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Gill v. WELLS.
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. Such a 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. Such a prohibitory 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 in. vention 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
shall at the inpetent must Prohibit
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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 fulfilinent 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 Gill v. Wells.
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 invention as a proper substitute for the one omitted in the patented combination. Gould v. Rees, 15 Wall. 194.
GILL v. WELLS.
Hence it follows that a party who merely substitutes another old ingredient for one of the ingredients of a patented combination is an infringer if the substitute performs the same function as the ingredient for which it was substituted, and was well known at the date of the patent as a proper substitute for the omitted ingredient; but the rule is otherwise if the ingredient substituted was a new one, or performed substantially a different function, or was not known at the date of the plaintiff's patent as a proper substitute for the one omitted, as in that event he does not infringe. Roberts v. Harnden, 2 Cliff. 504.
Inconveniences past estimation would result if those rules should be applied in defining the rights of a patentee to make amendments to the specification of an original patent when applying for a reissue, as it would open the door in every case to issues of fact whether the substituted device is or is not an equivalent for the one withdrawn, within the rules defining what is meant by that term, which issues of fact might be determined one way in one case and another and a different way in another case. Nor can those rules be applied in such a case consistently with the language of the section allowing a surrender and reissue, which is limited to the correction of errors which have arisen from inadvertence, accident, or mistake, nor without further disregard either of the condition that the reissue shall be for the same invention as the original, or the clause of the twenty-sixth section, which provides that before any inventor shall receive a patent for his invention he shall file in the patent office a written description of the same in such full, clear, concise, and exact terms as to enable any one skilled in the art to make, construct, and use the same.
Substitution of one ingredient for another may perhaps be made in cases where it would be competent for the court to decide, as a matter of law, that the ingredient substituted is an equivalent for the one withdrawn, as where a spring is substituted for a lever to produce power, or where a weight is substituted for a spring to produce pressure ; but the court could seldom or never, in a suit at law, undertake to determine without a jury whether a particular ingredient şubstituted in a reissued patent was or was not known at the date of the original patent as a proper substitute for the one withdrawn from the combination described in the original specification.
Viewed in the light of these several suggestions, the court is of the opinion that it is not competent for a patentee, when he surrenders an original patent, to amend the specification for the new patent by striking out from the original the correct description of one of the ingredients of the patented combination and to substitute in its place the description of other devices not well known at the date of the original 'patent as a proper substitute for the ingredient whose description is stricken out.
2. Just the same considerations are involved in the second proposition, which, therefore, requires no further discussion, as it is fully maintained by the reasons given in support of the first proposition.
3. Even grant that neither of the rules laid down in the two preceding propositions are correct, still the court is unhesitatingly of the opinion that the judgment in this case must be reversed, for the reason that the Vol. II.]
Gul v. WELLS.
instructions given to the jury are erroneous, inasmuch as they do not correctly define the meaning of an equivalent as applied to the ingredients of an invention consisting entirely of a combination of ingredients all of which are old.
Assume the theory that the patentee of such a patent, in effecting a reissue, may strike out from the original specification the description of one of the ingredients of the patented combination, and insert as a substitute therefor in the new specification the description of an equivalent for the same, which is denied, still it is clear law that the substituted ingredient cannot be regarded as a legal equivalent, within the meaning of the patent law, unless it performs substantially the same function as the ingredient withdrawn, and was well known as such an ingredient at the date of the original patent, and as a proper substitute for the ingredient which was included in the patented combination.
Questions of the kind usually arise where it becomes necessary to determine whether the defendant is guilty of an infringement, in case it appears that he has not used all of the ingredients of the patented combination of the plaintiff. Repeated decisions of this court have settled the rule in such cases that if the ingredient substituted by the defendant for the one left out in the defendant's machine was a newly discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's patent as a proper substitute for the ingredient left out, the charge of infringement cannot be maintained. Gould v. Rees, 15 Wall. 193; Seymour v. Osborne, 11 Wall. 555; Vance v. Campbell, 1 Black, 428; Prouty v. Ruggles, 16 Pet. 341.
Tested by these considerations, the court here is of the opinion that the judgment of the circuit court must be reversed for three reasons, as follows: First, that the prayer for instruction presented by the defendant, that the reissued patent is not for the same invention as the original, was improperly refused. Second, that the circuit court improperly refused to instruct the jury that the defendant did not infringe the plaintiff's patent unless the apparatus had the feeding device in 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 circuit 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 is 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 the same, by the operation of these three devices, 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.
Two errors are contained in that instruction, as follows:
1. It gives an erroneous definition of an equivalent for the ingredient of a combination consisting wholly of such as are old, as the substituted ingredient in such a case must be one which was known at the date of the original patent as a proper substitute for the ingredient left out, which latter qualification is entirely omitted in the instruction given to the jury.
2. But the instruction is also erroneous because it would allow a paten