1. Under the seventh and ninth sections of the Patent Act of
1837, which authorize a patentee, when by mistake &c., he may
have made his specification too broad, to make disclaimer of such
parts of the thing patented as he does not claim under it and to
record his disclaimer in the Patent Office &c., with various
provisos as to its effect on suits pending and as to unreasonable
neglect and delay in entering the disclaimer at the Patent Office,
the patentee may file a disclaimer as well after as before the
commencement of a suit. It would, however, in case of its being
filed after, be the duty of the court to see that the defendant was
not injuriously taken by surprise and to impose such terms as right
and justice might require. The question of unreasonable delay would
be open for the consideration of the court, and the complainant
could recover no costs.
2. A mere carrying forward of an original conception patented --
a new and more extended application of it -- involving change only
of form, proportions, or degree -- the substitution of equivalents
doing the same thing as did the original invention by substantially
the same means with better effects -- is not such invention as will
sustain a patent. It is the invention of what is new, and not the
arrival at comparative superiority or greater excellence in that
which was already known, which the law protects as exclusive
property and which it secures by patent.
3. Hence, where a textile fabric, having a certain substantial
construction and possessing essential properties, has been long
known and in use, a patent is void when all that distinguishes a
new fabric is higher finish, greater beauty of surface, the result
perhaps of greater tightness of weaving and due to the observation
or skill of the workman or to the perfection of the machinery
employed.
Smith, a holder of a patent from the United States, filed a bill
on the 19th of November, 1868, against Nichols in the court below
to enforce and protect his rights as patentee. The subject matter
of the patent was an elastic woven fabric, especially adapted to
use in forming gores for what are known as Congress or gaiter
boots, though applicable to other uses.
On the 22d of January, 1870, he filed a disclaimer of right to
certain matters included in his patent, and on the 27th of May,
1872, of certain other matters so included, both
Page 88 U. S. 113
being alleged to have been included through inadvertence and
mistake. These disclaimers were made in virtue of the seventh and
ninth sections of the Patent Act of 1837, sections which read
thus:
"SECTION 7. Whenever any patentee shall have, through
inadvertence &c., made his specification of claim too broad,
claiming more than that of which he was the original or first
inventor, some material and substantial part of the thing patented
being truly . . . his own, any such patentee . . . may make
disclaimer of such parts of the thing patented as the disclaimant
shall not claim to hold by virtue of the patent &c., which
disclaimer shall be in writing &c., and recorded in the Patent
Office. . . . But no such disclaimer shall affect any action
pending at the time of its being filed except so far as may relate
to the question of unreasonable neglect or delay in filing the
same."
"SECTION 9. Whenever by mistake &c., any patentee shall
have, in his specification, claimed to be the original and first
inventor or discoverer of any material or substantial part of the
thing patented, of which he was not the first and original inventor
or discoverer, . . . in every such case, the patent shall be deemed
good and valid for so much of the invention or discovery as shall
be truly and
bona fide his own. . . . And every such
patentee &c., shall be entitled to maintain a suit at law or in
equity on such patent for any infringement of such part of the
invention or discovery as shall be
bona fide his own. . .
. But in every such case in which a judgment or verdict shall be
rendered for the plaintiff, he shall not be entitled to
recover
costs against the defendant unless he shall have entered at
the Patent Office,
prior to the commencement of the suit,
a disclaimer of all that part of the thing patented which was so
claimed without right,
provided however that no person
bringing any such suit shall be entitled to the provisions
contained in this section
who shall have unreasonably neglected
or delayed to enter at the Patent Office a disclaimer as
aforesaid."
The defendants, relying on Wyeth v. Stone, [
Footnote 1] a case decided by Story J., set up
that in consequence of these disclaimers being filed after the suit
was brought, the suit could not be
Page 88 U. S. 114
entertained under the said seventh section, inasmuch as the
concluding part of that section prevented the disclaimer from
affecting any action "pending at the time of its being filed," and
the suit thus stood as one of a patentee with a patent for things
which he confessed were already known -- a void patent, therefore.
And in addition that as to the second disclaimer -- that filed on
the 27th of May, 1872, and therefore more than four years after the
bill was filed -- the second proviso of the ninth section about
unreasonable neglect and delay in entering it at the Patent Office
applied.
But the court did not consider this a sufficient reason for
sending the complainant out of court and compelling him to file a
new bill, and it therefore heard the case on its merits.
Proceeding, then, with a general statement as to these.
The fabric patented, as limited by the two disclaimers, was
asserted in the bill to be a new manufacture, and that its
distinguishing merit consisted in the fact that while it was
extremely elastic, it might be shaped or cut either crosswise or
bias without detriment to its elastic properties, the rubber cords
which gave to it those properties being so held by the weft threads
of the fabric that they could not "creep" or slip so as to withdraw
themselves from their proper position by any force of tension that
might be needed in adapting them to their intended use.
It appeared, indeed, that owing to the excellent manner of
weaving and perhaps from other causes, the fabric had gone into
extensive use, and for the especial purpose of elastic gores in
gaiter boots was in fact the only fabric now largely used. The
evidence, however, showed that a fabric substantially the same in
construction and possessing virtually the same properties had been
known and used in this country previous to the fabric produced and
patented by Smith, and that the superiority of the fabric patented
was due solely either to improved machinery or to the greater
mechanical skill employed in the formation of the fabric, by
Page 88 U. S. 115
which an excellence in degree was obtained, but not one in
kind.
The court accordingly dismissed the bill. And the complainant
took this appeal.
MR. JUSTICE SWAYNE stated the case more particularly, and
delivered the opinion of the Court.
The bill is founded upon a patent, and was filed by the
appellant. It charges infringement. Its object and prayer are to
have the defendant enjoined from infringing further, and required
to account for the profits he has wrongfully made.
The original patent was issued to the complainant on the 5th of
April, 1853. On the 28th of March, 1867, it was extended for seven
years. It was subsequently reissued in three divisions, as follows:
reissue No. 2656, June 18, 1867, division A, for improvements in
weaving; reissue No. 3014, June 20, 1868, division B, for
improvements in woven fabrics; and reissue No. 2844, January 14,
1868, division C, for improvements in looms for weaving. Division B
is the only one to be considered in this case.
In the specification, the loom and process for weaving corded
elastic india-rubber fabrics are described, and the excellence of
such fabrics so woven, and the points in which they are superior to
fabrics not so woven, are pointed out and insisted upon. The claim
is thus expressed:
"What, therefore, I claim as my invention in this subdivision of
my patent is:"
"The corded fabric, substantially as hereinbefore described, in
which the cords are elastic and held between the upper and under
weft threads, and separated from each other by the interweaving of
the upper and under weft threads with the warp threads in the
spaces between the cords, and only there, substantially as above
shown."
This bill was filed on the 19th of November, 1868.
Page 88 U. S. 116
On the 22d of January, 1870, the complainant filed a disclaimer
of any fabric in which the warp and weft threads are so interwoven
between the elastic cords as to form strips of shirred cloth
between and by the contraction of the elastic cords -- the warp
threads in his improved fabric being, as he declared, only
interwoven with the weft threads -- for the purpose of binding them
tightly around the elastic cords. On the 27th of May, 1872, he
filed a disclaimer of
"any fabric in which the weft threads are so interwoven with the
warp threads that the former are not brought halfway around each of
said cords, so as to gripe them in such a way as not to permit said
elastic cords to slip between said weft threads, in case said cords
are cut crosswise or bias."
The substance of the specification as limited by the disclaimers
may be thus summarized: the elastic cords are placed side by side,
equidistant from each other. They are stretched several times their
normal length. In the spaces between the cords warp threads are
placed parallel with the cords, and of less size. The cords remain
stationary. The warp threads are thrown open by the machinery of
the loom. Every alternate thread is thrown upwards and the
intermediate one downwards. What is termed a "shed" is thus formed
above the cords and one under them. Through each of these sheds a
weft thread is passed by means of a shuttle. One of the shuttles is
thus passed above and the other below all the rubber cords. After
both the weft threads have been driven home by the lathe, the
position of the warp threads is inverted by the treadle. Sheds are
thus formed on the opposite sides of the cords. Weft threads are
then again passed across the fabric. This process is continued
until the weaving is completed.
The weft threads form the only covering on the upper and under
side of the cords. When their tension ceases after the weaving is
done the cords contract in length and increase proportionately in
thickness. The weft threads are necessarily brought into proximity
with each other. They partially imbed themselves in the cords, hold
them firmly, and prevent them from slipping back, if cut anywhere,
while
Page 88 U. S. 117
at the tension which subsisted when the weaving took place. So
the weft threads cling tightly to the rubber cords in every degree
of tension to which they may be subjected. Each of the former
grasps firmly each of the latter half-round.
The points with respect to this litigation, which the
complainant claims as covered by his patent, we understand, are
that fewer warp threads are used, that the tightness of the weaving
is greater, that the rubber cords in all stages of tension are more
firmly and effectually held in his fabric than in any which
preceded it -- and especially the manner in which the weft threads,
one above and the other below, grasp each of the rubber cords
half-round.
It is objected that the disclaimers having been made after the
filing of the complainant's bill, cannot avail him in this case.
Upon a fair construction of the seventh and ninth sections of the
Act of 1837, we think they could be made as well after as before
the commencement of the suit. It would in such case be the duty of
the court to see that the defendant was not injuriously surprised,
and to impose such terms as right and justice might require. The
question of unreasonable delay would be open for the consideration
of the court, and the complainant could recover no costs. We see no
reason for turning a party out of court to renew the litigation
after filing the disclaimer, thus subjecting both parties to the
delay and expense which must necessarily follow, and without any
benefit to either. We cannot believe such to have been the
intention of Congress. [
Footnote
2]
The defense mainly relied upon is want of novelty -- in other
words, the prior public use of the things patented.
The counsel for the appellant admits expressly that an elastic
fabric with silk on one side and cotton on the other, one woven
with two shuttles, one woven with stationary elastic cords, and one
with elastic cords covered above and below solely by weft threads,
were known and in public use by themselves separately before the
alleged invention of the
Page 88 U. S. 118
complainant. It is also admitted that suspender webbing of
different kinds, some provided with elastic cords having strips of
cloth interwoven between them, and another class without the strips
of cloth and similar to the complainant's "except that the weft
threads in pairs were not made to grasp the elastic cords in the
manner described in the complainant's specification," also in like
manner preceded his invention. The proof to the same effect, less
the exception named, is voluminous and conclusive. It is
unnecessary particularly to refer to it. The testimony is equally
full as to webbing for shoe gores. That, made in the same way as
the suspender webbing, also came into public use and was largely
sold at as early a period.
The testimony of Hotchkiss establishes conclusively that -- also
prior to the defendant's invention -- he made and sold suspender
webbing with what were called binding warps between the rubber
warps, with weft threads which "went over all the rubber warps, and
under all the rubber warps," and that the fabric was woven while
the rubber cords were in a state of tension. He says further, that
he had never known suspender webbing made by American manufacturers
in any other way. There is a large mass of other testimony relative
to the case in this aspect, but it is deemed unnecessary to pursue
the subject further.
The evidence before us leaves to the complainant none of the
particulars claimed as of his invention, except perhaps greater
tightness of the weaving, a firmer grasping of the elastic cords by
the weft threads half round, above and below, and greater beauty
and value of the fabric. The entire ground of the controversy
between the parties is reduced to this narrow isthmus, and the
question presented for our determination is one rather of law than
of fact.
A patentable invention is a mental result. It must be new and
shown to be of practical utility. Everything within the domain of
the conception belongs to him who conceived it. The machine,
process, or product is but its material reflex and embodiment. A
new idea may be engrafted upon an old invention, be distinct from
the conception which
Page 88 U. S. 119
preceded it, and be an improvement. In such case, it is
patentable. The prior patentee cannot use it without the consent of
the improver, and the latter cannot use the original invention
without the consent of the former. But a mere carrying forward or
new or more extended application of the original thought, a change
only in form, proportions, or degree, the substitution of
equivalents, doing substantially the same thing in the same way by
substantially the same means with better results, is not such
invention as will sustain a patent. These rules apply alike whether
what preceded was covered by a patent or rested only in public
knowledge and use. In neither case can there be an invasion of such
domain and an appropriation of anything found there. In one case,
everything belongs to the prior patentee, in the other, to the
public at large.
The question before us must be considered in the light of these
rules. All the particulars claimed by the complainant, if conceded
to be his, are within the category of degree. Many textile fabrics,
especially those of cotton and wool, are constantly improved.
Sometimes the improvement is due to the skill of the workmen, and
sometimes to the perfection of the machinery employed. The results
are higher finish, greater beauty of surface, and increased
commercial value. A patent for the better fabric in such cases
would, we apprehend, be unprecedented. The patent in the present
case rests upon no other or better foundation.
Decree affirmed.
[
Footnote 1]
Story 273;
see also Reed v. Cutter, ib., 600
[
Footnote 2]
Tuck v. Bramhill, 6 Blatchford 104;
Silsby
v. Foote, 14 How. 220;
Aiken v. Dolan, 3
Fisher, 197;
Taylor v. Archer, 8 Blatchford 315;
Myers
v. Frame, ib., 446;
Guyon v. Serrell, 1
id.
244;
Hall v. Wiles, 2
id. 194.
