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Lee v. Blandy.

The defendants' counsel insist: First, that the invention of Norcross, as set out in the patent, is a combination of rocker boxes, swinging frame, and suspension of the frame by the driving belt; they insist that these elements are claimed as an entire structure or machine, and that there can be no infringement unless the defendants have used all the parts or elements of it. They do not use the swinging frame or rocker boxes, and therefore do not infringe. And secondly, they insist that their metallic spring is not the same or an equivalent for the belt and its connections in the Norcross invention.

The latter question, that of identity of the two inventions, is, of course, a question for the jury, and I do not propose, in this place, to say anything upon it, but will ask your attention to the propositions of law in regard to the construction of the claim of this patent.

There can be no question but that there may be a claim for two inventions in the same patent, if they both relate to the same machine or structure; and an action can be sustained for the infringement of either one or the other of these separate inventions, where claimed as separate and distinct in their character. There can be no doubt, if one of these be infringed it is properly a subject for an action. The question, in this case, is, whether the claim is of this character-whether it is, in fact, a claim for two distinct and independent inventions, or whether it is a claim for a combination. If a combination, what is the character of that combination ?

There are two classes or kinds of combinations recognized by our patent laws, which are properly the subject of a patent. The first may be defined to be one in which all the parts were before known, and where the sole merit of the invention consists in such an arrangement of them as to produce a new and useful result, or where, by adopting parts of a machine which may have been known for ages, an inventor has succeeded in making such an arrangement of them as that they produce a result never before obtained,

Lee v. Blandy.

and have, in that point of view, the merit of originality, and are, therefore, patentable.

There is another class of combinations, where some of the parts or elements of the combination are new, and their invention claimed, but where they are used in combination with parts or elements that were known before.

It is well settled that a patent may be obtained for the first class of combinations, but it is a principle well recognized that there is no infringement unless the party has used all the elements. If the combination consists of A, B, C, three mechanical structures long known, and if the party sued has only the parts B, C, and not A, he is not regarded as an infringer; he must use all to subject himself to liability.

If the combination have the other character to which I have referred, being, to a certain extent, new, but embracing some old parts or elements, then there is an infringement by the use of that part which is new and the invention of the patentee.

In the present case, there is no claim or pretense that these defendants use the swinging frame and rocker boxes in their saw-mill; and, therefore, if the Norcross claim is to be viewed as for a combination, without anything new, it would result that defendants have not infringed by their method of producing lateral motion, and of restoring the saw by the use of the spiral spring.

The language of the patent seems, in my judgment, to contemplate a machine made up of a combination of different parts, all necessary to its harmonious working, as a unit. It seems bardly possible to resist the conclusion, that the machine was arranged and constructed so as to produce lateral motion, and the restoration of the saw into line in case of divergence. There is no intimation that any one of the appliances are separate and independent inventions. I am obliged to state as my view of the proper construction of this patent, that it claims a structure or machine in combination, or composed of a combination of different elements. There is certainly great force in the idea that the

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Lee v. Blandy.

patentee could not have claimed the belt per se as a novelty, and that it could only be claimed in combination with the rocker boxes and swinging frame, for it is only in connection with them that the belt could act as a restoring agent; and this would seem sufficient to show that it was not contemplated as a separate invention, but as one of the parts of the entire combinatio.

These are the views I have felt it my duty to give the jury upon the question of combination. I have regretted somewhat that I have been brought to this conclusion, as I am very desirous, independent of any legal question of this kind, growing out of this specification, that the jury should take the entire case upon the facts, untrammeled by any. thing of this kind, and pass upon the merits, and I should be glad that it might be understood, even now, that the jury should take this case and consider it upon the question of identity, infringement, and utility. I do not understand it to be claimed that, except in the use of the equivalent of the spring for the belt, there is any infringement.

Upon the question of infringement I had not intended to say a word. The evidence has been full upon all questions of fact, and has been extensively commented upon by counsel. I shall not, therefore, go into the consideration of wbat has or has not been shown by the evidence.

Upon the question of identity I will, however, remark that it is not a question as to the precise form or size; the point is, whether the principle of the two things is the same or not. The law is that the patentee is protected against any other device which involves substantially the same principle. But if another party produces the same result by means different in principle and application, then it is no infringement, for it would be absurd to say that the granting of a patent covers all possible ways of producing the same result. Such is not the intention and spirit of the patent law. On the subject of the identity of these two contrivances, I need not extend my remarks. The jury have bad the benefit of models and the testimony of wit

Lee v. Blandy.

nesses, besides the explanation of counsel. They are en. tirely posted upon the character and features of the two inventions. In regard to the evidence of witnesses upon that point there is diversity. A number of intelligent witnesses, some of them experts, say that the contrivances are, in principle, the same; another large number, equally intelligent and capable, say they consider the two different in their action. It will be for the jury to reconcile the evi. dence, and come to such result as they shall think proper.

Some question has also been made in the course of the case upon the question of utility. Some evidence has been adduced to show that the lateral motion provided for, is really of no utility. On this subject I have only to remark, that the general doctrine is undoubtedly as stated, that there is a presumption arising from the patent itself, that the invention is of some degree of utility; but that it is not conclusive, and the other party may show that it is useless and worthless. You will remember upon this point there was some diversity of opinion. Some of the witnesses have stated not only that they considered it of no benefit, but a disadvantage. I would state that, if the jury find a substantial identity, it does not lie in the mouths of the defendants to say that the machine they use is of no utility, that is, upon the hypothesis that if there is identity, it does not become them to say that what they have appropriated is of no utility, as the mere fact that they have appropriated it, is evidence that they regarded it as of utility.

The jury found a verdict for the defendants.

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McAllister & Co. v. Steamboat Sam Kirkman.

(DISTRICT COURT.)

MCALLISTER AND Co. v. STEAMBOAT SAM KIRKMAN.

CARONDOLET MARINE RAILWAY AND Dock Co. v. SAME.

BERNARDINO FLORENS v. SAME.

SPENCER J. Ball v. SAME.

Credit given for supplies furnished a steamboat in her home port, is pre

sumed by the maritime law to have been given to the owner or master,

and not to the boat. A claim for wages being a lien on the boat, under all circumstances is an

exception to the general rule. Where persons in good faith have given credit to a steamboat for necessary supplies and repairs, as a foreign boat, such persons are not affected by the fraudulent character of sales or transfers by which the boat was placed in the position of a

foreign boat. If such persons were apprised of the real nature and character of the

transfers, or are fairly chargeable with such knowledge, they must be viewed as participants of the fraud, and can have no claim to any

benefit resulting from it. Whatever may be the character of a transfer of an interest in a steamboat,

it vests in the purchaser a legal title in that interest, which those dealing with the boat are justified, in the absence of any knowledge to the

contrary, in regarding as prima facie valid and unimpeachable. A collector's office, where bills of sale are made matters of record, is the

place where alone it may be presumed persons dealing with a boat

would search for information in regard to a title. The place of enrollment is not conclusive as to the home port of a vessel or

boat, and evidence is always admissible to prove the actual residence of the owner, and such evidence furnishes the test of the character of

the boat as foreign or domestic. The supplies of material-men to a ship belonging or represented to belong

to owners residing in another State, are to be deemed to be furnished on the credit of the ship and the owners until the contrary is proved,

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