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Vol. II.)

GILL v. WELLS.

(No. 3.

tain the chamber or tunnel described in the plaintiff's original specification.

Filled as the record is with proofs to establish the truth of the preceding statements, further argument upon the subject is unnecessary. Throughout the trial it was the constant aim of the defendant to defeat the plaintiff's action upon the three grounds mentioned: First, that the reissued patent was invalid, because it was not for the same invention as the original. Second, that the defendant did not infringe the plaintiff's invention, because his machine did not contain the chamber or tunnel of the plaintiff's invention, nor its appendages. Third, that the reissued patent was invalid as it respects the fourth claim of the same, because the combination contains only three of the four ingredients described in the original specification, and does not include either the chamber or tunnel or its appendages.

Unquestionably these several defences were pressed in many forms, and all must

agree that the court refused to sustain any one or all of them as often as they were presented by the defendant.

Attention will next be called to the specification of the reissued patent as the best means by which to determine whether the invention secured by it is or is not the same as that of the original. Wide differences between the two specifications are manifest in two important particulars :

1. That the whole description of the chamber or tunnel and its appendages is left out of the specification of the reissued patent, and that it contains a full description of other devices different from the chamber, in form at least, to perform the functions of the chamber and its appendages as described in the original specification.

Material matters are left out of the specification when compared with the original, and it is beyond dispute that new features are introduced in the description of the devices to be employed in guiding the fibres of the fur when taken from the feeding mechanism by the rotating brush or picker. They are picked and thrown toward the cone as in the other specification, in which it has already appeared that the representation is that they are guided and directed in the manner and for the purpose specified by the chamber and its appendages. Instead of that, the description in the reissued specification is that the function of guiding and directing the fur is effected by the following means. Nothing is said about the chamber, but the description is, that a plate is provided and placed under the brush, and that it extends toward the pervious cone, an open space being left between that end of the plate which is nearest the picker and the concave part below the feeding mechanism, that a current of air may enter freely to assist in carrying the fibres toward the cone as they are thrown by the brush or picker; and the further representation is that the plate guides the fibres as they are travelling and prevents too great an accumulation of them immediately around the lower edge of the cone, the greatest thickness of the bat being required to be deposited some distance above, that the hat, when made, may be thickest at and about the junction of the rim and crown, technically termed the band, and that it also prevents waste, as otherwise many of the fibres would be carried by the force of gravity below the influence of the currents travelling toward the cone, particularly toward the close of the opera

Vol. II.)

Gill v. WELLS.

(No. 3.

tion, when the currents induced by the exhausting fan become very faint.

Description is then given of the mode in which the plate is adjusted, and of the functions which it performs, as follows: That it rests on an adjusting screw, so that that end of it which is nearest the cone can be readily elevated or depressed relatively to the base of the cone, as it may ·be desired to vary the distribution of the fibres with a view to make hats with a broad or narrow rim, and with the rim thicker or thinner relatively to the other parts, the plate being made in two parts with a view to facilitate the distribution, the part beyond the supporting screw and nearest the cone being hinged to the other part and being provided with a cam or lever or other equivalent device.

Provision is also made for a device called an upper guide or deflector, which, as the representation is, extends from the feeding mechanism over the rotating brush or picker, and forward of it toward the cone, to direct the fibres and effect a proper distribution of them on the top of the code and down the sides thereof toward the base ; and the further representation is that the under surface of that guide or deflector nearest the picker brush is flat, or parallel with the axis of the picker brush, and thence, toward the other end, concave and of a gradually increasing concavity toward the cone, and that the apparatus may be supplied with an additional deflector further to diversify the distribution of the fibres, somewhat in the form of a hood, which is hinged to the end of the deflector nearest the cone, so that it can be moved by a cord passing over a pulley or a lever actuated by an eccentric or a cam on a shaft. Guides are also provided on each side of the deflector, extending from the picker brush toward the cone, to prevent the fur fibres from escaping laterally out of the proper influence of the currents which are travelling toward the cone, and which otherwise would go to waste, and also to prevent the fibres which are travelling toward the cone from being disturbed by lateral or foreign currents, not induced by the rotating brush or picker or by the exhausting of the cone. . No allusion even is made to the chamber or tunnel in describing the apparatus for guiding and directing the fibres thrown by the rotating brush or picker, except at the conclusion of the description, where the patentee states that, in the machine illustrated by the accompanying drawings, the bottom plate, top guides or deflector, and side guides are all united along their edges, which is an express admission that it is the chamber or tunnel and its appendages in the original specification that performs all these functions, and that the description given in the reissued patent is a new feature, describing devices different in form and with different names from the description given of the means to accomplish the same end in the original patent.

Differences so wide between an original and a reissued patent show that it was a bold measure to grant, as well as to ask for, such a reissue. Examples of the kind, if any, it is believed, are very few in which such a reissued patent has been granted where there is not a word in the original specification to support the theory that the patentee ever invented anything except his described combination, which, it is admitted, consisted of four ingredients, all of which were old. Complete description is given in

Vol. II.)

GILL U. WELLS.

(No. 3.

a

Such a

the original specification of that combination, but the specification does not contain the slightest evidence that the patentee ever made any other combination than that which embodies the four described ingredients.

Cases arise where a patentee, having invented a new and useful combination consisting of several ingredients which, in combination, compose an organized machine, also claims to have invented new and useful combinations of fewer numbers of the ingredients, and in such cases the law is well settled that if the several combinations are new and useful, and will severally produce new and useful results, the inventor is entitled to a patent for the several combinations, provided he complies with the requirements of the patent act, and files in the patent office a written description of each of the alleged new and useful combinations, and of the manner of making, constructing, and using the same.

He may give the description of the several combinations in one specification, and in that event he can secure the full benefit of the exclusive right to each of the several inventions by separate claims, referring back to the description in the specification; and if, by inadvertence, accident, or mistake, he should fail to claim any one of the described combinations, he may surrender the original patent and have a reissue, not only for the combination or combinations claimed in the original, but for any which were so omitted in the claims of the original patent.

Very different rules, however, apply in a case where the only invention described in the original patent is the one which includes all the ingredients of the machine, provided there is no suggestion, indication, or intimation that any other invention of any kind has been made. patentee as the one last mentioned may subsequently discover that he can accomplish a new and useful result by a combination embracing less than the whole number of the ingredients included in the prior patented combination, but he cannot secure the right and privilege of a patentee in the combination of the smaller number of the ingredients by a surrender of his first patent and a reissue of the same which shall include the second combination as well as the first, because the reissued patent, in that event would not be for the same invention as the surrendered original. Vance v. Campbell, 1 Black, 428.

Nor could that change be allowed under the present patent act for another reason equally decisive, which is, that the new description of the other combinations, besides the first, would constitute a new matter, the introduction of which into the specification of a reissued patent is expressly forbidden by the fifty-third section of that act. hibitory provision, it should be remembered, is new, and was not in force when the reissued patent in suit was granted. 16 Stats. at Large, 206.

None of the prior patent acts contained any such prohibition, but they all provided in terms that the reissued patent must be for the same invention as the original, and that the inventor, before he shall receive a patent for his invention, shall file in the patent office a written description of the same, and of the manner of making, constructing, and using the same, in such simple, concise, and exact terms as to enable any one skilled in the art to make, construct, and use the same.

As the ingredients are all old the invention in such a case consists en

Such a proVol. II.)

GILL v. WELLS.

(No. 3.

;

tirely in the combination ; and the requirement of the patent act, that the invention shall be fully and exactly described, applies with as much force to such an invention as to any other class, because, if not fulfilled, all three of the great ends intended to be accomplished by that requirement would be defeated. They are as follows: First, that the government may

. know what they have granted and what will become public property when the term of the monopoly expires. Second, that licensed persons desiring to practise the invention may know, during the term, how to make, construct, and use the invention. Third, that other inventors may know what part of the field of invention is unoccupied.

Purposes such as these are of great importance in every case, but the fulfilment of them is never more necessary than when such inquiries arise in respect to a patent for a machine which consists of a combination of old ingredients. Patents of that kind are much more numerous than any other, and consequently it is of the greatest importance that the description of the combination, which is the invention, should be full, clear, concise, and exact.

Patient search has been made in vain for any trace of the description of any other invention in the original patent than that of the combination of all the ingredients of the apparatus described by the patentee as the one used by him to effect the described patented result. "Unable to discover in that specification any description of any other invention than that, the court is of the opinion that none other was secured by the original patent.

Argument to show that an invention consisting of a combination for three ingredients which are old is not the same as that of a combination of four old ingredients is quite necessary, as the negative of the proposition is as well settled in the patent law as it is in mathematics. Vance v. Campbell, 1 Black, 428.

Four propositions were decided in that case which have an important application to the case before the court : First, that a patentee in a suit for an infringement of an invention consisting of a combination of old ingredients, cannot, in his proofs, abandon a part of such combination and maintain his claim to the rest, for the reason that unless the patented combination is maintained the whole of the invention fails. Second, that the patentee in such a suit cannot be allowed to prove that any part of the combination is immaterial or useless. Third, that the combination is an entirety, and that if one of the ingredients be given up the thing claimed disappears, which is an obvious truth, as the invention in such a case consists simply in the combination. Fourth, that the clause which provides that the suit shall not be defeated where the patentee claims more than he has invented, in case he shall disclaim such part, applies only where the part invented can be clearly distinguished from that improperly claimed, which shows that the clause cannot apply to a patent granted for an invention consisting of a combination of old ingredients. Case v. Brown, 2 Wall. 320; Burr v. Duryea, 1 Wall. 566.

Enough has already been remarked to show that all the principal claims of the original patent recognize the chamber or tunnel and its appendages as one of the primary ingredients of the patented invention, and it is absolutely certain that the specification of that patent contains neither

Vol. II.)

GILL v. WELLS.

(No. 3.

suggestion, indication, nor intimation that the original patentee made any other invention to accomplish the described functions than the one which includes the whole four described ingredients.

Suppose that it is so, still it is insisted by the plaintiff that the plate deflector and side guides, which are described in the specification of the reissued patent, are substantially the same thing as the chamber or tunnel of the original patent, and that those devices, taken together, are legally to be regarded as the equivalent of the chamber or tunnel and its appendages as described in the specification of the original patent.

Even a glance at the original specification is sufficient to show that it does not contain any description whatever of the plate, deflector, or side guides mentioned in the specification of the reissued patent, nor is it pretended that if the several devices named had been described in the original specification the description of these several devices would have been a good description of the chamber or tunnel and its appendages, which are embraced in the invention secured by that patent within the meaning of the act of Congress, which requires that the description shall be full, clear, concise, and exact. Clearly it could not be, as it would not accomplish any one of the three great purposes before named as the purposes for which the description is required.

Equivalents are doubtless allowed to a patentee or owner of the patent to shut out infringement, but the patent act furnishes no support to the theory that the patentee may surrender a patent for an invention consisting of a combination of old ingredients, and amend the descriptive parts of the specification by striking out the entire description of one of the ingredients of the combination and inserting in lieu thereof a full description of several other devices, without any allegation that they are the equivalents of the one whose description is stricken out, or any explanation whatever showing the reason why the change was made.

Whether one device is or is not an equivalent for another is usually a question of fact, and often becomes a difficult issue to decide. Grave doubts were at one time entertained, whether the patentee of an invention consisting of a combination of old ingredients was entitled to equivalents, but it is now well settled that he is, just as much as the patentee of any other class of inventions; but it is very important to understand what is meant by an equivalent of an ingredient in such a combination. Questions of the kind usually arise in comparing the machine of the defendant in a suit for infringement with that of the plaintiff, and the rule is that if the defendant omits entirely one of the ingredients of the plaintiff's combination, without substituting any other, he does not infringe ; and if he substitutes another in the place of the one omitted, which is new, or which performs a substantially different function, or even if it is old, but was not known at the date of the plaintiff's invention as a proper substitute for the omitted ingredient, he does not infringe. Carver v. Hyde, 16 Pet. 514 ; Brooks v. Fiske, 15 How. 210; Stimpson v. Railroad, 10 Ib. 329; Prouty v. Ruggles, 16 Pet. 341.

By an equivalent in such a case it is meant that the ingredient substituted for the one withdrawn performs the same function as the other, and that it was well known at the date of the patent securing the inven

proper substitute for the one omitted in the patented combination. Gould v. Rees, 15 Wall. 194.

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