8. VERBAL LICENSE OR INTEREST FROM INVENTOR-OF NO Effect Upon a Sub. SEQUENT ASSIGNEE OF A PATENT for the INVENTION WITHOUT NOTICE. Where an inventor, in consideration of assistance given him, verbally agreed to give an interest in the manufacture of his invention, but did not make an assignment of such interest in legal form, and where he subsequently made an assignment of the patent to another party without notice of the previous verbal interest, Held that no effect, as against the assignee, could be given to such verbal license or interest.

4. GATES-STONE-CRUSHERS--PUBLIC USE FOR MORE THAN TWO YEARS-VOID. Letters Patent Nos. 243,343, dated June 21, 1881, 243,545, dated June 28, 1881, and 250,656, dated December 13, 1881, for improvements in stone-crushers, issued to P. W. Gates, Held to be void as covering features substantially embodied in a machine built by one Brown and which had been in public use for more than two years prior to Gates's application for his patents.

5. SAME LACK OF INVENTION-VOID.

Claim 1 in the patent, No. 246,608, dated September 5, 1881, to P. W. Gates, for a depression or groove in the outer bearing-surface of the bearing-box for a shaft in a stone-crusher, with a removable portion of carbon-bronze metal therein to correct the wear, Held to be void for the reason that such device is not an invention, as the use of soft metals for that function is old.

APPEAL from the Circuit Court of the United States for the Northern District of Illinois.

Mr. L. L. Coburn for the appellant.

Mr. L. L. Bond and Mr. O. E. Pickard for the appellee.

STATEMENT OF THE CASE.

At the March term, 1890, of the Circuit Court of the United States for the Northern District of Illinois the Gates Iron Works, a corporation organized under the laws of the State of Illinois, filed its bill of complaint against David R. Fraser, Thomas Chalmers, and Hiram H. Scoville, alleging that the said complainant was the sole owner of sev eral Letters Patent of the United States-namely, No. 56,793, issued to Henry Pearce, July 31, 1866; No. 201,616, issued to Charles M. Brown, March 26, 1878; No. 237,320, issued to George and Albert Raymond, February 1, 1881; No. 110,397, issued to John H. Rusk, December 20, 1870; No. 243,343, issued to P. W. Gates, June 21, 1881; No. 243,545, issued to P. W. Gates, June 28, 1881; No. 246,608, issued to P. W. Gates, September 6, 1881, and No. 250,656, issued to P. W. Gates, December 13, 1881; and which said Letters Patent, and the inventions and improvements therein described, had, by assignments in writing, prior to the commencement of the suit, become vested in the complainant. The bill further alleged that the defendants were making, using, and vending machines embodying the said inventions, in disregard of the rights of complainant, and prayed for the usual relief.

The defendants filed a joint and several answer, admitting that the Letters Patent mentioned in the bill had been issued, but denying that the persons to whom they had been granted were the original and first inventors of the several inventions described and claimed therein, or 10693 PAT-20

that the defendants had infringed, or were infringing, the rights of the complainant in the said inventions.

The answer further averred that the defendant Hiram H. Scoville had, prior to the filing of the application by Charles M. Brown for a patent for the improvements described and claimed in said Patent No. 201,646, dated March 26, 1878, by and with the consent of the said Brown, made and put into use two machines containing the inventions secured by said Patent No. 201,646, and that the defendants had a right to make and sell machines containing said inventions by virtue of an oral license given by Brown to Scoville before the application for said patent was filed.

The answer further alleged that P. W. Gates was not the original and first inventor of the improvements described in the several patents Nos. 243,343, 243,545, 246,608, and 250,656, but that substantially those improvements were invented by said Charles M. Brown before the supposed invention thereof by Gates, and were embodied and exemplified in certain full-sized working machines built by the said Hiram H.Scoville, which were publicly used more than two years before Gates made application for any one of the said four patents.

The answer further stated that Henry Pearce was not the original and first inventor of the improvement patented by said Patent No. 56,793, dated July 31, 1866, and that substantially the same thing was shown and described in Letters Patent No. 28,031, issued to one G. H. Wood, dated April 24, 1860.

Subsequently the defendants, with leave of court, filed the following amendment to the answer, to wit:

Letters Patent to J. F. Ostrander, granted and dated April 25, 1846, No. 4,478, grain-mill.

Aud as to the patent mentioned in said bill of complaint as having been granted and issued to J. H. Rusk, Charles M. Brown, G. and A. Raymond, and the four patents to P. W. Gates, numbered respectively 243,343, 243,545, 246,608, and 250,656, they further aver, upon information and belief, that the said Brown, Raymond, Rusk, and Gates were not the original aud first inventors of the thing patented by or to them respectively, and that substantially the same things were patented by or shown and described in the following Letters Patent, to wit:

As to patent to H. Pearce, No. 56,793.

Letters Patent to J. F. Ostrander, granted and dated April 25, 1846, No. 4,478, for improvement in grinding-mill.

Letters Patent to G. H. Wood, granted and dated April 24, 1860, No. 28,031.
As to patent to J. H. Rusk, No. 110,397.

Letters Patent to A. C. Ellithorpe and I. Scoville, granted and dated November 23, 1858, for improvements in machine for breaking stones, etc., No. 22,113. Letters Patent to Hiram H. Scoville, granted and dated May 26, 1868, No. 78,332, for improvement in stone-breaker.

As to patent to C. M. Brown, No. 201,646.

Letters Patent to Charles Tripp, granted and dated November 10, 1857, No. 18,610, for improvement in grinding-mill.

Letters Patent to Conrad P. Wagner, granted and dated January 30, 1866, No 52,317, for improvement in quartz-mill.

Reissue Letters Patent to James W. Rutter, granted and dated September 7, 1869, No. 3,633, for improvement in ore-crusher.

As to chilled iron, V. I. Knight's American Mechanical Dictionary, published in New York, 1874, page 537. Title "Chill."

As to patent to P. W. Gates, No. 243,343.

Letters Patent to L. Fagin, granted and dated October 30, 1866, No. 59,201, for improvement in hanging millstones.

Letters Patent to S. N. Taylor, granted and dated February 27, 1866, No. 52,908, for improvements in knuckle-joint.

As to patent to P. W. Gates, No. 243,545.

Letters Patent to Charles Tripp, granted and dated November 10, 1857, No. 18,610, for improvement in grinding-mill.

Letters Patent to Conrad P. Wagner, granted and dated January 30, 1866, for improvement in quartz-mill, No. 52,347.

Letters Patent to Thomas Varney, granted and dated April 9, 1867, No. 63,675, for improvement in quartz-mill.

As to patent to P. W. Gates, No. 246,608.

Letters Patent to H. Pearce, granted and dated July 31, 1866, No. 56,793, for improvement in quartz-mill.

As to patent to P. W. Gates, No. 250,656.

Letters Patent to P. W. Gates, granted and dated June 28, 1881, No. 243,545, for improvement in stone or rock breaker.

Letters Patent to Daniel Hughes, granted and dated February 20, 1866, No. 52,716, for improvement in quartz-crusher, etc.

Letters Patent to L. Fagin, granted and dated October 30, 1866, No. 59,201, for improvement in hanging millstones.

English Letters Patent to Claude Marie Savoye, No. 6,195 of 1831, for improvement in machinery for grinding grain and other substances.

The defendants, further answering, say upon information and belief that some of the older ones of complainant's said patents show and describe improvements which are claimed in other and later of the complainant's said patents, and they further say that as to the said several patents by them herein and hereintofore mentioned are shown and described devices, parts, or combinations of parts that are substantially the same as the devices and combinations set forth in other patents than those to which they are specifically named as relating, and that any and all of said patents will be referred to as containing the substance of any or either of the complainant's said patents as may be deemed appropriate.

The cause was put at issue, a large amount of evidence taken, and after argument on March 31, 1890, the court below dismissed the bill at complainant's costs. From this decree an appeal was taken to this Court.

Mr. Justice SHIRAS delivered the opinion of the Court.

The patents that are before us for consideration are for improvements in stone-crushing machines. We shall preface our discussion of the questions that arise by adopting from the brief of the plaintiff in error the following description of the final and perfected form of the machine, and which is claimed to embody the various inventions and improvements covered by the several patents:

The inventions of these various patents can be more readily understood by first understanding the construction of this type of stone-crushing machines which has come to be known as the “gyratory" type of stone-crushers. This name comes from the fact that the crushing-coue is carried on a vertical shaft which has its bearing at one end in the axis of the conical inclosing ease which surrounds the crushingcone, while the bearing of the other end of the cone-shaft is eccentric to the axis of

the inclosing or surrounding conical cylinder which surrounds the crushing-cone. This vertical shaft which carries the crushing-cone of the machine is loose in its bearings, but the end of this shaft which is eccentric to the axis of the inclosing conical case or cylinder of the machine is carried around in a circle by being placed in an eccentric box in a gear-wheel that is revolved on its center, which center is in the axis of the inclosing case or cylinder of the machine. The shaft which carries the crushing-cone describes in its movement, when the machine is in operation, a conical orbit around the vertical axis of the inclosing conical cylinder of the machine. The stone to be crushed is dumped into the top of the machine between the crushingcone and the cylindrical conical case or shell which surrounds it, the cone shaft is carried around in its conical orbit, and as the crushing-cone impinges the ore or rock between it and the surrounding case or cylinder, crushes it. The shaft or arbor of this crushing-cone being loose in its bearings, it does not rub or grind the stone, but simply cracks it into finer pieces, and then impinges the next pieces of ore or rock, and so on around the entire conical orbit, the space between the crushing-cone and the inclosing conical case or cylinder opposite of where the ore or rock is being cracked or broken becomes greater by reason of the crushing-cone being carried to the opposite side of the inclosing case or cylinder, and the broken rock falls down into a narrower space, and when the crushing-cone comes around again, it is again broken, until it is sufficiently fine to pass out at the bottom of the space between the crushing-cone and its inclosing case or cylinder.

This construction of ore-crushers, or "stone-breakers," as they are frequently called, is a continuous-feed machine, the stone being constantly fed in at the top of the machine in a coarse state, and continuously passes out at the bottom of the crushing-space, broken to a certain definite size, which is fixed by adjustment of the crushing-cone in the inclosing case or cylinder.

This form of machine is illustrated in the following drawing:

Vertical Sectional View of Machine.

In this cut, A represents the conical inclosing case or cylinder which surrounds the crushing-cone B, which is rigidly attached to and is carried on the vertical shaft or arbor C. The top or upper end of the arbor C has a bearing in the chilled section-box D that is held in an open spider frame E, this bearing being exactly in line of the axis of the inclosing conical case or cylinder A. The bottom or lower end of the

shaft C has its bearing in what is termed an "eccentric" box, F, which is placed in the gear-wheel G. This eccentric box is placed at one side of or eccentric to the vertical axis of the inclosing case or cylinder A. The gear-wheel G is supported on the base of the machine, so that the center of its hub is exactly in line with the vertical axis of the inclosing conical case or cylinder A, and when it is revolved it carries the lower end of the shaft or arbor C, around in a circle, and consequently continually brings the conical crushing cone B in closer proximity to one side of the inclosing case or cylinder to impinge the stone contained in the inclosing case or cylinder, and that impingement is continually changing from one place to another throughout the entire circle, and the space opposite to the place of impingement between the crushingcone and its inclosing case or cylinder is wider than where the impingement of the ore or stone is taking place. This particular motion of the crushing-cone and its shaft or arbor has been termed a "gyratory" motion. The shaft or arbor is never vertical, and one of its bearings is in an eccentric box placed eccentric to the bearing of the other end of the shaft or arbor, and eccentric to the axis of the inclosing case or cylin der. The crushing-cone and its shaft or arbor describes at each revolution of the geared wheel in which the eccentric box of the shaft or arbor is placed, a conical orbit.

It is claimed by the plaintiff in error that this form of machine is the composite result of the application of the improvements described in the patents set up in the bill. To test the soundness of this claim it will be necessary for us to look into the condition of the art prior to the issue of the earliest patent owned by the complainant, that is, prior to July 31, 1866, the date of Letters Patent No. 56,793, granted to Henry Pearce.

The first patent to which our attention has been particularly directed is that issued April 25, 1846, to Jonathan F. Ostrander, and numbered 4,478. It is a claim for an improvement in grinding-mills, and the nature of the invention is said to consist in

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making the surfaces of the stones, or metallic plates, between which the material is ground, the one convex and the other concave, and also in giving the movable plate or stone a compound motion, consisting of, firstly, an oblique gyrating motion of its axis around the axis of the fixed plate; and, secondly, a rotating motion around its own axis.

The material to be ground is fed to the mill by being placed in a cupshaped opening in the top of the shell that incloses the machine, and the ground material is received in a gutter surrounding the base. We here perceive the double motion, that is, "the revolving and rolling motion," which is a feature of the Pearce patent, and the operation of the two machines is similar in that, in both, the pestle alternately closes upon and recedes from the sides of the outer shell, so that any substance or material to be ground is thereby crushed, and passes downward to the lower part of the machine, where the space gradually lessens, and is crushed finer.