Joseph Shaw v. Joseph Cooper

• Decision Date: 01 January 1833
• Citation: 7 Pet. 292,32 U.S. 292,8 L.Ed. 689
• Parties: JOSEPH SHAW, Plaintiff in error, v. JOSEPH COOPER
• Court: U.S. Supreme Court

32 U.S. 292

7 Pet. 292

8 L.Ed. 689

JOSEPH SHAW, Plaintiff in error, v. JOSEPH COOPER.

January Term, 1833

ERROR to the Circuit Court for the Southern District of New York. At the October term 1829, of the circuit court, the plaintiff in error, Joseph Shaw, instituted an action against the defendant, Joseph Cooper, for an alleged violation of a patent granted to him by the United States, dated the 7th of May 1829, for 'a new and useful improvement in guns and fire-arms, which improvement consisted in a priming-head and case applied to arms and fire-arms, for the purpose of priming and giving them fire, by the means or use of percussion, fulminating or detonating powder;' by which patent, the plaintiff alleged that there was granted to him, &c., for the term of fourteen years from the 19th of June 1822, the exclusive right to the said invention, and by virtue of which, he became entitled to the same, for the residue of the term unexpired on the 7th day of May 1829. The declaration averred, that the defendant had violated the patent-right of the plaintiff, on the 1st day of August 1829, and afterwards, between that day and the institution of the suit.

The defendant pleaded not guilty, and gave the following notice of the matters of defence. 'Please to take notice, that on the trial of the above cause, the above-named Joseph Cooper will, under the plea of the general issue aforesaid, insist upon, and give in evidence, that the pretended new and useful improvement in guns and fire-arms, mentioned and referred to in the several counts of the said Joshua Shaw's declaration, was not originally discovered or invented by the said Joshua Shaw; also, that the said pretended new and useful improvement, or the material or essential parts or portions thereof, or some or none of them, had been known and used in this country, viz., in the city of New York, and in the city of Philadelphia, and in sundry other places in the United States, and in England, and in France, and in other foreign countries, before the said Joshua Shaw's application for a patent, as set forth in his said declaration; and also, before the alleged invention or supposed discovery thereof by the said Joshua Shaw. And further, that the said alleged new and useful improvement, or the material or essential parts or portions thereof, or some or one of them, or the principle thereof, was the invention or discovery of a gunmaker, or of some other person, residing in England. And further, that the said patent was void, because, in and by the specification or description therein referred to, no distinction or discrimination is made between the parts and portions previously known and used as aforesaid, and any parts or portions of which the said Joshua Shaw may be the inventor or discoverer; the said Joseph Cooper, at the same time, protesting, that he, the said Joshua Shaw, has not been the inventor or discoverer of any part or portion of the said alleged improvement. And further, that the said patent is void, because the said specification or description does not describe the improvement of which the said Joshua Shaw claims to be the inventor or discoverer, in such full, clear and exact terms, as to distinguish the same from all other things before known, nor so as to enable a person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make and use the same. And further, that the said patent is void, because it was not granted, issued or obtained, according to law. And further, that the said patent is void, because it was surreptitiously obtained by the said Joshua Shaw.'

The cause was tried in January 1832, and a verdict and judgment given for the defendant. The plaintiff prosecuted this writ of error. The following bill of exceptions was tendered by the counsel for the plaintiff, and sealed by the court.

'The plaintiff, to maintain the issue on his part, gave in evidence the letters-patent of the United States of America, as set forth in the declaration of the said plaintiff, issued on the 7th day of May 1829; and also that the improvement for which the said letters-patent were granted, was invented or discovered by the said plaintiff, in the year 1813 or 1814, and that the defendant had sold instruments which were infringements of the said letters-patent. And thereupon, the said defendant, to maintain the said issue above joined on his part, then and there proved by the testimony of one witness, that he had used the said improvement in England, and had purchased a gun of the kind there, and had seen others use the said improvement, and had seen guns of the kind in the Duke of York's armory, in 1819; and also proved by the testimony of five other witnesses, that, in 1820 and 1821, they worked in England, at the business of making and repairing guns, and that the said improvement was generally used in England in those years, but that they never had seen guns of the kind prior to those years; and also proved, that, in 1821, it was known and used in France, and also that the said improvement was generally known and used in the United States of America, after the 19th day of June 1822. Whereupon, the said plaintiff, further to maintain the said issue on his part, then and there gave in evidence, that the said plaintiff, not being a worker in iron, in 1813 or 1814, employed his brother in England, under strict injunctions of secrecy, to execute or fabricate the said improvement, for the purpose of the said plaintiff's making experiments. And that the said plaintiff, afterwards, in 1817, left England, and came to reside in the United States of America; and that, after the departure of the said plaintiff from England, viz., in 1817 or 1818, his said brother divulged the said secret, for a certain reward, to an eminent gun-maker in London; that the plaintiff, on his arrival in this country, in 1817, disclosed his said improvement to a gunmaker, whom he consulted as to obtaining a patent for the same, and whom he wished to engage to join and assist him. That the plaintiff made said disclosures, under injunctions of secrecy, claiming the improvement as his own, and declaring that he should patent it. That the said plaintiff treated his invention as a secret, after his arrival in this country, often declaring that he should patent it; and that he assigned as a reason for delaying to patent it, that it was not so perfect as he wished to make it, before he introduced it into public use; and that he did make alterations in his invention, up to about the date of his patent, which some witnesses considered as improvements, and others did not. That, in this country, the said invention was never known or used, prior to the said 19th day of June 1822; that, on that day, letters-patent were issued to the said plaintiff, being then an alien, for his said invention; and that the said plaintiff immediately brought the said invention into public use under the said letters-patent. That afterwards, and after suits had been brought for violation of the said letters-patent, the said plaintiff was advised to surrender them, on account of the specification being defective, and that he did accordingly, on the 7th day of May 1829, surrender the same into the department of the secretary of state of the United States of America; and that, thereupon, the letters-patent first above mentioned were issued to the said plaintiff.

'And the said plaintiff also gave in evidence that, prior to the said 19th day of June 1822, the principal importers of guns from England, in New York and Philadelphia, at the latter of which cities the plaintiff resided, had never heard anything of the said invention, or that the same was known or used in England; and that no guns of the kind were imported into this country, until in the years 1824 or 1825. And that letters-patent were granted in England, on the 11th day of April 1807, to one Alexander J. Forsyth, for a method of discharging or giving fire to artillery, and all other fire-arms; which method he describes in his specification as consisting in 'the use or application, as a priming, in any mode, of some or one of those chemical compounds which are so easily inflammable as to be capable of taking fire and exploding, without any actual fire being applied thereto, and merely by a blow, or by any sudden or strong pressure of friction given or applied thereto, without extraordinary violence; that is to say, some one of the compounds of combustible matter, such as sulphur or sulphur and charcoal, with an oxmuriatic salt; for example, the salt formed of dephlogisticated marine acid and potash (or potasse), which salt is otherwise called oxmuriate of potash; or such of the fulminating metallic compounds as may be used with safety; for example, fulminating mercury, or of common gunpowder, mixed in due quantity with any of the above-mentioned substances, or with any oxmuriatic salt as aforesaid, or of suitable mixtures of any of the before-mentioned compounds;' and that the said letters-patent continued in force for the period of fourteen years from and after granting of the same. (It is understood that the patent and specification of Forsyth, may be at any time referred to on the argument, for correction or explanation of the bill of exceptions.) And thereupon, the defendant, further to maintain the said issue on his part, gave in evidence a certain letter from the plaintiff to the defendant, dated in December 1824, from which the foling is an extract, 'some time since, I stated, that I had employed counsel respecting regular prosecutions for any trespasses against my rights to the patent; I have at length obtained the opinions of Mr. Sergeant of this city, together with others eminent in law, and that is, that I ought (with a view to insure success) to visit England, and procure the affidavits of Manton and others, to whom I made my invention known, and also of the person whom I employed to make the lock, at...