348 HENRY AND THE TELEGRAPH. 



NOTE I. (From p. 319.) 



OVEKSTATEJIEXT OF MORSE'S INVEXTION. 



It was perhaps to have been expected that the owners of the Morse patents, know- 

 ing the influence which the unbiased opinions of Heniy (subpoenaed as an expert) un- 

 doubtedly exercised upon the minds and decisions of the justices before whom the 

 telegraph suits were brought for trial, should regard with much stronger feeling what 

 seemed to them adverse in his testimony, than what was really favorable to their inter- 

 ests. But that the sweeping assumptions advanced by the claimants were unwar- 

 rantable, has been distinctly affirmed by the highest judicial authority. 



Justice Woodbury, presiding at the United States Circuit Court (Massachusetts), in 

 his decision in 1850, in the case of " Smith vs. Downing and others," remarked of the 

 successive reissues of the original Morse patent, with exjiantling claims : '' In his last 

 renewal of 1848 there are introduced for the first time some changes of language, and 

 some tendencies in a part of them (as well as in some of the argmnents) to make the 

 claim broader, and as in the letter just quoted, to cover all applications of electro- 

 magnetism, if not of electricity, to convey intelligence, or to telegraph to a distance. 

 . . . As this broader claim goes far beyond what we have already seen was that 

 made in the caveat and in the first specification and in the original patent, as well as 

 in all the subsequent renewals ; as it conflicts with much of the language of this very 

 last renewal, looking only to a new method and a mere improvement on what existed 

 before ; and as he seems to disavow it in his own evidence ; and as on everything in 

 the case, it is at least questionable whether he could have intended to patent anything 

 except an improvement on what before existed, I do not think it just to place a broader 

 construction on his language than the whole subject-matter and description and nature 

 of the case seem to indicate as designed. . . . And I the more readily adopt this 

 course for his own protection, as such broader view might subject his patent to be 

 considered void, both for claiming too much, and for claiming also the invention of 

 a mere principle. It would be claiming too much, as it would cover the application 

 in every way — of electro-magnetism to telegraphs ; when this as will be seen here- 

 after by the history of this subject, and as is sworn to by a large number of highly in- 

 telligent experts, had been known publicly and for years before Morse's first attention 

 to the subject in 1832. Indeed he himself virtually admits the truth of this in his 

 testimony. Others no less than the persons cited, as well as the history of the pro- 

 gress on this subject, show that several had before Morse not only made this discovery, 

 but applied both electricity and electro-magnetism to the purpose of telegraphing. 

 But if by his ali)habet and record, he has been successful in making an improvement 

 in the use of electricity for that i)urpose, and wished to secure the new method of 

 doing it, ho was at liberty in point of law to make out a patent for that new mode ; but 

 for nothing more. He came into the world too late for truly claiming much as new. 

 A large galaxy of discoverers on this subject had preceded him." 



To a similar purport was the language of Chief Justice Taney of the Supreme Court 

 of the United States in his final decision in the case of "O'Reilly and others vs. Morse 

 and others ;" which however went so far as to condemn as untenable the substance 

 of the eighth claim introduced by Morse's reissued patent of 1848. The Chief Justice 

 said: "It is impossible to mismiderstand the extent of this claim. He claims the ex- 

 clusive right to every improvement, when the motive power is the electric or galvanic 

 current, and the result is the marking or printing intelligible characters signs or let- 

 ters at a distance. . . . The patent confers on him the exclusive right to use the 

 means he specifies to produce the result or effect he describes, — and nothing more. 

 . . . Indeed, if the eighth claim of the patentee can be maintained, there was no 

 necessity for any specification further than to say that he had discovered that by 

 using the motive power of electro-magnetism he could print intelligible characters at 

 a distance. We presume that it will be admitted on all hands, that no patent could 

 have issued on such a specification."* 



* Howard' s lleiwrts, vol. xv, pj). 112-119. 



