'i'JIDERAL· REPORTER.
vol. 49.
was:pa:tented.Tliat the defendants infringe is. r think, also clear. It s trUe that. the escape pipe of their purifier is connected to the steampipe which supplies the steam to run the' feed-pump,and is not connectedtothedome of the boiler; but the variation is not material, and does not make the defendants any' less infringers. The decree will be for the complainant, for an injunction, with costs.
VULCANIZED FmER '(O£rcuit PJ,'fBNTlWOB hcvBNTION8'" hcvBNTlON ETC.
Co. ". TAYLOR.
DekItware. July97,1891.) SUBSTITUTION OJ' MATBBULB- CJLuR BAClU,
Letters patent No. 185;576, issued December 19, 1876, to Reuben H. Plass, for an improvement in seats andbacklJ for chJ\irs, and claiming simply the substitution of vulcanized llber for veneers, coated paper, metal, etc., are void for want of inventi.on, as .the application of an old material to a new use, as a mere substitute, is in no seuse an tilvention or discovery. Smith v. VUZCanite Co., 93 U. S. 486, distinguished. _ .."" ' ,
M. Taylor for infringement Of a patent. On motion for preliminary in'junction. '.. Denied. . " . Bradford & Vandegrift, for COmplainants.' Wm; S. Bilks, for defendant. . . , .
In Equity.
Suit by the Vulcanized Fiber Company against Edward
No. 185,576, dated December 1876, for an improvementih seats and backs for chairs, were issued :to Reuben H. Plass,aI)d subsm:wmtly. by sundry mesne assignments, l?ecame the property of the corporatl0n,which now sues defendant for . The defense is want of novelty and :t,ij", consequent the. alleged improvement. The spec.itleatij)n states the objeCt Qf the improvement to beA. seat or back for cha,1J;s, loungeS, of greater durability, aitd rigidity, and less liable aflectlld by the atmosphere ethan those of the ordinary coated paper, metal, and other materials have been employed as substitutes for cane and leather in the manufactUre of seats and backs for chairs, etc., but to a greater or less degree have faIled to meet the requirements of a practical article. It '.. After detailing the objections to other materials, and· in the making of chair seats and backs, the specification continues: "My imprOVed seat, which is liable to none of these objections, consists of :vegetable fiber formed Into a sheet which is tough, elMtic, light in weight, flexible. yet possessing the requisite stiffness, extremely durable, and of any ,J'equired color." The specification nextdesoribea the process of making the vegetable ,fiber,and concludes:
WALES, District Judge.
VULcANIZED FIBER CO. V. TA YI,OR.
745
"The material thus prepared Is termed · vulcanized fiber,' and may be used in sheets or strips, solid or perforated, and applied to either the bottoms or backs of chairs, lounges, and other furniture. 1 do n_ot claim vulcanized tiber, as that is not my invention. My invention relates 6nlyto the ment of chair seats, backs, etc., and consists in the application of the material herein named in the manner set forth. I claim, as a new manufacture, s seat or back for chairs, lounges, etc., consisting, in whole or in part, of vulcanized tiber,-that Is, vegetable fiber prepared by treating it with chloride of zinc, or its equivalent, consQlidating and dryinK asset forth."
Does this claim, in connection with the specification, present a' entable invention? The provisions ofthe constitution, art. 1, § 8, subd. 8, is that congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writingS and discoveries. The benefiCiary must be an inventor, and must have made a discovery. The patent law has always carried out this idea. In the act of July 8,187:0·. (16 St. p. 201, § 24,) the patentee was required to be a, person whQ had "invented or discovered any new and useful.art, machine, manufacture,. or combinll,tion of matter, or any new or useful improvement thereof;" and that language is reproduced in section 4886, Rev. St. So it is not enougll that a thing shall be new, in the sense that in the shape or in which it is produced it shall not have been before known, and that,it shall be usefuljbut it must, under the .constitution and the statute, amount to an invention or discovery. Thompson v. Boisselier, 114 U. S. 5 Sup. Ct. Rep. 1042. . What did Plass claim to have invented or discovered? Not the cess of niaking vulcanized fiber, for that he expressly disclaims, but simply the substitution of that material in the place of wood, iron, or, leather. The substitute purposes no new function, nOr does it produce, in combina.tion with old materials, a new result. The application of a material that was never before used in making chairs did not require the He may have been the first person to exercise of the inventive see the adaptability of vulcanized fiber to this purpose, and to reduce it to practieej but that was nothing more than the judicious selection of a material for two of the component parts of a choice that could have been made by any mechanic who was skilled in the art of making chairs, and had the material at hand. Before the date' of Plass' appli-' cation for his patent, vulcanized fiber had been employed as a substitute for wood and for leather in the manufacture of various articles in common use, and is now extensively used in the making of traveling trunks. In the course of time, if its cost shall become cheaper, it may still more generally take the place of other materials. But such SUbstitution, if it amounts to nothing more than the change of one substance for another, the new performing the same function as the old, will not constitute invention or discovery, according to the legal meaning of those words 8S defined by repeated decisions of the supreme court. The substitution may produce in some respects a new and useful article, yet, if it is not the result of a creative invention, it will not be entitled to a patent. ,
·nDERAL
vol. 49., .;
, In HiI;lcav.Kilsey,,18 Wall. &70, the patent related toati improved that is, a pole connecting the fore and hind axles of a wagon, Which was curved upwarfl' from the hind .axIeso as to allow the fore wheels uQder.it when the around. ,The contrivance was not had}ormerly been of wood throughout, having the curved part Atrengthenedpy iron, straps bolted together. The improvement of plaintiff consisted in, leaving out the wood in the curve, and $U bstitnting iron, the reach was madeless bulky, but in al.lother respectsbaving the Imme shape and performing the same office as before. Mr· Justice in delivexing the opinion of the court, said: "It is. certainly difficulUo bring the case within any recognized rule of novbe sustained. The use .of one material instead elty by which the patent of another. in constructing a known machine is, in most cases, so obviously a matter of mere mechaniqaI judgment, .and not of invention, that it cannot be called an invention new and uSl'ful result-an increase of efficiencyor a decided s8ving'in' the operation-is clearly attained. Some evidencewas; given, to showtbat the wagon"reach of the plaintiff is a better reach, reqUiring less rf:'pilii', as· having greater soljd!ty than the wooden reach. But it is not sufficient to ,\Iring the case out of the clItegoryof more or less excelle.nce o.f cOI)struction. Axe helves made of hickory lI)ay be more durable and more cheap inthe end than those made of beech or pine, buttbe first application of hickory to the purpose would not be therefore patentable." 1n Hotchkiss v. 11 How. 248, the court decided that the substitution of porcelain for metal in making door-knobsofa particular construction was not patentable, tbough new material' was better adapted for the purpose; and mape:a better and cheaper kpobj and so, also, the substitution of wood for bone, as the basis of a bo.ttom covered with tin, was held to' be Dot patentaqle. In support of Plass' patent, c0I111se1for complainant relied on the case of Smith v. Vulcanite ,QQ." 93 U.S·.486. There the patllnt was for an improvement in the man.ufacture of artificial sets of teeth, and consisted in substituting a of vulctlouizable compound for the cement formerly used. there ,was somllthing more than or other a,substitution of hard for. gold, silver, tin, etc. The,article made uJ;J.der the patent was a' 'combination.of materials fused together, and proin its 1l10de of manufacture from ducing a new result, which any other article .of its Class, andwRsyastly better in several respects to all that had been before known. Plass' claim is for a plain su.bstitution, liIre the iron in the wagon-reach and tbeporcelain in the door-knob, being the same in priri¢iple, and certainly displaying no higher degree of ingenuity. The is dented. .
",j
i; 'LEE 11. PILLSBURY.
741
LEE
11. PILLSBURY
et ale
(Circtdt COUrt, D. Minnesota. January Term, 1892.) L PATENTS POR INVENTIONS-l'RO:PERTY RIGHT-D.uUGES POR INFRINGEMENT.
The exclusive use granted by a patent is a property rigbt, and a plaintiff, in an action at law for infringement, may recover al,tual damages tberefor. OF CLAIM.
S.
SAME__
Tbe'wotds "substantially all specified;" in the claim of a patent, are to be given effect; and where tbe claim" read literally. would be inoperative, their effect is to include in tbe claim elements or devices contained in tbe specification t:bat are wanting in tbe claim. ' Where there is no license fee, and nothing to show that the patentee puts his machine upon tbe market, he mu!!t furnish other evidence to enable the JUry to come to a proximate amount of the damage which he has sustained by the infringement, and for this purpose general evidence may be resorted to.
8.
SAME-DAMAGES-GENERAL EVIDENCE.
4.
SAME.
The actual damages suffered by' plaintiff may be arrived at by evidence showing the value of that which defendants have used, the utility and advantage of the invention of the plaintiff over the old modes ordevices that have been used for working out similar re!!ult!!, and the saving effected thereby.
Ii.
SAME-NOMINAL DAMAGES.
Plaintiff can recover only nominal damages for the Infringement of an impracticable machine, or if he fails to show actual advantage to defendants by the use of his machine.
6.
SAME-PaOOI' 01' DAMAGES-MERE OPINION.
Plaintiff must prove the actual damages directly, or show such facts as will enable the jury to asc,ertain tbe amount; and mere opinion as to the amount of that damage cannot be considered. ' ,
'1·. SAME-MEASURE 01' DAMAGES.
The proper measure of damages for infringement of a patent is an indemnity to the plaintiff for tile los!! sustainl:ld by the infringement.
Action at Law for the infringement. of letters patent No. 155,874, issued to the plaintiff October 13, 1874, fQr a seed separator. It was claimed by plaintiff that certain machines of defendants, used in their mills, infringed the thirdolaim of his patent. Plaintiff's machine consists of a revolving she'et-metal cylinder,into which the grain is spouted. The cylinderis with holes large enough to receive such grains as cockle, but too small to receive the wheat grains completely within them. On the outside, a skin belt, as wide as the length of the cylinder, surrounds it, so as to cause the perforations to retain the cockle. A trough is sustlended lengthwise within the cylinder, and as the cylinder revolves the cockle is retained in the perforations, carried above the trough, and is dropped upon it, to be discharged out of the machine. This chute or trough has a brush at one edge, which rubs against the inner surface of the cylinder, to brush down the wheat, and leave the cockle in the holes, to be carried up and discharged in the trough. The third claim reilils: "The brush, J, in combination with the perforated cylinder, A, and trough, C, substantially as specified." Defendant'!! contended that the claim was inoperative, because it did not inClude the skin Lelt; that they did Dot inlringe it; also that it was anticipated by
