1. To defeat a party suing for an infringement of letters
patent, it is sufficient to plead and prove that prior to his
supposed invention or discovery, the thing patented to him had been
patented or adequately described in some printed publication. A
sufficiently certain and clear description of the thing patented is
required, not of the steps necessarily antecedent to its
production.
2. Letters patent No. 137,893, issued April 15, 1873, to Moritz
Cohn for an improvement in corsets are invalid, the invention
claimed by him having been clearly anticipated and described in the
English provisional specification of John Henry Johnson, deposited
in the Patent Office Jan. 20, 1854, and officially published in
England in that year.
This was a suit for an infringement of the complainant's letters
patent, which are as follows:
Page 93 U. S. 367
"
UNITED STATES OF AMERICA"
"To all to whom these presents shall come:"
"Whereas Moritz Cohn, of New York, N.Y., has presented to the
Commissioner of Patents a petition praying for the grant of letters
patent for an alleged new and useful improvement in corsets, a
description of which invention is contained in the specification,
of which a copy is hereunto annexed and made a part hereof, and has
complied with the various requirements of law in such cases made
and provided, and"
"Whereas, upon due examination made, said claimant is adjudged
to be justly entitled to a patent under the law,"
"Now therefore these letters patent are to grant unto the said
Moritz Cohn, his heirs or assigns, for the term of seventeen years
from the fifteenth day of April, 1873, the exclusive right to make,
use, and vend the said invention throughout the United States and
the territories thereof."
"In testimony whereof, I have hereunto set my hand and caused
the seal of the Patent Office to be affixed, at the City of
Washington, this fifteenth day of April in the year of our Lord one
thousand eight hundred and seventy-three, and of the Independence
of the United States of America the ninety-seventh."
"Countersigned"
"B. R. COWEN"
"
Acting Secretary of the Interior"
"M. D. LEGGETT"
"
Commissioner of Patents"
"[L. S.]"
"
UNITED STATES PATENT OFFICE"
"
Improvement in Corsets"
"Specification forming part of letters patent No. 137,893, dated
April 15, 1873; application filed Jan. 30, 1873."
"
To all whom it may concern:"
"Be it known that I, Moritz Cohn, of New York City, in the State
of New York, have invented certain new and useful improvements in
corsets, and I do hereby declare that the following is a full and
exact description thereof, reference being had to the accompanying
drawing making part of this application:"
"Previous to my invention, it has been customary, in the
manufacture of corsets, to weave the material with pocket-like
openings or passages running through from edge to edge, or all
stopped and finished off at a uniform distance from the edge, and
adapted to receive the bones, which are inserted to stay the woven
fabric, and
Page 93 U. S. 368
which serve as braces to give shape to and support the figure of
the wearer. This method of manufacturing the corsets necessarily
involves a great deal of hand labor, and consequently expense in
stitching up the ends where they are woven with pockets running
through from edge to edge to hold the bones in place, or else the
upper ends of the bones are necessarily all located at a uniform
distance from the edge, resulting in a less perfectly shaped corset
than is produced by following out my invention."
"I propose by my invention to overcome the objections just named
and produce a corset in which the location or position of the bones
endwise shall be predetermined with the accuracy of the Jacquard in
the process of weaving the corset stuff or material, while I at the
same time effect a great saving of labor and expense and give a
more perfect shape. My invention has for its main object,
therefore, not only the production of a better article but also a
reduction in the cost of manufacture, and, to these ends, my
invention consists in having the pocket-like openings or passages
into which the bones are put closed up near one end, at that point
at which it is designed to have the end of each bone located, as
will be hereinafter more fully set forth."
"To enable those skilled in the art to make and perfectly
understand my invention, I will proceed to more fully describe it,
referring by letters to the accompanying drawing, in which, for the
purpose of illustration, I have represented two corsets, one made
according to the mode of manufacture heretofore most generally
practiced, the other according to my new method."
"It will be seen by reference to Figures 1 and 2, that the bones
a are held or secured in place endwise in the pockets
b of the corset material C by stitching
e, which
is done after the insertion of the bone and retains the bone
endwise by closing up the passageway or pocket in which it is
located. This is in accordance with or illustrates the mode of
manufacture originally practiced, and only departed from prior to
my invention, as heretofore explained."
"At Figures 3, 4, and 5 is illustrated, in elevation and
longitudinal and cross-sections, a corset made according to my
improved plan."
"In these figures, A is the woven fabric of the corset, which,
in lieu of being made with pocket-like openings or passages running
through from edge to edge or up to a uniform distance from the
edge, I propose to have woven with pockets or passages which extend
from one edge of the fabric toward the other, but stop short
Page 93 U. S. 369
of the latter at such point or locality as is predetermined for
the location of the end of each bone, according to the design or
shape to be given to the corset, as shown. The fabric is woven with
the pockets extending, as seen, from one edge B of the fabric to
the points
b, c, d, &c., and from these points out to
the edge F, the fabric is woven solid or without any passages.
f f represent the bones, which are made of the proper
length and are inserted from the edge B or at the open ends of the
pockets. After their insertion, the bones are pushed 'home' to the
bottom of their respective pockets, when the mouths or open ends of
the said pockets are closed up by the stitching and binding of the
edge B of the corset, and the perfect retention of the bones thus
effected."
"It will be understood that by forming the corset as described,
with pockets closed at one end, and weaving in such pockets of
varying lengths, I am enabled to determine, in the manufacture of
the corset fabric, the precise points to which the subsequently
inserted bones shall extend, and thus pattern any number of corsets
exactly alike, and to the most desirable model."
"Corsets made according to my improved plan, it will be seen,
can be made to a perfect and regular pattern, will be more
desirable in appearance, and can be produced at less cost than
those made according to the mode of manufacture practiced previous
to my invention."
"I am aware of, and do not claim, a woven corset with the
pockets stopped and finished off at a uniform distance from the
edge; I am also aware of, and do not claim, a hand-made corset with
pockets of varying lengths stitched on; but what I do claim as new,
and desire to secure by letters patent, is:"
"A corset having the pockets for the reception of the bones
formed in the weaving, and varying in length relatively to each
other, as desired, substantially in the manner and for the purpose
set forth."
The defendants, among other defenses, set up that the letters
patent granted to the complainant were anticipated by the English
provisional specification left by John Henry Johnson, at the Office
of the Commissioner of Patents, with his petition, on 20th January,
1854,
viz.:
"I., J. H. Johnson, of 47 Lincoln's Inn Fields, in County of
Middlesex and of Glasgow, North Britain, gentleman, do hereby
declare the nature of said invention for improvements in the
manufacture
Page 93 U. S. 370
of stays or corsets, communicated to me by Adolphe George
Geresine, of Paris, in Empire of France, manufacturer, to be as
follows:"
"This invention relates to the manufacture of what are known as
woven corsets, and consists in the employment of the jacquards in
the loom, one of which effects the shape or contour of the corset
and the other the formation of the double portions of slots for the
introduction of the whale bones."
"These slots or double portions are made simultaneously with the
single parts of the corset, and, in place of being terminated in a
point, they are finished square off and at any required length in
the corset, instead of always running the entire length, as is
usually the case in woven corsets."
"When the corset is taken from the loom, the whalebones are
inserted into these cases and the borders are formed, thus
completing the article, which contains all the elegance and
graceful contour of sewn corsets made by manual labor."
The court below, upon a final hearing, dismissed the bill,
whereupon the complainant appealed to this Court.
MR. JUSTICE STRONG delivered the opinion of the Court.
A careful examination of the evidence in this case has convinced
us that the invention claimed and patented to the plaintiff was
anticipated and described in the English provisional specification
of John Henry Johnson, left in the Office of the Commissioner of
Patents of the 20th of January, A.D. 1854. That specification was
printed and published in England officially in 1854 and it is
contained in volume 2d of a printed publication circulated in this
country as early as the year 1856. It is therefore fatal to the
validity of the plaintiff's patent if, in fact, it does describe
sufficiently the manufacture described and claimed in his
specification. It must be admitted that unless the earlier printed
and published description does exhibit the later patented invention
in such a full and intelligible manner as to enable persons skilled
in the art to which the invention is related to comprehend it
without assistance from the patent or to make it or repeat the
process claimed, it is insufficient to invalidate the patent.
Keeping this principle in
Page 93 U. S. 371
view, we proceed to compare the plaintiff's invention with the
antecedent Johnson specification. In order to do this, a clear
understanding of the patent and of the invention the plaintiff
claims to have made is indispensable. His application at the Patent
Office was made on the 30th of January, 1873. In it, he claimed to
have invented "a new and useful improvement in corsets." After
reciting that, previous to his invention, it had been customary in
the manufacture of corsets to weave the material with pocket-like
openings or passages running from edge to edge and adapted to
receive the bones which are inserted to stay the woven fabric, and
which serve as braces to give shape to and support the figure of
the wearer, but that it had been necessary, after the insertion of
the bones into said pocket-like passages, to secure each one
endwise by sewing, he proceeded to mention objections to that mode
of making a corset. He specified two only. The first was that it
involved much hand labor and consequent expense in sewing in the
bones or securing them endwise in the woven passage, and the second
was that the arrangement or placement of the bones in the passages
had to be determined by hand manipulation, and that it was
therefore variable and irregular such as frequently to give to the
corset an undesirable shape or appearance near its upper edge.
These objections he proposed to remove, and to produce a corset in
which the location or position endwise of the bones shall be
predetermined with the accuracy of the jacquard, in the process of
weaving the corset stuffs or material, thereby effecting the saving
of labor and expense in the manufacture. He therefore declared his
invention to consist in having the pocket-like openings or passages
into which the bones are put closed up near one end, and at that
point at which it is designed to have the end of each bone located.
The claim then made was as follows: "A corset woven with the
pockets for the bones closed at one end, substantially as and for
the purpose set forth." It is very evident that when this
application was presented to the Commissioner of Patents, the only
invention the applicant supposed he had made, and the only one
claimed, was a corset the bone pockets in which had been closed at
one end in the weaving. A patent for it was refused, for the reason
assigned, that such a
Page 93 U. S. 372
corset was described in the printed publication of Johnson's
specification. The plaintiff then amended his application,
manifestly to set forth an invention differing in some particulars
from that of Johnson. The amendment, however, proved insufficient,
and a second rejection followed. Other amendments were then made,
until his present patent was at last granted, dated April 15, 1873.
In the specification which accompanies it, the patentee admits,
what he admitted at first, that prior to his invention it had been
customary in the manufacture of corsets to weave the material with
pocket-like openings or passages running through from edge to edge;
and he makes the further admission, that it had been customary to
weave the material with such passages all stopped and finished off
at uniform distances from the edge. He therefore disclaims "a woven
corset with the pockets stopped and finished off at a uniform
distance from the edges," and disclaims also "a handmade corset
with pockets of varying lengths stitched on;" and his claim is,
"a corset having the pockets for the reception of the bones
formed in the weaving, and varying in length relatively to each
other as desired, substantially in the manner and for the purposes
set forth."
The specification nowhere sets forth the manner in which the
alleged improvements in the corsets are produced, unless it be by
reference to a jacquard in the loom. No process is described. None
is patented. The claim is for a manufacture, not for a mode of
producing it. Its peculiarities, as described, are that the pockets
for the reception of the bones are formed in the weaving, rather
than by hand, and that they are of varying lengths relatively to
each other -- that is, that the pockets differ in length from other
pockets in the same corset, as desired. There are no other
particulars mentioned descriptive of the patented improvement,
unless they are that the weaving or variations in the length of the
pockets are to be in the manner and for the purpose set forth in
the specification. Referring to that, the purpose avowed is the
production of a better-shaped corset at less expense; and the
manner of effecting this is by substituting weaving for stitching,
in closing the pockets at desired or predetermined distances from
the edge. Now in view of the patentee's disclaimers, stopping off
the passages or pockets in
Page 93 U. S. 373
the weaving is not covered by the patent. It is admitted that
had been done before, and no claim is made for it. All that is
left, then, is that the woven and closed pockets in the corset vary
in length. No rule is stated for the variation. It is not stated
which are comparatively short and which long, or how much shorter
some are than others, or how near any or all of them come to the
edge. The demands of the claim in this respect are met if some of
the pockets desired to be longer than others are thus made. But the
claim must be further limited in view of the state of the art when
the application for the patent was made. The manufacture of
hand-made and woven corsets is an art long known -- known long
before the Johnson improvement. Those made by hand had gores
inserted to give enlarged space for the breasts of the wearer, and
also gores or gussets at the lower part to give space for the hips.
In woven corsets, these enlargements, equivalent to gussets, were
formed by the jacquard loom. For more than twenty years it has been
customary to weave in these gussets bone-pockets stopped off or
closed in the weaving at various distances from the edge of the
corset. Those extending upward from the lower edges were stopped
off at varying heights, and those extending from the upper edge
downward over the breast were woven close at their lower
extremities at unequal distances from the top. It is true that
where the stoppage was effected in weaving, the pockets in the
gussets were closed pointedly, and unavoidably so, by the necessary
contraction of the threads of the weft. But whether the stoppage
was pointed or blunt or square, is unimportant. It is not claimed
as a feature of the plaintiff's invention. His claim, then, cannot
refer to the gusset pockets. The well known state of the art,
existing before even the Johnson description, requires its
limitation. It must refer exclusively to the pockets under the arms
of the wearer, or on the back, or in front of the body. It claims
weaving them of various lengths when closed. That is all.
Having thus analyzed the plaintiff's alleged invention and
ascertained what it is, we are prepared to examine the Johnson
provisional specification and inquire whether it described with
sufficient certainty and clearness a corset having the improvement
claimed by the plaintiff. We quote at length the entire
Page 93 U. S. 374
description. Johnson, having declared the nature of the
invention for which he sought a patent to be "improvements in the
manufacture of stays or corsets," communicated to him by Adolphe
Georges Geresme, of Paris, in the Empire of France, described it as
follows:
"This invention relates to the manufacture of what are known as
woven corsets, and consists in the employment of the jacquards in
the loom, one of which effects the shape or contour of the corset
and the other the formation of the double portions of slots for the
introduction of the whalebones. These slots or double portions are
made simultaneously with the single part of the corset and, in
place of being terminated in a point, they are finished square off,
and at any required length in the corset, instead of always running
the entire length, as is usually the case in woven corsets. When
the corset is taken from the loom, the whalebones are inserted into
these cases, and the borders are formed, thus completing the
article, which contains all the elegance and graceful contour of
sewn corsets made by manual labor."
Undeniably this is a description of woven corsets, woven by the
use of the jacquards in the loom, woven with slots or passages for
the bones, made simultaneously with the other parts of the corsets
and requiring nothing to be done to them after their removal from
the loom except the insertion of the bones and the formation of the
borders. It is also plainly a description of corsets in which the
passages for the bones, called the double portions or slots, are
finished -- that is, stopped off in the weaving. That the
expression "finished off square" means closed or stopped off
square, is manifest, for several reasons. It is used to distinguish
the manufacture from one in which the termination of the slots is
pointed, as is always the case with the slots in the gussets, and
necessarily so. The pointed terminations are closures, and the
finished square terminations are only a different mode of closure.
The idea in Johnson's mind was therefore that of ending, or
termination by shutting up, or closing squarely, instead of
enclosing pointedly. And it was the slot or passage that was to be
finished off, and not merely the upper portion of the slot, or one
of its sides. A second reason for concluding that the specification
describes closed slots or passages is found in the concluding
paragraph, which states
Page 93 U. S. 375
that, when the corsets are taken from the loom, all that remains
to be done to complete them is to insert the bones into these
"cases," and form the borders. Thus, it is said, they are
completed, "containing all the elegance and graceful contour of
sewn corsets made by manual labor." There is not an intimation that
the needle is to be applied after removal from the loom. This
portion of the description is utterly inconsistent with the idea
that the pockets are not closed by the weaving. If they are not,
more is required to complete the corsets after the loom has done
its work than forming the borders and inserting the bones. The
pockets must be closed by stitching before they are ready for the
bones. Besides, those parts of the corset which in one part of the
specification are denominated "double portions of slots," and in
another, "slots, or double portions" finished square off, are also
called "cases," a word that expresses the idea of enclosure, and
which is inapplicable to open passages. For these reasons, we
cannot doubt that the meaning of the specification is that the
passages, slots, double portions, cases, pockets, by whatever name
they are called, are to be closed in the weaving. And the plaintiff
so understood it when he applied for his patent. In view of the
published description to which his attention was called, he
disclaimed stopping and finishing off the pockets in the weaving,
and stated in his amended specification that he was aware of
corsets thus made, and that it had been customary in the
manufacture to weave the material with pocket-like passages, all
stopped and finished off at uniform distances from the edge, and
adapted to receive the bones.
It is manifest, then, that there is nothing in the plaintiff's
patent which was not described in the Johnson specification, unless
it be that the closed slots or cases mentioned in the former are
required to be woven of varying length. A variation in the length
of the pockets relatively to each other, as desired, is, as we have
seen, the sole distinctive feature of the plaintiff's invention.
But it was well known before Johnson filed his specification that
the bone-pockets of a corset must vary in length. They were made to
vary in hand-made corsets, and in woven ones by sewing. In all
corsets, whether hand-made or woven, the pockets under the arms
were made shorter, and
Page 93 U. S. 376
those at the back and in front were made longer, in order to fit
the wearer and preserve a graceful shape at the top. Every person
skilled in corset making knew the necessity of such variation. In
Johnson's description, it was asserted that the shape or contour of
his corset was formed in the weaving; so far, therefore, as that
was effected by the relative length of the pockets, it was
dependent upon the loom. The description left to the manufacturer
to determine what should be the length of each pocket in order to
secure the elegance and graceful contour of sewn corsets -- in
other words, to determine before the weaving where the double
portions or slots should be stopped off. Johnson knew -- having
before him the state of the art at the time -- that pockets of
uniform length would not adapt the corset to fit the wearer, and
would not be consistent with elegance of shape. And there is not a
word in his description that intimates the pockets are to be
stopped off or closed at uniform distances from the edge or without
variation in length. The contrary idea is manifest. It is said they
are to be finished (closed) at any required length. Required
length? Required by whom, and for what? Plainly by the
manufacturer, and that they may have all the elegance and graceful
contour of sewn corsets made by manual labor, and also that they
may fit the wearer. Such a requirement could be met only by pockets
of different lengths in the same corset. And if they were stopped
wherever required, and it was required that they should stop off at
varying distances from the edges of the corset, the description
pointed out a corset thus made. It is true, no particular length of
the different pockets was specified, nor was any proportion
mentioned which one pocket should bear in length to another. That
was left to the manufacturer, as it is to the manufacturer of
hand-made corsets, and as it is in the plaintiff's specification.
He does not say how near to the upper edges of his corset the base
of the closed pockets comes, nor what proportion in length one
bears to the others. He simply describes them as varying in length
relatively to each other, as desired. This is certainly not more
definite than Johnson's description. In both, the variations in
length and their relative proportions are left to the judgment and
taste of the corset maker. It is impossible, therefore, to
Page 93 U. S. 377
find any thing in the plaintiff's patent which was not with
equal definiteness and perspicuity described in the printed
publication (Johnson's specification), made nineteen years before
the patent was granted.
It is quite immaterial, even if it be a fact, that the Johnson
specification is insufficient to teach a manufacturer how to make
the patented corset. It is enough if it sufficiently describes the
corset itself. Neither it nor the plaintiff's specification
exhibits the process of making. Neither of them sets up a claim for
a process. The plaintiff claims a manufacture, not a mode of making
it, and the important inquiry, therefore, is whether the prior
publication described the article. To defeat a party suing for an
infringement, it is sufficient to plead and prove that the thing
patented to him had been patented or described in some printed
publication prior to his supposed invention or discovery thereof.
Rev.Stat., sec. 4920. What is required is a description of the
thing patented, not of the steps necessarily antecedent to its
production. But the evidence shows that the Johnson specification,
in connection with the known state of the art at the time when it
was filed and published, was sufficient to enable one skilled in
the art of corset making and in the use of the jacquard to make the
patented corset. It is very clearly proved that it gave sufficient
instruction, and that it needed no addition to furnish full
information to a corset weaver how to weave a corset with the use
of the jacquard, and stop off all the bone pockets in the weaving
at the right places. It is also proved that the corset patented to
the plaintiff can be made as easily by the use of two jacquards, as
described by Johnson, as by the use of one, and it was so made
during the trial of the present case. It is, however, unnecessary
to consider the possibilities of two jacquards in operation at the
same time in one loom. It could only be material if the plaintiff
was claiming a process for making a corset. It is enough for this
case that the invention patented to the plaintiff was clearly
described in 1854 in the printed publication of the Johnson
(Geresme) provisional specification. The patent is therefore
invalid, and hence the decree of the circuit court dismissing the
bill must be affirmed.
Decree affirmed.
Page 93 U. S. 378
MR. JUSTICE CLIFFORD dissenting.
Inventors are required, before they receive a patent, to deliver
a written description of their inventions and of the process of
making, constructing, and using the same "in such full, clear,
concise, and exact terms" as to enable persons skilled in the art
or science to make, construct, and use the same.
Power to grant letters patent is vested in the commissioner, but
when the power is exercised and the 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.
Proofs are admissible to overcome that presumption, but it is
well settled law that patented inventions cannot be superseded by
the mere introduction of a foreign publication of the kind, though
of a prior date, unless the description and drawings contain and
exhibit a substantial representation of the patented improvement,
"in such full, clear, concise, and exact terms," as to enable any
person skilled in the art or science to which it appertains, to
make, construct, and use the invention to the same practical extent
as he would be enabled to do if the information was derived from a
prior patent. Applicants for a patent are as much required to
describe the manner and process of making, constructing, and using
the invention, as they are to file in the Patent Office a written
description of the alleged improvement, and both are expressly
required to be in such full, clear, concise, and exact terms, as to
enable any person skilled in the art or science to make, construct,
and use the invention.
Nothing deserving the least consideration is exhibited in the
record to support the defense that the appellant is not the
original and first inventor of the patented improvement, except the
Johnson specification, which, in my judgment, does not contain or
exhibit a substantial representation of the patented invention in
such full, clear, concise, and exact terms, as to enable even an
expert, without previous experiments, to make, construct, or
practice the invention.
Instead of that, the provisional specification fails altogether
to describe the means or mode of operation by which the
Page 93 U. S. 379
pockets of varying lengths are to be stopped or closed in the
process of weaving. Conclusive support to that proposition is found
in the fact that it became necessary for the infringers to
experiment for a long time before they could imitate the patented
product.
