23 F. Cas. 709 | U.S. Circuit Court for the District of Southern New York | 1852
(charging jury). The first machine for making lead pipe by pressure was the Burr machine, which was constructed in 1820. In that machine, the core which formed the bore of the pipe was fastened into the face of the ram, and extended through the cylinder and into the dié. Burr was the first person to whom it occurred that lead pipe could be made out of set or hard lead, by means of pressure. This machine was his contrivance to carry that idea into practical effect. It virtually failed, especially so in respect to the manufacture of pipe of the usual or ordinary size. It seems, from the testimony, to have been successful so far as respected the manufacture of pipe of two inches or two inches anu a half in diameter, and above that size; but, for the ordinary size —under two inches — it was a failure, and it went out of use. What constituted the real difficulty in the way of the successful operation of the Burr machine is a matter of controversy, as you have seen during the course of this trial.
In 1837, an improvement was made upon this machine of Burr by the Hansons, which went into successful operation. This machine was patented by them in England on the 21st of August, 1837. The improvement consisted in making a bridge at the bottom or near the bottom of the cylinder, for the purpose of holding a short core, and was founded upon the. development of a new and beautiful idea. They had discovered, for the first time, that lead, like steel or iron, was susceptible of being welded together after separation when solid; and they were thus enabled to construct a bridge at the bottom or near the bottom of the cylinder, in which they could insert a short core, where it could be kept firm and steady. The lead had to be forced through
Now, although this machine thus constructed manufactured merchantable pipe, and superseded all modes of manufacture known at that time, yet it was subject to an imperfection which embarrassed the manufacturer. The re-union of the lead, after its separation in passing through the bridge, was not at all times' complete throughout the length of the pipe made from a given charge; and hence, when the pipe was subjected , to a considerable pressure of water, a flaw would sometimes appear. This, I believe, was the only defect ever imputed to the article manufactured by the Hanson machine.
The next improvement upon the Burr machine was the plaintiffs’, in 1841 — the one in question in this suit. They bored the solid ram of Burr, and, instead of fastening the core on the face of the rain, extended it through the ram, and fixed it firmly to the cross-head of the frame — the core extending, also, through the cylinder into the die. The bore of the ram is fitted to the core or core-holder, either by adapting the aperture to it, or by packing, so that, when the machine is put in operation, the ram slides upon the core. The core, in the first place, is fastened to the cross-head, which is firm and immovable, differing in this respect from the Burr machine, in which the core was movable with the ram, being fastened upon its face. The core in the plaintiff’s machine is also steadied by the aperture in the hollow ram, or by packing. The advantage in this over the arrangement of Burr, is in steadying the core or core-holder, and in preserving its centrality in reference to the die. This machine appears to have been entirely successful in the manufacture of lead pipe of any dimension.
I will now call your attention to what is claimed as new in the plaintiffs’ patent. After the description of the construction of the machine, which is minutely given, the paten-tees wind up by claiming, first, “the long core or core-holder, formed and held stationary with relation to the dies, as described;” and, secondly, “the constructing of the piston B hollow, in the manner described, and the combination of the same with the long core or core-holder upon which the piston slides.” The third claim relates to the reversed arrangement of the machinery in the working machine, which it is not important to describe.
The first and third claims are not in controversy, and may be left out of the case. The dispute between the parties is confined to the second claim. It is insisted by the plaintiffs that the peculiar arrangement covered by that claim gets rid of the defect in the Burr machine, of the unsteadiness of the core in the manufacturing of pipe of the ordinary size, and also gets rid of the defect in the Hanson machine, because it dispenses with the bridge; and that this arrangement has been infringed by the defendants. The arrangement enables the plaintiffs to use a strong core or core-holder, and to fix it firmly at the cross-head, and, by the aperture in the ram and the packing, to preserve its centrality in relation to the die; by reason of which they have succeeded in making perfect pipe. This is, in substance, the new arrangement of the plaintiffs, and these are the advantages which they claim to have derived from the change, and from the improvement upon the previous machines.
Let me now call your attention to the construction of the defendants’ machine. This, also, is claimed to be an improvement on the Burr machine. It was constructed some five or six years after the plaintiffs’ improvement. It is arranged by boring the solid ram of Burr, and placing the die in the face of it, at the same time closing the bottom of Burr’s cylinder, and fixing the core firmly at the bottom, where Burr’s die was placed. The core extends through the cylinder and into the die thus fixed in the face of the ram. In the operation of the machine, the core passes through the die and into the hollow ram nearly the length of it. the pipe, of course, passing through the same aperture above.
It will be necessary for you to examine the arrangement aud construction of' these two machines, in the particulars that I have mentioned, with great care and attention, because the determination of the case will hinge mainly, if not exclusively, upon the judgment you shall form in respect to them and their operation. In other words, the case depends upon the opinion you shall form of the substantial identity or -want of identity between the two, as it respects the arrangement of the hollow* piston and the core or core-holder found in them, and the operation and effect of the same in the manufacture of pipe. If, in looking at the arrangement and combination of the two, you arrive at the conclusion that they
These questions of identity between two opposing machines are frequently exceedingly difficult, and often the most difficult questions involved in these patent cases. The question is ultimately one of fact, and the jury must examine it with a consciousness that they are to be responsible for its determination.
There are some principles of law bearing upon these questions which may shed some light upon your examination of them, and which it is proper should be stated. A change in form from the construction of an existing machine, is not a substantial change in the eye of the patent law; nor is a change in proportions. These changes require no great ingenuity, at all events they do not call for the exercise of the inventive faculties. They are simply the work of a mechanic of ordinary skill, and, therefore, are entitled to no particular consideration when we are inquiring into the question of identity between the construction of two machines. So. also, the substitution of a mechanical equivalent, as it is termed, in the construction of a machine, is not a substantial change. There are many devices in construction that can be made by a skilful mechanic, differing very much from each other in appearance, but which, in the eye of the patent law, are regarded as identical. For instance, an inventor, in the construction of his machine, desires a given power, in order to give practical operation and effect to his discovers'. One mechanic may furnish the power by means of a lever, another by means of a screw — two very different instruments —yet. so far as the use of the instruments and so far as their purpose to furnish the power is concerned, they are regarded simply as mechanical equivalents, and the use of one in one machine does not distinguish that machine, from a machine in which the other is found. So, too, a given power may be obtained by a spring or by a weight, or by a pulley — apparently very different devices. Tet, as .they are used for the same purpose, and to accomplish the same end in machinery, they are regarded as substantially identical. It is also proper to state, in this connection, that a patentee is not confined to the precise arrangement, in the construction of his machine, which he has described in his patent. This is obvious from the principles already stated. Formal changes are notning —mere mechanical changes are nothing — all these may be made outside of the description to be found in the patent; and yet the machine, after it has been thus changed in its construction. is still the machine of the patentee, be cause it contains his invention, the fruits of his mind, and embodies the discovery which he has brought into existence and put into practical operation. A familiar illustration of the principle that I am endeavoring to develop, and one bearing directly upon the issue between the parties here, will be found in the instance of the large core-holder or core described in the plaintiffs' patent. It is said, that the description in the patent is confined to a large core or core-holder. But, admitting this to be so, the change to a small one, if a small one can be used successfully, is but a change in proportions, as the larger includes the smaller one. Any person that could make a large one could make a small one, and could pack it to fit the aperture in the ram just as well as the large one, without anything more than the application of a little common sense, and ordinary skill in the working of the machine.
In addition to these instances which 1 have' given you, in which the patentee is not tied down to the precise description given in his patent, there is another suggestion I wish to make, in connection with this branch of the tease, and it is one that commends itself to the common sense of the jury. Any machine which has been constructed as an improvement upon a previous one, or as an entirely new manufacture, may be very considerably changed in its mechanical arrangement and construction, the description of it may be very much departed from in the construction, and yet it may accomplish the object and purpose for which it was designed. It may not be as perfect, in producing the result intended, but still it may, though changed and varied very much, do its work satisfactorily. It is proper also to remark, that any change or alteration which is suggested to the skilful operator from the working of the machine, and in the course of its operation — any useful change that may be the result of the practical working of the machine — is clearly a change that belongs, not to the operator, but to the original inventor of the improvement. Upon this branch of the case, and in this line of observation, I wish to guard you from falling into any error, because I am desirous that you shall comprehend accurately and clearly the principles of law that properly enter into the examination and decision of this difficult and somewhat metaphysical question. I, therefore, wish to prevent your being misled into extending these principles beyond the fair limit and scope that belong to them. What I mean to say is this — that, in order to ascertain and determine whether the change in the arrangement and construction of an existing machine is to be considered as a substantial change or not, you must ascertain and determine whether the change is the result of mechanical skill, worked out by mechanical devices — of a knowledge that belongs to that department of labor — or whether the change is the result of mind, of genius, of invention, in which you discover something more than mere mechanical skill and ingenuity. A change in the arrangement and construction
It will be seen, from these observations, that a difference in the mechanical arrangement and construction of the two machines is not necessarily a test by which to determine that the two are not identical. They may be, apparently, very different externally, and still embrace the same substantial identity in principle or mode of operation. . So, on the other hand, the converse of the proposition is equally true. The two may, apparently, be very similar externally, and still, in principle and mode of operation, be very different. I do not know any better mode of examining a question of this kind, than to inquire whether the mechanical arrangement and construction of the two embrace the same set of ideas, the same leading features or ideas, which, in practical operation, produce the useful result. In other words, whether the arrangement and combination of the parts of machinery found iu each are substantially the same, and operate in substantially the same way in producing the result. Heuce, the real question in this case, as it respects the identity of the two machines, looks simply to their mechanical arrangement and construction, as to whether or not the defendants’ incorporates, in its strúeture and operation, the spirit and substance of the plaintiffs’ improvement — that is, uses the arrangement and mechanism of the plaintiffs’ to perform the same functions or produce the same effect in the same way, or substantially the same way.
I will read to you two passages upon this branch of the case, which embody very fully and clearly the views that I desire to impress upon you, and which, being in the words of another, (Chief Justice Tindal, of the common pleas,) may, perhaps, take hold of your minds more strongly, from the variety of the illustration, than anything that I have said or could say. Iu Walton v. Potter, Webst. Pat Cas. 590, Curt. Pat. § 255, note 1, Chief Justice Tindal remarked: “Now, there can be no doubt whatever, that although one man has obtained a patent for a given object, there are many modes still open for other men of ingenuity to obtain a patent for the same object; there may be many roads leading to one place; and, if a man has, by dint of his own genius and discovery, after a patent has been obtained, been able to give the public, without reference to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose. 'But he has no right whatever to take, if I may so say, a leaf out of his neighbor’s book, for he must be contented to rest upon his own skill and labor for the discovery, and he must not avail himself of that which had before been granted exclusively to another; and, therefore, the question again comes around to this — whether you are are of opinion that the subject-matter of this second patent is perfectly distinct from the former, or whether it is virtually bottomed upon the former, varying only in circumstances which are not material to the principle and substance of the invention.” I read another passage from the same case. Webst. Pat. Cas. 586, Curt. Pat. § 202, note 1: “Where a party has obtained a patent for a new invention, or a discovery he has made by his own ingenuity, it is not in the power of any other person, simply by varying in form or in immaterial circumstances, the nature or subject-matter of that discovery, to obtain either a patent for it himself, or to use it without the leave of the patentee, because that would be, in effect and in substance, an invasion of the right; and, therefore, what you have to look at upon the present occasion, is not simply whether, in form or in circumstances, that may be more or less immaterial, that which has been done by the defendants varies from the specification of the plaintiff’s patent, but to see whether, in reality, in substance and in effect, the defendants have availed themselves of the plaintiff’s invention in order to make that fabric, or to make that article which they have sold in the way of their trade; whether, in order to make that, they have availed themselves of the invention of the plaintiff.”
There is one other observation that I desire to make, and that is a practical one, which bears more directly upon the real point in issue between these parties than perhaps any of the general observations to which I have called your attention. You have seen that, after all, the case comes down to this naked question, as it respects this branch of it, and that is, whether or not the defendants’ machine embraces, within its arrangement, the combination of the hollow ram and core or core-holder, patented-to the plaintiffs. I am bound to say that I do not think the question is simply whether or not the defendants use the hollow ram in combination with the core; because I think that the combination of the hollow ram and the core or core-holder alone and in the abstract, is not the invention or improvement of the plaintiffs. Cylinders, sliding upon rods, had previously existed in mechanical constructions and in practical use, which is all that is found in the combination of the hollow ram and the core or core-holder upon which the hollow ram slides. That aloDe, and in the abstract, is not the invention of the plaintiffs, and. although the hollow ram and the core in combination may be found in
The remarks which I have made to you thus far apply simply to the question of the identity of the mechanical arrangement and construction of the two opposing machines. There is another question involved in the case, which bears upon this, and to which it is necessary to call your attention. The defendants contend that, admitting there is an apparent substantial identity in the arrangement and construction of the two machines, and in their principle of operation, yet, in point of fact, the practical operation and effect of the two upon the mass of lead, in forming the pipe, are essentially different, and that such effect in the defendants’ is highly beneficial in the operation of the machine. In other words, that because the defendants’ forms the pipe at the point of pressure, at the face of the ram, the operation and effect of the power thus used upon the mass of lead are new. In this view of the ease, and in respect to this branch of it. the law looks more to the result of the mechanical arrangement than to the arrangement itself. The new and different effect in the operation of the machine reflects back upon the mechanical arrangement and construction. and characterizes the change, and may authorize an inference of a substantial change, which the arrangement, disconnected from the new and different effect, would not. Without connecting the new effect with the change, the change might be only formal and unsubstantial. The case of the improvement in the mould-board of the east-iron plough referred to by some of the learned counsel, illustrates this principle. It was there held, that a change in the shape of the mould-board, though apparently formal and one of proportion, and of itself amounting to nothing, ■became a substantial change by producing, a new and different effect, in its operation, from that which was produced in the previous plough. It must be borne in mind, however, that the new effect, which is to give such materiality and importance to the ap-. ■parently formal change, must not be looked. for in the simple production of a larger quantity of pipe in a given time, or in the reduced amount of power required to operate the machine. All this may depend upon other considerations, as upon superior mechanical skill in the construction and arrange-, ment of the machinery. But the new euect to which I am now calling your attention must be different in kind. The operation and effect upon the lead in the defendants’ machine must be new and different from the operation and effect upon the lead in the plaintiffs’. And the capability of the de-. fendants’ machine to make a greater quantity of pipe in a given time, or to use a reduced amount of power, must be the result of the new and different operation and effect of the arrangement upon the mass of lead. This principle, which has been brought into the defense in this case, is, in the aspect in which it is presented, a very important one. I am desirous, therefore, that you should thoroughly comprehend it, and also the qualifications which belong to it, and which should be kept in mind in applying it
It is well known that new machines which have been devised for the purpose of carrying into practical effect an improvement or invention, oftentimes exhibit, when first constructed, and until tested by practical use, great imperfections in their results. It requires time and experience, and the observation derived from the practical working of the machine, to perfect it. Hence, the mere fact that a machine constructed and arranged, apparently or externally, like a previous one, produces a result more beneficial, is not always a safe test to determine that the two are substantially different. The result may be one derived from experience in the use of the previous machine. The new result, in the present case, must be a result derived from a different mechanical operation and effect upon the mass of lead in the cylinder, and not from the same operation and effect. This is a question of fact, and you will readily, from the time that has been consumed upon this branch of the case, call to mind the evidence bearing upon it — first, the examination of the experts on both sides,, as regards the difference in the operation and effect of the two machines upon the mass of lead, in producing the pipe — also, the various experiments, many of them exhibited in your presence, others made elsewhere and detailed by the experts, tending, on the one side, to make out tnis new and different effect upon the mass of lead, in manufacturing pipe, and, on the other side, to discredit and disprove it. The question is thus raised, up
The infringement claimed on the part of the plaintiffs took place between September, 1847, and April, 1848. It is claimed that they are entitled to the damages which they have actually sustained, - together with interest upon the same from that time down to the present. My own view of this question is, that the jury, in estimating the damages, may take into account the interest, if they choose, and give it by way of damages. They may take into account in estimating the damages, the fact that the party has been deprived of them from the time the infringement took place down to the present time.