1. Five reissues were granted on a surrendered patent, granted
originally in 1853 to G. W. Brown, for improvements in corn
planting machines. On two bills, one against Bergen & Sisson
and the other against Selby
et al. For infringement, four
of these reissues were sustained and one declared void for want of
novelty.
2. Out of five reissues granted on a surrender of a patent
granted in 1855, four were declared invalid for want of patentable
novelty, and one reissue, No. 1095, was declared valid.
3. An invention described in an application for a patent filed
in the Patent Office is not of itself a bar to a subsequent patent
therefor to another. Such an application may have a bearing on the
question of the defense
of prior invention or discovery, but will not of
itself
take such prior invention or discovery out of the category of
unsuccessful experiments.
4. The several reissues, Nos. 1036, 1038, and 1039, held to be
good as being for things contained within the machines and
apparatus described in
Page 90 U. S. 182
the original patents, although not claimed therein. Any question
of fraud in obtaining these reissues is to be regarded as settled
by the act of the Commissioner of Patents in granting them.
5. Reissues Nos. 1036, 1038, and 1039 are not obnoxious to the
objection that they are for substantially the same combination, and
therefore not for distinct parts of the original machine.
6. The use of the words "substantially as and for the purposes
set forth" in a claim throws it back to the specification for
qualification of words otherwise general.
7. The claim of Reissue No. 1036, thus construed, held to be
valid and to he for two separate frames -- one having two wheels
and the other two runners.
8. The defendants held to have infringed it.
9. Reissue No. 1037 declared void for want of novelty.
10. Reissue No. 1038 held to cover the combination of two
separate frames, one having two wheels and the other two runners,
when they are combined together by a hinged joint.
11. The defendants held to have infringed this claim, although
in one, Selby's machine, the hinge is located at a different part
of the machine,
the office, purpose, operation, and effect
being the same. A change a little more or less backward or
forward held not to change the substantial identity.
12. A patentee by his claim as to what he regards as news by
necessary implication disclaims the rest as old, and such remaining
parts are to be regarded as old or common and public.
13. Claim 1 of Reissue 1039, if construed simply as claiming the
placing of the dropman on the machine, would probably be held void
as claiming a mere result irrespective of the means by which it is
accomplished; but if construed as claiming the accomplishment of
the result by substantially
the means described in the
specification, it is free from that objection. Such claim should be
construed in this limited manner if possible in order to save the
patent.
14. Claim 2 of Reissue No. 1039 embraces the combination
consisting of one frame, the runner frame having the seat for the
dropman, and another frame, the wheel frame, having a lifting lever
fulcrumed to it. The defendants
held to have infringed
this claim, although the levers used, in themselves, were different
in form and point of attachment from the appellant's lever.
15. Reissues Nos. 1091, 1092, 1093, and 1094 declared void for
want of sufficient invention to constitute patentable novelty.
16. The combination (in 1091) of a seat for a driver, on a
machine which had a dropman's seat on it when a driver's seat had
been used on a similar machine before, but without a dropman's seat
thereon, does not constitute a patentable invention.
17. The Reissue 1095 explained, and the novelty of the
combination for effecting double dropping pointed out. Both the
defendants held to have infringed the claim of this reissue.
Page 90 U. S. 183
G. W. Brown filed two separate bills in equity in the court
below against Bergen and Sisson in the one case and against Selby
and others in the other case, charging them respectively with
infringement of certain letters patent granted to him, Brown, for
improvements in corn planting machines, being reissues of previous
patents, and praying for an account of profits, for injunctions,
and for general relief. The defendant in the first case filed an
answer, and two amended answers, setting up, in general, that the
complainant was not the original and first inventor of the
improvements patented to him, but that the same were previously
known and used by various other persons named in the answers, and
that the reissued patents of the complainant were fraudulently
obtained, and they denied that they infringed the complainant's
patents. The pleadings in the other case were substantially the
same. Much testimony having been taken, the causes were heard
together before the circuit court, and the complainant's bills were
severally dismissed. The appeals were from the decrees dismissing
them. Bergen, one of the original defendants in the first case,
having died, the cause was revived in the name of his executor, one
Guild, who, with the other defendant, Sisson, were the now
appellees in that case.
The invention as to which the controversy in the cases arose is
one which is called "a check row corn planter" -- an invention
intended to facilitate the planting of Indian corn (maize) in the
best way.
This sort of corn, as most persons have observed, is usually
planted in rows -- rows from three feet ten inches to four feet
apart. It requires to be so planted in order that the spaces
between and all around the hillocks in which it is planted may be
ploughed, after the corn begins to grow, or (to use the technical
term) that the corn may be "cultivated." For if weeds are allowed
to grow about the corn, they impair its strength and diminish its
productiveness.
Prior to the time when "the check row corn planter" was
Page 90 U. S. 184
devised, and while, of course, all planting was done by hand,
farmers used to secure the planting, properly, in rows, with the
grain at right distances from each other, in this way. They made a
series of transverse scratches or marks across the field, as shown
by the black lines
a b in the design below.
image:a
Then, when they came to plant, they ploughed transversely, as
shown by the dotted lines
c d, and at the intersections
e e of the furrow
c d, with the scratched line
a b, they dropped the corn. The corn therefore grew in
regular rows, and could be "cultivated" by means of a plough drawn
by a horse who went between the rows in both directions.
But this operation of drawing great numbers of lines and
ploughing in two directions across large fields, and of dropping
the corn by hand at the intersections, was a slow and laborious
one, and one requiring great care in order to be accurately
done.
The object of the improvement under consideration in these cases
was to do this work -- that is to say, to plant the corn in the
best way in hills at exact and proper distances apart -- dispensing
with much of the former labor.
The first and principal question in the causes was whether the
complainant, Brown, was the original and first inventor
Page 90 U. S. 185
of the improvements claimed by and patented to him, or whether
he was anticipated therein by other persons named in the answers of
the defendants.
As set forth in the bill, the first patent obtained by the
complainant for one portion of his alleged invention and
improvement was granted to him on the 2d day of August, but
antedated the 2d day of February, 1853. This patent was surrendered
on the 16th day of February, 1858, and a new patent was issued in
lieu thereof upon a corrected specification. This reissued patent
was also surrendered on the 11th day of September, 1860, and in
lieu thereof five new patents were issued upon five several
corrected specifications, which new patents were numbered
respectively reissues 1036, 1037, 1038, 1039, 1040, each one being
for a distinct and separate part of the original invention, alleged
to have been made by the complainant.
On the 8th of May, 1855, a patent was granted to the complainant
for certain improvements on his corn planter, which patent was, on
the 10th day of November, 1857, surrendered, and a new patent was
issued in lieu thereof on a corrected specification. This last
patent was also surrendered on the 11th day of December, 1860, and
five new patents were issued in lieu thereof on five amended
specifications, each being for a distinct and separate part of the
improvements intended to be secured by the patent of 1855. The last
mentioned patents were respectively numbered reissues 1091, 1092,
1093, 1094, and 1095. Copies of all the reissued patents of both
series were annexed to the bill. Upon the taking of proofs in the
cause, copies of the two original patents, and of the first
reissues thereof, as well as the reissued patents on which the bill
was founded, were put in evidence, together with full and detailed
drawings and models of the complainant's original and improved
machines.
The defendants, in their answer and the several amendments
thereof, referred to many machines, patents, and applications for
patents which, as they alleged, embodied all the improvements of
the complainant's machine, and antedated
Page 90 U. S. 186
the same. These will be more particularly referred to after the
features of the complainant's machine have been described.
The original machine, the patent for which was granted to the
complainant on the 2d day of August, 1853, and the application for
which patent was dated the 27th of September, 1852, is shown in
perspective in Figure 2, and consisted of the following parts:
image:b
1. A framework supported on two runners -- the latter being used
for cutting a gash or furrow in the earth to receive the seed --
each runner having a cleft at the rear end for allowing the seed to
drop to the ground, and furnished with a hopper above, containing
oscillating horizontal valves for dropping the seed at proper
intervals into the gash or furrow through a tube in the heel of the
runner.
2. Another framework, following the first, and supported on two
wheels or rollers to follow the runners and press the earth down
upon the seed in the gash or furrow.
The relation of the runners A to the covering wheel W is shown
at Figure 3, which is a side view of Brown's machine.
image:c
3. A free or jointed connection between the two frames, allowing
them to rise and fall independently of each other
Page 90 U. S. 187
in going over inequalities of surface. This jointed connection
was formed by a bolt passing through the arm J, Figure 3, at the
point I.
4. A system of levers resting on the axle of the wheels under
the rear frame, shown at L, Figure 3, and so applied to the forward
frame as to enable the driver to raise the runners out of the
ground for turning about or for any other purpose, with a further
arrangement for regulating the depth of the furrow or gash made by
the runner.
The complainant's machine was a hand dropping machine, and it
was so arranged that a man could be mounted upon it so as to ride
sidewise, and observe the lines or furrows which had been made
across the field. Whenever the runners passed on these lines, the
seed was dropped. This was done by means of a connecting rod
between the seed valves in the two hoppers, one end attached to
each, with a lever to move it backward and forward by the hand of
the dropper sitting crosswise on the frame, so that he could by
such movement drop the seed from both hoppers at the same time at
the intersection of the cross lines marked on the field.
The machine is shown with the dropman placed in his position in
Figure 4, and the check rows are seen extending across the field.
The machine was described with substantially these parts in the
specifications and drawings attached to the original patent of
1853, as well as the several reissues 1036, 1037, 1038, 1039, and
1040.
image:d
Page 90 U. S. 188
The improved machine, as patented in 1855, had two additional
features, or improvements:
1. A vibrating valve, called a flipper valve, in each seed
dropping tube, which valve is composed of a long slender slip of
metal attached to a pivot in the middle, connected by a small
attachment to a slide valve having two openings, so that when the
top is moved to one side of the tube the bottom moves to the other
side. By one movement, the seed drops through the slide valve into
one side, and is detained near the bottom till the next movement,
when it is dropped on the ground, and seed is admitted
simultaneously through the slide valve into the other side. The two
positions of the flipper valve, slide valve, and lever are shown in
Figures 5 and 6. The effect of this arrangement is that the
seed
image:e
is near the bottom of the furrow when it is dropped, so that it
is immediately deposited in line with the check row. And the
peculiarity of the apparatus is such that it requires but one
movement of the levers above to drop for a single hill.
2. Another improvement was a high, long seat for the driver on
the rear frame, located above the wheels lengthwise of the machine,
so that by moving backward or forward on the seat, his weight will
raise or depress the runners.
The only claims allowed by the Patent Office upon the original
application in the patent of 1853 were:
"1st. The oscillating horizontal wheels or distributors (namely,
the valves before referred to), in the bottoms of the hoppers,
having slots and holes of various sizes, in combination
Page 90 U. S. 189
with the stationary caps and pins for the discharge of different
kinds and quantities of seeds, as set forth in the
specification."
"2d. The arrangement of the covering rollers, mounted as
described, and performing the purpose of covering the seed,
elevating the cutters in turning round, and also in adjusting to
different depths, as set forth."
Other claims were applied for, but were disallowed.
The five reissues, or new patents, issued September 11th, 1860,
in lieu of the original patent of August 2d, 1853, and of its first
reissue in 1858, were for a number of supposed distinct inventions
comprised in the machine, and each contained one or more separate
claims. None of these distinct inventions were claimed as distinct
features in the original patents, nor were they claimed as such in
an intermediate reissue granted in 1858, but they are shown
distinctly in the original drawings and were described in the
specification of the original patent.
The only claim allowed in the patent of May 8th, 1855, for the
improvements added to the machine, was as follows:
"In combination with the hoppers and their semi-rotating plates
d, the runners A with their valves
f, and their
adjustment by means of the levers and cams, and the driver's weight
for the purpose of carrying and dropping seeds by each vibration of
the lever D, and to regulate the depth of the planting, as
described."
By the reissue of December 11th, 1860, this patent was
subdivided into five new ones, each having one or more separate
claims for supposed distinct inventions which were comprised in the
drawings of the original patent, and in the descriptive part
thereof.
Upon the first question, that of novelty, the defendants
referred in argument to Cooke's well known "drill," and other like
machines described in the
Farmer's Encyclopedia, and to an
old machine of Joab Moffatt; but the principal prior machines
relied upon by them as anticipating the invention found in Brown's
patent of 1853 were the following:
Page 90 U. S. 190
1. The cottonseed planter of Thomas, patented in 1848, which the
complainant contended was different from his corn planter. This
machine is described in the opinion of the court, [
Footnote 1] and illustrated at Figure 7.
image:f
2. Henry Todd's seed planter, patented December 13th, 1843,
which is also described in the opinion, [
Footnote 2] and illustrated
image:g
in Figure 8. The complainant contended that this was a different
machine.
Page 90 U. S. 191
3. Earle's planting plough, patented in 1848. This, described in
the opinion, [
Footnote 3] was
an automatic corn planter, and, as argued by the complainant, was
wholly unlike his planter.
4. Mumma's seed drill. This, also described in the opinion,
[
Footnote 4] was, however, not
strongly relied upon by the defendants.
5. Remy & Kelly's machine. This machine is described by the
court, [
Footnote 5] and is
illustrated in Figure 9. For this a
image:h
patent had been applied for in June, 1850, but the application
was then rejected and withdrawn. An experimental use of the machine
was also proved.
Upon this condition of things, the question under this fifth
machine was much discussed, as to what position, as a defense, a
description of a machine contained in a prior rejected application
occupied, and if it was not a good defense by itself, how far it
might be considered in connection with a prior experimental use in
establishing an anticipation of a patented invention.
6. Three prior machines of James Abbott, which were produced by
the defendants. These, the complainant contended, were unsuccessful
experiments, if indeed they were prior in date to his invention.
The two principal of these
Page 90 U. S. 192
machines are described by the court, [
Footnote 6] and illustrated in Figures 10 and 11.
image:i
7. John Kirkman's unpatented machine. This was much relied on by
the defendants, but the complainant contended that it was
materially different from his corn planter in having but a single
frame in which were both runners and wheels, instead of two
independent frames with runner and wheels like his. It was also
insisted that on the evidence it was subsequent in date to his. It
is described in the opinion of the court, [
Footnote 7] and illustrated at Figure 12 on the next
page.
8. Joab Brown's corn planter, said to have been used in 1850 and
1853, and another corn planter for which he applied for a patent in
December, 1852, were also adduced. The complainant contended that
the machines of 1850 and 1853 were unsuccessful and abandoned
experiments, and that the machine for which the said Joab Brown
applied for a patent in 1852 was wholly unlike his, the
complainants',
Page 90 U. S. 193
image:j
machine. This last machine of Joab Brown is analyzed in the
opinion, [
Footnote 8] and
illustrated at Figure 13.
image:k
Besides these, the defendants set up and relied upon the machine
of Charles Finn and of Jarvis Case as containing the double
dropping device, claimed by the appellant in Reissue No. 1095.
The double dropping devices in these two machines are described
and illustrated in the opinion of the Court, [
Footnote 9] and shown further on the Figures 23
and 24, page 200.
Upon the question of infringement there was much discussion.
Page 90 U. S. 194
The conclusion arrived at by the court, in declaring the
complainant's reissued patents 1037 void for want of novelty, and
also the reissued patents Nos. 1091, 1092, 1093, and 1094 void, as
not containing patentable novelty, obviates the necessity of here
referring to the infringement of the several claims of those
patents.
As to the infringement of the other claims, it was contended
that the machine of the defendant Selby, and of the defendant
Bergen, infringed the claim of Reissue No. 1036. That claim was in
these words:
"CLAIM 1036. Having thus fully described the nature and object
of my invention, that I claim under the patent is a seed planting
machine, constructed principally of framework, the front part of
which is supported on not less than two runners or shoes, with
upward inclining edges, and the rear part supported on not less
than two wheels, the latter being arranged to follow the former,
substantially as and for the purpose set forth."
The defendant Bergen's arrangement is shown, in side view, in
Figure 14, and was thus described in his patent:
image:l
"The body of the machine consists of a frame B, mounted on
runners, and a rear frame A, mounted on wheels, the two frames
being united by a flexible joint, so arranged that it can be
rendered rigid under certain circumstances."
The complainant contended that as the machine had two distinct
frames, one frame resting on a pair of rollers and the other
distinct frame resting on a pair of runners or cutters, it was
within this claim.
The defendants, besides insisting that this claim was
anticipated
Page 90 U. S. 195
by Kirkman's machine, also contended that the Bergen machine did
not infringe inasmuch as the pivot or hinge was different and
differently located.
The machine made by the defendant Selby is shown in Figure 15,
and consisted of two distinct frames pivoted
image:m
together. One of these frames was supported on two runners and
the other by two wheels.
The claim of the complainant, under Reissue 1038, was as
follows:
"CLAIM 1038. Having thus fully described the nature and object
of my invention, what I claim under this patent is, in combination
with a seed planting machine, constructed principally of framework,
with not less than two runners and not less than two wheels, a
hinge joint between the point of the tongue and the rear part of
the machine, so that one part of the framework may be raised,
lowered, adjusted, or supported on the other part, substantially as
described."
The mode of attaching the front and rear frame in the defendant
Bergen's machine is shown in Figure 16, on the next page, and was
thus described in Bergen's patent:
"I construct my seed planter in two parts, consisting of two
frames of equal width and suitable strength, coupled together. . .
. These frames are coupled together by a slotted joint at
Page 90 U. S. 196
each side of the frame, to permit either frame to have a varying
vertical movement without changing the position of the seed tubes
or varying the depth of the planting."
image:n
A peculiar hinge, shown at Figure 17, was employed by Bergen,
and the appellees contended that Brown was to be limited to his
peculiar hinge, and that Bergen's machine had a different
hinge.
image:o
The arrangement of Selby, the other defendant, is shown in
Figure 18. He also had two separate frames pivoted together, but
the pivoting or hinging was effected by extending the rear frame
forward and pivoting the front end of the runner to the projection
of the rear frame. It was contended by the defendants that on this
account, in the Selby machine, the two frames, although hinged,
were combined together in a substantially different manner, and
therefore
Page 90 U. S. 197
that it was no infringement. The complainant insisted that
although the place of uniting the two frames together was different
in the two machines, and the hinges were peculiar,
image:p
yet the pivoting of these frames together caused the combined
action to be exactly alike.
The claim of Reissue 1039 was in these words:
"CLAIM 1039. Having thus fully described the nature and object
of my invention, what I claim under this patent is in a seed
planting machine wherein the seed dropping mechanism is operated by
hand or by an attendant, in contradistinction from 'mechanical
dropping;' the mounting of said attendant upon the machine in such
a position that he may readily see the previously made marks upon
the ground and operate the dropping mechanism to conform thereto,
substantially as herein set forth."
The complainant urged that this was not for the mere putting of
a seat on the machine, but for so arranging the several parts that
a dropman could be located in a position to see the marks on the
grounds and work the seed valves, and that in both the Bergen and
Selby machines the same arrangement of the several parts of the
respective machines had been made; that a man could be located
there in a sitting position and do his work.
The arrangement of Brown's seat is shown is Figure 19, on the
next page, and was between the two seed boxes, and so that he could
sit sidewise astride and observe the marks.
The Bergen seat was in like manner located between the
Page 90 U. S. 198
two seed hopper boxes, and so that the dropman could sit astride
of the seat and look sidewise across the field.
image:q
The arrangement for Selby's seat is shown in Figure 15,
[
Footnote 10] and was in the
same position as Brown's.
It was contended by the complainant that as no one had ever
arranged the several parts of a corn planter so that a man could
sit upon the machine in a position to watch the marks on the ground
and at the same time work the valves, the
manner of
organizing these several parts, by which he could sit there
and work the valves, involved invention, and this was not like the
mere putting of a driver's seat on a machine in positions where
drivers' seats had been accustomed to be placed, for the
mere purpose of driving the machine.
The opinion of the court, as already stated, dispenses with the
necessity of reference to the question of infringement of the
second group of reissues, except Reissue No. 1095.
The claim of the reissue 1095 was in these words:
"CLAIM 1095. Having thus fully described my invention, what I
claim under this patent is so combining with a lever, by which both
may be operated, a valve or slide in the seed hopper and a valve in
the seed tube as that a half motion of the lever by the operator,
riding on the machine by which they are operated, shall both open
and close the seed passages at regular periods, and pass measured
quantities only, substantially as described. "
Page 90 U. S. 199
It was contended on behalf of the complainant that this was a
claim for a combination, as shown in Fig. 20, consisting
image:r
of a lever
l, a sliding valve in the bottom of the seed
boxes having two openings,
a and
b, and a
vibrating valve in the seed tube extending throughout the length of
the seed tube, which valve, when vibrated in alternate directions
formed alternate passages in conjunction with the opposite sides of
the seed tube, so that when vibrated in one direction this seed
tube valve formed, with the side of the seed tube, a passage E,
which, in connection with the opening
b, in the hopper
valve, caused the seed to descend into the seed tube and be
retained at the bottom of the seed tube. When the lever was
vibrated in the opposite direction, the valve in the seed tube
moved into the position E' (Figures 21 and 22),
image:s
so as to open on one side a passage to the ground for the seed
previously deposited in the seed tube, and at the same time opened
a passage for the seed through the seed hopper slide valve into the
seed tube on the opposite side of the vibrating valve from that
shown in the first position. The mode of combining their several
elements -- namely, the lever, the valve in the seed hopper, and
the valve in the seed tube --
Page 90 U. S. 200
was substantially similar to that of the complainant. So that
the vibration of the slide valve, at the bottom of the seed hopper,
caused the tube valve to vibrate in proper relation thereto.
Two devices were set up as anticipating Brown:
1st. That of Jarvis Case, whose device, in its two positions, is
shown in Figures 23 and 24.
image:t
This machine was like Brown's in that one muscular effect did
the work of opening and closing the hopper valve and seed tube
valve, but the seed tube valve was not double-acting, and a spring
returned it to its place, and the operator had to overcome the
force of this spring.
2d. Finn's machine, which is shown in Figures 25 and 26.
image:u
In this last mentioned machine, the seed tube valve and hopper
valve were each only single acting, and two motions of the arm of
the operator were required in consequence for each deposit of seed.
It was contended that Brown's machine differed from Finn's and
Case's in containing a lever in combination with a double passage
hopper valve and a vibrating valve extending through the seed tube,
which
Page 90 U. S. 201
vibrating valve was double acting in the sense of forming, with
the opposite walls of the seed tube, alternate passages on each
side of the vibrating valve, with each half motion of the
operator's arm, thereby saving much labor.
The Bergen dropper and the Selby dropper agreed with Brown's in
having each a slide hopper valve having two passages, a
double-acting vibrating seed tube valve located within and
extending the length of the seed tube, which vibrating valve formed
alternate seed passages for the grain to the ground, at each half
motion of the operator's arm. The Selby dropper had a lever in
combination with these parts, and in the Bergen dropper a handle
was substituted for a lever in this combination.
As already stated, the court below dismissed the bill of the
complainant, and the present appeals were taken to such action.
Page 90 U. S. 203
MR. JUSTICE BRADLEY delivered the opinion of the Court.
A proper decision of the questions in these causes renders it
necessary, in the first place, to ascertain as near as may be the
actual date of Brown's alleged invention or inventions, such as and
whatever they are. His original application for a patent was sworn
to on the 27th of September, 1852. But it appears from his own
testimony, which does not seem to be discredited, but rather
corroborated by others, that he was making experiments in 1850, on
a machine
Page 90 U. S. 204
which formed the nucleus of his completed invention. He further
says that in January or February, 1851, he made a machine which he
describes as follows:
"It had two runners and two wheels, two cross-bars and nose
pieces, two braces, dropper's seat, and a tongue. The wheels were
hung through the seed boxes by arms. There were arms running back
from the seed boxes, which the wheels run in, coupled through the
seed boxes with a bolt. I had a loop running down each side of the
wheel that went on to the axles on the wheels, and worked a couple
of short levers fastened on this loop running forward under the
forepart of the machine, and running back far enough to put a
cross-piece on behind. I am a poor hand at describing it. The seed
slide passed through the hoppers, running from one to the other,
and the lever operated it with the hand, with a person located on
the machine cross-wise, so that he could see the marks plain on the
ground."
Further evidence was given by him descriptive of the machine,
and showing its substantial identity with the machine as it stood
when the patent was granted.
This, however, was only a model. But it had all the main
characteristics of the perfected machine except that the circular
valves were not contained in it, the seed being dropped from the
bottom of the hopper by the movement of a straight slide. He
further testified that in 1852 he sent that model by his brother to
Washington, and that it was very nearly the same as the model filed
in the Patent Office, a copy of which was shown to the witness, and
is an exhibit in the cause. He further states that in the same year
he made, after the plan of the model, a machine of one-half the
usual size, but large enough to work with, and that he planted
three or four acres of corn with it in May, 1851. He says it worked
well. In September of the same year, after harvest, he invited
several persons to come and see it operate, giving their names.
Several of these witnesses were called and fully corroborated his
testimony. Early in 1852 he commenced constructing ten machines,
but completed but one of them that spring. With this one, and the
half-sized machine before mentioned, he planted over twenty
Page 90 U. S. 205
acres of corn -- namely, sixteen for himself and eight for Allen
Brown. At this time, he says, he introduced into these machines the
circular valves, or dropping plates, in place of the slides, thus
completing the machine as it stood when he applied for his patent
and made the model now before us, which was during the same season.
The following spring, 1853, before corn planting time, he had
completed a dozen machines containing all his improvements, and
sold them to various persons. Some of them, he says, planted as
much as three hundred acres of corn. These machines, he says,
contain the high seat and flipper valve, which were the subject of
the patent dated May 8th, 1855.
The appellees have endeavored (but we think unsuccessfully) to
discredit the statements and testimony of Brown, especially as to
the existence of rollers for covering the seed in the model and
small sized machine made in the early part of 1851. He is
corroborated on this point by his nephew, V. R. Brown, and others,
and nothing but negative testimony is adduced to the contrary.
We think it clear that his machine (except the seat and the
flipper valve) was substantially invented in the beginning of 1851,
and that in April or May of that year he had constructed and used a
small working corn planter, containing all the material parts of
his machine as it was when patented, except the circular valve in
the hopper, which was added as an improvement on the straight slide
in the spring of 1852.
We will next proceed to inquire what machines belonging to the
same general class had been invented prior to this period, in order
to show the state of the art at that time.
It cannot be seriously contended that Cooke's drill, and other
machines of the kind, described in the
Farmer's
Encyclopedia, bear any resemblance to the specific features of
Brown's corn planter. The furrows are made by coulters fixed in
beams, and the grain is covered by harrows following the drills.
The latter are hollow tubes which are supplied with the seed grain
by a revolving cylinder having little cups or cavities in its
surface, which become filled as they revolve in the bottom of the
hopper.
Page 90 U. S. 206
It is hardly necessary to consume time in reference to the
alleged invention of Joab Moffatt, in or about the year 1834,
models of which, made from the supposed recollection of witnesses,
have been presented to the court. Moffatt himself was placed on the
stand, and swears that he has no recollection of having ever
invented such a machine. And it is a little singular, if he did
invent such a perfect machine as the models represent, approaching
so closely in every particular to Brown's corn planter, that it
should have gone into total disuse and oblivion. The general aspect
of the evidence relating to this supposed machine, and some
remarkable individual features which it exhibits, are sufficient to
justify us in throwing it entirely out of the case.
An English patent, obtained by one Hornsby in 1840, was
introduced, but the mechanism described therein has very slight
resemblance to the corn planter. It consists of a hollow wheel,
with angular compartments and doors in the circumference to receive
seed and manure from a hopper and deposit them on the ground by the
revolution of the wheel. This wheel is situated in rear of a
coulter running in the ground, and does not touch the ground
itself, but is supported on the frame of the machine, which in turn
is supported by large driving wheels on the outside of the frame.
The coulter and deposit wheel are located in the inside of the
frame. The inventor, however, observes that more than one coulter
and deposit wheel may be used. No method is described for covering
the seed or pressing it into the ground. The side view of the
coulter exhibited in the drawing bears some resemblance to the
runner in Brown's machine; but we have no other description of it
or of the manner of its operation.
Thomas's cottonseed planter, patented in 1841, is next adduced.
[
Footnote 11] It consists of
a long bed-piece of plank, supported by two wheels, one on each
side, and having a sort of keel underneath, running along the
middle, for making a crease or furrow in the ground and keeping the
machine in a
Page 90 U. S. 207
direct course. In the middle of the bed-piece, over the axle of
the wheels, is an aperture to allow a seed roller affixed to the
axle to revolve, having alternate ridges and seed holes. Over this
is a hopper which holds the seed and communicates it to the seed
roller, by whose revolution the seed is dropped into the furrow. A
loose flap is hinged to the rear end of the bed-piece, and drags
along on the ground for covering the seed with earth. The keel in
this machine bears some resemblance to the runner of the corn
planter. This patent requires no further observation. It exhibits a
semblance only of one or two elements of Brown's machine.
The next machine in order of time is Henry Todd's, of Oxford,
New Hampshire, patented December 15th, 1843. [
Footnote 12] It is thus described by the
witness, Hale:
"The main portion of the machine consisted of a plank or surface
board, three or four feet long, one foot wide, and tapered to a
point in front. The seed box was fastened to said plank. The seed
was distributed by cups upon a belt, upon the principle of a flour
elevator; the motion was communicated by band from a roller at the
rear of the machine, said roller also serving to press the earth
over the planted corn. A cutter was fastened to the bottom of said
plank for opening a drill for dropping the seed, and a couple of
converging wings fastened to the rear and bottom of said plank for
covering the seed. The cutter before mentioned had an upward
incline in front, and at the front was thin and sharp, spreading
out at its rear end."
The machine was managed much like a plough, having two handles.
The roller in the rear was connected with the front part of the
machine by two arms, one on each side, in which were situated the
bearings of its axle, and the forward ends of which were, by pivots
or bolts, attached to supports, so that the roller could rise and
fall independently of the surface board or platform of the machine.
It resembled Brown's machine in having a cutter (or runner) for
making a furrow, in dropping the seed through a cleft at the rear
of the cutter, in having a roller
Page 90 U. S. 208
to press the earth upon the seed, and in having a free
connection between said roller and the machine. It differs from it
in having but one cutter (or runner) and one roller, in having a
pair of wing-like scrapers behind the runner to cover the seed with
earth, an automatic feeding apparatus incapable of dropping the
seed in check or cross rows, and having no levers and nothing but
the plough handles to lift the cutters out of the ground.
Hale was the only witness examined on the subject of this
machine. He says he helped Todd make six of them, and that they
were used, and worked satisfactorily, in or about 1844. This being
all that is heard of this machine in the cause, it is probable that
its use was discontinued and that it shared the fate of a thousand
other devices which approach the point of final perfection and
success but do not reach it. The differences between this machine
and Brown's are just those differences which rendered the latter a
success and a valuable acquisition to the agriculture of the
country.
Earle's planting plough, patented in 1848, may be dismissed even
more summarily than Todd's machine. It operated automatically in
depositing the seed, and was not adapted to check row planting; the
furrow was opened by a plough furnished with a double mould board,
and the seeds were covered by means of scrapers attached to a
diagonal position behind the seeding apparatus. It had but one
frame, and the seed was deposited by means of a drum, having
cavities in its surface, revolving in the bottom of the hopper, and
discharging he seed into a tube behind the plough.
Mumma's patent for a seed drill, granted in 1849, was also put
in evidence, but it describes only a grain drill, devised to secure
a more equal distribution of seed in the drills or furrows in
ascending or descending hills &c.
"To the hind part of the frame a small trunk is jointed with a
long lever attached to it by which the whole seeding apparatus is
raised from the ground when it is transported from place to
place."
This device of the truck or jack and lever for
Page 90 U. S. 209
prying up the machine when being turned or transferred from one
place to another bears some resemblance to Brown's method of
raising the front frame of his machine by the levers resting on the
drums or wheels. The patent is probably introduced to show this
resemblance. It is so slight, however, that it can have no serious
effect in the cause.
The machine of Remy & Kelly comes next. [
Footnote 13] They applied for a patent in
June, 1850, but withdrew the application in August, 1850, for what
cause does not appear. We have before us a copy of the application
and accompanying drawings and models of the machine and the
examination of Remy and one Burgess in reference thereto. The
machine consisted of a front, middle, and rear frames or parts, the
former being mounted by two seed boxes or hoppers and being
furnished below with two drill teeth which cut or scratched the
usual small furrow in the ground and through which the seed was
deposited in the earth. Small rollers with cavities in their
surfaces were made to revolve in the bottom of the seed boxes, and
thus carried out and deposited the seed in the drill teeth in the
usual manner of drills. [
Footnote 14] The drill teeth were followed by a
transverse row of upright harrow teeth for covering the grain.
These harrow teeth were inserted in a cross-bar framed into two
long levers which were attached to the forepart of the front frame
by a loose joint. This apparatus constituted the middle frame. The
rear frame was also attached to the front frame by a loose joint,
by means of side bars, extending forward and connected thereto by
bolts or pins, and was supported on a transverse roller consisting
of four wheels or bulkheads, and iron bars connecting them
together, making a sort of rolling crate which rested on the
ground, supported the driver's seat, and by means of bands and
pulleys gave a revolving motion to the seed rollers before
mentioned. An iron crank within the driver's reach, and fitted in
bearings on the rear
Page 90 U. S. 210
frame, enabled him to pry up the cross-bar holding the harrow
teeth, and with it the rear end of the front frame with the drill
teeth. This operation, as the tongue was fast and rested on the
horses, raised the cross-bar and the rear end of the front frame so
as to lift the drill teeth and harrow teeth out of the ground. In
this respect it produced, by means somewhat different, a result
similar to the lifting of the front frame and runners by means of
the levers acting on the fulcrum of the wheels in Brown's machine.
Only one machine, however, was ever made, and this was made merely
for an experiment in Brookville, Indiana, in the year 1849. It did
not contain the pulley strap for turning the seed rollers, which
the application and model exhibit as part of the invention. Remy,
in trying the machine, walked alongside of it and with a crank gave
the seed rollers an oscillating motion with his hand, Burgess
driving. In this way they planted five acres, which Remy says were
planted even and cultivated both ways. But the machine was never
used again and was afterwards broken up, and no other was ever
made. Remy made many other corn planting machines on a different
principle, but he said there was no demand in that region for a
machine of this kind.
The appellees contend that this was an anticipation of several
material parts of Brown's machine. But it is obvious that it had
not the runners nor the covering rollers, nor was it adapted to
planting in check rows. As presented to the Patent Office in 1850,
and in the models exhibited to the court, it was planned for an
automatic drill planter. The experiment made in 1849, when Remy
worked it by hand, was a mere experiment, which was never repeated.
It may have presented one or two ideas in advance of other
machines, but it can hardly be said to anticipate the machine which
we have described as Brown's. Were it not for the application for a
patent, it would justly be regarded as an abandoned experiment,
incapable of being set up against any other claim. Can the fact
that such an application was made and afterwards voluntarily
withdrawn and never renewed make any difference? We think not.
Had
Page 90 U. S. 211
a patent been actually granted to Remy & Kelly, it would
have been different. The case would then have come directly within
the seventh section of the Act of 1836, which makes a "patent" or a
"description in a printed publication" of the invention claimed a
bar to a further patent therefor. But a mere application for a
patent is not mentioned as such a bar. It can only have a bearing
on the question of prior invention or discovery. If upon the whole
of the evidence it appears that the alleged prior invention or
discovery was only an experiment and was never perfected or brought
into actual use, but was abandoned and never revived by the alleged
inventor, the mere fact of having unsuccessfully applied for a
patent therefor cannot take the case out of the category of
unsuccessful experiments.
The next machine which we will examine is that of James Abbott,
which is strenuously claimed as an anticipation of the
complainant's machine, or of material parts thereof. Abbott resided
in Brimfield, Peoria County, Illinois. Models of his machine are in
evidence. [
Footnote 15] No
public description of it is produced. No patent was ever applied
for by Abbott. He made his first machine in 1846, having one frame
and two coulters. The seed was dropped behind the coulters, and the
wheels of the machine passed over it. The coulters would clog, and
he soon abandoned the machine. In 1848, he made another and put it
in operation. [
Footnote 16]
Instead of coulters, he now used runners, something in the form of
a sled runner, with wings behind to widen the furrow and make a
place for dropping the seed. One of the runners was produced on the
trial. It was made of wood and shod with iron. The machine had but
one frame, and only one wheel, which was in the middle between the
runners. On each side of the wheel were cams to operate L levers,
which worked into the bottom of the seed boxes and dropped the corn
behind the runners. The seed was covered by scrapers or wings which
followed the runners. Behind the wheel
Page 90 U. S. 212
and runners there was a platform on which the driver stood, and
by stepping backward or forward he could slightly elevate or
depress the runners. This machine was automatic, a mere drill, and
had nothing but the runner in common with Brown's machine.
Abbott then says:
"The next machine which I constructed was, according to the best
of my recollection, in the spring of 1852, certainly not later than
1853."
He then proceeds to describe the machine. It had but one frame,
and whilst it exhibited some of the same parts which are found in
Brown's machine, yet it is obviously a different machine from
Brown's, and intended as an automatic drill instead of a check row
planter. But as in our judgment the weight of the evidence (of
which considerable was taken) is that it was constructed
subsequently to Brown's, it is unnecessary to give it further
consideration.
Another machine much relied on by the appellees was that of
Kirkman, of Peoria County, Illinois, a farmer but formerly a
millwright and engineer. [
Footnote 17] He lived in the same neighborhood as Abbott,
and the latter, in his evidence, says that after he had made a
drawing of his last machine (above referred to), Kirkman was at his
house and took a rough sketch of the drawing, and soon after made a
machine nearly like it in which he had broad iron wheels. The
character of Kirkman's machine is very explicitly shown, exact
models of it and one of the actual runners being produced. It was
composed of a single frame standing on two runners in front and two
wheels following the runners in the rear. The seed was placed in
boxes or hoppers over the rear end of the runners, and was let down
to the furrow through a tube enclosed in the rear of the runners by
means of an automatic device operated by gearing connected with the
wheels. Between the wheels was a platform on which the driver sat
or stood. By stepping backward or forward on this platform and
changing the position as to the bearing on the axle of the
Page 90 U. S. 213
wheels, the machine could be tipped up or down in front so as to
raise or depress the runners. This action was facilitated by the
tongue's being freely attached by a bolt between the hounds so as
to admit of a hinged motion. A cross-bar screwed to the top of the
hounds above and the front cross-bar of the machine below the
tongue limited the movement thus produced and also regulated the
depth of furrow. In the machine as first constructed, a seat was
rigged in the rear of the platform for the driver, by moving on
which, backward and forward, the same tipping process could be
produced. This was afterwards abandoned.
It will thus be seen that Kirkman's machine had some of the
prominent features of Brown's. It differed from it in not being a
check row planter, and not planting in hills but in rows, and
acting automatically simply as a drill, and having but a single
frame.
Considerable evidence, much of it apparently conflicting, was
adduced as to the time when Kirkman's machine, or rather several
machines (for he built three at different times), were constructed.
[The court here stated and examined this testimony, as to date, and
continued.]
A review of the entire evidence on the subject leads us to the
conclusion that Kirkman's second machine, called the Wrigley
machine, was made in the early part of 1850; that he tried it that
spring unsuccessfully; that he then laid it by, and did not attempt
to use it again until the spring of 1852, after he had made a
material alteration in it -- which alteration was made after the
summer of 1851 -- and not completed, as it would seem from the
evidence of Kingsley, until the spring of 1852. This would make the
machine of Kirkman about contemporary with that of Brown's second
machine, which he completed and operated in the spring of 1852, but
would bring it, as a completed machine, subsequent to the
half-sized machine which Brown completed and operated in the spring
of 1851, and publicly exhibited in September of that year.
The machine referred to by Abbott as having been made by Kirkman
by the aid of drawings furnished by him, was
Page 90 U. S. 214
most probably the third machine made by Kirkman, in 1856, which
is the only one made by him having iron wheels.
The last machines relied on as antedating the appellant's are
those of Joab Brown, also of Peoria County, Illinois. [
Footnote 18] According to his
testimony, he was experimenting on the subject in 1849, 1850, and
1851. In 1849, he made a machine with one runner placed under a
plank. It bore no resemblance to the appellant's machine except as
to the runner, and it did not work satisfactorily. In the spring of
1850, he made a second machine, having two runners and two wheels
running behind them to cover the seed and a third wheel, larger
than the others, situated forward in the middle, for the purpose of
working the apparatus for dropping the seed. It was intended as a
check row corn planter, and was tried for that purpose, but failed,
and what was planted with it was planted only in single rows. It
was afterwards abandoned. As Brown says, "It became common stock in
my lumber yard." In the same year, 1850, Joab Brown made another
machine, or, as his son says, two of them, with two runners each,
but they had no wheels running behind the runners to cover the
corn. They had an iron shaft running through the hoppers, with an
apparatus for taking up and dropping the seed, and this shaft had a
wheel at either end, outside of the machine, for giving it a
revolving motion. This machine had a seat for the driver, but only
one frame, and the tongue was bolted fast to that, so that there
was no means of tilting the runners out of the ground. Joab Brown
says that he altered this machine in the spring of 1851 by changing
the seeding apparatus. He removed the shaft and substituted lever
bars with slides entering the hoppers, and an upright lever
extending above the seat for working the bars. He thus placed a
dropper as well as the driver on the seat. In 1853, he placed the
wheels so as to run behind the runners. As thus finally altered, it
bore some resemblance to the appellant's machine,
Page 90 U. S. 215
in certain particulars. It is true it had but a single frame,
with no hinged joint, and could not be tilted out of the ground;
the driver and dropper had to dismount in order to turn around;
nevertheless it had a dropping device worked by hand by an
attendant who dropped the seed in check rows, and had a seat for
both driver and dropper, and had runners and wheels running behind
them to cover the seed. It was not thus completed, however, until
1853, long after the construction of appellant's machine. In the
spring of 1851, Joab Brown made two other machines. One was a
two-rowed machine with a single frame, having two runners followed
by two rollers, but, as Joab Brown himself says, working
automatically "as a drill planting machine." "We left off the lever
entirely," he says, "and depended on the wheels to do their own
dropping." His son says that it was also arranged to be worked by a
hand lever by an attendant on the machine. A model was put in
evidence which, as the son says, represents substantially this
machine, but according to Joab Brown's own testimony, this model
represents the machine which was altered in 1853. Its features are
substantially as before stated. Affected by this degree of
uncertainty as to character and date, it must be received with
caution even on those points on which it presents resemblances to
the appellant's machine. Joab Brown constructed another machine in
the spring of 1851 which presents, as he considered, the final and
most perfect form of his inventions. It consisted of a single frame
with three runners and no wheels, a seat on the machine for the
driver and dropper, and an apparatus worked by a hand lever for
dropping the seed in check rows. A model of it was given in
evidence. Joab Brown applied for a patent for this machine December
31st, 1852, but subsequently withdrew the same. He says he
conceived the idea of the machine in the early part of the spring
of 1851, and completed it about the 1st of May, and used it for
planting corn, planting about two hundred acres that spring. There
is some evidence that this machine was made at an earlier date, but
the weight of evidence agrees with this testimony of Joab
Page 90 U. S. 216
Brown. Its likeness and unlikeness to the appellant's machine
are apparent from the above description. The apparatus for covering
the seed consisted of a fan-shaped flange or tail projecting behind
the runner. One of the persons who used it says that he had to
follow behind to cover the seed, some of which would remain
uncovered where the ground was uneven. Only the single machine
above mentioned was made until 1853, when Joab Brown says he had
about forty of them made and sold them to various parties. In a
letter to the Patent Office, of August 5th, 1853, urging his
application for a patent, he refers to this machine as being the
crowning result of seven years' experiments. He evidently regarded
his other machines as experiments, or at least as secondary in
importance and usefulness to the last machine.
A machine of one Farley, invented in January or February, 1853,
was introduced in the case for the purpose of showing that Brown's
improvement of placing the driver on the machine, which formed one
of the subjects of his second patent, had been anticipated. There
was a long platform on Earle's machine, the front part resting on
and fixed to the runners, the rear resting on the axle of covering
wheels following the runners. The driver rode on this platform, and
by stepping forward he could press the runners deeper into the
ground, and by stepping back he could raise them out of the ground,
using the wheels as a fulcrum. The bearing of this machine on some
of the reissued patents will be noted hereafter.
On the subject of the flipper valve (so called), the appellees
have introduced two machines, one by Charles Finn, for which he
applied for a patent in April, 1852, but which application was
rejected, and the other by Jarvis Case, for which he applied for a
patent December 9th, 1853.
These devices will be examined hereafter, when we come to
consider the claim for the flipper valve as contained in the
reissued patent No. 1095 (
see infra, page
90 U. S.
233).
We have thus gone over and explained, as well as the
Page 90 U. S. 217
subject will admit, the various machines and inventions which
constitute the history of the special art under consideration up to
the time that Brown's machine was produced. In the light of this
review, we are to determine the extent and character of his various
patents and claims, and how far they are valid or void.
It is very obvious at a glance that the claim of reissue No.
1037, which is for the construction of a shoe or runner for seed
planting machines generally, cannot be sustained. That device was
used long before Brown made his machine. Without adverting to
Thomas's cotton seed planter, it was contained in Todd's patent in
1843, and was used by James Abbott in 1848, by Kirkman in 1850, and
probably by Joab Brown in the same year and the year before. There
is nothing in the particular form and shape of the appellant's
runner which is sufficiently diverse from others that preceded it
to entitle it to the merit of an invention.
Most of the other claims are more complicated, and require more
careful consideration to understand their fair scope in view of
what had been accomplished before. It may be remarked in passing
that in our view, the several reissues are for things contained
within the machines and apparatus described in the original
patents; but whether they were anticipated by prior inventions or
are void for any other reason applicable to patents and claims
generally is still open. The question of fraud in obtaining these
reissues must be regarded as settled by the decision of the
Commissioner of Patents.
The first patent in the series of reissues is No. 1036, by which
is claimed as the invention of the appellant a
"seed planting machine, constructed principally of framework,
the front part of which is supported on not less than two runners
or shoes, with upward inclining edges, and the rear part supported
on not less than two wheels, the latter being arranged to follow
the former, substantially as and for the purpose set forth."
The machine is so constructed that an additional pair of wheels
may be attached to it for the purpose of dropping
Page 90 U. S. 218
the seed automatically where the nature of the soil is such as
to render this method admissible in check row planting. But with
that aspect of the machine we are not at present concerned except
as it affects the general description of the machine as a whole.
The specification describes the manner of its construction and
operation for both automatic planting and hand planting. It is in
its latter aspect that we shall principally examine it.
The last clause of the above claim,
"substantially as and
for the purpose set forth," throws us back to the
specification for a qualification of the claim and the several
elements of which the combination is composed. The thing patented
is not only, first, a seed planting machine, made principally of
framework, but secondly it is composed of two distinct parts;
thirdly, the front part is supported on two or more runners with
upward inclining edges; fourthly, the rear part is supported on two
or more wheels, arranged to follow the respective runners, and each
and all of these parts are to be thus constructed and combined
"substantially as and for the purpose set forth." That is to say,
the object and purpose of the machine as a seed planting machine is
explained to be to plant corn in check rows, so that it may be
cultivated both ways, and its construction is adapted to that end.
The devices used for effecting this purpose, both automatically and
by hand, are described in the specification, but they are claimed
in separate patents, and only affect the one in question as they
modify and affect the general structure of the machine. Again, the
object and the purpose of constructing the machine of framework in
two distinct parts, supported separately, one by the runners and
the other by the wheels, is expressed to be "so that the rollers
may rise and fall without disturbing the runners or so that the
runners may yield or move independently of the rollers." The
particular manner of connecting the parts, although described in
the specification, is the subject of a separate patent. Again, the
object and purpose of the runners and wheels or rollers, the latter
arranged to follow the former, is set forth, the former to make a
furrow for the seed, the
Page 90 U. S. 219
latter to "close up and press the earth down over the seeds."
The adaptation of the machine, and the several parts mentioned, to
these several objects and purposes is thus made a part of the
combination of elements called for and made requisite in the claim
under consideration.
The claim thus limited is considerably narrowed in its
operation. It is substantially for a combination of the material
parts of the entire machine, and no one can be said to infringe it
who does not use the entire combination.
The first question to settle is whether, as thus limited and
restricted, the patent is valid, or whether the invention as thus
patented was anticipated by prior inventions.
It is obvious that we may lay out of the question all seed
drills. They were not constructed for the specific purpose for
which this machine was constructed -- namely to plant corn in check
rows, and had not the apparatus adapted to such a purpose. The
plough-shaped drill of Todd, though it had a cutter under the front
part and roller drawn behind for covering the grain, was only a
step in the right direction. It was a mere drill, planting in
single rows, and not adapted to plant in check rows, and it was
handled and operated in an entirely different manner from
Brown's.
Earle's, Mumma's, and Remy & Kelly's inventions may also be
dismissed without observation. The description of them heretofore
given shows that they were mere drills, that they had no covering
wheels, and were not constructed for, or adapted to, the purpose
for which Brown's machine was made. Besides, as before seen, the
machine of Remy & Kelly was a mere experimental one, abandoned
by the inventors. We may also lay out of view Abbott's drill,
constructed in 1848, the only one that can by possibility be
brought into the case. That had no covering wheels, had but one
part or frame, and was not a check row planter. Kirkman's machine
also had but a single frame or part; was a mere drill, not planting
in check rows, nor even in hills. Besides, as a machine, it was
incomplete and unfinished until the alteration which was made in it
in 1852, when it was first rendered capable of practical use.
Page 90 U. S. 220
It is urged by the appellees that all those parts of Kirkman's
machine which were completed in 1850 and not subsequently altered
should be considered as perfected, although the machine as a whole
was not perfect and did not subserve the expectation of the
inventor until the alterations were made in the seeding apparatus
in 1852. It is undoubtedly true that a subsequent inventor could
not claim as his original and first invention the separate parts of
which Kirkman's machine consisted, and which worked satisfactorily
after the machine was perfected. This would prevent the appellant
from claiming as his invention the several parts of which Kirkman's
machine consisted; but it would not prevent him from claiming such
new combination of those parts with devices of his own as would
result in a useful and satisfactory machine adapted to the purposes
of its construction.
The machines of Joab Brown which are more or less relied on were
all composed of single frames entirely rigid. The machine with one
runner, constructed in 1849, was a failure, and is not pretended to
have been at all like the appellant's. The machine with two rollers
and one large wheel, constructed in 1850, was automatic, could only
plant in rows so as to be worked one way, and failed entirely as a
check row planter. The other machine or machines, constructed in
1850, had rollers, but these did not follow the runners until
altered in 1853, and were not used for covering the corn, but for
turning a shaft in the hoppers by which the seed was dropped. This
is clearly proven and is shown by their thickness, which was little
over an inch. They were abandoned for the three-rowed machine
without rollers, which was built in 1851 and for which Joab Brown
applied for a patent in December, 1852. It is apparent that none of
these machines anticipated the appellant's machine as containing
the particulars combined in the claim of the reissued patent No.
1036.
This patent, therefore, construed and limited in the manner
before stated, we hold to be valid.
Page 90 U. S. 221
The next question is whether, as thus construed, the patent is
infringed by the defendants. It needs but a glance at the defendant
Bergen's machine, a large model of which is produced in court, to
see that it has all the essential characteristics of the
appellant's machine. [
Footnote
19] It is a seed-planting machine made principally of
framework, composed of two distinct parts, the front part supported
on two runners or shoes, with upward inclining edges and the rear
part supported on two wheels, the latter being arranged to follow
the former, and the whole and each part constructed and put
together for the purpose and substantially in the manner as is done
in Brown's machine, and according to his specification. The only
pretense on which it can be claimed to be different is that the
"framework" of which it is constructed is not the kind of framework
described by Brown in his specification -- namely
"without gearing, without spoked wheels, and other expensive
fixtures, and resembling a drag or sled more than it does a
carriage or wagon in its main or general construction."
By this description, Brown was evidently attempting to show how
simply and cheaply the thing could be made, not that it was to be
confined to that specific form. It might as well be contended that
he intended to confine his invention to wood and that a machine
made of iron or other metal, though made in precisely the same
form, would not be an infringement, because it would not have the
same quality of cheapness and simplicity which he describes. In
fine, we do not understand Brown as limiting his invention to this
cheap form, but as showing how cheaply and simply it would bear to
be constructed. This, we think, is the fair meaning of his language
when taken in connection with the whole specification. A literal
construction is not to be adopted where it would be repugnant to
the manifest sense and reason of the instrument.
The machine of Selby, which is the subject of the suit of
Brown v. Selby, in the second case, has all the
Page 90 U. S. 222
material features above specified as contained in Bergen's.
[
Footnote 20] We have no
hesitation in saying that both machines are infringements of the
appellant's patent.
The next claim to be considered is that of reissue 1038. The
appellant describes the nature of the invention sought to be
secured by that patent as follows:
"The nature of this part of my invention consists in combining
with a seed planting machine constructed principally of framework,
and with not less than two runners and two wheels, a hinged joint
between the point of the tongue and the rear part of the machine
(or between what I term its ground supports), so that one part may,
by means of said hinge joint, be raised, lowered, adjusted, or
supported on the other part for purposes herein mentioned; meaning
by 'one part' and 'the other part' the part in advance and the part
in rear of said hinge joint."
The claim adopts nearly the same language, and is in the
following terms:
"What I claim under this patent is, in combination with a seed
planting machine, constructed principally of framework, with not
less than two runners and not less than two wheels, a hinged joint
between the point of the tongue and the rear part of the machine,
so that one part of the framework may be raised, lowered, adjusted,
or supported on the other part, substantially as described."
Understanding this claim as applying and confining to a seed
planting machine, consisting of two separate parts, with runners
under one part and rollers or wheels under the other, we do not
find in any of the machines produced to us this particular feature
of the hinged joint in combination with the elements referred to.
Kirkman's came the nearest to it, if we should designate as a
hinged joint the free connection of his tongue with his machine,
which was made by a common bolt between hounds, like those of a
wagon. But his machine lacked the elements of the two distinct
parts
Page 90 U. S. 223
or frames, which are essential in Brown's, and are implied in
the claim of this patent. The hinged joint as an element in the
combination with which it is connected, and of which it forms a
part, is useful and valuable. Without it, the machine would lack a
very material ingredient of its efficiency and usefulness. The
device of connecting and combining it with the two integral parts
of the machine, and thus connecting and combining those parts so as
to produce a useful effect, is one that may be properly denominated
invention, although the hinged joint itself may have existed in
other machines which perhaps suggested its use in this. Indeed the
hinged joint, in one form or another, is an old device. It is
exhibited in the reaches of a common wagon, whose fore wheels and
hind wheels, in passing over inequalities and obstructions, rise
and fall independently of each other. But in the corn planting
machine it has two specific and useful effects -- namely, in
securing the freedom of the runner from needless disturbance from
the rear part of the machine as it pursues its path along the
surface, making a furrow of uniform depth, and in enabling the
attendant to raise the part containing the runners out of the
ground with ease by means of a lever resting on the other part.
The appellees insist that this patent attempts to secure an old
device merely applied to a new use, and that the supposed new use
is analogous to that which the same device subserved in the machine
of Remy & Kelly. But we have seen that the machine of Remy
& Kelly was a mere experiment, abandoned by the inventors. And
the device in question is not claimed as an original invention, nor
as an improvement; it is only patented in combination with other
material elements of the machine to which it is attached as a part.
As an element in that combination alone is it claimed. The
combination expressed in the claim, viewed as an entirety and in
reference to its purposes and uses, is new and produces a new and
useful result. And it is no objection to the validity of a patent
for such a combination that some of the elements of which it is
composed are not new.
It is objected to several of the patents under consideration
Page 90 U. S. 224
that they do not state what parts of the machine patented are
new and what parts are old, and that they are therefore void. There
is nothing in the patent law which in terms requires the patentee
to do this. The language of the Act of 1836, under which these
patents were drawn, is that before any inventor shall receive a
patent for his invention or discovery he shall deliver a
description thereof and of the manner and process of making,
constructing, using, and compounding the same in such full, clear,
and exact terms as to enable a person skilled in the art to
reproduce it, and the act directs that the inventor shall
"particularly specify and point out the part, improvement, or
combination which he claims as his own invention or discovery."
This, of course, involves an elimination of what he claims as new
from what he admits to be old. But what can be a more explicit
declaration of what is new and what is old than the summary of the
patentee's claim at the close of the specification, if that is made
in clear and distinct terms, or in terms so clear and distinct as
to be fairly understood. It implies that all the rest is old, or,
if not old, that the applicant does not claim it so far as that
patent is concerned. If the patentee by his specification,
including the summary claim at its close, points out and
distinguishes what he claims as his own invention, it is all that
is required. That, if we can find it without difficulty or
embarrassment, is what he claims as new; the rest he impliedly, if
he does not expressly, disclaims as old. No particular form of
words is necessary if the meaning is clear.
These observations apply equally to patents for combinations and
patents for improvements. Where a patentee, after describing a
machine, claims as his intention a certain combination of elements,
or a certain device, or part of the machine, this is an implied
declaration, as conclusive, so far as that patent is concerned, as
if it were expressed, that the specific combination or thing
claimed is the only part which the patentee regards as new. True,
he or some other person may have a distinct patent for the portions
not covered by this; but that will speak for itself. So far as the
patent
Page 90 U. S. 225
in question is concerned, the remaining parts are old or common
and public.
The patents under consideration expressly declare for the most
part what the patentee claims, generally referring, it is true, to
the specification as embodying the substantial form of the
invention. Such a reference is proper if it does not introduce
confusion and uncertainty, and is often necessary for restraining
the too great generality or enlarging the literal narrowness of the
claim.
These remarks apply to reissue 1038, which we are now
considering. We regard it as sufficiently explicit, and we think
the patent is valid.
The next inquiry is whether this patent is infringed by the
appellees. It is apparent on inspection of the models before
referred to that they exhibit every requirement of the patent. They
clearly have, "in combination with a seed planting machine,
constructed principally of framework," and consisting of two
separate parts, with two runners under one part and two wheels
under the other, a hinged joint between the point of the tongue and
the rear of the machine, so that one part of the framework may be
raised, lowered, adjusted, or supported on the other part,
substantially as described in Brown's specification. In Selby's
machine, it is true, the hinge joint is not located at the same
point (the seed boxes) as in Brown's machine, but is at the front
point or toe of the runner. This is not a substantial difference.
The office, purpose, operation, and effect are the same as in
Brown's machine, and a change a little more or less backward or
forward does not change the substantial identity of the thing. The
same remark applies to the location of the hinge joint in Bergen's
machine, which is at the rear part of the front frame.
We do not see how it can be seriously contended that either of
the machines is not an infringement of this patent.
Reissue 1039 contains two claims, as follows:
"What I claim under this patent is a seed planting machine
wherein the seed dropping mechanism is operated by hand or
Page 90 U. S. 226
by an attendant, in contradistinction from 'mechanical
dropping,' the mounting of said attendant upon the machine, in such
a position that he may readily see the previously made marks upon
the ground, and operate the dropping mechanism to conform thereto,
substantially as herein set forth."
"I also claim, in combination with a seed planting machine,
composed substantially of framework, and upon which the person who
works the seed slides or valves sits or stands, a lever or its
equivalent by which a driver or second attendant may raise or lower
that part of the framework that carries the attendant and the
seeding devices, and thus ease the machine in passing over
intervening obstacles or in turning around, substantially as
described."
The first of these claims, if construed simply as claiming the
placing of the seed dropper on the machine, would probably be void
as claiming a mere result, irrespective of the means by which it is
accomplished. But if construed as claiming the accomplishment of
the result by substantially the means described in the
specification, it is free from that objection, and we ought to give
a favorable construction so as to sustain the patent if it can
fairly be done. By reading the claim in connection with the final
qualifying clause, thus, "the mounting of said attendant upon the
machine &c., substantially as herein set forth," the fair
construction would seem to include the means and manner of placing
him upon the machine. This view is corroborated by reference to the
body of the specification. "To enable others skilled in the art,"
says the patentee, "to make and use this invention, I will proceed
to describe the same, with reference to the drawings." He then
gives a detailed description of the seat or platform and its
relation to the other parts and the mode of occupying and using the
same. Construing the claim in this manner, is it then a valid
claim?
The only device of a similar character at all competing with it
in the matter of time was that used by Joab Brown in his machines
constructed or altered in the spring of 1851, the same spring in
which the appellant's machine was made. Which was first made it is
impossible for us from the evidence
Page 90 U. S. 227
to tell. Joab Brown, as well as the applicant, applied for a
patent for one of his machines having the arrangement of a seat for
the dropper. A patent was granted to the appellant, and none was
granted to Joab Brown. The Patent Office subsequently amended the
appellant's patent so as to include a claim for this very thing in
question. Under these circumstances, in the absence of conclusive
evidence to the contrary, the presumption is in favor of the
appellant. The burden of proof is on the party who sets up the
objection of "prior use" against the patent.
The second claim is for a combination, embracing, as one of its
elements, the arrangement or seat for the dropper last described,
and if that was new, this combination must also be new. And indeed
we shall look in vain in any previous machine for the lever here
described in the combination with which it is associated. Standing
by itself, the lever as well as the hinged joint was exhibited in
the experimental machine of Remy & Kelly. But as in our view
that machine was never brought into successful operation until
after Brown's invention was completed, we do not regard the fact
referred to as seriously affecting the question. The particular
combination described by the patent under consideration is new, and
the claim is valid.
This is the proper place, however, to notice an objection made
against the three patents conjointly -- namely reissues 1036, 1038,
and 1039. It is contended that they are for substantially the same
combination. We do not think that this is the fact. We regard the
reissue 1036 as a patent for the corn planting machine in outline,
comprising its most essential elements, namely constructed
principally of framework "substantially as and for the purpose set
forth" in the specification, containing the two frames or parts,
loosely or freely connected, one supported by the runners, the
other by the wheels following them, each having its distinct
purpose as indicated; and the seeding apparatus being arranged for
planting in check rows, whether automatically or by hand, the
method of each being shown in the specification. This patent does
not call for a hinged joint with its particular
Page 90 U. S. 228
appliances, or for a particular arrangement of seat or location
for the dropper. Reissue 1038 is for a different combination,
including the separate parts or frames, the runners, the wheels,
and lastly the hinged joint so arranged that one part of the
framework may be raised and lowered on the other part. Reissue 1039
claims first a seat or platform for the dropper, on the machine, so
that he may watch the cross rows and plant by them; secondly, in
addition thereto, the particular device of the lever, by which the
driver may raise or lower the framework that carries the
dropper.
This view of the relative objects of the three patents, as we
think, shows that they are not obnoxious to the objection
raised.
Having already examined the question of infringement as it
respects reissues 1036 and 1038, it remains to inquire whether the
appellants have infringed reissue 1039. Of this there can be no
doubt. In both of their machines the dropper is mounted on the
machine on a seat or platform arranged for that purpose, so as to
observe the cross rows, and drop by them; and in both, levers are
used (not precisely in the form of Brown's, but equivalent thereto,
and substantially the same), by which the driver may raise or lower
that part of the framework that carries the dropper and the seeding
devices. In Bergen's machine, this lever is the rear frame itself,
which is hinged to the rear part of the seeding frame, and is
operated by the driver by tilting it back and forward by his own
weight.
It is unnecessary to examine reissue 1040, as there is no
pretense that the appellees have infringed that patent.
The second group of reissues is next to be considered.
The first, No. 1091, after describing the entire machine as
finally perfected by Brown, prior to the issue of his second
patent, May 8th, 1855, has the following claims:
"First. In combination with a seed planting machine that is
operated by hand, the placing of both the driver and the person who
operates the seed slides or valves, upon the machine, in such
position as that each may attend to his particular duty
Page 90 U. S. 229
without interfering with that of the other, substantially as
described."
"I also claim, in combination with a seed planting machine, that
is operated by hand, and upon which the driver and the person who
works the seed slides or valves sit or stand, the so locating of
said seats or stands, as that the weight of one of the persons may
be used to counterbalance or overbalance the weight of the other,
for the purpose of more readily raising or lowering the seeding
apparatus, substantially as and for the purpose described."
These claims are analogous to those of reissue 1039, and the
first is anticipated by the machines of Joab Brown, constructed and
altered in the spring of 1851. It is not pretended that the
appellant placed both attendants on his machines until the spring
of 1853, when he placed the driver's seat, as well as the
dropper's, on the twelve machines which he manufactured and sold at
that time.
The second claim is for the relative location of the seats for
the driver and operator, such that one of them may overbalance the
weight of the other, and thus more readily raise or lower the
seeding apparatus. The claim is made only in reference to machines
operated by hand, on which both driver and operator sit or stand.
The seats themselves can be of little consequence in this
combination. The relative location of the attendants is the
material thing.
The process of tilting the frame of a seed planter on the wheels
as a fulcrum by shifting the weight of the driver standing or
sitting thereon was exhibited in Kirkman's machine in the spring of
1852 and in Farley's model, made in January and publicly deposited
in the Patent Office in February, 1853.
The appellant does not fix the date of his alleged improvement
earlier than the 20th of April, 1853, it being first introduced
into the twelve machines built in that year. He was anticipated,
therefore, by Kirkman and Farley so far as their machines were
identical with his. They do not come within the literal terms of
his claim which refers the improvement only to machines operated by
hand, and on which the operator
Page 90 U. S. 230
is carried. Kirkman and Farley had no operator, and of course
had none on their machines. Was this difference material? The
device was not altered by Brown substantially in form, operation,
or purpose. The only difference was the presence of the dropper on
the machine, making a greater weight to be raised than existed
before and applying it to a check row corn planter. It seems to us
that it was simply the application of an old device to a new
use.
We are of opinion, therefore, that reissue 1091 is void.
The claim of reissue 1092 is as follows:
"What I claim under this patent is, in combination with a seed
planting machine, operated by hand and having its seeding devices
forward of the center of the wheels and forward of the driver's
seat and a hinged connection, the locating of the seat in such
relation to a line drawn through the centers of the wheels or
ground supports as that the occupant of said seat may, by moving
himself, or throwing his weight forward or backward on his seat,
without the necessity of rising, walking, or standing over or near
the seeding devices, force the seeding apparatus into, or raise it
from, the ground, substantially as described."
After a careful consideration of this claim, we are brought to
the conclusion that the subject of it is not patentable. Prior
inventions having placed the driver on the machine, and having
constructed the platform in such manner that his movement backward
or forward would raise or lower the seeding apparatus, and the seat
itself not being claimed as new, it can hardly be contended that
the proper location of the seat for effecting the same object
required the exercise of inventive power.
The next patent, reissue 1093, after describing the machine as
before, with its runners and front frame, its wheels and rear
frame, its seat for the driver over the wheels, and contrivance for
raising and lowering the front frame, its seat for the dropper over
the runners, its hinged joint &c., concludes as follows:
"There are two points in this machine that have unvarying
positions or heights with regard to the ground,
viz., the
point
Page 90 U. S. 231
of the tongue, as its height is defined by horses' necks, to
which it is attached, and they standing of course upon the ground,
and the journals or axle of the covering or supporting wheels F F,
as they roll on the ground, and between these fixed points, the
hinged connection between the front and rear part of the machine,
is made so as to admit of raising or lowering the seeding
devices."
"Having thus fully described the nature and object of this part
of my invention, what I claim under this patent is, in combination
with a seed planting machine that has a hinged or yielding joint
between its fixed points of support, and with its seeding devices
between said points, the so connecting of the parts between said
fixed points of support as that that portion of the machine
carrying the seeding devices may be raised up out of the ground by
the attendant riding on the machine, and be carried by the tongue
or horses' necks, and the supporting wheels, substantially as and
for the purpose described."
The precise thing claimed here, after defining the combination
of which it is to form a part, is,
"the so connecting of the
parts" as to produce the result mentioned,
"substantially
as and for the purpose described." If this means to include
any and every connection of the parts which will produce the result
"substantially as described" (which result is to enable the
attendant, riding on the machine, to raise that portion of the
machine carrying the seeding devices out of the ground so as to be
carried on the horses' necks and the wheels), then the claim was
anticipated by Kirkman, for the connection of the parts in his
machine enabled the attendant, riding on the machine, to raise the
front part which carries the seeding apparatus, out of the ground,
when it would be suspended on the horses' necks and the wheels, and
he had a hinged joint between the fixed points of support. The same
might be said of the machine of Remy & Kelly, if it were to be
taken into consideration in determining this question. But if the
claim is to be construed as limited to the mode of connecting the
parts in the appellant's machine (being a hinged connection between
the two frames, and therefore different from Kirkman's machine),
and to the means by which the final result was accomplished --
namely by the
Page 90 U. S. 232
shifting of the driver's weight on the machine (and therefore
different from Remy & Kelly's), then this objection would be
obviated. But thus modified, it would substantially correspond with
reissue 1038, being simply for a mode of doing that, with the
driver on the machine, which was done before, under 1038, with the
driver on the ground, employing only in addition the mode of
operation used by Kirkman. In other respects the two combinations
would be precisely the same.
We are of opinion, therefore, that this patent cannot be
sustained.
The next patent, reissue 1094, is for a matter too frivolous to
form the subject of invention. It is simply for a peg or stop to
prevent the rear part of the machine from tipping so much as to
dump the driver on to the ground. No mechanic of any skill would
construct a machine of the character described without providing
some such arrangement. This patent is not sustained.
The latest patent of the series, reissue 1095, is for a peculiar
valve in the tube through which the seed is dropped to the ground,
called the flipper valve. When the machine is in motion, the time
taken for the seed to drop from the hopper to the ground, supposing
it to drop from a height of only 18 or 20 inches, would carry it
forward more than a foot after its discharge, and thus carry it
beyond the cross row. It became important, therefore, to drop the
seed from a point near the ground, or from the bottom of the tube
instead of the hopper, at each movement of the lever by the
operator. To do this required two movements, one for dropping the
seed from the hopper into the tube, the other for dropping it from
thence to the ground. By the device described in this patent, which
was noticed at the commencement of this opinion, both of these
movements of the seed take place at the same instant and by one
movement of the hand, the seed for one hill being dropped into the
ground at the same time that the seed for the next hill is dropped
into the tube.
The claim of the patent is in the following words:
"Having thus fully described my invention, what I claim
Page 90 U. S. 233
under this patent is so combining with a lever, by which both
may be operated, a valve or slide in the seed hopper and a valve in
the seed tube, as that a half motion of the lever by the operator
riding on the machine, by which they are operated, shall both open
and close the seed passages at regular periods, and pass measured
quantities only, substantially as described."
As before stated, the mode by which this was effected was by
placing in the seed tube a long slender valve composed of a slip of
metal, suspended on a pivot in the middle, so that when one end was
pushed forward the other end would be pushed backward. In this way
each movement of the upper extremity would let a charge of seed
into the tube on one side and keep it there, whilst the
simultaneous movement of the lower extremity would discharge the
previous charge on the other side.
The appellees endeavored to show that this apparatus was
anticipated by the inventions of Charles Finn and Jarvis Case,
before mentioned. [
Footnote
21] Finn says that he invented his machine in the summer or
fall of 1851. The seed dropping apparatus consisted of a vibrating
side or back to the seed tube, which required two movements, one
backward and the other forward, for dropping each hill of corn,
alternately opening and closing the tube. It was operated by levers
in connection with the valves in the hoppers. But each hill or
check row required one movement of the lever to let the seed into
the tube and a reverse movement to let it out. And this double
movement was repeated at every check row. Whereas, by Brown's
apparatus both results were accomplished by a single movement -- a
forward movement effecting a dropping for one check row and a
backward movement effecting it for the next. It is evident that
although there was a similarity between the two processes, they
were essentially different. It may be that Brown's is only an
improvement on the process used by Finn. If this be so, still it is
only the improvement -- that is, the machine as he uses it -- that
he claims by his patent.
Page 90 U. S. 234
The machine of Case, which he swears he constructed in March,
1853, is still more unlike Brown's in form, though less unlike in
operation. It has two independent valves, one in the hopper to let
the seed into the tube and one at the bottom of the tube to let it
out. These two valves are so connected by a chain or string that
both are opened at once. A spring is arranged to shut them as soon
as possible, so as to prevent the seed admitted above from escaping
below until the next movement of the lever. This apparatus, it is
true, requires but one movement of the hand for each dropping, the
spring performing the other. But the spring has to be drawn by the
force of the hand so as to have the necessary recoil. The same
strength has to be exerted by the operator as if he made both
movements with his hand. It is evident that this device is also
different from the appellant's. The two have similarities, but they
are essentially distinct machines.
But it is insisted that Brown, in 1860, admitted in a newspaper
article that the process in question was old. We have examined the
article, and according to our construction his declaration amounted
in substance to nothing more than that the principle of the double
drop was old (which was probably true) and that Case's application
of it was old (which may or may not be true), but it does not
contain or amount to an admission that his own peculiar process was
old.
We think, therefore, that this patent must be sustained.
The last patent is clearly infringed by the Selby machine. The
flipper valve and mode of operating it are almost precisely the
same.
In the case of the Bergen machine, it is contended that no lever
is used for moving the connecting rod backward and forward between
the hoppers. A fixed perpendicular handle is used instead of a
lever. The question is whether that is such an alteration as to
change the character of the combination. The object in view is to
put into the hand of the operator something by which he can move
the connecting rod, and consequently open the valves, the instant
he
Page 90 U. S. 235
comes to the cross-row. It is of no consequence in the world
whether the cross-bar moves in the same direction with his hand or
in the reverse direction. A lever working on a pivot or fulcrum
between the hand and the connecting rod would cause the latter to
move in the reverse direction to that of the hand; a lever working
on a pivot or fulcrum below or beyond the connecting rod would
cause the latter to move with the hand; so would a lever or handle
firmly fixed to the rod. The claim is for "a lever or its
equivalent," in combination with other things. Whilst in most cases
a mere handle is not the equivalent of a lever, because not capable
of performing the same functions, in this case it is an equivalent,
because it does perform precisely the same function in
substantially the same way.
In our judgment, both machines are an infringement of the
patent.
We have thus, with perhaps unnecessary detail, gone over and
considered the various questions and points raised in these cases.
The result is that the reissued patents, numbered respectively
1036, 1038, and 1039, of the first series, and 1095, of the second
series, are sustained as good and valid patents, and that the
appellees are infringing the same.
Decrees reversed and the causes remanded to be proceeded in
according to law.
[
Footnote 1]
Infra, pp.
90 U. S.
206-207.
[
Footnote 2]
Infra, pp.
90 U. S.
207-208.
[
Footnote 3]
Infra, p.
90 U. S.
208.
[
Footnote 4]
Infra, p.
90 U. S.
208.
[
Footnote 5]
Infra, pp.
90 U. S.
209-211.
[
Footnote 6]
Infra, pp.
90 U. S.
211-212.
[
Footnote 7]
Infra, pp.
90 U. S.
212-213.
[
Footnote 8]
Infra, pp.
90 U. S. 214-
216.
[
Footnote 9]
Infra, pp.
90 U. S.
233-234.
[
Footnote 10]
Supra, p.
90 U. S.
195.
[
Footnote 11]
See a drawing of it,
supra, p.
90 U. S. 190,
Fig. 7.
[
Footnote 12]
See a drawing of it,
supra, p.
90 U. S. 190,
Fig. 8.
[
Footnote 13]
See a drawing of it,
supra, p.
90 U. S. 191,
Fig. 9.
[
Footnote 14]
These rollers were shown only in the model. They do not appear
in the drawing on page
90 U. S.
191.
[
Footnote 15]
See a drawing of it,
supra, p.
90 U. S. 192,
Fig. 10.
[
Footnote 16]
See a drawing of it,
ib, Fig. 11.
[
Footnote 17]
See the drawing of it,
supra, p.
90 U. S. 193,
Fig. 12.
[
Footnote 18]
See a drawing of the principal one, the last,
supra, p.
90 U. S. 193,
Fig. 13.
[
Footnote 19]
See a drawing of it,
supra, p.
90 U. S. 196,
Fig. 16.
[
Footnote 20]
See a drawing of Selby's machine,
supra, p.
90 U. S. 197,
Fig. 18.
[
Footnote 21]
See drawings of these,
supra, p.
90 U. S. 200,
Figs. 23, 24, 25, and 26.
MR. JUSTICE CLIFFORD, with whom concurred JUSTICES MILLER and
DAVIS, dissenting.
Applicants for a patent are required to file in the Patent
Office a written description of their invention and of the manner
and process of making, constructing, and using the same in such
full, clear, concise, and exact terms as to enable any person
skilled in the art or science to which it appertains, or with which
it is most nearly connected, to make, construct, and use the same,
and in the case of a machine he must explain the principle thereof
and the best mode in which he has contemplated applying that
principle, so as to distinguish it from other inventions. Patents
granted without
Page 90 U. S. 236
a compliance with those conditions are invalid, as the express
requirement of the Act of Congress is that every inventor or
discoverer shall do so before he shall receive a patent for his
invention or discovery. [
Footnote
2/1]
Letters patent were granted to the complainant on the second of
August, 1853, to take effect from the second of February prior to
the date of the patent. Seed planter is the name of the invention
given in the patent, but in the introductory part of the
specification it is denominated "new and useful improvements in
seed planters for planting corn and smaller grains." Very minute
description is given of the machine and of the several devices of
which the machine is composed for the declared purpose of enabling
others skilled in the art to make and use the invention. Suffice it
to say, without entering into details, that of all the numerous
devices described as ingredients of the machine not one of them is
new, nor is it claimed that the patentee either invented the
machine or any one of the ingredients of which it is composed. What
he claims in that patent is as follows:
1. The oscillating horizontal wheels or distributors in the
bottom of the hopper, having slots and tubes of various sizes, in
combination with the stationary caps and pins for the discharge of
different kinds and qualities of seeds.
2. He also claims the arrangement of the covering rollers,
mounted as described, and performing the functions of covering the
seed, elevating the cutters in turning the machine, and also in
adjusting the cutters to different depths.
Tested by the descriptive portion of the specification the
better opinion is that the second claim is also for a combination,
but in the view taken of the case it is unimportant whether it be
regarded as a method of accomplishing the described result or as a
combination of the described ingredients to effect the same end, as
it is quite clear that the patentee does not claim that he is the
original and first inventor of anyone of the several devices of
which the entire machine is composed. Beyond all doubt, the
invention consisted
Page 90 U. S. 237
of the two combinations described in the respective claims, and
it is equally certain that the letters patent were in all respects
sufficient to secure the full enjoyment of the patented machine to
the patentee. Nevertheless the patentee surrendered the same, and
on the sixteenth of February, 1858, the same was reissued to him
with amended specification which contains only one claim. Instead
of claiming a combination of old ingredients, as in the original
patent, he claimed in the reissued patent a shoe for opening a
furrow, which has a convex edge in front and a seeding tube in its
rear end, so that it may cut through any grass, open out a furrow,
and hold it open until the seeds are deposited in the same,
substantially as set forth in the specification.
Like the original patent, the reissued patent was in form both
operative and valid, but inasmuch as it was not sufficiently
comprehensive to supersede all other improvements, the patentee
surrendered it for a second time and caused the original invention
to be reissued in five parts, embracing several claims, all of
which except one are involved in the present action.
Surrendered patents cease to be a cause of action from the
moment the surrender takes place, nor can the owner of the patent
recover, even for an infringement which preceded the surrender,
unless the claim for profits or damages had passed into judgment
before the surrender took place. Such a patent, though inoperative
as a cause of action, may be admitted as evidence to support or
disprove an issue that the reissued patent is not for the same
invention as the original. Reference may also be made to such
patent, as to a repealed statute, to aid in the construction of a
reissued patent if the latter is ambiguous, but it ceases to be
operative for any other purpose just as much so as a repealed
statute, and can never have the effect to enlarge or diminish the
operative words of a reissued patent.
Patents are public grants, and every person claiming any right
under such an instrument must show that the right claimed is
secured by the instrument; nor can he be benefited by showing that
the right claimed was secured by a
Page 90 U. S. 238
surrendered patent unless the reissued patent also secures the
same.
Viewed in the light of these suggestions, it is clear that the
rights of the complainant in this case depend solely upon the last
mentioned reissued patents, which are the patents mentioned in the
bill of complaint and which it is alleged by the complainant that
the respondents have infringed.
Defenses of various kinds are set up by the respondents to the
allegations of the bill of complaint, as follows:
1. That the complainant is not the original and first inventor
of the improvements described in the said several patents mentioned
in the bill of complaint.
2. They deny that the said new patents were issued in good
faith, and they allege that said reissued patents are not for the
same invention as that described and embodied either in the
original patent or in the prior reissues of the original
patent.
3. That the five last mentioned reissued letters patent are
severally invalid in law and void and of no effect, and that they
do not confer any such right or monopoly to the complainant as he
alleges and pretends to claim.
Enough has already been remarked to show that the original
patent was a combination of old ingredients by which the described
result was effected, or, in other words, that the patented
invention consisted in a new combination of the described
ingredients, every one of which was proved to be old. Old
ingredients are not the proper subjects of letters patent in any
other form than as a combination, for the plain reason that nothing
is the proper subject of a patent which is not both new and
useful.
Reissued patents must be for the same invention as the original,
and that condition is just as applicable to a second reissue as to
the first; nor is the second reissue relieved in any respect from
the full force of that condition in a case where the invention in
the reissue is divided into several parts.
Undoubtedly a new and useful combination consisting of old
ingredients may be the proper subject of letters patent if the
combination produces a new and useful result, but the
Page 90 U. S. 239
act of Congress does not authorize the patentee to surrender
such a patent and to reissue the same for the separate ingredients,
for the plain reason that the ingredients are old, and for the
additional reason that a patent for a separate ingredient is not
the same as the combination of several ingredients. [
Footnote 2/2]
Authorities to support these propositions are unnecessary as
they are self evident, nor is it necessary to do more than to refer
to the several claims of the several reissues under consideration
to show that everyone of those reissues are invalid, both for the
reason that the alleged improvement is old and also for the reason
that the invention embodied in each of the reissued patents is
different from the one secured by the original patent. Even the
Court here admits that each one of those reissues is "for a
distinct and separate part of the original invention alleged to
have been made by the complainant," full proof of which is
exhibited in the claims of the respective reissued patents.
[
Footnote 2/3] They are as
follows:
1. No. 1036. Appended to that patent is a claim much more
comprehensive than is to be found in either of the four other
patents, but it is plainly not a claim for a combination, nor one
for the whole machine, as was admitted in argument by the
complainant. What he there claims is a seed planting machine
constructed principally of framework, the front part of which is
supported on not less than two runners or shoes with upward
inclining edges, and the rear part is supported on not less than
two wheels, the latter being arranged to follow the former.
Evidently that claim is not intended to cover the whole machine;
nor would it benefit the complainant even if it could receive that
construction, as it is not pretended that he was the original and
first inventor of such a planting machine, nor that the
specification of the original patent professed to describe such an
original invention. Machines of the kind have existed for a very
long period before the
Page 90 U. S. 240
date of the complainant's patent, even for a period whereof the
memory of man runneth not to the contrary.
2. No. 1037. Nothing is claimed in this patent except the
construction of a shoe or runner for a seed planting machine, with
an upward inclining edge, with its point sufficiently raised so
that it will climb up and over, or cut and break through
intervening obstacles without materially forcing the earth
laterally at its front part, and widening towards the rear end so
as to open a furrow in which the seed to be planted may be
deposited, and long enough to furnish a support to the framework of
the machine. Explanations of that patent are certainly unnecessary,
as it is plain that the claim is for distinct and separate
ingredients of the combination embodied in the original patent.
3. No. 1038. Under this patent, the complainant claims a hinged
joint between the point of the tongue and the rear part of the
machine in combination with a seed planting machine, so that one
part of the framework may be raised, lowered, adjusted, and
supported on the other part. Nor is any argument necessary to show
that the claim of the patent is for one of the separate and
distinct ingredients of the combination embodied in the original
patent, all of which were confessedly old.
4. No. 1039. Two claims are made in this patent as follows:
(1) The seat for the attendant, or, in the language of the
claim, the mounting of the attendant upon the machine or seed
planter, wherein the seed dropping mechanism is operated by hand,
in such a position that he may readily see the previously made
marks upon the ground, and operate the dropping mechanism to
conform thereto.
(2) He also claims a lever, in combination with a seed planting
machine, or its equivalent, by which the driver or second attendant
may raise or lower that part of the framework that carries the
attendant and the seeding devices.
Manifestly the lever or its equivalent is the principal subject
matter of that claim, reference being made to certain other parts
of the seed planter merely as a means of describing the functions
to be performed by the lever, and the
Page 90 U. S. 241
results to be attained by its use; nor does it require any
argument to show that the lever is old, as it is matter of common
knowledge that it was well known long before the original patent of
the complainant was issued.
5. No. 1040. Two claims are also made by the patentee in this
patent:
(1) He claims a pair of auxiliary wheels and an axle, in
combination with the seed planting machine, carried mainly upon not
less than two runners and two covering wheels, for the double
purpose of taking a portion of the weight off from the runners and
the other wheels and for affording means of readily converting the
machine from a hand planter to an automatic seed sower.
(2) He also claims hanging the axle of the auxiliary wheels on
hinged or adjustable arms or levers, so that more or less of the
machine may be placed upon the auxiliary wheels.
All necessity for any remarks upon those claims is superseded by
the admission that they are not infringed by the respondents.
Four of the five reissues are included in the charge, and the
complainant also charges that the respondents have infringed five
other reissued patents held by him, which also secure to him the
exclusive right to the respective improvements therein described,
all of which appertain to the same machine for planting corn and
smaller grains.
Reference will first be made to the original patent from which
those several reissues are derived. Like the preceding reissued
patents, these were all derived from a single original patent,
issued May 8th, 1855, as appears by the record, which it is claimed
is an improvement upon the prior original patent.
Doubtless the patentee made some change in the original machine,
as appears by the descriptive portion of the specification -- as
for example, he enlarged the rollers, increased the length of the
side pieces, connected those pieces by cross pieces, and
constructed the frame in two parts, denominated front and rear,
placing the long seat for the driver on the front end, in order
that he may slide forward or back, to tilt the machinery when
necessary to deepen the furrow, or
Page 90 U. S. 242
to raise the front of the shoes from the ground, as occasion
calls for such a movement; but he invented no new ingredient or
device, nor did he introduce any element into the machine which was
not previously well known, all of which will sufficiently appear
from the claim when compared with the drawings, without reproducing
the details of the specification annexed to the patent. It contains
but a single specification in that regard, which, in substance and
effect, is as follows: what he claims is the runners, with their
valves, in combination with the hoppers and their plates, together
with the adjustment of the valves by means of levers and cams, and
the driver's weight, for the purpose of carrying and dropping seeds
by each vibration of the lever, and to regulate the depth of the
planting.
Tested by the description contained in the specification, it is
not doubted that the patent was a valid one for the described
combination, which beyond all doubt is composed of all ingredients.
Regarded as an invention for a combination, it may be regarded as
an improvement upon the original invention described in the first
mentioned patent, but it is quite clear that it contains no devices
except such as had long before been well known to mechanics.
Though operative and valid, still it was not satisfactory to the
complainant, because not sufficiently effective to shut out other
improvements for planting seeds. Accordingly, on the tenth of
November, 1857, he surrendered the patent and the same was on the
same day reissued to him with a single claim, as follows: he claims
the locating the seat for the driver in the rear of the supporting
axle in combination with the hinged frames or hinged joint, so that
as the driver moves forward or back, on his seat, the rear frame
may act as a lever for lowering or raising the seed part of the
machine, and thus throw it into or out of the ground, as
circumstances may require.
Probably it would be difficult to frame a claim which would more
exactly embody the true nature of the actual improvement, but still
it was not satisfactory to the complainant, and on the eleventh of
December, 1860, he surrendered
Page 90 U. S. 243
the patent, and the same was reissued to him in five separate
patents, as follows:
1. No. 1091. Two claims are contained in this patent as
follows:
(1) The placing of both the driver and the person who operates
the seed slides or valves in such a position on the seed planter
that each may attend to his particular duty without interfering
with that of the other.
(2) The so locating the seats or stands for those persons, in
combination with the machine, that the weight of one of the persons
may be used to counterbalance or overbalance the weight of the
other for the purpose of more readily raising or lowering the
seeding apparatus.
2. No. 1092. He claims in this patent the locating of the seat
in the machine in such relation to a line drawn through the center
of the wheels or ground supports that the occupant of the seat may,
by moving himself or throwing his weight forward or backward on his
seat, without the necessity of rising, walking, or standing over or
near the seeding devices, force the seeding apparatus into or raise
it from the ground.
3. No. 1093. His claim in this patent is the so connecting of
the parts between the fixed points in the described machine that
the portion of it carrying the seeding devices may be raised up out
of the ground by the attendant riding on the machine and be carried
by the tongue or horses' necks and the supporting wheels.
4. No. 1094. Where he claims a lock block or stop, in
combination with the machine, which prevents the rear part of the
frame from descending so low as to strike the ground or
inconvenience the occupant of the seat upon the rear portion of the
frame.
5. No. 1095. His claim in this patent is for a valve or slide in
the seed hopper and a valve in the seed tube, so combining with a
lever operating both that a half motion of the lever by the
operator riding on the machine, shall open and close the seed
passages at regular periods and pass only the right quantities.
Most of these ten reissued patents are for a single
ingredient
Page 90 U. S. 244
of the combinations described in the two original patents, and
every one of the others is for a separate and distinct part of one
or the other of those combinations; and the rule of decision set up
by the complaint is that he may mass these several patents just as
if the several ingredients were all described in one patent
embracing a claim for a combination of each and every of the
respective ingredients included in these ten several patents. Such
a theory, in my judgment, is simply absurd, and it is certain that
it finds no support in any decided case nor in any treatise upon
the rules and practice in patent cases.
Argument to show that such is the theory of the present suit is
scarcely necessary, as it is plainly shown in that part of the bill
of complaint which alleges that the improvements and inventions
contained in those several letters patent constitute separate parts
of an entire machine for seed planting, and that they may be
constructed for use and used in one machine in that department of
agriculture; and the complainant charges that the respondents have
constructed machines and used the same and vended the machines to
others to be used in imitation of all those improvements and
inventions except the improvement described in the reissued patent
No. 1040, which it is admitted is not infringed by the
respondents.
All the ingredients described in those ten reissued patents are
old, and it was admitted at the argument that no one of the patents
contains a claim for a combination of the several ingredients
described in the said several reissued patents, and that the case
rests on the basis that the several claims or some of them are
valid though not amounting to a combination.
Valid patents may be granted for a new combination of old
ingredients, provided it appears that the new combination produces
a new and useful result, but the invention in such a case consists
entirely in the new combination, and any other party may, if he
can, make a substantially different combination of the same
ingredients, or he may use any number of the ingredients less than
the whole, for the reason
Page 90 U. S. 245
that the monopoly of the patent extends only to the combination
and not to the ingredients separately considered. [
Footnote 2/4]
Patents may also be granted for a machine or for a separate and
distinct device, but it cannot be held that such a patent is valid
unless it be proved that the patentee is the original and first
inventor of the thing patented. [
Footnote 2/5]
None of the separate devices patented in those reissued patents
are new, and it being conceded that no one of the patents contains
any such a combination as that embodied in either of the original
patents, it is clear in my judgment that the decree of the circuit
court should be affirmed, unless the theory that these several
patents can be massed and be by judicial construction converted
from patents for separate and distinct ingredients into one patent
for a combination of all the ingredients described in the several
patents mentioned in the bill of complaint.
Courts of justice cannot accomplish such an object by
construction nor in any other mode, for several reasons:
(1) Because the province of construction is restricted to the
ascertainment of the meaning of the language employed in the
grant.
(2) Because the object can only be accomplished by the surrender
of these patents and by a reissue of the original patent, which is
a matter within the exclusive jurisdiction of the commissioner.
(3) Because each of these patents is a separate and distinct
grant.
(4) Because the court in construing such a grant is restricted
to the language employed by the granting power.
(5) Because several patents for several separate and distinct
devices do not in law amount to a patent for a combination, and,
therefore, cannot so be declared by a court of justice.
The CHIEF JUSTICE took no part in the judgment given in this
case, the argument having been had before he was appointed. The
case was held long under advisement, and the opinions were not
given to the Reporter until long after the judgment was
rendered.
[
Footnote 2/1]
16 Stat. at Large 201.
[
Footnote 2/2]
Gould v.
Rees, 15 Wall. 194.
[
Footnote 2/3]
Gill v. Wells,
22 Wall. 1.
[
Footnote 2/4]
Vance v.
Campbell, 1 Black 428;
Prouty
v. Ruggles, 16 Pet. 341.
[
Footnote 2/5]
Seymour v.
Osborne, 11 Wall. 355.