Burden v. Corning

4 F. Cas. 711, 23 Hunt Mer. Mag. 528, 1850 U.S. App. LEXIS 246

• Court: U.S. Circuit Court for the District of Northern New York
• Decided: July 5, 1850
• Status: Published

Opinion

The defendants set up three grounds of defense: 1st. That the patent was void for multiplicity of claim. 2nd. That it was void for want of novelty. 3rd. That the defendants had not infringed. To sustain the second ground of defence the defendants introduced a patent for a machine for making bullets by pressure, granted to Thomas Bruff, in 1813, and proved its use in Washington city in 1811, and also introduced reciprocating and rotary machines for milling the edges of buttons, used in Waterbury, Connecticut, as early as 1832, and also reciprocating and rotary machines for milling the edges of coin, used in the mint of the United States at Philadelphia as early as 1833. The Bruff machine rolled bullets of lead between a revolving cylinder and a stationary curved segmental trough, the surface of the trough gradually approaching, the surface of the cylinder, and the peripheries of both being grooved.

Upon the objection that the patent was void for multiplicity of claim, the judge ruled in favor for the plaintiff. Upon the other points raised by the defendants, the court charged the jury as follows, and under those instructions the jury rendered a verdict for the plaintiff of $100:

1. That the patent is for a new process, mode, or method of converting puddler’s balls into blooms by continuous pressure and rotation of the ball between converging surfaces, thereby dispensing with the hammer, alligator jaws, and rollers accompanied with manual labor, previously in use to accomplish the same purpose, and that the patent secures to the patentee the exclusive right to construct, use, and vend any machine adapted to accomplish the objects of his invention as above specified, by the process, mode, or method above mentioned.

2. That the machines for milling buttons, milling coin, and rolling shot, do not show a want of novelty in the invention of the patentee as above specified, because the process used in them, the purpose for which it was used, and the objects accomplished by them, were substantially different from those of Burden’s patent.

3. That the machine used by the defendants is an infringement on the plaintiff’s patent if it converts puddler’s balls into blooms by the continuous pressure and rotation of the balls between converging surfaces, although' its mechanical construction and action may be different from the machine used by the plaiatiff; and, under those instructions, the jury, without retiring, rendered a verdict for the plaintiff for $100. (Which amount was previously agreed on by the counsel for the respective parties, the plaintiff having been the owner of the patent but a few days when the suit was brought.)

The defendants’ counsel excepted to the charge of the learned judge.

[NOTE. The defendants brought error, and the supreme court reversed the judgment entered below upon the verdict, upon the ground that the court erred in construing plaintiff’s patent to be for a process, and not for a machine, and so instructing the jury; and also because of the exclusion of testimony offered in behalf of defendants, to prove the capabilities of the alleged infringing machine in rolling the balls., and to prove the differences as to mechanical construction and mechanical action between it and the machine of plaintiff, and also because of error in excluding evidence that the practical manner of giving effect to the principles embodied in defendants’ machine differed from the practical manner of giving effect to the principle embodied in plaintiff’s machine; that the principles of the two machines were different, and that the machine used by defendants produced by its action on the iron a different mechanical result on a different mechanical principle from that produced by the machine of plaintiff. Corning v. Burden, 15 How. (56 U. S.) 252.]