Goodyear Dental Vulcanite Company v. Davis

• Decision Date: 01 October 1880
• Parties: GOODYEAR DENTAL VULCANITE COMPANY v. DAVIS
• Court: U.S. Supreme Court

102 U.S. 222

102 U.S. 222

26 L.Ed. 149

GOODYEAR DENTAL VULCANITE COMPANY v. DAVIS.

October Term, 1880

APPEAL from the Circuit Court of the United States for the District of Masschusetts.

This was a bill in equity brought by the Goodyear Dental Vulcanite Company against Charles G. Davis, alleging his infringement of reissued letters-patent No. 1904, dated March 21, 1865, and granted to the complainant, as assignee of John A. Cummings, for an improvement in artificial gums and plates.

The bill was, on a final hearing upon the pleadings and proofs, dismissed. The complainant appealed here.

The facts are fully stated in the opinion of the court.

The case was argued by Mr. William Henry Clifford and Mr. Benjamin F. Lee for the appellant, and by Mr. Henry Baldwin, Jr., and Mr. William D. Shipman, for the appellee.

Mr. JUSTICE STRONG delivered the opinion of the court.

The invention described in the Cummings reissue patent is claimed in the words following: 'The plate of hard rubber or vulcanite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described.' The claim cannot be understood without reference to the details given in the specification. In that it is said to consist 'in forming the plate to which the teeth, or teeth and gums, are attached, of hard rubber, or 'vulcanite,' so called,—an elastic material possessing and retaining in use sufficient rigidity for the purpose of mastication, and, at the same time, being pliable enough to yield a little to the motions of the mouth.' The mode of 'forming' the plate is then minutely described. The earlier steps of the process need not be particularly noticed. They relate to the formation of a plaster mould, fitted to the corresponding part of the mouth, with the artificial teeth adhering in the mould in exactly the relative position they are to occupy in the hardrubber plate. The specification then proceeds as follows: 'The teeth are provided with pins projecting therefrom in such a manner that the rubber which is to constitute the plate will close around them, and by means of them hold or secure the teeth permanently in position. The plaster mould, with the teeth adhering therein, as just described, is now filled with soft rubber, a little at a time, pressed in with the finger, or in any other convenient way; and care is to be taken that the rubber is made to completely fit into the cavities and around the protuberances, including the pins, and is filled in to the thickness or depth desired to form the plate.' 'I then' (says the patentee) 'lock the rubber plate in position by shutting the other half of the plaster mould over it, to insure its retaining its exact form while warming, and then heat or bake it in an oven, or in any other suitable way. The soft rubber or gum so inserted into the mould is to be compounded with sulphur, rubber, &c., in the manner prescribed in the patent of Nelson Goodyear, dated May 6, A.D. 1851, for making hard rubber, and is to be subjected to sufficient heat to vulcanize or harden it, substantially as directed in that patent. It is also to be colored in imitation of the natural gums, by mixing it with vermillion, or other suitable coloring matter, while in the soft STATE. AFTER the plate Has been heated sufficiently to harden it, or convert it into hard rubber, or 'vulcanite,' so called, the mould is removed, and the plate is polished ready for use.'

Such is the description, both of the material of which the plate is formed and of the method or process by which it is made.

We had occasion in Smith v. Goodyear Dental Vulcanite Company et al. (93 U.S. 486) to construe this patent, and determine what the invention claimed and patented really was. We held it to be 'a set of artifieial teeth, as a new article of manufacture, consisting of a plate of hard rubber with teeth, or teeth and gums secured thereto in the manner described in the specification, by embedding the teeth and pins in a vulcanizable compound, so that it shall surround them, while it is in a soft state, before it is vulcanized, and so that, when it has been vulcanized, the teeth are firmly and inseparably secured in the vulcanite, and a tight joint is effected between them, the whole constituting but one piece.' We said, 'The invention is a product or manufacture made in a defined manner. It is not a product alone, separated from the process by which it is created.' The process detailed in the description antecedent to the claim, and referred to thereby, is as much a part of the invention as are the materials of which the plate or product is composed. Both are necessary elements of it. Hence, to constitute an infringement of the patent, both the material of which the dental plate is made, or its equivalent, and the process of constructing the plate, or a process equivalent thereto, must be employed. It is, therefore, essential to a correct determination of this case to consider what was the material made by the patentee an element of his invention, and what can be considered an equivalent therefor.

It is impossible to read the specification of the original patent, or that of the reissue, upon which this suit is founded, without the conviction that the patentee had in mind primarily a single substance for his material, and that one of a peculiar character, itself a compound discovered and patented not long before. Thus, in the original, which was loosely drawn, the invention was said to consist 'in forming the plate and gums, to which the teeth are attached, of rubber, or some other elastic material so indurated as to be rigid enough for the purpose of mastication, and pliable enough to yield a little to the motions of the mouth, and in one piece, the teeth being embedded in the elastic material while the said material is in a soft condition, and then baked, with the gums and plate, so that the teeth, gums, and plate will all be connected, forming, as it were, one piece.' And again, 'the plate and gums are formed of one piece, and of rubber, or of rubber and the compounds commonly employed therewith, or of gutta-percha, or, in fact, of any elastic substance which can be reduced to a soft condition, and then vulcanized, or hardened sufficiently to answer the purpose. The rubber or other material used is first moulded to fit the shape of the mouth, and the gums formed, and while soft and pliable the teeth are embedded in the gums. . . . The teeth, gums, and plate, being thus connected, are then baked until the elastic material becomes suffieiently vulcanized, when the process is completed.' The claim also expressed the same thought. It was 'forming the plate and gums in which the teeth are inserted, in one piece, of hard rubber or vulcanite, i.e. an elastic material which can be hardened sufficiently for mastication, and retain a portion of its elasticity, so as to yield a little to the motion of the mouth, as herein set forth, and for the purposes specified.' Though the specification spoke of rubber, or of...