12 F. Cas. 1063 | U.S. Circuit Court for the Northern District of Illnois | 1859
The complainant states in his bill that prior to February 17th, 1847, he was the first and original inventor of certain new and useful improvements in reaping machines; and that letters patent were granted to him therefore, bearing date August 7th, 1847. That said letters patent were surrendered for insufficient specification, and three several patents dated April 14, 1S57, were reissued for distinct and separate parts of the- thing originally patented, pursuant to the act of congress of March 3d, 1837 [5 Stat 191].
That the defendants have constructed machines since the date of the reissued patent, in violation of one of the reissued letters patent, numbered 449. Hussey says: “I claim as my invention the combination of a vibrating scalloped cutter, the indentations of whose edges act as a series of moving shear blades, with slotted guard-fingers, the sides of which act as a corresponding series of fixed shear blades; the parts of such fingers forming the slot being connected at the front ends only, leaving the rear of the slot open and free for the escape of material that would otherwise clog the cutter, substantially as described.”
This combination is so succinctly and clearly expressed, that no one can mistake it. A vibrating scalloped cutter, combined with slotted guard-fingers, fastened in front and open in the rear, constitutes the invention. The cutter operates through the slots in the guard-fingers, and they, being fastened in front and open in the rear, permit the material which accumulates to escape.
And the defendants admit in their answer: “If the claim of the reissued patent, No. 449, should be so construed as to cover the employment of a vibrating scalloped-edge cutter, of any kind, in combination with slotted guard-fingers with the opening for the discharge of the material that would otherwise clog the cutter, whether such opening be placed above or below the cutter, then the defendants, further answering, admit that the defendant, Cyrus H. McCormick has long prior to and since the 14th of April, 1857, manufactured and sold large numbers of reaping machines involving the combination so claimed and construed; and that he has now on hand, completed and for sale, a small number of such reaping machines.”
This admission is made on the hypothesis that the court shall construe the claim to be for a vibrating scalloped cutter of any kind, in combination with slotted guard-fingers, with the opening for the discharge of material that would otherwise clog the cutter, whether such opening be placed below or above the cutter.
As stated, the admission is made in the language of the patentee, with the exception of the words, “whether such openings be placed below or above the cutter;” but as these words were not used by the pat-entee, it is difficult to see how they can affect his rights. The call is for slotted fingers, the parts forming the slots being connected at the front ends only, leaving the rear of the slot open and free. If the slot be open and free in the rear, it would seem that there can be no obstruction to the cutter by the clogging matter. “Whether the opening be' placed above or below the cutter,” is not in the case. It is both below and above the cutter, and unless some new rule shall be found, which shall enable the defendant to modify the claim of the plaintiff, we suppose it must stand.
In their further answer the defendants allege that Hussey is not the original and first inventor of such improvement, but long prior to the invention by him, substantially the same construction and combination was invented and described in letters patent granted to Cyrus H. McCormick, which letters patent are dated June 21, 1834, and that the machines were in use long prior to the invention of the complainant.
In answer to this, it is only necessary to say, that an inspection of McCormick’s patent of 1S34 will show that it contains no such combination of a vibrating scalloped cutter with slotted guard-fingers fastened at the front only, leaving the rear open and free, as called for by the complainant in his reissued patent of 1857. The cutting apparatus described in McCormick’s patent of 1834 was a “vibrating straight-edge sickled blade,” stated to be, “a long cutter of steel grooved or notched on its lower edge like a reaping hook, with the grooves running in a line toward the right of the machine.”
This cutter, in form and principle, was unlike the scalloped cutter of Hussey, to say nothing of the other parts of the machine, or of the combination claimed and so clearly described by him. The same remark will apply to the alleged improvement of McCormick, in 1840 or 1841. That consisted of “a vibrating cutter with a straight edge, and with the sickle teeth cut therein in sections, and inclined in opposite directions.” Whether this improvement had been the subject of experiment, and machines with the improvement had been sold to various persons in 1840-42, can be a matter of no importance, as it was wholly different from the right of the plaintiff. These machines, with “wooden slotted fingers,” as appears from the evidence, were abandoned by McCormick, and simple un-slotted fingers were substituted in their place. But not one of his experiments, however numerous they may have been, seems to have reached the organization and effect of the plaintiff’s machine, until, by his own admission, he adopted its principles.
If anything in addition to this testimony
It is objected that the scallops used by McCormick in his cutting apparatus have less depth than those used by Hussey. This is a formal and not a substantial objection. The scallops were not required to be of any particular depth, or that the angle they make should be greater or less. This was necessarily left to the knowledge and experience of the mechanic. Practical utility was the end to be attained in the use of the scalloped cutter. Some mechanics may prefer one angle, some another. A right which may be lost by the variation of an angle, can be of no value.
The cutting operation of Hussey is done by shears, which cut the substance presented at an angle, and which many prefer to the sickle-edge cutter. Whether the cutting is done by the one or the other instrument, it is rightly denominated the scalloped cutter.
The objection that the sole purpose of the surrender and reissue of the complainant’s patent was to cover what Hussey had not invented and which he knew to have been previously invented and constructed by McCormick, does not seem to accord with the admission of the defendants, that if the claim should be sustained as made, they have manufactured and sold since April 14, 1857, a great number of reaping machines, involving the combination so claimed and constructed.
The legal presumption is, from the action of the patent office, that the reissued patent is for the same invention as 'the original patent (O’Reilly v. Morse, 15 How. [56 U. S.] 62); and in that case it was held that “differences in the claims are consistent with the identity of the thing designed to be patented in both patents, it being one object of surrender to correct by changing the description, or claim, or both. This is the well settled doctrine of the supreme court” Batlin v. Taggart, 17 How. [58 U. S.] 74.
In their answer the defendants admit “that the letters patent of August, 1847, were surrendered, and that thereupon three several patents were granted April 14, 1857, to Hussey, each for a separate part of the reaping machine described in the surrendered letters patent”
In the patent of 1847, a combination of the scalloped cutter with a slotted finger connected at the point and open at the rear, was represented. The description in the reissued patent is more concisely and clearly expressed; but the identity of the invention plainly appears. The corrected phraseology is clearly within the provisions of the patent law.
A repetition of the elements of Hussey’s invention and their combination could add no strength to what has been said in regard to his improvement. There is no ground on which to question his good faith in making a surrender of his patent, and procuring three several patents, each for a separate part of the reaping machine described in the surrendered letters patent.
Nor is there any evidence of a just pre-tention' on the part of C. H. McCormick, that he was the original and first inventor of the improvement claimed by Hussey. In the absence of all evidence as to the want of novelty in this invention, we may well conclude that Hussey was the inventor, and that he is entitled to damages for a violation of his patent, and to an injunction.
As Cyrus H. McCormick, from the facts alleged and admitted in the answer, is the person responsible to the complainant, the other two defendants being his employes, the bill will be dismissed as to them, and the case will be referred to a master, who will take an account, etc., under the directions of the counsel of the complainant, subject to the objections which may be made by the defendant’s counsel.