Mr. Chief Justice Fuller
delivered the opinion of the court.
Nine exceptions were taken in the progress'of the trial, and error is assigned in the giving of each one of the instructions which are shown in the first, second, third, fourth, fifth, sixth, seventh and eighth exceptions, and also in the refusal.of the
court to give an instruction, asked for by the plaintiff, as shown in the ninth exception. The first exception related to an observation by the court to the jury that counsel upon both sides had.used the terms “ flume ” and “ chute ” synonymously, that the words of the patent were “ an improved chute,” but that in discussing it, the terms had been used as of the same signification. The bill of exceptions states that it was the fact that the plaintiff’s counsel had frequently during the trial spoken of the alleged invention as a “ flume.” This is not only so stated as a conclusion from the evidence, but we find quite a number of questions put by plaintiff’s counsel, which make use of the word “flume” in that way, as for instance: “ What part of the flume does timber go fastest ? ”. “ As the chute is steepest the timber goes faster ? ” “ How was the body of water in the lapped flume or chute, which you commenced using in 1868, as to quantity ? ” “ To what extent has the Y chute or flume gone into use, made as you made it, since 1868 ? since you made this.in 1868 ?” ‘“Do you recollect what time Mr. White finished that chute
%
” “ What difficulties, if any, did you encounter in using that flume after Mr. White left it ? ”, The remark of the court was fully justified and could not have affected plaintiff injuriously^ as his claim was that his invention was a combination of-a “ flume” and a “ chute,” and the distinction contended for as existing between them was insisted on in. that connection and made entirely clear 'throughout the case. And in the fifth instruction asked for by the plaintiff and given by the court, reference, is made to Haines’ patent as “a combination of flume and. chute,” although the patent does not cover any such combination.
The second exception, was to the charge of the court in relation to the Alpnach flume or shde, to the effect, at first, that, if the jury believed, from the evidence, that that slide substantially accomplished the object and purpose of the patented article, and that a party skilled in the business, reading that: description, could easily and readily build a flume such as was patented here, then the description and publication would constitute a defence. But this part of the charge was withdrawn upon the defendants’ counsel disclaiming the
slide as a complete anticipation, and the court then said: “ It is not claimed by the'defendant that this Alpnach slide, an account of which l>as been read to you, over in Switzerland, is a complete anticipation. It is only submitted to you as a possible suggestion of the idea of' bringing timber down from the mountain sides.” This disposes of this exception.
In the course of the charge, the court went over the facts in relation to the Cleveland flume, stating, among other things, that it was successfully operated until the 15th of August, 1868, and performed its functions and ends satisfactorily. Plaintiff’s counsel specifically objected to the statement that the flume worked successfully, and a colloquy ensued as to what constituted successful operation, and the judge told the jury that that was the way he understood the testimony, as applicable to the issues, but said that he left the matter wholly to them to- determine. In this, as the question arose, there was no error.
Transportation Line
v.
Hope,
95 U. S. 297. Counsel, for plaintiff objected to this part of the charge, also, upon grounds treated of under subsequent exceptions. The extract is quite long, and it is unnecessary to give it in full. It' concluded as follows: “ If, under all the evidence in the case, then, you believe that this flume built by Cleveland was. in all its substantial elements the same as that afterwards patented by the plaintiff in this case, then your verdict must be for the defendants,'because it is a conceded fact that that was a public use, or whether conceded or not, it was a public use, and it was in use more than two years before the plaintiff applied for his patent.” This is the third exception, and may be considered with the fourth, fifth, sixth, seventh and eighth exceptions to the. following portions of the charge:
4. “You have heard a good deal in this case, gentlemen, in regard to this matter of abutted joints or lapped joints. Now, I say to you, you may' dismiss that particular quality of this flume from your consideration.. There is nothing in the patent covering- this matter of joining sections of the flume, and a party would be liable for infringement, I apprehend, if liable at all, who should use this flume with a lapped joint as well as if he used it with an abutted joint. As a matter of fact, the
evidence in this case, I believe, without contradiction, shows this in the Mariaville flume, made at Maine, a model of which is before you. The joints there were what mechanics call ‘ broken; ’ the boards ran over from one section half way over on the other, and were abutted., • ,
“ That would undoubtedly give strength to the flume, and where heavy materials were run through would probably be an advantage.
“On the. other hand, where no very great strength is re-' quired, the ordinary abutted flume,. as made by the plaintiff-in this casé, might have an-advantage, and that perhaps for cheapness, and where other conditions obtained where it could be used, perhaps a lapped flume would cover all the requirements needed and be cheaper than either one of the others; but as a matter of law you may dismiss, the whole matter of joints from your consideration- one way or the other, because specifically it is not co'vered by the patent.” • ■>,
5 “If a wooden trough of ‘Y’ form in cross-section, arranged on an incline, in whole or in part, and adapted to receive a flow of water for the conveyance of logs or timber or wood when thrown into said-trough, and to. transport the 'same downwardly along said trough by means of water flowing therein, was an old device, at the. time of plaintiff’s alleged-invention, the mere fact, if such be the-fact, that .plaintiff (first applied this old device to the transportation of logs or timber or wood down the side of the mountain or of such a canon or of an elevation, was no invention, and under such a state of facts, if you find them to exist, you? verdict- should be for defendants.” . '
6. “ The invention which is covered by the claim of plaintiff’s patent is a chute of Y form in cross-section, arranged on an indine, 'in whole or .in part,-and adapted to receive a flow- of water for the conveyance of timber thrown into said trough and, carried down by the water in the sg,me. According to this description, the character of the .incline is not stated, and therefore is not material, except that it should be steep enough to give the water strength of .flow sufficient to transport; the timber thrown into the trough.” . ■■
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Mr. Chief Justice Fuller
delivered the opinion of the court.
Nine exceptions were taken in the progress'of the trial, and error is assigned in the giving of each one of the instructions which are shown in the first, second, third, fourth, fifth, sixth, seventh and eighth exceptions, and also in the refusal.of the
court to give an instruction, asked for by the plaintiff, as shown in the ninth exception. The first exception related to an observation by the court to the jury that counsel upon both sides had.used the terms “ flume ” and “ chute ” synonymously, that the words of the patent were “ an improved chute,” but that in discussing it, the terms had been used as of the same signification. The bill of exceptions states that it was the fact that the plaintiff’s counsel had frequently during the trial spoken of the alleged invention as a “ flume.” This is not only so stated as a conclusion from the evidence, but we find quite a number of questions put by plaintiff’s counsel, which make use of the word “flume” in that way, as for instance: “ What part of the flume does timber go fastest ? ”. “ As the chute is steepest the timber goes faster ? ” “ How was the body of water in the lapped flume or chute, which you commenced using in 1868, as to quantity ? ” “ To what extent has the Y chute or flume gone into use, made as you made it, since 1868 ? since you made this.in 1868 ?” ‘“Do you recollect what time Mr. White finished that chute
%
” “ What difficulties, if any, did you encounter in using that flume after Mr. White left it ? ”, The remark of the court was fully justified and could not have affected plaintiff injuriously^ as his claim was that his invention was a combination of-a “ flume” and a “ chute,” and the distinction contended for as existing between them was insisted on in. that connection and made entirely clear 'throughout the case. And in the fifth instruction asked for by the plaintiff and given by the court, reference, is made to Haines’ patent as “a combination of flume and. chute,” although the patent does not cover any such combination.
The second exception, was to the charge of the court in relation to the Alpnach flume or shde, to the effect, at first, that, if the jury believed, from the evidence, that that slide substantially accomplished the object and purpose of the patented article, and that a party skilled in the business, reading that: description, could easily and readily build a flume such as was patented here, then the description and publication would constitute a defence. But this part of the charge was withdrawn upon the defendants’ counsel disclaiming the
slide as a complete anticipation, and the court then said: “ It is not claimed by the'defendant that this Alpnach slide, an account of which l>as been read to you, over in Switzerland, is a complete anticipation. It is only submitted to you as a possible suggestion of the idea of' bringing timber down from the mountain sides.” This disposes of this exception.
In the course of the charge, the court went over the facts in relation to the Cleveland flume, stating, among other things, that it was successfully operated until the 15th of August, 1868, and performed its functions and ends satisfactorily. Plaintiff’s counsel specifically objected to the statement that the flume worked successfully, and a colloquy ensued as to what constituted successful operation, and the judge told the jury that that was the way he understood the testimony, as applicable to the issues, but said that he left the matter wholly to them to- determine. In this, as the question arose, there was no error.
Transportation Line
v.
Hope,
95 U. S. 297. Counsel, for plaintiff objected to this part of the charge, also, upon grounds treated of under subsequent exceptions. The extract is quite long, and it is unnecessary to give it in full. It' concluded as follows: “ If, under all the evidence in the case, then, you believe that this flume built by Cleveland was. in all its substantial elements the same as that afterwards patented by the plaintiff in this case, then your verdict must be for the defendants,'because it is a conceded fact that that was a public use, or whether conceded or not, it was a public use, and it was in use more than two years before the plaintiff applied for his patent.” This is the third exception, and may be considered with the fourth, fifth, sixth, seventh and eighth exceptions to the. following portions of the charge:
4. “You have heard a good deal in this case, gentlemen, in regard to this matter of abutted joints or lapped joints. Now, I say to you, you may' dismiss that particular quality of this flume from your consideration.. There is nothing in the patent covering- this matter of joining sections of the flume, and a party would be liable for infringement, I apprehend, if liable at all, who should use this flume with a lapped joint as well as if he used it with an abutted joint. As a matter of fact, the
evidence in this case, I believe, without contradiction, shows this in the Mariaville flume, made at Maine, a model of which is before you. The joints there were what mechanics call ‘ broken; ’ the boards ran over from one section half way over on the other, and were abutted., • ,
“ That would undoubtedly give strength to the flume, and where heavy materials were run through would probably be an advantage.
“On the. other hand, where no very great strength is re-' quired, the ordinary abutted flume,. as made by the plaintiff-in this casé, might have an-advantage, and that perhaps for cheapness, and where other conditions obtained where it could be used, perhaps a lapped flume would cover all the requirements needed and be cheaper than either one of the others; but as a matter of law you may dismiss, the whole matter of joints from your consideration- one way or the other, because specifically it is not co'vered by the patent.” • ■>,
5 “If a wooden trough of ‘Y’ form in cross-section, arranged on an incline, in whole or in part, and adapted to receive a flow of water for the conveyance of logs or timber or wood when thrown into said-trough, and to. transport the 'same downwardly along said trough by means of water flowing therein, was an old device, at the. time of plaintiff’s alleged-invention, the mere fact, if such be the-fact, that .plaintiff (first applied this old device to the transportation of logs or timber or wood down the side of the mountain or of such a canon or of an elevation, was no invention, and under such a state of facts, if you find them to exist, you? verdict- should be for defendants.” . '
6. “ The invention which is covered by the claim of plaintiff’s patent is a chute of Y form in cross-section, arranged on an indine, 'in whole or .in part,-and adapted to receive a flow- of water for the conveyance of timber thrown into said trough and, carried down by the water in the sg,me. According to this description, the character of the .incline is not stated, and therefore is not material, except that it should be steep enough to give the water strength of .flow sufficient to transport; the timber thrown into the trough.” . ■■
7. “If the Cleveland chufe.was a chute of y form in cross-: section, with its series of planks lapped at their'ends,.arranged: on an incline, in-whole or in part and adapted to receive a flow of water for the conveyance of timber thrown into said chute .and' carried dowil by means of water in the same,'and: was finished oh the1
Ú2d
dáy of July; 1868, and was publicly and successfully used by Cleveland for the transportation of .wood- or timber in tjhe-manner aforesaid between the 22d day of J uly, 1868,' and the 5th of August, 1868, then this was a'public use of plaintiff’s'invention, m the United States for more than two years before., plaintiff’s application for a patent, and constituted a constructive, abandonment of plaintiff’s invention, and under these facts, if you find them to exist, your Verdict should be for defendants.”
‘8. “If you believe that the wooden flume testified ¡to.by several of defendants’ witnesses as having been constructed: at Mariaville, Maine, yas constructed and operated at that' place in the year 1858 and thereafter, and was of ‘ Y ’ form incross..section, and was arranged from the top of a dam to.a,1 point 3(30 feet beyond said dam, and was adapted to receive a-flow. of water for the transportation of logs from the upper to. the lower end of said flume and along the whole length /thereof,' and’was-set upon an incline steep enough to give the water-in said flume strength of flow sufficient to swiftly transport ¡the logs-placed in the head, of said flume to the lower end thereof and along the whole length thereof, and that this-flupie-.was . successfully operated and many thousands of logs transported through it in the year 1858'and thereafter, previous to 1868i,;by paeans of a flow of water through said- flume, then I . instruct you -that this was ah'(.anticipation of the inyention clainaed-in .plaintiff’s' patent, and'that your verdict-'should-be for the defendants.” '
i The argument of plaintiff’s counsel is that the' lapped flume did not include Haines’ completed'invention ; that it .was one .'•of Haines’ experiments, which Cleveland saw and copied, but this-could not affect Hain'es’right to go on and. complete his .invention by making further experiments and discoveries .producing further new and useful results; .that until it: was: a
completed invention the time had not arrived at which it was his duty to apply for a patent; and, therefore, that he forfeited nothing by delay.
' Yarious instructions guarding this point were given by the court, and among them these :
“7. ’if an inventor applies for his patent within two years’ from the time that he first exhibits his completed invention in public no amount of public use within that two years either by the inventor or others will work any forfeiture of his right to a patent or constitute any-evidence of abandonment.”
“ 16. The jury will not consider any former flume or chute to be an anticipation unless they believe such former flume or chute developed the same’ mode of operation as the flume described in the plaintiff’s patent.”
Of course, if the patent for the completed chute described nothing which could be recognized as a patentable improvement differing from the prior lapped chute, then the objection has no basis to rest on.
' "The evidence leaves no doubt that the lapped chute was in public use with Haines’ consent or allowance more than two years'prior to the application for the patent.
Counsel further insists that the flumes referred to in the fifth and sixth exceptions did not include the plaintiff’s invention and were not covered by his patent, and that. whether this was so, and whether the “ smooth canal ” of the patent could be anticipated by the lapped chute, were questions of fact which the court should have left to the. jury to decide.
A claim admitted by the Patent Office and acquiesced in by the patentee should not be enlarged by construction beyond the fair interpretation of its terms, and this- patent says nothing about how the joints are constructed, nor whether the chiite contained any joints at all or not; and this is admitted in the brief of the plaintiff’s’ counsel.
The specification says: “ This invention has for its object to furnish to the public an improved chute for facilitating the transportation of timber of all kinds from the tops .or sides of mountains or other elevations, and consists in constructing a chute so as to present a Y form in cross-section, the same
being arranged on an incline corresponding, more or less, to the surface of the ground over which it passes, and brought in connection with a spring or other water supply, to receive the water therefrom? and thus form a smooth canal throughout its entire length.” This smooth canal is the result obtained by constructing the chute according to the description, and it covers lapped joints just as much as it. does abutted joints. The Mariaville sluice was' constructed on the same plan as the Haines’ chute, and both were rectangular flumes. Haines himself testifies that his Y chute was “ a rectangular flume at an angle of 90°.” It was intended to facilitate the transportation of timber of all kinds from other elevations as well as mountains, and was necessarily arranged on an incline adapted to' the surface over which it passed; and the character of tue incline was not stated.
The parts of the charge presented by.exceptions five or.six were correct, and, as to the other instructions, they described the working of the Haines flume as represented in the patent and in Haines’ testimony, and by them the court charged the jury that if they believed from the evidence that the Cleveland and Mariaville chutes, or flumes, or sluices were constructed and successfully operated on the plan and in the manner described by the court, which was the plan and manner in which the Haines chute was operated, then this was an anticipation of the invention claimed by. Haines. There was no error, in this, for such was the conclusion of law, if the jury found the facts from the evidence to be as stated; and it is to be noted in this connection that the court in conclusion instructed the jury as follows:
“All questions of fact are exclusively for the jury to decide. The court does not decidé nor instruct you as to whether the Mariaville sluice or any other sluice or flume or chute was or was not an anticipation of the plaintiff’s patent. The question of anticipation is purely a question of fact, and is exclusively for the jury to determine.”
The ninth exception was taken to the refusal of the court to give the following instruction : “ The patent in this case is not merely for a Y-shaped trough or sluice. Neither does it
.©over-a flume with a flat bottom and flaring'sides., Neither does it cover a ^-shaped flume, or sluice so constructed on au . even or. nearly even grade, that it will carry throughout its length- -a full volume of water sufficient to, float freely the ■woodior other material that is transported through it. None of these things would constitute any anticipation of the patented invention.” This instruction was open to serious objection. ■ It was not contended that either' the Cleveland flume or the, Mariaville sluice had a flat bottom, nor did the description of the patent require the chute to be so constructed as ¡to-have a.given amount of fall. It is not error to refuse to instruct as to an abstract question, and instructions should never be given upon hypothetical statements of fact,- of which there .is no evidence/ The charge- of the court - was as favorable to the plaintiff as he had any right to demand, and to hay© given the foregoing would have tended to confuse and mislead. It was properly refused. In. fact, it appears to us that the evidence of anticipation was so conclusive, that, as contended -by counsel for defendants in error,- the Circuit Court would have been warranted in directing the jury to find for the defendants, inasmuch as, if there had been-a verdict ¡against them, the court-would have been compelled to set it aside.
The judgment is affirmed.