In a patent for improvements upon the machinery used for making
pipes and tubes from lead or tin when in a set or solid state by
forcing it under great pressure from out of a receiver through
apertures, dies, and cores, the claim of the patentees was thus
stated:
"What we claim as our invention and desire to secure by letters
patent is the combination of the following parts, above described,
to-wit, the core and bridge, or guide piece, the chamber, and the
die, when used to form pipes of metal under heat and pressure in
the manner set forth or in any other manner substantially the
same."
The circuit court charged the jury
"That the originality did not consist in the novelty of the
machinery, but in bringing a newly discovered principle into
practical application by which an useful article of manufacture is
produced, and wrought pipe made, as distinguished from cast
pipe."
This instruction was erroneous.
Under the claim of the patent, the combination of the machinery
must be novel. The newly discovered principle, to-wit, that lead
could be forced by extreme pressure, when in a set or solid state,
to cohere and form a pipe was not in the patent, and the question
whether it was or was not the subject of a patent was not in the
case.
MR. JUSTICE CURTIS having been of counsel for the defendants in
error upon the letters patent drawn in question in this case, did
not sit at the hearing.
The declaration was filed by the defendants in error, on the 8th
of May, 1817, to recover damages in a plea of trespass upon the
case from the plaintiffs in error and Robert W. Lowber for the
alleged infringement of their patent for new and useful
improvements in machinery or apparatus for making pipes and tubes
from metallic substances.
The declaration alleged that John and Charles Hanson, of
Huddersfield, England, were the inventors of the alleged
improvements on or before the 31st of August, 1837.
That on the 10th of January, 1840, the Hansons, assigned, in
writing, to H. B. & B. Tatham, two of the defendants in error,
the full and exclusive right to the said improvements.
That on the 29th of March, 1841, letters patent of the United
States were granted to H. B. & B. Tatham as assignees of the
Hansons for the said improvements.
That on the 12th of October, 1841, H. B. & B. Tatham,
assigned to G. N. Tatham, the remaining defendant in error, one
undivided third part of the said letters patent.
That on the 14th of March, 1846, the said letters patent having
been surrendered on account of the defective specifications
Page 55 U. S. 157
of the said improvements, new letters patent were issued
therefor on an amended specification whereby there was granted to
the plaintiffs below, their heirs &c., for the term of fourteen
years from the 31st of August, 1837, the full and exclusive right
of making, vending &c., the said improvements, a description
whereof was annexed to and made a part of such patent.
That the letters patent were of the value of $50,000, and that
the defendants below had wrongfully and unlawfully made, used, and
vended the said improvements and made lead pipe to the amount of
2,000 tons, thereby to the injury of the plaintiffs, $20,000.
To this declaration the defendants, Le Roy and Smith, pleaded
not guilty, the defendant Lowber making no defense and permitting a
default to be taken against him.
The cause was tried at the April Term 1849, and a verdict
rendered by the jury in favor of the plaintiffs for $11,394 and
costs, and a bill of exceptions was tendered by the defendants
below.
On the trial of the cause below, the plaintiffs produced --
1. Their patent of 1846, and the specification referred to
therein, and making a part of the same.
2. They read in evidence certain agreements between the
defendant, Lowber, and the defendants, Le Roy and Smith.
3. They gave evidence, tending to prove that J. & C. Hanson
were the original and first inventors of the improvement; that the
invention was a valuable one &c.
4. That lead, recently become set, under heat and pressure in a
close vessel would reunite perfectly after a separation of its
parts; that in the process described in the said patent, pipe was
so made; that the Hansons were the first and original discoverers
thereof; and that such discovery, and its reduction to a practical
result in the mode described in the patent was useful and
important.
5. That the defendants Smith and Leroy had been jointly engaged
with Lowber in making lead pipe upon the plan described in the
letters patent and selling the same, and had thus made and sold
large quantities of pipe; that the agreement between them relative
to the manufacture of pipe was colorable only, and was made as a
cover to protect Le Roy and Smith, and throw the responsibility on
the defendant, Lowber, who was insolvent.
6. That the improvement described in the said letters patent was
the same invention for which letters patent had been granted to the
Hansons in England, and to H. B. & B. Tatham here as their
assignees.
7. That the plaintiffs had been ready and had offered to
sell
Page 55 U. S. 158
the said invention, and had sold the same for a large portion of
the United States within the last eighteen months.
The defendants below then read in evidence:
1. The description of the English patent to the Hansons.
2. The patent to H. B. & B. Tatham of 1841, and the
specification thereof.
3. The specification of an English patent, granted to Thomas
Burr, of 11th April, 1820.
4. The patent and specification of Burroughs Titus, granted in
1831.
5. The patent granted to George W. Potter, in 1833.
6. The evidence of George Fox tending to show the invention and
use by him of a similar machine in 1830.
7. The specification of a patent to John Hague in 1822.
8. The specification of a patent granted to Busk & Harvey in
1817.
9. The specification of a patent granted to Ellis & Burr in
1836.
10. The specification of a patent granted to Joseph Bramah in
1797.
11. The defendants then gave evidence tending to prove that J.
& C. Hanson were not the original and first inventors of the
combination of machinery described in the letters patent.
12. That the invention was not useful, nor the lead pipe, made
upon the plan described, good.
13. That the combination of machinery described in public works
as having been invented by Titus, Potter, Fox, Hague, Bramah, and
Busk & Harvey were substantially the same as that described in
the plaintiffs' patent.
14. That lead, when recently become set, under heat and extreme
pressure, in a close vessel, would not reunite perfectly after a
separation of its parts, and that in the process as described in
the plaintiffs' patent, it was not in a set, but in a fluid state
when it passed the bridge.
15. That the defendants Le Roy & Smith were not concerned in
the manufacture of the pipe or in making or using the machinery;
that it was made for them by the defendant Lowber at a certain
price per hundred pounds; and that they had not infringed upon the
patent of the plaintiffs.
16. That the improvement described in the plaintiff's patent of
1846 was not the same invention as that for which letters patent
had previously been granted to the Hansons and to H. B. & B.
Tatham.
17. That for the space of eighteen months from the date of the
patent of 1841, the plaintiffs had neglected to put and continue on
sale to the public, on reasonable trust, the invention or discovery
for which the said patent issued.
Page 55 U. S. 159
The evidence being closed, the case was argued before the jury,
after the court had given the charge which will be presently
stated. The jury found a verdict for the plaintiffs, which, when
increased by the court, amounted to $11,748.60. The following bill
of exceptions brought up the rulings of the court upon the several
points made:
The evidence being closed, the Judge charged the jury:
"That the first question which it was material to determine was
what was the invention or discovery of John and Charles Hanson for
which their patent had issued, as the precise character of that
invention had been the subject of controversy on the trial."
"The patentees state in their specification, that the invention
consists in certain improvements upon and additions to machinery
for making pipes of metal capable of being pressed as described in
Burr's patent dated April 11, 1820. They then describe Burr's
apparatus and the process by which the pipe was made by it and
state the defects of that plan, in consequence of which, they say,
it failed to go into general use."
"These defects they claim to have overcome and remedied; and
state that they had found that lead, and some of its alloys, when
just set, or short of fluidity, and under heat and great pressure,
in a close vessel, would reunite, after a separation of its parts,
as completely as if it had not been separated, or, in other words,
that, under these circumstances, it could be welded."
"That on this discovery and in reference to and in connection
with it, they made a change in the machinery of Burr by which they
succeeded in making perfect pipes, and were enabled to use a bridge
at the end of the cylinder and short core, and thus surmount the
difficulty of the Burr machine."
"They also state that they do not claim any of the parts -- the
cylinder, core, die, or bridge, but that they claim the combination
when used to form pipes of metal, under heat and pressure, in the
way they have described."
"There can be no doubt that if this combination is new and
produces a new and useful result, it is the proper subject of a
patent. The result is a new manufacture."
"And even if the mere combination of machinery in the abstract
is not new, still, if used and applied in connection with the
practical development of a principle, newly discovered, producing a
new and useful result, the subject is patentable. To which last
opinion and decision, the counsel for the defendants did then and
there except."
"In this view, the improvement of the plaintiffs is the
application of a combination of machinery to a new end -- to
the
Page 55 U. S. 160
development and application of a new principle, resulting in a
new and useful manufacture."
"That the discovery of a new principle is not patentable, but it
must be embodied and brought into operation by machinery so as to
produce a new and useful result."
"Upon this view of the patent, it is an important question for
the jury to determine from the evidence whether the fact is
established on which the alleged improvement is founded that lead,
in a set or semi-solid state, can thus be reunited or welded after
separation."
"The Judge here commented briefly upon the testimony, referring
to the experiments which were testified to and the results of which
were exhibited to the jury on the part of the plaintiffs and
defendants, and, in continuation, stated: "
"That there was one experiment which was testified to by Mr.
Keller, and the result of which was shown to the jury, which was
made under circumstances that seem not to be subject to any
misapprehension, and which, if he is not mistaken, and his
testimony is correct, would seem to settle the question. But this
was a question of fact, to be decided by the jury on the evidence.
Hereupon, the counsel for the defendants excepted to this part of
the charge of the Judges. That it had been objected that the
improvement described in the patent of March 14, 1846, was
different from that of March 29, 1841. The act only authorized a
reissue for the same invention, the first specification being
defective. That he had compared the descriptions contained in the
two patents, and, though the language was in some parts different,
it would be found that the improvement was substantially the same,
and that he therefore apprehended they would have no great
difficulty in this branch of the case, to which the defendants'
counsel excepted. That it was also objected that the plaintiffs'
patent was invalid for want of originality; that the invention had
been before described in public works, and Bramah, Hague, Titus,
Fox, and Potter were relied on by the defendants. That in the view
taken by the court in the construction of the patent, it was not
material whether the mere combinations of machinery referred to
were similar to the combination used by the Hansons, because the
originality did not consist in the novelty of the machinery, but in
bringing a newly discovered principle into practical application by
which a useful article of manufacture is produced and wrought pipe
made, as distinguished from cast pipe. Hereupon the defendants'
counsel excepted."
"That in the patents referred to, from the year 1797 to 1832,
the combination which was claimed to be identical, was confessedly
used for making pipe by casting with fluid lead in a
Page 55 U. S. 161
mould, and after it was set by the application of water, forcing
it out."
"And the question is whether any of these inventions are
substantially the same as the plaintiffs'; whether, even if by
these modes pipe had been successfully made for common use, it
would have been made in the same manner as the Hansons', to which
opinion the counsel for the defendants excepted."
"That it was further objected that the patentees have forfeited
their rights on account of having omitted to put and continue the
invention on sale within eighteen months after the patent was
granted, upon reasonable terms. The Judge here commented upon the
testimony on this part of the case, and in continuation said: "
"That it was not essential, under the section of the statue
referred to, that the patentees should take active means for the
purpose of putting their invention in market and forcing a sale,
but that they should at all times be ready to sell at a fair price
when a reasonable offer was made."
"That it was for the jury to say whether it was put and
continued on sale under this view of the law, to which opinion the
counsel for the defendants excepted."
"That the defendants Le Roy and Smith contend that they have not
infringed the plaintiffs' patent; that they were but the purchasers
of the pipe, and that Lowber was the manufacturer under the
agreement which has been read."
"The Judge here referred to the evidence on this branch of the
case, and said: "
"That if the contract made by the defendants with Lowber was
bona fide, and they had no connection with the manufacture
of the articles except to furnish lead and pay him a given price,
deducting the expenses, and if the contract was in fact carried out
and acted upon in that manner, then the defendants would not be
liable. But if the agreement was only colorable, and was entered
into for the purpose of deriving the benefit and profits of the
business without assuming the responsibility for the use of the
invention and for the purpose of throwing the responsibility on
Lowber, who was insolvent, then they were as responsible as he
was."
"That aiding and assisting a person in carrying on the business
and in operating the machinery would implicate the parties so
engaged. If, therefore, these defendants participated actively in
conducting the machine, directing and supervising its operations;
if the evidence establishes that position, then, as aiding and
assisting, they are as responsible as Lowber, to which last opinion
and decision the defendants' counsel excepted. "
Page 55 U. S. 162
"Prior to the giving of the preceding charge to the jury, the
defendants' counsel requested the court to instruct them according
to the following written proposition submitted, and his honor,
after he delivered the said charge, took up the said propositions
in their order and gave the instructions to the jury which are
respectively subjoined thereto."
"Proposition I. If the jury believes that the agreements
executed on the 13th of April and 13th of May, 1846, by which
Lowber, as manufacturer, was to make the pipe for LeRoy & Co.,
on his machine at 55 cents the 100 pounds was real and
bona
fide, on an actual dissolution of the partnership of Lowber
& LeRoy, and not colorable to throw the responsibility of
working the machine on Lowber alone, then the plaintiffs cannot
recover."
"Upon which his honor said that he had already given all the
instructions he deemed necessary on that point; the proposition was
correct, and it was for the jury to decide that fact."
"Proposition II. That even if the Tathams first introduced the
pipe in question in this country as an article of commerce, that
does not give them any right to recover unless the patents under
which they claim were good and valid, for an invention not before
known, used, or described in a public work."
"Upon which his honor instructed the jury, as requested by the
defendants' counsel."
"Proposition III. That if the jury believes that the combination
patented by the plaintiffs was before patented by Burroughs Titus
or anyone else in this country, or patented and described in a well
known public work abroad, the plaintiffs cannot recover, although
such machines thus patented were not actually put in operation, so
as to make pipe for the public."
"Upon which his honor instructed the jury that he had already
stated to them that the plaintiffs' invention did not consist in
the mere combination of machinery, and therefore, if those patents
were for casting lead pipe, the point was not material; that it was
not necessary that they would have made pipe for public use to
defeat a subsequent patent. To which instruction and refusal to
instruct the jury as requested the defendants' counsel
excepted."
"Proposition IV. That the Tatham patent is void on its face, the
Burr machine having the entire combination, including heat and
pressure and the lead in a set state. The patent is void for
claiming too much; should only have been for the improvement,
viz., substituting the bridge and short core for the long
core, and not for the whole combination."
"His honor declined to give this instruction, to which the
defendants' counsel excepted. "
Page 55 U. S. 163
"Proposition V. That the bridge and short core having been
before patented in this country by Burroughs Titus, and also before
used in other machines, no claim could be made for introducing into
Burr's combination such bridge."
"Upon which his honor instructed the jury as follows:
undoubtedly that is so, but that is not the plaintiffs' claim."
"Proposition VI. That the state of the lead, when used as
described in the plaintiffs' specification, being a principle of
nature, is not the subject of a patent, either alone or in
combination with the machine mentioned in that specification."
"To which his honor stated, the first part of the proposition
was correct, and the latter part not, and the defendants' counsel
excepted."
"Proposition VII. That the using of a metal in a certain state,
or at a certain temperature, alone or in combination with a
machine, was not the subject of a patent."
"To which his honor stated, I have already instructed the jury
that the invention, as described by the Hansons, is a patentable
subject, to which the defendants' counsel excepted."
"Proposition VIII. That if the jury believes that the
combination of cylinder, piston, bridge, short core, die, and
chamber, under heat and pressure, was before patented in this
country by Burroughs Titus, then the plaintiffs cannot
recover."
"Whereupon his honor instructed the jury that novelty in the
mere combination of the machinery was not essential to the
plaintiffs' right to recover except as connected with the
development and application of the principle before mentioned, to
which the defendants' counsel excepted."
"Proposition IX. That if the jury believes that the same
combination of cylinder, piston, bridge, short core, die, and
chamber, under heat and pressure, had before been patented in
England, by Bramah and published in a well known work, then the
plaintiffs cannot recover."
"His honor instructed the jury that Bramah's patent and the
Tathams' were not identical, and declined to instruct them as
requested, to all which the defendants' counsel excepted."
"Proposition X. That if the jury believed that the Burr Bramah,
Titus, and Hague machines, or either of them, were published to the
world in well known public works, and had the same combination, in
whole or in part, as the Hanson machine, up to a certain point, the
Tathams' patent is void for claiming too much,
viz., the
whole combination."
"His honor instructed the jury that he had explained to them his
views on that part of the case, and declined to instruct them as
requested in the form of which the proposition was stated, and to
which the defendants' counsel excepted. "
Page 55 U. S. 164
"Proposition XI. That the reissue of the patent of 1846, on
which alone the plaintiffs can claim, was not warranted by the
patent of 1841, it being for a different, and not the same,
invention, misdescribed by inadvertence, accident, or mistake, and
in fact was a new patent under color of a reissue."
"That if the jury believes that the reissue of 1846 was for a
different invention from the patent of 1841, and not for the same
invention, misdescribed by inadvertence, accident, or mistake, then
the plaintiffs cannot recover."
"His honor declined to instruct the jury according to the first
branch of this proposition, to which the defendants' counsel
excepted, but did instruct them in the affirmative upon the last
branch thereof."
"Proposition XII. That if the jury believes that the combination
patented was before described in some well known public work either
in this country or in England, the plaintiffs cannot recover,
although such machine or the pipe made by it was never introduced
in this country."
"Upon which his honor instructed the jury in the
affirmative."
"Proposition XIII. If the jury believes that the combination
claimed was before known or used to make lead pipe by others than
the Hansons or the Tathams, the plaintiffs are not entitled to
recover no matter how limited such knowledge or use was, if the
invention was not kept secret."
"Upon which his honor instructed the jury in the
affirmative."
"Proposition XIV. That if the maccaroni machine, or the Busk and
Harvey clay pipe machine contained the same combination as the
plaintiffs' machine, that the plaintiffs cannot recover, by reason
of applying the same combination to a new use."
"Which instructions his honor declined to give, and stated that
he had explained to them his views on that subject, and the
defendants' counsel excepted."
"Proposition XV. That if the jury believes that Mr. Lowber's
machine was used by his men when the lead was in a fluid and not in
a set or solid state, then there was no infringement and the
plaintiffs cannot recover if the plaintiffs' patent were
valid."
"Upon which his honor instructed the jury in the
affirmative."
"Proposition XVI. That the jury is the sole and exclusive judge,
as questions of fact, whether the combination and process were the
same in plaintiffs' machine as was in Bramah's or in any other of
the machines proved on the trial."
"Upon which his honor charged the jury that this was so
undoubtedly, subject, however, to the principles of law as laid
down in his preceding charge and instructions, to which the
defendants' counsel excepted. "
Page 55 U. S. 165
"Proposition XVII. That if the jury believes that the lead, when
it may be successfully used to make pipe with plaintiffs' machine,
must not be in a set or solid state, as described in their
specification, and that it can only be thus used in a fluid or
pasty state, then that the patent is void, and the jury should find
for the defendants on the ground that the specification does not
fairly and fully describe the nature of the invention claimed, nor
the condition in which the lead should be used, so as to enable the
public to ascertain the true nature of the invention, the manner of
using the machine, and the condition in which the lead ought to be
used."
"Which instruction his honor answered in the affirmative."
"The jury then retired to consider its verdict under the said
charge and instructions, and subsequently, on the 25th day of May,
1849, returned into court with a verdict for the said plaintiffs
for $11,394 damages and six cents costs."
"And inasmuch as the said several matters aforesaid do not
appear by the record of the said verdict, the said defendants'
counsel did then and there request his honor, the said Judge, to
put his seal to this bill of exceptions, containing the said
several matters aforesaid; and his honor, the said Judge, did, in
pursuance of the said request and of the statute in such case made
and provided, put his seal to this bill of exceptions, containing
the said several matters aforesaid, at the City of New York,
aforesaid, the same 25th day of May, 1849."
"S. NELSON"
Page 55 U. S. 171
MR. JUSTICE McLEAN delivered the opinion of the Court.
The action was brought in the circuit court to recover damages
for an alleged infringement of a patent for new and useful
improvements in machinery for making pipes and tubes from metallic
substances.
The declaration alleged that John and Charles Hanson, of
England, were the inventors of the improvements specified, on or
prior to the 31st of August, 1837; that on the 10th of January,
1840, the Hansons assigned to H. B. & B. Tatham, two of the
defendants in error, the full and exclusive right to said
improvements; that on the 29th of March, 1841, letters patent were
granted for the improvements to the Tathams as the assignees of the
Hansons; that afterwards, H. B. & B. Tatham assigned to G. N.
Tatham, the remaining defendant in error, an undivided third part
of the patent.
On the 14th of March, 1846, the said letters patent were
surrendered on the ground that the specifications of the
improvements claimed were defective, and a new patent was issued
which granted to the patentees, their heirs &c., for the term
of fourteen years, from the 31st of August, 1837, the exclusive
right to make and vend the improvements secured. The
Page 55 U. S. 172
declaration states the patent was of the value of fifty thousand
dollars, and that the defendants below had made and vended lead
pipe to the amount of two thousand tons in violation of the patent,
and to the injury of the plaintiffs twenty thousand dollars.
The defendants pleaded not guilty; the defendant Lowber did not
join in the plea, but permitted judgment to be entered against him
by default. On the trial, certain bills of exceptions were taken to
the instructions of the court to the jury, on which errors are
assigned.
The schedule, which is annexed to the patent and forms a part of
it, states that the invention consists
"in certain improvements upon and additions to the machinery
used for manufacturing pipes and tubes from lead or tin, or an
alloy of soft metals capable of being forced by great pressure from
out of a receiver through or between apertures, dies, and cores
when in a set or solid state, set forth in the specification of a
patent granted to Thomas Burr of Shrewsbury, in Shropshire,
England, dated the 11th of April, 1820."
After describing Burr's machine, its defects, and the
improvements made on it as claimed, the patentees say
"Pipes thus made are found to possess great solidity and unusual
strength, and a fine uniformity of thickness and accuracy of bore
is arrived at such as it is believed has never before been attained
by any other machinery."
"The essential difference in the character of this pipe, which
distinguishes it, as well as that contemplated by Thomas Burr from
all other heretofore known or attempted, is that it is wrought
under heat, by pressure and constriction, from set metal, and that
it is not a casting formed in a mould."
And they declare
"We do not claim as our invention and improvement, any of the
parts of the above-described machinery independently of its
arrangement and combination above set forth. What we do claim as
our invention and desire to secure is the combination of the
following parts above described, to-wit, the core and bridge or
guide piece, with the cylinder, the piston, the chamber and the
die, when used to form pipes of metal under heat and pressure in
the manner set forth or in any other manner substantially the
same."
The plaintiffs gave in evidence certain agreements between the
defendants showing the manufacture of lead pipe by the defendant
Lowber for the defendants Le Roy and Smith. And also evidence
tending to prove that the said John Hanson and Charles Hanson were
the original and first inventors of the improvement described in
the said letters patent; that the invention and discovery therein
described was new and useful; that the lead pipe manufactured
thereby was superior in quality
Page 55 U. S. 173
and strength, capable of resisting much greater pressure and
more free from defects than any pipe before made; that in all the
modes of making lead pipe previously known and in use, it could be
made only in short pieces, but that by this improved mode it could
be made of any required length and also of any required size, and
that the introduction of lead pipe made in the mode described had
superseded the use of that made by any of the modes before in use,
and that it was also furnished at a less price.
"And the plaintiffs also gave evidence tending to prove that
lead, when recently become set and while under heat and extreme
pressure in a close vessel, would reunite perfectly after a
separation of its parts, and that in the process described in the
said patent, lead pipe was manufactured by being thus separated and
reunited, and that the said John and Charles Hanson were the first
and original discoverers thereof, and that such discovery, and its
reduction to a practical result in the mode described in said
letters patent was useful and important."
"And the plaintiffs also gave evidence conducing to prove that
the improvement described in the letters patent was the same
invention and discovery which had been made by the said John and
Charles Hanson and for which letters patent had been granted to
them in England, and subsequently in this country, to the Tathams,
as recited in the letters patent."
And the plaintiffs also gave evidence conducing to prove that
they had been ready and willing, and had offered to sell the said
invention within eighteen months succeeding the issuing of said
letters patent to them, and also since; and had, within the said
eighteen months, sold the same for a large portion of the United
States.
The defendants' counsel then read in evidence from the
"Repertory of Arts," vol. 16, page 344, the description of the
patent to the Hansons, dated August 31, 1837. They also read in
evidence the patent issued upon the application of the plaintiffs
to the Patent Office, containing another specification, which was
annexed to the patent surrendered. And also they read the
specification of Thomas Burr's patent of April 11, 1820. Also a
patent granted to George W. Potter, described in the 12th "Franklin
Journal of Arts," published in 1833; they also read the
specification of a patent granted in England to Bush and Harvey on
December 5, 1817, and also the specification of a patent granted in
England to Joseph Bramah October 31, 1797.
Evidence was also given to show that the combination of
machinery for making lead pipe, described in public works as
Page 55 U. S. 174
having been invented by Burroughs Titus, by George W. Potter, by
Jesse Fox, by John Hague, and by Joseph Bramah, were substantially
the same as that used by the plaintiffs; that the combination of
machinery, patented as herein before stated, by Bush and Harvey,
for making pipes of clay, and that used for making maccaroni, were
substantially the same as that described in the plaintiffs'
patent.
In their charge to the jury, the court said,
"They, the plaintiffs, also state, that they do not claim any of
the parts of the machinery, the cylinder, core, die, or bridge, but
that they claimed the combination when used to form pipes of metal,
under heat and pressure, in the way they have described. There can
be no doubt that if this combination is new and produces a new and
useful result, it is the proper subject of a patent. . . . The
result is a new manufacture. And even if the mere combination of
machinery in the abstract is not new, still, if used and applied in
connection with the practical development of a principle, newly
discovered, producing a new and useful result, the subject is
patentable. In this view, the improvement of the plaintiffs is the
application of a combination of machinery to a new end; to the
development and application of a new principle, resulting in a new
and useful manufacture. That the discovery of a new principle is
not patentable, but it must be embodied and brought into operation
by machinery, so as to produce a new and an useful result. Upon
this view of the patent, it is an important question for the jury
to determine from the evidence whether the fact is established on
which the alleged improvement is founded, that lead in a set or
semi-solid state, can thus be reunited or welded after
separation."
To this instruction the defendants excepted.
It was also objected that the plaintiffs' patent was invalid for
want of originality; that the invention had been before described
in public works, and Bramah, Hague, Titus, Fox, and Potter, were
relied on by the defendants.
To this it was replied by the court
"That in the view taken by the court in the construction of the
patent, it was not material whether the mere combinations of
machinery referred to were similar to the combination used by the
Hansons, because the originality did not consist in the novelty of
the machinery, but in bringing a newly discovered principle into
practical application by which a useful article of manufacture is
produced and wrought pipe made, as distinguished from cast
pipe."
To this charge there was also an exception.
The word "principle" is used by elementary writers on patent
subjects, and sometimes in adjudications of courts, with such a
want of precision in its application as to mislead. It is
Page 55 U. S. 175
admitted that a principle is not patentable. A principle, in the
abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them an
exclusive right. Nor can an exclusive right exist to a new power,
should one be discovered in addition to those already known.
Through the agency of machinery, a new steam power may be said to
have been generated. But no one can appropriate this power
exclusively to himself under the patent laws. The same may be said
of electricity and of any other power in nature, which is alike
open to all and may be applied to useful purposes by the use of
machinery.
In all such cases, the processes used to extract, modify, and
concentrate natural agencies constitute the invention. The elements
of the power exist; the invention is not in discovering them, but
in applying them to useful objects. Whether the machinery used be
novel or consist of a new combination of parts known, the right of
the inventor is secured against all who use the same mechanical
power or one that shall be substantially the same.
A patent is not good for an effect, or the result of a certain
process, as that would prohibit all other persons from making the
same thing by any means whatsoever. This, by creating monopolies,
would discourage arts and manufactures, against the avowed policy
of the patent laws.
A new property discovered in matter, when practically applied in
the construction of a useful article of commerce or manufacture, is
patentable, but the process through which the new property is
developed and applied must be stated with such precision as to
enable an ordinary mechanic to construct and apply the necessary
process. This is required by the patent laws of England and of the
United States in order that when the patent shall run out, the
public may know how to profit by the invention. It is said in the
case of the
Househill Company v. Neilson, Webster's Patent
Cases 683,
"A patent will be good, though the subject of the patent
consists in the discovery of a great, general, and most
comprehensive principle in science or law of nature, if that
principle is by the specification applied to any special purpose so
as thereby to effectuate a practical result and benefit not
previously attained."
In that case, Mr. Justice Clerk, in his charge to the jury,
said
"the specification does not claim anything as to the form,
nature, shape, materials, numbers, or mathematical character of the
vessel or vessels in which the air is to be heated, or as to the
mode of heating such vessels,"
&c. The patent was for "the improved application of air to
produce heat in fires, forges and furnaces, where bellows or other
blowing apparatus are required."
Page 55 U. S. 176
In that case, although the machinery was not claimed as a part
of the invention, the jury were instructed to inquire
"whether the specification was not such as to enable workmen of
ordinary skill to make machinery or apparatus capable of producing
the effect set forth in said letters patent and specification."
And that in order to ascertain whether the defendants had
infringed the patent, the jury should inquire whether they
"did by themselves or others, and in contravention of the
privileges conferred by the said letters patent, use machinery or
apparatus substantially the same with the machinery or apparatus
described in the plaintiffs' specification, and to the effect set
forth in said letters patent and specification."
So it would seem that where a patent is obtained, without a
claim to the invention of the machinery, through which a valuable
result is produced, a precise specification is required, and the
test of infringement is whether the defendants have used
substantially the same process to produce the same result.
In the case before us, the court instructed the jury that the
invention did not consist
"in the novelty of the machinery, but in bringing a newly
discovered principle into practical application, by which a useful
article of manufacture is produced, and wrought pipe made as
distinguished from cast pipe."
A patent for leaden pipes would not be good, as it would be for
an effect, and would consequently prohibit all other persons from
using the same article, however manufactured. Leaden pipes are the
same, the metal being in no respect different. Any difference in
form and strength must arise from the mode of manufacturing the
pipes. The new property in the metal claimed to have been
discovered by the patentees belongs to the process of manufacture,
and not to the thing made.
But we must look to the claim of the invention stated in their
application by the patentees. They say
"We do not claim as our invention and improvement any of the
parts of the above described machinery, independently of their
arrangement and combination above set forth. . . . What we claim as
our invention and desire to secure by letters patent is the
combination of the following parts above described, to-wit, the
core and bridge or guide piece, the chamber, and the die, when used
to form pipes of metal, under heat and pressure, in the manner set
forth, or in any other manner substantially the same."
The patentees have founded their claim on this specification,
and they can neither modify nor abandon it in whole or in part. The
combination of the machinery is claimed through which the new
property of lead was developed as a part of the process in the
structure of the pipes. But the jury were instructed
"that the originality of the invention did not consist in
the
Page 55 U. S. 177
novelty of the machinery, but in bringing a newly discovered
principle into practical application."
The patentees claimed the combination of the machinery as their
invention in part, and no such claim can be sustained without
establishing its novelty -- not as to the parts of which it is
composed, but as to the combination. The question whether the newly
developed property of lead, used in the formation of pipes, might
have been patented if claimed as developed, without the invention
of machinery, was not in the case.
In the case of
Bean v. Smallwood, 2 Story 408, Mr.
Justice Story said
"He [the patentee] says that the same apparatus stated in this
last claim has been long in use, and applied, if not to chairs, at
least in other machines, to purposes of a similar nature. If this
be so, then the invention is not new, but, at most, is an old
invention or apparatus or machinery applied to a new purpose. Now I
take it to be clear that a machine or apparatus or other mechanical
contrivance, in order to give the party a claim to a patent
therefor, must in itself be substantially new. If it is old and
well known, and applied only to a new purpose, that does not make
it patentable."
We think there was error in the above instruction, that the
novelty of the combination of the machinery, specifically claimed
by the patentees as their invention, was not a material fact for
the jury, and that on that ground, the judgment must be
Reversed. The other rulings of the court excepted to, we
shall not examine, as they are substantially correct.
MR. JUSTICE NELSON, MR. JUSTICE WAYNE, and MR. JUSTICE GRIER
dissented.
MR. JUSTICE NELSON, dissenting.
The patent in this case, according to the general description
given by the patentees, is for improvements upon and additions to
the machinery or apparatus of Thomas Burr for manufacturing pipes
and tubes from metallic substances. They declare that the nature of
their invention and the manner in which the same is to operate are
particularly described and set forth in their specification. In
that, they refer to the patent of Burr of the 11th April, 1820, for
making lead pipe out of set or solid lead by means of great
pressure, the product being wrought pipe, as contradistinguished
from cast, or pipe made according to the draw-bench system. The
apparatus, as described by Burr consisted of a strong iron
cylinder, bored sufficiently true for a piston to traverse easily
within it. This cylinder was closed at one end by the piston, and
also closed at the other, except a small aperture for the die which
formed the external diameter of the pipe. The core or mandril,
which determined the inner
Page 55 U. S. 178
diameter, was a long cylindrical rod of steel, on end of which
was attached to the face of the piston, extending through the
center of the cylinder, and passing also through the center of the
die at the opposite end, leaving a space around the core and
between it and the die for the formation of the pipe. The metal to
form the pipe was admitted into the cylinder in a fluid state, and
when it become set or solid, the power of a hydraulic press was
applied to the head of the piston, which, moving against the body
of solid lead in the cylinder, drove it through the die, the long
core advancing with the piston and with the body of lead through
the die, and thus forming the pipe. The cylinder usually holds from
three to four hundred pounds of lead, and continuous pipe is made
till the whole charge is driven out.
This plan, though one of deserved merit and of great
originality, failed when reduced to practice except for the purpose
of making very large pipe -- larger than that usually in demand --
and consequently passed out of general use. The long core attached
to the face of the piston, advancing with it in the solid lead
under the great pressure required, was liable to warp and twist out
of a straight line and out of center in the die, which had the
effect to destroy the uniformity of the thickness and centrality of
the bore of the pipe.
The old mode, therefore, of making pipe by the draw-bench system
continued down to 1837, when the patentees in this case discovered
by experiment that lead, when recently set and solid but still
under heat and extreme pressure in a close vessel, would reunite
after a separation of its parts and "heal," in the language of the
patentees, "as it were by the first intention," as completely as
though it had not been divided.
Upon the discovery of this property of lead, which had never
before been known, but, on the contrary, had been supposed and
believed, by all men of science skilled in metals, to be
impossible, the patentees made an alteration in the apparatus of
Burr founded upon this new property discovered in the metal, and
succeeded completely in making wrought pipe out of solid lead by
means of the hydraulic pressure. The product was so much superior
in quality to that made according to the old mode that it
immediately wholly superseded it in the market. The pipe was also
made much cheaper.
The patentees, by their discovery, were enabled to dispense with
the long core of Burr and to fix firmly a bridge or cross bars at
the end of the cylinder near the die, to which bridge they fastened
a short core extending into and through the die. By this
arrangement they obtained a firm, immovable core that always
preserved its centrality with the die and secured the manufacture
of pipe of uniformity of thickness of wall and
Page 55 U. S. 179
accuracy of bore of any dimension. The lead, after being
admitted into the cylinder in a fluid state, was allowed to remain
till it became solid, and was then driven by the piston through the
apertures in the bridge into the chamber between it and the die,
where the parts reunited after the separation as completely as
before, and, passing out at the die around the fixed short core,
formed perfect pipe.
The patentees state that they do not intend to confine
themselves to the arrangement of the apparatus thus particularly
specified, and point out several other modes by which the same
result may be produced, all of which variations would readily
suggest themselves, as they observe, to any practical engineer
without departing from the substantial originality of the
invention, the remarkable feature of which, they say, is that lead,
when in a set state, being yet under heat, can be made by extreme
pressure to reunite perfectly around a core after separation, and
thus be formed into strong pipes or tubes. Pipes thus made are
found to possess great solidity and unusual strength, and a fine
uniformity such as had never before been attained by any other
mode. The essential difference in its character, and which
distinguishes it from all other theretofore known, they add, is
that it is wrought under heat, by pressure and constriction, from
set or solid metal.
They do not claim as their invention or improvement any of the
parts of the machinery independently of the arrangement and
combination set forth.
"What we claim as our invention [they say] is the combination of
the following parts above described, to-wit, the core and bridge or
guide piece, with the cylinder, the piston, the chamber, and die,
when used to form pipes of metal under heat and pressure in the
manner set forth or in any other manner substantially the
same."
It is supposed that the patentees claim as the novelty of their
invention the arrangement and combination of the machinery which
they have described, disconnected from the employment of the new
property of lead which they have discovered, and by the practical
application and use of which they have succeeded in producing the
new manufacture. And the general title or description of their
invention given in the body of their letters patent is referred to
as evidence of such claim. But every patent, whatever may be the
general heading or title by which the invention is designated,
refers to the specification annexed for a more particular
description, and hence this Court has heretofore determined that
the specification constitutes a part of the patent, and that they
must be construed together when seeking to ascertain the discovery
claimed.
Hogg v.
Emerson, 6 How. 437.
Page 55 U. S. 180
The same rule of construction was applied by the court of
Exchequer in England in the case of Neilson's patent for the hot
air blast. Webster's Cases 373.
Now on looking into the specification, we see that the leading
feature of the invention consists in the discovery of a new
property in the article of lead and in the employment and
adaptation of it, by means of the machinery described, to the
production of a new article, wrought pipe, never before
successfully made. Without the discovery of this new property in
the metal, the machinery or apparatus would be useless, and not the
subject of a patent. It is in connection with this property and the
embodiment and adaptation of it to practical use that the machinery
is described and the arrangement claimed. The discovery of this new
element or property led naturally to the apparatus by which a new
and most useful result is produced. The apparatus was but
incidental and subsidiary to the new and leading idea of the
invention. And hence the patentees set forth as the leading feature
of it, the discovery that lead in a solid state, but under heat and
extreme pressure in a close vessel, will reunite after separation
of its parts as completely as though it had never been separated.
It required very little ingenuity, after the experiments in a close
vessel, by which this new property of the metal was first
developed, to construct the necessary machinery for the formation
of the pipe. The apparatus essential to develop this property would
at once suggest the material parts, especially in the state of the
art at the time. Any skillful mechanic, with Burr's machine before
him, would readily construct the requisite machinery.
The patentees therefore, after describing their discovery of
this property of lead and the apparatus by means of which they
apply the metal to the manufacture of pipe, claim the combination
of the machinery only when used to form pipes under heat and
pressure in the manner set forth or in any other manner
substantially the same. They do not claim it as new separately, or
when used for any other purpose, or in any other way, but claim it
only when applied for the purpose and in the way pointed out in the
specification. The combination, as machinery, may be old; may have
been long used; of itself, what no one could claim as his
invention, and may not be the subject of a patent. What is claimed
is that it never had been before applied or used in the way and for
the purpose they have used and applied it -- namely in the
embodiment and adaptation of a newly discovered property in lead by
means of which they are enabled to produce a new manufacture --
wrought pipe -- out of a mass of solid lead. Burr had attempted it,
but failed. These patentees, after the lapse of seventeen years,
having discovered
Page 55 U. S. 181
this new property in the metal, succeeded, by the use and
employment of it, and since then none other than wrought lead pipe
made out of solid lead has been found in the market, having
superseded, on account of its superior quality and cheapness, all
other modes of manufacture.
Now the construction, which I understand a majority of my
brethren are inclined to give to this patent -- namely that the
patentees claim, as the originality of their invention, simply the
combination of the machinery employed, with great deference, seems
to me contrary to the fair and reasonable import of the language of
the specification, and also of the summary of the claim. The
tendency of modern decisions is to construe specifications
benignly, and to look through mere forms of expression, often
inartificially used, to the substance, and to maintain the right of
the patentee to the thing really invented, if ascertainable upon a
liberal consideration of the language of the specification, when
taken together. For this purpose, phrases standing alone are not to
be singled out, but the whole are to be taken in connection. 1
Sumn. 482-485.
Baron Parke observed, in delivering the opinion of the court in
Neilson's patent,
"That half a century ago, or even less, within fifteen or twenty
years, there seems to have been very much a practice with both
judges and juries to destroy the patent right, even of beneficial
patents, by exercising great astuteness in taking objections either
as to the title of the patent, but more particularly as to the
specifications, and many valuable patent rights have been destroyed
in consequence of the objections so taken. Within the last ten
years or more, the courts have not been so strict in taking
objections to the specifications, and they have endeavored to hold
a fair hand between the patentee and the public, willing to give
the patentee the reward of his patent."
Construing the patent before us in this spirit, I cannot but
think that the thing really discovered, and intended to be
described, and claimed by these patentees cannot well be mistaken.
That they did not suppose the novelty of their invention consisted
simply in the arrangement of the machinery described, is manifest.
They state distinctly that the leading feature of their discovery
consisted of this new property of lead and some of its alloys --
this, they say, is the remarkable feature of their invention -- and
the apparatus described is regarded by them as subordinate, and as
important only as enabling them to give practical effect to this
newly discovered property, by means of which they produce the new
manufacture. If they have failed to describe and claim this as
belonging to their invention, it is manifest upon the face of their
specification that they have
Page 55 U. S. 182
failed to employ the proper words to describe and claim what
they intended, and that the very case is presented in which, if the
court, in the language of Baron Parke, will endeavor to hold a fair
hand between the patentee and the public, it will look through the
forms of expression used and discover, if it can, the thing really
invented. Apply to the specification this rule of construction, and
all difficulty at once disappears. The thing invented and intended
to be claimed is too apparent to be mistaken.
The patentees have certainly been unfortunate in the language of
the specification if, upon a fair and liberal interpretation, they
have claimed only the simple apparatus employed; when they have not
only set forth the discovery of this property in the metal, as the
great feature in their invention, but, as is manifest, without it
the apparatus would have been useless. Strike out this new property
from their description and from their claim and nothing valuable is
left. All the rest would be worthless. This lies at the foundation
upon which the great merit of the invention rests, and without a
knowledge of which the new manufacture could not have been
produced, and, for aught we know, the world would have been
deprived of it down to this day.
If the patentees had claimed the combination of the core and
bridge or guide piece with the cylinder, the chambers, and the die,
and stopped there, I admit the construction now adopted by a
majority of my brethren could not be denied, although even then it
would be obvious from an examination of the specification as a
whole that the draftsman had mistaken the thing really invented and
substituted in its place matters simply incidental and of
comparative insignificance. But the language of the claim does not
stop here. The combination of these parts is claimed only when used
to form pipes of lead under heat and pressure in the manner set
forth -- that is, when used for the embodiment and adaptation of
this new property in the metal for making wrought pipe out of a
solid mass of lead. This guarded limitation of the use excludes the
idea of a claim to the combination for any other, and ties it down
to the instance when the use incorporates within it the new idea or
element which gives to it its value, and by means of which the new
manufacture is produced. How then can it be consistently held that
here is a simple claim to the machinery, and nothing more, when a
reasonable interpretation of the words not only necessarily
excludes any such claim, but in express terms sets forth a
different one -- one not only different in the conception of the
invention, but different in the practical working of the apparatus,
to accomplish the purpose intended?
Page 55 U. S. 183
I conclude therefore that the claim in this case is not simply
for the apparatus employed by the patentees, but for the embodiment
or employment of the newly discovered property in the metal and the
practical adaption of it by these means to the production of a new
result -- namely the manufacture of wrought pipe out of solid
lead.
Then is this the proper subject matter of a patent?
This question was first largely discussed by counsel and court
in the celebrated case of
Boulton v. Bull, 2 Hen. 31, 463,
involving the validity of Watts' patent, which was for "a new
invented method for lessening the consumption of fuel and steam in
fire engines." This was effected by enclosing the steam vessel or
cylinder with wood or other material, which preserved the heat in
the steam vessel, and by condensing the steam in separate vessels.
It was admitted on the argument that there was no new mechanical
construction invented by Watt, and the validity of the patent was
placed on the ground that it was for well known principles,
practically applied, producing a new and useful result. On the
other hand it was conceded that the application of the principles
in the manner described was new and produced the result claimed,
but it was denied that this constituted the subject matter of a
patent. Heath and Buller, Justices, agreed with the counsel for the
defendant. But Lord Chief Justice Eyre laid down the true doctrine,
and which, I think, will be seen to be the admitted doctrine of the
courts of England at this day. "Undoubtedly," he observed,
"there can be no patent for a mere principle, but for a
principle so far embodied and connected with corporeal substances
as to be in a condition to act and to produce effects in any art,
trade, mystery, or manual occupation I think there may be a patent.
Now this [he continues] is in my judgment the thing for which the
patent stated in the case was granted, and this is what the
specification describes, though it miscalls it a principle. It is
not that the patentee conceived an abstract notion that the
consumption of steam in fire engines may be lessened, but he has
discovered a practical manner of doing it, and for that practical
manner of doing it he has taken this patent. Surely [he observes]
this is a very different thing from taking a patent for a
principle. The apparatus, as we have said, was not new. There is no
new mechanical construction, said the counsel for the patentee,
invented by Watt capable of being the subject of a distinct
specification, but his discovery was of a principle, the method of
applying which is clearly set forth."
Chief Justice Eyre admitted that the means used were not new,
and that if the patent had been taken out for the mechanism used,
it must fail.
Page 55 U. S. 184
He observed
"When the effect produced is some new substance or composition
of things, it should seem that the privilege of the sole working or
making ought to be for such new substances or composition, without
regard to the mechanism or process by which it has been produced,
which, though perhaps also new, will be only useful as producing
the new substance."
Again,
"When the effect produced is no new substance or composition of
things, the patent can only be for the mechanism, if new mechanism
is used, or for the process, if it be a new method of operating,
with or without old mechanism, by which the effect is
produced."
And again he observes, "If we wanted an illustration of the
possible merit of a new method of operating with old machinery, we
might look to the identical case before the court." Pp. 496, 493,
495.
This doctrine in expounding the law of patents was announced in
1795, and the subsequent adoption of it by the English courts shows
that Chief Justice Eyre was considerably in advance of his
associates upon this branch of the law. He had got rid, at an early
day, of the prejudice against patents so feelingly referred to by
Baron Parke in
Neilson v. Harford, and comprehended the
great advantages to his country if properly encouraged. He observed
in another part of his opinion that
"The advantages to the public from improvements of this kind are
beyond all calculation important to a commercial country, and the
ingenuity of artists who turn their thoughts towards such
improvements is in itself deserving of encouragement."
This doctrine was recognized by the Court of King's Bench in
The King v. Wheeler, 2 B. & Ald. 340, 350.
It is there observed that the word "manufactures" in the patent
act may be extended to a mere process to be carried on by known
implements or elements, acting upon known substances and ultimately
producing some other known substance, but producing it in a cheaper
or more expeditious manner or of a better or more useful kind.
Now if this process to be carried on by known implements acting
upon known substances, and ultimately producing some other known
substance of a better kind, is patentable,
a fortiori will
it be patentable if it ultimately produces not some other known
substance, but an entirely new and useful substance.
In Forsyth's patent, which consists of the application and use
of detonating powder as priming for the discharge of firearms, it
was held that whatever might be the construction of the lock or
contrivance by which the powder was to be discharged, the use of
the detonating mixture as priming, which article of itself was not
new, was an infringement. Webster's Pat.Cas. 94, 97, n; Curtis on
Pat. 230.
Page 55 U. S. 185
This case is founded upon a doctrine which has been recognized
in several subsequent cases in England -- namely that where a
person discovers a principle or property of nature, or where he
conceives of a new application of a well known principle or
property of nature and also of some mode of carrying it out into
practice so as to produce or attain a new and useful effect or
result, he is entitled to protection against all other modes of
carrying the same principle or property into practice for obtaining
the same effect or result.
The novelty of the conception consists in the discovery and
application in the one case, and of the application in the other,
by which a new product in the arts or manufactures is the effect,
and the question in case of an infringement is as to the
substantial identity of the principle or property and of the
application of the same, and consequently the means or machinery
made use of, material only so far as they affect the identity of
the application.
In the case of Jupe's patent for "an improved expanding table,"
Baron Alderson observed, speaking of this doctrine,
"You cannot take out a patent for a principle; you may take out
a patent for a principle coupled with the mode of carrying the
principle into effect. But then you must start with having invented
some mode of carrying the principle into effect; if you have done
that, then you are entitled to protect yourself from all other
modes of carrying the same principle into effect, that being
treated by the jury as piracy of your original invention."
Webster's Pat.Cases 147. The same doctrine was maintained also
in the case of Neilson's patent for the hot air blast, in the K. B.
and Exchequer in England. Webster's Pat.Cases 342, 371; Curtis
§ 74, 148, 232; Webster's Pat.Cases 310.
This patent came also before the Court of Sessions in Scotland,
and in submitting the case to the jury, the Lord Justice
remarked,
"That the main merit -- the most important part of the invention
-- may consist in the conception of the original idea -- in the
discovery of the principle in science or of the law of nature
stated in the patent, and little or no pains may have been taken in
working out the best mode of the application of the principle to
the purpose set forth in the patent. But still, if the principle is
stated to be applicable to any special purpose, so as to produce
any result previously unknown in the way and for the objects
described, the patent is good. It is no longer an abstract
principle. It becomes to be a principle turned to account, to a
practical object, and applied to a special result. It becomes then
not an abstract principle, which means a principle considered apart
from any special purpose or practical operation, but the discovery
and statement of a principle for a
Page 55 U. S. 186
special purpose -- that is, a practical invention, a mode of
carrying a principle into effect. That such is the law [he
observes] if a well known principle is applied for the first time
to produce a practical result for a special purpose has never been
disputed, and it would be very strange and unjust to refuse the
same legal effect when the inventor has the additional merit of
discovering the principle as well as its application to a practical
object."
Then he observes again
"Is it an objection to the patent that in its application of a
new principle to a certain specified result, it includes every
variety of mode of applying the principle according to the general
statement of the object and benefit to be attained? This [he
observes] is a question of law, and I must tell you distinctly that
this generality of claim -- that is, for all modes of applying the
principle to the purpose specified according to or within a general
statement of the object to be attained and of the use to be made of
the agent to be so applied -- is no objection to the patent. The
application or use of the agent for the purpose specified may be
carried out in a great variety of ways, and only shows the beauty
and simplicity and comprehensiveness of the invention."
This case was carried up to the House of Lords on exceptions to
the charge, and among others, to this part of it, which was the
sixth exception, and is as follows:
"Insofar as he the Judge did not direct the jury that on the
construction of the patent and specification, the patentee cannot
claim or maintain that his patent is one which applies to all the
varieties in the apparatus which may be employed in heating air
while under blast, but was limited to the particular described in
the specification."
And although the judgment of the court was reversed in the House
of Lords on the eleventh exception, it was expressly affirmed as
respects this one. Lord Campbell at first doubted, but after the
decision of the courts in England on this patent he admitted the
instruction was right. Webster, Pat.Cases 683, 684, 698, 717.
I shall not pursue a reference to one authorities on this
subject any further. The settled doctrine to be deduced from them,
I think, is that a person having discovered the application for the
first time of a well known law of nature or well known property of
matter by means of which a new result in the arts or in
manufactures is produced and has pointed out a mode by which it is
produced is entitled to a patent, and if he has not tied himself
down in the specification to the particular mode described, he is
entitled to be protected against all modes by which the same result
is produced by an application of the same law of nature or property
of matter. And
a fortiori if he has
Page 55 U. S. 187
discovered the law of nature or property of matter and applied
it is he entitled to the patent and aforesaid protection.
And why should not this be the law? The original conception --
the novel idea in the one case, is the new application of the
principle or property of matter, and the new product in the arts or
manufactures -- in the other, in the discovery of the principle or
property and application, with like result. The mode or means are
but incidental, and flowing naturally from the original conception,
and hence of inconsiderable merit. But, it is said, this is
patenting a principle or element of nature. The authorities to
which I have referred answer the objection. It was answered by
Chief Justice Eyre in the case of Watts' patent in 1795,
fifty-seven years ago, and more recently in still more explicit and
authoritative terms. And what if the principle is incorporated in
the invention and the inventor protected in the enjoyment for the
fourteen years. He is protected only in the enjoyment of the
application for the special purpose and object to which it has been
newly applied by his genius and skill. For every other purpose and
end, the principle is free for all mankind to use. And where it has
been discovered as well as applied to this one purpose, and open to
the world as to every other, the ground of complaint is certainly
not very obvious. Undoubtedly, within the range of the purpose and
object for which the principle has been for the first time applied,
piracies are interfered with during the fourteen years. But any
body may take it up and give to it any other application to the
enlargement of the arts and of manufactures without restriction. He
is only debarred from the use of the new application for the
limited time which the genius of others has already invented and
put into successful practice. The protection does not go beyond the
thing which for the first time has been discovered and brought into
practical use, and is no broader than that extended to every other
discoverer or inventor of a new art or manufacture.
I own I am incapable of comprehending the detriment to the
improvements in the country that may flow from this sort of
protection to inventors.
To hold in the case of inventions of this character that the
novelty must consist of the mode or means of the new application
producing the new result would be holding against the facts of the
case, as no one can but see that the original conception reaches
far beyond these. It would be mistaking the skill of the mechanic
for the genius of the inventor.
Upon this doctrine some of the most brilliant and useful
inventions of the day by men justly regarded as public benefactors,
and whose names reflect honor upon their country -- the
successful
Page 55 U. S. 188
application of steam power to the propulsion of vessels and
railroad cars, the application of the electric current for the
instant communication of intelligence from one extremity of the
country to the other, and the more recent but equally brilliant
conception, the propulsion of vessels by the application of the
expansibility of heated air, the air supplied from the atmosphere
that surrounds them. It would be found on consulting the system of
laws established for their encouragement and protection that the
world had altogether mistaken the merit of their discovery; that
instead of the originality and brilliancy of the conception that
had been unwittingly attributed to them, the whole of it consisted
of some simple mechanical contrivances which a mechanician of
ordinary skill could readily have devised. Even Franklin, if he had
turned the lightning to account, in order to protect himself from
piracies must have patented the kite, and the thread, and the key,
as his great original conception, which gave him a name throughout
Europe as well as at home for bringing down this element from the
heavens and subjecting it to the service of man. And if these
simple contrivances, taken together and disconnected from the
control and use of the element by which the new application and new
and useful result may have been produced, happen to be old and well
known, his patent would be void; or if some follower in the tract
of genius, with just intellect enough to make a different
mechanical device or contrivance for the same control and
application of the element and produce the same result, he would,
under this view of the patent law, entitle himself to the full
enjoyment of the fruits of Franklin's discovery.
If I rightly comprehend the ground upon which a majority of my
brethren have placed the decision, they do not intend to controvert
so much the doctrine which I have endeavored to maintain, and which
I think rests upon settled authority, as the application of it to
the particular case. They suppose that the patentees have claimed
only the combination of the different parts of the machinery
described in their specification, and therefore, are tied down to
the maintenance of that as the novelty of their invention. I have
endeavored to show that this is a mistaken interpretation, and that
they claim the combination only, when used to embody and give a
practical application to the newly discovered property in the lead,
by means of which a new manufacture is produced -- namely, wrought
pipe out of a solid mass of lead, which it is conceded was never
before successfully accomplished.
For these reasons, I am constrained to differ with the judgment
they have arrived at, and am in favor of affirming that of the
court below.
Page 55 U. S. 189
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the Southern
District of New York, and was argued by counsel. On consideration
whereof it is now here ordered and adjudged by this Court that the
judgment of the said circuit court in this cause be and the same is
hereby reversed with costs, and that this cause be and the same is
hereby remanded to the said circuit court with directions to award
a
venire facias de novo.
