In a suit brought for an infringement of a patent right, the
defendant ought to be allowed to give in evidence the patent under
which he claims, although junior to the plaintiff's patent.
Burden's patent for "a new and useful machine for rolling
puddler's balls and other masses of iron in the manufacture of
iron" was a patent for a machine, and not a process, although the
language of the claim was equivocal.
The difference explained between a process and a machine.
Hence it was erroneous for the circuit court to exclude evidence
offered to show that the practical manner of giving effect to the
principle embodied in the machine of the defendants was different
from that of Burden, the plaintiff, that the machine of the
defendants produced a different mechanical result from the other,
and that the mechanical structure and mechanical action of the two
machines were different.
Evidence offered as to the opinion of the witness upon the
construction of the patent, whether it was for a process or a
machine, was properly rejected.
Peter A. Burden, as assignee of Henry Burden, brought his action
against Corning and Winslow for a violation of a patent granted to
Henry as the original and first inventor and discoverer of a new
and useful machine for rolling puddle balls or other masses of iron
in the manufacture of iron.
What took place at the trial is set forth in the opinion of the
Court. Under the instructions of the circuit court, the jury
Page 56 U. S. 253
found a verdict for the plaintiffs, with one hundred dollars
damages; upon which the defendants brought the case up to this
Court by a writ of error.
Page 56 U. S. 265
MR. JUSTICE GRIER delivered the opinion of the Court.
Peter A. Burden, who is assignee of a patent granted to Henry
Burden, brought this suit against the plaintiffs in error for
infringement of his patent. The declaration avers that Henry Burden
was "the first inventor of a new and useful machine for rolling
puddle balls," for which a patent was granted to him in 1840, and
that the defendants, Corning and Winslow, "made, used &c., this
said new and useful machine in violation and infringement of the
exclusive right so secured to plaintiff."
The defendants below, under plea of the general issue, gave
notice that they would prove on the trial that Henry Burden "was
not the first and original inventor of the supposed new and useful
machine for rolling puddle balls &c.," that the machine of the
plaintiff, and the principle of its operation was not new, and that
the common and well known machines called nobbling rolls, which
were in use long before the application of Burden for a patent,
embraced the same invention and improvements used for substantially
the same purpose. And after setting forth many other matters to be
given in evidence affecting the novelty of plaintiff's machine, the
notice denies that the machine used by the defendant was an
infringement of that patented by plaintiff, and avers that the
machine used by them was described in a patent issued to the
defendant, Winslow, in December, 1847, "for rolling and compressing
puddlers' balls," differing in principle and mode of operation from
that described in the plaintiff's patent.
To support the issue in his behalf, the plaintiff gave in
evidence a patent to Henry Burden, dated 10 December, 1840, for "a
new and useful machine for rolling puddlers' balls and other masses
of iron in the manufacture of iron," and followed it by testimony
tending to show the novelty and utility of his
Page 56 U. S. 266
machine and that the machine used by the defendants was
constructed on the same principles, and there rested his case.
The defendants then offered to read in evidence the patent of
Winslow for his "new and useful improvement in rolling and
compressing puddlers' balls." The plaintiff objected to this
evidence as irrelevant, and the court sustained the objection and
overruled the evidence. This ruling of the court forms the subject
of defendant's first bill of exceptions.
The defendants then proceeded to introduce testimony tending to
show want of originality in the plaintiff's machine, and also that
the principle and mode of operation of the defendant's machine was
different from that described in the plaintiff's patent, and
finally called a witness named Hibbard. This witness gave a history
of the various processes and machines used in the art of converting
cast iron into blooms or malleable iron. He spoke of the processes
of puddling, shingling, and rolling, and attempted to define the
difference between a process and a machine. The introduction of
this philological discussion seems at once to have changed the
whole course of investigation, to the entire neglect of the
allegations of the declaration and of the issues set forth in the
pleadings in support of which all the previous testimony had been
submitted to the jury. The defendant's counsel then proposed the
following question to the witness: "Do you consider the invention
of Mr. Burden, as set forth in his specification, to be for a
process or a machine?" This question was objected to, overruled by
the court, and a bill of exceptions sealed.
The counsel for the defendants then offered to prove by this
witness
"that the practical manner of giving effect to the principle
embodied in the machine used by the defendants was entirely
different from the practical manner of giving effect to the
principle embodied in Mr. Burden's machine, that the principles of
the two machines, as well as the practical manner of carrying out
those principles, were different, and that the machine used by the
defendants produced, by its action on the iron, a different
mechanical result on a different mechanical principle from that
produced in Mr. Burden's machine."
To the introduction of this testimony the plaintiff's counsel
objected, and it was overruled by the court and, at the defendant's
instance, a bill of exceptions sealed.
The defendant's counsel then proposed to prove
"that the machine used by the defendants differed in point of
mechanical structure and mechanical action from the machines
described in the plaintiff's specification."
This testimony was also overruled, and exceptions taken.
After some further examination of witnesses, the learned
judge
Page 56 U. S. 267
announced his intention of instructing the jury in the three
following propositions, upon which the defendant's counsel declined
to give further testimony, and excepted to his instructions.
"1. The letters patent to Henry Burden, which have been given in
evidence by the plaintiff, are for a new process, mode, or method
of converting puddler's balls into blooms by continuous pressure
and rotation of the ball between converging surfaces, thereby
dispensing with the hammer, alligator jaws, and rollers,
accompanied with manual labor, previously in use to accomplish the
same purpose. And the said letters patent secure to the patentee
the exclusive right to construct, use, and vend any machine adapted
to accomplish the objects of his invention as above specified by
the process, mode, or method above mentioned."
"2. The machines for milling buttons, milling coin, and rolling
shot which have been given in evidence by the defendants do not
show a want of novelty in the invention of the said patentee, as
already described, if the processes used in them, the purposes for
which they were used, and the objects accomplished by them, were
substantially different from those of the said letters patent."
"3. That the machine used by the defendants is an infringement
of the said letters patent if it converts puddlers' balls into
blooms by the continuous pressure and rotation of the balls between
converging surfaces, although its mechanical construction and
action may be different from those of the machines described in the
said letters patent."
As the first instruction of the court contains the most
important point in the case, and a decision of it will dispose of
most of the others, we shall consider it first in order.
Is the plaintiff's patent for a process or a machine?
A process,
eo nomine, is not made the subject of a
patent in our act of Congress. It is included under the general
term "useful art." An art may require one or more processes or
machines in order to produce a certain result or manufacture. The
term machine includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce
a certain effect or result. But where the result or effect is
produced by chemical action, by the operation or application of
some element or power of nature, or of one substance to another,
such modes, methods, or operations are called "processes." A new
process is usually the result of discovery; a machine, of
invention. The arts of tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores, and numerous others are
usually carried on by processes, as distinguished from machines.
One may discover a new and useful
Page 56 U. S. 268
improvement in the process of tanning, dyeing &c.,
irrespective of any particular form of machinery or mechanical
device. And another may invent a labor-saving machine by which this
operation or process may be performed, and each may be entitled to
his patent. As, for instance, A has discovered that by exposing
India rubber to a certain degree of heat in mixture or connection
with certain metallic salts he can produce a valuable product or
manufacture; he is entitled to a patent for his discovery as a
process or improvement in the art, irrespective of any machine or
mechanical device. B, on the contrary, may invent a new furnace or
stove or steam apparatus by which this process may be carried on
with much saving of labor and expense of fuel, and he will be
entitled to a patent for his machine as an improvement in the art.
Yet A could not have a patent for a machine or B for a process, but
each would have a patent for the means or method of producing a
certain result or effect, and not for the result or effect
produced. It is for the discovery or invention of some practicable
method or means of producing a beneficial result or effect that a
patent is granted, and not for the result or effect itself. It is
when the term process is used to represent the means or method of
producing a result that it is patentable, and it will include all
methods or means which are not effected by mechanism or mechanical
combinations.
But the term "process" is often used in a more vague sense, in
which it cannot be the subject of a patent. Thus, we say that a
board is undergoing the "process" of being planed, grain of being
ground, iron of being hammered or rolled. Here the term is used
subjectively or passively as applied to the material operated on,
and not to the method or mode of producing that operation, which is
by mechanical means, or the use of a machine as distinguished from
a process.
In this use of the term. it represents the function of a
machine, or the effect produced by it on the material subjected to
the action of the machine. But it is well settled that a man cannot
have a patent for the function or abstract effect of a machine, but
only for the machine which produces it.
It is by not distinguishing between the primary and secondary
sense of the term "process" that the learned judge below appears to
have fallen into an error. It is clear that Burden does not pretend
to have discovered any new process by which cast iron is converted
into malleable iron, but a new machine or combination of mechanical
devices by which the slag or impurities of the cast iron may be
expelled or pressed out of the metal when reduced to the shape of
puddlers' balls. The machines used before to effect this
compression were tilt hammers
Page 56 U. S. 269
and alligator's jaws, acting by percussion and pressure, and by
nobbling rolls with eccentric grooves which compressed the metal by
use of the inclined plane in the shape of a cyclovolute or snail
cam. In subjecting the metal to this operation by the action of
these machines, more time and manual labor is required than when
the same function is performed by the machine of Burden. It saved
labor, and thus produced the result in a cheaper, if not a better,
manner, and was therefore the proper subject of a patent.
In either case, the iron may be said, in the secondary sense of
the term, to undergo a "process" in order to change its qualities
by pressing out its impurities, but the agent which effects the
pressure is a machine or combination of mechanical devices.
The patent of Burden alleges no discovery of a new process, but
only that he has invented a machine, and therefore correctly states
the nature of his invention.
The patent law requires that "every patent shall contain a short
description or title of the invention or discovery, indicating its
nature and design," &c. The patent in question recites that
"Whereas Henry Burden, of Troy, New York, has alleged that he
has invented a new and useful machine for rolling puddle balls or
other masses of iron in the manufacture of iron, which he states
has not been known or used before his application, has made oath
that he is a citizen of the United States, that he does verily
believe that he is the original and first inventor or discoverer of
the said machine"
&c.
The specification declares that his improvement consists in "the
employment of a new and useful machine for rolling of puddlers'
balls;" again he calls it "my rolling machine," and describes his
"machine as consisting of a cast iron cylinder," &c. In fine,
his specification sets forth the "particulars" of his invention in
exact accordance with its title in the patent and in clear,
distinct, unequivocal, and proper phraseology.
It is true that the patentee, after describing his machine, has
set forth his claim in rather ambiguous and equivocal terms which
might be construed to mean either a process or machine. In such
case, the construction should be that which is most favorable to
the patentee,
"ut res magis valeat quam pereat." His
patent having a title which claims a machine, and his specification
describing a machine, to construe his claim as for the function,
effect, or result of his machine would certainly endanger if not
destroy its validity. His claim cannot change or nullify his
previous specification with safety to his patent. He cannot
describe a machine which will perform a certain function and then
claim the function itself and all other machines that may be
invented to perform the same function.
Page 56 U. S. 270
We are of opinion, therefore, that the learned judge of the
court below erred in the construction of the patent and in his
first proposition or instruction to the jury. And as the second and
third instructions are based on the first, they must fall with it.
Taking the bills of exception to rejection of evidence in the
inverse order, it is clear that the last two rulings, being founded
on the erroneous construction of the patent, are of course,
erroneous. The testimony offered was directly relevant to the
issues trying, and should have been received.
The refusal of the court to hear the opinion of experts as to
the construction of the patent was proper. Experts may be examined
as to the meaning of terms of art on the principle of
"cuique
in sua arte credendum," but not as to the construction of
written instruments.
It remains only to notice the first bill of exceptions, which
was to the rejection of the defendant's patent.
This is a question on which there may be some difference of
opinion. In some circuits it has been the practice, when the
defendant has a patent for his invention, to read it to the jury
without objection; in others it is not received, on the ground that
it is irrelevant to the issue, which is a contest between the
machine of the defendant and the patent of the plaintiff, and that
a posterior patent could not justify an infringement of a prior one
for the same invention.
By the patent act of 1793, any person desirous of obtaining a
patent for an alleged invention made application to the Secretary
of State and received his patent on payment of the fees and on a
certificate of the Attorney General that his application "was
conformable to the act." No examination was made by persons
qualified to judge whether the alleged invention was new or useful
or had been patented before. That rested wholly on the oath of the
applicant. The patent act of 1790 had made a patent
prima
facie evidence, but this act was repealed by that of 1793, and
this provision was not reenacted in it. Hence a patent was not
received in courts of justice as even
prima facie evidence
that the invention patented was new or useful, and the plaintiff
was bound to prove these facts in order to make out his case. But
the Act of 4 July, 1836, introduced a new system and an entire
change in the mode of granting patents. It provided for a new
officer, styled a Commissioner of Patents, to "superintend,
execute, and perform all acts and things touching and respecting
the granting and issuing of patents &c." The Commissioner was
authorized to appoint a chief clerk and three examining clerks,
machinist, and other officers.
On the filing of an application, the Commissioner is
required
Page 56 U. S. 271
to make or cause to be made an examination of the alleged
invention in order to ascertain whether the same had been invented
or discovered by any other person in this country prior to the
application or whether it had been patented in this or any foreign
country, or had been on public use or sale, with the applicant's
consent, prior to his application, and if the Commissioner shall
find that the invention is new and useful or important, he is
authorized to grant a patent for the same. In case the decision of
the Commissioner and his examiner is against the applicant and he
shall persist in his claim, he may have an appeal to a board of
examiners, to consist of three persons appointed for that purpose
by the Secretary of State, who, after a hearing, may reverse the
decision of the Commissioner in whole or in part. By the act of
1839, the Chief Justice of the District of Columbia was substituted
to the board of examiners.
It is evident that a patent thus issued after an inquisition or
examination, made by skillful and sworn public officers appointed
for the purpose of protecting the public against false claims or
useless inventions, is entitled to much more respect, as evidence
of novelty and utility, than those formerly issued without any such
investigation. Consequently such a patent may be and generally is
received as
prima facie evidence of the truth of the facts
asserted in it. And in cases where the evidence is nicely balanced,
it may have weight with a jury in making up their decision as to
the plaintiff's right, and if so it is not easy to perceive why the
defendant who uses a patented machine should not have the benefit
of a like presumption in his favor arising from a like
investigation of the originality of his invention and the judgment
of the public officers that his machine is new and not an
infringement of the patent previously granted to the plaintiff. It
shows at least that the defendant has acted in good faith and is
not a wanton infringer of the plaintiff's rights and ought not
therefore to be subjected to the same stringent and harsh rule of
damages which might be justly inflicted on a mere pirate. It is
true the mere question of originality or infringement generally
turns on the testimony of the witnesses produced on the trial, but
if the plaintiff's patent in a doubtful case may have some weight
in turning the scale in his favor, it is but just that the
defendant should have the same benefit from his;
valeat quantum
valeat. The parties should contend on an equal field and be
allowed to use the same weapons.
We are of opinion therefore that the court erred in refusing to
permit the defendants' patent to be read to the jury.
The judgment of the circuit court is therefore
Reversed and a venire de novo awarded.
Page 56 U. S. 272
Order
This cause came on to be heard on the transcript of the record,
from the Circuit Court of the United States for the Northern
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.