Ives Et Al v. Hamilton, Executor

• Decision Date: 01 October 1875
• Citation: 23 L.Ed. 494,92 U.S. 426
• Parties: IVES ET AL. v. HAMILTON, EXECUTOR
• Court: U.S. Supreme Court

92 U.S. 426

23 L.Ed. 494

IVES ET AL. v. HAMILTON, EXECUTOR.

October Term, 1875

ERROR to the Circuit Court of the United States for the Eastern District of Michigan.

The facts are stated in the opinion of the court.

Mr. Charles J. Hunt for the plaintiffs in error.

It is the duty of the court to construe the claim of a patent, and to decide as to its ambiguity; to render it certain, and to point out what it is. Emerson v. Hogg, 2 Blatchf. 1; Hogg v. Emerson, 11 How. 587; Washburn v. Gould, 3 Story, 123.

When the claim is for a result in terms, produced by a combination substantially as described, it is a claim of the described means, or rather of the particular organization and devices described, by means of which the specified result is produced. Seymour v. Osborne, 3 Fish. 555; Seymour v. Osborne, 11 Wall. 516; Burden v. Corning, 2 Fish. 474(489); Leroy v. Tatham, 14 How. 156; O'Reilly v. Morse, 15 id. 62; Corning et al. v. Burden, id. 252; Mitchell v. Tilghman, 19 Wall. 287, 391.

In the construction of a patent, the whole instrument, embracing the specification and drawings, is to be taken together; and if from this the exact nature and extent of the claim, made by the inventor, can be perceived, the court is bound to give it full effect. Parker v. Styles, 5 McL. 44; Hogg v. Emerson, supra; Union Sugar Refinery v. Mathieson, 2 Fish. 600.

The patentee cannot be allowed to prove that any part of the combination is immaterial or useless. Vance v. Campbell, 1 Black, 428; Gill v. Wells, 6 Pat. Off. Gaz. 881(885).

The combination is an entirety. If one of the ingredients be given up, the thing claimed disappears. Vance v. Campbell, supra; Gill v. Wells, supra.

If an ingredient substituted for one of the ingredients in a combination is new, or performs substantially a different function, it is no infringement. Roberts v. Herden, 2 Cliff. 504; Gill v. Wells, supra; Turrell v. Illinois Central R.R. Co., 3 Fish. 330.

The inventor of a combination, in improving old machines cannot invoke the doctrine of equivalents to suppress other improvements which are not merely colorable invasions of the first. McCormick v. Talcott, 20 How. 402, 405; Burden v. Corning, 2 Fish. supra.

Mr. H. H. Wells and Mr. John H. B. Latrobe for the defendant in error.

The true distinction under the patent law between a mere process or effect and a certain mechanical combination, or an improvement on an old machine by which a process or effect is produced, is well settled. Blanchard v. Sprague, 3 Sumn. 535; Corning et al. v. Burden, 15 How. 252; Seymour v. Osborne, 11 Wall. 516.

The patentee is only required to describe his invention with such certainty and particularity as to distinguish it from all others, and to enable one, skilled in the art of which it is a branch, to construct and use it. Teese v. Phelps, McAll. 48; Allen v. Hunter, 6 McL. 303; Judson v. Moore, 1 Fish. Pat. Cas. 544; Gray v. James, 1 Pet. C. C. 394; Brookes v. Bicknall, 3 McL. 250; Treadwell v. Parott, 5 Blatchf. C. C. 369; Singer v. Walmsley, 1 Fish. Pat. Cas. 558; Mowry v. Whitney, 14 Wall. 620.

There is no pretence whatever that Hamilton did not conform to this requirement in his specifications; and they are to be construed in the sense in which the common knowledge of persons skilled in the art would understand them. Winans v. Denmead, 15 How. 341; Klein v. Russel, 19 Wall. 433; Carver v. Braintree Manuf. Co., 2 Story, 432-440; Seymour v. Osborne, 11 Wall. 516.

To constitute an infringement, it is not necessary that the two inventions should be identical. The question is, Were the means used substantially the same? Alden v. Dewey, 1 Story, 336; Root v. Ball & Davis, 4 McL. 180; Parker v. Haworth, id. 374; Burr v. Duryea, 1 Wall. 573.

The introduction of a mechanical equivalent does not relieve from the charge of infringement. Tompkins v. Gage, 5 Blatchf. C. C. 268; Taylor v. Garretson, 9 id. 156; Conover v. Roach, 4 Fish. Pat. Cas. 12; Carter v. Baker, id. 404; Gould v. Rees, 15 Wall. 187.

One machine is the same in substance as another if the principle be the same in effect, though the form of the machine be different. Brooke v. Harmance, 1 Blatchf. C. C. 398; Parkhurst v. Kinsman, id. 497; Blanchard v. Beers, 2 id. 418.

The rule in regard to what constitutes an infringement is laid down in Curt. on Pat., sect. 32, and is quoted by this court in Burr v. Duryea, 1 Wall. 531-573.

MR. JUSTICE BRADLEY delivered the opinion of the court.

This was an action brought to recover damages for the infringement of certain letters-patent granted to Hamilton, the plaintiff below, for an improvement in sawmills. The defendants pleaded the general issue, with notice of special matter, setting up several prior inventions, amongst others that of one Isaac Straub. The plaintiff's patent was dated the fifth day of December, 1865. His improvement, as described therein, consisted of the combination of the saw with a pair of curved guides at the upper end of the saw, and a lever, connecting-rod or pitman, straight guides, pivoted cross-head, and slides or blocks and crank-pin, or their equivalents, at the opposite end, whereby the toothed edge of the saw is caused to move unequally forward and backward at its two ends while cutting. His claim is, 'giving to the saw in its downward movement a rocking or rolling motion, by means of the combination of the cross-head working in the curved guides at the upper end of the saw, the lower end of which is attached to a cross-head, working in straight guides and pivoted to the pitman below the saw, with the crank-pin, substantially as described.'

The old method of guiding a saw in its upward and downward movement was to cause the two ends of the cross-head, to which the upper end was attached, to slide in straight grooves, or guides. The lower end of the saw was guided in the same manner, and to the lower cross-head was attached by a pivot the lever, or pitman, worked by the crank of the driving-wheel. This arrangement gave the saw a straight and uniform motion, up and down, between the guide-posts of the frame in which it worked, either perpendicular or at a slight inclination, according to the position of the guide-posts.

In Hamilton's improvement the guiding grooves for the upper end of the saw are curved, with the concave part of the curve turned towards the approaching log, so that, as the saw descends the top part at first retreats before the log, and afterwards moves up towards it at the same time that the bottom part is moved back and forth in just the opposite directions by being attached to the pitman above the cross-head; the combined motions thus giving to the whole saw a kind of rocking or vibratory movement, by which the teeth take the most advantageous bite into the log, and all of them perform their proportional part of the work. The result is something like that produced by two men working a saw in a saw-pit.

The defendant is using a saw in which the guides are not curved, it is true; but they each consist of two straight lines that represent two consecutive cords of the curve in Hamilton's guides, and are arranged in other respects in the same manner as this curve; namely, having the interior angle, like the concave side of the curve, turned towards the approaching log, the effect being exactly the same. He also connects the lower end of his saw to the pitman below the...