| 236, 849, of his Admiralty Jurisdiction; but he says the case of Andrews v. Wall, 3 How., 568, is the only reported case relating to it. The case of Cutler v. Rae, 7 How., 730, also shows that the nature of the consideration will not give character to a contract, or give juris diction even in personam. 2. But if this be regarded a maritime contract at all, it is certainly only partly so; the object as between the parties being to stipulate for the division of the proceeds to accrue to them from their services to others. It there fore falls within the cases of Plummer v. Webb, 4 Mas., 380, and L'arena v. Manwaring, Bee, 199, in which the court declined jurisdiction, because the whole contract was not of a maritime nature. 3. But the proceeding is in rem, and the district courts admits now that they have not jurisdiction to enforce maritime contracts by such proceedings, unless the contract expressly or by implication creates a lien on the ship. The Draco, 2 Sumn., 180. It is contended that this contract is in the nature of a charter party, and therefore a lien is implied. See definition of "charter party," Abbott, p. 241. It is certainly not a contract for the hiring of a ship, or any part of one; nor is it a contract for the transportation of persons or property. The parties to such contracts are carriers of one side, and freighters, charterers, or passengers of the other. But even an express contract of affreight ment creates no lien on the vessel till the cargo is shipped. The Freeman v. Buckingham, 18 How., 188. 4. The case of Blaine v. The Charles Carter, 4 Cranch, 331, shows that the law does not favor implied hypothecations of a ship, in obligations executed by the owner in the home port; and this is admitted by Judge Story, in the case of The Draco, above cited. In the absence of any precedent or established usage creating a lien in like cases, with reference to which the parties could be presumed to have contracted, there ought to be explicit language in the contract itself to create such a lien. Mr. Justice Grier delivered the opinion of the court: The libel in this case sets forth a contract between the owners of certain steamboats, of which The Yankee Blade was one, to convey freight and passengers between New York and California. Among other things, it was agreed that The America should proceed to Panama, and The Yankee Blade should leave New York at such time as to connect with The America. The owner of The Yankee Blade refused to employ his vessel according to this agreement, and sent her to the Pacific under a contract with other persons. For this breach of contract the libelant demands damages, assuming that the vessel is subject, under the maritime law, to a lien which may be enforced in rem in a court of admiralty. The Circuit Court dismissed the libel, being of opinion that the instrument is of a descrip tion unknown to the maritime law; that it contains no express hypothecation of the vessel, and the law does not imply one." In support of his allegation of error in this decree, the learned counsel for the appellant has endeavored to establish the following proposi tion: Agreements for carrying passengers are maritime contracts, pertaining exclusively to the business of commerce and navigation, and consequently may be enforced specifically against the vessel by courts of admiralty proceeding in rem. Assuming, for the present, the premises of this proposition to be true, let us inquire whether the conclusion is a legitimate conse quence therefrom. The maritime privilege" or lien is adopted from the civil law, and imports a tacit hypothe cation of the subject of it. It is a "jus in re," without actual possession or any right of pos session. It accompanies the property into the hands of a bona fide purchaser. It can be executed and devested only by a proceeding in rem. This sort of proceeding against personal property is unknown to the common law, and is peculiar to the process of courts of admiralty. The foreign and other attachments of property in the state courts, though by analogy loosely termed proceedings in rem, are evidently not within the catagory. But this privilege or lien, though adhering to the vessel, is a secret one; it may operate to the prejudice of general creditors and purchasers without notice; it is therefore "stricti juris, "and cannot be extended by construction, analogy, or inference. Analogy," says Pardessus (Droit Cir., Vol. III., 597), cannot afford a decisive argument, because privileges are of strict right. They are an exception to the rule by which all creditors have equal rights in the property of their debtor, and an exception should be declared and described in express words; we cannot arrive at it by reasoning from one case to another." These principles will be found stated, and fully vindicated by authority, in the cases of The Young Mechanic, 2 Curt., 404, and Kiersage, Ibid., 421; see, also, Harmer v. Bell, 22 E. L. & E., 62. Now, it is a doctrine not to be found in any treatise on maritime law, that every contract by the owner or master of a vessel, for the future employment of it, hypothecates the vessel for its performance. This lien or privilege is founded on the rule of maritime law as stated by Cleirac (597): "Le batel est obligée à la marchandise et la marchandise au batel." The obligation is mutual and reciprocal. The merchandise is bound or hypothecated to the vessel for freight and charges (unless released by the covenants of the charter-party), and the vessel to the cargo. The bill of lading usually sets forth the terms of the contract, and shows the duty assumed by the vessel. Where there is a charter-party, its covenants will define the duties imposed on the ship. Hence it is said (1 Valin, Ordon, de Mar., b. 3, tit. 1, art. 11), that "the ship, with her tackle, the freight and the cargo, are respectively bound (affecté) by the covenants of the charter-party." But this duty of the vessel, to the performance of which the law binds her by hypothecation, is to deliver the cargo at the time and place stipulated in the bill of lading or charter-party, without injury or deterioration. If the cargo be not placed on board, it is not bound to the vessel, and the vessel cannot be in default for the non-delivery, in good order, | termined voyage to one or more places. Abb of goods never received on board. Conse- Ship., 241. quently, if the master or owner refuses to perform his contract, or for any other reason the ship does not receive cargo and depart on her voyage according to contract, the charter has no privilege or maritime lien on the ship for such breach of the contract by the owners, but must resort to his personal action for damages, as in other cases. See 2 Boulay, Paty Droit Com. & Mar., 299, where it is said, Hors ces deux cas (viz.: default in delivery of the goods, or damages for deterioration), il n'y a pas de privilege à pretendre de la part du marchand chargeur; car si les dommages et intêrets n'ont lieu que pour refus de depart du navire, pour depart tardif ou precipité, pour saisie du navire ou autrement il est evident que a cet egard la créance est simple et ordinaire, sans aucune sorte de privilege. Thus, in the case of The City of London, 1 W. Rob., 89, it was decided that a mariner who had been discharged from a vessel after articles had been signed, might proceed in the admiralty in a suit for wages, the voyage for which he was engaged having been prosecuted; but if the intended voyage be altogether abandonded by the owner, the seaman must seek his remedy at common law by action on the case. And this court has decided, in the case of The Schooner Freeman v. Buckingham, 18 How., 188, that the law creates no lien on a vessel as a security for the performance of a contract to transport cargo, until some lawful contract of affreightment is made, and a cargo shipped under it." Now, the damages claimed by the libelant, in this case, are not for the non-delivery of merchandise or cargo at the time and place according to the covenants of a charter party, or for their injury or deterioration on the voyage, but for a refusal of the owners to employ the vessel in carrying passengers and freight from New York so as to connect with The America when she should arrive at Panama. The own ers have not made it a part of their agreement that their respective vessels should be mutually hypothecated as security for the performance of their agreement; and, as we have shown, there is no tacit hypothecation, privilege, or lien, given by the maritime law. We have examined this case from this point of view, because the libel seems to take it for granted that every breach of contract, where the subject matter is a ship employed in navi gating the ocean, gives a privilege or lien on the vessel for the damages consequent thereon, and because it was assumed in the argument, that if this contract was in the nature of a charter party, or had some features of a charter party, the court would extend the maritime lien by analogy or inference for the sake of giving the libelant this remedy, and sustaining our juris diction. But we have shown this conclusion is not a correct inference from the premises, and Now, by this agreement, the libelant has not hired The Yankee Blade, or any portion of the vessel; nor have the master or owners of the ship covenanted to convey any merchandise for the libelant, nor has he agreed to furnish them any. But the agent for The Yankee Blade 'agrees that when The America arrives at Panama, The Yankee Blade shall leave New York, conveying passengers and freight," which were afterwards to be received by The America and transported to San Francisco; and the pas sage money and freight earned was to be divided between them-25 per cent. to The Yankee Blade, and 75 to The America. This is nothing more than an agreement for a special and limited partnership in the business of transporting freight and passengers between New York and San Francisco, and the mere fact that the transportation is by sea, and not by land, will not be sufficient to give the court of admirality jurisdiction of an action for a breach of the contract. It is not one of those to which the peculiar principles or remedies given by the maritime law have any special application, and is the fit subject for the jurisdiction of the common law. The decree of the Circuit Court is, therefore, af firmed. (See S. C., 19 How., 96-107.) Patent--disclaimer, unreasonable delay in making, effect of on costs and suit-prior description in book, not evidence of prior operation. Under the Act of March 3, 1837, plaintiff will be refused costs for unreasonable delay of disclaimer before suit brought, of any part of his invention not new. The granting of the patent for the improvement, together with the opinion of the court below maintaining its validity, repel any inference of unrea sonable delay in correcting the clains. Under such circumstances, the patentee has the right to insist upon it, and not disclaim it, until the highest court to which it can be carried has pronounced its judgment. A description of an improvement in "Loudon's Encyclopædia of Agriculture" before the patent is not evidence for jury that improvement opof the Patent Act of 1836 is the only authority for erated successfully before the patent. Sec. 15 admitting the book in evidence. Argued Dec. 10, 1856. Decided Jan. 7, 1857. United Stated States for the Northern Dis N ERROR to the Circuit Court of the that this lien, being stricti juris, will not be ex- The original writ was sued out of the Circuit Court in the June Term, 1850. The declaration was filed August 23d, 1850, alleging that Cyrus H. McCormick was the first and original inventor of three certain improvements "in machines for reaping all kinds of small grain," for which three letters patent had been granted to him by the Commissioners of Pat ents of the United States. The first, dated June 21, 1834; the second, Jan. 31, 1845; the third, Oct. 23d, 1847, and that the defendants had manufactured and sold large numbers of reap ing machines, substantially like those patented by said McCormick in the said two last mentioned letters patent, without license or permission. The defendants below prayed oyer of the three letters patent set out in the declaration, and it was given. The defendants pleaded the general issue, and gave notice of various prior inventions and publications, in public works, which they designed to give in evidence in their defense. This case has once been before this court, and was sent back for a new trial, on the ground of an error in the instructions as to damages. 16 How., 480. The former trial was on the patent of Oct. 23, 1847. The plaintiffs' recovery in the present case was on the patent of Jan. 31, 1845. The claims of the plaintiffs in that patent were as fol'lows: "I claim, 1st. The curved (or angled downward, for the purpose described) bearer, for supporting the blade in the manner described. 2d. I claim the reversed angle of the teeth of the blade, in manner described. 3d. I claim the arrangement and construction of the fingers (or teeth for supporting the grain), so as to form the angular spaces in front of the blade, as and for the purpose de scribed. as it respects cutting the grain and laying it on the platform, are two: the divider and the rearrangement of the reel-post. It is said that neither of these improvements, assuming that the plaintiff was the author of them, is of a description entitling it to be regarded as the subject of the patent under our patent law. An improvement upon a machine, to constitute it an invention within the meaning of the law. must be new, not known or in use before: and it must also be useful; in other words, the person claiming the improvement must have found out himself, and created and constructed an improvement which had not before been found out or produced by any person, and which is beneficial to the public. This novelty worked out by the mind of the inventor, connected with utility, constitutes the essence of the patentable subject under the law. It is said by the learned counsel of the defendants, that there is a claim in the patent outside of the two claims that are in controversy, which is void, because McCormick appears, from the evidence, not to have been its original and first inventor, and that inasmuch as he had made one void claim, his patent is void, as it respects all the other claims. Although the evidence may show that he was the original and first inventor of all those other claims, as regards the law applicable to this point, the learned counsel is not strictly correct. The law is this: if a patentee makes a claim which is not well founded in the same patent with other claims which are well founded, he may disclaim, within a reasonable time, that which he had no right to claim, and then his patent will be good as to the residue—as good as if it had originally issued only for claims which are valid. If he omits to make a disclaimer, but brings a suit for the violation of his patent, and it satisfactorily appears upon the trial that he is entitled to be protected in a portion of the claims set up in his patent, but that he is not entitled to be protected in respect to another portion, he is still entitled to damages for a violation of the valid portion of his claims, the same as if all the claims were valid, so far as regards the mere right of recovery, but he gets no costs. The exceptions taken on the trial and incor- That is the law. It has this qualification: if the porated in a bill of exceptions, are twenty in jury are satisfied that there has been unreasonnumber, whereof the first twelve are to rulable negligence and delay on the part of the ings admitting or rejecting evidence, and the last eight, to the charge. 4th. I claim the combination of the bow L, and dividing iron M, for separating the wheat in the way described. 5th. I claim the setting of the lower end of the reel post R behind the blade, curving it at R 2, and leaning it forward at top, thereby favoring the cutting, and enabling me to brace it at top by the front brace (S), as described, which I claim in combination with the post. CYRUS H. MCCORMICK." Portions of the charge to the jury were substantially as follows: the patent upon which the action is founded, was issued to the plaint iff on Jan. 31, 1845, for an improvement in reaping machines. It seems that his experiments began as early as 1830 or 1831, and were continued down to 1834, when he first obtained a patent thereon. This machine, however, was not a successful one, and this seems to have been the fate of the experiments down to 1845, when a second patent was taken out for improvements on the first one. The machines did not go into general or successful operation until after the arrangement of the seat for the raker upon it, which was patented in 1847. Then the machines became eminently success ful. The improvements which were patented in 1845, and which were claimed by the plaintiff to have perfected his machine of 1834, as far patentee, in making a disclaimer as respects the invalid part of his patent, then the whole patent is inoperative, and the verdict must be for the defendants; as in this case, the claim on which the question arises is as follows: "I claim the reversed angle of the teeth of the blade, in manner described." It is said by the defendants that the plaintiff was not the first inventor of that arrangement, but that Moore was. Assuming that the position of the learned counsel for defendants is right, that the plaintiff was not the first inventor of what is claimed in that claim, if you believe that he was the first inventor of the divider, and of the arrangement of the reel-post, he may still be entitled to recover damages, unless he has unreasonably neglected and delayed to enter a disclaimer for what is covered by the claim in regard to the reversed angle of the teeth. The claim in question is founded upon two parts of the patent. As the construction of that claim is a question of law, we shall construe it The defendants' counsel requested the court to fied that Hiram Moore was the first inventor of the reversed angle of the teeth of the blade, and that the plaintiff was notified of that fact by the testimony of Moore on the trial of this cause, in June, 1851, and had not yet disclaimed that invention; then, in judgment of law, he has unreasonably delayed in filing his disclaimer, and the verdict should be for the defendants. The court declined to so instruct the jury, and the defendants' counsel excepted to the refusal. The defendants' counsel further requested the court to instruct the jury, that, if they should be satisfied that Hiram Moore was the first inventor of the reversed angle of the teeth of the blade, and that the plaintiff was notified of the fact by the testimony of Hiram Moore on the trial of this cause in June, 1851, and had not yet disclaimed that invention; then it was a question of fact for them to decide whether the plaintiff had or had not unreasonably delayed the filing of a disclaimer; and if they should come to the conclusion that there had been such unreasonable delay, their verdict should be for the defendants. The court refused so to instruct the jury, and the defendants' counsel excepted to the refusal. for your guidance. In the fore part of the pat-gers described in the same patent, the defendent, we have a description of the blade and of the ants' counsel excepted. blade case and of the cuttter, and of the mode of fastening the blade and blade case and the cut-instruct the jury that if they should be satister, and of the machinery by which the arrangement is made for the cutter to work. We have also the description of the spear-shaped fingers, and of the mode by which the cutter acts in connection with those fingers. Then, among the claims, are these: "2. I claim the reversed angle of the teeth of the blade in manner described. 3. I claim the arrangement for the construction of the fingers or teeth for supporting the grain, so as to form the angular spaces in front of the blade, as and for the purpose described. Now, it is insisted on the part of the learned counsel for the defendants, that this second claim is one simply for the reversed angles of the sickle teeth of the blade. These teeth are common sickle teeth, with their angles alternately reversed in spaces of an inch and a quarter, more or less. The defendants insist that the second claim is merely for the reversed teeth on the edge of the cutter, and that the reversing of the teeth of the common sickle as a cutter in a reaping machine, was not new with the plaintiff; and that if it was new with him, he had discovered it and used it long before his patent of 1845. The defendants claim that Moore had discovered it as early as 1837 or 1838; and it would also seem that the plaintiff had devised and used it at a very early day after his patent of 1834--that is, the mere reversing of the teeth. But on looking into the plaintiff's patent more critically, we are inclined to think that when the plaintiff says, in his second claim, "I claim the reversed angle of the teeth of the blade, in manner described," he means to claim the reversing of the angles of the teeth in the manner previously described in his patent. You will recollect that it has been shown in the course of the trial, that in the operation of the machine, the straw comes into the acute angled spaces on each side of the spear-shaped fingers, and that the angles of the fingers operate to hold the straws, while the sickle teeth, being reversed, cut in both directions as the blade vibrates. The reversed teeth thus enable the patentee to avail himself of the angles on both sides of the spear-shaped fingers: whereas, if the sickle teeth were not reversed in sections, but all ran in one direction like the teeth in the common sickle, he could use the acute angles upon only one side of the fingers, because the cutter could cut only in one direc tion. We are, therefore, inclined to think that the patentee intended to claim, by his second claim, the cutter having the angles of its teeth reversed in connection with the angles thus formed by the peculiar shape of the fingers; and as it is not pretended that any person in vented that improvement prior to the plaintiff, the point relied on in this respect by the learned counsel for the defendants, fails. The remainder of the charge related to the question of damages. The exceptions to the charge were as follows: To so much of the charge of the court as instructed the jury in substance that the plaint iff, in his patent of Jan. 31, 1845, did not claim the reversed angle of the teeth of the blade as a distinct invention, but only claimed it in combination with the peculiar form of the fin The defendants' counsel requested the court to submit to the jury the question under the evidence in the case, whether the plaintiff did or did not claim, in his patent of Jan 31, 1845, the reversed angle of the teeth of the blade, independent of any combination. The court refused to submit that question to the jury, and the defendants' counsel excepted to the refusal. The defendants' counsel requested the court to charge the jury, that whether the adjustabil ity of the inner bow of the divider, as described in the plaintiff's patent, was a necessary ingredient of the divider, was the question of fact for them to determine. And if they should find that it was, and that the defendants did not use it, that then the defendants did not infringe that claim of the plaintiff's patent. The court refused so to instruct the jury, and the defendants' counsel excepted to the refusal. The court on that point then instructed the jury as follows: the inside iron in the plaintiff's divider is adjustable, so that it can be raised or lowered at pleasure. In heavy grain that stands high and may be cut high from the ground, it is desirable to raise the reel sometimes, and then this inside iron could be raised also, to insure the division of the grain, and cause the reel to overlap and carry all the grain to the cutter. It is claimed by plaintiff, that although the defendants used no inside iron, yet they attained the same result by the shape of the inside of their divider, which thus answers to the inside edge of the plaintiff's divider. The defendants insist that, assuming this to be true, their divider has no such adjustability as the plaintiff's, and is therefore distinguishable from it. The answer to that position is this: The adjustability does not vary the principle of | operation of the divider. It enlarges its capacity, so that it may be worked in heavy grain; but the principle and more of operation of the divider are the same whether the inner iron be adjustable or not. The defendants' counsel excepted to this part of the charge, insisting that it was a question for the jury. The defendants' counsel further requested the court to instruct the jury that the plaintiff, if entitled to a verdict, was entitled to only so much as the jury should be satisfied was the increased market value of the machines manufactured by the defendants, by reason of the use of the two improvements which they are charged with infringing, in place of using any other kind of divider and reel support, which had been before in public use. The court refused to instruct the jury in relation to the subject matter of such request, otherwise than they had already charged, and the defendants' counsel excepted to the refusal. The defendants' counsel also asked the court to instruct the jury, that, from the facts that Bell's machine operated successfully in 1829, and that it operated well also in 1853, they were at liberty to infer that it had operated successfully in the intermediate period, or some part of it. But the court held and charged, that there being no evidence respecting it, except at the trial of it in 1829, and the trial of it in 1853, the jury could not infer anything on the subject, and refused to charge as requested. The defendants' counsel excepted to the refusal, and also excepted to the charge in this respect. Messrs. H. R. Selden, P. H. Watson, E. M. Stanton, and Harding, for the plaintiffs in error: 1. The testimony which was offered with reference to the successful use of what was called on the trial, a horizontal divider, with a cen tral ridge, should have been received. It was competent upon the question of utility of the plaintiff's invention, and also with reference to the amount of damages, it was material. The construction given in the court below to the second claim of the patent of 1845, was erroneous. (a) The words "in the manner described," used in the second claim, refer exclusively to the description of the construction of the sickle, without reference to the peculiar shape of the fingers, or to any combination whatever. They refer to the straight blade alone, with the specified positions of its teeth. We suppose the correct rule for the interpretation of patents, is laid down by Mr. Curtis, in his Treatise on Patents, sec. 126: "The nature and extent of the invention claimed by the patentee, is the thing to be ascertained; and this is to be arrived at through the fair sense of the words he has employed to describe his invention. But that rule, even as limited or aided by the principle referred to in sec. 132, viz.: "That a specification should be so construed as, consistently with the fair import of the language, will make the claim coextensive with the actual discovery," does not relieve the plaintiff here from the distinct claim of the reversed teeth of the blade as an independent invention. This principle was well applied in the case of Haworth v. Hardcastle, Web. Pat. Cas., 484, from which it was taken by Mr. Curtis. See, also, Byam v. Farr, 1 Curt., 263; Act of 1836, sec. 13; Curt., sec. 386; Godson, Pat., 204, 205; LeRoy v. Tatham, 14 How., 176; Act of 1836, sec. 6. Both reason and the statute demand of him who claims the exclusive right, to define clearly the limits of his invention. It can in no case be difficult for an inventor to say distinctly, whether he claims two or more elements singly, or merely in combination. Evans v. Hettick, 3 Wash.,408; S. C., 1 Rob., 166. (b) The point was material. Hiram Moore used such a sickle as early as 1836, if not in 1834. Notice of this invention by Moore was given to the plaintiff as early as September, 1850. The plaintiff, in his history of his invention, 2. The question as to the practicable differ- sworn to Jan. 1, 1848, presented to the Comence in value between the plaintiff's machines, missioner of Patents, for the purpose of obtainwith the divider and without, as to the coming an extension of his first patent, shows that parative value of the machine with and he did not use the blade with reversed teeth without the seat and divider, and as to until the harvest of 1841. what the witness would give for a machine without the seat and divider, if he could get one for a fair price with a seat and divider, should not have been allowed. 4. The question whether the plaintiff had granted licenses to construct his machines or not, should have been rejected; it was wholly foreign to the case, even upon the question of damages. 5. The plaintiff should have been required to produce the patent for his original machine of 1834, of which the invention patented in 1845 was alleged to be an improvement, so that the jury could see how much had become pub lic property. Lewis v. Davis, 3 C. & P., 502; Curtis, sec. 141; Lowell v. Lewis, 1 Mas., 188. Under these circumstances we insist that the plaintiff was called upon during the three years that intervened between the trial in June, 1851, and that in October, 1854, to disclaim the in vention of the reversed angle of the teeth of the blade. It was, therefore, a question for the jury, under the 9th sec. of the Act of March 3d, 1837 (Curt., 489, 690), whether the plaintiff had not unreasonably neglected or delayed to enter at the Patent Office his disclaimer. To allow a patentee under such circumstances, to designedly delay a disclaimer, would defeat the manifest object of the last proviso to sec. 9, above referred to, which was to compel a patentee, who had inadvertently covered by his patent something to which he has not entitled, and thus wrongfully obstructed its free use, to remove the obstruction as soon as possible after the discovery of his mistake. 7. The exceptions to the refusal of the court |