delivered the opinion of the court.
This case comes before, us upon a writ of error to the .Circuit Court of the United States for the District of Maryland.
The plaintiff in error instituted in the Circuit Court his action on the case to recover of the defendant damages for an alleged infringement of a patent granted to the plaintiff on the 23d of August, 1831, and subsequently, under- the authority of *342 the United States, renewed and extended to him for an additional space of seven years from the expiration of the first grant.
On the trial of this suit upon the plea of not guilty, the parties by agreement submitted their cause to the court upon a case stated. • The court, on the case thus made and submitted, gave judgment in favor of the defendant; and to test the correctness of this judgment is the purpose of the investigation now before us.
The invention or improvement claimed by the plaintiff in error, and by Mm alleged to have been pirated by the defendant, is thus described in the schedule and specification filed with and made a part of the letters patent: — “ A new and useful improvement in the mode of forming and using cast or wrought iron plates or rails for railroad carriage-wheels to' run upon, more especially for those to be used on the streets of cities, on wharves, and elsewhere; and I do hereby declare, that the following is a full and exact description of my said inventions or improvements.
For the purpose of carrying railroads through the streets of towns or cities, or in other situations where circumstances may render it desirable that the.wheels of ordinary carnages should not be subjected to injury or obstruction, I so construct or form the rails, that the flanches of the wheels of railroad cars or carriages may be received and run within narrow grooves or channels, formed in or by said rails, said grooves not being sufficiently wide to admit the rims of the wheels of gigs or other ordinary carriages having wheels of the narrowest kind.”
A Ter some remarks descriptive of the shape and dimensions of the plates or rails, and of the grooves to be used, the specification thus proceeds: — “ Should it be preferred to use the ordinary flat wrought-iron rails, they may be laid double, at such-distance apart as to form the proper channel for the fianch between them. Wrought plates may also be formed in the mahner represented in figure 7. This plate is rolled so as to have a channel in it, which may be one inch and ,a quarter wide at top, one inch at bottom, and five eighths of an inch deep. Where it is necessary to cross a water-gutter in the street, I use a cast fron plate or plates to cross said gutter, the fianch channels being in such plate or plates. The whole surface between the channels is cast rough, to prevent the slipping of the feet of horses. The aforesaid cast-iron plate is best cast in one piece, as it will be stronger than if divided; although of the same thickness, it must of coúrse be of a width sufficient for the particular gutter to which it is to be applied ; and it should ba strengthened by ribs cast on the lower side. In some cases *343 I cover the gutters the whole width of the street with such cast-iron plates, and extend them to some distance beyond the curbings. I thus make a great improvement in streets for the ordinary purposes of travel.” Such being substantially, and indeed literally, as far as it is set forth, the descriptive part of the plaintiff’s specification, his claim, or the substance and effect of his alleged invention and improvement, is given in these words: — “ What I claim as constituting my invention, and desire to secure by letters patent, is the employment of plates or rails, either of cast or of wrought iron, constructed and operating upon the principle or in the manner herein described ; having narrow grooves on each side of the track for' the flanehes of car-wheels to run in, by which they are adapted to the unobstructed passing over them of the various kinds of common carriages, and to the running of the wheels on slight curves without dragging. I also claim, in combination with such grooved rails or tracks, the employment of plates of .cast-iron for the covering and crossing of .gutters, such plates being constructed as described, and having the necessary flanchtchannels cast in them.”
It is manifest from the description of the.plaintiff, as given both in his specification and claim, that the improvement he alleges to have been made by him, whether important or otherwise, consists essentially, if not formally, in a combination. His grooves for the admission of the flanehes of car-wheels, whether east in. iron plates or produced by the juxtaposition of two flat iron rails, and the rails themselves, were all of them long previously known, and long familiar in use; and it was by an application or combination of these familiar means or agents that he was to. accomplish the result proposed, namely, the unobstructed passage of carriages over railroad tracks when laid in streets or cities. The only idea or design in the plaintiff’s description which wears the semblance of originality,- is that of sinking or depressing these known agents or materials in combination to a level with the surface over which the-passage of ordinary carriages was to take place. Still, these agents or materials were the same well-known grooves, the same car-wheels and flanehes, a-nd the same flat rails, which were to constitute the means of the plaintiff’s operations. And the object of these operations, the essential improvement claimed, it should be constantly borné in mind, is the preventing of an inequality in the surface of streets, forining an obstruction to ordinary carriages, by reducing the railroad track to the same plane with the surface of the streets themselves.
The acts of the defendant complained of as being an infringement of the plaintiff’s patent are thus set out in the case *344 agreed by the parties, viz.: — “ That, before and since? the period of said extension of the first above-mentioned patent, the defendant, \ corporation created by the General Assembly of Maryland for the business of, and engaged in, the transportation of passengers and goods by railways belonging to it, did, upon its railway, and as part thereof, in the city of Baltimore, and at the corner of two streets to be turned in the course of said transportation, .construct, and has ever since kept up and used, a curve furnished and fitted as follows, to wit: On the inner side of the curve is placed a double iron rail cast in one piece, and with the interval between large enough to allow the admission of the flanch of the wheel, the rail on the outer side being the usual one throughout the curve, without difference. of' any kind, except that it is curved; and it is admitted .that the passage of the cars round the curve is throughout, arid always has been, upon the treads of the wheels and these rails were intended and used for the purpose 'of enablirig the cars to turn the curves of the streets above mentioned.” The mechanism thus described as used by the defendant is, like that contained in the specification annexed to the patent of the plaintiff, evidently a combination, or an application of means or agencies previously known. If that mechanism can have any claim to originality, it must be in the modus or plan of that application, not in the invention 'of the several parts' of the mechanism.
It remains, then, by a cornparison of these two combinations, to ascertain whether they are the same, either in form, or in the manner of their operation, or in the results they were designed to accomplish.
The combination claimed by the plaintiff as' his improvemént consists, of the use of grooves on both sides of a railroad track, and either cast in iron plates, or made by the parallel position of double lines of flat rails, in which grooves the flanches only of car-wheels are to run, and which are likewise to be too narrow to admit the wheels of carriages having the most slender rims or felloes; and the whole of this combination of mechanism is to be depressed to a plane exactly corresponding with that of the street in which it may be introduced; as, without this arrangement, it is obvious that the unobstructed passage of ordinary carriages (the great object in view) could never be attained. The machinery of the defendant, co.mplained'of as an infringement of the plaintiff’s patent, consists of a double flat rail of cast iron placed on the inner side of a curve or corner intended to be passed, and an ordinary flat rail bn the exterior line of the same curve to be passed; and the whole of this machinery is constructed on the same plane with
*345
the general track of the road, elevated to whatever point that track may be raised, and without regard to the convenience of ordinary carriages making transverse passages through the streets; such facilities to ordinary carriages being no part of the end proposed by the defendant. From this comparison of the combinations in use by the plaintiff arid the defendant respectively, and upon a just construction of the plaintiff’s patent, the court, so fa* from regarding them as identical either in mode, in design, or in result, is in all their characteristics constrained to view them as wholly dissimilar, and as not conflicting with each other. The combination, therefore, used by the defendant, cannot, be regarded as an infringement of the plaintiff’s patent. This conclusion is in strictest accordance with the ruling of the late Justice Story at circuit in the case of Prouty
v.
Ruggles, afterwards confirmed by this court, as will be seen in
A preliminary question was raised in .the argument of this cause, which, as it is connected with the practice in this court and in the courts inferior to this, and has an important bearing on the convenience both of the courts and the bar, is deserving of consideration. The question alluded to is this: Whether, as this case is not brought up either upon express or specific exceptions to the rulings of the Circuit Court, nor upon any decision of that court upon a special verdict found by the jury, but comes before us upon an agreed statement between the parties, this court can in this form take cognizance thereof? *346 And it is insisted for the defendant in error, that, under such circumstances, the writ of error could not be prosecuted. The objection thus urged is not one of the first impression in this court; it has been urged, upon, and considered by, them on a former occasion, and must be regarded as having been put to rest.
This objection to. the jurisdiction of the appellate court upon a case agreed between the parties- in the court below, had its origin, no doubt, in the practice in the English courts, by which we are told that the appellate tribunal will not take cognizance of such a case, as it will upon one standing on exceptions, or ón a special verdict.
This refusal, however, so to take cognizance, will, upon examination, be found to grow out of the peculiar modes of proceeding in the English courts, as is shown by Mr. Justice Blackstone in the third volume of his Commentaries, p. 377, in his chapter on the trial by jury, in which we find the following account of the proceedings in those courts. “ Another method,” says this writer, “ of finding a species of special verdict is, '-when the jury find a verdict generally for the plaintiif, but - subject, nevertheless, to the opinion of the court above, .on a special cáse stated by the' counsel on both sides," with regard to the matter of law, which has this advantage over a special verdict, that it is attended with much less expense, arid obtains a. speedier decision; the
poslea
being stayed in the hands of the officer of
nisi prius
-till the question is determined, and the verdict is then entered for the plaintiff or the defendant, "as the case may happen. But as nothing appears on the record but •the general verdietj the parties are precluded hereby from the benefit of a writ of error, if dissatisfied with the judgment of the court or judge upon the point of law, which makes it a thing to be wished, that a method could be devised of either lessening the expense of special verdicts, or else of entering the cause at length upon the
poslea.”
So, too, Mr. Stephen, in his Treatise on Pleading, p. 92, speaking of the practice in England of taking verdicts- subject to a special case,.remarks, “that a special case is not like a special verdict entered on record, and consequently a writ of error cannot be. brought on this decision.” The objection now urged, and the authorities bearirig -.upon it, Were pressed mn the attention of this court, and co'n.sidered by them, in the case of the United States against Eliason, reported in
Order.
This causé came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Maryland, and was. argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs.