Cammeyer v. Newton, 94 U.S. 225

Cammeyer v. Newton.

This

findS that letters'Patent No. 80,492, granted to William H. Camstill win date 28, 1868, for an improved portable and adjustable

2. The eS b”’ W infringed by the defeEdant-

the invenfm patent, and the nature and mode of operation of used by th ° a 'r ,t^iere^n described, and of the machine or apparatus vol. iv 6 6 en aUt *n a^e®ed violation of the patent, examined.

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

Mr. Thomas P. Howe for the appellant.

Mr. Justice Clifford delivered the opinion of the court.

Holders of valid letters-patent enjoy, by virtue of the same, the exclusive right and liberty of making and using the invention therein secured, and of vending the same to others to be used, as provided by the act of Congress; and/he rule of law is well settled, that an invention so secured is property in the holder of the patent, and that as such the right of the holder is as much entitled to protection as any other property, during the term for which the franchise or the exclusive right or privilege is granted./oe^mowr v. Osborne, 11 Wall. 516; 16 Stat. 201.

Inventions pay be assigned before they are patented: and it appears that Samuel Lewis claims to have been the original and first inventor of the patented improvement; that he, without having applied for a patent, assigned all his right, title, and interest in the invention to William H. Cammeyer, one of the complainants ; that the assignee made due application for a patent, and that the patent was duly granted to him for the term of seventeen years; and that the patentee, before the suit was commenced, assigned one undivided half part of the same to said Lewis, the other complainant, together with the i e proportion of the claims and rights of action which had accrue by reason of any infringement of the patent by the making, use, or sale of the patented improvement.

Due evidence of the patent and the assignment was ex i ited; and the complainants allege that the respondents ave infringed the patent, as more fully set forth in the bill o co plaint; and they pray for an account and for an injunc io Service was made; and the respondents appeared an separate answers. ,

Briefly stated, the defences set up in the respective an are as follows: 1. That Samuel Lewis is not the first inventor of the patented improvement. 2. patented improvement is neither new nor useful, an er the proper subject for a patent. 3. That they

infringed the patent by making, using, or selling the patented improvement. 4. That the use, if any, they have made of the patented improvement was done under the directions of the United States, and as their agents or officers.

Proofs were taken by both parties ; and, the parties having been fully heard, the Circuit Court entered a final decree in favor of the respondents, dismissing the bill of complaint. Due appeal was immediately taken by the complainants to this court.

Engineers and practical operators have long known and still admit that the work of blasting rocks under water is attended with many and great difficulties. Efforts have been made to overcome those difficulties; but they have never been entirely successful, nor do the complainants pretend that the patented improvement will meet every requirement in that regard. What they allege is, that their assignor is the original and first inventor of a new and useful improved portable and adjustable dam for the purpose of producing still water in which to operate or the blasting and removal of obstructions in rivers and other watercourses.

uch obstructions, where they exist in rivers or in channels affected by the ebb and flow of the tide, have the effect to contract the watercourse and to accelerate the current or flow, and consequently to increase very much the difficulties of the operator in his endeavors to blast the rocks or to remove the o struction, exdept in seasons of low water, or when the tide is down. ted^d^0^^68 kind almost insuperable, it must be admit» o exist when attempting to remove such obstructions in

a J6 ^Unn^ng learns or in deep channels affected by the tide, * at the description of the same given by the patentee in

exa 1U^r°^uc^ory portion of his specification is not very much cessf^ra^^* A8 ev^ence to show that the invention, if sue-of th ’ W1^ ^rea^ Public utility and importance, that part natur S^C1^ca^on refers to different localities, where, from the could6 ° h 6 b^tom of the stream or channel, a coffer-dam the su f 6 cons^ructe(l, and where the drilling by hand from be impracticable, owing to the depth of the

Suppose the alleged improvement will effect the described results, or will even facilitate to a considerable extent the removal of such obstructions, all, it would seem, must concede its value and utility; and the patentee proceeds to state that the main object of the same is to enable workmen to continue their operations without suspension or impediment from the strength of the current, the ebb or flow of the tide, or the varying depth of the water. All these results the patentee professes to believe can be accomplished by the mechanism described in the specification and illustrated in the annexe drawings; but it is evident, from the language of the specification, that the supposed inventor had never put the apparatus which he describes to any practical use or test. Enoug appears to justify the conclusion that he believed in the theory of the improvement, and that he felt much confidence that t e described mechanism would work out the described results.

Having set forth the object and aim of the improvement, t patentee then proceeds to describe the apparatus by which t ey are to be accomplished, as follows: Two boats are prepare (double-enders, as shown), on one or both of which is an eng of requisite power, with propeller and machinery comp e e moving the boat, raising the anchors, varying the ep the dam, and operating the drills. These boats or. u 8 connected by a substantial deck, which has an opening centre equal to the horizontal area of the dam, for t e p P of access, light, &c., for the diver. From the deck is suspen the telescopic or sectional portion of the apparatus, w chains and attachments, all previously adjusted an rea y drawn through their respective openings in the deck.

By the description it also appears that the manner structing the telescopic or sectional portion of t e aPPa to prepare a series of plates of galvanized iron, o proper material, of suitable thickness, and en an

into the form shown in the drawings, which is that of an acute parallelogram, one sliding vertically' within another, so as to offer the least possible resistance to the tide or current, thereby easing the work of the anchors, and contributing generally to the control of the apparatus.

Each division of the dam is bent inwards at its upper edge, and at its lower edge has a strip fashioned so as to prevent the sections from separating. Every section is likewise provided with four eyes or eyebolts, one at each side and one at each end, which serve as guides to the several sections while operating, the eyebolts on the bottom section being attached permanently to the chains through which the dam is operated, and the bottom section being also provided with four framed wheels or eyebolts through which the side anchor-chains pass, which are to be operated by windlasses, and which extend from the boats, similar to those shown for the operation of the dam above, through the eyebolts on the bottom section, and then outward to the side anchors. Chains extend directly from the boats to the side anchors, and from the ends of the boats directly to the end anchors, the dam being operated by windlasses.

Drills are provided which work in tubes, the lower ends of the tubes being fastened into braces attached to the bottom section of the dam. Tubes of full length, it is stated, are not eemed essential, as a section of sufficient height above the races on the bottom section of the dam to prevent -the drill rom being entirely withdrawn from the tube during a stroke, or some reasons to be preferred, if the tube is properly set a rocking joint in the lower brace. . elf anchors, so called, are also provided, which are bars of n ormed and moving in sockets, as shown in the drawings, sei by v^r^ue °f their length and free play, adapt themste ]S l ^rregu^arfties °f the bottom, and take a rigid and a y o d during the process of drilling. Anchors of the Way with the deck, so as to be taken out of the from th6^ ^S^ra^e’ an^ the telescopic apparatus is suspended are dr 6 ^°Ur an(f holts, and the several chains their J" f°Ugk their respective openings and attached to ^Proper windlasses.

Intelligent description of the mode of anchoring the machine and putting it in operation is also given in the specification, as follows: 1. An anchor is let go and its cable paid out to its full length, the boat moving till the anchor takes hold and the chain is taut. 2. Then the other anchor is dropped and the two chains taken up, till the floating structure is held steadily by the two anchors. 3. The side anchors are next launched from a lighter or attendant boat. 4. When these anchors are placed, it is suggested that the diver should be sent down to explore the bottom, to see whether any change of position is desirable. 5. Change may be made in any direction by letting out one cable and taking up another, if it appears that the change will give the self anchors a better face for work when the dam is lowered. 6. When the drills have penetrated to the desired depth, they are withdrawn, and the diver goes down and inserts the charges. 7. The apparatus is then removed and the charges fired, when the machine is replaced as before, an the work continued.

Four claims are made in the specification, as follows: 1. 6 construction and arrangement of a portable and adjustable dam in sliding or telescopic sections, in the manner and for the pur poses described. 2. The combination of the self anchors wit the dam, in the manner and for the purposes set iortn. • combination of the boats, supports, or floats with the dam an .the arrangement of anchors to hold the boats in position, in manner and for the purposes described. 4. The com ina and arrangement of windlasses, chains, and boats wi dam, so that by the construction thereof a series of r s ma be operated within and enclosed by the dam, in the mann for the purposes described in the specification.

Persons seeking redress for the unlawful use of letters p in which they have an interest are obliged to allege a that they, or those under whom they claim, are the o g and first inventors, and that the same have been^ge the party against whom the suit is brought. 0 ° allegations must be proved by the party instituting

but the patent, if introduced in evidence by the complainant, affords &prima facie presumption that the supposed inventor is the original and first inventor of the patented improvement. Evidence to overcome that presumption is admissible, provided that notice of such defence is given in the answer, as required by the rules of equity practice. Seymour v. Osborne, 11 Wall. 516. Notices of the kind were not given in this case, and it follows that the prima facie presumption must prevail.

Infringement is alleged by the complainants, and the burden is upon them to prove the allegation, as it imputes a wrongful act to the respondents. Such an issue cannot be understandingly determined without first ascertaining the true nature of the invention as embodied in the claims of the patent, when the same are properly construed in view of the descriptive portions of the specification.

Of all the claims of the patent, the first is by far the most important, and embraces all that is embodied in the other three. It is the construction and arrangement of the patented improvement called in the claim a portable and adjustable dam m sliding or telescopic sections, in the manner and for the purposes set forth in the specification.

Argument to show that the dam is to be suspended from the main deck is unnecessary, as the statement is three times repeated in the specification of the patent: 1. Figure 3 of the rowings, the specification states, shows the manner of susd6^^ ^am ^rom the main deck. 2. It is stated that the as an opening in the centre equal to the horizontal area e am, and that from the deck the telescopic or sectional 1 ion of the apparatus is suspended. 3. That the telescopic pparatus is suspended from the deck by four links and bolts, whe T168^011’ these references show that the patentee, ble construction and arrangement of a portaa dam ^am tn sliding or telescopic sections, means under ^rom the deck when in use, and intends to be and b tb SUC^ susPension of the dam, in the manner

Unless the top section is connected with the boat, the lettmg down of the bottom section will cause all the other sections to go down with it, and they will not be opened out telescopically, as described by the patentee. On the other hand, if the top section is connected with the boat, and the bottom section is not connected with the ^hoisting apparatus on the boat, the dam cannot be lifted, and the bottom section will always rest where the machine is placed; or, if the water is deep enough, all the sections will remain extended to their full length, showing that no dam constructed and arranged in the manner described in the descriptive portion of the specification can be within the first claim of the patent, unless the sections are free, at all times when the dam is in operation, to slide on each other, nor unless the top section is attached to or suspended from the boat, nor unless the bottom section is connected with a hoisting apparatus on the boat.

2. Self anchors combined with the dam constitute the second claim, which is merely a subdivision of what is embodied in the first claim. Viewed in that light, it will not be necessary to enter into any extended explanation as to its scope an signification.

Much aid has been derived from the very able opinion of the district judge in defining the nature and mode of operation of the patented invention as embodied in the first and second claims of the patent; and the court here also concurs with the district judge in the definition which he gives of the words “ self anchors ” and “ dam,” as used in the claims and specification. As there employed, the term “ self anchors ” means anchors capable of self-adjustment^ by having at all times free play, because not attached to their sockets nor moving with the bottom section to which the sockets are attached, which sufficiently explains the difference between the word “ anchor,” as commonly used, and the term “ self anchors,” as used in the description of the patented apparatus.

here the claim of the patent is for a combination, it is necessary to understand the meaning of the several devices of ich the combination is composed. In the second claim, the combination is the self anchor's with the dam, and the term t e dam, as there used, means the dam suspended from the oat, with the described devices to accomplish in its movement an operation the functions already explained, from which it o owsthatno combination can be held to be within the second nn, unless it be a combination of such self anchors with such am, constructed and arranged in the manner described, so as a ow of such self-adjustment in the self anchors.

Ian W° °^er c^a^ms are annexed to the specification; but the th°se claims are sufficiently explicit to speak their g ’ <^>n8^c^on without any special exposition, nor is any the d ana^On necessary, in the view taken of the case, as nn« question of infringement must depend chiefly P°“ the flrst and second claims of the patent.

Before comparing the patented machine with the apparatus used by the respondents, it will be useful to advert briefly to certain other issues tendered by the respondents in their answers. Preliminary to that, it should be remarked, that the respondent first named in the pleadings is an engineer in the employment of the United States, and that the other respondents are his agents and employés in the same service. In their answers they separately deny: 1. That they have made, constructed, or used the alleged invention of the complainants, or any substantial or material part of the patented machine. 2. That they or either of them have ever originated or planned any infringement or violation of the complainants patent. 3. That they ever claimed to be the inventors of a still-water dam or apparatus such as that described in the bill of complaint. 4. That they ever made a model of any invention belonging to the complainants, or ever caused any drawings of the same to be constructed for any purpose. They, or the principal respondent, admit that he invented and devise a machine or apparatus for use as a caisson coffer-dam and diving-bell in excavating and removing rocks at certain reefs in New York harbor, that the same was constructed by and at the public expense, and has since been used solely and exclu sively in the prosecution of the work to which the principa respondent has been assigned by the public authorities, f

Public employment is no defence to the employe for having converted the private property of another to the public use without his consent and without just compensation. Pnva e property, the Constitution provides, shall not be taken for pu lie use without just compensation; and it is clear that that p vision is as applicable to the government as to ’ except in cases of extreme necessity in time of war an o mediate and impending public danger. Mitchel v. armo y, 13 How. 115 ; United States n. Russell, 13 Wall. 623.

Sect. 22 of the Patent Act provides that ■ every paten s “ contain a grant to the patentee, his heirs and assigns, or^ term of seventeen years, of the exclusive right to m and vend the said invention or discovery throughout t e States.” 16 Stat. 201. ¿yate

Suppose that is so, then it follows that the decision in the case before the court must depend upon the question of infringement.

Four principal propositions are maintained by the respondents responsive to that charge : 1. That the caisson coffer-dam and diving-bell which they use is not a portable and adjustable dam constructed and arranged in sliding or telescopic sections, as described in the specification of complainants’ patent. 2. That it does not contain any combination of self anchors or self-adjusting supports. 3. That there is not any combination of a boat or boats with the caisson coffer-dam or diving-bell which they use, nor is, there any boat or boats used or combined therewith in any manner or for any purpose similar to t ose set forth in the specification of the patent. 4. That there 18 not any combination of windlasses, chains, or boats in connection or combined with the caisson coffer-dam or diving-bell used by the respondents.

Contracts, it seems, had been made for the removal of rocks th e channel of the New York harbor, and the record shows . u* resPondent made a report to the War Department, w ich he described the difficulties and ascribed the want success to the imperfections in the machinery employed, empt was made by him to construct an apparatus for the

Experimental use of the apparatus commenced late in the fall of 1870, and it was found to work successfully, and it appears that it was for some time in constant use, and that it is the use of the same which it is alleged infringes the complainants’ patent.

In that apparatus the dome is let down through the well-hole in the boat. Movable legs are provided for use when the bed is hard and uneven, which are attached to the lower edge of the dome, and fall by their own gravity until they bear on the bed m such a manner as to insure the horizontal position of the lower edge of the dome, — the legs being kept to their bearings by self-acting cams which hold them permanently in place. When the dome is properly located, it is then detached from the lowering apparatus, and becomes a structure firmly located on the bed of the channel, having no suspension from the boat or any floating structure. Of course the apparatus has drill-tubes, but they are fixed to the inside of the dome, and the drills are raised by lifting-engines on the boat and dropped to the work by their own gravity, working vertically and without friction, because the dome stands erect and immovable. Both the dome and the drill-tubes are unaffected by any motion in the boat, and the attachments to the drills being by loose connections, t e action of the drills is also practically unaffected by such motion within the range to which it is limited by proper anchorage and by allowing sufficient play between the face of the we hole and the side of the funnel, which projects up fro111 e centre of the dome.

Without more, these suggestions are sufficient to the apparatus used by the respondents is substantially 1 ent from that of the complainants, for the following reaS°n

Prior observations are sufficient to show that these features in the apparatus of the complainants are necessary features in the operation of the patented improvement, as clearly indicated in the first and second claims of the patent; and, if so, they are abundantly sufficient to substantiate the proposition that the apparatus of the respondents is substantially different from the machine described in the complainants’ specification.

Proofs were introduced by the respondents which showed that no apparatus such as is described in the specification of the patent was ever constructed and put into practical operation, and the evidence tends to show that the apparatus, if constructed as described, would be worthless.

Serious difficulty, it is apparent, would arise if the mode of anchoring the dam there described should be adopted, as its tendency certainly would be to render it impossible to work the drills with useful effect.

Discussion is scarcely necessary in respect to the third claim, as the very statement of it shows that it is not infringed by any thing in the apparatus of the respondents, as their apparaus has no anchors connected with the dome, nor which connect the dome with the boat, which is an essential feature of the third claim in the patent.

n order to make the dam an element of the combination set orth in the third claim, the anchors connected with the boat y chains passing through eyebolts on the bottom section of e dam must be included; and as the anchors so connected and operating are wanting in the apparatus of the respondents, it o ows that it does not infringe the apparatus of the complainants. forth *1 necessary to enter much into the discussion of the that th0^^ Pa^en^’ as has already sufficiently appeared with tb^ a^ara^us the respondents has no chains connected man 6 ^°me’ nor respondents operate the drills in the fication” 0F means described in the complainants’ speci-

Suffice it to say, without pursuing the examination, that we are all of the opinion that there is no error in the record.