Stockton v. Ford. 11 H.

the title acquired at the sheriff's sale to the judicial mortgage, on paying the purchase-money. And if the purchase was made in bad faith, and with the intent to speculate at the expense of the rights and interests of the client, using the knowledge derived from that relation for this purpose, the remedy might not be too strong even to set aside the sale, and relieve the property from the incumbrance without the terms mentioned.

It is true, this is not the case of an attorney purchasing property under an execution which he has issued on a judgment, the usual case in which a court of equity has interfered, and declared the purchase to have been made in trust for the client. But the principle is the same. He had the charge of the judgment, and was intrusted with the management of it for the purpose of collection; and can be allowed to do no act in the absence of the client, and without his consent concerning it, by which he may derive an advantage at the expense of the client.

Instead of the judgment, suppose the plaintiff had the charge and management of a plantation and slaves for this client, and an execution should come against them under which they were seized and sold; can it be doubted, if purchased in by the attorney in the absence of the client, and without his consent, that he could not hold the property discharged of the trust growing out of the relation existing between the parties? We suppose not. A court of equity, from the mere fact of such relation, would fasten upon the purchase a trust, without any inquiry into the motives or intentions of the attorney in making the purchase, and compel him to give up its benefits and advantages on the reimbursement of the purchase-money. Neither fraud nor imposition need be shown. The client may, at his election, treat the act as done for his benefit.

There are few of the business relations of life involving a higher trust and confidence than that of attorney and client, or, generally speaking, one more honorably and faithfully discharged; few more anxiously guarded by the law, or governed by sterner principles of morality and justice; and it is the duty of the court to administer them in a corresponding spirit, and to be watchful and industrious, to see that confidence thus reposed shall not be used to the detriment or prejudice of the rights of the party bestowing it.

But it is unnecessary to pursue this branch of the case, [*248] or to *place our decision upon it, as the ground already taken, and stated more at large, affords a full and conclusive

answer to the claim set up by the plaintiff.

The decree of the court below is affirmed.

18 H. 418; 7 Wal. 205.

Hotchkiss v. Greenwood. 11 H.

JULIA P. HOTCHKISS, Executrix of JOHN G. HOTCHKISS, deceased, JOHN A. DAVENPORT, and JOHN W. QUINCY, Plaintiffs in Error, v. MILES GREENWOOD and THOMAS WOOD, Partners in Trade under the Name of M. GREENWOOD and Co.

11 H. 248.

The use of clay to make a particular kind of door-knob, that kind of knob being known, and clay having been used to make door-knobs of other kinds, and the practicability of using it for this kind of knob being obvious to an ordinary mechanic acquainted with the business, is not the subject of letters-patent.

THE case is stated in the opinion of the court.

Ewing for the plaintiffs.

Chase, contrà.

* NELSON, J. delivered the opinion of the court. This is a writ of error to the circuit court of the United States for the district of Ohio.

[ * 264 ]

The suit was brought against the defendants for the alleged infringement of a patent for a new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain.

The improvement consists in making the knobs of clay or porcelain, and in fitting them for their application to doors, locks, and furniture, and various other uses to which they may be adapted; but more especially in this, that of having the cavity in the knob in which the screw or shank is inserted, and by which it is fastened, largest at the bottom and in the form of dovetail, or wedge reversed, and a screw formed therein by pouring in metal in a fused state; and, after referring to drawings of the article thus made, the patentees conclude as follows:

"What we claim as our invention, and desire to secure by letterspatent, is the manufacturing of knobs, as stated in the foregoing of specifications, of potter's clay, or any kind of clay used in pottery, and shaped and finished by moulding, turning, burning, and glazing; and also of porcelain."

On the trial, evidence was given on the part of the plaintiffs tending to prove the originality and usefulness of the invention, and also the infringement by the defendants; and on the part of the defendants, tending to show the want of originality; and that the mode of fastening the shank to the knob, as claimed by the plaintiffs, had been known and used before, and had been used and applied to the fastening of the shanks to metallic knobs

Hotchkiss v. Greenwood. 11 H.

And upon the evidence being closed, the counsel for the plaintiffs prayed the court to instruct the jury that, although the clay knob, in the form in which it was patented, may have been before known, and used, and also the shank and spindle by which it is attached may have been before known and used, yet if such shank and spindle had never before been attached in this mode to a knob of potter's clay, and it required skill and invention to attach the same to a knob of this description, so that they would be firmly united, and make a strong and substantial article, and which, when thus made, would become an article much better and cheaper than the knobs made of metal or other materials, the patent was valid, and the plaintiffs would be entitled to recover.

The court refused to give the instruction, and charged the jury that, if knobs of the same form and for the same purposes as that claimed by the patentees, made of metal or other material had [*265] been before known and used; and if the spindle and shank, in the form used by them, had been before known and used, and had been attached to the metallic knob by means of a cavity in the form of dovetail and infusion of melted metal, the same as the mode claimed by the patentees, in the attachment of the shank and spindle to their knob; and the knob of clay was simply the substitution of one material for another, the spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than that possessed by an ordinary mechanic acquainted with the business, the patent was invalid, and the plaintiffs were not entitled to a verdict.

This instruction, it is claimed, is erroneous, and one for which a new trial should be granted.

The instruction assumes, and, as was admitted on the argument, properly assumes that knobs of metal, wood, &c., connected with a shank and spindle, in the mode and by the means used by the patentees in their manufacture, had been before known, and were in public use at the date of the patent; and hence the only novelty which could be claimed on their part was the adaptation of this old contrivance to knobs of potter's clay or porcelain; in other words, the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise; as it might very well be urged, and successfully

urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and none the less so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

But, in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

*Now it may very well be, that, by connecting the clay [* 266 ] or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

But this, of itself, can never be the subject of a patent. No one will pretend that a machine made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

I remember having tried an action in the circuit in the district of Connecticut some years since, brought upon a patent for an improvement in manufacturing buttons. The foundation of the button was wood, and the improvement consisted in covering the face with tin, and which was bent over the rim so as to be firmly secured to the wood. Holes were perforated in the centre, by which the button could be fastened to the garment. It was a cheap and useful article for common wear, and in a good deal of demand.

On the trial, the defendant produced a button, which had been

Hotchkiss v. Greenwood. 11 H.

taken off a coat on which it had been worn before the Revolution, made precisely in the same way, except the foundation was bone. The case was given up on the part of the plaintiff. Now the new article was better and cheaper than the old one; but I did not then suppose, nor do I now, that this could make any difference, unless it was the result of some new contrivance or arrangement in the manufacture. Certainly it could not, for the reason that the materials with which it was made were of a superior quality, or better adapted to the uses to which the article is applied.

It seemed to be supposed, on the argument, that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article, beyond that produced when applied to the metallic

knob, inasmuch as the fused metal by which the shank was [267] fastened to the knob prevented the shank from acting immediately upon the knob, it being inclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable.

This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob, or one of bone or ivory, or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury; for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor.

We think, therefore, that the judgment is and must be affirmed.

WOODBURY, J., dissented.

I feel obliged to dissent from my brethren in this case. It is chiefly, however, in regard to the manner in which some of the facts were submitted to the jury; but, involving as it does an important principle in the practice under our patent system, it may be useful to explain the grounds of my dissent.

It is agreed that in July, 1841, John G. Hotchkiss and two others obtained a patent for what they described as "a new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain."