Opinion of the Court. one practical mode in which it may be applied. Perhaps the process is susceptible of being applied in many modes and by the use of many forms of apparatus. The inventor is not bound to describe them all, in order to secure to himself the exclusive right to the process, if he is really its inventor or discoverer. But he must describe some particular mode, or some apparatus, by which the process can be applied with at least some beneficial result, in order to show that it is capable of being exhibited and performed in actual experience." The English doctrine is to the same effect. In the case of Curtis v. Platt, before Vice-Chancellor Wood, in 1863, reported in a note to Adie v. Clark, 3 Ch. Div. 134, the Vice-Chancellor said, (p. 136,) in regard to a patent for an improvement in spinning-mules: "When the thing is wholly novel, and one which has never been achieved before, the machine itself which is invented necessarily contains a great amount of novelty in all its parts; and one looks very narrowly and very jealously upon any other machines for effecting the same object, to see whether or not they are merely colorable contrivances for evading that which has been before done. When the object itself is one which is not new, but the means only are new, one is not inclined to say that a person who invents a particular means of doing something that has been known to all the world long before has a right to extend very largely the interpretation of those means which he has adopted for carrying it into effect." In the same case, on appeal before the Lord Chancellor, (Lord Westbury,) (p. 138,) the views of Vice-Chancellor Wood were concurred in. In Bädische Anilin und Soda Fabrik v. Levinstein, 24 Ch. Div. 156, 171, in regard to a patent for improvements in the production of coloring matters for dyeing and printing, Mr. Justice Pearson said: "Where a patent is taken out for a process for arriving at a known result, (I mean, a result knowr before the patent is taken out for the process simpliciter,) any other person may take out a patent for another process, or may use another process without taking out a patent, without any infringement of the process first taken out. But when a patent is taken out for a new result not known before, and there is one Opinion of the Court. process described in the patent which is effectual for the purpose of arriving at that new result at the time when the patent is taken out, the patentee is entitled to protection against all other processes for the same result; and no person can, without infringing upon his patent, adopt simply a different process for arriving at the same result." As authority for this view, he cites the cases of Jupe v. Pratt, 1 Webster Pat. Cas. 146; Househill Co. v. Neilson, 1 Webster Pat. Cas. 685; and Curtis v. Platt, ubi supra, and Goodeve Pat Cas. 102. He decided in favor of the plaintiff. On appeal to the Court of Appeal, 29 Ch. Div. 366, the decree was reversed, Lords Justices Bowen and Fry being in favor of a reversal, and Lord Justice Baggallay against it. On further appeal to the House of Lords, 12 App. Cas. 710, the decision of the Court of Appeal was reversed, and the decision of Mr. Justice Pearson was restored, Lord Halsbury, (Lord Chancellor,) Lord Herschell, and Lord Macnaghten sitting in the case and concurring. In the judgment given by Lord Herschell it is stated that all the judges of all the courts were agreed on the question of infringement. A recent and instructive case is that of Proctor v. Bennis, 36 Ch. Div. 740, in regard to a patent for self-acting mechanism for supplying fuel at intervals to, and distributing it over the surface of, a fire. The court of first instance held the patent to be valid and to have been infringed. In the Court of Appeal, Lords Justices Cotton, Bowen, and Fry unanimously affirmed the decision, and held that a patent for a combination of known mechanical contrivances, producing a new result, was infringed by a machine producing the same result by a combination of mechanical equivalents of such contrivances, with some alterations and omissions, which did not prevent the new machine from being one which took the substance and essence of the patented invention; but that, where the result was old, and the novelty consisted only of improvements in a known machine for producing a known result, the patentee must be tied down strictly to the mode which he had described of effecting the improvements. Lord Justice Cotton, after referring to the case of Curtis v. Opinion of the Court. Platt, 3 Ch. Div. 135, note, said, (p. 757:) "Where there is no novelty in the result, and where the machine is not a new one, but the claim is only for improvements in a known machine for producing a known result, the patentee must be tied down strictly to the invention which he claims, and the mode which he points out of effecting the improvement. But here the throwing coal on to the furnace by the intermittent radial action of a flap or door was new. Nothing of the kind had been done before. It is true, there had previously been imperfect machines for feeding furnaces automatically, but that had not, previously to this machine, been done by any intermittent radial action of a flap or door, as is done by the plaintiff. In my opinion, therefore, the opinions expressed by the judges, with reference to mere improvements in an old machine for an old purpose cannot apply to a case like this, where there was not only novelty in the machine, but novelty in the result to be produced by that machine." Lord Justice Bowen said, (p. 764 :) "Now, I think it goes to the root of this case to remember that this is, as was described by one of the counsel, really a pioneer invention; and it is by the light of that, as it seems to me, that we ought to consider. whether there have been variations or omissions, and additions, which prevent the machine which is complained of from being an infringement of the plaintiff's. With regard to the variations, I take precisely the same view that the Lord Justice Cotton has taken; and I will not travel over the ground again. With regard to the additions and omissions, it is obvious that additions may be an improvement, and that omissions may be an improvement; but the mere fact that there is an addition, or the mere fact that there is an omission, does not enable you to take the substance of the plaintiff's patent. The question is not whether the addition is material, or whether the omission is material, but whether what has been taken is the substance and essence of the inven tion. That seems to me to be the true test, as propounded by the House of Lords in Clark v. Adie, 2 App. Cas. 315, 320." Lord Justice Fry said, (p. 766 :) "The pith and substance of the plaintiff's invention is, in my judgment, putting coals upon Opinion of the Court. a fire by an intermittent radial action, an invention which, it may be remarked, reproduces with great exactitude the action of the human arm in placing coals upon a fire." Also, (p. 768) "In the present case, we have these broad features of likeness, that in both machines the motion is a radial motion, in both machines it is an intermittent motion, in both machines it is of course produced by means of a radius, in both machines that radius is moved in one direction by tappets, and the same radius is moved in the opposite direction by a spring. All those broad features of the machines are in common; but there is this difference, that in the plaintiff's machine a shaft is impelled by the tappets and by the spring, whereas in the defendant's machine the radius itself is impelled by the tappets and the spring. It follows that the radius in the plaintiff's is attached to the shaft, whereas the radius in the defendant's works on a pin. That is the broad distinction between them. The result, however, appears to me to be substantially the same; by substituting the pin for the shaft as the centre on which the radius acts, and by impelling the radius itself instead of impelling the shaft fixed to the radius, you have produced in substance precisely the same radial action by the same means. You drive your radius in one direction by tappets, and you drive it in the other direction by the spring, and you produce the same result, namely, the feeding of coal by a radial motion made intermittent in one direction by the operation of the tappets, and in the other direction by the spring. I think, therefore, that we have a new combination for a new object, and that the gist of that combination has been taken by the defendant, and that, consequently, there is an infringement." Applying these views to the case in hand, Morley having been the first inventor of an automatic button-sewing machine, by uniting in one organization mechanism for feeding buttons from a mass, and delivering them one by one to sewing mechanism and to the fabric to which they are to be secured, and sewing mechanism for passing a thread through the eye of the button, and securing it to the fabric, and feeding mechanism for moving the fabric the required distances to space the Opinion of the Court. buttons, another machine is an infringement, in which such three sets of mechanism are combined, provided each mechanism, individually considered, is a proper equivalent for the corresponding mechanism in the Morley patent; and it makes no difference that, in the infringing machine, the button-feeding mechanism is more simple, and the sewing mechanism and the mechanism for feeding the fabric are different in mechanical construction, so long as they perform each the same function. as the corresponding mechanism in the Morley machine, in substantially the same way, and are combined to produce the same result. The view taken on the part of the defendant, in regard to the question of infringement, is that, inasmuch as the Lancaster machine uses different devices in its mechanisms which correspond to those referred to in the first, second, eighth and thirteenth claims of the patent, those claims are to be limited to the special devices described in the patent, which make up such combinations, although both machines contain the same main group of instrumentalities which, when combined, make up the machine. But, in a pioneer patent, such as that of Morley, with the four claims in question such as they are, the special devices set forth by Morley are not necessary constituents of the claims. The main operative features of both machines are the same. In each there is a receptacle for shank-buttons in a mass; in each the mass of buttons passes in order into a conveyer-way; and in each the buttons conveyed to the sewing mechanism are presented successively with their shanks in a horizontal position, so as to allow of the passage of the needle through the eye. In the Morley machine, the buttons are carried along the raceway with their shanks downward, and are turned over by proper devices, so that the needle can enter the eye. In the Lancaster machine, the buttons travel along the raceway with their shanks upward, and the twisted shape of the raceway causes the buttons to be presented properly in succession to the needle. The only difference is, that in the Morley machine there is an active operating device for turning the buttons, in the shape of a button-wheel which receives them, |