Statement of the case. Such being the claims of this reissue, No. 2942, on which the present suit was brought, it becomes necessary to describe the defendant's machine; the machine, namely, alleged to have infringed. It consisted of a machine shown. in Fig. 8. This machine had a single feed-apron A, a rotating picker B, which revolved in the direction shown by the arrow, throwing the fur against a "cut-off board" F. The fur is carried to the machine on the feeding apron A, and passes between rollers C and D, and by the action of the picker cylinder B, it is thrown against a cut-off board F, whence it passes into the top of box I. The fan T creates a blast in the direction of the respective arrows, drawing the air and fur in the box I downwards, and as this current of passes through the apertures in the cone the fur is deposited on said cone N. air The current of air can be regulated by means of the reg Statement of the case. isters S, which are within the cone N, the lower one of which can be turned on shaft R, and serves to open or close the apertures of the upper disk so as to produce a current of air of the desired strength. The court below, after describing to the jury the Wells "trunk," consisting of a bottom, top, and sides, and its mode of operation as a "trunk," proceeded to charge them as follows: "Now, gentlemen, having said what I have in relation to the combination of the three parts to the trunk, this instrumentality for controlling the passage of the fur from the picker to the cone, and mode of restraining this fur, so it shall not go to waste, and which is claimed to be new, you will perceive that it consists of a top, bottom, and sides; I have been asked to say to you that it is essential to a just construction of this patent that those sides should be united. No doubt that they are united in the model that is produced; and if the dividing of them into four pieces would make no substantial change, if the instrumentality would be the same substantially, and operate in the same mode, no man could sever them and say he was not an infringer; and if not then the union of the edges at the corners is not of the substance of the invention. Therefore, I am not able to say that one has not infringed who did not use a trunk that was constructed with its corners solid or united in the manner that is here exhibited. If I had a case of that sort I should submit to you the question whether a man who took the thing as we see it here and divided it at the corners, and set it up, had made anything more than an attempt, colorable, to evade the patent, without producing any substantial difference, either in the instrumentality or in the mode in which the result was effected. "Such being the model which is produced here-for if you perceive that, in any respect, I have erroneously conceived it or misstated it, you will correct me-I have only recurred to it for the purpose of giving application to the views, mainly of law, bearing upon the question. I say this being substantially an account of the machine which Mrs. Wells, the plaintiff, patented in the reissue, which is the foundation of this suit, has, for reasons doubtless sufficient to her, divided the claim of the specification into several parts, and she has done so apparently Statement of the case. under the idea that if she dealt with the machine as a unit, as an aggregate, the invention might be appropriated with impunity by a party who used a portion of its effective, original, and useful parts, leaving out some others. An inventor is at liberty when he has made an invention, if it consists of several distinct, effective, new devices, which as an aggregate, may constitute, in his judgment, the best machine in the world, but of which certain of the parts may be omitted, and it still be an effective, new, and useful machine-I say that the inventor is at liberty, in taking out his patent, to protect himself against that species of innovation by claiming the separate, new, and useful parts of the machine by themselves. "For illustration. A party patenting a machine may introduce ingenious and new devices which may be better than any other for the purpose, but some of which could be supplied by old devices, if he patents the machine and the combination containing his new devices, patents only a combination. A party who might think he could make a machine substantially useful for his purpose by omitting these devices, and supplying their places by old devices, having different operation and character, would be at liberty to do so, and thus, practically, a large benefit, or perhaps the whole benefit that is due the inventor might be lost. I say the patent law, therefore, permits the inventor not only to patent the machine as an aggregate, but to patent the new devices which enter into it, so that another may not avail himself of his ingenuity in that respect. That is the reason why reissues often become necessary, because in the original patent, the party did not claim distinctly the separate items of the property which he had a right to claim. And, in that view, I suppose the plaintiff here has claimed the combination of the rotating brush or picker, substantially as described, the rotating pervious cone, provided with an exhausting mechanism, substantially as described; and the bottom-plate or guide, substantially as described, of which is called the trunk for directing the fur fibres toward the lower part of the cone, and preventing the fibres going to waste, which combination has the mode of operation specified and for the purpose set forth." Upon this instruction of the court below, and upon the refusal of the court below to instruct the jury that the reissued patent, No. 2942, was invalid because it was not for Opinion of the court. the same invention as the original patent--matters to which the defendant excepted-the first principal decision of this court is based. The only other matters assigned for error and noticed by the court were That the court erred in refusing to instruct the jury that the defendant's machines did not infringe the fourth claim of the plaintiff's patent, unless it had the feeding device of the original patent in combination with the rotating brush or picker and the pervious cone, and the chamber or tunnel described in the original specification. known That the court erred in instructing the jury that the reissued patent is valid, as respects the fourth claim, if the combination of the three ingredients therein mentioned was new, and could be usefully employed for the purpose of facilitating the making of hat-bodies, supplemented by any means of guiding the fur in such a way as to bring, by the operation of these three devices, the fur to the cone so as to make a hat-body, or if those three devices would make a hat-body without the aid of other means of protecting the fur against escape that would be serviceable for any purpose, then it was patentable, even without the trunk, which is also called the chamber or tunnel. Messrs. H. F. French and A. L. Soule, for the plaintiff in error; Messrs. E. N. Dickerson and M. K. Brewer, contra. Mr. Justice CLIFFORD delivered the opinion of the court. Valid letters-patent may be granted for an invention which consists entirely in a new combination of old ingredients, provided it appears that the new combination of the ingredients produces a new and useful result; but the rule is equally well settled, in such a case, that the invention consists merely in the new combination of the ingredients, and that a suit for an infringement cannot be maintained against a party who constructs or uses a substantially different combination, even though it includes the exact same ingredients. Alterations, however, in a combination, which are merely Opinion of the court. formal, do not constitute a defence to the charge of infringement, as the inventor of a new and useful combination of old ingredients is as much entitled to claim equivalents as any other class of inventors, but they cannot suppress subsequent improvements which are substantially different from their inventions, whether the new improvement consists in a new combination of the same ingredients or of some newly discovered ingredient, or even of some old ingredient performing some new function not known at the date of the letterspatent as a proper substitute for the ingredient withdrawn. Old ingredients known at the date of letters-patent granted for an invention, consisting of a new combination of old ingredients, if also known at that date as a proper substitute for one or more of the ingredients of the invention secured by the letters-patent, are the equivalents of the corresponding ingredients of the patented combination. Such old ingredients, so known at the date of the letters-patent granted, are the equivalents of the ingredients of the patented combination, and no others, and it may be added that that, and that only, is what is meant by the rule that inventors of a new combination of old ingredients are as much entitled to claim equivalents as any other class of inventors. Reissued patents, in order that they may be valid, must be for the same invention as the surrendered originals. Inoperative or invalid patents, which are so by reason of a defective or insufficient specification, or by reason that the patentee claimed as his own invention or discovery more than he had a right to claim as new, may be surrendered if the error arose by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, and the provision is that the Commissioner, in that event, shall, upon the payment of the sum required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the proper party, as prescribed in the fifty-third section of the Patent Act.* Unquestionably the specifications in such a case may be * 16 Stat. at Large, 206. |