Wilbur v. Beecher

29 F. Cas. 1181, 2 Blatchf. 132, 1850 U.S. App. LEXIS 324

• Court: U.S. Circuit Court for the District of Northern New York
• Decided: October 20, 1850
• Status: Published

Opinion

In charging the jury.

NELSON. Circuit dus-tice,

remarked as follows:

The improvement which has been patented to Montgomery and Harris has been described in the specification which accompanies the patent, and it is necessary for us to look into that, in the first instance, with a view to ascertain, as nearly as possible, the thing which has been discovered, and the property in which is secured to the patentees. The law requires that the applicant for a patent shall set forth in his specification a description of his invention, sufficiently full and particular to' enable any intelligent mechanic to make a machine from such description.

The patentees in this case begin by stating in their specification, in very general terms, the nature of the improvement which they have discovered. They say: “The nature of our invention consists in providing a mode of breaking and grinding bark and other substances of a like character, by means of hollow, stationary cylinders, and one or more revolving conical nuts, placed concentrically, in connection with teeth and pickers, the whole constructed, arranged and combined as hereinafter particularly described.” They then go on in their specification and describe the material parts of the machinery of the mill. First, the outer cylinder or shell of the mill; next, another cylinder, which is also stationary, and is the second in the models which have been shown, there being teeth on the inside of the outer cylinder, and on the inside and outside of the inner cylinder; next, a movable conical nut or ring, with teeth on the outside and inside; and then another conical nut, which is solid, and has teeth on its outside, and through the centre of which a shaft passes, which is connected with the driving power. The patentees then give a description of the teeth which are used on these stationary cylinders, and on the movable conical rings. They also describe the cross-bars or pieces that hold firmly together the stationary cylinders, and the cross-bars that hold together firmly the movable conical grinders. All this, taken -together, perfects the mill, and produces the combination which the patentees allege they have discovered, and which they design to describe in their specification.

They next set out their claim, which is the most material part of the specification, especially when taken in connection with the particular description previously given. The claim, in the language of the patentees themselves, is as follows: “What we claim as our invention, and desire to secure by letters patent, is the combination of the conical nuts, one or more, with the cylinders, placed concentrically as herein mentioned and described, and constructed, arranged and connected in the manner herein described, and provided with teeth and pickers arranged as is also herein mentioned and set forth.” The claim in substance is this — the combination of the conical nuts, one or more, with the cylinders, placed concentrically as described in the specification. and furnished with teeth and pickers on their surfaces.

Now, the first question is — what is the thing that has been invented by the patentees? Because, unless we ascertain intelligibly what the machine is which it is claimed has been discovered, we shall be altogether disqualified for determining whether or not it has been infringed or violated by the operation of the defendant’s mill. The claim is exceedingly plain, and is very* distinctly and clearly expressed. It is simply the combining together of the stationary cylinders and the movable conical rings, there being teeth on the sides of both, and that combination being sustained by the cross-bars to which the movable parts and the stationary parts are severally attached. so that, on applying the driving power to the shaft, the grinding is effected in the grinding chambers formed by the surfaces of the nuts and cylinders.

It is proper to inquire what the purpose is of this combination, and what useful object wa$ intendéd to be obtained by it. Obviously, it seems to me, to increase the grinding apparatus in a machine of a given size, and which may still be driven by the same power as before. This is the new and valuable idea which has occurred to the patentees, which they have reduced to practice, and which is, in their description, embodied in a working machine. This is manifest on looking at the old mill, and comparing it with the new mill of the patentees. There was but one grinding chamber in the old mill, while one of the simplest forms of the mill discovered and reduced to practical operation by the patentees, contains two grinding-chambers, which are formed by inserting a movable conical nut between an outer and an inner stationary cylinder. It was the multiplication of these chambers and of the grinding apparatus or machinery, that was discovered*by the pat-entees, and which it is agreed was never before known or put in practice.

As to the utility of the invention, I do not understand that it is called seriously in question. An invention must not only be one that can be reduced to practice, but it must be one of some utility. It appears, from the testimony in this case, that the mill of the pat-entees, formed by the multiplication of the grinding-chambers, particularly the mill with the three chambers, described in the specification and shown in the drawings, will grind, when not in very rapid operation, say at a speed of fifty or sixty revolutions in a minute, a cord of bark an hour through the day; and the witness did not doubt, that with an increased velocity, it would grind more. It grinds, moreover, double the quantity ground by the old mill. This is evidence enough of the utility of the invention. The question is not, whether the machine invented is the best one known to the community, nor whether it does its work better or faster than any other machine in the same department of labor. But, if it be to a certain degree useful, and be original with the patentee, it belongs to him alone, whether it does less or more work.

It has been insisted, on the part of the defendant, and that view was taken by some of the experts whom he called, that the specification in question here is not sufficiently full anti particular to enable a mechanic of ordinary skill to make a mill with grinding-chambers multiplied beyond the number particularly enumerated in the specification, which is limited to three. - But several of the experts who have been examined on the part of the plaintiff say, that there is no difficulty in constructing a mill with any number of grinding-chambers, from the description in the specification. Some of the witnesses for the defendant, who were examined particularly in respect to this point of the case, ob-t iousiy labored under a misapprehension as to the extent of the questions that were put to them. They failed to comprehend the principle on which these questions are put to experts. and they, therefore, failed to respond intelligibly. Mr. Pond, a witness for the defendant, of great intelligence, and of long practical experience in this branch of business, would not say that, after reading the specification, he could not make a mill with the grinding chambers multiplied to any given number. But he undertook to give a legal construction to the specification for himself, and, assuming his construction to be sound, and predicating upon it the answer he gave, he said he could not make such a mill if he were to follow, throughout its structure, the particular and identical description in the specification; and this was the view taken by another witness. The point is thus made one of some importance.

What is the thing discovered and described ? It is the formation of grinding chambers, by the combination of movable conical rings with stationary cylinders, these two parts being severally brought together and fastened by cross-bars. The description in the specification shows a mill with three grinding chambers. How will you add another chamber? The patentees evidently had in their minds the idea of multiplying the chambers, because they suggest the use of stationary cylinders and one or more movable conical rings, thus allowing both cylinders and rings to be multiplied to any extent, or the mill to be limited to two cylinders and one ring. Where was the necessity of their adding the description of another stationary cylinder just like the one described in the specification, and of another conical ring just like the one they have described, and directing the ring and cylinder to be put into the mili concentrically, so as to obtain two more grinding chambers? There would be nothing new in such a description. The specification already directs how to make the cylinder and the ring, and how to combine them in order to produce grinding chambers. A ring between two cylinders produces two chambers, and two more are made by the addition of another ring and another cylinder. This is a mere duplication of parts, and there is nothing new in the multiplication of the parrs. By taking the description of what has already been put together to form grinding-chambers. and by putting the same together again, and adding it to the mill by the same connection of cross-bars, you have a multiplication of the grinding-chambers.

If I have been fortunate enough to communicate to you my ideas in respect to the thing really invented and put into practical operation by the patentees, you will be prepared to take up the next subject of inquiry, and that is, whether the defendant has been guilty of an infringement: or, in other words, whether he has appropriated to his own use and for his own benefit, this new machine constructed and put in operation by the patentees. As I have already stated, the object and effect of the invention are. an increase of the grinding apparatus by a multiplication of the grinding-chambers. Has the defendant appropriated to himself this idea? Has he increased the grinding apparatus in his mill, by using the combination of the movable conical rings with the stationary cylinders? Both parties must start with the old machine, the Gale mill, which was the only mill in operation at the time of the invention by the patentees. Montgomery and Harris being the first in point of time, made the improvement which I have been explaining; that is, they increased and multiplied the number¡of the grinding-chambers by a combination of rings and cylinders. They thus made an advance on the old machine. Instead of only one grinding-chamber in the mill, you have two, three, four or five, or any number you see fit to make, by a multiplication of the parts. Has the defendant appropriated this combination, in the mill which he has constructed? Has he formed grmding-ehambers by combining movable conical rings with stationary cylinders? If he has. he has appropriated and adopted the combination invented, described, claimed and patented by Montgomery and Hands. The defendant has a mill of six grinding-chambers and twelve grinding surfaces. Has he bb-tained that by a multiplication of the chambers, according to the combination of the pat-entees? If he has. then he has been guilty of an infringement.

It is urged, on the part of the defendant, that the shape of the grinding chambers in the defendant’s mill is different from the shape of the chambers in the plaintiff's mill, and that, consequently, the combination in the defendant’s mill of the running pans and the stationary parts which form the chambers, is different from the combination of those parts in the plaintiff's mill. It will be quite obvious. however, to any person of ordinary understanding. who will look at these various mills, and at the principle on which they arc constructed, that this minding chamber, though made of various shapes, will still produce a useful result. A particular shape may and probably will enable one machine to operate more advantageously than another. A mill with grinding surfaces of one particular shape may grind faster and better than a mill with surfaces of another shape. But a mill that does not grind so fast or so well as another, because it has chambers of a different shape. will not, therefore, cease to be useful. This is demonstrated by the evidence in this case. The chamber in the plaintiff’s mill has one receding side formed by the movable conical nut, and one upright side formed by the stationary cylinder. The evidence- shows that the mill thus constructed is a useful and valuable mill. In the defendant’s mill, both the surfaces of the chamber are receding, as well that of the cylinder as that of the ring. Thus, a larger opening is made to let in the bark, and it is very likely that this is an improvement. and that its effect is to aid in feeding the mill and in increasing its grinding capacity. In every new invention, the particular machine, when first reduced to practice, is measurably in an imperfect state. But the idea of the inventor is complete. There is, however, in the execution and mechanical construction, which go to embody the .original idea in a machine for practical use. a degree of imperfection which, from a want of experience, always attends the first construction. In the two machines in question here, the shape of the grinding-chamber is different in this respect only that in the plaintiff’s one of its sides is upright and one recedes, while in the defendant's both of its sides recede. A person using the combination discovered and put into use by the patentees, may, by expe-rienee in its practical operation, see where it can be altered, and may call in a mechanic and have the alteration made, which may improve the machine. This is a necessary conse-quenee of the practical use of the machine by a man of ordinary skill and judgment. But there is no novelty or invention in such alteration.

An illustration of this is to be found in a case recently tried before me in the city of New York, involving the title to a most useful machine called a burring machine, for the purpose of cleaning wool or cotton, and separating the dirt and foul stuff from the fibre. This had before been done by hand, at great expense. But a machine was invented whereby the whole operation was performed by covering a cylinder with a common card of leather. furnished with teeth formed with a hook on the outside and a slot below. As the cylinder revolved, the wool or cotton being brought close to it, was caught by the hooked teeth and drawn into the slot, in such manner that the fibre went- to the bottom of the slot, while the dirt remained on the top of the tooth. There was then a beater, which rubbed along the surface of the cylinder and brought off the dirt, and the operation. was complete. There was such demand for the machines that the business of constructing them became extensively profitable. In the suit of which I have spoken, the defendant had originally been in partnership! with the inventor in constructing the machines, and, after the partnership expired, continued to construct them without any right or license. When prose-ecuted by the inventor, he set up. among other things, by way of defence, that he had changed the form of the hooked teeth, and had altered the shape of the slots between the teeth. This, he insisted, was a great improvement. He had taken the whole of the patentee’s machine, and, slightly altering it. claimed the right to use it, and thus to absorb the -whole of the invention. The case referred to is that of Parkhurst v. Kinsman [Case No. 10,757]. But, if any such doctrine were to be incorporated into the patent law, and to be administered by courts and juries, as that such an alteration would be a defence to a charge of infringement, no patent of any machine, however useful, would be worth the parchment on which it is written. But this is not the law. A difference merely in shape is a difference in degree only, and not in the thing .c-self. In this case, the grinding chamber— the space through which the bark enters — is more open in one mill than in the other. But there is nothing new in this particular shape, because the shape of the grinding chamber is no part of the combination patented.

The same observations are equally applicable to the shape of the teeth. Their shape, whether they be straight or slanting, is no part of the patented combination. Either form will work very well, though the one may be better and more perfect than the other. But the form of the teeth, whether straight or slanting, is not new. Teeth of both shapes are found in many grinding mills, and neither party can claim either form as new.

The novelty of the patentee’s machine consists, then, in the combination of the movable conical nuts with the stationary cylinders, by which means the patentees are enabled to multiply the grinding chambers in a mill to any given number. The teeth were old. The mere form of the grinding surfaces was not new. But this multiplication of the grinding chambers, in the manner described, appears to have been never before known. That is the novelty and all the novelty there is in the matter. As to the subsidiary parts, such as the peculiar shape of the chambers and the peculiar form of the teeth, they are incidental. But no one has a right, without the authority of the patentees, to use the combination of the two parts that go to form the grinding chambers. If you shall think that that combination is incorporated in the machine of the defendant. the plaintiff will be entitled to your verdict. 'But if you shall think otherwise, your verdict will be for the defendant.

If the defendant has been guilty of violating the plaintiff's rights, the rule on the question of damages is, that the plaintiff is entitled to all the actual profits which the defendant has made by the use of the principle of the plaintiff's combination. In other words, the plaintiff is entitled to all the damages which he lias sustained by reason of the use which the defendant has made of the plaintiff’s property. This is, in effect, the same thing, because the law presumes that if the defendant had not put his machines into the market, the demand would have been for the plaintiff's, and that be would have received tbe profits on tbe machines which have been made and sold by the defendant. Vindictive or exemplary damages are not allowed. The jury are confined to the actual damages, and the law has provided that the court may increase those damages in proper cases.

There are some data in this ease which Juu can take as guides to the amount of damages. It is stated by one witness, that from the year 1843 to this time, a period of some seven years, the defendant has cast six hundred and thirty-two mills; that the average cost of those mills to the defendant was $20 apiece; and that they sold at retail for $45 each, and at wholesale for $37 and $40 each. But the difference between $20 and $45 on each mill is not all of it nominal profit. The interest on capital, the risk of bad debts and the expenses of selling the mills, are all to be taken into account in arriving at the profits which the defendant has made. The right of the plaintiff accrued in August, 1845, and the suit was commenced in June, 1849. The jury should confine their inquiry on the subject of damages to that period, about four years, and to the profits which the defendant derived from sales of his mills within that period.

The jury found a verdict for the plaintiff for $7.200. which was reduced by the court, by consent of the plaintiff to $6,000.

The defendant afterwards moved, on a case, for a new trial, on the ground of errors in the charge of the court, and of the excessiveness of the damages. But the motion was denied.