The Philadelphia and Trenton Railroad Company, Plaintiffs In Error v. James Stimpson, Defendant In Error

• Decision Date: 01 January 1840
• Citation: 39 U.S. 448,10 L.Ed. 535,14 Pet. 448
• Parties: THE PHILADELPHIA AND TRENTON RAILROAD COMPANY, PLAINTIFFS IN ERROR, v. JAMES STIMPSON, DEFENDANT IN ERROR
• Court: U.S. Supreme Court

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

IN error from the Circuit Court of the United States for the Eastern District of Pennsylvania.

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.'

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.

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.

The patent granted by the United States to James Stimpson was as follows:

'The United States of America; to all to whom these letters patent shall come.

'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.'

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.

'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.'

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.'

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.

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.

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.

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.

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.

The case was argued by Mr. Coxe, and Mr. Southard, for the plaintiffs in error; and by Mr. J. R. Ingersoll, for the defendant.

Mr. Coxe and Mr. Southard, on the first exception.

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.

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.

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.

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.

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.

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?

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.

As to the fourth exception. It is admitted, that it was the...