The invention covered by the claim in letters patent No.
107,611, granted to James W. Haines on the 20th September, 1870,
for an improvement in chutes for delivering timber, covers chutes,
whether constructed with lapped joints or abutted joints, and was
anticipated by several constructions for similar purposes described
in the opinion, and the letters patent therefor are void.
A claim in letters patent cannot be enlarged by construction
beyond a fair interpretation of its terms.
Several alleged errors of the court in its rulings and
instructions examined and found to contain no error.
This was an action at law brought to recover damages for an
alleged infringement of letters patent No. 107,611, bearing date
September 20, 1870, and granted to James W. Haines, for an
"improvement in chutes for delivering timber." The specification,
claim, and drawings are as follows:
"Be it known that I, James W. Haines, of Genoa, in the County of
Douglas and State of Nevada, have invented a new and improved chute
for delivering timber from high mountains, and I do hereby declare
that the following is a full, clear, and exact description thereof
which will enable others skilled in the art to make and use the
same, reference being had to the accompanying drawing forming part
of this specification."
"Figure 1 represents a side view of my improved chute."
"Figure 2 is an end view of the same."
"Similar letters of reference indicate corresponding parts."
"This invention has for its object to furnish to the public an
improved chute for facilitating the transportation of timber of all
kinds from the tops or sides of mountains or other elevations, and
consists in constructing a chute so as to present
Page 135 U. S. 585
a V form in cross-section, the same being arranged on an incline
corresponding more or less to the surface of the ground over which
it passes, and brought in connection with a spring or other water
supply, to receive the water therefrom,"
image:a
and thus form a smooth canal throughout its entire length.
Heretofore, chutes for this purpose have been constructed with
flat, or nearly flat, bottoms, which, while sufficiently
objectionable as requiring a greater quantity of water to insure
equal rapidity in the transit of the timber, are far more so for
another reason,
viz., the log or piece of timber, more
especially at points where the inclination of the chute is slight,
is liable to be checked in its descent by friction
Page 135 U. S. 586
against the bottom and one side of the chute, and when thus
situated, others may pass it, thus leaving it to be again set in
motion by manual assistance, or other logs' striking it. The whole
may become wedged together so as to form a total obstruction to the
passage of succeeding logs, destroy the chute at that point or
cause other serious injury, inconvenience, and, in any event,
pecuniary loss.
"A, in the drawing, represents a wooden trough made of two
boards,
a and
b, which are joined at an angle of
about ninety degrees."
"This trough is supported by trestles or frames, B B, of
suitable construction, and is built up on the side of a mountain,
its upper end being connected with a brook, lake, stream, or
spring, to receive a supply of running water, which may, if
desired, be regulated by means of a suitable gate."
"The timber or wood to be transported downwardly is thrown into
the trough, and carried down by the water in the same. A very rapid
and convenient means of conveying wood is thus provided."
"Having thus described my invention, I claim as new, and desire
to secure by letters patent --"
"the chute, A, of V form in cross-section, arranged on an
incline in whole or in part, and adapted to receive a flow of water
for the conveyance of timber, as set forth."
The defendants denied each and every allegation of the complaint
separately and specifically, and set up other defenses. A jury
trial was had which occupied several days and resulted in a verdict
in favor of the defendants, upon which judgment was entered. A bill
of exceptions was taken, and a writ of error sued out from this
Court.
The plaintiff's evidence tended to show that in the fall of 1867
and the winter and spring of 1868, he cut a large amount of wood
into lengths of four feet each on the eastern slope of the Sierra
Nevada, with the design of floating it out of the mountains. These
logs were rolled down the sides of the canon upon which the trees
had grown, and plaintiff built a square or rectangular flume,
having bottom boards two feet wide and side boards eighteen inches
wide. When he turned
Page 135 U. S. 587
the water into the flume and commenced putting in his wood, he
found that the wood would run faster than the water, and that the
lighter sticks would run faster than the heavier ones, jamming and
choking up the flume. He then spread the upper edges of the side
boards of the flume as far out as he could without breaking the
nails at the bottom of the boards, and found that that afforded
some relief. Then he took inch boards, twelve inches wide, nailed
them together at an angle of 90�, so as to make a V chute, and set
that in the flume. He lapped each length about three inches by
placing the lower end of one length upon the upper end of the next
length below. This worked much better, but there was difficulty on
account of the laps when the water was light. He then changed to
the butted jointed flume, in which the ends of the different
sections abutted against each other instead of lapping. This was in
September, 1868. It is admitted that the patent was applied for
August 6, 1870.
The evidence also tended to show that one A. C. Cleveland built
a flume a little over a mile in length, with lapped joints, for the
transportation of wood, the contract for the construction of which
he made on June 22, 1868, and which was completed on the 21st of
July, 1868, and used continuously until the early part of August,
1868, when Cleveland disposed of it to other parties. Cleveland
described the mode and manner in which it was constructed, of two
boards nailed together in V shape, and put on trestles wherever
necessary, and it was conducted along the mountain a distance of
6,700 feet in length. Evidence was also given on behalf of the
defendants in respect to what the witnesses called a sluice at
Case's tannery at the Town of Mariaville, Hancock County, in the
State of Maine, in 1858, and which was still in existence at the
time of the commencement of the suit. This sluice was described, in
substance, as follows:
"At Case's tannery, there was a mill dam twelve feet high,
measuring from the center of the stream to the top of the dam. It
was the custom to float logs down that stream in the spring of the
year from points which lay several miles above Case's tannery to
other places below the tannery. In order to pass
Page 135 U. S. 588
the logs over the mill dam, the said sluice was constructed. The
sluice was about four feet across the top, and was built with two
inclined sides, the planks of which were butted and the joints
broken, which in cross-section stood at an angle of forty-five
degrees, and were joined together at the bottom, and thus formed a
trough in the form of a right-angled triangle, with the right angle
at the bottom. This sluice or flume was some three or four hundred
feet long, and was four feet across the top. Its upper end was set
into the mill dam, so that the water from the dam would flow into
and fill it sufficiently to convey the logs. It was built at a
regular incline down the stream, and its lower end was a foot and a
half or two feet above the water in the stream below the dam. The
sluice or flume was built upon and sustained by suitable framework.
The dam set the water back above it from a half to three-quarters
of a mile. When the logs reached the lower end of the mill pond,
each one, as it floated, was steered by the use of poles to the
upper end of the sluice, through which it was carried by floating
upon the water which ran through the sluice. A million feet of
logs, lumber measurement, could be run through the sluice in a day,
and two or three million feet were usually so run through the
sluice each year. The sluice or flume was built on a regular
incline. The water ran swiftly through it at a depth of about three
feet, varying from day to day according to the supply in the
dam."
Eight different witnesses testified to the existence of the said
Mariaville sluice, and each one of these witnesses said that he had
never seen a V chute, for carrying wood or lumber down a mountain
side such as described in the plaintiff's patent. One of them,
however, testified that he saw one of these chutes used in
transporting lumber down the mountain side over uneven grades in
California in 1873. Close, who constructed this sluice in Maine,
was called as a witness, and produced a diagram which he thus
described:
"My exhibit represents a cross-section of my sluice or flume,
except as to stringers, A A, which are not shown in cross-section.
The flume itself, shown by the planking, P P, is composed of plank
on the inside of a frame, and set at a convenient
Page 135 U. S. 589
angle of about forty-five degrees, and is supported on horses,
one of which as shown in the part marked 'D D.' The feet of the
horses rest on cross-sills, one of which is shown in the parts
marked 'B.' From each end of the cross-sill, B, a brace, C, extends
to the upper ends of horse, D, and the whole structure rests upon
stringers, A A. The planking is pinned or nailed to the inside of
the frame. The stringers extend underneath the whole length of the
flume, which can be extended to any desired length. The horse
frames, D D, can be set at any desired distance apart, say from
four to five feet; their only purpose being to support the
planking,
p. This device gives a flume of V form in
cross-section. The diamond piece, V, was placed in the throat of
the horses, D D, for the purpose of saving water, and rested on the
top of the planking. Piers were built over falls and gulches, and
over land as the conformation of the ground required, and by the
use of trestle work or posts. In one case, that I know of, such a
sluice has been built on tops of trees cut twenty feet from the
ground. My flume was built on an incline to give a current or
draught of water, and was used for the conveyance of logs or other
lumber by means of the flow of the water. The way I happened to
build this sluice was a case of necessity, as I will describe. The
Messrs. Case, who owned the tannery at the place where I built the
sluice at Mariaville, had a long raceway or penstock some three
hundred feet in length on one side, and in the bed of the stream
below the dam, for the purpose of carrying water from the dam to
the flume in the tannery, and they called on me to come and help
them out of their trouble. They said the log-driver wanted to cut a
hole in their dam twelve feet by twelve feet, and build a gate, and
if that was done, they said it would ruin them, as they had thirty
thousand hides in their vats which would spoil for the reason that
the log-drivers would draw all the water from their pond, and they
could not run their hide nor the bark mills, as they had a limited
supply of water to supply a gate of twelve feet by twelve. I made a
contract with them to build a sluice to sluice by their tannery all
the logs that were above their tannery, or that ever would be; and,
in my contract, I was not to lower
Page 135 U. S. 590
their pond one inch. I built the sluice, as I have already
described, and it was a perfect success, and people came from
distances to see this new and improved sluice. A part of this
sluice is now in existence, which can be seen by anyone who desires
to see it."
"The length of this sluice or flume was some three hundred feet.
The first logs that were put through the sluice were by me, and
four men of us put through six hundred and forty logs in
thirty-five minutes, and this was in April, 1858; and, as I said
before, millions of feet of logs have been put through it since
that time."
"The side boards were of plank two and a half inches thick,
fourteen inches wide, and three plank on a side. There was room on
the horses to have planked up two or three plank higher, if
desirable, but it never was called for, it being about impossible
for a log to get out over the sluice or flume."
The defendants read in evidence from a work called "Babbage on
Economy of Machinery and Manufactures," which was published in
London in 1841, a description of the slide at Alpnach, in
Switzerland, of which the following is a copy:
"The slide of Alpnach is formed entirely of about 25,000 large
pine trees, deprived of their bark and united together, in a very
ingenious manner, without the aid of iron. It occupied about 160
workmen during eighteen months, and cost nearly 100,000 francs or
�4,250. It is about three leagues or 44,000 English feet long, and
terminates in the Lake of Lucerne. It has the form of a trough
about six feet broad, and from three to six feet deep. Its bottom
is formed of three trees, the middle one of which has a groove cut
out in the direction of its length for receiving small rills of
water, which are conducted into it from various places, for the
purpose of diminishing the friction. The whole of the slide is
sustained by 2,000 supports, and in many places it is attached in a
very ingenious manner to the rugged precipices of granite."
"The direction of the slide is sometimes straight and sometimes
zigzag, with an inclination of from 10� to 18�. It is often carried
along the sides of hills and the flanks of precipitous rocks, and
sometimes passes over their summits. Occasionally
Page 135 U. S. 591
it goes underground, and at other times it is conducted over the
deep gorges by scaffolding 120 feet in height."
The bill of exceptions states:
"The plaintiff's counsel, during the trial, constantly claimed
that the plaintiff's invention was not a mere flume in V form, nor
a mere chute in V form, but he claimed that it was a combination of
both, and he also claimed that the patentee was entitled to his
patent because he had discovered that a chute made in V form in
cross-section, and built down a mountain's side of varying grades,
so that its operation partook of the nature of both a flume and a
chute, would do work which no other form of flume or chute would
do. He also claimed that because the plaintiff kept on improving
such combined flume and chute until he found out, by actual
experiment and use, that such combined flume and chute, when made
without laps so as to form a smooth canal throughout its entire
length, would do several times as much work as it would when it was
made in any of the methods which had been used in constructing it
prior to the month of September, 1868; that the invention was not
to be considered, in law or fact, as a completed invention until it
was so constructed; that it formed a smooth canal throughout its
entire length, as mentioned in the specifications of the patent.
All the way through the trial, the plaintiff's counsel claimed that
a 'flume' and a 'chute' were two different things. Plaintiff's
counsel frequently during the trial spoke of plaintiff's said
alleged invention as a 'flume.'"
MR. CHIEF JUSTICE FULLER, after stating the facts as above,
delivered the opinion of the Court.
Nine exceptions were taken in the progress of the trial, and
error is assigned in the giving of each one of the instructions
which are shown in the first, second, third, fourth, fifth, sixth,
seventh, and eighth exceptions, and also in the refusal of the
Page 135 U. S. 592
court to give an instruction asked for by the plaintiff, as
shown in the ninth exception. The first exception related to an
observation by the court to the jury that counsel upon both sides
had used the terms "flume" and "chute" synonymously; that the words
of the patent were "an improved chute," but that in discussing it,
the terms had been used as of the same signification. The bill of
exceptions states that it was the fact that the plaintiff's counsel
had frequently, during the trial, spoken of the alleged invention
as a "flume." This is not only so stated as a conclusion from the
evidence, but we find quite a number of questions put by
plaintiff's counsel which make use of the word "flume" in that way,
as, for instance: "In what part of the flume does timber go
fastest?" "As the chute is steepest, the timber goes faster?" "How
was the body of water in the lapped flume or chute, which you
commenced using in 1868, as to quantity?" "To what extent has the V
chute or flume gone into use, made as you made it, since 1868;
since you made this, in 1868?" "Do you recollect what time Mr.
White finished that chute?" "What difficulties, if any, did you
encounter in using that flume after Mr. White left it?" The remark
of the court was fully justified, and could not have affected
plaintiff injuriously, as his claim was that his invention was a
combination of a flume and a chute, and the distinction contended
for as existing between them was insisted on in that connection,
and made entirely clear throughout the case, and in the fifth
instruction asked for by the plaintiff, and given by the court,
reference is made to Haines' patent as "a combination of flume and
chute," although the patent does not cover any such
combination.
The second exception was to the charge of the court in relation
to the Alpnach flume or slide, to the effect at first that if the
jury believed from the evidence that that slide substantially
accomplished the object and purpose of the patented article, and
that a party skilled in the business, reading that description,
could easily and readily build a flume such as was patented here,
then the description and publication would constitute a defense.
But this part of the charge was withdrawn upon the defendants'
counsel's disclaiming the
Page 135 U. S. 593
slide as a complete anticipation, and the court then said:
"It is not claimed by the defendant that this Alpnach slide, an
account of which has been read to you, over in Switzerland, is a
complete anticipation. It is only submitted to you as a possible
suggestion of the idea of bringing timber down from the mountain
sides."
This disposes of this exception.
In the course of the charge, the court went over the facts in
relation to the Cleveland flume, stating, among other things, that
it was successfully operated until the 15th of August, 1868, and
performed its functions and ends satisfactorily. Plaintiff's
counsel specifically objected to the statement that the flume
worked successfully, and a colloquy ensued as to what constituted
successful operation, and the judge told the jury that that was the
way he understood the testimony as applicable to the issues, but
said that he left the matter wholly to them to determine. In this,
as the question arose, there was no error.
Transportation Line
v. Hope, 95 U. S. 297.
Counsel for plaintiff objected to this part of the charge also upon
grounds treated of under subsequent exceptions. The extract is
quite long, and it is unnecessary to give it in full. It concluded
as follows:
"If, under all the evidence in the case, then, you believe that
this flume built by Cleveland was in all its substantial elements
the same as that afterwards patented by the plaintiff in this case,
then your verdict must be for the defendants, because it is a
conceded fact that that was a public use, or, whether conceded or
not, it was a public use, and it was in use more than two years
before the plaintiff applied for his patent."
This is the third exception, and may be considered with the
fourth, fifth, sixth, seventh, and eighth exceptions to the
following portions of the charge:
"4. You have heard a good deal in this case, gentlemen, in
regard to this matter of abutted joints or lapped joints. Now I say
to you, you may dismiss that particular quality of this flume from
your consideration. There is nothing in the patent covering this
matter of joining sections of the flume, and a party would be
liable for infringement, I apprehend, if liable at all, who should
use this flume with a lapped joint as well as if he used it with an
abutted joint. As a matter of fact, the
Page 135 U. S. 594
evidence in this case, I believe, without contradiction, shows
this in the Mariaville flume, made at Maine, a model of which is
before you. The joints there were what mechanics call 'broken.' The
boards ran over from one section half way over on the other, and
were abutted."
"That would undoubtedly give strength to the flume, and where
heavy materials were run through would probably be an
advantage."
"On the other hand, where no very great strength is required,
the ordinary abutted flume, as made by the plaintiff in this case,
might have an advantage, and that perhaps for cheapness, and, where
other conditions obtained where it could be used, perhaps a lapped
flume would cover all the requirements needed, and be cheaper than
either one of the others; but as a matter of law you may dismiss
the whole matter of joints from your consideration, one way or the
other, because specifically, it is not covered by the patent."
"5. If a wooden trough of V form in cross-section, arranged on
an incline in whole or in part, and adapted to receive a flow of
water for the conveyance of logs or timber or wood when thrown into
said trough, and to transport the same downwardly along said trough
by means of water flowing therein, was an old device at the time of
plaintiff's alleged invention, the mere fact, if such be the fact,
that plaintiff first applied this old device to the transportation
of logs or timber or wood down the side of a mountain, or of such a
canyon, or of an elevation, was no invention, and, under such a
state of facts, if you find them to exist, your verdict should be
for defendants."
"6. The invention which is covered by the claim of paintiff's
patent is a chute of V form in cross-section, arranged on an
incline in whole or in part and adapted to receive a flow of water
for the conveyance of timber thrown into said trough, and carried
down by the water in the same. According to this description, the
character of the incline is not stated, and therefore is not
material, except that it should be steep enough to give the water
strength of flow sufficient to transport the timber thrown into the
trough. "
Page 135 U. S. 595
"7. If the Cleveland chute was a chute of V form in
cross-section, with its series of planks lapped at their ends,
arranged on an incline in whole or in part and adapted to receive a
flow of water for the conveyance of timber thrown into said chute,
and carried down by means of water in the same, and was finished on
the 22d day of July, 1868, and was publicly and successfully used
by Cleveland for the transportation of wood or timber in the manner
aforesaid between the 22d day of July, 1868, and the 5th of August,
1868, then this was a public use of plaintiff's invention in the
United States for more than two years before plaintiff's
application for a patent, and constituted a constructive
abandonment of plaintiff's invention, and under these facts, if you
find them to exist, your verdict should be for defendants."
"8. If you believe that the wooden flume testified to by several
of defendants' witnesses as having been constructed at Mariaville,
Maine, was constructed and operated at that place in the year 1858
and thereafter, and was of V form in cross-section, and was
arranged from the top of a dam to a point 300 feet beyond said dam,
and was adapted to receive a flow of water for the transportation
of logs from the upper to the lower end of said flume, and along
the whole length thereof, and was set upon an incline steep enough
to give the water in said flume strength of flow sufficient to
swiftly transport the logs placed in the head of said flume to the
lower end thereof, and along the whole length thereof, and that
this flume was successfully operated, and many thousands of logs
transported through it, in the year 1858 and thereafter, previous
to 1868, by means of a flow of water through said flume, then I
instruct you that this was an anticipation of the invention claimed
in plaintiff's patent, and that your verdict should be for the
defendants."
The argument of plaintiff's counsel is that the lapped flume did
not include Haines' completed invention; that it was one of Haines'
experiments, which Cleveland saw and copied, but this could not
affect Haines' right to go on and complete his invention by making
further experiments and discoveries producing further new and
useful results; that until it was a
Page 135 U. S. 596
completed invention, the time had not arrived at which it was
his duty to apply for a patent, and therefore that he forfeited
nothing by delay.
Various instructions guarding this point were given by the
court, and among them these:
"7. If an inventor applies for his patent within two years from
the time that he first exhibits his completed invention in public,
no amount of public use within that two years, either by the
inventor or others, will work any forfeiture of his right to a
patent, or constitute any evidence of abandonment."
"16. The jury will not consider any former flume or chute to be
an anticipation unless they believe such former flume or chute
developed the same mode of operation as the flume described in the
plaintiff's patent."
Of course, if the patent for the completed chute described
nothing which could be recognized as a patentable improvement
differing from the prior lapped chute, then the objection has no
basis to rest on. The evidence leaves no doubt that the lapped
chute was in public use, with Haines' consent or allowance, more
than two years prior to the application for the patent.
Counsel further insists that the flumes referred to in the fifth
and sixth exceptions did not include the plaintiff's invention, and
were not covered by his patent, and that whether this was so, and
whether the "smooth canal" of the patent could be anticipated by
the lapped chute, were questions of fact which the court should
have left to the jury to decide.
A claim admitted by the Patent Office and acquiesced in by the
patentee should not be enlarged by construction beyond the fair
interpretation of its terms, and this patent says nothing about how
the joints are constructed, nor whether the chute contained any
joints at all or not, and this is admitted in the brief of the
plaintiff's counsel.
The specification says:
"This invention has for its object to furnish to the public an
improved chute for facilitating the transportation of timber of all
kinds from the tops or sides of mountains or other elevations, and
consists in constructing a chute so as to present a V form in
cross-section, the same
Page 135 U. S. 597
being arranged on an incline corresponding more or less to the
surface of the ground over which it passes, and brought in
connection with a spring or other water supply, to receive the
water therefrom, and thus form a smooth canal throughout its entire
length."
This smooth canal is the result obtained by constructing the
chute according to the description, and it covers lapped joints
just as much as it does abutted joints. The Mariaville sluice was
constructed on the same plan as the Haines' chute, and both were
rectangular flumes. Haines himself testifies that his V chute was
"a rectangular flume at an angle of 90�." It was intended to
facilitate the transportation of timber of all kinds from other
elevations as well as mountains, and was necessarily arranged on an
incline adapted to the surface over which it passed, and the
character of the incline was not stated.
The parts of the charge presented by exceptions five or six were
correct, and, as to the other instructions, they described the
working of the Haines flume as represented in the patent and in
Haines' testimony, and by them the court charged the jury that if
they believed from the evidence that the Cleveland and Mariaville
chutes or flumes or sluices were constructed and successfully
operated on the plan and in the manner described by the court,
which was the plan and manner in which the Haines chute was
operated, then this was an anticipation of the invention claimed by
Haines. There was no error in this, for such was the conclusion of
law, if the jury found the facts from the evidence to be as stated,
and it is to be noted in this connection that the court, in
conclusion, instructed the jury as follows:
"All questions of fact are exclusively for the jury to decide.
The court does not decide nor instruct you as to whether the
Mariaville sluice, or any other sluice or flume or chute, was or
was not an anticipation of the plaintiff's patent. The question of
anticipation is purely a question of fact, and is exclusively for
the jury to determine."
The ninth exception was taken to the refusal of the court to
give the following instruction:
"The patent in this case is not merely for a V-shaped trough or
sluice. Neither does it
Page 135 U. S. 598
cover a flume with a flat bottom and flaring sides. Neither does
it cover a V-shaped flume or sluice so constructed on an even, or
nearly even, grade that it will carry throughout its length a full
volume of water sufficient to float freely the wood or other
material that is transported through it. None of these things would
constitute any anticipation of the patented invention."
This instruction was open to serious objection. It was not
contended that either the Cleveland flume or the Mariaville sluice
had a flat bottom, nor did the description of the patent require
the chute to be so constructed as to have a given amount of fall.
It is not error to refuse to instruct as to an abstract question,
and instructions should never be given upon hypothetical statements
of fact of which there is no evidence. The charge of the court was
as favorable to the plaintiff as he had any right to demand, and to
have given the foregoing would have tended to confuse and mislead.
It was properly refused. In fact, it appears to us that the
evidence of anticipation was so conclusive that, as contended by
counsel for defendants in error, the circuit court would have been
warranted in directing the jury to find for the defendants inasmuch
as, if there had been a verdict against them, the court would have
been compelled to set it aside.
The judgment is affirmed.