Where a roller in a particular combination had been used before
without designs on it, and a roller with designs on it had also
been used in another combination, it was not a patentable invention
to place designs on the roller in the first named combination. Such
a change, with the existing knowledge in the art, involved, simply
mechanical skill, which is not patentable.
Woodman sued Stimpson in the court below to recover damages for
an infringement of a patent granted on the 29th March, 1864, for "a
new and useful machine for ornamenting leather," as stated in the
letters patent. In the specification the plaintiff stated that he
has "invented a new and useful improvement in boarding or pebbling
leather," and describes how this process was formerly carried on.
He says:
"What is known as a boarded or pebbled grain or finish, has
hitherto been given to leather by what is called the boarding
operation, which consists in doubling the skin over on to itself on
a table, so that the flesh side shall be out, and then forcing or
rucking one part over the other, in different directions, by means
of a flat 'cork-board,' which breaks or wrinkles the grain, and
gives it a rough, checkered, or pebbled appearance. This operation
is performed by hand, and is very slow and laborious, and produces
only one particular kind of finish."
He then observes:
"The nature of my invention, therefore, consists in producing
this 'pebbled' or 'boarded' grain or finish on leather, by
subjecting it to the pressure of a short revolving cylinder or
roller of steel, or other suitable metal, having the required
design or figure engraved or sunk on its periphery. . . . My
improvement further consists in combining with said roller a
certain new and useful combination of mechanical devices for
carrying my invention into practical operation, so as to accomplish
the object desired with great rapidity and cheapness. "
Page 77 U. S. 118
He further observes:
"It is obvious that my 'pebbled' roller may be combined with
various mechanical devices, whereby it can be rolled with
sufficient pressure over a skin of leather. I will, however, now
describe a combination of devices which I find to answer every
purpose required."
The plaintiff then describes with great minuteness the machine,
and every part of it, and closes with his claims:
"First. Boarding or pebbling skins or leather by means of a
single short cylinder rolling over a table with the requisite
pressure, substantially as described."
"Second. I also claim raising and lowering the table 'A' by
means of the toggles 'Q,' arm 'S,' spring 'U,' arm 'T,' and cam
'P,' or their equivalents, substantially as set forth, and for the
purposes described."
The second claim was not in the case, as the arrangement or
contrivance was not found in the defendant's machine. The first was
the only one in question. That, as already stated, was "boarding or
pebbling" skins or leather by means of a single short cylinder
rolling over a table with the requisite pressure, substantially as
described, which means, as this Court stated that they understood
the claim, finishing or figuring the leather, by means of a
revolving roller, the design or figure engraved or sunk on its
periphery, and worked over the grain of the leather by the use of
the machinery described, or by machinery substantially like it.
It was admitted in the bill of exceptions that evidence was
given on the trial by the defendant tending to show that prior to
the plaintiff's invention, boarded or pebbled grain or finish,
described in his patent as produced by him, had been produced on
leather by subjecting it to the pressure of a short revolving
cylinder of steel or other metal, having the required design or
figure engraved or sunk on its periphery, and rolling over a table
upon which the leather was placed; and that the said revolving
figured cylinders, which
Page 77 U. S. 119
are known in the case as "pebbling rollers," were operated with
the requisite pressure by means of hand devices.
It was also admitted that the defendant gave evidence tending to
show that prior to the plaintiff's improvement there was known and
used a machine (made by one Green) which, in its substantial
combination or arrangement of its parts, cooperating together for
the purpose of impressing the surface of leather, differed in no
material respect from the machine described in the letters patent,
whereof a model was produced, except in respect to the mechanism
for raising and lowering the table (not in the defendant's
machine), and except that instead of operating a short revolving
roller like the plaintiff's, having a figured surface for the
purpose of producing the pebbled grain on leather, it operated a
short revolving metallic roller, having a smooth surface, for the
purpose of giving to the leather a closer natural grain; that this
was the only diversity between the two machines; and that having
the smooth roller instead of the roller with the ornamented
surface, made no difference in the substantial combination or
arrangement of machinery cooperating together in said machines for
the purpose of doing the work.
On this case the defendant asked the court to instruct the jury
as a second instruction, thus:
"If they find that the form of the surface of the rollers in the
plaintiff's machine is not material to the mechanical action of the
roller in combination with the other devices, and their
arrangements, by which the roller is moved, the leather supported,
and the pressure made; and if they find that before the plaintiff's
invention, a machine was known and used not differing substantially
from the plaintiff's machine in any other respect, but having a
roller for giving a finish to leather, the surface of which roller
was different from that specifically shown and described in
plaintiff's patent; and if they find that, before the plaintiff's
invention, rollers having such a surface as the plaintiff's,
substantially, were known and used in other machines for the same
purpose, the plaintiff's patent for the first claim is void. "
Page 77 U. S. 120
This was refused, and the jury found in favor of the plaintiff.
The other side now brought the case here.
MR. JUSTICE NELSON delivered the opinion of the Court.
Taking the evidence as stated in the bill of exceptions, it will
be seen that the only difference between the prior machine and the
plaintiff's, in its combination and arrangement, and in its working
and effect upon the leather, is that the metallic roller in the
former had a smooth, and in the latter a figured surface. In all
other respects, the two machines were the same. But, as also
appears in the bill of exceptions, this figured revolving roller
was old, and the use of it in pebbling leather was also old and
well known. Neither the plaintiff nor the defendant could claim any
right to it as inventors. The same pebbled grain or finish, as
described in plaintiff's patent, had already been produced on
leather by subjecting it to pressure while rolling over the table
on which the leather was placed. But this pressure was produced by
means of hand devices. The field of invention was open to any
person to construct new devices or machinery by means of which to
operate this old instrument in "pebbling leather," in the language
of the patentee in this case, "so as to accomplish the object
desired with greater rapidity and cheapness." And this the
plaintiff would have accomplished by his machine if he had not been
anticipated. But the case admits that evidence was given tending to
show that the device or machine he has patented for the purpose, so
far as used by the defendant, was the same as the Green machine,
which was prior in date.
The prayer for the second instruction to the jury prayed for by
the defendant is somewhat involved and obscured by too much
verbiage; but when analyzed and understood, it was clearly
warranted and supported by the evidence, and should have been
given. In substance it is, if the jury should find that the figured
roller in the plaintiff's machine
Page 77 U. S. 121
was not material to the mechanical action of the roller in the
combination and arrangement of the machinery by which it was moved,
the leather supported, and the pressure made; and if they find that
before the plaintiff's a machine was known and in use similar to
his, except that the surface of the roller was smooth; and if they
find that before the plaintiff's invention figured rollers were
known and used in other machines for the same purpose, then the
plaintiff's first claim was void. In other words and in short, if
the plaintiff's machine had been anticipated in every part of its
construction except the figures or designs on the roller, which
roller was old, he was not entitled to recover. This instruction
was refused, which, for the reasons already stated, we think was
error.
There is also another ground upon which we think this
instruction should have been given. Assuming the plaintiff to have
been anticipated in the construction of his machine in every part
of it, except that the prior machine used a smooth revolving
roller, and the plaintiff a figured one, but which figured roller
had been used for pebbling leather by pressure, and was well known,
all of which the jury would have been warranted in finding, the
engraving or stamping of the figure upon the surface of the smooth
roller, or the substitution of the old figured roller for the
purpose, required no invention; the change with the existing
knowledge in the art involved simply mechanical skill, which is not
patentable.
Judgment reversed. Venire de novo.
MR. JUSTICE CLIFFORD, dissenting.
Inventions secured by letters patent are property, and as such
they are under the protection of the Constitution of the United
States and the laws of Congress. When duly secured in that way the
patentee acquires the exclusive right, if the invention is a
machine, to make and use the same and to vend it to others to be
used during the entire term for which it was granted, as provided
by law. Vested with that exclusive right he may have an action on
the case to recover damages against any person who infringes his
exclusive
Page 77 U. S. 122
right; and on the trial of the case, to the jury he may
introduce his letters patent in evidence, and when so introduced
the letters patent afford a
prima facie presumption that
the patentee is the original and first inventor of what is therein
described as his improvement; and the defendant, if he denies that
proposition, takes the burden to establish the affirmative of the
general issue or of the notices filed in that behalf. [
Footnote 1]
Letters patent bearing date the twenty-ninth of March, 1864,
were granted to the plaintiff for a new and useful improvement in
boarding and pebbling leather, which, as described, consists in
giving to the surface of the leather a checkered or pebbled
appearance by subjecting the leather on the finished side to the
pressure of a short, engraved revolving cylinder or roller, made of
steel or other suitable metal, having the required design or figure
engraved on the periphery of the device. My improvement, says the
patentee, consists in
combining with said
roller
a certain new and useful
combination of mechanical devices
for carrying my invention into practical operation, so as to
accomplish the object desired with great rapidity and
cheapness.
Nothing can be plainer than is the meaning of those two passages
in the specification, the substance of which is here reproduced. In
the first passage he describes the result or effect which his
invention will produce, and in the second he gives a terse general
description of the invention itself, alleging that it consists in
combining with the roller a certain new and useful combination of
devices to accomplish the work. Had the patentee stopped there, the
specification might perhaps have been regarded as wanting that
full, clear and exact description of the invention which is
required by the sixth section of the Patent Act. [
Footnote 2]
But the patentee did not stop there, as fully appears by what
immediately follows in the specification. On the contrary, he gives
a minute description of the roller, and then proceeds to describe
the several mechanical devices to be
Page 77 U. S. 123
combined with the roller, and which, as he says, will answer
every purpose to produce the required effect; and in conclusion he
gives a minute description of every element composing the organized
machine described in the patent as it was issued.
Exact description is also given of the several devices composing
the apparatus for raising and lowering the table on which the
leather is placed as it is subjected to the operation of the
pebbling instrument. Such an apparatus is essential to the
effective operation of the machine, as the table must be raised in
order that the leather may be subjected to the pressure of the
roller or pebbling instrument as it passes over the upper surface,
and it must also be lowered in order that the arm to which the
pebbling instrument is attached may pass back, and it is obvious
that the contrivance is ingenious and useful.
What the patentee claims is as follows: first, boarding or
pebbling skins or leather by means of a single short cylinder
rolling over a table with the requisite pressure
substantially
as described. Striking out the words substantially as
described, it might be contended that the claim is for the effect
and not for the means by which the effect is produced, but such a
construction cannot be maintained for a moment, as it would be
contrary to the settled rules of law everywhere applied in such
cases.
Patents for inventions are not to be treated as mere monopolies,
and therefore as odious in the law, but they are to receive a
liberal construction, and under a fair application of the rule that
they be construed
ut res magis valeat quam pereat. Hence
where the claim immediately follows the description, it may be
construed, says Curtis in connection with the explanations
contained in the specification, and be enlarged or restricted
accordingly. [
Footnote 3]
Construed in view of that rule, it is clear to a demonstration
that the first claim of the patent is for the means described in
the specification for accomplishing the effect,
Page 77 U. S. 124
which is the exact view taken of the claim by the presiding
justice in the court below.
Strike out the second claim and it might be contended that the
first claim covers the whole invention, including the apparatus for
raising and lowering the table as well as the combination of
devices for pebbling the leather, but the whole specification must
be construed together, and when so construed it is clear that the
claims were intended to be distinct, as the second claim not only
specifies the "raising and lowering of the table," but it also
includes by name everyone of the described devices to perform that
office.
Giving due weight to these considerations, it is as clear as
anything can be that the first claim of the patent is a claim for a
combination of the described mechanical devices, with the roller
for carrying the invention into practical operation, and for
accomplishing the described result by the described means,
excluding the apparatus for raising and lowering the table, which
is included in the second claim. [
Footnote 4]
Influenced by these considerations, I dissent from the opinion
of the court, because it adopts an erroneous construction of the
patent, and one utterly at variance with the whole tenor of the
specification and the language of the claim.
Some attempt was made at the trial to show that the invention of
the plaintiff was superseded by the machine of Garnar, or by that
of Green, but the attempt was an utter failure, and the jury found
the issue in favor of the plaintiff. Questions of fact are
certainly for the jury, and it is too plain for argument that the
finding of the jury cannot be revised here under a bill of
exceptions. Suppose, however, it were otherwise, still it would be
impossible to come to any other conclusion than that their finding
is right.
Take the Garnar machine, which is the first in order as the
evidence is exhibited in the bill of exception. Evidence was
introduced by the plaintiff, showing not only that the machine
differed from the machine of the plaintiff, but that
Page 77 U. S. 125
it operated in a substantially different manner, and produced a
substantially different effect upon the leather, which must be
obvious, upon comparing the two machines, to everyone having any
acquaintance with the subject. Equally decisive evidence was also
introduced by the plaintiff showing that the Green machine did not
supersede his patent. Among other things the plaintiff proved that
the figuring instrument described in that patent was not a
revolving instrument, but an instrument for rubbing the leather, as
appears by the model; that the adaptation of the pebbling roller to
that machine, so that the same could be practically used therein,
would require invention and was not within the common knowledge and
skill of a mechanic, and that a figured, rotating cylinder, such as
is described in the plaintiff's patent, had not in fact been
introduced and operated in that machine prior to the plaintiff's
invention.
Remark upon the question of infringement is not necessary, as
that issue was found by the jury for the plaintiff, and there is no
exception calling for any review of the instructions given by the
court.
Suggestion is made in the opinion just read that perhaps the
judgment might be reversed upon the ground that the invention was
not patentable. [
Footnote 5]
Patented inventions which are not new and useful, or which did not
require any invention as compared with what existed, and was in use
before, may doubtless be held invalid on that account, but the
question whether a particular invention is new and useful, or
whether it did require any invention to produce it, as compared
with what existed before, are everywhere admitted to be questions
of fact for the jury, and certainly no such question is open here
for the determination of this Court under this bill of exceptions.
[
Footnote 6] Such a remark
cannot have been well considered, as the authorities are all the
other way; but if it were otherwise, the bill of exceptions
shows
Page 77 U. S. 126
that the finding of the jury was right, as it appears that the
pebble finish can be made cheaper and better by the plaintiff's
machine than by any other machine or instrument known in the trade,
which is a complete answer to both suggestions.
Valuable as the property of the plaintiff in this invention is,
I cannot concur in the judgment which assigns it to an infringer.
Most modern patents are for new combinations of old elements, just
like the present one, but many of them are of great utility, and
they are as much within the protection of the patent law as those
of any other class. [
Footnote
7] Such patents being for the combination only, no one can be
held liable for infringing the invention unless it be shown that
the infringer uses all of the elements which compose the
combination, showing that the public have the most ample security
that nothing will be protected by the patent except what was in
fact invented by the patentee. [
Footnote 8]
Where an invention is for distinct combinations which are
separable, and where it embraces two distinct improvements, one
having respect to the operative part of the machine and the other
to the motive power, it is entirely competent for the commissioner
to grant separate claims for the two combinations in the same
patent, or he may, under existing laws, grant separate patents for
each combination if it is new and produces a new and useful
result.
Two combinations are embraced in this patent -- one consisting
of a combination of certain described mechanical devices with the
roller to do the work of pebbling the leather, the other consists
of the described combination to raise and lower the table -- and
the one last named is admitted to be new and useful, and therefore
valid, but the opinion of the Court surrenders the first one to
infringers, and of course the property of the inventor is rendered
of no value.
[
Footnote 1]
Agawam Co. v.
Jordan, 7 Wall. 596.
[
Footnote 2]
5 Stat. at Large 119.
[
Footnote 3]
Curtis on Patents § 225;
Turrill v.
Railroad, 1 Wall. 510;
Ryan v. Goodwin, 3
Sumner 520.
[
Footnote 4]
Le Roy v.
Tatham, 22 How. 132.
[
Footnote 5]
Many v. Jagger, 1 Blatchford 372;
Wilbur v.
Beecher, 2
id. 132.
[
Footnote 6]
Curtis on Patents § 41;
Lowell v. Lewis, 1 Mason
182;
Winans v. Railroad, 2 Blatchford 297;
Bedford v.
Hunt, 1 Mason 302;
Hall v. Wiles, 2 Blatchford
194.
[
Footnote 7]
Union Sugar Refinery v. Matthiessen, 2 Fisher, 605.
[
Footnote 8]
Prouty v.
Ruggles, 16 Pet. 341;
Carver
v. Hyde, 16 Pet. 520;
Stimpson v.
Railroad, 10 How. 346;
Barrett v. Hall, 1
Mason 477;
Howe v. Abbott, 2 Story 194.
