CLIFFORD, Circuit Justice.
Power to grant letters-patent is conferred by an act of congress, and when that power has been lawfully exercised and a patent has been duly granted, it is of itself prima facie evidence that the patentee is the original and first inventor of that which is therein described and secured to him as his invention. Defective patents may in certain cases be surrendered and reissued for the same invention in a corrected form, and when that is done in conformity with the requirements of law, the same prima facie presumption arises in favor of the patentee as that which arose in his favor from the original patent before it was surrendered. Sufficient appears to show that the assignor of the complainants became and was the inventor of a new and useful improvement in gauge lathes, and that letters-patent were granted to him, as such inventor, for the same; that the patentee, for due cause shown, surrendered the original patent, and that a new patent, with an amended specification, was subsequently issued to the complainants for the same invention, which is the subject of the present controversy. Service was made, and the respondent appeared and filed an answer. Such defences only as were pressed at the argument will be noticed, of which the following are the most material:—
1. That the assignor of the complainants was not the original and first inventor of the patented improvement.
2. That the charge of infringement is not proved, that the respondent never made, used, or sold the patented improvement, and never in any way infringed the rights of the complainants under their patent.
Applicants for a patent are required by the patent act to give a short title or description of the invention or discovery, correctly indicating its nature and design, and pursuant to that requirement the original paten-tee stated in the specification that he had invented a new and useful machine for dressing whip-handles or stocks, or other articles of a like nature, adding thereto that the object of his invention was to properly round and shape the handles or stocks of whips, and other articles of like character.
Important explanations are superadded substantially as follows: that to accomplish the work correctly, the stock must travel longitudinally towards the cutting devices, or vice versa, in order that the material removed from the stock may be stripped or cut lengthwise of the same instead of around it, or transversely, so that the surface of the stock will be left smooth; and he adds that the proper form or shape must be given to the stock at the same time that its surface is being finished, and consequently that the cutting apparatus must be controlled by a guide corresponding to the taper or form of the stock or handle of the whip. Preceding, as those explanations do, the statement of the claims of the patentee, they show in concise terms the true nature and character of the organized machine, and it is obvious that he intended by those explanations to illustrate in a general way the mode of operation by which the several devices, when combined, will accomplish the described new and useful result.
Strong support to that proposition is found in the paragraph which follows those explanations, in which the patentee states that the invention consists chiefly in the combination of a holding and feeding mechanism, and revolving cutters having their axis of rotation at right angles, or nearly so, to the axis of the stock, meaning the whip-handle to be rounded and shaped, and the described guides for controlling the action of the cutters, meaning the described cutting apparatus of the machine, as fully explained in the specification and drawings. Machines of the kind must of course have « frame of a suitable form to support the other parts of the machine, as shown in the drawings. The machine in this case has a carriage mounted upon the frame, the carriage [726]*726being arranged to travel on guides or rails, for the purpose of giving a longitudinal motion to the stock. Standards are also mounted upon the carriage for supporting the mandrels which hold the stock in proper position to be guided to the cutters.
Devices of the kind for holding the stock are indispensable, and the specification shows that they are rotated by suitable gearing in such a manner as to keep the stock constantly revolving while it is under the action of the cutting apparatus. Means of attaching the stock to the mandrels are also shown, which is accompanied by clasping each end between a pair of levers, pivoted on a device called a head, mounted on the inner ends of the mandrels, which serves as a fulcrum to the levers and also causes them to revolve. Between the outer end of each pair of the levers there is arranged a cone, which can be longitudinally adjusted by a screw formed on the mandrels in a way to spread or release the outer ends of the levers, so as to close or open their inner ends, between which the opposite ends of the stock are held in proper position to the cutters. Suffice it to say, without entering further into the details, that every element of the machine, and its mode of operation, is given in the specification, confirming the remarks previously made, that the invention consists in the combination of the described mech- j anism for rounding and shaping stocks or ¡ handles for whips, or other articles of a like nature, including the described holding and feeding mechanism, together with 'the cutting apparatus, having its axis of rotation at right angles, or nearly so, to the axis of the stock, with the described guides for controlling and regulating the action of the cutters with their entire apparatus, as shown in the specification and drawings.
Five claims are annexed to the specification, the first two of which only will be reproduced, as it is not now claimed that the other three have been infringed:—
1. The combination, in a machine for shaping whip-stocks, of two rotating and adjustable clamps for holding the whip-stock, with revolving cutters, whose axis of rotation is at right angles to the axis of the stock, substantially as described for the object set forth.
2. The combination, in a machine for shaping whip-stocks, of revolving cutters, the adjustable and rotating clamps for holding and revolving whip-stocks, and the guides through which the stock is passed for firmly holding the stock while being dressed by the cutters as described.
Whip-handles or stocks are constructed in the rough before they are in a suitable condition to be dressed and smoothed, or rounded and shaped, by the machine described in the complainants’ patent, which is true, also, of the whip-stocks manufactured by the respondent.
Undressed whip-stocks of the kind in controversy are described by the respondent as composed of eleven pieces, as follows:—
1. A middle piece of wood, or rattan, called a wedge, to which is attached a spike at one end and a piece of whalebone at the other.
2. On this central core, or wedge, are laid four other pieces of rattan called sidings, which are half round, with one edge planed off so as to allow them to fit the wedge or centre piece.
3. Then there are four other pieces of rattan called chinks, shaped so as to fit the pieces of siding, to fill up the crevices between the siding pieces, and make the handle large enough for a whip-stock.
4. All these pieces being thus prepared, they are then glued or cemented together before the stock is in a suitable condition to be dressed and finished in the machine.
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CLIFFORD, Circuit Justice.
Power to grant letters-patent is conferred by an act of congress, and when that power has been lawfully exercised and a patent has been duly granted, it is of itself prima facie evidence that the patentee is the original and first inventor of that which is therein described and secured to him as his invention. Defective patents may in certain cases be surrendered and reissued for the same invention in a corrected form, and when that is done in conformity with the requirements of law, the same prima facie presumption arises in favor of the patentee as that which arose in his favor from the original patent before it was surrendered. Sufficient appears to show that the assignor of the complainants became and was the inventor of a new and useful improvement in gauge lathes, and that letters-patent were granted to him, as such inventor, for the same; that the patentee, for due cause shown, surrendered the original patent, and that a new patent, with an amended specification, was subsequently issued to the complainants for the same invention, which is the subject of the present controversy. Service was made, and the respondent appeared and filed an answer. Such defences only as were pressed at the argument will be noticed, of which the following are the most material:—
1. That the assignor of the complainants was not the original and first inventor of the patented improvement.
2. That the charge of infringement is not proved, that the respondent never made, used, or sold the patented improvement, and never in any way infringed the rights of the complainants under their patent.
Applicants for a patent are required by the patent act to give a short title or description of the invention or discovery, correctly indicating its nature and design, and pursuant to that requirement the original paten-tee stated in the specification that he had invented a new and useful machine for dressing whip-handles or stocks, or other articles of a like nature, adding thereto that the object of his invention was to properly round and shape the handles or stocks of whips, and other articles of like character.
Important explanations are superadded substantially as follows: that to accomplish the work correctly, the stock must travel longitudinally towards the cutting devices, or vice versa, in order that the material removed from the stock may be stripped or cut lengthwise of the same instead of around it, or transversely, so that the surface of the stock will be left smooth; and he adds that the proper form or shape must be given to the stock at the same time that its surface is being finished, and consequently that the cutting apparatus must be controlled by a guide corresponding to the taper or form of the stock or handle of the whip. Preceding, as those explanations do, the statement of the claims of the patentee, they show in concise terms the true nature and character of the organized machine, and it is obvious that he intended by those explanations to illustrate in a general way the mode of operation by which the several devices, when combined, will accomplish the described new and useful result.
Strong support to that proposition is found in the paragraph which follows those explanations, in which the patentee states that the invention consists chiefly in the combination of a holding and feeding mechanism, and revolving cutters having their axis of rotation at right angles, or nearly so, to the axis of the stock, meaning the whip-handle to be rounded and shaped, and the described guides for controlling the action of the cutters, meaning the described cutting apparatus of the machine, as fully explained in the specification and drawings. Machines of the kind must of course have « frame of a suitable form to support the other parts of the machine, as shown in the drawings. The machine in this case has a carriage mounted upon the frame, the carriage [726]*726being arranged to travel on guides or rails, for the purpose of giving a longitudinal motion to the stock. Standards are also mounted upon the carriage for supporting the mandrels which hold the stock in proper position to be guided to the cutters.
Devices of the kind for holding the stock are indispensable, and the specification shows that they are rotated by suitable gearing in such a manner as to keep the stock constantly revolving while it is under the action of the cutting apparatus. Means of attaching the stock to the mandrels are also shown, which is accompanied by clasping each end between a pair of levers, pivoted on a device called a head, mounted on the inner ends of the mandrels, which serves as a fulcrum to the levers and also causes them to revolve. Between the outer end of each pair of the levers there is arranged a cone, which can be longitudinally adjusted by a screw formed on the mandrels in a way to spread or release the outer ends of the levers, so as to close or open their inner ends, between which the opposite ends of the stock are held in proper position to the cutters. Suffice it to say, without entering further into the details, that every element of the machine, and its mode of operation, is given in the specification, confirming the remarks previously made, that the invention consists in the combination of the described mech- j anism for rounding and shaping stocks or ¡ handles for whips, or other articles of a like nature, including the described holding and feeding mechanism, together with 'the cutting apparatus, having its axis of rotation at right angles, or nearly so, to the axis of the stock, with the described guides for controlling and regulating the action of the cutters with their entire apparatus, as shown in the specification and drawings.
Five claims are annexed to the specification, the first two of which only will be reproduced, as it is not now claimed that the other three have been infringed:—
1. The combination, in a machine for shaping whip-stocks, of two rotating and adjustable clamps for holding the whip-stock, with revolving cutters, whose axis of rotation is at right angles to the axis of the stock, substantially as described for the object set forth.
2. The combination, in a machine for shaping whip-stocks, of revolving cutters, the adjustable and rotating clamps for holding and revolving whip-stocks, and the guides through which the stock is passed for firmly holding the stock while being dressed by the cutters as described.
Whip-handles or stocks are constructed in the rough before they are in a suitable condition to be dressed and smoothed, or rounded and shaped, by the machine described in the complainants’ patent, which is true, also, of the whip-stocks manufactured by the respondent.
Undressed whip-stocks of the kind in controversy are described by the respondent as composed of eleven pieces, as follows:—
1. A middle piece of wood, or rattan, called a wedge, to which is attached a spike at one end and a piece of whalebone at the other.
2. On this central core, or wedge, are laid four other pieces of rattan called sidings, which are half round, with one edge planed off so as to allow them to fit the wedge or centre piece.
3. Then there are four other pieces of rattan called chinks, shaped so as to fit the pieces of siding, to fill up the crevices between the siding pieces, and make the handle large enough for a whip-stock.
4. All these pieces being thus prepared, they are then glued or cemented together before the stock is in a suitable condition to be dressed and finished in the machine.
Stocks of the kind are composed of rattan, whalebone, and glue, besides the spike at butt-end. When constructed in the rough they are not fit for the market.
Four things are required of the machine in order to dress the rough stock, and make it salable as a finished article:—
1. It must have means for holding the stock during the operation of dressing the article.
2. It must have means of advancing and rotating the article at the same time.
3. Means of guiding the rough article must be furnished, so as to preserve its shape during the operation.
4. It must have a cutting apparatus, to reduce the circumference of the rough article from butt to tip, as it is advanced and rotated.
By referring to the specification, it appears that the patentee adopted for holáing devices two standards, to support two mandrels having a pair of levers which clasp each end of the whip-stock. Having devised means to hold the article, his next step was to provide an apparatus to advance the stock and cause it to rotate at the same time, which he accomplishes by a carriage travel-ling on rails and by a gearing causing the mandrels to revolve as the apparatus advances. Two notched plates are provided for guiding devices, sliding upon each other, so that when the stock is in the notches of the plates and between them, “they close upon the stock, and steady it under the cutting action.” Two upright revolving steel burr-cylinders are provided as reducing devices, and it must be admitted that they are admirably adapted to the accomplishment of the function, without risk of injury even to the most slender part of the stock.
Argument to show that the patented invention is one of merit and of a highly useful character is quite unnecessary, as the remarks already made are amply sufficient to demonstrate that proposition to every impartial and well-informed mind; but it must be remembered that it is not a patent for [727]*727the result, nor can it receive a construction ■which win shut out all other improvements. None of the elements or devices of the patent are claimed, nor do either of the claims, which it is alleged the respondent has infringed, warrant the construction that the original patentee was the original and first inventor of the entire machine. Instead of that, both the first and the second claims plainly proceed upon the ground that the invention is for a combination of old elements, and the words of the specification afford persuasive and convincing proof that ■such is the true theory of the patent, whether the question is tested by the specification or the claims which it is alleged have been infringed. Viewed in the light of these suggestions, it is clear that the invention consists chiefly in the combination of a holding and feeding mechanism, with revolving cutters. having their axis of rotation at right angles, or nearly so, to the axis of the stock, and of guides for directing and controlling the action of the cutters, as described in the specification and shown in the drawings.
Suppose that is so, stUI it is contended by the complainants, and well contended, that the patentee or owner of a patent for a combination is as much entitled to equivalents ■as the patentee or owner of any other class of inventions. Doubts at one time existed as to the correctness of that proposition, but it is now well settled in accordance with the views of the complainants. Gould v. Rees, 15 Wall. [82 U. S.] 194; Gill v. Wells, 22 Wall. [80 U. S.] 28.
Questions of the kind usually arise in comparing the machine of the defendant with that of the plaintiff, and the rule is, that if the defendant omits entirely one of the elements or ingredients of the patented combination without substituting any other in its place, he does not infringe the plaintiff’s patent; and if he substitutes another in place of the one omitted, which is new, or which performs a substantially different function, or, even if it is old, was not known at the date of the plaintiff’s patent as a proper substitute for the omitted element ■or ingredient, then the charge of infringement is not maintained. By an equivalent in such a case, it is meant that the element ■or ingredient, substituted for the one withdrawn performs the same function as the other, and that it was well known at the date of the patent in question as a proper substitute for the one omitted in the patented combination. Hence it follows that a party who merely substitutes another old element or ingredient for one of the elements ■or ingredients of a patented combination is ■an infringer, if the substitute performs the same function as the one omitted, and was well known at the date of the patent as a proper substitute for the element or ingredient employed in the patented combination. Roberts v. Harnden, [Case No. 11,903.] .Mere formal alterations of a combination in letters-patent do not constitute any defence to the charge of infringement, as the inventor of such an improvement is as much entitled to suppress every other combination of the same devices to produce the same result as the inventor of any other patented process or product. Examples of the kind frequently arise in suits for infringement, as where a spring is substituted for a lever to produce power, or where a weight is substituted for a spring to produce pressure, and many others, where the same rule may be applied.
Much discussion of the first defence is not required, as it is obvious that the evidence introduced by the respondent is insufficient to overcome the prima facie presumption arising from the patent that the assignor of the complainants was the original and first inventor of the improvement. Incomplete as the evidence is in respect to the Sacket machine, it is clear beyond all doubt that it cannot be held to support that defence. Taken as a whole, the evidence fails to satisfy the court tb.at the supposed invention was ever completed as an operative machine. Nor is the evidence sufficiently full and explicit to enable the court to understand what its construction was, or its precise mode of operation. Persistent efforts appear to have been made by the supposed inventor, to induce manufacturers in his neighborhood to adopt it, without success, and the proof is, that, in almost every instance in which it was tried, it split the whalebone, and that when it did not, it left it in a worse shape to finish by hand than it was before the stock was put into the machine.
These efforts to introduce the machine were made twenty years ago, and have not since been renewed, showing, to the satisfaction of the court, that it was a mere experiment, and that it was finally abandoned. Such a defence requires better evidence to support it, and, in the absence of such evidence, the defence must be overruled. Grant that, and stiff the respondent denies that he has ever made, used, or sold the patented improvement, which, in the view of the court, is the principal issue between the parties. Questions of th.e kind, where the invention is embodied in a machine, are usually best determined by a comparison of the machine made by the respondent with the mechanism described in the specification and drawings of the complainants’ patent. Very material aid in making that comparison has been derived in this case from the testimony of the expert- witness examined by the complainants.
Nothing can be plainer than th.e proposition that it was the object of the assignor of the complainants to construct a machine that would round and shape undressed whip-stocks and other similar articles with greater facility and with less expense than it could be accomplished by hand, all of which, [728]*728ha effected by the devices of the machine described in the specification and shown in the drawing-, and it is equally certain that the respondent desired to accomplish the same thing and nothing more, unless it was to change the form of the devices so as to avoid the charge of infringement. He knew what the devices were which were employed by the assignor of the complainants, and he was entirely familiar with the patented machine and its mode of operation. Years of experience had proved its utility and adaptation to accomplish the object for which it was constructed and patented. Beyond all question, it embodies a particular plan, and the evidence satisfies the court that the respondent borrowed every feature of his plan from the patented machine.
[NOTE. So far as ascertained, there are no-other reported cases directly involving this patent prior to 18S0.]
All agree that such a machine, to be successful, must have a holding and feeding mechanism, that it must have means to cause the stock to revolve as it advances, and that it must have revolving cutters with axis of rotation at right angles, or nearly so, to the axis of the stock, and that it must be provided with guides for controlling and regulating the cutters in order to keep the stock constantly revolving, while it is subjected to the cutting or rasping operation. Proof of conclusive character is found in the record that the object of the respondent in constructing his machine was the same as that of the assignor of the complainants, and the court is of the opinion that he accomplishes it by substantially the same means, Decided support to that proposition is derived from a comparison of the two machines and from the testimony of the expert witnesses.
Enough appears to show that the respondent adopted the same combination as that adopted by the assignor of the complainants, that is, that he provided means for holding, presenting, advancing, rotating and reducing the undressed stock, as is described in the specification and drawings of the patent. Changes were made by him in two of the necessary devices. Instead of burrs to scrape off the enamel of the rattans and whalebone, he uses numerous blades, sometimes as many as a hundred and twenty, that perform the same function as the burrs in the patented machine. Blades of the kind were first adopted by the original pat-entee, but he soon discarded them and substituted the burrs, which are much to be preferred. Formal change is also made in the clamping and advancing mechanism, by combining the two in one apparatus, That is, the respondent’s device is made to do two things instead of having the two tilings done by separate devices, the difference being that the assignor of the complainants clamps his stocks to a carriage and moves the carriage, whereas the respondent makes the clamps also serve as the propelling instrumentality. Suffice it to say that the expert examined by the complainants stares-that he finds in the model of the respondent what he regards as substantially the same-combination of devices and for precisely the same purpose as those specified and claimed in the first, and second claims of the complainants’ patent. Extended reasons are-given by the witness in support of the conclusion, but it is unnecessary to reprodúce-las testimony. It is fully corroborated by a comparison of the alleged infringing exhibit with the patented improvement. Mor-is it necessary to examine into the extent of tne infringement, as that will fall within the province of the master. Decree for the complainants for an account and for an injunction.