At the trial of an action at law for the infringement of a
patent, the plaintiff having introduced testimony on the question
of infringement, the defendant demurred to the evidence without
putting in any of his own. The court sustained the demurrer and
directed a verdict for the defendant. Held
question of infringement ought to have been submitted to the jury
under proper instructions; that it was not a matter of mere
judicial knowledge that the mechanical differences between the two
machines were material, in view of the character of the patented
invention, and of the claims of the patent, and that the case was
not one where, if the jury had found for the plaintiff, it would
have been proper for the court to set aside the verdict.
This was an action at law for the infringement of letters
patent. Verdict for the defendant and judgment on the verdict. The
plaintiff sued out this writ of error. The case is stated in the
MR. JUSTICE BLATCHFORD delivered the opinion of the Court..
This is an action at law, brought in the Circuit Court of the
United States for the Eastern District of Missouri by Herman Royer
against the Schultz Belting Company, a Missouri corporation, for
the infringement of letters patent No. 77,920, granted May 12,
1868, to Herman Royer and Louis Royer, as inventors, for "an
improved machine for treating raw hide." The patent expired on May
12, 1885, and this suit was brought on the 16th of November, 1885.
The specification, claims, and drawings are as follows:
Page 135 U. S. 320
"The nature of our invention is to provide an improved machine
for converting raw hides into leather of that class which is used
for belting, lacings, and other purposes, where it is necessary to
preserve the native strength and toughness without destroying or
impairing the natural fibers or grain of the leather. "
"In order to accomplish our object, we employ a machine mounted
on a suitable frame, having a vertical slotted shaft to which is
attached at its base a beveled wheel between two beveled pinions
upon a horizontal shaft. Around the vertical shaft is placed a row
of vertical pins or rollers, held in place by upper and lower
rings, one of which is firmly bolted to the frame. An iron weight
or press is employed for crowding the coil of hide down after it
has received the forward and back action around the shaft. "
"To more fully illustrate and describe our invention, reference
is had to the accompanying drawings, of which figure 1 is a
horizontal section through A B; figure 2, a side sectional
elevation, showing central shaft; figure 3, a side sectional
elevation; figure 4, a horizontal section, showing the hide around
the shaft in the circle of pins. "
"A represents the frame, of any suitable materials, up through
which the vertical shaft, B, passes, having a slot, B', through
which the end of the hide is placed, where it is held in place by
the set-screws, b b b b
. C C C are vertical pins or
rollers set in the rings, D and D', the lower one, or D', being
firmly attached to the frame by bolts, c c
. A beveled
wheel, E, is attached to the vertical shaft, B, which is actuated
by the beveled pinions, F F, placed on the horizontal driving
shaft, G. This shaft has a pulley, H, for driving the machine. An
iron weight, I, having an opening through its center for the
vertical shaft, and vertical grooves, i i,
in it to
prevent its turning, is placed upon the inside of the pins or
rollers, and, by pressing upon this weight, the hide is compressed
edgewise, after the forward and backward stretching or pressing is
performed lengthwise. The operation of our machine is as follows:
the end of the raw hide, after it has been deprived of the hair, is
Page 135 U. S. 321
into the slot, B', and the setscrews, b b b,
against it, when motion is imparted to the machine, and the hide is
wound tightly around the vertical shaft. When this is accomplished
and sufficient time has elapsed, the shaft is slowly reversed by
throwing the other pinion into gear, when the"
"hide commences to uncoil, or doubling back from the shaft,
which, with the folding back, and pressing against the pins or
rollers, produces the desired result of stretching in one way,
compressing, corrugating, or roughing in the opposite direction,
when the weight, I, is placed upon the top of the hide, and
Page 135 U. S. 322
is pressed downward, which in a measure compensates for the
stretching lengthwise. The hide so operated upon is then treated
with oil and tallow in the usual way."
"By thus treating the hide in our machine, the leather is
rendered very tough and the fibers or grain are not injured, but
imparts to it a rough, corrugated, and seamy appearance, making it
more strong and lasting for the purpose designed than by any other
machine or process."
"Having thus described our invention, what we claim and desire
to secure by letters patent is:"
"1. The vertical shaft, B, with a slot, B', and set-screws,
b b b,
said shaft having a forward and back motion,
substantially as and for the purpose described."
"2. The pins or rollers, C C C, set in the rings, D and D',
together with the grooved weight, I, substantially as and for the
The defendant set up, in answer to the petition, that the
machine was not the joint invention of the patentees; that it was
in public use by one of the patentees for more than two years
before the patent was applied for, and that it was not new, giving
references on the question of novelty. The answer also denied every
allegation in the petition. There was a reply, putting in issue the
new matter in the answer. The case was tried by a jury.
The bill of exceptions shows that after testimony had been put
in by the plaintiff on the question of infringement, the defendant
demurred to the evidence introduced by the plaintiff on that
question without itself putting in any evidence. The court
sustained such demurrer, and directed the jury to find for the
defendant. The jury so found, and a verdict was rendered for it.
The ruling of the court is reported in 28 F. 850. The plaintiff
excepted to so much of such ruling as sustained the demurrer to the
evidence, and to so much of the instruction of the court as
directed the jury to find for the defendant. A motion for a new
trial was made and overruled, the opinion thereon being in 29 F.
281. Judgment being rendered for the defendant, the plaintiff has
brought a writ of error.
Page 135 U. S. 323
The plaintiff's machine has a vertical crib of cylindrical bars
standing in a circle around and concentric with a central shaft.
The ends of these bars are fastened in appropriate disks or rings,
and thus are held in proper position. The crib does not revolve,
but the central shaft does. A vertical slot is made in the latter,
in which one end of a hide is inserted and there held by
set-screws. Several hides can be treated in the machine at the same
time. The ends of the hides being fastened, the central shaft is
made to revolve, and in doing so it draws the hides into the crib
through a space between two of the bars and winds them in a coil
around the shaft. A sufficient number of hides is put into the
machine at one time to fill entirely the diameter of the inside of
the crib when they are compressed. When the hides are all drawn
into the crib and the coil is compressed around the central shaft,
filling the crib tightly, the motion of the central shaft is
reversed, and the hides are unwound, and wound up again around the
shaft in the opposite direction, the hides being all the time under
pressure. This operation of winding, unwinding, and rewinding is
continued, and the action on each hide is to bend every particle of
it, whether thick or thin, alike, and under the same degree of
pressure. There is a weight on top of the coil of hides, so as to
produce end pressure on them in the direction of the shaft,
lengthwise of the crib.
The plaintiff contends that no other machine existed before
which wound hides in one direction and then rewound them in the
other direction while under pressure, and that this produced a new
mode of operation in the treatment of hides, which was not the
result of a mere improvement on the mechanism of any prior machine.
He therefore urges that the case falls within the principle applied
in Morley Machine Co. v. Lancaster, 129 U.
"where an invention is one of a primary character, and the
mechanical functions performed by the machine are as a whole
entirely new, all subsequent machines which employ substantially
the same means to accomplish the same result are infringements,
although the subsequent machine may contain improvements in the
separate mechanisms which go to make up the machine,"
Page 135 U. S. 324
that, the patentees having been the first persons to succeed in
producing an automatic machine for treating raw hide in the manner
in which their machine treats it, the claims of the patent must be
construed liberally. The plaintiff, who is one of the patentees,
was examined as a witness on the trial, and fully explained the
patented machine, its mode of operation, and the improvement it
effected in the conversion of raw hides into leather.
The defendant's machine has in it a cylinder which is arranged
horizontally instead of perpendicularly, and corresponds to the
cylindrical crib of the plaintiff's machine. The cylinder is
constructed of two half-cylinders of iron, hinged together, inside
of which are fixed semi-circular strips of wood, arranged
lengthwise of the cylinder, so that the inside surface of the
cylinder, when closed, is practically the same as the inside
surface of the plaintiff's crib. The ends of the half-cylinders are
secured in position rigidly. The general proportions of the two
machines are in size about the same. The defendant's machine has a
revolving central shaft, one-half of the diameter of which is
removable in that part of it to which the hides are fastened. This
half is in sections, which are held to the other part of the shaft,
when fastened to it, by screws. The edges of the hides are fastened
to the shaft by unscrewing such sections and placing one edge of
each hide upon the face of the solid half of the shaft. The
sections are then screwed on over the edges of the hides, in which
position they clamp the hides fast between the two halves of the
shaft. There are grooves lengthwise along the face of the solid
half of the shaft, and ribs along the faces of the removable
sections, so that the edge of each hide which is fastened in the
shaft is pressed down into the grooves, and is thus held more
securely. There is a long opening in the side of the defendant's
cylinder, through which the hides are drawn in by the revolution of
the shaft, in like manner as they are drawn into the crib of the
plaintiff's machine through one of the openings between the bars.
As the defendant's machine is in a horizontal position, the end
pressure on the coil of hides cannot be produced by a weight.
Instead of that, it has two
Page 135 U. S. 325
sliding disks, one at each end of the horizontal coil of hides,
which disks have a central hole in them for the central revolving
shaft to pass through. There is an arrangement of screw bolts,
nuts, and hand wheels, so that the two disks may be drawn together
to make end pressure upon the coil of hides, and retracted
therefrom, and there are springs to make the pressure yielding.
The view taken by the circuit court was, in regard to claim 1,
that the defendant's machine did not have the slot of that claim;
and, as to claim 2, that the defendant's machine could not be said
to infringe it.
We think the circuit court erred in not submitting to the jury
the question of infringement under proper instructions. If the
patented invention was, within the ruling in Morley Machine Co.
v. Lancaster, supra,
"one of a primary character," and the
patent was "a pioneer patent," which were questions of fact to be
passed upon by the jury, then the question, on a proper
construction of the patent, whether the defendant's machine
infringed its claims was a question of fact for the jury to
determine, on all the evidence which the case might present.
13 Wall. 453. It was not a matter of mere
judicial knowledge that the mechanical difference between the two
machines were material, in view of the character of the patented
invention and of the claims of the patent, and we are unable to
concur with the view of the circuit court, in its opinion denying
the motion for a new trial, that this is a case where, if the jury
had found a verdict for the plaintiff on the evidence put in by him
on the question of infringement, all of which evidence the bill of
exceptions states is set forth therein, it would have been proper
for the court to set aside such verdict. Keyes v. Grant,
118 U. S. 25
118 U. S.
As there must be a new trial, we forbear remarking further on
the questions involved.
The judgment of the circuit court is reversed, and the case
is remanded with a direction to grant a new trial.