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Le Roy et al. v. Tatham et al.

The evidence being closed, the case was argued before the jury, after the court had given the charge, which will be presently stated. The jury found a verdict for the plaintiffs, which, when increased by the court, amounted to $11,748.60. The following bill of exceptions brought up the rulings of the court upon the several points made:

The evidence being.closed, the Judge charged the jury

That the first question which it was material to determine was, what was the invention or discovery of John and Charles Hanson, for which their patent had issued, as the precise character of that invention had been the subject of controversy on the trial.

The patentees state in their specification, that the invention consists in certain improvements upon, and additions to, machinery for making pipes of metal, capable of being pressed, as described in Burr's patent, dated April 11, 1820. They then describe Burr's apparatus, and the process by which the pipe was made by it, and state the defects of that plan, in consequence of which, they say, it failed to go into general use.

These defects they claim to have overcome and remedied; and state that they had found that lead, and some of its alloys, when just set, or short of flạidity, and under heat and great pressure, in a close vessel, would reunite, after a separation of its parts, as completely as if it had not been separated, or, in other words, that, under these circumstances, it could be welded.

That, on this discovery, and in reference to and in connection with it, they made a change in the machinery of Burr, by which they succeeded in making perfect pipes, and were enabled to use a bridge at the end of the cylinder and short core, and thus surmount the difficulty of the Burr machine.

They also state, that they do not claim any of the parts the cylinder, core, die, or bridge ; but that they claim the combination when used to form pipes of metal, under heat and pressure, in the way they have described.

There can be no doubt that, if this combination is new, and produces a new and useful result, it is the proper subject of a patent. The result is a new manufacture.

And even if the mere combination of machinery in the abstract is not new, still, if used and applied in connection with the practical development of a principle, newly discovered; producing a new and useful result, the subject is patentable. To which last opinion and decision, the counsel for the defendants did then and there except.

In this view, the improvement of the plaintiffs is the application of a combination of machinery to a new end, — to the

Le Roy et al. v. Tatham et al.

development and application of a new principle, resulting in a new and useful manufacture.

That the discovery of a new principle is not patentable; but it must be embodied and brought into operation by machinery, so as to produce a new and useful result.

Upon this view of the patent, it is an important question, for the jury to determine, from the evidence, whether the fact is established on which the alleged improvement is founded, that lead, in a set or semi-solid state, can thus be reunited or welded after separation.

The Judge here commented briefly upon the testimony, referring to the experiments which were testified to, and the results of which were exhibited to the jury, on the part of the plaintiffs and defendants, and, in continuation, stated :

That there was one experiment which was testified to by Mr. Keller, and the result of which was shown to the jury, which was made under circumstances that seem not to be subject to any misapprehension, and which, if he is not mistaken, and his testimony is correct, would seem to settle the question. But this was a question of fact, to be decided by the jury on the evidence. Hereupon, the counsel for the defendants excepted to this part of the charge of the Judges. — That it had been objected, that the improvement described in the patent of March 14, 1846, was different from that of March 29, 1841. The act only authorized a reissue for the same invention, the first specification being defective. — That he had compared the descriptions contained in the two patents; and, though the language was in some parts different, it would be found that the improvement was substantially the same, and that he therefore apprehended they would have no great difficulty in this branch of the case; to which the defendants' counsel excepted. — That it was also objected, that the plaintiff's' patent was invalid, for want of originality; that the invention had been before described in public works, and Bramah, Hague, Titus, Fox, and Potter, were relied on by the defendants. — That, in the view taken by the court, in the construction of the patent, it was not material whether the mere combinations of machinery referred to were similar to the combination used by the Hansons; because the originality did not consist in the novelty of the machinery, but in bringing a newly-discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made, as distinguished from cast pipe. Hereupon the defendants' counsel excepted.

That in the patents referred to, from the year 1997 to 1832, the combination which was claimed to be identical, was con: fessedly used for making pipe, by casting with fluid lead in a

Le Roy et al. v. Tatham et al.

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.

That it was further objected that the patentees have forfeited their rights, on account of having omitted to put and continue the invention on sale within eighteen months after the patent was granted, upon reasonable terms. The Judge here commented upon the testimony on this part of the case, and in continuation said:

That it was not essential, under the section of the statue referred to, 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 opinion the counsel for the defendants excepted.

That the defendants, Le Roy, and Smith, contend that they have not infringed the plaintiff's' patent; that they were but the purchasers of the pipe, and that Lowber was the manufacturer, under the agreement which has been read.

The Judge here referred to the evidence on this branch of the case, and said :

That if the contract made by the defendants with Lowber, was bonâ fide, and they had no connection with the manufacture of the articles, except to furnish lead and pay him a given price, deducting the expenses; and if the contract was in fact carried out and acted upon in that manner, then the defendants would not be liable. But if the agreement was only colorable, and was entered into for the purpose of deriving the benefit and profits of the business, without assuming the responsibility for the use of the invention, and for the purpose of throwing the responsibility on Lowber, who was insolvent, then they were as responsible as he was.

That aiding and assisting a person in carrying on the business and in operating the machinery, would implicate the parties so engaged. If, therefore, these defendants participated actively in conducting the machine, directing and supervising its operations; if the evidence establishes that position, then, as aiding and assisting, they are as responsible as Lowber, (to which last opinion and decision the defendants' counsel excepted.)

Le Roy et al. v. Tatham et al.

Prior to the giving of the preceding charge to the jury, the defendants' counsel requested the court to instruct them accord. ing to the following written proposition submitted; and his honor, after he delivered the said charge, took up the said propositions in their order, and gave the instructions to the jury, which are respectively subjoined thereto.

Proposition I. If the jury believe that the agreements executed on the 13th of April and 13th of May, 1846, by which Lowber, as manufacturer, was to make the pipe for Le Roy & Co., on his machine, at 55 cents the 100 pounds, was real and bona fide, on an actual dissolution of the partnership of Lowber & LeRoy, and not colorable to throw the responsibility of working the machine on Lowber alone, then the plaintiffs cannot recover.

Upon which, his honor said that he had already given all the instructions he deemed necessary on that point; the proposition was correct, and it was for the jury to decide that fact.

Proposition II. That even if the Tathams first introducea the pipe in question in this country, as an article of commerce, that does not give them any right to recover, unless the patents under which they claim were good and valid, for an invention not before known, used, or described in a public work.

Upon which his honor instructed the jury, as requested by the defendants' counsel.

Proposition III. That if the jury believe that the combination patented by the plaintiffs was before patented by Burroughs Titus, or any one else in this country, or patented and described in a well known public work abroad, the plaintiffs cannot recover, although such machines thus patented were not actually put in operation, so as to make pipe for the public.

Upon which his honor instructed the jury that he had already stated to them that the plaintiffs' invention did not consist in the mere combination of machinery, and, therefore, if those patents were for casting lead pipe, the point was not material; that it was not necessary that they would have made pipe for public use to defeat a subsequent patent. To which instruction, and refusal to instruct the jury as requested, the defendants' counsel excepted.

Proposition IV. That the Tatham patent is void on its face, the Burr machine having the entire combination, including heat and pressure, and the lead in a set state. The patent is void for claiming too much; should only have been for the improvement, viz. substituting the bridge and short core for the long core, and not for the whole combination.

His honor declined to give this instruction, to which the defendants' counsel excepted.

Le Roy et al. v. Tatha'm et al.

Proposition V. That the bridge and short core having been before patented in this country by Burroughs Titus, and also before used in other machines, no claim could be made for introducing into Burr's combination such bridge.

Upon which his honor instructed the jury as follows: Undoubtedly that is so, but that is not the plaintiffs' claim.

Proposition VI. That the state of the lead, when used as described in the plaintiff's specification, being a principle of nature, is not the subject of a patent, either alone or in combi. nation with the machine mentioned in that specification.

To which his honor stated, the first part of the proposition was correct, and the latter part not; and the defendants' counsel excepted.

Proposition VII. That the using of a metal in a certain state, or at a certain temperature, alone, or in combination with a machine, was not the subject of a patent.

To which his honor stated, I have already instructed the jury that the invention, as described by the Hansons, is a patentable subject; to which the defendants' counsel excepted.

Proposition VIII. That if the jury believe that the combination of cylinder, piston, bridge, short core, die, and chamber, under heat and pressure, was before patented in this country, by Burroughs Titus, then the plaintiffs cannot recover.

Whereupon, his honor instructed the jury, that novelty in the inere combination of the machinery was not essential to the plaintiffs' right to recover, except as connected with the development and application of the principle before mentioned; to which the defendants' counsel excepted.

Proposition IX. That if the jury believe that the same com.. bination of cylinder, piston, bridge, short core, die, and cham. ber, under heat and pressure, had before been patented in England, by Bramah, and published in a well known work, then the plaintiffs cannot recover.

His honor instructed the jury, that Bramah's patent and the Tathams' were not identical, and declined to instruct them as requested; to all which the defendants' counsel excepted.

Proposition X. That if the jury believed that the Burr, Bramah, Titus, and Hague machines, or either of them, were published to the world in well 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.

His honor instructed the jury, that he had explained to them his views on that part of the case, and declined to instruct them as requested, in the form of which the proposition was stated; and to which the defendants' counsel excepted.

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