Odiorne v. Winkley

STORY, Circuit Justice. I am of opinion, that it is an improper inquiry, and overrule it It can. at best, amount to no more, than going into collateral inquiries, not relevant to the matter in issue, barely to prove a witness to be incorrect. And I hold it a clear rule of law that a witness cannot be asked, as to a mere collateral fact, having no relevancy to the issue, in order to draw from him an answer, which might, by other evidence, be shown incorrect, and thereby to discredit him. Besides, if the inquiry were gone into, it would embarrass the jury, by drawing their attention to the principles of a machine not in controversy before the court, and. whichever way the question as to such machine might be settled, if could have no legal tendency to prove the identity or diversity of the two machines in controversy.2 STORY, Circuit Justice (charging jury). The first question for consideration is, whether the machines used by the defendant are substantially, in their principles and mode of operation, like the plaintiffs machines. If so, it was an infringement of the plaintiff’s patent to use them, unless some of the other matters offered in the defence are proved. Mere colorable alterations of a machine are not sufficient to protect the defendant. The original inventor of a machine is exclusively entitled to a patent for it. If another person invent an improvement on such machine, he can entitle himself to a patent for such improvement only, and does not thereby acquire a right to patent and use the original machine; and if he does procure a patent for the whole of such a machine with the improvement, and not for the improvement only, his patent is too broad, and therefore void. It is often a point of intrinsic dufficulty to decide, whether one machine operates upon the same principles as another. In the present improved state of mechanics, the same elements of motion, and the same powers, must be employed in almost all machines. The lever, the wheel, and'the screw, are powers well known; and if no person could be enti-tied to a patent, who used them in his machine, it would be in vain to seek for a patent. The material question, therefore, is not whether the same elements of motion, or the same component parts are used, but whether the given effect is produced substantially by the same mode of operation, and the same combination of powers, in both machines. Mere colorable differences, or slight improvements, cannot shake the right of the original inventor. To illustrate these positions; suppose a watíí^i was first invented by a person, so as to mark the hours only, and another person added the work to mark the minutes, and a third the seconds; each of them using the same combinations and mode of operations. to mark the hours, as the first. In such a case, the inventor of the second-hand could not have entitleu himself to a patent embracing the inventions of the other parties. Each inventor would undoubtedly be entitled to his own invention and no more. In the machines before the court, there are three great stages in the operations, each producing a given and distinct effect; 1. The cutting of the iron for the nail; 2. The griping of the nail: 3. The heading of the nail. If one person had invented the cutting, a second the griping, and . a third the heading, it is clear, that neither could entitle himself to a patent for the whole of a machine, which embraced the inventions of the other two, and, by .the same mode of operation, produced the same effect; and, if he did, his patent would be void. Some machines are too simple to be thus separately considered; others again are so complex, as to be invented by a succession of' improvements, each added to the other. And, on the whole, in the present case, the question for the jury is. whether, taking Reed's machine, and Perkins’s machine together, and considering them with their various combinations, they are machines constructed substantially upon the same principles, and upon the same mode of operation. If they are, then Reed's patent is void, and the plaintiff is not entitled to recover; and the finding of the jury upon the first special point stated in the defendant's specification of defence must essentially depend upon their decision upon this question. As to the question, whether the patent was surreptitiously obtained, there is no direct or positive proof, that Reed had ever seen Perkins’s machine before he obtained a patent, but there is evidence, from which the jury may legally infer the fact, if they believe that evidence. It is a presumption of law that when a patent has been obtained, and the specifications and drawings recorded in the patent office, every man. who subsequently takes out a patent for a similar machine, has a knowledge of the preceding patent. As in chancery it is a maxim, that every man is presumed to have notice of any fact, upon which he is put upon inquiry by documents within his possession, if such fact could, by ordinary diligence, be discovered upon such inquiry. It is also a — 583 — presumption of fact, that every man, having within his power the exact means of information, and desirous of securing to himself the benefit of a patent, will ascertain for his own interest, whether any one on the public records has acquired a prior right. [For another case involving this patent, see Case No. 10,430.) The jury will judge, under all the circumstances of this case, whether either or any of the points of defence are sustained by the evidence; and if so. they will find their verdict accordingly. If they find a verdict for the plaintiff, the court will treble the damages. Verdict for the defendant. A motion for a new trial was afterwards made and abandoned, and judgment was entered upon the records of a vacatur of the patent. Footnotes [2] See, s. p., Rex v. Watson, 2 Starkie. 149-151; Spenceley v. De Willett, 7 East. 108.