Gould v. Rees

• Citation: 21 L.Ed. 39,82 U.S. 187,15 Wall. 187
• Parties: GOULD v. REES
• Decision Date: 01 December 1872
• Court: United States Supreme Court

82 U.S. 187

21 L.Ed. 39

15 Wall. 187

GOULD v. REES.

December Term, 1872

ERROR to the Circuit Court for the Western District of Pennsylvania.

Rees used Gould in an action at law for an alleged infringement of a patent for improvement in steam engines, dated January 24th, 1860.

The claims of the patent were as follows:

'Having thus described the nature, construction, and operation of my improvement, what I claim as my invention and desire to secure by letters-patent of the United States is:

'First. The flanges i on the reversing crank or arm b, and the projection t on the cam-rod e, when used for the purpose of guiding the hooks 1 and 2 into their proper position on the wrists 3 and 4 of the reversing crank or arm b, as herein described and set forth.

'Second. The use of the link m, or its equivalent, when used in connection with the cam-rods f and g, reversing crank or arm b, and the crank or arm l, as herein described and for the purpose set forth.

'Third. The use of the connecting rods o and g, or their equivalents, when used in combination with the link m, cam-rod e, and levers p and r, as herein described and for the purpose set forth.'

Numerous exceptions were taken by the defendant to certain rulings of the court, and also to certain instructions to the jury, but this court passed mainly upon the principle involved in the second and third specifications of error, which were in these words:

'2d. The court below erred in instructing the jury in reply to the fourth point of law presented by the counsel of the defendants below, which point was in the following words:

"That when a combination of mechanical devices is claimed, it is not infringed by the use of a combination differing substantially in any of its parts, and that the omission of one essential feature or element of the combination as claimed avoids the patent.'

'The charge of the court below to said fourth point being as follows:

"If the jury believe that the mechanical devices used by Rees, although differing in mechanical form or construction, are equivalent to those patented and used in the combination patented to produce the same result, it is an infringement of the patent. And this, although there is an omission of one of the features of the combination. It is the ordinary device resorted to by those who design to infringe, and who have been unsuccessful in their experiments to produce a desired result. The law secures to the patentee the right to the use of his machine, provided it consists of a new combination, although composed of parts well known and in common use."

'3d. The court erred in instructing the jury in reply to the sixth point of law presented to him by the defendants' counsel, which point was in the following words:

"That the first claim of the plaintiff's patent, in the following words, to wit: 'I claim the flanges i, on the reversing crank or arm b, and the projection t, on the cam-rod e, when used for the purpose of guiding the hooks 1 and 2 into their proper position on the wrists 3 and 4 of the reversing crank or arm b, as described and set forth,' is for a combination of the arm b, having flanges i, with the cam-rod e having a projection t, and is not infringed by the use of either of the elements of the combination without the other, nor by the use of the arm b if without the flanges i; or of the cam-rod e without the projection t.'

'The charge of the court to said sixth point being as follows:

"The use of the combination is an infringement, and the omission of one of the elements and the substitution of another mechanical device to perform the same function will not avoid the infringement. All the elements of the machine may be old, and the invention consists in a new combination of those elements whereby a new and useful result is obtained. Most of the modern inventions are of this latter kind, and many of them are of great utility and value."

Verdict having gone under these rulings for the plaintiff, the defendant brought the case here.

Mr. G. H. Christy, for the plaintiff in error. No counsel appeared on the other side.

Mr. Justice CLIFFORD delivered the opinion of the court.

Patentable inventions may consist entirely in a new combination of old ingredients whereby a new and useful result is obtained, and in such cases the description of the invention is sufficient if the ingredients are named, the mode of operation given, and the new and useful result is pointed out, so that those skilled in the art, and the public may know the nature and extent of the claim and what the parts are which co-operate to produce the described new and useful result.

Damages are claimed by the plaintiff for the alleged infringement of certain letters-patent, and he instituted for that purpose an action of trespass on the case against the defendant to recover compensation for the alleged injury.

Letters-patent were granted to the plaintiff on the twenty-fourth of January, 1860, for a new and useful improvement in steam engines, described in the specification as 'a new and useful mode of operating and handling' such machines, which consists, as the patent states, in so arranging and constructing the cranks or arms of the lifters and cam-rods of puppet-valve engines that they may be operated and handled with ease and speed, by means of levers and connecting rods, the whole being arranged and constructed in the manner described in the specification.

Very minute description of the various parts of the mechanism of the invention is given in the specification, and in order to enable others skilled in the art to make and use the invention, the patentee proceeds, with much detail, to describe its construction and operation, but in the view taken of the case by the court it will not be necessary to enter into those details in the present investigation of the controversy between these parties.

Process was issued, and being served, the defendant appeared and pleaded as follows: (1.) That he was not guilty. (2.) That the plaintiff was not the original and first inventor of the improvement described in the letters-patent, and tendered an issue to the country, which was joined by the plaintiff.

Besides the two pleas pleaded, he also gave notice in writing that he would give evidence under the general issue to prove that the alleged invention was well known and generally used in steamboats navigating the Western waters long anterior to the alleged date of the plaintiff's invention. Subsequently the parties went to trial, and the jury, under the instructions given by the court, returned their verdict for the plaintiff, and the defendant excepted to certain rulings and to the instructions of the court, and sued out a writ of errr and removed the cause into ...