was communicated and obtained. One of the very pieces of testimony objected to, consisted of a conversation with the person who claimed to be an inventor in preference to the plaintiff. The declarations did not stand alone ; they were accompanied by two drawings and a model. The date of the existence of these monuments is clearly proved. The conversations became but a part of the res gestee. There are many occasions on which one’s own sayings and doings are good evidence ; in some instances, the best, and in others, the only *evidence.. The present is an anomaly, unless it concurs. It does not follow, that the L expressions of an individual are the illegal creation of testimony for himself. Such are, 1. Various kinds of declarations ante litem motam; 2. When the sayings are the doings, as in cases of notice ; 3. Where the expressions of an individual are the test of a given state of things, as intellect ; 4. Proof of a contract, as marriage, by words de praesenti; 5. Almost any other discovery or invention, not connected with the useful arts. A reward is offered for lost property ; the finder informs of the finding of it ; the declarations can be proved.

5. Thomas P. Jones was called by the defendants, after all the testimony’ m chief, on both sides, and the plaintiff’s rebutting testimony also, had been given, and his witnesses dismissed ; and much time had been occupied in giving rebutting testimony for the defendants. The declared object was, to prove that the invention described in the plaintiff’s patent of 1835, was different from the invention described by him in his patent of 1831 : in other words, that the patent which purported to be a mere correction of form, was m substance a totally different thing. We are struck at once with an p. 384inconsistency between this point, and the whole tenor of the defendants’ case. The notice which they gave, the aim of their evidence, their great design, is to show that the thing relied on by the plaintiff, which was patented by him in 1835, was well known and used in 1831 ; known to everybody, publicly, notoriously. Yet we are now told, that it was not known even to the plaintiff himself ; but that he found it necessary, four years afterwards, to desert the alleged invention of 1831, and surreptitiously to foist in a different thing, which then became known to him for the first time. Unless this be the true meaning of the point, it has none. The evidence offered was original and direct. It contradicted nothing already asserted in evidence. It was directed * ‘ to a point in *no way collateral. It went immediately to the essential

At the trial, upon the general issue, a bill of exceptions was taken to ■certain rulings of the court upon points of evidence, to the consideration of which we shall at once proceed, without any further preface. The first •exception taken is to the admission of the renewed patent as evidence in the cause, to the jury. The patent act of 1832, ch. 162, § 3, under which this patent was obtained, provides, that whenever any patent shall be inoperative or invalid, by reason that any of the terms or conditions prescribed by the prior acts of congress, have not, by inadvertence, accident or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the inventor, it shall be lawful for the secretary of state, upon the surrender to him of such patent, to cause a new patent to be granted to the inventor, for the same invention, for the residue of the period then unexpired for which the original patent was granted, upon his compliance with the terms and conditions prescribed by the third section of the act of the 21st of February 1793, ch. 55. Now, the objection is, that the present patent does not contain any recitals that the pre-requisites thus stated in the act have been complied with, viz., that the error in the former patent has arisen by inadvertency, accident or mistake, and without any fraudulent or deceptive intention ; and that without such recitals, as it is the case of a special authority, the patent is a mere nullity, and inoperative. We are of opinion, that the objection cannot, in point of law, be maintained. The patent was issued under the great seal of the United States, and is signed by the president, and countersigned by the secretary of state. It is a presumption of law, that all public officers, and especially such high functionaries, perform their proper official duties, until the contrary is proved. And where, as in the present case, an act is to be done, or patent granted, upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act or granted the patent, is primd jacie. evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to re examine or controvert the sufficiency of such proofs, if laid before him, when the law has made such officer the proper judge of their sufficiency and competency. It is not, then, necessary for the patent to contain any recitals that the pre-requisites to the grant of it have been duly complied with, for the law makes the presumption ; and if, indeed, it were otherwise, the recitals would not help the case without the *auxiliary proof that these pre-requisites had been, de ^acto, complied with. This has been the uniform construction, so far L as we know, in all our courts of justice, upon matters of this sort. Patents p. 386for lands, equally with patents for inventions, have been deemed primdfacie evidence that they were regularly granted, whenever they have been produced under the great seal of the government ; without any recitals or proofs that the pre-requisites of the acts under which they have been issued have been duly observed. In cases of patents, the courts of the United States have gone one step farther, and as the patentee is required to make oath that he is the true inventor, before he can obtain a patent, the patent has been deemed primd facie evidence that he has made the invention. This objection, then, is overruled ; and there was no error in the circuit court in the admission of the patent.

The next exception is to the admission of the evidence of William A. Stimpson, Richard Caton and George Neilson, as to certain declarations, and statements, and conversations of the plaintiff, as to his invention, prior to the date of his original patent; in order to rebut the evidence of the defendants, as to the invention or use by other persons of the same con, trivance, before that date. The objection *is, that, upon general J principles, the declarations and conversations of a plaintiff, are not admissible evidence in favor of his own rights. As a general rule, this is undoubtedly true. It is, however, but a general rule, and admits and requires various exceptions. There are many cases in which a party may show his declarations comport with acts in his own favor, as a part of the res gestee. There are other cases, again, in which his material declarations have been admitted. Thus, for example, in the case of an action for an assault and battery and wounding, it has been held, that the de.clarations of the plaintiff, as to his internal pains, aches, injuries and symptoms, to the physician called to prescribe for him, are admissible for the purpose of showing the nature and extent of the injuries done to him. See I Phillips on Evid. ch. 12, § 1, p. 200-2 (8th ed., 1838). In many cases of inventions, it is hardly possible, in any other manner, to ascertain the precise time and exact origin of the particular invention. The invention itself is an intellectual process or operation ; and like all other expressions of thought, can in many cases scarcely be made known, except by speech. The invention may be consummated and perfect, and may be susceptible of complete description in words, a month, or even a year before it can embodied in any visible form, machine or composition of matter. It might take a yeai to construct a steamboat, after the inventor had completely mastered all t e details of his invention, and had fully explained them to all the vaiious artisans whom he might employ to construct the different parts of t e p. 389machinery. And yet from those very details and explanations, another ingenious mechanic might be able to construct the whole apparatus, and assume to himself the priority of the invention. The conversations and declarations of a patentee, merely affirming that, at some former period, he invented that particular machine, might well be objected to. But his conversations and declarations, stating that he had made an invention, and describing its details and explaining its operations, are properly to be deemed an assertion of his right, at that time, as an inventor, to the extent of the facts and details which he then makes known ; although not of their existence at an antecedent time. In short, such conversations and declarations, coupled with a description of the nature and objects of the invention, are to be deemed apart of the res gestae; and legitimate evidence that the invention was then known to and claimed by him, and thus its origin may be fixed, at least, as early as that period. This view of the subject covers all the parts of the testimony of the witnesses objected to in the circuit court ; and we are of opinion, that the court were right in admitting the evidence.

The mode of conducting trials, the order of introducing evidence, and the times when it is to be introduced, are, properly, matters belonging to the practice of the circuit courts, with which this court ought not to interfere ; unless it shall choose to prescribe some fixed, general rules on the subject, under the authority of the act of congress. Probably, the practice in no two states of the Union is exactly the same ; and therefore, in each state, the circuit courts must necessarily be vested with a large discretion, m the regulation of their practice. If every party had a right to introduce evidence, at any time, at his own election, without reference to the stage of the trial in which it is offered, it is obvious, that the proceedings of the court would often be greatly embarrassed, the purposes of justice be obstructed, and the parties themselves be surprised by evidence destructive of their rights, which they could not have foreseen, or in any manner have guarded against. It seems to us, therefore, that all courts ought to be, as indeed they generally are, invested with a large discretion on this subject, o prevent the most mischievous consequences in the administration of justice to suitors ; and we think that the circuit courts possess this discretion p. 390in as ample a manner as other judicial tribunals. We do not feel at liberty, therefore, to interfere with the exercise of this discretion ; and, indeed, if we were called upon to say, upon the present record, whether this discretion was, in fact, misapplied or not, we should be prepared to say, that we see no reason to doubt that it was, under all the circumstances, wisely and properly exercised. It is sufficient for us, however, that it was a matter of discretion and practice, in respect to which we possess no authority to revise the decision of the circuit court.