MAY V. COUNTY OF FOSD DU LAC.
691
tbe very extent, which the language properly indicates. In the next place. no court is at liberty to add to the terms used any meaning beyond their ordinary import, unless there are some supplementary expressions to justify such a construction."
The word "invention" or "improvement," when used in reference to a pending application, naturally refers to the subject-matter of the expected grant, and would seem more appropriately to refer to that alone than to a possible future title 'which may be granted out of personal consideration for the inventor. It has been held in several cases in the circuit court that an assignment of an interest in an invention, and letters patent therefor, made before the expiration of the original term, does not carry with it any interest in a subsequently extended term, unless the agreement contains a specific provision to that effect. Gear v. GrosL'enor, 6 Fisher, 321; Wetherill v. Zinc Go., ld. 50; Holmes v. Sprague, 4 O. G. 581. The complainant in this case alleges that the plaintiff entered into a written contract with one Emory, in which it was agreed that the latter "should advance certain sums of money, which would be required to take out said (original) letters patent; and that the former, in consideration thereof, should assign to himself and said Emory jointly said letters patent about to be issued," and that said contract was duly recorded in the patent-office. Within all the authorities, such an assignment would not carry the interest of the patentee in extending letters patent. The defendant's argument is based upon the recital contained in the original letters patent,-"he (the inventor) having assigned his right, title, and interest in said improvement to himself and Francis F. Emory." This recital should not be construed to countervail the allegation in the bill of an assignment of the letters patent merely. If the case were to be decided upon this consideration alone, the demurrer would have to be overruled. ( Judgment 1S ordered for the plaintiff on the demurrer, unless the defendant answers.
MAY 11. COUNTY OF FOND DU LAO.1
(Circuit Court, E. D. Wi9comin.
May 15,1886.)
1.
PATENTS FOR INVENTIONS-INVENTION.
To be patentable, a thing must not only be new and usetul, but must amount to an invention or discovery.
2. SAME-COMBINATIONS.
Each and all of the separate parts of a combination may be old and well known. Nevertheless, if the combination is new, produces a new and usehl result, and requires more than mere mechanical skill tQ produce it, it is pat· entable. .
1
Edited by' Charles C. Linthicum, Esq., of the Chicago bar.
692 8. 4. fl.
FEDERAL REPORTER.
BAME-PIONEER INVENTORS-IMPROVERS·
.A patent original in its character is entitled to a broader construction than one which is for a mere improvement.
SAME-INFRINGEMENT.
An infringement takes place whenever a part;! avails himself of the invention of the patentee without such variation as wIll constitute a new discovery. Whether or not one machine is an infringement of another does not necessarily depend upon whether the mechanical constructions are different, but whether the new idea is completely embodied in the structure as found. A mere mechanical substitute for a thing must be regarded as the thing itself.
SAME-WHAT INFRINGES.
6. 7. 8.
SAME- MECHANICAL EQUIVALENTS.
SAME-DEFINED.
Mechanical devices are equivalents when skillful and experienced workmen know that one will produce the same result as another Whether the defendant has used substantially the same means, or, in other words. mechanical equivalents, to accomplish the same result, is a question for the jury to determine. To constitute an infringement, it is not necessary that the result accomplished should be precisely the same in degree as that of the inventor, but it must be the same in kind. The testimony of a mechanical expert, in a suit for infringement, must be tried by the same tests that are applied to the evidence of other witnesses; lJ,nd it must receive just such credit and weight as it appears to be entitled to from all the circumstances, and no more. A fixed royalty, at which the right to use the patented device was sold, being shown, such royalty constitutes the proper measure of damges.
SAME-QUESTION FOR JURY.
9.
SAME-INFRI'<GEMENT-DIFFERENCE IN DEGREE.
10.
SAME-EXPERT TESTIMONY, FORCE OF.
11. 12.
SAME-DAMAGES-EsTABLISHED ROYALTY.
SAME-INTEREST ON DAMAGES.
In this case the jury were instructed that if they allowed damages they should also allOW interest at the rate of 7 per cent. from the date of commencing suit.
Suit at law to recover damages for infringement of letters patent No. 25,662, granted to Edwin May, October 4, 1859, for improvements in the construction of prisons, extended October 4, 1873, for seven years, damages being claimed only for infringements committed within the extended term. Defendant pleaded-First, the general issue; second, the statute of limitations of the state of Wisconsin as to so much of the cause of action as was for the alleged infringements committed prior to the twenty-ninth day of September, 1879, (six years before the suit was commenced;) third, lack of novelty, in that one Radcliff, then a prisoner in the state prison at Waupun, Wisconsin, was the original inventor; and, fourth, prior use at said Waupun. G. IV. Hazelton, Edward Taggart, and AI. G. Bllrch, for plaintiff. Shepard dJ Shepard and F. F. Duffy, for defendant. DYER, J., (charging jury.) This is a suit at law to recover damages for the alleged infringement of a patent granted to Edwin May, on the fourth day of October, 1859. As you are aware, when a party invents a new and useful device or improvement, the laws of the United States provide that, for a limited term of years, he shall have an ex·
MAY V. COUNTY OF FOND DU LAC.
693
elusive property right in such invention, which means the sole and exclusive privilege of manufacturing, using, and selling the same. If the subject-matter of a patent possesses the requisites of novelty and utility,-if it constitutes an invention or discovery,-the owner of the patent, and of the rights secured by it, will be protected against the use of it by any other person without his consent. As the product of his inventive faculty, the invention is just as much the property of the inventor as his house or farm, and no man has the right to appropriate it to his own use, against the patentee's will, any more than he has to take from him his house or farm. The laws of the United States on this subject are designed to encourage meritorious and useful inventions, and to protect their owners in the profitable enjoyment of them during the period fixed by the statute. If, therefore, a new and useful invention, covered by a valid patent, is exhibited in this case, and if the defendant has unlawfully pirated upon it, the plaintiff is entitled to recover damages on account of such invasion of her rights, the same as if she had suffered disturbance of any other property right. As I have said, the patent in suit was granted October 4,1859. The term of the patent was 14 years; so that the original term expired October 4, 1873. But, as provided by law, the patent was renewed and extended for the further term of seven years from and after the expiration of the first term; so that the pa;tent continued in force until the fourth day of October, 1880, when it finally expired. It seems that on the twenty-seventh day of February, 1880, the patentee, Edwin May, died, and, in the course of administration of his estate, there was a sale of all rights under the patent, by the administrator, to the plaintiff, who became the owner in law, on the sixth day of March, ] 882, of all rights of action and claims for damages on account of infringements of the patent which accrued prior to October 4, 1880. It is charged by the plaintiff that between the fourth day of October, 1873, when the patent was extended, and the fourth day of October, 1880, when it finally expired, the defendant, the County of Fond du Lac, wrongfully, and without license from the plaintiff or her assignor, or the patentee, used a mechanical apparatus which was an infringement of the patent; and it is on account of this alleged use that the plaintiff seeks to recover damages. The patent relates to an alleged new and useful improvement in the construction and operation of prisons. The evident object of the improvement is to avoid the necessity of actual contact with the prisoners, while the keeper can observe their movements, and, with security to himself, {lontrol them. The patent is what is known as a combination mechanical patent, and the utility of the thing or things patented is apparent, I think, at a glance. To construct a jail or prison so that prisoners can be safely kept, and their movements controlled, and so that the jailer is at the same time secured from violence, is without doubt .a beneficial object. A model of the patentee's
