Goodyear v. Mathews

(charging ■jury). The first question .of law which occurs in this cause is, whether the defendant be liable for using the' plaintiff’s improve: ment, provided it shall appear that the invention was known or used previous to the application for the patent, if the plaintiff can show that he was actually the inventor anterior to such knowledge or use by others. This is a question of some difficulty, and one which will never be considered as satisfactorily settled, until it be decided- by the supreme court of the United States. But the circuit courts for the • districts of Pennsylvania and of New-York having decided the same question, this court prefers, in the present case, to adhere to those decisions. The opinion of the court then is, that if you are satisfied that moulds of the construction described in -the patent, were known and in use at the time of obtaining the patent, yet if at the sanie time you believe that the patentee was the inventor of these moulds, although -such invention may have been years previous to his application for a patent, he or his assignees are entitled to recover. If a patent be taken out for an entire machine, when the invention consists •only of an improvement on such machine, it is said by the defendant’s counsel that the whole patent is void. . This, gentlemen, is not the opinion of the court; 2 for although a patent be obtained for more than the improvement, the patentee is not entitled to more than his improvement, nor is he at liberty to make, use, or vend the original discovery, or to prosecute any person who shall use such-original discovery without engrafting on it the improvement invented by the patentee, especially in a case like the present, where the application was for a patent for the invention of a new and useful improvement in moulds for casting metal buttons.