A patent for a combination of separate parts does not cover each
part when taken separately.
A patent for a combination is not infringed by use of one of the
parts which, united with others, makes the combination unless other
mechanical equivalents, known to be such when the patent was
granted, are substituted for the omitted parts.
Seeding machines manufactured according to the specifications in
patent No. 152,708 for a new and useful improvement in seeding
machines, granted to John H. Thomas and Joseph W. Thomas, June 30,
1874, do not infringe the reissued letters patent, No. 2,909,
granted to John S. Rowell and Ira Rowell, for a new and useful
improvement in cultivators.
This was a suit in equity brought by the plaintiffs in error as
plaintiffs below, to restrain the defendants in error from
infringing reissued patent No. 2,909 for a new and useful
improvement in cultivators, granted to the plaintiffs, March 31,
1868. The defendants denied the infringement, and justified the
manufacture of the machines alleged to be such by patent No.
152,706, granted to John H. Thomas and Joseph W. Thomas, June 30,
1874, for a new and useful improvement in seeding machines. A
decree was made below in favor of the defendants, from which the
plaintiffs appealed.
MR. JUSTICE WOODS delivered the opinion of the Court.
The appellants, John S. Rowell and Ira Rowell, were the
plaintiffs in the circuit court. They brought their bill in equity
against Edmund J. Lindsay and William Lindsay, the appellees, to
restrain the infringement of reissued letters patent No. 2,909,
dated March 31, 1868, granted to the plaintiffs for
Page 113 U. S. 98
"a new and improved cultivator." The invention was illustrated
by the annexed drawings, and was described in the specification as
follows:
image:a
"Fig. 1 is a side elevation of the tooth, in a beam shown in
longitudinal section."
"Fig. 2 is a top view of the beam, with the tooth in position.
This invention consists in applying to the shank of the tooth a
curved brace bar, the upper end of which passes through a slot or
mortise in the beam, and is held in position by a clamping bolt,
which passes transversely through the slot or mortise near the
brace bar, and forces the sides of the beam
Page 113 U. S. 99
together against the brace bar, so as to clamp it in any
required position, and thereby adjust the tooth in any inclination
at the same time allowing it to yield to immovable obstacles
without breaking."
"In the drawings,
A represents one of the beams of a
cultivator;
B the shank, pivoted at
b;
B', the tooth;
C, a curved brace bar extending in
the arc of a circle outward and upward from the rear side of the
shank
B, and its upper end passing vertically through a
longitudinal slot or mortise
a in the beam
A and
D, a bolt, passing transversely through the slot or
mortise, and having a head
d, on one end, and a nut
d', on the other, by which the side walls of the slot or
mortise can be clamped against the brace bar with any required
force, thereby holding the latter in position when operating in the
field. It is evident that in a device thus constructed and
operating, the brace bar
C can be so clamped that the
tooth will retain its position when working in arable soil, but
will yield when coming in contact with an immovable obstacle, and
pass over it without breaking, the shank turning back upon its
pivot
b and the brace bar being forced up through the
slot. The same arrangement also allows the shank to be adjusted in
any position for deep or shallow cultivating."
"Having thus described our invention, what we claim as new and
desire to secure by letters patent is --"
"The combination of the slotted beam
A, shank
B, brace bar
C, and bolt
D, when the
parts are constructed and arranged to operate as and for the
purposes herein specified."
The answer of the defendants, among other defenses, denied
infringement of the letters patent. The plaintiffs contended that
infringement of their letters patent was made out by the evidence,
which tended to show that the defendants constructed and sold
seeding machines made according to the specification of letters
patent granted to John H. Thomas and Joseph W. Thomas, dated June
30, 1874, for "an improvement in seeding machines." This invention
related to the drag bars and shovel standards of broad cast
seeders, and consisted mainly in the manner of attaching the
standards to the drag bar. The invention
Page 113 U. S. 100
can be readily understood from the annexed drawings, by which
the specification was illustrated:
image:b
The bar
A is cut so as to leave a slit in the rear end
as at A2, to receive the shank of the shovel
C. This is
secured in the slit by the bolt
D. Another threaded bolt
is passed through the bar
A in such place as to sustain
the shovel when in proper position. The ends of the bifurcated bar
are drawn down by the bolt
E or by the united action of
the bolts
E and
D until clamped against the
standard of the shovel with such force that the friction shall
maintain the shovel in position while passing through mellow earth,
but not so tight but that it will yield to an excessive resistance
before force enough is applied to break the shovel. The advantages
of the invention are thus stated:
"By the form given to the standard, we obtain not only the gripe
on the pivoted end but also a gripe against the sides of the
standard, so that from its form it must be moved in the direction
of its length. A much less restraining force will then hold the
standard with requisite tenacity. Our device has its distinguishing
feature in that construction, as shown, by which the shank is
itself so bent as to give effect to the double action of the joint
at the eye and the compressing
Page 113 U. S. 101
bolt
E. By making it in one piece, its construction is
greatly cheapened as compared with that class where an arm has to
be welded into the shank."
The claim of this patent was as follows:
"In combination with the drag bar
A, bifurcated at
A2, the curved shovel standard
C, bent as shown
and pivoted by bolt at
D and clamped by bolt
E,
substantially as shown and described."
Upon final hearing upon the pleadings and proofs, the circuit
court dismissed the bill, and the plaintiffs appealed.
The evidence shows that the shanks or standards of plows,
cultivators, and seeding machines have been used in a great variety
of forms. In some, the upper end of the brace entered the beam in
the rear, and in others, in front of the shank. In some, the upper
end of the shank and the brace were so formed and united as to
present an elliptical figure. Many, perhaps the majority, were
without braces. In some, the upper end of the shank was made with a
head in the form of an elliptical or circular plate, called an
enlarged head. This performed the function of a brace. The patent
of the plaintiffs therefore stands on narrow ground, and to sustain
it, it must be so construed as to confine it substantially to the
form described in the specification.
The patent of the plaintiffs is for a combination only. None of
the separate elements of which the combination is composed are
claimed as the invention of the patentee; therefore none of them,
standing alone, are included in the monopoly of the patent. As was
said by MR. JUSTICE BRADLEY in the case of
The Corn
Planter Patent, 23 Wall. 181,
90 U. S.
224:
"When a patentee, after describing a machine, claims as his
invention a certain combination of elements or a certain device or
part of the machine, this is an implied declaration -- as
conclusive, so far as that patent is concerned, as if it were
expressed -- that the specific combination or thing claimed is the
only part which the patentee regards as new. True, he or some other
person may have a distinct patent for portions not covered by this,
but that will speak for itself. So far as the patent in question is
concerned, the remaining parts are old, or common
Page 113 U. S. 102
and public.'
See also Merrill v. Yeomans, 94 U. S.
573;
Water Meter Co. v. Desper, 101 U. S.
332,
101 U. S. 337;
Miller v.
Brass Co., 104 U. S. 350. These authorities
dispose of the contention of the plaintiffs' counsel that their
patent covers one of the separate elements which enters into the
combination -- namely a slotted wooden beam -- because, as they
contend, that element is new, and is the original invention of the
patentees."
The patent being for a combination, there can be no infringement
unless the combination is infringed. In
Prouty v.
Ruggles, 16 Pet. 336,
41 U. S. 341,
it was said:
"This combination, composed of all the parts mentioned in the
specification and arranged with reference to each other and to
other parts of the plow in the manner therein described, is stated
to be the improvement, and is the thing patented. 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. The jogging of the standard
into the beam, and its extension backward from the bolt, are both
treated by the plaintiffs as essential parts of their combination
for the purpose of brace and draft. Consequently the use of either
alone would not be the same improvement nor infringe the patent of
the plaintiffs."
To the same effect,
See also
Stimpson v. Baltimore
& Susquehanna Railroad Co., 10 How. 329;
Eames v.
Godfrey, 1 Wall. 78;
Seymour v.
Osborne, 11 Wall. 516;
Dunbar v. Myers,
94 U. S. 187;
Fuller v. Yentzer, 94 U. S. 288.
But this rule is subject to the qualification that a combination
may be infringed when some of the elements are employed, and for
the others mechanical equivalents are used, which were known to be
such at the time when the patent was granted.
Seymour v.
Osborne, ubi supra; 82 U. S. Rees,
15 Wall. 187;
Imhaeuser v. Buerk, 101 U.
S. 647.
In the light of these principles, we are to inquire whether the
defendants use the combination described in the patent of the
plaintiffs. The contention of the defendants is that the brace bar,
which is one of the elements of the combination
Page 113 U. S. 103
covered by the patent of the plaintiffs, is not, nor is its
equivalent, found in the machines made and sold by them. It is
plain, upon an inspection of the drawings, that the defendants do
not use a brace bar similar in shape or position to that described
in the plaintiffs' patent.
But the plaintiffs insist that the top of the shank, curved as
shown in the Thomas patent, is the equivalent of the brace bar
forming one of the elements of their invention, and as the
contrivance of the defendants embodies this equivalent device in
combination with all the other elements covered by the plaintiffs'
patent, that the infringement is established. Whether the first
mentioned device is the equivalent of the latter is the question
for solution. We think the contention of the defendants that it is
not, is well grounded. The specification and drawings of the
plaintiffs' patent, and the testimony of the plaintiffs' witnesses,
show that one purpose of the brace bar, used in the plaintiffs'
combination, was to strengthen and support the shank between the
tooth and the beam. The use of the brace bar enabled the plaintiffs
to make the shank with less material, and at the same time, to
increase its strength. This function is not performed by the curved
portion of the shank used by the defendants, which has not the
slightest tendency to support and strengthen the shank between the
tooth and the beam, where the greatest strain comes. On the
contrary, the defendants, by reason of the absence of the brace
bar, are forced to make their shank of larger diameter than that
used by the plaintiffs in order to give it the requisite strength
to prevent bending. Instead of stiffening the shank between the
tooth and the beam, it rather brings an increased strain upon that
part of the shank. We find, therefore, that the curved upper part
of the shank used by defendants does not perform one of the
material functions of the brace bar of the plaintiffs' combination.
It cannot, therefore, be the equivalent of the latter. For where
one patented combination is asserted to be an infringement of
another, a device in one, to be the equivalent of a device in the
other, must perform the same functions. As, therefore, there is one
element of the plaintiffs' patented combination which the
defendants do not use and for which
Page 113 U. S. 104
they do not employ an equivalent, it follows that they do not
infringe the plaintiffs' patent.
The decree of the circuit court, which dismissed the
plaintiffs' bill, is affirmed.