Philadelphia & Trenton R. Co. v. Stimpson, 39 U.S. 448 (1840)
Content
39 U.S. 448
14 Pet. 448
10 L.Ed. 535
THE PHILADELPHIA AND TRENTON RAILROAD
COMPANY,
PLAINTIFFS IN ERROR,
v.
JAMES STIMPSON, DEFENDANT IN ERROR.
January Term, 1840
1
IN error from the Circuit Court of the United States for the Eastern District of
Pennsylvania.
2
At the April session of the Circuit Court, James Stimpson instituted an action
against 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 and useful improvement in the mode of turning short curves on
railroads.'
3
The case was tried on the 16th day of February, 1839; and a verdict was
rendered for the plaintiff, for the sum of four thousand two hundred and fifty
dollars. On the 6th of May, 1839, a remittiter was entered on the docket of the
Court, for the sum of one thousand dollars; and a judgment was entered for the
plaintiff for three thousand two hundred and fifty dollars.
4
On the trial of the cause, the defendants tendered a bill of exceptions to the
decision of the Court, on their admitting the patent to the plaintiff in evidence;
and to other rulings of the Court in the course of the trial. The defendants
prosecuted this writ of error.
5
The patent granted by the United States to James Stimpson was as follows:
6
'The United States of America; to all to whom these letters patent shall come.
7
'Whereas, James Stimpson, a citizen of the United States, hath alleged that he
has invented a new and useful improvement in the mode of turning short curves
on railroads, for which letters patent were granted the twenty-third day of
August, 1831; which letters being hereby cancelled on account of a defective
specification; which improvement, he states, has not been known or used before
his application, hath made oath that he does verily believe that he is the true
inventor or discoverer of the said improvement, hath paid into the treasury of
the United States, the sum of thirty dollars, delivered a receipt for the same,
and presented a petition to the Secretary of State, signifying a desire of
obtaining an exclusive property in the said improvement, and praying that a
patent may be granted for that purpose. These are, therefore, to grant according
to law, to the said James Stimpson, his heirs, administrators, or assigns, for the
term of fourteen years from the twenty-third day of August, 1831, the full and
exclusive right and liberty of making, constructing, using, and vending to others
to be used, the said improvement, a description whereof is given in the words of
the said James Stimpson himself, in the schedule hereto annexed.'
8
Tested at Washington, under the seal of the United States, on the 26th day of
September, 1836, by the President of the United States; and certified in the
usual form by the Attorney General of the United States.
9
'The schedule referred to in these letters patent, and making a part of the same,'
contained 'a description in the words of the said James Stimpson himself, of his
improvement in the mode of turning short curves on railroads, for which letters
patent were granted, dated the twenty-third day of August, 1831, which letters
patent being hereby cancelled, on account of a defective specification.'
10
The specification describes the invention with minute particularity, and
concludes: 'What I claim as my invention, or improvement, is the application of
the flanches of 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 corners of the streets, wharves, &c., in cities and elsewhere,
operating upon the principle herein set forth.'
11
The bill of exceptions stated, that the counsel for the plaintiff offered in
evidence the patent and specification, to the admission of which in evidence,
the counsel for the defendant objected; but the objection was overruled by the
Court, and the evidence was admitted.
12
2. The defendants offered to give in evidence, by Josiah White, the description
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 a groove, for the turning of
curves, which he had seen in use before the date of plaintiff's patent; which 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 of the use of the machine at Mauch Chunk; at which
place, it was said, his testimony would show it had been used.
13
3. The third exception was to the refusal of the Court to allow the defendants to
introduce proof of the conversations between the patentee and the counsel of
the Baltimore and Ohio Railroad Company, while an arrangement of a suit
against the Company was made, as to the character and effects of the
arrangements.
14
4. The counsel for the plaintiff, by rebutting evidence, to extend his claim to
the invention prior to the time at which the defendants had proved the reduction
of the same into use and practice by others, offered to give evidence by
witnesses of the conversations of the patentee on the subject of his invention at
an anterior period; which conversations were intended to show the making of
the invention by the patentee, before and at the period when the same took
place. The counsel for the defendants objected to the admission of this
testimony; but the Court overruled the objection.
15
5. The fifth exception was to the refusal of the Court to admit the examination
of Dr. Thomas P. Jones. The plaintiff had discharged his witnesses on the
declaration of the defendants' counsel that they had closed their evidence. The
testimony asked from Dr. Jones, was to new facts. The Court refused to admit
the testimony, on the ground that the testimony was improper, and that it was
offered too late.
16
The case was argued by Mr. Coxe, and Mr. Southard, for the plaintiffs in error;
and by Mr. J. R. Ingersoll, for the defendant.
17
Mr. Coxe and Mr. Southard, on the first exception.
18
The patent should not have been admitted in evidence. On its face it is
inoperative, and invalid. It is not a patent under the act of Congress of 1793; but
it purports to be a substituted patent for one which had been surrendered. It
gives to the patentee the same privileges as those which were given by the first
patent. It, therefore, should be in strict and exact conformity with the law of
1793, as well as with the subsequent act of Congress, authorizing the surrender
of a patent for an imperfect specification, and the issue of another.
19
The act of 21st February, 1793, requires, by its third section, that the applicant
shall be the true inventor of the machine, &c. This is made a sine qua non to the
granting the patent, and the oath of the claimant is required to this fact. This
provision makes the oath necessary, before the Secretary of State has authority
to grant the patent. There is no remedy, if this has been omitted.
20
There was no decision before the case of Morris vs. Huntington, Paine's
Reports, 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 Secretary of State, when a
second patent is asked for. It has been decided, that a patent is prima facie
evidence of the statements on the face of the patent. 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 every thing 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 vs. Raymond, 6 Peters, 218. In the case
cited, there was a recital of the surrender of the patent, and the cause of its
surrender.
21
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.
22
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 prima facie proof, all the
burden of contradicting it is thrown on the opposite party. Cited, on these
points, Shaw vs. Cooper, 7 Peters, 245.
23
In support of the second exception, the counsel contended that the notice given
was sufficient to authorize the introduction of the testimony of Josiah White.
Cited, on this point, Evans vs. Eaton, Peters' C. C. R. 322. Wheat. Rep. S. C.
The notice would have been sufficient under the act of Congress of 1793, and
why not under the act of July 3d, 1836?
24
The objection to the introduction of the evidence by the counsel for the
defendants, which was sustained by the Court, and which is the subject of the
defendants' third exception, was well taken. It was in the power of the plaintiff
to have produced his contract with the Baltimore and Ohio Railroad Company,
and have rendered this evidence unnecessary. He did not do so.
25
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.
26
Conversations on the subject of an invention are not the invention; nor are the
ideas of the invention, its actual development. There must be an application of
the thought, in the construction of the machine.
27
This is an attempt to give the declarations of a party in evidence, after the actual
occurrence of the transaction. No declaration of a person that he intended to
take out a patent, could be given in evidence. Cited, on this point, 1 Wheat.
Rep. 313. 10 Serg. and Rawle, 27. 5 Serg. and Rawle, 295. Roscoe on
Evidence, 21. 4 Washington C. C. R. 58. 5 Mason, 6. 1 Gallis, C. C. R. 438.
28
As to the fifth exception, the counsel contended, that the evidence of Dr. Jones
was rebutting evidence, and was regular; as it was offered to meet and to
disprove the plaintiff's declarations, which the Court had admitted as testimony.
29
Mr. Ingersoll, for the defendants in error.
30
1. The objection to the certificate of the Secretary of State should apply rather
to the effect than the admissibility of the document. That officer is authorized
by law to issue patents, and the presumption is, that he has done so rightfully.
Possession of the document does not affect the intrinsic rights of any one. Every
question of merit is still open. It enables the patentee to sue; but it neither
secures him in the enjoyment of the alleged invention, nor precludes others
from contesting the validity of his claims. In the different cases cited, the patent
appears to have been received in evidence exactly in the form now exhibited,
although it may have availed nothing to the plaintiff afterwards.
31
Sullivan vs. Redfield, 1 Paine, 447: 'The patent is prima facie evidence of the
right.' The Margaretta, 2 Gall. 519: Remission, though not valid, was given in
evidence. See also Bingham vs. Cabot, 3 Dall. 19. Bell vs. Morrison, 1 Peters,
355. Keene vs. Meade, 3 Peters, 6. The United States vs. Liddle, 2 Wash. C. C.
Rep. 205.
32
2. The testimony of Josiah White would have been admitted under the sixth
section of the law of 1793. But the fifteenth (or corresponding) section of the
law of 1836, requires notice of place, person, and residence. As the law
previously stood, great injustice might have been done, unless the Court had
construed it so as to invest the judge with power to prevent the plaintiff from
being taken by surprise. Evans vs. Eaton, 3 Wheat. 505. The law now wisely
anticipates the necessity for an exercise of judicial discretion and possible
delay; and requires notice of the place where the improvement is supposed by a
defendant to have been previously used. This was not given, and the testimony
was necessarily rejected.
33
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.
34
(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.
35
(2.) The inquiries are irrelative. The arrangement contemplated was res inter
alios acta. The plaintiffs in error were altogether strangers to it. Many
inducements may lead to a settlement 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 vs. Buckley, 16 Serg. and Rawle. If it was regular cross-examination,
it cannot justify the proposed irregularity. But we were bound to put the
witness on his guard as to a collateral fact which might impeach his testimony.
Rule in the Queen's case.
36
(3.) The object attempted to be proved was a mere entity; an abstraction:
nothing actually done, but at best something omitted or avoided: a conclusion
or construction: a contingency without a substantial thing to support it.
37
(4.) It was an attempt to prove by parol some known written arrangement,
which was susceptible of being produced.
38
4. Explanations of the patentee himself were good evidence to prove the
genuineness of his claims to originality. It is necessary to understand the
manner in which this testimony was produced. Plaintiff at first simply produced
his patent, and called a witness who proved its utility and the infringement by
the defendants. Then the defendants went at large into proof of alleged priority
of invention by other persons. All of this went to show a use before the date of
the plaintiff's patent. A necessity was therefore thrown upon him of proving
that his invention existed, and was communicated by him to different persons at
a still earlier period. No doubt of the importance of such proof. It consisted of
evidence of plaintiff's invention prior to defendants' knowledge, or the
knowledge of those persons on whom they relied. To meet this particular
exigency, that is, to show invention, it is difficult to conceive what can be
authentic except what comes from the inventor himself. He therefore produced
several individuals, who stated that he described the improvement to them at a
period considerably earlier than defendants had fixed for its earliest use. If he
described it, he must have known it. If he knew it before any other person, he
must have invented it. That prior knowledge was invention; and that was the
very thing to be proved.
39
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.
40
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.
41
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
machine 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.
42
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 of invention or originality. If, instead of writing with his 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 the result of his genius, through the pen of another. On a question of
authorship, surely the testimony of the scribe would be received as competent.
43
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 given 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.
44
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 gestae.
45
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 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 presenti; 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.
46
Answer 2d. As to the objection that the explanations were not reduced to
practice. Here, too, the objection loses sight of the fact that our evidence was
not original, but merely designed to meet a collateral issue as to the period of
invention, and not exactly as to invention itself. On any ground, however, the
question of invention does not depend upon whether the thing has been reduced
to practice, but whether it can be. Not whether it is actually practised, but
practicable. Drawings, descriptions, and models are sent to the patent office.
These are miniature likenesses, not the thing itself. Any other course would, in
many instances, be quite impracticable. A ship, a house, a house, a town, are
often the recipients of an improvement which cannot be practically exhibited,
except in connection with the vast object to which it is applied. Sometimes the
reducing to practice might be destructive of life or property. A guillotine need
not be rehearsed in order to prove its power.
47
Besides, it might destroy the very intention, to insist on practical exercise. It
might be regarded as giving the invention to the public, and then the patent
right is gone forever.
48
5. Thomas P. Jones was called by the defendants after all the testimony in
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 in substance a totally
different thing. We are struck at once with an inconsistency 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 is the true meaning of the point, it has none.
49
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 merits of the case. It was of great importance,
undoubtedly. Nothing could be more conclusive against the plaintiff. Not only
would it be destructive of his claim to originality; but it would prove a most
audacious fraud, abortively attempted, and calculated, when detected, to
deprive him of all standing in or out of Court, and to render his defeat as
disgraceful as it was inevitable.
50
Notice of all this ought to have been given, perhaps. It is not urged, however, as
an argument, that none was received; although it might have been calculated to
take the plaintiff by surprise. But it was a fact above all others, requiring, and
in its nature admitting of countervailing proof. Not a clerk in the office,
probably, could have failed to give material testimony in reply. These persons
were at a distance; and we should have been left to the question of probability,
whether a man, in any extremity of impudent fraud, would have ventured to
place two totally different patents side by side in the office, asserting that they
were in substance identical.
51
The evidence offered was not the best the nature of the case admitted of.
Contradiction was to be proved between two written instruments, with, perhaps,
a model accompanying each of them. Copies would be the proper sources of
illustration. Were copies not accessible? We do not know. No inquiry was
made. A thousand copies may have been made before the patent office was
destroyed. Plaintiff himself, no doubt, had such copies in his possession. No
notice was given to him to produce them, before this violent attempt was made
to introduce secondary evidence.
52
To get rid of all this, the argument was that the difference was only to be
inferred between the patents from a difference between the conversation and
one of them. But that would rebut nothing. No person denied that plaintiff's
conversations with the witnesses he produced, were as they were sworn to be.
Other conversations with other persons might show descriptions of other
inventions; but they could not possibly show that the first conversations did not
take place. The judge gave two reasons for rejecting the testimony. One was,
that it was offered at too late a stage of the cause. That was ruled in his sound
discretion. From the exercise of that discretion there is no appeal. No attempt
was made to take one. On both of his grounds he was right. But one was
sufficient to cover the whole question, and it is inaccessible to review here.
53
Mr. Justice STORY delivered the opinion of the Court.
54
This is a writ of error to the judgment of the Circuit Court for the Eastern
District of Pennsylvania, rendered in an action brought by Stimpson, the
defendant in error, against the plaintiffs in error, for a violation of a patent right
granted to him for a new and useful improvement in the mode of turning short
curves on railroads.
55
A patent was originally granted to Stimpson, for the same invention, on the 23d
day of August, 1831; and the renewed patent, upon which the present suit is
brought, was granted on the 26th of September, 1835, upon the former letters
patent 'being cancelled on account of a defective specification;' and the renewed
patent was for the term of fourteen years from the date of the original patent.
With the exception of the recital of the fact that the former letters patent were
cancelled 'on account of a defective specification,' and the statement of the
prior date from which the renewed patent was be begin to run, the renewed
patent is in the precise form in which original patents are granted.
56
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.
57
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, sec. 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.
58
Now, the objection is, that the present patent does not contain any recitals that
the prerequisites 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 prima facie evidence that the proofs have
been regularly made, and were satisfactory. No other tribunal is at liberty to reexamine 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 prerequisites 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 prerequisites had been, de
facto, complied with. This has been the uniform construction, as far as we
know in all our Courts of justice upon matters of this sort. Patents for lands,
equally with patents for inventions, have been deemed prima facie 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
prerequisites 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 further, 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 prima 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.
59
The next exception is to the refusal of the Court to allow a witness, Josiah
White, to give a description of an invention which he had seen on the Mauch
Chunk railroad, in 1827, which had a groove on one side, and run on the other
on a flange for crossing, for the purpose of showing that the supposed invention
of the plaintiff was known and in use by others, before the date of his patent.
By the patent act of 1836, (which was applicable to the present point,) it is
provided in the fifteenth section, that whenever the defendant relies in his
defence on the fact of a previous invention, knowledge, or use of the thing
patented, he shall state in his notice of special matter to be used in his defence,
the names and places of residence of those, whom he intends to prove to have
possessed a prior knowledge of the thing, and where the same had been used.
The object of this most salutary provision is to prevent patentees being
surprised at the trial of the cause, by evidence of a nature which they could not
be presumed to know, or be prepared to meet, and thereby to subject them either
to most expensive delays, or to a loss of their cause. It is incumbent on those
who seek to show that the examination of a witness has been improperly
rejected, to establish their right to have the evidence admitted; for the Court
will be presumed to have acted correctly, until the contrary is established.
60
In the present case, there is no proof on the record that notice had been given
according to the requirements of the statute, that White was to be a witness for
the purpose above stated. Unless such notice was given, it is plain that the
examination could not be rightfully had. The onus probandi is on the
defendants to show it, and unless they produce the notice, the objection must
fail. In point of fact, it was admitted by counsel, at the argument, that no such
notice was given. In either view, then, from the admission, or from the defect of
the preliminary proof of notice in the record, the exception is not maintainable.
61
The next exception is to the refusal of the Court to allow certain questions to be
put by the defendants to John H. B. Latrobe, a witness introduced by the
defendants to maintain the issue on their part. Latrobe, on his examination,
stated, 'I know Mr. Stimpson by sight and character. He granted to the
Baltimore and Ohio Railroad Company the privilege of using the curved ways
on their railroad, and all lateral roads connected therewith. I fix the date of the
contract in the early part of October, 1834, because I have then a receipt of Mr.
Stimpson's counsel, for two thousand five hundred dollars. Mr. Stimpson laid
his claim against the Baltimore Company for an infringement of his patent, in
1832. It was referred to me by the Company, and I advised them.' The counsel
for the defendants then offered to prove by the same witness, the declarations
of the plaintiff and his agent, to the witness, that the settlement made with the
Baltimore and Ohio Railroad Company with the plaintiff, was not an admission
by the said company of the plaintiff's right in the alleged invention, but a mere
compromise of a pending suit, disconnected with a grant, in writing, made by
the plaintiff to the said company; and to that end proposed to put the following
questions, respectively, and in order, to the witness: '1. Do you know who was
the agent or attorney of James Stimpson, in negotiating the arrangement and
settlement between him and the company referred to? Who was he? 2. State if
any conversations occurred between James Stimpson, or his agent or counsel, at
any time, during the negotiations, regarding the rights claimed by him in the
patent for curved ways, without reference to the existence of a written contract,
or its contents? 3. What were they?' The Court refused to allow these questions
to be put, for the purpose aforesaid.
62
Now, (as has been already intimated,) it is incumbent upon those who insist
upon the right to put particular questions to a witness, to establish that right
beyond any reasonable doubt, for the very purpose stated by them; and they are
not afterwards at liberty to desert that purpose, and to show the pertinency or
relevancy of the evidence for any other purpose, not then suggested to the
Court. It was not pretended at the argument, that the evidence so offered was
good evidence in chief, in behalf of the defendants upon the issue in the cause.
It was res inter alios acta, and had no tendency to disprove the defendant's title
to the invention, or to support any title set up by the defendants; for no privity
was shown between the defendants and the Baltimore Company. As evidence
in chief, therefore, it was irrelevant and inadmissible. The sole purpose for
which it was offered, so far as it was then declared to the Court, was to show,
that the compromise with the Baltimore Company was not founded on any
admission of the plaintiff's right in the invention. Be it so; it was then
inconsequential; for it certainly had no just tendency to disprove his right. If the
compromise had been offered on the part of the plaintiff, for the purpose of
establishing his right to the invention, there is no pretence to say that it would
have been admissible against the defendants. In the converse case, it is equally
inadmissible for the defendants.
63
But it is now said that the evidence was in fact offered for the purpose of
rebutting or explaining certain statements made by one Ross Winans, a witness
called by the defendants, in his answers upon his cross-examination by the
plaintiff's counsel. Now, this purpose is not necessarily, or even naturally,
suggested by the purpose avowed in the record. Upon his cross-examination,
Winans stated: 'I understood there were arrangements made with the Baltimore
Company. I heard the Company paid five thousand dollars.' Now, certainly
these statements, if objected to by the defendants, would have been
inadmissible upon two distinct grounds. 1. First, as mere hearsay; 2. And,
secondly, upon the broader principle, now well established, although
sometimes lost sight of in our loose practice at trials, that a party has no right to
cross-examine any witness except as to facts and circumstances connected with
the matters stated in his direct examination. If he wishes to examine him to
other matters, he must do so by making the witness his own, and calling him, as
such, in the subsequent progress of the cause. The question then is presented,
whether a party can, by his own omission to take an objection to the admission
of improper evidence brought out on a cross-examination, found a right to
introduce testimony in chief to rebut it or explain it. If upon the crossexamination, Winans' answer had been such as was unfavourable to the
plaintiff, upon the collateral matters thus asked, which were not founded in the
issue, he would have been bound by it, and not permitted to introduce evidence
to contradict it. There is great difficulty in saying that the defendants ought to
be in a more favoured predicament, and to acquire rights founded upon the like
evidence to which they did not choose to make any objection, although
otherwise it could not have been in the cause. But waiving this consideration,
the grounds on which we think the refusal of the Court was right, are; first, that
it was not distinctly propounded to the Court, that the evidence was offered to
rebut or explain Winans' testimony; and, secondly, that in the form in which it
was put, it proposed to separate the written contract of compromise from the
conversations and negotiations which led to it, and to introduce the latter
without the former, although it might turn out that the written paper might most
materially affect or control the presumptions deducible from those
conversations, and negotiations. We think, that upon the settled principles of
law, parol evidence bearing upon written contracts and papers, ought not to be
admitted without the production of such written contracts or papers, so as to
enable both the Court and the jury to see whether or not the admission of the
parol evidence in any manner will trench upon the rule, that parol evidence is
not admissible to vary or contradict written contracts or papers.
64
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 contrivance, before that date. The
objection is, that, upon general principles, the declarations and conversations of
a plaintiff, are not admissible evidence in favour 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 conflict with acts in his own favour, as a part of the res gestae.
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 declarations 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 1 Phillips on Evidence, ch. 12, sec. 1, p.
200-202, eighth 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 be embodied in any visible form, machine, or composition of matter. It
might take a year to construct a steamboat, after the inventor had completely
mastered all the details of his invention, and had fully explained them to all the
various artisans whom he might employ to construct the different parts of the
machinery. 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 a part 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.
65
The next and last exception is, to the rejection of the evidence of Dr. Jones,
who was offered to prove that there were material differences between the
patent of 1831, and the renewed patent of 1835, and to explain these
differences. No doubt can be entertained that the testimony thus offered was, or
might be, most material to the merits of the defence. And the question is not as
to the competency or relevancy of the evidence, but as to the propriety of its
being admitted at the time when it was offered. It appears that the testimony
was not offered by the defendants, or stated by them as a matter of defence, in
the stage of the cause when it is usually introduced according to the practice of
the Court. It was offered after the defendants' counsel had stated in open Court,
that they had closed their evidence, and after the plaintiff, in consequence of
that declaration, had discharged his own witnesses. The question, then, is,
whether it was at that time admissible on the part of the defendants as a matter
of right; or whether its admission was a matter resting in the sound discretion of
the Court. If the latter, then it is manifest that the rejection of it cannot be
assigned as error.
66
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, in 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, to
prevent the most mischievous consequences in the administration of justice to
suitors; and we think that the Circuit Courts possess this discretion in 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.
67
Upon the whole, we are of opinion, that the judgment of the Circuit Court
ought to be affirmed with costs.
14 Pet. 448
10 L.Ed. 535
THE PHILADELPHIA AND TRENTON RAILROAD
COMPANY,
PLAINTIFFS IN ERROR,
v.
JAMES STIMPSON, DEFENDANT IN ERROR.
January Term, 1840
1
IN error from the Circuit Court of the United States for the Eastern District of
Pennsylvania.
2
At the April session of the Circuit Court, James Stimpson instituted an action
against 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 and useful improvement in the mode of turning short curves on
railroads.'
3
The case was tried on the 16th day of February, 1839; and a verdict was
rendered for the plaintiff, for the sum of four thousand two hundred and fifty
dollars. On the 6th of May, 1839, a remittiter was entered on the docket of the
Court, for the sum of one thousand dollars; and a judgment was entered for the
plaintiff for three thousand two hundred and fifty dollars.
4
On the trial of the cause, the defendants tendered a bill of exceptions to the
decision of the Court, on their admitting the patent to the plaintiff in evidence;
and to other rulings of the Court in the course of the trial. The defendants
prosecuted this writ of error.
5
The patent granted by the United States to James Stimpson was as follows:
6
'The United States of America; to all to whom these letters patent shall come.
7
'Whereas, James Stimpson, a citizen of the United States, hath alleged that he
has invented a new and useful improvement in the mode of turning short curves
on railroads, for which letters patent were granted the twenty-third day of
August, 1831; which letters being hereby cancelled on account of a defective
specification; which improvement, he states, has not been known or used before
his application, hath made oath that he does verily believe that he is the true
inventor or discoverer of the said improvement, hath paid into the treasury of
the United States, the sum of thirty dollars, delivered a receipt for the same,
and presented a petition to the Secretary of State, signifying a desire of
obtaining an exclusive property in the said improvement, and praying that a
patent may be granted for that purpose. These are, therefore, to grant according
to law, to the said James Stimpson, his heirs, administrators, or assigns, for the
term of fourteen years from the twenty-third day of August, 1831, the full and
exclusive right and liberty of making, constructing, using, and vending to others
to be used, the said improvement, a description whereof is given in the words of
the said James Stimpson himself, in the schedule hereto annexed.'
8
Tested at Washington, under the seal of the United States, on the 26th day of
September, 1836, by the President of the United States; and certified in the
usual form by the Attorney General of the United States.
9
'The schedule referred to in these letters patent, and making a part of the same,'
contained 'a description in the words of the said James Stimpson himself, of his
improvement in the mode of turning short curves on railroads, for which letters
patent were granted, dated the twenty-third day of August, 1831, which letters
patent being hereby cancelled, on account of a defective specification.'
10
The specification describes the invention with minute particularity, and
concludes: 'What I claim as my invention, or improvement, is the application of
the flanches of 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 corners of the streets, wharves, &c., in cities and elsewhere,
operating upon the principle herein set forth.'
11
The bill of exceptions stated, that the counsel for the plaintiff offered in
evidence the patent and specification, to the admission of which in evidence,
the counsel for the defendant objected; but the objection was overruled by the
Court, and the evidence was admitted.
12
2. The defendants offered to give in evidence, by Josiah White, the description
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 a groove, for the turning of
curves, which he had seen in use before the date of plaintiff's patent; which 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 of the use of the machine at Mauch Chunk; at which
place, it was said, his testimony would show it had been used.
13
3. The third exception was to the refusal of the Court to allow the defendants to
introduce proof of the conversations between the patentee and the counsel of
the Baltimore and Ohio Railroad Company, while an arrangement of a suit
against the Company was made, as to the character and effects of the
arrangements.
14
4. The counsel for the plaintiff, by rebutting evidence, to extend his claim to
the invention prior to the time at which the defendants had proved the reduction
of the same into use and practice by others, offered to give evidence by
witnesses of the conversations of the patentee on the subject of his invention at
an anterior period; which conversations were intended to show the making of
the invention by the patentee, before and at the period when the same took
place. The counsel for the defendants objected to the admission of this
testimony; but the Court overruled the objection.
15
5. The fifth exception was to the refusal of the Court to admit the examination
of Dr. Thomas P. Jones. The plaintiff had discharged his witnesses on the
declaration of the defendants' counsel that they had closed their evidence. The
testimony asked from Dr. Jones, was to new facts. The Court refused to admit
the testimony, on the ground that the testimony was improper, and that it was
offered too late.
16
The case was argued by Mr. Coxe, and Mr. Southard, for the plaintiffs in error;
and by Mr. J. R. Ingersoll, for the defendant.
17
Mr. Coxe and Mr. Southard, on the first exception.
18
The patent should not have been admitted in evidence. On its face it is
inoperative, and invalid. It is not a patent under the act of Congress of 1793; but
it purports to be a substituted patent for one which had been surrendered. It
gives to the patentee the same privileges as those which were given by the first
patent. It, therefore, should be in strict and exact conformity with the law of
1793, as well as with the subsequent act of Congress, authorizing the surrender
of a patent for an imperfect specification, and the issue of another.
19
The act of 21st February, 1793, requires, by its third section, that the applicant
shall be the true inventor of the machine, &c. This is made a sine qua non to the
granting the patent, and the oath of the claimant is required to this fact. This
provision makes the oath necessary, before the Secretary of State has authority
to grant the patent. There is no remedy, if this has been omitted.
20
There was no decision before the case of Morris vs. Huntington, Paine's
Reports, 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 Secretary of State, when a
second patent is asked for. It has been decided, that a patent is prima facie
evidence of the statements on the face of the patent. 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 every thing 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 vs. Raymond, 6 Peters, 218. In the case
cited, there was a recital of the surrender of the patent, and the cause of its
surrender.
21
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.
22
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 prima facie proof, all the
burden of contradicting it is thrown on the opposite party. Cited, on these
points, Shaw vs. Cooper, 7 Peters, 245.
23
In support of the second exception, the counsel contended that the notice given
was sufficient to authorize the introduction of the testimony of Josiah White.
Cited, on this point, Evans vs. Eaton, Peters' C. C. R. 322. Wheat. Rep. S. C.
The notice would have been sufficient under the act of Congress of 1793, and
why not under the act of July 3d, 1836?
24
The objection to the introduction of the evidence by the counsel for the
defendants, which was sustained by the Court, and which is the subject of the
defendants' third exception, was well taken. It was in the power of the plaintiff
to have produced his contract with the Baltimore and Ohio Railroad Company,
and have rendered this evidence unnecessary. He did not do so.
25
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.
26
Conversations on the subject of an invention are not the invention; nor are the
ideas of the invention, its actual development. There must be an application of
the thought, in the construction of the machine.
27
This is an attempt to give the declarations of a party in evidence, after the actual
occurrence of the transaction. No declaration of a person that he intended to
take out a patent, could be given in evidence. Cited, on this point, 1 Wheat.
Rep. 313. 10 Serg. and Rawle, 27. 5 Serg. and Rawle, 295. Roscoe on
Evidence, 21. 4 Washington C. C. R. 58. 5 Mason, 6. 1 Gallis, C. C. R. 438.
28
As to the fifth exception, the counsel contended, that the evidence of Dr. Jones
was rebutting evidence, and was regular; as it was offered to meet and to
disprove the plaintiff's declarations, which the Court had admitted as testimony.
29
Mr. Ingersoll, for the defendants in error.
30
1. The objection to the certificate of the Secretary of State should apply rather
to the effect than the admissibility of the document. That officer is authorized
by law to issue patents, and the presumption is, that he has done so rightfully.
Possession of the document does not affect the intrinsic rights of any one. Every
question of merit is still open. It enables the patentee to sue; but it neither
secures him in the enjoyment of the alleged invention, nor precludes others
from contesting the validity of his claims. In the different cases cited, the patent
appears to have been received in evidence exactly in the form now exhibited,
although it may have availed nothing to the plaintiff afterwards.
31
Sullivan vs. Redfield, 1 Paine, 447: 'The patent is prima facie evidence of the
right.' The Margaretta, 2 Gall. 519: Remission, though not valid, was given in
evidence. See also Bingham vs. Cabot, 3 Dall. 19. Bell vs. Morrison, 1 Peters,
355. Keene vs. Meade, 3 Peters, 6. The United States vs. Liddle, 2 Wash. C. C.
Rep. 205.
32
2. The testimony of Josiah White would have been admitted under the sixth
section of the law of 1793. But the fifteenth (or corresponding) section of the
law of 1836, requires notice of place, person, and residence. As the law
previously stood, great injustice might have been done, unless the Court had
construed it so as to invest the judge with power to prevent the plaintiff from
being taken by surprise. Evans vs. Eaton, 3 Wheat. 505. The law now wisely
anticipates the necessity for an exercise of judicial discretion and possible
delay; and requires notice of the place where the improvement is supposed by a
defendant to have been previously used. This was not given, and the testimony
was necessarily rejected.
33
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.
34
(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.
35
(2.) The inquiries are irrelative. The arrangement contemplated was res inter
alios acta. The plaintiffs in error were altogether strangers to it. Many
inducements may lead to a settlement 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 vs. Buckley, 16 Serg. and Rawle. If it was regular cross-examination,
it cannot justify the proposed irregularity. But we were bound to put the
witness on his guard as to a collateral fact which might impeach his testimony.
Rule in the Queen's case.
36
(3.) The object attempted to be proved was a mere entity; an abstraction:
nothing actually done, but at best something omitted or avoided: a conclusion
or construction: a contingency without a substantial thing to support it.
37
(4.) It was an attempt to prove by parol some known written arrangement,
which was susceptible of being produced.
38
4. Explanations of the patentee himself were good evidence to prove the
genuineness of his claims to originality. It is necessary to understand the
manner in which this testimony was produced. Plaintiff at first simply produced
his patent, and called a witness who proved its utility and the infringement by
the defendants. Then the defendants went at large into proof of alleged priority
of invention by other persons. All of this went to show a use before the date of
the plaintiff's patent. A necessity was therefore thrown upon him of proving
that his invention existed, and was communicated by him to different persons at
a still earlier period. No doubt of the importance of such proof. It consisted of
evidence of plaintiff's invention prior to defendants' knowledge, or the
knowledge of those persons on whom they relied. To meet this particular
exigency, that is, to show invention, it is difficult to conceive what can be
authentic except what comes from the inventor himself. He therefore produced
several individuals, who stated that he described the improvement to them at a
period considerably earlier than defendants had fixed for its earliest use. If he
described it, he must have known it. If he knew it before any other person, he
must have invented it. That prior knowledge was invention; and that was the
very thing to be proved.
39
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.
40
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.
41
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
machine 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.
42
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 of invention or originality. If, instead of writing with his 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 the result of his genius, through the pen of another. On a question of
authorship, surely the testimony of the scribe would be received as competent.
43
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 given 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.
44
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 gestae.
45
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 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 presenti; 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.
46
Answer 2d. As to the objection that the explanations were not reduced to
practice. Here, too, the objection loses sight of the fact that our evidence was
not original, but merely designed to meet a collateral issue as to the period of
invention, and not exactly as to invention itself. On any ground, however, the
question of invention does not depend upon whether the thing has been reduced
to practice, but whether it can be. Not whether it is actually practised, but
practicable. Drawings, descriptions, and models are sent to the patent office.
These are miniature likenesses, not the thing itself. Any other course would, in
many instances, be quite impracticable. A ship, a house, a house, a town, are
often the recipients of an improvement which cannot be practically exhibited,
except in connection with the vast object to which it is applied. Sometimes the
reducing to practice might be destructive of life or property. A guillotine need
not be rehearsed in order to prove its power.
47
Besides, it might destroy the very intention, to insist on practical exercise. It
might be regarded as giving the invention to the public, and then the patent
right is gone forever.
48
5. Thomas P. Jones was called by the defendants after all the testimony in
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 in substance a totally
different thing. We are struck at once with an inconsistency 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 is the true meaning of the point, it has none.
49
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 merits of the case. It was of great importance,
undoubtedly. Nothing could be more conclusive against the plaintiff. Not only
would it be destructive of his claim to originality; but it would prove a most
audacious fraud, abortively attempted, and calculated, when detected, to
deprive him of all standing in or out of Court, and to render his defeat as
disgraceful as it was inevitable.
50
Notice of all this ought to have been given, perhaps. It is not urged, however, as
an argument, that none was received; although it might have been calculated to
take the plaintiff by surprise. But it was a fact above all others, requiring, and
in its nature admitting of countervailing proof. Not a clerk in the office,
probably, could have failed to give material testimony in reply. These persons
were at a distance; and we should have been left to the question of probability,
whether a man, in any extremity of impudent fraud, would have ventured to
place two totally different patents side by side in the office, asserting that they
were in substance identical.
51
The evidence offered was not the best the nature of the case admitted of.
Contradiction was to be proved between two written instruments, with, perhaps,
a model accompanying each of them. Copies would be the proper sources of
illustration. Were copies not accessible? We do not know. No inquiry was
made. A thousand copies may have been made before the patent office was
destroyed. Plaintiff himself, no doubt, had such copies in his possession. No
notice was given to him to produce them, before this violent attempt was made
to introduce secondary evidence.
52
To get rid of all this, the argument was that the difference was only to be
inferred between the patents from a difference between the conversation and
one of them. But that would rebut nothing. No person denied that plaintiff's
conversations with the witnesses he produced, were as they were sworn to be.
Other conversations with other persons might show descriptions of other
inventions; but they could not possibly show that the first conversations did not
take place. The judge gave two reasons for rejecting the testimony. One was,
that it was offered at too late a stage of the cause. That was ruled in his sound
discretion. From the exercise of that discretion there is no appeal. No attempt
was made to take one. On both of his grounds he was right. But one was
sufficient to cover the whole question, and it is inaccessible to review here.
53
Mr. Justice STORY delivered the opinion of the Court.
54
This is a writ of error to the judgment of the Circuit Court for the Eastern
District of Pennsylvania, rendered in an action brought by Stimpson, the
defendant in error, against the plaintiffs in error, for a violation of a patent right
granted to him for a new and useful improvement in the mode of turning short
curves on railroads.
55
A patent was originally granted to Stimpson, for the same invention, on the 23d
day of August, 1831; and the renewed patent, upon which the present suit is
brought, was granted on the 26th of September, 1835, upon the former letters
patent 'being cancelled on account of a defective specification;' and the renewed
patent was for the term of fourteen years from the date of the original patent.
With the exception of the recital of the fact that the former letters patent were
cancelled 'on account of a defective specification,' and the statement of the
prior date from which the renewed patent was be begin to run, the renewed
patent is in the precise form in which original patents are granted.
56
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.
57
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, sec. 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.
58
Now, the objection is, that the present patent does not contain any recitals that
the prerequisites 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 prima facie evidence that the proofs have
been regularly made, and were satisfactory. No other tribunal is at liberty to reexamine 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 prerequisites 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 prerequisites had been, de
facto, complied with. This has been the uniform construction, as far as we
know in all our Courts of justice upon matters of this sort. Patents for lands,
equally with patents for inventions, have been deemed prima facie 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
prerequisites 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 further, 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 prima 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.
59
The next exception is to the refusal of the Court to allow a witness, Josiah
White, to give a description of an invention which he had seen on the Mauch
Chunk railroad, in 1827, which had a groove on one side, and run on the other
on a flange for crossing, for the purpose of showing that the supposed invention
of the plaintiff was known and in use by others, before the date of his patent.
By the patent act of 1836, (which was applicable to the present point,) it is
provided in the fifteenth section, that whenever the defendant relies in his
defence on the fact of a previous invention, knowledge, or use of the thing
patented, he shall state in his notice of special matter to be used in his defence,
the names and places of residence of those, whom he intends to prove to have
possessed a prior knowledge of the thing, and where the same had been used.
The object of this most salutary provision is to prevent patentees being
surprised at the trial of the cause, by evidence of a nature which they could not
be presumed to know, or be prepared to meet, and thereby to subject them either
to most expensive delays, or to a loss of their cause. It is incumbent on those
who seek to show that the examination of a witness has been improperly
rejected, to establish their right to have the evidence admitted; for the Court
will be presumed to have acted correctly, until the contrary is established.
60
In the present case, there is no proof on the record that notice had been given
according to the requirements of the statute, that White was to be a witness for
the purpose above stated. Unless such notice was given, it is plain that the
examination could not be rightfully had. The onus probandi is on the
defendants to show it, and unless they produce the notice, the objection must
fail. In point of fact, it was admitted by counsel, at the argument, that no such
notice was given. In either view, then, from the admission, or from the defect of
the preliminary proof of notice in the record, the exception is not maintainable.
61
The next exception is to the refusal of the Court to allow certain questions to be
put by the defendants to John H. B. Latrobe, a witness introduced by the
defendants to maintain the issue on their part. Latrobe, on his examination,
stated, 'I know Mr. Stimpson by sight and character. He granted to the
Baltimore and Ohio Railroad Company the privilege of using the curved ways
on their railroad, and all lateral roads connected therewith. I fix the date of the
contract in the early part of October, 1834, because I have then a receipt of Mr.
Stimpson's counsel, for two thousand five hundred dollars. Mr. Stimpson laid
his claim against the Baltimore Company for an infringement of his patent, in
1832. It was referred to me by the Company, and I advised them.' The counsel
for the defendants then offered to prove by the same witness, the declarations
of the plaintiff and his agent, to the witness, that the settlement made with the
Baltimore and Ohio Railroad Company with the plaintiff, was not an admission
by the said company of the plaintiff's right in the alleged invention, but a mere
compromise of a pending suit, disconnected with a grant, in writing, made by
the plaintiff to the said company; and to that end proposed to put the following
questions, respectively, and in order, to the witness: '1. Do you know who was
the agent or attorney of James Stimpson, in negotiating the arrangement and
settlement between him and the company referred to? Who was he? 2. State if
any conversations occurred between James Stimpson, or his agent or counsel, at
any time, during the negotiations, regarding the rights claimed by him in the
patent for curved ways, without reference to the existence of a written contract,
or its contents? 3. What were they?' The Court refused to allow these questions
to be put, for the purpose aforesaid.
62
Now, (as has been already intimated,) it is incumbent upon those who insist
upon the right to put particular questions to a witness, to establish that right
beyond any reasonable doubt, for the very purpose stated by them; and they are
not afterwards at liberty to desert that purpose, and to show the pertinency or
relevancy of the evidence for any other purpose, not then suggested to the
Court. It was not pretended at the argument, that the evidence so offered was
good evidence in chief, in behalf of the defendants upon the issue in the cause.
It was res inter alios acta, and had no tendency to disprove the defendant's title
to the invention, or to support any title set up by the defendants; for no privity
was shown between the defendants and the Baltimore Company. As evidence
in chief, therefore, it was irrelevant and inadmissible. The sole purpose for
which it was offered, so far as it was then declared to the Court, was to show,
that the compromise with the Baltimore Company was not founded on any
admission of the plaintiff's right in the invention. Be it so; it was then
inconsequential; for it certainly had no just tendency to disprove his right. If the
compromise had been offered on the part of the plaintiff, for the purpose of
establishing his right to the invention, there is no pretence to say that it would
have been admissible against the defendants. In the converse case, it is equally
inadmissible for the defendants.
63
But it is now said that the evidence was in fact offered for the purpose of
rebutting or explaining certain statements made by one Ross Winans, a witness
called by the defendants, in his answers upon his cross-examination by the
plaintiff's counsel. Now, this purpose is not necessarily, or even naturally,
suggested by the purpose avowed in the record. Upon his cross-examination,
Winans stated: 'I understood there were arrangements made with the Baltimore
Company. I heard the Company paid five thousand dollars.' Now, certainly
these statements, if objected to by the defendants, would have been
inadmissible upon two distinct grounds. 1. First, as mere hearsay; 2. And,
secondly, upon the broader principle, now well established, although
sometimes lost sight of in our loose practice at trials, that a party has no right to
cross-examine any witness except as to facts and circumstances connected with
the matters stated in his direct examination. If he wishes to examine him to
other matters, he must do so by making the witness his own, and calling him, as
such, in the subsequent progress of the cause. The question then is presented,
whether a party can, by his own omission to take an objection to the admission
of improper evidence brought out on a cross-examination, found a right to
introduce testimony in chief to rebut it or explain it. If upon the crossexamination, Winans' answer had been such as was unfavourable to the
plaintiff, upon the collateral matters thus asked, which were not founded in the
issue, he would have been bound by it, and not permitted to introduce evidence
to contradict it. There is great difficulty in saying that the defendants ought to
be in a more favoured predicament, and to acquire rights founded upon the like
evidence to which they did not choose to make any objection, although
otherwise it could not have been in the cause. But waiving this consideration,
the grounds on which we think the refusal of the Court was right, are; first, that
it was not distinctly propounded to the Court, that the evidence was offered to
rebut or explain Winans' testimony; and, secondly, that in the form in which it
was put, it proposed to separate the written contract of compromise from the
conversations and negotiations which led to it, and to introduce the latter
without the former, although it might turn out that the written paper might most
materially affect or control the presumptions deducible from those
conversations, and negotiations. We think, that upon the settled principles of
law, parol evidence bearing upon written contracts and papers, ought not to be
admitted without the production of such written contracts or papers, so as to
enable both the Court and the jury to see whether or not the admission of the
parol evidence in any manner will trench upon the rule, that parol evidence is
not admissible to vary or contradict written contracts or papers.
64
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 contrivance, before that date. The
objection is, that, upon general principles, the declarations and conversations of
a plaintiff, are not admissible evidence in favour 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 conflict with acts in his own favour, as a part of the res gestae.
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 declarations 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 1 Phillips on Evidence, ch. 12, sec. 1, p.
200-202, eighth 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 be embodied in any visible form, machine, or composition of matter. It
might take a year to construct a steamboat, after the inventor had completely
mastered all the details of his invention, and had fully explained them to all the
various artisans whom he might employ to construct the different parts of the
machinery. 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 a part 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.
65
The next and last exception is, to the rejection of the evidence of Dr. Jones,
who was offered to prove that there were material differences between the
patent of 1831, and the renewed patent of 1835, and to explain these
differences. No doubt can be entertained that the testimony thus offered was, or
might be, most material to the merits of the defence. And the question is not as
to the competency or relevancy of the evidence, but as to the propriety of its
being admitted at the time when it was offered. It appears that the testimony
was not offered by the defendants, or stated by them as a matter of defence, in
the stage of the cause when it is usually introduced according to the practice of
the Court. It was offered after the defendants' counsel had stated in open Court,
that they had closed their evidence, and after the plaintiff, in consequence of
that declaration, had discharged his own witnesses. The question, then, is,
whether it was at that time admissible on the part of the defendants as a matter
of right; or whether its admission was a matter resting in the sound discretion of
the Court. If the latter, then it is manifest that the rejection of it cannot be
assigned as error.
66
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, in 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, to
prevent the most mischievous consequences in the administration of justice to
suitors; and we think that the Circuit Courts possess this discretion in 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.
67
Upon the whole, we are of opinion, that the judgment of the Circuit Court
ought to be affirmed with costs.
