30 F. Cas. 549 | U.S. Circuit Court for the District of Maryland | 1870
This case has been carefully and deliberately tried, after the fullest preparation, and with great ability. It involved matters altogether new to the- court, —the principles of optics and the instruments and practice of photography, — and has received at the hands of the court the most attentive consideration.
The first question has been the validity of the reissued patent of 1866. Formerly, it seems to have been held, that the reissue •was conclusive as to its own validity, except in cases of fraud and collusion; and it has been supposed that this was laid down in Stimpson v. Westchester R. Co., 4 How. [45 U. S.] 380. Whatever may be the construction given to the opinion in that case, I do not regard such doctrine to be law at this time, as the supreme court say, in the case of Battin v. Taggart, 17 How. [58 U. S.] S3, “the jury are also to- judge of the novelty of the invention, and whether the reissued patent is for the same invention as the original patent.” And as in a cause in equity, the court passes on the facts as well as on the law, therefore the original and the reissued patents are for the court to construe and reconcile, or to declare to be irreconcilable: and although the decision of the patent office is entitled to great weight, yet the reissue is but prima facie evidence, and the duty devolves on the court, as it has done in this case, to determine, whether the reissue claims more than the original specification shows the patentee to have invented.
Limited to the claim made in the original patent, the complainants would not be able to recover in the present case, because the reflector is there one of the elements of the combination claimed, and the defendant’s apparatus is without one. In the reissued patent, while the patentee retains the first claim, he adds a claim, omitting the reflector, and claiming “the arrangement and combination of the condensing lens, the negative slide or holder, and achromatic lens or lenses made and adjusted, in regard to each other for condensing the sun’s rays upon and through the negative, and focus-sing them upon prepared canvas or other suitable material for photographic purposes, substantially as described.”
Now, while this is an addition to the claim of the original patent, it is fully warranted by the description contained in the specification and the drawings connected with it; and this being so, the complainant’s ease is exactly that which is provided for by the thirteenth section of the patent act of July 4, 1836 [5 Stat. 122].
I am, by no means, sure that the complainant was, himself, aware of the rationale of his own invention, when he took out his patent in 1S57. He did what never seems to have been done before. He made a great improvement, the value of which was at once recognized by the photographic world. But whether he was able, in his original specification, to give the rationale of his invention or not, he nevertheless gave the invention itself to the public. He was the first and original inventor in the eye of the law, and was entitled to a patent; and subsequently. when he had it in his power to make a fuller explanation, and more efli-ciently protect himself, he had a right to a reissue, and to claim the combination which made the sun’s rays effective to produce the result, whether they were brought to bear directly upon the condensing lens, or were reflected by a mirror, for convenience sake, upon it. I hold the reissue, therefore, to be valid.
As I said before, in a case of this description, the court has, not only to pronounce the law, but to determine questions of fact in the capacity of a jury. It is thus that I am called upon to deal with the evidence before me, after its more careful elaboration by the respective counsel, and to state the impressions it has made on me. There is a fact connected with it, however, that I can not altogether pass without remark. Both the Philadelphia and Cincinnati alleged inventors were themselves experienced opticians, and one a photographer; and it is difficult to believe, that, if they had made an invention which is admitted by all parties, both in Europe and America, to be so valuable and important, neither would have claimed it. Nor can I well understand how, if the discovery had been made seven or eight years before the date of Woodward’s patent,it would not have become known among the photographers of the country, — of whom some seven or eight of the most experienced have testified in this case,—and not one of whom knew any thing of the invention until after the date of the Woodward patent. As already said, with an habitual leaning to give the fullest credit to parties under oath, I am obliged to determine the question of originality in favor of the complainant.
A prominent feature of the defense, that was ably urged, was that the solar microscope was the .same, in principle and mode of operation, as the solar camera; and it was insisted, that here, as well as in the solar camera, the rays that passed through the condenser were focussed at the enlarging lens. Still, in my judgment, this does not make the solar microscope the equivalent of the solar camera. The microscope, like the magic lantern, produces enlarged images of objects; but neither are competent to print the image on the screen on which the images are thrown, without development. In the microscope, this is owing, in part, to the want of that combination of the actinic and visual rays which is due to the photographic lens employed in the solar camera; and in answer to the argument, that a person wishing to employ a solar microscope for photographic purposes, on an enlarged scale, would only have to substitute a photographic lens in place of the microscopic lens, with a suitable arrangement to accommodate it and the negative.—and the only lenses used for photographic purposes being achromatic lenses,—it is to be said, that this changing of one of the elements of a combination that will not produce a desired effect, and substituting another that makes it effective, is to produce a new and patentable combination, and even if the elements are unchanged, yet if, with one arrangement they are incompetent to an end for which a different arrangement makes them compe
That the substitution and arrangement, made by the complainant, did not naturally suggest themselves to the photographers in America or Europe,—although in both countries there were attempts made in this direction, beginning with such as may have been made in Philadelphia in 1849, and by Mr. Waldaek in Belgium,—may be taken as sufficient proof, that they were not so used as to deprive the complainant of a patent for making them. The solar microscope and the photographic camera doubtless gave to the patentee the materials that he subsequently contrived and arranged in the solar camera. His merit consisted in being the first to combine the elements there taken from the two.
The last question is that of infringement. About this there can be no difficulty. It is settled by my decision sustaining the reissued patent. Whether the sun’s rays are brought to bear directly upon the condensing lens, or through the agency of a mirror, can make no difference. The result is the same, and the mode in which the sun’s rays are introduced, or made to strike upon the condenser at right angles to its plane, whether directly or by reflection, is immaterial. I sustain, therefore, the reissue, decide the question of originality in favor of the complainant, as well as the fact of infringement, and will sign a decree for a perpetual injunction.