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Bloxam v. Elsee, 1 Car. & P. 558; Hogg v. | Emerson, 52 U. S. 11 How. 578 (13: 820); Haworth v. Hardcastle, 1 Bing. N. C. 182, Web. Pat. Cas. 480; Seymour v. Osborne, 78 U. S. 11 Wall. 516 (20: 33).

Rules of construction for patents and specifications must be reasonable.

Bates v. Coe, 98 U. S. 31 (25: 68).

In construing letters-patent the whole instrument should be taken together.

Hudson v. Draper, 4 Cliff. 178; Geier v. Goetinger, 7 Pat. Off. Gaz. 563; Heinrich v. Luther, 6 McLean, 345.

The drawings and models should be considered as well as the specification.

Hoffheins v. Brandt, 3 Fish. Pat. Cas. 218;

Stephens v. Salisbury, 1 MacArth. Pat. Cas. 379. An invention consists, primarily, in finding out what mechanical operation is necessary to produce the practical result arrived at, and must be capable of producing such results.

Wooster v. Blake, 8 Fed. Rep. 429; Putnam v. Hollender, 6 Fed. Rep. 882; Wood v. Packer, 17 Fed. Rep. 650; Stewart v. Mahoney, 5 Fed. Rep. 302; Spill v. Celluloid Mfg. Co. 2 Fed Rep. 707; Shedd v. Washburn, 9 Fed. Rep. 904; Davis v. Fredericks, 19 Fed. Rep. 99; Roberts v. Dickey, 4 Brewst. 260; Isaacs v. Abrams, 3 Bann. & Ard. 616; Miller's Falls Co. v. Backus, 17 Pat. Off. Gaz. 852.

The Murdock machine is not an anticipation of the Spring patent.

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Clough v. Gilbert & B. Mfg. Co. 106 U. S. 166 | (33: 295); Goodyear v. Hartford Spring Axle Co. (27: 134); Blake v. Robertson, 94 U. S. 728 (24: 23 Fed. Rep. 36. 245); Fuller v. Yentzer, 94 U. S. 305 (24: 109); Bragg v. Fitch, 121 U. S. 478 (30: 1008); Snow v. Lake Shore & M. S. R. Co. 121 U. S. 617 (30: 1004); Parker v. Stiles, 5 McLean, 44; Nathan v. New York Elev. R. Co. 2 Fed. Rep. 225.

The dissimilarity in the two machines is apparent.

Chicago & N. W. R. Co. v. Sayles, 97 U. S. 554 (24: 1053); Union Sugar Refinery v. Mathiesson, 3 Cliff. 146; Jennings v. Kibbe, 10 Fed. Rep. 669; Prouty v. Ruggles, 41 U. S. 16 Pet. 336 (10: 985); Stimpson v. Balt. & S. R. Co. 51 U. S. 10 How. 329 (13: 441); McCormick v. Talcott, 61 U. S. 20 How. 402 (15: 930); Eames v. Godfrey, 68 U. S. 1 Wall. 78 (17: 547); Sands v. Wardwell, 3 Cliff. 277; Foster v. Moore, 1 Curt, 279; Storrs v. Howe, 4 Cliff. 388; Howe v. Neemes, 18 Fed. Rep. 40; Matteson v. Caine, 17 Fed. Rep. 525; Bates v. Coe, 98 U. S. 31 (25: 68); Parks v. Booth, 102 U. S. 96 (26: 54); Parham v. Am. Button Hole Co. 4 Fish. Pat. Cas. 468; Hawes v. Antisdel, 8 Pat. Off. Gaz. 685.

Messrs. John E. Abbott and G. P. Lowrey, for appellees:

The construction of a patent is for the court, and a liberal construction should be given so far as the state of the art and the language of the patent will permit.

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A machine is the equivalent of another when it operates on the same principle and performs the same functions by analogous means, or equivalent combinations.

McCormick v. Talcott, 61 U. S. 20 How. 402
(15: 930); Blanchard's Gun-Stock Factory v.
Warner, 1 Blatchf. 278; Wyeth v. Stone, 1
Story, 273; Bovill v. Moore, 2 Marsh. 211;
Blanchard v. Beers, 2 Blatchf. 411; Seymour v.
Osborne, 78 U. S. 11 Wall. 516 (20: 33); Mason
v. Graham, 90 U. S. 23 Wall. 275 (23: 87).
Use in a factory is a public use.

McClurg v. Kingsland, 42 U. S. 1 How. 202 (11: 102); Perkins v. Nashua Card & G. P. Co. 5 Bann. & Ard. 397.

A single instance of successful use is sufficient.

Coffin v. Ogden, 85 U. S. 18 Wall. 120 (21:821); Egbert v. Lippman, 14 Pat. Off. Gaz. 822; Henry v. Providence Tool Co. 14 Pat. Off. Gaz. 855; McMillan v. Barclay, 5 Fish. Pat. Cas. 189; McNish v. Everson, 5 Bann. & Ard. 485.

Mr. Chief Justice Fuller delivered the opinion of the court:

Doubtless a claim is to be construed in connection with the explanation contained in the specification, and it may be so drawn as in effect to make the specification an essential part of it; but since the inventor must particularly specify and point out the part, improvement or combination which he claims as his own invention or discovery, the specification and drawings are usually looked at only for the purpose of better understanding the mean

Rubber Co. v. Goodyear, 76 U. S. 9 Wall. 795 (19: 568); Merrill v. Yeomans, 94 U. S. 568 (24: 235); Ransom v. New York, 1 Fish. Pat. Cas. 252; Pitts v. Wemple, 2 Fish. Pat. Cas. 10; Agawam Co. v. Jordan, 74 U. S. 7 Wall. 597 (19: 180); Mitchell v. Tilghman, 86 U. S. 19 Wall. 395 (22: 136); White v. Dunbar, 119 U.ing of the claim, and certainly not for the S. 47, 51 (30: 303, 304); Del. Coal & Ice Co. v. Packer, 1 Fed. Rep. 852; Roemer v. Neuman, 132 U. S. 103 (33: 277); Holliday v. Pickhardt, 29 Fed. Rep. 853, 859.

The claim of the patentees is so broad that their patent is utterly void.

Parker v. Sears, 1 Fish. Pat. Cas. 99; Winans v. Boston & P. R. Co. 2 Story, 412.

Reduction or increase of size of old device for new use is not invention.

Woodbury Planing Machine Co. v. Keith, 101 U. S. 479 (25: 939).

Mechanical adaptation is not patentable. Dunbar v. Meyers, 94 U. S. 187 (24: 34); Atlantic Works v. Brady, 107 U. S. 192 (27: 438). Change of form, proportions or degree is not such an invention as will sustain a patent. Smith v. Nichols, 88 U. S. 21 Wall. 115 (22: 566).

The application of an old process or machine to a similar or analogous subject will not sustain a patent.

purpose of changing it and making it different from what it is. As remarked by Mr. Justice Bradley, in White v. Dunbar, 119 U. S. 47 52 [30: 303, 304]: "The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."

The patentees state that they "have invented a new combination designed for turning such articles as are to be brought to a point or are to be finished or turned at one end, and therefore cannot conveniently be held to be operated upon otherwise than by the opposite end." In the drawings attached to the patent, q and r are the guide cam or pattern specially referred to in the specification, and it is said that "in the particular instance illustrated q and rare formed for turning awls or machine needles," and that "the arrangement of the shaping mechanism illustrated by the drawing is that designed and adapted to the formation of awls or machine needles." They also say that "the material from which any article is to be turned by the use of our invention must be cylindrical and straight;" and that "the chuck used to hold the material to be operated on may be any of the well-known forms of griping or holding chucks that hold fast by one end the article which is to be turned."

Pennsylvania R. Co. v. Locomotive E. S. Truck Co. 110 U. S. 490 (28: 222); Morris v. McMillin, 112 U. S. 244, 248 (28: 702, 703); Blake v. San Francisco, 113 U. S. 679 (28: 1070); Stephenson v. Brooklyn Cross-Town R. Co. 114 U. S. 149 (29: 58); Miller v. Force, 116 U. S. 22 (29: 552); Clark Pomace Holder Co. v. Ferguson, 119 U. S. 335, 338 (30: 406, 407); Peters v. Active Mfg. Co. 129 U. S. 530, 537, 541 (32: 738, 741, 742); Peters v. Hanson, 129 U. S. 542, 553 (32: 742, 745): Aron v. Man- The claim is couched in plain and unamhattan R. Co. 132 U. S. 84 (33: 272); Watson v. biguous language, and is "The combination of Cincinnati, 1. St. L. & C. R. Co. 132 U. S. 161a griping chuck, by which an article can be so

held by one end as to present the other free to | yarn skewers, such as were used at one time in be operated upon, with a rest preceding the mills where cotton goods were manufactured. cutting tool, when it is combined with a guide 'Defendants' Exhibit Murdock Skewer, W. G. cam, or its equivalent, which modifies the H., Sp. Ex'r,' shows one of these skewers, movement of the cutting tool, all operating and when I compare this skewer with a sewtogether for the purpose set forth." The al- ing-machine needle, as the question requested leged improvement is in the mode of produc- me to do, I find that both the needle and the ing turned articles of "irregular forms," and skewer are brought to a point, the Murdock the purpose set forth is the turning of such lathe, the Spring device and the Pernot lathe articles as are to be brought to a point or to all being adapted for producing points upon be turned or finished at one end, and which the articles subjected to their action, the only ought therefore to be held by the opposite difference being that the Pernot and Spring end in order to be operated upon. The mate- lathes were adapted for making points on metal, rial is not specified, but it must be cylindrical while the Murdock lathe is adapted for making and straight. points on wooden blanks, all of the three lathes referred to, as well as the Wright lathe and the Waymoth lathe, being so constructed as to produce the desired configuration upon the surface of the turned blank by using a pattern or former of the desired shape. In all the lathes referred to by me in this testimony the irregular form of the article turned is reached by the former, guide or pattern causing the cutting tool, as it was slid toward the holding or griping chuck, to approach or recede from the axial line of the work, and in all these lathes the cutting tool is preceded by a rest through a hole in which the work revolves, leaving one end of the work free, while the other is held and turned by the chuck."

The complainant's expert testifies on crossexamination: "The patent is for a combination. The new part consists of elements, each and all of them old and familiar in pre-existing combinations. They are therefore the griping chuck; the supporting rest preceding the cutting tool; a cutting tool having the reciprocating motion towards and from the axis of the piece to be operated upon, under the control of a guide cam or former, so organized as to be also under the constant control of delicate adjusting apparatus, by which the required diameter of a piece to be operated upon may be constantly preserved without disturbing the functional performance of former and cutting tool, substantially as set forth and described, all operating together for the purpose set forth. It is, then, the combination of these several elements, as organized, which constitutes the new part." But the combination claimed is the combination of a griping chuck, a rest preceding the cutting tool, a cutting tool and a guide cam or its equivalent; and complainants cannot now be permitted to read into it any delicate adjusting apparatus not originally included in the claim, and then insist, in the words of the witness, that there is "a margin of patentable novelty."

The Springs completed their first machine in September or October, 1857. Their patent was issued May 10, 1859.

There is nothing in the specification about the nature of the material to be used, nor is the device limited to the production of awls and needles, although the drawings show that mode of applying the invention, and "the particular instance illustrated" is that "designed and adapted to the formation of awis or machine needles.' But the invention claimed is not restricted to lathes for turning sewing-machine needles, nor did the patentees by disclaimer place any such limit upon the construction of the patent.

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The rule laid down in Pennsylvania R. Co. v. Locomotive E. S. Truck Co., 110 U. S. 490 [28: 222], that the application of an old process or machine to a similar or analogous subAs found by the circuit court, the testimony ject, with no change in the manner of applyleaves no doubt that as early as 1845, William ing it, and no result substantially distinct in Murdock used a lathe at Winchendon, Massa- its nature, will not sustain a patent, even if the chusetts, for turning pointed skewers of wood. new form of result has not before been conThis had a chuck; a cutting tool; a rest pre-templated, has been applied in very many ceding the cutting tool, and a pattern governing the movement of the cutting tool, to shape the skewer to the desired form; or, in other words, all the elements of the Spring combination, as claimed.

Defendants' expert, Brevoort, correctly says: "This Murdock device shows the combination of a holding chuck which holds the material at one end while the other end is left free, a rest preceding a cutting tool, which latter is controlled in its movements by guide or former, so that the parts operating together will produce irregular forms. Now, this is the invention referred to in the claim of the Spring patent, and this Murdock lathe undoubtedly contains the invention recited in the Spring patent, with the exception that in the Murdock lathe the parts are adapted for turning wood, while in the Spring device they are more especially adapted for turning metal." And he continues: "I understand that this Murdock lathe was used for turning large numbers of

cases by this court. Thompson v. Boisselier, 114 U. S. [29: 76]: Peters v. Active Mfg. Co. 129 U. S. 530 [32: 738]; Peters v. Hanson, 129 U. S. 542 [32: 742]; Aron v. Manhattan Railway Co. 132 U. S. 84 [33: 272]; Watson v. Cincinnati, I. St. L. & C. R. Co. 132 U. S. 161 [33: 295].

In the employment of the chuck, the rest, the cutting tool and the guide cam, in the making of awls and needles, the patentees displayed the skill of their calling, which involved "only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice.' Hollister v. Benedict Mfg. Co. 113 U. S. 59, 73 [28: 901, 905]. The purpose of Murdock, in reference to the wooden skewer, was the same as the purpose of the Springs in reference to articles of any material which could be worked up on their machines. The claim was certainly broad enough to in

clude Murdock's invention, and no disclaimer | was filed to the effect that the court should was ever filed; and even with a limitation as to the article, patentable novelty was not present, within the rule upon that subject. The art of turning is the art of turning, whether applied to wood or metal; and it would seem that there was here nothing more than the substitution of one material for another, without involving an essentially new mode of construction. And be that as it may, there was no restriction as to material. Operation in metal would, of course, demand variations in organization, but not necessarily anything more than would result from the experience of the intelligent mechanic.

The Springs did not claim a combination of a slotted guide cam, an adjusting screw, a spring, guiding rods, etc., with a former, a cutting tool, a rest and a griping chuck, and as it stands the claim was, in the existing state of the art, for an analogous or double use, and not patentable.

The Circuit Court was clearly right, and its decree is affirmed.

JOHN GLENN, Trustee of the NATIONAL
EXPRESS AND TRANSPORTATION COM-
PANY, Piff. in Err.,

v.

HAMILTON G. FANT.

(See S. C. Reporter's ed. 398-401.)

consider the cause as if there had been pleaded the general issue and certain other pleas in the stipulation named, and as if issue had been joined thereon; that the cause should be heard upon an "agreed statement of facts," annexed as part of the stipulation, with leave to any party to refer to Exhibits X and Y, therewith filed; that a jury was thereby waived; that the cause might be submitted to the court to hear and decide upon said agreed statement of facts, exhibits and pleadings; and that either party might "rely upon any and all grounds of action or defense arising from said agreed statement of facts, exhibits and pleadings." The statement referred to was to the effect that the defendant was a subscriber for and assignee of the number of shares of the capital stock of the National Express and Transportation Company of Virginia in respect of which he was sued; that a certain deed of trust was as set forth in the record, therewith filed, marked "Exhibit X;" that Exhibit X was the record of a certain cause between W. W. Glenn and the National Express and Transportation Company of Virginia, in the Chancery Court of the City of Richmond, in the State of Vir ginia, afterwards removed into the Circuit Court of Henrico County, Virginia; and that on the 8th day of August, 1866, one Reynolds, claiming to be a stockholder of said company, filed his bill against said company in the Circuit Court of the United States for the Eastern District of Virginia, and certain proceedings

Review of judgment of District of Columbia-were therein had, as would appear from the special finding of facts or special verdict.

1. Where there is no bill of exceptions presented, for the review of a judgment of the Supreme Court of the District of Columbia, nor any finding of facts, nor any case stated analogous to a special verdict, stating the ultimate facts and presenting questions of law only, this court cannot review the same.

2. An agreement that the parties may refer to and rely upon all the grounds of action or defense to be found in the voluminous records of two equity cases in other courts, including the pleadings and

evidence and orders and decrees therein, cannot

take the place of a special verdict of a jury or special finding of facts by the court so as to enable this court to determine the questions of law thereon arising.

[No. 357.]

Argued March 11, 1890. Decided March 24, 1890.

IN

N ERROR to the Supreme Court of the District of Columbia to review a judgment in favor of defendant in an action to recover assessments on shares of stock. Affirmed.

Statement by Mr. Chief Justice Fuller: This is an action at law commenced in the Supreme Court of the District of Columbia by the plaintiff in error against the defendant in error on the 11th day of December, 1883, to recover certain amounts, for the payment of which the defendant was alleged to be liable upon an assessment levied on shares of stock in the National Express and Transportation Company of Virginia, held by him.

The defendant demurred to the declaration, but subsequently it was agreed that the demurrer should be overruled, and a stipulation

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record in that cause, filed and marked "Exhibit Y." It was agreed that the laws of the State of Virginia might be referred to as a part of the statement of facts, and certain other matters of fact were set forth, not material to be repeated here.

The cause came on at special term, the demurrer was overruled, and the stipulation filed "with an agreed statement of facts thereto annexed, and with exhibits, marked 'X' and Y," and thereupon the cause was certified to the general term of the court to be heard there in the first instance, "upon said stipulation and agreed statement of facts thereto annexed and exhibits therewith filed and the pleadings, in accordance with the provisions of the stipulation aforesaid." A hearing was accordingly had at general term, and judgment rendered in favor of the defendant with costs, and the plaintiff sued out a writ of error from this court.

Messrs. Charles Marshall, John Howard, Henry Wise Garnett and Conway Robinson, Jr., for plaintiff in error.

Messrs. M. F. Morris, Walter D. Davidge, Eugene Carusi and Reginald Fendall for defendant in error.

Mr. Chief Justice Fuller delivered the opinion of the court:

No bill of exceptions was taken in this case, nor was there any finding of facts by the Supreme Court of the District of Columbia, nor any case stated by the parties analogous to a special verdict and stating the ultimate facts of the case, presenting questions of law only. What is styled here an "agreed statement of facts" is an agreement as to certain matters, and

5.

6.

regulate the rates of toll to be collected by the company.

This power to regulate is not a power to destroy, and limitation is not the equivalent of confiscation.

The construction put upon a Minnesota statute by the Supreme Court of Minnesota must be accepted by this court.

of the State, allows a railroad commission to establish rates for railroads which are final, without issue made, or inquiry had, as to their reasonableness, and forbids the courts to stay the hands of the commission if the rates established by it are unequal and unreasonable, conflicts with the Constitution of the United States.

that the parties might refer to and rely upon any and all grounds of action or defense to be found in two voluminous exhibits, marked "X" and "Y," being the records of two equity causes in other courts, including all the pleadings and evidence, as well as the orders and decrees therein. The effect of some of that evidence and of the conclusions of fact to be drawn from it is controverted. It is impossible. A law which, as construed by the Supreme Court for us to regard this stipulation as taking the place of a special verdict of a jury, or a special finding of facts by the court, upon which our jurisdiction could properly be invoked to determine the questions of law thereon arising. And while the case is governed by the rule laid down in Campbell v. Boyreau, 62 U. S. 21 How. 223 [16: 96], yet, even if the statutory provisions in relation to the trial of causes without the intervention of a jury by the circuit courts of the United States were applicable, the result upon this record would be the same. Raimond v. Terrebonne Parish, 132 U. S. 192 [33: 309]; Andes v. Slauson, 130 U. S. 435 [32: 989]; Bond v. Dustin, 112 U. S. 604 [28: 835]; Lyons v. Lyons Nat. Bank, 19 Blatchf. 279. The judgment must be affirmed.

THE CHICAGO, MILWAUKEE, AND ST.
PAUL RAILWAY COMPANY,
Piff. in Err.,

V.

THE STATE OF MINNESOTA, ex rel.
THE RAILROAD AND WAREHOUSE COMMIS-
SION OF THE STATE OF MINNESOTA.

(See S. C. Reporter's ed. 418-466.)

8.

9.

So construed, it deprives the company of its right to a judicial investigation by due process of law, and substitutes therefor, as an absolute manity, the action of a railroad commission which is not clothed with judicial functions and does not possess the machinery of a court of justice.

Where no hearing is provided for, no summons or notice to the company, before the commission has found what it is to find and declared what it is to declare, and no opportunity provided for the company to introduce witnesses before the commission, there is not the semblance of due process of law.

10 The question of the reasonableness of a rate of charge for transportation by a railroad company is eminently a question for judicial investigation, requiring due process of law for its determinaLtion.

11. If the company is deprived of the power of charging reasonable rates for the use of its property, and such deprivation takes place in the absence of a judicial investigation, it is deprived of the use of its property, and, in effect, of the property itself, without due process of law and in violation of the Constitution of the United States.

[No. 762.]

Charter of Minnesota railroad company, when not a contract-charter, when subject to future legislation exemption-power of State-rates of toll--power to regulate-state construction Argued Jan. 13, 14, 1890. Decided March 24 of statute-Minnesota law, giving powers to commission, unconstitutional-due process of law-judicial investigation—hearing and no

of company.

1890.

tice-reasonableness of railroad rates-right ERROR to the Supreme Court of the State of Minnesota, awarding a writ of mandamus against the Chicago, Milwaukee and St. Paul the order of the Railroad and Warehouse ComRailway Company, requiring it to comply with mission of that State by changing its tariffs of rates and charges and substituting therefor the rates recommended by said Commission. Reversed.

1. The ninth section of the charter of the Minneapolis & Cedar Valley Railroad Company giving power to the directors of that company to make rules as to rates of toll does not constitute an irrepealable contract with that company that it shall have the right for all future time to prescribe its rates of toll, free from all control by the Legislature of the State.

The facts are fully stated in the opinion.
Reported below, 38 Minn. 281.

nesota, ex rel. Railroad and Warehouse Čommission, were argued together.

2. A railroad corporation takes its charter, con- This case and the following case of The Mintaining such a provision, subject to the generalneapolis Eastern Railway Co. v. State of Minlaw of the State, and to such changes as may be made in such general law, and subject to future constitutional provisions and future general legislation, in the absence of any prior contract with it exempting it from liability to such future general legislation.

3. Exemption from future general legislation, either by a constitutional provision or by an Act of the Legislature, does not exist unless it is given expressly or unless it follows by an implication equally clear with express words.

4. The grant of power by section 9 of the charter, to the directors of the company, to make needful rules and regulations touching the rates of toll and the manner of collecting the same, does not deprive the State of its general authority itself to

W. H. Norris and W. C. Goudy for plainMessrs. John W. Cary, J. H. Howe, tiffs in error in both cases.

made and cited by Mr. John W. Cary, for The following are the points and authorities plaintiffs in error:

The court erred in holding that the Legisla ture of Minnesota is authorized to fix the rates and charges for transportation because the exercise of such a power would impair the obligation of the contract contained in the charter.

Stone v. Farmers L. & T. Co. 116 U. S. 326, 327 (29: 642); Prov. Bank v. Billings, 29 V. S.

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