LEAVITT, District Judge.
Charge of the court:
This suit, gentlemen, is brought by the plaintiffs as the assignees of the administrator of Thomas Blanchard.
It is based on a patent for an improvement in bending wood, issued to said Blanchard, December 18, 1849, reissued to him November 15, 1S59, and extended December 18, 18(53, and assigned to plaintiffs. The declaration alleges that the defendants have in-'ringed the exclusive right under this patent 'thus vested in plaintiffs.
No question as to the title of the plaintiffs arises in this case.
The defendants are licensed under one John C. Morris; that is, they use and have a license to use a wood-bending machine which they say is covered by a patent issued to Morris, March 11, 1850, and reissued to him May 27, 1802.
The defendants insist, by way of defense: First, that the Blanchard patent is void for want of novelty; and, secondly, that the machine constructed under Morris’ patent, and used by them, does not infringe the patent of Blanchard, and that therefore they are not liable in this action.
I wiE first caE your attention to the question of the novelty of Blanchard’s invention. You are doubtless famUiar with the principle of patent law, that the novelty of an invention is an essential element of a valid patent. Patent rights are only granted upon the theory that the thing discovered, and for which the party asks for an exclusive right, is new as weE as useful; in other words, that it is the invention of the party who claims a patent for it, and was not known before his.invention.
In this connection I may say, as a principle of law familiar to every one at all conversant with the subject, that the emanation of a patent from the proper authorities of the government affords a presumption that the invention, patented is new and original with the patentee. This presumption arises from the fact that aE patents must be issued with ■certain formalities, and that the officers charged with the administration of the patent laws are required very astutely to investigate every claim. The applicant is, ■moreover, obliged to swear that he is the original inventor of that for which he asks a patent; and it is only upon a compliance with these requisitions of law that the commissioner of patents is authorized to make the grant.
But it is proper to state that whEe this presumption does exist, it is competent for one charged with an infringement to Bhow that, in point of fact, the invention was not new, and that the party ought never to have had- a patent for it; and if he succeeds in making this proof, he establishes the invaUdity of the patent, and it is a mere nullity. Now, it is claimed, under the first issue to which I have referred, namely, the novelty of the invention of Blanchard, that there is evidence of other machines in use prior to the date of his invention, which anticipated, or were substantiaEy the same as that for which he procured a patent This is a question for the jury, for it is a question of fact depending upon the evidence.
To substantiate the position taken by the defendants impeaching the novelty of Blanchard’s invention, there has been a good deal of testimony adduced, and various wood-bending machines and models have been exhibited to the jury.
I shall merely refer to these without.attempting to analyze or dissect them.
There is one patented to E. Reynolds in July, 1835, and another patented to Jonathan Mulford in the same year. Evidence has also been introduced of a rejected application made by one May, in 1846, for a patent for a wood-bending machine; and there is also evidence of a machine patented to Abel Gardner, in 1849, for bending hames; also, of a machine not patented, which was first constructed by one David Gans, and used, as it appears, in 1845, and for some years subsequently, in the state of IEinois.
Now, in regard to several of these machines, you have the models before you, and I may remark here that models are oftentimes the very best evidence that can be adduced. There is nothing, perhaps, more satisfactory upon questions involving the identity of several mechanical structures than the exhibition of the machines or accurate models of them. They are süent witnesses, but they are usuaEy very reliable.
In reference to the Gans machine, one of [636]*636the witnesses, an expert, introduced on the part of the defendants, says it is substantially the same as Blanchard’s, and involves essentially the same principles and mode of operation. But other witnesses express a ■different opinion. It is for the jury to pass upon that question, and they will do it of ■course upon the evidence which they have before them.
I may state here a familiar principle: that this question of identity, as has been very truly stated by the counsel, does not depend upon the appearance or form of the two structures claimed to be identical. It depends simply upon the question whether they are the same in their mode and principle of operation, and whether one is a mechanical ■equivalent for the other. For it is obvious that there may be two machines very dissimilar in structure and appearance, which yet act upon precisely the same mechanical principles.
The question for the jury, in such case, is to ascertain, if possible, whether the two structures are, in all substantial particulars, the same; or whether there is, or is not, a substantial difference in their mode of operation.
Upon this subject, in relation to these various machines or structures, the jury will probably conclude that none of them combine all the elements of the Blanchard invention. The Gans machine is, perhaps, the only one that will create any doubt in the minds of the jurors on this question. It will be for them to say whether that combines all the elements or parts of the Blanchard improvement.
Without detaining the jury further upon the question of novelty. I may remark that where a machine has been long in public use, under a patent which has existed for a number of years, unchallenged and undisputed, a jury should hesitate before coming to the conclusion that the patent was void on the ground of want of novelty. I mean by this that a jury should be clearly satisfied in their own minds that the invention in controversy was anticipated by something known before the date of the patent, in order to come to the conclusion that the patent was void on the ground adverted to.
It becomes necessary, gentlemen, that the •com-t should give a construction to the claims of the Blanchard patent with a view to this question of novelty. One point in controversy in regard to it, as I understand it, is, whether it is for an entire machine, or a machine as an entirety, or whether the patent is to be construed as a patent for a combination; that is, a combination of different parts so arranged as to produce a new and useful result.
In my view of this question, the patent to Blanchard can only be regarded as a patent for a combination of different parts or elements.
It is called in the patent itself, “a new and useful improvement in bonding wood." In the specification it is designated as "a new and improved method of bending wood.” The specification, which has been read in- your presence, is exceedingly elaborate and minute.
The patentee refers to the fact that in all the prior modes of bending wood there were great and manifest defects.
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LEAVITT, District Judge.
Charge of the court:
This suit, gentlemen, is brought by the plaintiffs as the assignees of the administrator of Thomas Blanchard.
It is based on a patent for an improvement in bending wood, issued to said Blanchard, December 18, 1849, reissued to him November 15, 1S59, and extended December 18, 18(53, and assigned to plaintiffs. The declaration alleges that the defendants have in-'ringed the exclusive right under this patent 'thus vested in plaintiffs.
No question as to the title of the plaintiffs arises in this case.
The defendants are licensed under one John C. Morris; that is, they use and have a license to use a wood-bending machine which they say is covered by a patent issued to Morris, March 11, 1850, and reissued to him May 27, 1802.
The defendants insist, by way of defense: First, that the Blanchard patent is void for want of novelty; and, secondly, that the machine constructed under Morris’ patent, and used by them, does not infringe the patent of Blanchard, and that therefore they are not liable in this action.
I wiE first caE your attention to the question of the novelty of Blanchard’s invention. You are doubtless famUiar with the principle of patent law, that the novelty of an invention is an essential element of a valid patent. Patent rights are only granted upon the theory that the thing discovered, and for which the party asks for an exclusive right, is new as weE as useful; in other words, that it is the invention of the party who claims a patent for it, and was not known before his.invention.
In this connection I may say, as a principle of law familiar to every one at all conversant with the subject, that the emanation of a patent from the proper authorities of the government affords a presumption that the invention, patented is new and original with the patentee. This presumption arises from the fact that aE patents must be issued with ■certain formalities, and that the officers charged with the administration of the patent laws are required very astutely to investigate every claim. The applicant is, ■moreover, obliged to swear that he is the original inventor of that for which he asks a patent; and it is only upon a compliance with these requisitions of law that the commissioner of patents is authorized to make the grant.
But it is proper to state that whEe this presumption does exist, it is competent for one charged with an infringement to Bhow that, in point of fact, the invention was not new, and that the party ought never to have had- a patent for it; and if he succeeds in making this proof, he establishes the invaUdity of the patent, and it is a mere nullity. Now, it is claimed, under the first issue to which I have referred, namely, the novelty of the invention of Blanchard, that there is evidence of other machines in use prior to the date of his invention, which anticipated, or were substantiaEy the same as that for which he procured a patent This is a question for the jury, for it is a question of fact depending upon the evidence.
To substantiate the position taken by the defendants impeaching the novelty of Blanchard’s invention, there has been a good deal of testimony adduced, and various wood-bending machines and models have been exhibited to the jury.
I shall merely refer to these without.attempting to analyze or dissect them.
There is one patented to E. Reynolds in July, 1835, and another patented to Jonathan Mulford in the same year. Evidence has also been introduced of a rejected application made by one May, in 1846, for a patent for a wood-bending machine; and there is also evidence of a machine patented to Abel Gardner, in 1849, for bending hames; also, of a machine not patented, which was first constructed by one David Gans, and used, as it appears, in 1845, and for some years subsequently, in the state of IEinois.
Now, in regard to several of these machines, you have the models before you, and I may remark here that models are oftentimes the very best evidence that can be adduced. There is nothing, perhaps, more satisfactory upon questions involving the identity of several mechanical structures than the exhibition of the machines or accurate models of them. They are süent witnesses, but they are usuaEy very reliable.
In reference to the Gans machine, one of [636]*636the witnesses, an expert, introduced on the part of the defendants, says it is substantially the same as Blanchard’s, and involves essentially the same principles and mode of operation. But other witnesses express a ■different opinion. It is for the jury to pass upon that question, and they will do it of ■course upon the evidence which they have before them.
I may state here a familiar principle: that this question of identity, as has been very truly stated by the counsel, does not depend upon the appearance or form of the two structures claimed to be identical. It depends simply upon the question whether they are the same in their mode and principle of operation, and whether one is a mechanical ■equivalent for the other. For it is obvious that there may be two machines very dissimilar in structure and appearance, which yet act upon precisely the same mechanical principles.
The question for the jury, in such case, is to ascertain, if possible, whether the two structures are, in all substantial particulars, the same; or whether there is, or is not, a substantial difference in their mode of operation.
Upon this subject, in relation to these various machines or structures, the jury will probably conclude that none of them combine all the elements of the Blanchard invention. The Gans machine is, perhaps, the only one that will create any doubt in the minds of the jurors on this question. It will be for them to say whether that combines all the elements or parts of the Blanchard improvement.
Without detaining the jury further upon the question of novelty. I may remark that where a machine has been long in public use, under a patent which has existed for a number of years, unchallenged and undisputed, a jury should hesitate before coming to the conclusion that the patent was void on the ground of want of novelty. I mean by this that a jury should be clearly satisfied in their own minds that the invention in controversy was anticipated by something known before the date of the patent, in order to come to the conclusion that the patent was void on the ground adverted to.
It becomes necessary, gentlemen, that the •com-t should give a construction to the claims of the Blanchard patent with a view to this question of novelty. One point in controversy in regard to it, as I understand it, is, whether it is for an entire machine, or a machine as an entirety, or whether the patent is to be construed as a patent for a combination; that is, a combination of different parts so arranged as to produce a new and useful result.
In my view of this question, the patent to Blanchard can only be regarded as a patent for a combination of different parts or elements.
It is called in the patent itself, “a new and useful improvement in bonding wood." In the specification it is designated as "a new and improved method of bending wood.” The specification, which has been read in- your presence, is exceedingly elaborate and minute.
The patentee refers to the fact that in all the prior modes of bending wood there were great and manifest defects. He does not claim that he was the original inventor of the art of bending wood, or of the separate parts of the machine which he describes. The claim is that he has, by a union of those parts, improved upon all methods before known for that purpose.
Now, if I am right, in my construction of this patent — -if it is for a combination of the various parts or elements of the structure described — there is applicable to this case this principle, which it becomes important for the jury to consider, namely, that there can be no infringement of such a patent unless the person charged with the infringement has appropriated and used all the parts of the combination.
To illustrate my meaning: A person obtains a patent for a machine containing three different elements in combination. Those three elements, separately, are none of them new, but the patentee, by his ingenuity and study, has contrived to combine them so as to produce a new and useful result, and that is a patentable subject under our patent laws.
But one charged with an infringement of that combined machine is not liable, unless he has used all of the three parts that constitute the combination. If he takes one of them only, or two of them, leaving out the third, it is not an infringement. These are very familiar principles, and, I suppose, will not be controverted. So, on the other hand, if the patent to Blanchard is for a combination it is not impeached for want of novelty, unless the jury find that the machines exhibited or proved have all the elements or parts of the Blanchard machine.
I come now to the question of infringement, which I have partially anticipated in the remarks which I have' already made. This, like that of novelty, is a question exclusively for the jury, depending altogether upon the evidence.
It is for the plaintiffs to establish, to the satisfaction of the jury, the fact of infringement; and this involves directly the question of the identity of the Blanchard machine and the Morris machine. Are they substantially, in their principle and mode of operation, alike?
I may remark here that both these parties are patentees, and the presumption equally applies to both, in relation to the novelty and utility of their inventions. There is a presumption from the issuance of a patent to. Morris, years after the date of the Blanchard patent, that he had invented something different from the invention for which a pat[637]*637ent had been previously granted to Blanchard; for, if the commissioner had come to a different conclusion, it would have been his duty to have rejected the application.
The first claim of Morris’ patent is for a combination composed of three distinct elements. It reads as follows: “A wood-bending form, to which timbers are made to conform by bending them from the center or inner end of the desired curve outward, when used in combination with abutments or clamps, to prevent or regulate end expansion, and levers or handles, or their equivalents, to guide the bending, substantially as described.”
The second claim is for “a stationary or poised wood-bending form in combination with the cords, levers, and drum, or their equivalents, and the eccentric clamp, or its equivalent, in the manner and for the purposes set forth.”
The third is as follows: “In combination with the stationary form, levers, and abutments, I claim the employment of hooks, or hooks and pins, or their equivalents, that shall embrace the ends of the wood, to restrain the wood in shape and permit the removal of the abutments after each operation.”
He says, in the beginning of his specification: “The machines for bending wood may be divided into two principal groups or classes; the first including all machines- in which the bending process commences at one end of the wcfod, and is continued in the .direction of the other; and the second including those in which the form or mold is first applied at or near the center of the piece to be bent, and the bending process is continued from that point toward each end, which I call bending outward." And then after making this classification, he goes on to say which class of machines he regards as the superior. In a part of his specification he says: “Having thus fully described my improvements, I do not wish to be understood as claiming them in connection with the machines for bending wood where the bending is effected by the rotation of the form, but what I claim as new,” etc., and then follow the claims which I have already read.
Of that machine, described by Morris, patented to him, and used by the defendants, the jury have before them what is admitted to be a correct model. There is some contradictory testimony in regard to its identity with machines made under the Blanchard patent There are two gentlemen who have testified as experts, Mr. Hibberd and Mr. Doane, who say that they regard them as substantially the same. On the other hand, there are three witnesses for the defendants, Mr. Knight Mr. Renwick, and Mr. Morris, who state distinctly and explicitly that they regard them as essentially different in their mode of operation, and as involving wholly different principles in their action.
The jury having the models before them, with the aid of the testimony of the experts, will be able to decide whether they are substantially the same in principle.
I will state very rapidly some of the points in which it is claimed by the counsel for the defendants that there is a substantial difference between the two structures.
In the first place, it is claimed that the Morris machine bends from the center to outer end, whereas the Blanchard machine bends from the end inward. The jury have seen the operation of these machines, and are doubtless prepared to say whether, in that respect, the two machines are alike.
It is also claimed that the application of the power, in the operation of bending, is different in the two machines, and that the effect upon the timber bent by these two-methods is different; that in timber bent under the Morris patent there is less disturbance of the fibers of the wood; that bending from the center outward to the end leaves the fibers more firmly set than they are by the operation under the Blanchard invention. If the jury should be satisfied of this difference in the operation of the two, it wifi be for them to say whether it does or does not constitute a substantial difference in the principle of the machines.
It is also contended that there is a substantial difference in this: that it is one of the main elements of the invention patented to Blanchard, that there is provision made for end relaxation when the end pressure is too great, and that, upon the principle and theory of the Morris machine, there is no necessity for this relaxation, and therefore no provision is made for it.
Another difference very strongly insisted upon by counsel for the defendants, and worthy of the consideration of the jury, is in regard to the form of the mold. Now, it is insisted, on the part of the plaintiff, that the stationary mold is fairly to be included within the claim of the Blanchard patent. Not only does it include, the counsel contends, the rotating form or mold, but also, by a fair construction, the stationary form or mold. Upon that point, from the best consideration I have been able to give to the question, I am clearly of the opinion that by no fair construction of the Blanchard patent can it be held to comprehend a claim for a stationary form or mold. It is unreasonable to suppose that Blanchard had anything of that kind in his mind when he was preparing his specification. It would naturally-be expected, if it were a part of his conception, he would have said, in so many words, that though he gave the preference to the rotating form, yet he intended to embrace also the stationary form. But we look in vain throughout the entire instrument for any intimation that he ever thought of a stationary form, while all that he does say relates to a rotating form.
I make this brief statement of my construe[638]*638tion of the Blanchard patent in this particular, that the counsel for the plaintiff may have the full benefit of my ruling. It belongs, legitimately, to the court to decide whether the patent, by a fair construction, •embraces the claim for a stationary mold or form; and I announce distinctly, as my opinion, that it can not be so construed.
[NOTE. This case' was reversed by the supreme court on ■ the grounds — First, that the, court erred in admitting in evidence the patent granted to Morris, May 27, 1862, which was offered by defendants as the foundation for the introduction of evidence to show that the machine or machines used by them were constructed by them-under a license from the pat-entee in accordance with the specifications and claims of that patent as reissued, as its admission presented an immaterial issue on the question of infringement, which was not involved in the pleadings, and therefore calculated to mislead the jury by withdrawing their attention from the real subject in controversy; second, that the admission of testimony on the part of defendants to prove the existence and use in 1858, in Illinois, of a machine for bending plow handles, for the purpose of showing an anterior public use, was likewise erroneous, defendants having failed to comply with the fifteenth section of the patent act (5 Stat. 123), requiring a defendant who defends on previous invention, knowledge, or use of the thing patented, to give notice of “the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used.” Mr. Justice Clifford, who delivered the opinion, after assigning the foregoing reasons as grounds for reversal, proceeded: “Compliance with that provision being a condition precedent to the right of the defendant to introduce such evidence under the general issue, it necessarily follows that the onus probandi is on him to show that the required notice was given to the plaintiff thirty days before the trial; and, if he fails to do so, he cannot introduce any evidence to controvert the novelty of the patent. * * * The letters patent, when introduced by the plaintiffs, afforded a prima facie presumption that the assignor of the plaintiffs was the original and first inventor of the improvement; and, as the defendants had not given to the plaintiffs the required notice that they intended to offer evidence at the trial to overcome that presumption, they had no right to introduce any such evidence, and it necessarily follows that the court had no right to submit any such question to the jury.” Blanchard v. Putnam, S Wall. U. 420.
[Patent No. 6,951 was granted to Thomas Blanchard, December 18. 1849, and was reissued November 15, 1859 (No. S53).]
Mr. Lee. I ask your honor to say to the jury, that if an equivalent is substituted by the defendants for any part of the Blanchard machine, it is an infringement of his patent
THE COURT. The idea I intended to convey to the jury was, that if they found the Morris machine to be substantially the same, or a mechanical equivalent for the other, then they would come to the conclusion that the two machines were identical in principle and operation. There is one principle true, beyond all question, that a patent for a particular structure, intended to accomplish a particular end, does not necessarily import an exclusive right to every possible mode of accomplishing the same end. The doctrine is simply this, as stated in the opinion of the supreme court, read in the hearing of the jury, that in order to make out the fact of infringement there must appear to have been a substantial identity; that the parts of the machine which are claimed to be an infringement of the patented machine must appear, to the satisfaction of the jury, to be substantially the same; that is, that the same result must have been produced by substantially the same principle or mode of operation. If there is a difference in this respect, then it goes to establish the want of identity between the structures. I will now briefly recapitulate the points to which you are to direct your attention. First, is the invention, this combination patented to Blanchard, new and original? If the jury answer this question in the affirmative, their next inquiry would be, whether that combination has been infringed by these defendants; in other words, whether the Morris •structure is identical, in principle and operation, with that of Blanchard.
I have no doubt that Thomas Blanchard, ■now deceased, was an ingenious mechanic, and a man of much more than ordinary inventive talent. I have no doubt that the machine that he invented, and for which he obtained a patent, is a valuable invention, creditable to him and useful to the public. And I am equally clear that Morris, in his machine, has exhibited inventive talent of a high order, and has produced a useful and practical wood-bending machine. It is to be regretted that these parties did not permit each one to go in the enjoyment of his grant under his particular patent, and that it should have been found necessary to resort to litigation to settle their rights.
It is understood that the plaintiffs claim nominal damages only.
The jury found a verdict for the defendants.