Le Roy v. Tatham

Boy Le et al. Tatham et al. v. Roy, in Smith, and David Plaintiffs

Thomas Otis Le Er- Benjamin George ror, N. Tatham, Junior, Tatham, Henry B. Tatham. upon maclunery improvements making .pipes used and tubes In a for for (cid:127) tin, set, solid’,state, lead, by forcing great pressure, when in a it under from from out of receiver, dies, cores, through apertures, patentees the claim the of “ and, What we claim as desire to letters- thus stated: oür secure was wit, described, following parts, of the the core patent, is the combination above chamber, guide-piece, dip, pipes and-bridge, or and the when used to form metal, forth, heat and in the manner under set or in other manner substantially the same.” . originality in the practi- charged did not consist Circuit Court The machinery, bringing newly discovered into novelty of the but in produced, wrought an useful article of manufacture is application, which cal distinguished pipe.” cast pipe made as was erroneous. This instruction patent, combination of the must he novel. claim of the Under wit, forced, by principle, that lead extreme newly discovered .could state, pipe., was not in a set or solid to cohere form a pressure, when in subject patent, not the was question whether it or was patent, and-the in the case. been-of counsel for the defendants Curtis, Mr. Justice having in this drawn error, question letters-patent at not sit did hearing.' error, from the Circuit writ This up, by case brought the Southern District of New for the United State’s Court of York. error, on the defendants in was filed by The declaration in a plea trespass 1817, to recover damages 8th of May, W. error, and Low- Robert. from plaintiffs upon'the-case, new -of their for ber, infringement alleged or. apparatus making machinery, useful .improvements substances. and tubes from metallic pipes Hanson, John and Charles declaration alleged, im- inyentors were Huddersfield, alleged England, 31st 1837. August, on or befbrfe provements, 1840,.the Hansons, January, assigned, 10th of -That Tatham, in er- of the defendants H. B. (two and B. writing, to the said right improvements. the full exclusive ror,) (cid:127) 1841, March, United 29th on the letters-patent That Tatham, B. & assignees B. to'H. granted States Hansons, improvements. (cid:127) B. Tatham-, H. B. October," & the 12th of That .on defendant in Tatham, remaining error,) G. N. (the assigned said letters-patent. undivided third one 1846,-the said' hav- March, on the That, letters-patent 14th "of surrendered', defective specifications bn account ing; Koy v. Tatham et al. the said were issued improvements,' letters-patent there- for, on an amended there was specification, whereby granted below, heirs, &e., for the term of plaintiffs fourteen from the 31st of 1837, the full and exclusive years August, right said the&c., ; a making, vending, improvements description was whereof annexed nade a to and of such part patent. That the were of the value and that letters-patent $50,000; the defendants below had made, used; and wrongfully unlawfully vended the said .and and made lead to the improvements, amount of 2,000 tons, to the thereby injury plaintiffs,' $20,000. To this declaration, the defendants, Le and Smith, Roy plead- ed not defendant, defence, guilty; Lowber, no and making a default taken to be permitting him. against cause was tried at Term, 1849, and a-verdict April The rendered in favor»of the $11,394, plaintiffs, costs, a and bill of was the defendants exceptions tendered'by . below.. — On the trial of the cause below, the plaintiffs produced, 1. Their of 1846, and the referred to specification ' therein, and a of the same. making 2. read in evidence They certain between the de- agreements fendant, Lowber, and defendants, Le and Smith. evidence, 3. to C. They gave J. & Han- tending prove son were the and first inventors of the original improvement; was a one, valuable &c. 4. That lead, become set, under heat and recently m á close vessel, would reunite after a perfectly separation that, its in the parts; described -in the said process patent, pipe original sowas made; thar the Hansons were the dis- first coverers thereof; that such and its reduction to discovery, result, in the mode was practical described in the use- ful and important. 5. That the defendants, had been Smith and Leroy, .jointly with Lowber in engaged lead de- pipe upon making plan- scribed made and sold the same, and had thus letters-patent, selling ,that quantities of be- large the. pipe; agreement them, tween relative to the manufacture colorable pipe, -made Smith, as a cover only, to protect Roy'and and throw the defendant, Lowber, on the who responsibility ' was insolvent. 6. That the described the improvement letters-patent was the same invention for which been had letters-patent granted Hansons,* here, Tatham, and to H. B. B. & England, assignees. 7. .That the had had sell plaintiffs offered ready,

VOL. xiv. al. v. Tatham et Boy Be same for sold the large the said portion States, last months. the United eighteen within — evidence, below then read in The defendants 1. Hansons. The description English patent Tatham, B. 2. to H. B. & The patent speci- thereof. fication of an Thomas 3. The specification granted English patent, Burr, of 11th April, 1820. Titus, 4. specification Burroughs granted in 1831. 5. W. in 1833. Potter, patent granted George Fox, 6. The evidence of to show inven- George tending machine, in use of a similar 1830. tion and himby to John in 1822. 7. The of patent specification Hague, of a to Busk & 8. The specification patent granted Harvey, 1817. Burr, Ellis & 9. The specification granted Bramah, 10. The specification patent granted Joseph '

in 1797. evidence 11. The defendants then gave tending prove J.,& the first C. Hanson were not inventors-of the original'and described in the of combination machinery letters:patent. useful, the lead the invention was not nor 12. That pipe,- described, the made good. upon plan of 13. the combination described public That machinery Titus, Potter, Fox, works, as been invented having Hague, the same Bramah, Busk & Harvey, substantially described patent. plaintiffs’ under, set, lead, become heat and ex- That when recently 14. vessel, in a close would reunite treme perfectly. pressure, that, in as de- 'of its after a scribed in parts; process separation but set, a a it was not in plaintiffs’ patent, fluid state when passed bridge. .the defendants, Le were not 15. That & -Smith con- Roy of or or in the cerned manufacture pipe, making using made for them defendant, it was machinerythat a hundred and that at Lowber, certain per pounds; they price patent had plaintiffs.- not infringed upon 16. described in patent, That plaintiff’s improvement for which as that letters- of same-invention 1846, Hansons, and H. been granted had patent previously &B. B. Tatham. date of months, from the eighteen 17. That, for space and con- 1841, to the fiad neglected put plaintiffs invention trust, sale on on tinue reasonable public, issued. the said which or’discovery al. Tatham et al. closed, The evidence the case was being argued before after the court had will be given charge, pre- stated. found verdict for the which, sently jury plaintiffs, increased, to, when court, amounted $11,748.60. The bill of of the court following exceptions brought rulings up several made: points The evidence .closed, the being Judge charged That the first which it material to determine question was, what was the invention of John and Charles discovery Hanson, for which their issued, had as the cha- precise racter .of that invention had been the subject' controversy the trial. state in their patentees specification, consists in certain to, and additions ma- improvements upon, metal, dated chinery making pipes capable being pressed, as described in Burr’s 11,1820. then They April describe Burr’s and the which the apparatus, process by it, made and state the .was defects of that in conse- plan, quence which, it failed into use. they say, general go These defects claim to have overcome and remedied; they state that lead, found that and some its and when they alloys, set, short of under heat just fluidity, great in a vessel, reunite, close would after pressure, its separation or, as if had not parts, completely separated, words, other that, circumstances, under these it could be welded. on this That, and in reference "and in connection discovery, it, in the of Burr, made they change succeeded in and were enabled they perfect making pipes, at use the end of the core, to thus short bridge cylinder surmount the the Burr machine. difficulty — state, also do not claim They they parts core, die, claim the cylinder, bridge; used metal, combination when unde11 form heat and pipes have described. way can be There no that, doubt if new, this combination is and. a new and result, useful it is the produces subject proper The result is a new manufacture. patent. even, And if the mere in combination the ab- machinery still, is new, stract with, if used and in connection applied of a practical development discovered; principle, newly pro- result, new and useful ducing To subject patentable. last which and decision, opinion counsel for defendants and there did then except. view, In this of the improvement is the plaintiffs applica- — tion of a combination of to to end, a new machinery et al. et al. v. Tatham of a new ain

development principle, resulting new and useful manufacture. That the but discovery principle patentable; it must be embodied and into operation brought by machinery, so to new and result. useful this view of the it is Upon question, patent, important determine, evidénce, from the whether the fact jury which the on is founded, estáblished alleged improvement lead, in a set or be reunited state, semi-solid can thus or welded after separation. here commented Judge refer- testimony, briefly to, which were and the ring testified results experiments of which were exhibited to the on the jury, part plain- and defendants, continuation, and, in stated: tiffs That there was one which was testified to Mr. experiment Keller, and the result of which was shown to the which made was under circumstances seem not to subject n which, misapprehension, mistaken, if he is not and his is correct, would testimony seem to settle the But question. was a this question Hereupon, fact, to be decided on the evidence. this the counsel for the defendants excepted That had been ob- charge Judges..— jected, described in the of March improvement 14, 1846, was different 29,1841. from that of March act only authorized reissue for the same first speci- n — fication defective. That he being compared descrip- ’ tions and, contained in the two patents; though language different, some it would be found that the parts improve- ment same, he therefore substantially appre- hended have- no would branch great difficulty of. — case; defendants’ counsel That excepted. was also that- the was invalid, for objected, plaintiffs’ patent want of that the invention had before de- originality; scribed Bramah, Titus, public works, Fox, and Hague, — Potter, were That, relied the defendants. in the view taken not'material, construction of court, it was mere whether the combinations of re- ferred to were similar the combination used in Hansons; because the did not'consist originality of -the novelty a newly-discovered into bringing machinery, practical useful article of application, by manufacture is produced, made, distinguished wrought pipe cast pipe. counsel Hereupon excepted. defendants’ That to, from the patents referred year the combination identical, to be was con- which was claimed used lead in a fessedly fluid- pipe, by casting making TEEM,

DECEMBEE et al. v. Tatham et al. Re water, after it mould, it out. and was set forcing are sub- is, And whether of these inventions question ' whether, the same even if these as the stantially plaintiffs’; use, common modes had been made for successfully have the same as Hansons’; been made in manner Would which for'the the counsel defendants opinion excepted. That it have was further forfeited objected patentees and on account of omitted to continue rights, having put after invention on sale within months the patent eighteen was here reasonable terms. The com- granted, upon Judge case, mented on this of the and in con- upon testimony tinuation said: essential, That it was not under the section of the statue should take active means for the to, referred that the patentees market, their invention in and a sale, purpose putting forcing but that should at all time's be to sell at a fair they ready price, when a reasonable offer was made. That it was for the and whether was con- say .put sale, tinued on under this view of the law; which opinion the counsel for the defendants excepted. defendants, . That the Smith, and. contend that LeRoy, they have not were but the infringed they plaintiffs’ patent; and manufacturer, that Lowber was the purchasers pipe, under the which has been read. agreement here to the evidence on this branch of the Judge referred and said: That if the Lowber, contract made the defendants with was bond fide, had no connection with the manufacture articles, to furnish lead and him a except given price, pay if the contract in fact carried deducting'the expenses; out and acted' defendants manner, then the' would . liable. But if the colorable, was- agreement was entered into the benefit and deriving purpose business, profits without assuming responsibility the use of the invention, purpose throwing on Lowber, insolvent, responsibility who then they as as he was. responsible That busi- aiding assisting person carrying ness and in would operating machinery, implicate If, so therefore, these defendants parties engaged. participated machine, actively conducting directing supervising its then, if operations; evidence position, establishes Lowber, aiding are assisting, responsible (to .as which last counsel opinion decision defendants’ excepted.)

14* Boy et v. Tatham et al. Prior to the preceding giving charge defendants’ counsel- court to instruct them requested the accord- written submitted; following- his proposition ing honor, delivered the after he took the said charge, up pro- order, in the instructions the positions gave jury, are which réspectively thereto. subjoined I. If believe that Proposition jury exe- agreements cuted on the 13th of and 13th April May, which Lowber, manufacturer, as make was to for pipe & LeRoy Co., on his at 55 machine, cents the was real and pounds,' bond on actual dissolution fide, Low- partnership ber working recover. and not & colorable to throw the LeRoy, responsibility plaintiffs on alone, Lowber then the machine cannot which, his honor that he had all -Upon given the' already instructions was deemed he on that necessary point; proposition correct, and it was for the decide that fact. jury II. That even if the Tathams first Proposition introduced (cid:127) in the that does not under which in this as an article of pipe question commerce, country, recover, them unless the give any right patents valid, claim were for an invention good not before known, used, or described -in a work. public his which honor instructed' as Upon requested the defendants’ counsel. III. That if believe combina- Proposition jury tion was before Bur- patented plaintiffs patented by Titus, or one else in this roughs country, patented described in a well abroad, known work public plaintiffs cannot recover, such machines thus were not although patented so as actually put to make for the operation, public. pipe his which honor instructed the Upon he already jury stated to.them that the did not consist plaintiffs’ the mere and, therefore, combination of those if machinery, were for lead patents material; casting point pipe, that it was not would have for made necessary use to defeat a public To instruc- subsequent patent. instruct, tion, and refusal to defendants’ jury requested, (cid:127)counsel excepted. IV. That the Tatham void its Proposition face, the Burr machine combination, state. entire heat having including and the a set lead void much; too claiming should have been improve- ment, viz. short 'core for the bridge long substituting core, and not for the whole combination. His honor declined to this which the'- instruction, give defendants’ counsel excepted. al. v. Tatham et

Re V. short core That the bridge having Proposition. Titus, by Burroughs before country also patented could be machines, no claim made used in other before intro- such into Burr’s combination bridge. ducing instructed which his honor follows: jury Undoubt- Upon not the claim. so, that is but that is plaintiffs’ edly lead, the state-of the VI. That when used as Proposition described in the being specification, plaintiffs’ either alone nature, is in combi- subject mentioned in specification. with the machine nation stated, the first To his honor part proposition not; latter the defendants’ correct,- and the coun- sel excepted. . of a metal That VII. using certain Proposition alone, or in át certain cambinátion state, a temperature, machine, was not subject patent. stated, instructed I have To which his honor already Hánsons, is a as described that subject; patentable counsel which the defendants’ excepted. believe That if the VIII. combi- Proposition jury core, die, and short chamber, nation piston, bridge, cylinder, in this heat was before under and pressure, patented country, by Titus, cannot recover. then the plaintiffs Burroughs the that honor instructed in the jury, novelty his Whereupon, not essential was mere combination with the recover, as connected right except develop- plaintiffs’ ment the before mentioned; the counsel excepted. which defendants’ com-, believe that if the same IX. That the jury Proposition core, die, and short bination of ber, cham- bridge, cylinder, piston, before patented under heat known Bramah, work, in well then published England, by the recover. cannot plaintiffs Bramah’s His the that the honor instructed jury, to instruct identical, and them as Tathams’ were not declined counsel to all the defendants’ excepted. which requested; the Burr, X. if believed that That the jury Proposition them, or Titus, machines, either of Bramah, Hague works, and had the world in well known public published machine, Hanson combination, same in whole the or in part, void; for to a the certain Tathams’ patent claiming up point, much, too viz. whole combination. them honor that he had explained His instructed to instruct them and declined his views stated; the form of was proposition which requested, . and to defendants’ counsel excepted, COURT et al. v. al Tatham et XI. That reissue Proposition 1846, on claim, alone can which patent plaintiffs warranted not 1841, different, and not the being saíne inven- inadvertence, tion, accident, misdescribed or mistake; and, was a fact, new under color reissue. if the believe that That the reissue' jury was. different same and not inadvertence, misdescribed by accident, or mistake, then the cannot recover. plaintiffs His honor declined to instruct the jury according first branch of this defendants’ proposition, counsel but did instruct them the affirmative, excepted; last

branch thereof. XII. if the That believe the combina- Proposition jury tion well before described in.some known patented, public! work, either in or cannot country England, plaintiffs recover, machine, such or the it, made although by was never introduced in this country. which his honor instructed Upon jury affirmative. XIII. If the believe that the Proposition jury combination claimed was used, before known make lead others pipe, Tathams, 'the are than the Hansons to plaintiffs entitled recover, no matter how limited such or use was, if knowledge secret. invention was kept which his honor instructed in the affirmative. Upon jury machine, if the Maccaroni XIV. That or the Proposition machine, Busk and contained the same com- clay-pipe Harvey bination as machine, cannot plaintiffs’ plaintiffs recover, -to a reason the same combination applying use. Which instructions honor declined to his stated give, that he had to them views on that subject; bis explained the defendants’ counsel excepted. if XV. That believe that Proposition Mr. Lowber’s machine was fluid, used his men when lead was in a set, not in state, then there was solid no infringement, recover, the if cannot the were valid. plaintiffs plaintiffs’ patent his Upon honor instructed in the affirmative. jury XVI. are and That sole exclusive .Proposition jury judges, fact, and questions whether combination pro- cess Bramah’s, were the in as was in same machine plaintiffs’ or in on the trial. other of machines proved un- so which his honor Upon jury charged as laid however, doubtedly, law, subject, principles down his in instructions; and to which charge preceding defendants’ counsel excepted.' 185 2. 165 al. v. Tatham et if the that with the lead, XVII. That believe jury Proposition used to make plaintiffs’ be when it successfully may state, solid as described in a set or machine, must not in be thus used in a fluid and that it can specification, void,- is state, then that should the jury pasty defendants, find for the not does specification ground claimed, the nature of the describe fairly fully used, the'- lead should be so as 'to nor condition in which nature of enable the true to ascertain public machine, condition in manner of using to be used. the lead ought his honor answered the affirmative. Which instruction verdict, then retired to consider their under the said on the 25th ; and instructions charge subsequently, day 1849, with a verdict for the said returned into court plain-' May, six cents costs. tiffs for $11,394 damages, n And, aforesaid, inasmuch as the said several matters do not the said verdict, the record of the said defendants’ appear by counsel did then and there honor, the his to' request Judge, his seal to this bill of the said seve- put containing exceptions, honor, did, the said aforesaid; ral matters and his Judge, the statute of the said and of in such case request, pursuance to this bill of made and his seal con- exceptions, provided, put aforesaid, the said matters at York, several New taining city aforesaid, same 25th 1849. S. Nelson. day May, Noyes, The case was Mr. Gillett and Mr. argued by error, Barbour, whom was Mr. for the and Mr. plaintiffs for the defendants in Cutting Staples, Mr. error. in error, the counsel points plaintiffs made by following. what are deciding 1. In patent, construing inven? is conclusive. tions thereby, summing up patented Nothing claimed. Fiske, what v. 2 expressly Moody patented Mason, 112, 118; Starkie, Rex v. 1 R. Cutler, 354; Davies on Patents, 398, 404; Moore, Bovil 2 Marsh. R. 211; v. v. Wyeth Stevens, 3 Stone, 1 R. W. 285; v. & M. 17. Story, Hovey claimed, 2. What is described in whether patent, invented is dedicated not, public, patentee reis-, claimed, cannot be as a his afterwards sue, Grier, v. Kane and otherwise. Taggart, Judges Battin 1836; of act 10, 6th v. 1851; section Mellus September 4 Silsbee, Pet. Mason, 218 111; ; Grant v. Shaw Raymond, Pet. 292, 322, 323; Pennock Pet. d. Cooper, Dialogue, 2 16. Void in whole, A void when other- part, except 166 COURT al. v. Tatham et al. Le^oy wise statute. v. provided Stone, 285, 1 R. Wyeth Story, 273-293-4; v. Fiske, Mason, v. 2 Woodcock 118, 119; Moody Parker, 1 ; Gall. 438 Evans 5 Eaton, ; v. 7 Wheat. 356 Cond. 302, R. 314; Bovil v. 2 Moore, Patents, 398 Id. Mar ; Bevinton v. Davies’s shall, 211; Hill Moore, v. 3 B. Thompson, 244; 4 B. Hawks, 541; & Ald. Aston, 881; Saunders v. 3 B. Ald.& Marshall, v. 5 N. Brand, C. Gibson v. 4 M. Kay 492; & Bing. Gr. 178 ; Price, Moore, McFarlane v. 19 v. Starkie, 9; 1 Minton 1 Nev. P. 595; Cutler, & Rex v. 1 359. Starkie, R. 4. The was bound .to consideration of Judge present as a statute, fact, in the words jury, question whether for the to alien, an had failed patentee, being neglected, months from the space date eighteen patent, terms, continue on sale to the on put reasonable public, the invention for issued.” Tatham and others patent v. decision cited on brief. Loring, patent, Judge Story 5. It was error In the to instruct the he had Judge fouqd examined the and reissued surrendered the same. He have submitted improvement should the ques tion, as one of determine, for them to fact, to upon the. evidence, of the exclusive of which were the judges. weight It also Bramah’s and error to instruct them that Tatham’s was a question not identical. That jury. Curtis, sec. 2 Braintree, 432; Carver R. 381; v. Story, Stimpson v. West Howard, Chester 4 381. Railroad Co. 6. The whether-the combination had been question, previously or described was one of patented, fact, in printed publication, which should have been submitted jury. use, 7. or to an to a new old machine Applying result, is Boulton a lawful v. patent. subject Web; H, 2 207 Bull, ; Bl. Pat. Crane v. 487; Lash v. Hague, Price, Grainshaw, 4 Web. Mann. & Huddart v. 580; Grang. Pat. 8; 190, 193; 2 Bean v. Small Abbott, Howe v. R. Story, wood, Stevens, 2 1 M. v. Wood. & ; R. 410 Story, Hovey 408, Kay 290, Com. 297, Marshall, 492, 5 N. C. ; R. 298 v. Bing. (35 Brand, 194, Law R. v. 4 Mann. & p. 197, Grang. Gibson 198); Greenwood, 179, Hotchkiss 11 Com. v. Law; 100, ; (43 110) 266; Howard, 248, Curtis, 26, § 8'. does not an old au- combination addition to Making Such a thorize a combination. the whole would be void. broader than apd 184, 190, .Act- cases 1836, sec. on Pat. 398, 413; 6. Hindmarch Cut cited; Basil Whittemore v. v. Pat. Gibbs, Davies’s Gall, v. Mason, 447, 1 ler, 478; Hall, 474; Moody 1 Barrett v. 117; Mason, 568; 2 Howe Fiske, 1 R. v. Prouty Story, Draper, McLean, 433; 2 3 Abbott, Jenkins, v. R. 190; Brooks v. Story, 1852- 167 et al. Tatham et v. al Boy 322; Eaton, v. 1 C. Curtis, Evans 11; Pet. C. 8, 9, R. sect. 10, McLean, v. Bicknell, 64, 73; Brooks Root v. Ball, 4 McLean, 177, 180; McLean, Haworth, Parker 373; v. 336, 341; 16 Pet. Eaton, Evans v. 7 Ruggles, Wheat. Prouty 302, 5 Cond. 356; R. 314. 9. B. The Tatham, plaintiffs, Henry Benjamin being inventors, were not authorized to surrender the patent granted to them as and receive a reissued thereon. assignees, patent 1837, Patent act of sec. 6. 10. void, reissued because issued a The party who an inventor, was neither nor his Act of original assignee. 1837, sec. 6. 11. Neither a nor effect be can but a patented, must be a mode of former to embodying latter, case,- invented Chief patentee. by Kemper’s by Cranch, Justice 500; Stone, Curtis Pat. v. 1 Wyeth Story, Hill 285; R. v: 8 Taunton, 375; S. C. 4 Com. L. R. Thompson, 151; Hawks, Brunton 4 v. Barn. & Ald. C. 541; S. 6 Com. L. 509; R. v. Fiske, Mason, 2 118; Whittemore v. Cut Moody 270, 272; ler, 1 478, 480; Gall. 1 Stone v. R. Sprague, Story, Blanchard Sumner, v. 535, 540; 3 S. 2C. R. Sprague, Story, 164, 194; decided in 1850 Abbott, Howe v. 2 ; R. 194 v. Smith Story, Downing, Reeves, Detmould v. by Judge Woodbury; Kane, Grier and 1851; Watt, 453; Boulton v. H. Bl. Judges, S. C. Davis on Pat.

The counsel for the defendants in made error the following points: No- was taken to tes- the admission exception or exclusion timony; solely Judge’s charge. The invention for which consisted in granted that, conditions, under certain the use and discovery, by methods, lead, certain some of its alloys, state, a could, while in set after into being separated parts, welded, re-united and and thus formed into ; also- pipe the mode of this; new article doing thereby producing manufacture, had lead which' wrought avoiding objections — success in this dis- always casting prevented pipe; method, by- the defects of Burr’s on which covery this overcoming : was an improvement./. patentees, say describing they “have found lead some its experience alloys; set, when- become or in condition short recently just close still under heat and extreme in a fluidity, being pressure, vessel, reunite will after of its perfectly separation parts,” — therefore, that, construct-their as follows arid machinery SUFREME . et-ál. Tatham et to describe the then proceed apparatus, adapted them to and whiph this the prac- discovery, they produce tical result' stated. above it, and the modes of After describing apparatus using “ that the remarkable inven- of their patentees repeat, feature is, metals, state, .that in a set tion soft when under being yet n made, can be extreme heat perfectly, reunite acore around after and thus be formed into separation, strong or tubes.” pipes “thaj; And the essential difference in the. character of this made, was, it from all others before that it pipe, distinguishing under heat and constriction from set wrought by pressure metal; and is not a that it formed in a mould.” casting And close as their invention, “the combi- by claiming, nation used them, described when to form of metal pipes under heat and in the manner set forth.” pressure in his on the states Judge, charge, commenting patent, to be stated; above substantially construction and view of the no was taken exception defehdarits, court The then further to instruct the proceed in dnswer certain submitted propositions error by plaintiffs for the consideration court. The first laid court,-is, down that thé proposition I.

mere new, («abstract, combination thin machinéry, when combined with and applied practical development new a new and produce result, useful principle, be the may a valid This subject'of is several patent. times, repeated connections, different in the course of the charge jury; as often the counsel for the excepted defendants. The counsel error, for the defendants in insist that the above is correct, position supported by by precedent, principle, practice. by. The 1. founded position on the supported by principle, statutes to inventors. He who giving discovers new patents o.utthe means points it, to principle, new applying result, useful comes -within the settled construction of act, English for the sole giving patent working of any manner of new manufactures. See 6th section act 21 ’ James 1, our law, By patent person, (1623.) any having .in- &c., vented-or discovered manufacture, is' entitled to See section patent. 6th act 4th 1836. term July, The new manufacture includes the' thing produced, means it. producing 2. This Curtis, principle, Pat. 9. supported authority. § 91; 71 to also 57 to 2, chap. there 94, and cases cited pp. §§ 169 1.852. et al. v. Tatham Roy e-t %1. coal, in the use of for the pea pit Earl Dudley’s patent Cases, Patent Webster’s 15; iron. 1 manufacture Carpmael, — blast, in connection air the hot' Nielson’s 14, C.S. patent of iron. coal, manufacture bituminous common pit 1841; Hartford, Nielson A. D. 825; Welsb. 806 to 8 Mees. & 1841; C. A. D. 328, 373; and 328 to &c., 295, Web. Pat. Ca. S. — blast, connection-with hot air Crane’s (cid:127) date 375; Cas. Pat. coal. Crane’s anthracite 1836. Crane v. 1842, patent, Web. 393; 377, A. D. Webs. Pat. Cas. Price, &c.; L. Com. S. C. 43 380; S. C. 4 Mann. & Eng. Grang. French, 1851, 388; J. C. 2d vol. Frank. 301; year p. R. S. cited and cases there 397, 394 to &c. v. &c. Rogers, 2 Car 536, 6 Law overruling Equity Rep. Eng. court. ;a. Curtis, 43, 47, 52; Leon. Kirwan, cited vs. & rington Webster, note. is to the counsel II. The second the defendants’ exception evidence. court, to Mr. Keller’s in relation charge It is difficult to see what exception ground upon re- is founded. After of the defendants of the "court charge to, fact testified the character marking weight for their decision. the tvhole is submitted to the jury of the court III. taken The third charge exception relates" same found in the next two on the page, paragraphs the call of the same is to' the reissued patent. repeated ask defendants, in their eleventh which they proposition, upon the court to instruct the jury. is, instances, substance of the in both charge, given different from in one was in some language parts the same other, that in the in tion as the but the was substantially meaning inven- same the reissued must be for both. That jury. left first; and the matter of fact was court, as found The next is to the IV. exception charge as follows: and is of the 42d at top page to 1832, to, referred year That patents identical, was confess- to be was claimed combination xvhich in a fluid lead for with used by casting edly making pipe, water, it after set, forcing and was mould, it out. are inventions these is, And the whether question even, if whether, same as substantially plaintiffs’; use, common these made for modes, been successfully Hansóns’; would as have been made in the same manner to -^rhich counsel for the defendants opinion, excepted.” manufacturing the modes court, Whether referred to to left the same or fact different, were was question of pipe, . VOL. XIV. Roy al. Tatham et al. not, and the court did the manner of the jury; stating withdraw from the consideration jury. point, V The fifth relates to the court, exception as charge and duty plaintiffs put keep terms, on reasonable and that it sale was not essential they say should take active patentees means purpose market, invention in a sale; but that putting forcing should at all times be sell at a fair when a

they ready price, reasonable offer was made. That it was for the whether it was and con- jury say put sale, tinued on under this view of the law —to which the counsel the defendants excepted. We insist the court took a correct view of statute, submitted the of fact to the question prpperly jury; that the not well taken. exception VI. The next the order in defendar ts exception them, error have noticed relates to the instructions of tue court, in relation to the of Le and Smith liability Roy jointly, defendant, the other Lowber. seems, to the counsel for error, It the defendants in that the was submitted to the as a question question properly fact, how far Le and Smith had made themselves liable Lowber. The defendants in error insist that the with to exception is not well taken. charge VII. In answer the fourth on which the court proposition, was void on its to instruct the requested that Tatham’s jury face, We &c. of the court was say charge correct. The in Tatham’s have out patentees pointed what claim, what do not claim. clearly they VIII. In their ninth defendants'requested proposition, court to instruct the jury— “That if believed the same combination of cylinder, chamber, under heat and core, die, short piston, bridge, pressure, published Bramah, had before been patented England by work, in a then the known cannot well plaintiffs recover.” this, inat the court instructed the jury, Upon proposition identical; de- Bramah’s the Tathams’-were to instruct the counsel clined To which requested. jury for the the defendants defendants This excepted. request above instruction was fact assumption based on the refused. true, proved and not correctly IX. court instruct the jury defendants requested to-their according tenth follows —“That proposition, Burr, believe Bramah, Titus, and Hague if machines, either them, well published world 171 ét v. Tatham et al. works, had the same combination, known and. whole public machine, the as Hanson to a or in certain the up part, point, is void for too much, the viz., Tathams’ whole* patent claiming combination; the court instructed the hat thereupon jury, their views on that explained part as instruct them which the declined the form in requested was stated.” To which the de- counsel for the proposition fendants and the defendants in error insist that this excepted, is not well taken. exception X. The on re- sixteenth which the court was proposition, the words, to instruct quested jury, following namely,— “ That the are the sole and exclusive as to the judges fact, whether the combination and were questions process same in the machine was or in Bramah’s, plaintiffs’ other of the machines court instructed on trial. And proved thereupon was so subject, undoubtedly; however, to the as laid law down in the principles preceding and instructions.” To which the counsel for de- charge fendants excepted. defendants in error insist'that none of the ex-ceptions are well that said taken; aforesaid should judgment costs affirmed, with and damages. Mr. Justice McLEAN delivered This is a case court. opinion on error, from Circuit Court of the Southern York. of New District The action in the Circuit. Court, to recover da- brought n for an alleged for mages infringement useful for and tubes improvements machinery making pipes metallic substances. from Hanson, that John and The declaration Charles alleged the inventors of the improvements specified, England, ; 31st of that on the 10th of or 1840', August, prior January, H. B. Tatham, the ITansons B. and two of assigned in error, full and exclusive defendants to said right March, that,- 29th 1841, on the improvements; were letters-patent Tathams, granted improvements Hansons; that, B. and afterwards, H. B. assignees to G. Tatham, Tatham -N. defendant assigned remaining error, an undivided third of the patent. 1846, of March, On 14th were sur- letters-patent rendered, on the ground specifications the improve- - were defective, claimed a new ments 'issued, heirs, &c., term patentees, granted n fourteen 31st of years^ August, exclusive to make vend secured. right improvements

Tie et al. v. et al. Tatham Boy states, declaration was of the value thousand fifty dollars; and defendants below had made and vended lead of tons, the amount two thousand in pipe violation of the of and to the patent, injury plaintiffs thousand dollars. twenty The defendants the defendant pleaded guilty; Lowber did in but join plea, judgment entered permitted him default. On the trial, certain bills of against exceptions were taken to the errors of instructions the court to the on which are assigned. schedule, The which is annexed to the and forms a “ it,of states that invention in consists certain improvements to, the and additions used for upon, manufacturing and tin, tubes from lead or of pipes soft alloy metals forced, from being out of capable by great pressure, receiver, dies, or between and through., cores, apertures, when in state, a set solid set forth in the specification Burr, to Thomas in granted Shrewsbury, Shropshire, Eng- land, dated the 11th of 1820.” After April, Burr’s describing machine, defects, its and. made on it improvements thé. “ claimed,- the thus made are patentees say, Pipes found to and unusual and a fine solidity uni- great strength, possess of thickness and of bore is arrived at, as, such accuracy formity it has never believed, before attained other by any machinery.” essential in the difference character of this wiiich pipe, it, as aswell that distinguishes Thomas contemplated by Burr, all other from known or heretofore is that attempted, heat, constriction, and under from by -pressure wrought set and metal; that is not formed in a mould.” casting “We do not claim as declare, And our invention and above-described ma- any, improvement, parts its and combination chinery, independently arrangement n above claim set What we do as our forth. and desire secure, is, the combination the following above parts and described, to core wit: guide-piece, bridge, chamber the die, when used piston, .cylinder, heat and form the manner under metal, pressure, set pipes forth, or in other manner the same.” any substantially evidence certain gave plaintiffs between agreements defendants, lead manufacture of showing pipe Lowber, defendant for the defendants Le Smith. And Roy said John also evidence that Hanson tending prove were the and first original Charles Hanson inventors improvement described in that said letters-patent; described was new and useful; discovery.therein wag lead manufactured thereby, superior pipe quality 185 2. Tat,ham et al. et al. much capable resisting greater strength, defects, ; before made than all any pipe free more use, and in lead known the modes it pipe, previously making could be made in short pieces, improved and also of be made of mode it'could any required any length, lead size; that the introduction of made required the mode pipe, made described, the use of that superseded use, before in and that it was also furnished modes aat less price.” “And also evidence prove gave tending the. plaintiffs under heat and lead, set, become and while when recently vessel, reunite extreme in a close would pressure perfectly, described its and that in the after process separation parts; thus manufactured by in the said lead being patent^ said John and Charles and that reunited; separated and that thereof; discoverers the first and original Hanson its reduction to result such practical discovery, mQde useful and im- described in letters-patent, portant.” evidence, to the also prove “And conducing plaintiffs gave in was the described the letters-patent, that the improvement, the said which had been made same invention and by discovery Hanson, for which had Charles and letters-patent John and in and in this to them subsequently England, been granted Tathams, the as recited in to the letters-patent.” country, to also evidence “And the conducing pro've plaintiffs gave and and had offered sell .ready that they willing, ' invention, within months .the- succeeding the said eighteen to'them, since; had, and also of said letters-patent issuing within months, sold the for a same large the por- eighteen of United States.” tion the then read evidence from the counsel in The defendants’ (cid:127)“ Arts,” 16, 3-14, vol. the of description page Repertory 31, 1837. also Hansons, dated They August of in evidence the issued upon application read Office, another containing specification, Patent plaintiffs also annexed to the surrendered. And they of of Burr’s patent, April Thomas read specification Potter, described W. to ^.George 1820. Also patent granted Arts,” 1833; in the 12th “Franklin Journal of in pubhshed also read the of a England, patent granted they specification ; also 5th, 1817 to Bush Harvey, December Bramah, in England Joseph specification patent granted 31st, October the combination to show that Evidence also given, wa§ described in works for lead public machinery pipe, making

15* et al. Koy X.e Tatham Titus, been invented W. having by Burroughs by-George Potter, Fox, Bramah, Jesse John by were Hague, Joseph the same as that used substantially plaintiffs; stated, combination Bush- and as herein before machinery, patented and that Harvey, used for making pipes clay, maccaroni, were the same as that described making substantially plaintiffs’ patent. “ said, In the court charge They, plaintiffs, state, also do claim the ma- parts core, die, or but that claimed the chinery, cylinder, bridge, metal, combination under when form heat and used pipes have described. There can be no way they doubt that useful this new, if combination is a new and produces “ is result, it of a The result proper subject patent.” is a if the new manufacture. mere combination of even And new, still, is if used and abstract machinery applied of a connection practical development principle, discovered, result, ii'new useful newly producing subject is In view, this patentable. improvement plaintiffs the to the in to a combination new application end; of a new development principle, resulting a- new useful That manufacture. discovery is not new but must embodied and patentable, so as into brought operation by machinery, and an useful result. this view Upon question determine, from the important evidence, whether the fact is established, on which the alleged improve- founded, ment be that lead in a- set, state, semi-solid can thus welded, reunited or after To instruction separation.” the defendants excepted. It was also objected, that was invalid for plaintiffs’ patent want of scribed been before invention had de- originality; works, Bramah, Titus, Fox, and public Hague, relied on by defendants. Potter^ court, this it To That in the view taken replied, the court in tlic of it was not mate- construction rial whether the mere of combinations to machinery referred were the Hansons, similar combination used because did not consist in the of originality novelty machinery, but in a discovered into practical bringing newly principle appli- cation, which useful article of manufacture is produced, made as cast To wrought from distinguished pipe.” this charge there also an exception. The word principle is writers on used by elementary patent sometijnés subjects, courts, in of with such a adjudications of want in its It is to mislead. ad- precision application, x'ERM, 1852. (cid:127)175 v. et al. Tatham A is not in that a mitted, abstract, patentable. principle, principle cause; a ; truth an motive ; a fundamental original is can in either of be as no one claim them cannot patented, these an exist to Nor can exclusive new exclusive right an right. to those should one be discovered in addition already power, steam power known. machinery Through agency no one can be said to have been But appro- generated. may himself, to laws. under exclusively patent priate power in be and of other The same electricity, any may power be nature, to useful all, is alike to open may applied the use of machinery. purposes by extract, used cases, In all such modify, processes the invention. The constitute concentrate natural agencies, is not in the invention exist; discovering elements the power Whether the them them, useful-objects. but in applying novel, of a new combination be or consist used is all secured who known, the of the inventor against right parts that shall be substan- mechanical or one use the same power, the same. tially of a certain effect, an or the result A is not patent good' other as that would all making prohibit persons process, This, creating means -whatsoever. the same by any thing manufactures, arts and against would discourage monopolies, laws. the avowed patent policy matter, discovered in when A new practically ap property a useful article in the construction of commerce plied, manufacture, is ; process through patentable stated, must developed applied, new property enable mechanic construct as to ordinary such precision This is required process. by"the patent necessary apply States, in order that when and of‘the United laws the England out, know how to run the public profit shall by' may patent ' said, Househill It case of the Company the invention. Neilson, Cases, 683, “A will be Webster’s Patent good, consists the-discovery subject though science most comprehensive principle great, general, if nature, the specification applied law'of - so to effectuate practical as thereby any special purpose, Mr. attained.” In result Justice benefit anil previously “ said, Clerk, specification his charge materials, form, nature, shape, not claim does thing or vessels vessel numbers,.or mathematical character such hea'ed, is to be as to the mode heating which the air vessels,” improved was for &c. The furnaces, bel fires, where off air heat in forges arc required.” lows other blowing apparatus et al. v. Tatham et al. Hoy the In claimed as although a machinery the of the were instructed to jury inquire, part “ whether the was not such as to enable specification workmen skill to make or machinery apparatus ordinary capable set the effect forth in said letters-patent specifica- producing And, that in order to the tion.” ascertain whether defendants inquire should infringed whether jury they, “ did themselves or others, and contravention in of the privi- conferred the said use leges or letters-patent, machinery ap- the same substantially with the paratus described in the machinery apparatus and to effect set plaintiffs’ specification, in forth seem that where So would letters-patent specification.” a is obtained, without a claim to invention of a machinery, valuable result is through precise is, required; produced, infringement the same specification test whether defendants have used substantially the same result. process In the case us, before court instructed the jury “ did not consist but novelty machinery, in discovered into bringing newly practical applica- tion, which a useful article of manufacture is produced, and made as from cast wrought distinguished pipe.” A for leaden would not as it would be pipes good, effect, would, for from all other prohibit consequently, persons article, the same however manufactured. using Leaden are the the metal no same, different. being respect pipes difference in Any form and must “arise from the strength mode of The new manufacturing pipes. metal property to have been claimed the discovered patentees, belongs of manufacture, and not to the made. process thing we must look But claim the invention stated in “ We do application by patentees. They say, claim our invention and any above improvement parts of their described machinery, independently arrangement n combina-1 set above forth.” What we claim as our inven- tion, desire is, ana to secure letters-patent, the combination described, wit, above the core following parts die, chamber, and the when used to bridge form guide-piece, metal, under heat and manner set pipes forth, other in. the same.” manner substantially have founded their claim on patentees specification, neither nor they can abandon it whole or in modify part. is claimed, combination through the new of lead was property developed, pro- cess in structure But the instructed, pipes. in, “that of the invention did not consist originality al.. Tafcham et al. v.

Le Hoy discovered bringing newly the machinery, novelty The claimed patentees application.” into practical as invention in their part, combination the be sustained without its establishing such claim can and no — but as to of which it composed, not as to the parts novelty whether the newly developed The combination. question the formation of have the lead, might of used in pipes, property without the invention if claimed developed, been patented, the case. was not in of machinery, Smallwood, 408, R. Mr. Jus- Story, of Bean v. the case In the that same said, He says appa- tice patentee) Story (the use, has been claim, in this last ratus, long applied, stated machines, of.a to other then chairs, at least in purposes if not now, not so, If this be the nature. similar or invention, machinery applied or at most is an old apparatus, machine, a clear, it to be I take Now a new purpose. the contrivance, in order give or other mechanical apparatus, must in itself substan- therefor, a a claim to party known, and to a it is old and well applied new. If tially does make patentable.” new purpose, that the instruction, in the above was We think there error claimed machinery, specifically novelty by combination invention, for a fact material as their was not the patentees re- must be that on ground, judgment shall other court we to, versed. The excepted rulings correct. examine, as are substantially - and Mr. Nelson, Mr. Justice Mr. Justice Wayne, Grier Justice dissented. Justice Mr. dissenting.. NELSON— The general according description is, for upon, additions given by improvements patentees, Thomas for to, Burr, the machinery manufactur- apparatus substances. and tubes .from metallic declare, ing pipes They and the manner nature of in which the same is to are described and set operate, forth in particularly refer their the 11th lead In that, of Burr specification. lead out of set or solid April, making pipe means great wrought product being pipe, cast, made contradistinguished according pipe, draw-bench The as described Burr, con- system. apparatus, sisted a iron bored true for cylinder, strong sufficiently pis- closed, to traverse ton it. was This at cylinder within easily other, one end at also closed piston, except small the die diameter aperture which formed external core or mandril, which determined the pipe. inner . Tatham et al. diameter, rod of steel, was one end of long cylindrical the face of the attached to piston, extending through centre of the passing centre of cylinder, through also end, die at leaving around the opposite space core and it and the die for between to form the formation of the The metal pipe. was admitted into the in a pipe fluid cylinder state, solid, and when become set or power hydraulic press head of which, applied piston, moving the the against of solid lead in the drove it body die, cylinder, through core with the and with long through advancing lead piston body die, and thus forming pipe. cylinder holds from three to four hundred lead, usually pounds piade continuous till the whole is driven out. charge merit, This one deserved and of plan, though great original- failed, when reduced ity, except practice, purpose demand, than that making very large pipe, larger usually out of use. The core consequently passed attached general long to the face of the it with in the solid lead piston, advancing un- der the liable great required, and pressure warp twist out of a of line, dié, and out centre in the which had straight the effect to the the thickness and uniformity destroy of centrality of the bore of the pipe. old mode, The therefore, of the making pipe by draw-bench system, continued when the down patentees this case lead, discovered, when set and by experiment, recently solid, but still under heat wouldreunite after a extreme in a close pressure, vessel, a,nd of its “heal” separation the parts, (in “ as intention,” it the first language completely patentees) by were as as divided. it not been though lead, of this which had Upon never discovery property but, known, before been on the had been contrary, supposed believed, metals, all men science skilled in to be im- by alteration in made an possible, apparatus of patentees Burr, founded this new discovered the metal, property and succeeded out of solid completely making wrought pipe lead means of the The was so pressure. hydraulic product much superior to that made quality old according mode, that immediately market. wholly superseded The was also made much cheaper. enabled to patentees, by discovery, dispense with bars at Burr, fix core or cross firmly long bridge die, end near cylinder bridge, into and die. fastened a short they By that core extending through core, a firm, immovable obtained they arrangement with always die, its secured centrality preserved the manufacture of of wall of thickness uniformity pipé al. v. Tathara et al.

Le Roy bore, lead dimension. The after ad- accuracy any being state, a fluid into the was allowed to cylinder mitted till the remain solid, and was then driven it became piston through into the chamber between it and the apertures.in bridge after reunited, as die, where parts separation, completely before, and, die oat at the around the fixed short core, passing formed perfect pipe. do state, that not intend to confine them- patentees they of the1 selves thus arrangement apparatus particularly out several modes other which the same specified, point all of result which variations would may produced, readily themselves, observe, suggest any practical engineer, without the substantial the inven- departing originality tion, the remarkable which, is, feature of that lead, they say, state, heat, in a set under can be made,' when treme ex- yet being around a to' reunite core after perfectly separa- tion, and thus be formed into or tubes. thus strong pipes Pipes are found to made and unusual possess great solidity strength, a fine such as had never before been attained uniformity, other mode. The difference in its character, essential any it from all other theretofore known, which distinguishes .add, is, heat, that it is under and con-' wrought by pressure striction, from metal. set or solid do not as their invention or claim, improvement, They of and parts machinery, independently arrangement combination set forth. is, What we claim as our combina- they say, described, of the. to wit: tion above core and following parts chamber, guide-piece, bridge cylinder, piston, die, used to under when form of metal heat and press- pipes ure, in the manner manner other substan- forth, set in any the same.” tially claim, It is as the of their supposed novelty patentees invention, the and combination arrangement machinery described, which have disconnected they employment new have and discovered, lead, of which they property of suc- have by practical they .use ceeded in And the new manufacture. producing general title invention, or their in the their body description given claim. is referred But letters-patent, to as evidence of such or title whatever every patent, be the general heading by may refers to the specification designated, for a annexed hence court more this description; particular a determined, has heretofore constitutes specification be construed and tliat must together they when et al. ascertain seeking Hogg claimed. discovery Emerson, 6 How. 437. ISO et al. v. Tatham et al. The same rule of construction was applied Court in the of Neilson’s Exchequer, England, for.the Cases, hot air blast. Webster’s Now, on into the see, we that the lead- looking specification, feature of the invention consists in the of a new ing discovery lead, in the article of and in the property employment adap- it, described, tation of means of the machinery produc- a article, tion of before never wrought pipe, successfully made. Without of this new metal, discovery property in.the useless, or would be and not the machinery sub- apparatus It is in connection with ject this patent. property, of it use, embodiment that the ma- adaptation practical described, and the claimed. The dis- chinery arrangement this new element led covery property naturally appa- ratus, which a new and most useful result is The produced. but incidental, to the' new and apparatus subsidiary idea of the And hence, invention. set leading forth, patentees it, as the lead, feature leading discovery, .in state, solid but under heat and extreme ain close ves- pressure sel, reunite, will after of its parts, separation completely it had never been little in- It though separated.. required-very after' the -a vessel, close which this genuity, new experiments of the metal first to construct property developed, for the formation of the The necessary pipe. appa- ratus, essential to this would at once develop property, suggest the material in the state of the art at the time. parts, especially mechanic, him, skilful with Burr’s machine before would Any construct-the requisite readily machinery. therefore, after discovery patentees, describing and the lead, means of which property apparatus by metal to the manufacture of claim the they apply pipe, when used to form combination pipes machinery, only forth, other under heat and in the manner set or in any manner do claim it as new the same.. substantially They other other or in used for purpose, any when separately, and in but it, claim when applied only, purpose way; the combination, as out in the way pointed specification. used; of itself, have old; may may long machinery, not be the may

what could claim as his no one it never had been is, What claimed subject of a patent. have before used, purpose and for way applied used in the embodiment adaptation applied namely, it, are lead, of which means newly-discovered'property — out of enabled wrought pipe new manufacture — These it, failed. solid lead. attempted mass of Burr discovered of'seventeen having after the lapse years, patentees, 181

Le Eoy et al. v. Tatham et al. this metal, new in the succeeded, use and property em- it, then, of and since none other than ployment lead wrought out made of solid lead, market, has been found in the hav- pipe, ing superseded, of account its cheapness, superior quality modes of all other manufacture. Now construction, which I of understand majority my are inclined to brethren tentees to this give patent, pa- the namely, their, claim, as the invention, of originality simply, of combination deference, with machinery employed, great seems to me fair of and reasonable contrary import of the of the also language specification, summary claim. of modern is to construe decisions tendency speci- fications and to look forms benignly, mere of expression, through often used, substance, and to maintain inartificially invented, if ascertain- right patentee really thing able liberal consideration of of the specifi- language .the cation, when taken For this together. phrases purpose, standing are not to be out, alone but the whole are to be taken in singled 1 connection. Sumn. 482-485. Baron Parke observed, court opinion delivering “ That, in Neilson’s in fifteen less, half a patent, even with- ago, century there seems have much a been twenty years, very both practice judges juries destroy patent-right, even of beneficial astuteness in exercising great patents, by as to either the title but more objections, taking as to the valuable particularly specifications, many have so rights taken. consequence destroyed objections more, Within the last ten courts have not years been so strict in objections taking specifications, have endeavored they to hold fair hand between the patentee and the the reward his public, give patentee willing patent.” before this us in I cannot but spirit, Construing think, that the intended discovered, and to be de- thing really scribed, and claimed these well be cannot patentees, mistaken. did not That their con- they suppose novelty sisted, described, simply, arrangement is their state, manifest. feature of They leading distinctly, of this lead, consisted and some discovery property — its this, the remarkable feature their alloys, say, they — invention, them .described apparatus regarded subordinate, as and as them to important enabling means effect to give practical of property; newly-discovered If have new manufacture. failed to describe this, and claim to their belonging manifest, it is have 1ipon face that they specification,

VOL. xiv.

Le Soy et al. v. Tat'ham et al. describe, failed to the to words and claim employ what proper intended; and that the case is in which, if they very presented, the court, in Parke, Baron will endeavor hold look language a fair hand between and the it will patentee public, the forms of used, discover, can, if it through expression invented. thing this rule of really Apply specification construction, and all invented, and intended to be at once difficulty disappears. thing is too claimed, to be mis- apparent taken. have in the patentees been unfortunate certainly language of the if, a fair and liberal specification, upon interpretation, have claimed when only apparatus simple employed; have not set forth the of this only discovery property metfil, invention, but, feature in their is mani- great fest, without it the would have been useless. Strike apparatus Put this new from their property description claim, and valuable is left. Ail the rest would be nothing Worthless. This lies at-the foundation which the great merit of the rests, without of which knowledge the new manufacture could not have been and, produced; for know, we the world aught would have been of it down deprived to this day. If the had claimed the combination core ancl patentees with the the chambers, and the bridge guide-piece, cylinder, die, and there, construction, I admit now stopped adopted brethren, by could not be majority my denied; although, even then, obvious, it would be from an of the examination specification whole, as a that the had mistaken the draughtsman invented, and substituted in its matters thing really place simply incidental, and of But the comparative insignificance. language - of the claim does not here. The combination of these stop parts lead, claimed used form when under pipes — heat and forth, is, when in the manner set used for embodiment and of this new adaptation property metal for out of a solid mass of lead. making wrought pipe This use guarded limitation of the excludes the idea' of a claim ties, other, combination for down in- any stance, when the idea use new or ele- within incorporates ment to it its means which value, and gives by new manufacture it be then, can How, consistently produced. held, that here is a claim and nothing machinery, simple tho more, when a of the reasonable words not only interpretation sets excludes necessarily claim, but .terms such express — forth different one not one, conception in the only different of the but different working practical ? apparatus, intended accomplish purpose

Le Boy et al. v. Tatham et al. I conclude, therefore, claim, the in this simply the em- apparatus patentees, employed by bodiment or the employment property newly-discovered metal, and the it, means, these practical adaption of a result, new the manufacture of production namely, out of solid lead. wrought pipe Then, is.this the ? m proper subject-matter This was first question discussed counsel court largely Bull, celebrated case of Boulton in- Hen. (2 463,) Watts’s which was for new volving invented method validity fue} lessening consumption steam in This effected- was wood, fire-engines.’.’ inclosing steam vessel or material, or other cylinder the heat in vessel; preserved steam in steam condensing vessels. admitted, It on the separate argument, no there invented mechanical construction was. Watt,.and the validity placed ground that it was for well-known applied, principles, practically pro- was a hand, new useful it ducing result. On other conceded, that manner of principles new, described was claimed; but it the result was produced denied, that this of a constituted the patent. subject-matter Buller, Heath Justices, the de- with the counsel for agreed fendant. But Lord Chief true doctrine, Justice laid down the Byre and which, think, I will be to be the admitted doctrine of seen “ the courts of at he England observed, this Undoubtedly,” day. “there can be no for a for a but patent mere princi- principle; so far ple, embodied and with substances as connected corporeal to be in conditioi. to art, act, and to effects a-_ trade, or this,” be a manual mystery, I think may there occupation, “ Now, he continues, patent. thing is, in judgment, my ; for which stated in the case was granted this is what the it describes, miscalls it a specification though It is not principle. conceived an abstract the patentee notion, that be steam in of may fire-engines consumption lessenedj but he it; has manner doing discovered practical and for that manner of it he has taken practical pa- doing tent. he is a from observes, thing “this different Surely,” very for a we have taking principle. apparatus, said, construction, was There not new. new no mechanical is. Watt, for the Counsel invented patentee, capable by but his being discovery distinct subject specification; which is set was the method of principle, clearly applying Chief J used were forth.” means ustice admitted Byre new, riot been for me- that if the taken out had patent' used, chanism fail. must al. v. Tatham et et. “ the effect some new sub- observed, He When produced or it should seem that the stance things, privi- composition or be for such new sole ought working making lege without to the mechanism or or regard composition, substances which, it has produced, perhaps process by though the new new, will useful as substance.” also producing be. no new substance, When the effect com- produced Again, be for the mechanism, can only position things, if it be used; if mechanism is a new process, old.mechanism, method of the effect is with or without which' operating, observes, If.we And he wanted produced.” again, a new method of an illustration of the merit of operat- possible old we look to the identical case ing machinery, might 493, 496, before the court.” p. law of was doctrine, an- This patents, expounding of it nounced in and the subsequent adoption courts, that Chief Justice shows, considerably English Eyre this branch of the law. He in advance of his associates upon patents so' rid, at got early day, prejudice against Harford, in Neilson v. referred to Baron Parke feelingly n comprehended if to his country great advantages properly his observed, in He another part opinion, encouraged. “ of this kind improvements advantages public beyond to a commercial country; are and all important calculation artists, turn their towards who thoughts the ingenuity itself, is, in .such deserving encouragement.” improvements, Court Bench King’s This doctrine recognized 340, 350. Wheeler, 2 B. & Ald. King “ manufactures,” in observed, It there that the word -to be carried on act, a mere extended process patent' may known sub- elements, 'known acting upon implements known substance, other stances, some and ultimately producing manner, or or more expeditious cheaper producing aof better kind. or more useful known Now, if be carried on implements this process some substances, and known upon ultimately producing acting pf a kind, is known a substance better patentable, other will it known fortiori some jie other if patentable, ultimately produces substance. substance, new useful but an eñtirely application In which consists of Forsyth’s patent, of fire- use as discharge powder primingl'for detonating held, arms, that whatever might- .construction dis- was to be lock-or contrivance powder b^-which as' the usé mixture priming, of charged, detonating Webster’s new,-was of itself was article an infringement. 94, 97, Pat. Cas. Curtis on Pat. 230. (n); TEEM, DECEMBEE 1852. 'et al. v. Tatham et al. is founded a doctrine which This case has been recog- several cases in nized in subsequent England, namely, a a or of nature, where where discovers or person principle property he conceives of a well-known application prin- nature, or also, of some mode of ciple property carrying it out into effect or so a as to or attain new and useful practice, produce result, he is entitled to all other against protection same, modes of or into carrying principle property practice for the same effect or result. obtaining of the in the consists novelty conception discovery other, in the one and of-the application application which a new in the arts or manufactures is the product effect; is, and the in case of an as to the question, infringement, substantial of the and of identity principle property, ap- the. same, of the means or plication made use material consequently.the of, so far as affect the identity the application. In the case “an patent Jupe’s improved, expanding “ table,” Baron of this observed, doctrine, Alderson You speaking cannot take ; out a for a take out a principle may you for a with the mode patent principle principle coupled carrying then, into effect. must start with in But you having some into if effect; mode of you principle vented. have carrying that, done entitled to then are from protect yourself you all other modes of same effect, into principle carrying treated invention.”

being piracy your original Cases, Webster’s Pat. The same 147. doctrine maintained also ih-the case of blast, Neilson’s for the hot air in K. in Cases, 342, B. Webster’s Pat. Exchequer England. 371; Curtis, Cases, Pat. 74, 148, ;232 Webster’s § in came also before the Court of Sessions Scot- This patent ; and in the Lord the case to the Justice land submitting n remarked, merit, That the the most main of the important part — in consist idea may conception original science, or of law of na- discovery principle ture, stated no and little have patent; pains .the may taken in out mode of the best working still, if the set forth But patent. principle principle purpose stated, so to be special purpose, any applicable unknown, to the result way any previously described, no It objects good. longer abstract It be a turned becomes to principle principle. (cid:127) account, special.result. and applied practical object, becomes, then, It which means not an abstract principle, considered practical special purpose principle apart for a and statement operation, discovery StíPEEME COUET. Roy

Le et al. et al. v. T^tham is, that a a mode of special purpose, practical can-ying ’“ law,” observes, a well-known into effect. That such is the he if a a principle is for the first time to applied principle for a result never been practical special' purpose, disputed, has and would be it refuse the same very strange unjust effect, when inventor has the merit of legal the. additional as its to a well discovering principle, application practical object.” observes, Then he to the Is an again, objection in its a result, of new a' certain specified application principle it' includes of mode of -every variety applying principle of the benefit to statement observes, object according general, This,” law, be attained? he a “is I question claim, is, must tell that this you distinctly, generality all modes of to the purpose specified, applying of the to be to, or within statement general object according of the use to' be to be attained, and made so agent is no us 3 applied, objection application patent; be carried out in a purpose specified, may agent (cid:127) shows and sim- beauty great variety ways, of the invention.” arid plicity, comprehensiveness Lords carried to the House of on This case was up excep others, it, to this which tions to the charge, among ' “ jáixth is as : In so far as follows he was the exception, on the construction of did not direct-the jury,-that (the Judgé) cannot claim or main specification, patentee to all the varieties tain that the under one which his.patent applies air be while heating employed apparatus may described in but was limited blast; particular the court And judgment although specification.” on the eleventh House of Lords exception, reversed in the at this one. Lord Campbell affirmed as was expressly respects courts, in England after the decision doubted,, first Webster, the instruction right. he admitted Cases, 717. 683, 684, 698, Pat. tó rne on this sub- a reference I shall authorities pursue doctrine to be deduced further. settled ject any them* discovered the for' is, application think, having I person nature, -law of well-known of well-known time first result-in matter, which a new arts means property out a mode and has or in pointed produced, manufactures and, if has he it is is entitledrto patent; produced, mode particular himself tied down specification all modes entitled to protected against descvibed*he the same same result- is which the produced, n if -he has of matter. And'» fortiori, law .of nature property v. Tatham et al. matter, of nature of and the law or.property discovered applied to the and entitled aforesaid he it, patent, protection. is be ? not this the law The should original concep- And why idea one is the the novel in the new of tion— application matter, and the the new the product property principle — the other, or manufactures the of the arts discovery' and with like- result. The application, property, principle mode are but and incidental, means from flowing naturally and the inconsiderable' original conception; merit. hence it is is But, said, this or element of nature. patenting principle, referred, which I have the The authorities'to answer objection. Chief Justice It was answered in the case of Eyre, ^Watts’s and more ; in still fifty-seven years ago recently more and .authoritative terms. And if the what explicit princi- in the invention, and the inventor ple is-incorporated protected in 'the in the for the fourteen only He enjoyment years. protected of the for the and enjoyment application special purpose has been his and object skill. For newly applied genius end, other and the is free for every purpose principle use., all mankind to as where it And, discovered, has been as well to this one to the world as to applied purpose, open other, the ground every complaint obvi-_ certainly very ous. within the of the Undoubtedly, range object purpose the for which has been for the first time applied, piracies are interfered with fourteen But during years. any body take it other may up give ¿my application of.the arts and of manufactures, enlargement without restriction. He is debarred from use of the new application time, limited of others has- invented genius already (cid:127) into does successful put practice. protection go which, time, for the first has been thing discovered beyond use; into no broader practical and brought than other discoverer a- extended or inventor of every new art or manufacture. own, l'am I incapable detriment cdrpprehending flow from this improvements may sort country to inventors. protection hold, To case of of this character, inventions that the must consist of the mode novelty or means of new applica- tion facts be result, would producing holding against of the cáse,» see, no one can but con- original far reaches these. It ception would be beyond mistaking of the skill mechanic for of the inventor. genius this doctrine, some the most brilliant and Upon useful in- ventions men day by benefactors, justly regarded public — and whose names reflect honor their the sue- country COURT., 188- Le' et al. v. et al. Tat-ham of steam cessful and railroad of vessels application power propulsion —cars of the electric current for the application one communication from instant intelligence extremity — recent, other more brilliant country but-equally of vessels conception, propulsion heated air, the air the atmosphere expansibility supplied found, that surrounds It would on consulting them. established of laws for their system encouragement protec- tion, that the world had mistaken the merit of altogether instead of the that, discovery; originality brilliancy them, had been attributed to conception unwittingly of. of it' consisted some mechanical contrivances whole simple have which a skill could devised. mechanician ordinary readily, n account, in. Franklin, Evén order to if he had turned the lightning himself from have must protect piracies, patented kite, tion, thread, and -the as his concep- key, throughout Europe, great original him a name as at which as well gave home, heavens, this of for- down element from the bringing service man-. And if these con- simple subjecting trivances,- taken and disconnected from together, control use of the- element and- new and useful result which the new application, have been b.e may produced, happen known, old and well his would be if some fol- void; or, tract lower intellect make with genius, just enough in.the mechanical device contrivance, a different for the skme con- element, of.the result, the same application trol would, this under view of himself to law, he entitle of the fruits of the full Franklin’s enjoyment discovery. which I (cid:127)If comprehend rightly ground upon majority have decision, brethren intend to endeavored to placed do not my they so much which I have controvert doctrine which, think, I maintain, and rests settled as the upon authority! of it case. that the particular application They suppose claimed have combination of the different only described in their patentees parts specification, are tied down to the therefore, maintenance of that as the no- of their invention. I have endeavored to show, that this is velty n a mistaken that claim the combina- interpretation; tion, used to when only, embody- give practical application lead, means of newly-discovered property new manufacture out produced, namely, wrought pipe solid of lead; conceded, mass it is was never before suc- cessfully accomplished. reasons, For these I am constrained to differ with the judg- ment have arrived at, and am in favor of that affirming the court-below Heirs

United of Killieux. States.v.

Order. came on to be heard on the cause This the the transcript Circuit United States Court record from - York, of New and was District counsel. argued by Southern On it is whereof, now here ordered consideration and*adjudged, that of the said Circuit court, this judgment, .Court reversed, costs, and the same be, this cause hereby,- be, and the same remanded to the that this cause hereby, with directions to award a Court, Circuit venire de novo. facias States, Appellants, United the Heirs Vincent Rillieux, Deceased. in 11 again the acts Congress decides, Howard, This court -under 580, the District Court had no 1824 and to act evidence of 1844, mere power naked conferring, written professing evidence unaccompanied by possession, confer, a title of some description. the land in from Trance to Great question By treaty passed 1765, Britain; certifying of two Trench officers certificate claimant had long time in furnished for a no evidence of title. No was possession, government grant. for a made the British was under whilst Trench Indians, A con- province purchase authority, sanctioned unless no title authority. veyed there is no claimants are heirs also, In this proof party originally in -possession. from the This District Court of the appeal United States, for Eastern District Louisiana. The petition filed in that the heirs of Rillieux, court under the act 17th, 1844, of June Stat. at 676,) which court Large, decreedin (5 favor of the The United States petitioners. appealed M,. court, where it was Bibb and Mr. argued by Crittenden, No counsel (Attorney-General,) appellants. appeared appellees. Justice/CATRON delivered the lyir. the court. opinion aver, are the lawful heirs of petitioners Vincent and Marie wife; Rillieux his and as Tronquet heirs, such are the true and lawful owners of a tract of land parish St. State of Louisiana, on bounded Tammany, South Ponchartrain; side Lake on the East Pearl River; West Bonfoqca; bayou on the North a line from the western source of said running, bayou, head qn the same to Pearl wafers containing River” — of about extent one hundred thousand acres. It is that this tract of land alleged, purchased part

Case Details

Case Name: Le Roy v. Tatham

Court Name: Supreme Court of the United States

Date Published: Jan 10, 1853

Citation: 55 U.S. 156

Court Abbreviation: SCOTUS