1. It is the duty of the court to dismiss a suit brought to
restrain the infringement of letters patent where the device or
contrivance for which they were granted is not patentable, although
such defense be not set up.
2. The invention described in reissued letters patent No. 4240,
granted to Jolm B. Slawson, Jan. 24, 1871, is not patentable, as it
is confined to putting in the ordinary fare box used on a streetcar
an additional pane of glass opposite to that next the driver, so
that the passenger can see the interior of the box. The letters are
therefore void.
3. Letters patent No. 121,920, granted to Elijah C. Middleton,
Dec. 12, 1871, are void. The fare box, the headlight of the car,
and the reflector are the elements of the contrivance described in
the specification and claim for lighting the interior of the box at
night, and they are old. What is covered by the letters is not
patentable, as it is simply making in the top of the box an
aperture through which the rays of the headlamp are turned by means
of a reflector.
This was a suit brought by John B. Slawson against the Grand
Street, Prospect Park, and Flatbush Railroad Company to restrain
the infringement of two patents, one granted to him as inventor and
the other held and owned by him as an assignee.
The one first mentioned is a reissue, No. 4240, dated Jan. 24,
1871. The invention therein described is an improvement in fare
boxes for receiving the fares of passengers in omnibuses and
streetcars.
The specification describes the ordinary fare box used in
streetcars and omnibuses, consisting of two apartments, the one
directly above the other. This well known contrivance, the
specification declares, was so arranged that the passenger
deposited his fare in an aperture in the top of the upper
apartment. It fell upon and was arrested by a movable platform,
which constituted at the same time the bottom of the upper
apartment and the top of the lower. This platform turned on an axis
acted on by a lever. When turned, the fare fell into the lower
apartment, which was a receptacle for holding the fares accumulated
during the trip. Upon withdrawing the lever, the platform resumed
its horizontal position, ready to
Page 107 U. S. 650
arrest the next fare deposited. The upper apartment had a glass
panel on the side next the driver, so that he could see the fares
as they were deposited by the passengers. This contrivance enabled
the passenger to pay his own fare, and furnished a place of safe
deposit for it, so that it could not be abstracted by the driver.
It enabled the driver to scrutinize the fare after it was deposited
by the passenger, and see that it was the proper amount and in
genuine coin or tickets before it was passed into the general
receiving box. The improvement described in the patent consisted in
the insertion of a glass panel on that side of the upper apartment
of the box next to the inside of the car or omnibus, and opposite
to the glass panel next the driver, so that when the fare was
temporarily arrested in the upper apartment, the passenger could
see and examine it before it was passed into the lower or receiving
apartment. The specification declared:
"By this means, disputes and contentions are prevented as to the
sufficiency of the amount deposited to pay the fare or as to the
genuineness of the money or tickets used for that purpose. It also
enables the passenger, when he has unintentionally deposited more
than the amount of his fare, to call the attention of the driver to
that fact, so that he, should the passenger require the difference
to be paid back to him, may report the case to the proprietor or
his agent on reaching the end of the route, who will then pay the
difference to the passenger, who, for this purpose, must ride to
the office at the end of the route."
The claim of the patent was thus stated:
"A fare box having two compartments, into one of which the fare
is first deposited and temporarily arrested, previously to its
being deposited in the other, when the former is provided with
openings, covered or protected by transparent media or devices, so
arranged that the passengers can see through one and the driver or
conductor through the other, in the manner substantially as and for
the purposes set forth."
The other patent set up in the bill of complaint was granted to
Elijah C. Middleton, assignee of James F. Winchell, and by the
former assigned to complainant. It bore date December 12, 1871. It
also was for an improvement in fare boxes. The specification
declared as follows:
"This improvement relates to the mode of illuminating
Page 107 U. S. 651
the interior of a fare box in street railway cars or other
vehicles, when used during the night, and it consists in the
construction of the fare box with suitable openings and reflectors,
arranged and adapted to receive light from the ordinary headlamp
placed above the fare box, instead of requiring a separate lamp to
illuminate it as heretofore."
The specification then described the improvement substantially
thus:
The ordinary fare box, consisting of two apartments, one above
the other, is constructed with an orifice in the top of the upper
department, said top forming the floor of the lamp chamber. The
orifice is closed with a sheet of glass to prevent any access to
the fare box by that way. Immediately above the orifice there is
placed in the roof of the lamp chamber a reflector in such an
oblique position that will cause the light which falls upon it to
be thrown through the orifice into the upper apartment of the fare
box, in which the fare is temporarily deposited. The claim was
stated as follows:
"Lighting the interior of a fare box at night by light obtained
from the headlamp of the car thrown by a reflector I through an
opening H in the headlamp box, into the chamber for the temporary
detention of the fare for inspection, substantially in the manner
and for the purpose set forth."
The answer denied infringement of either of the improvements
described in the letters patent, denied that the persons therein
named as the first inventors of said improvements were in fact the
first inventors thereof, and averred that said improvements had
been in public use and on sale in this country for more than two
years before the applications for patents therefor were
respectively made.
Upon final hearing, the circuit court dismissed the bill on the
ground that the improvements described in the patents were void
because they did not embody invention within the meaning of the
patent laws. From this decree the complainant has appealed to this
Court.
Page 107 U. S. 652
MR. JUSTICE WOODS delivered the opinion of the Court.
The appellant insists that the dismissal of a bill because the
inventions described in the patents were not patentable, when no
such defense was set up in the answer, is of doubtful propriety,
and is a practice unfair to the complainants. The practice was
sanctioned by this Court in the case of
Dunbar v. Myers,
94 U. S. 187. In
that case, the defense set up in the answer was want of utility in
the patented invention, that the patentees were not the first
inventors, &c. The circuit court rendered a decree for the
complainant for a large sum. When the case came to this Court, the
decree was reversed with directions to the court below to dismiss
the bill on the ground, not set up in the answer, that the
improvement described in the patent sued on did not embody or
require invention and was not patentable, and the patent was
therefore void.
And in
Brown v. Piper, 91 U. S.
37,
91 U. S. 44, this
Court, speaking by Mr. Justice Swayne, said:
"We think this patent was void on its face [because the
improvement described therein was not patentable], and that the
court might have stopped short at that instrument and, without
looking beyond it into the answers and testimony
sua
sponte, if the objection was not taken by counsel, well have
adjudged in favor of defendant."
We think the practice thus sanctioned is not unfair or unjust to
complainants in suits brought on letters patent. If letters patent
are void because the device or contrivance described therein is not
patentable, it is the duty of the court to dismiss the cause on
that ground whether the defense be made or not. It would ill become
a court of equity to render money decrees in favor of a complainant
for the infringement of a patent which the court could see was void
on its face for want of invention. Every suitor in a cause founded
on letters patent should therefore understand that the question
whether his invention is patentable or not is always open to the
consideration of the court, whether the point is raised by the
answer or not.
We have considered the alleged improvements described in letters
patent set out in complainant's bill, and agree with the conclusion
reached by the circuit court that neither of them
Page 107 U. S. 653
involves invention, and that both the letters patent are
therefore void.
A glance at the specification and claim of the patent granted to
the complainant Slawson shows that the invention described therein
consists simply in the placing, in the ordinary fare box used on
streetcars and omnibuses, of a glass panel opposite to the glass
panel next the driver, usually inserted in such boxes. The patent
does not cover the fare box; it does not cover the insertion in the
side of the fare box next the driver of a glass panel, nor a
combination of these two elements. It consists merely in putting an
additional pane of glass in the fare box opposite the side next the
driver, so that the passengers can through it see the interior of
the box. Such a contrivance does not embody or require invention.
It requires no more invention than the placing of an additional
pane of glass in a showcase for the display of goods, or the
putting of an additional window in a room opposite one already
there. It would occur to any mechanic engaged in constructing fare
boxes that it might be advantageous to insert two glass panes, one
next the driver and the other next the interior of the car. But
this would not be invention within the meaning of the patent law.
Hotchkiss v.
Greenwood, 11 How. 248;
Phillips
v. Page, 24 How. 164;
Dunbar v. Myers, ubi
supra. It is not a combination of the fare box having one
glass panel with an additional glass panel, but is a mere
duplication of the glass panel. Doubtless a fare box with two glass
panels, arranged as described in the patent, is better than a fare
box with only one. But it is not every improvement that embodies a
patentable invention. This rule was fairly illustrated in the case
of
Stimpson v.
Woodman, 10 Wall. 117, in which it was held that
where a roller in a particular combination had been used before
without particular designs on it, and a roller with designs on it
had been used in another combination, it was not a patentable
invention to place designs on the roller in the first combination,
and that such a change, with the existing knowledge in the art,
involved simply mechanical skill, which is not patentable.
In
Brown v. Piper, ubi supra, it was said that when the
invention was simply the application by the patentees of an old
Page 107 U. S. 654
process to a new subject, without any exercise of the inventive
faculty and without the development of any idea which could be
deemed new and original in the sense of the patent law, it was not
patentable, and it was held that the application of a process for
preserving meats and fruit, which had previously been used for
preserving other perishable substances, was not patentable.
In
Atlantic Works v. Brady, ante, pp.
107 U. S. 192,
107 U. S. 200,
a case much in point decided by this Court at the present term, MR.
JUSTICE BRADLEY said:
"The design of the patent laws is to reward those who make some
substantial discovery or invention which adds to our knowledge and
makes a step in advance in useful arts. It was never their object
to grant a monopoly for every trifling device, every shadow of a
shade of an idea which would naturally and spontaneously occur to
any skilled mechanic or operator in the ordinary progress of
manufactures."
And it was held that the placing of a screw for dredging at the
stem of a screw propeller, when the dredging had been previously
accomplished by turning the propeller stern foremost and dredging
with the propelling screw, was not a patentable invention.
These authorities, and others that might be cited, are adverse
to the appellant's case and clearly show that the contrivance
covered by the patent issued to him does not embody a patentable
invention.
The same authorities apply with equal force to the patent for
lighting the interior of the fare box at night by using the
headlight of the car for that purpose. The elements of the
contrivance -- namely, the fare box, the headlight, and the
reflector -- are all old. What is covered by the patent is simply
the making of an aperture in the top of the fare box and turning
the rays of the headlamp through it into the box by means of a
reflector. In other words, it is the turning of the rays of light
to the spot where they are wanted by means of a reflector and
taking away an obstruction to their passage. The facts of general
knowledge of which we take judicial notice teach us that devices
similar to this are as old as the use of reflectors. Taylor's Ev.,
sec. 4, note 2;
Brown v. Piper, ubi supra. The new
application of them does not involve invention. We are of opinion
that there
Page 107 U. S. 655
was nothing patentable in the contrivance described in the
second patent.
The result of our views is that the decree of the circuit court
was right and must be
Affirmed.
