Le Roy et al. v. Tatham et al. now here ordered and adjudged by this court, that this cause be, and the same is hereby dismissed, for want of jurisdiction. *THOMAS OTIS LE ROY, AND DAVID SMITH, PLAINTIFFS IN ERROR, v. BENJAMIN TATHAM, JUNIOR GEORGE N. TATHAM, AND HENRY B. TATHAM. [*156 In a patent for improvements upon the machinery used for making pipes and tubes from lead, or tin, when in a set, or solid state, by forcing it under great pressure, from out of a receiver, through apertures, dies, and cores, the claim of the patentees was thus stated: "What we claim as our invention, and desire to secure by letters-patent, is the combination of the following parts, above described, to wit, the core and bridge, or guide-piece, the chamber, and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same." The Circuit Court charged the jury, "that the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which an useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe." This instruction was erroneous. Under the claim of the patent, the combination of the machinery must be novel. The newly discovered principle, to wit, that lead could be forced, by extreme pressure, when in a set or solid state, to cohere and form a pipe, was not in the patent, and the question whether it was or was not the subject of a patent, was not in the case.1 Mr. Justice Curtis, having been of counsel for the defendants in error, upon the letters-patent drawn in question in this case, did not sit at the hearing. This case was brought up, by writ of error, from the Circuit Court of the United States for the Southern District of New York. The declaration was filed by the defendants in error, on 1 s. c., 22 How., 132, 137, 139; 2 Blatchf., 474. REVIEWED. O'Reilly v. Morse, 15 How., 117, 132. DISTINGUISHED. Milligan &c. Glue Co. v. Upton, 1 Bann. & A., 513, 514. CITED. McCloskey v. Du Bois, 9 Fed. Rep., 39. A mere principle, however novel, is not the subject of a patent; the invention must consist in its practical application to some useful purpose. O'Reilly v. Morse, 15 How., 62; Burr v. Duryee, 1 Wall., 531; Case v. Brown, 2 Id., 320; Foote v. Silsby, 2 Blatchf., 260; Smith v. Ely, 5 McLean, 76. So, also, an effect or function is not patentable. Sickels v. Falls Co., 4 Blatchf., 508; Morton v. N. Y. Eye Infirmary, 5 Id., 116; but these rules are subject to many qualifications, owing to the nice distinctions made by judges in patent cases. See Detmold v. Reeves, 1 Fish. Patent Cas., 127; Ransom v. New York, Id., 252; Parker v. Hulme, Id., 44; Corning v. Burden, 15 How., 252; Poillon v. Schmidt, 6 Blatchf., 299; Seymour v. Osborne, 3 Fish. Pat. Cas., 555. Le Roy et al. v. Tatham et al. the 8th of May, 1817, to recover damages in a plea of trespass upon the case, from the plaintiffs in error, and Robert W. Lowber, for an alleged infringement of their patent, for new and useful improvements in machinery, or apparatus for making pipes and tubes from metallic substances. The declaration alleged, that John and Charles Hanson, of Huddersfield, England, were the inventors of the alleged improvements, on or before the 31st of August, 1837. That on the 10th of January, 1840, the Hansons, assigned, in writing, to H. B. & B. Tatham, (two of the defendants in error,) the full and exclusive right to the said improvements. That on the 29th of March, 1841, letters-patent of the United States were granted to H. B. & B. Tatham, as assignees of the Hansons, for the said improvements. That on the 12th of October, 1841, H. B. & B. Tatham, assigned to G. N. Tatham, (the remaining defendant in error,) one undivided third part of the said letters-patent. That, on the 14th of March, 1846, the said letters-patent having been surrendered, on account of the defective speci fications of the said improvements, new letters-patent *157] were issued therefor, on an amended specification, whereby there was granted to the plaintiffs below, their heirs, &c., for the term of fourteen years from the 31st of August, 1837, the full and exclusive right of making, vending, &c., the said improvements; a description whereof was annexed to and made a part of such patent. That the letters-patent were of the value of $50,000; and that the defendants below had wrongfully and unlawfully made, used, and vended the said improvements, and made lead pipe to the amount of 2,000 tons, thereby to the injury of the plaintiffs, $20,000. To this declaration, the defendants, Le Roy and Smith, pleaded not guilty; the defendant, Lowber, making no defence, and permitting a default to be taken against him. The cause was tried at the April Term, 1849, and a verdict rendered by the jury in favor of the plaintiffs, for $11,394, and costs, and a bill of exceptions was tendered by the de fendants below. On the trial of the cause below, the plaintiffs produced,1. Their patent of 1846, and the specification referred to therein, and making a part of the same. 2. They read in evidence certain agreements between the defendant, Lowber, and the defendants, Le Roy and Smith. 3. They gave evidence, tending to prove that J. & C. Hanson were the original and first inventors of the improvement; that the invention was a valuable one, &c. Le Roy et al. v. Tatham et al. 4. That lead, recently become set, under heat and in a close vessel, would unite perfectly after a separation of its parts; that, in the process described in the said patent, pipe was so made; that the Hansons were the first and original discoverers thereof; and that such discovery, and its reduction to a practical result, and in the mode described in the patent, was useful and important. 5. That the defendants, Smith and Le Roy, had been jointly engaged with Lowber in making lead pipe upon the plan described in the letters-patent, and selling the same, and had thus made and sold large quantities of pipe; that the agreement between them, relative to the manufacture of pipe, was colorable only, and was made as a cover to protect Le Roy and Smith, and throw the responsibility on the defendant, Lowber, who was insolvent. 6. That the improvement described in the said letters-patent was the same invention for which letters-patent had been granted to the Hansons, in England, and to H. B. & B. Tatham, here, as their assignees. 7. That the plaintiffs had been ready, and had offered to sell the said invention, and had sold the same for a large portion of the United States, within the last [*158 eighteen months. The defendants below then read in evidence, 1. The description of the English patent to the Hansons. 2. The patent to H. B. & B. Tatham, of 1841, and the specification thereof. 3. The specification of an English patent, granted to Thomas Burr, of 11th April, 1820. 4. The patent and specification of Burroughs Titus, granted in 1831. 5. The patent granted to George W. Potter, in 1833. 6. The evidence of George Fox, tending to show the invention and use by him of a similar machine, in 1830. 7. The specification of a patent to John Hague, in 1822. 8. The specification of a patent granted to Busk & Harvey, in 1817. 9. The specification of a patent granted to Ellis & Burr, in 1836. 10. The specification of a patent granted to Joseph Bramah, in 1797. 11. The defendants then gave evidence tending to prove that J. & C. Hanson were not the original and first inventors of the combination of machinery described in the letters patent. Le Roy et al. v. Tatham et al. 12. That the invention was not useful, nor the lead pipe, made upon the plan described, good. 13. That the combination of machinery described in public works, as having been invented by Titus, Potter, Fox, Hague, Bramah, and Busk & Harvey, were substantially the same as that described in the plaintiffs' patent. 14. That lead, when recently become set, under heat and extreme pressure, in a close vessel, would not reunite perfectly after a separation of its parts; and that, in the process as described in the plaintiffs' patent, it was not in a set, but in a fluid state when it passed the bridge. 15. That the defendants, Le Roy & Smith, were not concerned in the manufacture of the pipe, or in making or using the machinery; that it was made for them by the defendant, Lowber, at a certain price per hundred pounds; and that they had not infringed upon the patent of the plaintiffs. 16. That the improvement described in the plaintiff's patent, of 1846, was not the same invention as that for which letters-patent had previously been granted to the Hansons, and to H. B. & B. Tatham. 17. That, for the space of eighteen months, from the date of the patent of 1841, the plaintiffs had neglected to put and continue on sale to the public, on reasonable trust, the invention or discovery for which the said patent issued. *The evidence being closed, the case was argued *159] before the jury, after the court had given the charge, which will be presently stated. The jury found a verdict for the plaintiffs, which, when increased by the court, amounted to $11,748.60. The following bill of exceptions brought up the rulings of the court upon the several points made: The evidence being closed, the Judge charged the jury That the first question which it was material to determine was, what was the invention or discovery of John and Charles Hanson, for which their patent had issued, as the precise character of that invention had been the subject of controversy on the trial. The patentees state in their specification, that the invention consists in certain improvements upon, and additions to, machinery for making pipes of metal, capable of being pressed, as described in Burr's patent, dated April 11, 1820. They then describe Burr's apparatus, and the process by which the pipe was made by it, and state the defects of that plan, in consequence of which, they say, it failed to go into general use. These defects they claim to have overcome and remedied; and state that they had found that lead, and some of its Le Roy et al. e. Tatham et al. alloys, when just set, or short of fluidity, and under heat and great pressure, in a close vessel, would reunite, after a separation of its parts, as completely as if it had not been separated, or, in other words, that, under these circumstances, it could be welded. That, on this discovery, and in reference to and in connection with it, they made a change in the machinery of Burr, by which they succeeded in making perfect pipes, and were enabled to use a bridge at the end of the cylinder and short core, and thus surmount the difficulty of the Burr machine. They also state, that they do not claim any of the partsthe cylinder, core, die, or bridge; but that they claim the combination when used to form pipes of metal, under heat and pressure, in the way they have described. There can be no doubt that, if this combination is new, and produces a new and useful result, it is the proper subject of a patent. The result is a new manufacture. And even if the mere combination of machinery in the abstract is not new, still, if used and applied in connection with the practical development of a principle, newly discovered, producing a new and useful result, the subject is patentable. To which last opinion and decision, the counsel for the defendants did then and there except. In this view, the improvement of the plaintiffs is the application of a combination of machinery to a new end,-to the *development and application of a new principle, re[*160 sulting in a new and useful manufacture. That the discovery of a new principle is not patentable; but it must be embodied and brought into operation by machinery, so as to produce a new and useful result. Upon this view of the patent, it is an important question, for the jury to determine, from the evidence, whether the fact is established on which the alleged improvement is founded, that lead, in a set or semi-solid state, can thus be reunited or welded after separation. The Judge here commented briefly upon the testimony, referring to the experiments which were testified to, and the results of which were exhibited to the jury, on the part of the plaintiffs and defendants, and, in continuation, stated: That there was one experiment which was testified to by Mr. Keller, and the result of which was shown to the jury, which was made under circumstances that seem not to be subject to any misapprehension, and which, if he is not mistaken, and his testimony is correct, would seem to settle the question. But this was a question of fact, to be decided by |