1. In reissued letters patent No. 1515, granted to Paul Dennis
Aug. 4, 1862, for a new and useful improvement in cultivators, the
second claim in the specification is for a combination of the beam
and the mold board with the adjustable wheel, of which combination
the adjustable wheel is an essential element.
2. The first claim does not cover an inclined shovel mold board
simply, nor the principle of passing the earth over the recess of
the plow into the furrow behind, or passing it over a recess formed
exclusively with a curved edge. Its effect is to provide for that
which is not novel
viz., a recess cut or carved out for
the purpose intended.
3. There is no evidence in this case to show that by passing the
earth through a recess in the mold board formed by curved lines,
any advantage is obtained over passing it through one formed by
right lines.
4. There having been no infringement by the defendants of the
rights of the complainant, the question of his measure of damages
does not arise here.
This is a suit by Paul Dennis against Daniel Eddy, Walden Eddy,
and Abram Reynolds, doing business as Eddy & Co., for an
infringement of reissued letters patent No. 1515, granted to the
complainant Aug. 4, 1863, being a reissue of original letters No.
19,412, which bear date Feb. 23, 1858. The specification and
drawings of the reissue are as follows:
"To all whom it may concern:"
"Be it known that I, Paul Dennis, of Bemis Heights, in the
County of Saratoga, and State of New York, have invented a new and
improved shovel plow, and I do hereby declare that the following is
a full, clear, and exact description of the same, reference being
had to the accompanying drawings, making a part of this
specification, in which Fig. 1 is a side view of my invention; Fig.
2, a back view of the same; Fig. 3, a plan or top view of the same.
Similar letters of reference indicate corresponding parts in the
several figures."
"This invention consists in a peculiar manner of constructing or
forming the upper edge of the mold board, with recesses, so that
the earth, as the implement is drawn along, will pass over the top
of the mold board and drop into the furrow behind it, and partially
or wholly fill the same, there leaving the earth in a level
Page 95 U. S. 561
and also in a loose, light, or pliable state, permeable to air
and moisture, and at the same time preventing earth, sods, stone,
&c., being cast against the growing plants by the mold board, a
contingency of frequent occurrence in using the ordinary
plows."
"The invention further consists in the employment or use of a
gauge applied to the implement in such a manner as to admit of the
mold board penetrating the soil at a greater or less distance, as
may be desired."
"To enable those skilled in the art to fully understand and
construct my invention, I will proceed to describe it."
"A represents a metallic bar, which is curved so that the front
part will form the beam of the implement, and the back part an
inclined portion to which the mold board B is firmly attached. The
form of the bar A is clearly shown in Fig. 1."
"To the bar A, near the centre of its curve or bend, the lower
ends of handles
c c are attached by a bolt, as shown at
a. These handles are braced by a V-shaped support, D, the
lower end of which is secured to the bar, A, as shown at
b."
"The mold board B is of shovel form, and is much like those
usually made, with the exception that its upper edge or part is
scalloped out so as to form a recess
c at each side of the
bar A, as shown clearly in Figs. 2 and 3, said recesses extending
down nearly or about one half the length of the mold board. The
mold board may be constructed of malleable cast iron."
"E is the point or share, which is constructed of steel, the
lower end being pointed, and its sides slightly rounded or curved,
so that the form of the mold board and point or share, when
connected together, will closely approximate to those which are
cast in one piece, the recesses
c being excepted. The
point or share E may be attached to the mold board B by bolts
d, which are attached to the underside of the point or
share, and pass through a projecting plate
e at the under
side of the mold board. (
See Figs. 1 and 2.)"
"F is an adjustable metallic roller which is attached to the bar
A just back of the mold board B. The axis of the roller F is fitted
or has its bearings in arms
f f, which project obliquely
from a plate
g, said plate being slotted longitudinally,
so that the bolts
h h, which secure the mold board to the
bar, may pass through said slot, the bolts
h having each a
nut
i on them, by screwing up which the plate
g,
and consequently the roller F may be secured higher or lower as
desired."
"From the above description it will be seen that the point or
share
Page 95 U. S. 562
E and mold board B may be made to penetrate the soil at a
greater or less depth, as may be desired, by adjusting the roller F
and draught chain, said roller serving as a gauge or guide, and the
draught chain being adjusted at the end of the beam so that the
draught may aid the roller, and the point or share be made to have
a tendency to penetrate the soil or otherwise. This will be
understood by referring to Fig. 1, in which it will be seen that by
depressing or lowering the roller on the bar, the mold board will
be less inclined, and consequently if the draught chain or
whiffle-tree be properly adjusted at the end of the beam, the point
or share will have a greater tendency to penetrate the earth than
if the roller were higher up on the bar, the roller always bearing
upon the earth."
"The mold board B does not cast the earth from either side as
usual, but the earth, in consequence of the recesses
c c,
will pass over the top of the mold board and drop behind it, so
that no furrow will be formed or left behind the mold board, but
the soil will be left in a loose, light state, permeable to air and
moisture, and all grass, weeds, roots, and the like perfectly cut
up. The mold board, by operating in this manner, does not, of
course, cast earth, sods, or stones upon the growing plants, as is
frequently the case in using the ordinary shovel plows, which cast
the earth from either side of them. This is an important feature of
the invention."
"The point or share E also, in consequence of being made
separate, of steel, and attached to the mold board, may be readily
detached and sharpened, and when much worn, a new one may be
attached to the mold board. The plow is therefore not only rendered
far more durable, but it may always be kept in perfect order, for
the mold board will last an indefinite period of time if not being
subjected to much wear, and the plow will always be in order,
provided the point or share is kept in proper condition. By my
improvement, this can be done; but it cannot be done when the mold
board and share are cast in one piece."
"The ordinary shovel plows cannot be regulated by the draught
chain so as to regulate the depth of the furrow, for they have no
guide, the point or share merely penetrating the soil. The roller F
in my improvement diminishes friction, and serves as a more perfect
guide than the land side of ordinary plows."
"Having thus described my invention, I wish it distinctly
understood that I do not claim broadly the idea of passing a
portion of the earth over the mold board into the furrow behind, as
I am aware that this has before been done."
"Neither do I claim applying a movable mold board to one of
Page 95 U. S. 563
the outer edges of the share, as described in an application of
J. Drummond, rejected Oct. 25, 1844."
"Neither do I claim the use of projecting blades at the outer
ends of the share, as described in the patent of B. Langdon,
granted June 22, 1842, and others, but,"
"Having thus described my invention, what I claim as new therein
and desire to secure by letters patent is:"
"1st, the inclined shovel mold board B, formed and mounted
substantially as described, and constructed highest at its outer
edges, so as to form on each side of the standard A a recess
c, through which recesses a portion of the earth may,
after rising upon the mold board, descend into the furrow in the
rear of the plow."
"2d, the combination with the beam A and mold board B of the
adjustable wheel F, arranged and operating substantially as and for
the purposes specified."
"PAUL DENNIS"
image:a
Page 95 U. S. 564
image:b
The court below, upon hearing, was of opinion that the
defendants had infringed the first claim of the specification, but
not the second. An injunction was thereupon issued against the
defendants, and they were decreed to pay the complainant $596.50
damages, on account of gains and profits resulting from the
infringement. Both parties appealed to this Court, Eddy & Co.
from so much of the decree as held them to be infringers and Dennis
from that part limiting his damages to the amount awarded him.
MR. JUSTICE HUNT delivered the opinion of the Court.
Dennis, the complainant below, obtained an injunction and
recovered damages against Eddy and others for an infringement of
his letters patent for an improvement in "shovel plows." The
original letters were issued on the twenty-third day of February,
1858, and the patent was reissued on the fourth day of August,
1863.
The claim made under the reissued patent is in the words
following:
"Having thus described my invention, I wish it distinctly
understood that I do not claim broadly the idea of passing a
portion of the earth over the mold board into the furrow behind, as
I am aware that this has before been done. Neither do I claim
applying a movable mold board to one of the outer edges of the
share, as described in an application of J. Drummond, rejected Oct.
25, 1844. Neither do I claim the use of projecting blades at the
outer ends
Page 95 U. S. 565
of the share, as described in the patent of B. Langdon, granted
June 22, 1842, and others, but"
"Having thus described my invention, what I claim as new and
desire to secure by letters patent is 1st, the inclined shovel mold
board B, formed and mounted substantially as described, and
constructed highest at its outer edges, so as to form on each side
of the standard A a recess
c, through which recesses a
portion of the earth may, after rising upon the mold board, descend
into the furrow in the rear of the plow."
"2d, the combination with the beam A and mold board B of the
adjustable wheel F, arranged and operating substantially as and for
the purposes specified."
The original patent claimed only what is here described as the
second claim. The point of the reissue is in the claim as first
above set forth.
The use of the shovel plow is in cultivating the soil between
the rows of growing crops, after they are somewhat advanced in
their growth, to stir up and loosen the soil and to free it from
weeds. This plow is distinct in many parts of its construction, as
well as in its intended effect, from the plow used in breaking up
the soil -- that is, from the plow in common use.
In first considering the claim contained in both the original
and reissued patents, and in the latter described as the second
claim, we remark that we concur entirely with the learned judge who
tried this case at the circuit in his view of it.
The adjustable wheel is the important feature of this claim. The
bar or beam and the mold board suggest nothing in the way of
novelty, invention, or of peculiarity. The use of the base of a
plow as a fulcrum by means of which the plowman can raise or lower
the point of the plow, or turn it in different directions, has long
been in use and on nearly every kind of plow. Peter Dutton's stay
iron, rejected in 1865, affords an illustration.
That an adjustable wheel was deemed by the inventor to be quite
a different thing from the simple bar or shoe in ordinary use is
manifest from the careful description of its advantages in the
original patent. It is described in these words:
"F is an adjustable metallic roller, which is attached to the
bar A, just back of the mold board B. The axis of the roller F
is
Page 95 U. S. 566
fitted or has its bearings in arms
f f, which project
obliquely from a plate
g, said plate being slotted
longitudinally so that bolts
h h, which secure the mold
board to the bar, may pass through said slots, the bolts h having
each a nut
i on them, by screwing up which the plate, and
consequently the roller, may be secured higher or lower, as may be
desired."
It is also set forth that the point or share of the plow may be
made to penetrate the soil at a greater or less depth by adjusting
the roller and draught chain, the roller serving as a gauge or
guide and the draught chain being adjusted at the end of the beams
so that the draught may aid the roller; the point or share may be
made to penetrate the soil, or otherwise.
The plows proved to have been manufactured by Eddy & Co.,
the defendants, have none of them this element of an adjustable
wheel or roller. Their plow rests upon a plain bar or shoe of iron.
It has no mechanical contrivance for fixing the angle at which the
point shall penetrate the earth. This is done by the strength of
the plowman, who uses the shoe as a fulcrum for that purpose.
No argument is needed to show that there has been no violation
by the defendants of the Dennis patent in this particular.
In considering the effect of the remaining claim of the reissue,
we are greatly aided by the clear and explicit statement of the
patentee of what he does not claim as his invention.
There are three mechanical advantages in his plow, which he says
he does not claim to have invented:
1st, the idea of passing the earth over the mold board into the
furrow behind. This result is really the fundamental advantage in
both the plaintiff's and defendants' plows. In other words, the
principal benefit to be derived from either is found in the fact
that the earth, loosened and broken, will be deposited in the
furrow behind the plow, the movable mold boards and the projecting
blades at the outer ends of the share both contributing to this
result. But the patentee says that he is aware that this had been
done before his invention, and he makes no claim to an invention or
discovery in this respect.
Page 95 U. S. 567
2d, the patentee does not claim the application of a movable
mold board to one of the outer edges of the share. This, he says,
was described in an application previously made (in 1844) by
Drummond.
3d, the patentee does not claim the use of projecting blades at
the outer ends of the share. This had been described in a patent
granted to Langdon in 1842.
To these disclaimers we may add that he does not make a claim
for invention in using the shovel of this plow in an inclined form.
He does not even give the angle of inclination at which it shall be
used, whether it shall be 75�, like the old plows, or
45�, like this one. Ever since plows have been used -- and
there is no secular history of man in which the plow and the hoe
are not recorded -- we may safely believe that there has been an
inclination, sometimes greater and sometimes less, in the shovel
and mold board. A perfectly upright shovel would be nearly
immovable, except in a light soil and to a very slight depth, while
one perfectly flat would be of little value.
Remembering these four items as not being parts of the
plaintiff's invention, we are prepared to consider what he claims
to have invented and desires to secure by a patent. In his own
words, it is
"the inclined shovel mold board B, formed and mounted
substantially as described, and constructed highest at its outer
edges, so as to form on each side of the standard A a recess
c, through which recesses a portion of the earth may,
after rising upon the mold board, descend into the furrow in the
rear of the plow."
An inclined shovel mold board, simply and alone, is not spoken
of as an invention. It had long been in use in other plows. What
the claim means to appropriate is a shovel "formed and mounted and
constructed as described." There is nothing in the form of mounting
-- that is, placing it upon the beam of the plow -- that is
peculiar. It is the construction that gives it effect. How is it
formed and mounted and constructed? He says, in the general
description, that it is a metallic bar so formed or curved that the
front will form the beam of the implement, and the back an inclined
portion to which the mold is attached, while the upper edge of the
mold board is so scalloped
Page 95 U. S. 568
out as to form a recess over which the earth may pass, to which
is attached a metallic adjustable roller, serving as a gauge or
guide to regulate the depth that the point shall penetrate the
earth.
The defendants insisted that, like the other, this claim also
describes a combination of which the adjustable roller is an
essential element, and that there can be no infringement unless the
roller is used. There is much force in this argument.
There is also another view of this part of the case. Eliminate
from this description first the idea of an inclined shovel or mold
board, and second the idea of passing the earth over the plow into
the furrow, both of which are outside of the plaintiff's invention,
and nothing remains except a recess formed by a scalloped edge on
which the earth will pass, and an adjustable roller in connection
with the beam of the plow.
As has been before said, the defendants have never used the
adjustable roller. The infringement, then, if any, consists in the
use of a recess formed by a scalloped edge over which the earth
will pass. The learned judge at the circuit held that the patent
was good for this claim, and that the defendants had infringed it.
We have reached a different conclusion.
We think the use of the expression, "scalloped out so as to form
a recess," was not intended to say that the particular form in
which the recess was made should be that of a curve. A scallop may
indeed imply the idea of a curve, but in a vague and indefinite
manner. It is as if it had been said it "shall be so cut out as to
form a recess." The formation of the recess was the idea in the
mind of the draughtsman, with no reference to any question of
curved lines or right lines. That this was the fact is made evident
by the absence of the word "scalloped" in the claim itself,
although used in the general description. If that form had been
deemed material, it would have been inserted where the patentee
sets out with precision what it is that he claims. In the claim, it
is described by the words "constructed highest at its outer edges,
so as to form on each side a recess" through which the earth may
pass. A recess made by the outer edges being higher than the inner
parts was the effect intended to be provided for, and that only. If
it had
Page 95 U. S. 569
been intended to describe a recess made by a curve, to the
exclusion of a recess made in any other manner, it was very easy to
say so, but the patentee did not so say, and we think he did not so
mean.
If the patentee here had been the inventor of the mold board
with a recess for the purpose of passing the earth through it into
the furrow behind, and had described his invention in the words
used in his reissued patent, would it not have included as well a
structure made by right lines as one made by curved lines? In
Winans v. Denmead, cited by the respondent's counsel, it
is said,
"Although a particular geometrical form is best for a certain
purpose, yet other forms giving substantially the same result are
infringements. The result need not be the same in degree if it be
the same in kind."
15 How.
56 U. S.
344.
If this be so, it can scarcely be denied that the words used in
this reissued patent include both forms of a recess, and that it
thereby claimed what was previously known and in use, to-wit a
structure for the passage of the earth into the furrow behind.
No testimony is given that the sod will be more thoroughly
broken, the earth better pulverized, or the furrows better filled
by the passage of the earth through a recess made by curved lines
than by its passage through a recess of the same depth made by
straight lines. The plaintiffs, although witnesses, gave no
testimony to that effect. Of our own knowledge, we do not know that
it is so. As a matter of law, certainly we are not able to decide
that the right lined recess is any less efficacious for the purpose
desired than a curved line recess.
There is, indeed, testimony to show that the earth and sod
passing over the low mold boards of the exhibit M were left in a
worse condition than when passed over the recess of the Dennis
plow.
In speaking on this subject, Henry Holmes says that it left the
furrow behind hard and flat, as if a log had been drawn between the
rows. The witness Broughton speaks of it as throwing a double
furrow outward, and as leaving the furrow bare behind.
But neither of these witnesses attribute the excellences of the
one plow or the defects of the other to the existence of curved or
straight lines in forming the recess.
Page 95 U. S. 570
To recapitulate:
1. The second claim of the plaintiff's specification, "the
combination with the beam A and the mold board B with the
adjustable wheel F, arranged and operating substantially as used
for the purposes specified," gives no cause of action. It is a
claim for a combination of which the adjustable wheel F is an
essential element, and it is not pretended by any one that the
defendants have ever used an adjustable wheel in the plows made by
them.
2. The first claim does not cover an inclined shovel mold board
simply, nor does it cover the principle of passing the earth over
the recess of the plow into the furrow behind, nor does the claim
cover the passage of the earth over a recess formed exclusively
with a curved edge. Its effect is to provide for a recess cut or
carved out for the purpose intended. This is not novel, the
evidence showing many instances prior to the plaintiff's original
patent in which the principle and process had been used and
patented.
3. There is no evidence to show that there is any advantage in
passing the earth through a recess formed by curved lines, rather
than through a recess formed by right lines.
For these reasons, the decree of the court below must be
reversed.
As Dennis has no cause of action, the question of the amount of
damages cannot arise.
Decree reversed, and cause remanded with instructions to
dismiss the bill with costs.
