Whitney v. Carter

U.S. Circuit Court for the District of Oregon

Whitney v. Carter

29 F. Cas. 1070

CourtU.S. Circuit Court for the District of Oregon

DecidedJuly 1, 1810

StatusPublished

This text of 29 F. Cas. 1070 (Whitney v. Carter) is published on Counsel Stack Legal Research, covering U.S. Circuit Court for the District of Oregon primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook

Whitney v. Carter, 29 F. Cas. 1070 (circtdor 1810).

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Opinion

The second point was principally relied on, to wit, that the principle of Mr. Whitney’s machine is distinct from that produced by the defendant, and new in its origin. It consists of teeth, or sharp metallic points, of a particular form and shape, and its application is to separate cotton from the seed; whereas, the principle of that model exhibited by the defendant, and of every other machine before invented, and used for the same or a similar purpose, consists of two small rollers, made of wood or iron. In illustration of this point, the plaintiff’s counsel cited the following extracts from the opinion of the court, delivered by Judge Johnson, in 'December term, 1807, in the case of Whitney and others v. Fort,¹ upon a bill of injunction.

“To support the originality of the invention, the complainants have produced a variety of depositions of witnesses, examined under commission, whose examinations expressly prove the origin, progress, and completion of the machine by Whitney, one of the co-partners. Persons who were made privy to his first discovery testify to the several experiments which he made in their pres-[1072]*1072enee, before he ventured to expose his invention to the scrutiny of the public eye. But it is not necessary to resort to such testimony to maintain this point. The jealousy of the artist to maintain that reputation which his ingenuity has justly acquired urged him to take unnecessary pains on this subject. There are circumstances within the knowledge of all mankind, which prove the originality of this invention more satisfactorily to the mind than the direct testimony of a host of witnesses. The cotton plant has furnished clothing to mankind before the age of Herodotus. The green seed is a species much more productive than the black, and by nature adapted to a much greater variety of climate; but by reason of the strong adherence of the fibre to the seed, without the aid of some powerful machine for separating it than any formerly known among us, the cultivation of it could never have been made an object. The machine, of which Mr. Whitney claims the invention, so facilitates the preparation of this species for use, that the cultivation of it has suddenly become an object of infinitely greater importance than that of the other species ever can be. Is it then to be imagined that if this machine had been before discovered, the use of it would ever have been lost, or could have been confined to any tract of country left unexplored by commercial enterprise? But it is unnecessary to remark further on this subject.. A number of years have elapsed since Mr. Whitney took out a patent, and no one has produced, or pretended to prove the existence of, a machine of similar construction or use.'”

With regard to the utility of this discovery, the court would deem it a waste of time to dwell long on this topic. Is there a man who hears us who has not experienced its utility? The whole interior of the Southern states was languishing, and its inhabitants emigrating, for want of some objects to engage their attention, and employ their industry, when the invention of this machine at once opened views to them which set the whole country in active motion. From childhood to age, it has presented us a lucrative employment. Individuals who were depressed with poverty, and sunk in idleness, have suddenly risen to wealth and respectability. Our debts have been paid off, our capitals increased, and our lands have trebled in value. We cannot express the weight of obligation which the country owes to this invention; the extent of it cannot now be seen. Some faint presentiment may be formed from the reflection that cotton is rapidly supplanting wool, flax, silk, and even furs, in manufactures, and may one day profitably supply the want of specie in our East-India trade. Our sister states also participate in the benefits of this invention: for, besides affording the raw materials for their manufac-tories. the bulkiness and quality of the arti-ele afford a valuable employment for their shipping.

The second objection relied on by the defendant was “that the specification does not. contain the whole truth respecting the discovery.” To this it was answered that by the-testimony it appears Mr. Whitney, in the original construction of his machine, contemplated each mode of making the teeth, and doubted which mode was best adapted to the purpose. If the alteration, which forms the basis of' this objection, has the merit of an improvement. how far does it extend? An improvement, not in the principle, nor in the operation of the machine, but in making one of its component parts, merely in forming the same thing to produce the same effect by means somewhat different. In the case above cited, Judge Johnson remarked on this point as follows: “A Mr. Holmes has cut teeth in plates of iron, and passed them over the cylinder. This is-certainly a meritorious improvement in the mechanical process of constructing this machine. But at last, what does it amount to, except a more convenient mode of making the same thing? Every characteristic of Mr. Whitney's machine is preserved. The counsel for Whitney admitted that an improvement in a particular part of the machine would entitle the inventor to a patent for that specific-part, but not for the whole machine, as in the case of Boulton v. Bull [2 H. Bl. 463], where a patent was granted for an invention to lessen the quantity of fuel in the use of a certain steam engine.” It was decided “that the patent was valid for the improvement, but that it gave no title to the machine itself.”

It was also stated that by experiments made on the plaintiff’s model, in the face of the court and jury, and by testimony produced, it was apparent no improvement had resulted from this alteration; that no beneficial change, or amendment in the principle had taken place; nor had the effect been aided or facilitated. In the charge of the court to the jury. Judge Stevens remarked that the case cited, Whitney and others v. Fort, was decided without any evidence on the part of the defendant; that, from the testimony now produced, his opinion is that the plaintiff must have received his first impressions from a machine previously in use on a similar principle; and that an improvement had been made as to the teeth, by which the merit of Mr. Whitney's invention was diminished. For these reasons, Judge Stevens had some doubts whether the plaintiff ought to recover.- Judge Johnson remarked that, after hearing the evidence which had been relied on by the defendant, he remained content with the opinion which he had given in the case of Whitney against Fort; and that he was also as fully satisfied with the charge he was about to give as any he had delivered. That, as to the origin of this invention, the plaintiff's title remained un-impeached by any evidence which has been adduced in this cause. He agreed with the plaintiff's counsel that the legal title to a patent consists, not in a principle merely, but in an application of a principle, whether previ[1073]*1073ously in existence or not, to some new and useful purpose. And he was also of opinion that the principle of Mr. Whitney’s machine was entirely new, and that it originated with himself, and that it had no resemblaneé to that of the model exhibited by the defendant.

He considered the defendant’s second objection equally unsupported, and referred to the sixth section of the patent laws of the United States, by which it is required that the concealment alleged, in order to defeat the pat-entee’s recovery, must appear to have been made for the purpose of deceiving the public. That Mr.

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The second point was principally relied on, to wit, that the principle of Mr. Whitney’s machine is distinct from that produced by the defendant, and new in its origin. It consists of teeth, or sharp metallic points, of a particular form and shape, and its application is to separate cotton from the seed; whereas, the principle of that model exhibited by the defendant, and of every other machine before invented, and used for the same or a similar purpose, consists of two small rollers, made of wood or iron. In illustration of this point, the plaintiff’s counsel cited the following extracts from the opinion of the court, delivered by Judge Johnson, in 'December term, 1807, in the case of Whitney and others v. Fort,¹ upon a bill of injunction.

“To support the originality of the invention, the complainants have produced a variety of depositions of witnesses, examined under commission, whose examinations expressly prove the origin, progress, and completion of the machine by Whitney, one of the co-partners. Persons who were made privy to his first discovery testify to the several experiments which he made in their pres-[1072]*1072enee, before he ventured to expose his invention to the scrutiny of the public eye. But it is not necessary to resort to such testimony to maintain this point. The jealousy of the artist to maintain that reputation which his ingenuity has justly acquired urged him to take unnecessary pains on this subject. There are circumstances within the knowledge of all mankind, which prove the originality of this invention more satisfactorily to the mind than the direct testimony of a host of witnesses. The cotton plant has furnished clothing to mankind before the age of Herodotus. The green seed is a species much more productive than the black, and by nature adapted to a much greater variety of climate; but by reason of the strong adherence of the fibre to the seed, without the aid of some powerful machine for separating it than any formerly known among us, the cultivation of it could never have been made an object. The machine, of which Mr. Whitney claims the invention, so facilitates the preparation of this species for use, that the cultivation of it has suddenly become an object of infinitely greater importance than that of the other species ever can be. Is it then to be imagined that if this machine had been before discovered, the use of it would ever have been lost, or could have been confined to any tract of country left unexplored by commercial enterprise? But it is unnecessary to remark further on this subject.. A number of years have elapsed since Mr. Whitney took out a patent, and no one has produced, or pretended to prove the existence of, a machine of similar construction or use.'”

With regard to the utility of this discovery, the court would deem it a waste of time to dwell long on this topic. Is there a man who hears us who has not experienced its utility? The whole interior of the Southern states was languishing, and its inhabitants emigrating, for want of some objects to engage their attention, and employ their industry, when the invention of this machine at once opened views to them which set the whole country in active motion. From childhood to age, it has presented us a lucrative employment. Individuals who were depressed with poverty, and sunk in idleness, have suddenly risen to wealth and respectability. Our debts have been paid off, our capitals increased, and our lands have trebled in value. We cannot express the weight of obligation which the country owes to this invention; the extent of it cannot now be seen. Some faint presentiment may be formed from the reflection that cotton is rapidly supplanting wool, flax, silk, and even furs, in manufactures, and may one day profitably supply the want of specie in our East-India trade. Our sister states also participate in the benefits of this invention: for, besides affording the raw materials for their manufac-tories. the bulkiness and quality of the arti-ele afford a valuable employment for their shipping.

The second objection relied on by the defendant was “that the specification does not. contain the whole truth respecting the discovery.” To this it was answered that by the-testimony it appears Mr. Whitney, in the original construction of his machine, contemplated each mode of making the teeth, and doubted which mode was best adapted to the purpose. If the alteration, which forms the basis of' this objection, has the merit of an improvement. how far does it extend? An improvement, not in the principle, nor in the operation of the machine, but in making one of its component parts, merely in forming the same thing to produce the same effect by means somewhat different. In the case above cited, Judge Johnson remarked on this point as follows: “A Mr. Holmes has cut teeth in plates of iron, and passed them over the cylinder. This is-certainly a meritorious improvement in the mechanical process of constructing this machine. But at last, what does it amount to, except a more convenient mode of making the same thing? Every characteristic of Mr. Whitney's machine is preserved. The counsel for Whitney admitted that an improvement in a particular part of the machine would entitle the inventor to a patent for that specific-part, but not for the whole machine, as in the case of Boulton v. Bull [2 H. Bl. 463], where a patent was granted for an invention to lessen the quantity of fuel in the use of a certain steam engine.” It was decided “that the patent was valid for the improvement, but that it gave no title to the machine itself.”

It was also stated that by experiments made on the plaintiff’s model, in the face of the court and jury, and by testimony produced, it was apparent no improvement had resulted from this alteration; that no beneficial change, or amendment in the principle had taken place; nor had the effect been aided or facilitated. In the charge of the court to the jury. Judge Stevens remarked that the case cited, Whitney and others v. Fort, was decided without any evidence on the part of the defendant; that, from the testimony now produced, his opinion is that the plaintiff must have received his first impressions from a machine previously in use on a similar principle; and that an improvement had been made as to the teeth, by which the merit of Mr. Whitney's invention was diminished. For these reasons, Judge Stevens had some doubts whether the plaintiff ought to recover.- Judge Johnson remarked that, after hearing the evidence which had been relied on by the defendant, he remained content with the opinion which he had given in the case of Whitney against Fort; and that he was also as fully satisfied with the charge he was about to give as any he had delivered. That, as to the origin of this invention, the plaintiff's title remained un-impeached by any evidence which has been adduced in this cause. He agreed with the plaintiff's counsel that the legal title to a patent consists, not in a principle merely, but in an application of a principle, whether previ[1073]*1073ously in existence or not, to some new and useful purpose. And he was also of opinion that the principle of Mr. Whitney’s machine was entirely new, and that it originated with himself, and that it had no resemblaneé to that of the model exhibited by the defendant.

He considered the defendant’s second objection equally unsupported, and referred to the sixth section of the patent laws of the United States, by which it is required that the concealment alleged, in order to defeat the pat-entee’s recovery, must appear to have been made for the purpose of deceiving the public. That Mr. Whitney, in the original formation of this machine, could have no motive for such concealment, and that in making use of wire in preference to any other mode he appears to have acted according to the dictates of his judgment. The error related to a point not affecting the merits of his invention, or the validity of his patent. Verdict for the plaintiff. Damages $1,500.

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Bluebook (online)

29 F. Cas. 1070, Counsel Stack Legal Research, https://law.counselstack.com/opinion/whitney-v-carter-circtdor-1810.