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when requested, that if anything claimed by the plaintiff in his patent as new, was, in fact, old, the entire patent was void, and the plaintiff could not recover.

The court below erred in refusing the tenth request.

The request was in effect that raising the heat of the fat liquor to the boiling point did not of itself constitute an invention which was the subject of a patent, and the defendant below was entitled to this instruction.

Brooks v. Bicknell, 3 McLean, 262; McCormick v. Manny, 6 McLean, 557; Everson v. Rickard, La. Dig., 81.

Mr. Horace E. Smith, for defendant in er

ror:

The patentee claims, and has patented, two things: 1. A novel treatment of bark tanned sheep or lamb-skins, by heated fat liquor, substantially as described in the specification; and 2. The treatment of such skins with a heated compound, composed and applied substantially as specified.

The infringement in the case at bar consisted in the use of the compound.

1. As to Exceptions to Evidence. (a) The question to Uriel Case, "Did Mr. Russell come and forbid you going on?" was proper as introductory to witness' statements and interview, and was proof of the fact elicited by his further cross-examination, that when charged with an infringement of the patent, he made no pretense of prior knowledge, but claimed that he had a way of his own, etc., and hence did not then infringe. He claimed that his method before and after the patent was substantially the same.

The question was also proper for the purpose of showing witness' feeling towards the plaintiff and his patent.

(b) The witness, John W. Place, was properly permitted to give the contents of a certain subscription paper in relation to the expenses or this suit, and the defense of the manufacturing interests against Russell's patent.

The object was to show a combination among defendant's witnesses, including Place, to defeat the patent and share the expense, thus af fecting their credibility. Its propriety is beyond question.

Woodworth v. Sherman, 3 Story, 171, 172; Evans v. Eaton, 7 Wheat., 356, 425.

As a collateral matter arising incidentally, affecting merely the credit of the witness, it is an exception to the rule requiring the best eviaence.

Notice to produce could not be given to defendant if there was no presumption that he had possession of the paper; and plaintiff could! not know in advance who would be called by defendant to testify. The question elicited no material evidence, and was, therefore, harmless.

R. Co. v. Howard, 13 How., 307, 334; Greenleaf v. Birth, 5 Pet., 132, 135.

(c) In view of the evidence of Crouse, Dodge and Fairbanks, it is insisted, that the question to Dr. Porter, the expert, "Will you state whether the effect of the fat liquor applied to oil tanned and bark tanned skins is the same or different?" was material and proper.

The oil tanned skins referred to by these witnesses, were skins dressed from the raw in oil, and the fat liquor used upon them was a part of or in aid of the oil dressing process.

The plaintiff claimed that the use of fat liquor in the process of oil tanning is essentially different from the patent process; that in one case, it is used in connection with oil for the purpose of converting the pelt into leather from the raw state, while in the other, it is applied to the skin already tanned for the purpose of softening and adding new properties.

While it is true that the mere purpose or effect of a machine or process is not patentable, it is equally true that the effect or result produced is always proper to be considered when a patent is on trial, and often very material in determining the questions of utility and novelty.

Curt. Pat., 2d ed,. secs. 8-10, 14, 18; Fairbanks v. Cook, 2 Fish., 668, 672; Hall v. Wiles, 2 Blatchf., 194, 200; Eames v. Cook, 2 Fish., 146, 149; Judson v. Cope, 1 Fish., 615, 624; Crane v. Price, 5 Scott (N. S.), 338, 388.

the

In Hall v. Wiles, supra, Nelson, J., says, p. 200: "And in determining this question"-the patentability-"the jury have a right to take into consideration, in connection with change, the result which has been produced. Because the result, if greatly more beneficial than it was with the old contrivance, reflects back, and tends to characterize in some degree the importance of the change."

The admission of this question was not in conflict with the rule applicable in case of "double use." It was a proper and legitimate mode of solving the question raised by defendant's evidence, whether the patented process was or was not the application of an old principle or process to a new and analogous use.

Even if this question were improper, the answer, if not in itself harmless to the plaintiff in error, became so under the charge of the court.

On this point he charged, "That the application of an old invention or an old machine to produce a new result, because it is applied to different material, is not an invention, and the question of novelty is to be determined in the same way; that under the first claim of the plaintiffs, if this particular process was used for the purpose of softening leather, it is not material that it was bark tanned sheep or lambskins, if it be used as a process for that purpose.'

II. As to the Refusal of the Court to Direct a Verdict for the Defendant.

(a) The court could not properly give the direction prayed, as there were questions of fact for the jury; upon which, or some of them, there was conflict of evidence.

(b) On the question of prior use, evidence of this character is justly held to possess great significance and value.

Curt. Pat., 2d ed., secs. 359, 360.

(c) Where there is any evidence to be weighed by the jury, and where, in any possible construction of the testimony, it would support the action, a verdict for defendant cannot be directed. Bk. v. Triplett, 1 Pet., 25, 31; Schuchardt v. Allen, 1 Wall., 359, 371, 17 L. ed., 642, 646; Barney v. Schmeider, 9 Wall., 248, 253, 19 L ed. 648.

III. As to the Refusal of the Court to Charge the Jury as Requested by Defendant's Counsel. (a) As to the first request, it does not fully or correctly describe the invention, and it would have been erroneous to charge as requested.

The employment of fat liquor, merely, is not the whole of the invention. It is the employ

ment of fat liquor in the condition and manner described in the specification.

The request erroneously assumes that a knowledge by others of the thing patented, more than two years before application for the patent, renders it void.

The first discoverer or inventor, under our law, is entitled to a patent, provided he uses "reasonable diligence in adapting and perfecting" his invention; and in perfecting it, he is not limited to two years.

If a prayer for instruction be not correct in its very terms, it is not error to refuse it.

that so much thereof is given, as is applicable to the evidence and the merits of the case. Clymer v. Dawkins, 3 How., 674, 688; Pitt v. Whitman, 2 Story, 609, 620.

(b) As to the second request, the court properly refused to charge as requested, and the modification was correct.

The court had already charged on this point as follows: "That specifications are not addressed to men entirely ignorant of the manufacture to which the specification relates, but to persons skilled in the art to which it appertains; that if, upon reading the specification, parties skilled in the art of dressing skins would know that this heating was for the purpose of making this compound with the fat liquor or for some other purpose, and that it would not The charge to the jury covered the ground of do to apply the fat liquor at or near the boiling this request, and embraced all that the defend-point, because it would destroy the leather, ant below had a right to ask upon the point involved.

Brooks v. Marbury, 11 Wheat., 78, 94; Elliott v. Peirsol, 1 Pet., 328, 338; U. S. v. Bk., 15 Pet., 377, 406; Catts v. Phalen, 2 How., 376, 382.

The following instructions, among others, were given to the jury: "That taking the reissued patent as the basis of the plaintiff's claim, the true construction of the first claim is the employment of fat liquor generally, in the state in which it comes from the mills, in the treatment of leather substantially as described; that the first claim covered the employment of fat liquor in its pure and simple state; that the second claim covered the compound substantially as described in the specification, and that the heating of the liquor was an essential portion of the patented process under this claim; that upon the question of the validity of the patent, they (the jury) were to look to the proof in regard to the use of fat liquor, substantially in the manner described when fat liquor alone is used, unconnected with the other ingredients constituting the compound, which is covered by the second claim in the patent; that, if the jury should find that this process had been used prior to plaintiff's alleged invention by other persons, as stated and claimed here, and that the persons who used the process were aware of the object and character of it, observed and comprehended the beneficial results produced by its use, then the patent would be void upon the ground of want of novelty, although some circumstances might have induced them to abandon, temporarily, the actual practice of the invention, or the use of the process; that if they came to the conclusion that the process claimed in the first specification, that is, the fat liquor, had been so used substantially as described in the specification, before this invention, that was the end of the case."

The court is not bound to repeat to the jury the same substantial proposition of law, in different forms; it is enough that it be once laid down in an intelligible and unexceptionable

manner.

Kelly v. Jackson, 6 Pet., 622, 628; Mills v. Smith, 8 Wall., 33, 19 L. ed. 348.

It is not error to refuse to give instructions asked for, even if correct in point of law, provided those given cover the entire case, and submit it properly to the jury.

Mills v. Smith, supra; Laber v. Cooper, 7 Wall., 565, 571, 19 L. ed. 151, 153.

Nor is the court bound to instruct the jury in the terms required by either party. It is enough

such parties would not be misled by it and, therefore, it would not be a fatal defect; but that, if persons skilled in the art, in attempting to put the plaintiff's invention in practice under the specification, would ordinarily apply the liquor to the skins used, while it was at or near the boiling point, and thus destroy them, then of course, this specification was bad."

This charge, and the modification of the request under consideration, correctly present the law applicable, and were sufficiently favorable to the defendant below.

Act of 1836; ch. 357, sec. 6; 5 Stat. at L., p. 117; Curt. Pat., 2d ed., secs. 153-155.

Whether the specification is sufficient, within this rule of law, is a question of fact for the jury; and in the case at bar it was properly submitted to the jury.

Judson v. Moore, 1 Fish., 544-547; Davis v. Palmer, 2 Brock., 278, 308; Wood v. Underhill, 5 How., 1, 4; Battin v. Taggert, 17 How., 74, 85, 15 L. ed. 37, 41.

(c) As to the third request, the refusal was correct, and for the reasons given under the last point.

The court assigned as reasons for not charging as requested on this point, that those "substantially appeared in the modification of the last preceding request."

(d) As to the fourth request. The modification made by the court consisted in adding thereto the words, "unless the common knowledge of persons skilled in the art of treating this leather to produce softness and pliability would make the operator wait until it was partially cooled before its application;" and the jury were instructed pursuant to the request thus modified.

It would have been erroneous to charge as requested, without the modification.

The question here involved is substantially the same as that presented in the last two points.

(e) As to the fifth request. The charge was in accordance with the request except in the addition of the words, "or to other like purposes."

If the request without this addition was proper as far as it went, the addition was proper, unless the mere purpose or application of a contrivance or process is patentable, which will not be claimed.

If the addition was right, the request without it was wrong.

The patent was prima facie evidence of util

ity, and there was no conflicting evidence upon | exact proportions of the ingredients could not this point. be given; yet the patent was held good. To the same effect is Ryan v. Goodwin, 3 Sumn., 514.

Hence, the request involves only an abstract question, and error cannot be predicated of the refusal to instruct.

Rhett v. Poe, 2 How., 457, 483; Chirac v. Reinecker, 2 Pet., 613, 625; Clarke v. Kownslar, 10 Pet., 657, 660; Tucker v. Moreland, 10 Pet., 58, 78.

This patent was for an "improvement in the manufacture of friction matches." The specification, after giving the composition used in preparing the matches, says: "The composition may be varied in its proportions, but those (f) As to the sixth request. In charging the I have given I consider the best. The ingredijury, the court had already construed the pat- ents also may be varied; as gum arabic or other ent as embracing two claims: 1. The employ-gum may be substituted for glue, and earths or ment of fat liquor in its nure state as it comes from the mills, in the treatment of leather substantially as described; and, 2, the compound substantially as described in the specification. To this construction the defendant below did not object, and he cannot now question its cor

rectness.

The compound, then, being claimed and patented, the request and exception under consideration present one question, only: is this claim void for uncertainty, because the specification does not prescribe exact and unvarying proportions in the ingredients of the compound?

The formula is given in the specification. This gives fixed and certain proportions in the compound, as a general rule.

But the specification goes on to say that the proportions of the ingredients may be more or less varied, and the Venetian red or other coloring matter be modified or omitted, as desired. It evidently does not mean, as plaintiff in error seems to suppose, that all the ingredients may be omitted; for this part of the specification is treating of the compound, and if all the ingredients were omitted it would, of course, be no compound, but fat liquor, simply.

Other ingredients may be varied, but the Venetian red, or other ingredients may be omitted, if desired.

A variety of colors is required in glove leather, and the use or omission of the coloring matter, as well as the kind to be used, would, it is obvious, depend upon the color of the leather desired in a particular case; hence, the impracticability of prescribing in the patent any exact and invariable rule for its use.

If the patent fixed the exact and invariable proportions of the other ingredients, it would enable the community to produce the same results, and use the invention with impunity by a slight variation of the proportions, not affecting essentially the character of the compound. This treating mixture does not profess to be a composition united by the laws of affinity and definite proportions, but a compound of different ingredients for a practical purpose, which, from the nature of the case, might sometimes require slight departures from the exact

formula.

In this, as in other respects, the specification is addressed to persons "skilled in the art or science to which the invention appertains," and something must be left to their judgment and discretion in the use of the process.

It was so held in Wood v. Underhill, 5 How., 1, in a patent "for an improvement in making brick, tile and other clay ware."

In this case, there was more uncertainty in the ingredients of the composition than in the one at bar. The specification stated that the

other absorbent materials may be used instead of the carbonate of lime."

It was objected to this specification that its terms were too vague and indefinite, and the claim too broad to support the patent. But the court, Story, J., held otherwise and the jury returned a verdict for the plaintiff.

The rule of construction upon this and all other points is, that patents are to be construed liberally in favor of the patentee; so construed, if possible, as to give the patentee the benefit of what he has actually invented.

Ryan v. Goodwin, 3 Sumn., 514, 520; Ames v. Howard, 1 Sumn., 482, 485; Corning v. Burden, 15 How., 252, 270; Whitney v. Emmett, Bald. 303, 315; Goodyear v. Railroads, 2 Wall., Jr., 356, 363; Judson v. Moore, 1 Fisher, 544, 550; Davoll v. Brown, 1 Wood. & M., 53, 57.

In Ryan v. Goodwin, cited supra, Story, J., at p. 520, says: "It is a clear rule of our law in favor of inventors, and to carry into effect the obvious object of the Constitution and laws, to give a liberal construction to the language of all patents and specifications, ut res magis valebat quam pereat, so as to protect, and not destroy, the rights of real inventors."

(g) As to the seventh request. This referred to a prior use more than two years before plaintiff's application for a patent, and the court properly refused so to charge. Defendant's counsel then modified his request, by substituting "before the plaintiff's invention," for "before the plaintiff applied for a patent," and the court thereupon charged substantially as quested.

re

The charge already given sufficiently and correctly covered the ground involved in this request, and the court was not bound to repeat it, even had the request been right in point of law.

(h) As to the eighth request. This request was purely abstract and speculative, involving a question not presented by the evidence.

Rhett v. Poe, supra; Chirac v. Reinecker, supra; Clarke v. Kownslar, supra; Tucker v. Moreland, supra.

The court did charge, however, in response could not be made useful for any honest purto this request, "That, if the process patented pose, but only for perpetrating a fraud upon the public, and was not useful but pernicious, the plaintiff could not recover."

This was more than the defendant below was entitled to demand, and so far as he is concerned, is unexceptionable.

(i) As to the ninth request, the record shows that "The judge declined so to charge, except as had already been charged in the portion of the charge hereinbefore set forth."

The charge contains just what was here requested.

The court said to the jury, among other things, "That the party having embraced within his claim the use of fat liquor in its pure and simple state, the question of heat, or of the use of the compound, was not very important to the interests of the parties, because, if the party claimed in his patent what was not new, or a substantial or material part of which was not new, the patent was void."

The judge was not bound to repeat himself at the whim of a party.

See the cases of Brooks v. Marbury; Elliott v. Piersoll; U. S. v. Bank of the Metropolis; Catts v. Phalen; Kelly v. Jackson; Mills v. Smith; Laber v. Cooper; Clymer v. Dawkins; and Pitt v. Whitman, all cited supra.

(j) As to the tenth request. So far as this point involves the question of novelty, the charge had fully covered the ground, and in accordance with the request.

If it was intended by the request to elicit a ruling that a patent could not be sustained for a mere degree of heat, then it was, in that particular, purely abstract and speculative.

The specification does not fix any exact degree of heat, and the plaintiff below did not ask to have his patent sustained on that ground.

If the patentee had restricted his claim to an exact degree of heat, either in the preparation or application of the liquor, his patent would have been utterly valueless to him; for any party might have taken all the benefits of the invention by varying the temperature half a degree, without infringing the patent.

IV. As to the Construction of the Patent. The construction claimed by the patentee was, in brief, that the patent covers two things: 1. A novel treatment of bark tanned sheep or lambskins, by heated fat liquor, substantially as described in the specification; and 2, the treatment of such skins with a heated compound, composed and applied substantially as specified.

Another construction is given by the court below in the case at bar, and now adopted by the plaintiff in error. It is, in brief, that the specification embraces two claims: 1. The use of fat liquor, pure and simple, as it comes from the mills substantially as described in the specification; and, 2. the compound substantially as described, and that the heating of the liquor is an essential portion of the process under this claim.

The point of difference is, the heating of the fat liquor under the first claim, when it is used without the other ingredients; the patentee claiming, that by a fair construction of the patent, it covers only heated fat liquor; while on the other side it is claimed that it covers the use of cold fat liquor as it comes from the mills. The importance of this question lies in the fact that, by the latter construction, the patentee's first claim is enlarged beyond his intention, and the field of alleged prior use extended in proportion, thus endangering the validity of the patent.

The patent should receive the construction claimed by the patentee, for the following, among other reasons:

1. If it will bear either construction, it should receive the one most favorable to the patentee; that which will be most likely to protect the invention.

See authorities above cited, for this principle. (a) The intention of the patentee is to be sought in giving construction to the language; and for this purpose, particular phrases must not be singled out, but the whole specification and claim must be taken together.

(b) If it appear with reasonable certainty, either from the words used or by necessary implication, in what the invention consists, it will be adjudged sufficient and the rights of the patentee will be protected, however imperfectly or inartificially he may have expressed himself. Whitney v. Emmett, Bald., 303, 315; Ames v. Howard, 1 Sumn., 482, 485; Page v. Ferry, 1 Fisher, 298, 302.

In construing the claim, it is proper to look at the original patent.

Johnson v. Root, 1 Fish., 351, 355.

In the original specification, he says, "I warm the same, by heating to. or near the boiling point."

Now, it is said that the re-issue embraces not only fat liquor alone, but fat liquor in a cold state, or what, in other words, was not embraced at all in his original patent.

A re-issue must be for the same invention. 5 Stat. at L., p. 122.

It is not to be presumed that the patentee intended to embrace in the re-issue what he had not invented or described in the original, and thus destroy his patent.

The power and duty of granting a new patent for the original invention, upon a surrender of the old, is confided to the Commissioner of Patents.

The presumption is in favor of the regularity and validity of the re-issue.

Potter v. Holland, 4 Blatchf., 238, 242; Battin v. Taggert, 17 How., 74, 84, 15 L. ed. 37; O'Reilly v. Morse, 15 How., 62, 112; Hussey v. McCormick, 1 Fish., 509, 515.

By the well settled rules of construction already referred to in this discussion, the court will not give a construction that will create a repugnancy between the old and the new, and thus invalidate the patent, if the language of the specification and claim, taken together, and in connection with such extraneous facts as may aid in disclosing the intention of the patentee, will admit of another construction.

The construction asked is confirmed by reference to the formal claim at the close of the specification. Read in connection with and construed in the light of the whole specification, it is twofold: 1. "The employment of fat liquor in the treatment of leather, substantially as specified," that is to say, heated and applied to the skin substantially as specified. 2. "The process, substantially as herein described, of treating bark tanned lamb or sheep-skin, by means of a compound composed and applied essentially as specified," that is to say, a heated compound composed and applied essentially and substantially as specified.,

If any error occurred in the construction of the patent in the court below, it was in favor of the plaintiff in error. He did not except to it, or ask a different construction, and cannot now be heard to complain.

On the construction given, there was a question of fact for the jury, which was submitted to them under proper instructions.

Mr. Justice Swayne delivered the opinion of

the court:

This is a writ of error to the Circuit Court of the United States for the Northern District of New York.

The action was for the infringement of a reissued patent. The plaintiff in error was the defendant in the court below. A verdict and judgment were rendered against him. In the progress of the trial he took numerous exceptions. We have considered them, and will proceed to dispose of the case.

There was no error in the refusal of the court to direct a verdict for the defendant. The evidence is fully set out in the record. It was well remarked by the circuit judge, in deciding the motion for a new trial, that "the conflict of evidence upon the questions of fact is very great, and made it a very proper case for submission to the jury." Where it is entirely clear that the plaintiff cannot recover, it is proper to give such a direction, but not otherwise.

It is insisted, in this connection, that the reissue is void, because it was not for the same invention as the original patent.

This point does not appear to have been taken in the court below and, therefore, cannot be made here. No instruction was asked or given touching the subject. It is to be presumed, until the contrary is made to appear, that the commissioner did his duty correctly in granting the re-issued patent.

already been sufficiently instructed upon the subject. The instruction assumes that the reissue was for the use of fat liquor, without reference to the point whether it were hot or cold. This renders it necessary to construe the patent with a view to the solution of that question.

The original specification declared that the invention consisted "in a novel treatment of bark tanned lamb or sheep-skins." The patentee said: "The process I adopt, and which constitutes my invention, is as follows: I take of 'fat liquor,' obtained in scouring deer-skins after tanning in oil, say 10 gallons, and warm the same to or near the boiling point. I then add to such heated fat liquor 8 ounces of *salsoda, twelve ounces of common salt, [*465 1 pint of soft soap and 4 ounces of Venetian red, and stir and mix these several ingredients with the fat liquor." The claim is as follows: "What is here claimed, and desired to be secured by letters patent, is the process substantially as herein described of treating bark tanned lamb or sheep-skins by means of a compound, and applied essentially as specified."

With this speicfication and claim, it was apprehended that the patent did not cover the use of heated fat liquor alone-which the patentee claimed as a part of his invention-but that it would be held to cover the use of such heated liquor only in combination with the ingredients specified. If so, the omission of any one or all of the ingredients would have given im

The question put to Uriel Case, and his an-munity to an infringer. To remedy this defect swer, were within the proper limits of a crossexamination. Johnston v. Jones, 1 Black, 210, 17 L. ed. 117.

The question to Place was proper, and his answer was not objected to. His answer as to his connection with the paper to which he referred, also passed without objection. But it is insisted that it was error to require him to state 464*] its contents, *no notice to produce it having been given. To this there are two answers: it was an incidental and collateral matter drawn out to test the temper and credibility of the witness. It in nowise affected the merits of the controversy between the parties. The witness stated that he did not know who signed the paper. The contents could not, therefore, have operated to the injury of the defendant.

The question to Porter involved the novelty, utility and modus operandi of the alleged invention of the plaintiff, and the answer was competent evidence.

Elaborate instructions covering the entire case were given to the jury. None of them were excepted to by the defendant.

Numerous instructions were asked by his counsel. An exception was taken in relation to each one of them, and is assigned for error.

We shall refer to them as they are numbered in the record.

1. That the patent is for "the treatment of bak tanned sheep and lamb-skins, by the employment of fat liquor, and if the jury believe such treatment was known to others more than two years before the plaintiff applied for his patent, his patent is void." This instruction was properly refused. It stated inaccurately the rule of law which it involved. A patent relates back, where the question of novelty is in issue, to the date of the invention, and not to the time of the application for its issue. The jury had

the re-issue was procured. In the specification in that case the patentee says: "My invention consists in a novel treatment of what is known as bark tanned lamb or sheep-skin."

"The principal feature of my invention consists in the employment of what is known amongst tanners as fat liquor, which is ordinarily obtained by scouring deer-skins, after tanning in oil, but which, when it is not convenient to obtain in this manner, may be produced as a liquor having the same character-obtained by the cutting of oil with a suitable alkali. In treating leather with the 'fat liquor,' it is desirable to heat the liquor to or near the boiling point, and it is preferred to use the same in connection with other ingredients. Thus, for instance, there may be added to each 10 gallons of such heated fat liquor, 8 ounces sal soda, 12 ounces common salt, 1 pint of soft soap, or an equivalent quantity of hard soap, 4 ounces of Venetian red; such ingredients to be well stirred and mixed with the fat liquor." The claims are as follows:

"1. The employment of fat liquor in the treatment of leather, substantially as specified. 2. The process, substantially as herein described, of treating bark tanned lamb or sheepskins by means of a compound com- [*466 posed and applied essentially as specified." The mode of application prescribed in both specifications is the same.

The first claim, it has been argued, is for use of fat liquor generally, hot or cold. If it be for the former only, the patent may be valid; while, if for the latter, it may be too broad and, therefore, void.

The counsel for the patentee insists that the claim is limited to fat liquor in a heated state. The subject is to be examined in the light of both specifications and of both sets of claims. The

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