tion consists in carrying on the old process of reducing a puddler's ball to a bloom, by pressure created and continued by his machinery. That the machinery by which such pressure may be applied is patentable, is obvious. But aside from the peculiar construction of Burden's machinery, there is nothing new in its application. It is merely the application of a known mode of operation in the arts, to produce a known result, that is, mechanical press ure, to produce a bloom out of a puddler's ball. (See Curtis, p. 78, sec. 88.)

That this form of applying mechanical pressure is not new, was proved by, &c., &c.

his charge, to wit: "That the machine used by the defendants is an infringement of the said letters patent, if it converts puddlers' balls into blooms by the continuous pressure and rotation of the balls between converging surfaces, although its mechanical construction and action may be different from that of the machines described in the said letters patent."

Also in excluding the testimony offered by the following question, to wit: by changing the form of the rolling surfaces in Mr. Winslow's machine, can it be made to roll a sphere?

Also the testimony offered as follows: "The counsel for the defendants then offered to 3. Notwithstanding the condition embodied prove by this witness that the machine used by in the second proposition contained in the the defendants differed, in point of mechanical charge of the court, as follows: "The ma- construction and mechanical action, from the chines for milling buttons, milling coin and machines described in Burden's specification.” rolling shot, which have been given in evidence All these propositions were thus erroneously by the defendants, do not show a want of nov- adjudged against the defendants, as a sequence elty in the invention of the said patentee, as al- or corollary following from the first main ready described, if the processes used in them, proposition which the court had laid down the purposes for which they were used, and the against the defendants, to wit: that the plaintobjects accomplished by them, were substantial- iff's patent was for a process and not for a maly different from those of the said letters patent;" chine. The court in substance held, that alyet taken in connection with the construction though the mechanical construction and action given by the court to the patent, in the first of the defendants' machine might be different proposition contained in the charge, the defend- from that of the plaintiff's, *it was still [*259 ants were deprived of the defense to which they an infringement if it reduced the balls to were entitled, to wit: That the reducing pud-blooms by continuous pressure and rotation. dlers' ball to blooms, by their rotation and press- This was an erroneous position. For one ure between converging and continually ap- thing was certain. We had the right to reduce proximating surfaces, was but a double use of puddlers' balls to blooms by any machine hava process or machine, long before used in milling a different action from that of the plaintiff. ing buttons, milling coins and rolling shot.

For the court had decided, in the first proposition of the charge, that Burden's patent was "for a new process of converting puddlers' balls into blooms, by continuous pressure and rotation of the ball between converging surfaces."

258*] *In other words, that the application by the plaintiff's machine to the puddlers' ball, of the old method of reducing and compacting metals by the continuous pressure of converging surfaces, constituted such a novel process in the manufacture of iron, that (its utility not being questioned) the plaintiff's patent was good, notwithstanding the previous use of the milling machine on copper, silver, and gold, and of the shot machine on lead, in compacting and reducing those metals by the rotation of the metais and the continuous pressure of converging surfaces.

use.

4. Burden's patent is clearly a case of double (See Curtis on Patents, secs. 85 to 89, and notes and cases therein cited; Losh v. Hague, Webster's Pat. Cas., 207; Howe v. Abbott, 2 Story, 190-193.)

To this defense the defendants were clearly entitled. The processes of milling the coin, finishing the edges of the buttons, making the shot or balls and making the blooms, are strictly identical.

V. The court erred in charging the jury as they did in the latter clause of the first proposition contained in the charge, to wit: "And the said letters patent secure to the patentee the exclusive right to construct, use and vend any machine adapted to accomplish the objects of his invention as above specified, by the process, mode, or method above mentioned."

Also in laying down the third proposition in

(Curtis, sec. 96, n. 2; Whittemore v. Cutter. 1 Gall., 478-491; Barrett v. Hall, 1 Mason, 470.)

In the light of these authorities, proof of different mechanical construction and different action was competent and highly pertinent to establish a peculiar structure," and the production of a new effect.

VI. The court erred in excluding the evidence offered to be given by the witness, Hibbard, to wit: "That the practical manner of giving effect to the principle embodied in the machine used by the defendants was entirely different from the practical manner of giving effect to the principle embodied in Mr. Burden's machine-that the principle of the two machines, as well as the practical manner of carrying out those principles, was different; and that the machine used by the defendant produced by its action on the iron a different mechanical result, on a different mechanical principle, from that produced in Burden's machine."

The witness was an expert, and no objection was urged on that score, or to the form of the question. (Silsby v. Foote, 14 How., 218, 225.)

This offer embraced legitimate proof tending to establish a general proposition material to the issue, to wit:

That the defendant's machine was constructed on a different principle, or had a different mode of operation from the plaintiff's.

Proof that the principle of one machine was different from that of the other, was tantamount to proof that their mode of operation was different; for two machines, different in principle, cannot well have the same mode of operation, although they may produce the same result.

But the defendant not only offered to prove

that the machines were different, but also that they produced on the iron a different mechan ical result. (See Curtis on Pat., p. 264, sec. 222; also p. 285; also p. 286, sec. 241.)

In conclusion, the court in this case should have held that the plaintiff's patent was for a machine. And on the question of novelty the court should have left it to the jury as a question of fact, to find upon the testimony whether the plaintiff's machine was the same in its principle or modus operandi as the milling, button or shot machines. And on the question of infringement, the court should have left it to the 260*] jury, upon the *testimony, to find whether the defendants' machine was the same in its distinctive character or principle as the plaintiff's.

the invention described in the patent is clearly repugnant to the description of the invention in the *specification, the patent will be [*261 deemed to be a grant of the exclusive right to the invention described in the specification, but it cannot diminish the extent of the invention described, and claimed in the specification.

In short, the description of the invention in the specification is the act of the inventor, for which, if it be new and useful, the government is bound to grant him a patent. The granting of the patent is the act of the government, and if the description in that grant be not clearly repugnant to that which the inventor claimed and was entitled to, it will be deemed to be a grant of the thing to which he was entitled.

II. By any just or legal construction of the specification forming a part of the patent in question, and giving the only description of the

Brief on the part of Defendant in Error. First. The whole question in this cause de-invention for which the patent issued, said pends upon the correctness of the construction contended for by the counsel for the defendant in error, and which the judge gave to the patent on the trial. If this construction be correct, the other two instructions given by the learned judge to the jury are also correct and follow as necessary corollaries. (Curtis on Patents, secs. 146-148.)

Second. The construction of the patent given by the court on the trial, by the first instruction to the jury, was correct.

patent is for a new process, mode or method, of converting puddlers' balls into blooms, by continuous pressure and rotation of the ball between converging surfaces; thereby dispensing with the hammer, alligator jaws and rollers, accompanied with manual labor, previously in use to accomplish the same purpose, and is not confined to the particular machines described in the specifications and drawings.

The specification commences in these words: "To all whom it may concern, be it known, I. The patent (that is the parchment) made that I, Henry Burden, of the City of Troy, in out at the Patent Office, by the proper officer in the County of Rensselaer, and State of New that department, does not in any case, accord- York, have invented an improvement in the ing to the patent law of this country, describe process of manufacturing iron." Now, let us the thing patented. To ascertain the thing here pause, for an instant, to inquire if the patpatented, the specification, which is filed beentee really intended to represent his invention fore the patent is issued, is the test in all cases, as to what the patent secures to the patentee; and to ascertain that, the whole specification must be consulted; and the modern decisions have declared, that a liberal construction must be given to it in favor of the patentee. (Patent Act of 1836, cc. 5; Curtis on Patents, secs. 122, 123, 126, 127; Ames v. Howard, 1 Sumn., 482, 485: Hogg v. Emerson, 6 How., 437, 482; Davoll v. Brown, 1 Wood. & M., 53, 57.)

It is undoubtedly true, if the description or title of the invention, as stated in the patent, is irreconcilably repugnant to the description of the invention contained in the specification, as if the description in the patent be a machine for making nails, and the invention described in the specification is of a machine for carding wool, the patent would be void, upon the ground that the government had not given to the patentee a legal exclusive title to his invention. But nothing can be deduced from this principle of law to sustain the position that the invention is only what it is stated to be in the title stated in the patent, but on the contrary, the very reverse of that position is what renders the patent void in such cases.

In this case there is no such repugnancy. True, the patent states the invention to be of a new and useful machine for rolling puddle balls, &c., but this is not so repugnant to the description of the invention contained in the specification, as would preclude the court from adjudging that the government intended to and did grant the patent, for the invention described in the specification, to wit: for an improvement in the process, &c. Unless the title of

im

as one consisting in a new or improved machine, to be used in the manufacture of iron; why, with his thoughts upon the subject, did he not say so, instead of calling it an provement in the process of manufacturing iron?" I confess my utter inability to divine any reasonable answer to this question. The improbability of such a willful misnomer, is greatly enhanced by the conceded and wellknown fact, that a new or improved process is patentable, no less than a new or improved machine: process or method, which, in the patent law, are said to be synonymous, are among the few words in familiar use, machine being another of these words, expressive of the few proper subjects of a patent; so that to hold this to be a patent for a machine, is to impute to the patentee the absurdity not only of omitting to call his invention by its proper name, but of substituting, at the outset, another name of well known signification in law, expressly appropriated to another and widely different subject of a patent.

But the specifications contain other expressions which are in strict accordance with the language already quoted, and require the same interpretation. After particularly and clearly describing the process in question, and[*262 the means by which it is accomplished, the patentee proceeds as follows: "It will be readily perceived also, by the skillful machinist, that the principle upon which I proceed may be carried out under various modifications, of which I have given two examples; and these might be easily multiplied, but this is not necessary, as I believe that those which have been

The specification should be so construed as to make the claim co-extensive with the actual discovery, if the fair import of the language used will admit of it. (Curtis on Pat., sec. 132.) III. The patent is not for a principle merely, but for a mode, method or process, giving two practical means for accomplishing it.

given must suffice to show, in the clearest converting puddlers' balls into blooms, into ef manner, the nature of my invention, and point fect. The patent cannot, therefore, be conout fully what I desire to have secured to me strued as confining the invention to the two under letters pattent of the United States." particular machines which he has described, Does this look like only claiming to be the in- that would accomplish that mode, method, or ventor of a specific machine? On the contrary, process. (Curtis on Patents, secs. 80, 81; Minter the patentee refers to the descriptions he has v. Wells, Webs. Pat. Cas., 130.) given of the mechanical contrivances by which his process may be carried on, as illustrative only of the " principle" on which he " 'proceeds;" and, referring to the two machines thus described, he adds: "and these might be easily multipled." Does this language import an intention to limit his claim to them? But an equally decisive test of the patentee's claim remains yet to be considered. His specifica tion concludes with a summary. "In order to ascertain the true construction of the specification in this respect, we must look to the sum ming up of the invention, and the claim thereof asserted in the specification; for it is the duty of the patentee to sum up his invention in clear and determinate terms; and his summing up is conclusive upon his right and title." (Wyeth v. Stone, 1 Story, 273, 285.)

The patentee shows, by specification, that he has succeeded in embodying the principle by inventing some mode of carrying it into effect, and thus converting it into a process. You cannot," said Alderson, B., in Jupe v. Pratt, Webs. Pat. Cas., 146, you cannot take out a patent for a principle; you may take out a patent for a principle coupled with a mode of carrying the principle into effect. If you have done that, you are entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as a piracy of your original invention."

The patentee's summary is as follows: "Hav ing thus fully made known the nature of my said improvement, and explained and exem- A mere principle," says Mr. Curtis, ** is an plified the manner in which I construct the abstract discovery; but a principle, so far emmachinery for carrying the same into opera | bodied and connected with corporeal substances tion, what I claim as constituting my invention, as to be in a condition to act and produce efand desire to secure by letters patent, is the fects in any art, trade, mystery, or manual ocpreparing of the puddlers' balls as they are de- cupation, becomes the practical manner of dolivered from the puddling furnace, or of other ing a practical thing. It is no longer a princisimilar masses of iron, by causing them to pass ple, but a process." (Curtis on Patents, sec. 72; between a revolving cylinder and a curved seg see, also, secs. 77, 78, and notes, pp. 59, 66.) mental trough adapted thereto, constructed and With the requirements of the law in this operating substantially in the manner of that respect, the patentee has complied in a manner herein described and represented in figures 2 perfectly unexceptionable, and perfectly conand 3, of the accompanying drawings, or by sistent with the construction of his patent, incausing the said balls to pass between vibra-sisted on by the plaintiff. There is not. in the tory or reciprocating curved surfaces, operating upon the same principle, and producing a like result by analogous means.'

66

"

Now, by his improvement," mentioned at the commencement of this summary, it is indisputable that the patentee means his inven| tion; and this he describes as being carried into operation by means of machinery con structed for the purpose. With what propriety, then, can it be said that the invention claimed is of the machinery itself? "What I claim,' he adds, "as constituting my invention, is the 263*] preparing of the puddlers' *balls," &c. Is the process of preparing puddlers' balls a machine? If not, is it not a flat contradiction of the language of the patentee to say that he claims to be the inventor of a machine and not of a process? And what is there in the other parts of the specification to neutralize this explicit and unequivocal language? It is said that the patentee describes and has furnished drawings representing two several machines used by him, the one in the first essays and the other subsequently. This is true, and it is also true, that the two are wholly different, not only in form, but in mechanical construction, having, in fact, nothing in common except their mutual adaptation to a like process and effect.

Besides, the court will please to observe that the specification claims no particular form of apparatus for carrying his mode or method of

specification, a single *expression in [*264 dicative of an intention to limit his claim as an

inventor to one or both of the machines described by him, while, on the contrary, the language plainly infers a fixed purpose to guard against such an interpretation. (Curtis on Patents, sec. 148, and note 1.)

IV. If this construction of the patent is correct, it necessarily follows that the patent protects the patentee from all other modes of carrying the same mode, process or method into effect, which is in substance and effect the principle held by the judge in the last clause of his first instruction to the jury. (Jupe v. Pratt, Webs. Pat. Cas., 146; Curtis on Patents, sec. 148, and note 1.)

Third. The rejection of the evidence offered on page 84 of the record, constitutes no ground of error.

I. The decision, if wrong, was cured by the evidence of the same facts afterwards elicited by the witnesses.

II. If the construction of the patent contended for by plaintiff below, and held by the court, is correct, the testimony was properly excluded. (Jupe v. Pratt, Webs. Pat. Cas., 146, supra; Curtis on Patents, sec. 148, and note 1.)

Fourth. The decision excluding the evidence of Winslow's patents, was clearly right.

If the machine used by defendant was an infringement of plaintiff's patent, the fact that

Peter A. Burden, who is assignee of a patent granted to Henry Burden, brought this suit against the plaintifs in error for infringement of his patent. The declaration avers that Henry Burden was "the first inventor of a new and useful machine for rolling puddle The counsel for the defendants then offered balls," for which a patent was granted to him to prove, by this witness, that the practical in 1840, and that the defendants, Corning and manner of giving effect to the principle emWinslow, made, used, &c., this said new and bodied in the machine used by the defendants, useful machine in violation and infringement was entirely different from the practical manner of the exclusive right so secured to plaintiff." of giving effect to the principle embodied in The defendants below, under plea of the general issue, gave notice that they would prove, on the trial, that Henry Burden was not the first and original inventor of the supposed new and useful machine for rolling puddle balls, &c.;" that the machine of the plaintiff, and the principle of its operation was not new, and that the common and well-known machines called nobbling rolls, which were in use long before the application of Burden for a patent, embraced the same invention and im

Mr. Burden's machine; that the principles of the two machines, as well as the practical manner of carrying out those principles, were different; and that the machine used by the defendants produced, by its action on the iron, a different mechanical result on a different mechanical principle from that produced in Mr. Burden's machine." To the introduction of this testimony the plaintiff's counsel objected, and it was overruled by the court, and, at the defendant's instar ce, a bill of exceptions sealed.