Erastus Corning and John Winslow, Plaintiffs In Error v. Peter Burden

• Decision Date: 01 December 1853
• Parties: ERASTUS CORNING AND JOHN F. WINSLOW, PLAINTIFFS IN ERROR, v. PETER A. BURDEN
• Court: U.S. Supreme Court

56 U.S. 252 15 How. 252 14 L.Ed. 683 ERASTUS CORNING AND JOHN F. WINSLOW, PLAINTIFFS IN ERROR, v. PETER A. BURDEN. December Term, 1853

THIS case was brought up, by writ of error, from the Circuit Court of the United States for the Northern District of New York.

Peter A. Burden, as assignee of Henry Burden, brought his action against Corning and Winslow, for a violation of a patent granted to Henry, as the original and first inventor and discoverer of a new and useful machine for rolling puddle balls or other masses of iron, in the manufacture of iron.

What took place at the trial is set forth in the opinion of the court. Under the instructions of the Circuit Court, the jury

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found a verdict for the plaintiffs, with one hundred dollars damages; upon which the defendants brought the case up to this court by a writ of error.

It was argued by Mr. Seymour and Mr. Keller, for the plaintiffs in error, and by Mr. Fitzgerald and Mr. Stevens, for the defendants in error.

Each one of the four counsel filed a separate brief. The points presented on the part of the plaintiffs in error are taken from the brief of Mr. Seymour, and those on the part of the defendant in error from the brief of Mr. Stevens.

Points and Authorities submitted on the part of the Plaintiffs in Error.

First exception to the charge.—The court erred in charging the jury that 'the letters-patent which have been given in evidence by the plaintiff are for a new process, mode, or method of converting puddlers' balls into blooms by continuous pressure and rotation of the balls between converging surfaces, thereby dispensing with the hammer, alligator jaws, and rollers, accompanied by manual labor, previously in use to accomplish the same purpose; and the said letters-patent secure to the patentee the exclusive right to construct, use, and vend any machine adapted to accomplish the objects of his invention, as above specified, by the process, mode, or method above-mentioned.'

I. The court erred in charging the jury that Burden's patent was for a new process, mode, or method.

A process or mode may be patented. Curtis, p. 65, 66, 67, 68, 69, 70, 71, 73, and cases there cited, from § 77 to § 83.

1. Burden did not patent a process, but a machine.

What he designed to cover by his patent is to be gathered from the patent itself, the specification, and its summing up. Webster on Subject-Matter, p. 18, and note Z; Davoll v. Brown, 1 Woodbury & Minot, 59; Russell v. Crowley et al. 1 Cromp. Meeson & Roscoe, 864; Moody v. Fiske, 2 Mason, 112; Rex v. Cutler, 1 Starkie's Rep. 283; Leroy v. Tatham, 14 Howard, 156, 171; Wyeth v. Stone, 1 Story's Rep. 285; Gray v. James, Peters's C. C. R. 394, 400; Mr. Justice Nelson's Opinion, in Appendix A, annexed.

2. Burden's patent claims that he has invented a new and useful machine, &c., not a process.

3. The specification, which purports to be a part of the letters-patent, states the invention to consist in a 'machine,' not in a process.

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4. The summing up of the specification, or the claim, is substantially for a 'machine.'

And he specifies three modes of applying the principle of his invention; thus complying with the requisition of the sixth section of the act of 1836, in reference to all patents for machines, and for machines only.

The preparing of puddlers' balls is not claimed as an invention, nor could it be, for it is as old as the art of making iron by the process of puddling. See Encyclopaedia Americana, Vol. 7, Art. Iron, p. 72. The preparing puddlers' balls by pressure is not claimed, for that, too, is old. Ib. But the claim is for the invention of the new mechanism for preparing puddlers' balls.

II. An invention, such as Burden's is described to be in the patent and specification, is, upon the authority of elementary works, and the decisions of our courts, a machine, and not a process.

The distinction between a patent for a machine and a patent for a process is well known.

1. A patent for a machine is defined by Curtis, § 93, as follows: 'If the subject of the invention or discovery is not a mere function, but a function embodied in some particular mechanism, whose mode of operation and general structure are pointed out, and which is designed to accomplish a particular purpose, function, or effect, it will be a machine in the sense of the patent law.'

If the specification describes 'not a mere function, but a machine of a particular structure, whose modes of operation are pointed out to accomplish a particular purpose or end, the patent is for a machine, and not for a principle or function detached from machinery.' Blanchard v. Sprague, 3 Sumner, 540.

A method or process may be the subject of a patent. See Phillips, pp. 93, 94; Curtis, § 80, 81.

Among the cases cited (see Curtis, § 79) of patents for a method, or, as the writer expresses it, 'for the practical application of a known thing to produce a particular effect,' are

Hartley's invention to protect buildings from fire by the application of plates of metal. See also Webster's Patent Cases, pp. 54, 55, 56; and note, pp. 55 and 56.

Forsyth's patent for the application of detonating powder, which he did not invent, to the discharge of artillery, mines, &c.

In this case the patentee succeeded in an action against the party using a lock of different construction from any shown in the drawing annexed to his specification, and, as Curtis says, 'thus established his right to the exclusive use and application of detonating powder as priming, whatever the construction of the lock by which it was discharged.' Webster's Patent Cases, pp. 95, 97, note.

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Hall's patent for the application of the flame of gas to singe off the superfluous fibres of lace, and other goods, is another of this class. Web. Pat. Cases, p. 99.

The plaintiff had a verdict founded on his sole right to use gas-flame for the clearing of fibres from lace. Curtis, p. 67, n. 1; Web. Pat. Cases, pp. 100, 103; Neilson v. Harford, Web. Pat. Cases, 191, &c.; Neilson v. Thompson, Web. Pat. Cases, 275; The Househill Co. v. Neilson, Web. Pat. Cases, 673; Boulton v. Bull, 2 H. Blackstone, 492; Clegg's Patent, Web. Pat. Cases, 103; Morse's Patents; McClurg v. Kingsland, 1 Howard, 202; Russell v. Cowley, Web. Pat. Cases, 459.

2. The preparing a puddler's ball is reducing and compacting it by pressure into the form of a bloom. See Encyclopaedia Americana, vol. 7, article Iron, p. 72; Nicholson's Op. Mechanic, pp. 334-5; Ure's Dic. of Arts and Manufactures, p. 703.

If Burden's claim, then, is for the reducing and compacting the ball by pressure into the form of a bloom, it is a claim for a process long before known in the manufacture of iron, and would therefore be void for want of novelty.

To avoid this difficulty, the statement of the claim goes on to say that he claims the preparing these balls by causing them to pass between curved or plane surfaces, in the manner described in his drawings and in the specification of the several parts of the machine.

If the words 'the particular method of the application' were correctly held in Wyeth v. Stone, before cited, to mean the particular apparatus and machinery described in the specification, is not the claim for preparing puddlers' balls, by causing them to pass through a certain machine, as clearly a claim for the invention of the machine?

Wyeth claimed not only the art or principle of cutting ice of a uniform size, but 'the particular method of the application of the principle;' and this last part of the claim was held to be the only valid part of it, and to be a claim of the particular apparatus and machinery, described in the specification to effect the purpose of cutting ice.

So Burden's patent, if it be sustained at all, must be held to be a patent for the particular apparatus and machinery, described in the specification to effect the 'preparing the puddlers' balls.' See also the case of Blanchard v. Sprague, 3 Sumner, 535.

It was objected, on the trial in this last case, 'that the plaintiff's specification was defective; that he claimed the functions of the machine, and not the machine itself.'

Mr. Justice Story, at p. 540, says: 'Looking at the present specification, and construing all its terms together, I am clearly

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of opinion that it is not a patent claimed for a function, but it is claimed for the machine specially described in the specification; that it is not for a mere function, but for a function as embodied in a particular machine, whose mode of operation and general structure are pointed out.'

If to claim a 'method' or mode of operation in the abstract, explained in the description of certain machinery, be a claim for a machine, as was adjudged in Blanchard v. Sprague, is not the claim of preparing puddlers' balls, by the operation of certain machinery, much more a claim of a machine? In other words, is the claim of a particular result before known, from the operation of a machine claimed to be new, any thing else than a claim for the peculiar construction of the machine itself, by which that result is effected?

3. Again, the result claimed by Burden is to produce a bloom from a puddle ball by pressure, welding together the particles of iron, and expressing in part the impurities, and partly shaping the mass for the after operation of converting it into bars, also by pressure.

It cannot be pretended that Burden invented this, or any part of it. This was all done before his invention, under the hammer and the alligator jaws. But it may be said that he invented an improvement in this process. This cannot be; for he only compresses the mass to cement the particles, express the impurities, and give shape; all this was done before by the hammer and the jaws, and, in the opinion of many, better done than he does it.

4. Again, it may be said that he made an improvement in the operation by making it continuous. This brings the matter to a true...