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Le Roy et al. v. Tatham et al

Proposition XI. That the reissue of the patent of 1846, on which alone the plaintiffs can claim, was not warranted by the patent of 1811, it being for a different, and not the same inven. tion, misdescribed by inadvertence, accident, or mistake; and, in fact, was a new patent, under color of a reissue.

That if the jury believe that the reissue of 1816 was for a different invention from the patent of 1811, and not for the same invention, misdescribed by inadvertence, accident, or mistake, then the plaintiffs cannot recover.

His honor declined to instruct the jury according to the first branch of this proposition, to which the defendants' counsel excepted; but did instruct them in the affirmative, upon the last branch thereof.

Proposition XII. That if the jury believe that the combination patented, was before described in some well known public work, either in this country or in England, the plaintiffs cannot recover, although such machine, or the pipe made by it, was never introduced in this country.

Upon which his honor instructed the jury in the affirmative.

Proposition XIII. If the jury believe that the combination claimed was before known or used, to make lead pipe, by others than the Hansons or the Tathams, the plaintiff's are not entitled to recover, no matter how limited such knowledge or use was, if the invention was not kept secret.

Upon which his honor instructed the jury in the affirmative.

Proposition XIV. That if the Maccaroni machine, or the Busk and Harvey clay-pipe machine, contained the same combination as the plaintiffs machine, that the plaintiffs cannot recover, by reason of applying the same combination to a new use.

Which instructions his honor declined to give, and stated that he had explained to them his views on that subject; and the defendants' counsel excepted.

Proposition XV. That if the jury believe that Mr. Lowber's machine was used by his men when the lead was in a fluid, and not in a set, or solid state, then there was no infringement, and the plaintiffs cannot recover, if the plaintiffs' patent were valid.

Upon which his honor instructed the jury in the affirmative.

Proposition XVI. That the jury are the sole and exclusive judges, as questions of fact, whether the combination and process were the same in plaintiffs' machine as was in Bramah's, or in any other of the machines proved on the trial.

Upon which his honor charged the jury that this was so undoubtedly, subject, however, to the principles of law, as laid down in his preceding charge and instructions; to which the defendants' counsel excepted.

Le Roy et al. v. Tatham et al.

Proposition XVII. That if the jury believe that the lead, when it may be successfully used to make pipe with plaintiffs' machine, must not be in a set or solid state, as described in their specification, and that it can only be thus used in a fluid or pasty state, then that the patent is void, and the jury should find for the defendants, on the ground that the specification does not fairly and fully describe the nature of the invention claimed, nor the condition in which the lead should be used, so as to enable the public to ascertain the true nature of the invention, the manner of using the machine, and the condition in which the lead ought to be used.

Which instruction his honor answered in the affirmative.

The jury then retired to consider their verdict, under the said charge and instructions; and subsequently, on the 25th day of May, 1819, returned into court with a verdict for the said plaintiffs for $11,394 damages, and six cents costs.

And, inasmuch as the said several matters aforesaid, do not appear by the record of the said verdict, the said defendants' counsel did then and there request his honor, the said Judge, to put his seal to this bill of exceptions, containing the said several matters aforesaid; and his honor, the said Judge, did, in pursuance of the said request, and of the statute in such case made and provided, put his seal to this bill of exceptions, containing the said several matters aforesaid, at the city of New York, aforesaid, the same 25th day of May, 1849. S. Nelson.

The case was argued by Mr. Gillett and Mr. Noyes, with whom was Mr. Barbour, for the plaintiffs in error, and by Mr. Cutting and Mr. Staples, for the defendants in error,

The points made by the counsel for the plaintiffs in error, were the following

1. In construing a patent, and deciding what are the inventions patented thereby, the summing up is conclusive. Nothing is patented but what is expressly claimed. Moody v. Fiske, z Mason, 112, 118; Rex v. Cutler, 1 Starkie, R. 354; Davies on Patents, 398, 404; Bovil v. Moore, 2 Marsh. R. 211; Wyeth v. Stone, 1 Story, R. 285; Hovey v. Stevens, 3 W. & M. 17.

2. What is described in a patent, and not claimed, whether invented by the patentee or not, is dedicated to the public, and cannot be afterwards claimed, as a part of his patent, in a reis., sue, or otherwise. Battin v. Taggart, Judges Kane and Grier, September 10, 1851; 6th section of act of 1836; Mellus v. Silsbee, 4 Mason, 111; Grant v. Raymond, 6 Pet. 218; Shaw v. Cooper, 7 Pet. 292, 322, 323; Pennock v. Dialogue, 2 Pet. 1, 16.

3. A patent void in part, is void in whole, except when other.

Lo Roy et al. v. Tatham et al.

wise provided by statute. Wyeth v. Stone, 1 Story, R. 285, 273 - 293 -4; Moody v. Fiske, 2 Mason, 118, 119; Woodcock v. Parker, 1 Gall. 438; Evans v. Eaton, 7 Wheat. 356 ; 5 Cond. R. 302, 314; Bovil v. Moore, Davies's Patents, 398; Id. 2 Mar. shall, 211; Hill v. Thompson, 3 B. Moore, 244; Bevinton v. Hawks, 4 B. & Ald. 541; Saunders v. Aston, 3 B. & Ald. 881 ; Kay v. Marshall, 5 Bing. N. C. 492; Gibson v. Brand, 4 M. & Gr. 178; McFarlane v. Price, 1 Starkie, 199; Minton v. Moore, 1 Nev. & P. 595; Rex v. Cutler, 1 Starkie, R. 359.

4. The Judge was bound to present to the consideration of the jury, as a question of fact, in the words of the statute, whether the patentee, being an alien, “ had failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, the invention for which the patent issued.” Tatham and others v. Loring, decision by Judge Story on this patent, cited on brief.

5. It was error in the Judge to instruct the jury that he had examined the surrendered and reissued patent, and found the improvement the same. He should have submitted the question, as one of fact, to the jury, for them to determine, upon the evidence, of the weight of which they were the exclusive judges. It was also error to instruct them that Brannah's and Tatham's patent were not identical. That was a question for the jury. Curtis, sec. 381 ; Carver v. Braintree, 2 Story, R. 432; Stimpson v. West Chester Railroad Co. 4 Howard, 381.

6. The question, whether the combination had been previously patented, or described in a printed publication, was one of fact, which should have been submitted to the jury.

7. Applying an old machine to a new use, or to produce a new result, is not the subject of a lawful patent. Boulton v. 1 Bull, 2 H. Bl. 487; Lash v. Hague, Web. Pat. 207; Crane v. Price, 4 Mann. & Grang. 580; Huddart v. Grainshaw, Web. Pat. 8; Howe v. Abbott, 2 Story, R. 190, 193; Bean v. Smallwood, 2 Story, R. 408, 410; Hovey 1. Stevens, 1 Wood. & M. R. 290, 297, 298; Kay v. Marshall, 5 Bing. N. C. 492, (35 Com. Eaw R. p. 194, 197, 198); Gibson v. Brand, 4 Mann. & Grang. 179, (43 Com. Law, 100, 110); Hotchkiss v. Greenwood, 11 Howard, 248, 266 ; Curtis, 8 26, 27.

8. Making an addition to an old combination does not authorize a patent for the whole combination. Such a patent would be broader than the invention, and void.

Act 1836, sec. 6. Hindmarch on Pat. 181, 190, and cases cited; Basil v. Gibbs, Davies's Pat. 398, 413; Whittemore v. Cutler, 1 Gall. 478; Barrett v. Hall, 1 Mason, 417, 474; Moody v. Fiske, 2 Mason, 117; Prouty v. Draper, 1 Story, R. 568; Hove v. Abbott, 2 Story, R. 190; Brooks v. Jenkins, 3 McLean, 433;

which showing an old subject of ae, Web. Patrainshaw, Small

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Le Roy et al. v. Tatham et al

Evans v. Eaton, 1 Pet. C. C. R. 322; Curtis, sect. 8, 9, 10, 11; Brooks v. Bicknell, 4 McLean, 64, 73; Root v. Ball, 4 McLean, 177, 180; Parker v. Haworth, 4 McLean, 370, 373;

Prouty v. Ruggles, 16 Pet. 336, 341; Evans v. Eaton, 7 Wheat. 356; 5 Cond. R. 302, 314.

9. The plaintiffs, Henry B. and Benjamir Tatham, not being inventors, were not authorized to surrender the patent granted to them as assignees, and receive a reissued patent thereon. Patent act of 1837, sec. 6.

10. The reissued patent is void, because issued to a party who was neither an original inventor, nor his assignee. Act of 1837, sec. 6.

11. Neither a principle nor an effect can be patented, but a patent must be for a mode of embodying the former to produce the latter, invented by the patentee. Kemper's case, by Chief Justice Cranch, in Curtis on Pat. 500; Wyeth v. Stone, 1 Story, R. 285; Hill v. Thompson, 8 Taunton, 375; S. C. 4 Com. L. Å. 151; Brunton v. Hawks, 4 Barn. & Ald. 541; S. C. 6 Com. L. R. 509; Moody v. Fiske, 2 Mason, 118; Whittemore v. Cutler, 1 Gall. 478, 480; Stone v. Sprague, 1 Storv, R. 270, 272; Blanchard v. Sprague, 3 Sumner, 535, 540; S. C. 2 Story, R. 164, 194; Howe v. Abbott, 2 Story, R. 194; Smith v. Downing, decided in 1850 by Judge Woodbury; Detmould v. Reeves, Grier and Kane, Judges, 1851; Boulton v. Watt, 2 H. Bl. 453; S. C. Davis on Pat. 162, 192.

The counsel for the defendants in error made the following points:

No exception was taken to the admission or exclusion of testimony; but solely to the Judge's charge.

The invention for which the patent was granted consisted in the discovery, that, under certain conditions, and by the use and application of certain methods, lead, and some of its alloys, while in a set state, could, after being separated into parts, be re-united and welded, and thus formed into pipe; and also of the mode of doing this; producing thereby a new article of manufacture, wrought lead pipe-avoiding the objections which had always prevented success in casting pipe; and by this discovery overcoming the defects of Burr's method, on which this was an improvement.;

The patentees, in describing the invention, say that they “have found from experience that lead and some of its alloys, when recently become set, or in a condition just short of fluidity, being still under heat and extreme pressure, in a close vessel, will reunite perfectly after a separation of its parts," and that, therefore, they construct their machinery as follows - ard

Le Roy et.al. v. Tatham et al.

then proceed to describe the machinery or apparatus, as adapted by them to this discovery, and by which they produce the practical result above stated.

After describing the apparatus and the modes of using it, the patentees repeat, “ that the remarkable feature of their invention is, that soft metals, when in a set state, being yet under heat can be made, by extreme pressure, to reunite perfectly, around a core after a separation, and thus be formed into strong pipes or tubes."

And “that the essential difference in the. character of this pipe, distinguishing it from all others before made, was, that it was wrought under heat by pressure and constriction from set metal; and that it is not a casting formed in a mould."

And they close by claiming, as their invention, “the combination described by them, when used to form pipes of metal under heat and pressure in the manner set forth."

The Judge, in his charge, in commenting on the patent, states the invention to be substantially as above stated; and to this construction and view of the patent, no exception was taken by the defendants,

The court then proceed further to instruct the jury, and in answer to certain propositions submitted by the plaintiffs in error for the consideration of the court.

I. The first proposition laid down by the court, is, that the mere combination of machinery, not new, in the abstract, when combined with and applied to the practical development of a new principle, to produce a new and useful result, may be the subject'of a valid patent. This principle is repeated several times, in different connections, in the course of the charge to the jury; and as often excepted to by the counsel for the defendants.

The counsel for the defendants in error, insist that the above position is correct, and supported by principle, by precedent, and by practice.

1. The position is supported by principle, founded on the statutes giving patents to inventors. He who discovers a new principle, and points out the means of applying it, to produce a new and useful result, comes within the settled construction of the English act, giving a patent for the sole working of any manner of new manufactures. See 6th section of the act 21 James 1, (1623.) By our patent law, any person, having invented or discovered any new manufacture, &c., is entitled to a patent. See 6th section of the act 4th July, 1836. The term new manufacture includes not only the thing produced, but the means of producing it.

2. This principle is supported by authority. Curtis, Pat. § 9. $$ 71 to 91; also chap. 2, pp. 57 to 94, and cases there cited

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