Marsh v. Seymour Same v. Same

• Decision Date: 01 October 1877
• Citation: 24 L.Ed. 963,97 U.S. 348
• Parties: MARSH v. SEYMOUR. SAME v. SAME
• Court: U.S. Supreme Court

97 U.S. 348

24 L.Ed. 963

MARSH v. SEYMOUR.

SAME

v. SAME.

October Term, 1877

APPEALS from the Circuit Court of the United States for the Eastern and the Western District of Pennsylvania.

The bill in the first case was filed in the Circuit Court of the United States for the Eastern District of Pennsylvania, by William H. Seymour and Dayton S. Morgan, of New York, to restrain the respondents, James S. Marsh, Elisha C. Marsh, Charles C. Marsh, and John A. Grier, from infringing reissued letters-patent No. 72, dated May 7, 1864, and No. 1683, dated May 31, 1864, for new and useful improvements in reaping-machines, and reissued letters No. 1682, dated May 31, 1864, for a new and useful improvement in harvesters,—all of which were granted to William H. Seymour and others, but of which he and Morgan are by assignment the owners. In the second case, the bill, which also alleges the infringement of the reissues above referred to, was filed by the same complainants in the Circuit Court for the Western District of Pennsylvania, the respondents being James S. Marsh, Charles C. Shorkley, Elisha Shorkley, and D. S. Kremer.

In each case there was a decree for the complainants, and the respondents appealed here.

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

Mr. J. J. Coombs and Mr. J. O. Parker for the appellants.

Mr. George Harding, contra.

MR. JUSTICE CLIFFORD delivered the opinion of the court.

Owners of a patent, whether patentees or assignees, may seek redress for the unlawful use of the improvement which it secures, in the Circuit Court, by a suit at law or in equity, at their option; but in either form of proceeding they must allege and prove that they, or those under whom they claim, are the original and first inventors of the improvement, and that the opposite party or parties have infringed their exclusive right to make or use the same, or vend it to others to be used. Both allegations must be proved; but the letters-patent, if introduced and in due form, afford a prima facie presumption that the first allegation is true, which casts the burden of proof upon the defending party.

Patents, when inoperative or invalid, may in certain cases be surrendered and reissued; but the new patent in such case must be for the same invention as the original patent; and if it is for a different invention, the reissue is invalid, for the reason that it was granted without authority of law.

Redress is sought in two suits in equity by the complainants for the infringement of five of the patents which they own, their title to the same not being in controversy. Service was made, appearance entered, answers and replications filed, proofs taken, hearing had; and the Circuit Court entered a decree, sustaining the validity of three of the patents, and that the complainants recover of the respondents the profits, gains, savings, and advantages they made in consequence of the infringement, together with the damages they sustained thereby, with costs and charges.

Such a decree was entered in each case, with a further decree, that the cause be referred to a master to compute the profits, gains, savings, and advantages made by the respondents. Both parties excepted to the report of the master in each case; and the court overruled their respective exceptions, and decreed that the complainants do recover of the respondents in the first case the sum of $6,280 damages for machines made and sold, adding six cents as nominal damages for machines not sold, with costs as taxed; and that the complainants do recover of the respondents in the second case the sum of $13,085.06, with costs as taxed,—the master having allowed $5, a sum equal to a license fee, for each machine sold, amounting to $13,085.06 nominal damages for machines manufactured and not sold.

Immediate appeal was taken by the respondents to this court, and they now assign the following errors: 1. That the first two, to wit, No. 1682 and No. 1683, are invalid, and that the Circuit Court erred in not sustaining the defence that the respective inventions were neither useful nor practical. 2. That the patent No. 72 is invalid, and that the Circuit Court erred in not sustaining the defence that the patentee was not the original inventor of the improvement. 3. That the Circuit Court erred in holding that the reissued patent No. 72 was for the same invention as the original patent. 4. That the Circuit Court erred in overruling the exceptions of the respondents to the master's report.

Three patents only are involved in the present investigation, as exhibited in the assignment of errors, as follows: 1. Reissue No. 72, which has but a single claim; to wit, for a quadrant-shaped platform of a reaping-machine, arranged relatively to the cutting apparatus, substantially as described and for the purpose set forth. 2. Reissued patent No. 1683, the charge of infringement being limited to the second claim, which is as follows: The combination in harvesting machines of the cutting apparatus with a quadrant-shaped platform in the rear of the cutting apparatus, a sweep-rake mechanism for the operating of the same, and devices for preventing the rise of the rake when operating on the grain, those five members being and operating substantially as set forth. 3. Reissue No. 1682, the charge of infringement extending only to the first claim of the patent, which is as follows: The combination of the cutting apparatus of a harvesting machine with a quadrant-shaped platform arranged in the rear thereof, a sweep-rake operated by mechanism, in such a manner that its teeth are caused to sweep over the platform in curves when acting on the grain, these parts being and operating substantially as set forth in the specification.

Two of the patents, to wit, the first and the second, are reissues from the original patent granted to the first-named complainant,—No. 72, dated May 7, 1861, being a reissue of one of the three parts of a prior reissue of the original patent, and No. 1683, dated May 31, 1864, being a reissue of another of the three parts of the prior reissue of the same original patent granted to the original patentee. Reissue No. 1682, dated May 31, 1864, is a second reissue from a prior reissue, when the original patent granted to Palmer and Williams was divided into two parts, and reissued on an amended specification.

Properly construed, the defences to the charge of infringing patent No. 72 are as follows: 1. That the patentee was not the original and first inventor of the improvement. 2. That the reissued patent is not for the same invention as the original patent. 3. That the respondents have not made, used, or sold machines constructed in accordance with the mechanism described in the complainants' patent.

Attempt is not made to call in question the correctness of the construction given to the patent when the court here was required, five years ago, to define its specification; and being satisfied that the views then expressed were correct, they are adopted in the present case.

No. 72 consists in constructing the platform of a reapingmachine, upon which the cut grain falls as it is cut, in the shape of a quadrant or of a sector of a circle, placed just behind the cutting apparatus, and in such relation to the main frame that the grain, whether raked off by hand or by machinery located behind the cutting apparatus, can be swept around on the arc of a circle, and be dropped heads formost on the ground, far enough from the standing grain to leave room for the team and machine to pass between the gavels and the standing grain, without the necessity of taking up the gavels before the machine comes round to cut the next swath.

Infringers, if they give due notice of such a defence, may show that the patentee is not the original and first inventor of the improvement; and if they establish that allegation, the prosecuting party is not entitled to recover, but the burden to prove the defence, if the patent is introduced in evidence, is cast upon the defending party to prove the affirmative of the issue. Seymour v. Osborne, 11 Wall. 516. Apply that rule to the case, and it is clear that the burden of proof under this issue is upon the respondents, as the patent of the complainants is made an exhibit in the record.

Appellants set up want of novelty, and refer, in the first place, to the machine of Nelson Platt in support of their theory. Precisely the same defence was set up in the prior case founded on this patent, in respect to which decision the respondents admit that it is an authority in this case to the extent that the issues and facts are the same. Properly understood, say the court in that case, the machine referred to does not contain a combination of the quadrant-shaped platform with the cutting apparatus, in any practical sense. On the contrary, it has a square platform combined with the cutting apparatus, and the quadrant-shaped platform is combined with the square platform; nor does it contain any quadrant-shaped platform to receive the grain as it falls, the court holding that the ingredients of the patent in that case, as well as the combination, are different from those exhibited in the complainants' machine, and that the mode of operation is also different.

Support to that theory, of a decisive character, is also found in the testimony of the expert witness called by the respondents. He admits in his cross-examination that there are material and substantial differences between the machine represented in the respondents' exhibit and that of the complainants; that he does not find in the respondents' exhibit the quadrant or sector-shaped platform arranged as in the complaints' machine, so that the grain falls thereon as it is cut by the cutting apparatus; that the quadrant-shaped part of the platform shown in the respondents' exhibit has the grain conveyed to it from a rectangular platform, which is in the rear of the cutting apparatus, the quadrant-shaped part being...