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Vol. II.]

GILL v. WELLS.

[No. 3.

such paper as collateral security for a prior debt is sufficient to shut out equitable defences. See also Reddick v. Jones, 6 Iredell, 107; Vallette v. Mason, 1 Smith, 89; Allaire v. Hartshorn, 1 Zabriskie, ; Chicopee Bank v. Chapin, 8 Metcalf, 40; 3 Kent's Commentaries, 96; Allen v. King, 4 McLean, 128.

We think that we are justified by the authorities cited in holding that whether or not Jewett & Sons received the bill in question in absolute discharge of their debt, or as a security merely, they were holders for value. Were they bona fide holders without notice? On this point there can be no doubt. It is true that they knew that Hone was an accommodation acceptor, but the paper was transferred to them to accomplish the very purpose Hone had in view in making the acceptance. They are now only calling upon Hone to do what he agreed to do when he put his name upon the bill.

To say that because Hone received no consideration from Christoe & Struthers for the acceptance, and that plaintiffs knew the fact, does not relieve Hone, for, as we have seen, the plaintiffs took the bill for value.

To hold that because Hone was an accommodation acceptor, and the plaintiffs knew it, therefore the bill is not good, would be to strike a fatal blow at all discounts of negotiable securities for preëxisting debts. Upon such a doctrine, what would become of that large class of cases where new notes are given by the same or other parties by way of renewal or security to banks in lieu of old securities discounted by them which have arrived at maturity?

We are of opinion, therefore, upon the whole case, that the evidence offered to sustain the defence can be of no avail, and we therefore sustain the motion to exclude it from the jury.

ERSKINE, J., concurred.

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The use of all the parts of a combination except one, and, instead of that, what was known at the date of the patent to be a proper substitute for the omitted part, is infringement. But there is no infringement in the use of any other substitute which performs a new function.

A combination of four parts is not the same invention as a combination of three of them without the fourth.

A patent for a combination of four parts cannot be reissued for a combination of three with a substitute for the fourth, unless it was known at the date of the patent to be a proper substitute.

A patent for a combination of four parts, which does not suggest any other improvement, cannot be reissued with a claim for a combination of three of the parts, omitting all reference to the fourth.

Vol. II.]

GILL v. WELLS.

[No. 3.

CLIFFORD, J. Valid letters patent may be granted for an invention which consists entirely in a new combination of old ingredients, provided it appears that the new combination of the ingredients produces a new and useful result; but the rule is equally well settled, in such a case, that the invention consists merely in the new combination of the ingredients, and that a suit for an infringement cannot be maintained against a party who constructs or uses a substantially different combination, even though it includes the exact same ingredients.

Alterations, however, in a combination, which are merely formal, do not constitute a defence to the charge of infringement, as the inventor of a new and useful combination of old ingredients is as much entitled to claim equivalents as any other class of inventors; but they cannot suppress subsequent improvements which are substantially different from their inventions, whether the new improvement consists in a new combination of the same ingredients or of some newly discovered ingredient, or even of some old ingredient performing some new function not known at the date of the letters patent as a proper substitute for the ingredient withdrawn.

Old ingredients known at the date of letters patent granted for an invention, consisting of a new combination of old ingredients, if also known at that date as a proper substitute for one or more of the ingredients of the invention, secured by the letters patent, are the equivalents of the corresponding ingredients of the patented combination. Such old ingredients, so known at the date of the letters patent granted, are the equivalents of the ingredients of the patented combination, and no others, and it may be added that that, and that only, is what is meant by the rule that inventors of a new combination of old ingredients are as much entitled to claim equivalents as any other class of inventors.

Reissued patents, in order that they may be valid, must be for the same invention as the surrendered originals. Inoperative or invalid patents, which are so by reason of a defective or insufficient specification, or by reason that the patentee claimed as his own invention or discovery more than he had a right to claim as new, may be surrendered if the error arose by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention; and the provision is that the commissioner, in that event, shall, upon the payment of the sum required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the proper party, as prescribed in the fifty-third section of the patent act. 16 Stat. at Large, 206.

Unquestionably the specifications in such a case may be amended to correct an error which has arisen by inadvertence, accident, or mistake, if without any fraudulent or deceptive intention; but the express provision in the new patent act is that no new matter shall be introduced into the specification, and that in the case of a patent for a machine neither the model nor drawings shall be amended, except each by the other, which is a very important provision to secure the fulfilment of the condition that the reissued patent shall be for the same invention as that secured by the original patent.

Matters of law only are in dispute here between the parties, as the judgment of the circuit court was rendered in a suit at law for the infringement of a patent, and the cause was removed into this court by a writ of

Vol. II.]

GILL v. WELLS.

[No. 3.

error to revise the rulings and instructions of the circuit judge; but it will be necessary to refer somewhat fully to the specification of the original patent, and to compare the same with the specification of the reissued patent, which is the patent in suit, in order to understand the exact nature and scope of the controlling questions presented for decision.

Separate examination of the numerous questions involved in the bill of exceptions will not be attempted, as it would extend the opinion to an unreasonable length, nor will it be attempted to pass in review more than two or three matters assigned for error in this court, as it is scarcely probable that many of them will be of much importance if the parties elect to go to a new trial.

Exact description of the invention was given in the specification of the original patent, which affords the most ample means to define the nature and scope of the improvement actually made by the patentee as secured by that patent.

My improvements, he says, consist in feeding the fur, after it has been picked, to a rotating brush, between two endless belts of cloth, one above the other, the lower one horizontal, and the upper one inclined to gradually compress the fur and gripe it more effectually where it is presented to the rotating brush, which moves at great velocity, and throws it into a chamber or tunnel, which is gradually changed in form toward the outlet, where it assumes a shape nearly corresponding to a vertical section, passing through the axis of the cone, but growing narrower, for the purpose of concentrating and directing the fur thrown by the brush to the cone.

Currents of air enter at the same time through an aperture immediately under the brush, in consequence of the rotation of the brush and the exhaustion of the cone, for the purpose of more effectually directing the fibres toward the cone, which is placed just in front of the delivery aperture of the chamber or tunnel, which aperture is provided at the top with a bonnet or hood, hinged thereto, and at the bottom with the hinged flap, to regulate the deposit of the fibres on the cone or other former, with the view to distribute the thickness of the bat wherever more is required to give additional strength to the manufacture.

Means are also described for holding the fibres composing the bat onto the cone, so that the bat may be removed from the cone or former before the hardening process is applied; and for that purpose the representation is that the patentee first covers it with felted or fulled cloth, and then he employs one or two metallic cones: one to put over the bat after it has been surrounded with the moist cloth, for the purpose of making pressure on the fibres and to allow hot water to circulate when the whole is immersed therein to harden the bat preparatory to felting; and the other metallic cone is to be placed within the perforated one on which the bat has been formed, and which is necessarily thin and weak, for the purpose of resisting the pressure of the surrounding water, consequent upon a partial vacuum produced within, when the whole is withdrawn from the

water.

Special reference is then made to the drawings, and a detailed description is given of every device included in the apparatus and of the functions which the respective devices of the apparatus perform. Superadded to those details is a general description of the mode in which the described

Vol. II.]

GILL v. WELLS.

[No. 3.

apparatus operates, and of the result which it accomplishes, in substance as follows: As the fibres are first presented they are acted upon by the brush, which moves with great velocity, and they are properly laid by its downward action, but when liberated they are carried down the curved surface of the chamber or tunnel, and at the lower edge of that device they meet a current of air that enters a narrow aperture near the bottom of the chamber or tunnel, which extends the whole length of the brush, and prevents the fibres from falling and resting on the bottom of the chamber or tunnel, and carries them onto the perforated cone.

Minute description is also given of the chamber or tunnel, and of its appendages, and of the functions which it performs, as follows: That it extends over and under the brush, and is so arranged as to have a slight motion, the axis of which is the same as that of the brush, and that its bottom rests on set-screws to regulate the delivery end of the same relatively to the cone; that its forward end is provided with a hinged flap regulated by a cam-lever as the means of regulating the delivery of the fibres; that its top is gradually elevated and that the sides are contracted to make the delivery aperture nearly of the form of the cone, but narrower and higher; that its upper part is provided with a hood so curved as to correspond generally with the curve of the top of the cone.

Particular description is also given of the mode in which the hood is arranged, and of the functions which it performs, as follows: That it is hinged to the upper part of the delivery aperture of the chamber, and that it is connected with an eccentric by means of a cord and bell-crank passing over a pulley, so that each revolution of the eccentric carries the hood up and down to direct the discharge of the fibres and to distribute the same onto the cone, giving a greater thickness in the parts of the hat which form the brim and edge than on the top and crown, and he suggests the means to be employed by the manufacturer when it is desired still further to diversify the distribution of the fibres.

Intelligent description is also given of the cone and of the functions which it performs, and of the whole mode of operation from the time the fibres are placed upon the feed-apron until the hat is formed; but there is no trace of any suggestion or intimation that the operation can be performed or the patented result be produced without the chamber or tunnel. Instead of that, it is unquestionably true that the chamber or tunnel is a material ingredient of the combination and an essential feature of the described invention. Unmistakable support to that view, if any be needed beyond what is disclosed in the description given of the same, is also derived from the claims of the patent, three of which in express terms describe the invention as a combination and include the chamber or tunnel as one of the ingredients of the combination. Besides the evidence in that direction, derived from the first three claims, the fourth claim is for the employment of the hinged hood to regulate the proper distribution of the fibres, which device is obviously but a mere appendage of the chamber or tunnel, in terms included in the described combination.

Such a combination, if new and useful, and if it produces a new and useful result, is the proder subject of a patent to secure to the owner or proprietor the exclusive right to make, use, and vend the thing patented

Vol. II.]

GILL v. WELLS.

[No. 3.

for the period allowed by the patent act. Beyond doubt such a patent is valid and operative, but the rights of the patentee under it differ in one respect from those of a patentee for an invention which consists of an entire machine, or of a new and useful device, as the rights of a patentee for a mere combination of old ingredients are not infringed unless it appears that the alleged infringer made or used the entire patented combination. Gould v. Rees, 15 Wall. 194.

Invalid and inoperative patents may be surrendered and reissued for the same invention, but Congress never intended that a patent which was valid and operative should be reissued merely to afford the patentee an opportunity to expand the exclusive privileges which it secures, to enable him to suppress subsequent improvements which do not conflict with the invention described in the surrendered patent. Evidence of a decisive character to negative the theory that such a practice finds any support in the act of Congress, besides what existed before, is found in the new patent act, which expressly provides that no new matter shall be introduced into the specification; and in case of a machine patent, that neither the model nor the drawings shall be amended, except each by the other.

Two or three only of the errors assigned will be much considered. They are in substance and effect as follows: First, that the court erred in refusing to instruct the jury that the reissued patent is invalid because it is not for the same invention as the original. Second, that the court erred in refusing to instruct the jury that the defendant's machine did not infringe the fourth claim of the plaintiff's patent unless it had the feeding device of the original patent in combination with the rotating brush or picker, and the pervious cone and the chamber or tunnel described in the original specification. Third, that the court erred in instructing the jury that the reissued patent is valid as respects the fourth claim, if the combination of the three ingredients therein mentioned was new and could be usefully employed for the purpose of facilitating the making of hat bodies, supplemented by any known means of guiding the fur in such a way as to bring, by the operation of these three devices, the fur to the cone so as to make a hat body, or if those three devices would make a hat body without the aid of other means of protecting the fur against escape that would be serviceable for any purpose, then it was patentable, even without the trunk, which is also called the chamber or tunnel.

Three or more important propositions of patent law are involved in the exceptions covered by the assignment of errors, which it becomes important to restate with some care, because neither the prayers for instructions, nor the rulings of the court in refusing the same, nor the instructions given, nor the assignment of errors, are in every respect free from ambiguity.

Perhaps no one of the prayers for instruction corresponds in precise terms with either of the first two propositions, but it is nevertheless true that many of them, as applied to the separate claims of the patent, did raise the questions involved in those propositions, and it is equally certain that the court in several instances ruled to the effect that the reissued patent was not invalid for the reason assigned, and that the machine of the defendant did infringe that of the plaintiff, even though it did not con

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