Coupe v. Royer

• Decision Date: 07 January 1895
• Docket Number: No. 53,53
• Citation: 15 S.Ct. 199,155 U.S. 565,39 L.Ed. 263
• Parties: COUPE et al. v. ROYER et al
• Court: U.S. Supreme Court

155 U.S. 565

15 S.Ct. 199

39 L.Ed. 263

COUPE et al.

v ROYER et al.

No. 53.

January 7, 1895.

This was an action of trespass on the case, brought in October, 1889, in the circuit court of the United States for the district of Massachusetts, by Herman and Louis Royer against William Coupe and Edwin A. Burgess, for an alleged infringement of letters patent of the United States, No. 77,920, dated May 12, 1868, for an 'improved machine for treating hides.'

The patent expired on May 12, 1885, and this suit was entered July 14, 1885. The trial resulted, on November 10, 1886, in a verdict for the plaintiffs in the sum of $18,000, and judgment was entered on November 26, 1889, for the sum of $21,288 damages and $164.25 costs. 29 Fed. 358.

The defendants below sued out a writ of error to this court. Reversed.

Wilmarth H. Thurston and Edmund Wetmore, for plaintiffs in error.

M. A. Wheaton, for defendants in error.

Mr. Justice SHIRAS delivered the opinion of the court.

The plaintiffs describe their invention as a new and improved machine for converting raw hides into leather, of that class which is used for belting, lacings, and other purposes, where it is necessary to preserve the native strength and toughness without destroying or impairing the natural fibres or grain of the leather.

The machine is composed of a vertical slotted shaft, provided with set screws, which said shaft is capable of being revolved, by suitable mechanism, first in one direction and then in the other; a circularly-arranged set of pins or rollers set in rings or fixed heads, the same constituting a vertical cylindrical cage or crib surrounding the vertical slotted shaft; and a weight adapted to be inserted within the crib or cage at its upper end, said weight being provided with a central aperture for the passage of the upper end of the vertical slotted shaft.

The specification, claims, and drawings appear at full length in the report of the case of Royer v. Belting Co., 135 U. S. 319, 10 Sup. Ct. 833, and need not be reproduced here.

The operation of the machine is described in the specification as follows: 'The end of the raw hide to be softened is inserted in the slot of the vertical shaft, and clamped therein by the set screws. The shaft is then revolved, and the hide is wound tightly upon said shaft, forming a roll or coil thereon, and being held in this form by the surrounding cylindrical cage. After the hide has been thus wound upon the shaft, the shaft is revolved in the opposite direction, which has the effect to rewind or recoil the hide upon the shaft in a reverse direction, this reverse winding commencing at the inner end of the coil, the outer circumference of the coil being pressed against the pins or rollers of the surrounding cage. This winding and rewinding of the hide upon the shaft is repeated as many times as may be desired.'

The function of the weight is twice described in the specification, as follows: 'An iron weight or press is employed for crowding the coil of hide down after it has received the forward and back action around the shaft'; and 'an iron weight, having an opening through its center for the vertical shaft, and vertical grooves in it to prevent its turning, is placed upon the inside of the pins or rollers, and by pressing upon this weight, the hide is compressed edgewise, after the forward and backward stretching or pressing is performed lengthwise.'

One of the matters in dispute in the case is whether the weight is to operate during the winding and rewinding of the hides, or after the revolving of the shaft has ceased. The language of the specification just cited does not seem to describe the operation of the weight as contemporaneous with the winding process, but as successive. Herman Royer, one of the patentees, testified that the weight is to operate while the cylindri- cal shaft is revolving, and that its use is to regulate or confine the space in which the hides have to move forward and backward.

We are willing to assume, in our disposition of this case, the correctness of the plaintiffs' contention in this particular; and we shall also accept as indisputable the testimony of Herman Royer, the 'the machine without the pressure would not effect such a motion and heat as are necessary to loosen the fibers of the hide. It would not work any effect. The machine would be a failure without the weight.'

It was further made to appear that, as early as 1863, Louis Royer, one of the patentees, had produced a machine for the purpose of treating hides, the characteristics of which were thus described in the testimony of Herman Royer: 'The machine had a horizontal crib. It had a shaft central through its axis. It had bars circularly arranged around that central shaft. It had the same kind of motion to the right or left as the patented machine. It had everything that is in the present machine except the pressure weight.' And on cross-examination the following questions and answers appear: 'Now, when you and your brother came to the joint business of improving the machine, you turned it from a horizontal position to a vertical position, did you not?' Answer: 'Yes, sir.' 'And in that connection you used the weight so that the weight would press down by gravity upon the hides inside the crib; is that correct?' Answer: 'The weight and pressure applied to the weight; yes, sir.'

The plaintiffs also put in evidence a model of the defendants' machine, and testimony tending to show that defendants' machine consists of a horizontal shaft around which, when in operation, the hides are would and unwound, of a horizontal crib or cage inclosing the shaft, and of two parts, termed 'false heads,' connected together and adapted to be simultaneously moved towards or from each other, by means of right and left hand screws arranged one at each side of the crib, and engaging with traversing nuts connected with the false heads, and with two gear wheels which intermesh with a third gear wheel mounted so as to turn loosely on the center shaft, said third gear wheel being provided with a crank; so that, by simply turning this crank gear wheel in one direction or the other, the two false heads will be moved from or towards each other, and so as to diminish or increase the space for holding the coil of hides during the operation of the machine.

The defendants gave evidence tending to show that a machine made in conformity with plaintiffs' specifications and claims would not operate as a successful machine, to which the plaintiffs replied by evidence tending to show that a machine made after the description contained in the patent would and did operate successfully.

Upon the foregoing state of the evidence, the defendants requested the court to charge the jury as follows:

'That the plaintiffs' patent and the claims thereof on its face should be construed as requiring the presence, in the combinations required therein, of a vertical shaft and a correspondingly arranged vertical crib, and that as it appeared from the evidence, and was undisputed, that the machines complained of as used by the defendants were provided with horizontal shafts and horizontal cribs, the jury should return a verdict for the defendants.

'That if they should find as a fact that the substitution by the defendants of a horizontal shaft and a surrounding horizontal crib, in place of a vertical shaft and a surrounding vertical crib, and the substitution of two end pressure plates, arranged to approach towards or recede from each other by a positive movement, under the control of the operator, in place of the single pressure weight described and shown in the plaintiffs' patent, produced an effect different in kind from the effect produced when a vertical crib and pressure weight is employed in the operation of fulling hides, then it would be their duty to find a verdict for the defendants.

'That a mechanical equivalent for a device shown in letters patent is a thing which performs the same result in substantially the same way, or by substantially the same mode of operation as the device described in the patent, and that if the jury should find from the evidence in the cause that under this rule the pressure plates controlled as to their movements and as to the degree of pressure to be exerted by them, by right and left hand screws, at the pleasure of the operator, were not the equivalents, in a horizontal hidefulling machine, of the pressure weight in a vertical machine, then the jury ought to find a verdict that the defendants do not infringe the second claim of the plaintiffs' patent.'

These requests the court answered as follows:

'You will come, however, gentlemen, to another and further consideration, which you must determine upon the testimony which is laid before you. In order to explain that, perhaps, I ought to preface by saying what you are to take this patent to mean,—what it is, in brief terms, that it covers. In order that I may bring my observations within the technical requirements, what is the interpretation which you are to put upon this patent? This, gentlemen, is a patent, and the invention of the plaintiffs is an invention which is to be described as follows: It consists of a shaft which contains or has attached to it means by which hides can be fastened to its periphery. Around that shaft, and leaving that shaft in the center, are arranged a number of bars which shall contain the roll of hides after it has been wrapped around the central shaft. In the third place there is a plunger or false head or contracting device, whatsoever you may call it,—a piece of metal or of wood,—which so moves as to reduct the space within which the hides are contained for the purpose of squeezing them sidewise. That is all there is in the machine, and any machine which contains these elements is an infringement of the plaintiffs' device, and is a violation of law. I need not say to you that the defendants' machine is such a machine. It contains a...