1. An original patent of one Wells, for a hat body machine,
among other things, minutely described a specific device called a
"chamber or tunnel," composed of two side pieces, a bottom
piece, and a top piece, permanently united together so as to form
in fact a single tubular device, and described minutely the
functions which this device performed. A reissued patent separated
this "chamber or tunnel" into its several component parts, called
by distinct names,
viz., a "bottom guide" and a "top
guide" and "side guides," and ascribed independent functions to
each of these parts and claimed in succession each of these parts
in combination with other parts of the hat body machine. At the
same time, the description of this composite device, "the chamber
or tunnel," and its functions as such, which were contained in the
original patent, were omitted entirely from the reissued
specification.
Held that the reissued patent was invalid,
as not being for the same invention as the original patent.
2. A complete description was given in the original patent of
the combination of the four parts which constituted the "chamber or
tunnel," and that patent did not contain the slightest evidence
that the patentee ever made any other combination than that of all
the four parts which together form this "tunnel or chamber."
Held that in such case, even if the patentee had
subsequently discovered that he could accomplish a new and useful
result by a combination of some of the several parts included in
this "tunnel or chamber," he could not surrender and reissue his
patent for this combination of a smaller number of the ingredients,
because the reissued patent in that event would not be for the same
invention as the surrendered original.
3. Such a description of a combination of other parts, besides
the first-mentioned, would constitute new matter, the introduction
of which into the
Page 89 U. S. 2
specification of a reissued patent is forbidden by section
fifty-three of the Patent Act of 1870.
4. A patentee cannot legally surrender a patent for an invention
consisting of a combination of old ingredients and amend the
descriptive parts of the specification by striking out
the
entire description of one of the ingredients of the
combination and inserting in lieu thereof
a full
description of several other devices, without any allegation
that
they are the equivalents of the one whose description is
stricken out.
5. The case of
Gould v.
Reese, 15 Wall. 194, commented on.
6. An equivalent for the ingredient of a combination consisting
wholly of parts that are old must be one which was known at the
date of the original patent as a proper substitute for the
ingredient left out.
Mrs. Eliza Wells, administratrix of Henry A. Wells, sued Gill at
law for infringement of letters patent for an improvement in
machinery for making hat bodies. Original letters patent had been
granted to the said Henry April 25, 1846. The patent was reissued
in 1856, in two parts, No. 396 and No. 400, to an assignee of
Wells, and was extended by the Commissioner of Patents, April 17,
1860, and again reissued in December, 1860, to the assignee of
Wells, in No. 1086 and No. 1087. No. 1086 was again reissued to
Burr, June 17, 1862, in No. 1318. On the 2d of March, 1867, Nos.
1087 and 1318 were extended to Eliza Wells, as administratrix of
Wells, by act of Congress, and on the 19th of May, 1868, No. 1087
was again reissued in No. 2942. On this the present suit was
founded.
The cause was tried upon the general issue, with notice of
certain special matters in defense, and a verdict for the plaintiff
below for nominal damages was rendered.
The defendant excepted to certain rulings, instructions, and
directions given below, and exceptions being taken the case was now
before this Court.
The subject of hat-forming machines and the art relating to the
making of hats is set out by the present reporter in the case of
Burr v. Duryee, [
Footnote
1] which was a suit under a prior
Page 89 U. S. 3
reissue of the already-mentioned patent of Wells, and it is
indispensable that the reader of the present case, unless he has
already a knowledge of the subject in some other way, master the
general history presented by that case before he proceed with the
present one. [
Footnote 2]
As stated in that case, Wells had been preceded by a machine of
one Williams, in which there was a feed apron for carrying the fur,
a disintegrater, a fur conductor, a rotating cone, and an
exhaust.
The Wells machine, as shown in his original patent and in the
model filed by him in the Patent Office, consisted of certain parts
organized together into a hat-forming machine which consisted
of:
1st. Feed aprons.
2d. A revolving brush.
3d. A tunnel or chamber.
4th. An upper hood and lower flap as adjuncts to the trunk.
5th. An exhaust, rotating, perforated cone.
These several parts are shown combined in Fig. 1, which is a
copy of Wells's original patent drawing.
The functions of these several parts and their mode of operation
were thus set out in the original patent of Wells:
"My improvements consist in feeding the fur (called the stock)
after it has been picked to a rotating brush between two endless
belts of cloth, one above the other, the lower one horizontal and
the upper inclined, to gradually compress the fur and grip it more
effectually where it is presented to the action of the rotating
brush, which, moving at a great velocity, throws it in a chamber or
tunnel which is gradually changed in form towards the outlet, where
it assumes a shape nearly corresponding to a vertical section
passing through the axis of the cone, but narrower, for the purpose
of concentrating and directing "
Page 89 U. S. 4
image:a
Page 89 U. S. 5
"the fur thrown by the brush on to the cone, this casing being
provided with an aperture immediately under the brush, through
which a current of air enters in consequence of the rotation of the
brush and the exhaustion of the cone, for the purpose of more
effectually directing the fibers towards the cone, which is placed
just in front of the delivery aperture of the chamber or tunnel,
which aperture is provided at top with a bonnet or hood hinged
thereto, and at the bottom with a hinged flap, to regulate the
deposit of the fibers on the cone or other former, with a view to
distribute the thickness of the bat wherever more is required to
give additional strength."
It will be seen that the marked feature of this invention here
set out was a
tunnel or
chamber placed between
the revolving brush disintegrating mechanism and the revolving
perforated cone, this tunnel being adapted to collect or receive
the fur from the disintegrating brush, to convey it towards the
cone, and then to discharge it in a concentrated form against the
revolving cone. The tunnel had an opening in front, under the
revolving brush, through which a current of air entered. This
current of air, constrained by the casing or walls of the tunnel,
was plainly the direct agent in conveying the fibers to and
discharging them on to the cone.
This
tunnel was represented in the original model and
patent as an integral structure, as shown in Fig. 2, and
image:b
although, like all tubular structures of rectangular section, it
had a bottom and top and two sides, yet these were shown as made of
uniform material and united rigidly and permanently together.
The patent also described two movable adjuncts to the
Page 89 U. S. 6
discharging end of the tunnel, one called the
"hinged
hood," placed above, and the other called the
"hinged
flap," placed below. The hinged hood is shown in Fig. 1 at
s, and the hinged flap at
q.
Nothing was said in the original specification to lead one to
suppose that any result whatever could be accomplished without the
union of the bottom, the sides, and the top into this integral
structure called the
"chamber" or
"tunnel;" and
the interposition of that "tunnel" between the disintegrating
brush,
F, and the pervious vacuum cone,
O.
Moreover it was not suggested in the original patent, nor was there
anything to lead anyone to suppose that if the tunnel or chamber
was entirely removed, the feeding mechanism and the disintegrating
apparatus could in any useful way whatever
cooperate with
the previous cone.
There were four claims of this patent relating to the
mechanism.
The first claim of the original patent of 1846 pointed clearly
to a
combination of the peculiar feeding mechanism,
bb1, the disintegrating brush,
F, and the tunnel
or chamber,
M, in front of the brush.
The second claim pointed at the combination of the chamber or
tunnel,
M, and the perforated cone,
O, in front
of it.
The third claim pointed at the combination of the tunnel or
chamber,
M, and the upper hinged hood,
S.
The fourth claim pointed at the combination of the tunnel or
chamber,
M, with the lower hinged flap,
q.
It will be observed that into each of the four combinations set
out in the four claims above respectively, the entire tunnel or
chamber (composed of a bottom, sides, and top, united together)
entered as an
integral device.
The first feature of invention claimed looked to the function
which, as an
integral device, this tunnel performed at its
receiving end with reference to the feeding and disintegrating
brush.
The second feature claimed looked to the function which this
same tunnel as an
integral device performed, at the
discharging end, in reference to the perforated vacuum cone.
Page 89 U. S. 7
The third and fourth features claimed respectively concerned
this same tunnel as an
integral device, viewed in
connection with the movable adjuncts at the upper and lower part of
its discharging end.
In the several successive reissues of this patent, granted in
1856, April 17th, 1860, and December, 1860, this device was called
a "
tunnel or
chamber;" was uniformly described as
an
integral device, and no hint was given that it could be
entirely removed or that it could be separated into its elementary
parts, and that either of its several elementary parts could alone
perform any useful purpose in connection with the disintegrating
brush and cone. After the patent had been extended by Congress, the
extended patent was reissued May 19th, 1868 (that is to say, twenty
two years after the date of the original patent), with
specification No. 2942, presenting two distinct features of
invention not exhibited in the original patent or in any prior
reissue,
viz., 1st, that there existed in the Wells
invention a direct combination between the feeding machinery, the
disintegrating brush, and the pervious cone, independent of any
intermediate device between the disintegrating brush and the cone.
Such a combination would be represented to the mind by dropping out
the chamber or tunnel from the Wells patent, drawing Fig. 1, at
page
98 U. S. 4,
supra, and thus producing
image:c
A special claim, No. 4, was inserted in this reissue to point
out and secure this combination to the representatives of Wells. It
was in the following language:
Page 89 U. S. 8
"
FOURTH CLAIM"
"The combination of the feeding apron, on which the fur can be
placed in separate batches as described, the rotating brush or
picker substantially as described, the rotating cone, or 'former,'
provided with an exhausting mechanism substantially as described,
the said combination having a mode of operation substantially such
as described."
The second marked change in this last reissue, No. 2942, from
either of its predecessors was the omitting from the specification
the words
"tunnel or chamber" always theretofore present
in the specifications, and employing no distinctive term as
applicable thereto as an integral device. At the same time that all
mention of this integral device theretofore called the
"tunnel
or chamber" disappeared from the specification, that device in
the new description was split up into four parts,
each of
which parts was treated as if it was in itself an
integral
device, and a specific designation was given to each part. Thus,
instead of it being stated as it had been done in the previous
issues that there was a "tunnel or chamber" extending from the
brush toward the cone, it was stated in the last reissue that
"from the under part of the rotating brush x x, there is a
plate f, which extends towards the pervious cone." Again, it
was stated that "there is an upper guide or deflector
r,
which extends over the rotating brush forward of it toward the
cone." Again, it was stated that "on each side there is a guide
m, extending from the picker brush toward the cone." These
devices, called respectively for the first time in this reissue
"plate f or bottom plate," "upper guide or top guide," and
"guide m or side guides," had no names or designation by
letters or otherwise whatsoever given to them in either of the
prior reissues. Moreover, all statement of the function performed
by the "tunnel or chamber" regarded as an integral device, which
function had been theretofore regarded as the
mode of
operation of the Wells machine, disappeared in this reissue,
and special functions were assigned to each of these
parts, thus treated as integral devices in this reissue.
Finally, in the claiming part of the specification, combinations
between
Page 89 U. S. 9
each of these several newly recognized integers and the other
parts of the machine were carved out. Thus, Claim 1 covered the
combination of the disintegrating brush, the
"bottom plate or
guide f f," and the rotating pervious vacuum cone. This
combination would be shown by
image:d
Claim 1 was in the following language:
"The combination of the rotating brush or picker, substantially
such as described, the rotating pervious cone, provided with an
exhausting mechanism substantially as described,
and the bottom
plate or guide substantially as described for directing the
fur fibers towards the lower part of the cone, and preventing the
fibers going to waste, the said combination having the mode of
operation specified, and for the purpose set forth."
Claim 2 covered the combination of the feeding mechanism, the
disintegrating brush or mechanism, the
"top guide or
deflector," and the pervious vacuum cone. This combination
would be shown in Fig. 5.
image:e
This Claim 2 was in these words:
"The combination of the feed apron, the rotating brush or
Page 89 U. S. 10
picker, substantially as described, the rotating pervious cone,
provided with an exhausting mechanism, substantially as described,
and
the guide or deflector, for directing fur fiber on to the
tip and upper part of the cone, substantially as described,
the said combination having the mode of operation specified, and
for the purpose set forth."
Claim 3 embraced the combination of the disintegrating
mechanism, the "side guides or either of them," and the previous
vacuum cone. This combination in an alternate
image:f
form would be illustrated by Fig. 6, where only one side guide
is involved, and by Fig. 7, where both side guides are shown.
image:g
Claim 3 was in these words:
"The combination of the rotating brush or picker, substantially
as described, the rotating pervious cone provided with an
exhausting mechanism, substantially as described, and the
side
guides, or
either of them, substantially as
described, to prevent fur fibers from getting out of the proper
influence of the current traveling to the cone, and to protect the
traveling fibers from disturbing currents, the said combination
having the mode of operation specified, and for the purpose set
forth. "
Page 89 U. S. 11
Such being the claims of this reissue, No. 2942, on which the
present suit was brought, it becomes necessary to describe the
defendant's machine -- the machine, namely, alleged to have
infringed. It consisted of a machine shown in Fig. 8.
This machine had a single feed apron
A, a rotating
picker
B, which revolved in the direction shown by the
arrow, throwing the fur against a "cut off board"
F.
image:h
The fur is carried to the machine on the feeding apron
A, and passes between rollers
C and
D,
and by the action of the picket cylinder
B, it is thrown
against a cut off board
F, whence it passes into the top
of box
I. The fan
T creates a blast in the
direction of the respective arrows, drawing the air and fur in the
box
I downwards, and as this current of air passes through
the apertures in the cone the fur is deposited on said cone
N.
The current of air can be regulated by means of the
registers
Page 89 U. S. 12
S, which are within the cone
N, the lower one
of which can be turned on shaft
R, and serves to open or
close the apertures of the upper disk so as to produce a current of
air of the desired strength.
The court below, after describing to the jury the Wells "trunk,"
consisting of a bottom, top, and sides, and its mode of operation
as a "trunk," proceeded to charge them as follows:
"Now gentlemen, having said what I have in relation to the
combination of the three parts to the trunk, this instrumentality
for controlling the passage of the fur from the picker to the cone,
and mode of restraining this fur, so it shall not go to waste, and
which is claimed to be new, you will perceive that it consists of a
top, bottom, and sides; I have been asked to say to you that it is
essential to a just construction of this patent that those sides
should be united. No doubt that they are united in the model that
is produced; and if the dividing of them into four pieces would
make no substantial change, if the instrumentality would be the
same substantially, and operate in the same mode, no man could
sever them and say he was not an infringer; and if not then the
union of the edges at the corners is not of the substance of the
invention. Therefore I am not able to say that one has not
infringed who did not use a trunk that was constructed with its
corners solid or united in the manner that is here exhibited. If I
had a case of that sort, I should submit to you the question
whether a man who took the thing as we see it here and divided it
at the corners, and set it up, had made anything more than an
attempt, colorable, to evade the patent, without producing any
substantial difference, either in the instrumentality or in the
mode in which the result was effected."
"Such being the model which is produced here -- for if you
perceive that, in any respect, I have erroneously conceived it or
misstated it, you will correct me -- I have only recurred to it for
the purpose of giving application to the views, mainly of law,
bearing upon the question. I say this being substantially an
account of the machine which Mrs. Wells, the plaintiff, patented in
the reissue, which is the foundation of this suit, has, for reasons
doubtless sufficient to her, divided the claim of the specification
into several parts, and she has done so apparently
Page 89 U. S. 13
under the idea that if she dealt with the machine as a unit, as
an aggregate, the invention might be appropriated with impunity by
a party who used a portion of its effective, original, and useful
parts, leaving out some others. An inventor is at liberty when he
has made an invention, if it consists of several distinct,
effective, new devices, which as an aggregate, may constitute, in
his judgment, the best machine in the world, but of which certain
of the parts may be omitted, and it still be an effective, new, and
useful machine -- I say that the inventor is at liberty, in taking
out his patent, to protect himself against that species of
innovation by claiming the separate, new, and useful parts of the
machine by themselves."
"For illustration. A party patenting a machine may introduce
ingenious and new devices which may be better than any other for
the purpose, but some of which could be supplied by old devices, if
he patents the machine and the combination containing his new
devices, patents only a combination. A party who might think he
could make a machine substantially useful for his purpose by
omitting these devices and supplying their places by old devices
having different operation and character would be at liberty to do
so and thus, practically, a large benefit, or perhaps the whole
benefit that is due the inventor, might be lost. I say the patent
law therefore permits the inventor not only to patent the machine
as an aggregate, but to patent the new devices which enter into it,
so that another may not avail himself of his ingenuity in that
respect. That is the reason why reissues often become necessary,
because in the original patent the party did not claim distinctly
the separate items of the property which he had a right to claim.
And in that view I suppose the plaintiff here has claimed the
combination of the rotating brush or picker, substantially as
described, the rotating pervious cone, provided with an exhausting
mechanism, substantially as described, and the bottom plate or
guide, substantially as described, of which is called the trunk for
directing the fur fibers toward the lower part of the cone, and
preventing the fibers going to waste, which combination has the
mode of operation specified and for the purpose set forth."
Upon this instruction of the court below, and upon the refusal
of the court below to instruct the jury that the reissued patent,
No. 2942, was invalid because it was not for
Page 89 U. S. 14
the same invention as the original patent -- matters to which
the defendant excepted -- the first principal decision of this
Court is based.
The only other matters assigned for error and noticed by the
court were:
That the court erred in refusing to instruct the jury that the
defendant's machines did not infringe the fourth claim of the
plaintiff's patent, unless it had the feeding device of the
original patent in combination with the rotating brush or picker
and the pervious cone, and the chamber or tunnel described in the
original specification.
That the court erred in instructing the jury that the reissued
patent is valid as respects the fourth claim if the combination of
the three ingredients therein mentioned was new and could be
usefully employed for the purpose of facilitating the making of
hat bodies, supplemented by any known means of guiding the fur
in such a way as to bring, by the operation of these three
devices, the fur to the cone so as to make a hat body, or if
those three devices would make a hat body without the aid of other
means of protecting the fur against escape that would be
serviceable for any purpose, then it was patentable, even without
the trunk, which is also called the chamber or tunnel.
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
Valid letters patent may be granted for an invention which
consists entirely in a new combination of old ingredients, provided
it appears that the new combination of the ingredients produces a
new and useful result; but the rule is equally well settled in such
a case that the invention consists merely in the new combination of
the ingredients, and that a suit for an infringement cannot be
maintained against a party who constructs or uses a substantially
different combination, even though it includes the exact same
ingredients. Alterations, however, in a combination which are
merely
Page 89 U. S. 15
formal do not constitute a defense to the charge of
infringement, as the inventor of a new and useful combination of
old ingredients is as much entitled to claim equivalents as any
other class of inventors, 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 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.
Old ingredients known at the date of letters patent granted for
an invention, consisting of a new combination of old ingredients,
if also known at that date as a proper substitute for one or more
of the ingredients of the invention secured by the letters patent,
are the equivalents of the corresponding ingredients of the
patented combination. Such old ingredients, so known at the date of
the letters patent granted, are the equivalents of the ingredients
of the patented combination, and no others, and it may be added
that that, and that only, is what is meant by the rule that
inventors of a new combination of old ingredients are as much
entitled to claim equivalents as any other class of inventors.
Reissued patents, in order that they way be valid, must be for
the same invention as the surrendered originals. Inoperative or
invalid patents, which are so by reason of a defective or
insufficient specification, or by reason that the patentee claimed
as his own invention or discovery more than he had a right to claim
as new, may be surrendered if the error arose by inadvertence,
accident, or mistake and without any fraudulent or deceptive
intention, and the provision is that the Commissioner in that event
shall, upon the payment of the sum required by law, cause a new
patent for the same invention, and in accordance with the corrected
specification, to be issued to the proper party, as prescribed in
the fifty-third section of the Patent Act. [
Footnote 3]
Unquestionably the specifications in such a case may be
Page 89 U. S. 16
amended to correct an error which has arisen by inadvertence,
accident, or mistake, if without any fraudulent or deceptive
intention, but the express provision in the new Patent Act is that
no new matter shall be introduced into the specification, and that
in the case of a patent for a machine, neither the model nor
drawings shall be amended except each by the other, which is a very
important provision to secure the fulfillment of the condition that
the reissued patent shall be for the same invention as that secured
by the original patent.
Matters of law only are in dispute here between the parties, as
the judgment of the circuit court was rendered in a suit at law for
the infringement of a patent, and the cause was removed into this
Court by a writ of error to revise the rulings and instructions of
the circuit judge, but it will be necessary to refer somewhat fully
to the specification of the original patent and to compare the same
with the specification of the reissued patent, which is the patent
in suit, in order to understand the exact nature and scope of the
controlling questions presented for decision.
Exact description of the invention was given in the
specification of the original patent, which affords the most ample
means to define the nature and scope of the improvement actually
made by the patentee as secured by that patent.
My improvements, he says, consist in feeding the fur after it
has been picked to a rotating brush, between two endless belts of
cloth, one above the other, the lower one horizontal and the upper
one inclined to gradually compress the fur and gripe it more
effectually where it is presented to the rotating brush, which
moves at great velocity and throws it into a chamber or tunnel
which is gradually changed in form towards the outlet, where it
assumes a shape nearly corresponding to a vertical section passing
through the axis of the cone, but growing narrower, for the purpose
of concentrating and directing the fur thrown by the brush to the
cone.
Currents of air enter at the same time through an aperture
immediately under the brush, in consequence of the rotation of the
brush and the exhaustion of the cone, for the
Page 89 U. S. 17
purpose of more effectually directing the fibers towards the
cone, which is placed just in front of the delivery aperture of the
chamber or tunnel, which aperture is provided at the top with a
bonnet or hood, hinged thereto, and at the bottom with the hinged
flap to regulate the deposit of the fibers on the cone or other
former with the view to distribute the thickness of the bat
wherever more is required to give additional strength to the
manufacture.
Means are also described for holding the fibers composing the
bat on to the cone, so that the bat may be removed from the cone or
former before the hardening process is applied, and for that
purpose the representation is that the patentee first covers it
with felted or fulled cloth, and then he employs one or two
metallic cones, one to put over the bat after it has been
surrounded with the moist cloth, for the purpose of making pressure
on the fibers and to allow hot water to circulate when the whole is
immersed therein to harden the bat preparatory to felting, and the
other metallic cone is to be placed within the perforated one on
which the hat has been formed, and which is necessarily thin and
weak, for the purpose of resisting the pressure of the surrounding
water, consequent upon a partial vacuum produced within, when the
whole is withdrawn from the water.
Special reference is then made to the drawings and a detailed
description is given of every device included in the apparatus and
of the functions which the respective devices of the apparatus
perform. Superadded to those details is a general description of
the mode in which the described apparatus operates and of the
result which it accomplishes, in substance as follows: as the
fibers are first presented they are acted upon by the brush, which
moves with great velocity, and they are properly laid by its
downward action, but when liberated they are carried down the
curved surface of the chamber or tunnel, and at the lower edge of
that device they meet a current of air that enters a narrow
aperture near the bottom of the chamber or tunnel, which extends
the whole length of the brush and prevents the fibers from
Page 89 U. S. 18
falling and resting on the bottom of the chamber or tunnel and
carries them on to the perforated cone.
Minute description is also given of the chamber or tunnel and of
its appendages and of the functions which it performs, as follows:
that it extends over and under the brush and is so arranged as to
have a slight motion the axis of which is the same as that of the
brush, and that its bottom rests on set screws to regulate the
delivery end of the same relatively to the cone; that its forward
end is provided with a hinged flap regulated by a cam lever as the
means of regulating the delivery of the fibers; that its top is
gradually elevated and that the sides are contracted to make the
delivery aperture nearly of the form of the cone but narrower and
higher; that its upper part is provided with a hood so curved as to
correspond generally with the curve of the top of the cone.
Particular description is also given of the mode in which the
hood is arranged and of the functions which it performs, as
follows: that it is hinged to the upper part of the delivery
aperture of the chamber and that it is connected with an eccentric
by means of a cord and bell crank passing over a pulley, so that
each revolution of the eccentric carries the hood up and down to
direct the discharge of the fibers and to distribute the same on to
the cone, giving a greater thickness in the parts of the hat which
form the brim and edge than on the top and crown, and he suggests
the means to be employed by the manufacturer when it is desired
still further to diversify the distribution of the fibers.
Intelligent description is also given of the cone and of the
functions which it performs, and of the whole mode of operation
from the time the fibers are placed upon the feed apron until the
hat is formed, but there is no trace of any suggestion or
intimation that the operation can be performed or the patented
result be produced without the chamber or tunnel. Instead of that,
it is unquestionably true that the chamber or tunnel is a material
ingredient of the combination and an essential feature of the
described invention. Unmistakable support to that view, if any be
needed beyond what is disclosed in the description given of the
same, is
Page 89 U. S. 19
also derived from the claims of the patent, three of which in
express terms describe the invention as a combination, and include
the chamber or tunnel as one of the ingredients of the combination.
Besides the evidence in that direction, derived from the first
three claims, the fourth claim is for the employment of the hinged
hood to regulate the proper distribution of the fibers, which
device is obviously but a mere appendage of the chamber or tunnel
in terms included in the described combination.
Such a combination, if new and useful and if it produces a new
and useful result, is the proper subject of a patent to secure to
the owner or proprietor the exclusive right to make, use, and vend
the thing patented for the period allowed by the Patent Act. Beyond
doubt, such a patent is valid and operative, but the rights of the
patentee under it differ in one respect from those of a patentee
for an invention which consists of an entire machine, or of a new
and useful device, as the rights of a patentee for a mere
combination of old ingredients are not infringed unless it appears
that the alleged infringer made or used the entire patented
combination. [
Footnote 4]
Invalid and inoperative patents may be surrendered and reissued
for the same invention, but Congress never intended that a patent
which was valid and operative should be reissued merely to afford
the patentee an opportunity to expand the exclusive privileges
which it secures, to enable him to suppress subsequent improvements
which do not conflict with the invention described in the
surrendered patent. Evidence of a decisive character to negative
the theory that such a practice finds any support in the Act of
Congress, besides what existed before, is found in the new Patent
Act, which expressly provides that no new matter shall be
introduced into the specification, and in case of a machine patent,
that neither the model nor the drawings shall be amended except
each by the other.
Two or three only of the errors assigned will be much
Page 89 U. S. 20
considered. They are in substance and effect as follows:
1. That the court erred in refusing to instruct the jury that
the reissued patent is invalid because it is not for the same
invention as the original.
2. That the court erred in refusing to instruct the jury that
the defendant's machine did not infringe the fourth claim of the
plaintiff's patent unless it had the feeding device of the original
patent in combination with the rotating brush or picker and the
pervious cone and the chamber or tunnel described in the original
specification.
3. That the court erred in instructing the jury that the
reissued patent is valid as respects the fourth claim if the
combination of the three ingredients therein mentioned was new and
could be usefully employed for the purpose of facilitating the
making of hat bodies, supplemented by any known means of guiding
the fur in such a way as to bring, by the operation of these three
devices, the fur to the cone so as to make a hat body, or if those
three devices would make a hat body without the aid of other means
of protecting the fur against escape that would be serviceable for
any purpose, then it was patentable, even without the trunk, which
is also called the chamber or tunnel.
Three or more important propositions of patent law are involved
in the exceptions covered by the assignment of errors, which it
becomes important to restate with some care, because neither the
prayers for instructions, nor the rulings of the court in refusing
the same, nor the instructions given, nor the assignment of errors
are in every respect free from ambiguity.
Perhaps no one of the prayers for instruction corresponds in
precise terms with either of the first two propositions, but it is
nevertheless true that many of them, as applied to the separate
claims of the patent, did raise the questions involved in those
propositions, and it is equally certain that the court in several
instances ruled to the effect that the reissued patent was not
invalid for the reason assigned, and that the machine of the
defendant did infringe that of the plaintiff, even though it did
not contain the chamber or tunnel described in the plaintiff's
original specification.
Page 89 U. S. 21
Filled as the record is with proofs to establish the truth of
the preceding statements, further argument upon the subject is
unnecessary. Throughout the trial it was the constant aim of the
defendant to defeat the plaintiff's action upon the three grounds
mentioned:
1. That the reissued patent was invalid because it was not for
the same invention as the original.
2. That the defendant did not infringe the plaintiff's invention
because his machine did not contain the chamber or tunnel of the
plaintiff's invention, nor its appendages.
3. That the reissued patent was invalid as it respects the
fourth claim of the same, because the combination contains only
three of the four ingredients described in the original
specification, and does not include either the chamber or tunnel or
its appendages.
Unquestionably these several defenses were pressed in many
forms, and all must agree that the court refused to sustain anyone
or all of them as often as they were presented by the
defendant.
Attention will next be called to the specification of the
reissued patent as the best means by which to determine whether the
invention secured by it is or is not the same as that of the
original. Wide differences between the two specifications are
manifest in two important particulars.
1. That the whole description of the chamber or tunnel and its
appendages is left out of the specification of the reissued patent,
and that it contains a full description of other devices different
from the chamber, in form at least, to perform the functions of the
chamber and its appendages as described in the original
specification.
Material matters are left out of the specification when compared
with the original, and it is beyond dispute that new features are
introduced in the description of the devices to be employed in
guiding the fibers of the fur when taken from the feeding mechanism
by the rotating brush or picker. They are picked and thrown towards
the cone as in the other specification, in which it has already
appeared that the representation is that they are guided and
directed in the manner and for the purpose specified by the chamber
and
Page 89 U. S. 22
its appendages. Instead of that, the description in the reissued
specification is that the function of guiding and directing the fur
is effected by the following means. Nothing is said about the
chamber, but the description is that a plate is provided and placed
under the brush, and that it extends towards the pervious cone, an
open space being left between that end of the plate which is
nearest the picker and the concave part below the feeding mechanism
that a current of air may enter freely to assist in carrying the
fibers towards the cone as they are thrown by the brush or picker,
and the further representation is that the plate guides the fibers
as they are traveling and prevents too great an accumulation of
them immediately around the lower edge of the cone, the greatest
thickness of the bat being required to be deposited some distance
above, that the bat when made may be thickest at and about the
junction of the rim and crown, technically termed the band, and
that it also prevents waste, as otherwise many of the fibers would
be carried by the force of gravity below the influence of the
currents traveling towards the cone, particularly towards the close
of the operation, when the currents induced by the exhausting fan
become very faint.
Description is then given of the mode in which the plate is
adjusted and of the functions which it performs, as follows: that
it rests on an adjusting screw, so that that end of it which is
nearest the cone can be readily elevated or depressed relatively to
the base of the cone, as it may be desired to vary the distribution
of the fibers with a view to make hats with a broad or narrow rim
and with the rim thicker or thinner relatively to the other parts,
the plate being made in two parts with a view to facilitate the
distribution, the part beyond the supporting screw and nearest the
cone being hinged to the other part and being provided with a cam
or lever or other equivalent device.
Provision is also made for a device called an upper guide or
deflector, which, as the representation is, extends from the
feeding mechanism over the rotating brush or picker and forward of
it towards the cone to direct the fibers and effect a
Page 89 U. S. 23
proper distribution of them on the top of the cone and down the
sides thereof towards the base; and the further representation is
that the under surface of that guide or deflector nearest the
picker brush is flat or parallel with the axis of the picker brush,
and thence, towards the other end, concave and of a gradually
increasing concavity towards the cone, and that the apparatus may
be supplied with an additional deflector further to diversify the
distribution of the fibers, somewhat in the form of a hood, which
is hinged to the end of the deflector nearest the cone, so that it
can be moved by a cord passing over a pulley or a lever actuated by
an eccentric or a cam on a shaft. Guides are also provided on each
side of the deflector, extending from the picker brush towards the
cone, to prevent the fur fibers from escaping laterally out of the
proper influence of the currents which are traveling towards the
cone, and which otherwise would go to waste, and also to prevent
the fibers which are traveling towards the cone from being
disturbed by lateral or foreign currents, not induced by the
rotating brush or picker or by the exhausting of the cone.
No allusion even is made to the chamber or tunnel in describing
the apparatus for guiding and directing the fibers thrown by the
rotating brush or picker except at the conclusion of the
description, where the patentee states that in the machine
illustrated by the accompanying drawings the bottom plate, top
guides or deflector, and side guides are all united along their
edges, which is an express admission that it is the chamber or
tunnel and its appendages in the original specification that
performs all these functions, and that the description given in the
reissued patent is a new feature, describing devices different in
form and with different names from the description given of the
means to accomplish the same end in the original patent.
Differences so wide between an original and a reissued patent
show that it was a bold measure to grant, as well as to ask for,
such a reissue. Examples of the kind, if any, it is believed are
very few in which such a reissued patent has been granted where is
not a word in the original specification
Page 89 U. S. 24
to support the theory that the patentee ever invented anything
except his described combination, which it is admitted consisted of
four ingredients, all of which were old Complete description is
given in the original specification of that combination, but the
specification does not contain the slightest evidence that the
patentee ever made any other combination than that which embodies
the four described ingredients.
Cases arise where a patentee, having invented a new and useful
combination consisting of several ingredients which in combination
compose an organized machine, also claims to have invented new and
useful combinations of fewer numbers of the ingredients, and in
such cases the law is well settled that if the several combinations
are new and useful, and will severally produce new and useful
results, the inventor is entitled to a patent for the several
combinations, provided that he complies with the requirement of the
Patent Act and files in the Patent Office a written description of
each of the alleged new and useful combinations, and of the manner
of making, constructing, and using the same.
He may give the description of the several combinations in one
specification, and in that event he can secure the full benefit of
the exclusive right to each of the several inventions by separate
claims referring back to the description in the specification; and
if by inadvertence, accident, or mistake, he should fail to claim
anyone of the described combinations, he may surrender the original
patent and have a reissue not only for the combination or
combinations claimed in the original, but for any which were so
omitted in the claims of the original patent.
Very different rules, however, apply in a case where the only
invention described in the original patent is the one which
includes all the ingredients of the machine, provided there is no
suggestion, indication, or intimation that any other invention of
any kind has been made. Such a patentee as the one last mentioned
may subsequently discover that he can accomplish a new and useful
result by a combination embracing less than the whole number of the
ingredients
Page 89 U. S. 25
included in the prior patented combination, but he cannot secure
the right and privilege of a patentee in the combination of the
smaller number of the ingredients by a surrender of his first
patent and a reissue of the same which shall include the second
combination as well as the first, because the reissued patent in
that event would not be for the same invention as the surrendered
original. [
Footnote 5]
Nor could that change be allowed under the present Patent Act
for another reason equally decisive, which is that the description
of the other combinations, beside the first, would constitute a new
matter, the introduction of which into the specification of a
reissued patent is expressly forbidden by the fifty third section
of that act. Such a prohibitory provision, it should be remembered,
is new and was not in force when the reissued patent in suit was
granted. [
Footnote 6]
None of the prior patent acts contained any such prohibition,
but they all provided in terms that the reissued patent must be for
the same invention as the original, and that the inventor before he
shall receive a patent for his invention, shall file in the Patent
Office a written description of the same and of the manner of
making, constructing, and using the same, in such full, clear,
concise, and exact terms as to enable any person skilled in the art
to make, construct, and use the invention.
Where the ingredients are all old the invention in such a case
consists entirely in the combination, and the requirement of the
Patent Act that the invention shall be fully and exactly described
applies with as much force to such an invention as to any other
class, because if not fulfilled all three of the great ends
intended to be accomplished by that requirement would be defeated.
They are as follows:
1. That the government may know what they have granted and what
will become public property when the term of the monopoly
expires.
2. That licensed persons desiring to practice the invention may
know, during the term, how to make, construct, and use the
invention.
3. That other inventors
Page 89 U. S. 26
may know what part of the field of invention is unoccupied.
Purposes such as these are of great importance in every case,
but the fulfillment of them is never more necessary than when such
inquiries arise in respect to a patent for a machine which consists
of a combination of old ingredients. Patents of that kind are much
more numerous than any other, and consequently it is of the
greatest importance that the description of the combination, which
is the invention, should be full, clear, concise, and exact.
Patient search has been made in vain for any trace of the
description of any other invention in the original patent than that
of the combination of all the ingredients of the apparatus
described by the patentee as the one used by him to effect the
described patented result. Unable to discover in that specification
any description of any other invention than that, the court is of
the opinion that none other was secured by the original patent.
Argument to show that an invention consisting of a combination
of three ingredients which are old is not the same as that of a
combination of four old ingredients is quite unnecessary, as the
negative of the proposition is as well settled in the patent law as
it is in mathematics. In
Vance v. Campbell, [
Footnote 7] four propositions were decided
which have an important application to the case before the
court:
1. That a patentee in a suit for an infringement of an invention
consisting of a combination of old ingredients cannot in his proofs
abandon a part of such combination and maintain his claim to the
rest, for the reason that unless the patented combination is
maintained the whole of the invention fails.
2. That the patentee in such a suit cannot be allowed to prove
that any part of the combination is immaterial or useless.
3. That the combination is an entirety, and that if one of the
ingredients be given up the thing claimed disappears, which is an
obvious truth, as the invention is such a case consists simply in
the combination.
4. That the clause which provides that the suit shall not be
defeated where the
Page 89 U. S. 27
patentee claims more than he has invented, in case he shall
disclaim such part, applies only where the part invented can be
clearly distinguished from that improperly claimed, which shows
that the clause cannot apply to a patent granted for an invention
consisting of a combination of old ingredients. [
Footnote 8]
Enough has already been remarked to show that all the principal
claims of the original patent recognize the chamber or tunnel and
its appendages as one of the primary ingredients of the patented
invention, and it is absolutely certain that the specification of
that patent contains neither suggestion, indication, nor intimation
that the original patentee made any other invention to accomplish
the described functions than the one which includes the whole four
described ingredients.
Suppose that it is so, still it is insisted by the plaintiff
that the plate, deflector, and side guides which are described in
the specification of the reissued patent are substantially the same
thing as the chamber or tunnel of the original patent, and that
those devices taken together are legally to be regarded as the
equivalent of the chamber or tunnel and its appendages as described
in the specification of the original patent.
Even a glance at the original specification is sufficient to
show that it does not contain any description whatever of the
plate, deflector, or side guides mentioned in the specification of
the reissued patent, nor is it pretended that if the several
devices named had been described in the original specification the
description of these several devices would have been a good
description of the chamber or tunnel and its appendages which are
embraced in the invention secured by that patent within the meaning
of the Act of Congress, which requires that the description shall
be full, clear, concise, and exact. Clearly it could not be, as it
would not accomplish anyone of the three great purposes before
named as the purposes for which the description is required.
Equivalents are doubtless allowed to a patentee or owner
Page 89 U. S. 28
of the patent to shut out infringements, but the Patent Act
furnishes no support to the theory that the patentee may surrender
a patent for an invention consisting of a combination of old
ingredients, and amend the descriptive parts of the specification
by striking out the entire description of one of the ingredients of
the combination and inserting in lieu thereof a full description of
several other devices without any allegation that they are the
equivalents of the one whose description is stricken out, or any
explanation whatever showing the reason why the change was
made.
Whether one device is or is not an equivalent for another is
usually a question of fact, and often becomes a difficult issue to
decide. Grave doubts were at one time entertained whether the
patentee of an invention consisting of a combination of old
ingredients was entitled to equivalents, but it is now well settled
that he is just as much as the patentee of any other class of
inventions; but it is very important to understand what is meant by
an equivalent of an ingredient in such a combination. Questions of
the kind usually arise in comparing the machine of the defendant in
a suit for infringement with that of the plaintiff, and the rule is
that if the defendant 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 even if it is old but was not known at the date of the
plaintiff's patent as a proper substitute for the omitted
ingredient, he does not infringe. [
Footnote 9] By an equivalent in such a case, it is meant
that the ingredient substituted for the one withdrawn performs the
same function as the other, and that it was well known at the date
of the patent securing the invention as a proper substitute for the
one omitted in the patented combination. [
Footnote 10] Hence it follows that a party who merely
substitutes another old ingredient for one of the ingredients of a
patented combination
Page 89 U. S. 29
is an infringer if the substitute performs the same function as
the ingredient for which it was substituted, 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 performed substantially a different function, or
was not known at the date of the plaintiff's patent as a proper
substitute for the one omitted, as in that event he does not
infringe. [
Footnote 11]
Inconveniences past estimation would result if those rules
should be applied in defining the rights of a patentee to make
amendments to the specification of an original patent when applying
for a reissue, as it would open the door in every case to issues of
fact whether the substituted device is or is not an equivalent for
the one withdrawn, within the rules defining what is meant by that
term, which issues of fact might be determined one way in one case
and another and a different way in another case. Nor can those
rules be applied in such a case consistently with the language of
the section allowing a surrender and reissue, which is limited to
the correction of errors which have arisen by inadvertence,
accident, or mistake, nor without an utter disregard either of the
condition that the reissue shall be for the same invention as the
original, or of the clause of the twenty sixth section, which
provides that before any inventor shall receive a patent for his
invention, he shall file in the Patent Office a written description
of the same in such full, clear, concise, and exact terms as to
enable anyone skilled in the art to make, construct, and use the
same.
Substitution of one ingredient for another may perhaps be made
in cases where it would be competent for the court to decide as
matter of law that the ingredient substituted is an equivalent for
the one withdrawn, as where a spring is substituted for a lever to
produce power, or where a weight is substituted for a spring to
produce pressure, but the court could seldom or never, in a suit at
law, undertake to determine without a jury whether a particular
ingredient
Page 89 U. S. 30
substituted in a reissued patent was or was not known at the
date of the original patent as a proper substitute for the one
withdrawn from the combination described in the original
specification.
Viewed in the light of these several suggestions, the Court is
of the opinion that it is not competent for a patentee, when he
surrenders an original patent, to amend the specification for the
new patent by striking out from the original the correct
description of one of the ingredients of the patented combination
and to substitute in its place the description of other devices not
well known at the date of the original patent as a proper
substitute for the ingredient whose description is stricken
out.
2. Just the same considerations are involved in the second
proposition, which, therefore, requires no further discussion, as
it is fully maintained by the reasons given in support of the first
proposition.
3. Even grant that neither of the rules laid down in the two
preceding propositions are correct, still the court is
unhesitatingly of the opinion that the judgment in this case must
be reversed for the reason that the instructions given to the jury
are erroneous, inasmuch as they do not correctly define the meaning
of an equivalent as applied to the ingredients of an invention
consisting entirely of a combination of ingredients all of which
are old.
Assume the theory that the patentee of such a patent, in
effecting a reissue, may strike out from the original specification
the description of one of the ingredients of the patented
combination and insert as a substitute therefor in the new
specification the description of an equivalent for the same, which
is denied, still it is clear law that the substituted ingredient
cannot be regarded as a legal equivalent, within the meaning of the
Patent law, unless it performs substantially the same function as
the ingredient withdrawn, and was well known as such an ingredient
at the date of the original patent and as a proper substitute for
the ingredient which was included in the patented combination.
Questions of the kind usually arise where it becomes
necessary
Page 89 U. S. 31
to determine whether the defendant is guilty of an infringement
in case it appears that he has not used all of the ingredients of
the patented combination of the plaintiff. Repeated decisions of
this Court have settled the rule in such cases that if the
ingredient substituted by the defendant for the one left out in the
defendant's machine 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 left
out, the charge of infringement cannot be maintained. [
Footnote 12]
Tested by these considerations the Court here is of the opinion
that the judgment of the circuit court must be reversed for three
reasons, as follows:
1. That the prayer for instruction presented by the defendant
that the reissued patent is not for the same invention as the
original was improperly refused.
2. That the circuit court improperly refused to instruct the
jury that the defendant did not infringe the plaintiff's patent
unless the apparatus had the feeding device of the original patent
in combination with the rotating brush or picker and the pervious
cone and the chamber or tunnel described in the original
specification.
3. That the circuit court erred in instructing the jury that the
reissued patent is valid as respects the fourth claim if the
combination of the three ingredients therein mentioned is new and
could be usefully employed for the purpose of facilitating the
making of hat bodies, supplemented by any known means of guiding
the fur in such a way as to bring the same, by the operation of
these three devices, to the cone so as to make a hat body, or if
those three devices would make a hat body without the aid of other
means of protecting the fur against escape.
Two errors are contained in that instruction, as follows:
1. It gives an erroneous definition of an equivalent for the
ingredient of a combination consisting wholly of such as are old,
as the substituted ingredient in such a case must be
Page 89 U. S. 32
one which was known at the date of the original patent as
a
proper substitute for the ingredient left out, which latter
qualification is entirely omitted in the instruction given to the
jury.
2. But the instruction is also erroneous because it would allow
a patentee to secure in a reissued patent inventions for
combinations fewer in number than the whole described in the
original patent, though the original patent contained no
description whatever of any such invention, in violation of the
express provision of the Patent Act and of the decisions of this
Court.
Judgment reversed with costs and the cause remanded with
directions to issue a new venire.
MR. JUSTICE STRONG concurred in the judgment, but not in all the
positions taken in the preceding opinion.
MR. JUSTICE BRADLEY did not sit, and took no part in the
judgment.
[
Footnote 1]
68 U. S. 1 Wall.
531.
[
Footnote 2]
For the better understanding of that case, the reporter deems it
well to say that "the figure" referred to on page 550 of that
report (in the 7th and 8th lines from the top of the page just
named), is figure 21 on page 560, and not figure 10 on page 549, as
might not unnaturally be supposed. The matter is put rightly in
late editions of Volume I, but is not so in earlier editions.
[
Footnote 3]
16 Stat. at Large 206.
[
Footnote 4]
Gould v.
Rees, 15 Wall. 194.
[
Footnote 5]
Vance v.
Campbell, 1 Black 428.
[
Footnote 6]
16 Stat. at Large 206.
[
Footnote 7]
66 U. S. 1
Black 428.
[
Footnote 8]
Case v. Brown,
2 Wall. 320;
Burr v.
Duryee, 1 Wall. 566.
[
Footnote 9]
Carver v.
Hyde, 16 Pet. 514;
Brooks v.
Fiske, 15 How. 212;
Stimpson
v. Railroad, 10 How. 329;
Prouty
v. Ruggles, 16 Pet. 341.
[
Footnote 10]
Gould v.
Rees, 15 Wall. 194
[
Footnote 11]
Roberts v. Harnden, 2 Clifford 504.
[
Footnote 12]
Gould v.
Rees, 15 Wall. 193;
Seymour v.
Osborne, 11 Wall. 555;
Vance
v. Campbell, 1 Black 428;
Prouty
v. Ruggles, 16 Pet. 341.
