Smith v. Ely/Opinion of the Court

The plaintiff in error is the assignee, within a certain tract of country, of the two patents granted to Morse for his Electro-Mgnetic Telegraph, one in 1840, and the other in 1846, and both reissued in 1848. And this action was brought in the Circuit Court for the District of Ohio, for infringements of both of these patents, within the limits assigned to the plaintiff.

The defendants did not proceed in their defence in the manner authorized by the act of Congress, but pleaded the general issue, and seventeen special pleas. Upon some of these pleas issue was joined, and others were demurred to; and, upon the argument of the demurrers, the judges of the court were divided in opinion on the following questions, which they have certified for decision to this court.

'I. Upon the demurrer to the sixth and seventh pleas respectively whether the said letters-patent to the said Morse are void, for the reason that the same do not on their face respectively express that they are to run for fourteen years from the date of the patent issued to said Morse in the kingdom of France.

II. Whether, upon the demurrer to the eighth, ninth, and eighteenth pleas, said letters-patent to said Morse assume, as to the matter alleged in said eighteenth plea, to patent a principle, or a thing which is not an art, machine, manufacture, or composition of matter, or any improvement on any art, machine, manufacture, or composition of matter; and if so, whether, and to what extent, said letters-patent, or any part thereof, are void in consequence thereof, and also whether said pleas are bad, respectively, for the reason that they assume to answer certain material and substantial parts of the plaintiff's claim, without averring that there are no other material and substantial parts embraced in his claim, which can be distinguished from the other parts averred to be so claimed without right, and on which he would be entitled to recover.

III. Whether, upon the demurrers to the fourteenth and fifteenth pleas, said patent, issued April 11th, 1846, and reissued June 13th, 1848, is void; and if so, to what extent; for the reason that it embraces as a material and substantial part thereof, a material and substantial part of a former patent issued to said Morse.

IV. Whether, upon the demurrers to the eighth, ninth, fourteenth, and fifteenth pleas, said letters-patent issued to said Morse are void, for the reason, as averred in said pleas, that he was not the original and first inventor, of the several matters in said pleas respectively set forth; but the same had been, prior to said invention by said Morse, known and used in a foreign country.'

The questions certified, so far as they affect the merits of the case, have all been substantially decided in the case of Morse and others v. O'Reilly and others, at the present term. But several questions are presented by the certificate upon the construction of the pleas and the extent of the admissions made by the demurrers, and the legal effect of such admissions upon the plaintiff's right of action.

In relation to the questions which go to the merits, as they have been already fully heard and decided in the case abovementioned, they are not open for argument in this case; and it would be a useless and fruitless consumption of time to hear an argument upon the technical questions alone. For, however the points of special pleading might be ruled by this court, they could have no material influence on the ultimate decision of the case: because, if it is found that errors in pleading have been committed by either party, injurious to his rights, an opportunity ought and would certainly be afforded him to correct them in some subsequent proceeding, so as to bring the real points in controversy fairly before the court.

For these reasons, the motion of the counsel for the defendants for leave to argue the points certified, is overruled, and the case, remanded to the Circuit Court.

Under such circumstances, we deem it proper to remand the case, without argument, to the Circuit Court for the District of Ohio, where either party may amend his pleadings, and where the defendants, if they can distinguish their case from that above mentioned, will have an opportunity of being heard.

This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Ohio, and on the points or questions on which the judges of the said Circuit Court were opposed in opinion, and which were certified to this court for its opinion, agreeably to the acts of Congress in such case made and provided, and it appearing to this court that the said questions, so far as they affect the merits of the case, have been substantially decided by this court at this term, in the case of O'Reilly et al. v. Morse et al., it is thereupon now here ordered and adjudged by this court, that this cause, without argument, be, and the same is hereby, remanded to the said Circuit Court, with directions to permit either party to amend his pleadings, and also to allow the defendants an opportunity to distinguish their case, if they can, from that above referred to.