1 Blatchf. 258 | U.S. Circuit Court for the District of Connecticut | 1846
The motion for a new trial in this case was held over for advisement to enable the court to give further consideration to one of the questions presented — that in relation to the right of the assignees under their assignment from Thomas Blanchard, made prior to the extension of the patent by the acts of congress passed in 1834 [6 Stat. 589] and 1839 [6 Stat. 748]. It was insisted by the counsel for the defendant, that they took no interest thereby in tile extended term; and the chief ground relied on was, that an act passed for the benefit of the assignees would be unconstitutional, inasmuch as the constitution only authorizes congress to secure, for limited times, to inventors, the exclusive right to their discoveries. The construction claimed by the plaintiffs, it was said, instead of rendering the act of congress extending the patent, beneficial to the inventor, who had been inadequately rewarded by the price which he had received from the assignees for his invention, would be directly injurious to him by depriving him of the right to use his invention during the extended term for which the exclusive privilege was conferred on the original assignee. But the proviso for the benefit of the assignees in the act of 1839, is too explicit in its language to leave any doubt as to its true meaning and intent. After extending the patent for a further term of fourteen years, it is provided “that all rights and privileges heretofore sold or granted by said patentee, to make, construct, use or vend the said invention, and not forfeited by the purchasers or grantees, shall •enure to and be enjoyed by such purchasers or grantees respectively, as fully and upon the same conditions during the period hereby granted, as for the term that did exist when such sale or grant was made.” It is clear that congress intended to give to assignees of the old patent an equally exclusive privilege in the extended term. We do not think the clause can be construed in any other way consistently with the fair import of the language. And undoubtedly, inasmuch as the constitution confers on congress the power to grant the exclusive privilege only to the inventor, there would seem to be force in the objection, that the grant to assignees does not come within the scope of their authority.
The direct question was not involved in the four cases that were so elaborately argued at the last term of the supreme court. See [Wilson v. Rousseau; Simpson v. Wilson; Wilson v. Turner; Woodworth v. Wilson] 4 How. [43 U. S.] 646-716. But it was very much discussed, and became the subject of consideration, not as necessarily involved, but as connected with the matters-in controversy in those cases. The power of congress to reserve these rights and privileges to assignees seemed to be conceded, according to my recollection, as incidental to the general power conferred by the constitution on congress to promote the progress of the useful arts by securing to inventors, for limited times, the exclusive right to their discoveries. The assignees of the original pat-entee are frequently most instrumental in putting the invention into general use, and bringing it successfully before the public, by the expenditure of their time and money. More than half, probably, of the useful patented inventions have been thus brought into general public use, the successful results operating, directly or indirectly, for the benefit and interest of patentees. Considerations of this kind may well be taken into account by congress, and weight be given to them in granting extensions. Congress save the respective interests of the patentee and his assignees, by qualifying the new grant, believing that in truth the assignees have expended time and money to a much greater extent than they have received remuneration; and, although this would not authorize them to renew the grant to assignees, as no such power exists in the constitution, still, in exercising the power in favor of the inventor, it would perhaps be going too far to say that they have no right to regard incidentally the interests of the meritorious assignee.. Without the power of thus qualifying their grant, congress would be under the necessity, oftentimes, of denying altogether any extension. A just view of the rights of air parties may require that assignees should be-protected in their interests, if the patent be renewed.
A question was presented by the counsel for the defendant, as to the charter of incorporation of the plaintiffs. The power of the company under their charter, to purchase any interest in patent rights, is founded on the language of the act of incorporation, namely, “that Isaac Scott and others-be and they are hereby incorporated by the-name of ‘Blanchard’s Gun-Stock Turning Factory,’ with all the powers and rights vested by law in manufacturing corporations in this commonwealth.” So far as regards the right of this corporation to hold personal estate, including the interest in this patent, it is urged that the power is conferred by a general reference to the law regarding manufacturing corporations. We have endeavored to find the law of Massachusetts, that existed at the time of the incorporation of the plaintiffs, and to which the charter has reference for the extent of its powers, but have not been successful. There is some embarrassment in this part of the case, on account of the omission to give this act in evi
The other objections were mainly questions of fact, which were submitted to the jury under what the court regard as proper instructions.
One was, that the lateral motion in the plaintiff’s machine is produced by a screw, and in the defendant's by a wheel and axle. This we consider no part of the invention. It -was a mechanical contrivance to operate the machine. The ■ inventor, having struck out his idea, goes to a mechanic to get the mechanical power to put in operation his combination. The mechanic has at his command various modes of producing power. These mere contrivances, such as any mechanic can supply, are no part of the invention.
It was further said that in the defendant’s machine, there are three motions given to the pattern and rough material, namely, the rotary, the vibratory, and the lateral or longitudinal, all of which three compound motions are applied to the frame; whereas, in the plaintiffs’ machine, the cutter and friction wheels have the lateral motion, and not the pattern and rough material in the frame. The question was put to the jury whether this varied materially or substantially from the plaintiffs’ arrangement; whether so materially as to distinguish the defendant’s machine from the plaintiffs’; whether, on the contrary, it was not a merely formal alteration; and the jury have passed upon it. The court were bound to submit that question to the jury. Our impression is, that even this is rather a mechanical contrivance, making no substantial change in the machine, whether the lateral motion is given to the one or to the other of these parts. The relative effSct of the parts in acting on each other is the same.
It was said also, that the machines are thrown out of gear in a different manner and by a process materially different. But that may be done in various ways. We think that forms no part of the invention.
In the defendant’s machine the axes of motion of the cutter-wheel and of the rough material are not parallel, and it was said that the machine would not work if they were so; whereas by Blanchard’s specification and in his machine, it is made essential that they should be parallel, and they were in fact so made. This was set up as a radical difference between the plaintiffs’ and defendants’ machines. We think it was a question of fact for the jury whether this was a substantial variation or not; and it was properly put to them to say, whether the departure in the defendant’s machine from a precisely parallel relation of the two axes constituted a material variation from the plaintiffs’ arrangement.
There were some other objections founded on the alleged invalidity of the first and second patents which were extended by the act of congress of 1839. It was alleged on the part of the plaintiffs that the first patent was defective and was surrendered, and that a new patent was taken out for the same invention. But it W'as objected on the part of the defendant that the new patent was issued for the term of fourteen years from its date and not from the date of the former patent, and that the former patent was never in fact surrendered or cancelled; and that, for both of these reasons, the second patent was void, and consequently there were no existing rights to be extended by the-act of congress. Assuming this to be so, we do not think that the mere legal right of the patentee under his patent, new or old, is the right which was extended to the patentee and his assigns by the act of congress. On the contrary, we hold it to have been the exclusive right to the invention, and that the specification was referred to in the act, only to identify what constituted the invention which congress meant to extend.
It was said that the specification claims that any article can be turned from a model by the machine, and made larger or smaller-than the model, but preserving throughout the same proportions; and the counsel for the defendant insisted that this claim was unsupported by the evidence. The answer to this objection is that the claim of that power in the specification is a very qualified one, and that the patentee advises a change of the model itself in such cases. It is not put forth as a leading and useful quality of the machine. It was in point of fact proved on the trial that articles could be turned larger or smaller from the same model, but that the capacity of the machine to perform such work was limited.
It was further said that the claim in the specification is, that ■ by this invention any irregular surface or form may be turned like the model, whatever it may be; but that in fact it is incapable of turning a square shoulder. That probably is true; but we think it rather too remote and extreme a defect to seize hold of for the purpose of destroying a patent for an invention so exceedingly in