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Law School Case Brief

O'Reilly v. Morse - 56 U.S. (15 How.) 62 (1854)

Rule:

Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then 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.

Facts:

This patent infringement action was brought by appellees, one of whom was the alleged original inventor of the electro-magnetic telegraph, Samuel Morse. The circuit court ruled in favor of appellees after finding that appellants had produced and were operating a similar telegraph machine that infringed on appellee inventor's patent. The circuit court issued an injunction against appellants' further use of the telegraph. On appeal, appellants argued that appellee inventor was not the original and first inventor of the telegraph described in his patents, and further claimed that his patents were void. There were several issues in the case, e.g. whether Morse was indeed first to invent the telegraph, the issue of lasting importance concerned Morse's eighth claim, which was directed to a method of communicating intelligible information to any distance:” Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.”

Issue:

Was Morse’s Claim No. 8 on the telegraph patentable?

Answer:

No

Conclusion:

Morse claimed the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance. If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current xxx. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in its operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of Morse. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent, he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery upon the records of the patent office. The United States Supreme Court noted that Morse's claim was to an exclusive right to use a manner and process which Morse had not described and indeed had not yet invented. The Supreme Court held that the claim is too broad and not warranted by law.

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