1 Mason. 182; 1 Robb, Pat. Cas. 131
Circuit Court, D. Massachusetts. May Term.

This was an action on the case for the infringement of a patent right. March 23, 1813, Mr. Jacob Perkins obtained a patent for a new and useful invention in the construction of pumps, and afterwards assigned his interest therein to the plaintiff [Francis C. Lowell]. The defendant [Winslow Lewis], became the assignee of a similar patent, taken out in 1817, by a Mr. James Baker; and it was for the constructing and vending pumps under this second patent, that the action was brought. The principle object of both the inventions was, by dispensing with the box used in the common pumps, to obtain a larger waterway. To effect this, Perkins so constructed the valves of his pump, that they completely filled the area of the shaft, and fell upon its sides in the same manner, as by the old construction they did upon the box; thus leaving the whole of the area, excepting that occupied by the valves themselves, for a water-way. The valves were of a triangular shape, and adapted only to a pump of a square form. This pump seemed to be principally useful, when it was desirable to throw up large quantities of water in a short space of time, and a number of hands could be put to the working of it. The valves of Baker’s pump were fitted to a round shaft, and occupied, like the other, the whole of its area: but instead of resting upon the sides of the shaft, were supported by a brass rim, which prevented the friction against the sides of the shaft consequent upon the other construction, and to obviate which, Perkins, since obtaining his patent, had adopted a checkbolt. It appeared, that Baker’s invention required fewer hands to work it, and could be applied to the common house pump.

Mr. Webster and G. Sullivan, for defendant, contended, that the invention of Perkins was neither new or useful, and therefore, not entitled to a patent. That the specification was so loose and insufficient, as not to answer the requisites of the law in this particular, and the patent, therefore, void on that account: and further, that the invention of the defendant was substantially different from that of the plaintiff.

Mr. Gorham, for plaintiff, endeavored to show, that the improvement invented by Perkins was entirely new, and highly useful; and the specification sufficient to answer the requisites of the law, which only required, that it should be so particular, as that persons, acquainted with the construction of the same kind of machines, might be able to follow the description of it. And that, although differing in shape and some other unimportant particulars, it was, in principle, the same as that made and recorded by the defendant, under the patent of Baker.

A great number of witnesses were produced on both sides to sustain these positions.

STORY, Circuit Justice (charging jury). The present action is brought by the plaintiff for a supposed infringement of a patent-right, granted, in 1813, to Mr. Jacob Perkins (from whom the plaintiff claims by assignment) for a new and useful improvement in the construction of pumps. The defendant asserts, in the first place, that the invention is neither new or useful; and, in the next place, that the pumps used by him are not of the same construction as those of Mr. Perkins, but are of a new invention of a Mr. Baker, under whom the defendant claims by assignment. . . . If the plaintiff is entitled to recover, the patent act gives him treble the actual damages sustained by him; and the rule for damages is, in this case, to allow the plaintiff treble the amount of the profits actually received by the defendant, in consequence of his using the plaintiff’s invention. The jury are to find the single damages, and it is the proper duty of the court to treble them in awarding judgment. And let the damages be estimated as high, as they can be, consistently with the rule of law on this subject, if the plaintiff’s patent has been violated; that wrong doers may not reap the fruits of the labor and genius of other men.

To entitle the plaintiff to a verdict, he must establish, that his machine is a new and useful invention, and of these facts his patents is to be considered merely prima facie evidence of a very slight nature. He must, in the first place, establish it to be a useful invention; for the law will not allow the plaintiff to recover, if the invention be of a mischievous or injurious tendency. The defendant, however, has asserted a much more broad and sweeping doctrine; and one, which I feel myself called upon to negative in the most explicit manner. He contends, that it is necessary for the plaintiff to prove, that his invention is of general utility, so that in fact, for the ordinary purposes of life, it must supersede the pumps in common use. In short, that it must be, for the public, a better pump than the common pump; and that unless the plaintiff can establish this position, the law will not give him the benefit of a patent, even though in some peculiar cases his invention might be applied with advantage. I do not so understand the law. The patent act (Act Feb. 21, 1793, c. 11 [1 Stat. 319]) uses the phrase "useful invention" mere incidentally; it occurs only in the first section, and there it seems merely descriptive of the subject matter of the application, or of the conviction of the applicant. The language is, "when any person or persons shall allege, that he or they have invented any new and useful art, machine," &c., he or they may , on pursuing the directions of the act, obtain a patent. Neither the oath required by the second section, nor the special matter of defence allowed to be given in evidence by the sixth section of the act, contains any such qualification or reference to such general utility, to establish the validity of the patent. Nor is it alluded to in the tenth section as a cause, for which the patent may be vacated. To be sure, all the matters of defence or of objection to the patent are not enumerated in these sections. Whitemore v. Cutter (Case No. 17,600) [1 Robb. Pat. Cas. 28-33]2 But if such an one as that now contended for, had been intended, it is scarcely possible to account for its omission. In my judgment the argument is utterly without foundation. All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word "useful," therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention. But if the invention steers wide of these objections, whether it be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public. If it be not so extensively useful, it will silently sink into contempt and disregard. There is no pretence, that Mr. Perkins’ pump is a mischievous invention ; and if it has been used injuriously to the patentee by the defendant, it certainly does not lie in his mouth to contests its general utility. Indeed the defendant asserts, that Baker’s pump is useful in a very eminent degree, and, if it be substantially the same as Perkins’s, there is an end of the objection; if it be not substantially the same, then the plaintiff must fail in his action. So that, in either view, the abstract question seems hardly of any importance in this cause. . . .