Where a patent is for a combination of distinct and designated
parts, it is not infringed by a combination which varies from that
patented, in the omission of one of the operative parts and the
substitution therefor of another part substantially different it
its construction and operation, but serving the same purpose.
Godfrey sued Eames in the Circuit Court of the United States for
the District of Massachusetts, in an action on the case for
infringing a patent for a new and useful improvement in boot trees,
of which patent he, Godfrey, was the assignee. The defendant
pleaded not guilty, and gave notice of special matters of defense.
The case was tried by a jury, who found the defendant guilty, and
assessed the damages at $2,177.50.
The patent was for a combination of mechanical powers for a new
and useful improvement in boot trees, and included a certain
mechanism for
distending the leg of the boot tree. The
plaintiff did not claim that the defendant had used the same
mechanism that he did for
distending the leg of the boot
tree, but that the defendant had used
all the other parts of
his combination, and that the mechanism which the defendant
used, although differing in construction and operation from that
described in the patent,
yet performed the same function.
The defendant contended, that not having used the mechanism
described in the patent for distending the leg of the boot tree,
although he had used the other parts of the combination, he was not
guilty of infringing the patent, and requested the court so to
rule. The court refused to rule as requested, but instructed the
jury,
"That to make out an infringement of the claim for combination,
it was not necessary for the plaintiff to show that the mechanism
for distending used by the defendant and its mode of operation were
the same with that described in the plaintiff's patent for the
purpose of distending the boot tree, and that if said mechanism for
distending the leg &c., used by the defendant, was not the same
mechanism, operating in the same manner as that described in the
plaintiff's patent for
Page 68 U. S. 79
the same purpose; still if there were in the defendant's machine
a mechanism performing the same function as that performed by
plaintiff's distending mechanism, and if this was combined with the
other parts in the manner in which the distending mechanism
described in the plaintiff's patent was combined, it was an
infringement of said patent, and the defendant would be liable
therefor."
The defendant excepted to the instructions given, and the
refusal of the court to instruct as prayed for.
On error here, the instructions and refusal, as aforesaid, were
the points before this Court.
MR. JUSTICE DAVIS delivered the opinion of the Court:
The patent in controversy was for a combination of mechanical
powers to effect a useful result, and such a patent differs
essentially in its principles from one where the subject matter is
new.
The law is well settled by repeated adjudications in this Court
and the circuit courts of the United States, that there is no
infringement of a patent which claims mechanical powers in
combination unless all the parts have been substantially used. The
use of a part less than the whole is no infringement.
In
Prouty & Mears v. Ruggles, * the law is well
considered. The patent there was for the combination of certain
parts of a plough, arranged together so as to produce a certain
effect. The suit was for an infringement. The court below had
charged the jury that unless the whole combination was
substantially used in the defendant's plough it was no violation of
the plaintiff's patent. Chief Justice Taney, in deciding the case,
said:
"None of the parts referred to is new, and none is claimed as
new, nor is any portion of the combination less than the whole
claimed as new or stated to produce any given result. The end in
view is proposed to be accomplished
Page 68 U. S. 80
by the union of all, arranged and combined together in the
manner described. The use of any two of these parts only, or of two
combined with a third, which is substantially different in form or
in the manner of its arrangement and connection with the others, is
therefore not the thing patented. It is not the same combination if
it substantially differs from it in any of its parts."
Testing this case by these principles, the court erred in
charging the jury as it did, and in refusing to instruct as asked
by the defendant. There is nothing in the record that shows in what
manner the mechanism used by Eames, in distending the leg of the
boot tree, differed from that claimed in the patent. It is stated
that the mechanism used by Eames was different in its construction
and operation, but how far the difference extended we are left to
conjecture. It is fair to presume, in the absence of proof, that it
was essentially different. If, however, the mechanism used by Eames
was not substantially different in its form or the manner of its
arrangement from the mechanism used by Godfrey, there was an
infringement; but this was a question that should have been left to
the jury to pass on. The court laid down a broad rule without
qualification -- that although Eames' mechanism for distending the
leg of the boot tree did differ in its construction and operation
from that patented, yet if it performed the same
functions
as the mechanism in the combination, there was an infringement.
This view of the law was wrong on principle and authority. Eames
had a right to use any of the parts in Godfrey's combination, if he
did not use the whole, and if he used all the parts but one, and
for that substituted another mechanical structure substantially
different in its construction and operation, but serving the same
purpose, he was not guilty of an infringement.
Judgment reversed and venire awarded.
*
41 U. S. 16
Pet. 341.
