20 F. Cas. 672 | U.S. Circuit Court for the District of Western Pennsylvania | 1853
(charging jury). The plaintiffs claim to be the assignees of a patent granted to Daniel Fitzgerald June 1, 1S43. In April, 1839, previous to the issuing of the patent, Daniel Fitzgerald sold and assigned his inchoate right to his discovery or invention to Enos Wilder. The assignment, though antecedent to the patent, has been decided to be a valid legal assignment of the invention afterward patented in the name of the inventor. Enos Wilder afterward (September l,t 1843). assigned all his right and title to Benjamin G. Wilder, and on June 2D, 1847, Benjamin G. Wilder assigned the same (with the exception of New York and the New England states) to Cran-dale Rich, Almon Ruff, and John G. Stephen, the plaintiffs in this case.
The patent purports to be for “an improvement in fire-proof chests and safes.”
It is important that you note particularly the claim as stated in the specification of what the patentee specially sets forth as his peculiar invention. The law, for good reasons, requires this to be set forth precisely and specifically, and precludes the pat-entee from alleging it to be different or more enlarged than he has thus set it forth. It is in these words:
“I therefore claim as my discovery and invention and improvement, the application and use of plaster of Paris, or gypsum, in its raw state or prepared as above, either alone or with mica, in the construction of iron chests, or safes, in the manner above described, or in any other manner substantially the same.”
If Fitzgerald be the first and original inventor or discoverer of the application and use of plaster of Paris to this purpose, and this application produce a new and useful result, it can not be doubted that it is the proper subject of a patent. It is not for the discovery of the fact or principle that the gypsum has certain qualities not before known, to wit: that it was a non-conductor of heat, but it is for the application of this substance possessing such qualities, to produce a beneficial result — a manufacture or machine better than any before known.
Assuming for the present, that the pat-entee is the original inventor of the subject-matter of this patent (of which the patent is prima facie evidence), and that it is not only a new but a useful invention (which last is not disputed):
Your first inquiry will be, Have the plaintiffs proved to your satisfaction that the defendants have infringed the franchise or monopoly granted by this patent? A question of infringement is one of fact, which it is the province of a jury to decide.
It is impossible for the court to give you a general or abstract definition of what is an infringement, which will be easily applied to every variety of case. “An infringement is said to take place whenever a party avails himself of the invention of the patentee, without such a variation as will constitute a new discovery.” “It may be by making, using, or selling” the thing patented. When the subject-matter of the patent is a manufacture, the question will be whether in reality and in substance the defendant has availed himself of the invention of the patentee; a mere colorable variation in the process or application should not be allowed to protect a defendant. ■
In order to apply these principles to the present case, you must carefully observe the peculiar nature of the invention, improvement. discovery, or composition of matter claimed in the specification. In the specification the form or proportions of the safe are not claimed, nor the use of one chest within another, nor the idea of interposing a lining of some non-conducting substance between the outer and the inner chests to resist the effect of fire. Salt, charcoal, asbestos, soapstone, and perhaps many other substances and compounds have been used for this purpose. If the patentee has discovered some substance possessing the requisite qualities for the purpose required, he has a right to patent his invention. But the defendants have an equal right to make or compound any other essentially different composition or substance for the same purpose. But they have no right to avail themselves of the plaintiffs’ invention or discovery by making some colorable alteration in the mode of its application. Now, what is the composition of matter which the plaintiffs’ patent claims to have invented for the purpose of lining chests or safes? It is plaster of Paris in the raw state, or calcined or prepared as set forth in the specification, either alone or with mica. Have the defendants used ' substantially this substance or composition of matter?
Price, the plaintiffs’ witness, says he furnished the composition used by defendants in making their safes; “one of his own making;” that he had used it twenty-five years: that it contained not one-third plaster, and many other ingredients.
Now, if it be tine that the composition of matter sold by witness to defendants was one known and used as a non-conductor for twenty-five years and more, and was not a mere colorable evasion of the plaintiffs’ patent, taking advantage of the patentee’s discovery, and merely varying it by a mixture of other ingredients to cover the infringement, even though plaster of Paris may have been one of the ingredients of such composition, the use of it is not necessarily an infringement of the plaintiff’s patent.
The patentee does not and could not claim all compositions known and unknown of which gypsum might be a component part, which might be used as non-conductors in lining safes. He claims gypsum alone, or with mica. If, in your opinion, the composition used by defendants be substantially
2. The next question to be considered (if .you find the defendants have infringed the patent), is whether the patentee is the original and first inventor. As I have said, the patent is prima facie evidence of this, i. e., •sufficient till the contrary is shown.
The patent act of 1S3C (section 6) [5 Stat. 119] provides “that any person or persons having discovered or invented any new or useful art, machine, manufacture, or eompo-.sition of matter, or any new or useful improvement on any art, machine, manufacture, or composition of matter not known or used by others before his or their discovery or invention thereof,” may apply for a patent, etc. The applicant is required “to make oath or affirmation that he does verily believe that he is the original and first inventor, etc., and that he does not know or believe that the same was ever before known or used.” The commissioner is required, before he is allowed to grant a patent, to inquire whether “the same had been invented or discovered by any other person in this country prior to the alleged invention or discovery thereof by the applicant,” etc.
The mere speculation of a philosopher or mechanic, never put into actual practice or operation, will not deprive a subsequent inventor, who has employed his labor and talents in putting it into practice, of the reward due to his ingenuity and enterprise. But, if the first inventor reduced his theory to practice, and put his machine or other invention into use, the law never would intend that the greater or less use in which it might be, or the more or less widely the knowledge of its existence might circulate, should constitute the criterion by which to decide upon the validity’ of any subseqtient patent for the invention. A patent may, Therefore, be defeated by showing that the thing secured by the patent had been discovered and put into actual use prior to the discovery of the patentee, however limited ihe use or knowledge of the prior discovery might have been. Bedford v. Hunt [Case No. 1,217].
If the original inventor of a machine abandons the use of it, and does not take out a patent first, no other person can entitle himself to a patent for it. Evans v. Eaton, 1 Pet. [26 U. S.] 323. There are exceptions to this general rule, as in the case of a lost art, where the knowledge of it has been lost for ages, and, in the present case, if you should find that Conner discovered this valuable property of plaster of Paris before Fitzgerald had put it into practice by lining the interstices of a safe, but that the safe itself had disappeared, and the knowledge of the improvement was as completely lost as if it had never been discovered, and Fitzgerald had afterward made the same invention and discovery anew, his patent might stand. But, if Conner’s safe was in existence and in use, and the knowledge of it not entirely forgotten and lost, his omission to bring it into public use or notice, by public exhibitions or experiments, would not give Fitzgerald, if he was a posterior inventor. a right to a patent. Conner might have abandoned its use. and been ignorant of the extent of its value, yet, if his invention was substantially the same with that of Fitzgerald, the latter would not, upon that ground, be entitled to a patent, provided Conner’s safe and its mode of construction were still in the memory of Conner, or in the knowledge or use of others, before they were recalled by Fitzgerald’s patent. Gaylord v. Wilder, 10 How. [51 U. S.] 498.
The evidence bearing upon this point has been very fully and ably commented on by the counsel. It is for you to apply it to the principles of law announced by the court.
3. If you should find, from the evidence, that Fitzgerald was the first inventor of the subject-matter of the patent, you will then have to consider a third point made by defendants’ counsel, namely, whether Fitzgerald had abandoned his invention to the public before his application for a patent.
A first inventor can not acquire a good title to a patent if he suffer the thing invented to go into public use, or to be publicly sold for use, more than two years before he made application for a patent. “By a public use is meant a use in public; that is to say, if the inventor himself makes and sells the thing to be used by others, or, if it is made by one other person only, with his knowledge and without objection, before his application for a patent, a fortiori if he suffers it to get into general use, it will have been in public use.” Curt. Pat. § 279.
This patent was issued in 1S43; the immediate application on which it was granted was made in 1S39; Salamander safes had been and sold from 1830 to 1839 by Fitzgerald and others. The affidavit of Fitzgerald, filed with the application, was made before the burning of the patent office in 1830, and renewed in 1837. Defendants deny that this application was for the invention patented in 1843; but say that it was for an entirely different one, being a composition of salt, saltpeter, plaster, etc., and, moreover, that this application was abandoned and the money paid returned; and, that after Wilder had purchased this claim in 1839, the first application 'for the invention, as now patented, was made by Wilder, who, in resuscitating the abandoned claim, endeavored to connect it with the former abandoned application for a different invention, in order to
If you find that the application of 1830, renewed in 1837, was for this same subject-matter now patented, and if such application was not withdrawn by Fitzgerald, but the delay was caused by the conduct of the commissioner of patents in refusing to grant the patent for the same invention since patented, then Fitzgerald should not be considered to have abandoned his invention to the public unless he abandoned it before 1830, which is not contended.
On the contrary, if you believe that the application of 1830 and 1S37 was not for the same invention with that patented, and, therefore, was refused by the commissioner, or was withdrawn and abandoned by the applicant, and continued so until Enos Wilder got up an application for the present patent, and, in the meanwhile, the invention had gone into public use for more than two years, then you will find this point for the defendants, and they will be entitled to your verdict.
The jury found a verdict for the defendants.