13 F. Cas. 807 | U.S. Circuit Court for the District of Massachusetts | 1861
(charging jury). According to the uniform practice in this court, it now becomes my duty to direct your attention to the nature of the controversy between these parties as exhibited in the pleadings, and to give you such instructions in matters of law as seem to me to be applicable to the evidence in the case. You are the judges of the credibility of the witnesses and of the force and effect of the testimony; and it is exclusively within your province, under the instructions of the court, to determine all questions of fact involved in the issue. But it is the province of the court to determine all questions of law, and it is your imperative duty in such matters to follow the instructions of the court. Unless the rule were so, it would never appear on what principles of law the jury proceeded in finding their verdict. Every verdict, in contemplation of law, is founded upon the facts of the case as ascertained by the jury, and the law applicable to that state of the case as determined by the court. Under our jurisprudence, the action of the
This is an action of trespass on the case, for an alleged infringement of a supposed new and useful improvement in sewing-machines, secured to the plaintiff by certain letters patent. Among other things, the plaintiff alleges that he was the original and first inventor of the improvement, and that letters-patent for the same were issued to him on the 7th of March, 1854. By recurring to the declaration, however, it will be observed that the letters-patent first issued were subsequently surrendered and cancel-led, and that a new patent, on an amended specification issued to him on the 26th of February, 1856, to continue for the term of fourteen years, from the 7th of March, 1854 (which was the date of the original patent). The plaintiff also alleges that the defendant, on the 4th of March, 1856, and at divers other times, before and after-wards, during the term of the patent, and before the purchase of the writ, did unlawfully and wrongfully and without the consent and license of the plaintiff, make, use, and vend to others to be used, his said improvement.
Without further reference to the declaration, it will be sufficient to say that the suit is founded upon the reissued patent of the 26th of February, 1856, and that the writ is dated on the 28th of April of the same year. Of course, the plaintiff can only recover for such infringement of his patent, if any, as the evidence shows the defendant committed within the period embraced between those dates. But there is no controversy on that point, for it is admitted by the defendant that he sold the machine given in evidence by the plaintiff, as his machine, within that period, and it is not claimed by the plaintiff that the evidence shows that the defendant sold any other.
As an answer to the declaration, the defendant pleads that he is not guilty, and has filed certain written notices in the case, setting up two general grounds of defence, to which more particular reference will hereafter be made. To maintain the issue on his part, the plaintiff, amongst other things, introduced the reissued letters-patent described in the declaration. That patent as reissued, bears date on the 26th of February, 1856, and is the one on which the suit is founded. At a later stage of the trial, the plaintiff introduced a model of the patented machine, as furnished to the patent office, which is the one constantly denominated during the trial as “the plaintiff’s machine.” His patent is accompanied by the specification and drawings, and you are instructed that it is prima facie evidence that the plaintiff is the original and first inventor of what he has described therein as his invention. Your attention, however, will be chiefly directed to the third claim in the specification, because it is that claim only which the plaintiff alleges that the defendant has infringed.
Omitting the first and second claim as comparatively unimportant in this investigation, it reads as follows: — “What I claim as my invention and desire to secure by letters-patent is, 3d. The feeding of the material to be sewn by means of a vibrating piercing instrument, whether said instrument be the needle itself, or an independent instrument, in the immediate vicinity thereof, substantially as herein described.”
The plaintiff also introduced the machine, which he alleges the defendant sold, and which he claims to be a violation of the exclusive right secured to the plaintiff by his reissued letters-patent, and the defendant admits that he sold that machine at the time and place alleged in the declaration, but he denies that the machine, as sold, infringes the third claim of the .plaintiff’s reissued patent; and he also denies that the plaintiff is the original and first inventor of anything that is embodied in his (the defendant’s) machine.
These remarks will be sufficient to enable you to understand the foundation of the plaintiff’s suit, and the two general grounds of defence set up by the defendant. Two principal questions are presented, which it is your province to determine from the evidence in the case under the instructions of the court, and you will adopt such order in considering them as you may think proper. But in view of the peculiar nature
One of the questions is. whether the plaintiff is the original and first inventor of what he has described in the specification contained in his reissued letters-patent so far as respects the third claim of the patent; and the other is, whether the defendant's machine, as sold by him, and given in evidence by plaintiff, infringes that claim of the patent, when properly construed and understood according to its legal effect.
In considering those questions, and weighing the evidence bearing upon each of these points, it becomes necessary that you should know and carefully observe what the plaintiff's invention is, as he has described it in his patent, specification and •drawings, so far as respects that claim, That question it is the duty of the court to •determine as a question of law, arising upon the construction of the 'patent, including, of course, the specifications and •drawings accompanying the same. Pursuant to that duty, I instruct you that the third claim of the plaintiff’s patent is for his described means of feeding the cloth or other material to be sewed in a sewing-machine. Feeuing the cloth or material to be sewed in a sewing-machine may be un-derstood as signifying such a regular, progressive advance of the material as shall space the stitches of the seam regularly, so that they will be of equal length; and the third claim is for the described means to effect that end. It is not for the result .attained, but for the means he has invented of attaining it substantially as described in the specification. Detached passages of the specification, if separately considered, migiit lead to a different conclusion, but the different parts of the instrument must be •compared with each other and considered as a whole, and when so construed it leaves no doubt in the mind of the court that the claim must be limited to the means of feeding the material to be sewed in a sewing-maehine. substantially as described in the specification and illustrated by the -drawings.
It is insisted by the plaintiff that this part of his invention consists in applying power by which the material is fed directly to the cloth or other material to be sewed, and at or near the point where the stitches are being formed; and it is undoubt-edly true that the feeding instrument in the modes of operation described in the specification. is to be applied directly to the material to be fed. and when the vibrating piercing instrument for feeding is the needle itself, it is applied to the material at the point where the stitch is being formed, for the specification states that the descent of the needle perforates the cloth and by the action of the described devices the pressure of the holder upon it is relievéd, permitting the vibration of the needle to move forward the cloth, a sufficient distance for the succeeding perforation, the described spring acting through the holder as the needle-bar rises, so as to keep the cloth from slipping when the needle descends, and again perforates it. Beyond a question, therefore, the vibration of the needle during its first perforation, as stated in the specification, feeds forward the cloth and permits the needle in its second descent to have the proper position, and during the second descent of the needle, the cloth is fed forward as before, the needle making another hole, or again perforating the cloth as it again descends. These considerations lead necessarily to the conclusion that by the tx-ue construction of the patent the feeding action of the machine is performed by the operation of sewing; the vibrating movement of the guide B, and with it the needle-bar, causing the material to be moved forward after it is perforated by the needle, the holder relaxing for that purpose.
Another feeding and perforating arrangement is also suggested in the specification, which as there stated is designed to be used for making the holes in leather and other heavy work, while the needle preceding the awl (as stated in the specification) forms the seam. And upon that subject you are instructed that when an independent instrument in the immediate vicinity of the needle, is used for feeding, it has the same mode of operation as the needle has when used separately in perforating the cloth for sewing, but the needle forms the seam. When an independent instrument in the immediate vicinity of the needle is used for feeding, it is applied directly to the material to be fed. and near the point where the stitches are being formed. But whether the vibrating piercing instrument used be the needle, or an independent instrument in the immediate vicinity of the needle, the third claim of the plaintiff's patent is not for an abstract idea or principle; nor for every means of applying power directly to the cloth at or near the point where the stitches are being formed, for the purpose of feeding it in a sewing-machine, in contradistinction to applying power for that purpose to a plate, clamp, or bar. to which the clctli is attached. On the contrary, it is, as before stated, for such means of applying power to the cloth for the purpose of feeding it in a sewing-machine. as the inventor has substantially described in the specification of his patent.
l’or the same reason the claim of the patent under consideration is not for the
In this connection you are also instructed that the feeding of the material claimed in the patent as the result to be attained by this part of his invention, is not to be understood to mean every advance of the material, regular or irregular, equal or unequal, but such regular and progressive advance as is essential to the useful action of a sewing-machine, and which the means described in the plaintiff’s specification were designed and adapted to effect; and whatever parts in the plaintiff’s specification necessarily act in connection with the vibrating piercing instrument in causing or enabling it thus regularly and progressively to advance the material, and without which the action of the vibrating piercing instrument either would not advance the material at all or would advance it so irregularly as to be useless in a sewing-machine, must be deemed essential parts included in the claim to the extent that they modify the action of the vibrating piercing instrument. No one probably would fail to see that in order to feed the material so as to obtain the described result, there must be a table or some equivalent mechanical device to keep the cloth in position, so that it will resist the thrust of' the piercing instrument while it is making the perforation and after the pressure of the holder upon it is relieved to permit the needle as it vibrates to move forward the cloth a sufficient distance for the succeeding perforation. For reasons equally obvious it may be assumed that the vertical bar or holder when held down upon the cloth by the spring, is quite necessary to the proper operation of the feeding arrangement, and upon this subject you are instructed that the surface below the material (called the table) which supports the cloth when it is pressed by the vertical bar or holder so as to keep the cloth from slipping as the needle descends and perforates it, and also the “cloth-holder,” which exerts its pressure for that purpose, thus causing the material to be-regularly spaced (the said means of supporting and holding the material being such that the same can be freely moved by the operator so as to change the direction of the seam at will as the same is advanced) are included in the claim as necessary to the plaintiff’s mode-of operation in feeding the material to be sewn, so far as the functions performed by them modify the action of the feeding instrument; but in no other respect can they be regarded as included in the feeding apparatus.
Guided by these principles as to the construction of the patent, you will proceed to the consideration of the merits of the controversy, and I shall direct your attention in the first place to the question whether the plaintiff was or was not the original and first inventor of what he has described in his specification as his invention so far as respects the third claim of the patent. Whether he-was so or not is a question of fact for your determination under the instructions of the court. Your attention has already been drawn to the fact that the reissued letters-patent are in evidence in the case, but you should bear in mind in this connection that the plaintiff has also introduced the original letters-patent and the application on which
It is insisted by the plaintiff that the feeding apparatus described by him in the specification of his reissued patent, and set forth in the third claim as the feeding of the material to be sewed by means of a vibrating piercing instrument, whether said instrument be the needle itself or an independent instrument in the immediate vicinity of the needle, substantially as described, was invented by him and reduced to practice in the form of an operative sewing-machine as early as the 27th of October, 1848, and that the same invention, so far as respects the means of feeding the material to be sewed in a sewing-machine, was subsequently embodied in his original letters-patent of the 7th of March, 1S54, and is now embodied in the reissued letters-patent on which the present suit is founded. On the part of the defendant, every element of that proposition is denied. He denies that the plaintiff made the invention in question so far as respects the described feeding apparatus at so early a period, or at any other time prior to the date of the application for his original letters-patent; or if he did that he ever as matter of law or in fact reduced it to practice in the form of an operative sewing-machine, prior to the date of that application: anu finany, he insists on this branch of the case, that what the plaintiff has embodied in the reissued patent is not the same invention as that described in the 'caveat, and embodied in the old red machine, but in point of fact is a substantially different invention, so far as respects the described feeding apparatus, and was designed and is adapted to effect the feeding of the material to be sewed in a sewing-machine by substantially different means and by a mode of operation substantially different. Whatever the plaintiff may have invented prior to his application for his patent, is of no consequence in this controversy, unless it appears that the same or some substantial and material part of the same which is new and useful is embodied in his reissued letters-patent, because it is for the infringement of that patent only that the defendant is sued in this case. When I speak of the patent, you will of course understand that I refer to the third claim of the patent, because it is only that claim that the plaintiff charges the defendant with having infringed. It becomes necessary for you to inquire and determine what, if anything, the plaintiff did invent and reduce to practice in the form of an operative sewing-machine, so far as respects the feeding apparatus, prior to the date of his application for the patent; and if anything, whether the same or a substantial and material part of the same is embodied in the reissued letters-patent, as construed and defined by the court. Although he invented a new and useful apparatus for feeding the material to be sewed in a sewing-machine, prior to the date of his application for his original patent, still, if no substantial and material part of the same which is new and useful is embodied in his x-eissued letters-patent, he cannot rightfully claim for the purposes of this suit, that his invention extends further back than the date of his application for the reissued patent. Differences merely in the form of the machinery or of the devices in the plaintiff's patented apparatus for feeding the material in a sewing-machine, as compared with that exhibited in the old red machine, will not authorize you to find, that the former is a new invention as compared with the latter, even though the differences may amount to an improvement, if the old red machine in point of fact was an operative sewing-machine and i-educed to practice as assumed by the plaintiff. But if the patented apparatus accomplished a substantially different result by substantially different means, and in a mode of operation substantially different, then there is nothing new and useful in common between the two machines. And if not, then the plaintiff cannot can-y back the date of his patented invention to any period prior to the time he filed his application for the original patent. Among other things, it is suggested by the counsel of the plaintiff that the holder used in the old red machine, if the machine be tipped down on its side, will pei'form, for the purpose of feeding the material, both the function of the table and the presser foot; and that in substance and effect, the old red machine becomes and is the same in principle and in the mode of operation as the patented machine, so far as respects his feeding apparatus. Four experts have been examined in the case, and no one I believe has testified that the machine as constructed was designed to operate in that position. Upon that subject I instruct you that if it would require invention to break up the machine and reconstruct it in that form, and put it into successful operation in that position, the suggestion of the plaintiff is entitled to no weight whatever: but if it would not require invention to make the proposed change in the position of the pai-ts in order to make an operative sewing-machine, in that new position, and to reconstruct it for the purpose, then you will give the suggestion such weight as you may think it deserves, bearing in mind that the plain
In this connection you will also take into consideration the S. C. Blodgett patent and machine, and all the evidence in the case respecting the same. On the part of the defendant, it is insisted that the Blodgett invention is prior in date to that of the plaintiff, even supposing that the plaintiff can carry back his invention to the time when he constructed the old red machine, and that the two machines, if the latter be turned down upon its side, are substantially the same. Every element of that proposition, however, is denied by the plaintiff, and evidence has been introduced on both sides bearing on the matter. Assuming the theory of the defendant to be correct, then the Blod-gett machine would supersede the old red machine to the extent of the suggested change in the position of the working parts of the machine. Unless the witness Blod-gett is mistaken, or unworthy of credit, it would seem that his invention was made before the old red machine was constructed by the plaintiff; but the question is one of fact, exclusively within your province, and as the question has been fully argued on both sides, I do not think it necessary to remark further upon the evidence. If the Blodgett invention was not made before the old red machine was constructed and reduced to practice in an operative machine, then the suggestion of the defendant is entitled to no weight; but if it was, then you will proceed to compare the two machines in connection with all the other evidence bearing upon the question, and give it such weight as you think it deserves. But suppose there is something in common between the old red machine and the patented machine of the plaintiff, still the defendant contends that the plaintiff cannot carry back the date of his invention to any period prior to the time he filed his application for the original patent.
To show that the feeding apparatus described in the specification of his reissued letters-patent was invented by him and reduced to practice in the form of an operative sewing-machine as early as the 27th of October, 1848, or certainly as early as the 7th of November of the same year, the plaintiff relies upon the old red machine, together with the parol testimony respecting the invention, and the caveat filed in the patent office, which is also in evidence in the case. Among other witnesses, the plaintiff himself was examined on the point. Reference will be made to certain portions of his testimony, not with any intention of entering into the details of the evidence, but for the purpose of fixing certain dates, and to present a general view of what the plaintiff did prior to his application for the original patent, which issued on the 7th of March, 1854. Irrespective of this statement (if in any respect it is incorrect), it will be your duty to weigh the whole evidence, and to apply the rules of law you receive from the court, to the true state of the facts as you find it from all the evidence in the case. He first constructed and used two needles to carry the thread, putting them into wooden handles, and sewing in the manner described by him in the early part of his testimony. Those wooden needle-holders, he stated, were made in June or July, 1847, and were occasionally used by him till some time in July of the following year. His first step towards constructing a sewing-machine was to prepare some patterns for needle bars, which was done in July, 1848. Needle bars were made from those patterns by his directions, and they are in evidence in the case. Afterwards he arranged them in a frame and got some gear-ings made, but they were not of a character to answer his purpose, as he stated, except as a basis of calculation for another set of patterns. AVithout entering into details, it will be sufficient to say that the frame as stated by the witness was a temporary one, and he did not attempt to sew in the machine. Having made his calculations, he constructed or caused to be constructed a new set of patterns and sketches, and employed a machinist to make another set of needle-holders and apparatus for a machine. They were accordingly made in August, 1848, and the plaintiff, after they were completed, took them, together with the shafting and gearing which he had provided, to a cabinetmaker, and employed him to make the frame. That machine had, as the witness stated, what has been called a wooden holder, like the one first introduced by the plaintiff, and he says he did enough sewing with the machine to satisfy himself that it “was going to be a good practical thing.” Something like a week or ten days elapsed before he did anything more to perfect the machinery. Intending to reconstruct the machine more thoroughly with a view to apply for a patent, he took the needle-holders out of the frame and carried them back to the machinist, in order to have another set made, with certain alterations and additions.
After the needle-holders were complete and the shafting and gearing had been somewhat improved, he then had a new frame made for his machine and put the whole in working order, using for that purpose the third set of needle-holders. As constructed, the machine had but one arrangement on the sides to receive a ratchet clamp. About the same time he also had a ratchet clamp made which he introduced in evidence; but as it was not completed and the arrangement to receive it was not finished, it could not be used. Certain other differences between this machine and the one previously constructed are also mentioned by the witness, which need not be recapitulated, as you will remember the whole testimony, and give it such weight as you may think it to deserve. Castings were also made by the
As stated by the plaintiff, it was signed and sworn to by him, and left with his solicitor, who, it seems, never presented it to the patent office during his lifetime, and it has remained among his papers until a recent period. On looking at the paper you will see that it contains no description of the intention or of its mode of operation, and is unaccompanied by any drawing, but what is more, it was never filed in the patent office, and, therefore, cannot be regarded as an application for a patent, within the meaning of the patent law. His caveat was duly executed and filed on the 7th of November, 1848, and was accompanied by a drawing to illustrate the invention. Having executed those papers and filed the caveat, he took the machine out of the frame, put it in a trunk which he purchased for the purpose. and on the same afternoon left Washington to return to his home. All those parts of the machine remained in the trunk in his house at New Hartford until he removed to Granville, when he put them into a box, and with the exception of some few parts which he used on other machines, they remained in the box until the first part of January, 1853. During the period from the 7th of November. 1S48. to the last of December, 1S52, or the first part of January, 1S53, he did nothing to perfect any needle-feed apparatus for feeding the material to be sewed in a sewing-machine. Taking his statement as true, he commenced soon after he returned from Washington to make the preparatory investigation to accomplish what is called the Grover & Baker stitch; and in November or December, 1848, he made a model. On the 17th of November, 1S4S. he wrote to his solicitor of patents the letter which has sometimes during the trial erroneously been designated as a second caveat.In that letter he stated, among other things, that “the needles cross each other and catch the thread from each needle, in the same manner as they do when both pass through the cloth, the object being to have all the looping on one side, and on the other side, leave but one thread, the same as in common back-stitching by hand. The only disadvantage (if it may be called a disadvantage) in this arrangement of the needles will be in the necessity of moving the wheel on which the work is placed by means of a feeder, as I had desigued to move the bar. which is very easily done.” Looking at the form of the paper, it is obvious that it is not a caveat, and by the true construction of the language employed it is equally clear that it was not designed as such by the writer. On the contrary, it is precisely what it purports to be. a letter from the plaintiff to his solicitor, and the filing of it in the patent office did not give it the force and effect of a caveat, within the meaning -of the patent law.
Some time in January, 1849, if the court understood the witness correctly, the plaintiff sent a rough model of this invention described in that letter to his patent solicito]' in Washington, and he states that it remained there in the possession of his solicit- or till October or November, 1S52. Little or nothing was done by him after that towards constructing any model or machine, except to make some patterns, till June or July,
Grover and Baker, on the lltli of February, 1851, had patented the same stitch, and had an application pending, or afterwards presented one for a reissue of their patent. An interference was declared by the patent office, and notice was given to Grover and Baker. Whereupon the witness Potter went to see the plaintiff to ascertain the nature of his claim, and, if possible, to adjust the controversy. They first met, as you will recollect, at Hartford, and there the plaintiff saw and examined the Grover and Baker machine. Failing to adjust the matter at that time, for reasons that need not be stated, they agreed upon a second interview; and accordingly they met at the office of Mr. Bates, in Westfield, in this state. Prior to these interviews the plaintiff had conveyed one half of the invention to Mr. Goodwin, so that it was necessary that he should be a party to the arrangement, if any should be made. At the first interview at Mr. Bates’s office, they agreed upon a second interview at the same place, and accordingly it was had, and Mr. Goodwin was then present and became a party to the written agreement, which, together with the assignment and bond from the plaintiff to Goodwin, is in evidence in the case. After some two or three days’ conference, the parties came to an understanding, which was reduced to writing, and the papers were left in the hands of Mr. Bates. Pursuant to that agreement and the arrangement between the parties, the plaintiff’s specification was divided, and the patent for the stitch, and perhaps the needles, was taken out in the name of Mr. Bates, and subsequently on the payment of the consideration agreed therefor, was assigned to Mr. Potter, who had acted throughout for the company, of which he was president. By virtue of that transaction, and of the assignment of the patent by Bates, which was subsequently made, the plaintiff parted with all his interest in so much of his invention as was included in the patent to Bates. That patent was granted on the 22d of February, 1S53, and on the 12th of April in the same year, a patent was issued to the plaintiff, for the rotary clamp.
As the plaintiff states, he began to make some drawings for a needle-feed about the 3d of January, 1S53. He had the frame to the old red machine made as now exhibited in the spring of 1853. It seems the cams have been changed, and I think the needles are not the same. Most of the machinery, as the witness states, is the same that was brought back from Washington in a trunk, and which had been kept either in the trunk or in a box, as before explained.
He had used the crank and one pulley in getting up one of the models he sent to Washington, and the rotary clamp is a new one, and, as I understand the testimony, the fly-wheel was used in another model. On cross-examination the witness stated that he completed the model for the needle-feed so as to take it out of the shop on the 17th of February, 1S53. His application for a patent was filed on the 31st of March, of the same year, and on the 7th of March, 1854, the patent issued. To account for the delay from the 7th of November, 1848, when he started from Washington on his return home to the 3d of January, 1853, when he commenced to get up his model for the invention, originallypatented on the 7th of March, 1854, the plaintiff has introduced testimony tending to show that during a part or all that time he was in poor health, and that he was somewhat embarrassed in his circumstances, On the other hand, the defendant has introduced testimony tending to show that his general health was not seriously impaired, and that his pecuniary circumstances were such that he was able to purchase a farm worth some $1.500, and had nearly or quite the usual amount of stock on the farm.
Having referred in very general terms to what he did in relation to the machine which he carried to Washington, from the time he commenced to construct it to the time he filed his application for the original patent, I will proceed to state certain rules of law, by which you will be guided in this branch of the case, beginning with the caveat. Two provisions upon the subject of a caveat are to be found in the patent act of July 4, 1830 [5 Stat. 117]. By the eighth section of that act. it is provided, among other things, that “whenever the applicant shall request it, the patent shall take date from the time of filing of the specification and drawings, not, however, exceeding six months prior to the actual issuing of the patent. And on like request, and the payment of the duty herein required by any applicant (which is $30), his specification and drawings shall be filed in the secret archives of the office, until he shall furnish the model, and the patent be issued, not exceeding the term of one year, the applicant being entitled to notice of interfering applications.” Reference is made to that provision simply for the purpose of remarking that the caveat in this case was not filed under that section, and I do not think it necessary to give you any instructions upon the subject. But there is another provision in the twelfth see
Nothing can be more certain than that the protection authorized to be secured by that act is limited to one year from the time of filing the caveat, and I instruct you that after the expiration of one year from the 7th of November. 184S, the caveat filed by the plaintiff in this case ceased to have any legal operation to protect his right, if any he had to his supposed invention. A caveat is allowed with a view to enable the caveator to mature his invention, and the act of congress gives him one year for that purpose, and it is not competent for courts or juries, by virtue of such a proceeding, to enlarge or extend it any further.
It becomes my duty also to give you one other instruction upon this subject, based upon the circumstances of the case.
If you find from the evidence that the plaintiff did nothing to mature what he described or suggested in his caveat, his means of feeding the material to be sewed in a sewing-machine. from the 7th of November. ISIS, to the last of December. 1S52, then he cannot by virtue of the caveat carry back the date of his patented invention for feeding such material to any period before the date of his application for the original patent.
I am requested by the defendant to instruct you that the method of feeding claimed in the plaintiff’s patent is not contained in his caveat, but I do not think it necessary to give that instruction, because there is no evidence in the case, as I understand it, to show that the plaintiff did anything to reconstruct his machine or to mature the needle-feed from the time when he filed his caveat until he commenced to construct the model for his patented machine; and if this is so. then you would not be authorized to give any effect to the caveat, as such, to carry back his invention described in the patent, to a period prior to the date of the application on which the patent was granted.
Irrespective of the caveat, it is insisted by the plaintiff that he may show and that the evidence in the case proves, that he invented the feeding apparatus described in the specification of his reissued letters-patent as early as the 27th of October. 184S, or certainly as early as the 7th of November of the same year, and that he reduced the same to practice in the form of an operative sewing-machine. That proposition is wholly denied by the defendant, and he insists: 1st. That the plaintiff did not make any such invention in 1848 as is described in the reissued letters patent; 2d. If he did, that he did not reduce it to practice in the form of an operative sewing-machine. Whether he made such an invention as is described in the specification of his reissued letters-patent in 1848, and if he did, whether he reduced it to practice or not in the form of an operative sewing-machine, are questions of fact to be determined by you, from all the evidence in the case.
If you find that he did not make any such invention in 184S, or if he did, that he did not reduce it to practice in the form of an operative sewing-machine, then you are not authorized to find that his patented invention takes date prior to the time when he filed his application for the original patent, as it is not pretended that the model sent to the patent office in 1S02 was an operative machine for practical use. Should ymu find for the plaintiff on both of the points under the preceding instruction, you will then proceed to examine the three patents of A. B. Wilson, with the drawings and models and machines made under the same, which are in evidence in the case. To avoid all danger of confusion, I will only refer to three patents.
One to A. B. Wilson was issued November 12, 1850, the application for which was filed March 18, 1S50. Another also to A. B. Wilson was issued August 12, 1851, the application for which was filed July 8. 1S51. The third was issued to Wheeler. Wilson. Warren. & Woodruff, assignees of A. B. Wilson, on the 15th June, 1S52, the application having been filed on the 7th of February, 1S52.
Certain other patents were also introduced by the defendant in the same connection, which he insists are substantially a continuation of the inventions described in the original patents issued to Wilson. For the present, however, I wish to direct your attention only' to such as were issued to A. B. Wilson or his assignees prior to the application filed by the plaintiff for his original letters-patent. On this branch of the case you will inquire and determine from the whole evidence bearing upon the point, whether the feeding apparatus described in the Wilson patents, or either of them, or in the patented machines, or either of them, made under the patents, and given in evidence, are substantially the same or substantially different from the feeding apparatus, described in the plaintiff's
In determining that question you are not to determine about similarities or differences by the names of things, but are to look to the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that a thing is substantially the same as another, if it performs substantially the same function or office in the same way, to obtain the same result; and that things are substantially different when they perform different duties, or in a different way, or produce a different result. For the same reason you are not to .iudge about similarities or differences merely because things are apparently the same, or apparently different in shape or form, but the true test of similarity or difference in making the comparison, is the same in regard to shape or form as in regard to names, and in both cases you must look at the mode of operation, or the way the parts work, and at the result, as well as at the means by which the result is attained. In all your inquiries about the mode of operation of either machine, you are to inquire about and consider more particularly those portions of a given part which really do the work, so as not to attach too much importance to the other portions of the same part which are only used as a convenient method of constructing the entire part under consideration. You will regard the substantial equivalent of a thing as being the same as the thing itself, so that if two machines do the same work, in substantially the same way, and accomplish substantially the same result, they are the same; and so if parts of the two machines do the same work, in substantially the same way, and accomplish substantially the same result, those parts are the same, although they may differ in name, form, or shape; but in both cases, if the two things perform different work, or in a way substantially different, or do not accomplish substantially the same result. then they are substantially different.
Slight differences in degree, if properly understood, cannot be regarded as of weight in determining a question of substantial similarity or substantial difference. One thing may be a little longer or a little shorter than another, or it may work a little better or a little woi'se. and yet the two things may be substantially the same. But that principle must be applied with great care where, as in this case, the devices are minute mechanism. Should you find that the invention of Wilson, so far as respects the feeding apparatus, is not substantially the same as that described in the plaintiff’s patent, then I instruct you that so far as respects the defence’ set up by the defendant under the AYilson patents, and those of a date subsequent to the plaintiff's application, the inquiry whether the plaintiff’s invention takes date prior to the applications for his original patent, is wholly immaterial in this case, because Wilson’s invention, if it be substantially different from the plaintiff’s patent, cannot anticipate or supersede it.
But if you find that Wilson’s invention, so far as regards the feeding apparatus described in the three patents under consideration, or in either of them, is substantially the same as the plaintiff's patented invention, you will then proceed to inquire, and determine from the evidence, when Wilson made his invention and reduced it to practice in the form of an operative machine, bearing in mind in respect to each of his patents in the ease, that the patent (together with the application) is prima facie evidence that he was the original and first inventor of the improvement therein described, at the time when his application was filed in the patent office. You will also proceed to inquire and determine from the evidence, whether A. B. Wilson or his assigns did or did not construct machines under his first three patents, and sell the machines in the market for practical use, as sewing-machines, between the 8th of November, 1840, when the plaintiff’s caveat ceased to have any legal effect for the protection of his right, and the 31st of March. 1853, when the application for his original patent was filed in the patent office.
A. B. Wilson, as he states, commenced to make a sewing-machine in February, 1849, at Pittsfield, in this state, and completed it about the 1st of April in the same year. When asked what he did with the machine, he stated that he sewed with it at various times, and made garments, and he afterwards gave the names of the persons for whom the garments were made. Several other witnesses testify that they knew he was at work getting up the sewing-machine, and saw it operated; and if the witnesses are to be believed, it sewed both straight and crooked seams, and sewed well. One witness, Lyman G. Burnell, testified that he made and assisted in making the needles and some of the screws for the machine, and another, AA\ D. Axtell, stated that after he had seen the machine operate he wrote a notice of it for publication. It appearing that the witness himself set the types at the printing-office, he was allowed to refer to the journal to refresh his recollection as to the time when he saw the machine and wrote the article for publication, and he states that he wrote the article and published it on the ISth of April, 1849. While living at Pittsfield, AYilson subsequently commenced a model of the machine. but he did not complete it until he changed his residence. In May. 1849, he went to North Adams in this state, carrying with him the machine and the model which was still unfinished, and while living there, he took the metallic parts
As I understood the witness, he next made one or two iron machines which were completed before he made the patent office model, but you will recollect his testimony for yourselves, as I shall not attempt to give the exact language of the witness. He made the patent office model also at North Adams in February, 1S30, and he states that it was made like one of the iron machines. Pursuing the subject in the order of time, the next machine constructed by Wilson is the one he made for his wife. Passing over what he stated about his going to New York and Philadelphia and Washington, you will recollect his statement that he returned to North Adams on the 25th of April. 1850. He completed the model for the patent office a short time before he went to Washington, and on his return he commenced the machine called “Mrs. Wilson’s machine.” and completed it in July of the same year. According to his testimony it operated well, and he states that he used it for an exhibiting machine in North Adams, and that his wife after-wards used it as a family machine for making garments for himself and others. She used it as a family machine, as I understood the witness, after they went to New York in November or December, 1S50. It was the first nipper-feed machine made by Wilson, and he states that his wife used it in Watertown after he went there to reside. He went there himself in February, 1851, but his wife did not return from New York until the following month. And he also states that she brought the machine with her to Watertown, and- while there used it for making garments for himself and others, and continued to use it to do her sewing until he got the machines with the four-motions’ feed. Inquiry was made of the witness whether the machine is now in the same condition as it was when his wife used it in November or December, 1830. To that inquiry he answered in effect that it had been for years in his garret before he brought it to Boston for this trial and had become somewhat rusty, and that at the suggestion of Mr. Potter he had it cleaned up since he came here, but he states that there has not been any alteration in it other than cleaning it.
Joseph N. Chapin stated that this machine was finished in July, 1850; that he saw it operate in North Adams, and that it worked well; and he also states that he saw it operate in other places; that he saw Mrs. Wilson use it in making pantaloons, in New York, during the fall of 1850. It was also seen in North Adams by the witness. Joseph H. Adams, who states that he saw Wilson sew some pieces of cloth with it, and, as far as he could ascertain, it worked well. Chester F. Scott also states that he saw it at Watertown, in 1S51, and saw Mrs. Wilson sewing with it. and he sewed with it himself at the office of the company. When asked what he saw Mrs. Wilson sew on it. he stated that it was a dress, or something of that kind, and he stated that it was a practical machine. Testimony has also been introduced by the plaintiff for the purpose of impairing the credit of A. B. Wilson as a witness. Ansel H. Barnum testifies that he worked for Warren. Wheeler, & Woodruff, during the fall of 1849. in the same shop where Wilson worked. He worked in three different rooms of the shop, and one of them (the upper one) was the room where Wilson worked, and the witness states that, although he was well acquainted with Mrs. Wilson, he never saw that machine, and he also states that Mrs. Wilson and Mrs. Cow an once came to the shop and got a nipper-feed machine, and one of them said that they were going to do some sewing. Charles It. Cluilt commenced to work in that shop on the' lStli of March. 1S51. and worked there about six months. He saw Mrs. Wilson occasionally, and was at her house,
and never saw this machine, but he states that he had no opportunity to know whether or not she had it in her possession or use. William H. Hays commenced work there about the 20th of March. 1851. and worked there until the 12th of September. 1S32. He says he never saw this machine, but he says he was not acquainted with Mrs. Wilson,and had little or no opportunity to see the machine. Frank Caffrey went into the employment of Warrej', Wheeler, and Wood-
Of course you will examine the machine, and weigh the opinion thus expressed, in connection with the positive testimony of Wilson, who states that he made it, and of the other witnesses who saw it at different places, and saw Mrs. Wilson using it, and of the person who operated it himself at the office of the company. Fraud is never to be presumed, and certainly not when the charge carries with it the imputation of an attempt to corrupt the fountains of justice by imposition and perjury; but the question is one of fact, and is en-entirely within your province. Warren, Wheeler, & Woodruff constructed some five hundred of the nipper-feed machines under a contract, and Wilson states that the first one was made in February, 1851.
C. F. Scott sewed with all of these, except three or four, and he says they worked well; and the same witness says they continued to construct these machines till October or November, 1851. Seventy-five were made before the witness- J. N. Chapin left in May, 1851. Nearly two hundred of the number, as the witness George H. Chit-tenden states, were sold at the office in New York City where he was employed to sell the nipper-feed machines from the latter part of the year 1850 to September or: October, 1852,' and he says they operated well for that time. Besides those sold in the office, he knew of the sale of one hur-dred and fifty more, in the latter part of the year 1852. Defendant’s witnesses represent, I believe, that the whole of the contract machines were either sold or delivered from the manufactory after they were built. On the other hand, one of the plaintiff’s witnesses states that some fifty or seventy-five of the contract machines were remaining in the factory when he left in 1S52. These machines were what the defendant has designated as his third form -of feed, but the labels put on the machines •are not evidence for your consideration. His third form of feed in the Wilson machine is what has been called the gun-barrel machine with the rotary hook. The witness Wilson commenced to build it in 1850. and completed it on the 5th of January, 1S51. After that he commenced his fourth form of feed in May of the same year, but he did not apply for the patent till the 8th of July, and it was granted on the 12th of August of that year (1851). A. H. Burnham, one of the plaintiff’s witnesses, states that in May or June, 1851, he saw a pocket machine which Wilson had of this description, and he says it was a completed machine and “did run.” His fifth form was a four-motion feed with two teeth side by side feeding each side of the needle, but a feed with one tooth was soon substituted. Six machines with one tooth were made in the spring or early part of the summer of 1851, but all save one were soon altered to two teeth, one forward of the other. Both Scott and Wilson, I believe, state that the one-tooth machine fed goods tolerably well, but did not advance the material to be sewed with sufficient force. That patent was applied for on the 7th of February, 1852, and was issued on the 15th of June of the same year. The machine numbered nineteen is the next machine to which your attention is invited, which is called by the defendant the sixth form of feed. It has two teeth, one forward of the other, and is a four-motion feed. Two of the defendant’s witnesses, Chester F. Scott and A. B. Wilson, state that it was made in the spring of 1S51, shortly after the four-motion feed machine, with one tooth, and the former says that from one to two hundred machines of that description were made. He sewed with them all, and he states that they operated well, and that they were all taken from the shop, though he cannot say of his own knowledge that they were sold. When asked respecting the machine numbered twenty, which is also in the case, he said he first saw the machine in that exact form in 1851, remarking, however, in the same connection, that while the pattern was the same, the upper parts were different, that there was a difference in the pressure-foot, but adding that the pressure-foot was got up the last of the year 1851 or the first of 1S52. Another witness for the defendant, G. H. Chittenden, stated that the change in the pressure-foot from that numbered nineteen to that numbered twenty, was made, as he thinks, in July, 1852; and he also states that in the fall of 1851 he became familiar with the fact that machines with four-motion feed were being manufactured. They were introduced, one at a time at first, and so, perhaps, up to the middle of June. 1852. O. F. Winchester got his first machine in the latter part of 1851, and used it for a year on trial, and then got ten more. H. Griswold got three machines in the summer of 1852: and Joseph H. Murry states that some twenty-three hundred were manufactured with two points before they added more points to the feeding instrument. In this connection you will bear in mind that the patent of A. B. Wilson, of the 12th of November, 1850, has been reissued. One of the reissued letters-.
• These several patents have been admitted as tending to show that the first three inventions of Wilson are still under the protection of subsisting patents, and that they have not become the property of the public. One of the objections taken to the admissibility of those which bear date subsequent to the date of the writ, was waived by the plaintiff, and, therefore, they were admitted, and are in evidence in the case.
The defendant has also introduced the patent to Grover and Baker, dated June 22, 1852, together with the disclaimer accompanying the same, which is dated the 11th of December, 1854. These last-mentioned patents, together with certain explanatory statements of the witness Potter respecting the same, were admitted as tending to show that the claim of Wilson to the four-motion feed in his application for his patent of June 15, 1852, was withdrawn by mistake on the part of Nathaniel Warren, as to the date of the invention, which had been made by Wilson. Whether the evidence admitted in the case is or is not sufficient to satisfy you of that fact, 5s a matter for your determination; and these last-named patents were also admitted as tending to show, in connection with certain conveyances and assignments, or licenses, that the interest in the Wilson inventions was passed to, and vested in, the Wheeler and Wilson Manufacturing Company, to the extent described in these conveyances, assignments, or licenses, given in evidence in the case.
Considering the course of the arguments on the one side-and the other, it will be sufficient for me to refer to the title papers, without any further remarks upon the subject. They are as follows: — -Assignment of A. B. Wilson to Nathaniel Wheeler and Orlando B. Potter, dated February 1, 1856, conveying reissued patent No. 346, dated June .22, 1856.. Declaration of trust of patent No. 346, for the benefit of the Wheeler and Wilson Manufacturing Company and the Grover and Baker Sewing-Machine Company. Assignment from Alanson' WTarren, George P. Woodruff, Nathaniel Wheeler, and A. B. Wilson to the Wheeler and Wilson Manufacturing Company of two letters-patent, one granted to them as assignees of Allen B. Wilson, and one assigned to them, but granted to Allen B. Wilson; said letters-patent being No. 8,296, granted August 12, 1S51; and No. 9,041, granted June 15, 1852, said assignment being dated October 5, 1853. Assignment from William P. N. Fitzgerald to the Wheeler and Wilson Manufacturing Company of letters-patent, No. 12,116, dated December 19, 1854, granted to him as as-signee of A. B. Wilson, assignment dated December 27, 1854. License from W. O. Grover, William E. Baker, and O. B. Potter to Nathaniel Wheeler, A. B. Wilson, Alan-son Warren, and George P. Woodruff, under patent, No. 9,053, granted to Grover and Baker, June 22, 1852, license dated July 1, 1852.
Should you find, under the preceding instructions, either that the plaintiff did not invent the needle-feed exhibited in the old red machine, and reduce the same to practice in the form of an operative machine in 1848, or if he did, that the patented invention of the plaintiff, described in the specification of his reissued patent, as construed by the court does not embody the same, or a substantial and material part of the same, which was new and useful, or that the feeding apparatus described in the original Wilson patents is substantially different from the feeding apparatus described -in the specification of the plaintiff’s reissued letters-patent as thus construed, then you will have no occasion to consider the evidence on this branch of the case; for if the plaintiff did not make such an invention and reduce it to practice in the form of an operative machine in 1848, then he cannot cany back the date of his patented invention to any period prior to the time he filed his application for his original patent; and if the feeding apparatus described in each and every of the three original Wilson patents are substantially different from that of the plaintiff’s patented invention, then the inquiry whether the plaintiff can or cannot carry back the date of his invention to a period before the application for his original patent was filed, is not involved in the issue between these parties, as it is not pretended by the defendant that the Blod-gett machine is of a character to supersede the old red machine when the latter is used in the position in which it was evidently constructed and designed by the patentee to operate. On the other hand, if you find for the plaintiff on the first two points under the instructions of the court, but also find that one or all of the original Wilson patents, so far as respects the feeding apparatus therein described, and embodied in a practical machine or machines, is substantially the same as that of the plaintiff’s patented invention, you will then proceed to the inquiries already suggested as arising out of the evidence on this branch of the case.
Although the plaintiff constructed a machine in 1848 (of which the old red machine is a true representation), and operated it in sewing pieces of canvas and padding, as
All three of the patents granted to Wilson, namely, the patent of the 12th of November, 1850, the patent of the 12th of August, 1851, and the patent of the 15th of June, 1852, were issued prior to the plaintiff’s application for his original patent; but you must apply the preceding instruction to each of these patents, and to the machines made under them separately, each being considered separately from the others, because the instruction embraces seyeral elements, all of which must concur if you find for the defendant.
If you find for the defendant under the preceding instruction, as explained, then, the plaintiff cannot carry back his invention to any period prior to the time he filed his application for his original patent, and your verdict should be for the defendant. But if, under that instruction and all the instructions which preceded it, you shall find for the plaintiff, then you will proceed to the consideration of another ground of defence set up by the defendant on this branch of the case.
Suppose the plaintiff did invent the needle-feed embodied in the old red machine in 1848, and reduced the same to practice in that form, to the extent stated in his evidence, still, it is insisted by the defendant that he afterwards deserted and abandoned what he then accomplished, and having wholly neglected to do anything to restore the machine or to mature any needle-feed in a sewing-machine, from the 7th of November, 1848, to the last of December, 1852, or the 1st of January, 1853, he cannot, under the circumstances of this case, carry back his invention to any period prior to the time of his application for the original patent, or certainly, not to any period prior to the time when he commenced to make his model for the patent office.
Whether the plaintiff deserted and abandoned what he had accomplished, so far as the needle-feed is embodied in the old red machine, is a question of fact for your determination from all the evidence in the case, under the instructions of the court. If you find that the plaintiff, after having taken the machinery out of the frame in Washington and brought it home, leaving the frame there, laid the machinery aside as something incomplete and requiring more thought and experiment, and never intending to reconstruct the machine or to restore the needle-feed in the form of an operative sewing-machine, without material modifications or alterations, but only to preserve the parts to be used in other inventions as circumstances might arise, then I instruct you that you would be fully' warranted in finding that he deserted and abandoned the invention so far as respects the needle-feed, provided you also find that he did nothing to restore the needle-feed in the form of an operative machine from the 7th of November. 1S4S, to the last of December, 1852, or the 1st of January, 1853. On the
After a careful consideration of the evidence. however, if you should find for the plaintiff under each of the preceding instructions, then you will proceed to the second general ground of defence set up by the defendant.
The charge in the declaration in effect is. that the defendant’s machine infringes the plaintiff's reissued letters-patent; and that is a question which you are to determine from all the evidence in the case, under the instructions of the court. But unless you find that the plaintiff is the original and first inventor of the needle-feed described in the specification of his reissued letters-patent. you will have no occasion to consider the question of infringement.
On the question of infringement, the burden of proof is on the plaintiff to show to your satisfaction that the defendant’s machine (which it is admitted he sold as the agent of the Wheeler and Wilson Manufacturing Company) does infringe the third claim of the plaintiff’s reissued patent, as construed and defined by the court. Whether the defendant’s machine does infringe that claim or not, is a question of fact for your determination from all the evidence in the case, under the instructions of the court. Instructions have already been given you on another branch of the case, prescribing certain general rules of law by which you are to be governed in comparing one machine or device with another, to enable you to determine whether, in legal contemplation, the two machines or devices are substantially the same or substantially different; and those instructions are equally applicable to the present question in respect to the defendant’s ma
For the purposes of this trial you will take it to be law, that the instructions given to you upon this subject are correct. No matter if different opinions may have been expressed by the witnesses or by counsel. Trial by jury, though an inestimable right, is not a trial without a court, and is not so regarded in the constitution of the United States or the laws of congress. Matters of
Witnesses, as a general rule, are required to testify to facts only, and are not allowed to give their opinions, but where the question at issue relate^ to a particular art, science, or profession, persons possessing peculiar qualifications, and skilled in that particular art, science, or profession are uniformly regarded as exceptions. Such witnesses are usually denominated experts, and their opinions are admissible in the case for the court and for the jury.
Two witnesses on each side have been examined as experts in this case, and in the course of the examination, the characteristics of all the machines given in evidence have been pointed out by them and explained. It would be difficult, if not impossible, for the court to add anything by way of explanation, without repeating what has already been several times rehearsed. Like all other evidence in the ease, the opinions of the experts are for your consideration, and it is a matter within your province to determine what weight you will give to their testimony.
Much time has been spent in this trial, and it is very desirable that the controversy should now be settled upon correct principles of law, and the evidence in the case. Both parties appear to regard the matter in dispute as one of great importance, and I think you ought to give it a very deliberate consideration and use your best endeavors to agree upon a verdict
Should you find for the defendant, under the instructions of the court, you will have no occasion to consider the question of damages; and, if I understand the views of the plaintiff, in case of your finding in his favor, he only claims nominal damages, and he can recover compensation for the sale of one machine only. Under the circumstances of the case, I do not think it necessary to remark further on this subject, except to say that in general the claim for damages in cases of this description is no test of the importance of the controversy. Parties coming into this court, as in all other similar tribunals, have a right to expect that justice will be administered according to law and the evidence, and it is the duty, both of the court and jury, to fulfil their just expectations in this behalf.
