however, in all cases, in order to constitute an | manner, that the policy was to be effected by insurable interest, that the insured shall in the Wheelers as owners, and to be assigned every instance have the absolute and unquali- after it was effected by them to Reed, as colfied property of the effects insured. A trustee, a mortgagee, a reversioner, a factor, an agent, with the custody of goods to be sold upon commission, may insure; but with this caution, that the nature of the property be distinctly specified." 2 Marsh. Insur. b. 4, ch. 2, p. 789. This language was quoted with approbation by this court in the case of The Columbia Insurance Company v. Lawrence, 2 Peters, 25, 49, and the reason for it is there given by the court. "Generally speaking," said the court, "insurances against fire are made in the confidence that the assured will use all the precautions to avoid the calamity insured against which would be suggested by his interest. The extent of his interest must always influence the underwriter in taking or rejecting the risk, and in estimating the premium. So far as it may influence him in these respects it ought to be communicated to him. Underwriters do not rely so much upon the principles as on the interest of the assured; and it would seem, therefore, to be always material that they should know how far this interest is engaged in guarding the property from loss. Now, since there is no pretense to say that the interest of Reed as 506*] mortgagee was disclosed to the company, or that the company agreed to insure his interest as mortgagee, and that only it would seem to follow that the policy cannot be construed to operate in the manner propounded by the instruction prayed by the plaintiff.

lateral security for his bond and mortgage; and it was only upon their neglect to procure such insurance and assign the policy that Reed was to be at liberty to do the same at their expense. The language of the instrument is: "I do hereby agree with Epenetus Reed, etc., that I will effect a policy of insurance upon the said property in the name of myself, or of myself and Henry M. Wheeler, for the sum [*507 of at least ten thousand dollars, and assign the same to him as collateral security to said bond and mortgage; and that I will annually renew the said policy, or effect a new one, and keep each assigned to him as security, etc., and the policy held by him as collateral security; and if I neglect so to insure and assign for the space of ten days, then that said Reed may do the same at my expense," etc. Now, language more direct than this can scarcely be imagined to express the intentions of the parties that the insurance was to be made in the name of the owners, upon their interest in the property, and for their account, and the policy to be assigned as collateral security to Reed. Not one word is said that the insurance was to be solely and exclusively for Reed as mortgagee; for in such a case he would hold the policy as a principal, and not as a collateral security. It is obvious from the language, also, that Reed was not to be the absolute owner of the policy, as he would be if made for him exclusively as mortgagee, but he was to hold it as collateral security. If, then, the debt of Reed should be paid or extinguished in the whole or in part, would not the right of the owners correspondently attach to the policy? If the whole debt was paid, would they not be entitled to a re-assignment thereof? Yet, unless in such a case the policy attached to the property for their own account and benefit, the re-assignment would be a mere nullity. To us it seems beyond all reasonable doubt that the policy under this agreement was designed by the parties to be on account of the owners and for their benefit, and that it was to be only collateral security to Reed to the extent of any interest he might have therein in case of loss by fire. In this view it operated as a security to the owners against the entire loss. In any other view, they would only change their creditors upon any loss from Reed to the underwriters.

In the next place, the policy itself upon its very terms admits of no such interpretation; and, indeed, requires a different interpretation to give due effect to those terms. The policy, as has been already stated, is in the name of the owners, and for their account, and on their property. If it was designed solely for Reed, why was he not named, and he alone named as the insured? How can any court be at liberty, without other explanatory words, to construe a policy made by A in his own name, on his property, to be, not a policy on his own interest, but on the interest of B who is a stranger to the policy? The language of Lord King, and Lord Hardwicke, and of this court, in the cases already cited, show conclusively that policies of this sort are not deemed in their nature incidents to the property insured, but that they are mere special agreements with the persons insuring against such loss or damage Besides, on point of fact, the policy must as they may sustain, and not the loss or dam- have its effect and operation from the time of age that any other person having an interest, as its execution, and not otherwise. The langrantee, or mortgagee, or creditor, or otherwise, guage of the policy is, "that the assured may may sustain, by reason of a subsequent destruc-assign this policy to Epenetus Reed," not that tion thereof by fire. It would seem, then, re- this policy shall now be for Epenetus Reed or pugnant to the terms of this policy to construe on his interest. The owners, then, had an opit to be not what it purports to be, an insur-tion whether to assign or not. If they never ance for the owner of the property, but an in-had assigned the policy to Reed at all, and a loss surance for an undisclosed creditor or mortgagee. had occurred, would not the loss have been It would materially change the language, the payable to the owners? In point of fact, the objects, and the obligations of the parties there-policy, although made on the 12th of [*508

to.

December, 1836, was not assigned to Reed unIn the next place, it would, in our judgment, til the 21st of January, 1837. In whom did the be inconsistent with the manifest intention, as interest then originally, and in the intermediate well of the insured as of Reed, to give it such time, vest, under the policy? Clearly in the an interpretation. The agreement between owners; for they and they only had any interSamuel G. Wheeler and Reed, of the 17th of est in the property or the policy until the asOctober, 1836, demonstrates, in the clearest signment was made. The authorities all hold

that the party insured must have an interest at a subsisting policy, treated by all parties as val. the time of the making of the policy, as well as id, and supposed by the underwriters to be so. at the time of the loss; and if Reed had no inter- The misrepresentation does not then seem to est upon which the policy would attach by its have been known to the American Insurance terms when the insurance was made, but ac- Company. It was an extrinsic fact; and if quired it afterwards, and the policy had been known to the American Insurance Company, made upon his sole account, it would have it certainly was not known to the Washington been a mere nullity. The subsequent renewals Insurance Company. How were the latter to were to the same effect, and for the same pur-arrive at any knowledge of the facts of misposes and parties as the original policy. Car- representation; and how were they to avail penter, after he became sole owner, did not as- themselves of the fact, if the American Insursign the policy to Reed until the 23d of May, ance Company should not choose to insist upʊn 1838, more than five months after the renewal, it? Nor is it immaterial in the present case, as and more than one month after the conveyance was suggested at the bar, that the present of the whole property to himself. Now, the plaintiff now seeks to avail himself of his own question may be here again asked, whether misrepresentation, or that of those under whom if the loss had occurred before these assign- he claims, to protect himself against his own ments a recovery upon the policy might not laches in not giving notice of the policy to the have been had by Carpenter, in his own name, underwriters. And it may well be doubted and for his own account. We think that the whether a party to a policy can be allowed to question must be answered in the affirmative; set up his own misrepresentations, to avoid the and if so, then it demonstrates that the policy obligations deducible from his own contract. made in the name of the owners was for their Be this as it may, it is in our judgment free account and benefit, and payment only was, in from all reasonable doubt that notice of a voidcase of loss, to be made to Reed. able policy must be given to the underwriters; for such a case falls within the words and the meaning of the stipulations of the policy. It is a prior policy, and it has a legal existence until avoided.

For these reasons we are of opinion that the first instruction asked of the court was rightly refused, and that the instruction given was entirely correct.

The second instruction asked proceeds upon *Indeed, we are not prepared to say [*510 the ground that although the policy of the that the court might not have gone farther, and American Insurance Company, of the 6th of have held that a policy-existing and in the December, 1836, was good upon its face, yet if, hands of the insured, and not utterly void upin point of fact, it was procured by a material on its very face, without any reference whatmisrepresentation by the owners of the cost ever to any extrinsic facts-should have been and value of the premises insured, it was to be notified to the underwriters; even although by deemed utterly null and void, and therefore as proofs, afforded by such extrinsic facts, it a null and void policy, notice thereof need not might be held in its very origin and concoction have been given to the Washington Insurance a nullity. And this leads us to say a few words Company at the time of underwriting the pol- upon the nature and importance and sound icy declared on. The court refused to give the policy of the clauses in fire policies, respecting instruction; and, on the contrary, instructed the notice of prior and subsequent policies. They jury that if the policy of the American Insur- are designed to enable the underwriters, who ance Company was, at the time when that at are almost necessarily ignorant of many facts the Washington Insurance office was made, which might materially affect their rights and treated by all the parties thereto as a subsist-interests, to judge whether they ought to in509] ing and valid policy, and had never, sure at all, or for what premium; and to ascer in fact, been avoided, but was still held by the tain whether there still remains any such subassured as valid, then that notice thereof ought stantial interest of the insured in the premises to have been given to the Washington Insur-insured, as will guaranty on his part, vigilance, ance Company, and if it was not, the policy care, and strenuous exertions to preserve the declared on was void. property. To quote the language of this court We are of opinion that the instruction, as in the passage already cited, the underwriters asked, was properly refused, and that given was do not rely so much upon the principles as upcorrect. It is not true that because a policy is on the interest of the assured. Besides, in procured by misrepresentation of material these policies there is an express provision that facts it is therefore to be treated, in the sense in cases of any prior or subsequent insurances, of the law, as utterly void ab initio. It is merely the underwriters are to be liable only for a voidable, and may be avoided by the under-ratable proportion of the loss or damage as the writers upon due proof of the facts; but until so avoided, it must be treated for all practical purposes as a subsisting policy. In this very case the policy has never, to this very day, been avoided or surrendered to the company. It is still held by the assured; and he may, if he pleases, bring an action thereon to-morrow; and unless the underwriters should at the trial prove the misrepresentation, he will be entitled to recover. But the question is not, how the policy may now be treated by the parties, but how was it treated by them at the time when the policy declared on was made. It was then

amount insured by them bears to the whole amount insured thereon. So that it constitutes a very important ingredient in ascertaining the amount which they are liable to contribute toward any loss; and whether there be any other insurance or not upon the property, is a fact perfectly known to the insured, and not easily or ordinarily within the means of knowledge of the underwriters. The public, too, have an interest in maintaining the valid ity of these clauses, and giving them full effect and operation. They have a tendency to keep premiums down to the lowest rates, and to up

hold institutions of this sort, so essential in the struct the jury that if the Washington Insurpresent state of our country for the protection ance Company had notice, in fact, of the exof the vast interests embarked in manufactures, istence of the policy in the American office, and on consignments of goods in warehouses. that "was, in law, a compliance with the terms If these clauses are to be construed with a of the policy. The court refused to give the close and scrutinizing jealousy, when they may instruction as prayed, but instructed the jury be complied with in all cases by ordinary good that, at law, whatever might be the case in faith, and ordinary diligence on the part of equity, mere parol notice of such insurance was the insured, the effect will be to discourage the not of itself sufficient to comply with the reestablishment of fire insurance companies, or to quirements of the policy declared on; but that restrict their operations to cases where the par- it was necessary, in case of any such prior 511*] ties and the premises are within the policy, that the same should not only be notipersonal observation and knowledge of the fied to the company, but should be mentioned underwriters. Such a course would necessari-in or indorsed upon the policy; otherwise the ly have a tendency to enhance premiums, and insurance was to be void and of no effect. We to make it difficult to obtain insurances where think this instruction was perfectly correct. It the parties live, or the property is situate, at a merely expresses the very language and sense distance from the place where the insurance is of the stipulation of the policy; and it can sought. never be properly said that the stipulation_in But, be these considerations as they may, we the policy is complied with, when there has see no reason why, as these clauses are a known been no such mention or indorsement as it part of the stipulations of the policy, they positively requires, and without which it deought not to receive a fair and reasonable in-clares the policy shall henceforth be void and terpretation according to their terms and obvi- of no effect. ous import. The insured has no right to com. The fourth and last instruction given by the plain, for he assents to comply with all the courts stands upon the same considerations as stipulations on his side, in order to entitle him- those already mentioned; and it would be a self to the benefit of the contract, which, upon useless task to repeat them. If the other inreason or principle, he has no right to ask the structions given by the court were correct, it court to dispense with the performance of his is admitted that this cannot be deemed erroown part of the agreement, and yet to bind the neous. other party to obligations which, but for those stipulations, would not have been entered into. We are, then, of opinion that there is no error in the second instruction. On the contrary, there is strong ground to contend that the stipulations in the policy as to notice of any prior and subsequent policies were designed to apply to all cases of policies then existing in point of ELEAZER CARVER, Plaintiff in Error, [*513 fact, without any inquiry into their original validity and effect, or whether they might be void or voidable.

We have not thought it necessary upon this occasion to go into an examination of the cases cited from the New York and Massachusetts Reports, either upon this last point, or upon the former point. The decisions in those cases are certainly open to some of the grave doubts and difficulties suggested at the bar, as to their true bearing and results. The circumstances however, attending them are distinguishable from those of the case now before us, and they

Upon the whole, our opinion is that the judg ment of the Circuit Court ought to be affirmed with costs.

V.

JOSEPH A. HYDE et al., Defendants in Error.

Law of patent—alleged infringement-question for jury.

Action for damages for a violation of a patent for an improvement on the cotton gin. The charge of the Circuit Court of Massachusetts upon the facts in the case was in favor of the defendants; the verdict of the jury was held to be correct. and the judgment in favor of the defendants on

certainly cannot be admitted to govern it. The ON writ of error to the Circuit Court of the

United States for the District of Massachu

setts.

questions under our considerations are questions of general commercial law, and depend upon the construction of a contract of insurance, The plaintiff in error instituted a suit for the which is by no means local in its character, or recovery of damages for the infringement of regulated by any local policy or customs. his patent for an improvement in the use of Whatever respect, therefore, the decisions of cotton gins. The Circuit Court, on the verdict State tribunals may have on such a subject, of the jury, gave a judgment for the defendand they certainly are entitled to great respect, ants. A bill of exceptions having been tenthey cannot conclude the judgment of this dered by the plaintiff to the charge of the court. On the contrary, we are bound to in-court, on the facts, in favor of the defendant, terpret this instrument according to our own given by the court. The plaintiff prosecuted opinion of its true intent and objects, aided this writ of error. by all the lights which can be obtained from 512] all external sources whatsoever; and if the result to which we have arrived differs from that of these learned State courts, we may regret it, but it cannot be permitted to alter our judgment.

The third instruction prayed the court to in

67

The case was submitted to the court, on printed arguments, by Mr. Dexter for the

S. 433.

NOTE. As to patent law; for what patents granted, when declared void, etc., see notes to 4 As to what constitutes infringement of patent, see 36 L. ed. U. S. 1073; 40 L. ed. U. S. 1025.

plaintiff in error, and by Messrs. Fletcher and face, then takes a new direction upwards, and Phillips for the defendants.

Mr. Chief Justice Taney delivered the opinion of the court:

This case is brought here by writ of error, directed to the Circuit Court of the United States for the District of Massachusetts. It is an action by the plaintiff in error against the defendants, to recover damages for the infringement of a patent-right, obtained by the plaintiff on the 16th of November, 1839. The patent is in the usual form, and the questions before us depend upon the construction of the specification, which is in the following words:

"Be it known that I, Eleazer Carver, of Bridgewater, in the County of Plymouth and State of Massachusetts, have invented a certain improvement in the manner of forming the ribs of saw gins, for the ginning of cotton; and I do hereby declare that the following is a full and exact description thereof.

"In the cotton gin, as heretofore known and used, the fibres of the cotton are drawn by the 514*] teeth of circular saws, through *a grating formed of a number of parallel bars, or ribs, having spaces between them sufficient to allow the saws to pass, carrying the fibres of the cotton with them (which are then brushed off by a revolving brush), but not wide enough to let the seeds, and other foreign substances pass through. Above the saws the ribs come in close contact, thus forming a shoulder at the top of the space between them. Various forms have been given to the bars or ribs, with a view to procure a free passage of the cotton; but the cotton gin, as heretofore made, has been always subject to the inconvenience of the grate becoming choked by hard masses of cotton and motes, or false seeds, collecting in the upper part of the spaces between the ribs, and impeding the action of the saws, and also preventing the masses of cotton which is drawn by the saws up to the top of the spaces, but not drawn through them, from rolling back freely, so as to pass again over the saws, as it should

do.

slopes towards the upper or outer surface, until the two surfaces meet above the periphery of the saw. This last-described part of the under surface is fastened against the framework of the gin. The operation of this improvement is, that those fibres of the cotton which [*515 are so firmly caught by the teeth of the saws as to be disengaged from the mass of the cotton to be ginned, are drawn out to their full length, and pass clear through the grate, and are then brushed off by the revolving brush, while the fibres that are drawn into the grate, but not caught by the teeth of the saws firmly enough to be carried quite through, are disengaged, and pass up to where the under surface meets the upper surface, above the saws, and finding no obstruction there, pass back out of the grate without choking it, and roll down again with the mass of unginned cotton, and are caught below by the saws, and carried up again, and so on until all the fibres are drawn through."

The specification then proceeds to describe the invention more particularly, by referring to and explaining the drawings annexed to it, showing the advantages of his improvement, the manner of arranging the ribs in the gin, and the mode of inserting and fastening them in the framework. This description could not be comprehended without an exact drawing; nor is it necessary, in order to understand the questions of law in dispute between the parties. It is therefore omitted. After giving this description, the specification states the improvement, of which the patentee claims to be the inventor, as follows:

"Having thus described my improved rib and its advantages, I now claim, as my invention, and desire to secure, by letters patent, the increasing the depth, or space, between the upper, or outer surface of the rib, and the lower, or inner surface of it, at the part where the cotton is drawn through the grate, so that it shall be equal to the length of the fibre of the cotton to be ginner (whether this be done by making the ribs thicker at that part, or by a fork, or division of the rib, or by any other "My improvement, which I am about to variation of the particular form); and I also describe, is intended to obviate those difficul- claim, as part of the said improvement, the ties; and it consists in giving a new form to sloping up of the lower, or inner surface of the the ribs composing the grate. Instead of mak-rib, so as to meet the upper, or outer surface ing the ribs of a bar of iron of equal thickness above the saws, leaving, when the rib is inserted throughout, so that the upper and under sur into the frame, no break or shoulder between faces shall be parallel, I so form the rib, that the two surfaces, but a smooth and uninterat the part where the saws pass through, car-rupted passage upwards between the ribs, as rying the cotton with them, the space, or depth above described." between the upper and outer surface, and the lower, or inner surface, shall be greater than the thickness of the rib in other parts has heretofore been, or needs to be, and so great as to be equal to the length of the fibre of the cotton to be ginned, so that the fibre shall be kept extended between the ribs for about its full length, while it is drawn through them by the saws. This mill, of course, requires, either that the rib should be as thick at that part as the length of the fibre, or that the rib should be forked, or divided, about that part, so that the upper or outer surface, and the under, or inner surface, shall diverge to that distance of each other, instead of being parallel as formerly, when the rib was made of one bar of uniform thickness. This under, or inner sur-ning.

At the trial in the Circuit Court, the plaintiff in error, after having produced his patent with the schedule annexed to it, offered in evidence, by the testimony of witnesses skilled in the *art, that the rib described in the [*516 plaintiff's specification was a new and useful improvement; that the fastening of the rib to the framework in the manner therein stated had nothing to do with the ginning, but was only necessary to keep the rib firm; that the rib of the defendants was substantially in principle like that of the plaintiff, and operated in the same manner, and produced the same effect; and that, in their opinion, it differed from the plaintiff's rib only by taking away a part which was wholly immaterial in the operation of gin

smooth and uninterrupted passage upwards between the ribs, as above described."

The defendants then produced witnesses skilled in the art, who testified that the ribs of the defendants did not substantially operate in That the true construction and interpretation the same manner with the plaintiff's, but were of the specification and summing is, that it different in form and principle, and proceeded claims and states as a substantial part of the to state the particulars in which they differed; improvement, not only the increasing the and testified that the defendant's ribs were en- depth or space between the upper or outer surtirely detached from the breast band, and stood face of the rib, and the lower or inner surface out in front of it, like the bar of the "Edenton thereof, at the part where the cotton is drawn grate," which was known and in use long be- through the grate, so that it shall be equal to fore the plaintiffs; and that the front and back the length of the fibre of the cotton to be ginsurfaces of the defendants' ribs did not slope ned in the manner above stated, but it also and meet at the upper end above the saws as claims and states as a substantial part of the the plaintiff described his to do, and was not same improvement, the sloping up of the lower shaped as the plaintiff's was exhibited and de- and inner surface of the rib, so as to meet the scribed in his drawings, specification, and claim. upper or outer surface above the saws, leaving, "Whereupon the defendants' counsel insisted when the rib is inserted in the framework, no that the ribs of the defendant were, according break or shoulder between the two surfaces, but to the whole evidence, substantially different a smooth and uninterrupted passage upwards from those described and claimed by the plain-between the ribs, as described in the same specitiff, not only because, as the counsel alleged, it fication; and that thereby the fixing or fastenappeared by the whole of said evidence that in ing of the ribs against the framework [*518 the defendants' said ribs no part of the under in the manner stated in the specification is surface sloped upwards, and met the upper made by the patentee a substantial part of the surface above the periphery of the saw, and said improvement; so that if the defendants do was there fastened against the framework of not fix or fasten the ribs of their machine the gin; but, also, in the other particulars against the framework in the manner stated in above described. the specification, either at all or substantially "But the plaintiff's counsel insisted that said in the same manner as the patentee, or fix or ribs were substantially alike, in all respects; fasten it only in a manner known and used beand that in the rib of the defendants' the fore the plaintiff's supposed invention, the deunder surface did, according to said evidence, fendants are not guilty of any violation or inin fact, slope upwards, and meet the upper fringement of the plaintiff's patent, as stated in surface above the periphery of the saw, but that the declaration; and with this declaration the it was not necessary to the plaintiff's invention, said presiding judge left the said cause to the as described and claimed in the said specifica-jury, who thereupon then and there returned tion; nor was it essential to the said invention, verdict for the defendants. in fact, that the under surface of the rib should be fastened against the framework of the gin, where the two surfaces meet, above the periphery of the saw.

It will be seen by this statement that the question of law presented by the exception is a very narrow one, and depends altogether on the construction of the specification. And it is diffi cult to make it understood without the aid of the drawing or model.

The plaintiff considers the invention secured by the patent to consist of the rib only-and of that part of the rib which by its form increases

517] "And the presiding judge who sat at the trial aforesaid, did then and there declare and deliver his opinion to the jury aforesaid, as follows, viz.: That to entitle the plaintiff to maintain the action and issue aforesaid, on his part, it was necessary for the jury to be satis-the depth between its upper or outer surface, fied that the defendants had substantially violated and infringed the patent-right of the plaintiff, as set forth and described in his patent. That if the defendants used only such part of the said patented improvement as was known and used before his supposed invention, it was no violation or infringement thereof; that the improvement of the plaintiff, as speci-parts of his invention. fied and summed by him, was in the following terms, viz.:

and the lower or inner one, at the place where the cotton is drawn through the grate. He insists that the sloping up of the rib, so as to meet the upper or outer surface of the saw as well as the manner of fastening it against the framework of the gin, as mentioned in his specification, are not substantial or essential

The question is, whether they are claimed as such by his patent. The Circuit Court held "I now claim as my invention, and desire to that they were so claimed; and we think the secure by letters patent, the increasing the opinion was clearly right. They are expressly depth or space between the upper or outer sur- stated by the patentee to be a part of the imface of the rib, and the lower or inner surface provement for which he asks a patent, and he of it, at the part where the cotton is drawn describes particularly the smooth and uninterthrough the grate, so that it shall be equal to rupted passage upward between the ribs, leav the length of the fibre of the cotton to be gin- ing no break or shoulder between the two surned (whether this be done by making the ribs faces, when the ribs were inserted in the frame, thicker at that part, or by a fork or division of as one of the advantages resulting from his imthe rib, or by any other variation of the partic-provement. And this smooth and uninterrupted ular form); and I also claim as part of the same improvement, the sloping up of the lower or inner surface of the rib, so as to meet the upper or outer surface above the saws, leaving, when the rib is inserted into the frame, no break or shoulder between the two surfaces, but a

surface must necessarily depend not merely on the form of the rib, but also in the manner in which it is connected with the framework.

*The rib in question is not an inven- [*519 tion to be used by itself, but an improvement upon that portion of the cotton gin; and is to