## Facts

- Samuel F. B. Morse obtained patents (including a reissued 1848 patent) for an electro-magnetic telegraph system with eight claims and a separate patent (reissued 1848) for “local circuits.”
- Claim 8 of the main patent asserted a right to the use of electric or galvanic current “however developed” to make or print intelligible characters at any distance, without limiting the claim to the specific machinery described.
- Henry O’Reilly and others promoted competing telegraph lines that Morse and his assignees alleged infringed Morse’s patents.
- Morse and his assignees sued in equity in federal circuit court seeking an injunction against the competing system.
- The circuit court granted injunctive relief for Morse; the defendants appealed to the Supreme Court.

## Issues

1. Whether Morse was the first and original inventor of the patented electro-magnetic telegraph, given prior scientific work and foreign efforts.
2. Whether the patents complied with federal patent statutes such that they conferred enforceable exclusive rights.
3. Whether the defendants’ telegraph system infringed Morse’s valid patent rights.
4. Whether Claim 8 validly claimed a patentable invention or impermissibly claimed a principle by covering all uses of electromagnetism for distant communication.

## Decision

- The Supreme Court largely affirmed protection for Morse’s disclosed telegraph inventions but limited the patent’s scope.
- The Court upheld the validity of Claims 1–7 of the reissued main patent as proper claims to specific apparatus and methods described in the specification.
- The Court held Claim 8 invalid as overbroad because it claimed the use of electromagnetism for a result “however developed,” rather than a particular disclosed means.
- The Court upheld the separate “local circuits” patent as a valid, more specific improvement.
- The Court recognized that partial invalidity could be addressed by statutory disclaimer, but because Morse did not disclaim Claim 8 before filing suit, he was not entitled to costs.

## Legal Principles

- Patent law permits claims to a specific machine, manufacture, or process that the inventor has described and enabled; it does not permit a claim to a natural force or principle divorced from defined means.
- A functional claim that preempts all future methods of achieving a result using a natural power, regardless of machinery, is invalid as a claim to a principle rather than a patentable application.
- A patent claim must be commensurate with the inventor’s disclosure; a claim that extends materially beyond what is taught cannot be sustained.
- Prior foreign discovery does not invalidate a U.S. patent unless the invention (or a substantial part) was previously patented or described in a printed publication as required by statute.
- When a patent contains both valid and invalid claims, the patentee may preserve the valid portion through statutory disclaimer; failure to disclaim before suit can affect recovery of costs.

## Conclusion

The Court upheld Morse’s patent rights in his disclosed telegraph apparatus and improvements but invalidated his attempt to claim a monopoly over the general use of electromagnetism to transmit intelligible characters at any distance, reinforcing the rule that patents cannot claim abstract principles apart from enabled applications.


O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854)