Joseph Battin, Patentee and Samuel Battin, Assignee Plaintiffs In Error v. James Taggert, Defendant In Error Joseph Battin, Patentee and Samuel Battin, Assignee Plaintiffs In Error v. Robert Radcliffe and John Johnson, Defendants In Error Joseph Battin, Patentee and Samuel Battin, Assignee Plaintiffs In Error v. John Hewes, Defendant In Error

• Decision Date: 01 December 1854
• Citation: Joseph Battin, Patentee and Samuel Battin, Assignee Plaintiffs In Error v. James Taggert, Defendant In Error Joseph Battin, Patentee and Samuel Battin, Assignee Plaintiffs In Error v. Robert Radcliffe and John Johnson, Defendants In Error Joseph Battin, Patentee and Samuel Battin, Assignee Plaintiffs In Error v. John Hewes, Defendant In Error, 58 U.S. 74, 17 How. 74, 15 L.Ed. 37 (1854)
• Parties: JOSEPH BATTIN, PATENTEE, AND SAMUEL BATTIN, ASSIGNEE, PLAINTIFFS IN ERROR, v. JAMES TAGGERT, DEFENDANT IN ERROR. JOSEPH BATTIN, PATENTEE, AND SAMUEL BATTIN, ASSIGNEE, PLAINTIFFS IN ERROR, v. ROBERT RADCLIFFE AND JOHN JOHNSON, DEFENDANTS IN ERROR. JOSEPH BATTIN, PATENTEE, AND SAMUEL BATTIN, ASSIGNEE, PLAINTIFFS IN ERROR, v. JOHN G. HEWES, DEFENDANT IN ERROR
• Court: U.S. Supreme Court

58 U.S. 74

17 How. 74

15 L.Ed. 37

JOSEPH BATTIN, PATENTEE, AND SAMUEL BATTIN, ASSIGNEE,PLAINTIFFS IN ERROR,v.JAMES TAGGERT, DEFENDANT IN ERROR.

JOSEPH BATTIN, PATENTEE, AND SAMUEL BATTIN, ASSIGNEE,

PLAINTIFFS IN ERROR,

v.ROBERT RADCLIFFE AND JOHN JOHNSON, DEFENDANTS IN ERROR.

JOSEPH BATTIN, PATENTEE, AND SAMUEL BATTIN, ASSIGNEE,

PLAINTIFFS IN ERROR,

v.JOHN G. HEWES, DEFENDANT IN ERROR.

December Term, 1854

THESE three cases were argued and decided together. They were brought up, by writ of error, from the circuit court of the United States for the eastern district of Pennsylvania.

On the 6th of October, 1843, Joseph Battin obtained a patent for a new and useful improvement in the machine for breaking and screening coal, which he defined, in his specification, as one in which the breaking and screening were effected simultaneously, by a set of breaking rollers, of a certain form, operating in connection with an assorting screen. After describing the machine, the claim was made as follows, namely:——-

Having thus fully described the nature and operation of my machine for breaking and screening coal, what I claim as new therein, and desire to secure, by letters-patent, is the manner in which I have arranged and combined with each other the breaking rollers and the screen; the respective parts being formed, and operating substantially, as herein set forth and made known.

JOSEPH BATTIN.

On the 20th of January, 1844, he took out another patent, for the addition of a third, or auxiliary roller, of smaller diameter than the two at first used, and placed above them, and claimed as follows:——

Having thus fully described the nature of my improvement, in the manner of combining and arranging the toothed rollers used in the machine for breaking coal, what I claim therein as new, and desire to secure by letters-patent, is the so forming and gearing of such rollers as that the teeth of one of them shall always be opposite to a space between the teeth in the other, whenever they are operating upon the article to be broken; the same being effected, substantially, in the manner herein set forth.

JOSEPH BATTIN.

A suit was brought by Battin against Clayton, in the circuit court for the eastern district of Pennsylvania, to recover damages for the infringement of the patent of October 6, 1843, when the court held that 'the patent being merely for the combination of machinery, it could neither be supported nor assailed by proof of the novelty of the parts.' The plaintiff thereupon submitted to a nonsuit; surrendered the patents of 1843 and 1844, and obtained a reissue of the patent of 1843, upon an amended specification. The patent of 1844 was not reissued.

The description of the machine and claim, in the reissued patent, concluded as follows, namely:——

By the construction and arrangement of the breaking rollers, it will be perceived that, as they rotate, the teeth constitute a series of progressive levers, which act on opposite sides of the lumps, and being placed so as not to coincide, snap or break the lumps between the points of pressure; this pressure gradually increasing until the separation is effected, that is, during the rotation, until the teeth reach a plane passing through the axis of the two rollers, and then the effect having been produced, the teeth recede to liberate the lumps, and thus avoid the further reduction of the material. This mechanical action of the rotary teeth is thus adapted to the frangible or brittle nature of coal, which is readily pulverized when subjected to a continued percussion or pressing action.

It will be obvious from the foregoing that the form and size of

the teeth may be greatly varied, as well as the space between the periphery of the two rollers, without changing the principle or mode of operation of my invention, so long at the two rollers are geared together, and the teeth of one are in the rotation made to come opposite to, or in the space between, the teeth of the other, and vice vers a; space sufficient to hold the required size of lumps of coal, being left between the teeth of the two rollers when passing a plane which coincides with the axis of the two rollers.

What I claim, therefore, as my invention, and desire to secure by letters-patent, is the arrangement of the teeth on the two rollers, substantially as herein described, so that in their rotation the teeth of one shall come opposite the spaces between the teeth of the other, with sufficient space between to hold lumps of the required size, the rollers being so combined, by gearing, as to make them rotate in opposite directions; and, with the required velocities, to retain the relative position of the teeth of the two rollers, as described.

JOSEPH BATTIN.

At April term, 1850, Joseph Battin, as patentee, and Samuel Battin, as assignee, of an undivided half part, brought suits against the three parties named as defendants in error, in the caption of this report. The defendants pleaded not guilty, and the cause came up for trial, when the jury found a verdict for the plaintiff, for $800. Upon motion of the counsel for the defendants, a new trial was granted, the following reasons being filed:——

1. The court erred in deciding that the patent of September 4, 1849, was for the same invention as that claimed in the patent of October 6, 1843, and could be included in the reissued patent.

2. The court erred in deciding that the suits can be maintained in the name of Samuel Battin, as assignee under the assignment to him, of February, 1844.

3. The copy of the assignment from the patent-office, was illegally received in evidence for any purpose.

4. The court erred in permitting the plaintiff to amend his declaration, in a material matter of substance, without any condition, and without granting a continuance to the defendants, as requested.

5. Material evidence, on the part of the defendants, was excluded by the construction given to the defendants' notice of special matter, which, if received, would have produced a different result.

6. Important evidence was discovered when it was too late to give notice, and during the trial, which is set forth in the affidavit of John L. L. Morris, which was presented to the court.

7. The court erred, in the instruction given to the jury, as to the grounds upon which they should ascertain the actual damages.

8. The damages are excessive.

At October term, 1852, the cause came up again for trial, when the jury, under the instructions of the court, found a verdict for the defendants.

The bill of exceptions set forth the whole of the evidence, and the entire charge of Judge Kane to the jury.

The plaintiffs took exceptions to the charge, on the following grounds, namely:——

That the learned judge erred——

1. In the construction given by him to the patents and specifications of October, 1843, February, 1844, and September, 1849.

2. In ruling, as matter of law, that the patentee had given his invention to the public.

3. In construing the 13th section of the act of 1836, and the 7th section of the act of 1837.

4. In charging the jury that 'Mr. Battin's invention, as he now defines it, was in use for nearly six years before he claimed that it was his property. He had made it known as an unprotected element of the combination he patented in 1843. It was not till 1849, that he asserted any other right in it for himself than he conceded to everybody else. He cannot reclaim what he has thus given to the public.' And in not submitting to the jury the facts proved in regard to the origin and use of the invention.

5. In directing the jury that a description by the applicant for a patent of a machine, or a part of a machine, in his specification, unaccompanied by notice that he has rights in it as intentor, or that he desires to secure title to it as patentee, is a dedication of it to the public; and that such a dedication cannot be revoked after the machine has passed into public use, either by surrender and reissue, or otherwise.

6. In holding that the facts of this case are embraced in the foregoing propositions.

7. In not deciding that the patent of 4th September, 1849, is good and valid in law.

8. In directing the jury to find a verdict for the defendant.

It is difficult to explain the nature of some of these objections without setting forth the entire charge, which cannot be done. The following extracts, however, from the charge, appear to contain the ruling upon those points on which the decision of this court turned. The charge said:——

'It is said that the present defendants are using the apparatus described in this reissued patent, and that they should be

mulcted in damages, accordingly. But there are two legal positions, of a general character, which appear to me to bar the plaintiff's right of recovery. They are these:——

'1. That a description by the applicant, for a patent of a machine, or a part of a machine, in his specification, unaccompanied by notice that he has rights in it as inventor, or that he desires to secure title to it as patentee, is a dedication of it to the public.

'2. That such a dedication cannot be revoked after the machine has passed into public use, either by surrender and reissue, or otherwise.

'The first of these propositions will hardly be disputed. If an inventor has a right at all to give up his invention to the world, there is no more unequivocal way of doing so than by publishing it on the records of the patent-office, and at the same time making no claim to it as his exclusive property. There is no...