29 F. Cas. 407 | U.S. Circuit Court for the District of Southern New York | 1863
(charging jury). It is the duty of the court to submit to you the rules of law' which you are to apply to this case. This I will do very briefly.
The first legal question which is presented to us, is that which relates to the construction of the patent itself. What does it purport to secure to the plaintiff — a process, or a machine?
Por the purposes of this ease, I charge you, pro forma, that the patent purports to grant to the plaintiff the exclusive right to the process of hardening steel wire, and thin strips of thin steel, in long sections under tension, by means of the simple mechanism or machine, a model of which the plaintiff has presented to you, and the operation of which the witnesses have explained. This is denominated, by the counsel for the plaintiff, a “mechanical process,” and it covers the peculiar method which the mechanism carries out, and any mechanism which is equivalent to that described in the patent, and illustrated by the model which works this process, is an infringement of the plaintiff’s rights, provided he was the original and first inventor. When I speak of an equivalent mechanism, I mean one substantially like the plaintiff’s, operating in substantially the same way.
The plaintiff insists that he was the original and first inventor of this process, and his patent is prima facie evidence that he was the original and first inventor. By prima facie evidence, I mean evidence which is sufficient to make out the case and sustain the patent, providing there was no countervailing evidence.
But the defendants deny that the plaintiff was the original and first inventor, and have offered evidence to disprove his claim.
This brings us to a series of important facts upon which the jury must pass, in coming to a verdict. I will call your attention to these facts, in the order in which you may -find it convenient to consider them.
First. The defendants insist that Ely used this same process, which the plaintiff claims is covered by his patent, long before the date of the plaintiff’s invention, and that Ely worked this process by substantially the same mechanism, operating substantially in the same way as that of the plaintiff. Here the burden of proof is on the defendants.
Now, if the jury are satisfied that Ely did work this process substantially as he has described on this trial, at the time he states, then the defendants are 3ntitled to a verdict
If the jury do not find that the defendants are entitled io a verdict, on the ground that Ely anticipated the invention of the plaintiff, when the evidence is tried by the rules I have laid down, then they will inquire further—
Second. As to the process stated by Gibbs. You will apply the same rules to the evidence on this point that I have submitted in connection with Ely’s alleged invention, and if you find that, in accordance with these rules. Gibbs anticipated the plaintiff’s invention, then the defendants will be entitled to a verdict. and you need inquire no further.
If you are satisfied that Gibbs did not anticipate the invention of the plaintiff, then you will inquire—
Third. Whether Quilet did so. The same rules of law must be applied to the evidence touching Quilet’s method and machine as those which I have stated you are to apply to those of Ely and Gibbs. If you find that Quilet has anticipated the invention of the plaintiff, then the defendants are entitled to a verdict. But if you do not so find, then you will inquire—
Fourth. Whether Mr. Clark, of Northampton. worked this process, claimed by the plaintiff, at the date he names, by hardening steel wire successfully in the tinning machine; and if he did, you will find your verdict for the defendants. If you find this point also against the defendants, then you will inquire—
Fifth. Whether Washburn’s method and machine anticipated the plaintiff’s invention; if it did. when tried by the rules already given, then the defendants are entitled to a verdict,
If you shall find that neither Ely, nor Gibbs, nor Quilet, nor Clark, nor Washburn, anticipated this invention, and worked this process as here described, before the plaintiff did, then the plaintiff is entitled to a verdict, and to such damages as he has proved to you he has sustained, and no more.
In passing upon the several processes and machines of Ely, Gibbs. Quilet, Clark, and Washburn, the jury should agree upon each separately, and in order to find a verdict for the defendants, on any one of them, they must agree on that one.
This is an important case to both parties, and is to be determined by the facts as they appear in proof and address themselves to the understanding of the jury. They will render such a verdict as, in their judgment, the evidence calls for, without reference to the consequences to either party.