Parker v. Stiles

18 F. Cas. 1163, 5 McLean 44

• Court: U.S. Circuit Court for the District of Ohio
• Decided: November 15, 1849
• Status: Published

Opinion

LEAVITT, District Judge

(charging Jury). The plaintiff, under a patent issued originally to Zebulon Parker and Austin E. Parker, dated the 19th of October, 1829, and renewed in the name of Zebulon Parker, October 19, 1843, claims an exclusive right to an improvement in the application of hydraulic power to a water wheel, and seeks to recover in this action, for an alleged infringement of that right, by the defendant, in the use of a water wheel, known as the Lansing wheel. It is the duty of the court, by a fair construction of the patent, to decide, whether in all substantial particulars, it conforms to the requisites of the law. And it is now a principle, settled by the concurrent opinions of some of the most enlightened Jurists of this country, that patents, securing to inventors the Just rewards of their labor and industry, are to be construed liberally, and with a fair purpose of carrying out the object of the constitutional provision on this subject, and the legislation of «ingress based upon it. It is now justly held,' that these exclusive rights are not to be viewed in the light of odious monopolies, but as the result of a policy, at once beneficent and wise. The constitution of the United States (article 1, § S) has conferred on congress, among other delegations of power, the right to pass laws “to promote the progress "of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.” And congress, in the exercise of the power thus granted, have from time to time passed laws on this subject, designed to give practical effect to the constitutional provision. At this day, there are probably few who doubt the justness and wisdom of this policy. That it has been followed with good results, in stimulating our countrymen to intellectual effort, and has thereby contributed essentially to our rapid national advance in “science and the useful arts,” is too clear for controversy.

Without extending this view, I proceed at once to the inquiry, whether the plaintiff in his patent and specification, has so far complied with the provisions of the patent law, as to be entitled to the benefits of the invention which he claims. If this invention is not described with reasonable certainty and precision, the patentee can claim nothing under his patent. The statute requires, “that before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, or compound the same.” The object of this provision is two-fold: 1. That when the term, for which the patentee has enjoyed an exclusive right, has expired, and his invention becomes the property of the public, such means of information may be accessible through the records of the patent office, as will enable others to avail themselves of its benefits: -and, 2. That while the patent is in force, others may be. informed of the precise claim of the patentee, and may not ignorantly infringe his exclusive right.

The first question for the decision of the court is, whether, on the fact of the patent, this statute requisite has been substantially complied with. But as it is.not contended by the counsel for the defense, that the patent, in the particular referred.to, is defective, it will not be necessary to examine minutely the claims in this patent, with a view to the question, whether it is so “full, clear, and exact” in its specifications, as to answer the demands of the statute. It is sufficient to observe here, that it is a claim for a discovery of several improvements, claimed as original, in the application of hydraulic power to the propulsion of the water wheel. Its specifications appear to be minute and practical. It is for the jury to decide, whether from the evidence they are sufficiently so, to enable a skillful mechanic to construct the thing which is described.

But, it is insisted that this patent is void, on the ground that the patentee in the exhibition of his invention, has not distinguished between what is his own, and what was before known and in use. And it is quite clear, if the patentee has claimed any thing, as a material part of his combination, as new and original with him, which is proved to have been discovered prior to the emanation of his patent, it is fatal to it The statute requires the patentee particularly to “specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.” The object of this provision is to prevent any one from claiming as his own invention, that which was not new. It would be obviously unjust, and in contravention of the spirit and design of the patent laws, that an inventor should be protected by a patent, in the exclusive enjoyment of what was not his own, and that others should be restricted in the use of what rightfully belonged to the public. It is true, the statute provides, in case a patentee, unintentionally, and without any fraudulent purpose, claims as a part of his invention what is not original, being apprized of the fact, he may disclaim for such part, if such disclaimer be made within a reasonable time, and may still recover for the infringement of such parts of what is claimed in his specifications, as shall appear to be original. In this case, no such disclaimer has been entered; and, If the objection above stated exists, the plaintiff cannot recover, even if the jury are satisfied the defendant has infringed the parts of the plaintiff’s invention that are original. This, I understand to be the law, as settled by the adjudication of some of the most respected judicial tribunals of the country. $

It is an important inquiry therefore in this case, whether the plaintiff in his claim has embraced more than his invention. It is insisted his patent is obnoxious to this objection in three particulars: First, that he claims the arrangement of two, four, six, or more wheels, on a horizontal shaft; second, the concentric cylinders, enclosing the shaft; and, third, the spout conducting the water to the wheel, with its spiral termination. It has already been noticed as a correct general principle, applicable to the construction of patents, that they are to be interpreted liberally. It is also well settled, that the whole instrument — that is, the patent, embracing the specification and drawings — is to be taken together; and, if from this, “the exact nature and extent of the claim made by the inventor can be perceived, the court is bound to adopt that interpretation, and to give it full effect.”

The first point of the inquiry is, whether the patentee has claimed the arrangement of the wheels, on a horizontal shaft, as a part of his invention. To arrive at a just conclusion on this head, it will be necessary to examine with some minuteness, different parts of the instrument before the court And, it is material to notice, in the first place, that the general character of the patentees’ invention, as set forth in the patent itself, is declared to be, “a new and useful improvement in the application of hydraulic power.” In his specification and claim, he describes minutely the several inventions or improvements, by which he proposes to accomplish that end, all of which he claims as original. In the prefatory part of the specification, the invention of the patentee is said to consist of “a new and useful improvement in the application of hydraulic power, by a method of combining percussion with reaction, applied and exemplified in: 1. A compound vertical percussion and reaction water wheel, for saw mills and other purposes, with the method of applying the water on the same. 2. An improved horizontal reaction water wheel, with the method of combining percussion with reaction on it. 3. A method of combining percussion with reaction, on common reaction wheels, or those already in use.” It is then stated, that “the principle upon which this improvement is founded, is that of producing a vortex within reaction wheels, which by its centrifugal force, powerfully accelerates the velocity of the wheel, and adds proportionally to its momentum.” Thus far, the great purpose of the invention —namely, the application of hydraulic power to the propulsion of water wheels, by a new and improved method — is distinctly and intelligibly exhibited. The patentee then proceeds, under three distinct heads, corresponding with those above stated, at great length, minutely to set forth the modes and appliances by which the object of his invention is to be effected. In the beginning of the first division of these specific directions, it is stated that “the compound vertical percussion and reaction wheel has two, four, or more reaction wheels, on a horizontal shaft, made of iron or wood,” &c. In the conclusion of the specification, the patentees say, “The parts of the above described machinery, claimed as original, and our invention, in all their necessary dimensions and proportions, and for the use of which we seek an exclusive privilege, are as follows, to wit: 1. The ■compound vertical percussion and reaction wheel, for saw mills and other purposes, with two, four, six. or more wheels on one horizontal shaft. The concentric cylinders enclosing the shaft, and the manner of supporting them. The spouts which conduct the water into the wheels from the penstock, with their spiral terminations between the cylinders. 2. The improvement in the reaction wheel by making the buckets as thin at both ends as they can safely be made, and the rim no wider than sufficient to cover them. The inner concentric cylinder. The spout that directs the water into the wheel, and the spiral termination of the spout between the cylinders. 3. The rim and blocks or planks that form the apertures into the wheels, and the manner of forming the apertures. The conical covering on the blocks,” &c.

Under the first of the foregoing heads, construing its language in connection with the prefatory part of the specification above cited, it is clear the claim intended to be made, was that of the wheel called the compound vertical percussion and reaction wheel; the concentric cylinders enclosing the shaft, and the manner of supporting them; and the spouts which conduct the water to the wheel. It cannot be held to embrace the arrangement, or duplication of wheels, on a horizontal shaft, as a part of the invention of the patentees. This arrangement is introduced, and perhaps unnecessarily, as descriptive or explanatory of the mode by which the wheels were to be used, but not as a part of the invention. I think this construction is obvious from several considerations. First. The wheels are described as compound vertical percussion and reaction wheels; and I suppose it to be a self-evident mechanical truth, that a wheel, vertical in its position, could be no otherwise used than by attaching it to a horizontal shaft. And, it is scarcely possible to conceive it was intended to claim such arrangement, whether the wheels consist of two, four, six, or more, as an original invention. Second. If it was intended to claim this arrangement as a distinct discovery, by analogy to the manner in which the other improvements are stated, It would have been separately set forth as such, and not as a mere incident to the claim of the improved wheels. Third. The arrangement of the wheels on the shaft, has no necessary connection with the improvement of the wheels and the consummation of the general object of the patentees’ invention, announced in the patent to be, “a new and useful improvement in the application of hydraulic power.”

Again: It is laid down as a rule for the construction of specifications, that the language used is to be so received, as consistently with its fair import, “will make the claim co-extensive with the actual diseov-ery.” “So that a patentee, unless his language necessarily imports a claim of things in use, will be presumed not to intend to claim things which he must know to be in use.” Curt. Pat. § 132. Now the arrangement of wheels on a horizontal shaft has been long known and used; nor can it be presumed that these patentees were ignorant, of that fact, and intended to claim it as new.. Upon the whole, I entertain a clear conviction that the arrangement of the wheels on a horii&htal shaft, is not, by a fair construction of the specification, to be viewed as a part of the invention claimed by the pat-entees.

It is also insisted,' that the concentric cylinders enclosing' the shaft, and the spiral conductors for leading the water to the wheels, are claimed as parts of the paten-tees’ invention, and that the proof is, they are not original with them. It is contended that the evidence in the case shows, that these mechanical contrivances are the same substantially as those used in the Toulouse mills; the description and model of which is in possession of the jury. That the matters stated above, are within the claims of the patent, seems not to admit of doubt; and it is for the jury to say, whether there is evidence that they were before known and used.

Having disposed of these points, I will, with as much brevity as possible, state my views of some other principles of law, applicable to the case before the jury. And in the first place, to entitle the plaintiff to recover in this action, the jury must be satisfied that the invention embraced in the plaintiff’s patent is “new and useful.” This is a statutory requisite, and lies at the foundation of the plaintiff’s right to a verdict at the hands of this jury. The patent, however, raises the presumption of the novelty and utility of the plaintiff’s invention. Before a patent can issue, the person applying for it is required to make oath, that he is, as he verily believes, “the original and first inventor or discoverer” of the improvement, or invention, for which he seeks a patent. And it has been held, that this oath, constituting as it does a part of the letters patent, and being in evidence to the jury, forms a legal ground for the presumption of the novelty and originality of the patentees’ claim, until the contrary be proved. Upon this inquiry, the burden of proof is thrown upon the defendant; it being the province of the court to decide what constitutes novelty, and of the jury to determine, from the evidence adduced, whether the patentees’ invention is new. The same remarks apply also to the subject of the utility of the invention.

The statute requires, that the patentee should have been the original and first inventor. If the invention, which is the subject of the patent, had been previously known or used, or had been described in any public work, or had been in public use, it is not patentable, and no exclusive right would be conferred on the patentee. In a word, it must have been original with the inventor, and not known to others. The only exception to this rule, under our patent law, exists in the case of an individual obtaining a patent, believing the invention to have been original with him, and it is made to appear, it had been known in a foreign country, but not patented there, nor described in any written publication. This proof, in the case supposed, would not vitiate the patent

The want of novelty in this case, constitutes one of the grounds of defense. It is insisted, that the plaintiff’s water wheel, with the mode of applying the water, has been long known and used. And proof is adduced, that before the emanation of the plaintiff’s patent, structures and mechanical contrivances alleged to be substantially identical with those of the patentee, were known and in use in France, and also in several of the states of this Union. I do not propose to examine the evidence on this point, as it will be for the jury to decide on its force and eonclusiveness. It may not be improper to remark, however, that where the defense that a mechanical contrivance claimed to be essentially similar to that covered by the plaintiff’s claim is set up, and the proof relied on, is a description of such structure, contained in a printed publication, . such description must have been sufficiently full and precise to have enabled a mechanic to construct it; and must also have been, in all material respects, like that covered by, or described in, the plaintiff’s patent The jury have the evidence, in the models exhibited, and the oral testimony of witnesses on this point; and it will be their province to decide it. I pass from it with the single remark, that proof of the previous use of a structure, bearing some resemblance in some respects to the improvement of the plaintiff, and which might have been suggestive of ideas, or have led to experiments, resulting in the discovery and completion of his improvement, will not invalidate his claim, under his patent.

On the subject of the utility of the invention patented to the plaintiff, it is only necessary to say, that it must be proved to be, to some extent, useful. But courts are not rigid and strict on this point. In the absence of proof by the defendant, that the thing patented is absolutely frivolous and worthless, the presumption of utility raised by the patent itself, would be sufficient, so far as this point is concerned, to sustain the patent. The jury probably will have no difficulty on this subject, as there is positive proof by competent witnesses, that the plaintiff’s improvement is valuable.

If the jury should come to the conclusion that the plaintiff’s patent embraces a patentable subject, within the principles slated by the court, they will proceed to the inquiry, whether the defendant has infringed the plaintiff’s ■exclusive right, in the use of what is called the Lansing wheel, with its fixtures; a model of which is before the jury, and which they will have with them in their retirement.

On the question of infringement, the burden of proof is with the plaintiff. He must make it appear, to the satisfaction of the jury, that the defendant has violated the exclusive right granted by his patent. And in order to make out the fact of infringement, the plaintiff must prove that the defendant has used his invention, either in the precise form in which it is constructed under the patent, or, in a form, and on principles, substantially the same. To constitute, this identity, and to make out the fact of infringement, it is not necessary that the structure or machine used by the defendant, should be the same in appearance, form, or proportions, as that invented and patented by the plaintiff. It has been well said by a distinguished judge in this country, that “simply changing the form or proportion of a machine, shall not be deemed a new discovery.” If the operative principle of the two machines be the same, the substantial identity contemplated by the patent law, is established. The learned judge, who, when present, is the presiding judge of this court, has very lucidly defined tne principle of a machine to be, “the particular means of producing a given result, by a mechanical contrivance.” It is obvious, if by a mere col-orable difference in form or structure, a patented machine or invention can be infringed, a patentee has no security for his rights; nor would it be possible to carry out the great ends of our patent right system. In most cases, the patentee, whatever may have been the amount of patient thought, and toil employed in the completion of an invention, and however useful and meritorious it might be, would fail to receive and enjoy the just rewards of his efforts.

In this case, it is insisted that the defendant, by the use of what are designated as mechanical equivalents in the structure used by him, has infringed the rights of the plaintiff. On this subject, I shall succeed in stating my views to the jury, in a more intelligible manner than by any other method, by quoting from a-learned work on the law of patent rights, lately published. In this work the author says, the true question is, (referring to the identity of mechanical structures,) “whether under a variation of form, or by the use of a thing bearing a different name, the defendant accomplishes the same purpose as that accomplished by the patentee in his contrivance.” The same writer also remarks, “that there may be different modes of obtaining the same object; and if, after a patent has been obtained for a particular thing, another person, without borrowing from that patent, has invented a mode of accomplishing the ■ same thiug, he will be entitled to a patent, and would not infringe the rights of the previous patentee.”

[For other cases involving this patent see note to Parker v. Hatfield, Case No. 10,736.] NOTE. Fig. 1. is a vertical section through the center of the wheel and scroll case. Fig. 2. is a longitudinal view of the wheel detached from the case. Fig. 3 is a transverse section at the line xx of Fig. 1. A is the bulkhead; B the shaft; C the crank; B² is the core. The buckets D are each made of three planes: 1st. A middle plane, I), which is parallel with the axis of the shaft, radiates from the circumference of the core, and is of any required length and breadth; 2d. Two inclined end planes, each end plane inclining in an opposite direction to the other, upward toward either end of the shaft, or standing at an angle of forty-five degrees, with a plane passing through the center of the shaft, lapping over every preceding bucket about one and one-half inch, contracted at the outlet and widened at the verge. E is the scroll case through which the water passes. The supply of water from the flume is regulated by a vertical sliding gate. The width of the scroll should be equal to the length of the buckets and closed at both' ends by scroll ends, causing the water to be forced toward the center of the wheel and to escape to the right and left through two sets of inclined issues. The water admitted from the flume passes into and through the scroll-case in the direction of the arrows, acts upon the radial portions, D, of the buckets, by percussion, and on the inclined ends. Di D², of the buckets, by reaction, escaping from the ends of the wheel, causing the wheel to turn vertically in a contrary direction from that at which the water escapes, and in the same direction at which it first strikes the middle of the buckets. The improvement claimed was the construction of the buckets (radial) marked D, with inclined plane ends, Di Di, diverging in contrary directions, in combination with the spiral or scroll-ease E, for condensing the water and causing it to act by percussion and reaction.

The question of the identity of the invention embraced in the plaintiff's patent, and that used by the defendant, is to be decided by the jury upon the evidence. That evidence consists in the models of the structures, which are exhibited to the jury, and in the opinions of the experts, who have given their testimony on this point. I do not propose to detain the jury with any remarks relating to the identity of these structures. The jury, by the inspection of the models, and the testimony of the experts, will doubtless be able to arrive at a satisfactory conclusion on this point. X will here, however, observe, that great respect is due to the views and opinions of scientific individuals, and practical mechanics, on the question of the identity of different mechanical structures. From their acquaintance with the elements of mechanical science, they are enabled satisfactorily to decide this question, while to others, it might seem involved in obscurity, and doubt. The jury have the testimony of several unimpeachable witnesses examined as experts in this ease, to whose opinions, I doubt not, they will be disposed to give due weight

The jury returned a verdict for the plaintiff, assessing the damages at $150.