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Vol. II.)

GILL v. WELLS.

(No. 3.

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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open the door in every case to issues of fact whether the substituted device is or is not an equivalent for the one withdrawn, within the rules defining what is meant by that term, which issues of fact might be determined one way in one case and another and a different way in another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

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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be competent for the court to decide, as a matter of law, that the ingredient substituted is an equivalent for the one withdrawn, as where a spring is substituted for a lever to produce power, or where a weight is substituted for a spring to produce pressure ; but the court could seldom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 substituted 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 whosè 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.)

GILL v. WELLS.

(No. 3.

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

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Vol. II.)

MURDOCK v. City of MEMPHIS.

(No. 3

tee to secure in a reissued patent inventions for combinations fewer in number than the whole described in the original patent, though the original patent contained no description whatever of any such inventions, in violation of the express provision of the patent act and of the decisions of this court.

Judgment reversed with costs, and the cause remanded with directions to issue a new venire.

Mr. Justice STRONG. I concur in the judgment, but not in all the positions taken in the opinion.

MURDOCK v. CITY OF MEMPHIS.

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1. The second section of the act of July 5, 1867, 14 U. S. Statutes, 385, operates as a

repeal of the twenty-fifth section of the judiciary act of 1789 ; and the act of 1867, as it is now found in the Revised Statutes, is the sole law governing the removal of causes

from state courts to this court for review, and has been since its enactment in 1867. 2. Congress did not intend, by omitting in this statute the restrictive clause of the act of

1789, limiting the supreme court to the consideration of federal questions in cases so removed, to enact affirmatively that the court should consider all other questions in

volved in the case that might be necessary to a final judgment or decree. 3. Nor does the language of the statute, that the judgment may be reëxamined and reversed or affirmed on a writ of error

in the same manner and under the same regulations, and the writ shall have the same effect as if the judgment or decree complained of had been rendered or passed in a court of the United States, require

the examination of any other than questions of federal law. 4. The phrase here used has reference to the manner of issuing the writ, its return, with

the record of the case, its effect in removing the case to this court, and the general rules of practice which govern the progress of such cases to final judgment, and is not intended to prescribe the considerations which should govern this court in forming

that judgment. 5. But the language of the statute, in making the jurisdiction of this court dependent

on the decision of certain questions by the state court against the right set up under federal law or authority, conveys the strongest implication that these questions alone

are to be considered when the case is brought here for revision. 6. This view is confirmed by the course of decisions in this court for eighty years, by

the policy of Congress, as shown in numerous statutes, conferring the jurisdiction of this class of cases in courts of original jurisdiction, viz., the district and circuit courts, whether originally or by removal from state courts, when it intends the whole

case to be tried, and by the manifest purpose which caused the passage of the law. 7. In construing the present statute as compared with the act of 1789, we are of opinion

that we are not so closely restricted to the face of the record in determining whether one of the questions mentioned in it has been decided in the state court, and that we may under this statute look to the properly certified opinion of the state courts when

any have been delivered in the case. 8. And we hold the following propositions as governing our examination and our judg

ments and decrees in this class of cases, under the statute as now found in the recent

revision of the acts of Congress: (1.) That it is essential to the jurisdiction of this court over the judgment or decree of

á state court that it shall appear that one of the questions mentioned in the statute must have been raised and presented to the state court; that it must have been decided by the state court against the right claimed or asserted by plaintiff in error, under the Constitution, treaties, laws, or authority of the United States ; or that such a docision was necessary to the judgment or decree rendered in the case. 2.) These things appearing, this court has jurisdiction, and must examine the judgment VOL. II.

8

Vol. II.)

MURDOCK v. CITY OF MEMPHIS.

(No. 3.

80 far as to enable it to decide whether this claim of right was correctly adjudicated

by the state court. (3.) If it finds that it was rightly decided, the judgment must be affirmed. (4.) If it was erroneously decided, then the court must further inquire whether there is

any other matter or issue adjudged by the state court sufficiently broad to maintain the judgment, notwithstanding the error in the decision of the federal question. If this be found to be the case, the judgment must be affirmed, without examination into

the soundness of the decision of such other matter or issue. (5.) But if it be found that the issue raised by the question of federal law must control

the whole case, or that there has been no decision by the state court of any other matter which is sufficient of itself to maintain the judgment, then this court will reverse that judgment, and will either render such judgment here as the state court should have rendered, or will remand the case to that court for further proceedings, as the

circumstances of the case may require. 9. These principles applied to the present case show that we have jurisdiction of it, and

that the judgment of the state court must be affirmed.

MR. JUSTICE MILLER delivered the opinion of the court.

In the year 1867, Congress passed an act, approved February 5th, entitled an act to amend An act to establish the judicial courts of the United States, approved September twenty-fourth, seventeen hundred and eighty-nine.

See 14 United States Statutes, 385. This act consisted of two sections, the first of which conferred upon the federal courts and upon the judges of those courts additional power in regard to writs of habeas corpus, and regulated appeals and other proceedings in that class of cases. The second section was a reproduction, with some changes, of the twenty-fifth section of the act of 1789, to which, by its title, the act of 1867 was an amendment, and it related to the appellate jurisdiction of this court over judgments and decrees of state courts.

The difference between the twenty-fifth section of the act of 1789 and the second section of the act of 1867 did not attract much attention, if any, for some time after the passage of the latter. Occasional allusions to its effect upon the principles long established by this court under the former began at length to make their appearance in the briefs and oral arguments of counsel, but were not found to be so important as to require any decision of this court on the subject.

But in several cases argued within the last two or three years the proposition has been urged upon the court that the latter act worked a total repeal of the twenty-fifth section of the former, and introduced a rule for the action of this court in the class of cases to which they both referred, of such extended operation and so variant from that which had governed it heretofore that the subject received the serious consideration of the court. It will at once be perceived that the question raised was entitled to the most careful examination, and to all the wisdom and learning, and the exercise of the best judgment which the court could bring to bear upon its solution, when it is fairly stated.

The proposition is, that by a fair construction of the act of 1867 this court must, when it obtains jurisdiction of a case decided in a state court, by reason of one of the questions stated in the act, proceed to decide every other question which the case presents which may be found necessary to a final judgment on the whole merits. To this has been added the further suggestion, that in determining whether the question on which the jurisdiction of this court depends has been raised in any given case, we

Vol. II.)

MURDOCK v. City of MEMPHIS.

(No. 3.

but we

are not limited to the record which comes to us from the state court, the record proper of the case as understood at common law, may resort to any such method of ascertaining what was really done in the state court as this court may think proper, even to ex parte affidavits.

When the case standing at the head of this opinion came on to be argued, it was insisted by counsel for defendants in error that none of the questions were involved in the case necessary to give jurisdiction to this court, either under the act of 1789 or of 1867; and that if they were, there were other questions exclusively of state court cognizance which were sufficient to dispose of the case, and that, therefore, the writ of error should be dismissed.

Counsel for plaintiffs in error, on the other hand, argued that not only was there a question in the case decided against them which authorized the writ of error from this court under either act, but that this court, having for this reason obtained jurisdiction of the case, should reëxamine all the questions found in the record, though some of them might be questions of general common law or equity, or raised by state statutes. unaffected by any principle of federal law, constitutional or otherwise.

When, after argument, the court came to consider the case in consultation, it was found that it could not be disposed of without ignoring or deciding some of these propositions, and it became apparent that the time had arrived when the court must decide upon the effect of the act of 1867 on the jurisdiction of this court as it had been supposed to be established by the twenty-fifth section of the act of 1789.

That we might have all the aid which could be had from discussion of counsel, the court ordered a reargument of the case on three distinct questions which it propounded, and invited argument, both oral and written, from any counsel interested in them. This reargument was had, and the court was fortunate in obtaining the assistance of very eminent and very able jurists. The importance of the proposition under discussion justified us in delaying a decision until the present term, giving the judges the benefit of ample time for its most mature examination.

With all the aid we have had from counsel, and with the fullest consideration we have been able to give the subject, we are free to confess that its difficulties are many and embarrassing, and in the results we are about to announce we have not been able to arrive at entire harmony of opinion.

The questions propounded by the court for discussion by counsel were these :

1. Does the second section of the act of February 5, 1867, repeal all or any part of the 25th section of the act of 1789, commonly called the judiciary act ?

2. Is it the true intent and meaning of the act of 1867, above referred to, that when this court has jurisdiction of a case, by reason of any of the questions therein mentioned, it shall proceed to decide all the questions presented by the record which are necessary to a final judgment or decree?

3. If this question be answered affirmatively, does the Constitution of the United States authorize Congress to confer such a jurisdiction on this court?

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