Evans v. Jordan and Morehead

• Decision Date: 02 March 1815
• Citation: 13 U.S. 199,9 Cranch 199,3 L.Ed. 704
• Parties: EVANS v. JORDAN AND MOREHEAD
• Court: U.S. Supreme Court

13 U.S. 199

9 Cranch 199

3 L.Ed. 704

EVANS v. JORDAN AND MOREHEAD.

March 2, 1815

Absent. TODD, J.

This was a case certified from the Circuit Court for the district of Virginia, in which the judges were divided in opinion upon the question, whether after the expiration of the original patent granted to Oliver Evans, a general right to use his discovery, was not so vested in the public as to require and justify such a construction of the act passed in January, 1808, entitled 'an act for the relief of Oliver Evans' as to exempt from either single or treble damages, the use, subsequent to the passage of the said act, of the machinery therein mentioned, which was erected subsequent to the expiration of the original patent and previous to the passage of the said act. The act (vol. 9, p. 20.) authorizes the secretary of state to issue letters patent to Oliver Evans in the manner and form prescribed by the general patent law, granting to him for the term of 14 years the exclusive right of making, using, and vending for use the machinery in question, 'provided, that no person who may have heretofore paid the said Oliver Evans for license to use his said improvements, shall be obliged to renew the said license, or be subject to damages for not renewing the same; and provided also, that no person who shall have used the said improvements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages therefor.'

HARPER, for the Plaintiff.

The former patent of the Plaintiff having expired, congress, in consideration of the particular circumstances of his case, authorized a new patent to issue for another term of 14 years. Between the expiration of the old and the issuing of the new patent, the Defendants had erected and used and continued to use the Plaintiff's machinery in the manufacture of flour, contending that they were protected by the proviso of the act of January 21st, 1808.

We contend that the proviso does not authorize them to continue the use of the machinery after the issuing of the new patent, but merely protects them from damages for having used and for having erected for use the machinery in question, prior to the issuing of the new patent.

The second patent was intended to place Evans in the situation in which he would have been if the first patent had continued in force, except as to his right to damages for acts done in the intermediate time between the first and second patent. If the Defendants chose to continue to use the machinery after the new patent, they were bound to pay for the right to use it.

E. I. LEE, and P. B. KEY, contra.

If the construction contended for on the other side be correct, the proviso was wholly useless, because the Defendants needed no sach protection. Evans could have no claim against them for acts done after his patent had expired, and before the issuing of the new patent. The Defendants had a full and perfect right to erect and use the machinery. A law to oblige them now to abandon their property or to pay what Mr. Evans may chuse to exact, is in the nature of an expost facto law; and although it may not be absolutely unconstitutional, yet is so far within the spirit of the constitution, that this Court will not give such a construction to the proviso, if it can possibly be avoided. The proviso says that no person who shall have erected the machinery for use, shall be liable to damages therefor. The Defendants had erected the machinery for use, and are consequently not liable therefor. What can the proviso mean, unless to give those who are in the situation of the Defendants the right to use their own machines lawfully erected? The inventions had become public property; every one had a right to use them. Congress did not mean to take away that vested right from those who had availed themselves of it. To deprive a person of the use of his property is equivalent to depriving him of the property itself. Congress could not mean to do this. This Court will give the act such an equitable construction, as will give effect to the proviso.

HARPER, in reply.

The words of the proviso are clear and explicit, and admit not of construction. The legislature may have supposed that the new patent, which was intended to be a continuation of the old one, might have subjected those, who had already erected the machinery, to damages, and intended to guard against them. It is not certain that under the law, under which the patent issued, this would not have been the effect—but it is sufficient if the legislature supposed it would have been. We are not bound to show the motives of the legislature—if their words are clear and explicit, there is no room for construction. The acts which are protected by the proviso are acts done before the issuing the patent; the opposite counsel contend, that the legislature, when they said 'before,' meant after.

The proviso is too plan to bear an argument.

March 4th. Absent. TODD, J.

WASHINGTON, J. delivered the opinion of the Court as follows:- The question certified to this Court, by the Circuit Court for the district...