[Union Bank of Georgetown v. Magruder.]

defendant (the defendant being before, and when the same became due, the administrator of the maker,) and the defendant, well knowing that the same had not been paid, afterwards, on the 15th of November, 1824, in consideration thereof, and in further consideration that the plaintiffs would not bring suit on the note against him as endorser, but would give time to him for the payment thereof (not saying for what time, or for a reasonable time,) the defendant promised that he would ultimately, and in a reasonable time, pay the same to the plaintiffs. Then follow the common money counts.

The bill of exceptions is in the following words:

"In the trial of this cause the plaintiffs, to support the issues on their part, offered a competent witness, Alexander Ray, who proved, that two or three days after the note fell due, he had a conversation with defendant, asked him if he could arrange the note; that if he did not, probably the officers of the bank would be blamed; he said no officer should lose any thing by him, and that there was some property on Cherry street, which witness understood that George Magruder in his lifetime owned: that he would repair it, and that it would become valuable. Mr. Thompson had had a previous conversation with him; the defendant had not been informed by me that the note was over due, and not demanded. Also James Thompson, who proved that as soon as it was discovered that the note was over, he and the cashier conversed about it; and about three or four days after it was over due, he determined to call on defendant, and request him to arrange it, and state the circumstances attend

*289] ing the note; that he then called on defendant, and found

him from home; left word he wanted him, and a day or two after defendant called at bank; he went aside with him, told him the circumstances attending the neglect in relation to the note, and requested him to take time and determine what he would do as to arranging the note; telling him that he did not wish defendant to say a word to him to commit himself, but to consider whether, if he did not arrange it, the bank might not do him a greater injury than the amount of the note: that some time after this conversation, he had another with defendant; that the defendant asked him, if the debt. was lost, whose loss would it be; would it fall on any of the officers of the bank? Witness replied that he did not know how that would be, that he could not answer that question; that the bank would, perhaps, look to the officers; and the defendant then said, no officer of the Union Bank should lose any thing by him that he afterwards had another conversation with defendant in Mr. Wharton's store; that defendant said "he meant to pay the note, but would take his own time for it; that he would not put himself in the power of the bank." He thinks this last conversation was about three or four months after the note fell due. That just before the suit was brought, the witness was desired by the president of the bank, to call on the defendant, and know what he meant to do with the note; that he did so, and that defendant then said, "I will pay that note now, 'he bank will take the house on Cherry street for what it cost me."

if

[Union Bank of Georgetown v. Magruder.]

Witness reported the answer to the president, who said the bank did not want the house, and shortly afterwards suit was brought. Plaintiffs further proved that the defendant, when the note fell due, and before, was administrator of the drawer of the note, George Magruder: who had died before the note fell due, and who, it is also admitted, was insolvent.

"Whereupon, the plaintiffs, on the aforegoing evidence, prayed the court to instruct the jury as follows:

"That if the jury believe the defendant held the above conversation as stated by the witnesses, such conversations amount to a waiver of the objection of the want of demand and notice; and the defendant is liable on the note, if the jury should believe that the defendant made the acknowledgements and declarations stated in the conversations in reference to the claim of the bank upon him as endorser of the note; which the court refused.

[*290

"And the plaintiffs then prayed the court to instruct the jury as follows:

"That if the jury believe, from the evidence aforesaid, that the defendant, after knowing of his discharge from liability as endorser of the said note, by the neglect to demand and give notice, said, that he meant to pay the note, but should take his own time for it, and would not put himself in the power of the bank, and that the bank forbore bringing suit, from the time of said conversation, about three or four months after the note fell due, until the date of the writ issued in this cause, then the plaintiffs are entitled to recover on the second count of the declaration, which also the court refused to give; to which refusal to give the said instructions, the plaintiffs excepted."

The question is, whether these instructions thus propounded were rightly refused by the court. And we are of opinion, that they were. The first requests the court to instruct the jury upon a mere matter of fact, deducible from the evidence; and which it was the proper province of the jury to decide. It asks the court to declare, that the conversations stated (sufficiently loose and indeterminate in themselves), amounted to a waiver of the objection of the want of demand and notice. Whether these did amount to such a waiver, was not matter of law, but of fact; and the sufficiency of the proof for this purpose was for the consideration of the jury.

The second instruction is open to the same objection. It calls upon the court to decide upon the sufficiency of the proof, to establish, that there was a forbearance by the plaintiffs to sue the defendant upon the note, and of the promise of the defendant in consideration of the forbearance, to pay the same. That was the very matter upon which the jury were to respond, as matter of fact. It is also open to the additional objection, that it asks the court to decide this point, not upon the whole evidence, but upon a single sentence of the conversations stated, without the slightest reference to the manner in which the meaning and effect of that sentence was, or might be, controlled by the other points of the conversations, or the attendant circumstances. In either view it was properly refused.

[*291

[Union Bank of Georgetown v. Magruder.]

The court have also been called upon to review their former decision in this case. (3 Peters' Rep. 87.) To this it might be a sufficient answer to say, that no case is made out upon the record, calling for such a review; and if it were, we are entirely satisfied with that decision.

The judgment of the circuit court is therefore affirmed, with costs.

This cause came on to be heard on the transcript of the record from the circuit court of the United States for the district of Columbia, holden in and for the county of Washington, and was argued by counsel on consideration whereof, it is ordered and adjudged by this court, that the judgment of the said circuit in this cause be, and the same is hereby affirmed with costs.

216

*JOSEPH SHAW, PLAINTIFF IN ERROR, V. JOSEPH COOPER.

Action for an alleged violation of a patent for an improvement in guns and

fire arms.

The letters patent were obtained in 1822; and in 1829, the patentee having sur-
rendered the same for an alleged defect in the specification, obtained another
patent. This second patent is to be considered as having relation to the ema-
nation of the patent of 1822; and not as having been issued on an original
application.

The holder of a defective patent may surrender it to the department of state, and
obtain a new one, which shall have relation to the emanation of the first.
The case of Grant and others v. Raymond, 6 Peters, 220, cited and affirmed.

A second patent granted on the surrender of a prior one being a continuation of
the first, the rights of a patentee must be ascertained by the law under which
the original application was made.

By the provisions of the act of congress of 17th April, 1800, citizens and aliens, as
to patent rights, are placed substantially upon the same ground. In either case,
if the invention was known or used by the public before it was patented, the
patent is void. In both cases, the right must be tested by the same rule.
What use by the public, before the application is made for a patent, shall make
void the right of a patentee.

From an examination of the various provisions of the acts of congress relative to
patents for useful inventions, it clearly appears that it was the intention of the
legislature, by a compliance with the requisites of the law, to vest the exclusive
right in the inventor only; and that, on condition that his invention was neither
known nor used by the public, before his application for a patent. If such use
or knowledge shall be proved to have existed prior to the application for the
patent, the act of 1793 declares the patent void; and the right of an alien is
vacated in the same manner, by proving a foreign use or knowledge of his
invention. That knowledge or use which would be fatal to the patent right of
a citizen, would be equally so to the right of an alien.
The knowledge or use spoken of in the act of congress of 1793, could have
referred to the public only; for the provision would be nugatory if it were
applied to the inventor himself. He must necessarily have a perfect knowledge
of the thing invented, and of its use, before he can describe it, as by law he is
required to do preparatory to the emanation of a patent.
There may be cases in which a knowledge of the invention may be surreptitiously
obtained and communicated to the public, that do not affect the right of the
inventor. Under such circumstances, no presumption can arise in favour of an
abandonment of the right to the public by the inventor: though an acquiescence
on his part will lay the foundation for such a presumption. It is un-
[*293
doubtedly just that every discoverer should realize the benefits resulting
from his discovery, for the period contemplated by law. But those can only be
reserved by a substantial compliance with every legal requisite. This exclusive
right does not rest alone on his discovery, but also upon the legal sanctions
which have been given to it, and the forms of law with which it has been clothed.
No matter by what means an invention may have been communicated to the
public before a patent is obtained, any acquiescence in the public use by the
inventor will be an abandonment of the right. If the right were asserted by
him who fraudulently obtained it, perhaps no lapse of time could give it validity.
But the public stand in an entirely different relation to the inventor. His right
would be secured by giving public notice that he was the inventor of the thing
used, and that he should apply for a patent.

The acquiescence of an inventor in the public use of his invention, can in no case
be presumed where he has no knowledge of such use. But this knowledge may
be presumed from the circumstances of the case. This will in general be a fact
for a jury and if the inventor do not, immediately after this notice, assert his
right, it is such evidence of acquiescence in the public use, as for ever after-
wards to prevent him from asserting it. After his right shall be perfected by a
patent, no presumption arises against it from a subsequent use by the public.

[Shaw v. Cooper.]

A strict construction of the act of congress, as it regards the public use of an invention before it is patented, is not only required by its letter and spirit, but also by sound policy.

The question of abandonment to the public, does not depend on the intention of the inventor. Whatever may be the intention, if he suffers his invention to go into public use, through any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent; nor will a patent obtained under such circumstances protect his right.

IN error to the circuit court of the United States for the southern district of New York.

At the October term, 1829, of the circuit court for the southern district of New York, 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 *294] June, 1822, the exclusive right to the said invention, and by virtue of which he became entitled to the same for the resi due 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