The doctrine that the use of one of the elements of a
combination does not infringe a patent for a combination
reasserted.
Patent No. 89,646, granted May 4, 1869, to C.J. Fisher for an
improved neckpad for horses, was not infringed by the device used
by the appellant for the same purpose.
This was a suit in equity brought by Charles J. Fisher, the
appellee, against Willibald Voss, the appellant, to restrain the
infringement by the latter of letters patent granted to Fisher,
dated May 4, 1869, "for an improved neck pad for horses."
The answer denied infringement and denied that Fisher was the
first inventor of the patented improvement.
Upon final hearing on the pleadings and evidence, the circuit
court rendered a decree in favor of the complainant, and the
defendant appealed.
MR. JUSTICE WOODS delivered the opinion of the Court. He recited
the facts as above stated and continued:
Neck pads for horses, to which the letters patent relate, were
made of various kinds and used long before application for the
patent was filed. They were attached to the horse collar at its
upper end, immediately below the point where the two arms of the
collar are buckled together. They rested on the neck of the horse,
and their object was to prevent the galling of the horse's neck by
the upper part of the collar. The improvement in neck pads covered
by the letters patent of the appellee was described as follows in
the specification:
Page 113 U. S. 214
"This invention relates to a new device for protecting the necks
of horses between the upper ends of the collar to prevent galling.
For this purpose, pieces of leather, cloth, or other material have
heretofore been used, but without the desired success. Pads could
not be made, as their inner faces could not be kept clear from
wrinkles or protuberances, which are more injurious than the
omission of a protecting device."
"My invention consists in producing a pad which may be attached
to the collar and which is perfectly smooth on the underside, the
leather used on the under side being crimped in order to obtain the
desired shape. . . . [The pad] is so shaped that it fits a horse's
neck between the arms of the collar, it being thick on top and
tapering to wards the ends. . . . The underside of the pad is
formed by a sheet of leather which is crimped in order to have its
ends turned up without producing wrinkles; the stuffing in the pad
is of hay or any other suitable material. On the outer side of the
pad near the ends of the same are straps which are fitted around
the collar to prevent longitudinal displacement of the pad."
The claim was as follows:
"The neck pad having an inner lining of crimped leather, and
provided with straps to allow its being fastened to the collar as
herein shown and described for the purpose specified."
The thing made and sold by the appellant which was charged to be
an infringement of the appellee's patent was a single piece of
crimped leather having a piece of sheet metal so shaped as to fit
it, riveted to its upper side in order to stiffen it and preserve
its crimped form, and provided with straps to fasten it to the
collar. The specification of appellant's patent describes a stuffed
pad. The drawing by which it is illustrated shows a stuffed pad,
and the certified model of the invention from the Patent Office,
exhibited at the hearing, is a stuffed pad.
It is clear that if the patent is to be construed as a
combination consisting of a stuffed pad having an inner lining of
crimped leather and straps to fasten the pad to the collar, the
appellant does not infringe, for he does not use one of the
elements of the combination -- namely the stuffed pad, nor its
equivalent.
Page 113 U. S. 215
Prouty v.
Ruggles, 16 Pet. 336;
Gould v.
Rees, 15 Wall. 187;
Rowell v. Lindsay,
ante, 113 U. S. 97, and
cases therein cited.
But counsel for appellee insists that the patent was not
intended to cover a combination, but merely the forming of the
underside of the pad by the use of a smooth sheet of leather
crimped in order to have its ends turned up without producing
wrinkles.
As already stated, the appellant does not use the crimped
leather as the inner lining of a stuffed pad. He uses the crimped
leather stiffened by a metal plate as a substitute for a stuffed
pad with a crimped leather lining.
There is therefore no infringement unless the patent of the
appellee should be construed to cover simply a piece of leather
crimped to the proper shape and having its underside smooth and
free from wrinkles, to be used to keep the upper part of the collar
from galling the neck of the horse. If the patent is so construed,
it must be held void, for the evidence in the record is conclusive
to show that such a device was made, sold, and used by many persons
years before the date of the appellee's patent. The result of these
views is that
The decree of the circuit court must be reversed, and the
cause remanded to that court with directions to dismiss the
bill.