Reutgen v. Kanowrs , 1 Wash. C. C. 168 ( 1804 )

"WASHINGTON. Circuit Justice

(charging jury). Your first inquiry is, whether the plaintiff was the original inventor of the machine mentioned in his patent and specification. One witness has stated, that he has seen imported bolts, since those made by the plaintiff, which seem to have been made with the same machine. Whether the invention is of European origin, and imported here by the plaintiff; or has, since the erection of his machine, been carried to Europe, is a question most proper for your determination. It is only necessary for me to state; that, if the invention was brought over, that is, if it appears that the plaintiff was not the original inventor, in reference to other parts of the world as well as America, he is not entitled to a patent. This point has been decided otherwise in England, in consequence of the expressions of the statute of Jac. I., which speaks, of new manufactures within the realm.

Your second inquiry is, have the defendants, or either of them, used a machine similar to the one mentioned in the plaintiff’s patent and specification. The specification states the parts to be, a strong platform, of a given form, with two upright posts, for a hammer to move in, and to be operated by a cog-wheel, connected with the handle of the hammer; the force; water, or any thing else; corresponding con-caves in the hammer and anvil. The machine used by the defendant, Graunt, is of that description; but in addition, swedges are used. The question is, is the defendant’s improvement of swedges, an improvement on the principle, or the form, or proportions of the plaintiff’s machine; if the first, he has as much right to use his improvement, as the plaintiff has to use his original invention. If otherwise, and the defendant has used the original invention, thus altered, it is a violation of the plaintiff’s right.

The next inquiry is closely connected with the last. Does the specification contain the whole truth, relative to the discovery; and if not, has it been concealed with a view to deceive? As to the materiality of the thing concealed, could an artist, after plaintiff’s right is expired, construct such a machine by looking at the specification? This also is a question for the jury.

I have hurried over these points, because it strikes the court,, that there remain to be considered, much more important objections to the plaintiff’s right to recover. It is in proof, (if the witnesses are credited by the jury,) that the machine used by the defendant Graunt, was erected on Kanowrs’ land, at his expense. That before it was done. Kanowrs. upon hearing the plan, suggested the improvement of swedges, which was adopted, and has since received the plaintiff’s approbation. That the plaintiff frequently acknowledged the joint right of the defendant, to the invention, as partnership property; and that the patent was to be taken in their joint names. If the jury are satisfied of these facts, and that the defendant did not relinquish his right to a joint interest in the patent right, then the plaintiff was guilty of a fraud, in obtaining it in his own name; he is in equity a trustee for the defendant; and though, possibly, at law, a verdict must be rendered for plaintiff, still, the jury may give merely nominal damages.

NOTE. If the contract of several, he joint, and either of the parties he sued, he may plead in abatement, that the others are not joined; nut he cannot take advantage of it at the trial; although it appear on the face of the declaration, that there are other parties to the contract. But. if one agree or bind himself to several, and one sue; the defendant may demur, upon oyer, of the contract; or in assumpsit, ho may take advantage of it on the trial. 2 H. Bl. 696; 1 Saund. 154, note 291. If. in trespass against two, they both plead jointly; a several verdict cannot be given against all, if all be found guilty. But, if they sever in their pleas, several damages may be assessed. The jury may find them severally guilty as to part, and not guilty as to part; but may assess damages severally. 1 Esp. 419, 420; Bull. N. P. 93; 2 Strange, 1140; 5 Burrows, 2790. In all cases of trespass, the jury may find one defendant guilty, and the other not guilty. 1 Esp. 322. But in contracts, if the action is against several, and it cannot be supported against all. it wholly fails. See 3 East, 62; 2 Evans, Poth. 67. If one of the joint contractors be an infant, the other two may be sued; and if they plead in abatement, the plaintiff may reply the infancy of that one. But if he sue all, and one plead his infancy; judgment must be given against the plaintiff. Id. This is stated in a note, but the authority is not given.

But there is another point still stronger. rl he law gives an action against any person who violates the right of the plaintiff, without his consent in writing. Now, this machine was erected on the defendant’s land, by the plaintiff, and at the defendant Kan-owrs’ expense. After this, the plaintiff took a lease of it for three years; thereby acknowledging the right of the defendant. Kanowrs, to this particular machine, and covenants to deliver it up to him at the end of the term, with every thing belonging to it, in as good order as he received it. That is, to deliver up, not the hammer, and anvil in its original form; but the whole tilt, with the improvements made on it by the plaintiff. Now, this covenant acknowledges the right of Kanowrs to this identical machine, and necessarily the right to use it. If he has granted the tilt to the defendant, he has, in law, granted the use of it; and consequently he cannot now say, that the defendant has used it without his license in writing. If he has a right to the machine, and to the use of it, he has a right to work it himself, or by his servants, or to lease it out to any other person.

As to the last point made by the defendant’s counsel; I am of opinion, that if the above points were in favour of the plaintiff, he might recover against Graunt, though no proof were given against Kanowrs. For all torts are joint, as well as several, and the plaintiff may recover a verdict against one, though the other defendant be acquitted; otherwise in contract.

Jury found for the defendant.'