TANEY, Circuit Justice
(charging jury). First The first question to - be decided in this ease is, what is the invention claimed by the plaintiff. His claim, as summed up in his specification, is in the following words: “I do not claim the jet-bath, neither do I claim the movable reservoir, both having been used separately before, but I do claim and desire to secure the combination of a movable reservoir with a jet-bath constructed as herein described.’’
The specification, of course, describes the various mechanical contrivances by which the bath is to be raised or lowered, or kept stationary at the height desired by the person taking the bath, and the manner in which the reservoir and jet-pipes are to be arranged, and the machine put in operation. But these form no part of his claim, nor are they patentable. For they are nothing more than the ordinary and familiar mechanical powers which have always been used for similar purposes, and form no part of the combination claimed as new.
The specification, however, leaves it very doubtful whether the plaintiff claims as new the whole machine composed of the movable reservoir and jet-pipes united together, including the movable reservoir, as a part of the machine patented. And if it be so construed as to make the movable .reservoir a part of the combination patented to the plaintiff, the patent is invalid. For it appears that the movable reservoir had been patented some years before the plaintiff’s improvement was made; and that the patentee has conveyed his right to the exclusive privilege in the city of Baltimore to the defendants, who now hold it; and that the plaintiff never has received any license or authority from the patentee or his assigns to make, use or vend the movable reservoir.
And if the patent office has granted to the plaintiff the whole combined machine, including the movable reservoir, it has granted what the law does not authorize, for it had no right to grant to the plaintiff any right in an invention which was then the exclusive property of another. But the claim, as summed up in the specification, is susceptible of another construction, and may be confined to the connection of the movable reservoir with the jet-bath constructed as described in the specification; that is, to the ■connection of the two known improvements in the manner described, so as to make both movable together in combination with each other, moving at the same time and by application of the same force. And as this construction would authorize the patent to issue, if this were a patentable improvement, and the plaintiff the first and original inventor, the court think it ought to be adopted as the true one. And the jury are therefore instructed that the patent covers nothing more than the connection of the reservoir with the jet-bath, constructed in the manner and form therein described.
It remains to inquire whether the plaintiff was the first and original inventor of this improvement, and entitled to its exclusive use.
Second. It is admitted that a shower-bath, with a fixed reservoir and a fixed jet-bath combined and connected with it, and fed by water from the reservoir, was known and in use in the United States before plaintiff’s improvement was made, and also a movable reservoir without a jet-bath combined with it.
If, therefore, the plaintiff’s mode of connecting and combining the jet-bath with the movable reservoir, and supplying the jet with water from the reservoir, is substantially the same with that by which the jet-bath and fixed reservoir were united together in the old improvement, or if a mechanic of ordinary skill and acquainted with such business, with the old improvement before him, could have attached the jet-bath to the movable reservoir in a manner that would produce the same result with that adopted by the plaintiff, then the improvement he claims to have invented is not patentable, and his patent is invalid.
The plaintiff admits,’ in his specification, that his jet-bath is the same with the old improvement, and therefore!, an alteration in the size or arrangement of the pipes, or of the holes, or of the quantity of water discharged, or of the part of the body on which it is discharged, is not a substantial difference from the old jet-bath, and is not covered by the patent. There must be something new in the principle and mode of operation by which the water is supplied to the jets by the movable reservoir in the mode of connection claimed by the plaintiff as his invention.
Third. And if the jury find that tbd plaintiff’s improvement is one of this description, his patent is invalid, although he may not have seen or known of the shower-bath with a fixed reservoir and fixed lateral jets combined with it nor of the movable reservoir, and in fact, have invented the improvement by the efforts of his own genius and studies. In order to entitle him to a patent he must not only be the inventor, but the first invent- or. But the patent is prima facie evidence that the plaintiff was the first inventor of the improvement described in it.
Fourth. But if the jury find that the manner of combining and connecting the jet-bath [1139]*1139with the movable reservoir, and of supplying the jet with water from the reservoir described in the plaintiff’s specification is substantially different from the one used in the old improvement before mentioned, of the fixed reservoir with the fixed jet-bath combined with it; and that with this old improvement before him it would require more ■skill and ingenuity to attach the jet to the movable reservoir so as to combine them together, than is ordinarily possessed by mechanics acquainted with and accustomed to work in business of this kind; and also find that the plaintiff was the first and original inventor of this improvement, then his patent is valid, and entitles him to the exclusive use of the improvement covered by the patent.
[NOTE. In the report of this case as contained in Taney. 180. the charge of the court, in different language, is reported as follows:
[TANEV, Circuit Justice (charging jury). 1. 'The validity of the defendants’ patent is not in •question in this case. The question is, whether the shower-bath exhibited to the court and jury, which is admitted to have been made by the defendants in the manner described in their specification, is an infringement of the plaintiff's pat•ent; for although the defendants’ patent may be invalid or void, yet. he is not liable to this action, unless the bathing-machine constructed by him infringes upon the rights secured to the plaintiff by his patent.
[2. The plaintiff’s patent is not for the whole machine, consisting of the movable reservoir and jet-bath united together and forming one entire machine; but it is for the combination of the two, by connecting them together in the manner described in his specification; this is the improvement he claims, and which is secured to him by his patent. It is a combination of known elements and powers, in a new and specified form, in •order to produce a certain effect; and the invention consists altogether in the manner and form in which the improvement is constructed, and the shower produced and delivered upon the body.
[3. It is admitted, that a shower-bath composed of a reservoir combined with jet lateral tubes, was known and in use before the plaintiff made his invention; and also a bath with a movable reservoir, but without movable jets attached to it; ■and that in both of these baths the shower upon the head fell vertically from the perforated bottom of the reservoir. Free access — add to your briefcase to read the full text and ask questions with AI
TANEY, Circuit Justice
(charging jury). First The first question to - be decided in this ease is, what is the invention claimed by the plaintiff. His claim, as summed up in his specification, is in the following words: “I do not claim the jet-bath, neither do I claim the movable reservoir, both having been used separately before, but I do claim and desire to secure the combination of a movable reservoir with a jet-bath constructed as herein described.’’
The specification, of course, describes the various mechanical contrivances by which the bath is to be raised or lowered, or kept stationary at the height desired by the person taking the bath, and the manner in which the reservoir and jet-pipes are to be arranged, and the machine put in operation. But these form no part of his claim, nor are they patentable. For they are nothing more than the ordinary and familiar mechanical powers which have always been used for similar purposes, and form no part of the combination claimed as new.
The specification, however, leaves it very doubtful whether the plaintiff claims as new the whole machine composed of the movable reservoir and jet-pipes united together, including the movable reservoir, as a part of the machine patented. And if it be so construed as to make the movable .reservoir a part of the combination patented to the plaintiff, the patent is invalid. For it appears that the movable reservoir had been patented some years before the plaintiff’s improvement was made; and that the patentee has conveyed his right to the exclusive privilege in the city of Baltimore to the defendants, who now hold it; and that the plaintiff never has received any license or authority from the patentee or his assigns to make, use or vend the movable reservoir.
And if the patent office has granted to the plaintiff the whole combined machine, including the movable reservoir, it has granted what the law does not authorize, for it had no right to grant to the plaintiff any right in an invention which was then the exclusive property of another. But the claim, as summed up in the specification, is susceptible of another construction, and may be confined to the connection of the movable reservoir with the jet-bath constructed as described in the specification; that is, to the ■connection of the two known improvements in the manner described, so as to make both movable together in combination with each other, moving at the same time and by application of the same force. And as this construction would authorize the patent to issue, if this were a patentable improvement, and the plaintiff the first and original inventor, the court think it ought to be adopted as the true one. And the jury are therefore instructed that the patent covers nothing more than the connection of the reservoir with the jet-bath, constructed in the manner and form therein described.
It remains to inquire whether the plaintiff was the first and original inventor of this improvement, and entitled to its exclusive use.
Second. It is admitted that a shower-bath, with a fixed reservoir and a fixed jet-bath combined and connected with it, and fed by water from the reservoir, was known and in use in the United States before plaintiff’s improvement was made, and also a movable reservoir without a jet-bath combined with it.
If, therefore, the plaintiff’s mode of connecting and combining the jet-bath with the movable reservoir, and supplying the jet with water from the reservoir, is substantially the same with that by which the jet-bath and fixed reservoir were united together in the old improvement, or if a mechanic of ordinary skill and acquainted with such business, with the old improvement before him, could have attached the jet-bath to the movable reservoir in a manner that would produce the same result with that adopted by the plaintiff, then the improvement he claims to have invented is not patentable, and his patent is invalid.
The plaintiff admits,’ in his specification, that his jet-bath is the same with the old improvement, and therefore!, an alteration in the size or arrangement of the pipes, or of the holes, or of the quantity of water discharged, or of the part of the body on which it is discharged, is not a substantial difference from the old jet-bath, and is not covered by the patent. There must be something new in the principle and mode of operation by which the water is supplied to the jets by the movable reservoir in the mode of connection claimed by the plaintiff as his invention.
Third. And if the jury find that tbd plaintiff’s improvement is one of this description, his patent is invalid, although he may not have seen or known of the shower-bath with a fixed reservoir and fixed lateral jets combined with it nor of the movable reservoir, and in fact, have invented the improvement by the efforts of his own genius and studies. In order to entitle him to a patent he must not only be the inventor, but the first invent- or. But the patent is prima facie evidence that the plaintiff was the first inventor of the improvement described in it.
Fourth. But if the jury find that the manner of combining and connecting the jet-bath [1139]*1139with the movable reservoir, and of supplying the jet with water from the reservoir described in the plaintiff’s specification is substantially different from the one used in the old improvement before mentioned, of the fixed reservoir with the fixed jet-bath combined with it; and that with this old improvement before him it would require more ■skill and ingenuity to attach the jet to the movable reservoir so as to combine them together, than is ordinarily possessed by mechanics acquainted with and accustomed to work in business of this kind; and also find that the plaintiff was the first and original inventor of this improvement, then his patent is valid, and entitles him to the exclusive use of the improvement covered by the patent.
[NOTE. In the report of this case as contained in Taney. 180. the charge of the court, in different language, is reported as follows:
[TANEV, Circuit Justice (charging jury). 1. 'The validity of the defendants’ patent is not in •question in this case. The question is, whether the shower-bath exhibited to the court and jury, which is admitted to have been made by the defendants in the manner described in their specification, is an infringement of the plaintiff's pat•ent; for although the defendants’ patent may be invalid or void, yet. he is not liable to this action, unless the bathing-machine constructed by him infringes upon the rights secured to the plaintiff by his patent.
[2. The plaintiff’s patent is not for the whole machine, consisting of the movable reservoir and jet-bath united together and forming one entire machine; but it is for the combination of the two, by connecting them together in the manner described in his specification; this is the improvement he claims, and which is secured to him by his patent. It is a combination of known elements and powers, in a new and specified form, in •order to produce a certain effect; and the invention consists altogether in the manner and form in which the improvement is constructed, and the shower produced and delivered upon the body.
[3. It is admitted, that a shower-bath composed of a reservoir combined with jet lateral tubes, was known and in use before the plaintiff made his invention; and also a bath with a movable reservoir, but without movable jets attached to it; ■and that in both of these baths the shower upon the head fell vertically from the perforated bottom of the reservoir. It is further admitted, that the mode of uniting the tubes for the lateral jets, with a movable reservoir, by any mechanical means, in order to make the reservoir and lateral tubes move at the same time and by the same force, does not differ from the mode of uniting fixed lateral jet-tubes to a fixed reservoir. The mere act, therefore, of fastening the lateral jet-tubes to a movable reservoir, by ordinary mechanical means, so as to make them move at the same time and by the same force, is not a patentable invention, nor does the plaintiff claim it as such in his specification.
. [4. A part of the combination claimed by the plaintiff, as his improvement, is, that the reservoir or chamber should not be perforated, and that the shower, whether intended for the head, or the shoulders or body, should be delivered altogether from the lateral jet-tubes; and that the water should descend from the reservoir or chamber, by four separate tubes, to the horizontal discharging tubes, so as to make the jets (when the bather desires it) all act. at the same instant and with the same force, upon every side of the body, while the bather stands still under the reservoir or chamber; his head being encompassed by the oblong octagon formed by the four horizontal tubes with the short connecting pieces.
[5. In the defendants’ bath, both as described in their specification, and as exhibited to the court and jury, the reservoir is perforated at the bottom, and when the head is intended to be bathed, the water falls perpendicularly from the reservoir, and does not issue from jet-tubes at the sides; and the water for the lateral jet-tubes descends from the reservoir, by one conduit or large tube, at the back, and flows into the lateral jet-tubes which are united to it on each side; the lateral tubes being curved and not meeting in front, but leaving a space open between them sufficiently large for the bather to enter, and making it necessary for him to be in motion, while bathing, and to turn his body, from time to time, when he desires to receive the lateral shower with equal force and abundance, before and behind, and on each side of his body or limbs.
[0. It appears then, that substantial parts of the combination claimed by the plaintiff, as his invention, are not used by the defendants; and that the combination of the movable reservoir with the jet-bath, in the machine of the latter, differs materially, in several of its component parts, from that of the former; and also in the manner of their adjustment and arrangement in the machine; that his bath differs also in the manner in which the shower is delivered and administered to the bather; and that although the same end is accomplished, it is not accomplished by the same means and by the same combination. If the jury believe the facts stated in the exception to be true, the bath of the defendants exhibited to the court and jury, is no evidence of the infringement of the rights secured to the plaintiff by his patent; and therefore, he is not entitled to recover in this action. The instructions prayed by the plaintiff are refused.
[Verdict for defendants.]
Fifth. And if under the foregoing instructions the jury find that the patent is valid, ■and also find that the mode of combining and connecting the jet-bath with the movable reservoir, and supplying the jet with water from the reservoir used in the shower-baths of the defendants, is substantially the same with that described in the plaintiff’s specification, then the defendants have infringed his patent, and plaintiff is entitled to recover the damages he may have sustained by ■such infringement.
Verdict for defendants.