1. Where three elements are claimed in a patent in combination,
the use of two of the elements only does not infringe the
patent.
2. The introduction of a newly discovered element or ingredient,
or one not theretofore known to be an equivalent, would not
constitute an infringement.
Rees used Gould in an action at law for an alleged infringement
of a patent for improvement in steam engines dated January 24,
1860.
The claims of the patent were as follows:
"Having thus described the nature, construction, and
operation
Page 82 U. S. 188
of my improvement, what I claim as my invention and desire to
secure by letters patent of the United States is:"
"
First. The flanges
i on the reversing crank
or arm
b, and the projection
t on the cam rod
e, when used for the purpose of guiding the hooks 1 and 2
into their proper position on the wrists 3 and 4 of the reversing
crank or arm
b, as herein described and set forth."
"
Second. The use of the link
m or its
equivalent when used in connection with the cam rods
f and
g, reversing crank or arm
b and the crank or arm
l as herein described and for the purpose set forth."
"
Third. The use of the connecting rods
o and
g, or their equivalents, when used in combination with the
link
m, cam rod
e, and levers
p and
r, as herein described and for the purpose set forth."
Numerous exceptions were taken by the defendant to certain
rulings of the court, and also to certain instructions to the jury,
but
this Court passed mainly upon the principle involved
in the second and third specifications of error, which were in
these words:
"2d. The court below erred in instructing the jury in reply to
the fourth point of law presented by the counsel of the defendants
below, which point was in the following words:"
" That when a combination of mechanical devices is claimed, it
is not infringed by the use of a combination differing
substantially in any of its parts, and that the omission of one
essential feature or element of the combination as claimed avoids
the patent."
"The charge of the court below to said fourth point being as
follows:"
" If the jury believe that the mechanical devices used by Rees,
although differing in mechanical form or construction, are
equivalent to those patented and used in the combination patented
to produce the same result, it is an infringement of the patent.
And this although there is an omission of one of the features
of the combination. It is the ordinary device resorted to by
those who design to infringe and who have been unsuccessful in
their experiments to produce a desired result. The law secures to
the patentee the right to the use of his machine, provided it
consists of a new combination, although composed of parts well
known and in common use."
"3d. The court erred in instructing the jury in reply to the
Page 82 U. S. 189
sixth point of law presented to him by the defendants' counsel,
which point was in the following words:"
" That the first claim of the plaintiff's patent, in the
following words, to-wit: 'I claim the flanges
i, on
the reversing crank or arm b, and the projection t, on the cam
rod e, when used for the purpose of guiding the hooks 1 and 2 into
their proper position on the wrists 3 and 4 of the reversing crank
or arm b, as described and set forth,' is for a combination of
the arm
b, having flanges
i, with the cam rod
e having a projection
t, and is not infringed by
the use of either of the elements of the combination without the
other, nor by the use of the arm
b if without the flanges
i; or of the cam rod
e without the projection
t."
"The charge of the court to said sixth point being as
follows:"
" The use of the combination is an infringement, and
the
omission of one of the elements and the substitution of
another mechanical device to perform the same function will not
avoid the infringement. All the elements of the machine may be old,
and the invention consists in a new combination of those elements
whereby a new and useful result is obtained. Most of the modern
inventions are of this latter kind, and many of them are of great
utility and value."
Verdict having gone under these rulings for the plaintiff, the
defendant brought the case here.
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
Patentable inventions may consist entirely in a new combination
of old ingredients whereby a new and useful result is obtained, and
in such cases the description of the invention is sufficient if the
ingredients are named, the mode of operation given, and the new and
useful result is pointed out, so that those skilled in the art, and
the public may know the nature and extent of the claim and what the
parts are which cooperate to produce the described new and useful
result.
Damages are claimed by the plaintiff for the alleged
infringement of certain letters patent, and he instituted for that
purpose an action of trespass on the case against the defendant to
recover compensation for the alleged injury.
Page 82 U. S. 190
Letters patent were granted to the plaintiff on the
twenty-fourth of January, 1860, for a new and useful improvement in
steam engines, described in the specification as "a new and useful
mode of operating and handling" such machines which consists, as
the patent states, in so arranging and constructing the cranks or
arms of the lifters and cam rods of puppet valve engines that they
may be operated and handled with ease and speed by means of levers
and connecting rods, the whole being arranged and constructed in
the manner described in the specification.
Very minute description of the various parts of the mechanism of
the invention is given in the specification, and in order to enable
others skilled in the art to make and use the invention, the
patentee proceeds with much detail to describe its construction and
operation, but in the view taken of the case by the Court, it will
not be necessary to enter into those details in the present
investigation of the controversy between these parties.
Process was issued, and being served, the defendant appeared and
pleaded as follows:
(1) That he was not guilty.
(2) That the plaintiff was not the original and first inventor
of the improvement described in the letters patent, and tendered an
issue to the country, which was joined by the plaintiff.
Besides the two pleas pleaded, he also gave notice in writing
that he would give evidence under the general issue to prove that
the alleged invention was well known and generally used in
steamboats navigating the Western waters long anterior to the
alleged date of the plaintiff's invention. Subsequently the parties
went to trial, and the jury, under the instructions given by the
court, returned their verdict for the plaintiff, and the defendant
excepted to certain rulings and to the instructions of the court,
and sued out a writ of error and removed the cause into this
Court.
Enough has already been remarked to show what the general
nature, construction, and operation of the improvement is without
entering more into the details of the description, as given in the
specification, except to reproduce
Page 82 U. S. 191
the claims of the patent as made by the patentee. They are as
follows:
First. The flanges on the reversing crank or arm, and the
projection on the cam rod, when used for the purpose of guiding the
hooks into their proper position on the wrists of the reversing
crank or arm, as described and set forth in the descriptive portion
of the specification.
Second. The use of the link or its equivalent when used in
connection with the cam rods, reversing crank or arm, and the other
crank or arm, as therein described and for the purpose therein set
forth.
Third. The use of the connecting rods or their equivalents when
used in combination with the described link, cam rod, and levers,
as therein described and set forth.
Argument to show that each of the claims is for a combination of
ingredients is unnecessary, as the statement of the respective
claims is sufficient to establish the affirmative of the
proposition; nor is it necessary to add anything to show that all
of the ingredients of the respective claims are old, as the
specification does not contain a word to justify the theory that
the patentee ever pretended that he had invented anything except
the several combinations described in the three claims of his
letters patent.
Exceptions were taken by the defendant to certain rulings of the
court, as well as to several of the instructions given by the court
to the jury, and all or nearly all of those rulings and
instructions are assigned for error in this Court, but in the view
of the case taken by this Court, it will not be necessary to
examine more than one of the exceptions, which is the one calling
in question the instruction defining the rights of a patentee where
the invention consists, solely in a combination of old ingredients,
as the proposition of law given to the jury in that instruction is
clearly erroneous, and of a character which entitles the defendant
to a reversal of the judgment and to a new trial.
Evidence was introduced on both sides, and the defendant
requested the presiding justice to instruct the jury that when a
combination of mechanical devices is claimed, the patent is not
infringed by the use of a combination differing substantially
Page 82 U. S. 192
in any of its parts, and that the omission of one essential
feature or element of the combination as claimed avoids the
infringement, repeating that request in respect to each of the
three claims of the patent, and the bill of exceptions shows that
the presiding justice refused to give the instruction as to any one
of the three claims, and that he instructed the jury in respect to
the second [
Footnote 1] claim
that the use of the combination is an infringement, and that the
omission of one of the elements and the substitution of another
mechanical device to perform the same function will not avoid the
infringement, adding what undoubtedly is correct, that the elements
of the machine may be old and the invention consist in a new
combination of old elements whereby a new and useful result is
obtained.
Just exception cannot be taken to the last paragraph of the
instruction, but the preceding clause, which asserts that the
omission of one of the elements and the substitution of another
mechanical device to perform the same function will not avoid the
infringement, cannot be sustained, as the principle as there
stated, without any qualification, is not correct, and when given,
as the instruction was, without any explanation, it was well
calculated to mislead the jury.
Mere formal alterations of a combination in letters patent do
not constitute any defense to the charge of infringement, as the
inventor of a combination is as much entitled to suppress every
other combination of the same ingredients to produce the same
result, not substantially different from what he has invented and
caused to be patented, as the inventor of any other patented
improvement. Such inventors may claim equivalents as well as any
other class of inventors, and they have the same right to suppress
every other subsequent improvement, not substantially different
from what they have invented and secured by letters patent, but
they cannot suppress subsequent improvements which are
substantially different from their inventions, whether the new
improvement consists in a new combination of the same
Page 82 U. S. 193
ingredients or of some newly discovered ingredient, or even of
some old ingredient performing some new function, not known at the
date of the letters patent, as a proper substitute for the
ingredient withdrawn. [
Footnote
2]
Unquestionably the withdrawal of one ingredient in a patented
combination and the substitution of another which was well known at
the date of the patent as a proper substitute for the one withdrawn
is a mere formal alteration of the combination, and if the
ingredient substituted performs substantially the same function as
the one withdrawn, it would be correct to instruct the jury that
such a substitution of one ingredient for another would not avoid
the charge of infringement.
Grant all that and still it is clear that the concession will
not support the charge of the court, as it is equally clear that if
the combination constituting the invention claimed in the
subsequent patent was new, or if the ingredient substituted for the
one withdrawn was a newly discovered one, or even an old one
performing some new function and was not known at the date of the
plaintiff's patent as a proper substitute for the ingredient
withdrawn, it would avoid the infringement, as a new combination or
a newly discovered ingredient substituted for the one omitted, or
even an old one performing a new function not known at the date of
the plaintiff's patent as a proper substitute for the one
withdrawn, would not be an equivalent for the ingredient omitted
within the meaning of the patent law; nor could it be successfully
claimed as such by the plaintiff in order to support the charge of
infringement. Such an alteration is not a mere formal alteration,
as the difference between the two improvements is such that the new
combination would be the proper subject of a patent and
consequently would avoid the charge of infringement in a case like
the one supposed by the court.
Unexplained, the theory assumed by the court warranted the jury
in finding for the plaintiff though the defendant, in
Page 82 U. S. 194
constructing his machine, omitted one of the ingredients of the
plaintiff's combination and substituted another in its place to
perform the same function, whether the ingredient substituted for
the one omitted was or was not newly discovered or was or was not
well known at the date of the plaintiff's patent as a proper
substitute for the one omitted from the combination constituting
the plaintiff's invention.
Bona fide inventors of a combination are as much
entitled to equivalents as the inventors of other patentable
improvements, by which is meant that a patentee in such a case may
substitute another ingredient for any one of the ingredients of his
invention if the ingredient substituted performs the same function
as the one omitted and was well known at the date of his patent as
a proper substitute for the one omitted in the patented
combination. Apply that rule and it is clear that an alteration in
a patented combination which merely substitutes another old
ingredient for one of the ingredients in the patented combination
is an infringement of the patent if the substitute performs the
same function and was well known at the date of the patent as a
proper substitute for the omitted ingredient, but the rule is
otherwise if the ingredient substituted was a new one or performs a
substantially different function or was not known at the date of
the plaintiff's patent as a proper substitute for the one omitted
from his patented combination.
Where the defendant, in constructing his machine, omits entirely
one of the ingredients of the plaintiff's combination without
substituting any other, he does not infringe, and if he substitutes
another in the place of the one omitted which is new or which
performs a substantially different function, or if it is old, but
was not known at the date of the plaintiff's invention as a proper
substitute for the omitted ingredient, then he does not infringe.
[
Footnote 3]
Tested by these principles, as the instruction in question
Page 82 U. S. 195
must be, it is plainly erroneous, as it warranted the jury in
finding for the plaintiff, whether the ingredient substituted for
the one omitted was new or old, or whether the one substituted was
or was not well known at the date of the plaintiff's patent as a
proper substitute for the omitted ingredient.
Judgment reversed and a new venire ordered.
[
Footnote 1]
Qu. First claim. -- REP.
[
Footnote 2]
Seymour v.
Osborne, 11 Wall. 555.
[
Footnote 3]
Carver v.
Hyde, 16 Pet. 514;
Vance v.
Campbell, 1 Black 427;
Roberts v. Harnden,
2 Clifford 504;
Mabie v. Haskell, ib., 511;
Brooks v.
Fiske, 15 How. 219;
Stimpson
v. Railroad, 10 How. 329;
Prouty
v. Ruggles, 16 Pet. 341;
Barrett v. Hall,
1 Mason 477;
Howe v. Abbott, 2 Story 194.
