Turrill v. Michigan Southern Railroad Company, 68 U.S. 491 (1863)

U.S. Supreme Court

Turrill v. Michigan Southern Railroad Company, 68 U.S. 1 Wall. 491 491 (1863) Turrill v. Michigan Southern Railroad Company

68 U.S. (1 Wall.) 491

ERROR TO THE CIRCUIT COURT

FOR THE DISTRICT OF MICHIGAN

Syllabus

1. Patents for inventions are not to be treated as mere monopolies, and therefore as odious in the law, but are to receive a liberal construction, and under a fair application of the rule that they be construed ut res magis valeat quam pereat. Hence, where the "claim" immediately follows the description, it may be construed in connection with the explanations contained in the specification, and be restricted accordingly.

2. Where a plaintiff, having a patent for an improved machine, his "improvement" consisting in certain pieces of mechanism described, having peculiar characteristics described, the pieces of mechanism being combined by means described so as to produce a particular result described, an admission by him that pieces of mechanism in their general nature like his, and used for "various purposes," were older than his invention is not an admission that these machines were the same as his, and the fact whether they were or were not is a question for the jury, and not for the court.

3. The patent granted September 9, 1856, to Cawood for an

"improvement in the common anvil or swedge block, for the purpose of welding up and reforming the ends of railroad rails when they have exfoliated or become shattered from unequal wear occasioned by the inequalities of the road,"

&c., is a patent in which special devices are described as combined and arranged in a particular manner, and as operating only in a special and peculiar way for a special purpose and to effect a special result. It is not a claim for any kind of movable press block, combined and operating in any way with any kind of fixed block to accomplish any purpose or effect any kind of result.

This was a writ of error to the Circuit Court for the District of Michigan. The action was trespass on the case brought against the Michigan Southern & Northern Indiana Railroad to recover damages for the alleged infringement of a patent, the defense having been want of originality in the invention.

The patent, which was granted originally to one Cawood, dated September 9, 1856, was for

"a new and useful improvement in the common anvil or swedge block, for the purpose of welding up and reforming the ENDS of railroad rails when they have exfoliated or become shattered from unequal wear occasioned by the inequalities of the road, six inches or so of the extreme end of the rail being frequently destroyed while the remainder is perfectly sound. "

Page 68 U. S. 492

The schedule ran as follows:

"I do hereby declare that the following is a full, clear, and exact description of the construction and operation of the same, reference being had to the annexed drawings, making a part in this specification and giving a perspective view of the machine:"

image:a

"A, representing the bed sill on which the anvil is placed; B the anvil or swedge block of cast iron; C C recesses, or dies across the face, the shape of the side of the rail; D solid block, making a part of anvil, with its side shaped to the side of the rail, while placed in its natural position; E a movable press block held down to anvil by dovetail tongues on the anvil and grooves in the movable press block, and operated by two eccentric cams, F, back and forth in a longitudinal direction to press the rail together while forming its end, and with sufficient travel to extricate the rail without altering its vertical position; G a rail of the T form, in its position, between the press blocks."

"I usually make my improved anvil and swedge block of cast iron, between four and five feet long and sixteen inches across the face, with two forms or recesses C C at one end, right and left, of a form corresponding with the side of the rail. Close to these is cast a raised block D, nearly as high as the rail, and with its farthest edge also shaped to fit the side of the rail when it lays across the anvil in its natural position. Next this I attach to the face of the anvil, by dovetail tongues and grooves or any

Page 68 U. S. 493

other convenient manner, what I call a movable press block E, with a similar but reverse-shaped edge, laying opposite the other so as to enclose the rail between the two, as in the jaws of a vice. This block I work by two eccentric cams F on a shaft, which is attached to the anvil by two standards H H, with bearings I I, either cast on or bolted to the edge of the same, so that half a turn of the crank will move the press block over a space a little more than the extreme width of the rail. The mode of using this machine is extremely simple and effective. A piece of iron (being of a size suitable to the deficiency of the rail) having been prepared and put in the fire, the rail being suspended by its middle to the level of the anvil, is brought to a welding heat, and then swung round from the fire in the space between the two blocks, where it is, by a half turn of the crank, pinched together by means of the cams F; the welding piece is then laid on the top of the rail and welded to the rail in the usual way, and leveled up and shaped by a swedge, held by the smith, of the form of that section which projects above the blocks, thus accomplishing at one heat what usually requires three or more. Should any imperfections remain, which is not usual if the first operation is properly gone through with, they can be removed by proper hand swedges after placing the rail in the recesses C C for that purpose."

The claim was thus:

"I do not claim the anvil block nor its recesses, but what I do claim as my invention and desire to secure by letters patent is the movable press block E, having its edge formed to the side of the rail G, in combination with another block D, with its edge of a similar but reversed form (the movable blocks to be operated by two cams, F, or in any other convenient manner), for the purpose of pressing between them a T, or otherwise shaped rail, thereby greatly facilitating the difficult operation of welding and renewing the ends of such rails after they have been damaged, in the manner herein described and set forth."

Having put the patent in evidence, shown an assignment of it to the plaintiff, and otherwise made out a prima facie case, the plaintiff rested. The defendants then introduced models of certain machines, for the purpose of showing that

Page 68 U. S. 494

the invention was not original. The models thus introduced were of the following machines: 1st. Of an angle-iron machine. 2d. Of an anchor machine. 3d. Of a bayonet machine. 4th. Of a machine patented in England to one Church.

On most or all of these, movable and fixed blocks were used, but it remained a question to be solved by inspection whether the forms of these blocks and the manner in which they were combined, and the means by which they were moved and held, were or were not adapted to the welding up and reforming the ends of railroad rails when exfoliated or shattered from unequal wear. The plaintiff, however, admitted, his admission being according to the bill of exceptions taken and sealed in the case, exactly in these words,

"that movable press blocks, in combination with faces of various shapes, and used for various purposes, were older than the alleged invention of Cawood, the patentee."

The evidence being closed, the plaintiff requested the court to charge the jury

"that the invention patented consisted of the movable press block and the block D, in combination with the anvil or swedge block B, described in said specification."

This instruction the court refused, and charged essentially as follows:

"In the view which the court takes of the case, there will be no question of fact for you to decide. According to the construction which the court has heretofore given to the patent and which it now repeats, the patentee claims as his invention the movable press block E, having its edge formed to the side of the rail G, in combination with another block D, the movable blocks to be operated by two cams, or in any other convenient manner. The specification shows that the block D is fixed and to be a part of the anvil or swedge block, in combination with which, as well as with the fixed block, the movable block is to be used. Movable press blocks in such combinations, with faces of various shapes, and used for various purposes, it is clearly proved and frankly admitted, are greatly older than the alleged invention of the patentee. The models exhibited in evidence of the 'angle iron machine,' the 'anchor machine,' the 'bayonet machine,'

Page 68 U. S. 495

and those made from the descriptions contained in the English patent of Church, are only some of the examples of their use and application. The patentee therefore claims that of which he is not the inventor. This fact is fatal to the patent, and entitles the defendant, as matter of law, to your verdict."

"If it be said that the claim is for the shape of the faces of the blocks, and the uses to which they are to be applied, the answers are:"

"1st. A mere change of form is not a patentable subject."

"2d. The use of a machine or invention for a new purpose is also not patentable."

"3d. It was the duty of the patentee to describe clearly what he claims as his invention, so that it might be distinguished without doubt or difficulty from everything else to be used in connection with it. This has not been done. If the limited construction here under consideration be deemed the correct one, still this objection would be fatal and your verdict the same. We are, however, satisfied that the true construction is the more comprehensive one, and that patentee claims the movable block in combination with the fixed one, and that the shape and proportions of the cheeks are only incidents and matters of detail."

The plaintiff took exceptions to the following among other parts of the charge:

First. To so much as stated that

"the movable press blocks in such combination, with faces of various shapes, and used for various purposes, being greatly older than the alleged invention of the patentee, was fatal to the patent, and entitled the defendant, as a matter of law, to the verdict of the jury."

Second. To so much as stated that, "in the view which the court takes of the case, there would be no question of fact for the jury to decide."

The chief question, therefore, in error was whether the court had or had not decided a question of fact; and so withdrawn the case improperly from the jury, and this chief question involved, as a previous one, the question whether the court had or had not rightly construed the patent.

Page 68 U. S. 508

MR. JUSTICE CLIFFORD delivered the opinion of the Court.

I. Patentee describes his invention as a new and useful improvement in the common anvil or swedge block, for the purpose of welding up and reforming the ends of railroad rails, when they have exfoliated or become shattered from unequal wear, occasioned by the inequalities of the road. Having made out a prima facie case, the plaintiffs rested, and the defendants then introduced certain models of machines for the purpose of showing that the patentee was not the original and first inventor of his improvement. Models of machines so introduced were the following, to-wit: first, a model of an angle iron machine; secondly, a model of an anchor machine; thirdly, a model of a bayonet machine; fourthly, they also introduced a copy of an English patent granted to one Church, with the specifications and drawings annexed, and the statement in the bill of exceptions, in regard to all those machines, is that they were known prior to the invention of the patentee in this case. Bill of exceptions also states, and it is important to observe the fact, that in addition thereto the defendants also adduced evidence to show, and that it was admitted by the plaintiffs,

Page 68 U. S. 509

that movable press blocks, in combination with faces of various shapes and used for various purposes, were older than the alleged invention of patentee. Other evidence, it is stated in the bill of exceptions, was also introduced by the defendants for the purpose of showing that the patentee was not the original and first inventor of the machine for which he obtained the patent, but the evidence is not given, and it is not perceived that the statement is of any importance at the present time.

II. Charge of the court is given entire in the record, but in the view taken of the case, it will only be necessary to refer to so much of it as relates to the construction of the patent and the effect of the admission made by the plaintiffs. Construction of the patent, as given by the court, was that the patentee claimed as his invention the movable press block, having its edge formed to the side of the rail in combination with the block D, the movable blocks to be operated by two cams or in any other convenient manner. "Specification shows," said the court,

"that the block D is fixed and is a part of the anvil or swedge block, in combination with which, as well as with the fixed block, the movable block is to be used."

Such is the substance of the charge so far as respects the construction of the patent, but the court added in the same connection that

"movable press blocks in such combination, with faces of various shapes and used for various purposes, it is clearly proved and frankly admitted, are greatly older than the alleged invention of the patentee,"

and in support of that proposition of fact the presiding justice referred to the several models given in evidence by the defendants and to the description contained in the English patent as examples of their use and application. Following those references and in connection therewith, the court told the jury that

"the patentee therefore claims that of which he is not the inventor, and this fact is fatal to the patent and entitles the defendants as matter of law to your verdict."

Exceptions were seasonably and duly taken to all that portion of the charge of the court. Principal complaint against the charge is that the court decided a

Page 68 U. S. 510

question of fact which belonged to the jury, and which should have been submitted to their determination under proper instructions.

III. Whether that complaint is well founded or not depends very much, if not entirely, upon the construction to be given to the patent. Patents for inventions are not to be treated as mere monopolies, and therefore odious in the eyes of the law, but they are to receive a liberal construction, and under the fair application of the rule ut res magis valeat quam pereat are, if practicable, to be so interpreted as to uphold and not to destroy the right of the inventor. Ryan v. Goodwin, 3 Sum.C.C.R. 520.

Claim of the patentee in this case is not for the anvil block nor its recesses, as is expressly stated by him in his specification. On the contrary, what he claims as his invention is the movable press block, having its edge formed to the rail, in combination with another block, which is described as a fixed block, and whose edge is of a similar but reversed form, for the purpose of pressing between them the railroad rail. Shape of the rail is immaterial except that the inner face or edge of the respective blocks must be so made and formed as to fit the respective sides of the rail to be repaired. Statement of the claim is that the movable blocks may be operated by two cams, or in any other convenient manner, and the representation is that the machine will greatly facilitate the operation of welding and renewing the ends of such rails after they have been damaged in the manner herein described and set forth. Taking the description of the machine as set forth in the specification, it consists of the following elements: first, a bed sill, on which the anvil is placed; secondly, the anvil or swedge block of cast iron, usually four or five feet long and sixteen inches across the face; thirdly, a solid block cast with and making a part of the anvil, nearly as high as the rail when it is laid across the anvil in its usual position; fourthly, a movable press block attached to the face of the anvil by dovetailed tongues and grooves having an inner edge or face shaped to fit the opposite side of the rail so as to enclose the rail between

Page 68 U. S. 511

the two, as in the jaws of a vice. Press block, as before remarked, is worked by two eccentric cams, which serve to advance the press block upon its dovetailed tongues and grooves parallel to the opposite face of the fixed block. When the press block has been thus advanced so far as to bring its face in contact with one side of the rail, the cams and the tongues and grooves hold the press block in position, and the rail is firmly grasped between the inner faces of the two blocks. Inventor then goes on to describe the mode of using the machine, which he says is extremely simple and effective, and sufficient has already been remarked to show that his representation is correct without reproducing the description. Immediately following that description is the claim of the patent, as heretofore given, which need not be repeated.

IV. Evidently the claim must be construed in connection with the explanations contained in the specification, and when viewed in that light, it is quite clear that it should receive a more restricted construction than was given to it in the charge of the court. Special devices are described as combined and arranged in a particular manner, and operate only in a special and peculiar way for a special purpose and to effect a special result. Obviously it is not a claim for any kind of movable press block, combined and operating in any way with any kind of fixed block, to accomplish any purpose or effect any kind of result. Giving that construction to the claim, then indeed it would be true that the plaintiffs, when they admitted that movable press blocks, in combination with faces of various shapes and used for various purposes, were older than the invention of the patentee, did admit away their whole case, and, if viewed in that light, would be equally true that there was no question of fact to be submitted to the jury. But such is not the true construction of the patent, as is obvious from every one of the explanations of the specification. Invention was of such a movable press block as is described, having its edge formed to the side of the rail in combination with such other block as is described, with its edge of similar but reversed form arranged

Page 68 U. S. 512

as described and combined and operating in the particular way described for the special purpose of effecting the described result.

When viewed in that light, it is equally clear that the charge of the court was erroneous because there was an important question of fact which should have been left to the jury -- whether the machines introduced by the defendants or any of them, or any of the prior movable press blocks, as is shown in the admission, were substantially the same as the machine of the patentee. American authorities, at least, hold that every such question is one for the jury, and upon that ground alone we have come to the conclusion that the judgment in this case must be reversed.

Judgment of the circuit court is accordingly reversed with costs and the cause remanded with direction to issue a new venire.