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Le Roy et al. v. Tatham et al.

Earl Dudley's patent for the use of pea or pit coal, in the manufacture of iron. 1 Carpmael, 15; Webster's Patent Cases, 14, S. C. - Nielson's patent for the hot air blast, in connection with common bituminous pit coal, in the manufacture of iron. 8 Mees. & Welsb. 806 to 825; A. D. 1841; Nielson v. Hartford, &c., Web. Pat. Ca. 295, 328, and 328 to 373; A. D. 1841; S. C. 374. — Crane's patent for the hot air blast, in connection with anthracite coal. Crane's patent, Web. Pat. Cas. 375; date 1836. Crane v. Price, &c.; Webs. Pat. Cas. 377, 393; A. D. 1812, S. C. 4 Mann. & Grang. 380; S. C. 43 Eng. Com. L. R. 301; S, C. 2d vol. Frank. J. for year 1851, p. 388; French, &c. v. Rogers, &c. 394 to 397, and cases there cited by the court. 6 Eng. Law and Equity Rep. 536, overruling 2 Carrington & Kirwan, cited vs. Leon. 43, 47, 52; Curtis, 81 a.; Webster, 229, note.

II. The second exception by the defendants' counsel is to the charge of the court, in relation to Mr. Keller's evidence.

It is difficult to see upon what ground this exception of the defendants to the charge of the court is founded. After remarking upon the character and weight of the fact testified to, the whole is submitted to the jury for their decision.

III. The third exception taken to the charge of the court is found in the next two paragraphs on the same page, and relates to the reissued patent. The same is repeated in the call of the defendants, in their eleventh proposition, upon which they ask the court to instruct the jury.

The substance of the charge, as given in both instances, is, that the language in one patent was in some parts different from that in the other, but the meaning was substantially the same in both. That the reissued patent must be for the same invention as the first; and the matter of fact was left to the jury.

IV. The next exception is to the charge of the court, is found at the top of the 420 page of the case, and is as follows:

“ That in the patents referred to, from the vear 1797 to 1832, the combination which was claimed to be identical, was confessedly used for making pipe, by casting with fluid lead in a mould, and after it was set, by the application of water, forcing it out.

" And the question is, whether any of these inventions are substantially the same as the plaintiffs’; whether, even, if by these modes, pipe had been successfully made for common use, it would have been made in the same manner as the Hansons'; to which opinion, the counsel for the defendants excepted.”

Whether the modes referred to by the court, of manufacturing pipe, were the same or different, was a question of fact left to



Le Roy et al v. Tatham et al.

the jury; and the court did not, by the manner of stating the point, withdraw it from the consideration of the jury.

V. The fifth exception relates to the charge of the court, as to the duty of the plaintiffs to put and keep the invention on sale on reasonable terms, and they say that it was not essential that the patentees should take active means for the purpose of putting their invention in market, and forcing a sale; but that they should at all times be ready to sell at a fair price, when a reasonable offer was made.

That it was for the jury to say whether it was put and continued on sale, under this view of the law - to which the counsel for the defendants excepted.

We insist that the court took a correct view of the statute, and properly submitted the question of fact to the jury; and that the exception is not well taken.

VI. The next exception in the order in which the defendar ts in error have noticed them, relates to the instructions of the court, in relation to the liability of Le Roy and Smith jointly, with the other defendant, Lowber.

It seems, to the counsel for the defendants in error, that the question was properly submitted to the jury, as a question of fact, how far Le Roy and Smith had made themselves liable with Lowber. The defendants in error insist that the exception to this part of the charge is not well taken.

VII. In answer to the fourth proposition, on which the court was requested to instruct the jury that Tatham's patent was void on its face, &c. We say that the charge of the court was correct. The patentees in Tatham's patent have pointed out clearly what they claim, and what they do not claim.

VIII. In their ninth proposition, the defendants requested the court to instruct the jury

“ That if they believed the same combination of cylinder, piston, bridge, short core, die, and chamber, under heat and pressure, had before been patented in England by Bramah, and published in a well known work, then the plaintiffs cannot recover."

Upon this proposition the court instructed the jury, inat Bramah's patent and the Tathams' were not identical; and declined to instruct the jury as requested. To which the counsel for the defendants excepted. This request by the defendants for the above instruction was based on the assumption of a fact not proved and not true, and was correctly refused.

IX. The defendants requested the court to instruct the jury according to.their tenth proposition, which is as follows "That if the jury believe that the Burr, Bramah, Titus, and Hague machines, or either of them, were published to the world in well

Le Roy et al. v. Tatham et al.

known public works, and had the same combination, in whole or in part, as the Hanson machine, up to a certain point, the Tathams' patent is void for claiming too much, viz., the whole combination; and the court thereupon instructed the jury, at they had explained their views on that part of the case, and declined to instruct them as requested in the form in which the proposition was stated." To which the counsel for the defendants excepted, and the defendants in error insist that this exception is not well taken.

X. The sixteenth proposition, on which the court was requested to instruct the jury, is in the following words, namely,–

“ That the jury are the sole and exclusive judges as to the questions of fact, whether the combination and process were the same in the plaintiffs' machine as was Bramah's, or in any other of the machines proved on the trial. And thereupon the court instructed the jury, that this was so undoubtedly; subject, however, to the principles of law as laid down in the preceding charge and instructions." To which the counsel for the defendants excepted.

The defendants in error insist that none of the exceptions aforesaid are well taken; and that said judgment should be affirmed, with costs and damages.

Mr. Justice MCLEAN delivered the opinion of the court.

This is a case on error, from the Circuit Court of the Southern District of New York.

The action was brought in the Circuit Court, to recover damages for an alleged infringement of a patent for new and useful improvements in machinery for making pipes and tubes from metallic substances.

The declaration alleged that John and Charles Hanson, of England, were the inventors of the improvements specified, on or prior to the 31st of August, 1837; that on the 10th of January, 1810, the Ilansons assigned to H. B. and B. Tatham, two of the defendants in error, the full and exclusive right to said improvements; that, on the 29th of March, 1811, letters-patent were granted for the improvements to the Tathams, as the assignees of the Ilansons; that, afterwards, H. B. and B. Tatham asigned to G. N. Tatham, the remaining defendant in error, an individed third part of the patent.

On the 14th of March, 1846, the said letters-patent were surrendered, on the ground that the specifications of the improvements claimed were defective, and a new patent was 'issued, which granted to the patentees, their heirs, &c., for the term of fourteen years, from the 31st of August, 1837, the exclusive right to make and vend the improvements secured. The

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declaration states, the patent was of the value of fifty thousand dollars; and that the defendants below had made and vended lead pipe to the amount of two thousand tons, in violation of the patent, and to the injury of the plaintiffs twenty thousand dollars.

The defendants pleaded not guilty; the defendant Lowber did not join in the plea, but permitted judgment to be entered against him by default. 'On the trial, certain bills of exceptions were taken to the instructions of the court to the jury, on which errors are assigned.

The schedule, which is annexed to the patent, and forms a part of it, states that the invention consists “in certain improvements upon, and additions to, the machinery used for manufacturing pipes and tubes from lead or tin, or an alloy of soft metals capable of being forced, by great pressure, from out of a receiver, through or between apertures, dies, and cores, when in a set or solid state, set forth in the specification of a patent granted to Thomas Burr, of Shrewsbury, in Shropshire, Eng. land, dated the 11th of April, 1820.” After describing Burr's machine, its defects, and the improvements made on it as claimed, the patentees say, “ Pipes thus made are found to possess great solidity and unusual strength, and a fine uniformity of thickness and accuracy of bore is arrived at, such as, it is believed, has never before been attained by any other machinery.”

“ The essential difference in the character of this pipe, which distinguishes it, as well as that contemplated by Thomas Burr, from all other heretofore known or attempted, is that it is wrought under heat, by pressure and constriction, from set metal, and that it is not a casting formed in a mould."

And they declare, “ We do not claim as our invention and improvement, any, of the parts of the above-described machinery, independently of its arrangement and combination above set forth. What we do claim as our invention, and desire to secure, is, the combination of the following parts above described, to wit: the core and bridge, or guide-piece, with the cylinder, the piston, the chamber and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same.”

The plaintiffs gave in evidence certain agreements between the defendants, showing the manufacture of lead pipe by the defendant Lowber, for the defendants Le Roy and Smith. And also evidence tending to prove that the said John Hanson and Charles Hanson were the original and first inventors of the improvement described in the said letters-patent; that the invention and discovery therein described was new and useful; that the lead pipe manufactured thereby, was superior in quality

Le Roy et al. v. Tatham et al.

and strength, capable of resisting much greater pressure, and more free from defects than any pipe before made ; that in all the modes of making lead pipe, previously known and in use, it could be made only in short pieces, but that by this improved mode it could be made of any required length, and also of any required size; and that the introduction of lead pipe, made in the mode described, had superseded the use of that made by any of the modes before in use, and that it was also furnished at a less price."

“And the plaintiffs also gave evidence tending to prove that lead, when recently become set, and while under heat and extreme pressure in a close vessel, would reunite perfectly, after a separation of its parts; and that in the process described in the said patent, lead pipe was manufactured by being thus separated and reunited; and that the said John and Charles Hanson were the first and original discoverers thereof; and that such discovery, and its reduction to a practical result in the mode described in said letters-patent, was useful and important."

“And the plaintiffs also gave evidence, conducing to prove that the improvement, described in the letters-patent, was the same invention and discovery which had been made by the said John and Charles Hanson, and for which letters-patent had been granted to them in England, and subsequently in this country, to the Tathams, as recited in the letters-patent."

“And the plaintiffs also gave evidence conducing to prove that they had been ready and willing, and had offered to sell the said invention, within eighteen months succeeding the issuing of said letters-patent to them, and also since; and had, within the said eighteen months, sold the same for a large portion of the United States."

The defendants' counsel then read in evidence from the .“ Repertory of Arts," vol. 16, page 3!1, the description of the patent to the Hansons, dated August 31, 1837. They also read in evidence the patent issued upon the application of the plaintiffs to the Patent Office, containing another specification, which was annexed to the patent surrendered. And also they read the specification of Thomas Burr's patent, of April 11, 1820. Also a patent granted to George W. Potter, described in the 12th “ Franklin Journal of Arts," rubhshed in 1833; they also read the specification of a patent granted in England, to Bush and Harvey, on December 5th, 1817; and also the specification of a patent granted in England to Joseph Bramah, October 31st, 1797.

Evidence was also given, to show that the combination of machinery for making lead pipe, described in public works as

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