though the ruling on it is not excepted to in the record, is supposed to be valid under the statutes of Maine, and the usages that have long prevailed in New England among land proprietors of townships situated there. (Smith's Laws of Maine, 175; 3 Shepley, 401; 12 Pick., 534; 3 Fairfield, 398; 10 Mass. R., 146; 3 Pick., 396; 12 Mass. R., 415; 2 Greenleaf, 213; 4 New Hamp. R., 99; 3 Vermont R., 290; 6 Vermont R., 208.)

In conclusion, it has been urged against the judgment we have formed in favor of the right of the demandant, that several actions have been tried in Maine, where his interests have been brought in question as to the premises, and decisions had against him; and that such local adjudications in respect to the titles to real estate should control the opinions of this court. (9 Cranch, 87; 2 Wheat., 316; 10 Wheat., 152; 12 Wheat., 153; 2 Gallis., 105.) But on examining the particulars of the cases cited to govern this (3 Fairfield, 398; 4 Shepley, 84, 88; 14 Maine R., 51), it will be seen that the construction of the mortgage to the college, in respect to this reservation or condition, never appears to have been agitated. If it had been, the decision would be entitled to high respect, though it should not be regarded as conclusive on the mere construction of a deed as to matters and language belonging to the common law, and not to any local statute. (3 Sumner's R., 136, 277.)

Let the judgment below be affirmed.

As the thirteenth section of the Act of 1836 proinoperative or invalid by reason of a defective or vides for the renewal of a patent, where it shall be insufficient description or specification," "if the er ror shall have arisen by inadvertence, accident, or mistake, and without any fraudulent or decepnewed patent closes all inquiry into the existence tive intention," the fact of the granting of the reof inadvertence, accident, or mistake, and leaves open only the question of fraud for the jury.

This case was brought up by writ of error from the Circuit Court of the United States for East Pennsylvania.

It was a suit brought in the Circuit Court by Stimpson against the Railroad Company, for a violation of his patent right.

On the 23d of August, 1831, Stimpson took out letters patent for an improvement in the mode of turning short curves on railroads. These letters were not given in evidence upon the trial, having been burned in the conflagra tion of the patent office, in December, 1836, and no copy could be found. Secondary evidence was given of their contents by the following publication in the Franklin Journal: "For an improvement in the mode of turning short curves on railroads, such as the corners of streets; James Stimpson, city of Baltimore, August 23.

"37. The plan proposed is to make the extreme edges of the flanches flat, and of greater width than ordinary, and to construct the rails in such a manner that where a short turn is to be made, the extreme edge of the flanch shall rest upon it, instead of upon the tread of the wheel, thus increasing the effective diameter of the wheel in a degree equal to twice the projec tion of the flanch. The claim is made to 'the

Error,

V.

wheels to turn short curvatures upon railroads or tracks, particularly turning the corners of streets, wharves, crossing of tracks or roads,

PANY, Defendants.

Patents-use before surrender of defective letters patent gives no right to use after re-issue in correct form-inquiry into issue-patent laws. The practice of excepting, generally, to a charge of the court to the jury, without setting out specifically the points excepted to, censured. The writ of error not dismissed, only on account of the peculiar circumstances of the case.

Where a defective patent had been surrendered, and a new one taken out, and the patentee brought an action for a violation of his patent right, laying the infringement at a date subsequent to that of the renewed patent, proof of the use of the thing patented during the interval between the original and renewed patents will not defeat the action.

Th seventh section of the Act of March 3, 1839, has exclusive reference to an original application for a patent, and not to a renewal of it.

An original patent being destroyed by the burning of the patent office, and the only record of the specifications being a publication in the Franklin Journal, the claim is not limited by that publication, because the whole of the specifications are not set forth in it.

Whether a renewed patent, after a surrender of a defective one, is substantially for a different invention, is a question for the jury, and not for the court.

Journal, Vol. IX., p. 124.)

*On turning to pages 270 and 271, [*381 Vol. IV., there will be found specifications of two patents granted to James Wright, of Columbia, Pennsylvania, for the mode of turning curves claimed by Mr. Stimpson. The only difference is, that Mr. Wright proposes to adapt his cars to several different curves by having three or more offsets in his wheels when neces sary.

On the same day, namely, the 23d of August. 1831, Stimpson took out, also, letters patent for an improvement in the mode of forming and using cast or wrought iron plates or rails, for railroad carriage wheels to run upon. These letters being also destroyed, the following extract from the Franklin Journal was given i evidence:

Franklin Journal, Vol. IX., p. 125. "39. For an improvement in the mode of forming and using cast or wrought iron plates, or rails, for railroad carriage wheels to run upon; James Stimpson, city of Baltimore, Maryland, August 23, 1831.

"The claim in this case is to 'the application of cast or wrought iron plates for the use of railways on the streets or wharves of cities or elsewhere. The objects of said improvement being to employ rails that will not present any obstacles to the ordinary use of streets, or sus

"The rails are to be formed with a groove in them to receive the flanches of the wheels: on one side of the groove the width is to be sufficient for the tread of the wheel, on the other it need not exceed three quarters of an inch. These rails are to be laid flush with the pavement of the streets. At corners to be turned, the rails are to be cast, or made of the proper curvature, one of them only being provided with a groove, as the flanch is to run upon the other, upon the principle described in No. 37. Provision is to be made by scrapers, or brushes, preceding the carriages, to clear the grooves of dust, ice, and other obstructions."

In 1835, the first mentioned of these letters, namely, for an "improvement in the mode of turning short curves on railroads," were surrendered on account of a defective specification, and on the 26th of September, 1835, a renewed patent was issued for the term of fourteen years from the 23d of August, 1831. The schedule referred to in this patent was as follows:

"Short Curves.

"23d August, 1831.-Renewed 26th September, 1835.

Be

"To all whom these presents shall come: it known, that I, James Stimpson, of the city and County of Baltimore and State of Maryland, have invented a new and useful improvement in the mode of turning short curves upon railroads with railroad carriages, particularly those round the corners of streets, wharves, &c., 382*] and that the following is a full and exact description of said invention or improvement, as invented or improved by me, namely: I use or apply the common peripheries of the flanches of the wheels for the aforesaid purpose, in the following manner: I lay a flat rail, which, however, may be grooved, if preferred, at the commencement of the curvation, and in a position to be centrally under the flanches of the wheels upon the outer track of the circle, so that no other part of the wheels which run upon the outer circle of the track rails shall touch or bear upon the rails, but the peripheries of the flanches; they bearing the whole weight of the load and carriage, while the opposite wheels, which run upon the inner track of the circle, are to be run and bear upon their treads in the usual way, and their flanches run freely in a groove or channel; which treads are ordinarily about three inches in diameter less than the peripheries of the flanches.

“Were the bearing surfaces of the wheels which are in contact with the rails while thus turning the curve to be connected by straight lines from every point, there would thus be formed the frustrums of two cones (if there be four wheels and two axles to the carriage), or if but one axle and two wheels then but one cone; which frustrums, or the wheels representing their extremities, will, if the wheels are thirty inches in diameter, and are coupled about three feet six inches apart, turn a curve of about sixty feet radius of the inner track rail. The difference in diameter between the flanches and treads before stated, the tracks of the usual width, and the wheels coupled as stated, would

a parallel position with each other; but this being generally deemed necessary, the wheels run upon lines of tangents, and these upon the inner track being as wide apart in the coupling as the outer ones, keep constantly inclining the carriage outwards, and thus cause the carriage to tend to run upon a larger circle than the difference in diameter of the treads and flanches would otherwise give; but the depth of the flanches and the couplings may be so varied as to turn any other radius of a circle desired. "What I claim as my invention or improvement is the application of the flanches on the wheels on one side of railroad carriages, and of the treads of the wheels on the other side, to turn curves upon railways, particularly such as turning the corner of streets, wharves, &c., in cities and elsewhere, operating upon the principle herein set forth. James Stimpson. "Witnesses, James H. Stimpson,

"George C. Penniman."

In October, 1840, Stimpson brought his ac tion against the *Westchester Railroad [*383 Company for a violation of this renewed patent, and laid the infringement to have taken place in 1839.

In April, 1842, the case came on for trial. The plaintiff procured his patent, and gave evidence that the defendants had used upon their road several curves of this description.

The defendants disputed the originality of the invention of the thing patented, under which head of defense much evidence was given; and also contended that the groove was not claimed in the first patent of 1831, and therefore was not included in the renewed patent of 1835. The evidence of Dr. Jones upon this last head being referred to by the court below, it is proper to insert that part of it.

"Interrogatory fifth. What are the contents of the specification of the alleged improvement of August 23d, 1831? What are your means of If you knowing what were their contents? know them, are they dissimilar or similar to those of the plaintiff's specification of September, 26, 1835, a copy of which, marked A, is hereto annexed? If dissimilar, state in what particulars, and whether they are as to matters of form and substance, and particularly describe the difference, if any. Answer fully."

I

"To the fifth interrogatory, I answer, that the plaintiff exhibited to me the specification in question, previously to his filing the same in the patent office; as he likewise did at the same time the specification of a patent for 'forming and using cast iron plates or rails for railroad carriage wheels to run upon,' which last patent is noticed on page 125, Vol. IX., second series, of the Journal of the Franklin Institute. then examined them cursorily, and expressed an opinion that the improvements described in the two specifications might have been embraced in one, and that it would have been better to have pursued that course. The specification of the mode of turning short curves appeared to me incomplete; an essential feature of it being contained in that for 'forming and using cast iron plates,' &c. The papers, however, remained as drawn up by Mr. Stimpson's legal adviser, and when the patents were subsequently surrender

in his claim to such part in virtue of the patent re-issued, if it was not described in the one surrendered. The thirteenth section of the Act 1836 authorizes a new improvement, invented since the first patent, to be added in a re386*] newed one; no law gives any authority to add an improvement, which had been invented by the patentee before the original grant; for it is not and cannot be any part of the description or specification of another distinct improvement. A patent for the combination of the parts of an old machine must show wherein such combination exists; what parts compose it; how they are combined in their action; if the description is defective, it may be corrected by a new one; the correction, however, must not extend beyond the combination of the parts first specified, as the introduction of other parts, not before specified, makes an entire new combination; consequently the thing patented becomes essentially different, being not the same invention, but a new one, made by a combination of a part not combined before, which might be a proper subject of an original patent, yet would not be authorized in a renewed one.

"These are the tests which the law applies to the description of the thing patented, in order to ascertain whether, in the words of the Act of 1832, the old patent was 'invalid or in operative' by reason that the conditions of the former law not having been complied with, or, in the language of the Supreme Court, the patent is found to be incompetent to secure the reward which the law intended to confer on the patentee for his invention.' In such case, the patent may be surrendered for re-issue, in order to correct the defects which invalidated the first, but the law expressly makes the new patent in all respects liable to the same matter of objection and defense' as the old one, and imposes on the patentee the obligation of compliance with the terms and conditions prescribed by the third section of the Act of 1793.' This is done by showing, according to its requisitions, what was the invention, the thing patented, by a designation of the invention principally, made in fuller, clearer, and more exact terms than those used, so as to give it validity and effect, and secure the same invention, which is the only legitimate office of the renewed or re-issued patent. A specification consists of two parts-description and claims; the descriptive part is the explanation of the improvement in all the particulars required by the law; the claim or summary, at the close of the description or specification, is the declaration of the patentee of what he claims as his invention, by which he is bound, so that he can claim nothing which he is not included in the summary, and could disclaim nothing which was included in it till the passage of the Act of 1837. But the summary may be referred to the description, and both will be liberally construed to ascertain what was claimed, and if the words will admit of it, both parts will be connected in order to carry into effect the true intention of the patentee, as it may appear on a judicial inspection of the whole specification. This makes it a question of law what is the thing patented, depending not on the actual or supposed intention of the patentee, but the conclusion of the 387*] law on the language he has used to

express it; a part of the description may be construed as a claim, and carried into the summary, and made a part of the thing patented, the effect of which is the same as if it was included in the summary in express terms. (Cooper v. Matheys, C. C., MSS.) To authorize a recovery for the violation of a patent right, the plaintiff must show that he is the inventor of everything he claims as new, that it is embraced in the patent, and that everything so claimed and patented has been infringed by the defendant; thus, where the patent is for a particular combination of the parts of an old machine, and the defendant has not used the whole combination as specified in the description, and carried into the summary, the plaintiff cannot recover. (Prouty et al. v. Ruggles, 16 Peters, 336.)"

The court then proceeded to state the substance of the plaintiff's declaration, and referred to the patent of 1835, and the specification hereto attached, in order to ascertain the thing patented by that patent which was stated therefrom; they then inquired what was the thing patented in 1831, by referring to the evidence of Thomas P. Jones, contained in the deposition aforesaid, in connection with the Journal of the Franklin Institute referred to by him. The court, remarking that there being in evidence no copy of the patent of 1831, any drawing or specification of the thing patented, or other proof of the contents of either than was contained in the deposition and Journal aforesaid, then gave their opinion to the jury, that, on this evidence, the use of grooves was not claimed, and was no part of the thing patented in 1831 for turning short curves, but was a part of the thing patented in 1835. That it was an essential part of this invention, as Jones testified, and without which all the witnesses agreed that the invention was useless; as without the groove the cars would run off the road, and that the patent was not for any parts of the machine which were new, but for a new combination of the old parts. It was then submitted to the jury, whether, on the evidence aforesaid, the omission of the groove in the patent of 1831 arose from inadvertence, and if it was done contrary to the advice of Jones, and in conformity with the opinion of the legal adviser of the plaintiff, and whether, without the groove, the description of the thing patented was sufficient, under the third section of the Act of 1793, which was read and commented on by the court, who then proceeded as follows:

"The Secretary of State is a ministerial officer, who must issue a patent if the requisites are performed. (6 Peters, 241.) The question of inadvertence or mistake is a judicial one, which the Secretary cannot decide, nor those judicial questions on which the validity of the patent depends. He issues the patent without inquiry. The correct performance of all the preliminaries to the validity of the [*388 original patent are always examinable in the court where the fact is brought. (6 Peters, 242, 246, 247.)

"In the application of the law to the evidence before you, the first inquiry is into the state of facts existing at the time of granting the patent of 1835; did they present a case for renewal, under the rules of law on which we have given

you our instructions? Whether the original patent was invalid or inoperative is more a question of law than fact, to be ascertained on a judicial inspection of the patent, specification, drawings, models, and the evidence of the contents; the court must construe all written evidence; but as depositions are considered merely as oral testimony, a jury must decide what parts are proved by them. The court must take as true the statements of witnesses as they are made, and lay down the law on the assumption of their credibility, and both court and jury must take an agreed or admitted uncontested state of facts to be their rule of action; a jury may deem a witness unworthy of credit, or not believe his statement, but ought to do neither without good cause. Whether the defects in the old patent arose from inadvertence or otherwise is also a mixed question of law and factof law so far as depends on written, and of fact as to parol evidence; on this subject you have the evidence of Dr. Jones, who officially examined the old patent, &c., and made out the new, and we are mainly left to ascertain the facts in relation to both patents from him. In laying down the law to you, we assume his verity in all he says, and, taking his statement as proof of the facts there existing, our opinion is, that, connected with the publication in the Journal of the Franklin Institute, in 1832, when the matter was fresh in his recollection, and the specification in the new patent, the old one was invalid and inoperative, by reason of noncompliance with the requisites of the Act of 1793. That it did not embrace the groove, which was essential to its validity, that the new patent is not for the same invention, and that the plaintiff has not made out a case of such inadvertence, accident, or mistake, as justified the issue of the new patent, inasmuch as it appears from the patent for plates on railroads, issued at the same time with the one for short curves, that he had known and described the grooves.

"It is for you to say whether you will take this evidence as we do; if you discredit it, in whole or in part, you will find accordingly.

"Another important question arises in this case, on the construction of the seventh section of the Act of 1839, taken in connection with former laws, which is, whether the plaintiff can sustain an action for the use of his invention, in the construction of his curves, before the granting of the patent of 1835.

"This section provides, "That every person or corporation who has, or shall have, purchased or constructed any newly invented machine, manufacture, or composition of matter, prior 389*] to the application by the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition so made or purchased, without liability therefor to the inventor, or any other person interested in such invention; and no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public, or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent.'

"Though this act is retrospective in its effects

on then existing patents, it is not void on that account; it was within the constitutional power of Congress to enact it as a rule for all cases to which its words and intentions apply, by its fair and legal interpretation, which we must ascertain by looking at the old law; the mischief and the remedy, which must be traced through the decisions of the Supreme Court; and the acts of Congress on the same subject. "In 1808, an act was granted to Oliver Evans, renewing his patent, which had expired by its own limitation; in the interval, the defendant had constructed a machine of his invention, and continued to use it; after the new patent issued, he was held liable, according to the words of the law, for such subsequent use, but the Supreme Court thus express their opinion of the case, had it rested on general principles; "The Legislature might have proceeded still further, by providing a shield for persons standing in the situation of these defendants; it is believed that the reasonableness of such a provision could have been questioned by no one, &c., &c. The argument, founded on 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.' (Evans v. Jordan, 9 Cranch, 203.)"

And thereupon the counsel for the plaintiff did then and there except to the aforesaid charge and opinion of the said court.

The above not being enough of the charge of the court below to the jury, the counsel for the plaintiff in error applied for and obtained a writ of certiorari to bring up additional extracts.

The return was as follows:

On searching the record and proceedings of the Circuit Court of the United States, in and for the Eastern District of Pennsylvania, in the third circuit, in a certain cause therein lately depending between James Stimpson, plaintiff, and the Westchester Railroad Company, defendants, we find the following omission in the charge of the judge to the jury, which in obedience to the annexed writ of certiorari, is hereby certified, to wit:

"In Morris v. Huntington, Judge Thompson held that after a patent was surrendered, the invention would be open to public use without *hazard, so far as depends on such [*390 patent. (1 Paine, 355.) In Grant v. Raymond, the court notice the case of the use of the invention between the date of the old and before the new patent, but remark, that that defense is not made; and the Circuit Court did not say that such defense would not be successful; and they add, "The defense, when true in fact, may be sufficient in law, notwithstanding the validity of the new patent.' (6 Peters, 243.) The court, in this and the subsequent case of Shaw v. Cooper, held, that the new patent was a continuation of the old, but gave no opinion on the question, whether damages could be recovered for the intermediate use of a machine constructed after the first.

"This question was, however, put at rest by the last clause of the Act of 1832, which, as suming that damages could not be recovered for a use of the patented invention, before the new patent, provides: 'But no public use or privilege of the invention so patented, derived from or after the grant of the original patent,