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The American Diamond Rock Boring Company v. Sheldon.

that corrected by another surrender and re-issue, as was done. The second re-issue was proper, as stated by Shipman, J., in the case before cited, and it would not be affected at all by the faults of the first re-issue, but would correct them. In Thomas v. Shoe Manufacturing Co., (16 Off Gaz. of Pat. Off., 541,) Mr. Justice Clifford said: “Where the Commissioner accepts a surrender of an original patent and grants a new patent, his decision in the premises, in a suit for in. fringement, is final and decisive, and is not re-examinable in such a suit in the Circuit Court, unless it is apparent upon the face of the patent that he has exceeded his authority, that there is such a repugnancy between the old and the new patent that it must be held, as matter of legal construction, that the new patent is not for the same invention as that embraced or secured in the original.” Inquiries in such a case are restricted to a comparison of the terms and import of the two patents, in view of the drawings and Patent Office model. If, from these it results that the invention clained in the re-issue is not substantially different from the one described, suggested or indicated in the specification or drawings of the original patent or Patent Office model, the re-issued patent must be held valid, as all other alterations and amendments plainly fall within the intent and purpose of the provision in the Act of Congress, which allows a surrender and re-issue; or, in other words, if the re-issued patent does not, upon the face of the instrument, embrace anything not substantially described, suggested or indicated in the specifications, drawings or model of the original, the defence that the re-issued patent is not for the same invention as the original must be overruled.” Under this rule, upon this question in this case, there is nothing to do but to compare the re-issue upon which the suit is brought with the original patent, disregarding all else, to see if the new invention patented in this re-issue is the same that is in any manner described in any part of the original ; not whether it was patented, or even thought or sought to be, there, but whether it appears, from what is there, that it might have been patented there if it had been thought of

The American Diamond Rock Boring Company v. Sheldon.

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and desired. Upon such comparison, there is nothing in the re-issue which is not in the specification of the original distinctly mentioned, although, as argued, it is not all claimed. It is quite clear, upon principle and authority, as well as upon the former adjudication, that this re-issue is valid.

Upon the question of infringement, it appears that the defendants make use of as much of Leschot's invention as he would, in removing as much of the rock as he would remove, by cutting. By his method he would cut an annular hole and leave a core to be removed otherwise. They cut what would be the annular hole by the same means and in the same way. They have added, in the middle of their drill, enough similarly cutting material to cut away the core also, but they none the less cut away the rest by his method. This addition is an improvement, when it is not desirable to save the core,

but Leschot’s drill is made use of as a basis for the improvement, and the owners of the patent, as also held by Judge Shipman, in the former case, cannot be improved out of their right to it. The case, in this respect, is somewhat like Electric Telegraph Co. v. Brett, (4 Eng. Law & Eq. R., 347.) That patent was for giving signals at distant places by means of electric currents sent through metallic circuits consisting of wires extending to the places and back. The de fendants made use of the earth, to complete the circuits, in place of the returning wire, and claimed that this constituted the whole a different machine that was not an infringement. It was held, however, that they made use of so much of the patented invention as was involved in the wire which they did use and its operation, and they were made liable for that infringement.

It is stoutly insisted, in behalf of the defendants, that the invention was of, and the patent for, a mere tool, and not for any machine, combination or arrangement, and that the drill used by the defendants is a very different tool, especially in form and appearance. It is true, that the two do not, at first, look alike, but that is not by any means a full or accurate test. The outward form of them is not at all material. Their

The American Diamond Rock Boring Company v. Sheldon.

operation and performances are what are important. In Machine Co. v. Murphy, (97 U. S., 120,) Mr. Justice Clifford, in speaking of such a question, again said : “Except where form is of the essence of the invention, it has but little weight in the decision of such an issue, the correct rule being, that, in determining the question of infringement, the Court or jury, as the case may be, are not to judge about similarities or differences by the names of the things, but are to look at the machines, or their several devices or elements, in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function, in substantially the same way, to obtain the same result, always bearing in mind, that devices in a patented machine are different, in the sense of the patent law, when they perform different functions, or in a different way, or produce a substantially different result. Nor is it safe to give much heed to the fact, that the corresponding device in two machines organized to accomplish the same result is different in shape or form, the one from the other, as it is necessary, in every such investigation, to look at the mode of operation or the way the device works, and at the result as well as at the means by which the result is attained. Inquiries of this kind are often attended with difficulty, but, if special attention is given to such portions of a given device as really do the work, 80 as not to give undue importance to other parts of the same which are only used as a convenient mode of constructing the entire device, the difficulty attending the investigation will be greatly diminished, if not entirely overcome.”

Here, the thing invented and the device which the defendants use are parts of machines. The operative things which do the work are the diamonds which abrade the rock, and the water which carries off the detritus. The stock merely holds the diamonds in place upon itself and imparts its motion to them. In each machine the diamonds work with their forward faces, by having a rotary and progressive forward motion given to them by means of the stock; and, in each, the

The New Orleans.

water does its work by being injected through the stock and flowing out around it. The form of the stock is of no importance, further than to hold the diamonds and admit the flow, in and out, of the water. The flush stocks or heads do both of these precisely as the receding ones do. They, doubtless, hold the diamonds more firmly and better, because the diamonds are imbedded deeper in them, but not because they are held otherwise than by being imbedded in them. They cut more of the hole, but do it by the same means, operating in the same manner. The corresponding parts in each perform no different functions and produce no different results. It is quite plain, upon this comparison, in the light of the rule laid down in the case mentioned, that the defendants do make use of the patented invention, and thereby infringe upon the exclusive rights of the orator.

Let a decree be entered for an injunction and an account, according to the prayer of the bill.

Charles F. Blake, for the plaintiff.

E. J. Phelps and W. G. Veazey, for the defendants.

THE NEW ORLEANS.

Where, in a suit in rem, in Admiralty, in the District Court, the claimant, after

a decree for the libellant, appeals to this Court, and this Court decrees for the libellant for a sum sufficient to allow of an appeal by the claimant to the Supreme Court, which may be a supersedeas, no summary judgment can be rendered by this Court against the sureties in the appeal bond executed on the appeal to this Court, until after the expiration of ten days after the rendering of the decree by this Court.

(Before BlatouFORD, J., Southern District of New York, October 11th, 1879.)

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The New Orleans,

BLATCHFORD, J. This is a suit in Admiralty. The District Court, on the 11th of June, 1877, rendered a decree that the libellants recover against the steamer, for damages, interest and costs, $16,505 65. The claimants of the steamer were John H. Clark, Samuel H. Seaman, Cornelius H. Delamater, John Baird and Alfred Moulton. The said claimants appealed from the said decree to this Court. On said appeal, the said Seaman, Clark and Delamater executed a bond to the libellants in the penalty of $18,000, with the condition that the obligation should be void, “if the above-named appellants shall prosecute said appeal with effect, and pay all damages and costs which shall be awarded against them as such appellants therein, if they shall fail to make said appeal good,” and that otherwise said obligation should remain in full force and effect. The libellants appealed from other parts of the decree of the District Court. This Court, by a decree filed September 5th, 1879, affirmed in all things the said decree of the District Court, and ordered that the libellants recover against the steamer the damages ascertained by the decree of the District Court, namely, $15,904 98, and interest at the rate of 6 per cent. per annum, from June 11th, 1877, on $14,026 92, (being so much thereof as is exclusive of the interest allowed by the District Court,) and amounting to $1,866 67, being, in all, $17,771 65, and also the costs of the District Court, taxed at $690 67, and that the costs of this Court be divided and set off each against the other. The decree further provided as follows: "And it is further ordered, that, unless an appeal be taken from this decree within ten days after its entry, and service of a copy thereof, and security given on such appeal to stay execution, John II. Clark and Samuel H. Seaman, the stipulators for value of the said steamer, cause the engagements of their stipulations to be performed, or show cause, within four days after the expiration of such ten days, or on the first day of jurisdiction thereafter, why execution for the sum of $40,000, the amount of their said stipulation, should not issue against their goods, chattels and lands; and it is further ordered, that the same

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