Lead Opinion
delivered the opinion of the court.
These five cases may very conveniently be considered together, since they all present, in the main, the same questions.
The Cawood patent, for alleged infringements of which the suits were brought, has heretofore been the subject of consideration in this court, where it has been at least partially construed, and its limits have been defined.
“ Close to these is a cast or raised block nearly as high as the rail, and with' its farther edge also shaped to fit the sides of the rail, when it lies across the anvil in its natural position. Next this [says he] I attach to the face of the anvil, by dovetailed tongues and grooves, or in any other convenient manner, what I call a movable press-block with a similar but reversed shaped edge, lying opposite the other, so as to enclose the rail between the two, as in the jaws of a vise. The blocks I work by eccentric cams on a shaft which is attached to the anvil by two standards, with bearings either cast on or bolted to the edge of the same, so that half a turn of the crank will move the press-block over a space a little more than half the width of the rail.”
The mode of use is then described. The rail and the piece of iron to be welded on having been heated, the former is swung from the fire into the space between the blocks, when, by half a turn of the cams," the blocks are closed upon it. The welding piece is then laid on top of the rail and levelled up by a swage held by the smith, of the form of that section which projects above the blocks. Such is the description. It is succeeded by the claim, as follows: —
“ I do not claim the anvil-block nor its recesses, but what I do claim as my invention, and desire to secure by letters-patent, is the movable press-block, having its edge formed to the sidеs of the rail in combination with another block with its edge of a similar but reversed form (the movable block to be operated by two cams, or in any other convenient manner), for the purpose of pressing between them a J or otherwise shaped rail, thereby greatly facilitating the difficult operation of welding and renewing the ends of such rails after they have been damaged, in the manner herein described and set forth.”
What, then,' in view of this specification and claim, was the invention patented? In Turrill v. Michigan Southern, &c. Railroad Co.,
Having thus endeavored to ascertain what is the true idea of the patent, we are prepared to examine the devices which the appellants contend were in existence and use before Cawood made his invention. Of these there are three only that have been pressed upon our attention. The first is the angle-iron machine. Between this and the Cawood machine there are points оf resemblance, but there are also very substantial differences. The purposes and objects sought to be accomplished by the machines are entirely unlike. It is always of importance to consider the object an inventor of a machine.had in view, because thus the operation of its different parts and- the functions performed by each can be better understood. The purpose of the angle-iron machine is to facilitate making angle-iron. That of the Cawood is to aid in mending rails already made. The angle-iron machine is a device to assist in welding together, at right angles with each other, two iron bars, making a fillet in the interior angle to strengthen the rail when made. To effect this, the fixed block on the anvil has necessarily a peculiar construction, unlike that in the Cawood machine. It is bevelled, or rounded off, at the top of the face opposite the movable block, so as to give room for the formation of the fillet. Consequently, that face cannot answer reversely to the face of the movable block. And not only is the face of the fixed block uniformly and necessarily unlike that of the fixed block in the Cawood machine, but its function is entirely different. It is to furnish support for one of the two bars designed for the formation of the angle iron. ■ One entire limb of the angle iron is laid upon top of the block, unconfined laterally, and there exposed to the hammer, the block being the anvil. The iron is thus left free to spread out in both dirеctions, instead of being prevented from spreading laterally by the press-block, as in the Cawood machine. There is nothing to preserve a shape already formed. The other bar of the -angle iron, or its other limb,
The second device, which,the appellants insist anticipated the Cawood invention, is what is denominated the bayonet-machine, used at the Springfield Armory before 1850 and since, for forging parts of bayonets. In some particulars there are resemblances between the devices : but there are obvious • dissimilarities, not only in the purpose and results sought to be obtained, but in the relation of the parts to each other, in the work to be done by those parts, in the manner and effect of their combination, and in their mode of operation. The differences.are sufficient, in our opinion, to justify the conclusion that the machines are different devices, embodying distinct principles. The bayonet-machine is in form and in substance nothing but a hinge-vise, with a peculiar shape of the jaws, intended to facilitate operations upon the shank and socket of a bayonet. The jaws are fitted tо hold the bayonet in place, while the shank is turned upward, through and above their upper surface, in order that a flat piece of iron may be welded upon the shank and prepared to be afterwards converted into a socket. The lateral surfaces of the jaws come into actual contact with each other, except'for a short space,.equal to the diameter of the bayonet-shank. They hold only the lower segment of ■ the shank, allowing the, upper segment to project a considerable distance above the upper surface.. The inner surfaces do not constitute a mould. They do not maintain the shape of the shank, enclosed within and between them during the process of
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Still another important difference is apparent. In the bayonet machine the movable jaw is pushed back by a spring
It is next contendеd that the patent was anticipated by the Church machine, patented in England in 1846. We have before us the specification, and a model constructed from that specification. It requires but little attention. It is described as a machine which may be usefully employed for straightening and flattening the rails for railways, as well as other similar uses. As the model represents it, the machine is totally incapable of performing the work of the Cawood machine. It is not an anvil. There is no fixed block cast as a part of an anvil. There is a stationary die, part of a frame against which one side of the rail is placed, to resist fhe lateral pressure exerted upon it by a sliding lateral die on the other side of the rail, and above is a horizontal bar which is forced downwards by a series of jointed levers, carrying another die upon the upper surface of the rail. It is plain this description and this model could never “have informed any one of the device Cawood invented. It does not show how the blocks or jaws can be combined so as to leave the upper face of the rail to be repaired exposed for the action of a swage and a hammer. It is said, however, if the upper
That the old slide vise contains the principle of the Cawood machine has not been contended with much earnestness, and certainly it cannot be successfully. Nothing, then, is found in the case sufficient' tó show that the patent is void fof^want of novelty of the invention, and the -court was not ■ in error in holding it valid.
We come next to the question whether machines employed by the defendants in repаiring the ends of railroad rails are infringements of the patent. Those which have been used by the several companies defendants, and which are claimed to have been infringements, were, in addition to the Cawood, seven in number. They were the “ Illinois Central,” the “Etheridge,”, the “Whitcomb or Cleaveland block,” the “ Michigan Southern,” the “ Bayonet vise,” the “ Beebee and Smith,” and the “ Blaine reversible rolls,” all of which, except the last, were held by the Circuit Court to be infringements. Of these, the Illinois Central Railroad' Company has used only the “ Illinois Central,” the •“ Bayonet vise,” and the- “ Beebee and Smith; ” the Pittsburg, Fort Wayne, and Chicago Railroad Company has used the Whitcomb or -Cleaveland block; the Chicago and Alton Railroad Company has used only the Whit-comb; the Chicago, Burlington, and Quincy Railroad Company has used only the Cawood and the Etheridgé; and the Michigan Southern and Northern Indiana has used only the Beebee and Smith, the Bayonet vise, and the Whitcomb., We have had before us models and drawings of them-all, and we have com sidered the testimony respecting them- which is fou-nd in the records. It is but faintly contended, if- at all,- that -the Illinois Central, the Etheridge, and the Whitcomb machines are not
If the claim be thus limited, if such was the invention Cawood made, the use of the Bayonet vise and of the Michigan Southern, cannot, we think, be regarded as an infringement. Both the machines were manifestly copied from the Springfield machine, which we have endeavored to show did not anticipate or contain the principle of Cawood’s invention. Each is substantially a vise, and not an anvil. The combination of the blocks is unlike that of the Cawood improved anvil. It is not through the anvil, and the rail when in place for welding and shaping does not rest on the anvil. The iron to be hammered rests upon the jaws, and consequently it is much more liable to displacement than it would be if arranged as described by Cawood. In each only a part of the force of the blows reaches the anvil; for the movable block is supported by an arm attached by a hinge, or by journals, to the base of the block. It is true that by the
■ Much of what we have said is applicable to the Beebee and Smith machine, the use of which the Circuit Court also held to be an infringement of the Cawood patent. To the inquiry, what constitutes an infringement of that patent, it is indispensable to keep in mind what the invention patentеd is. It is not, we repeat, any mode by which the result sought and obtained is secured, but a machine that attains the.desired end by means of described agencies, combined in a described manner and operating in a described way. Thus the patent was considered in 1 Wallace. Now, we think the Beebee and Smith machine, though arriving at the same result, does not profess to attain it by means of the agencies described in the Cawood patent, or any agencies that can be regarded as equivalents combined in the manner described by Cawood, and operating in the same or an equivalent way. True, it is a machine for holding a rail while the exfoliated or crushed end thereof is undergoing reparation, but it performs its functions in a manner
We do not care to expend much time in refuting the argument of. the appellee that a bottom support for the rail in the use of the Cawood invention is injurious, and that it is, therefore, no essential part of the device patented to him. Considerable evidence has been given tending to show that the face of the anvil under the jaws has been chipped off, or cut out, and that thus altered the thing invented works as well, if not better, than it would if the alteration had not been made. In the nature of things, this is impossible, and no amount of testimony can convince us that such is the fact. Manifestly, the chipping off was made to evade the patent. The best mode of using the device would doubtless be to construct the blocks so as to fit exactly the sides of the rail. Thus, its shape and its height would be maintained during tbe process of hаmmering and shaping the crown. But this exact fit may not always occur, and whenever it does not, the bottom support on the anvil Is of
It follows, from what we have said,'that the decrees must be reversed and set aside, so far as the defendants have been held accountable for the use of the Beebee and Smith machine, or the Bayonet vise, or the Michigan Southern. But so far as the Whitcomb, the Etheridge, the Cawood, or the Illinois Central have been used, the defendants are answerable to the complainant.
We come, then, to the inquiry whether there was error in the ascertainment of the profits made by the use. of those devices. This inquiry is exceedingly embarrassed by the very unusual manner of- proceeding in the court below. After having determined that the Cawood patent was valid, the court, instead of deciding whether there had been any infringement, by a decretal ordеr referred to a master to find what machines used by the defendants were infringements, and to state an account between the parties. In obedience to this order, the master reported that seven machines used by the defendants infringed the patent, and on that assumption he returned stated accounts. This report the court corrected, holding that one of the seven machines was not an infringement; and sent the case back to the master to report the damages sustained by the plaintiff from the use by the defendants of the other machines, giving him liberty to reconsider his finding as to the cost of fuel and labor in repairing rails on the common anvil and the plaintiff’s machine, with liberty also to 'hear additional evidence, and report suсh conclusions as might be warranted by the whole testimony. Under this second reference, the master submitted another report, to almost the whole of which exceptions were taken. The court sustained those which
There is nothing more in these cases that we feel called upon to notice, except the suggestion that repairing railroad rails was unprofitable, compared with what might have been done. It has been argued that it would have been better for these defendants, if, instead of repairing the crushed and exfoliated ends of the rails, they had cut off the ends and relaid the sound parts, or had caused the rails to be re-rolled. Experience, it is said, has proved that repairing worn-out ends of rails is not true economy, and hence it is inferred that defendants have derived no profits from the usе of the plaintiff’s invention. The argument is plausible, but it is unsound. Assuming that experience has demonstrated what is claimed, the defendants undertook to repair their injured rails. They had the choice of repairing them on the common anvil or on the complainant’s machine. By selecting the latter,'they saved a large part of what they must have expended in the use of the former. To that extent they had a positive advantage, growing out of their invasion of the complainant’s patent. If their general business was unprofitable, it was the less so in consequence of their use of the plaintiff’s property. They gained, therefore, to the extent that .they saved themselves from loss. In settling an account between a patentee and an infringеr of the patent, the question is, not what profits .the latter has made in his business, or from his manner of conducting it, but what advantage has he derived from his use of the patented invention.
We will pursue the subject no farther. It follows from what we have said that in those cases in which the defendants have been charged with the profits made from the use of' the “ Bayonet vise,” or the “ Michigan Southern ” machine, or the “ Beebee and Smith ” machine, the decrees of the Circuit Court are erroneous; while in the other cases, the defendants having used only the Cawood, or the Etheridge, or the Illinois Central,
In Illinois Central Railroad Company v. Turrill, and Michigan Southern and Northern Indiana Railroad Company v. Same,
Decrees reversed, and causes remanded for further proceedings in accordance with this opinion.
In Chicago and Alton Railroad Company v. Same, Chicago, Burlington, and Quincy Railroad Company v. Same, and Pittsburgh, Fort Wayne, and Chicago Railroad Company v. Same,
Decrees affirmed.
Dissenting Opinion
with whom concurred Me. Justice Swayne, dissenting.
I dissent from so much of tbe opinion and judgment in these cases as approves tbe estimate of damages made by tbe court below.