[Supreme Court of the United States.]

JOHN ROBERTSON, CHARLES C. MARTIN, AND AUSTIN H. SMITH, APPELLANTS, vs. ELI W. BLAKE. ELI W. BLAKE, AP PELLANT, vs. JOHN ROBERTSON, CHARLES C. MARTIN, AND AUSTIN H. SMITH.

O. G., vol. xi., p. 877.

Appeals from the Circuit Court of the United States for the Eastern District of New York.-Decided October Term, 1876.

The patent granted to Eli W. Blake for a stone-breaker, June 15, 1858, reissued January 9, 1866, and extended June 15, 1872, is not anticipated by the earlier patent to Hobbs and Brown for " improvements in the application of well-known mechanical means for the purpose of crushing ice," and to Hamilton for "crushing and grinding quartz or other substances," they not containing any of the essential elements of Blake's invention.

The substitution for one part of the operating mechanism of a combination the equivalent of that omitted does not avoid an infringement.

When an original machine and an improvement upon it are both patented, neither patentee can use what does not belong to him without the requisite authority from the owner.

The complainant was found entitled to nominal damages only, the burden of proof being upon him, and it appearing that the proof was meager and indefinite, but four machines made, no established license fee, the profits made being due in part to inventions covered by other patents, and no distinction made between profits accruing from the use of complainant's invention, and that from the other inventions and manufacturers' profits.

Mr. Justice SWAYNE delivered the opinion of the court:

These are cross-appeals in the same cause. Both involve questions in mechanics. These being determined, the legal propositions which apply are so well settled as to admit of no controversy.

A patent was granted to Blake on the 15th of June, 1858, by the United States, for a stone-breaker. On the 9th of January, 1866, the same authority reissued the patent to him, with amended specifications. It was extended on the 15th of June, 1872. The bill in this case is founded upon the latter patent. It charges infringement.

The answer avers that the machine described is of no practical utility, denies the novelty of the invention, and also the alleged infringement. The description in the specification sets forth three things as the essential characteristics of the machine:

(1) Two jaws within which the stones are to be broken. Their faces are to be so nearly in an upright position that the stones will descend between them automatically. The jaws are to be so far convergent that the interspace at the top will be sufficient to receive the stones, and that at the bottom only such as will allow the fragments to escape when broken of the required size.

(2) A revolving shaft driven by steam or other motive power, imparting to one of the jaws a continual vibratory movement, causing it alter

nately to approach toward and recede from the other jaw, through a short and definitely-limited space, so that, when a stone is put in, the movable jaw will advance and crush it, then receding liberate the frag. ments, which again descend, and, if too large, are rearrested and crushed again, and so on until the fragments have passed out through the open space at the bottom. The distance between the jaws is to be adjustable at pleasure, so that the stone can be broken of any desired size.

(3) A fly-wheel is combined with the revolving shaft and movable jaw for the purpose of rendering the strain upon the power more equal. The claim is for

A combination of a stone-breaking machine of upright converging jaws with a revolving shaft and mechanism imparting a definite reciprocating movement to one of the jaws from the revolving shaft, the whole being and operating as set forth.

The combination, in a stone-breaking machine, of the upright movable jaw with the revolving shaft and fly-wheel, the whole being and operating as set forth.

In combination with the upright converging jaws and revolving shaft, imparting a definitely limited vibration to the movable jaw, so arranging the jaws that they can be set at different distances from each other at the bottom, thus producing fragments of every desired size.

A moment's glance at the model furnishes a sufficient answer to the objection of the want of practical value. It would be passing strange if a machine of that character could have gone through the severe conflicts of litigation which this patent has encountered and have come forth victorious from every contest. It has proved equal to every ordeal to which it has been subjected. The number sold by the complainant, as shown by the record, is conclusive upon the subject.

The patent to Hobbs & Brown of the 4th of September, 1849, and the patents to Hamilton of the 30th of January, 1854, and the 5th of January, 1855, antedate the patent to Blake. It is insisted that each of them is for a machine substantially the same with the one described in Blake's patent, and that they are fatal to his claim of the requisite novelty of his alleged invention.

The machine of Hobbs & Brown is for

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Improvements in the application of well-known mechanical means for the purpose of crushing ice. The improvements consist in applying a hopper with one diagonal fixed side and two parallel sides to contain the ice, and compressing the ice by a movable fourth side, the fixed diagonal side and moving side having within them dental projections cut or cast on, to operate downward and prevent the ice from rising in the hopper when compressed, and also to enter and split the ice.

The machine is operated "by the combination with these parts of a lever fitted with an eccentric or cam-formed point."

There is in this description neither of the ingredients nor the compound of the Blake machine. Every element and the combination are both wanting. There is no mention of the converging adjustable jaws, of the revolving shaft, nor of the fly-wheel. The differences are as marked in the mode of operation as in the structural elements of the machine.

The Hobbs & Brown machine does its work by the downward and

sweeping movement of the jaw and the grasping and splitting by the teeth. The motive power is supplied and applied by a hand-lever, which gives a motion irregular and varying with the varying exigencies of the ice during the process to which it is subjected.

The Blake machine performs its functions by the short, regular, and unvarying vibrations of the smooth-faced adjustable jaw driven without intermission by the revolving shaft.

It is obvious that the Hobbs & Brown machine could not be applied with effect to the purpose of breaking stones without essential changes of principle and details.

Hamilton's machine was "for crushing and grinding quartz or other substances."

In the specification annexed to his original patent, he says:

My invention consists in the use of a cylindrical nut or pestle in a similarly-formed basin, the pestle having a partial rotary and crushing motion communicated to it by means of a lever attached thereto.

A is a basin, the lower part of which is made circular, and the sides parallel to each other. bb are flat ends or heads secured to the basin by bolts. C is the shaft carrying the cylindrical pestle d. E is a lever attached to or formed with the pestle d, the upper end being connected by a joint, 2, to a pitman, passing to a crank, eccentric, or other suitable mechanical contrivance to give the arm E an oscillating movement, and the pestle a partial rotary motion on its shaft C.

The claim of this patent is for

The means herein described and shown for crushing and grinding metallic ores, consisting of the cylindrical pestle d, provided with grooves in its upper part to crack the lumps of ore and set a shaft, C, on which it has a partial rotary motion, and operating in connection with the basin A, in which said pestle moves to grind the ore into powder by the gradual approach of the sides of said basin to the cylindrical pestle, said pestle being also provided with a scraper or agitator, 5, in its lower surface, to operate as specified.

The second patent is declared to

Consist in providing means for keeping the pestle down with sufficient force to pulverize the material operated on, and also to prevent the pestle from grinding too finely, i. e., to furnish material for simply cracking the ore or other material into small lumps of any desired size instead of grinding the same to a powder, thereby adapting the machine to different characters of metallic ores or other substances.

We have here no reflex or embodiment of either of the ideas that found expression in the Blake machine. The converging jaws, the revolving shaft, and the fly-wheel, are all wanting as in the Hobbs & Brown machine. Instead, there is a cylindrical nut or pestle, having a partial rotary and crushing motion communicated to it by means of a lever attached thereto. The pestle rotates on a central axis within an eccentric concave. The work is done by this pestle. There is nothing of the vibratory motion of a movable jaw, alternately advancing and receding, as in the Blake invention.

The difference is not that of mere mechanical equivalents. It is radical and goes to the essence of the organism. These considerations are so obvious that further remarks upon the subject are unnecessary.

The proofs show that but two of the Hamilton machines were ever made. Practically the invention was abandoned.

This brings us to the question of infringement.

There are numerous points of similarity, and, indeed, of identity, in the respondent's machine which are not controverted. It is for breaking stone. It has two upright jaws for this purpose, one fixed and the other movable. The jaws converge. The breaking is effected by the converg ence. The movable jaw alternately approaches toward and recedes from the fixed one. This movement is produced by a short and powerful vibratory motion communicated by a revolving shaft with a fly-wheel upon it. There is an opening at the upper end of the jaws where the stones are received and one below where they are discharged.

The only point of diversity insisted upon by the respondents is that the vibratory movement in the Blake machine is limited and unvarying, while in the machine of the appellants it is not of this invariable character.

In the Blake machine the movable jaw receives its movement from the revolving shaft through iron rods and levers. In the respondents' machine it is communicated from the revolving shaft through a confined column of water.

In the appellants' model the revolving shaft is not shown. In their machine it works the plunger of the pump from which the water is conveyed to a cylinder behind the movable jaw, whence it is applied to that jaw by means of a ram, the ram taking the place of the piston in an ordinary engine. Thus the vibrating arm, the toggle, the toggle-joint, and the pintles in the Blake machine are dispensed with, and their place supplied by the bydraulic arrangements we have described.

What is so employed in the appellants' machine is the obvious and exact equivalent of what is so dispensed with in the Blake machine. The liability of the packed joints to leakage is a serious objection to such use of water. Any considerable leakage would stop the machine. It could not be used while that condition existed. Constant care and vig ilance are necessary in such cases to prevent the frequent occurrence of this evil. Water does not escape from a safety-valve with the same celerity or effect as steam.

The Blake machine has a decided advantage in the greater simplicity and cheapness of its equivalents.

It is difficult to resist the conclusion that the change had no motive or purpose but evasion.

If there be no extraneous obstruction, the vibratory motion will be exactly the same in both cases. If there be such obstruction, the safetyvalve in the appellants' machine might possibly be brought into use with good effect. But if this were so, the valve would be only an addition and an improvement of the machine. The valve, therefore, is, in any view, quite immaterial to the inquiry we are pursuing.

Where an original machine and an improvement upon it are both

patented, neither patentee can use what does not belong to him with out the requisite authority from the owner. The appellants having embodied all the ideas of Blake's invention in their machine, the valve which supplemented it, whether good or bad, is outside of the case, and cannot affect the result.

We think the infringement is clearly made out.

It remains to consider the question of damages. A few remarks upon that subject will be sufficient.

The proof is meager and indefinite.

The infringers made but four machines.

No license fee charged by the complainant is shown. The burden of proof rests upon him. Damages must be proved; they are not to be presumed. The complainant made a profit of forty dollars an inch on the width of the jaws of the numerous machines he had sold.

But inventions covered by other patents were embraced in those machines. It was not shown how much of the profit was due to those other patents, nor how much of it was manufacturer's profit. The complainant was, therefore, entitled only to nominal damages. This the court gave him. It was all the state of the evidence warranted. would have been error to give more.

The decree of the circuit court is affirmed.

It

The costs of each appeal are adjudged against the party taking such appeal.

[United States Circuit Court-District of Massachusetts.]

CHARLES E. ASHCROFT vs. WILLIAM HOLLINGS.

O. G., vol. xi, p. 879.

In Equity.-Before SHEPLEY, J.-Decided April 13, 1877.

The patent for a lamp, can, or barrel, packed in part with an absorbent or finely gran. ulated material, and over them a body of wire-gauze or perforated thin plate, either rolled up like paper scrolls or put flat together like book-leaves, is not infringed by the use of a lamp containing cotton covered with a layer of asbestus or porous fireproof cement, and covered with one thickness of wire-gauze.

The invention patented to William Beschke, August 14, 1866, includes as a necessary ingredient wire-gauze or perforated thin plate in the form of scrolls or of layers like the leaves of a book.

OPINION OF THE COURT.

SHEPLEY, J.:

The defense in this case is based upon the alleged want of novelty in the invention described in the letters patent granted to William Beschke and others, August 14, 1866, No. 57,245, "for an improved method of using explosive fluids for the production of light and beat," and also upon a denial of any infringment of the Beschke patent. The question