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Vol. IV.]

CITY OF CLEVELAND V. LENZE.

[No. 2.

building already within the fire limits from one part of it to another. This building was there at the time the ordinance was made, and it was no violation of the ordinance to change its location from one point to another within the "fire limits.”

As before stated, Lenze was arrested, tried, found guilty, fined, and his building ordered to be removed or torn down for violating the street ordipance. This order of the police court made against his building is set out in the answer as a bar to the action for damages. Can it have that effect? If plaintiff's claim for damages was confined alone to the taking down of the building, this order unreversed would present a serious obstacle in the way of his recovery. But Lenze's claim for damages has a broader foundation. As we have already determined, he was forcibly prohibited by the city from putting his building on his lot, and by so doing the city was placed in the wrong. The city could not lawfully require him to place his building elsewhere than on his own premises. Yet when the building was permitted to stand in the public street for more than three days, it became obnoxious to the provisions of the street ordinance and the statute concerning nuisances, and might be removed or torn down without subjecting the party doing so to damages as a trespasser. The city, however, having done a wrongful act in prohibiting him from placing his building on his own lot, — forcibly deprived him of a right, — cannot claim exemption from a liability to pay damages in abating a nuisance under color of law to the injury of one of her citizens. The nuisance here arose out of her own wrongful act in forcibly depriving Lenze of the use of his property, and she must under the law respond to the consequences of her acts done contrary to and aggressive upon the rights of the individual. The amount of damages is to be determined by the facts and circumstances that may surround the case upon the trial.

The plaintiff in error, as a further defence, alleges that Kasper Lenze, at his request, had a conference with the city authorities, " and then and there agreed to and with the said board that the building then standing on and obstructing the public travel on Seneca Street, and which had been unlawfully standing on and obstructing the said street for a long space of time, should by him, this plaintiff, be taken down and removed, and not placed on the said lot, corner of Seneca and St. Clair streets; or that in case he, the said plaintiff, should not take down and remove the same, that then this defendant, its agents, or servants, should be fully authorized to tear down and remove the said building; and that he, the said plaintiff, would claim no damages from said defendant by reason thereof. That such agreement was made with the said Lenze at the said time, and agreed to by said Lenze, for and in consideration of this defendant granting him, said plaintiff, the permission to remove said building, instead of said defendant doing the same at plaintiff's cost."

This can avail the city nothing. By a wrongful act the city created the necessity that resulted in the destruction of the building. It is a vain effort to contract the city out of her liability for damages. The alleged consideration for the agreement is the privilege granted Lenze to tear down his own house, or exempt the city from harm in doing so, - a building he had lawful right to put upon his lot without the consent of the city authorities. This is no consideration, and the alleged agreement is to

Vol. IV.]

Smith v. GOODYEAR DENTAL VULCANITE Co.

[No. 2.

tally wanting in mutuality. For the want of mutuality and a valid consideration to support it, the agreement is void.

It follows from an application of these principles to the following instructions given, or refused to be given, that the court erred when it instructed the jury, over the objection of Lenze:

“If the jury find that this paper, signed by Kasper Lenze, bearing date July 29, 1867, was not revoked before the building was taken down, then the city had a right to proceed and tear it down ; and although the jury should find that this building was torn down under and by virtue of the order and judgment of the police court, still the city would be protected in the tearing down of this building, if this paper of July 29, 1867, had not been revoked.”

And also erred when it refused, on the request of Lenze, to instruct the jury :

That the city of Cleveland was bound to give Kasper Lenze a reasonable time to make this building to comply with the fire ordinance of May 10, 1850, said right to be exercised by said Lenze in a careful and prudent manner.”

And “ that if the building was standing on the territory lying between Superior, Ontario, Water, and St. Clair streets at the time the ordinance of May 10, 1854, was passed to prevent the erection of wooden buildings, &c., then it was no violation of that ordinance to move said building on said territory from one place on it to another place on it."

Judgment of the district court, in reversing the common pleas court, affirmed.

SCOTT, Chief Judge, DAY, WRIGHT, and JOHNSON, JJ., concurred.

SUPREME COURT OF THE UNITED STATES.

[OCTOBER TERM, 1876.]

PATENT. — CHANGE OF MATERIAL. — NOVELTY. - REISSUE. — ABAN

DONMENT.

SMITH v. GOODYEAR DENTAL VULCANITE CO.

Mere change of material does not constitute invention. But where the result of the

substitution of one material for another is a superior product, - one having new capabilities and functions, – the substitution amounts to invention. Hotchkiss v. Green

wood and analogous cases expounded. To show want of novelty in an invention the proofs must establish a prior use of that

which is in substance the same as the thing patented. Mere amplification of an original specification will not invalidate a reissue. A delay of nine years in pressing an application held not to be abandonment.

APPEAL from the circuit court of the United States for the District of Massachusetts.

Vol. IV.]

Smith v. GOODYEAR DENTAL VULCANITE Co.

[No. 2.

Mr. Justice STRONG delivered the opinion of the court.

A brief review of the history and nature of the patent which the complainants allege has been infringed will aid materially in solving the questions presented by this appeal. On the 14th day of May, 1852, Dr. John A. Cummings, a dentist of Boston, filed in the patent office a caveat to protect an invention he claimed to have made, of certain new and useful improvements in the setting and plates of artificial sets of teeth. The description accompanying the caveat indicated with very considerable clearness what the alleged invention was, and the objects sought to be gained by it. The improvement was declared to “consist in forming the plate, and also the gums in which the teeth are inserted, of rubber or some other elastic substance, so compounded with sulphur, lead, and other similar substances as to form a hard gum, or whalebone gum, rigid enough for the purposes of mastication, and pliable enough to yield a little to the mouth.” “By this improvement,” the caveator said, “ the teeth can be easily baked into the gums which form one piece with the plate.” Subsequently, on the 12th of April, 1855, he applied for a patent, reciting in his application that he had previously entered a caveat. His accompanying specification declared the invention to consist in “ forming the plate and gums to which the teeth are attached, of rubber or some other elastic material, so indurated as to be rigid enough for the purpose of mastication, and pliable enough to yield a little to the motions of the mouth, and in one piece, the teeth being imbedded in the elastic material while the material is in a soft condition, and then baked with the gums and plate, so that the teeth, gums, and plate will all be connected, forming, as it were, one piece.” This application for a patent was rejected on the 19th of May next following, and the applicant was referred to two printed publications, one suggesting the use of gutta percha as a base for artificial sets of teeth, and the other suggesting pastes, analogous to porcelain paste, as well as gutta percha. Cummings then amended his specification by striking out all reference to gutta percha or other merely elastic material, disclaiming the use of gutta percha, and any material which is merely rendered plastic by heat and hardened by cooling, and he claimed the improvement in sets of mineral, or other artificial sets of teeth, which consists in combining the teeth with a rubber plate and gums, which, after the insertion of the teeth, are vulcanized by Goodyear's process, or any other process, forming thereby a cheap, durable, and elastic substitute for the gold plates theretofore used. This amendment, however, proved ineffectual. The application for a patent was again rejected, and a third rejection followed a reconsideration for which the applicant had asked. This third rejection was on the 3d day of February, 1856. From that time onward for several years, indeed until the patent was finally granted, the evidence very satisfactorily shows that Dr. Cummings was in a condition of extreme poverty, utterly unable to bear the necessary expenses of prosecuting his case further. But he did not withdraw his application. He did not ask for a return of part of the fee he had paid, nor by any act of his did he indicate acquiescence in the unfavorable action of the patent office. On the contrary, he continued to assert his expectation of ultimately obtaining a patent, formed plans for his own action after it should be obtained, and comVol. IV.)

Smith v. GOODYEAR DENTAL VULCANITE Co.

[No. 2.

elle borrowed sometimes

plained of what he supposed to be the negligence of his solicitor. The proof of his extreme poverty is ample. His ill-health interfered with his working successfully in the line of his profession, and his family was subjected to great privations. He seems never to have had any considerable money. He borrowed sometimes small sums to purchase underclothing for himself. He made frequent applications to his friends for advances to enable him to prosecute his application for a patent, offering as a compensation for such advances, sometimes one quarter and sometimes one half of the patent when obtained. He appears never to have remitted his efforts until, in 1864, he induced Dr. Flagg, who had been his partner in former years, and Dr. Osgood to advance, first, one hundred dollars, and afterwards, seven hundred and twenty dollars, by means of which the patent was obtained. Even then he had not the twenty dollars necessary to be paid when it was allowed. For the assistance he thus received he gave one quarter of his invention. Before this time, between the third rejection of his application and his obtaining the advances mentioned, everything was done which was within his power. In February, 1859, in the midst of his pecuniary embarrassments, his solicitor applied to the patent office, not for a return of any portion of the fee paid, nor for a withdrawal of the application, but that the specification and one drawing might be sent to him. This request was refused. An attempt was then made for an appeal to the board, but that not being allowed by the commissioner, nothing further was done in the patent office until the applicant was enabled, by the funds obtained from Drs. Flagg and Osgood, to renew his endeavors. Then, on the 1st of March, 1864, he presented a petition for the grant of a patent to himself for the same invention which he had endeavored to secure in 1855 (the application for which remained in the office unwithdrawn), and accompanied his petition with a specification and drawings corresponding exactly with those he had previously made. This final effort was successful. The office practically acknowledged that the prior rejection had been an error, and declared that in justice to his rights as an inventor, the admission of his claim, limited to the use of hard rubber or vulcanite, as he had before limited it, would not be objected to. Accordingly the patent was granted on the 7th of June, 1864, and by sundry conveyances it subsequently became vested in the complainants. Two surrenders and reissues have since been made, the last dated March 21, 1865, and it is for an alleged infringement of this second reissue that the present suit has been brought. The bearing of this history upon the merits of the controversy will appear as we proceed to examine the several defences set up.

Among these the one perhaps most earnestly urged is the averment that the device described in the specification was not a patentable invention, but that it was a mere substitution of vulcanite for other materials which had previously been employed as a base for artificial sets of teeth, a change of one material for another in the formation of a product. If this is in truth all that the thing described and patented was; if the device was merely the employment of hard rubber for the same use, in substantially the same manner and with the same effect that other substances had been used for in the manufacture of the same articles, it may

mployment escribed in form

Vol. IV.)

Smith v. GOODYEAR DENTAL VULCANITE Co.

[No. 2.

be conceded that it constituted no invention. So much is decided in Hotchkiss v. Greenwood, 11 How. 248. But such is not our understanding of the device described and claimed. In the specification it is declared that the invention “ consists in forming the plate to which the teeth, or teeth and gums, are attached, of hard rubber, or vulcanite, so called, — an elastic material possessing and retaining in use sufficient rigidity for the purpose of mastication, and at the same time being pliable enough to yield a little to the motions of the mouth.” This is immediately followed by a description of the manner of the proposed use, that is, of making the hard rubber plates ; and the claim, as stated, is " the plate of hard rubber, or vulcanite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described,” that is, plainly formed as described. The invention, then, is a product or manufacture made in a defined manner. It is not a product alone separated from the process by which it is created. The claim refers in terms to the antecedent description, without which it cannot be understood. The process detailed is thereby made as much a part of the invention as are the materials of which the product is composed. We shall not quote at large the description of the mode of making the plate. Such a quotation would unnecessarily prolong this opinion. It plainly shows a purpose of the inventor to secure what had not been secured before, — a combination of a plate with artificial teeth, or with gums and teeth, in such a manner as to be free from the objections and defects or inconveniences attending the method before practised of attaching such teeth to a metallic plate fitted to the roof of the mouth. Some of these objections are stated — such as expense, hurting the mouth, impeding mastication, and obstruction to perfect articulation. In carrying out the purpose proposed the materials employed were all old. The teeth, the wax, the plaster, the molds, the soft rubber, and the hard rubber were none of them new. It is also true that the steps in the process were not all new. Plaster had been used for formation of molds. The process of forming a plate by the use of such molds was well known, and so was the process of converting a vulcanizable compound into vulcanite by heating it and allowing it to cool in molds. But the process of Dr. Cummings extended beyond the use of known materials and the employment of the processes mentioned. It was vulcanizing soft rubber in a mold and in contact with artificial teeth inserted in place into it while it remained in a soft condition. It was well described by the circuit judge as “the making of a vulcanite dental plate out of vulcanizable compound, into which the teeth were imbedded in its plastic condition, and the rubber compound, with the teeth thus imbedded in it, afterwards vulcanized by heat, so that the teeth, gums, and plate should be perfectly joined without any intervening crevices, and the plate should possess the quality of hard rubber or vulcanite.” The combination thus resulted in a manufacture which was “ one piece.” If, then, the claim be read, as it should be, in connection with the preceding part of the specification, and construed in the light of the explanation which that gives, the invention claimed and patented is “ a set of artificial teeth as a new article of manufacture, consisting of a plate of hard rubber, with teeth, or teeth and gums, secured thereto in the manner described in the specification, by imbed

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