opposed to a private one? It need not be a general use by the community. It must be used, however, and used openly, so that the structure and modus operandi are apparent. But, gentlemen, one evidence of a public use is the manufacture of an article publicly and openly for sale; not universally, but still publicly, not by one person alone, and for his own private use; it is the manufacture of it publicly, it is the offering of it for sale publicly.

Now, if a machine had been offered for sale, or had been manufactured, or had been used by various persons publicly, two years before he applied, his patent would fail. You can easily see the reason for it. A man is not to lie by and let the public-several persons — use his invention, without objection. He is not to lie by and let persons manufacture the articles for sale, as if not to be patented; because he thus misleads them. He is not to lie by and let them be sold in that way in public stores. But, gentlemen, there must be a public use for two years, and a use, too, of the same machine in all essential particulars. Now, was there any use of such a machine before 1836, similar in substance as to the material parts and arrangements: its liquid state, the mode in which it was applied to the sides and to the doors, the thickness of it, and all that? Or, if you will fix upon some later period than 1836 for the commencement of his valid application, was any other machine in use two years before that later period? The law of 1839, in respect to two years, was passed after the first application. But I instruct you that the law of 1839 applies, on all trials since, to previous cases as well as to subsequent cases. The law has come in, and given two years use and sale, without being barred so as to cover experiments and trials of machines to improve them. What next are the previous public uses relied on? The only ones which have any bearing upon this question are the Conner and French safes, which have been already considered partially.

Was the use public in these cases, is one chief ingredient under this head. Was such a safe as Conner's used by the community? Was it actually sold in the stores? If there is evidence of it, you will refer to it.

But if one man alone kept it,-made it for himself, kept it in his counting-room or in his cellar, it would be for private use. Next, was Conner's substantially the same as this? On that enough has been heretofore suggested. And the French safes,-as to the use of them, you will judge how the evidence is: whether there was any evidence that they were used in this country, or made in this country, or sold in this country,--if they were like this in all essentials, is another question for you to decide.

The provision in the defence which I shall next advert to is, that if he allowed these safes to be on sale for two years before his first application, the patent is invalid. There is justice in that. He thus would virtually extend his term for the patent to run. But did Fitz

gerald give permission to any others than himself or his agents to use them, or were they on sale in the market before he made his first application? You will see. What is the evidence on that subject? If there be none, or none satisfactory, it cannot operate against this patent. There is one other circumstance in the defence, and that is, that this invention was described in books before the discovery of Fitzgerald. I think this must, by the act of Congress, be before the discovery," and not before the application. One of the acts of 1836 speaks of the description in books as being necessarily before the discovery, and the use or sale before the application. In the description in books, in express terms it says that it must be before the "discovery." If I am not wrong, there are books referring to Marr's patents, though that is clearly after this invention or discovery, and referring to the use of plaster as a non-conductor. But do they describe this invention of Fitzgerald's, in all its material combinations? If they do that, they are no bar to the validity of this invention.

And not to delay any further upon these things. I would say, finally, that if Fitzgerald, after all this,—if he succeeds and overcomes all this, yet if he, or they under him, abandon this invention to the public, from patriotism, generosity, or any other cause, then they should not trip up any person for using it afterwards; for a parent does not often abandon his own child. An inventor does not abandon the fruits

of his genius, except from some great cause. Was there any great cause which induced Fitzgerald or Wilder to abandon this? Have they acted as though they intended to hold on to it? Have they, in fact, held on to get the benefits of it; or have they utterly given it up, and abandoned it?

Something has been said on the opinions of the plaintiffs concerning the validity of their patent. I would state to you, as a question of law, that any admissions of facts made by the plaintiffs they are bound by, unless they were made under a mistake, unless the plaintiff shows that he was entrapped into a confession, or that he labored under some gross error concerning the facts. But opinions given with regard to the law by parties do not hold them in this way. Suppose a person thinks he is not entitled to a legacy; it makes no difference with the law. Many persons come here with great confidence about the legality or illegality of certain questions; it often turns out that they were very much mistaken. But when a party states a fact, and he does not show that he is under a mistake, we hold him to it; otherwise, the opposite party is deceived, or misled.

The final question on which I wish to say a few words is the question of damages. On the one side is the claim of your giving nominal damages, and on the other of giving full damages. And it is perfectly competent for you to give only nominal damages, if you think that the plaintiffs have not been injured any, or if you think that the plaintiffs have conducted in such a manner that the defendants have been misled.

On the other hand, gentlemen, if the defendants have not been misled, but meant to get the use of this safe without paying anything for it, it would be a circumstance for the jury to give full damages, but not vindictive damages. And I sometimes instruct a jury to give damages, not only to pay for the injury, but, beside the taxable costs of the suit, to remunerate the plaintiff for the extra counsel-fees and necessary incidental expenses in undertaking it. If the defendants are not inventors, and have not bought of inventors, it is one of those cases where larger damages ought to be given. But if they have been misled by the plaintiffs, it is a case for smaller damages.

In relation to the additional points which have been submitted, for instruction, by the defendants, it has been said that the claim in 1839 and 1843 does not extend to the degree of thickness which was laid down by me as embraced in the patent of 1843. On that point I would instruct you that he says, at the close, in these words: "I claim the application of plaster of Paris in the construction of all iron safes in the manner above described, or in any other manner substantially the same." What he says, "above described," as to the thickness, is this. It is of a 66 space between the inner and outer safe of about three inches, which space may be varied a little, but should be the same all round, and in every direction." I would instruct you, in point of law, that the reference is to that,- to three inches. I had supposed it was only two or two and a half inches; but it is still thicker. He describes it as liquid, too, and then says it may be in that or some other way. The words are these: "I then take plaster of Paris, or gypsum, and having boiled it, or baked it in an oven, and calcined it, and reduced it to a powder, I mix it with water till it is about the consistency of cream or thin paste, so fluid as that it may readily be poured into the space left as above to receive it." He does not merely say that he wishes to use it in this way. He describes the process which he actually performs as in the liquid one-as the doors, he says, "the inner and outer doors are prepared in the same way.' And, "where one door is used, it should be made in the same manner, leaving a like space between the inner and outer crust or face of the door; and, for a purpose, should be fitted to the chest or safe with great accuracy." Also, "the sides and openings of the doors are to be neatly finished, as in other chests."

like

The question of law is, that when he refers to the "manner above described;" he refers to the thickness: to the liquid paste, especially: and to the filling of the doors, as well as the rest of the chest.

As to the application of 1836, the request says that this claim was not in substance there. We must compare this application, and see. In 1836 he used water, but it was with a plaster, rather than a paste; and he says: "Within this is a coat of a peculiar plaster (to be hereinafter described), one inch and a half in thickness; next within this, is a lining of any kind of wood about three-fourths of an inch thick: next, another coating of the plaster two inches thick; the whole is then

lined with wood covered with sheet-iron, upon which the shelves and apartments are fixed. These various proportions may be varied to suit the size of the chest, and other circumstances; more or less of the plaster being used, according to the liability of the chest to be subjected to very great heat, in case of fire." He says that the thickness is a very important ingredient, and that it is important when the situation is such that the fire is likely to be a large one. Here is gypsum, and water with it, so as to form a plaster, and two inches thick in one place, and one and a half inches in another. It is also said, that if the specification describes this under Marr, it is sufficient, even if he had made, as he swears, no practical machine with plaster. In his testimony, he says twice, that he never did make one with plaster. If he describes gypsum, he must describe its use like this. But he says nothing of its being used as a plaster, or of its being poured in as a paste, and nothing of the thickness.

It is also said that, if Fitzgerald was three years before '36 in inaction, it would imply that he had thrown it up. But you will judge, from the evidence, whether in 1835, 1834 and 1833, he did not make direct experiments, and apply to persons for aid.

Another word as to Mathews. He did not use the word plaster at all, and says nothing of thickness. He speaks of "soap-stone, Roman cement, alum, or glue." I should hold them to be different from plaster, though they might be non-conductors; and that a patent for them did not cover one for plaster of Paris, to be used in the peculiar form and extent described by Fitzgerald.

You will retire, gentlemen, and settle the facts in dispute, and then apply them to the points in controversy, under the principles of law, as explained by the Court for your guide.

CHARGE IN THE CASE OF SAMUEL COLT vs. THE MASSACHUSETTS ARMS COMPANY.*

You have already understood, gentlemen of the jury, that the claim of the plaintiff against the defendants is founded upon a supposed violation by the defendants of the patent-right of the plaintiff. I trust you come to the consideration of this case with a due regard to the rights and privileges of both sides. They both claim under patents. They both have a right to have these patents protected, so far as they can be without conflicting with each other; and when they conflict with each other, the more recent, of course, is to give way to the elder, because the one who patents an invention first is entitled to the protection of the principle in it over everybody else that patents it afterwards. In the nature of things and common sense, this must be so. But that does not preclude and that is the source of the difficulty in this case any person subsequently from making an improvement on that patent, by way of addition to it, or making it better and more useful. But all that the person who does that—who makes an improvement can protect under his letters-patent, his subordinate patent, is that which is new, that which he has added; because if, by making an addition or improvement to an old patent, a party could get possession of the old patent itself, and use it without paying for it, no patent which was of any value would last a year, for such is the progress of science and of the arts, that some kind of improvement or other can be made upon everything. A party has a right to make an improvement, but all that he can patent is that which he improves, his own invention. He, therefore, must be careful, before using an addition, to get the license of the old patentee to use the old patent in combination with his improvement; otherwise, he must use his improvement alone, if he can, or, as he may often do with great

*This was an action before the Circuit Court for Massachusetts, brought by Samuel Colt, of Hartford, Conn., the inventor of the Repeating Fire Arms, usually known as "Revolvers," or "Six Shooters," against the Massachusetts Arms Company, located at Chicopee, Mass., for an infringement of his patent-right, by manufacturing arms in which were embodied several of the improvements already secured by letters-patent to him. The trial of this cause was very long, and many questions of law, of great importance, as regards the law of patents, as well as the questions of fact in the cause, are embodied in the charge. A full report of the cause was made for the plaintiff, and this charge was revised by his honor Judge Woodbury. The counsel for the plaintiff were G. T. Curtis, of Boston, E. Dickerson, of New Jersey, and Charles Levi Woodbury, of Boston; and for the defendants, R. Choate, of Boston, R. A. Chapman and Hon. George Ashmun, of Springfield, Mass.