WASHINGTON, Circuit Justice.
The first question is, what is the discovery for which the plaintiff has obtained a patent? He contends that it is for the twisted auger, made, formed, and used, in the manner set forth in the specification. The defendant insists that it is confined to the twisted auger, and to no more. These cases are always embarrassing, because the originality of the patentee’s discovery is almost always in issue, which involves not only the construction of the patent, taken in connection with the specification, which forms a part of it, but also a comparison between the invention for which the patent is granted, and that which is asserted to have been made prior to it. Both of these difficulties occur in the present case. The patent recites, that the applicant had represented himself to be the inventor of a new and useful improvement in boring muskets, &c. by an auger called the “spiral groove,” or “twisted screw” auger. These expressions are perfectly equivocal, and may apply as well to an auger constructed for boring muskets, confining the improvement to the auger alone, or to that instrument, and the particular manner of using it, afterwards pointed out in the specification. This latter instrument describes the manner of making [389]*389the auger, its form, and how it may he used. But taken in connection with the patent, it does not necessarily follow that the manner of using the machine forms a part of the discovery; because, if the plaintiff was in fact the inventor of the auger only, and meant to claim no more, it was Sfill proper that he should, under the requisitions of the third section of the law, describe m his specification the manner of using the auger, with the principle and several modes in which the application of that principle was contemplated by the inventor. Whether the want of an affidavit will avoid the patent, or will In all cases confine the patent to the invention stated in it, as the defendant’s counsel have contended, are questions which need not be decided in this cause. But there can be no doubt, that where the construction of the patent and specification, as to the subject of the grant, is doubtful; the affidavit, if more precise, may be resorted to to explain the ambiguity. It. would seem to be particularly proper to do so for restraining general expressions in the specification; as the oath required to be taken by the act of congress is, that the inventor does verily believe that he is the true inventor of the art, machine or improvement for which he solicits a patent.
These observations are strikingly applicable to this patent, which, as explained by the specification, contains no specific assertion that the plaintiff was the inventor of the peculiar manner of using the auger as described in the latter instrument, and the affidavit confines the invention to the improved method of making augers or bits, for boring musket barrels, &c. “as above specified and deserib-ed.” These latter expressions obviously refer to the method of making augers for boring muskets, which is distinctly described in the specification, and not “to the manner of using the auger,” which, though described, has nothing to do with the method of making it. In the case of Evans v. Eaton [3 Wheat, (16 U. S.) 454] the supreme court construed the patent to amount to a grant to Evans, not only of an exclusive right to the entire improvement in the manufacture of flour, but to the improvement in the separate instruments employed in producing the- general result. But this construction was formed upon the supposed intention of the parties to the patent, drawn not only from certain expressions in the specification, and also in the affidavit, but from the private act of congress, passed for the relief of Oliver Evans. In the specification, the patentee, after describing the hopper boy, the particular machine in controversy, and the other four machines employed in the manufacture of flour, adds, that “he claims, as his invention, the peculiar properties or principles which this machine (the hopper boy) possesses, of spreading, turning, and gathering the meal at one operation;” and the affidavit states, “that he verily believes he is the true and original inventor of the improvements herein above spiecified, for which he solicits a patent.”
Upon the whole, we are of opinion that the plaintiff’s patent extends only to the auger described in the specification, and not to the method of using it.
2. The next question is, was the plaintiff the inventor of this instrument, as described in the specification? We have the authority of the plaintiff himself for saying that he made the discovery of that instrument in August, 1799; because, in his application to the state department on the 12th of that month, he so alleges the fact. It appears by a letter from Mr. *Ames, the manager of the Springfield works, dated in September, 1799, that he had just received from the plaintiff one of these augers, and in that letter he gives to the plaintiff the merit of the discovery. Three witnesses, one of whom is this Mr. Ames, have sworn, that this auger was introduced at the Springfield works by a Mr. Holmes, about six months prior to the period when a similar one was sent there-by the plaintiff. That it was much approved of, and that Holmes not only claimed but was considered at that place to be the inventor. If this evidence is believed by the jury, it is conclusive against the plaintiff. But if the jury should be of a different opinion, then, the next question will be, was the plaintiff entitled tó a patent for his improvement? Or, in other words, is the twisted auger, of which he claims to be the inventor, an improvement in the principle, or merely a change in the form and proportions of the auger used for boring gun barrels prior to August, 1799? That the auger, styled the “nut bit,” called M’Cormick’s, was in use previous to the year 1799 was acknowledged by the plaintiff in his application to the state department in January, 1799, and was the auger which the plaintiff then contemplated using. This fact is corroborated by the testimony of three witnesses, who state that M’Cormick’s auger was used at the Springfield works in 1797 and 1798, and was drawn, not pushed, through the barrel. Two other witnesses have stated that it was so used at M’Cormick’s works, in the summer or autumn of 1798, and a sixth witness declares that it was so used at a still earlier period at Brian’s works. On the other side, there are two witnesses who state that the method of drawing the auger through the barrel was not known or practised, until the discovery was made by the plaintiff. If the defendant’s witnesses are believed, then the plaintiff is deprived, not only of the merit of having invented the twisted screw auger, but the manner of using it, by drawing instead of forcing it through the barrel; and then nothing will remain to the plaintiff of all that he has stated in his specification, but the application of the endless screw to move the carriage on which the barrel is placed, instead of the long screw, or the lever, or [390]*390weights, which were used by M’Cormick. M’Cormick’s auger, or nut bit, as it is called, is made by filing out the grooves from a round solid piece of steel, having the cutters towards the shaft, and is drawn through the barrel. The twisted auger claimed by the plaintiff is made by twisting a plate of steel, so as to form the grooves, having the cutters next the shaft, and it is drawn through the barrel. That the twisted auger is a great improvement on the old method of boring gun barrels is undoubted; but'whether it is so of M’Oormick’s auger, you will judge from the evidence.
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WASHINGTON, Circuit Justice.
The first question is, what is the discovery for which the plaintiff has obtained a patent? He contends that it is for the twisted auger, made, formed, and used, in the manner set forth in the specification. The defendant insists that it is confined to the twisted auger, and to no more. These cases are always embarrassing, because the originality of the patentee’s discovery is almost always in issue, which involves not only the construction of the patent, taken in connection with the specification, which forms a part of it, but also a comparison between the invention for which the patent is granted, and that which is asserted to have been made prior to it. Both of these difficulties occur in the present case. The patent recites, that the applicant had represented himself to be the inventor of a new and useful improvement in boring muskets, &c. by an auger called the “spiral groove,” or “twisted screw” auger. These expressions are perfectly equivocal, and may apply as well to an auger constructed for boring muskets, confining the improvement to the auger alone, or to that instrument, and the particular manner of using it, afterwards pointed out in the specification. This latter instrument describes the manner of making [389]*389the auger, its form, and how it may he used. But taken in connection with the patent, it does not necessarily follow that the manner of using the machine forms a part of the discovery; because, if the plaintiff was in fact the inventor of the auger only, and meant to claim no more, it was Sfill proper that he should, under the requisitions of the third section of the law, describe m his specification the manner of using the auger, with the principle and several modes in which the application of that principle was contemplated by the inventor. Whether the want of an affidavit will avoid the patent, or will In all cases confine the patent to the invention stated in it, as the defendant’s counsel have contended, are questions which need not be decided in this cause. But there can be no doubt, that where the construction of the patent and specification, as to the subject of the grant, is doubtful; the affidavit, if more precise, may be resorted to to explain the ambiguity. It. would seem to be particularly proper to do so for restraining general expressions in the specification; as the oath required to be taken by the act of congress is, that the inventor does verily believe that he is the true inventor of the art, machine or improvement for which he solicits a patent.
These observations are strikingly applicable to this patent, which, as explained by the specification, contains no specific assertion that the plaintiff was the inventor of the peculiar manner of using the auger as described in the latter instrument, and the affidavit confines the invention to the improved method of making augers or bits, for boring musket barrels, &c. “as above specified and deserib-ed.” These latter expressions obviously refer to the method of making augers for boring muskets, which is distinctly described in the specification, and not “to the manner of using the auger,” which, though described, has nothing to do with the method of making it. In the case of Evans v. Eaton [3 Wheat, (16 U. S.) 454] the supreme court construed the patent to amount to a grant to Evans, not only of an exclusive right to the entire improvement in the manufacture of flour, but to the improvement in the separate instruments employed in producing the- general result. But this construction was formed upon the supposed intention of the parties to the patent, drawn not only from certain expressions in the specification, and also in the affidavit, but from the private act of congress, passed for the relief of Oliver Evans. In the specification, the patentee, after describing the hopper boy, the particular machine in controversy, and the other four machines employed in the manufacture of flour, adds, that “he claims, as his invention, the peculiar properties or principles which this machine (the hopper boy) possesses, of spreading, turning, and gathering the meal at one operation;” and the affidavit states, “that he verily believes he is the true and original inventor of the improvements herein above spiecified, for which he solicits a patent.”
Upon the whole, we are of opinion that the plaintiff’s patent extends only to the auger described in the specification, and not to the method of using it.
2. The next question is, was the plaintiff the inventor of this instrument, as described in the specification? We have the authority of the plaintiff himself for saying that he made the discovery of that instrument in August, 1799; because, in his application to the state department on the 12th of that month, he so alleges the fact. It appears by a letter from Mr. *Ames, the manager of the Springfield works, dated in September, 1799, that he had just received from the plaintiff one of these augers, and in that letter he gives to the plaintiff the merit of the discovery. Three witnesses, one of whom is this Mr. Ames, have sworn, that this auger was introduced at the Springfield works by a Mr. Holmes, about six months prior to the period when a similar one was sent there-by the plaintiff. That it was much approved of, and that Holmes not only claimed but was considered at that place to be the inventor. If this evidence is believed by the jury, it is conclusive against the plaintiff. But if the jury should be of a different opinion, then, the next question will be, was the plaintiff entitled tó a patent for his improvement? Or, in other words, is the twisted auger, of which he claims to be the inventor, an improvement in the principle, or merely a change in the form and proportions of the auger used for boring gun barrels prior to August, 1799? That the auger, styled the “nut bit,” called M’Cormick’s, was in use previous to the year 1799 was acknowledged by the plaintiff in his application to the state department in January, 1799, and was the auger which the plaintiff then contemplated using. This fact is corroborated by the testimony of three witnesses, who state that M’Cormick’s auger was used at the Springfield works in 1797 and 1798, and was drawn, not pushed, through the barrel. Two other witnesses have stated that it was so used at M’Cormick’s works, in the summer or autumn of 1798, and a sixth witness declares that it was so used at a still earlier period at Brian’s works. On the other side, there are two witnesses who state that the method of drawing the auger through the barrel was not known or practised, until the discovery was made by the plaintiff. If the defendant’s witnesses are believed, then the plaintiff is deprived, not only of the merit of having invented the twisted screw auger, but the manner of using it, by drawing instead of forcing it through the barrel; and then nothing will remain to the plaintiff of all that he has stated in his specification, but the application of the endless screw to move the carriage on which the barrel is placed, instead of the long screw, or the lever, or [390]*390weights, which were used by M’Cormick. M’Cormick’s auger, or nut bit, as it is called, is made by filing out the grooves from a round solid piece of steel, having the cutters towards the shaft, and is drawn through the barrel. The twisted auger claimed by the plaintiff is made by twisting a plate of steel, so as to form the grooves, having the cutters next the shaft, and it is drawn through the barrel. That the twisted auger is a great improvement on the old method of boring gun barrels is undoubted; but'whether it is so of M’Oormick’s auger, you will judge from the evidence. The question for your determination is, whether it is an improvement on tne principle of M’Cormick’s auger, or whether it is merely a change in the form, or pro-)K>rtions of that auger. If only the latter, then it was not such an improvement as the plaintiff was entitled to secure to himself by a patent.
The last question is, whether the defendant has invaded the plaintiff’s patent. This you must decide upon the evidence.
(The following questions upon evidence were decided upon the trial.
1. That where a deposition taken de bene esse is offered in evidence, the party offering it must prove that he had used due diligence to procure the attendance of the witness, and particularly that he had made inquires at the last place of abode of the witness, in order to have him served with a subpoena.
2. That it is no objection to reading the deposition ol‘ a witness who lives in another state, more than one hundred miles from the city, taken under a rule of this court, that he had been in Philadelphia during the sitting of this court, where it appeared that the fact of the witness being in the city was unknown to the party at whose instance the deposition was taken. Whether, if the party had known that the witness was in the city, the case would have been altered, was not decided.
3. That the letters of the plaintiff to the secretary of state of the 31st January and 12th August. 179!), containing applications for a patent, and specifications certified under the seal of that department, as papers remaining in that office, were propertly admissible in evidence. See 2 Bior. & D. Laws, 52.
4. That depositions taken without a commission, or rule of court, in the state of New York, more than one hundred miles from Philadelphia, but conforming in all respects to the thirtieth section of the judicial act of the 24th September, 17S9, might be read in evidence.
r>. That a deposition taken under +he thirtieth section of the judicial act cannot be read, unless the judge certifies that it was reduced to writing, either by himself, or by the witness in his presence.)