1. The invention of William H. Seymour and of Palmer &
Williams, explained and defined.
2. The grant of letters patent by the commissioner of patents
when lawfully exercised, is
prima facie evidence that the
patentee is the first inventor of that which is described and
claimed in them.
3. The settled practice in equity is to require a respondent to
give notice in his answer of the names and residence of those
persons whom he intends to prove to have possessed a prior
knowledge of the invention, and where the same had been used.
4. Recitals in letters patent in the absence of fraud are
conclusive evidence that the necessary oaths were taken before the
patent was granted.
5. Where an invention does not embrace an entire machine, the
part should be specified and pointed out, as
ex. gr. the
coulter of the plough, or the divider or sweep rake of a reaping
machine, so that another party may construct the plough or reaping
machine provided be does not use the part specified.
6. Neither reissued nor extended patents can be abrogated by an
infringer, in a suit against him for infringement, upon the ground
that the letters patent were procured by fraud in prosecuting the
application for the same before the commissioner.
7. The act of the commissioner in accepting a surrender and
granting a reissue is final and conclusive, and not reexaminable in
a suit in the circuit court unless it is apparent upon the face of
the patent that he has exceeded his authority or that there is such
a repugnancy between the old and the new patent that it must be
held as matter of legal construction that the new patent is not for
the same invention as that embraced and secured in the original
patent.
8. Interpolations in a reissued patent of new features or
ingredients or devices, which were neither described, suggested,
nor substantially indicated in the original specifications,
drawings, or patent office model, are not allowed.
9. Parol testimony as to the scope of an original invention, is
not allowable on an application for a reissue as the basis of
interpolation of new matter.
10. The identity of invention in the original and reissued
patent in such suits, is a question of comparison of the two
instruments to be made by the court, aided or not by the testimony
of experts, as it may or may not appear that one or both may
contain technical terms requiring the assistance of such persons in
defining them.
11. To raise such a question, the defendant in a patent suit
must introduce the original patent.
12. A claim which might otherwise be held to be bad as covering
a function or result, when containing the words "substantially as
described," must
Page 78 U. S. 517
be construed in connection with the specification and be limited
thereby, and when so construed, it may be held to be valid. The
claims in this case, when so construed, were so held.
13. Changes in the construction and operation of an old machine,
so as to adapt it to a new and valuable use which the old machine
had not, are patentable, and may consist either in a material
modification of old devices, or in a new and useful combination of
the several parts of the old machine.
14. Utility, in the sense of the patent law, does not require
such general utility as to supersede all other inventions that can
accomplish the same object.
15. Crude and imperfect experiments do not confer a right to a
patent. He is the first inventor who first perfects and adapts an
invention to use.
16. Desertion of an alleged prior invention, consisting of a
machine never patented, may be proved by showing that the inventor,
after constructing it, broke it up or laid it aside, as something
requiring more thought and experiment, provided it appears that
those acts were done without any definite intention of resuming his
experiments.
17. Under the act of Congress allowing reissues in divisions, it
may require the use of several reissues to constitute a complete
machine, and on a proceeding for infringement these may be
introduced in one bill.
18. A description in a prior publication, in order to defeat a
patent, must
contain and exhibit a substantial
representation of the patented improvement in such full, clear, and
exact terms as to enable any person skilled in the art or science
to which it appertains to make, construct, and practice the
invention patented. It must be an account of a complete and
operative invention, capable of being put into practical
operation.
19. The extent to which either the inventor of a device or of an
entire machine or of a mere combination can invoke the aid of the
doctrine of equivalents is the same, except that a combination is
not infringed unless by a machine containing all the material
ingredients patented, or proper substitutes for one or more of such
ingredients,
well known to be such at the time when the
patent was granted.
20. A question of infringement is best determined by the court
by a comparison of a defendant's machines with mechanism described
in patent and of their modes of operation.
21. The use of one post and a supporting frame attached thereto
in a reaping machine is an obvious equivalent for the two posts
specifically mentioned in the patent of Palmer and Williams.
The suit below was on a bill by W. H. Seymour and D. S. Morgan
for the infringement by Osborne of five patents owned by them for
improvement in reaping machinery.
Page 78 U. S. 518
Two of these patents covered the inventions of Seymour -- one
(No. 72) relating to the shape or construction of the grain
platforms and its special location in reference to the cutting
apparatus -- the other (No. 1683) involving the gathering reel as
an additional element to the combination just named. [
Footnote 1]
The other three patents in controversy were granted to secure
inventions made by Palmer and Williams, assignors of the
complainants. Two of the latter patents (No. 1682 and No. 4) were
for the employment of a discharging sweep rake in connection with
the peculiarly shaped platform, which was conceded to have been the
invention of Seymour. [
Footnote
2]
The third patent of Palmer and Williams (No. 10,459) was for the
means of sustaining the reel or grain-gathering device consisting
of a prolonged axle and two supporting posts, placed at one end of
the reel only, leaving the other end free. [
Footnote 3]
The court below was of the opinion that the proofs of the
complainants did not show any infringement, and so dismissed the
bill. From this decree the complainants took this appeal.
The leading parts or features of a reaping machine are three in
number.
First. The part which gathers or presses the
standing
Page 78 U. S. 519
grain to the cutting apparatus, and this has been called a reel
(Fig. 1).
Second. The cutting apparatus which severs the stalk,
which cutting apparatus usually consisted of a vibrating scalloped
sickle, sliding through a series of fingers or guards (Fig. 2).
image:a
Third. A platform on which the grain is received, after
it has been severed from the stalk (Fig. 3).
image:b
In connection with the platform, there is also to be noticed its
shape, and the arrangements for removing the grain therefrom and
depositing it on the ground in gavels or bundles ready for the
binder. The latter arrangement usually consisted, in practice,
prior to the patents in controversy, of a hand rake and device for
supporting the body of the raker on the machine, as shown in Figure
5, further on.
These several parts in the machine were necessarily so arranged
with reference to each other as to cooperate in producing the
desired result,
viz., that of cutting the grain and
depositing it on the ground in bundles, adapted to being readily
bound into sheaves.
The reaping machine, when doing its work, passes around the
field, the horses being attached in front, and to one side of it,
and if, while cutting the first swath, the grain was to
Page 78 U. S. 520
pass directly back and fall on the ground in the rear of the
sickle, as the horses came around with the machine to cut the
second swath, they would walk over and trample upon this grain
which had been just cut.
Thus, if S represents the standing grain and P the platform, and
if the distinctly marked horse tracks, T, in the
image:c
cut, represent the path just passed over by the horses, in
cutting the first swath, then the dotted horse tracks, t, show the
path the horses will pass over on their next round.
If the grain be thrown from the platform so as to fall on the
track just passed over by the horses (
i.e., on the
distinctly marked horse tracks T), it will then be out of the way
of the horses on their next round. If, however, the grain be
discharged directly backwards, immediately behind the sickle, it
will be in the way of the horses on their second round, and, in
that case, binders must be employed to follow the machine and bind
the grain into sheaves and lay it to one side before the horses
come around with the machine to cut the succeeding swath.
It is evident that the proper place to discharge the grain is in
the path just passed over by the horses and behind the horses,
because it will then be out of the way of the horses on their next
round.
Perhaps the most usual mode of discharging grain practiced
Page 78 U. S. 521
prior to the patent in controversy here is shown in the
accompanying sketch.
image:d
The plate represents the arrangements for discharging the grain
and also the relative position of cutter, reel and platform, as
well as that of the gavel or sheaf deposited on the ground. The
raker is supported upon that machine by a seat or stand which
sustains the lower part of his body, leaving the upper part of his
body free to enable him to operate the hand rake with his arms.
From this position he reaches the cut grain on the platform back of
the reel and by a sweep of his arms delivers it on the ground,
either diagonally or more or less at right angles to the track in
the path passed over by the horses.
This mode of delivering the grain, however, was fatiguing to the
raker, and frequently the grain was deposited in a straggling
manner upon the ground, and more or less obliquely to the track or
path of the machine.
Obed Hussey, one of the earliest inventors of reaping machines,
constructed his machines without a reel, and with a square
platform, and discharged the grain when cut immediately in the rear
of the platform, as shown in the drawing, Figure 6.
Page 78 U. S. 522
image:e
In this machine, the grain was discharged directly into the path
to be passed over by the horses in their next round, and had
therefore to be gathered up immediately as fast as cut. Some
machines were also constructed by Hussey with a straight guideboard
on the platform, which was adjustable within certain limits and
which, to a certain extent, caused the cut grain to be pressed to
one side sufficiently for a single horse or tandem team to pass on
the next round without trampling on the cut grain. Hussey also made
machines with two platforms -- one platform attached to the rear of
the other -- and employed two men, one to rake the grain back and
the other to discharge it to one side. He likewise made a reaping
machine with a square platform, to the rear of which was bolted an
angular addition, giving to the whole where the addition was
attached an angular form. This machine was made in 1848, and after
being made, it was removed in the latter part of the summer of 1848
from Hussey's shop in Baltimore, of which place he was at the time
a resident, to the railroad depot and (as the witnesses understood)
to be shipped for trial, but they did not know where it was to go
or whether in fact it was ever so shipped or tried. Sometime in
1849 or later this machine reappeared
Page 78 U. S. 523
at the shop of Hussey, and had the appearance of having been
used some little. On its return to the shop, it was set aside, and
nothing more was done to it or with it until it was looked up in
connection with this suit.
An important question arose upon this state of facts as to
whether that last machine, even if conceded to be the same in
principle with that of the complainants, amounted in view of law to
an anticipation of their invention.
The invention of Seymour consisted in constructing the platform
upon which was received the grain in the shape of a quadrant or
sector of a circle and placing it just behind the cutting apparatus
and in such relation to the main frame that the cut grain could be
swept around on the are of a circle, and dropped on to the ground
behind the horses so as to be so far removed from the standing
grain as to leave room for the horses and frame to pass between the
standing grain and the gavels, thereby obviating the necessity of
taking up the cut grain as fast as cut, and at the same time doing
the work more perfectly. It is here shown.
image:f
Such being Seymour's invention, he obtained an original patent
dated July 8, 1851, and by successive reissues and
Page 78 U. S. 524
divers divisions thereon, among other things, two claims were
allowed to him, one in reissue No. 72, as follows,
viz.:
"
A quadrant-shaped platform, arranged relatively to the
cutting apparatus substantially as herein described, for the
purpose set forth."
The other claim allowed to him was in reissue No. 1683, on the
basis of the same original patent, as follows,
viz.:
"
The combination in a harvesting machine of the cutting
apparatus (to sever the stalks) with a reel, and with a
quadrant-shaped platform located in the rear of the cutting
apparatus, these three members being and operating as set
forth."
image:g
In Figure 8 is shown a quadrant platform cutting apparatus, and
the operation of discharging the grain by hand by sweeping it in
the arc of a circle. The relative position of the parts also to the
reel is shown, the discharging hand rake
Page 78 U. S. 525
striking the cut grain immediately after it is deposited by the
reel on the platform.
The complainants alleged that the defendants infringed these two
claims by the use of a machine such as is shown in the following
sketch.
image:h
This machine was used with a hand rake. The defendants contended
that the complainants' claim was for a quadrant-shaped platform
only, and that their own platform was composed of two straight side
pieces placed together at an angle.
The court below decided that although this form of the platform
made it
in effect a quadrant-shaped platform, yet that in
view of Hussey's and of Nelson Platt's platform, the complainants
were only legally entitled to hold under their claim the
precise shape of platform invented and described by
Seymour, and that as so limited, it had not been infringed by the
defendants, and that the doctrine of equivalents could not be
invoked in such a case on behalf of plaintiff's
Page 78 U. S. 526
patent, relying on
Burr v. Duryee. [
Footnote 4] The position thus assumed by the court
below was pressed upon this Court by the counsel of the defendants,
the now appellees.
The machine of Hussey last above referred to, with the angular
piece bolted to the platform, was urged as having been a full and
complete anticipation of Seymour's invention.
The complainants, or now appellants, on the other hand,
contended that Seymour's invention of the quadrant platform was
complete in or before the harvest of 1849; that Hussey's machine,
with the angular rear piece, had no reel, and was therefore no
answer to reissue No. 1683, which had a reel as part of its claim;
and that as to reissue No. 72, Hussey was
not proved to
have anticipated Seymour as an inventor, and that his platform was
in point of law an abandoned or incomplete experiment.
A machine of one Burral was set up in the answer but not in the
argument. Irrespective of plain want of identity, it was proved to
be posterior in date. It need not be described.
The inventions of Palmer and Williams involved in this suit are
embraced in reissue No. 4 and No. 1682, and pertain to the
employment of an automatic sweep rake in combination with the
quadrant platform, which as a separate device was conceded as
between these two inventors to have been the invention of
Seymour.
The annexed description and Figure 10 (p.
78 U. S. 527)
is taken from Palmer and Williams's patent, and the claim concerned
in this case under reissued patent No. 4 was as follows:
"
Discharging the cut grain from a quadrant-shaped platform,
on which it falls as it is cut, by means of an automatic sweep
rake, sweeping over the same substantially as described."
The defendants contended that this was a claim for a function or
result, and as such was bad in law, and that the patent was
therefore void.
Page 78 U. S. 527
The defendants also contended that there was no novelty in the
invention, and that Palmer and Williams had been anticipated by
Nelson Platt's patent, and although Palmer and Williams's machine
differed from Platt's, yet there was no invention in the change
from Nelson Platt's rake to the complainants'; that all that Palmer
and Williams had in fact done was to take Platt's automatic sweep
rake and put it upon Seymour's quadrant-shaped platform; and that
doing this was not invention, but merely the exercise of ordinary
mechanical skill.
image:i
This latter view was adopted by the circuit court.
Nelson Platt's patent was granted June 12, 1849, for a
self-raking reaper, which is shown in Figure 11, on page
78 U. S.
528.
In this machine, the platform was propelled from the rear, and
the grain, after being cut, was deposited on a rectangular
platform, and was then raked across the rectangular platform, by
one set of rakes acting from below, on to a second quadrant-shaped
platform. The grain was then discharged from that second
quadrant-shaped platform by a
Page 78 U. S. 528
vibrating rake which swept across it in the are of a circle on
to the ground, the heads of grain lying towards the machine. The
defendants did not insist that this was identical in construction
with the complainants' invention, but that the skill of the
mechanic only was required to change it to their invention. The
court below adopted this view.
image:j
The complainants contended that the claims of Palmer and
Williams' patents were to be construed for covering substantially
the
"means" described for discharging the grain
"as
specified" -- that
"this means" was a combination of
mechanism. The elements of the combination are a
quadrant-shaped platform, a cutting apparatus, and an
automatic sweep rake, and that these elements must sustain
to each other, to constitute the thing patented, the following
relations:
First. The quadrant-shaped platform must be directly
behind the cutting apparatus.
Second. The automatic sweep rake must traverse the
platform so as to sweep the grain from where it falls, as cut,
round to the place of its destiny upon the ground.
Page 78 U. S. 529
Third. To accomplish this, the rake must have a certain
relation to the cutting apparatus, to the platform, and to the
material which has been laid upon the platform.
The complainants further contended that while, upon the one
hand, the claim was for an entirely different invention from
Platt's, yet that one form of the defendants' machine known as
their Automatic Sweep Rake Machine, was a clear infringement.
The defendants' automatic sweep rake machine, alleged to
infringe, is here shown.
image:k
The automatic rake in that machine swept over the platform from
the cutter to the place of delivery. It was used with a platform of
the same shape as referred to above in connection with the
defendants' hand raking machine. The automatic rake swept the cut
grain from where it fell on the platform to the point of
delivery.
The peculiar mechanism or gearing by which the sweep rake in the
defendants' machine was made to traverse their platform was
admitted by the complainants to be different from that in their
patent.
Page 78 U. S. 530
Upon the latter difference, the circuit court decided that
defendants' automatic rake did not infringe the claims now in
question, thereby limiting this claim of the complainants to the
specific driving mechanism or machinery for gearing and actuating
the sweep rake in its movement.
The claim of the complainants' patent reissue No. 1682 was in
the following words:
"
The combination of the cutting apparatus of a harvesting
machine with a quadrant-shaped platform arranged in the rear
thereof, and a sweep rake operated by mechanism in such manner that
its teeth are caused to sweep over the platform in curves when
acting on the grain, these parts being and operating substantially
as hereinbefore set forth."
And it was contended by the complainants to be a claim to a
combination consisting of
1. A cutting apparatus.
2. A quadrant-shaped platform combined with and placed behind
the cutting apparatus.
3. An automatic sweep rake connected with the frame by a pivot
and operated by cog wheels so as to sweep over the platform while
moving the grain towards the delivery side of the platform.
The complainants insisted that the difference between this claim
and that of reissue No. 4 was in this:
That the combination claimed in this patent, No. 1682,
appertained exclusively to the operation of cutting the grain,
receiving it upon and removing it from the platform. It did not
(unless incidentally) include the means of carrying the rake back
to seize a new gavel. The claim of No. 4 included also the means of
carrying the rake back to get a new gavel after delivering the
former one.
The defendants insisted that this patent was void as being
identical with the claim of reissue No. 4 and as also being
obnoxious to the objections urged against reissue No. 4.
Patent No. 10,459, granted to Palmer and Williams, was also
alleged to have been infringed.
Page 78 U. S. 531
This patent merely related to the mode of supporting the reel.
When a reel is supported at each end by a post or bearer, the post
or bearer which is on that side or end of the reel which runs into
the standing grain encounters obstructions, and these collect upon
and impede the rotation of the reel. To avoid this, Palmer and
Williams devised the mode of supporting the reel wholly on that
side of the machine which did not run into the standing grain, and
no support was provided at the other end of the reel. The claim for
this invention was in these words:
"
The method of hanging the reel so as to dispense with any
post or reel bearer next to the standing grain, as herein
described, thereby preventing the grain from getting caught and
being held fast between the divider and a reel supporter."
The defendants' machine had but one post. The reel axle,
however, was prolonged, and it was supported wholly on that side or
end of the reel and by means of two bearings attached to that post.
This mode of support is shown
supra, in Figure 9, and was
argued by the complainants' counsel to be substantially the same as
that claimed in reissue 10,459.
The only alleged prior invention set up in the proofs against
this particular patent was what is called the Ogle Machine. The
only evidence of this machine was contained in the "Mechanics'
Magazine," published in London in 1825.
A copy of the description and drawing from this book was put in
evidence by the appellees.
An expert of the defendant testified as to this publication:
"I do not understand that it has any reel support at the grain
side of the machine, it being represented as having two reel
supports at the stubble side of the machine."
But the expert did not say positively that the reel had not any
support on the grain side of the machine, but that he did not so
understand it, and gave his reasons why he did
Page 78 U. S. 532
not so understand it, which was because there were
two
supports on the stubble side -- or, in other words, because
there were two reel supports on the stubble side he inferred that
there was none on the grain side.
On the other hand, the complainants contended that the presence
of two reel bearings on the stubble side of the machine was not
conclusive evidence of the absence of a bearing also on the grain
side, because there might have been two on the stubble side to
better support the shaft toward the center and keep it from
sagging, as well as one on the grain side, and that for such
purpose they might obviously be useful.
The experts of the complainants testified that these drawings,
taken with the printed part of the description in the "Magazine,"
did not show what is described in this patent of the complainants
and specified in the claim in controversy, and that they did not
suggest the idea of this invention.
The counsel of the complainants insisted that the description in
the first publication, to be available, must be such as to enable
the public to practice the invention. [
Footnote 5]
In addition to the points above, as to novelty and infringement,
other grounds of objection were taken by the defendants to the
validity of these reissued patents, among them these:
That Palmer and Williams never made oath to the application on
which the reissued patent was granted, and therefore the reissue
was void:
That the patentees did not specify and point out in their
specifications and claims the parts which they claim as their
respective inventions:
That the Commissioner of Patents had no jurisdiction to receive
the surrender of the originals or grant the reissued patents
thereon, because no evidence was produced before him to show that
the originals were "inoperative and invalid:"
Page 78 U. S. 533
That the reissued letters patent were void because they were not
granted for the same invention as the original patents.
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
Controversies respecting the infringement of letters patent
possess in many cases a degree of importance much beyond the
profits or damages claimed for the alleged unlawful use of the
invention, as the pleadings usually put in issue in one form or
another the validity of the letters patent alleged to be infringed,
and frequently involve, directly or indirectly, the same inquiry in
regard to the letters patent set up in defense as superseding the
patent on which the suit is founded. Such being the state of the
pleadings, the result, whatever it may be, whether for the party
suing or for the party defending, must oftentimes determine rights
of property of much greater value than the amount of the profits or
damages claimed for the alleged infringement of the letters
patent.
Inventions secured by letters patent are property in the holder
of the patent, and as such are as much entitled to protection as
any other property consisting of a franchise during the term for
which the franchise or the exclusive right is granted.
Letters patent are not to be regarded as monopolies, created by
the executive authority at the expense and to the prejudice of all
the community except the persons therein named as patentees, but as
public franchises granted to the inventors of new and useful
improvements for the purpose of securing to them, as such
inventors, for the limited term therein mentioned, the exclusive
right and liberty to make and use and vend to others to be used
their own inventions, as tending to promote the progress of science
and the useful arts, and as matter of compensation to the inventors
for their labor, toil, and expense in making the inventions and
reducing the same to practice for the public benefit, as
contemplated
Page 78 U. S. 534
by the Constitution and sanctioned by the laws of Congress.
Five several letters patent were owned by the complainants when
the present suit was commenced, and they allege in the bill of
complaint that the respondents have infringed their exclusive
rights as secured to them in each and everyone of those letters
patent. Four of the letters patent are reissued letters patent, and
are numbered and described as follows:
(1) Reissued letters patent No. 4, dated January 1, 1861, for a
new and useful improvement in harvesters, being one of a second
reissue in two separate patents, on amended specifications, as more
fully explained in the pleadings and the patents annexed to the
printed record.
(2) Reissued letters patent No. 1682, dated May 31, 1864, also
for a new and useful improvement in harvesters, being the second
reissue from the before-mentioned reissue when the invention was
divided into two parts. They both purport to be founded upon the
original patent granted to Aaron Palmer and Stephen G. Williams,
dated July 1, 1851, which was for a new and useful improvement in
harvesters, and the reissued patents were fully extended for seven
years from the expiration of the original term.
(3) Reissued letters patent No. 72, dated May 7, 1861, being a
reissue of one of three parts of a prior reissue of the original
patent, dated July 8, 1851, which was granted to William H. Seymour
for a new and useful improvement in reaping machines.
(4) Reissued letters patent No. 1683, dated May 31, 1864, being
a reissue of another of the three parts of the prior reissue of
that patent, as more fully explained in the pleadings, the charge
being that the respondents have infringed the first claim.
(5) Superadded to those several charges against the respondents
is the further one that they have also infringed certain original
letters patent owned by the complainants, dated January 24, 1854,
which secures to them, as assignees of Palmer and Williams, certain
other new and useful improvements in grain harvesters besides those
embodied in the several reissued letters patent to which reference
has been made.
Page 78 U. S. 535
Founded upon those several letters patent, the bill of
complaint, which is drawn in the usual form, alleges that the
respondents have unlawfully made, and used and vended to others to
be used, the respective inventions therein described, and the
complainants pray for an account and for an injunction. Service was
made upon the respondents, and they appeared and filed an answer,
setting up several defenses to each of the patents described in the
bill of complaint. Responsive to the answer, the complainants filed
the general replication, and the cause being at issue, they put in
evidence the five several letters patent on which the suit is
founded, the respondents consenting that copies of the same, and of
the respective certificates of extension mentioned in the
pleadings, might be substituted in the record in the place of the
originals as introduced in evidence.
Other proofs were introduced and the parties were fully heard,
but the circuit court was of the opinion that the proofs introduced
by the complainants were not sufficient to show any infringement of
their rights, and accordingly entered a decree for the respondents
dismissing the bill of complaint. Dissatisfied with that
conclusion, the complainants appealed to this Court, and now seek
to reverse that decree.
Separate defenses having been set up in the answer to each of
the five letters patent, it will be necessary to a clear
understanding of the controversy and to prevent any
misunderstanding as to the views of the court to describe somewhat
more fully the nature of the several inventions and the objects
which they were designed to accomplish.
I. Explained in general terms, the invention secured in the
first-mentioned reissued patent, numbered four, consists in
arranging an automatic sweep rake in a harvesting machine in such
relation to a quadrant-shaped platform, upon which the cut grain
falls as it is cut, that it shall vibrate over the same at suitable
intervals to discharge the cut grain in gavels upon the ground.
Specific description is given, in the first place, of the frame
of the machine, which, as represented, is composed
Page 78 U. S. 536
of three longitudinal beams and two transverse beams securely
fastened to each other at their points of intersection. Next
follows a reference to the driving wheel, which, as represented, is
placed between the outer longitudinal beam and the central beam,
having its bearings on arched supports or brackets rising from each
of the beams composing the frame. Guard fingers through which a
sickle vibrates are secured upon the front edge of a platform
shaped like a quadrant or sector of a circle, of which the arm or
lever that carries the rake head forms the radius, and the fulcrum
pin on which the arm or lever vibrates constitutes the center, the
whole operating so that the grain is swept round on an arc of a
circle and discharged in gavels upon the ground behind the driving
wheel.
Minute details of all the other elements of the machine are also
given in the subsequent parts of the specifications, and of their
modes of operation, and the specification concludes with the claim
which, in substance, is discharging the cut grain from a
quadrant-shaped platform on which it falls as it is cut, by means
of an automatic sweep rake vibrating over the same, substantially
as described, which must be understood as referring back to the
description contained in the body of the specification.
II. Two combinations are mentioned in the specification of the
reissued letters patent No. 1682, but it is only necessary to refer
to the first, as it is not alleged that the respondents have
infringed the second claim. Described separately, the ingredients
of the first claim are as follows:
(1) The cutting apparatus to sever the standing stalks of
grain.
(2) The quadrant-shaped platform arranged behind the cutting
apparatus to receive the severed stalks of grain as they fall.
(3) The sweep rake and the described mechanism to operate the
same in such manner that the teeth shall move in circular curves
over the platform when they are acting on the grain.
Reference must also be made to the other two reissued letters
patent embraced in the pleadings. Both have respect to an
improvement made in reaping machines, and they
Page 78 U. S. 537
were both granted to secure material parts of an original
invention once before surrendered and reissued because the letters
patent were defective and inoperative. Before the term of the
original patent expired, the patents were extended for the further
term of seven years.
III. Number seventy-two consists in constructing the platform of
a reaping machine, upon which the cut grain falls as it is cut in
the shape of a quadrant or of a sector of a circle placed just
behind the cutting apparatus, and in such relation to the main
frame that the grain, whether raked off by hand or by machinery
located behind the cutting apparatus, can be swept around on the
are of a circle and be dropped, heads foremost, on the ground far
enough from the standing grain to leave room for the team and
machine to pass between the gavels and the standing grain without
the necessity of taking up the gavels before the machine comes
round to cut the next swath.
IV. They also acquired title to the invention secured in the
remaining reissued letters patent mentioned in the bill of
complaint, to-wit, number 1683, but it will be sufficient to refer
to the first claim of the same, as the second is not the subject of
controversy in this suit.
As described in the specification, the ingredients of the first
claim are the cutting apparatus to sever the stalks, the reel to
incline the heads of the stalks towards the cutting apparatus, and
the quadrant-shaped platform, located in the rear of the cutting
apparatus, to receive the cut stalks as they fall before the
operation of the sweep rake begins.
Designed as the improvements were to accomplish the same object
as the other two improvements previously described, the patentees
or owners of the several letters patent elected to compromise
rather than litigate, and the result was that the entire interest
became ultimately vested in the appellants.
V. Patented improvements in the method of transferring motion
from the driving wheel of a reaping machine to the rake on the
platform of the machine and in the method of hanging the reel so as
to dispense with any post on the side
Page 78 U. S. 538
of the machine next the grain were also acquired by the
appellants as a part of the same arrangement, and they charge in
the bill of complaint that the second claim of the original letters
patent, embodying that improvement, is also infringed by the
respondents.
Power to grant letters patent is conferred by law upon the
Commissioner of Patents, and when that power has been lawfully
exercised and a patent has been duly granted, it is of itself
prima facie evidence that the patentee is the original and
first inventor of that which is therein described, and secured to
him as his invention. [
Footnote
6]
Persons seeking redress for the unlawful use of letters patent
in which they have an interest are obliged to allege and prove that
they or those under whom they claim are the original and first
inventors of the improvement embodied in the letters patent on
which the suit is founded, and that the same have been infringed by
the party against whom the suit is brought.
Undoubtedly the burden to establish both of those allegations
is, in the first place, upon the party instituting the suit, as
they lie at the foundation of every such claim, but the law is well
settled that the letters patent in question, where they are
introduced in evidence in support of the claim, if they are in due
form, afford a
prima facie presumption that the
first-named allegation is true, and the rule is equally well
settled that that presumption, in the absence of satisfactory proof
to the contrary, is sufficient to entitle the party instituting the
suit to recover for the alleged violation of the exclusive rights
secured to him in the letters patent.
Availing themselves of that rule of law, the complainants in
this case introduced the five several letters patent on which the
suit is founded, and they contend, and well contend, that their
effect as evidence is to cast the burden of proof upon the
respondents to show that the respective patentees are not the
original and first inventors of the improvements
Page 78 U. S. 539
embodied in the several letters patent, as they have alleged in
their answer.
Parties defendants, sued as infringers, are not allowed in an
action at law to set up the defense of a previous invention,
knowledge, or use of the thing patented unless they have given
notice of such a defense thirty days before the trial and have
stated in the notice "the names and places of residence of those
whom they intend to prove to have possessed a prior knowledge of
the thing, and where the same had been used," and the settled
practice in equity is to require the respondent, as a condition
precedent to such defense, to give the complainant substantially
the same information in his answer. [
Footnote 7]
Notices of the kind were given by the respondents in this case,
but it will be more convenient to examine certain special defenses
set up in the answer before entering upon that inquiry, as the
decree must be affirmed, in any event, if any one of those defenses
is well founded, whether the issues of novelty and of infringement
are determined in favor of the complainants or respondents.
All of the special defenses apply to the original patent, as
well as to those which have been reissued, except such as are
founded upon the acts or missions of the commissioner in granting
the reissues, which of course are not applicable to the former.
They are eight in number, as exhibited in the answer, the
respondents alleging in each that the letters patent are void and
of no effect for the reasons therein set forth; and they will be
briefly examined in the order in which they are pleaded.
1. That the letters patent are void and of no effect because the
patentees did not make oath, before the patents were granted, that
they did verily believe that they were the original and first
inventors of the improvements for which the letters patent were
solicited.
Congress possesses the power to pass laws to secure to
inventors, for limited times, the exclusive right to their
inventions,
Page 78 U. S. 540
and Congress, in pursuance of that article of the Constitution,
has conferred the power to grant letters patent for that purpose
upon the Commissioner of Patents. Persons who have made an
invention, and who desire to obtain an exclusive property therein,
may make application in writing to the Commissioner of Patents, and
the provision is that the commissioner, on due proceedings had, may
grant a patent for the said invention.
Inventors of machines are required, before they receive a
patent, to deliver a written description of their inventions, and
of the manner and process of making, constructing, and using the
same, in such "full, clear, and exact terms" as to enable any
person skilled in the art or science to make, construct, and use
the same, and fully to explain the principle by which the invention
may be distinguished from others of like kind, and they are also
required to specify and point out the part, improvement, or
combination which they claim as their invention.
Doubtless these several requirements may be regarded as
conditions precedent to the right of the commissioner to grant the
application, as they must appear on the face of the letters patent,
and are always open to legal construction as to their
sufficiency.
Drawings are also required in certain cases, and where the
invention is such that it may be represented by a model, the
applicant for a patent is required to furnish a model of the same;
and the further requirement is that he shall make oath or
affirmation that he does verily believe that he is the original and
first inventor of the improvement for which he solicits a patent,
and that he does not know that the same was ever before known or
used.
Importance, it is conceded, must be attached to the latter
requirement, but it is certain that the oath or affirmation may be
taken elsewhere than before the commissioner, as the same section
provides that it "may be made before any person authorized by law
to administer oaths." [
Footnote
8]
Page 78 U. S. 541
Extended examination of the question, however, is unnecessary,
as everyone of the letters patent on which the suit is founded
contains the recital that the required oath was taken before the
same was granted, and the Court is of the opinion that those
recitals, in the absence of fraud, are conclusive evidence that the
necessary oaths were taken by the applicants before the letters
patent were granted.
2. That the letters patent are void and of no effect because the
patentees did not specify and point out in their specifications and
claims the parts, improvements, or combinations which they claim as
their respective inventions.
Grant the theory of fact assumed in the proposition and the
conclusion would follow, but the whole theory of the proposition as
applied to the present case is founded in error.
Inventions secured by letters patent sometimes, though rarely,
embrace an entire machine, and in such cases it is sufficient if it
appear that the claim is coextensive with the invention. Other
inventions embrace only one or more parts of a machine, as the
coulter of a plough, or the divider or sweep rake of a reaping
machine; and in such cases the part or parts claimed must be
specified and pointed out so that constructors, other inventors,
and the public may know how to make the invention, and what is
withdrawn from general use.
Patented inventions are also made which embrace both a new
ingredient and a combination of old ingredients embodied in the
same machine. Even more particularity of description is required in
such a case, as the property of the patentee consists, not only in
the new ingredient, but also in the new combination, and it is
essential that his invention shall be so fully described that
others may not be led into mistake, as no other person can lawfully
make, use, or vend a machine containing such new ingredient or such
new combination. They may make, use, or vend the machine without
the patented improvements, if it is capable of such use, but they
cannot use either of those improvements without making themselves
liable as infringers.
Page 78 U. S. 542
Improvements in machines protected by letters patent may also be
mentioned, of a much more numerous class, where all the ingredients
of the invention are old, and where the invention consists entirely
in a new combination of the old ingredients, whereby a new and
useful result is obtained, and many of them are of great utility
and value, and are just as much entitled to protection as those of
any other class. [
Footnote
9]
Such a combination is sufficiently described if the ingredients
of which it is composed are named, their mode of operation given,
and the new and useful result to be accomplished pointed out, so
that those skilled in the art and the public may know the extent
and nature of the claim, and what the parts are which cooperate to
produce the described new and useful result. Tested by these rules,
it is clear that the objection under consideration cannot prevail
in respect to anyone of the several letters patent on which the
suit is founded.
3. That the reissued letters patent are void and of no effect,
because the Commissioner of Patents never obtained jurisdiction to
receive the surrender of the originals, nor to grant the reissues,
as no evidence was produced before him to show that the originals
were inoperative or invalid for any reason or cause whatsoever.
Whenever any patent is inoperative or invalid, by reason of a
defective or insufficient description or specification, if the
error arose by inadvertency, accident, or mistake, and without any
fraudulent or deceptive intention, it is lawful for the
commissioner, upon the surrender to him of such patent, and of the
payment to him of a certain duty, to cause a new patent to be
issued to the inventor for the same invention for the residue of
the term then unexpired, in accordance with the patentee's
corrected description and specification. [
Footnote 10]
Whether adjudged to be valid or invalid, it is clear that
Page 78 U. S. 543
the several reissued letters patent are all in due form, and
that they contain all the usual recitals asserting a compliance
with the requirements specified in the patent act, and it is
equally certain that the respondents did not introduce any proofs
to establish the theory of fact assumed in the answer.
Authority to accept the surrender of original patents in certain
cases, and to grant new patents to the inventor, was conferred upon
the commissioner by the Act of the 3d of July, 1832, and in a case
arising under that act it was held by this Court, more than thirty
years ago, that where an act was to be done or a patent granted,
upon proofs to be laid before a public officer, upon which he was
to decide, the fact that such public officer had done the act or
granted the patent was
prima facie evidence that the
proofs had been regularly made, and that they were satisfactory,
even though the patent did not contain any recitals that the
prerequisites to the grant had been fulfilled; and such continued
to be the rule until the question came up again for consideration
under the existing patent act, when it was held by this Court that
the fact of the granting of the reissued patent closed all inquiry
into the existence of inadvertence, accident, or mistake, and left
open only the question of fraud for the jury. [
Footnote 11]
Since that time it has been definitively settled that neither
reissued nor extended patents can be abrogated by an infringer, in
a suit against him for infringement, upon the ground that the
letters patent were procured by fraud in prosecuting the
application for the same before the commissioner. [
Footnote 12]
Where the commissioner accepts a surrender of an original patent
and grants a new patent, his decision in the premises, in a suit
for infringement, is final and conclusive, and is not reexaminable
in such a suit in the circuit court unless it is apparent upon the
face of the patent that he has exceeded his authority, that there
is such a repugnancy between
Page 78 U. S. 544
the old and the new patent that it must be held, as matter of
legal construction, that the new patent is not for the same
invention as that embraced and secured in the original patent.
[
Footnote 13]
4. That the reissued letters patent are void and of no effect
because they were not granted for the same invention as that
embodied in the original letters patent, nor for any invention made
by the patentees before the original letters patent were
granted.
Reissued letters patent must, by the express words of the
section authorizing the same, be for the same invention, and
consequently where it appears on a comparison of the two
instruments, as matter of law, that the reissued patent is not for
the same invention as that embraced and secured in the original
patent, the reissued patent is invalid, as that state of facts
shows that the commissioner, in granting the new patent, exceeded
his jurisdiction. Power is unquestionably conferred upon the
commissioner to allow the specification to be amended if the patent
is inoperative or invalid, and in that event to issue the patent in
proper form; and he may doubtless, under that authority, allow the
patentee to redescribe his invention and to include in the
description and claims of the patent not only what was well
described before but whatever else was suggested or substantially
indicated in the specification or drawings which properly belonged
to the invention as actually made and perfected. Interpolations of
new features, ingredients, or devices, which were neither
described, suggested, nor indicated in the original patent, or
patent office model, and not allowed, as it is clear that the
commissioner has no jurisdiction to grant a reissue unless it be
for the same invention as that embodied in the original letters
patent, which necessarily excludes the right on such an application
to open the case to new parol testimony and a new hearing as to the
nature and extent of the improvement, except in certain special
cases, as provided in
Page 78 U. S. 545
a recent enactment not applicable to the case before the court.
[
Footnote 14]
Corrections may be made in the description, specification, or
claim where the patentee has claimed as new more than he had a
right to claim, or where the description, specification, or claim
is defective or insufficient, but he cannot under such an
application make material additions to the invention which were not
described, suggested, nor substantially indicated in the original
specifications, drawings, or patent office model.
Prior to the decision of this Court that a person sued as an
infringer cannot abrogate a reissued or extended patent by showing
that the commissioner had been induced to grant it by fraudulent
representations, it had sometimes been supposed that every such new
patent was open to that defense and that the question was one of
fact dependent upon evidence, but since it has been determined that
such a party cannot be heard to make such a defense to the charge
of infringement, it has come to be regarded as the better opinion
that all matters of fact involved in the hearing of an application
to reissue a patent, and in granting it, are conclusively settled
by the decision of the commissioner granting the application.
Matters of construction arising upon the face of the instrument are
still open, but all matters of fact connected with the surrender
and reissue are closed in such a suit by the decision of the
commissioner in granting the reissued patent. [
Footnote 15]
Letters patent reissued for an invention substantially different
from that embodied in the original patent are void and of no
effect, as no jurisdiction to grant such a patent is conferred by
any act of Congress upon the commissioner, and he possesses no
power in that behalf except what the acts of Congress confer.
Whether a reissued patent is for the same invention as that
embodied in the original patent
Page 78 U. S. 546
or for a different one is a question for the court in an equity
suit to be determined as a matter of construction, on a comparison
of the two instruments, aided or not by the testimony of expert
witnesses, as it may or may not appear that one or both may contain
technical terms or terms of art requiring such assistance in
ascertaining the true meaning of the language employed. [
Footnote 16]
Where the specification and claim, both in the original and
reissued patents, are expressed in ordinary language, without
employing any technical terms or terms of art, the question whether
the reissued patent is for the same invention as that described in
the original patent or for a different one is purely a question of
construction, but where both or either contain technical terms or
terms of art the court may hear the testimony of scientific
witnesses to aid the court in coming to a correct conclusion. Cases
doubtless arise where the language of the specification and claim,
both of the surrendered and reissued patents, is so interspersed
with technical terms and terms of art that the testimony of
scientific witnesses is indispensable to a correct understanding of
its meaning. Both parties in such a case would have a right to
examine such witnesses, and it would undoubtedly be error in the
court to reject the testimony, but the case before the court is not
of a character to render it expedient to pursue the inquiry.
[
Footnote 17]
Apply the rule to the present case, that the question is one of
construction, and it is clear that the defense under consideration
is not open to the respondents, as they did not introduce in
evidence the original letters patent from which the reissued
patents were derived.
Persons owning reissued letters patent, and seeking redress from
those who have invaded their exclusive rights, are not obliged to
introduce in evidence the surrendered patent, and, if the old
patent is not introduced by the party sued, he cannot have the
benefit of such a defense.
Page 78 U. S. 547
5. That the several letters patent are void and of no effect
because the claims therein patented are for an effect, and not for
any particular machinery.
Founded as the defense is upon an obvious misconstruction of the
claims of the several patents, it does not seem to require much
explanation. Omit the words "substantially as described," or
"substantially as set forth," and the question presented would be a
very different one, but inasmuch as those words, or words of
equivalent import, are employed in each of the claims, the defense
is without merit. Where the claim immediately follows the
description of the invention it may be construed in connection with
the explanations contained in the specifications, and where it
contains words referring back to the specifications, it cannot
properly be construed in any other way. [
Footnote 18]
6. That the several reissued letters patent are void and of no
effect because the claims therein made are too broad and embrace
that of which the patentees were not the original and first
inventors prior to the granting of the original letters patent.
Properly understood the defense is substantially the same as
that set up in the fourth defense, and it must be overruled for the
same reasons, which need not be repeated.
7. That the several letters patent are void and of no effect
because what is claimed therein as new was in public use, with the
consent and allowance of the original patentees, more than two
years before they applied for the several patents.
Such a defense set up in a case where the complainants file the
general replication is of no avail unless sustained by proof, and
the respondents did not introduce any proofs to sustain it, which
is all that need be said upon the subject.
8. That the combination claimed in each of the several letters
patent is a combination of old parts, the combining of which
involved no invention, but merely the skill of an intelligent
mechanic or other person skilled in the manufacture and use of
harvesting machines.
Page 78 U. S. 548
Reduced to a proposition the defense, as set up in the answer,
is that the several improvements were old and not patentable on
that account, as no improvements were made which required
invention. Specific objection is made under this head to each of
the four reissued letters patent, but the grounds of the several
objections are substantially the same, so that the several
propositions may be considered together.
New and useful machines are the proper subjects of an
application for a patent, and so, by the express words of the act
of Congress, are new and useful improvements on any machine. All of
the patents embraced in the suit fall under the second clause of
the provision, and are of the fourth class of patents before
described, that is, they consist of a new combination of old
elements whereby a new and useful result is obtained.
Particular changes may be made in the construction and operation
of an old machine so as to adapt it to a new and valuable use not
known before, and to which the old machine had not been, and could
not be, applied without those changes, and, under those
circumstances, if the machine, as changed and modified, produces a
new and useful result, it may be patented, and the patent will be
upheld under existing laws. [
Footnote 19]
Such a change in an old machine may consist merely of a new and
useful combination of the several parts of which the old machine is
composed, or it may consist of a material alteration or
modification of one or more of the several devices which entered
into its construction, and whether it be the one or the other, if
the change of construction and operation actually adapts the
machine to a new and valuable use not known before, and it actually
produces a new and useful result, then a patent may be granted for
the same, and it will be upheld as a patentable improvement.
[
Footnote 20]
Improvements for which a patent may be granted must
Page 78 U. S. 549
be new and useful, within the meaning of the patent law, or the
patent will be void, but the requirement of the patent act in that
respect is satisfied if the combination is new and the machine is
capable of being beneficially used for the purpose for which it was
designed, as the law does not require that it should be of such
general utility as to supersede all other inventions in practice to
accomplish the same object. [
Footnote 21]
Unsuccessful in those defenses the respondents in the next place
attack the respective inventions as destitute of originality, and
allege that the patentees were not the original and first inventors
of the several improvements supposed to be secured in the letters
patent. Separate defenses of the kind are set up in the answer to
each of the letters patent, but the nature and character of the
objections are such that the whole series may properly be
considered together.
Prior notice in the answer is required in such a case as a
condition precedent to the right to introduce proofs to support
such a defense, and it is certainly proper that the respondent
should be allowed to comply with that requirement, but it is an
abuse of the privilege to give such notices without some reason to
suppose that such a defense can successfully be made, and that the
proofs, if required, can be obtained, as it exposes the complainant
to unnecessary expense and trouble in preparing his case for trial.
Where no proofs were introduced in support of the answer, no
mention will be made of the notices, as a notice without proof to
support it is of no avail.
Out of all the alleged prior inventions set up in the answer,
only four were made the subject of proof to any substantial extent.
Two of these are the inventions of Obed Hussey and of Thomas D.
Burral, of the combination of the quadrant-shaped platform located
behind the cutting apparatus. Those patents were introduced as
tending more particularly
Page 78 U. S. 550
to supersede the reissued patent number seventy-two, before
described.
Strong doubts are entertained whether any of the patents given
in evidence by the respondents as superseding the particular patent
of the complainants, involved in this issue, are of a character to
have that effect, even if the inventions which they purport to
secure were of prior date, but it is not absolutely necessary to
decide that point, except as to one of the exhibits, as the court
is of the opinion that none of the others antedate the invention
secured in that patent. Conclusions are all that will be useful on
this branch of the case, especially as the question is one of fact
dependent upon the proofs, which are somewhat conflicting, and
where a full analysis of the evidence would hardly be practicable,
as it would extend the opinion to an unreasonable length.
Proofs entirely satisfactory to the court are exhibited by the
complainants showing that their invention, as described in the
patent in question, was perfected early in the summer of 1849, as a
material part of a harvesting machine, and that the same was
reduced to practice as an operative machine during the harvesting
season of that year.
Hussey, from 1839 or earlier to the time of his death, in the
summer of 1860, was much engaged in the manufacture of reaping
machines of various kinds. Most of his machines, however, were
constructed without any reel and with square platforms, so as to
drop the cut grain at the rear of the platform, differing so widely
from the patented machine of the complainants as to require no
argument to show that they afford no support to the present
defense. Other machines were constructed by him with a straight
guide board on the platform, which was adjustable within certain
limits, and the apparatus was doubtless capable, to a limited
extent, of causing the cut grain to be moved sufficiently out of
the path of the machine to give room for a single team.
Evidence to show that the invention of the complainants is
embodied in those machines is entirely wanting, and it is quite
clear that if any such had been introduced it could not have been
credited, as the differences between them are too
Page 78 U. S. 551
palpable and material to be overcome by parol evidence. Machines
were also made by him with two platforms, or with a platform in two
parts, the one being attached to the rear of the other, but it
required two men to do the work which, with the complainants'
machine, is easily and much better accomplished by one, which is
certainly all the explanation which need be given of those machines
in the present case.
Apart from these, he also made one experimental machine, with a
square platform to which was bolted an angular addition, giving the
whole, when the addition was attached, an angular form. Examined
when the addition is bolted to the main platform, irrespective of
the other ingredients of the combination, it approaches much nearer
to the invention of the complainants than any of the other exhibits
introduced in evidence by the respondents. Conceding all that,
still it would not be difficult to show that the two are
substantially different in several respects; but it is unnecessary
to enter that field of inquiry, as the proofs are entirely
satisfactory to the Court that the machine, as constructed, was
merely an experiment, and that it was never reduced to practice as
an operative machine. Undoubtedly it was built in the autumn of
1848, subsequent to the close of the harvest season; but the
respondents' testimony shows that it was not used for cutting grain
during that harvesting season.
Some obscurity surrounds its early history, nor is it of much
importance that it should be better known. It appears that it was
sent to the railroad depot to be transported to some other place
for trial; but there is no positive evidence that it was ever
forwarded or used, or that it was capable of any beneficial use.
Where it was transported, if at all, from the depot, does not
appear; but it does appear that it was returned the next year to
the shop of the maker, and that it was set against the wall by the
side of the street, in front of the shop, where it remained for
some time; that it was then removed to the new shop of the maker,
where it remained until it was taken to pieces and broken up by his
order, and never restored till long subsequent to the complainants'
patent.
Page 78 U. S. 552
Original and first inventors are entitled to the benefit of
their inventions if they reduce the same to practice, and
seasonably comply with the requirements of the patent law in
procuring letters patent for the protection of their exclusive
rights. Crude and imperfect experiments are not sufficient to
confer a right to a patent; but in order to constitute an
invention, the party must have proceeded so far as to have reduced
his idea to practice, and embodied it in some distinct form.
Desertion of an invention consisting of a machine, never
patented, may be proved by showing that the inventor, after he had
constructed it, and before he had reduced it to practice, broke it
up as something requiring more thought and experiment, and laid the
parts aside as incomplete, provided it appears that those acts were
done without any definite intention of resuming his experiments,
and of restoring the machine with a view to apply for letters
patent. [
Footnote 22]
He is the first inventor in the sense of the patent law, and
entitled to a patent for his invention, who first perfected and
adapted the same to use, and it is well settled that until the
invention is so perfected and adapted to use it is not patentable
under the patent laws. [
Footnote
23]
Argument is hardly necessary to show that nothing else
introduced in evidence by the respondents as having been
constructed by that inventor is of a character to interfere, in any
substantial respect, with the novelty of the invention held by the
complainants, as the weight of the evidence plainly tends to
disprove the allegations of the answer, and the inferences to be
drawn from a comparison of the exhibits would establish the
opposite theory even if the other proofs were less decisive to that
effect.
Prior invention by Thomas D. Burrall is the next defense set up
by the respondents to the particular patent under consideration.
They attempt to show that he constructed a
Page 78 U. S. 553
harvesting machine having a square platform, to which he
attached an apron, quadrant formed, which would deliver the cut
grain, heads foremost, at the side of the machine and out of the
way of the team in cutting the next swath.
Concede the fact that the machine, together with the circular
apron, was constructed by the person named as alleged, and that the
machine in that form antedates the invention held by the
complainants, still the court is of the opinion that it is not of a
character to defeat the complainants' patent, as it had no reel,
was not a self-raker in any view of the case, and consisted beyond
doubt of a substantially different combination. Compared with that,
the invention described in the complainants' patent is both new and
useful, and is plainly sufficient to support a patent as a new
arrangement.
Suppose it to be otherwise, still the conclusion as to this
defense must be the same, as the Court is unhesitatingly of the
opinion from the proofs that the supposed inventor did not
construct the circular apron, and attach the same to the square
platform, and use the two in conjunction until after the
complainants' invention was perfected and reduced to practice as an
operative machine.
Evidence was also introduced by the respondents respecting the
invention of Nelson Platt, but extended discussion upon that topic
is unnecessary, as it is hardly contended by the respondents that
the machine contains a quadrant-shaped platform with, and
immediately behind, the cutting apparatus, and in such relation to
the main frame as that described in the specification of the
complainants' patent. They appear to shrink from that proposition,
which is the only one involved in this defense, and seek shelter
under another, of a very different character, which is that the
difference between the two is so very slight that it required no
invention to pass from the former to the latter, which is a matter
appertaining to another head of the defense that has previously
been fully considered and the point distinctly overruled.
Properly understood, that machine does not contain a combination
of the quadrant-shaped platform with the cutting apparatus in any
practical sense. On the contrary, it
Page 78 U. S. 554
has a square platform combined with the cutting apparatus, and
the quadrant-shaped platform is combined with the square platform;
nor does it contain any quadrant-shaped platform to receive the
grain as it falls, but the ingredients of the invention, as well as
the combination, are different from those in the complainants'
machine, and the mode of operation is also different, which is all
that need be said in response to that defense.
Substantially the same defenses were also set up to the other
reissued letters patent, to the extent that those patents were put
in issue in the pleadings, but it will not be necessary to restate
the objections to their originality, nor to present any response to
the same, as to do so would only be to repeat what has been said in
respect to the one more particularly assailed in argument.
Attempt is also made to show that the original letters patent
described in the bill of complaint are also invalid because the
patentees are not the original and first inventors of the
improvements therein secured. Whether they were or were not the
original and first inventors of the improvement in the first claim
is a matter of no importance in this case, as the pleadings do not
put that claim in issue. They only put in issue the second claim,
which embodies the described method of hanging the reel so as to
dispense with any post or reel bearer next to the standing grain,
to prevent the grain from getting caught between the divider and
the reel supporter, and the only evidence introduced of prior
invention is what is contained in an article published in London,
in the Mechanics' Magazine. Expert witnesses were examined in
respect to it by both sides. One examined by the respondents
testified that he did not understand that it had any reel support
on the grain side of the machine, which in that respect is like the
machine of the complainants, but three expert witnesses examined by
the complainants testify that neither the description nor the
drawings of the same, as exhibited in that magazine, show anything
which is embodied in the complainants' patent, and the Court is of
the same opinion.
Page 78 U. S. 555
Patented inventions cannot be superseded by the mere
introduction of a foreign publication of the kind, though of prior
date, unless the description and drawings contain and exhibit a
substantial representation of the patented improvement, in such
full, clear, and exact terms as to enable any person skilled in the
art or science to which it appertains, to make, construct, and
practice the invention to the same practical extent as they would
be enabled to do if the information was derived from a prior
patent. Mere vague and general representations will not support
such a defense, as the knowledge supposed to be derived from the
publication must be sufficient to enable those skilled in the art
or science to understand the nature and operation of the invention,
and to carry it into practical use. Whatever may be the particular
circumstances under which the publication takes place, the account
published, to be of any effect to support such a defense, must be
an account of a complete and operative invention capable of being
put into practical operation. [
Footnote 24]
None of these defenses, however, were sustained in the court
below, but the circuit judges were of the opinion that the proofs
failed to show that the respondents had infringed the letters
patent of the complainants.
Actual inventors of a combination of two or more ingredients in
a machine, secured by letters patent in due form, are entitled,
even though the ingredients are old, if the combination produces a
new and useful result, to treat everyone as an infringer who makes
and uses or vends the machine to others to be used without their
authority or license. [
Footnote
25]
They cannot suppress subsequent improvements which are
substantially different, whether the new improvements consist in a
new combination of the same ingredients, or of the substitution of
some newly discovered ingredient, or of some old one, performing
some new function not known at
Page 78 U. S. 556
the date of the letters patent, as a proper substitute for the
ingredient withdrawn from the combination constituting their
invention. Mere formal alterations in a combination in letters
patent, however, are no defense to the charge of infringement, and
the withdrawal of one ingredient from the same and the substitution
of another which was well known at the date of the patent as a
proper substitute for the one withdrawn, is a mere formal
alteration of the combination if the ingredient substituted
performs substantially the same function as the one withdrawn.
Patentees therefore are entitled in all cases to invoke to some
extent the doctrine of equivalents, but they are never entitled to
do so in any case to suppress all other substantial improvements,
and the rule which disallows such pretensions, if properly
understood and limited, is as applicable to the inventor of a
device, or even of an entire machine, as to the inventor of a mere
combination, except that the inventor of the latter cannot treat
anyone as an infringer whose machine does not contain all of the
material ingredients of the prior combination, as in that state of
the case the subsequent invention is regarded as substantially
different from the former one, unless the latter machine employs as
a substitute for the ingredient left out to perform the same
function some other ingredient which was well known as a proper
substitute for the same when the former invention was patented.
[
Footnote 26]
Bona fide inventors of a combination are as much
entitled to suppress every other combination of the same
ingredients to produce the same result, not substantially different
from what they have invented and caused to be patented, as any
other class of inventors. All alike have the right to suppress
every colorable invasion of that which is secured to them by their
letters patent, and it is a mistake to suppose that this Court ever
intended to lay down any different rule of decision. Guided by
these rules the remaining question for the determination of the
court is whether the respondents
Page 78 U. S. 557
have infringed the several patents described in the bill of
complaint.
Infringement is alleged by the complainants, and the burden is
upon them to prove the allegation, as it imputes a wrongful act to
the respondents. All controversy as to the character of the
machines made and sold by the respondents is closed by their
admission set forth in the record. Exhibit six, it is conceded by
the respondents, is an accurate representation of the machines
which they made and sold, and the complainants accept the admission
as correct. Absolute certainty, therefore, attends that inquiry,
and there is very little, if any, more difficulty in ascertaining
the construction of the patented machines made and furnished to the
public by the complainants, so that the only substantial inquiry is
whether the machines made and sold by the respondents infringe the
patented machines of the complainants, as the latter embody all the
inventions of the complainants, except the claims pointed out as
not infringed, and the proofs satisfy the court that the exhibits
are constructed in accordance with the mechanism described in the
several letters patent.
Properly construed the reissued patent number four is the
combination of a quadrant-shaped platform located behind the
cutting apparatus of the harvester so as to receive the grain as it
falls after it is cut, with an automatic sweep rake so constructed
as to sweep over the platform in circular curves, and to move
forward and backward, or towards and from the cutting apparatus, so
as to seize upon the grain as it falls, after being cut, sweeping
it over the platform in circular curves and delivering it upon the
ground behind the machine with its stalks at right angles, or
nearly so, with the line of progression of the machine, and to
return by a forward movement towards the cutting apparatus to the
original position when the first operation commenced.
Number 1682 is divided into two parts, the first of which may be
used without the second, and it is not charged that the second part
has been infringed by the respondents. Briefly described it
consists of a combination of the cutting apparatus of a harvester
with a quadrant-shaped platform
Page 78 U. S. 558
arranged in the rear thereof, and with a sweep rake operated by
mechanism in such a manner that its teeth are caused to sweep over
the platform in curves when acting on the grain and to discharge
the stalks crosswise to the direction of the swath and out of the
way of the team on the return of the machine.
Two combinations are also contained in the reissued patent 1683,
but the respondents are not charged with infringing the second, so
that it is only necessary in this connection to refer to the first
and describe its operation. It consists of a combination of the
cutting apparatus with a reel and with a quadrant-shaped platform
located in the rear of the cutting apparatus, operating as follows:
the cutting apparatus severing the grain, the reel bearing the
grain against the cutting apparatus and insuring its delivery upon
the quadrant-shaped platform in the rear thereof, and the
quadrant-shaped platform receiving the grain from the cutting
apparatus and reel, and supporting it in such a manner that it can
be moved from the cutting apparatus, heads foremost, swept round in
a curve and discharged upon the ground crosswise to the direction
of the swath and out of the track of the horses when the machine
comes round to cut the next swath.
Patent numbered seventy-two is also an arrangement of the
quadrant-shaped platform immediately behind the cutting apparatus
of a reaping machine, so that the platform will receive the grain
as it falls from the cutting apparatus, and will support it in such
a manner that it may be swept round in a curvilinear path and
discharged, heads foremost, upon the ground at the side of the
platform out of the path of the horses when they return.
Reference will only be made to the second part of the original
patent embraced in the suit, as it is not charged that the
respondents have infringed the other claim. Separated from the
second claim the first consists in a mode of hanging the reel in a
reaping machine so as to dispense with any post or reel bearer on
the side next to the standing grain, without any projection of the
reel shaft or bearing
Page 78 U. S. 559
therefor on that side of the machine, so that the reel overhangs
the bearings on the one side and is without support on the other
side.
Prior to the act of Congress allowing several patents to be
issued for distinct and separate parts of the thing patented, it is
not probable that a bill of complaint joining five several patents
in the same charge of infringement would have escaped objection
from the respondent, but it will be noticed that all the claims
appertain to the same general subject, and that it requires all of
the inventions in question to constitute a complete self-raking
harvester or reaping machine, and that they are all embodied in the
machines which the complainants make and furnish to the public.
Viewed in that light, the Court is of the opinion that the
objection, if it had been made, could not have been sustained.
[
Footnote 27]
Where the invention or inventions are embodied in a machine the
question of infringement is best determined by a comparison of the
machine made by the respondent with the mechanism described in the
complainant's patent or patents, where more than one is embraced in
the same suit. [
Footnote
28]
Comparisons of the kind have been carefully made by the court,
aided by the evidence of the expert witnesses, as exhibited in the
record, and the Court is of the opinion that the several inventions
of the complainants, excepting the claims pointed out as not
infringed, are embodied in the machines made and sold by the
respondents. Two of the expert witnesses testify to that effect
without qualification, and the reasons which they assign for that
conclusion are, in the opinion of the Court, decisive of the
question. Some attempt was made in the cross-examination of those
witnesses to elicit an answer that the sweep rake employed by the
respondents operated differently from the corresponding device of
the complainants in the several reissued patents, but the attempt
was wholly unsuccessful, and called forth explanations which
confirm the conclusion that the two devices have substantially the
same operation.
Page 78 U. S. 560
Special reference is made in the opinion of the district judge
to the means employed by the respondents in supporting the reel, as
showing that the machines which they have made and sold do not
infringe the second claim of the original patent. His view is that
their machines do not infringe that claim because they do not
employ but one reel post instead of two, as shown in the
complainants' patent, but it is so obvious that the one post with
the frame attached to the upper end is substantially the same thing
that it is not deemed necessary to pursue the argument.
For these reasons we are all of the opinion that the
complainants are entitled to a decree that their several patents
are valid, and for an account and for a perpetual injunction,
except as to such, if any, as have expired.
Decree reversed with costs, and the cause remanded for
further proceedings in conformity to the opinion of the
Court.
[
Footnote 1]
Seymour's patent was granted July 8, 1851, and this patent was
reissued July 10, 1860, in decisions 1003, 1004, 1005. Reissue No.
1005 was again surrendered and reissued May 7, 1861, numbered
reissue 72, which was in this suit. Reissue No. 1003 was also
surrendered and reissued May 3, 1864, as reissue No. 1683, which
was also in this suit.
[
Footnote 2]
Palmer and Williams obtained original patent dated July 1, 1851.
This was surrendered April 10, 1855, which was again surrendered
January 1, 1861, and reissues 4 and 5 granted. Reissue 5 was
surrendered May 31, 1864, and reissue 1682 granted in lieu thereof.
Reissues 4 and 1682 are concerned in this suit.
[
Footnote 3]
Palmer and Williams obtained a separate patent for reel support,
January 24th, 1854, numbered 10,459, which patent is in this
suit.
[
Footnote 4]
68 U. S. 1 Wall.
531.
[
Footnote 5]
Citing Curtis on Patents § 378;
Betts v. Menzies, Hall
v. Evans, 6 Law Times N.S. 90.
[
Footnote 6]
White v. Allen, 2 Clifford 228.
[
Footnote 7]
Agawam Co. v.
Jordan, 7 Wall. 596;
Teese v.
Huntingdon, 23 How. 10.
[
Footnote 8]
5 Stat. at Large 119.
[
Footnote 9]
Union Sugar Refinery v. Matthiessen, 2 Fisher's Patent
Cases 605.
[
Footnote 10]
5 Stat. at Large 122.
[
Footnote 11]
Railroad v.
Stimpson, 14 Pet. 458;
Stimpson v.
Railroad, 4 How. 384; 4 Stat. at Large 559.
[
Footnote 12]
Rubber Company v.
Goodyear, 9 Wall. 797;
S.C., 2 Clifford
375.
[
Footnote 13]
Battin v.
Taggert, 17 How. 83;
O'Reilly v.
Morse, 15 How. 111,
56 U. S. 112;
Sickles v. Evans, 2 Clifford 222;
Allen v. Blunt,
3 Story 744.
[
Footnote 14]
16 Stat. at Large 206;
Cahart v. Austin, 2 Clifford
536; Curtis on Patents (3d ed) 276;
Woodworth v. Stone, 3
Story 753.
[
Footnote 15]
Rubber Co. v.
Goodyear, 9 Wall. 796;
Stimpson
v. Railroad, 4 How. 404;
Railroad v.
Stimpson, 14 Pet. 458.
[
Footnote 16]
Sickles v. Evans, 2 Clifford 203.
[
Footnote 17]
Bischoff v.
Whethered, 9 Wall. 814;
Betts v. Menzies,
4 Best & Smith, Q.B. 999.
[
Footnote 18]
Curtis on Patents (3d ed), secs. 225-227.
[
Footnote 19]
Bray v. Hartshorn, 1 Clifford 541;
Losh v.
Hague, 1 Webster's Patent Cases 207; Hindmarsh on Patents 95;
Phillips v.
Page, 24 How. 166; Norman on Patents 25.
[
Footnote 20]
Park v. Little, 3 Washington C.C. 196.
[
Footnote 21]
Lowell v. Lewis, 1 Mason 182;
Bedford v. Hunt,
ib., 302;
Many v. Jagger, 1 Blatchford 372;
Barrett v. Hall, 1 Mason 447.
[
Footnote 22]
Johnson v. Root, 2 Clifford 123;
Gayler
v. Wilder, 10 How. 498;
Parkhurst v.
Kinsman, 1 Blatchford 494;
White v. Allen, 2 Clifford
230.
[
Footnote 23]
Washburn v. Gould, 3 Story 122;
Cahoon v.
Ring, 1 Clifford 612.
[
Footnote 24]
Webster's Patent Cases 719; Curtis on Patents (3d ed), §
278 a;
Hill v. Evans, 6 Law Times N.S. 90;
Betts v.
Menzies, 4 Best & Smith Q.B 999.
[
Footnote 25]
Pitts v. Whitman, 2 Story 619;
Ames v. Howard,
1 Sumner 487.
[
Footnote 26]
Prouty v.
Ruggles, 16 Pet. 341;
Johnson v. Root, 2
Clifford 123.
[
Footnote 27]
5 Stat. at Large 192.
[
Footnote 28]
Blanchard v.
Putnam, 8 Wall. 426.
