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change the form and proportions of the compartments of a refrigerator, so as to utilize the descending instead of the ascending current of endlessly circulating air, was but a double use of that refrigerator.
Many other cases also embody the rule of this section, and apply it to particular double uses of old inventions.'
An exception to the general rule of this section consists in the lately established proposition that where a new use of an old thing consists in combining it with other things in new organization, invention may be present; and another exception to the general rule appears to reside in the proposition that invention may be present in a new use of an old process where the applicability of that process to that use was outside of the knowledge and belief of persons skilled in the art to which the new use pertained.'
$ 39. The rule of the last section is an easy one to apply to a case to which it is relevant, if the thing or process
1 King 0. Gallun, 109 U. S. 99, 1883; Pennsylvania Railroad Co. o. Truck Co. 110 U.S. 491, 1883; Blake 0. San Francisco, 113 U. S. 679, 1884; Miller 0. Foree, 116 U. S. 27, 1885; Dreyfus 0. Searle, 124 U. S. 63, 1887; Hendy v. Iron Works, 127 U. S. 375, 1887; Crescent Brewing Co. v. Gottfried, 128 U. S. 169, 1888; Peters 0. Active Mfg. Co. 129 U. S. 530, 1888; Peters v. Hanson, 129 U. S. 511, 1888; Bean o. Smallwood, 2 Story, 408, 1843; Meyer v. Pritchard, 1 Bann. & Ard. 261, 1874; Adams 0. Loft, 4 Bann. & Ard. 496, 1879; Royer 0. Mfg. Co. 20 Fed. Rep. 8.13, 1884; Howe Machine Co. 0. Needle Co. 21 Fed. Rep. 630, 1884; Spill o. Celluloid Mfg. Co. 21 Fed. Rep. 639, 1884; Celluloid Mfg. Co. 1. Noyes, 25 Fed. Rep. 319, 1885; A roll 8. Manhattan Ry. Co. 26 Fed. Rep. 317, 1886; Marchand o. Emken, 26 Fed. Rep. 629, 1886; Shenfield v. Mfg. Co. 27 Fed. Rep. 808, 1886;
Busell Trimmer Co. v. Stevens, 28
Telephone Cases, 126 U. S. 572, 1887.
3 Cary o. Wolff, 24 Fed. Rep. 139, 1885.
covered by the patent in that case is used for the new purpose, without being changed either in construction or mode of operation. That is, however, not always the fact; and
, where it is not the fact, the rule is of but minor practical utility as a guide to a just conclusion. It does not apply to using any new thing for a new purpose ; and in order to apply it to anything which differs somewhat from the most similar thing that preceded it, it is necessary first to determine whether that difference constitutes legal novelty : to determine whether the thing covered by the patent is really old. That question must be investigated by the aid of rules other than that of the last section; and when it is determined in the negative, it will follow that the rule of that section does not apply to the case.
$ 40. Want of invention, if it really exists in a particular process or thing, can nearly always be detected by one or another of the foregoing rules. When a case arises to which neither of them applies, and relevant to which the mind remains in uncertainty, that uncertainty may be removed by means of the rule in Smith v. The Dental Vulcanite Co.,' namely: When the other facts in a case leave the question of invention in doubt, the fact that the device has gone into general use, and has displaced other devices which had previously been employed for analogous uses, is sufficient to turn the scale in favor of the existence of invention.
$ 41. To change the form of a machine or manufacture is sometimes invention, and sometimes it is not invention. Where a change of form is within the domain of mere con
struction, it is not invention; but where it involves a change • of mode of operation, or a change of result, it is invention,
unless it is held to be otherwise in pursuance of some rule other than any which relates to form.'
i Smith 0. Dental Vulcanite Co. 93 U. S. 495, 1876; Hollister v. Mfg. Co. 113 U. S. 72, 1884; Hill v. Biddle, 27 Fed. Rep. 560, 1886.
? Winans o. Denmead, 15 Howard, 341, 1853; Davis v. Palmer, 2 Brock,
310, 1827; Mabie o. Haskell, 2 Cliff, 510, 1865; Aiken o. Dolan, 3 Fisher, 204, 1867; United States Bung Mfg. Co. 0. Independent Bung Co. 31 Fed. Rep. 76, 1887.
$ 42. A question of invention is a question of fact and not of law;' though it is to be determined by means of the rules of law set forth in this chapter. In applying those rules, patents are not held void for want of invention except where invention is clearly absent. '
$ 43. Every inventor or constructor is presumed by the law to have borrowed from another whatever he produces that was actually first invented and used by that other.' It follows that such of the foregoing rules as involve an inquiry into the state of the art to which the thing or process in controversy pertains, may involve an inquiry into the date and the character of inventions which were in fact unknown to the patentee, when he produced that thing or process. Such an inquiry ought not, however, to include anything which, had it been identical with that thing or that process, would not have negatived its novelty. What prior things will not have the latter effect is fully explained in the third chapter of this book.
8 44. It was shown in Section 23 that patents are grantable for nothing but inventions. It is also the law that they can be granted only to those who invented the inventions they respectively cover, or to the assignees or legal representatives of those persons. The subjects of assignments and devolutions of inventions and patents are explained in the chapter on title, but this is the proper place in which to treat the subjects of joint invention and sole invention.
$ 45. If A. B. notices the need of a new machine to perform a particular function, and thereupon conceives the plan of such a machine, and proceeds to embody that plan in a successful working structure, and does all this without assistance from any other person, then it is clear that he is a sole inventor of that machine. If, on the other hand, C. D. notices the need of a new machine to perform a par
· Poppenhusen o. Falke, 5 Blatch. 49, 1862; Shuter v. Davis, 16 Fed. Rep. 564, 1883.
421, 1888; Marvin v. Gotshall, 36 Fed. Rep. 908, 1888.
: Reiter 0. Jones, 35 Fed. Rep.
3 Crompton 0. Knowles, 7 Fed. Rep. 203, 1881.
ticular function, and calls the attention of E. F. to the matter, and a successful invention is, after many conversations between the two, embodied in a working machine constructed by the hands of both, then it may be that C. D. is the sole inventor, or it may be that E. F. is the sole inventor, or it may be that both are joint inventors of the machine they produced. Upon what considerations the fact on this point depends it is now in order to point out.
§ 46. Every machine, before it can be used, must be constructed as well as invented. If one man does all the inventing and another does all the constructing, the first is the sole inventor. Equally axiomatic is the proposition that if both participate in the inventing they are joint inventors, regardless of whether both take part in the constructing. Plainly true as this last doctrine appears to be, there are several Circuit Court decisions with which it is not perfectly harmonious.
Justice NELSON once decided that where A. B. aided C. D. to invent a machine, but did not furnish all the information necessary to complete the invention, and where C. D. thereupon did the required residue of the inventing, and did all of the constructing of the machine without further help, he was the sole inventor of that machine.'
Justice SWAYNE, on the other hand, decided that where A. B. drew a sketch in sand to represent his ideas of a possible improvement of a portable steam engine, and where C. D. from that sketch made working drawings, and from those drawings built a working engine, without further interference or suggestion from A. B., the latter was the sole inventor of the improvement so produced.”
Now, if we apply the doctrine of Justice NELSON to the facts passed upon by Justice SWAYNE, we shall probably be driven to the conclusion that C. D., and not A. B., was the sole inventor of that improvement in steam engines, because it is very improbable that any mere sketch in sand furnished
· Pitts 0. Hall, 2 Blatch. 229, 1851.
? Blandy v. Griffith, 3 Fisher, 609, 1869.
C. D. with all the information necessary to complete that invention. There must have been something which, in the language of Justice NELSON, “was left for him to devise and work out by his own skill or ingenuity, in order to complete the arrangement."
In the case before Justice NELSON it was C. D., and in that before Justice SWAYNE it was A. B., who had obtained a sole patent. In each case the defendant insisted that the other man concerned in the production of the invention, and not the patentee, was the sole inventor; and in both cases that contention was evidently unfounded in fact. The patents were prima facie evidence of their own validity, and not being attacked at their vulnerable points were necessarily sustained. Had the defendant in either case urged the defence of joint invention as being fatal to a sole patent, then the true question would have been before the court, and the charge to the jury in the first case, or the opinion of the judge in the other, would have been adapted to that issue. The failure of counsel to take the proper ground of defence in the two cases deprived the profession and the public of what would doubtless have been very instructive deliverances relevant to the point under present inspection. Taking into account, however, the facts of the two cases and the lack of harmony between the doctrines involved in the two opinions, it is safest to lay them both out of view in the present connection. Both cannot be followed by the Supreme Court, and it is not probable that either will be. The question has never been squarely presented to that tribunal; but when it is so presented it will doubtless be decided that where two or more persons exercised their inventive faculties in the mutual production of a new and useful process or thing, those persons are joint inventors thereof, regardless of whether one, or part, or all, or neither of those persons constructed or helped to construct the first specimen of that thing, or performed or helped to perform the first instance of that pro