O'Reilly v. Morse

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U.S. Supreme Court

O'Reilly v. Morse, 56 U.S. 62 (1853)

MR. CHIEF JUSTICE TANEY delivered the opinion of the Court.

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The appellants take three grounds of defense. In the first place, they deny that Professor Morse was the first and original inventor of the Electro-Magnetic Telegraphs described in his two reissued patents of 1848. Secondly, they insist that if he was the original inventor, the patents under which he claims have not been issued conformably to the acts of Congress, and do not confer on him the right to the exclusive use. And thirdly, if these two propositions are decided against them, they insist that the telegraph of O'Reilly is substantially different from that of Professor Morse, and the use of it, therefore, no infringement of his rights.

In determining these questions we shall, in the first instance, confine our attention to the patent which Professor Morse obtained in 1840, and which was reissued in 1848. The main dispute between the parties is upon the validity of this patent, and the decision upon it will dispose of the chief points in controversy in the other.

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We perceive no well founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims. The difficulty arises on the eighth.

It is in the following words:

"Eighth. 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."

It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance.

If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in its operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee.

Nor is this all; while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery which he specifies, but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent, he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.

No one, we suppose will maintain that Fulton could have taken out a patent for his invention of propelling vessels by steam, describing the process and machinery he used, and claimed under it the exclusive right to use the motive power of steam, however developed, for the purpose of propelling vessels. It can hardly be supposed that under such a patent he could have prevented the use of the improved machinery which science has since introduced, although the motive power is steam, and the result is the propulsion of vessels. Neither could the man who first discovered that steam might, by a proper arrangement of machinery, be used as a motive power to grind corn or spin cotton claim the right to the exclusive use of steam as a motive power for the purpose of producing such effects.

Again, the use of steam as a motive power in printing-presses is comparatively a modern discovery. Was the first inventor of a machine or process of this kind entitled to a patent, giving him the exclusive right to use steam as a motive power, however developed, for the purpose of marking or printing intelligible characters? Could he have prevented the use of any other press subsequently invented where steam was used? Yet so far as patentable rights are concerned, both improvements must stand on the same principles. Both use a known motive power to print intelligible marks or letters, and it can make no difference in their legal rights under the patent laws whether the printing is done near at hand or at a distance. Both depend for success not merely upon the motive power, but upon the machinery with which it is combined. And it has never, we believe, been supposed by anyone that the first inventor of a steam printing press was entitled to the exclusive use of steam as a motive power, however developed, for marking or printing intelligible characters.

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But Professor Morse has not discovered that the electric or galvanic current will always print at a distance, no matter what may be the form of the machinery or mechanical contrivances through which it passes. You may use electro-magnetism as a motive power and yet not produce the described effect -- that is, print at a distance intelligible marks or signs. To produce that effect, it must be combined with, and passed through, and operate upon, certain complicated and delicate machinery, adjusted and arranged upon philosophical principles and prepared by the highest mechanical skill. And it is the high praise of Professor Morse that he has been able, by a new combination of known powers, of which electro-magnetism is one, to discover a method by which intelligible marks or signs may be printed at a distance. And for the method or process thus discovered he is entitled to a patent. But he has not discovered that the electro-magnetic current, used as motive power in any other method, and with any other combination, will do as well.

We have commented on the case in the Court of Exchequer more fully because it has attracted much attention in the courts of this country as well as in the English courts, and has been differently understood. And perhaps a mistaken construction of that decision has led to the broad claim in the patent now under consideration.

We do not deem it necessary to remark upon the other decisions in relation to Nielson's patent, nor upon the other cases referred to which stand upon similar principles. The observations we have made on the case in the Court of Exchequer will equally apply to all of them.

We proceed to the American decisions. And the principles herein stated were fully recognized by this Court in the case of Leroy v. Tatham, decided at the last term, 14 How. 156.

It appeared that in that case the patentee had discovered that lead, recently set, would, under heat and pressure in a close vessel reunite perfectly after a separation of its parts so as to make wrought instead of cast pipe. And the court held that he was not entitled to a patent for this newly discovered principle or quality in lead, and that such a discovery was not patentable. But that he was entitled to a patent for the new process or method in the art of making lead pipe, which this discovery enabled him to invent and employ, and was bound to describe such process or method fully in his specification.

Many cases have also been referred to which were decided in the circuit courts. It will be found, we think, upon careful examination that all of them previous to the decision on Nielson's patent maintain the principles on which this decision is made. Since that case was reported, it is admitted, that decisions have been made which would seem to extend patentable rights beyond the limits here marked out. As we have already said, we see nothing in that opinion which would sanction the introduction of any new principle in the law of patents. But if it were otherwise, it would not justify this Court in departing from what we consider as established principles in the American courts. And to show what was heretofore the doctrine upon this subject, we refer to the annexed cases. We do not stop to comment on them, because such an examination would extend this opinion beyond all reasonable bounds. Wyeth v. Stone, 1 Story 270, 285; Blanchard v. Sprague, 3 Sumn. 540. The first mentioned case is directly in point.

Indeed, independently of judicial authority, we do not think that the language used in the act of Congress, U.S. can justly be expounded otherwise.

The 5th section of the act of 1836 declares that a patent shall convey to the inventor for a term not exceeding fourteen years the exclusive right of making, using, and vending to others to be used his invention or discovery, referring to the specification for the particulars thereof.

The 6th section directs who shall be entitled to a patent and the terms and conditions on which it may be obtained. It provides that any person shall be entitled to a patent who has discovered or invented a new and useful art, machine, manufacture, or composition of matter or a new and useful improvement on any previous discovery in either of them. But before he receives a patent, he shall deliver a written description of his invention or discovery, "and of the manner and process of making, constructing, using, and compounding the same" in such exact terms at to enable any person skilled in the art or science to which it appertains or with which it is most nearly connected to make, construct, compound, and use the same.

This Court has decided that the specification required by this law is a part of the patent and that the patent issues for the invention described in the specification.

Now whether the telegraph is regarded as an art or machine, the manner and process of making or using it must be set forth in exact terms. The act of Congress makes no difference in this respect between an art and a machine. An improvement in the art of making bar iron or spinning cotton must be so described, and so must the art of printing by the motive power of steam. And in all of these cases it has always been held that the patent embraces nothing more than the improvement described and claimed as new, and that anyone who afterwards discovered a method of accomplishing the same object substantially and essentially differing from the one described had a right to use it. Can there be any good reason why the art of printing at a distance by means of the motive power of the electric or galvanic current should stand on different principles? Is there any reason why the inventor's patent should cover broader ground? It would be difficult to discover anything in the act of Congress which would justify this distinction. The specification of this patentee describes his invention or discovery and the manner and process of constructing and using it, and his patent, like inventions in the other arts above mentioned, covers nothing more.

The provisions of the acts of Congress in relation to patents may be summed up in a few words.

Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter by the use of certain means is entitled to a patent for it, provided he specifies the means he uses in a manner so full and exact that anyone skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference in this respect whether the effect is produced by chemical agency or combination, or by the application of discoveries or principles in natural philosophy known or unknown before his invention, or by machinery acting altogether upon mechanical principles. In either case, he must describe the manner and process as above mentioned and the end it accomplishes. And anyone may lawfully accomplish the same end without infringing the patent if he uses means substantially different from those described.

Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification further than to say that he had discovered that by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment, the act of Congress cannot be so construed.

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MR. JUSTICE GRIER.

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"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?

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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-magnetism to print and record intelligible characters or letters? It is the very ground on which the Court agrees 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 broad 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 defenses 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."

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