Le Roy v. Tatham
55 U.S. 156 (1852)

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U.S. Supreme Court

Le Roy v. Tatham, 55 U.S. 14 How. 156 156 (1852)

Le Roy v. Tatham

55 U.S. (14 How.) 156

Syllabus

In a patent for improvements upon the machinery used for making pipes and tubes from lead or tin when in a set or solid state by forcing it under great pressure from out of a receiver through apertures, dies, and cores, the claim of the patentees was thus stated:

"What we claim as our invention and desire to secure by letters patent is the combination of the following parts, above described, to-wit, the core and bridge, or guide piece, the chamber, and the die, when used to form pipes of metal under heat and pressure in the manner set forth or in any other manner substantially the same."

The circuit court charged the jury

"That the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application by which an useful article of manufacture is produced, and wrought pipe made, as distinguished from cast pipe."

This instruction was erroneous.

Under the claim of the patent, the combination of the machinery must be novel. The newly discovered principle, to-wit, that lead could be forced by extreme pressure, when in a set or solid state, to cohere and form a pipe was not in the patent, and the question whether it was or was not the subject of a patent was not in the case.

MR. JUSTICE CURTIS having been of counsel for the defendants in error upon the letters patent drawn in question in this case, did not sit at the hearing.

The declaration was filed by the defendants in error, on the 8th of May, 1817, to recover damages in a plea of trespass upon the case from the plaintiffs in error and Robert W. Lowber for the alleged infringement of their patent for new and useful improvements in machinery or apparatus for making pipes and tubes from metallic substances.

The declaration alleged that John and Charles Hanson, of Huddersfield, England, were the inventors of the alleged improvements on or before the 31st of August, 1837.

That on the 10th of January, 1840, the Hansons, assigned, in writing, to H. B. & B. Tatham, two of the defendants in error, the full and exclusive right to the said improvements.

That on the 29th of March, 1841, letters patent of the United States were granted to H. B. & B. Tatham as assignees of the Hansons for the said improvements.

That on the 12th of October, 1841, H. B. & B. Tatham, assigned to G. N. Tatham, the remaining defendant in error, one undivided third part of the said letters patent.

That on the 14th of March, 1846, the said letters patent having been surrendered on account of the defective specifications

Page 55 U. S. 157

of the said improvements, new letters patent were issued therefor on an amended specification whereby there was granted to the plaintiffs below, their heirs &c., for the term of fourteen years from the 31st of August, 1837, the full and exclusive right of making, vending &c., the said improvements, a description whereof was annexed to and made a part of such patent.

That the letters patent were of the value of $50,000, and that the defendants below had wrongfully and unlawfully made, used, and vended the said improvements and made lead pipe to the amount of 2,000 tons, thereby to the injury of the plaintiffs, $20,000.

To this declaration the defendants, Le Roy and Smith, pleaded not guilty, the defendant Lowber making no defense and permitting a default to be taken against him.

The cause was tried at the April Term 1849, and a verdict rendered by the jury in favor of the plaintiffs for $11,394 and costs, and a bill of exceptions was tendered by the defendants below.

On the trial of the cause below, the plaintiffs produced --

1. Their patent of 1846, and the specification referred to therein, and making a part of the same.

2. They read in evidence certain agreements between the defendant, Lowber, and the defendants, Le Roy and Smith.

3. They gave evidence, tending to prove that J. & C. Hanson were the original and first inventors of the improvement; that the invention was a valuable one &c.

4. That lead, recently become set, under heat and pressure in a close vessel would reunite perfectly after a separation of its parts; that in the process described in the said patent, pipe was so made; that the Hansons were the first and original discoverers thereof; and that such discovery, and its reduction to a practical result in the mode described in the patent was useful and important.

5. That the defendants Smith and Leroy had been jointly engaged with Lowber in making lead pipe upon the plan described in the letters patent and selling the same, and had thus made and sold large quantities of pipe; that the agreement between them relative to the manufacture of pipe was colorable only, and was made as a cover to protect Le Roy and Smith, and throw the responsibility on the defendant, Lowber, who was insolvent.

6. That the improvement described in the said letters patent was the same invention for which letters patent had been granted to the Hansons in England, and to H. B. & B. Tatham here as their assignees.

7. That the plaintiffs had been ready and had offered to sell

Page 55 U. S. 158

the said invention, and had sold the same for a large portion of the United States within the last eighteen months.

The defendants below then read in evidence:

1. The description of the English patent to the Hansons.

2. The patent to H. B. & B. Tatham of 1841, and the specification thereof.

3. The specification of an English patent, granted to Thomas Burr, of 11th April, 1820.

4. The patent and specification of Burroughs Titus, granted in 1831.

5. The patent granted to George W. Potter, in 1833.

6. The evidence of George Fox tending to show the invention and use by him of a similar machine in 1830.

7. The specification of a patent to John Hague in 1822.

8. The specification of a patent granted to Busk & Harvey in 1817.

9. The specification of a patent granted to Ellis & Burr in 1836.

10. The specification of a patent granted to Joseph Bramah in 1797.

11. The defendants then gave evidence tending to prove that J. & C. Hanson were not the original and first inventors of the combination of machinery described in the letters patent.

12. That the invention was not useful, nor the lead pipe, made upon the plan described, good.

13. That the combination of machinery described in public works as having been invented by Titus, Potter, Fox, Hague, Bramah, and Busk & Harvey were substantially the same as that described in the plaintiffs' patent.

14. That lead, when recently become set, under heat and extreme pressure, in a close vessel, would not reunite perfectly after a separation of its parts, and that in the process as described in the plaintiffs' patent, it was not in a set, but in a fluid state when it passed the bridge.

15. That the defendants Le Roy & Smith were not concerned in the manufacture of the pipe or in making or using the machinery; that it was made for them by the defendant Lowber at a certain price per hundred pounds; and that they had not infringed upon the patent of the plaintiffs.

16. That the improvement described in the plaintiff's patent of 1846 was not the same invention as that for which letters patent had previously been granted to the Hansons and to H. B. & B. Tatham.

17. That for the space of eighteen months from the date of the patent of 1841, the plaintiffs had neglected to put and continue on sale to the public, on reasonable trust, the invention or discovery for which the said patent issued.

Page 55 U. S. 159

The evidence being closed, the case was argued before the jury, after the court had given the charge which will be presently stated. The jury found a verdict for the plaintiffs, which, when increased by the court, amounted to $11,748.60. The following bill of exceptions brought up the rulings of the court upon the several points made:

The evidence being closed, the Judge charged the jury:

"That the first question which it was material to determine was what was the invention or discovery of John and Charles Hanson for which their patent had issued, as the precise character of that invention had been the subject of controversy on the trial."

"The patentees state in their specification, that the invention consists in certain improvements upon and additions to machinery for making pipes of metal capable of being pressed as described in Burr's patent dated April 11, 1820. They then describe Burr's apparatus and the process by which the pipe was made by it and state the defects of that plan, in consequence of which, they say, it failed to go into general use."

"These defects they claim to have overcome and remedied; and state that they had found that lead, and some of its alloys, when just set, or short of fluidity, and under heat and great pressure, in a close vessel, would reunite, after a separation of its parts, as completely as if it had not been separated, or, in other words, that, under these circumstances, it could be welded."

"That on this discovery and in reference to and in connection with it, they made a change in the machinery of Burr by which they succeeded in making perfect pipes, and were enabled to use a bridge at the end of the cylinder and short core, and thus surmount the difficulty of the Burr machine."

"They also state that they do not claim any of the parts -- the cylinder, core, die, or bridge, but that they claim the combination when used to form pipes of metal, under heat and pressure, in the way they have described."

"There can be no doubt that if this combination is new and produces a new and useful result, it is the proper subject of a patent. The result is a new manufacture."

"And even if the mere combination of machinery in the abstract is not new, still, if used and applied in connection with the practical development of a principle, newly discovered, producing a new and useful result, the subject is patentable. To which last opinion and decision, the counsel for the defendants did then and there except."

"In this view, the improvement of the plaintiffs is the application of a combination of machinery to a new end -- to the

Page 55 U. S. 160

development and application of a new principle, resulting in a new and useful manufacture."

"That the discovery of a new principle is not patentable, but it must be embodied and brought into operation by machinery so as to produce a new and useful result."

"Upon this view of the patent, it is an important question for the jury to determine from the evidence whether the fact is established on which the alleged improvement is founded that lead, in a set or semi-solid state, can thus be reunited or welded after separation."

"The Judge here commented briefly upon the testimony, referring to the experiments which were testified to and the results of which were exhibited to the jury on the part of the plaintiffs and defendants, and, in continuation, stated: "

"That there was one experiment which was testified to by Mr. Keller, and the result of which was shown to the jury, which was made under circumstances that seem not to be subject to any misapprehension, and which, if he is not mistaken, and his testimony is correct, would seem to settle the question. But this was a question of fact, to be decided by the jury on the evidence. Hereupon, the counsel for the defendants excepted to this part of the charge of the Judges. That it had been objected that the improvement described in the patent of March 14, 1846, was different from that of March 29, 1841. The act only authorized a reissue for the same invention, the first specification being defective. That he had compared the descriptions contained in the two patents, and, though the language was in some parts different, it would be found that the improvement was substantially the same, and that he therefore apprehended they would have no great difficulty in this branch of the case, to which the defendants' counsel excepted. That it was also objected that the plaintiffs' patent was invalid for want of originality; that the invention had been before described in public works, and Bramah, Hague, Titus, Fox, and Potter were relied on by the defendants. That in the view taken by the court in the construction of the patent, it was not material whether the mere combinations of machinery referred to were similar to the combination used by the Hansons, because the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application by which a useful article of manufacture is produced and wrought pipe made, as distinguished from cast pipe. Hereupon the defendants' counsel excepted."

"That in the patents referred to, from the year 1797 to 1832, the combination which was claimed to be identical, was confessedly used for making pipe by casting with fluid lead in a

Page 55 U. S. 161

mould, and after it was set by the application of water, forcing it out."

"And the question is whether any of these inventions are substantially the same as the plaintiffs'; whether, even if by these modes pipe had been successfully made for common use, it would have been made in the same manner as the Hansons', to which opinion the counsel for the defendants excepted."

"That it was further objected that the patentees have forfeited their rights on account of having omitted to put and continue the invention on sale within eighteen months after the patent was granted, upon reasonable terms. The Judge here commented upon the testimony on this part of the case, and in continuation said: "

"That it was not essential, under the section of the statue referred to, that the patentees should take active means for the purpose of putting their invention in market and forcing a sale, but that they should at all times be ready to sell at a fair price when a reasonable offer was made."

"That it was for the jury to say whether it was put and continued on sale under this view of the law, to which opinion the counsel for the defendants excepted."

"That the defendants Le Roy and Smith contend that they have not infringed the plaintiffs' patent; that they were but the purchasers of the pipe, and that Lowber was the manufacturer under the agreement which has been read."

"The Judge here referred to the evidence on this branch of the case, and said: "

"That if the contract made by the defendants with Lowber was bona fide, and they had no connection with the manufacture of the articles except to furnish lead and pay him a given price, deducting the expenses, and if the contract was in fact carried out and acted upon in that manner, then the defendants would not be liable. But if the agreement was only colorable, and was entered into for the purpose of deriving the benefit and profits of the business without assuming the responsibility for the use of the invention and for the purpose of throwing the responsibility on Lowber, who was insolvent, then they were as responsible as he was."

"That aiding and assisting a person in carrying on the business and in operating the machinery would implicate the parties so engaged. If, therefore, these defendants participated actively in conducting the machine, directing and supervising its operations; if the evidence establishes that position, then, as aiding and assisting, they are as responsible as Lowber, to which last opinion and decision the defendants' counsel excepted. "

Page 55 U. S. 162

"Prior to the giving of the preceding charge to the jury, the defendants' counsel requested the court to instruct them according to the following written proposition submitted, and his honor, after he delivered the said charge, took up the said propositions in their order and gave the instructions to the jury which are respectively subjoined thereto."

"Proposition I. If the jury believes that the agreements executed on the 13th of April and 13th of May, 1846, by which Lowber, as manufacturer, was to make the pipe for LeRoy & Co., on his machine at 55 cents the 100 pounds was real and bona fide, on an actual dissolution of the partnership of Lowber & LeRoy, and not colorable to throw the responsibility of working the machine on Lowber alone, then the plaintiffs cannot recover."

"Upon which his honor said that he had already given all the instructions he deemed necessary on that point; the proposition was correct, and it was for the jury to decide that fact."

"Proposition II. That even if the Tathams first introduced the pipe in question in this country as an article of commerce, that does not give them any right to recover unless the patents under which they claim were good and valid, for an invention not before known, used, or described in a public work."

"Upon which his honor instructed the jury, as requested by the defendants' counsel."

"Proposition III. That if the jury believes that the combination patented by the plaintiffs was before patented by Burroughs Titus or anyone else in this country, or patented and described in a well known public work abroad, the plaintiffs cannot recover, although such machines thus patented were not actually put in operation, so as to make pipe for the public."

"Upon which his honor instructed the jury that he had already stated to them that the plaintiffs' invention did not consist in the mere combination of machinery, and therefore, if those patents were for casting lead pipe, the point was not material; that it was not necessary that they would have made pipe for public use to defeat a subsequent patent. To which instruction and refusal to instruct the jury as requested the defendants' counsel excepted."

"Proposition IV. That the Tatham patent is void on its face, the Burr machine having the entire combination, including heat and pressure and the lead in a set state. The patent is void for claiming too much; should only have been for the improvement, viz., substituting the bridge and short core for the long core, and not for the whole combination."

"His honor declined to give this instruction, to which the defendants' counsel excepted. "

Page 55 U. S. 163

"Proposition V. That the bridge and short core having been before patented in this country by Burroughs Titus, and also before used in other machines, no claim could be made for introducing into Burr's combination such bridge."

"Upon which his honor instructed the jury as follows: undoubtedly that is so, but that is not the plaintiffs' claim."

"Proposition VI. That the state of the lead, when used as described in the plaintiffs' specification, being a principle of nature, is not the subject of a patent, either alone or in combination with the machine mentioned in that specification."

"To which his honor stated, the first part of the proposition was correct, and the latter part not, and the defendants' counsel excepted."

"Proposition VII. That the using of a metal in a certain state, or at a certain temperature, alone or in combination with a machine, was not the subject of a patent."

"To which his honor stated, I have already instructed the jury that the invention, as described by the Hansons, is a patentable subject, to which the defendants' counsel excepted."

"Proposition VIII. That if the jury believes that the combination of cylinder, piston, bridge, short core, die, and chamber, under heat and pressure, was before patented in this country by Burroughs Titus, then the plaintiffs cannot recover."

"Whereupon his honor instructed the jury that novelty in the mere combination of the machinery was not essential to the plaintiffs' right to recover except as connected with the development and application of the principle before mentioned, to which the defendants' counsel excepted."

"Proposition IX. That if the jury believes that the same combination of cylinder, piston, bridge, short core, die, and chamber, under heat and pressure, had before been patented in England, by Bramah and published in a well known work, then the plaintiffs cannot recover."

"His honor instructed the jury that Bramah's patent and the Tathams' were not identical, and declined to instruct them as requested, to all which the defendants' counsel excepted."

"Proposition X. That if the jury believed that the Burr Bramah, Titus, and Hague machines, or either of them, were published to the world in well known public works, and had the same combination, in whole or in part, as the Hanson machine, up to a certain point, the Tathams' patent is void for claiming too much, viz., the whole combination."

"His honor instructed the jury that he had explained to them his views on that part of the case, and declined to instruct them as requested in the form of which the proposition was stated, and to which the defendants' counsel excepted. "

Page 55 U. S. 164

"Proposition XI. That the reissue of the patent of 1846, on which alone the plaintiffs can claim, was not warranted by the patent of 1841, it being for a different, and not the same, invention, misdescribed by inadvertence, accident, or mistake, and in fact was a new patent under color of a reissue."

"That if the jury believes that the reissue of 1846 was for a different invention from the patent of 1841, and not for the same invention, misdescribed by inadvertence, accident, or mistake, then the plaintiffs cannot recover."

"His honor declined to instruct the jury according to the first branch of this proposition, to which the defendants' counsel excepted, but did instruct them in the affirmative upon the last branch thereof."

"Proposition XII. That if the jury believes that the combination patented was before described in some well known public work either in this country or in England, the plaintiffs cannot recover, although such machine or the pipe made by it was never introduced in this country."

"Upon which his honor instructed the jury in the affirmative."

"Proposition XIII. If the jury believes that the combination claimed was before known or used to make lead pipe by others than the Hansons or the Tathams, the plaintiffs are not entitled to recover no matter how limited such knowledge or use was, if the invention was not kept secret."

"Upon which his honor instructed the jury in the affirmative."

"Proposition XIV. That if the maccaroni machine, or the Busk and Harvey clay pipe machine contained the same combination as the plaintiffs' machine, that the plaintiffs cannot recover, by reason of applying the same combination to a new use."

"Which instructions his honor declined to give, and stated that he had explained to them his views on that subject, and the defendants' counsel excepted."

"Proposition XV. That if the jury believes that Mr. Lowber's machine was used by his men when the lead was in a fluid and not in a set or solid state, then there was no infringement and the plaintiffs cannot recover if the plaintiffs' patent were valid."

"Upon which his honor instructed the jury in the affirmative."

"Proposition XVI. That the jury is the sole and exclusive judge, as questions of fact, whether the combination and process were the same in plaintiffs' machine as was in Bramah's or in any other of the machines proved on the trial."

"Upon which his honor charged the jury that this was so undoubtedly, subject, however, to the principles of law as laid down in his preceding charge and instructions, to which the defendants' counsel excepted. "

Page 55 U. S. 165

"Proposition XVII. That if the jury believes that the lead, when it may be successfully used to make pipe with plaintiffs' machine, must not be in a set or solid state, as described in their specification, and that it can only be thus used in a fluid or pasty state, then that the patent is void, and the jury should find for the defendants on the ground that the specification does not fairly and fully describe the nature of the invention claimed, nor the condition in which the lead should be used, so as to enable the public to ascertain the true nature of the invention, the manner of using the machine, and the condition in which the lead ought to be used."

"Which instruction his honor answered in the affirmative."

"The jury then retired to consider its verdict under the said charge and instructions, and subsequently, on the 25th day of May, 1849, returned into court with a verdict for the said plaintiffs for $11,394 damages and six cents costs."

"And inasmuch as the said several matters aforesaid do not appear by the record of the said verdict, the said defendants' counsel did then and there request his honor, the said Judge, to put his seal to this bill of exceptions, containing the said several matters aforesaid; and his honor, the said Judge, did, in pursuance of the said request and of the statute in such case made and provided, put his seal to this bill of exceptions, containing the said several matters aforesaid, at the City of New York, aforesaid, the same 25th day of May, 1849."

"S. NELSON"

Page 55 U. S. 171

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