Horace Silsby, Washburn Race, Abel Downs, Henry Herrion, and Charles Thompson v. Elisha Foote

• Decision Date: 01 December 1852
• Citation: 55 U.S. 218,14 L.Ed. 391,14 L.Ed. 394,14 How. 218
• Parties: HORACE C. SILSBY, WASHBURN RACE, ABEL DOWNS, HENRY HERRION, AND CHARLES D. THOMPSON, v. ELISHA FOOTE
• Court: U.S. Supreme Court

55 U.S. 218

14 How. 218

14 L.Ed. 391

14 L.Ed. 394

HORACE C. SILSBY, WASHBURN RACE, ABEL DOWNS, HENRY

HERRION, AND CHARLES D. THOMPSON,

v. ELISHA FOOTE.

December Term, 1852

THIS case was brought up, by writ of error, from the Circuit Court of the United States for the Northern District of New York.

The facts are stated in the opinion of the court.

It was argued by Mr. Seward, for the plaintiffs in error, and by Mr. Foote, in proper person, for the defendant in error.

Mr. Justice CURTIS delivered the opinion of the court.

This is an action on the case for the violation of a patent-right granted to the defendant in error on the 26th day of May, 1842, for 'a new and useful improvement in regulating the draft of stoves.' On the trial in the Circuit Court for the Northern District of New York, the defendants took exceptions to the rulings of the District Judge, who presided at the trial, and have brought the case here by a writ of error.

The first exception shows the following facts: After the counsel for the plaintiff had begun his opening address to the jury, a juror became ill, applied to the court to be discharged, and was discharged from the panel on account of physical inability to sit on the residue of the trial. Thereupon the court ordered another juror to be drawn and sworn, and the panel being thus full, the trial proceeded, and the plaintiffs' counsel concluded his address. The plaintiff assented to this proceeding: the defendant objected, and excepted to the order of the court.

We think it was not erroneous for the presiding Judge to treat the physical inability of the juror as simply creating a vacancy on the panel, and proceeding to fill it in the usual way by

having a twelfth juror drawn and sworn. We understand it to have been the practice of the courts of the State of New York so to treat such a withdrawal of a juror, when the presiding Judge in his discretion has thought proper to do so, and under the act of July 20, 1840, (5 Stat. at Large, 394,) the Circuit Court might properly conform to that practice. Of course it must be confined to cases like the present, in which it is apparent the party objecting received no injury. The defendant cannot be supposed to have been prejudiced by the failure of the twelfth juror to hear a part of the opening argument for the plaintiff, no evidence having been given, and he did not make known to the court that he desired to attempt to exercise any right of challenge of the other eleven jurors, to which he might have been restored if any cause existed, and the panel had been treated as broken up. Rex v. Edwards, 4 Taunt. 309; Green v. Norville, 3 Hill, (S. C.) 262. In such a case we think it rested in the discretion of the court whether the withdrawal of a juror should be treated simply as occasioning a vacancy on a still existing panel, or as breaking up the panel altogether, and it being a matter of discretion, no error could be assigned upon it, even if there were reason to believe, what in this case there is not, that the discretion was not wisely exercised.

The next exception was to the refusal of the Judge to allow the defendant to put in evidence to the jury an indorsement on the original letters-patent. The plaintiff had previously offered in evidence a duly certified copy of the following disclaimer:

To the Commissioner of Patents, the petition of Elisha Foote, of Seneca Falls, in the county of Seneca, and State of New York, respectfully represents:

That your petitioner obtained letters-patent of the United States for an improvement in regulating the draught of stoves, which letters-patent are dated on the 26th day of May, 1842. That he has reason to believe that, through inadvertence and mistake, the claim made in the specification of said letters-patent, in the following words, to wit: 'What I claim as my invention and desire to secure by letters-patent, is the application of the expansive and contracting power of a metallic rod, by different degrees of heat, to open and close a damper which governs the admission of air into a stove, or other structure in which it may be used, by which a more perfect control over the heat is obtained than can be by a damper in the flue,' is too broad, including that of which your petitioner was not the first inventor.

Your petitioner, therefore, hereby enters his disclaimer to so much of said claim as extends the application of the expansive and contracting power of a metallic rod, by different degrees of

heat, to any other use or purpose than that of regulating the heat of a stove, in which such rod shall be acted upon directly by the heat of the stove or the fire which it contains; such disclaimer is to operate to the extent of the interest in said letters-patent vested in your petitioner, who has paid ten dollars into the treasury of the United States, agreeably to the act of Congress in that case made and provided.

ELISHA FOOTE.

Witnesses—Morris Newton, Edwin L. Baltink.

The defendants objected upon the ground that the instrument did not state 'the extent of his interest in such patent.' 5 Stat. at Large, 193, sec. 7. The court sustained the objection, and refused to permit the instrument to be read by the plaintiff as a disclaimer. At a subsequent stage of the trial the defendant offered to read to the jury a copy of this instrument indorsed on the original letters-patent, not as a disclaimer under the act of Congress above referred to, but as a confession by the plaintiff that he was not the original and first inventor of a part of the thing patented. The plaintiff objected, because the indorsement on the letters-patent was not in his handwriting, nor signed by him, and the defendants had already caused a duly certified copy of the same instrument to be rejected. The court sustained the objection.

We are of opinion the court erred in not allowing the plaintiff to put this instrument in evidence as a disclaimer, under the 7th section of the act of March 3, 1837. 5 Stat. at Large, 193. This section authorizes not only the patentee, but his executors, administrators, and assigns, whether of the whole or of a sectional interest in the patent, to make disclaimer, 'stating therein the extent of his interest in such patent.' This instrument states that the plaintiff was himself the patentee, and having thus shown a grant to himself of the whole interest, it is silent respecting a transfer of any part of it. The fair implication is that he still owns the whole; and this implication is sufficient without an express declaration that he had parted with no interest. It has been argued that the words 'such disclaimer is to operate to the extent of the interest vested in your petitioner,' imply that he had not the whole title. But the interest previously described as vested in him was the entire title as patentee, and this reference to that interest, accompanied by a declaration that the disclaimer was intended to operate upon it to its whole extent, strengthens, rather than weakens the implication that he owned the whole patent. This being so, it follows, that when the defendants offered to put a copy of the instrument in evidence, not as a disclaimer, but as a confession of the defendant, to prejudice his rights, it was properly rejected. It is true the rejection of the evidence was placed on a different

ground by the Judge below. But if the defendants...