The first claim in letters patent No. 223,812, issued January
27, 1880, to William F. Olin for an improvement in harvesters,
describing a swinging elevator, located upon the grain (or
ascending) side of the plain belt, pivoted at its lower end and
movable at its upper end, is not infringed by a similar device,
located upon the stubble side, pivoted at its upper end, and
swinging at its lower end.
When an inventor who may be entitled to a broader claim than he
makes describes and claims only a part of his invention, he is
presumed to have abandoned the residue to the public.
Oral testimony, unsupported by patents or exhibits, tending to
show prior use of a patented device is open to grave suspicion.
Unsuccessful and abandoned experiments do not affect the
validity of a subsequent patent.
The 20th claim in letters patent No. 272,598, issued February
20, 1883, to John F. Steward for an improvement in grain binders is
valid and was infringed by the appellees.
The 21st claim in those letters patent was not infringed by the
appellees.
This was a bill in equity for the infringement of letters patent
No. 223,812, issued January 27, 1880, to William F. Olin, for an
improvement in harvesters, and patent No. 272,598, issued February
20, 1883, to John F. Steward, for an improvement in grain binders.
The original bill was founded upon five different patents, but
appellant acquiesced in the
Page 155 U. S. 287
decree of the circuit court dismissing his bill as to all but
the two patents above named.
In the patent to Olin, for an improvement in harvesting
machines, the patentee stated in his specification as follows:
"In that class of harvesting machines where the grain is
received upon a carrier platform and elevated over the drive wheel
by an elevator and deliverer to the binders or an automatic binder,
it is desirable that there shall be no stoppage in the flow of the
grain in its passage to its place of delivery; that the butts of
the grain shall be carried up parallel, or nearly so, with the
heads of the grain, so as to deliver the grain in proper shape for
binding purposes, and that the grain shall be delivered to the
receiving table so that it can be bound at or near the middle."
"The object of this invention is to provide devices for
attaining all of these results, and it consists in interposing a
roller between the lower end of the elevator and the inner end of
the grain carrier to facilitate elevating the grain and prevent
clogging at that point and prevent the grain from being carried
down or falling through between the elevator and carrier; in
providing a belt or chain at the grain side of the machine for
elevating the butts of the grain, supported on a swinging bar, so
that it can be adjusted, according to the length of grain being
elevated, to deliver the grain so that it can be bound at the
middle; in devices for operating and adjusting the elevator for the
butts; in the peculiar construction of the cover; in arranging and
operating the belt for the butts so that it prevents any clogging
by short grain at the heel of the sickle; in arranging the device
for elevating the butts so that it will bear against the butts of
the grain, and crowd or move the grain back on the elevator toward
the center for the purpose of straightening the grain in its
passage up the elevator and delivering it so that it can be clasped
or bound near the middle to facilitate the ease of binding, and in
the several parts and combination of parts hereinafter described as
new."
Here follows at great length a description of the device claimed
to be novel.
The specification concludes as follows:
Page 155 U. S. 288
"The butts of grain are heavier than the heads, and consequently
lag behind unless some means are provided to make them move faster
than the heads. In order to elevate the butts even with the heads,
the belt or elevator, Q, is so arranged that the teeth,
b,
will engage with the butts of the grain on the roller, I, and carry
them up while the heads are being carried up by the elevator belts,
M. The lower pulley,
c, is to be so arranged that it will
permit the teeth,
b, on the elevator, Q, to clear the end
of the roller and engage the butts, and this pulley,
c, is
located as close to the main frame as is possible and permit the
operation of the butt elevator, which location of the pulley brings
the butt elevator in position to enable it to catch any short
grain, which short grain is liable to fall down and be caught by
the heel of the sickle and clog the sickle. By locating the lower
pulley,
c, of the belt, Q at the proper distance above the
main frame, A, the teeth,
b, on the elevator will come in
contact with such short grain and force it forward on to the
carrier platform, thus keeping the heel of the sickle clear at this
point."
The following drawing exhibits the "swinging elevator" feature
of the patent:
image:a
Page 155 U. S. 289
The plaintiff claimed an infringement of the first claim of the
patent, which reads as follows:
"1. In combination with a harvester elevator, a swinging
elevator pivoted at its lower end, and suitable devices for
shifting its upper end, whereby swinging elevator forms a means for
elevating the butts of the grain and delivering grain of different
lengths at the same point, substantially as specified."
In the patent to Steward for improvements in grain binders the
patentee stated:
"The object of my invention is to provide means that, combined
with an automatic grain binder, shall make it automatically
regulate the position of the band on the gavel -- that is, shall
automatically place the band upon the gavel in its proper position,
relative to the length of the grain, without any aid or attention
from the operator, and its nature consists in locating, in such a
position as to be influenced by the heads of the incoming grain, or
gavel, or bundle, a device to be moved thereby, the said device
connected with means for adjusting the relative positions of the
said grain and the binding mechanism."
The following drawing exhibits the patented device:
image:b
Page 155 U. S. 290
The plaintiff claimed an infringement of the twentieth and
twenty-first claims of the Steward patent, which read as
follows:
"20. The combination, in a grain binder, of moving
butt-adjusting mechanism and the board,
d^1, substantially
as described."
"21. The combination of the swinging butt adjuster, the arms,
d^2,
d^3,
d^4, and the board,
d^1, pivoted to the swinging butt adjuster, substantially
as described."
Upon a hearing upon pleadings and proofs, the court below
dismissed the bill upon the ground that the Olin patent was not
infringed, and that the Steward patent was invalid by reason of a
certain device theretofore used, which was held to have anticipated
the patent. From this decree plaintiff appealed to this Court. The
opinion of the circuit court is reported in 40 F. 236.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
1. The Olin patent relates to a harvesting machine, and more
particularly to a certain method of elevating the grain from the
harvester platform, upon which it falls as it is cut, to the top of
the delivery apron, where it is discharged from the machine either
into the hands of a binder or into a mechanical grain binder, as
the case may be.
In machines of this description, the grain, as it is cut, falls
upon a platform and is carried to the base of an endless belt
provided with teeth, which seize the grain and carry it over the
driving wheel of the harvester, up to a higher level than that
where the binding is done, from which point it falls a short
distance to reach the binder. The side of the elevator upon which
the grain ascends is termed the "grain side;" the side upon which
it descends to the binder is called the "stubble side." In the
operation of a harvester of this kind, it was observed
Page 155 U. S. 291
that as the grain mounted the elevator on the grain side, the
butt end of the stalks, being heavier than the heads, exhibited a
tendency to lag behind, so that the stalks assumed to diagonal
position across the harvester platform. The consequence of this was
that the heads of the stalks were delivered to the binder in
advance of the butts, and obliquely -- a peculiarity which
interfered with the proper binding of the grain. In addition to
this, the different lengths of the stalks required some means
whereby the binding band might be placed centrally to their lengths
-- that is, if the stalks, after being cut, are twelve inches long,
the band should be placed about six inches from each end, but if
the stalks are five feet long, it should be placed about two and
one-half feet from each end. To obviate the difficulty of the
butts' lagging behind and also to secure proper delivery of the
grain as to length, Olin invented an auxiliary belt, located at a
right angle to the main belt but moving in the same direction and
at somewhat greater speed. This auxiliary belt was also provided
with teeth, which engaged the butt end of the stalks and, moving
faster than the main belt, kept the butts up to a level with the
heads. As shown and described in the patent, this auxiliary belt
was arranged with one end located at the lower end of the main
belt, and near the carrier platform, and the other end at the apex
of the main belt, or the highest point to which the grain ascends.
The mechanism was intended to act upon the swath of flowing grain,
and change its direction, pushing the stalks endwise, so that they
might be delivered to the binder in proper position to be bound in
their center, and also hastening their butts, so that the stalks
might not be delivered diagonally, but parallel with each other and
with the flow of the main belt. The claim describes this swinging
elevator as pivoted at its lower end, with suitable devices for
shifting its upper end, whereby it forms a means for elevating the
butts of the grain, and delivering grain of different lengths at
the same point.
Devices bearing certain similarity to this, and having in view
the performance of a like function, were not wholly unknown to the
prior art. These devices, though not claimed
Page 155 U. S. 292
to fully anticipate the Olin patent, are important in their
bearing upon the construction of this patent and upon the alleged
infringement by the defendant.
Thus, the patent to Elward of July 6, 1875, exhibits two rollers
mounted in front of the horizontal belt. These rollers carry a
short belt or apron, whose face, like that of the Olin patent, is
perpendicular to the face of the horizontal belt. It is stated in
the patent that one of these rollers may be driven by proper
gearing, and it is so represented in the model. The face of this
small belt moves in the same direction as the horizontal belt, and
is set at an angle with the line of direction or travel of the
grain. The specifications state that this belt or apron
"may be operated either by the friction of the passing butts of
the grain, or it may be given a positive movement by gears or belts
and pulleys from any convenient driving shaft, the movement of the
apron in either case serving to move or shove backwards the butts
of the grain projecting over the finger bar."
This auxiliary belt of Elward's acts much in the same way, in
relation to grain moved by and on the horizontal apron, that the
auxiliary belt of Olin does upon grain carried upward by the main
horizontal belt, shoving the grain endwise towards the rear of the
machine while it is being carried along. No method is stated,
however, by which the canvas may be rotated, and, even if it were,
it would still be incompetent to perform the office of the Olin
belt, because it is not adjustable at either end.
The patent to George F. Green of March 6, 1877, also shows an
adjustable butter, which he designates as a "grain guide," pivoted
at the lower front corner of the elevator frame, on the grain side,
and provided at its upper end with a handle convenient to the
driver sitting in his seat. This so-called grain guide is much like
that of Olin's in shape and location, though apparently not
provided with a movable belt, and hence not adapted to hasten the
ascent of the butts, but only to shove back the butts of the
shorter stalks. Instead of operating to hasten the butts, it can
only operate to retard them to the extent of the friction between
the butts and the surface of the board.
Page 155 U. S. 293
The patent to C. W. and W. W. Marsh of January 5, 1864, shows,
alongside of the main belt, an auxiliary belt, mounted on the same
rollers as the main belt, and therefore proceeding at the same
speed. The horizontal belt carrying the grain over the harvester
platform is described as traveling faster than the main elevator,
so as to operate to straighten the grain, or bring the stalks
parallel to each other before beginning their ascent. The auxiliary
belt, however, is not arranged on vertical rollers, as in the Olin
patent, but upon the same rollers as those carrying the main belt;
neither is it pivoted at its lower end, nor capable of being
shifted at its upper end, and hence is incapable of moving the
grain endwise to even the butts. There are two or three other
patents which appear to have a somewhat remoter bearing upon the
Olin patent, but are not necessary to be noticed in the
consideration of this case.
The gist of Olin's invention seems to be in his taking the grain
guide used by Green, providing it with a belt and teeth, somewhat
upon the principle of the independent belt or bands used by the
Marshes, traveling faster than the main belt, and for the purpose
of keeping the butts in line with the heads of the stalks. The
important feature, however, connected with all these prior patents
is found in the fact that the devices described in them were all
located on the grain side of the elevator, and were designed to
secure parallelism in the stalks as they mounted the main belt, and
before they reached its apex. Olin proceeded upon the same theory,
and located his swinging elevator or auxiliary belt upon the same
side of the main elevator, and described it in his claim as pivoted
at its
lower end, with suitable devices for shifting its
upper end.
In defendant's device, the grain is carried up upon the main
belt or elevator, as in the Olin patent, without, however, any
means whatever for hastening the butts or moving the stalks endwise
upon the harvester elevator; but, after having been lifted or
carried over the apex of the main belt, and while descending upon
the stubble side to the binder, they are adjusted in position by a
traveling belt or apron almost identical in principle with that of
the Olin patent, but pivoted at its upper end, and swinging at its
lower end. This device is
Page 155 U. S. 294
shown in a patent to Bullock & Appleby of October 31, 1882,
in which the prior use of the plain-face deflector board or surface
was recognized, but was said not to be a sufficient means for
effecting the desired adjustment of the grain stalks endwise.
"The butt ends of the stream of grain will lag by contact with
the stationary surface of such a designed deflector or adjuster,
and the grain will not be properly guided to the binder or the
point at which the binding is to be done."
Their invention consists, as they state, essentially in the
employment of an adjuster and deflector composed of a traveling
surface, mounted in an adjustable frame, and provided with suitable
means for operating it, by which the cut grain, while passing from
the delivery end of the conveyor to the binder, shall be perfectly
adjusted lengthwise of its stalks, and to an extent corresponding
to the length of the grain, so as to effect a presentation of the
grain always in a given relative position to the binder devices of
the machine and in proper condition for binding.
The third and most important claim of the patent was for
"an endless belt moving in the direction of the grain delivery,
and operating in contact with the stubble end of the grain on its
passage from the elevator to deliver it to a binding mechanism,
substantially as set forth."
The real question in this case as between these two devices is
whether the first claim of the Olin patent, describing a swinging
elevator located upon the
grain or ascending side of the
main belt, pivoted at its
lower end and movable at its
upper end, can be construed to cover a similar device
located upon the
stubble side, pivoted at its
upper end and swinging at its
lower end. We are
of opinion that it cannot. Plaintiff claims in this connection that
by the
lower end of the swinging elevator is in reality
meant the
receiving end, and that as the defendant's
device (which can hardly be called an elevator at all, since it
facilitates the
descent of the grain) is pivoted at its
receiving end, which happens to be its upper end, it is within the
spirit, though not within the letter, of the claim. But of whatever
elasticity of construction this claim might have been susceptible
if it had been a pioneer patent, it is
Page 155 U. S. 295
clear that, in view of the prior devices, of which it was only
an improvement, and of the explicit language of the specification
and claims, the patentee had only in view an auxiliary belt located
upon the grain or ascending side of the elevator. Indeed, from the
statement in the introduction of the specification, through all the
description, and in each of these claims, care is taken to
emphasize the fact that the invention relates to the combination,
with the ordinary harvester elevator, of a butt elevator which
operates upon the butts of the grain while the grain is being
lifted upon the main belt so as to hasten the ascent of the butts
and move the stalks back upon the harvester elevator. In no one of
the six claims of the patent is there a suggestion that the
elevator belt, Q, could be located upon the stubble side, although
this belt is made an element in all but one of the claims.
If Olin had been the first to devise a contrivance of this
description for adjusting the flow of grain upon the main elevator,
it is possible that under the cases of
Ives v. Hamilton,
92 U. S. 426, and
Hoyt v. Horne, 145 U. S. 302, a
construction broad enough to include defendant's device might have
been sustained. But in view not only of the prior devices, but of
the fact that his invention was of doubtful utility, and never went
into practical use, the construction claimed would operate rather
to the discouragement than the promotion of inventive talent. Not
only does it appear that the device described in this patent did
not go into general use, but that the mechanism set forth in the
patent to Bullock & Appleby of October 31, 1882, under which
the defendant manufactured its machines, was extensively sold
throughout the country for about eight years before any assertion
of adverse right under the Olin patent, and that the plaintiff
himself became a licensee under the Appleby patent, and
manufactured his own machines in accordance therewith.
Another fact is deserving of consideration. While the
application for the Olin patent was pending, another application
was made by McGregor & Flennekin showing a grain-adjusting
device similar to that used by the defendant -- that is, a butt
adjuster like that of Olin's, but located upon the descending
Page 155 U. S. 296
line of grain travel and pivoted at its upper end instead of its
lower end. This application was thrown into interference with that
of Olin, the examiner holding the subject matter involved in the
interference to be "an endless belt moving in the direction of the
grain delivery, operating in contact with the end of the grain to
deliver it to a binding mechanism." This interference seems to have
been decided in Olin's favor, since a patent was subsequently
issued to him, but inasmuch as he thus was warned of the claim of
McGregor & Flennekin, and of its extent, it is somewhat
singular that he did not at least endeavor to obtain an enlargement
of his claim to cover an endless belt moving in the direction of
the delivery, whether such belt were located upon the grain or
stubble side of the elevator, and thus anticipate McGregor &
Flennekin. His failure to make an effort in that direction
indicates a consciousness on his part that he had limited himself
to an endless belt upon the grain side, and the fact that the
McGregor & Flennekin patent was subsequently issued, with the
broad claim of the endless belt moving in the direction of the
grain delivery indicates that, notwithstanding the interference, it
was not considered as anticipated by the Olin patent previously
granted. In the meantime, and during the pendency of the Olin
application, Bullock & Appleby applied for a patent upon the
combination of the traveling apron with the table of the grain
binder, as used by these defendants, and a patent was issued to
them October 31, 1882. If Olin were entitled to all that plaintiff
now claims, it would seem that the patent to McGregor &
Flennekin, as well as that to Bullock & Appleby, are
infringements upon his own. It is possible that Olin was entitled
to a broader claim than that to which he limited himself, but if he
described and claimed only a part of his invention, he is presumed
to have abandoned the residue to the public.
McClain v.
Ortmayer, 141 U. S. 419.
There was no error in holding that the Olin patent had not been
infringed.
2. There are twenty-one claims in the Steward patent, the last
two of which only are involved in this controversy. These claims
are as follows:
"20. The combination, in a grain binder, of moving
butt-adjusting
Page 155 U. S. 297
mechanism and the board,
d^1, substantially as
described."
"21. The combination of the swinging butt adjuster, the arms,
d^2,
d^3, and
d^4, and the board,
d^1, pivoted to the swinging butt adjuster, substantially
as described."
The peculiar feature of this portion of the patent is in the
attachment to a butt adjuster, such as is described in the Bullock
& Appleby patent -- that is, upon the stubble side of the
elevator -- of a board pivoted to the end of the movable butt
adjuster, to bear against the butts of the sheaf of grain, after it
passes the butt adjuster proper, and while it is being acted upon
by the binding mechanism. This board,
d^1, is described in
the patent as
"a thin board or plate of metal, as wide as the adjusting
canvas, and pivoted to the frame of the latter at its lower
extremity. From this board reaches upward and inward an arm,
d^2. The board and frame are as one piece; but the board
itself is made in two parts, so that its greater portion (which is
the lower) can be removed."
As the grain advances into the binding receptacle, the board
bears against the butts, and holds them in an even condition, and
in such a position as to insure the central binding of the bundle.
In practice, two forms of this extension of the butt adjuster have
been used, one consisting of a board or sheet-iron plate rigidly
secured to the butt adjuster at its lower end and the other
consisting of such a board or plate pivotally connected to the butt
adjuster at its lower end and connected to the binder in such a way
as to cause it to remain "parallel with itself" in the various
positions which it assumes. In other words, when the pivotal form
of extension is used, the connections are such that while the angle
of the butt adjuster with the top of the binder changes, the angle
of the extension and the same board remains constant, or nearly so.
Defendant's machine is provided with a moving butt-adjusting
mechanism, and also with a board pivoted to the lower end of the
butt adjuster, practically identical in its construction and
operation with that of the Steward patent. The defenses to these
claims are:
"1. That claim 20 is void in that it describes an incomplete
Page 155 U. S. 298
and inoperative invention, and if completed by reading into it
the necessary specifications, the defendant does not infringe."
"2. That claim 21 is not infringed by defendant's machine."
"3. That both claims are void because Steward was not the first
inventor and because substantially the same device as shown and
described in the patent and referred to in the claims was in public
use in the United States for more than two years before the
application was filed."
As the last defense goes to both of these claims, it may
properly be considered first.
The English patent to Howard & Bousfield of 1881 may be left
out of consideration, because, although it antedates the Steward
patent, Steward appears to have completed his invention and made a
working model before the date of the English patent. His oath was
accepted by the Patent Office as decisive of the fact, and a patent
was issued to him upon it, and the model, which was put in
evidence, was shown to have been completed as early as February,
1881.
The court below found, however, that the device in question was
invented and publicly used by one Gottlieb Heller on his farm in
Kansas in the harvest of 1877-78. The importance and peculiar
character of the testimony upon this point will justify a somewhat
extended analysis and consideration of it. Heller is a Kansas
farmer who also appears to have been for some years agent for the
Beloit -- later the Milwaukee -- Harvester Company. He testified
that in 1878 he bought from an agent of the Beloit Company a
combined harvester and binder which had a traveling butt adjuster
precisely as it appears in the Bullock & Appleby patent, except
that it had no construction corresponding to the board,
d^1, of the twentieth claim. He found that when the grain
was short and thin, it did not work well, so that he added an
extension to the butt adjuster to keep the straw of the bundle even
at the butts. This extension, as he explained it, was first made
with a piece of tin or sheet iron nailed on to the frame of the
butt adjuster. This arrangement proved unsatisfactory. He then says
he made an extension out of sheet iron and heavy hoop iron, which
would adjust and keep
Page 155 U. S. 299
straight with the butt of the bundle, and in that way it
satisfied him. He illustrated this device by a rough sketch,
containing much the same elements as those described in claim 21 of
the Steward patent. He then produced what he claimed to be the
identical device which he made in 1878, and used publicly in the
harvest of that year. This device was put in evidence. He says his
wife and son helped him in the harvest, and drove the machine which
was used to cut part of 250 acres. He also attempted to use the
device the next year, 1879, but the grain was so short it proved
unsatisfactory, and he took it off and elevated the grain into a
wagon. In 1880, he got a new binder, which the adjustable extension
did not fit, and for lack of time he put on a rigid one instead of
an adjustable one, though he preferred the latter. At various times
he put on rigid ones for other persons. The pivoted butt adjuster
represented in his sketch, and relied upon to establish the prior
use, was thrown aside and lost sight of for several years, Heller
never applying for a patent nor taking any steps towards the
introduction of the device.
One Rubin, a neighbor of Heller's who sold him the harvester and
binder he used in 1878, went to Heller's farm in the harvest of
that year to see how it worked, when Heller's son called his
attention to an improvement in the butt adjuster which he said his
father had made, but he evidently did not remember whether the
board extension was rigidly or pivotally attached to the adjuster,
though he thought it was screwed upon the frame of the adjuster,
stiff.
George Heller, the son, testified that his father made an
extension, like the one introduced by him for the harvest of 1878,
and that the sheet-iron piece was from an old Kirby self-rake. He
seemed to have put it on as a rigid extension at first, and, after
using it a day or two, substituted an automatic extension, which he
believes to have been the identical device put in evidence. He says
his father afterwards put a stiff one on the second binder they
bought.
One Edward D. Bishop saw only the rigid extension, and did not
see the improved device. Rosina Heller, the wife, testified that
she ran the harvester and binder in the harvest
Page 155 U. S. 300
of 1878. She testified generally to the use of the butt
adjuster, with the adjustable extension, during the year 1878.
From the testimony in reply to this, it appeared that the butt
adjuster of tin or iron, said to have been first made in 1878, and
which was put in evidence, bore no marks whatever of nails' having
been driven into it; also, that the iron extension which Heller's
son swore was from a piece of a Kirby rake owned by them, and
bought of a firm in Junction City, could not have been taken from a
Kirby self-rake, since that pattern of rake did not contain any
such sheet iron as the extension was made of. It further appeared
that the extension came from a machine called the "Triumph," which
Heller never owned but which belonged to another man, one
Schlesener, who lived some eight or ten miles distant. It further
appeared that the extension was not applied until 1880, and was
then rigidly fastened by Heller and Schlesener to the frame of the
butt adjuster instead of being pivotally attached, as claimed by
Heller. This machine was subsequently, and in 1882, bought by one
Messing, whose son testified that at that time, the extension was
rigidly fastened to the adjuster, and so remained until the spring
of 1883, when it passed out of his possession. It further appeared
that Heller was an agent for the Milwaukee Harvester Company, which
was making butt adjusters with pivoted extensions, was interested
in defeating the Steward patent, and took an active part in
securing his testimony.
This entire evidence, taken in connection with certain damaging
admissions made by Heller as to the compensation he received, both
for his testimony in this case and for his concealment of certain
facts in relation to another patent, throws discredit upon the
whole case made by the defendant with respect to the anticipation
of the Steward patent. Taking this evidence together, it falls far
short of establishing an anticipation with that certainty which the
law requires. As we have had occasion before to observe, oral
testimony, unsupported by patents or exhibits, tending to show
prior use of a device regularly patented is, in the nature of the
case, open to grave suspicion.
The Barbed Wire
Patent, 143 U.S.
Page 155 U. S. 301
275. Granting the witnesses to be of the highest character, and
never so conscientious in their desire to tell only the truth, the
possibility of their being mistaken as to the exact device used,
which, though bearing a general resemblance to the one patented,
may differ from it in the very particular which makes it
patentable, is such as to render oral testimony peculiarly
untrustworthy, particularly so if the testimony be taken after the
lapse of years from the time the alleged anticipating device was
used. If there be added to this a personal bias or an incentive to
color the testimony in the interest of the party calling the
witness, to say nothing of downright perjury, its value is, of
course, still more seriously impaired. This case is an apt
illustration of the wisdom of the rule requiring such anticipations
to be proven by evidence so cogent as to leave no reasonable doubt
in the mind of the court that the transaction occurred
substantially as stated. The very exhibit produced by the witness
Heller contradicted, so far as it could contradict, his testimony,
and the witnesses who ought to have corroborated his story gave a
version which showed it to be untrue in more than one important
particular.
Under the circumstances, it would be going too far to reject his
entire testimony; but, giving it all the weight to which it can
reasonably be entitled, it shows no more than that he affixed some
sort of an extension to a butt adjuster connected with an Appleby
machine. If, as he says, in 1878 he tried a rigid extension and
found it unserviceable, and subsequently in the same season he
invented a pivoted extension, and it worked well, it is improbable
that he would have cast it aside altogether at the end of the
season and taken up again the theory of a rigid extension, and
applied it not only to his own, but to a number of other machines.
His excuse that the binder was incapable of doing satisfactory work
during the season of 1879, by reason of the shortness of the grain
that season is evidence that it was inoperative. If it had been a
success, he would hardly have thrown it aside permanently.
Doubtless he did use a rigid extension of some sort, but if he ever
used a pivoted device at all -- of which we have considerable
Page 155 U. S. 302
doubt -- his efforts in that direction must be relegated to the
class of unsuccessful and abandoned experiments which, as we have
repeatedly held, do not affect the validity of a subsequent patent.
The Corn Planter
Patent, 23 Wall. 181,
85 U. S. 211;
Coffin v.
Ogden, 18 Wall. 120,
85 U. S.
124.
Defendant further insists that the twentieth claim of this
patent is invalid by reason of the fact that, if the board,
d^1, be construed, as it evidently must, as a board
pivoted to the butt adjuster, the combination is incomplete and
inoperative because the means by which it is held and controlled
are not stated in the claim, and if the additional elements,
namely, the arms,
d^2,
d^3, and
d^4, be
read into it, it becomes the same as the twenty-first claim, and
the novelty of the claim must be made to depend upon the
peculiarities of the board,
d^1. Admitting that additional
elements are necessary to render the device operative, it does not
necessarily follow that the omission of these elements invalidates
the claim, or that the precise elements described in the patent as
rendering it operative must be read into the claim. If Steward were
in fact the first to invent the pivotal extension to a butt
adjuster, he is entitled to a patent therefor, though the infringer
may make use of other means than those employed by him to operate
it.
Loom Company v. Higgins, 105 U.
S. 580,
105 U. S. 584.
In such case, any appropriate means for making it operative will be
understood. Otherwise the infringer might take the most important
part of a new invention and, by changing the method of adapting it
to the machine to which it is an improvement, avoid the charge of
infringement. The invention of a needle with the eye near the point
is the basis of all sewing machines used, but the methods of
operating such a needle are many, and if Howe had been obliged to
make his own method a part of every claim in which the needle was
an element, his patent would have been practically worthless. We
think it sufficiently appears that Steward was the inventor of the
pivoted extension described in the twentieth claim, that the claim
is valid, and was infringed by the defendant.
We agree, however, that the defendant made use of a different
method of adjusting this extension, which is neither
Page 155 U. S. 303
the same invented by Steward, nor a mechanical equivalent of the
same. We hold therefore that the twenty-first claim was not
infringed.
But, for the reasons given above, the decree of the court below
must be
Reversed, and the case remanded for further proceedings in
conformity with this opinion.