In the case of Crane's patent, which was for the use of anthracite and hot air blast in the manufacture of iron. in the place of bituminous coal and hot air blast, the English court of common pleas said: "We are of the opinion that, if the result produced by such a combination be either a new article or a better article or a cheaper article to the public than that produced before by the old method, such a combination is an invention or manufacture intended by the statute, and may well become the subject of a patent." In the case of Rex v. Arkwright, Web. Pat. Cas. 71, Buller, J., said: "If there be anything material or new which is an improvement of the trade, that will be sufficient to support a patent." Mr. Curtis, in his book on patents, § 25, 3d ed.. says: "There are many cases where the materiality and novelty of the change can be judged of only by the effect on the result." Mr. Curtis, after a full examination of the English cases, on the subject of the sufficiency of invention to support a patent, at section 39, concludes thus: "It appears, then, according to English authorities, that the amount of invention, as being sufficient or insufficient to support a patent, may be estimated from a compound view of the change effected and the consequences of that change. The change alone may be very slight or, in point of fact, accidental; yet, if it leads to consequences and results of great practical utility, and others above mentioned, the condition of a sufficiency of invention is satisfied." The rule is the same in this country. In Furbush v. Cook, 2 Fish, Pat. Cas. 668, it was held, Curtis, J.: "If the patentee first made a new and useful combination, he is entitled to a patent for it." It was also held in that case as follows: "It is decisive evidence that a new mode of operation has been introduced if the practical effect of the new combination is either: a new effect or a materially better effect, or as good an effect more economically attained. And in such case it is not material how much study, thought, time, expense, or experiment was required to make the change." The action of the Commissioner of Patents, in accepting a surrender of a patent and granting a reissue, is conclusive that the prerequisites to the surrender did exist unless fraud be shown. Stimpson v. Railroad Co. 4 How. 380; Railroad Co. v. Stimpson, 14 Pet. 448; Woodworth v. Stone, 3 Story, 749, 753; Allen v. Blunt, 3 Story, 742, 743; Carver v. Manufacturing Co. 2 Story, 432; Goodyear v. Day, 2 Wall. Jr. 283; O'Reilly v. Morse, 15 How. 112; Battin v. Tag gert, 17 How. 84, 15 L. ed. 41; Allen v. Blunt, 2 Wood. & M. 138; French v. Rogers, 1 Fish. Pat. Cas. 133. In the case of Woodworth v. Stone, 3 Story, 749, and 2 Robb, Pat. Cas., Judge Story holds thus: "I have already, in another cause, had occasion to decide that, where the Commissioner of Patents accepts a surrender of an old patent and grants a new one, under the act of 1836, chap. 357, his decision being an act expressly confided to him by law, and dependent upon his judgment, is not re-examinable elsewhere; and that the court must take it to be a lawful exercise of his authority, unless it is apparent upon the very face of the patent that he has exceeded his authority, and there is a clear repugnancy between the old and the new patent, or the new one has been obtained by collusion between the commissioner and the patentee." A patent may be valid, and may have been held so to be by a court, without being broad enough to cover the whole invention. In such cases the act of Congress tenders the patentee relief by reissuing to make his claim broader. The statute does not limit the right to reissue to cases where the surrendered patent was void, but it expressly gives this right also where the patent is inoperative; meaning, of course, inoperative to cover all the patentee has a right to.. Law, Am. Dig. 612, 616. This has been repeatedly held, both by theSupreme Court and in the several circuits. In the case of Goodyear v. Day, 2 Wall. Jr. 283, in the district of New Jersey, the court expressed the principle in the following words: "The mistake of claiming too little in the original patent has an equal claim to correction with that of claiming too much." The decision in the Supreme Court in the case of Battin v. Taggert, 17 How. 83, 15 L. ed. 40, is also in point. To determine whether or not a patent is good as a reissue, the court will look to only two things: First, to what was the invention actually made by the patentee and made known in the original patent; second, to what invention is covered by the patent which is sought to be enforced. The comparison of the court will be only between such invention and such patent, and when it finds that the patent is no broader than such invention, it will be found to be no broader than it ought to be. The comparison should not be between previous reissues nor between the existing patent and any previous reissue which has been surrendered, or between the original and any previous reissue which has been surrendered; but it should be only between the existing reissue and the invention made by the patentee and made known in the original patent. In the case of French v. Rogers, 1 Fish. Pat... Cas. 138, Judge Kane and Justice Grier held thus: "The surrender and the reissue, no matter how often they recur, are reciprocal-each in consideration of the other-forming together but a single act." In an earlier case, that of Sloat v. Spring, Justice Grier, in charging the jury, said: patents does not, necessarily, make them de"A difference in the description of these two scribe different inventions, as the inventor is authorized by law to correct, in the reissued patent, all the errors or deficiencies in the first, and make the second what he might have made the first." See, also, O'Reilly v. Morse, 15 How. 112. A very early and leading case on the subject of prior inventions, was that of Bedford v. Hunt, 1 Mason, 302, which was contested by two very able counsel on each side, and was before the most distinguished judge of his time. On this question Judge Story instructed the jury that "The first inventor who has put the invention in practice, and he only, is entitled to a patent.' In speaking of the rights of the defendant he said: "He may stand upon the defense, that the plaintiff is not the first inventor who put the invention in use." "The intent of the statute was to guard against defeating patents by the setting up of a prior invention, which had never been reduced to practice. If it were the mere speculation of a philosopher or a mechanician, which had never been tried by the test of experience, and never put into actual operation by him, the law would not deprive a subsequent inventor, who had employed his labor and his talents in putting it into practice, of the reward due to his ingenuity and enterprise." Much less would the law deprive him of his invention by virtue of a prior experiment, which proved only a failure. See, also, Reed v. Cutter, 1 Story, 590; Woodcock v. Parker, 1 Gall. 438; Washburn v. Gould, 3 Story, 122; Allen v. Blunt, 2 Wood. & M. 121; Curt. Pat. § 43. In the case of Parkhurst v. Kinsman, 1 Blatchf. 488, 494, the court says: "Crude and imperfect experiments, equivocal in their results, and then given up for years, cannot be permitted to prevail against an original inventor, who has perfected his improve ment." Sickles v. Borden, 3 Blatchf. 535; Hindm. Pat., ed. printed at Harrisburgh, Pa., 1847, pp. 106-109. Judge Leavitt, in the case of Judson v. Moore, 1 Fish. Pat. Cas. 544, tried in the district court of Ohio in 1860, in charging the jury, said: "Neither will experiments defeat, even if known to the patentee, if it appear that he prosecuted such experiments to final success." See, also. Allen v. Hunter, 6 McLean, 321; Foote v. Silsby, 2 Blatchf. 266; Howe v. Underwood, 1 Fish. Pat. Cas. 160, Sprague, J., 1854; | Ransom v. Mayor of New York, 1 Fish. Pat. Cas. 252, Hall, J., 1856. A leading case on this subject is that of Cahoon v. Ring, 1 Fish. Pat. Cas. 399, which was tried before Justice Clifford, in the district of Maine, in 1859. In that case the learned justice, in charging the jury and speaking of a machine set up against the patent, as a prior invention, said: "Unless it appears to your satisfaction that such machine was actually used as a seed sower, in sowing seed for agricultural purposes, you are warranted in presuming that it was a mere experiment; and if so, you are instructed that it would not invalidate the plaintiff's patent, provided Cahoon was an original inventor of his improvements,, without knowledge of that machine, and did not derive any of them from Luce.' Jones v. Pearce, 1 Web. Pat. Cas. 122. Mr. Justice Clifford delivered the opinion of the court: Controversies respecting the infringement of letters patent possess, in many cases, a degree of importance much beyond the profits or damages claimed for the alleged unlawful use of the encion, as the pleadings usually put in issue, in one form or another, the validity of the letters patent alleged to be infringed, and frequently involve, directly or indirectly, the same inquiry in regard to the letters patent set up in defense as superseding the patent on which the suit is founded. Such being the state of the pleadings, the result, whatever it may be, whether for the party suing or for the party defending, must oftentimes determine rights of property of much greater value than the amount of the profits or damages claimed for the alleged infringement of the letters patent. Inventions secured by letters patent are property in the holder of the patent, and as such are as much entitled to protection as any other property, consisting of a franchise, during the term for which the franchise or the exclusive right is granted. Letters patent are not to be regarded as monopolies, created by the executive authority at the expense and to the prejudice of all the community except the persons therein named as patentees, but as public franchises granted to the inventors of new and useful improvements for the purpose of securing to them, as such inventors, for the limited term therein mentioned, the exclusive right and liberty to make and use and vend to others to be used their own inventions, as tending to promote the progress of science and the useful arts, and as matter of compensation to the inventors for their labor, toil, and expense in making the inventions, and reducing the same to practice for the public benefit, as contemplated by the Consti- [*534 tution and sanctioned by the laws of Congress. Five several letters patent were owned by the complainants when the present suit was commenced, and they allege in the bill of complaint that the respondents have infringed their exclusive rights as secured to them in each and every one of those letters patent. Four of the letters patent are reissued letters patent, and are numbered and described as follows: (1) Reissued letters patent No. 4, dated January 1, 1861, for a new and useful improvement in harvesters, being one in a second reissue of two separate patents, on amended specifications, as more fully explained in the pleadings and the patents annexed to the printed record. (2) Reissued letters patent No. 1682, dated May 31, 1864; also for a new and useful improvement in harvesters, being the second reissue from the before-mentioned reissue when the invention was divided into two parts. They both purport to be founded upon the original patent granted to Aaron Palmer and Stephen G. Williams, dated July 1, 1851, which was for a new and useful improvement in harvesters, and the reissued patents were duly extended for seven years from the expiration of the original term. (3) Reissued letters patent No. 72, dated May 7, 1861, being a reissue of one of three parts of a prior reissue of the original patent, dated July 8, 1851, which was granted to William H. Seymour for a new and useful improvement in reaping machines. (4) Reissued letters patent No. 1683, dated May 31, 1864, being a reissue of another of the three parts of the prior reissue of that patent, as more fully explained in the pleadings; the charge being that the respondents have infringed the first claim. (5) Superadded to those several charges against the respondents is the further one that they have also infringed certain original letters pat- the machine are also given in the subsequent ent owned by the complainants, dated January parts of the specifications, and of their modes 24. 1854, which secures to them, as assignees of of operation, and the specification concludes Palmer and Williams, certain other new and with the claim which, in substance, is discharguseful improvements in grain harvesters being the cut grain from a quadrant-shaped platsides those embodied in the several reissued let form on which it falls as it is cut, by ineans of ters patent to which reference has been made. an automatic sweep rake vibrating over the 535*] *Founded upon those several letters same, substantially as described, which must be patent, the bill of complaint, which is drawn in understood as referring back to the description the usual form, alleges that the respondents contained in the body of the specification. have unlawfully made, and used and vended to II. Two combinations are mentioned in the others to be used, the respective inventions specification of the reissued letters patent No. therein described, and the complainants pray for 1682, but it is only necessary to refer to the an account and for an injunction. Service was first, as it is not alleged that the respondents made upon the respondents, and they appeared have infringed the second claim. Described and filed an answer, setting up several defenses separately, the ingredients of the first claim are to each of the patents described in the bill of as follows: (1) The cutting apparatus to sever complaint. Responsive to the answer the con- the standing stalks of grain; (2) the quadrantplainants filed the general replication, and the shaped platform arranged behind the cutting cause being at issue they put in evidence the five apparatus to receive the severed stalks of grain several letters patent on which the suit is as they fall; (3) the sweep rake and the defounded, the respondents consenting that copies scribed mechanism to operate the same in such of the same, and of the respective certificates of manner that the teeth shall move in circular extension mentioned in the pleadings, might be curves over the platform when they are acting substituted in the record in the place of the on the grain. originals as introduced in evidence. Other proofs were introduced and the parties were fully heard, but the circuit court was of the opinion that the proofs introduced by the complainants were not sufficient to show any infringement of their rights and, accordingly, entered a decree for the respondents, dismissing the bill of complaint. Dissatisfied with that conclusion the complainants appealed to this court and now seek to reverse that decree. Separate defenses having been set up in the answer to each of the five letters patent, it will be necessary to a clear understanding of the controversy, and to prevent any misunderstand ing as to the views of the court, to describe somewhat more fully the nature of the several inventions and the objects which they were designed to accomplish. 1. Explained in general terms, the invention secured in the first-mentioned reissued patent, numbered four, consists in arranging an automatic sweep rake in a harvesting machine in such relation to a quadrant-shaped platform, upon which the cut grain falls as it is cut, that it shall vibrate over the same at suitable intervals to discharge the cut grain in gavels upon the ground. Specific description is given, in the first place, of the frame of the machine, which, as repre536*] sented, is composed of three longitudinal beams and two transverse beams securely fastened to each other at their points of intersection. Next follows a reference to the driving-wheel, which, as represented, is placed between the outer longitudinal beam and the central beam, having its bearings on arched supports or brackets rising from each of the beams composing the frame. Guard fingers, through which a sickle vibrates, are secured upon the front edge of a platform shaped like a quadrant or sector of a circle, of which the arm or lever that carries the rake head forms the radius, and the fulcrum pin on which the arm or lever vibrates constitutes the center, the whole operating so that the grain is swept round, on an arc of a circle, and discharged in gavels upon the ground behind the driving-wheel. Minute details of all the other elements of Reference must also be made to the other two reissued letters patent embraced in the pleadings. Both have respect to an improvement made in reaping machines, and they were both granted to secure material parts [*537 of an original invention once before surrendered and reissued because the letters patent were defective and inoperative. Before the term of the original patent expired, the patents were extended for the further term of seven years. III. Number seventy-two consists in constructing the platform of a reaping machine, upon which the cut grain falls as it is cut, in the shape of a quadrant, or of a sector of a circle, placed just behind the cutting apparatus, and in such relation to the main frame that the grain, whether raked off by hand or by machinery located behind the cutting apparatus, can be swept around on the arc of a circle and be dropped, heads foremost, on the ground far enough from the standing grain to leave room for the team and machine to pass between the gavels and the standing grain without the necessity of taking up the gavels before the machine comes round to cut the next swath. IV. They also acquired title to the invention secured in the remaining reissued letters patent mentioned in the bill of complaint, to wit, num ber 1683; but it will be sufficient to refer to the first claim of the same, as the second is not the subject of controversy in this suit. As described in the specification the ingredients of the first claim are the cutting apparatus to sever the stalks, the reel to incline the heads of the stalks towards the cutting apparatus and the quadrant shaped platform, located in the rear of the cutting apparatus, to receive the cut stalks as they fall before the operation of the sweep rake begins. Designed as the improvements were to accomplish the same object as the other two improvements previously described, the patentees or owners of the several letters patent elected to compromise rather than litigate, and the result was that the entire interest became ultimately vested in the appellants. V. Patented improvements in the method of transferring motion from the driving wheel of a reaping machine to the rake on the platform of the machine, and in the method of hanging the reel so as to dispense with any post on the 538] side of the machine next the grain, were also acquired by the appellants as a part of the same arrangement, and they charge in the bill of complaint that the second claim of the original letters patent, embodying that improvement, is also infringed by the respondents. Power to grant letters patent is conferred by law upon the Commissioner of Patents, and when that power has been lawfully exercised, and a patent has been duly granted, it is of itself prima facie evidence that the patentee is the original and first inventor of that which is therein described, and secured to him as his invention. White v. Allen, 2 Cliff. 228. the Persons seeking redress for the unlawful use of letters patent, in which they have an interest, are obliged to allege and prove that they, or those under whom they claim, are the original and first inventors of the improvement embodied in the letters patent on which the suit is founded, and that the same have been infringed by the party against whom the suit is brought. Undoubtedly, the burden to establish both of those allegations is, in the first place, upon party instituting the suit, as they lie at the foundation of every such claim, but the law is well settled that the let ters patent in question, where they are introduced in evidence in support of the claim, if they are in due form, afford a prima facie presumption that the first-named allegation is true, and the rule is equally well settled that that presumption, in the absence of satisfactory proof to the contrary, is sufficient to entitle the party instituting the suit to recover for the alleged violation of the exclusive rights secured to him in the letters patent. Availing themselves of that rule of law, the complainants in this case introduced the five several letters patent on which the suit is founded, and they contend and well contend that their effect as evidence is to cast the burden of proof upon the respondents to show that the respective patentees are not the original and 539] first inventors of the improvements *embodied in the several letters patent, as they have alleged in their answer. Parties defendant, sued as infringers, are not allowed in an action at law to set up the defense of a previous invention, knowledge, or use of the thing patented, unless they have given notice of such a defense thirty days before the trial, and have stated in the notice "the names and places of residence of those whom they intend to prove to have possessed a prior knowledge of the thing, and where the same had been used;" and the settled practice in equity is to require the respondent, as a condition precedent to such defense, to give the complainant substantially the same information in his answer. Agawam Co. v. Jordan, 7 Wall. 596, 19 L. ed. 177; Teese v. Huntingdon, 23 How. 10, 16 L. ed. 482. Notices of the kind were given by the respondents in this case, but it will be more convenient to examine certain special defenses set up in the answer before entering upon that inquiry, as the decree must be affirmed, in any event, if any one of those defenses is well founded, whether the issues of novelty and of in fringement are determined in favor of the complainants or respondents. All of the special defenses apply to the original patent, as well as to those which have been reissued, except such as are founded upon the acts or omissions of the commissioner in granting the reissues, which of course are not applicable to the former. They are eight in number, as exhibited in the answer, the respondents alleging in each that the letters patent are void and of no effect for the reasons therein set forth; and they will be briefly examined in the order in which they are pleaded. 1. That the letters patent are void and of no effect because the patentees did not make oath before the patents were granted, that they did verily believe that they were the original and first inventors of the improvements for which the letters patent were solicited. Congress possesses the power to pass laws to secure to inventors, for limited times. the exclusive right to their inventions, and [*540 Congress, in pursuance of that article of the Constitution, has conferred the power to grant letters patent for that purpose upon the Commissioner of Patents. Persons who have made an invention, and who desire to obtain an exclusive property therein, may make application in writing to the Commissioner of Patents, and the provision is that the commissioner, on due proceedings had, may grant a patent for the said invention. Inventors of machines are required, before they receive a patent, to deliver a written description of their inventions, and of the manner and process of making, constructing, and using the same, in such "full, clear, and exact terms" as to enable any person skilled in the art or science to make, construct and use the same, and fully to explain the principle by which the invention may be distinguished from others of like kind; and they are also required to specify and point out the part, improvement or combination which they claim as their invention. Doubtless these several requirements may be regarded as conditions precedent to the right of the commissioner to grant the application, as they must appear on the face of the letters patent, and are always open to legal construction as to their sufficiency. Drawings are also required in certain cases, and where the invention is such that it may be represented by a model, the applicant for a patent is required to furnish a model of the same: make oath or affirmation that he does verily beand the further requirement is that he shall lieve that he is the original and first inventor of the improvement for which he solicits a patent, and that he does not know that the same was ever before known or used. Importance, it is conceded, must be attached to the latter requirement, but it is certain that the oath or affirmation may be taken elsewhere than before the commissioner, as the same section provides that it "may be made before any person authorized by law to administer oaths." 5 Stat. at L. 119. *Extended examinaton of the question, [*541 however, is unnecessary, as every one of the letters patent on which the suit is founded contains the recital that the required oath was taken before the same was granted, and the court is of the opinion that those recitals, in the absence of fraud, are conclusive evidence that the necessary oaths were taken by the applicants before the letters patent were granted. 2. That the letters patent are void and of no effect because the patentees did not specify and point out in their specifications and claims the parts, improvements or combinations which they claim as their respective inventions. Grant the theory of fact assumed in the proposition and the conclusion would follow, but the whole theory of the proposition as applied to the present case is founded in error. Inventions secured by letters patent sometimes, though rarely, embrace an entire machine, and in such cases it is sufficient if it appear that the claim is co-extensive with the invention. Other inventions embrace only one or more parts of a machine, as the coulter of a plough, or the divider or sweep rake of a reaping machine; and in such cases the part or parts claimed must be specified and pointed out so that constructors, other inventors and the public may know how to make the invention, and what is withdrawn from general use. Patented inventions are also made which embrace both a new ingredient and a combination of old ingredients embodied in the same machine. Even more particularity of description is required in such a case, as the property of the patentee consists, not only in the new ingredient, but also in the new combination, and it is essential that his invention shall be so fully described that others may not be led into mistake, as no other person can lawfully make, use or vend a machine containing such new ingredient, or such new combination. They may make, use or vend the machine without the patented improvements, if it is capable of such use, but they cannot use either of those improvements without making themselves liable as infringers. 542*] *Improvements in machines protect- Such a combination is sufficiently described id by reason of a defective or insufficient description or specification, if the error arose by inadvertency, accident or mistake, and without any fraudulent or deceptive intention, it is lawful for the commissioner, upon the surrender to him of such patent, and on the payment to him of a certain duty, to cause a new patent to be issued to the inventor for the same invention for the residue of the term then unexpired, in accordance with the patentee's corrected description and specification. 5 Stat. at L. 122. Whether adjudged to be valid or invalid, it is clear that the several re-issued let- [*543 ters patent are all in due form, and that they contain all the usual recitals asserting a compliance with the requirements specified in the Patent Act, and it is equally certain that the respondents did not introduce any proofs to establish the theory of fact assumed in the an swer. Authority to accept the surrender of the original patents in certain cases, and to grant new patents to the inventor, was conferred upon the commissioner by the act of the 3d of July, 1832, and in a case arising under that act it was held by this court, more than thirty years ago, that where an act was to be done or a patent granted, upon proofs to be laid before a public officer, upon which he was to decide, the fact that such public officer had done the act or granted the patent was prima facie evidence that the proofs had been regularly made, and that they were satisfactory even though the patent did not contain any recitals that the perquisites to the grant had been fulfilled; and such continued to be the rule until the question came up again for consideration under the existing Patent Act, when it was held by this court that the fact of the granting of the re-issued patent closed al! inquiry into the existence of inadvertence, accident or mistake, and left open only the question of fraud for the jury. R. R. v. Stimpson, 14 Pet. 458; Stimpson v. R. R. 4 How. 384; 4 Stat. at L. 559. Since that time it has been definitively settled that neither re-issued nor extended patents can be abrogated by an infringer, in a suit against him for infringement, upon the ground that the letters patent were procured by fraud in prosecuting the application for the same before the commissioner. Rubber Co. V. Goodyear, 9 Wall. 797, 19 L. ed. 569, 2 Cliff. 375. Where the commissioner accepts a surrender of an original patent and grants a new patent, his decision in the premises, in a suit for infringement, is final and conclusive, 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 [*544 old and the new patent that it must be held, as matter of legal construction, that the new patpre-ent is not for the same invention as that embraced and secured in the original patent. Battin v. Taggert, 17 How. 83, 15 L. ed. 40; O'Reilly v. Morse, 15 How. 111, 112; Sickles v. Evans, 2 Cliff. 222; Allen v. Blunt, 3 Story, 744. 3. That the re-issued letters patent are void and of no effect, because the Commissioner of Patents never obtained jurisdiction to receive! the surrender of the originals, nor to grant the re-issues, as no evidence was produced before him to show that the originals were inoperative or invalid for any reason or cause whatsoever. Whenever any patent is inoperative or inval 4. That the re-issued letters patent are void and of no effect because they were not granted for the same invention as that embodied in the original letters patent, nor for any invention made by the patentees before the original letters patent were granted. |