Dunbar v. Myers, 94 U.S. 187

1. In letters-patent of the United States, No. 10,965, bearing date May 23, 1854, issued to John Myers and Robert G. Eunson, granting to them, for the term of fourteen years from that date, the exclusive right and liberty of making, using, and vending to others to be used, an improved machine for sawing thin boards, &c., which letters-patent were subsequently extended for the term of seven years from May 23, 1868, the claim of the improvement described as the employment or use of deflecting plates, —one or two, — placed at the sides of a circular saw, for the purposes set forth in the specification, is void, because it does not describe a patentable invention. 2. This court finds that the respondents below did not infringe the second and fourth claims of the patent.

Appeal from the Circuit Court of the United States for the Southern District of New York.

The facts are fully stated in the opinion of the court.

This case was argued by Mr. Charles F. Blake and Mr. Samuel J. Classey for Dunbar, and by Mr. Frederic H. Betts for Myers.

Mr . Jus tic e Clif ford delivered the opinion of the court, uventions, in order that the inventors may be entitled to P ents for the same, must be new and useful; and the better th that the improvement must be of such a character

. lnvo^ved invention to make it, as the Patent Act confers

t obtain a patent except to a'person who has invented or c C0V(ne^ some new and useful art, machine, manufacture, in n P0sl^°n of matter, or some new and useful improvement

the other of those described subject-matters. erant aPPears to show that a patent in due form was May 1854 ^ers and Robert G. Eunson, on the 23d of fication ’ °r alleged invention, described in the speci-

relating to certain new and useful improvements p. 188in machines for sawing lumber into thin stuff for the backs of mirrors and picture-frames, and other purposes for which thin stuff is used. Due application was subsequently made for an extension; and the record shows that the patent was regularly extended for the further term of seven years from the expiration of the first term.

Subsequent to the extension of the patent, one of the patentees, to wit, Robert G. Eunson, sold and assigned all his right, title, and interest in the same, and the extension thereof, to Eugene S. Eunson, one of the complainants, who instituted the present suit in the court below. Pending the suit, the other complainant departed this life; and Margaret Myers, his sole executrix, was duly admitted in his stead to prosecute the suit as co-complainant with the assignee of the other half-interest in the extended patent. Infringement is charged, and that the respondents have made large gains and profits by the unlawful use of the patented invention; and the complainants pray for an account and for an injunction.

Process having been issued and service made, the respondents appeared and filed an answer, in which they set up in substance and effect the following defences: 1. That the invention is o no utility or value. 2. That the patentees are not the origina and first inventors of the alleged improvement. 3. That to alleged improvement was well known and had been in pu lie use long prior to the supposed invention by the patentees. 4. That knowledge of such prior public use was possesse y the several persons whose names and places of residence are se forth in the answer. 5. That the patented improvement, yea before the application for the patent was executed, was u y described in the respective printed publications mentione the answer filed by the respondents. .

Minute and accurate description of the patented mac m given in the drawings, and the specification divides t e tion into four separate features, as follows: 1. That it co _ in the employment or use of deflecting plates, one or ’ placed at the sides of a circular saw, for the purpose o ing or expanding the saw kerf to prevent the sawe 8 coming in contact with the sides of the saw and in in edge of the same near the teeth. Deflecting plates o p. 189also allow the saw to be stiffened by a proper plate, so that a thin veneer saw may be employed, which will cause but a small waste of stuff in sawing. 2. That the invention consists in the employment or use of elastic clamps attached to the ordinary adjustable and elastic beds, between which the stuff is fed to the saw. Clamps of the kind have an elasticity independent of the beds, and compensate for the varying thickness of the different pieces of stuff to be sawed, by holding firmly the extreme end of the stuff, and keeping it in proper position to the saw, however much the elastic bed may be expanded by a succeeding piece of stuff of greater thickness. 3. That the invention also consists in the employment or use of knives or cutters secured to the adjustable beds, and so arranged as to cut or smooth off the rough and projecting sides of the stuff at the ends, making it of uniform thickness. 4. That it also consists in the combination of an adjustable bed and circular saw, arranged as shown in the specification.

Such a machine necessarily requires a frame, and the patenes state that the frame of the machine described in the specification may be constructed in any proper manner, and t at the circular saw is placed on a shaft which runs transversely across the front of the frame.

They employ a circular saw, made of thin steel-plate, such as is used for sawing veneers, on one side of which is a circular p ate secured by rivets or screws, the plate being less in diam® er t an the saw, which has the effect to stiffen the plate of

e saw, and to enable the operator to use a thinner saw than e would otherwise be able to do. on wo deflecting plates are also employed by the patentees, saw s^e °t the saw; the one on the same side of the nlat plate covers the upper part of that than+L $ °nter end of which projects further from the saw the s e?n?er en<^ the deflecting plate on the other side of smaller • same description, except that it is rather an eon anaeter, and that it projects from the saw at about each aid They are arranged one on of bolts e,° ^ e saw’ and are attached to the frame by means

Tw 8’ °f screws’ '

d roller beds are placed vertically in the back part p. 190of the frame parallel with each other, both of which are made adjustable by screw-rods which bear against the sides of the beds, the screw-rods of each bed being operated simultaneously by means of chains passing round small toothed wheels at the ends of the screw-rods.

Two cranks are also employed, one of which is attached to one of the toothed wheels of each bed. Lateral elasticity is given to the beds by means of india-rubber or other springs attached to them in a proper manner.

Four feed-rollers are employed, two of which are placed in each bed, and the specification states that the feed-rollers project some distance beyond the inner edges of the beds. Clamps, two in number, are attached to the inner ends of the beds, and at the back part of each clamp there are two journals, one at the top and one at the bottom, fitted in boxes which work or slide in recesses in the top and bottom pieces of the beds.

Set-screws are also provided, which pass transversely through the top and bottom pieces of each bed, the inner ends of which bear against india-rubber springs placed directly back of the boxes.

There are two of these rubber springs at the top of the clamps, one to each clamp, and it appears that they are place between the clamps and the set-screws, passing transverse y through the top pieces of the beds. Hence it follows that t e clamps may be made to vibrate laterally; but it also appears that two stops are provided, which pass through the top pieces of the beds, one through each top piece, for the purpose limiting and regulating the extent of such lateral vibration-

Knives or cutters are also provided, which are place ver cally, one in each bed; but it is unnecessary to enter into details, as it is not pretended that the respondents ave fringed the third claim of the patent. .

Motion is given to the feed-rollers by gearing, whic is s in the drawings at the lower part of the rollers.

Means are also provided for adjusting the beds re a iv the saw, so that the boards or other lumber may be saw the desired thickness. Either side of the saw may e m line side in the operation of sawing by the adjustmen proper roller-bed, so as to prevent expansion or contra

p. 191

Stuff to be sawed, whatever it may be, is placed between the feed-rollers in the beds, and, motion being communicated to the saw and rollers, the stuff is fed forward towards the saw and is cut by it, the two pieces being prevented from bearing against the sides of the saw by means of the deflecting plates. When the outer end of the material to be sawed has passed the inner feed-roller, the clamps bear against the board and hold it in a proper relative position to the saw, so that if another board to be sawed is placed between the feed-rollers it will advance and press forward the board first placed between the ’rollers, and if the last board is thicker than the preceding one the only effect is that it acts upon the beds and forces the elastic one farther from the permanent one without affecting the clamps, which, owing to the springs, have an independent elasticity.

Tested by the example given in the specification, as illustrating the mode of operation, it is plain that either side of the saw may be made the line side in the practical working of the machine. In the example put by the patentees, they assume that the roller-bed in line with the deflecting plate, which is on the same side of the saw as the stiffening plate, is permanently fixed at one-quarter of an inch from the side of the saw, and t at the opposite bed being elastic, the side of the saw on which the thin strip passes is the line side during the operation o sawing; but the patentees state that the opposite side of the 8aw may be made the line side by permanently fixing the opposite roller-bed and by allowing the other one to remain e astic, and that by these improvements they are enabled to use a m veneer saw, and to keep the stuff to be sawed in a proper

to the saw, even when varying in thickness. b t/66 c^a^ms °t the patent, it is charged, are infringed J e respondents ; to wit, the first, second, and third. They

as follows: 1. The employment or use of the deflecting the 685 °ne °r Placed at the sides of the saw, as shown, for the ^r^°se Preventing the sawed stuff from bearing against pu 1 68 8aW and exPanding the saw kerf, and also for the one t a^ow^n§ a thin veneer saw to be stiffened by plates, of the clW°’ des*red’ They claim the employment or use that th* am^S arran8ed as shown, or in any equivalent way, so

ey may have a lateral elastic movement, independent of p. 192the roller-beds to which the clamps are attached, for the purpose of compensating for the varying thickness of different pieces of stuff, and to keep the same in a proper relative position to the saw. 4. They also claim “ the employment of an adjustable bed with clamps, as described, in combination with the saw when the saw has a stiffening plate in line with the adjustable bed, by which the stiffened or rounded side of the saw is made the line side of the same for practical operation.”

Prior to the hearing, the complainants filed a petition in the Patent ‘Office, in which they state that the patentees, through inadvertence, accident, and mistake, and without any fraudulent or deceptive intention, claimed more in their specification than that of which they were the original inventors. Pursuant to that petition, they were permitted to enter a disclaimer in two respects: 1. To amend the first claim by striking out the words “ one or ” before the word “ both,” so that the claim includes only the employment and use of the saw with both of the deflecting plates, when both of the plates are used at one and the same time, in the manner and for the purposes described. 2. They also made a corresponding amendment in the specification, limiting the description of the invention to the employment of the two deflecting plates placed at the sides of the circular saw, disclaiming the use of one plate only, fort e purposes set forth in the specification.

Proofs were taken; and, both parties having been hear , 6 court entered a decretal order in favor of the complainants, an referred the cause to a master. Due report was made y master, to which both parties excepted; but the court °Jerr^ the exceptions, and, having confirmed the report, en^e^ a decree in favor of the complainants for the sum of $ , ’ being the gains and profits made by the respondents, as tained by the master. Both parties appealed to this cou

Eight errors are assigned by the respondents, two► only will be examined: 1. That the court erred in o ing there was invention in using two deflecting plates w en ... of one was well known. 2. That the court erre in that the respondents infringed the letters-patent gran e complainants. t first

Viewed in the light of the disclaimer, it is clear tha p. 193claim of the patent is for the employment or use of two deflecting plates, one being placed on each side of the saw, for the purpose of preventing the sawed stuff from bearing against the sides of the saw, and to allow a thin veneer saw to be stiffened by the plate employed or used for that purpose ; and it is equally clear that the employment or use of one deflecting plate for the purpose was well known and in public use long before the original patentees in this case applied for a patent.

Conclusive evidence to support that proposition is found in the disclaimer filed by the complainants pending the suit, in addition to the other evidence in the case, which is abundantly sufficient to establish the proposition, even without the disclaimer. Authority to make such a disclaimer is beyond question, if it be made in writing, and is duly attested and recorded in the Patent Office. When so made, attested, and recorded, it becomes a part of the original specification to the extent of the interest of those who make it; but the provision is that it shall not affect any action pending at the time of its being led, except so far as may relate to the question of unreasonable neglect or delay in filing it. 16 Stat. 206; Rev. Stat, sect. 4917. /Pending suits may proceed, but the disclaimer, when reor ed, becomes a part of the original specification, and must e taken into account in construing the patent, and in ascer-

the rights of the parties to the suit, unless it appears

ate effect of the disclaimer is to enlarge the nature of the v V%^10n’ an^ Prejudice the rights of the respondents. Perry ’ tinner, 1 Webster, Pat. Cas. 253; Ralston v. Smith, 9 C. B. • 8-H7 ; s. c. 11 id. 471; Smith v. Nichols , 21 Wall. 117. of th 616 e^ec^ the disclaimer is to diminish the claims the A^^t without prejudicing the rights of the respondent, ^Id A Proceed» notwithstanding the disclaimer, it being affect th t $ djsciaimer, under such circumstances, does not of the 6, suit, except to limit and qualify the claims neglect resPect to the question of unreasonable bavin a k°T ° the same/ Unreasonable delay not a case is T S/^es^ed’ the only effect of the disclaimer in such patent a dA natur® of the invention secured by the

v o l iv ° iminish claims °f the patent as set forth in p. 194the specification. Giuyon v. Serrell , 1 Blatchf. 245; Hall v. Wiles, 2 id. 198.

Matters properly disclaimed cease to be a part of the invention ; and it follows that the construction of the patent must be the same as it would be if such matters had never been included in the description of the invention or the claims of the specification. 16 Stat. 206; Seed v. Higgins, 8 El. & Bl. 767; Higgins n . Seed, id. 763; O'Reilly v. Morse , 15 How. 121; Taylor n . Archer , 8 Blatchf. 317.

Tested by these considerations, it is clear that the first claim of the patent is for the employment or use of two deflecting plates, one placed on each side of the saw, for the purposes therein set forth and described. Circular plates attached tb circular saws, secured by rivets or screws, for the purpose of strengthening the central portion of the saw-plate, and sometimes called stiffening plates, are old devices which have been known to the operators of the circular saw ever since the circular saw came into general use for sawing shingles, laths, an clapboards. Nor is any argument necessary to show that t e employment of one deflecting plate covering the upper part of the stiffening plate on the same side of the circular saw is ol , as that is proved by the evidence, conceded in argument, an alleged in the disclaimer filed by the complainants.

Concede that, and still it is insisted by the complainants that they employ or use two deflecting plates, one placed on eac side of the saw, and that the employment or use of the a tional deflecting plate on the opposite side of the saw is a ne and useful improvement in the operation of the mac in®’ which the patentees, whom they represent, were justly en i to the patent set forth in the bill of complaint.

Operators of machines for sawing lumber, whether wi cular or vertical saws, have long known that some means w useful, if not absolutely necessary, to spread the two pa the lumber behind the saw, so as to prevent t e um sawed from binding against the two faces of the saw os extent as to endanger the saw and impede the |n work without an increase of the motive power. early times, were used by the operator to ^^^P^ ■object* and various other devices were employe e p. 195deflecting plate came into use, which, it seems, has had the effect to supersede all other devices previously known to effect the described function. Such machines for sawing lumber, constructed with one deflecting plate, were well known and in general use years before the patentees in this case made their application for a patent; and the evidence satisfies the court that for most purposes the machine will operate as well and as successfully with one deflecting plate as with two. Two deflecting plates may be better than one, where it is desired to split thin stuff into two parts of equal thickness, as in that case the saw kerf may be enlarged by deflecting the stuff on each side of the saw.

Grant that two such plates are in certain cases better than one used alone, still the question arises whether it involves any invention to add the second plate to a machine already constructed with one plate. Beyond doubt, every operator who had used a machine having one deflecting plate knew full well what the function was that the deflecting plate was designed to accomplish, and the reasons for placing it at the side of the saw are obvious to the understanding of every one who ever ■witnessed the operation of a circular saw. Ordinary mechanics know how to use bolts, rivets, and screws, and it is obvious that any one knowing how to use such devices would know ow to arrange a deflecting plate at one side of a circular saw w ich had such a device properly arranged on the other side, 1 c°nceded that both deflecting plates are constructed an arranged precisely alike, except that one is placed on one 81 e SaW and °^^er on opposite side. Both are

ac ^rame the same manner; nor is it shown, er in the specification or drawings, that there is any thing P u iar in the means employed for arranging the deflecting

fra 68 aV^e s^es the saw, or in attaching the same to the on th' are a^e’ except that the outer end of the one horn th8^6 S^e aS strengthening plate projects farther small $ SyW ^an hmer end, and that the other is rather distance1 f ^^h^’ an<^ ^at the ends project about an equal

requiredt ^ne.sses were examined upon the point, whether it

invention to attach a second deflecting plate to such a p. 196machine; and one of the most intelligent and learned of his class testified to the effect that the deflecting plate on one side of the complainant’s machine performs precisely the same duty as the plate upon the other side of the saw, and that it required no invention to apply a second plate in such a case to perform exactly the same duty as the one previously applied on the opposite side of the saw, — that such second application is a mere duplication of the first; and he supports his conclusion by apt examples, which are both persuasive and convincing.

Persons seeking redress for the unlawful use of letters-patent must allege and prove that they, or those, under whom they claim, are the original and first inventors of the alleged improvement, and that the letters-patent have been infringed by the party against whom the suit is brought. Prima facie support to the first requirement is derived from the patent, if it is introduced in evidence and is in due form, provided the alleged improvement is one which in its nature is patentable. Evidence to overcome that presumption, however, is always admissible, if due notice is given by the opposite party, as required by law; and the question is now well settled, that the question whether the alleged improvement is or is not patentable, is, in an equity suit, a question for the court.

Applicants for a patent are required to file in the Patent Office a written description of their invention, and of the man ner and process of making, constructing, and using the same, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to make, construct, and use the patented improvement. Rights of the kind are given on y to inventors or discoverers of some new and useful art, mac ine, manufacture, or composition of matter, or some new and use u improvement thereof; and the law is well settled that not o short of invention or discovery will support a patent for y such alleged new and useful improvement.

Certain other important conditions are also annexe exercise of the right to obtain such a muniment o . such an invention or discovery; as, for example, the imp ment must not only be new and useful, but it must e on known or used by others in this country, and not P& described before the invention or discovery in any pm1 p. 197lication in this or any foreign country, and must not have been in public use or on sale for more than two years prior to the application for the patent. 16 Stat. 201; Collar Company v. Van Dusen , 23 Wall. 563.

Invention or discovery is the requirement which constitutes the foundation of the right to obtain a patent; and it was decided by this court, more than a quarter of a century ago, that unless more ingenuity and skill were required in making or applying the said improvement than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute the essential elements of every invention. Hotchkiss v. Gireenwood , 11 How. 267.

Ten years later, a case came before this court, in which the plaintiff claimed certain improvements in the construction of a machine for sawing lumber with the circular saw, including the manner of affixing and guiding the saw by allowing end play to its shaft, in combination with the means of guiding the device by friction-rollers and other appliances. Mills for sawmg logs with a circular saw had been well known long before the supposed invention; and, in construing the claim of the patent, this court said that the claim is for the precise organization of the old machine, namely, the manner of affixing and guiding the circular saw by allowing end play to its shaft, in combination with the means of guiding it by friction-rollers, so as to leave the centre entirely unchecked; adding, that there is uo mg new in the combination, and assigning as the reason

t e conclusion, that the improvement had long been known u used in the circular saw for sawing timber of smaller mensions than ordinary saw-logs. ' la U0U^ aPPears to show that the machine in that case was comT an ^°Se kind which had preceded it; but the gro ,r^marke(t that that circumstance did not afford any reason th* SeUSe Pat®nt law for a patent, for the ever U d or^nary mechanic was doing the same thing model a working machine from the patent

In 1 patent reac^ ^nvention, say the court in that case, the

must carry his improvement further: he must contrive p. 198the means of adapting the enlarged old organization to the new use, namely, the sawing of -saw-logs, and claim, not the old parts, but the new devices by which he has produced the new results. Phillips v. Page , 24 How. 167.

Decisions by this court of later date have been made to the same effect; as, for example, the court decided that the claim of the patentee for making the cases of door-locks and latches double-faced, or so finished that either side of the case may be used for the outside, in order that the same lock or cased fastening may answer for a right or left hand door, was void, because the patentee did not show that he was the original and first inventor of the improvement, and intimated very strongly that the making of such a case, with two faces just alike, and so finished off in point of style that either side was fit to be presented outwards, was not a matter which could be patented, even if no locks with such cases had ever before been made. Jones n . Morehead , 1 Wall. 162.

Patented improvements which are not new and useful, or which did not require any invention or discovery to make the same, as compared with what existed or was in use before, may be declared invalid by the court in an equity suit. Stimpson v. Woodman, 10 id. 121.

Mere change in a machine of one material for another, as wood or wood strengthened with iron for iron alone, is not invention in the sense of the Patent Act, and therefore is not the subject of a patent. Hicks n . Kelsey, 18 id. 670..

Old processes are sometimes applied to new subjects, an where that was so, in a case which did not require the exercise of the inventive faculty, and without the development o any idea which could be deemed new or original in the sense o patent law, it was held that the supposed improvement wa the subject of a patent, and that courts of justice may a judicial notice of a thing in the common know e ge of the people throughout the country. Brown v. »p ’ U S 38

Proof of the state of the art is admissible in equity cases, without any averment in the answer touching t e su je , in actions at law, without giving the notice require evidence is offered to invalidate the patent.

p. 199

proof of what was old and in general use at the time of the alleged invention; and may be admitted to show what was then old, or to distinguish what is new, or to aid the court in the construction of the patent.

Meritorious inventors are entitled to protection; but it is settled law that a mere carrying forward of an original patented conception, involving only change of form, proportions, or degree, or the substitution of equivalents, doing the same thing as the original invention by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results. Smith v. Nichols , 21 Wall. 115.

Effective support to the proposition that nothing but invention or discovery will entitle art applicant to a patent is also found in the reported decisions of the circuit courts, as appears from the following citations. Judge Story held, many years ago, that the mere application of an old process, machine, or device to a new use was not patentable, — that there must be some new process or some new machinery to produce the result, in order that the supposed inventor may properly have a patent for the alleged improvement. Howe v. Abbot , 2 Story, 194; ^an v. Smallwood, 2 id. 411; Glue Co. v. Upton , 6 Off. Gaz. 842; 7 id. 648.

onclusive support to the proposition that an applicant for a patent is not entitled to the public protection, unless the supposed improvement involves actual invention or discovery, is oun in the oft-repeated decisions of all the English courts the1^ ^Ur^S^c^on *n su°h cases ; and it is safe to remark, that w't, C°Ur^S that country apply the rule more readily, and

a much closer scrutiny, than do the courts of this country

the like jurisdiction. Ralston v. Smith, 11 H. L. C.

j arwood v. Railway Company, 11 id. 654; Jordan v. 24^^» ar 7 Kay v. Marshall, 8 Cl. & Fin. n s v‘Fox'5 H*L’c-707; v- Easton,2 c-b . 14 id 47s V’ Mabon^ 12 id- 437; Ormson n . Clarke, ^p. 5 ch \arkes v’Stevens' Law ReP- 8 EQ- 358;s- c- Law 164* m •' ’ Envelope Company v. Seymer , 5 C. B. N. 8. 11 Q p V’ 47 Law Times, n . s . 319; Ralston v. Smith,

• N. s. 471; Ormson v. Clarke, 13 id. 337; Ralston v. p. 200Smith, 9 id. 117; Saunders v. Aston, 3 Barn. & Ad. 881; Seed v. Higgins, 8 El. & Bl. 743.

The acceptance and holding by the county of the' certificate of stock o e company, the issue and delivery of the bonds to the company, and the pay ment of interest on them for a time, cured the defects, if any existed, as to the order for submitting the question of subscription to a popular vote, an authorized a bona fide taker of the bonds to presume that every thing nece sary to their validity had been properly done.

For these reasons, we are all of the opinion that the claim of the improvement described as the employment or use of two deflecting plates, one placed on each side of the circular saw, for the purposes set forth in the specification, is void, because it does not constitute a patentable invention.

Suppose that is so, still it is insisted by the complainants that the decree of the Circuit Court should be affirmed in respect to the second and fourth claims of the patent.

Clamps are employed or used by the complainants, arranged as shown, so as to have a lateral elastic movement, independent of the roller-beds to which the clamps are attached, for the purposes set forth in the second claim. Admit that the claim is a valid one, still it is insisted by the respondents that they do not infringe that part of the patented invention, and, consequently, that the decree of the Circuit Court should be reversed.

Four adjustable feed-rollers are shown in the machine of the respondents, and in front of them there is a pair of clamps, of peculiar construction, the object and only practical effect o which, it seems, is to hold the upper edge of the stuff to e sawed in proper position while it is in contact with the saw. Evidently they differ in form, method of attachment, pur pose, and use from those described in the specification of the complainants. Instead of that, the clamps described in the com plainants’ patent are attached to the inner ends of the roller beds, so that there are two journals at the back part of eac clamp, which fit in boxes, and work or slide in recesses in t e top and bottom pieces of the roller-beds. .

To that it may be added, that the action of the clamps in the complainants’ machine is governed by the set-screws w ic bear against rubber springs back of the boxes, the distance the lateral vibration of the clamps being regulated by t e s op , which are arranged to pass through the top pieces, t e o J of the arrangement being to give the clamps the abi ity o a lateral elasticity and vibratory movement independen o roller-beds, for the purpose, as stated in the claim, o c°mP sating for the varying thickness of the different pieces o p. 201and to keep the stuff to be sawed in a proper relative position to the saw.

Competent experts testify that the clamps in the machine used by the respondents have no lateral elastic or vibratory motion independent of the roller-beds, and that they cannot perform the functions of the clamps described and claimed in the patent set forth in the bill of complaint; and the court is of the opinion, from an examination of the models exhibited, that the testimony of the expert is correct.

Keeping in view what has already been remarked, a few additional observations will be sufficient to dispose of the questions arising under the fourth claim of the specification, in which the complainants claim the employment of an adjustable bed, with clamps as described, in combination with the saw, when the saw has a stiffening plate in line with the adjustable bed, by which the stiffened or rounded side of the saw is made the line side.

Taken as it reads, the fourth claim does not include a deflecting plate, and only a stiffening plate on one side of the saw; and, if not, it is difficult to see how the devices claimed in the combination will permit the stiffened or rounded side of the saw to be made the line side, unless the deflecting plate is added to the claimed combination. Add the deflecting plate to the combination, and it is quite clear that the claim may include parts sufficient to be operative; but when such stiffened side is thus made the line side, and the clamps embrace t e saw as described, it is quite essential that the clamp on the me side should have a lateral elasticity with respect to the bed, an also the described swinging motion. Neither the clamp on

e me side or the one on the opposite side in the respondents’ inac me have any lateral elasticity with respect to the rollerg ’ a swinging motion, and the one on the line side of the

as no lateral motion whatever when the machine is in operation. but ^rences °pinion may possibly exist upon that topic, clam& agree that the claimed combination includes the that ^thaU ^n^nSement is not proved, unless it appears ab-pari j resP^deni'8 use the entire combination. Having

y eci ed that the respondents do not use the clamps of p. 202the complainants, it is unnecessary to pursue the inquiry, except to say that it is settled law, that, where the respondent in constructing his machine omits one of the ingredients of the complainant’s combination, he does not infringe the complainant’s patent. Grould v. Rees , 15 Wall. 194 ; Prouty v. Ruggles , 16 Pet. 341 ; Vance v. Campbell , 1 Black, 427 ; Grill v. Wells , 22 Wall. 28.

Suffice it to remark, that, in view of these conclusions, it becomes unnecessary to examine the errors assigned in respect to the rule of damages.

Decree reversed, and cause remanded with directions to enter

a decree dismissing the bill of complaint.

Commis si oner s of Johns on County v .

Ebbo b to the Circuit Court of the United States for the District of Kansas.

The case is stated in the opinion of the court. Mr. Nelson Cobb for the plaintiffs in error.

The bonds in question derive no validity from the ac Feb. 25, 1868, as it was expressly repealed by the fourth section of the act of Feb. 27, 1869, without any saving clause a to pending proceedings. The election, ordered when t e 0 law was in force, not having been held until after t e a took effect, was, with all the subsequent action to w p. 203gave rise, unauthorized and void. Aspinwall v. Commissioners of Daveiss County , 22 How. 364; Covington, ^c. Railroad Co. v. Kenton, 12 B. Mon. (Ky.) 144. Their issue was not authorized by the act of 1869, as after its passage no election was ordered, and the county is not estopped from contesting their validity, especially when their recitals show an absence of legal authority for the doings of the board in the premises. Marsh n . Fulton County , 10 Wall. 676.

The plaintiff below was not therefore a bona fide holder of the bonds in question. This court has repeatedly held that paper otherwise negotiable, which on its face shows that which should arouse suspicion and put the taker upon inquiry, cannot be so transferred as to cut off defences which would have been available against the original holder. Fowler v. Brantly , 14 Pet. 318; Goodman v. Simonds , 20 How. 343; Angle v. Northwestern Mutual Life Insurance Co., 92 U. S. 330; Harshmans. Bates County, id. 569.

The subsequent acts of the county do not estop it from sethng up the defences upon which it relies in this suit. Bigelow on Estoppel, p. 80; Clark v. Session , 22 N. Y. 312; Langdon Vt Dowd , 10 Allen, 423; Freeman v. Cooke, 2 Exch. Rep. 644 ; Howard v. Hudson, 2 El. & Bl. 1; Anderson v. Lyon , 11 Allen, 349; Wells v. Truesdell , 6 Pick. 455. The only interest paid on the bonds was that paid to the plaintiff below. The delivery of the certificates of stock was necessary to complete the subscription, and was, like it, void. The registration by the tate auditor on the application of the holder of the bonds was without notice or knowledge of the county or its officers,

pon neither of these facts, therefore, can the doctrine of estoppel have any application.

Nir. James Grant, contra.

R. Just ice Sway ne delivered the opinion of the court. ls is an action brought to recover the amount of certain

^a^en fr°m bonds issued by the plaintiffs in error to

?. kawrence, and Denver Railroad Company, of

onds the defendant in error was the holder. & , y consent of parties the case was tried by the court without ]ury, coup|. fac^8j anj gave judgment for the p. 204defendant in error. The plaintiffs in error thereupon brought the case to this court for review.

There is no dispute between the parties as to the leading facts of the controversy. The proper authorities submitted the question to the electors of the county, whether the county should subscribe for $100,000 of the stock of the company, to be paid for by issuing its bonds to that amount. The election was ordered on the 25th of January, 1869, and took place on the 6th of April, 1869. The proposition was sanctioned by a majority of more than two to one. The bonds were thereafter executed and deposited as escrows. On the 22d of May, 1871, the commissioners made an order that they should be delivered, and they were delivered accordingly. A certificate of stock was issued and delivered by the company, and is still held by the county. It has never been surrendered, nor offered to be surrendered. The bonds were signed by the chairman and clerk of the board of commissioners, and attested by the county treasurer. There was in each one a recital “ that this bond is executed and issued by virtue of, and in accordance with, an act of the legislature of Kansas, entitled ‘ An Act to authorize counties and cities to issue bonds to railroad companies, approved Feb. 25,1868, and is in pursuance of, and in accordance with, the vote of a majority of the qualified electors of the county of Johnson, at a regular election, held on the sixth day of April, 1869.” Each one bore, also, the following indorsement : —

“ I, A. Thoman, auditor of the State of Kansas, do hereby certify that this bond has been regularly and legally issued; that t e signatures thereto are genuine; and that the bond has been u y registered in my office, in accordance with an act of the legis atui e, entitled ‘An Act to authorize counties, incorporated cities, an mu nicipal townships to issue bonds for the purpose of building. n ges, aiding in the construction of railroads or other works o in ern^ improvements, and providing for the registration of^suc and the repealing of all laws in conflict th erewit , app March 2, 1872. Witness my hand and official seal, this twen y-day of March, 1872.”

The certificate is authenticated by the official signature seal of the auditor.

p. 205

Oct. 1876.] Commis sio ners , etc ., v . Janua ry . 205

The road was finished, and has since been in operation. The county and its inhabitants are in the enjoyment of the benefits arising from it.

There is no imputation of any taint of fraud upon either side. The county authorities paid the interest upon the bonds for a time.

The county has received what it contracted to receive, and has paid what it contracted to pay.

The plaintiff in the suit is the bona fide holder of the bonds. A case of stronger equity can hardly exist.

Several objections have been taken to the validity of the bonds. They have been elaborately and ably argued upon both sides. The view which we take of the controversy renders it necessary to advert to but one of the objections, and to that one briefly. Our judgment will be placed upon a different ground.

The act mentioned in the recital in the bond was erroneously referred to. That act does not affect the case, and may be laid out of view. The act of Feb. 25, 1868, was in force when the order for the election was made. It gave ample authority for making the order, and for all that was subsequently done. It is insisted that this act was repealed by the act of Feb. 27, 1869, that the order for the election fell with the act repealed, and that, consequently, the election was held without any legal authority. Such repeal, so far as regards the authority to make the order, and the continuing efficacy of the order, is strenuously controverted upon the other side.

atever may be the fact, we are satisfied that after the passage of the act of 1869 all the proceedings were in substan- . ia conformity to its requirements. It was in force before the ection was held and until after the bonds were issued and delivered. to ’ h*8 act 1868, authorized the commissioners com^r6^ e.k°nds when the requirements of the law had been

p le with. They were thus constituted a tribunal for the cloth d161'^0^ flues^ons touching the subject. They were them ^Ower and barged with the duty to decide fbe bond ° a^ea^ Or review was provided for. Their issuing

was the reflex and embodiment of their judgment p. 206that it was proper to do so. It implies a prior determination to that effect. The fact carries with it this presumption. The bonds recite that they were issued in conformity to law, and in pursuance of the election held on the 6th of April, 1869. It is true they refer to the wrong statute, but/aZsa demonstratio non nocet. The bad here does not hurt the good. The act of the commissioners was the act of the county, and the county is conclusively bound by what they have done. As between the county and a bona fide holder, no question involving the infirmity of the securities can be raised.

The principle of estoppel applies, and it precludes the obligor from interposing such a defence.

Whether the certificate of the auditor of State, indorsed on the bonds, has or has not the same effect, is a point not necessary in this case to be considered.. Taking and holding the certificate of stock, issuing and delivering the bonds, and paying the interest for a time, cured the defect as to the order for an election, if any such existed. Under the circumstances, a bona fide taker had a right to presume that every thing had been properly done which was necessary to the validity of the bon s. When this suit was instituted, the objections which have been made were too late.

The views we have expressed have been repeatedly sustaine by the adjudications of this court. Supervisors v. Schen , 5 Wall. 772; Olcott v. The Supervisors, 16 id. 698; City of Lexington y. Butler, 14 id. 283; Pendleton County v. wy, 13 id. 298; Myers v. Muscatine, 1 id. 385; Knox y. wall, 21 How. 544; Lind v. The County, 16 Walk ’ Joseph's Township v. Rogers, id. 644; Pine Grove v. a co, Wall. 666. . . . .

We refer especially to the closing part of the opinion m case last mentioned. Judgment ajfirme

Where, upon the performance of certain conditions precedent, the issue of bonds to a railroad company by the board of commissioners of a county in Kansas is authorized by law, the bonds, when issued, if they recite such performance, are, in the hands of a bona fide holder for value, binding upon the county.

The fact that the act under which the bonds were issued is erroneously referred to in their recitals does not render them void.