* 257 gg The words " art, machine, manufacture or composition of matter" have been repeatedly under consideration by the courts. But the result is only that, as they were intended to embrace almost, if not quite, every possible mode of accomplishing a useful result by physical means, so they have about this extent in law. (m) It has been recently held in England that the use of a new material to produce a known article is not the subject of a patent. (mm)1 One rule is of great importance and is always regarded; although it is not easy to define it, and is often of very difficult application. It is, that a patent cannot be granted, or is void if granted, for a mere property or function of matter, a motive power of the elements, or a physical law or force. But any of these being discovered, or a new use of any of them, the discoverer or inventor may have a patent for his mode or method of applying it to use. Hence, it is now settled, that a patent may be taken out for a process." What the limits are to the application of this rule, it would be difficult to determine in the present state of the authorities, which we exhibit in our notes. (n) 2 (mm) Rushton v. Crawley, L. R. 10 Eq. 522. (n) The leading English case upon this point is Neilson v. Harford, 1 Webst. Pat. Cas. 273. Prior to the plaintiff's invention, furnaces for the manufacture of iron had been worked by a blast of cold air. He discovered that, by using hot air instead of cold, a great improvement in the quality of the iron would be effected. In his specification he merely directed heating the air on its passage from the blowing apparatus to the furnace, by passing it through a vessel artificially heated; but gave no direction as to temperature, and even declared that the form or shape of the vessel was immaterial to the effect, and might be adapted to the local circumstances or situation. On the trial it was strenuously urged that the claim was for the general principle of using hot air in the blast, independent of any mode of making the application, and therefore void as an attempt to patent a principle. It was held otherwise. Baron Parke, delivering the opinion of the court, said: "It is very difficult to distinguish this specification from that of a patent for a principle; but after full consideration, we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if, the principle being wellknown, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this, by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he ac 1 Thus the substitution of a known equivalent for one of the elements of a former structure, as a rigid for a flexible leather cross-bar on shawl-straps, is not patentable. Crouch v. Roemer, 103 U. S. 797. — K. 2 See Tilghman v. Proctor, 102 U. S. 707, for a discussion of this question, and comments on O'Reilly v. Morse, ante. — - K. *257 hh * This process is the method of reaching a certain result. It differs from a "machine;" for a patent for a machine. complishes the object of applying the blast, which was before of cold air, in a heated state to the furnace." And in another suit upon the same patent, Househill Co. v. Neilson, 1 Webst. Pat. Cas. 683, Lord Justice Clerk Hope, in his charge to the jury, said: "It is quite true that a patent cannot be taken out solely for an abstract philosophical principle, for instance, for any law of nature, or any property of matter, apart from any mode of turning it to account in the practical operations of manufacture, or the business, and arts, and utilities of life. The mere discovery of such a principle is not an invention, in the patent-law sense of the term. But a patent will be good, though the subject of the patent consists in the discovery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained." And again he says: "I state to you the law to be, that you may obtain a patent for a mode of carrying a principle into effect; and if you suggest and discover, not only the principle, but suggest and invent how it may be applied to a practical result by mechanical contrivance and apparatus, and show that you are aware that no particular sort, or modification, or form of the apparatus, is essential, in order to obtain benefit from the principle, then you may take your patent for the mode of carrying it into effect, and are not under the necessity of confining yourself to one form of apparatus.' This ruling was afterwards sustained by the House of Lords, though the case was reversed upon another point. To the same effect are the observations of Baron Alderson in Jupe v. Pratt, 1 Webst. Pat. Cas. 146; "You cannot take out a patent for a principle; you may take out a patent for a principle, coupled with the mode of carrying the principle into effect, provided you have not only discovered the principle, but invented some mode of carrying it into effect. But then you must start with some mode of carrying it into effect; if you have done that, then you are entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as piracy of your original invention." And this is at this day the law of England on this point. See Bovill v. Keyworth, 7 El. & Bl. 724; Booth v. Kennard, 1 Hurl. & N. 527; Seed v. Higgins, 8 El. & Bl. 771, 8 H. L. C. 550; Curtis on Patents, § 141. In this country the inventor would seem to be confined within much narrower limits. Thus, in O'Reilly v. Morse, 15 How. 62, it was conceded by the court that the defendant in error was the first to apply electro-magnetism to practical use for telegraphic purposes, and that he was justly entitled to a patent for the particular process he had discovered; but his claim was declared void as being for a principle. The claim on which this decision was rendered was as follows: "I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor, or discoverer." A majority of the court held this to be a claim for the use of electro-magnetism for the purpose specified, without regard to the means, or manner, of making the application, and as such to be unwarranted by law. Nor did they consider that the case of Neilson v. Harford, if properly understood, afforded any support to such a claim. Speaking of Neilson's apparatus they say: "Undoubtedly the principle that hot air will promote the ignition of fuel better than cold, was embodied in this machine. But the patent was not sup ported because this principle was embodied in it. He would have been equally entitled to a patent, if he had invented an improvement in the mechanical arrangements of the blowing apparatus, or in the furnace, while a cold current of air was still used. But his patent was supported. because he had invented a mechanical apparatus by which a current of hot air, instead of cold, could be thrown in. And this new method was protected by his patent. The interposition of a heated receptacle in any form, was the novelty he invented." Taney, C. J., thus sums up the provisions of the acts of Congress relating to patents: "Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science covers nothing but that very machine. * But the "pro- *257 ii cess" may be one which may be carried out by a variety of machines. And if the "process" be effectually covered by the patent, it will prevent this use of any of those machines; but not any other use of them. (0) And it would seem that one to which it appertains can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. If this cannot be done by the means he describes, the patent is void. If it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy, known or unknown, before his invention; or by machinery acting altogether upon mechanical principles. In either case, he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from these described." So in Le Roy v. Tatham, 14 How. 156. The patentee had discovered that lead recently set would, under heat and pressure in a close vessel, reunite perfectly after a separation of its parts, and had applied his discovery to the manufacture of lead pipe. It was held that he was not entitled to a patent for this newly-discovered property of lead, but that he was entitled to a patent for the process of making lead pipe by means of this principle, and that he was bound to describe his process fully in his specification. The language of the court would indicate that in this case also the inventor would be limited to the process described. It was held, however, that the patentee had claimed the machinery employed, and the decision rested on the question of its novelty. See same case, 22 How. 132. Both these cases were decided by a bare majority of the court, Judges Nelson, Wayne, and Grier dissenting, and Judge Curtis not sitting, he having been of counsel. See Wyeth v. Stone, Story, 273: Blanchard v. Sprague, 2 Story, 164; Stone v. Blanchard, 3 Sumu. 535; Earle . Sawyer, 4 Mass. 6; Sickles v. Borden, 3 Blatchf. 535; Foote v. Silsby, 2 Blatchf. 265; Burr v Duryea, 1 Wall. 531; Evans v. Eaton, Peters, C. C. 341; Smith v. Ely, 5 McLean, 91; Parker v. Hulme, 1 Fish. 44; Smith v. Downing, 1 Fish. 64; Detmold v. Reeves, 1 Fish. 127; Wintermute v. Redington, 1 Fish. 239; Morton v. N. Y. Eye and Ear Infirmary, 5 Blatchf. 116, 2 Fish. 320. Nor is a patent valid for a mere effect or result, apart from the means by which it is produced. Whittemore v. Cutter, 1 Gal. 480; Carver v. Hyde, 16 Pet. 519; Corning v. Burden, 15 How. 268; Burr v. Cowperthwait, 4 Blatchf. 163; Sickles v. The Falls Co. 4 Blatchf. 508. (0) The distinction between a process and a machine is thus set forth by Grier, J., in Corning v. Burden, 15 How. 252. A process eo nomine is not made the subject of a patent in our act of Congress. It is included under the term 'useful art.' An art may require one or more processes or machines in order to produce a result, or manufacture. The term machine includes every mechanical device, or combination of mechanical powers and devices, to perform some function, and produce a certain effect or result. But when the result is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called processes. A new process is usually the result of discovery; a machine of invention. The arts of tanning, dyeing, making water-proof cloth, vulcanizing india-rubber, melting ores, and numerous others, are usually carried on by processes as distinguished from machines. One may discover a new and useful improvement in the process of tanning, dyeing, &c., irrespective of any particular form of machinery, or mechanical device; and another may invent a labor-saving machine, by which the operation or process may be performed; and each may be entitled to his patent. As, for instance, A has discovered that, by exposing indiarubber to a certain degree of heat, in mixture or connection with certain metallic salts, he can produce a valuable product or manufacture; he is entitled to a patent for his discovery as a process or improvement in the art, irrespective of any machine or mechanical device. on the contrary, may invent a new furnace, or stove, or steam apparatus, by which the process may be carried on with B, *257 jj *patent may embrace both the new process and the new product, when the result of a new process is a new manufacture or composition of matter. (00) It is also held that two patents may be issued to the same person one for the process, and the other for the result of the process. (op) SECTION V. OF INTERFERENCE. When each of two or more persons claims to be the first inventor of the same thing, an "interference" is declared to exist between them. Then a trial is had before the examiner, as to which of them was actually the first inventor. And there *257 kk may be an interference although one of the parties * has already obtained a patent; because, although the commissioner cannot cancel a patent which has been issued, he may give a patent to him whom he finds to be the first inventor, and thus place them in an even position before the public and the courts. But two inventors or patents do not interfere unless they claim, wholly or partially, the same invention. (og) the art. much saving of labor and expense of fuel; and he will be entitled to his patent for his machine, as an improvement in Yet A could not have a patent for a machine, or B for a process; but each would have a patent for the means and method of producing a certain result or effect, and not for the result or effect produced. It is for the discovery or invention of some practical method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result, that it is patentable; and it will include all methods or means which are not effected by mechanism or mechanical combinations." See Whitney v. Emmett, Baldwin, 312; Howe v. Abbott, 2 Story, 190; Goodyear v. Railroads, 2 Wall. Jr. 360; French v. Rogers, 1 Fish. 133; Smith v Downing, 1 Fish. 64; Crane v. Price, Webst. Pat. Cas. 411. When the process 302 is one which requires the use of old mechanism, care must be taken not to claim the mechanism itself as the subject of the patent. Thus in Kay v. Marshall, 1 My. & Cr. 373, the plaintiff had discovered, that by macerating flax before spinning, the spinning-rollers could be placed much nearer together than when dry flax was used, and thereby a much stronger and finer thread be produced. The real invention was the new process of spinning with wet flax instead of dry; but the inventor took out a patent for a new machine, and there being no novelty in the mechanism employed, his patent was declared void. See also Le Roy v. Tatham, 14 How. 156. (00) Goodyear v. Railroads, 2 Wall. Jr. 360; Goodyear v. Wait, 3 Fish. 242. (op) Rubber Company v. Goodyear, 9 Wall. 788. (oq) Gold-Separating Co. v. U. S. Disintegrating-Ore Co. 6 Blatchf. 307. SECTION VI. OF INFRINGEMENT. The patent gives to the patentee the exclusive use of the thing patented, for seventeen years. If any other person, within that period, makes an adverse use of it (and any use of it without the patentee's consent is adverse), this is an infringement of the patentee's exclusive right, for which he has an adequate remedy. (p) The question, What is an infringement of a patent right? is the great question of patent law; and often one of great difficulty, for many reasons. It is not easy to separate what is matter of law in the question from what is matter of fact. To decide the question of fact aright, often requires a thorough acquaintance with the laws of mechanics, and with various branches of natural science. And judges and experts, to say nothing of juries, often encounter questions in patent cases, both sides of which are so strongly supported, that either seems impregnable, were it not that the other is as much so. What better instance of this can be given, than a case in England, involving very large pecuniary interests, and turning entirely upon the question of infringement, wherein an eminent judge trying the case at Nisi Prius, held that there was no infringement; then, of six * 257 ll judges in the Exchequer Chamber, four held that there was an infringement; then, when the House of Lords asked the judges of England for their opinion, seven held that there was an infringement, and four that there was not; and finally the House of Lords decided that there was no infringement ? (q) We shall endeavor to give some general rules, or principles, which may be of use to those who have to consider this difficult (p) It is said, however, that the making of a machine merely for philosophical experiment, or for the purpose of ascertaining its sufficiency to produce its described effects, is not an infringement. Whittemore v. Cutter, 1 Gall. 432; Poppenhausen v. Falke, 2 Fish. 181; Jones v. Pearce, Webst. Pat. Cas. 125. -But see Watson v. Bladen, 4 Wash. 583. With these exceptions the question of infringement is one irrespective of motive. Parker v. Hulme, 1 Fish. 54. (g) Unwin v. Heath, 13 M. & W. 583; 12 C. B. 522; 5 H. L. C. 505. The patent was for the use of carburet of man ganese in the manufacture of steel. Defendant made use of oxide of manganese and coal-tar, the materials of which the carburet of manganese is made, and it was contended that in this process these ingredients became converted into the carburet before the iron was changed to steel, but the scientific evidence on this point was very conflicting The final decision of the House of Lords rested on the ground, that at the date of the patent the ingredients of the carburet of manganese were not known to be an equivalent for the carburet itself. |