Stimpson v. West Chester Railroad Company. that the following is a full and exact description of said invention or improvement, as invented or improved by me, namely:- I use or apply the common peripheries of the flanches of the wheels for the aforesaid purpose, in the following manner: I lay a flat rail, which, however, may be grooved, if preferred, at the commencement of the curvation, and in a position to be centrally under the flanches of the wheels upon the outer track of the circle, so that no other part of the wheels which run upon the outer circle of the track rails shall touch or bear upon the rails, but the peripheries of the flanches; they bearing the whole weight of the load and carriage, while the opposite wheels, which run upon the inner track of the circle, are to be run and bear upon their treads in the usual way, and their flanches run freely in a groove or channel; which treads are ordinarily about three inches in diameter less than the peripheries of the flanches. "Were the bearing surfaces of the wheels which are in contact with the rails while thus turning the curve to be connected by straight lines from every point, there would thus be formed the frustrums of two cones (if there be four wheels and two axles to the carriage), or if but one axle and two wheels then but one cone; which frustrums, or the weeels representing their extremities, will, if the wheels are thirty inches in diameter, and are coupled about three feet six inches apart, turn a curve of about sixty feet radius of the inner track rail. The difference in diameter between the flanches and treads before stated, the tracks of the usual width, and the wheels coupled as stated, would turn a curve of a somewhat smaller radius, if the axles were not confined to the carriage in a parallel position with each other; but this being generally deemed necessary, the wheels run upon lines of tangents, and these upon the inner track being as wide apart in the coupling as the outer ones, keep constantly inclining the carriage outwards, and thus cause the carriage to tend to run upon a larger circle than the difference in diameter of the treads and flanches would otherwise give; but the depth of the flanches and the couplings may be so varied as to turn any other radius of a circle desired. "What I claim as my invention or improvement is the application of the flanches on the wheels on one side of railroad carriages, and of the treads of the wheels on the other side, to turn curves upon railways, particularly such as turning the corners of streets, wharves, &c., in cities and elsewhere, operating upon the principle herein set forth. JAMES STIMPSON. "Witnesses, JAMES H. STIMPSON, GEORGE C. PENNIMAN." In October, 1840, Stimpson brought his action against the Stimpson v. West Chester Railroad Company. West Chester Railroad Company for a violation of this renewed patent, and laid the infringement to have taken place in 1839. In April, 1842, the case came on for trial. The plaintiff produced his patent, and gave evidence that the defendants had used upon their road several curves of this description. The defendants disputed the originality of the invention of the thing patented, under which head of defence much evidence was given; and also contended that the groove was not claimed in the first patent of 1831, and therefore was not included in the renewed patent of 1835. The evidence of Dr. Jones upon this last head being referred to by the court below, it is proper to insert that part of it. "Interrogatory fifth. What are the contents of the specification of the alleged improvement of August 23, 1831? What are your means of knowing what were their contents? If you know them, are they dissimilar or similar to those of the plaintiff's specification of September 26, 1835, a copy of which, marked A, is hereto annexed? If dissimilar, state in what particulars, and whether they are as to matters of form and substance, and particularly describe the difference, if any. Answer fully." "To the fifth interrogatory, I answer, that the plaintiff exhibited to me the specification in question, previously to his filing the same in the Patent Office; as he likewise did at the same time the specification of a patent for forming and using cast-iron plates or rails for railroad carriage-wheels to run upon,' which last patent is noticed on page 125, vol. 9, second series, of the Journal of the Franklin Institute. I then examined them cursorily, and expressed an opinion, that the improvements described in the two specifications might have been embraced in one, and that it would have been better to have pursued that course. The specification of the mode of turning short curves appeared to me incomplete; an essential feature of it being contained in that for forming and using cast-iron plates,' &c. The papers, however, remained as drawn up by Mr. Stimpson's legal adviser, and when the patents were subsequently surrendered in 1835, it was thought best to preserve the division into two; it was probably in fact necessary to pursue this course, as I am not aware of any precedent for uniting two patents into one, although one may be divided into two or more. "Nearly ten years have elapsed since I first saw the specifications upon which these patents were first issued, and nearly six years since I last read them; and my recollection of them extends to certain prominent points only. The claim under the patent for turning short curves, as given in vol. 9, p. 124, of my Journal is, I have no doubt, literally correct. There has been an omission in the printing of inverted commas ["] after the word 'turnabout,' In this specification it was proposed to make the extreme Stimpson v. West Chester Railroad Company. edges of the flanches flat, and of greater width than ordinary; this, however, did not enter into the claim, and it is not probable that I should have recollected the fact, had it not been noted in my Journal, or called up by some other collateral circumstance. The main defect, in my judgment, of the original specification, in the patent for turning short curves, was the omission of the mention of the groove in the inner rail. I believe, however, that it was alluded to in this specification, but the description of it was contained principally, if not wholly, in the specification of the patent for forming and using cast-iron on wrought plates,' &c., above noticed; as may be inferred from a reference to my Journal, vol. 9, p. 125, patent 39. "Cross Interrogatories. 1. Did you or did you not prepare the papers of the plaintiff when his patent for short curves was surrendered and renewed? What was the object of such surrender and renewal ? Was it or was it not that the claim of running over or across tracks at right angles might not continue any longer to be incorporated in the same patent with the claim for short curves, as it had been theretofore? "To the first cross interrogatory, I answer, that I did prepare the papers of the plaintiff when his patent for turning short curves was surrendered for reissue; that the object of such surrender and renewal was to limit and confine it to the turning short curves in streets, &c., by leaving out certain matters in it respecting the crossing of tracks or roads, and the passing over turnabouts; and to define the subject-matter of the patent more clearly, without its being necessary to refer to that simultaneously obtained for forming and using cast or wrought-iron plates,' &c." The bill of exceptions taken by the plaintiff was to the following part of the charge of the court to the jury, namely: "Having thus presented you with a view of the rules and principles of the common law applicable to the renewal of patents, as laid down by the Supreme Court, together with the provisions of the different acts of Congress on this subject, we will now state to you what is, in our opinion, their legal result. "To authorize the surrender of an old patent and issue of a new one, consistently with the provisions of the original patent law of 1793, and the decisions of the Supreme Court, independently of any act of Congress conferring such power, there are these requisites indispensable to the power arising. (1.) The original patent must be inoperative or invalid for the causes set forth in the act of 1832, the non-compliance with the third section of the act of 1793, for the want of a proper specification of the thing patented, through inadvertence, accident, or mistake, without any fraudulent or deceptive intention. This being the only case embraced in the law to which the authority conferred applies. (2.) 1, The defect in the specification, which makes it incompetent to secure the rights of the patentee, must have arisen from inadvertence, acci Stimpson v. West Chester Railroad Company. dent, or mistake, and 2, not from any fraud or misconduct. The reissue of the patent by the appropriate officer is presumptive evidence that the requisites of the law have been complied with, on the production of such evidence or proof otherwise as justified it; but the question of the validity of the new patent is a judicial one, depending on the fact of inadvertence or fraud, as you shall find it; and the opinion of the court on matters of law involved in the inquiry. 14 Peters, 458; 6 Peters, 243; 7 Peters, 321; Act of 1839 (5 Lit. & Brown's ed. 353). The reason why there must be an inquiry into both the inadvertence and fraud arises from the settled construction of the act of 1793, that where the defect is not owing to fraud, the defendant is entitled to a verdict and judgment in his favor, but not to a judgment that the patent is void for the defect, unless he shows that the defect was owing to fraud. 1 Bald. ; 6 Peters, 246. You must then be satisfied, affirmatively, that the defect of the patent arose from the inadvertence of the patentee, and negatively, that it did not arise from his fraud or misconduct, or, in the words of the acts of 1832 and 1836, without any fraudulent or deceptive intention.' The finding the fact of inadvertence may negative the fact of fraud, but in this, as in other cases, fraud may be inferred from gross inadvertence or negligence, such as may be the indication of a design to deceive the public. The defects in the old patent must be in the specification, when it does not comply with the requisites of the third section of the act of 1793, calling for a correct description of the thing patented (6 Peters, 247); a new one may be issued on compliance with those requisites, which are there prescribed. But the new patent must be confined to the thing patented by the old one, the thing invented or discovered, the same invention'; it cannot embrace another substantive and essential matter, which was not before patented; the thing, the invention, must be the same in both patents; the only object in the renewal being to cure a defect in the description, not to supply the omission of an essential part of the invention; the new patent cannot be broader than the old one. If the thing patented is the same in both patents, its public use did not, under the former laws, amount to an abandonment, or such an acquiescence as to affect the new patent on the ground of delay or negligence in the assertion of the right of the patentee, from the date of the old patent to its reissue. But when an essential part is omitted, and the patentee suffers it to remain unpatented till it has come into public use, before the new patent issues, it will be subject to the same rules which apply to an original patent, making it incompetent to protect the patentee in his claim to such part in virtue of the patent reissued, if it was not described in the one surrendered. The thirteenth section of the act of 1836 authorizes a new improvement, invented since the first patent, to be added in a renewed GG Stimpson v. West Chester Railroad Company. one; no law gives any authority to add an improvement, which had been invented by the patentee before the original grant; for it is not and cannot be any part of the description or specification of another distinct improvement. A patent for the combination of the parts of an old machine must show wherein such combination exists; what parts compose it; how they are combined in their action; if the description is defective, it may be corrected by a new one; the correction, however, must not extend beyond the combination of the parts first specified, as the introduction of other parts, not before specified, makes an entire new combination; consequently the thing patented becomes essentially different, being not the same invention, but a new one, made by a combination of a part not combined before, which might be a proper subject of an original patent, yet would not be authorized in a renewed one. These are the tests which the law applies to the description of the thing patented, in order to ascertain whether, in the words of the act of 1832, the old patent was invalid or inoperative' by reason that the conditions of the former law not having been complied with, or, in the language of the Supreme Court, the patent is found to be incompetent to secure the reward which the law intended to confer on the patentee for his invention.' In such case, the patent may be surrendered for reissue, in order to correct the defects which invalidated the first, but the law expressly makes the new patent in all respects liable to the same matter of objection and defence' as the old one, and imposes on the patentee the obligation of compliance with the terms and conditions prescribed by the third section of the act of 1793.' This is done by showing, according to its requisitions, what was the invention, the thing patented, by a designation of the invention principally, made in fuller, clearer, and more exact terms than those used, so as to give it validity and effect, and secure the same invention, which is the only legitimate office of the renewed or reissued patent. A specification consists of two parts, description and claim; the descriptive part is the explanation of the improvement in all the particulars required by the law; the claim or summary, at the close of the description or specification, is the declaration of the patentee of what he claims as his invention, by which he is bound, so that he can claim nothing which is not included in the summary, and could disclaim nothing which was included in it till the passage of the act of 1837. But the summary may be referred to the description, and both will be liberally construed to ascertain what was claimed, and if the words will admit of it, both parts will be connected in order to carry into effect the true intention of the patentee, as it may appear on a judicial inspection of the whole specification. This makes it a question of law what is the thing patented, depending not on the actual or supposed intention of the patentee, but the conclusion of the law |