The second claim in the reissued patent of September 18, 1877,
to Charles E, Blake, assignee of the administratrix of Thomas H.
Bailey, deceased, for an improvement in relief valves for water
cylinders, is for a combination of an automatic valve with a
pinhole and pin to effect the desired object, and, as automatic
valves had been previously used for that purpose in other
combinations, it is not infringed by a combination of such a valve
with a screw, sleeve or cap to effect the same objects.
The adaptation of an automatic valve, a device known and in use
before the plaintiff's patent, to a steam fire engine is not such
invention as will sustain a patent.
Where the public has acquired the right to use a machine or
device for a particular purpose, it has the right to use it for all
like purposes to which it can be applied unless a new and different
result is obtained by a new application of it.
Page 113 U. S. 680
Bill in equity to restrain the infringement of a patent for an
invention. The facts which make the case are stated in the opinion
of the Court.
MR. JUSTICE WOODS delivered the opinion of the Court.
This is an appeal from a decree dismissing a bill filed by the
appellant to restrain the infringement by the appellees of reissued
letters patent granted to the appellant as the assignee of original
letters patent issued to Thomas H. Bailey. The original patent was
dated February 9, 1864, and the reissue September 18, 1877. They
were for "a new and improved valve for water cylinders of steam
fire engines and other pump cylinders." The specification, which
was substantially the same in both patents, stated that previous to
the invention therein described, the only valve used to relieve the
pressure upon fire hose to prevent them from bursting was one
operated by hand. To obviate the defects of such a valve, the
inventor applied at some point between the engine or pump and the
hose nozzle a valve which opened automatically by the pressure in
the hose or the pump cylinder, so as to discharge an additional
stream and thereby relieve the pressure.
The specification then minutely described an automatic relief or
safety valve, and added:
"To enable the valve to be screwed down to bring all practical
pressure upon the pump and hose in the trial of an engine, there is
a hole
d', drilled through the upper part of the screw
cap, D, and valve stem
d, when the valve is down in its
seat, for the reception of a pin by the insertion of which the
valve stem and cap can be connected rigidly, so that by slightly
turning the cap the valve may be screwed down close to its
seat."
The reissued patent contains two claims, the second of which
only is found in the original. They were as follows:
1. The combination, with a pump cylinder and hose of a fire
engine, of an automatic relief valve arranged relatively thereto
substantially as specified.
Page 113 U. S. 681
2. The combination of the value C, stem
d', spring E,
adjustable cap D, and pin-hole
d whereby the valve may be
either held upon its seat with a variable yielding pressure or may
be elevated therefrom or held immovably thereon, as an ordinary
screw plug.
The answer of the defendants denied infringement, denied that
Bailey was the original inventor of the devices described in his
patent, and averred that his alleged invention had been in
notorious public use many years before the application of a patent
therefor by Bailey.
The appellant does not contend that the appellees infringe the
first claim of the reissued patent. He bases his demand for relief
on the alleged infringement of the second claim only.
We think that the proper construction of this claim is that it
covers an automatic valve in combination with a contrivance
consisting of a pinhole and pin, by which the valve may be raised
from its seat, so as to leave the valve hole permanently open, or
by which the valve may be rigidly closed upon its seat, making a
closed or plug valve.
The evidence shows that Bailey was not the first to conceive the
idea of a device for opening or closing rigidly an automatic valve.
The same thing had been done by means of wedges and screws and
other devices. He cannot therefore cover by his patent all the
devices for producing this result, no matter what their form or
mode of operation. The claim must be confined to the specific
device described in the specification and claim -- namely a pinhole
and pin. If this construction of the claim be adopted, it is clear
that no infringement is shown, for the appellees do not use a
pinhole and pin for holding their valve open or closed, but a
screw, sleeve, or cap, and therefore one of the elements of the
combination, covered by the second claim of appellant's patent, is
wanting in the device used by the appellees.
Prouty v.
Ruggles, 16 Pet. 336.
See also Rowell v.
Lindsay, ante, page
113 U. S. 97, and
cases there cited.
But if it be contended that the device covered by the second
claim of the appellant's patent is infringed simply by the use of
an automatic relief valve which can be converted at will into an
open or closed valve, the evidence in the record is abundant
Page 113 U. S. 682
to show that long before the application of Bailey for the
original patent, automatic safety valves which could be thus
rigidly opened or closed were in common use for the purpose of
relieving pipes and cylinders from the pressure of steam or water,
and that the valve of the appellant did not materially differ from
those which were in common use. This was virtually conceded by the
appellant when, being under examination as a witness in his own
behalf, he was asked by counsel for the appellees in what respect
the valve described in his patent differed from any other automatic
relief valve, he replied: "It is about the same as others." "It is
similar to other automatic steam pump valves."
Upon this state of facts, it was plain that the mere employment
by the defendants of the old and well known automatic safety valve
afforded no ground upon which to base the relief prayed for in the
appellant's bill. Appellant's counsel therefore disclaimed any
right to the exclusive use of an automatic safety valve, and said:
"We do not claim the valve any further than in this combination
with a steam fire engine."
If it be conceded, therefore, that the second claim of
appellant's patent covered the use of an automatic relief valve
applied to a steam fire engine and hose, the question is presented
whether the appellant's patent thus construed is valid.
"It is settled," says MR. JUSTICE GRAY, speaking for the
Court,
"by many decisions of this Court . . . that the application of
an old process or machine to a similar or analogous subject, with
no change in the manner of application, and no result substantially
distinct in its nature, will not sustain a patent, even if the new
form of result has not before been contemplated."
Pennsylvania Railroad Co. v. Locomotive Truck Co.,
110 U. S. 490, and
cases there cited.
It follows from this principle that where the public has
acquired in any way the right to use a machine or device for a
particular purpose, it has the right to use it for all the like
purposes to which it can be applied, and no one can take out a
patent to cover the application of the device to a similar
purpose.
If there is any qualification of this rule, it is that if a
new
Page 113 U. S. 683
and different result is obtained by a new application of an
invention, such new application may be patented as an improvement
on the original invention, but if the result claimed as new is the
same in character as the original result, it will not be deemed a
new result for this purpose. For instance, an automatic relief
valve, used to relieve the pressure of steam, produces no new
result in character when used to relieve the pressure of water
unless some further effect besides the mere relief of pressure is
obtained. This qualification therefore will not affect the present
case, because no new result in character is accomplished by the
supposed invention of the plaintiff. Besides, it appears from the
evidence that before Bailey's patent was applied for, relief valves
were in common use, both on land and at sea. They were commonly
used on the steam feed pumps of steamships. These pumps were
usually fitted with nozzles for the attachment of hose, so that the
feed pump could, in case of need, be used as a steam fire engine.
It is therefore plain that in this state of the art, Bailey could
not obtain a valid patent for applying a similar valve to a
portable steam fire engine. He could not do this for two reasons:
first, because the public had the right to use the valve for all
similar purposes for which it was adapted, and second because the
application of a valve, which had been used on a stationary steam
fire engine on ships, to a portable steam fire engine on land, did
not require any ingenuity, or involve invention.
It is no answer to this to assert that the application of a
relief valve to a portable steam fire engine is the invention of a
new combination. There was no invention. The combination was
already in public use on steamships. The application of the valve
to a similar use on land was not a new combination or a new
invention.
We are of opinion, therefore, that, construing his patent as the
appellant has been compelled by the testimony to do, Bailey
invented nothing but the pinhole and pin mentioned in his
specification, and this is not used by the appellees.
The decree of the circuit court is affirmed.