
    John D. Wright & Robert McCann, vs. John Wilson.
    
      Patent — Jurisdiction— Covenant — ■ Warranty.
    
    B. having a patent for certain improvements in looms, assigned to A. ■with warranty, that the invention was original, and made upon an entirely new principle in mechanics never before patented. In an action of covenant by A. against B. in which the breaches were assigned! in the terms of the warranty, held, that the Court had jurisdiction of the matter; that the patent was not conclusive that the invention was original and upon a new principle; and that A. upon proof of the breaches assigned, was entitled to recover.
    'BEFORE O’NEALL, J. AT ANDERSON, JULY, EXTRA TERM, 1857
    Tbe report of bis Honor, tbe presiding Judge, is as follows:
    “Tbe defendant bad, on tbe 29tb May, 1849, obtained a patent for certain improvements in looms from tbe United States, and on tbe 18tb of June, 1849, be sold tbe same for tbe state of Georgia, to tbe plaintiffs for four thousand five hundred dollars, which sum has since been paid by tbe plaintiff, John D. Wright. Tbe defendant’s deed of transfer contains tbe following warranty: ‘ I hereby warrant and insure unto the said J. D. Wright and Eobert McCann, that tbe aforesaid invention hereby assigned and set over, is original, and that no other loom has been patented in tbe United States upon tbe same principle, especially tbe side wheels which propel'tbe baton, producing two strokes of tbe baton in one revolution of tbe wheel, which I warrant to be an invention of my own, and made upon an entirely new principle in mechanics never before patented in tbe United States by which tbe loom is increased in speed with less power than any other Power Loom.’
    
      “ Tbe plaintiffs’ action is on tbis covenant. • The plaintiffs, in their declaration, assigned for breach, first, that the said invention was not original; second, that the side, wheels propelling the baton, so as to produce two strokes for one revolution, is no invention of the defendant, nor was it made upon an entirely new principles in mechanics never before patented in the United States, nor did it increase the speed of the loom with less power than any other power loom.
    “ The plaintiffs proved by W. P. N. ■ Fitzgerald, who was the examiner of patents when this patent was granted; that he examined the defendant’s invention, and thought there was no substantial novelty, though he made no decision, but referred it to the Commissioner, who granted the patent. He said the-side wheels or trammel are not new, but whether previously patented or not he did not know. Mr. Yan Patton proved that he is a machinist'; that he examined the defendant’s loom in the Patent Office. He said it was no improvement; that it will not' do more work than other Power Looms. The simpler such a loom the better. The eccentric wheel is no improvement; it was invented in Scotland in 1826 ; it is not adapted to water power. Mr. Simpson another machinist, saw the loom at Bivingsville, where the model was built; no such loom was put up at Bivingsville ; it had no advantage over the Power Loom. The side wheels he said, were an old invention. The defendant’s loom, he said, was no improvement. Mr. Hanes said the defendant’s loom was no improvement. Mr. Matt Fitzgerald said he preferred the looms now in use at Bivingsville to the defendants; he was head weaver. He saw Simpson and Wilson, the defendant try the loom; it did not work well; he did not regard it as an improvement. Mr. Edwin Beese was examined by commission, first for the plaintiffs, and by a separate commission afterwards - for the defendant. His two examinations seemed to me irreconcilable; both will be stated. For the plaintiffs, he proved that he and Durham purchased tbe patent for Alabama; that tbe defendant represented that a loom of full size would perform well witb steam or water power. Tbe witness said that it would not so perform, and tbe loom was of no account. Many of tbe defendant’s representations be said were false. Among other things, be (defendant) said there were thirty looms of bis invention in tbe Bivingsville Factory; that several hundred were sold; Gen. Whitner bad one in successful operation, Jesse Norris bad another. This ydtness orL his cross-examination, said that after be bad made alterations in tbe loom, be bad five made by Jenks & Son, and sold them at one hundred dollars each. The' loom, be said, would weave. Wm. T. Pearce contracted on 8th June, 1853, for tbe patent right for Tennessee; tbe defendant exhibited a model loom, and said it would operate as a band or Power Loom in a factory. Calvin & Johnson, be said, made one; at would not operate. • Tbe defendant’s representations, be said, were false. Tbos. J. Eadcliffe proved that Wilson’s patent is not an improvement ; will not answer tbe purpose. He has seen tbe loom made by Jenks & Co.; useless as a band loom: tbe looms are not used; tbe patent is of no account. Allen C. Jones proved that be bad purchased of Eeese & Durham a loom made under Wilson’s patent; it will not answer tbe purpose, and is of no value. John H. Lewis proved that be tried Wilson’s loom ; it was not valuable as a band loom; it was inferior to any other; could never make cloth. John C. Eairis proved that be bought a loom from Eeese & Durham; it would not work. It was proven by Mr. Prank Whitner that bis father, Gen. Whitner, never bad one of Wilson’s looms.
    “ Tbe plaintiffs here closed their case. Tbe defendant gave in evidence bis patent 29th May, 1849.
    “ Dr. H. E. Godman, for tbe defendant, proved, that be was at Laurens, sale-day in January, 1849, when Mr. Wilson exhibited bis loom. Wright, tbe plaintiff, was present. He claimed that Wilson had a loom a yard wide in operation. . He has seen Wright operating with the loom; it operated well; the loom was much sought after; Mr. Wright, he said, was no machinist. Joel Towers proved that he had seen one of Wilson’s looms; that which Borstell carried away; it operated very well. On his cross-examination, he said it was a model for weaving any narrow cloth. Elijah Webb, (the clerk,) proved that he saw the model exhibited by defendant; it was publicly exhibited, and the general belief was it would do well. Col. Martin, (the sheriff,) proved that he had seen three looms in operation,-the wooden and two others; the wooden one did very well; so the model; saw it weave five yards. He saw Borstell’s after he bought; it was full sized, and operated well. He said that McCann said, Wilson had complimented them with the smut machine; there was more' money in it than in the loom.’ Wright, after he went to Georgia, offered to sell the patent to him. In ’55 or ’56 he was authorized by his son who lived in Georgia to purchase from Wright, the plaintiff, the patent; he was authorized to give as much as the plaintiffs paid. On proposing to buy, Wright said it was in law, and he could not sell; he thinks he made no offer. He thinks his son saw the defendant; he had tried to sell the loom to him and his sons.' The defendant said, after exhibiting his model, he had engaged sixty or seventy looms at Columbia. He understood Whitner was in with him. There was no trick -on his part in the offer to buy. He thinks Wilson owed Whitner. — Bobert H. Hubbard proved that the loom which Borstell had was a yard loom; it .wove at the rate of ten yards to the hour, (five or ten minutes was the time of trial.) The defendant was present; any one could operate with it. Hr. Evans proved the satisfaction of a judgment recovered 25th September, 1854, on a note made by the plaintiffs in part payment of the purchase of the patent. It was satisfied 1st January, 1857, by the note of Wright and the Maxwells. This witness said he first saw the loom in Columbia; it performed very well. He also saw it in Borstell’s possession; be thought it performed well. John T. Sloan proved that he saw Borstell’s loom; it did well; it operated for only two or three minutes. Col. Jesse Norris proved that he was on the committee who examined the loom for the Parmer’s Society; it wove very fast. He said he never had one of the looms.
    “ The defendant then gave in evidence several letters of the plaintiff, Wright. In the letter of 22nd August, 1854, the plaintiff, Wright, speaks of the sale of his negro man about to take place under the defendant’s execution; he asks to have the sale stopped, and promises to pay the debt. The letter of the 18th January, 1851, prohibits the delivery of the model to McCann, his co-plaintiff. Then followed letters of the 21st January, 3d February; that of 17th September spoke of the smutter; then followed that of 22nd October, which requested the defendant to sell at Macon the patent right for four thousand dollars, or as much as he could get. The letter of 18th December asked for indulgence, and stated the loom to be a failure. On the 26th August, 1851, the plaintiff, Wright, again wrote to the defendant, complaining of levies, &c.
    “Edwin Beese examined for defendant, proved that he and Durham purchased the loom for Alabama; they had looms manufactured by Jenks & Son, and another. The looms performed well; they were .valuable, selling at one hundred and twenty-five dollars each. The boms were got up finer than the model. It is an useful invention, as a hand loom. It requires more gearing to be applied to machinery. The principle of the invention is old; the application is new. The loom would not run by water or steam power. Wilson told this witness he had seven hundred looms in operation in South Carolina. I. W. Taylor proved that he saw the loom in operation twice ; he saw that which Borstell had; it was large size; it operated faster than the old power loom; it was valuable. A. 0. Norris, Esq., proved that he saw the wooden loom; it wove rapidly. He gave Wilson an order for a loom, but never got it; a good many more ordered in the district. The loom made good cloth. Simpson, the witness, Mr. Norris proved, came to Anderson to set up a foundry, in connection with the loom. He has heard him say this loom could be connected with steam or water power.
    
      “ I was of opinion, and so instructed the jury, that the patent did not conclude the inquiry whether the supposed invention was new or not. The burden of showing that it was not new was on the plaintiffs, and if they had not' satisfactorily proved ¿hat, they could not recover.
    “I thought that the breaches of the covenant were sufficiently assigned, and if proved the plaintiffs might recover. But I thought they could not recover the whole sum paid; the patent had not been re-assigned, or offered to be; the plaintiffs could only recover such damages as the jury thought they might have sustained.
    The facts were submitted to the jury; and certainly the defendant has no right to complain in that particular. The jury found for the plaintiffs two thousand four hundred dollars; and although I would not have-so found, yet the matter was one for their decision properly, and I would not interfere with the verdict.”
    The defendant appealed, and now moved this Court in arrest of judgment, and failing in that, then for a new trial, on the grounds:
    
      In arrest of judgment.
    
    1. Because it is respectfully submitted that the question, whether an invention or new discovery is really such, and patentable, for which a patent has already issued from the Government of the United States, is not cognizable in the Courts of this State; and the fact that letters patent have issued, is conclusive that the subject of the patent is a discovery or invention, and patentable.
    
      2. Because tbe only alleged breaches of covenant averred in tbe declaration were, tbat tbe said invention assigned and set over by tbe defendant to tbe plaintiffs, was not original, but-on tbe contrary thereof, tbat other looms have been patented in tbe United States- upon tbe same principle ; tbat tbe side wheels which propel tbe baton, producing two strokes of tbe baton in one revolution of tbe wheel, is no invention of tbe defendant, was invented by others, nor was it made upon an entirely new principle in mechanics never before patented in tbe United States, nor did it increase tbe speed of tbe loom with less power than any other power loom; but on tbe contrary thereof, side wheels of a similar kind, and upon the same principle in mechanics, were patented in tbe United States, and which increased tbe speed of looms with as little or less power, than tbe side wheels of tbe loom so patented and ■ assigned, as aforesaid — which, even if they bad been proved, did not make a case within tbe jurisdiction of the Courts of this state.
    S. Because tbe only averment tbat possibly might have given tbe Court jurisdiction, to wit: tbat tbe discovery or invention was of no use and valueless, was not made in tbe declaration.
    4. Because the case stated in tbe declaration is wholly insufficient in law, even if it bad been proved, to support tbe judgment.
    
      For a new trial.
    
    1. Because for tbe reasons stated in tbe above grounds, tbe verdict of tbe jury was erroneous.
    2. Because tbe evidence offered was not relevant to tbe issue made, and did not establish any one of the allegations of tbe declaration.
    
      3. Because all tbat tbe defendant sold was a mere cbose in action, and all tbat be warranted was, tbat tbe United States bad granted to bim tbat cbose by issuing to bim letters patent.
    4. Because no evidence tbat could have been offered, upon tbe breaches assigned in tbe declaration would have entitled tbe plaintiffs to recover.
    ■5. Because tbe patent was sold by tbe defendant to tbe plaintiffs at tbe price of four thousand five hundred dollars, and tbe verdict of tbe jury, for two thousand four hundred dollars, negatives tbe assertion tbat tbe patent was of no value, and tbe proof of its usefulness and value was abundant.
    6. Because tbe plaintiffs, if they ever bad any right of action, waived it by their long - acquiescence in tbe contract of purchase, and making arrangements to procure indulgence, and promising to pay tbe debt, with interest annually.
    7. Because tbe verdict was not only without evidence, but contrary to law, and tbe charge of bis Honor.
    Sullivan, for appellant.
    Young, McGowan, contra.
   Tbe opinion of tbe Court was delivered by

O’Neall, J.

This action it must be remembered is on a covenant of warranty. Tbe breaches assigned are plainly within tbe terms and intent of tbe covenant, and I cannot perceive, when they are found to be true, bow we can entertain a motion for a non-suit. Tbe defendant’s warranty is shown to be false, and be must respond in damages. Tbe mistake of tbe defendant is in supposing, tbat bis patent concludes all investigation. Beyond all doubt if be was to sue for an infringement, tbe matters would be in issue, whether it was original, or a new application, or useful. If that be so cannot a party buying it show, that it was neither the one nor the other of these ? I do not entertain a doubt, that he can: and this is very plainly shown by the observations of the Court on the defendant’s fourth and fifth pleas, in Mullikin vs. Latchem, 7 Blackford, 136.

The question, whether the Court of Common Pleas has jurisdiction of such a case, is rather a startling one. The action is covenant, an old and familiar head of the Common Pleas jurisdiction. Because the .covenant happens to be of a patent, previously granted by the United States, is no reason why the Court cannot go on and ascertain whether the covenant has been broken. The United States in granting a patent do not conclude all persons by it: it is granted on an ex parte application, and if it turns out to be, as the applicant represents, then he will have by his patent the exclusive right, otherwise not. The jurisdiction of the United States Court over this class of cases, depends upon other circumstances than the fact, that the validity of a patent may be drawn in question.

The questions whether the breaches were sustained by the proof, were properly to be decided by the jury: and to the jury they were referred, with certainly a pretty clear indication of my opinion in favor of the defendant. But they thought proper to find otherwise, and I cannot say they were manifestly wrong.

The motion for a new trial is dismissed.

Wardlaw, Withers, Glover and MuNro, JJ., concurred.

Whither, J., did not hear the argument.

Motion dismissed.  