infringe the complainant's patent, notwithstanding these differences. § 338. No process patent is infringed where any one of the series of acts which constitute the process is omitted by the supposed infringer, unless some equivalent act is substituted for the one omitted.' Precisely what constitutes equivalency, as between acts, has never been decided or stated by the Supreme Court. Reason seems to indicate that one act is the equivalent of another when it works in substantially the same way to accomplish the same result. Accordingly, it has been held that tamping oil wells with benzine, is equivalent to tamping them with water in respect of the series of acts which constitute the process covered by the Roberts torpedo patent. § 339. Machines and manufactures may well be treated together in respect of infringement, because no exact line can be drawn between them, and because the same rules of infringement are applicable to both those classes of tangible things. A patent for a machine or manufacture is infringed by him who, without ownership or license, makes, or uses, or sells any specimen of the thing covered by any claim of that patent. It is not an infringement of a patent, to make, use, or sell any specimen of any invention described but not claimed therein; because a patent covers only what it claims. But whoever infringes any one claim of a patent infringes the patent, whether or not it contains other claims which he does not infringe.* 1 Dittmar v. Rix, 1 Fed. Rep. 342, 1880; Hammerschlag v. Garrett, 10 Fed. Rep. 479, 1882; Cotter v. Copper Co. 13 Fed. Rep. 234, 1882; Arnold . Phelps, 20 Fed. Rep. 315, 1884. 2 Roberts v. Roter, 5 Fisher, 296, 1872. Howev. Williams, 2 Clif. 262, 1863; Waterbury Brass Co. v. Miller, 9 Blatch. 93, 1871; Toohey v. Harding, 4 Hughes, 253, 1880. 4 Moody v. Fiske, 2 Mason, 115, 1820; Wyeth v. Stone, 1 Story, 273, 1840; Pitts. Whitman, 2 Story, 609, 1843; Colt v. Arms Co. 1 Fisher, 108, 1851; Pitts v. Wemple, 2 Fisher, 10, 1855; Foss v. Herbert, 1 Bissell, 121, 1856; Morris v. Barrett, 1 Bond, 254, 1859; Singer . Walmsley. 1 Fisher, 558, 1860; McComb v. Bro die, 1 Woods, 153, 1871; McComb . Ernest, 1 Wocds, 195, 1871. Whether a particular thing made or used or sold by a particular person, infringes a particular claim of a particular patent, is always a question of fact. In some cases that question can readily be decided by the application of one rule of law, and sometimes by the application of another, and sometimes it can be decided only by the judicial sagacity of the tribunal before which the question is tried. Such relevant rules of law as are well established, will now be stated, and, as far as necessary, will be illustrated by describing the leading cases which embody them. § 340. The respective results of a machine or manufacture covered by the claim of a patent, and of a machine or manufacture alleged to infringe that claim, do not furnish a criterion by which to decide the question of infringement. Those results may be identical, while the things which produce them are substantially different. Any person may accomplish the result performed by a patented thing without infringing the patent, if he uses means substantially different from those of the patent.' To hold the contrary of this rule would be to retard, and not to promote the progess of the useful arts. So also, on the other hand, the respective results of patented and alleged infringing machines or manufactures may be entirely different without causing the latter to escape the charge of infringement, even when that charge is based on unlicensed using. This rule results from the well-established point of law that it is an infringement of a patent to use any machine or manufacture claimed therein, though such use is for a purpose which is not mentioned in the patent." § 341. Mode of operation is a criterion of infringement on one side of that question, but not on the other. If the mode 'O'Reilly . Morse, 15 Howard, 62, 1853; Steam Gauge & Lantern Co. v. Mfg. Co. 29 Fed. Rep. 447, 1886. * Smith v. Downing, 1 Fisher, 84, 1850. 3 Mabie v. Haskell, 2 Clif. 511, 1865; of operation of an alleged infringing thing is substantially different from that covered by the claim alleged to be infringed, it follows that the charge of infringement must be negatived; but if the mode of operation is substantially the same it does not follow that the charge of infringement must be affirmed. In that case the question must be decided by some additional criterion. To establish an infringement of a claim, the facts must be subjected to several successive tests. If the case fails on either of those tests, no further inquiry need be made; but an infringement cannot be affirmed till all those tests have been applied and have been withstood. The first of these is that which relates to identity of mode of operation. It is therefore important to know wherein this requisite identity consists. A dogmatic statement on that point has probably never been ventured by any court. The nature of the question seems not to admit of an answer which shall be at once short and sufficient. The best way to investigate the subject is probably to reason by analogy from precedents; and accordingly several of the sections which immediately follow, are devoted to an analysis of cases, with a view to furnishing the investigator with data for such reasoning. § 342. The Cawood patent' covered a machine which combined the mode of operation of an anvil, with the mode of operation of a vise. A drawing of the machine is printed on page 492 of 1 Wallace. The railroad rail mended upon it, was supported by it as by an anvil; and at the same time was clasped by it as by a vise. The Supreme Court held that the "Michigan Southern" machine did not infringe the Cawood patent, because while that machine did clasp the rail as a vise, it did not support the rail as an anvil. The same tribunal also held that the Beebe and Smith machine did not infringe the Cawood patent, because 'Field v. De Comeau, 116 U. S. 187, 1886; Yale Lock Co. v. Sargent, 117 U. S. 378, 1886; Smith v. Downing, 1 Fisher, 83, 1850; Eames v. Cook, 2 Fisher, 149, 1860. 2 Cawood Patent, 94 U. S. 706. 1876. its mode of operation was different. It both supported and clasped the rail, but it clasped it by holding it between two jaws, which jaws, when in position, rested in a V-shaped notch in the anvil. The exterior of the jaws were also V-shaped, in order to fit the notch, and they clasped the rail because of their gravity, and not in the manner of a vise. They also supported the rail, but in a manner peculiar to themselves, and not in the manner of an anvil. § 343. The driven-well patent, reissue No. 4372, covers an interesting invention. That invention is practised by driving into the ground a long tube closed and pointed at its lower end, and having perforations through its sides just above that end; and by attaching a pump to its upper end; and by working that pump whenever water is desired. The mode of operation of that well is as follows: The working of the pump creates a vacuum in the tube, and that vacuum in turn creates a vacuum outside of the tube in the neighborhood of its lower end, and the latter vacuum draws to itself all the water in several millions of cubic feet of the surrounding earth. The alleged infringer in one case,' followed the patent in· every particular except that instead of driving the tube. into the earth, or into a hole previously made by driving down a rod smaller than the tube, he bored a hole into the earth with an auger larger than the tube which he placed in the hole after the auger was withdrawn. This apparently slight change caused the well to have a substantially different mode of operation from that covered by the patent. The pump, indeed, created the vacuum in the tube as before, but that vacuum created no vacuum around the outside of the tube, because the space outside of the lower end of the tube was in direct communication with the external air, through the annular space which surrounded the tube throughout its entire length, and which was due to the fact that the tube was smaller than the hole in which it was placed. Because of this difference, Judge MCCRARY, with excellent 1 Andrews v. Long, 12 Fed. Rep. 871, 1880. discrimination, held that the well of the defendant did not infringe the driven-well reissue. § 344. Blanchard's patent for a machine for turning and cutting irregular forms, consisted of a combination of a model, a guide, and a cutter-wheel. When the machine was in operation the guide followed the irregularities of the model, as the model revolved, and the guide also caused the cutter to follow the same irregular curves while the rough block was revolved under the cutting edges. Both model and block had a continuous lateral motion, as well as a continuous rotary motion, and therefore the guide and the cutterwheel proceeded in corresponding spiral courses. In that way the guide traversed all parts of the surface of the model, and the cutter-wheel traversed all portions of the rough block, and thus reduced the latter to conformity with the shape of the model. An infringer in one case' so combined the parts of the machine, that the model and rough block both rotated by an intermittent motion, and moved laterally by a rectilinear reciprocating motion. Justice GRIER held that this mode of operation was substantially unchanged from that of the patent. § 345. Hayden's patent for a machine for making brass ketiles consisted of two general divisions. 1. An engine lathe with its mandrel to revolve the pulleys and the gearing, and having special devices for the special work in hand. 2. A furnishing or spinning tool and tool carriage, secured to the frame of the lathe, and having special devices to make it work harmoniously with the lathe in producing the kettles which the two divisions of the machine jointly operated to manufacture. These two divisions were operated by one motive power, like a shaft, which might be connected with a water wheel, or with a steam engine, or with any other suitable source of motion. 2 The infringer in one case operated the first division of the machine by one such motive power; but he operated 1 Blanchard v. Reeves, 1 Fisher, 103, 1850. 2 Waterbury Brass Co. v. Miller. 9 Blatch. 94, 1871. |