If, upon the state of the art as shown to exist by prior
patents, and upon a comparison of older devices with the patent
sued on in an action for infringement, it appears that the patented
claims are not novel, it becomes the duty of the court to so
instruct the jury.
The claims in letters patent No. 365,754, issued June 28, 1887,
to Benjamin W. Lyon and Reuben Munro for "improvements in automatic
top feed lubricators for railroad car axle-box bearings," must be
construed to cover any lubricator composed of an oil cup, an outlet
pipe connecting the oil cup with the axle-box containing the axle
and bearing, a plug or stopper, which closes the pipe when the
vehicle is at rest and opening it when there is a jolting motion,
and a gauge adapted to control and limit the movement of the
stopper, and to thus regulate the flow of the oil, and, being so
construed, the letters patent are void for want of novelty in the
invention covered by them.
A mere carrying forward of the original thought, a change only
in form, proportions, or degree, doing the same thing in the same
way by substantially the same means, but with better results, is
not such an invention as will sustain a patent.
In the Circuit Court of the United States for the Northern
District of California at the February term of the year 1891, B. N.
Rowley brought an action at law against the Market Street Cable
Railway Company, a corporation under the laws of the State of
California, wherein he alleged that on the 28th day of June, 1887,
Benjamin W. Lyon and Reuben Munro, as inventors of an improvement
in car-axle lubricators, obtained letters patent therefor, bearing
said date and numbered as No. 365,754, and that subsequently,
Page 155 U. S. 622
in 1890, said patentees assigned and transferred to the said
plaintiff all their right, title, and interest in and to the
invention and the letters patent, in and within the State of
California, together with all past accrued claims and demands
thereunder in said state; that the defendant company had, since the
issuance of such letters patent, without the consent of the
plaintiff or that of his assignors, wrongfully and unlawfully made
and used, and were continuing to make and use, car lubricators
containing and embracing said invention.
The defendant appeared in said action and pleaded the general
issue, and a further plea that said Lyon and Munro were not the
inventors of the device described in the letters patent, nor was
the said invention their joint invention, and likewise a further
plea that the defendant procured at all times a license from the
said patentees authorizing their use of said patented device, and
likewise a further plea that many of the car-axle lubricators
complained of as infringing devices were put upon the cars of the
defendant company, and used with the knowledge and consent of said
Lyon and Munro, prior to their application for the said letters
patent, and that thereby the said defendant became possessed of the
right to use said car-axle lubricators so put and used upon its
cars prior to said application, during the life of said patent.
The bill of exceptions discloses that the plaintiff put in
evidence, letters patent of the United States, No. 365,754, issued
on June 28, 1887, to Benjamin W. Lyon and Reuben Munro, and a
written assignment thereof, and of rights of action thereunder, to
the plaintiff, by Lyon and Munro, dated November 26, 1890. The
plaintiff put in evidence a model representing the device sued on,
and called witnesses to show the use by the defendant on its lines
of the said lubricator, and evidence bearing upon the measure of
damages.
The bill of exceptions further shows that it was admitted and
understood by the parties on both sides that the cable cars used by
the defendant are constructed differently from other street and
railroad cars, in this: the cars, instead of having an axle
extending across near each end, with its journal bearing in boxes,
as ordinary horse and street cars are
Page 155 U. S. 623
carried, are supported and carried on two swivel trucks, one
near to each end of the car, similar to a railway car. The wheels
which support these trucks are quite small in diameter, in order to
bring the body or floor of the car as near the ground as possible.
That the defendant was the first to construct and run cars built in
this way, and that all the cable cars used by the defendant are
built in this way. It was also understood that the only method of
oiling the journals of defendant's cars, in use before the
invention of Lyon and Munro, was to make a chamber in the box
around the journal, and fill it with cotton or other waste. The oil
was then poured into this chamber, and allowed to run down through
a hole which connected the chamber with the journal bearing, and be
delivered upon the journal. That method caused much trouble and
annoyance because the oil would often run out before the trip of
the car was completed, and the car would finish its trip with a hot
journal, and would have to run into the engine house to have its
journals cooled off. It was also admitted that the defendant
controls and operates five distinct lines of cable cars in its
system,
viz., the Valencia Street Line, the McAllister
Street Line, the Haight Street Line, the Hayes Valley Line, and the
Castro Street Line, each one being a distinct line, but each
running on Market Street a portion of its length, and branching
therefrom at different points; that the patentees, Lyon and Munro,
placed their oil cups on the cars of the Hayes Valley Line before
the patent was applied for; also that the specific oil cups placed
upon the Hayes Valley Line of defendant's cars by the patentees,
before their application for a patent, had wooden bottoms, and that
after being in use for a few months the wooden bottoms were swelled
by the absorption of oil, and burst. The bill of exceptions further
discloses that the plaintiff called Lyon and Munro, by whose
testimony it appeared that they were in the employ of the defendant
company at the time they made their invention, and still were; that
the materials used, which were of small value, belonged to the
company; that the cups put on the Hayes Valley Line were
experimental, and at the time of the trial were no longer in use,
having burst by reason of having wooden bottoms; that
Page 155 U. S. 624
the defendant was using the patented device on its various lines
with the knowledge of the patentees; that the patentees had never
demanded or received from the defendant company any compensation
for the use of the patented device, either directly or by way of
increase in salary, or additional privileges.
The bill of exceptions further discloses that the defendant put
in evidence patent office copies of several letters patent for oil
cups and lubricators prior in date to those granted to Lyon and
Munro.
After the testimony was closed, the counsel for defendant made a
motion that the court direct the jury to return a verdict for the
defendant on the ground that the patent sued on was void for want
of novelty. This motion was, after argument, overruled, and the
defendant's counsel took an exception, which the court allowed.
The defendant's counsel then requested the court to charge the
jury as follows:
"If you believe from the evidence that Benjamin W. Lyon and
Reuben Munro were at the time they made this invention in the
employ of the defendant, and that they constructed or acquiesced in
the construction of the car-axle lubricators used by the defendant
while in its employ, in its time and at its expense, and that they
put them or allowed them to be put upon defendant's cars and
allowed them to be used, no compensation being made or demanded,
then these facts fully justify the presumption of, and of
themselves constitute, an implied license to the defendant to use
and to continue to use said car-axle lubricators, and you will
return a verdict for the defendant."
This request the court refused.
And the defendant's counsel took an exception, before the jury
retired, to the court's refusal to give the instruction as
requested.
The jury found a verdict in favor of the plaintiff in the sum of
$100, and on March 13, 1891, judgment was entered for that sum and
costs. To which judgment a writ of error was sued out.
Page 155 U. S. 625
MR. JUSTICE SHIRAS, after stating the facts in the foregoing
language, delivered the opinion of the Court.
Did the court below err in refusing to instruct the jury to find
a verdict for the defendant on the ground that the patent sued on
was void for want of novelty?
The defendant put in evidence a number of patents prior in date
to the plaintiff's, and asked the court to compare the inventions
and devices therein described with those claimed by the plaintiff.
No extrinsic evidence was given or needed to explain terms of art,
or to apply the descriptions to the subject matter, so that the
court was able, from mere comparison, to say what was the invention
described in each, and to affirm from such mere comparison whether
the inventions were or were not the same. The question was, then,
one of pure construction, and not of evidence, and consequently was
matter of law for the court, without any auxiliary fact to be
passed upon by the jury.
If, upon the state of the art as shown to exist by the prior
patents, and upon a comparison of the older devices with those
described in the patent in suit, it should appear that the patented
claims are not novel, it becomes the duty of the court to so
instruct the jury.
Powder Co. v. Powder Works,
98 U. S. 126;
Heald v. Rice, 104 U. S. 737,
104 U. S. 749;
Fond du Lac County v. May, 137
U. S. 396.
Looking first to the patent sued on, we find that its object is
stated to be "to prevent the oil from dripping on the axle when the
car stands still, and to feed the oil to the axle and bearing
whenever the car moves and jolts." The essential parts are a cup
holding the oil, a pipe with exterior thread screws at each end, a
stopper or plug, and a gauge. The arrangement is as follows: the
upper end of the pipe is screwed into a disk which forms the bottom
of the oil cup. The lower end of the pipe is screwed into the
car-axle box or bearing. Seated in the upper end of the pipe is the
plug or
Page 155 U. S. 626
stopper, and the gauge is placed within the oil cup, with one
end fastened to a side of the cup and the other extending to and
pressing on the head of the plug. In operation, the oil cup is
filled with oil, and when the car is standing still the gauge,
pressing on top of the plug, keeps the plug in close contact with
the pipe, and thus prevents the oil from passing out of the cup
into the pipe. When the car jolts, from being in motion, then the
plug or stopper likewise jolts and rises, whereby an opening is
made between the head of the plug and the upper end of the pipe
through which opening or crevice the oil passes out of the cup into
the pipe, and runs down the pipe into the axle box, and thus
lubricates the axle and the bearing.
There is a single claim, in the following terms:
"In a car-axle lubricator, the combination with the axle bearing
of the oil cup, connected thereto by means of the screw-threaded
pipe, stopper, or plug, located in the channel of said pipe, and
gauge, limiting the upward movement of the said stopper or plug,
substantially as set forth."
In the specification, the patentees disclaim any particular
shape or form of the cup, plug, or gauge, saying
"We prefer to make the stopper of the shape as shown in the
drawing, but we do not confine ourselves to that shape or form, as
any other suitable shape may effect the same result. We do not
confine ourselves to the shape or form of the gauge as shown in the
drawing, as any other suitable device by which the gauging of the
rise for the plug or stopper is effected will answer our purpose.
We do not confine ourselves to the shape of the oil cup as
described, as any other oil cup may be changed readily to admit of
the use and application of our stopper and gauge."
It thus appears that the claim of this patent must be construed
to cover any lubricator composed of an oil cup; an outlet pipe
connecting the oil cup with the axle box containing the axle and
bearing; a plug or stopper, which closes the pipe when the vehicle
is at rest, and opening it when there is a jolting motion, and a
gauge adapted to control and limit the movement of the stopper, and
to thus regulate the flow of the oil.
Page 155 U. S. 627
These separate devices, and the combination described, are found
in letters patent of the United States of a date prior to the
invention of Lyon and Munro, and for a similar purpose.
We do not deem it necessary to analyze in detail all the prior
patents put in evidence by the defendant, but shall describe two or
three.
A patent to C.J. Pinkney, No. 267,584, dated November 14, 1882,
whose object was to lubricate the slides of locomotive engines
exhibits a combination of an oil cup, a screw pipe connecting the
oil cup with the part sought to be lubricated, a stopper, in the
shape of a ball, the object of which is stated to be to serve as
cut-off to the opening, and prevent the passage of oil while the
cup is at rest. The operation is thus described in the
specification:
"By the jarring of the ball, which is caused by the movements of
the machinery to which the cup may be attached, the opening is
sufficiently uncovered to allow of the escape of small quantities
of oil, sufficient for lubricating purposes. . . . This oil cup is
especially designed for lubricating the slides of locomotive
engines, the jarring of the ball by the movements of the locomotive
being quite sufficient to allow the cup to discharge the required
quantity of oil without waste. It is an economical oiler, for when
the machinery is at rest there is no discharge of oil."
This patent discloses the same purpose, and all the mechanical
features, of the claim in suit, except the gauge.
In a patent to G. C. Herrick, No. 247,057, dated September 13,
1881, we find described an oil cup, connected with the part to be
lubricated by a pipe with thread screws, a stem or plug on which is
a piston which acts as a valve or stopper to control the oil
passage, and the operation is thus described in the
specification:
"The cup being applied to the bearing by inserting the threaded
portion of the pipe in a socket provided for it, the piston or
puppet valve rises and falls by the motion and vibration of the
machinery, and thus allows the oil to flow intermittently from the
cup around the piston and stem, and down through the bore of the
plug to the bearing."
Here are all the elements of the patent in suit, except the
gauge, and the specification shows that the function of the
Page 155 U. S. 628
gauge is performed by the arrangement which prevents the piston
from rising further than the wall or end above it. Letters patent
to J. E. Worswick, No. 297,483, dated April 22, 1884, describe the
device as consisting of an oil cup, a screw pipe, a pin or plug,
and it is stated that the movement of the plug is controlled by an
overlying shoulder or projection.
In the patent to S. Chamley, No. 80,833, dated July 28, 1868,
are to be found all the parts of the plaintiff's machine, used for
a similar purpose.
There is an oil cup connected with the bearing to be lubricated,
by a screw pipe. In the pipe or passage is a valve or stopper. In
the upper part of the passage is a screw which lies just above the
plug or stopper, and its function is described in the specification
as follows:
"The regulating screw works through the top of the cage or
passage, and controls the movement of the valve. By turning this
screw up or down, the valve will be allowed to rise more or less,
and consequently feed the oil faster or slower."
And the specification states:
"This invention consists in so arranging a valve in an oil cup
that it can be raised by the motion of the part to which the cup is
attached, and closed by its own gravity, so that the discharge of
the oil will depend on the rapidity of the motion up and down."
The patent to R. A. Fischer, No. 293,237, dated February 12,
1884, shows similar devices -- an oil cup with a screw pipe to
attach it to the part to be lubricated, a ball stopper in the oil
passage, and an adjustable screw stem, controlling the movements of
the ball or stopper. The function of the screw stem is stated to be
to limit the upward movement of the valve when the machinery is in
motion, and that it can be so adjusted as to shut down over the
ball valve and limit its movement.
The last patent we shall refer to is that granted to F.
Humphrey, July 27, 1886, and numbered 346,205. Here again are found
an oil cup, a screw pipe, a plug, and an overlying adjustable screw
gauge. The specification is as follows:
"In operation, the oil cup is moved with greater or less
rapidity
Page 155 U. S. 629
according to the movement of the part to which it is applied,
and this movement imparts momentum to the valve sufficient to cause
the valve to be lifted from its seat, once at least at each
revolution of the crank. This movement of the valve allows a small
quantity of lubricant to escape through the passage pipe to the
crank pin or part to be lubricated. The extent of the lift of the
valve is limited by the extension of the plug, the under surface of
which acts as a stop in limiting or controlling the upward movement
of the valve. If the cup is moving comparatively slowly, no stop is
required, as the momentum communicated to the valve is not
sufficient to throw it far enough from its seat to make one
necessary. If, however, the movement of the cup is rapid, then it
is desirable to locate the stop in relation to the valve to limit
the extent of its throw produced by the momentum, and it will be
observed that this stop is made vertically adjustable in relation
to the valve. The cup acts to deliver lubricant only while in
motion, and at all other times the valve is held to its seat by
gravity, and the cup can, of course, be used on any movable bearing
or part which will communicate motion to the loose valve and cause
the operation of the cup."
It is impossible to read these several patents without
perceiving that the patent in suit has been clearly and repeatedly
anticipated in its parts, function, and purpose.
The descriptions and drawings disclose some differences in the
shape of the several parts, but the plaintiffs declare in their
patent, in respect to the cup, the stopper, and the gauge, that
they do not confine themselves to the shape or form described in
their drawings, "as any other suitable shape may effect the same
result."
The case is obviously within the principle, so often declared,
that a mere carrying forward of the original thought -- a change
only in form, proportions, or degree, doing the same thing in the
same way, by substantially the same means, with better results --
is not such an invention as will sustain a patent.
Roberts v.
Ryer, 91 U. S. 150;
Belden Manufacturing Co. v. Challenge Corn Planter Co.,
152 U. S. 100.
There is no room to contend that there was room for invention
in
Page 155 U. S. 630
devising oil feeders for cars of a peculiar construction like
those used by the Market Street Cable Railway Company. The patent
in question does not claim to be intended to cover an application
to cars of any special form or structure, and the devices of
several of the anticipating patents could be readily applied to the
defendant's cars.
In view, then, of the state of the art as manifested by several
prior patents, we think it is plain that the patent of Lyon and
Munro is void for want of patentable novelty, and that the court
below erred in not so instructing the jury.
This conclusion renders it unnecessary for us to consider the
question whether there was error in the court's instruction on the
question of an implied license.
The judgment is reversed and the case is remanded to the
circuit court with a direction to set aside the verdict and grant a
new trial.
MR. JUSTICE BROWN, dissenting.
In the case of
Battin v.
Taggert, 17 How. 74, it was held by this Court that
it was for the jury to judge of the novelty of an invention and of
the identity of the machine used by the defendant with that of the
plaintiffs and whether they were constructed and acted upon the
same principle. And in
Bischoff v.
Wethered, 9 Wall. 812, it was also held that in a
suit at law involving a question of priority of invention, where
the patent under consideration was attempted to be invalidated by a
prior patent, counsel could not require the court to compare the
two specifications and to instruct the jury as matter of law
whether the inventions described therein were or were not
identical. Indeed I understand it to be a general rule applicable
to all trials by jury that if there be any conflict of testimony
with regard to a particular fact, or if, the facts being admitted,
men, in the exercise of reasonable judgment, may derive different
inferences from such facts, the question is for the jury. Comparing
the patent in suit with the various prior patents claimed to
anticipate it, it seems to me that the question
Page 155 U. S. 631
of novelty is by no means so clear as to authorize the court to
take the case from the jury, and that the court did not err in
submitting it to them.
