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PETER HOGG AND CORNELIUS H. DELAMATER, PLAINTIFFS IN ERROR, v. JOHN B. EMERSON.

December 1, 1850

PETER HOGG AND CORNELIUS H. DELAMATER, PLAINTIFFS IN ERROR,
v.
JOHN B. EMERSON.



THIS case was brought up from the Circuit Court of the United States for the Southern District of New York.

It was reported in 6 Howard, 437, and at the conclusion of the report of that case is the following note:––

'NOTE.–After the delivery of this opinion, the counsel for the plaintiffs in error suggested that other questions were made below, which they desired to be considered, and therefore moved for another certiorari to bring them up. This was allowed, and judgment suspended till the next term.'

Another certiorari was issued, which brought up the entire record. The case, as now to be reported, consists of three records, in parts. Instead of republishing those parts already reported, they will only be referred to; and if the reader is desirous to investigate the case thoroughly, he must read this report in conjunction with that in 6 Howard.

On the 8th of March, 1834, John B. Emerson obtained a patent for a new and useful improvement in the steam-engine, which is set forth, together with the schedule, in 6 Howard, 437 et seq.

At April term, 1844, he brought an action of trespass on the case against Hogg and Delamater for an infringement of his patent right. The declaration is inserted in extenso in 6 Howard. The defendants filed the general issue plea, and gave the following notices.

'Circuit Court of the United States of America, for the Southern District of New York, in the Second Circuit.

'PETER HOGG & CORNELIUS DELAMATER v. JOHN B. EMERSON.

'SIR,–You will please to take notice that, on the trial of the above-entitled cause, without waiving the right to require the plaintiff to make out all facts essential to support and prove his declaration and cause, and without admitting any part thereof, the defendants will, under the plea of the general issue aforesaid, give in evidence, prove, and insist upon the following special matter, of which notice is hereby given, pursuant to the statute, in addition to such other defence as they are by law entitled to make.

'I. That the patent granted to John B. Emerson, bearing date the 8th day of March, 1834, under which the said plaintiff claims, is void for the following, among other reasons:––

'1. Because, although it is, in and by the schedule annexed to the said patent, recited that the said John B. Emerson had alleged that he had invented a new and useful improvement in the steam-engine, and in the mode of propelling therewith either vessels on the water or carriages on the land; and it is claimed that, in and by the said patent, the exclusive right and liberty of making, using, and vending to others to be used, the said improvement, was granted to the said John B. Emerson, his heirs, executors, administrators, or assigns, for the term of fourteen years from and after the date of the said patent; yet the said patentee did not (according to law) deliver, with his application for the said patent, or at any other time, to any of the officers who were to consider his application, a written description of his said improvement or invention, and of the manner of using the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and to enable any person skilled in mechanics to make and use the said invention; and that the improvements claimed by the said John B. Emerson are not in the said patent, or in the schedule thereto annexed, described in such full, clear, and exact terms as to distinguish the same from all other things before known, or to enable any person skilled in mechanics to make or use the said improvements; and that the said John B. Emerson did not deliver, with his said application for the said patent, or at any other time, to any of the officers who were to consider his application, a full explanation of his said improvements, and the several modes in which he had contemplated the application of the principle by which they could be distinguished from other inventions, and he did not accompany his application with drawings and written reference, as required by law.

'2. Because the said patent is granted for an improvement in the steam-engine; and in the schedule annexed to the said patent the said John B. Emerson has claimed as his invention different and distinct improvements, to wit, in the steam-engine and in the paddle-wheel, either of which may be used singly and separately for the purpose indicated in said schedule. And although the said John B. Emerson, in the schedule annexed to the said patent, does not claim the invention of spiral paddle-wheels, but claims merely the invention of an improvement in spiral paddle-wheels already essayed, yet he has not, in the said schedule annexed to the said patent, described in what his said improvement in the said spiral paddle-wheels consists; so that any person skilled in mechanics can know wherein the paddle-wheels mentioned in the said schedule differ from spiral paddle-wheels before known and used; and because no distinction or discrimination is made between the parts and portions of the said propelling-wheel of which the said John B. Emerson may be the inventor or discoverer; the said defendants protesting at the same time that the said John B. Emerson has not been the inventor or discoverer of any part or portion of the alleged improvements.

'3. Because the thing patented as set forth in the said patent is different from the things claimed as the invention of the patentee in the schedule annexed to the patent. The thing patented is a new and useful improvement in the steamengine; but in the schedules annexed to the said patent, the thing claimed by the said patentee as his inventions is not only the alleged improvement in the steam-engine, but also the spiral propelling-wheel, and the application of the revolving vertical shaft to the turning of a capstan on the deck of a vessel, while the specification indicates only an improvement in the spiral paddle-wheel, without describing the same in such full, clear, and exact terms as to distinguish the same from all other things before known, or to enable any person skilled in mechanics to make or use the said improvement.

'4. Because the drawings of his alleged invention, as deposited in the Patent-Office, do not agree with each other, nor with the specification to his letters patent annexed, and render it altogether doubtful and uncertain what his alleged invention truly and really was.

'II. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that the machine for propelling boats alleged to have been made by them, in violation of the right of the plaintiff in this case, was made, if made at all, under certain letters patent heretofore granted by the United States to one John Ericsson, to wit, on the 1st day of February, in the year 1838.

'III. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that there was at no time on file, or deposited in the Patent-Office, whilst they were engaged in making machines under the said John Ericsson's patent, any specifications or drawings deposited by the said John B. Emerson, from which any person skilled in mechanics could construct a machine similar to the machines they have constructed under the patent of the said John Ericsson.

'IV. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that the specification to the letters patent of the said John B. Emerson annexed contained no description of the inventions and improvements now alleged and pretended to be covered by his said letters patent, and claimed to be included therein.

'V. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that the said John B. Emerson was not the original inventor or discoverer of any part or parts of the propelling-wheel described in his said letters patent, or of any improvement in any part or parts of the said machine.

'VI. And the said defendants will further give in evidence, on the trial of the issue aforesaid, a printed description of a certain propelling-wheel, invented by Archibald Robinson, of London, which said description was published in one or more public works, and particularly in the seventh volume of the London Journal of Arts and Sciences, edited by W. Newton, and published in London in the year 1831, and extensively known to mechanics and engineers in the United States; tending to prove that the plaintiff was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, but that it had been described as aforesaid, in public works, before the supposed discovery thereof by the plaintiff.

'VII. And the said defendants will further give in evidence, on the trial of the issue aforesaid, the printed description of certain improvements in machinery for propelling steam-vessels, invented by Jacob Perkins, of London, as early as the year 1829, which said description was published in a public work, printed in London, in the year 1831, to wit, in the seventh volume of the London Journal of Arts and Sciences, edited by W. Newton, a well-known scientific journal, published in London in the year aforesaid. And the said defendants will further give in evidence a plate, number nine in the said volume, containing an engraved delineation of the said invention; all tending to prove that the plaintiff was not the original and true inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, but that it had been described as aforesaid, in a public work, before the supposed discovery thereof by the plaintiff.

'VIII. And the said defendants will further give in evidence, on the trial of the issue aforesaid, a printed description of a certain mode of propelling boats in the water by the application of sculling-wheels, or screw propelling-wheels, invented by Benjamin M. Smith, which said description was published in the year 1830, in the sixth volume of the new series of the Franklin Institute, a scientific journal published in the city of Philadelphia, in the State of Pennsylvania, tending to prove that the plaintiff was not the original and true inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, but that it had been described as aforesaid in a public work before the supposed discovery thereof of by the plaintiff.

'IX. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that the said machine, alleged in the plaintiff's writ in this cause to have been made by the said defendants, does not in any of its parts resemble the machine described in the schedule annexed to the letters patent granted to the said plaintiff.

'X. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that the said John B. Emerson, if he was really the inventor of the improvements now alleged, pretended, and claimed by him, voluntarily abandoned the same to the public.

'XI. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that they have never made, used, or sold the machine patented by the said John B. Emerson, or any part thereof, nor any imitation of the said machine, nor of any part thereof.

'XII. And the said defendants will further give in evidence, and prove on the trial of the issue aforesaid, that the description and specification filed by the said plaintiff do not contain the whole truth relative to this invention or discovery.

'Dated New York, October 26th, 1844.

'Yours, &c.,

P. A. HANFORD, Attorney for Defendants.

'TO PETER CLARK, ESQ., Attorney for Plaintiff.'

'Circuit Court of the United States of America for the Southern District of New York, in the Second Circuit

'PETER HOGG & CORNELIUS DELAMATER v. JOHN B. EMERSON.

'SIR,–You will please to take notice that, on the trial of the above-entitled cause, the defendants, in addition to the various matters set forth in the notice heretofore given in this cause, under date of the 26th of October, 1844, will, under the plea of the general issue, prove and insist upon the following special matter, of which notice is hereby given pursuant to statute.

'The said defendants will give in evidence, on the trial of the issue aforesaid, the letters patent granted to John Ericsson by the English government in 1836, and the letters patent granted him by the government of the United States in the years 1838 and 1840.

'The said defendants will also give in evidence copies of letters patent granted by the United States government to Josiah Copley, for a spiral propeller, under date of May 22, 1830; and to John L. Sullivan, under date of March 24, 1817, for a submarine propeller; and to Edward P. Fitzpatrick, under date of November 23, 1835, for a screw for propelling boats; and to James Widdifield, under date of October 11, 1815, for propelling boats by screw wheel; and to John L. Smith, under date of September 18, 1835, for propelling boats by screw wheel; and to Henry W. Wheatley, under date of December 30, 1818, for propelling boats by screw power; and to Jesse Ong, on the 22d of May, 1837, for propelling paddle-wheels.

'The said defendants will also give in evidence the digest of patents issued by the United States published under the superintendence of the Commissioner of Patents in 1840, and more particularly pages 219, 220, 221, 222, 223, 224, 225, of the same.

'The said defendants will also give in evidence a description of certain improvements in propelling vessels, communicated by Charles Cummerow of London, and published in Newton's London Journal, second series, eighth volume, page 144; which volume the said defendants will give in evidence.

'The said defendants will also give in evidence a description of certain improvements in the construction and adaptation of a revolving spiral paddle, for propelling boats and other vessels, patented by the British government to Bennet Woodcroft of Manchester, in the county palatine of Lancaster, printed and published in Newton's Journal, third series, first volume, page 349; which volume the said defendants will give in evidence.

'The said defendants will also give in evidence the seventh volume of the Repertory of Patent Inventions, for 1837, published in London, and the copy, printed at page 172 of the same, of certain letters patent granted to F. P. Smith for an improved propeller.

'The said defendants will also give in evidence certain letters patent, issued by the government of the United States to Francis P. Smith, for an improved propeller, bearing date the 12th day of November, 1841.

'The said defendants will also give in evidence, that the alleged invention of the said plaintiff, or so much thereof as the said plaintiff may allege or claim that the said defendants have infringed, was invented, known, and used before the same was patented or invented by the said plaintiff. And the said defendants will prove the said prior use and knowledge of the said alleged improvement or invention, and where the same had been used by Dr. Thomas P. Jones, who resides in the city of Washington, in the District of Columbia.

'The said defendants will also give in evidence the sixth volume of the Journal of the Franklin Institute, new series, page 149, where is contained an account of the spiral propeller above referred to, patented to Josiah Copley, and the fifth volume of the same, new series, page 136, where is contained a notice of the propeller patented to Benjamin P. Smith.

'The said defendants will also give in evidence certain letters patent granted to John S. Trott of Boston, by the government of the United States, under date of June 2d, 1818, for propelling wheels for boats by animal power.

'Dated New York, October 27th, 1845.

'Yours, &c.,

F. A. HANFORD, Attorney for Defendants.

'TO PETER CLARK, ESQ.,Attorney for ...


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